Toyota Motor Corporationv.American Vehicular Sciences LLC

Patent Trial and Appeal Board

Dec 5, 2014

11832870 (P.T.A.B. Dec. 5, 2014)

Trials@uspto.gov Paper 54
571.272.7822 Entered: December 5, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

TOYOTA MOTOR CORPORATION,
Petitioner,

v.

AMERICAN VEHICULAR SCIENCES LLC,
Patent Owner.
____________

Case IPR2013-00416
Patent 8,019,501 B2

Before JAMESON LEE, BARBARA A. PARVIS, and
GREGG I. ANDERSON, Administrative Patent Judges.

PARVIS, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
I. BACKGROUND
A. Introduction
On July 8, 2013, Toyota Motor Corporation (“Toyota”) filed a
Petition (“Pet.”) requesting an inter partes review of claims 1, 4–10, 17, and
18 of U.S. Patent No. 8,019,501 B2 (Ex. 1001, “the ’501 patent”). Paper 1.
On January 13, 2014, we instituted trial for all challenged claims 1, 4–10,
IPR2013-00416
Patent 8,019,501 B2

2

17, and 18 of the ’501 patent on certain grounds of unpatentability alleged in
the Petition. Paper 12 (“Decision” or “Dec.”).
After institution of trial, American Vehicular Sciences LLC (“AVS”)
filed a Patent Owner Response (“PO Resp.”). Paper 23. AVS also filed a
Motion to Amend Claims (Paper 24), which was withdrawn on August 7,
2014 (Paper 46). Toyota filed a Reply. Paper 31 (“Reply”).
A consolidated oral hearing for IPR2013-00414, IPR2013-00415,
IPR2013-00416, and IPR2013-00417, each involving the same Petitioner
and the same Patent Owner, was held on August 14, 2014. The transcript of
the consolidated hearing has been entered into the record. Paper 53 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6(c). This final written
decision is issued pursuant to 35 U.S.C. § 318(a).
Toyota has shown by a preponderance of the evidence that claims 1,
4–10, 17, and 18 of the ’501 patent are unpatentable.
B. Related Proceedings
Toyota indicates that the ’501 patent has been asserted in the
following district court cases: (1) American Vehicular Sciences LLC v.
Toyota Motor Corp., No. 6:12-CV-00405 (E.D. Tex., filed June 25, 2012);
(2) American Vehicular Sciences LLC v. BMW Grp., No. 6:12-CV-412 (E.D.
Tex., filed June 25, 2012); (3) American Vehicular Sciences LLC v. Hyundai
Motor Co., No. 6:12-CV-00776 (E.D. Tex., filed Oct. 15, 2012); and
(4) American Vehicular Sciences LLC v. Kia Motors Corp., No. 6:13-CV-
00148 (E.D. Tex., filed Feb. 13, 2013). Pet. 1.
C. The ’501 Patent
The ’501 patent relates to arrangements and techniques for generating
vehicle diagnostic and prognostic information. Ex. 1001, 2:66–3:2.
IPR2013-00416
Patent 8,019,501 B2

3

Figure 20C of the ’501 patent is reproduced below.

Figure 20C of the ’501 patent illustrates an embodiment of a system for
obtaining data about a vehicle. Ex. 1001, 56:59–60. Sensors 627 shown in
Figure 20C are arranged throughout the vehicle to collect data. Id. at 56:60–
65. Sensors 627 represent surface acoustic wave (SAW) sensors, radio
frequency identification code (RFID) sensors, or other wireless sensors. Id.
at 56:65–57:1. Antenna array 622 is mounted on the vehicle to receive
wireless signals from sensors 627. Id. at 57:6–9. Antenna array 622 is
within housing 630 along with control system 628, which controls antenna
array 622. Id. at 57:25–26. Control system 628 directs the processed
vehicle information to display/telematics unit 629 via an electrical circuit for
display and/or transmission to a remote location. Id. at 57:27–32.
Figure 3 of the ’501 patent illustrates an embodiment of the
configuration of the sensors of the onboard vehicle diagnostic system and is
reproduced below.
IPR2013-00416
Patent 8,019,501 B2

4

Figure 3 is a schematic of a vehicle illustrating about thirty sensors
shown in their approximate locations on the vehicle. Ex. 1001, 23:7–11.
Most of the sensors are mounted on components within the engine of the
vehicle, including the following: microphone 2, coolant thermometer 3, oil
pressure sensor 4, oil level sensor 5, air flow meter 6, voltmeter 7, ammeter
8, engine knock sensor 10, oil turbidity sensor 11, throttle position sensor
12, oxygen sensor 17, transmission fluid level sensor 25, coolant level
sensor 27, transmission fluid turbidity sensor 28, brake pressure sensor 29,
and coolant pressure sensor 30. Id. at 23:36–54. The following sensors are
mounted within the passenger compartment: crash sensor 1, humidity sensor
9, steering torque sensor 13, tachometer 15, speedometer 16, pitch and roll
sensor 18, clock 19, odometer 20, power steering pressure sensor 21, cabin
thermometer 24, and yaw sensor 26. Id. Pollution sensor 22 and fuel gage
23 are mounted near the tailpipe, and wheel speed sensor 14 is mounted on
the wheel. Id.

IPR2013-00416
Patent 8,019,501 B2

5

D. Illustrative Claim
Claim 1, the only independent claim challenged, is reproduced below:
1. A method for predicting impending failures in one or
more of a plurality of components or subsystems on a vehicle to
prevent a breakdown of the vehicle that could result in an
inability to operate the vehicle, comprising:
mounting sensors on the vehicle, the sensors providing
data which is affected by the operation of the components or
subsystems, the sensors being selected and arranged such that
the data provided by the sensors is different for different
operating states of each of the plurality of components and
subsystems;
obtaining data from the sensors during operation of the
components or subsystems;
detecting patterns in the obtained data on the vehicle;
analyzing, using a processor on the vehicle, the detected
patterns to create a prediction of an impending failure of one of
the components or subsystems before the predicted failure
occurs; and
informing the user, owner, dealer or manufacturer of the
vehicle about the predicted failure before the predicted failure
occurs to enable corrective action to be taken before the
predicted failure occurs,
whereby a breakdown of the vehicle that might occur if
the predicted failure of the component were to occur is thereby
avoided.
(Emphasis added).

E. The Prior Art References Supporting Alleged Unpatentability
Reference Patent No. Issued Date Exhibit No.
Scholl Patent 5,400,018 Mar. 21, 1995 Ex. 1002
Probst Patent 4,849,894 July 18, 1989 Ex. 1003

IPR2013-00416
Patent 8,019,501 B2

6

F. The Pending Grounds of Unpatentability
Reference[s] Basis Claims Challenged
Probst § 102(b) 1, 6–8, 17, and 18
Scholl and Probst § 103(a) 1, 4–10, 17, and 18
II. ANALYSIS
A. Claim Construction
1. Principles of Law
In an inter partes review, claim terms in an unexpired patent are
interpreted according to their broadest reasonable construction in light of the
specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
2012). The terms also are given their ordinary and customary meaning, as
would be understood by one of ordinary skill in the art in the context of the
disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257
(Fed. Cir. 2007). For an inventor to act as his or her own lexicographer, the
definition must be set forth in the specification with reasonable clarity,
deliberateness, and precision. Renishaw PLC v. Marposs Societa’ per
Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998). Also, when an inventor
chooses to be his own lexicographer so as to give a term an uncommon
meaning, he must set out his uncommon definition in a manner within the
patent disclosure, sufficient to give one of ordinary skill in the art notice of
the change. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
An extraneous limitation should not be read into the claims from the
specification. E.g., E.I. du Pont de Nemours & Co. v. Phillips Petroleum
Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). By extraneous we mean a
limitation that is unnecessary for the purpose of making sense of the claim.
IPR2013-00416
Patent 8,019,501 B2

7

See, e.g., In re Paulsen, 30 F.3d at 1480; Renishaw PLC, 158 F.3d at 1249.
The construction that stays true to the claim language and most naturally
aligns with the inventor’s description is likely the correct interpretation. See
Renishaw PLC, 158 F.3d at 1250.
“Comprising” is a term of art used in claim language, which means
that the named elements are essential, but other elements also may be
included to constitute additional components within the scope of the claim.
Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997).
2. “detecting patterns in the obtained data on the vehicle” and
“analyzing . . . the detected patterns”
Independent claim 1 recites “detecting patterns in the obtained data on
the vehicle” and “analyzing . . . the detected patterns.” Although we stated
in the Decision that no express construction was necessary based on the
record at that time, we further determined that “detecting patterns in the
obtained data on the vehicle” encompasses identifying trends in the obtained
data on the vehicle and that “analyzing . . . the detected patterns”
encompasses analyzing the identified trends. Dec. 13.
AVS states for the purposes of this inter partes review that it does not
contest our determinations regarding claim construction. PO Resp. 11.
AVS does, however, “dispute at least the application of certain terms to the
prior art.” Id. In particular, AVS states “Scholl discloses implementing, on
a vehicle, diagnostic and prognostic fault codes without pattern detection.”
Id. at 37 (emphasis omitted).
AVS’s arguments are based in part on an improper limiting of the
term “patterns” to exclude trends. We construe the term “pattern” to aid in
the evaluation of the arguments presented by AVS regarding Scholl.
IPR2013-00416
Patent 8,019,501 B2

8

The specification of the ’501 patent uses the term “pattern” in its
description of pattern-recognition technology. In particular, according to the
’501 patent specification, detection of patterns is performed on time series
data emitted by the sensors. Ex. 1001, 16:18–24. The ’501 patent
specification describes various patterns that pattern recognition technology
detects. For example, the ’501 patent specification states “[i]n some cases,
the frequencies present in a set of data are a better predictor of component
failures than the data itself.” Ex. 1001, 16:54–55 (emphasis added).
Additionally, according to the ’501 patent specification, “[i]t is worth
emphasizing that in many cases, it is the rate that a parameter is changing
that can be as or more important that the actual value in predicting when a
component is likely to fail.” Id. at 14:34–37 (emphasis added).
Furthermore, the ’501 specification states: “[t]he pattern recognition
algorithm thereby detects trends or patterns in the time series received from
the sensors.” Ex. 1001, 18:29–30 (emphasis added). As used in the ’501
patent specification, therefore, “pattern” is a frequency of occurrences of
certain data present in a set of data, a rate of change of data, or a trend of
data.
For the reasons discussed above, we construe “pattern” as a frequency
of occurrences of certain data present in a set of data, a rate of change of
data, or a trend of data.
3. “a prediction of an impending failure of one of the components or
subsystems”
Claim 1 recites the term “a prediction of an impending failure of one
of the components or subsystems.” In the Decision, we determined that no
express construction of the phrase “a prediction of an impending failure of
IPR2013-00416
Patent 8,019,501 B2

9

one of the components or subsystems” was necessary based on the record at
that time. Dec. 14. We also agreed with AVS that “a prediction of an
impending failure of one of the components or subsystems” encompasses a
prediction of a likely failure of one of the components or subsystems. Id.
AVS now argues that the broadest reasonable construction of “failure
of one of the components or subsystem” does not include ineffective
operation due to driver error. PO Resp. 12. AVS cites to dictionary
definitions for the term “failure” in support of its argument. Id. at 13. In
particular, AVS submits definitions for failure as follows: “a state of
inability to perform a normal function,” “an abrupt cessation of normal
functioning,” and “fracturing or giving way under stress.” Id. (citing
Merriam-Webster Dictionary (1995) (Ex. 2006)). AVS contends that these
dictionary definitions support its position because ineffective operation due
to driver error is an inability of a component to perform outside of its normal
functions. Id.
AVS’s contention is inconsistent with the specification of the ’501
patent. In particular, the ’501 patent contemplates that prediction of a failure
of one of the components or subsystems encompasses failures due to the
manner in which the operator is operating the vehicle, or driver error.
Ex. 1001, 15:38–40. One example provided in the ’501 patent is predicting
accelerated failure due to a driver driving at a speed higher than appropriate
for a low gear. Id. at 15:38–44. As an additional example, the ’501 patent
specification describes predicting a rollover due to high speed. Id. at 26:21–
25. The ’501 patent describes a further exemplary failure that occurs
because of how an operator operates a vehicle, by stating “a failure mode
can be designed into the mechanism [to enable a restorable system] . . . when
IPR2013-00416
Patent 8,019,501 B2

10

the tire goes flat as, for example, when a nail [] punctures the tire.” Id. at
76:19–23. A nail puncturing a tire is often due to a driver driving over a
nail.
AVS’s contention also is inconsistent with other language recited in
claim 1. In particular, claim 1 recites, “whereby a breakdown of the vehicle
that might occur if the predicted failure of the component were to occur is
thereby avoided” (emphasis added). According to claim 1, breakdown of a
vehicle is a possibility, but not a certainty when a component fails.
AVS does not describe persuasively how one of ordinary skill in the
art would understand what types of functions are “normal” in the context of
the claim and the ’501 patent specification. The exemplary failures
described in the ’501 patent specification, such as a vehicle rollover or a flat
tire, are simply states of inability of a component, a wheel or a tire,
respectively, to perform a function that the component was designed to do.
As additional evidence of the meaning of “failure,” AVS cites its
expert, Mr. Steven Loudon, who states that in the automotive industry the
term “component failure” is reserved for describing components that require
either repair or replacement. PO Resp. 18 (citing Ex. 2001 ¶ 42). Mr.
Loudon provides an example, “[i]f a car is sliding on a slippery road, one
would not say that the brakes ‘failed’—it is not the failure of the brakes to
stop the skid, rather the brakes alone were unable to stop the car.” Ex. 2001
¶ 42. Mr. Loudon simply asserts his opinion of the use of the term
“component failure” in the automotive industry without providing
persuasive evidence supporting this usage by those in the automotive
industry. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose
IPR2013-00416
Patent 8,019,501 B2

11

the underlying facts or data on which the opinion is based is entitled to little
or no weight.”).
Mr. Loudon relies on the definitions in Merriam-Webster Dictionary,
which are discussed above. Ex. 2001 ¶ 42 (citing Ex. 2006). Merriam-
Webster Dictionary is not a technical dictionary and Mr. Loudon has not
shown persuasively that it is otherwise specialized for the automotive
industry. Additionally, the example provided by Mr. Loudon of brakes
failing during a skid satisfies some of the definitions in the dictionary, such
as omission of performance and falling short.
Furthermore, Mr. Loudon’s assertion that “component failure” is
reserved for describing components that require either repair or replacement
is contrary to the ’501 patent specification. In particular, the ’501 patent
describes a case in which “the situation causing the failure might be
corrected.” Ex. 1001, 26:15–20. A particular example given in the ’501
patent is rollover of a vehicle. Id. at 26:15–25 (“[a] rollover of a vehicle
may be preventable through the proper application of steering torque and
wheel braking force”).
Mr. Loudon also relies on deposition testimony of Toyota’s expert,
Mr. Scott Andrews. Ex. 2001 ¶ 42 (citing Ex. 2002, 42:20–43:7). Mr.
Andrews testified that failure of a component “[g]enerally [] means that the
component is not performing within its set performance boundaries.” Ex.
2002, 43:5–7. Mr. Andrews uses the word “generally,” which indicates that
other possibilities exist. AVS did not ask Mr. Andrews if he agrees with Mr.
Loudon’s statements regarding claim construction. Additionally, Mr.
Andrews provided a declaration consistent with Toyota’s contentions. Ex.
1007.
IPR2013-00416
Patent 8,019,501 B2

12

We, therefore, decline to read into the claims either (1) a requirement
that failure not be attributed to driver error or (2) a requirement that a failure
involve a component or subsystem that must be repaired or replaced.
For the reasons given, we construe “failure of one of the components
or subsystems” as a state of inability of one of the components or
subsystems to perform a function that the component or subsystem is
designed to perform. We determine that the broadest reasonable
interpretation of failure in light of the specification of the ’501 patent
includes failures attributable to the manner in which an operator operates a
vehicle and failures that are correctable without repair or replacement.
4. “informing . . . about the predicted failure”
AVS contends that Probst does not disclose “informing the user,
owner, dealer, or manufacturer of the vehicle about the predicted failure,” as
recited in claim 1. PO Resp. 25 (emphasis omitted). AVS additionally
argues that informing those at remote locations about the predicted failure
requires transmission of larger file sizes that would be needed to transmit
fault codes. PO Resp. 44. To evaluate AVS’s contentions, we construe
“informing . . . about the predicted failure.”
A dictionary definition of “inform” is “[t]o impart information to;
make aware of something.” Inform Definition, The American Heritage
Dictionary of the English Language (2011) available at
http://search.credoreference.com/content/entry/hmdictenglang/inform/0 (last
visited Oct. 9, 2014) (Ex. 3001). The specification of the ’501 patent
describes informing of the predicted failure consistent with this dictionary
definition. For example, the ’501 patent specification describes that
informing may be in the form of a “message” (Ex. 1001, 19:29–33) or a
IPR2013-00416
Patent 8,019,501 B2

13

“fault code” (id. at 124:36). Additionally, the exemplary communication
devices described in the ’501 patent specification used for informing include
well-known technologies that would make the recipient aware of the
predicted failure, such as “a cellular telephone system” (Ex. 1001, 4:3) and
“an Internet-enabled device possessed by an owner of the vehicle, e.g., a
PDA or the like” (id. at 4:8–13).
For the reasons given, we construe “informing the user, owner, dealer,
or manufacturer of the vehicle about the predicted failure” as making the
user, owner, dealer, or manufacturer of the vehicle aware of the predicted
failure. We determine that the broadest reasonable interpretation of
“informing . . . about the predicted failure” in light of the specification of the
’501 patent encompasses sending a message or a fault code that is used to
bring about the awareness. Additionally, we note that “informing . . . about
the predicted failure” does not require transmitting either the predicted
failure or a pattern used to predict the failure.
5. Other Terms
In the Decision, we construed “component” as a part or an assembly
of parts, less than the whole. Dec. 9. For the purposes of this inter partes
review, AVS does not contest our construction of “component.” PO Resp.
11.
In the Decision, we said the term “sensor” possesses its ordinary and
customary meaning, as would be understood by one with ordinary skill, and
does not require an express construction. Dec. 11. We also explained that
the term “sensor” includes each of the sensors particularly identified in the
specification of the ’501 patent. Id. For the purposes of this inter partes
IPR2013-00416
Patent 8,019,501 B2

14

review, AVS does not contest our construction of “component.” PO Resp.
11.
In the Decision, we said that the term “signal” does not require an
express construction, but that, in light of the specification, “signal” covers
examples in the ’501 patent such as time-varying outputs from components
including electrical, acoustic, thermal, electromagnetic radiation or
mechanical vibration. Dec. 11. For the purposes of this inter partes review,
AVS does not contest our construction of “component.” PO Resp. 11.
For each of these claim terms, we discern no reason, based on the
complete record now before us, to change our constructions thereof.
B. Alleged Anticipation of Claims 1, 6–8, 17, and 18 by Probst
Toyota contends that claims 1, 6–8, 17, and 18 are unpatentable as
anticipated, under 35 U.S.C. § 102(b), by Probst. Pet. 24–34. We have
reviewed Toyota’s anticipation argument and supporting evidence, including
Probst’s disclosure, the declaration of Mr. Scott Andrews (Ex. 1007), and
the detailed claim charts appearing on pages 27–34 of the Petition.
The claim charts persuasively read all elements of each of claims 1,
6–8, 17, and 18 onto the disclosure of Probst. Despite the counter-
arguments in AVS’s Patent Owner Response, and the evidence cited therein,
which we also have considered, Toyota has shown, by a preponderance of
the evidence, that each of claims 1, 6–8, 17, and 18 is unpatentable as
anticipated by Probst.
1. Probst
Probst discloses determining operating conditions of a motor vehicle
from output signals of a sensor. Ex. 1003, 1:9–12. Figure 1 is reproduced
below:
IPR2013-00416
Patent 8,019,501 B2

15

Figure 1 illustrates a diagram of supplying sensor data directly and in
parallel to analyzers for evaluation. Id. at 1:12–14.
As shown in Figure 1, Probst discloses that pressure sensor P sends its
output in the form of variable alternating voltage U via circuit connections to
each of analog-to-digital converter 1, Fast-Fourier transformation analyzer 2,
fundamental frequency analyzer 3, and energy content/frequency band
analyzer 4, so that each of the analyses carried out by the analyzers is
performed in parallel with the operation of analog-to-digital converter 1.
Ex. 1003, 3:9–27. Each of analog-to-digital converter 1, Fast-Fourier
transformation analyzer 2, fundamental frequency analyzer 3, and energy
content/frequency band analyzer 4 sends its output to pattern generator 5.
Id. at 3:27–29.
Pattern generator 5 generates a current pattern using the analyzed and
converted sensor data. Ex. 1003, 3:26–29. Pattern generator 5 furnishes the
current pattern via a circuit connection to pattern comparator 10. Id. at
5:22–29. In accordance with one embodiment, pattern comparator 10
IPR2013-00416
Patent 8,019,501 B2

16

compares the current pattern received from pattern generator 5 to the preset
comparative patterns received from pattern memory 6 using image-
comparing techniques. Id. at 5:25–28. Pattern comparator 10 determines
whether the current pattern is in conformity with a preset pattern
corresponding to an operating condition of a motor vehicle. Id. at 5:54–59.
Pattern comparator 10 determines whether the operating condition of the
vehicle is an imminent critical operating condition. Id. If so, pattern
comparator 10 initiates warning and remedial measures via circuit
connections to intervention device 9, as well as speech generator 11. Id. at
5:66–6:5.
2. Whether Probst Meets the Limitations of Claims 1, 6–8, 17, and 18
Toyota’s claim charts persuasively read all elements of each of claims
1, 6–8, 17, and 18 onto the disclosure of Probst. Pet. 27–34 (citing Ex.
1003, Abstract, 1:10–29, 1:45–54, 1:67–2:29, 2:42–48, 3:9–15, 4:25–68,
5:30–37, 6:6–15, Fig. 1). For instance, claim 1 recites a method for
predicting impending failures. As Toyota correctly asserts, Probst is
directed to a process for determining the operating condition of a vehicle,
including “imminent critical operating conditions.” Pet. 25-26 (citing Ex.
1003, Abstract). Additionally, claim 1 requires analyzing detected patterns
in obtained sensor data to create a prediction of an impending failure of one
of the components or subsystems. Toyota correctly notes that Probst’s
diagnostic process entails generating a pattern based on sensor signals and
comparing this pattern with preset patterns to determine when the limit
pattern for a critical operating condition is approached. Id. at 26 (citing Ex.
1003, Abstract; col. 1, ll. 36-54; col. 2, ll. 24-30; col. 4, ll. 62-68; col. 5, ll.
22-59; col. 6, ll. 19-29). Exemplary sensor data that is monitored includes a
IPR2013-00416
Patent 8,019,501 B2

17

pressure sensor that determines loading of a chassis spring of the motor
vehicle. Id. at 28 (citing Ex. 1003, 1:67–2:7). Regarding recitation in claim
1 of informing the user about the predicted failure, Toyota also correctly
notes that Probst describes warning a user of the vehicle. Pet. 26, 31-32
(citing Ex. 1003, col. 1, ll. 24-29; col. 2, ll. 42-46; col. 4, ll. 62-68).
We address AVS’s counter-arguments in turn. AVS acknowledges
that Probst discloses detecting dangerous conditions and determining that a
critical operating condition is approaching. PO Resp. 15. AVS, however,
contends that Probst discloses predicting critical operating conditions of only
the vehicle as a whole, rather than on the component or subsystem level. PO
Resp. 16.
AVS’s contention is not commensurate with the scope of claim 1.
Claim 1 recites, “to create a prediction of an impending failure of one of the
components or subsystems.” Requiring a prediction of an impending failure
of one of the components or subsystems does not exclude the possibility of
impending failure of other components or subsystems. Note that
independent claim 1 recites the term “comprising,” which is a term of art
meaning that the named elements are essential, but other elements also may
be included to constitute additional components within the scope of the
claim. See Genentech, Inc., 112 F.3d at 501. Indeed, the preamble of claim
1 recites, “[a] method for predicting impending failures in one or more of a
plurality of components or subsystems” (emphasis added). Nothing in claim
1 can be read reasonably as prohibiting failure of all components and
subsystems of a vehicle. Furthermore, claim 1 does not recite “component
or subsystem level,” as AVS contends. PO Resp. 16 (emphasis added).
IPR2013-00416
Patent 8,019,501 B2

18

In support of its contention that Probst discloses predicting critical
operating conditions of only the vehicle as a whole, AVS cites to examples
of vehicle instability, including “a tipping or out-of control vehicle.” Id.
Even in the example described by AVS, the tipping vehicle has a wheel not
making adequate contact with the road surface, i.e., omission of
performance. The wheel is a component of the vehicle.
AVS additionally argues that Probst discloses corrective actions to be
taken, which do not indicate necessarily that any component or subsystem
“failed.” PO Resp. 16. Nevertheless, claim 1 recites creating “a prediction
of an impending failure” (emphasis added), and does not require that a
component or subsystem has already failed. Indeed, claim 1 further recites
“informing . . . to enable corrective action to be taken before the predicted
failure occurs.”
AVS additionally contends that Probst does not disclose a prediction
of a failure of a component or subsystem because the term “failure” does not
encompass ineffective operation due to driver error, and in the automotive
industry the term “component failure” is reserved for describing components
that require repair or replacement. PO Resp. 17–19. For the reasons
discussed above regarding claim construction, we are not persuaded by these
contentions.
AVS contends that Probst also does not disclose “informing the user,
owner, dealer, or manufacturer of the vehicle about the predicted failure,” as
recited in claim 1. PO Resp. 25 (emphasis omitted). AVS acknowledges
that Probst informs the driver via an acoustical warning and display. Id. at
25–26. AVS, however, contends that these warnings are “non-specific” and
IPR2013-00416
Patent 8,019,501 B2

19

do not constitute informing the driver of “the ‘predicted failure.’” Id.
(emphasis omitted).
As discussed above, we construe “informing the user, owner, dealer,
or manufacturer of the vehicle about the predicted failure” as making the
user, owner, dealer, or manufacturer of the vehicle aware of the predicted
failure. As Toyota correctly points out, Probst describes “it becomes
possible to trigger in time, warning and display measures for a critical
operating condition.” Pet. 31 (citing Ex. 1001, 2:24–29); see also Pet. 32
(citing Ex. 1001, 4:62–68) (“The countermeasures to be initiated may now,
in a conventional way, consist of an intervention into the engine or brake
control or may . . . include an indication to the user of the vehicle as to when
the operating condition of the motor vehicle approaches a critical
condition.”). We, therefore, are persuaded that Toyota has shown by a
preponderance of the evidence that Probst discloses “informing the user,
owner, dealer, or manufacturer of the vehicle about the predicted failure,” as
recited in claim 1.
Each of claims 6–8, 17, and 18 depend from claim 1. Toyota’s claim
charts persuasively read all elements of each of dependent claims 6–8, 17,
and 18 onto the disclosure of Probst. Pet. 32–34 (citing Ex. 1003, Abstract,
2:24–29, 2:42–46, 4:62–68, 5:30–37). Accordingly, even after considering
the counter-arguments in AVS’s Patent Owner Response, and the evidence
cited therein, we find Toyota has shown, by a preponderance of the
evidence, that each of claims 1, 6–8, 17, and 18 is unpatentable as
anticipated by Probst.
IPR2013-00416
Patent 8,019,501 B2

20

C. Alleged Obviousness of Claims 1, 4–10, 17, and 18 over Scholl
and Probst
Toyota contends that claims 1, 4–10, 17, and 18 are unpatentable,
under 35 U.S.C. § 103(a), as obvious over Scholl and Probst. Pet. 20–23,
34–37, 40–43. We have reviewed Toyota’s obviousness argument and
supporting evidence, including the disclosures of Scholl and Probst, the
declaration of Mr. Scott Andrews (Ex. 1007), and the claim charts on pages
20–23 and the detailed analysis appearing on pages 34–37 and 40–43 of the
Petition.
As discussed in the previous section, Probst anticipates independent
claim 1, as well as dependent claims 6–8, 17, and 18. Regarding AVS’s
contentions relating to the alleged deficiencies of Probst with respect to
independent claim 1, as Toyota correctly notes, Scholl discloses explicitly
detecting faults that are not attributable to the manner in which an operator
operates a vehicle and require repair or replacement of a component. Pet.
16–17 (citing Ex. 1002, 1:14–18, 1:30–31, 3:18–20, 4:17–25, 6:5–10, 6:15–
23, Fig. 8).
Regarding the dependent claims not discussed in the previous section,
the claim charts and detailed analysis read all additional elements of each of
claims 4, 5, 9, and 10 onto the disclosure of Probst and Scholl, taken
together. Pet. 20–23 (citing Ex. 1002, 1:14–18, 1:30–31, 2:40–47, 2:58–3:6,
3:13–17, 6:15–23). Additionally, as discussed below, we determine that in
its Petition (Pet. 42 (citing Ex. 1007 ¶¶ 121–124)), Toyota has 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. See KSR Int’l Co. v. Teleflex Inc., 550
IPR2013-00416
Patent 8,019,501 B2

21

U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)).
AVS states that we determined in the Decision that “Scholl does not
disclose ‘prediction’ using an analysis of ‘detected patterns.’” PO Resp. 26.
That is incorrect. In that connection, the Decision relates to Scholl’s
statement that conditions recognized using detected patterns “may lead to
future problems” (Ex. 1002, 4:17–18 (emphasis added)) and to the fact that
claim 1 recites “analyzing, using a processor on the vehicle, the detected
patterns to create a prediction of an impending failure of one of the
components or subsystems” (emphasis added). Dec. 26. The shortcoming
of Scholl we noted regarding anticipation of independent claim 1 of the ’501
patent does not impact our decision with respect to dependent claims 4, 5, 9,
and 10. Claims 4, 5, 9, and 10 of the ’501 patent recite generic and well-
known limitations relating to transmitting information, including
communicating or informing someone remote, a communications unit, or a
telecommunications system, all of which are taught in Scholl.
Despite the counter-arguments in AVS’s Patent Owner Response, and
the evidence cited therein, which we also have considered, Toyota has
shown, by a preponderance of the evidence, that each of claims 1, 4–10, 17,
and 18 is unpatentable, under 35 U.S.C. § 103(a), as obvious over the
combination of Scholl and Probst.
1. Scholl
Scholl discloses generating, by a vehicle, a set of data relating to the
vehicle’s operation. See Ex. 1002, 2:58–59. An embodiment is illustrated in
Figure 3, reproduced below:
IPR2013-00416
Patent 8,019,501 B2

22

As shown in Figure 3, diagnostics 308, prognostics 304, and models
302 are implemented on monitor 210 on the vehicle. Ex. 1002, 3:47–53.
Data is generated on the vehicle by sources including sensors and electronic
control modules (ECM). Id. at 3:20–22. That data is received by models
302, prognostics 304, and diagnostics 308. Id. at 3:18–21, Fig. 3.
Management Information Manager 306 is connected to the data sources, as
well as prognostics 304 and diagnostics 308, to receive the prognostics code
data, diagnostics codes data, and model data and to prepare them for
transmission via satellite communication network 212 for expert
interpretation 310. Id. at 3:58–60, Fig. 3.
2. Whether Toyota Has Satisfied the Requirements for Combining Scholl
and Probst
As indicated above, we determine that Toyota has 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. See KSR, 550 U.S. at 398. Additionally,
IPR2013-00416
Patent 8,019,501 B2

23

in light of the contentions and evidence presented by Toyota, we find that
modifying Probst’s disclosure of indicating to the user of the vehicle when
the vehicle approaches a critical condition with Scholl’s disclosure of
transmitting indications of faults to a remote location is no more than a
predictable use of familiar prior-art elements according to their established
functions, therefore rendering the recited invention obvious. See KSR, 550
U.S. at 417.
In particular, Toyota relies on the declaration of its expert, Mr.
Andrews, who states that one of ordinary skill in the art at the time of the
invention would have been motivated to use Scholl’s satellite transceiver
with Probst’s failure prediction system. Pet. 42 (citing Ex. 1007 ¶¶ 121–24).
Mr. Andrews states that Scholl explains that transmissions to dealers,
manufacturers, and owners allow for maintenance, generation of repair
instructions, or the development of future diagnostics and prognostics by a
vehicle manufacturer. Ex. 1007 ¶ 122 (citing Ex. 1002, 1:12–18, 2:58–68,
6:55–60). Mr. Andrews also states that one of ordinary skill in the art would
have understood in June 1995 that Probst’s warning measures could extend
to transmission of information relating to predicted failures to remote
entities. Id. ¶ 124.
We find that the testimony of Toyota’s expert is consistent with the
disclosure of Scholl and Probst. For example, Mr. Andrew’s testimony
regarding Scholl’s explanation of benefits for transmitting to dealers,
manufacturers, and owners is consistent with the disclosure of Scholl. See,
e.g., Ex. 1002, 6:56–60 (“[T]he present invention provides a method for
relaying information between a vehicle and a remote location . . . [that] is
used to perform diagnostics and prognostics, to generate repair instructions,
IPR2013-00416
Patent 8,019,501 B2

24

and in the development of future diagnostics and prognostics.”).
Additionally, we credit Mr. Andrews’s testimony (Ex. 1007 ¶ 124) because
modifying Probst’s disclosure of warning measures (Ex. 1003, 4:62–68)
with Scholl’s disclosure of transmitting indications of faults to a remote
location (Ex. 1002, 4:8–26) is no more than a predictable use of familiar
prior art elements according to their established functions, therefore
rendering the recited invention obvious. See KSR, 550 U.S. at 417.
The ’501 patent does not purport to relate to advancements in
transmission mediums between vehicles and remote locations. Claims 4, 5,
9, and 10 of the ’501 patent recite generic and well-known limitations
relating to transmission, including communicating or informing someone
remote, a communications unit, or a telecommunications system. The ’501
patent specification describes well-known technologies for implementing
these transmission including “a cellular telephone system” (Ex. 1001, 4:2–3)
and “an Internet-enabled device possessed by an owner of the vehicle, e.g., a
PDA or the like” (id. at 4:8–13; see also id. at 111:54–60 (describing
communications unit 404 communicating to a wireless ISP as “known to
those skilled in the art.”)).
AVS contends that three legal principles of obviousness preclude
invalidity based on the combination of Scholl and Probst: (a) that the
combination would change improperly the principle of operation of Scholl,
(b) that there would have been no reasonable expectation of success, and
(c) that Scholl teaches away from the combination. PO Resp. 28.
Additionally, AVS states that significant evidence of secondary
considerations shows that the challenged claims of the ’501 patent would not
have been obvious. PO Resp. 48. We address each of these below.
IPR2013-00416
Patent 8,019,501 B2

25

a. Whether the Combination of Scholl and Probst Would Change
Improperly the Principle of Operation of Scholl
AVS contends that modifying Scholl to include pattern recognition
and on-board failure prediction, as required by claim 1 would change
fundamentally the principle of operation of Scholl. PO Resp. 28–30. AVS
relies on its expert, Mr. Loudon, who states, “Scholl intentionally utilizes
what Toyota characterizes as less ‘robust’ processing on the vehicle, and
intentionally off-loads performing any prediction off of the vehicle by an
expert.” PO Resp. 32 (citing Ex. 2001 ¶ 51). Mr. Loudon cites to the
Decision, which refers to statements by Toyota’s expert, Mr. Andrews. Ex.
2001 ¶ 51 (citing Dec. 24).
AVS’s expert incorrectly characterizes Mr. Andrews’s statements.
Mr. Andrews states that one of ordinary in the art as of June 1995 would
have been motivated to add the specific pattern detecting and pattern
analysis of Probst to Scholl’s failure prediction system because it provides
“a similar, but more robust, system of impending failure detection” as
compared to the system taught in Scholl. Ex. 1007 ¶ 107. Furthermore, as
AVS’s expert, Mr. Loudon, acknowledges (Ex. 2001 ¶ 51), Mr. Andrews
states that one of ordinary skill in the art would have considered the specific
pattern detection/analysis of Probst to be interchangeable with other failure
prediction methods, including the method employed by Scholl (Ex. 1007
¶ 108).
Mr. Loudon, additionally, cites to two excerpts of Scholl. Ex. 2001
¶ 51 (citing 1002, 1:65–68, 1:55–60). In the first excerpt, Scholl describes
reducing information sent by the vehicle by stating, “[i]n one aspect of the
present invention a method for reducing the amount of information relating
to the status of a vehicle being relayed to a remote location over a
IPR2013-00416
Patent 8,019,501 B2

26

communication data link is provided.” Ex. 1002, 1:65–68 (emphasis
omitted). In the second excerpt, Scholl similarly describes reducing
transmitted information by stating that “communication services are
expensive” so “it is desirable to reduce the amount of information that is
required to be transferred while providing relevant information when
needed.” Id. at 1:55–60. Reducing information is not the same as off-
loading performing any prediction. Indeed, Scholl also states, “[s]ome of
this information may be used on board the vehicle to perform low level
diagnostics.” Id. at 1:24–25.
Additionally, as Toyota correctly points out (Pet. 10–24), Scholl
describes an embodiment in which diagnostics and prognostics on the
vehicle (Ex. 1002, 3:48–53, Fig. 3) analyze data about the operation of the
vehicle (id. at 2:58–59) and generate fault indications (id. at 4:8–26). In
particular, Scholl describes an application involving vehicles having a
system with monitor 210, which is “microprocessor based.” Id. at 3:18–20.
Scholl also describes “one embodiment” in which “diagnostics, prognostics
and/or models are implemented on [] monitor 210.” Id. at 3:48–53; see also
id. at Fig. 3 (illustrating prognostics 304 and diagnostics 308 implemented
on monitor 210). Scholl explains that “diagnostics produce a fault code,”
which is “an indication of a particular fault” (id. at 4:11–16), and
“prognostics 304 analyze data in order to detect conditions that may lead to
future problems” (id. at 4:17–18). According to Scholl, these systems
reduce downtime of vehicles by preventing certain breakdowns. Id. at 1:14–
17.
We, therefore, are not persuaded that the combination of Scholl and
Probst would change improperly the principle of operation of Scholl.
IPR2013-00416
Patent 8,019,501 B2

27

b. Whether One of Ordinary Skill in the Art Would Have Had a
Reasonable Expectation of Success in Making the Modification
AVS contends that Toyota fails to provide any argument or evidence
that there would have been any reasonable expectation of success in adding
the pattern recognition concepts of Probst to Scholl. PO Resp. 30, 41–43.
As discussed above, we are persuaded that Toyota has provided sufficient
rationale for making the combination.
AVS additionally contends that one of ordinary skill in the art would
not have had a reasonable expectation of success of adding pattern detection
capabilities to Scholl because Probst and Scholl “relate to such different
things.” PO Resp. 31 (citing Ex. 2001 ¶¶ 52–53). Toyota’s expert, Mr.
Andrews, on the other hand, states that Scholl and Probst are in the same
field of monitoring and diagnostic systems and methods intended to detect
and predict the failure of vehicle components. Ex. 1007 ¶ 123.
Upon consideration of the parties’ arguments and supporting
evidence, we credit the testimony of Toyota’s expert over that of AVS’s
expert. See, e.g., Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010)
(holding that Board has discretion to give weight to one item of evidence
over another “unless no reasonable trier of fact could have done so”). For
instance, we find that the testimony of Toyota’s expert that Scholl and
Probst are in the same field is consistent with the disclosures of Scholl and
Probst. Compare Ex. 1002, 2:58–59 (“[each of] vehicles 104, 106 generate
a set of data relating to its operation”); id. at 3:18–22 (“[e]ach truck 202,
204, 206 includes a monitor 210 . . . [which] is microprocessor based [and]
receives data from . . . sensors and electronic control modules”), and id. at
3:48–53 (“each vehicle 104, 106 may include . . . diagnostics 308, and/or
prognostics 304 . . . [which] are implemented on [] monitor 210”), with
IPR2013-00416
Patent 8,019,501 B2

28

Ex. 1003, 1:9–12 (“The present invention relates to a process for
determining operating conditions of a motor vehicle from output signals of a
sensor for a relevant operating variable.”); see also Ex. 1003, Abstract
(“[A]n n-dimensional [] pattern is generated[,] is compared with preset
patterns[,] and permits a simple and fast analysis of the current operating
conditions and a fast recognition of an imminent critical operating
condition.”).
AVS further contends that this case is like Liberty Mutual Ins. Co. v.
Progressive Casualty Ins. Co., CBM2013-00003, slip op. at 20–21 (PTAB
Mar. 15, 2013) (Paper 11) (“the Liberty Mutual Decision”). PO Resp. 32–
33. In particular, AVS argues that Toyota has not shown how pattern
detection from Probst could be incorporated into Scholl. Id.
In this case, we are persuaded that Toyota provides sufficient
evidence and explanation to support a showing of how pattern detection
from Probst could be incorporated into Scholl. For example, Toyota’s
expert identifies using Scholl’s satellite transceiver in Probst’s failure
prediction system. Ex. 1007 ¶ 121. As Toyota’s expert notes, Scholl
describes that the satellite transceiver directs codes relating to predicted
vehicle component failures to a dealer, manufacturer, or vehicle owner. Id.
AVS, in reliance on its expert, Mr. Loudon, further contends that it
would not have been obvious to add a transmitter to Probst because persons
in the industry did not believe the transmission technology to be advanced
enough. PO Resp. 44–46 (citing Ex. 2001 ¶ 59). AVS bases its contention
on an argument that large file sizes would need to be transmitted. AVS does
not explain persuasively why large file sizes or more than a fault code would
need to be transmitted. Nonetheless, as discussed above, we are persuaded
IPR2013-00416
Patent 8,019,501 B2

29

that Toyota has provided a sufficient showing that adding a transmitter to
Probst would have been obvious.
We, therefore, are not persuaded that one of ordinary skill in the art
would not have had a reasonable expectation of success in making the
proposed modification.
c. Whether Scholl Teaches Away from Adding Pattern Detection and
On-board Processing for Failure Prediction
AVS contends that Scholl teaches away from performing pattern
detection and on-board failure prediction on a vehicle. PO Resp. 35–36
(citing Ex. 2001 ¶ 54). AVS additionally contends that Scholl teaches away
from transmitting anything more than fault codes. PO Resp. 40–41 (citing
Ex. 2001 ¶ 58).
To constitute properly a teaching away, the teaching must be
evaluated from a technological perspective, not merely a comparative
perspective. See, e.g., Syntex (U.S.A) LLC v. Apotex, Inc., 407 F.3d 1371,
1380 (Fed. Cir. 2005) (“Under the proper legal standard, a reference will
teach away when it suggests that the developments flowing from its
disclosures are unlikely to produce the objective of the applicant’s
invention.” (citing In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994))).
In contrast to AVS’s contention that Scholl teaches away from
performing pattern detection and on-board failure prediction on a vehicle,
Scholl describes an embodiment in which pattern detection is processed
onboard a vehicle to be used in predicting failures. In particular, Scholl
describes having microprocessor-based monitor 210 (Ex. 1002, 3:18–20)
and implementing diagnostics 308 and prognostics 304 on monitor 210 (id.
at 3:48–53; see also id. at Fig. 3 (illustrating prognostics 304 and diagnostics
IPR2013-00416
Patent 8,019,501 B2

30

308 implemented on monitor 210)). Scholl further describes that
“prognostics 304 may be adapted to look at the rate change of specific
parameters.” Id. at 4:22–25. As discussed above, we construe “pattern” as a
frequency of occurrences of certain data present in a set of data, a rate of
change of data, or a trend of data. We, therefore, are not persuaded that
Scholl teaches away from performing pattern detection and on-board failure
prediction on a vehicle.
Scholl’s description of also sending data to “a location where it can be
used more fully” (id. at 1:33–35), such as sending it to an expert to generate
repair instructions (id. at 4:66–68), simply provides additional uses for the
data. Alternate embodiments also are not a teaching away. In re Fulton,
391 F.3d 1195, 1200 (Fed. Cir. 2004) (“Thus, a finding that the prior art as a
whole suggests the desirability of a particular combination need not be
supported by a finding that the prior art suggests that the combination
claimed by the patent applicant is the preferred, or most desirable,
combination.”).
Similarly, Scholl’s indication that communications services are
expensive is not sufficient to show a teaching away. Scholl acknowledges
the desirability of “providing relevant information when needed.” Ex. 1002,
1:60. Furthermore, as discussed with respect to claim construction, we
determine that the broadest reasonable interpretation of “informing . . . about
the predicted failure” in light of the specification of the ’501 patent
encompasses sending a message or a fault code that is used to bring about
awareness of the predicted failure. Scholl’s disclosure of transmitting a fault
code, therefore, is within the scope of informing about the predicted failure
and is not a teaching away.
IPR2013-00416
Patent 8,019,501 B2

31

We, therefore, are not persuaded by AVS’s contentions that Scholl
teaches away from the combination.
d. Secondary Considerations
AVS, in reliance on its expert, contends that evidence of secondary
considerations shows that the challenged claims of the ’501 patent would not
have been obvious. PO Resp. 48 (citing Ex. 2001 ¶¶ 62–67).
First, AVS’s expert, Mr. Loudon, states that evidence of failure of
others and unexpected results support his opinions of non-obviousness.
Ex. 2001 ¶¶ 62–64 (citing Ex. 1002, 1:24–32). Mr. Loudon cites to Scholl
as an example, which states that “[d]ue to on-board computing power
limitations and the lack of operator expertise in using this information to
diagnose the vehicle and its systems, the information is more useful off-
board the vehicle.” Ex. 2001 ¶ 64 (citing Ex. 1002, 1:24–32). As discussed
above, Scholl describes having microprocessor-based monitor 210 (Ex.
1002, 3:18–20) and implementing diagnostics 308 and prognostics 304 on
monitor 210 (id. at 3:48–53; see also id. at Fig. 3 (illustrating prognostics
304 and diagnostics 308 implemented on monitor 210)). Alternate
embodiments and additional uses for data are not persuasive evidence of
failed attempts or unexpected results.
Second, Mr. Loudon states that other commentators noted limitations
in the ability of 1990s vehicle computers to conduct on-board diagnosis and
taught away from performing on-board complex computing calculations.
Ex. 2001 ¶ 65 (citing Ex. 2004). Although Mr. Loudon refers to “[o]ther
commentators,” Mr. Loudon does not provide evidence of a widespread
effort, but instead cites to a single reference written by Mr. Ken Scott. Id.
The reference relates to diagnosis “to the level of detail needed for the
IPR2013-00416
Patent 8,019,501 B2

32

service technician to repair [the vehicle]” (Ex. 2004, 29), not to complex
computing calculations, as Mr. Loudon suggests. Ex. 2001 ¶ 65 (citing
Ex. 2004). Additionally, Mr. Loudon has not identified any claim that
recites “complex computing calculations” (Ex. 2001 ¶ 65) or “to the level of
detail needed for the service technician to repair [the vehicle]” (Ex. 2004,
29). Furthermore, the reference on which Mr. Loudon relies describes a
commercial consideration of cost, rather than technical limitations as Mr.
Loudon suggests. See Ex. 2001 ¶¶ 65–66 (citing Ex. 2004). Moreover, Mr.
Loudon has not provided persuasive evidence of comparable cost
effectiveness of the technology of the ’501 patent.
Third, Mr. Loudon states “[s]imilarly, Derek Wright wrote in 1990
that computer processing power was not yet sufficient for combining on-
board processing and communications technology.” Ex. 2001 ¶ 66 (citing
Ex. 2005, 249). This reference, cited by Mr. Loudon, describes the
availability of commercial products (Ex. 2005, 249), rather than technical
limitations as Mr. Loudon suggests. Additionally, Mr. Loudon’s assertion
involves an incorrect characterization of the reference. In particular, Mr.
Loudon states that the reference explains that computer processor power was
insufficient to combine on-board and communications technology. Ex. 2001
¶ 66 (citing Ex. 2005, 249). However, that reference describes that on-board
computing was sufficient for combining types of applications similar to
those referred to by Mr. Loudon (Ex. 2005, 244–248), such as exemplary
integrated systems that communicate on-board processed data (id. at 247–
248). Mr. Loudon’s statements pertain to a description of an application
integrating vehicle generated data with “data from the road” (Ex. 2005, 249),
IPR2013-00416
Patent 8,019,501 B2

33

which refers to intelligent highway systems including vehicle location and
navigation systems (id. at 240, 246).
For the reasons given in this section and above, we are not persuaded
by Mr. Loudon’s statements regarding secondary considerations.
Additionally, the evidence presented by AVS and Mr. Loudon is not directed
to failure of others or unexpected results. Neither AVS nor Mr. Loudon has
shown persuasive evidence that others have attempted, tried, and endeavored
to make the recited technology of the claims, but despite their efforts have
failed. Instead, Mr. Loudon discusses what was not present or not made,
which is different than what was tried but unable to be made. Also, neither
AVS nor Mr. Loudon has identified what was unexpected about the
developments of AVS, with respect to the technology of the challenged
claims.
Neither AVS nor Mr. Loudon has attempted to present evidence of
secondary considerations with respect to any particular claim. We will not
attempt to ascertain which secondary considerations evidence corresponds to
which claims. Furthermore, neither AVS nor Mr. Loudon has shown
persuasively a nexus between the claimed invention and the secondary
considerations. See, e.g., Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299,
1311–12 (Fed. Cir. 2006).
e. Conclusions Regarding Obviousness
As discussed above, we determine that Toyota has satisfied KSR’s
requirements for combining the technique of directing predicted failure
information through a satellite transceiver, as described in Scholl, into the
failure prediction system of Probst. See KSR, 550 U.S. at 418. We have
considered the totality of the evidence, both for and against obviousness, to
IPR2013-00416
Patent 8,019,501 B2

34

arrive at our determination. Despite the counter-arguments in AVS’s Patent
Owner Response, and the evidence cited therein, which we also have
considered, Toyota has shown, by a preponderance of the evidence, that
each of claims 1, 4–10, 17, and 18 is unpatentable, under 35 U.S.C. § 103(a),
as obvious over the combination of Scholl and Probst.
III. CONCLUSION
We conclude that Toyota has demonstrated by a preponderance of the
evidence that (1) claims 1, 6–8, 17, and 18 are unpatentable, under
35 U.S.C. § 102(b), as anticipated by Probst, and (2) claims 1, 4–10, 17, and
18 are unpatentable, under 35 U.S.C. § 103, as obvious over the combination
of Scholl and Probst.
This is a final written decision of the Board under 35 U.S.C. § 318(a).
Parties to the proceeding seeking judicial review of this decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.
IV. ORDER
For the reasons given, it is
ORDERED that claims 1, 4–10, 17, and 18 of U.S. Patent No.
8,019,501 are determined by a preponderance of the evidence to be
unpatentable; and
FURTHER ORDERED that, because this is a final written decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

IPR2013-00416
Patent 8,019,501 B2

35

For PETITIONER:

A. Antony Pfeffer
Thomas R. Makin
KENYON & KENYON LLP
apfeffer@kenyon.com
tmakin@kenyon.com
ptab@kenyon.com

For PATENT OWNER:

Thomas J. Wimbiscus
Scott P. McBride
MCANDREWS HELD & MALLOY, LTD.
twimbiscus@mcandrews-ip.com
smcbride@mcandrews-ip.com