Autel Robotics USA LLC

Patent Trials and Appeals Board

May 13, 2020

IPR2019-00249 (P.T.A.B. May. 13, 2020)

Trials@uspto.gov Paper 29
Tel: 571-272-7822 Date: May13, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

SZ DJI TECHNOLOGY CO., LTD.,
Petitioner,
v.
AUTEL ROBOTICS USA LLC,
Patent Owner.

IPR2019-00249
Patent 7,979,174 B2

Before ERICA A. FRANKLIN, JENNIFER MEYER CHAGNON, and
AVELYN M. ROSS, Administrative Patent Judges.

ROSS, Administrative Patent Judge.
JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)

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I. INTRODUCTION
SZ DJI Technology Co., Ltd. (“Petitioner”) filed a Petition requesting
inter partes review of claims 1–8 of U.S. Patent No. 7,979,174 B2
(Ex. 1001, “the ’174 patent”). Paper 2 (“Pet.”). Autel Robotics USA LLC
(“Patent Owner”) did not file a preliminary response to the Petition. See
37 C.F.R. § 42.107(b) (2018) (setting the due date for filing a preliminary
response).
Upon consideration of the Petition and the evidence of record, we
determined that Petitioner had demonstrated a reasonable likelihood that it
would prevail with respect to at least one claim of the ’174 patent. Paper 6
(“Dec.”). Thus, we instituted review of all challenged claims on all grounds.
See Dec.
Following institution of trial, Patent Owner filed a Patent Owner
Response (Paper 12, “PO Resp.”), Petitioner filed a Reply (Paper 18,
“Reply”), and Patent Owner filed a Sur-reply (Paper 20, “Sur-reply”).
In support of their respective positions, Petitioner relies on the testimony of
Dr. Alfred Ducharme (Ex. 1003), and Patent Owner relies on the testimony
of Dr. Charles F. Reinholtz (Ex. 2001).
An oral hearing was held on February 19, 2020, and a transcript of the
hearing is included in the record (Paper 28, “Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons discussed below, we determine that Petitioner has shown by
a preponderance of the evidence that claims 1–8 of the ’174 patent are
unpatentable.
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A. Related Proceedings
Petitioner identifies SZ DJI Technology Co. Ltd. v. Autel Robotics
USA LLC, C.A. No. 16-706-LPS-CJB (D. Del.) and Certain Unmanned
Aerial Vehicles and Components Thereof, Inv. No. 337-TA-113 (USITC,
instituted Sept. 26, 2018) as related matters. Pet. 1. In addition to the
matters identified by Petitioner, Patent Owner identifies a separate petition
for inter partes review of the ’174 patent, concurrently filed with the above-
captioned matter, and assigned case number IPR2019-00250. Paper 5
(Mandatory Notice), 2. Concurrently with this Decision, we issue a final
written decision in IPR2019-00250, which addresses different claims of the
’174 patent.
B. The ’174 Patent
The ’174 patent relates to an autonomous vehicle including a control
system having sensors that, in response to sensed conditions, adjusts the
movement and speed of the vehicle. Ex. 1001, 2:1–10. Petitioner provides
modified Figure 1 (Pet. 9), shown below, to illustrate the prominent features
of the ’174 patent.
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Figure 1, above, is a block diagram of a system for providing automatic
planning and regulation of the speed of autonomous vehicles which
Petitioner has annotated to highlight the various elements and to indicate the
output and input of “desired speed.” Ex. 1001, 2:14–16. In particular,
system 100 includes one or more sensors 102 (green) for gathering data,
which depend on the type of autonomous vehicle being used, and may
include sensors collecting “data regarding speed limit zones, road
conditions, tire pressure, etc.” Id. at 2:57–67. Speed planner 104 (light
blue) and path planner 108 (yellow) receive input data from the sensors to
calculate the desired speed for a planned path. Id. at 3:18–25. Speed
controller 101 (purple) then generates a speed command that provides
signals to one or more actuators 106 (red) to adjust the vehicle speed
according to the desired speed. Id. at 7:4–10. Actuators, depending on the
type of autonomous vehicle, may include “disc brakes, steering column, gas
pedal, etc.” Id. at 7:12–14. The speed planner may also output a speed
command category that “indicates why the desired speed was selected,” and
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the speed command category may be selected based on certain movement
constraints. Id. at 8:24–44, 3:44–45. Certain constraints are given more
weight (i.e., a “higher priority”) than others. Id. at 3:46–48. For example,
collision avoidance has a higher priority than maintaining a certain speed.
Id.
C. Illustrative Claim
Claim 1, claiming an autonomous vehicle, is the only independent
claim of the ’174 patent challenged in the instant proceeding. Claim 1 is
reproduced below:
1. An autonomous vehicle comprising:
one or more sensors configured to obtain data regarding
conditions which affect movement of the autonomous vehicle;
a speed planner coupled to the one or more sensors and
configured to calculate a desired speed based, at least in part, on
the data obtained from the one or more sensors;
a control system configured to calculate speed commands
based, at least in part, on the speed calculated by the speed
planner; and
one or more actuators configured to adjust the speed of the
autonomous vehicle based on the speed commands from the
control system;
wherein the speed planner is further configured to output
a speed command category associated with the desired speed.
Ex. 1001, 9:38–53.
D. Instituted Grounds of Unpatentability
We instituted trial to determine whether claims 1–8 of the ’174 patent
would have been obvious1 in view of the following grounds of
unpatentability:

1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
125 Stat. 284, 287–88 (2011), revised 35 U.S.C. § 103, effective March 16,
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Claim(s)
Challenged
35 U.S.C. § Reference(s)/Basis
1, 2, 4–7 103(a) Andersson2, Urmson3
3 103(a) Andersson, Urmson,
Augenbraun4
6 103(a) Andersson, Urmson,
Mandow5
8 103(a) Andersson, Urmson,
Fregene6
1, 2, 4–7 103(a) Andersson, Urmson, Ahmed-
Zaid7
3 103(a) Andersson, Urmson, Ahmed-
Zaid, Augenbraun
6 103(a) Andersson, Urmson, Ahmed-
Zaid, Mandow
8 103(a) Andersson, Urmson, Ahmed-
Zaid, Fregene

2013. Because the application from which the ’174 patent issued was filed
before this date, the pre-AIA version of § 103 applies.
2 Andersson et al., US 6,836,719 B2, issued December 28, 2004
(“Andersson”) (Ex. 1004).
3 Urmson et al., A Robust Approach to High-Speed Navigation for
Unrehearsed Desert Terrain, 23(8) J. Field Robotics 467 (2006) (“Urmson”)
(Ex. 1008).
4 Augenbraun et al., US 2007/0061040 A1, published March 15, 2007
(“Augenbraun”) (Ex. 1005).
5 Mandow et al., Dynamic Speed Planning for Safe Navigation,
1 Proceedings of the 1997 IEEE/RSJ Int’l Conf. on Intelligent Robot and
Sys. Innovative Robotics for Real-World Applications IROS 97, 231 (Sept.
1997) (“Mandow”) (Ex. 1009).
6 Fregene et al., US 2007/0078600 A1, published April 5, 2007 (“Fregene”)
(Ex. 1006).
7 Ahmed-Zaid et al., US 6,968,266 B2, issued November 22, 2005 (“Ahmed-
Zaid”) (Ex. 1007).
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Dec. 6–7, 19–20.
II. ANALYSIS
A. Level of Ordinary Skill in the Art
Relying on the testimony of Dr. Ducharme, Petitioner contends that
one of ordinary skill in the art at the time of invention “would have had at
least an undergraduate degree in robotics or computer engineering, or
equivalent knowledge, training, or experience, with at least two years of
experience working with the design and development of autonomous devices
or speed control systems for autonomous speed adjustment.” Pet. 17;
Ex. 1003 ¶¶ 19–20 (same).
Although Patent Owner acknowledges that claims are interpreted from
the perspective of one having ordinary skill in the art (PO Resp. 7), Patent
Owner does not argue for any particular level of ordinary skill in the art in
the Patent Owner Response. See generally PO Resp. Dr. Reinholtz,
however, testifies that “a person of ordinary skill in the art (‘POSA’) at the
time of the invention of the ’174 patent would have a Bachelor’s degree in
engineering or computer science and would have had at least two years of
experience developing control systems for electromechanical systems,
including autonomous vehicles,” and that “[a]dditional education could
substitute for professional experience and significant work experience could
substitute for formal education.” Ex. 2001 ¶ 27.
Upon review of the arguments set forth by Drs. Ducharme and
Reinholtz, we adopt Dr. Reinholtz’s description of one of ordinary skill in
the art, as it is consistent with the prior art of record and persuasively
considers how the necessary level and type of education may be offset by
work experience in the relevant field. We observe that neither party
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contends that the difference in education and experience level offered by
Drs. Ducharme and Reinholtz would have any impact on the parties’
arguments or conclusions in this case. We agree with the parties and note
that our conclusions in this Decision do not depend on which proposed
definition is applied.
B. Claim Construction
In this inter partes review, claim terms in an unexpired patent are
construed according to their broadest reasonable interpretation in light of the
specification of the patent in which they appear. 37 C.F.R. § 42.100(b)
(2018).8 In determining the broadest reasonable construction, we presume
that claim terms carry their ordinary and customary meaning. See In re
Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). A patentee
may define a claim term in a manner that differs from its ordinary meaning;
however, any special definitions must be set forth in the specification with
reasonable clarity, deliberateness, and precision. See In re Paulsen, 30 F.3d
1475, 1480 (Fed. Cir. 1994).
In their briefing, the parties dispute the meaning of two claim
phrases—(1) speed commands and (2) speed command category. See
Pet. 17–20; PO Resp. 7–12. Patent Owner additionally identifies “minimum
safe speed” and “constraints” as terms for construction. PO Resp. 12–15.

8 A recent amendment to this rule does not apply here, because the Petition
was filed before November 13, 2018. See Changes to the Claim
Construction Standard for Interpreting Claims in Trial Proceedings Before
the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018)
(amending 37 C.F.R. § 42.100(b) effective November 13, 2018) (now
codified at 37 C.F.R. § 42.100(b) (2019)). At the time of the filing of the
Petition in this proceeding, the applicable claim construction standard was
set forth in 37 C.F.R. § 42.100(b) (2018).
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Petitioner proposes that “speed command category” means
“information output by the speed planner that ‘indicates why the desired
speed was selected’” and that “speed commands” means “commands or
signals to adjust the vehicle’s speed.” Pet. 17–18, 20. Patent Owner
proposes the following constructions:
“speed commands” to mean “commands relating to the speed of
the autonomous vehicle”;

“speed command category” to mean “information reflecting the
reason for the desired speed”;

“minimum safe speed” to mean “desired speed for the vehicle
when obstacles are present”; and

“constraint(s)” to mean “a limit that generally cannot be
violated.”
PO Resp. 7–15.
We discern little difference between the parties’ respective
constructions. Further, during the hearing, both parties expressed a general
view that claim construction was unlikely to affect the parties’ positions.9
Tr. 8:11–13, 9:13–15, 14:11–12, 15:2–4, 28:18–19, 43:3–12, 45:20–22; see
also Reply 2 (asserting that “the challenged claims are unpatentable even
under Patent Owner’s constructions”). Only terms that are in controversy
need to be construed, and then only to the extent necessary to resolve the

9 The parties disagree as to what is required for the prior art to teach an
“autonomous vehicle,” but notably, neither party requested construction of
that term in their respective briefs. See generally Pet.; PO Resp. We
address the interpretation of the term “autonomous vehicle” below to the
extent necessary to resolve the dispute raised by the parties’ substantive
arguments.
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controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs., Inc. v. Am. Sci.
& Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) in the context of an inter
partes review). We determine that none of the identified claim terms require
construction to resolve the issues in dispute in this proceeding.
C. Principles of Law
To prevail in its challenges to the patentability of the claims,
Petitioner must demonstrate by a preponderance of the evidence that the
challenged claims are unpatentable. 35 U.S.C. § 316(e) (2012); 37 C.F.R.
§ 42.1(d). “In an [inter partes review], the petitioner has the burden from
the onset to show with particularity why the patent it challenges is
unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
petitions to identify “with particularity . . . the evidence that supports the
grounds for the challenge to each claim”)). This burden of persuasion never
shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in
inter partes review).
A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
differences between the claimed subject matter and the prior art are such that
the subject matter, as a whole, would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations, including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;
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(3) the level of ordinary skill in the art; and (4) if in the record, objective
evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18
(1966). Consideration of the Graham factors “helps inform the ultimate
obviousness determination.” Apple Inc. v. Samsung Elecs. Co., 839 F.3d
1034, 1048 (Fed. Cir. 2016) (en banc). To prevail in an inter partes review,
Petitioner must explain how the proposed combinations of prior art would
have rendered the challenged claims unpatentable.
At this final stage, we determine whether a preponderance of the
evidence of record shows that the challenged claims would have been
rendered obvious in view of the asserted prior art. We analyze the asserted
grounds of unpatentability in accordance with these principles.
D. Obviousness of Claims 1, 2, and 4–7 in view of Andersson and
Urmson, alone or in combination with Ahmed-Zaid
Petitioner contends the subject matter of claims 1, 2, and 4–7 would
have been obvious over the combined disclosures of Andersson and Urmson,
alone or in further combination with Ahmed-Zaid. Pet. 20, 65.
1. Andersson
Andersson discloses systems and methods for manually or
autonomously controlling vehicle speed. See Ex. 1004, 2:32–34, 3:15–18,
4:29–30. Andersson explains:
[T]he method may also comprise the steps of extracting, from a
plurality of sensors, sensor information regarding obstacles on or
in [the] vicinity of said road section, and generating, based on
information from the input connection, the map database, the
driver information database, and the sensor information, a speed
plan for the current and/or upcoming road section.
Id. at 2:41–47. The speed plan is generated in speed plan generator 12. Id.
at 4:24–26. The speed plan is sent to a control device that, in turn, controls
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brake control unit 9 and throttle control unit 10, in accordance with the
speed plan. Id. at 3:16–19, 3:58–4:2. Andersson also includes a route
planner that enables the speed planner to generate “a speed plan for the
entire route . . . , thereby estimating mean speed, travel time, fuel
consumption and so on.” Id. at 6:26–30. Figure 2, reproduced below, is
illustrative of one embodiment of Andersson.

Figure 2, above, is a “block diagram disclosing certain preferred additional
functions of the block diagram in accordance with [Figure 1].” Id. at 3:27–
29. The system of Figure 2 includes controller 1, computer 2, and speed
plan generator 12. Id. at 3:33–4:28. Information from map database 3,
driver preference database 4, and input port 5 (which receives positioning
signals 11) is used to generate a speed plan that is transmitted to vehicle
control system 8. Id. at 4:6–34. Additionally, sensor input from
environmental sensors 15 may be included as input to speed plan generator
12. Id. at 5:43–47. Environmental sensors 15 may include “radar sensors,
[infrared (“IR”)] sensors or a camera,” and can be used to detect “light
conditions, visibility, and road friction.” Id. at 5:47–50. System controller 8
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is “connected with [sic] brake control unit 9 and/or an engine control unit
such as throttle control unit 10” in order to enable autonomous control of the
vehicle. Id. at 3:15–19, 3:58–4:2.
2. Urmson
Urmson describes autonomous vehicles, their hardware and software,
and modes of operation. See Ex. 1008, 468–469. The vehicles of Urmson
are equipped with sensors, such as light detecting and ranging (“LIDAR”)
and radio detecting and ranging (“RADAR”) systems and SICK laser
measurement sensors (“LMS”) to sense terrain and vehicle position. Id. at
476–479. The Urmson vehicles have “[o]nboard navigation software [that]
combines incoming sensor data with a preplanned route to generate a new
safe and traversable route.” Id. at 479, Fig. 9. These sensors also send
desired speed information to a speed controller which operates the throttle
and brakes to adjust speed accordingly. Id. at 475. Urmson includes a speed
planner that “operates on the output of the geometric planner and pre-
emptively slows the robot for any sharp turns that may result when the
geometric planner generates a plan to avoid obstacles.” Id. at 488.
3. Ahmed-Zaid
Ahmed-Zaid describes an adaptive cruise control system that controls
the speed of a vehicle. See Ex. 1007, 1:15–19, 3:24–32. Ahmed-Zaid’s
system includes a controller that “generates a predicted future path profile”
“in response to the object profile [from detection system 28] and the
navigation signal,” and “inhibits resume speed of the automotive vehicle in
response to the predicted future path profile.” Id. at 2:35–40. Each of the
“object profile, the yaw rate, the speed of the vehicle 22, and the navigation
signal determines an operating mode of the system 20.” Id. at 4:14–16.
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Ahmed-Zaid describes several operational modes, including “follow mode,
cruise mode, auto resume mode, or inhibit resume mode,” that adjust the
speed of the vehicle based on certain conditions. Id. at 4:17–18. The
“follow mode,” for example, continuously adjusts the vehicle speed so that
the vehicle maintains a certain distance from a vehicle traveling ahead. Id.
at 4:18–22. In an auto resume mode or inhibit resume mode, the vehicle
either resumes acceleration or prevents acceleration based on sensor
information that indicates whether an object is detected in the future path of
the vehicle. Id. at 2:28–58, 4:24–26.
4. Analysis of Claim 1
Petitioner contends that claim 1 would have been obvious over the
combination of Andersson and Urmson. Pet. 20. Alternatively, Petitioner
contends that claim 1 would have been obvious over the combination of
Andersson, Urmson, and Ahmed-Zaid. Id. at 65. Petitioner’s alternative
position—that Ahmed-Zaid describes a “speed command category”—was
presented in the event Patent Owner argued the term requires both why and
how the actuators adjust the vehicles speed. Id. at 65–66. Neither party
proposes such a construction. PO Resp. 28. Therefore, we do not address
this alternative position.
Claim 1 is directed to an autonomous vehicle that includes (1) one or
more sensors that obtain data that affects the movement of the vehicle; (2) a
speed planner that calculates the desired speed based on data from the
sensors; (3) a control system that calculates speed commands based on the
speed calculated by the speed planner; (4) one or more actuators that adjust
the speed of the vehicle based on speed commands received from the control
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system; and (5) where the speed planner outputs a speed command category
associated with the desired speed. Ex. 1001, 9:38–53.
Relevant to claim 1, Petitioner contends that Andersson describes an
autonomous vehicle.10 Pet. 21 (citing Ex. 1004, 2:32–34, 3:15–19, 3:67–4:1,
4:28–33).11 According to Petitioner, the vehicle of Andersson has a plurality
of sensors, including a position sensor, a compass, steering angle sensor,
yaw sensor, wheel speed sensor, radar sensors, IR sensors, or a camera. Id.
at 21–23 (citing Ex. 1004, 2:40–42, 3:38, 5:43–51, 6:32–37, Fig. 2; Ex. 1003
¶ 82). Petitioner argues that Andersson has a speed plan generator,
corresponding to the claimed speed planner, that “‘extract[s], from a
plurality of sensors, sensor information regarding obstacles on or in vicinity
of said road section’ and then ‘generat[es], based on … the sensor
information, a speed plan for the current and/or upcoming road section.’”
Id. at 23–25 (quoting Ex. 1004, 2:40–47; citing Ex. 1004, 2:64–66, 3:56–60,
4:26–28, Fig. 2; Ex. 1003 ¶ 86, n.6).12
Petitioner explains, however, that Andersson “lacks specific details
about how the sensor inputs are used to generate the desired speeds,” but
“Urmson discloses just such specific equations or algorithms . . . for
calculating a desired speed,” and “use[s] the same or similar inputs as

10 The term “autonomous vehicle” appears both in the preamble and the
body of claim 1. See Ex. 1001, 9:38–54. We need not decide for purposes
of this Final Written Decision whether the preamble is limiting, because we
determine that Petitioner has shown that the recitation of “an autonomous
vehicle” is satisfied by the prior art.
11 Petitioner also alleges that Urmson discloses “an autonomous vehicle” as
claimed. Pet. 21 n.7.
12 Petitioner further contends Urmson discloses sensors, i.e., LIDAR and
RADAR, used to detect obstacles. Pet. 23 n.8.
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described in Andersson.” Id. at 25–26. Petitioner explains that the speed
planner of Urmson performs a “first pass [that] walks the path in the forward
direction and sets a maximum speed at each point” on the path and then
performs “a ‘second pass [that] walks from the last point to the first point
and limits the change in velocity so that it is constrained by [equation] (4).’”
Id. at 26–27. Petitioner reasons that a person of ordinary skill in the art
would have been “motivated to look to another reference disclosing details
for calculating speeds, such as Urmson,” in light of the teachings of
Andersson. Pet. 27–28 (citing Ex. 1008, 490–91; Ex. 1003 ¶¶ 93–94).
Petitioner further reasons that use of “Urmson’s algorithms would
make Andersson’s system safer, more reliable, and more comfortable for
passengers.” Id. at 28 (citing Ex. 1008, 490; Ex. 1003 ¶¶ 93–94). Petitioner
also alleges that Andersson describes a vehicle control system (system
controller 8) that receives the speed plan and calculates the speed
commands, i.e., signals to adjust the vehicle’s speed, based on the speed
plan. Id. at 30–31 (citing Ex. 1004, 3:57–4:2, Fig. 2; Ex. 1003 ¶¶ 98–99).
Petitioner acknowledges, however, that Andersson fails to describe
the details of how system controller 8 calculates speed commands, but
explains that Urmson similarly teaches a speed controller, which is a piece
of software that compares a “measured speed” against a “speed error” and
then adjusts the engine or break controllers according to the commands
received. Id. at 32–33 (citing Ex. 1008, 475, Fig. 9; Ex. 1003 ¶¶ 105–108).
Petitioner explains that “[a person having ordinary skill in the art
(PHOSITA)] reviewing Andersson’s disclosure would thus be motivated to
look to another reference disclosing specific details for calculating speed
commands based on a desired speed, such as Urmson,” for the reasons stated
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above. Id. at 33 (relying on Petition Section VIII(A)(1)(b) and citing
Ex. 1003 ¶¶ 105–108).
Petitioner also asserts that Andersson describes a “brake control unit”
and a “throttle control unit,” which correspond to the “one or more
actuators” as claimed. Id. at 34–36 (citing Ex. 1004, 3:64–4:2, 5:14–16,
Fig. 2; Ex. 1003 ¶¶ 112–114). Petitioner similarly argues that Urmson’s
controller commands actuators to adjust the speed of the vehicle as claimed
by the ’174 patent. Id. at 36–37 (citing Ex. 1008, 474–475, Fig. 9; Ex. 1003
¶ 115).
Lastly, Petitioner urges that Andersson provides a speed plan category
providing information about why the desired speed is selected. Id. at 37. In
particular, Petitioner draws attention to Andersson’s teaching that combines
two modes of operation, which “display[s] speed changes on the display unit
6, in order to inform the driver of up-coming speed changes.” Id. at 38
(quoting Ex. 1004, 4:2–5; citing Ex. 1004, 3:60–65, 5:14–20, Fig. 2). In one
example, display unit 6 “reads ‘Slow down!,’ ‘Dangerous curve ahead,’
and ‘Recommended speed 25 mph.’” Id. (quoting Ex. 1004, Fig. 2) (citing
Ex. 1003 ¶ 123).
Patent Owner’s arguments regarding claim 1 focus on three
purportedly missing elements and the lack of a motivation to combine the
references. See PO Resp. 24–32. After reviewing the parties’ briefing and
evidence of record, we are persuaded by Petitioner’s arguments and
supporting evidence for the undisputed limitations of claim 1 as summarized
above. Accordingly, we determine that Petitioner has established by a
preponderance of the evidence that each of the limitations of claim 1 not
challenged by Patent Owner are present in the combination of Andersson
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and Urmson. See In re NuVasive, 841 F.3d 966, 974 (Fed. Cir. 2016)
(explaining that the Board need not make specific findings as to claim
limitations that Patent Owner does not dispute are disclosed in the prior art).
We address Patent Owner’s specific arguments below.
a. whether Andersson discloses an “autonomous
vehicle”
Patent Owner contends that Andersson does not disclose an
autonomous vehicle, but rather “relates to cruise control technologies and
has a driver present at all times.” PO Resp. 24. Patent Owner asserts that
the ’174 patent describes vehicles that are capable of maneuvering and
navigating without the presence of a driver, such that an autonomous
vehicle, as understood by the ’174 patent, “control[s] both steering and
speed.” Id. Patent Owner argues that because Andersson relates only to
cruise control technology—and not to steering—it describes a very different
vehicle than that claimed by the ’174 patent. Id. at 24–25.
In weighing the evidence before us, we disagree with Patent Owner’s
arguments. Based on our review of the arguments and evidence of record,
we determine that the term “autonomous vehicle” may include varying
levels of autonomy, and that although it may include both speed and steering
control, it does not require the presence of both as Patent Owner urges (PO
Resp. 24). This understanding is consistent with Specification of the ’174
patent, which refers to autonomous vehicles embodied in the ’174 patent
exclusively in the context of speed control. See Ex. 1001, 2:1–10, 2:40–4,
3:29–50, 3:58–4:2, 4:3–5, 4:29–33, 5:1–11, 5:51–55, 6:4–7, 6:15–20, 8:23–
27, 8:65–9:7, 9:18–22, Figs. 1, 4. For example, the ’174 patent explains that
[c]onventional path planning algorithms, however, do not
inherently indicate the speed at which the vehicle should traverse
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the path. By automatically providing appropriate speed targets
that are safe, feasible and achievable by the autonomous vehicle
during path traversal, embodiments of the present invention
enable an autonomous vehicle to complete tasks safely and
quickly.
Id. at 2:43–49 (emphasis added). According to Patent Owner, the ’174
patent’s statement that an autonomous vehicle is “capable of navigating and
maneuvering without human control,” “needs to determine the
characteristics of its environment required to enable it to carry out the task it
has been assigned,” and “needs to plan and follow a path to its destination
while detecting and avoiding obstacles” supports its contention that
autonomous vehicles require both speed and steering control. Id. at 1:53–61;
PO Resp. 24; Sur-reply 4; Ex. 2001 ¶ 78. However, this lone statement,
describing the goals of the Defense Advanced Research Projects Agency
(“DARPA”) Grand Challenge—not the embodiments of the ’174 patent—is
insufficient to convey to the skilled artisan that the term autonomous vehicle
in the context of the ’174 patent requires only full autonomy (i.e., a system
comprising both speed and steering control). Because we find that the
claimed autonomous vehicle does not require full autonomy, we determine
that Andersson’s teaching of an adaptive cruise control system based on both
sensor input and database information is sufficient to teach an autonomous
vehicle.13

13 As we observed in our Decision on Institution (Dec. 12 n.4), Petitioner
argues that Urmson, in addition to Andersson, describes an “autonomous
vehicle.” Pet. 21 n.7 (citing Ex. 1008, 468–469); Ex. 1003 ¶ 78 n.4 (same).
Patent Owner does not address Petitioner’s assertion. See generally PO
Resp. Rather, Patent Owner, as well as Dr. Reinholtz, describe Urmson as
an autonomous vehicle. PO Resp. 18; Ex. 2001 ¶¶ 65–68.
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Therefore, having considered the record evidence and arguments
advanced, we determine that Petitioner has demonstrated by a
preponderance of the evidence that an “autonomous vehicle” is taught or
suggested by Andersson.
b. whether the combination of Andersson and Urmson
teaches or suggests a “speed planner”
Patent Owner also asserts that “neither Andersson nor Urmson
disclose or render obvious element 1[b], which requires a speed planner that
‘calculates a desired speed based, at least in part, on sensor input.’” PO
Resp. 25. According to Patent Owner, Petitioner’s argument that the person
skilled in the art “would have understood that generating a speed plan based
on sensor information would result in Andersson’s speed plan generator
performing at least one calculation” must fail because “Andersson’s
selection of user defined speeds requires no calculation” and because
“Petitioner’s position falls far short of the standard for inherency, which
requires inevitability.” Id. Patent Owner also argues that “[b]ecause
Urmson calculates speeds in advance, its calculations are not based on
sensor input as recited in element 1[b].” Id. at 26.
We are persuaded by Petitioner’s evidence and argument. Andersson
teaches that its speed plan generator is responsible for generating or
calculating the speed plan transmitted to the vehicle system controller and is
responsible for engaging the brake control unit or the engine control unit.
Ex. 1004, 2:59, 3:15–19, 3:54–4:34, 6:28–30. Andersson describes a
combination of inputs including information from environmental sensors, a
map database, a driver information database, and positioning systems as
information fed into the speed plan generator. Id. at 1:8–10, 2:42–46, 2:52–
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53, Fig. 2. Andersson explains that the sensor data, which may include
“information regarding obstacles on or in the vicinity of said road section,”
may be used in combination with other input data to generate a speed plan
for “the current and upcoming road section[s].” Id. at 2:41–47. As a result,
the speed plan generated by the speed plan generator may account for
“temporary circumstances or objects not present in the map database.”14 Id.
at 2:47–49. Dr. Ducharme testifies that
Andersson’s speed plan generator must perform one or more
calculations to interpret the data from the sensors (e.g., data
regarding current vehicle position and speed) in order to
calculate a desired speed (e.g., a speed that is 5 mph less than the
current speed). Indeed, even simple adjustments, such as
increasing the vehicle’s speed to a higher preferred speed or
decreasing the vehicle’s speed to a lower preferred speed,
necessarily require[s] calculations (i.e., addition and subtraction,
respectively).
Ex. 1003 ¶ 88. We credit Dr. Ducharme’s unrebutted testimony in this
regard.
We acknowledge Dr. Reinholtz’s testimony that Andersson does not
calculate speed because Andersson generates speed using a “neural network
that relates said plurality of map information with said plurality of driver
behavior information.” Ex. 2001 ¶ 85 (emphasis added). Even assuming

14 Dr. Reinholtz testifies that “Andersson at most discloses the use of sensor
data to select a user defined speed,” and therefore does not use sensor data to
calculate the desired speed. Ex. 2001 ¶ 84 (citing Ex. 1004, 5:44–55).
Dr. Reinholtz’s testimony is in relation to use of sensor data relevant to
“factors not directly related to the upcoming road section, but rather to a
driver-vehicle environmental combination” (Ex. 1004, 5:44–48), and does
not account for the use of sensor data to account for temporary
circumstances or unexpected objects in the vehicle path (Id. at 2:41–49).
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arguendo that a neural network—i.e., a network that “attempt[s] to emulate
the human decision-making process by learning to recognize patterns and
make decisions in a humanlike way” (id.)—does not involve performing
calculations as Patent Owner alleges,15 the neural network of Andersson is
part of the computing device and not the speed plan generator responsible
for generating the speed plan. Ex. 1004, 3:9–11 (“[T]he computing device is
suitably realized by means of a neural network.”), 4:47–49 (explaining that
in a preferred embodiment, “the computing device 2 . . . comprises a neural
network unit”). Dr. Reinholtz further testifies that that there is no disclosure
in Andersson to indicate whether the speed plan generator also includes a
neural network. Ex. 1027, 23:12–24:4 (referring to Ex. 1025, 428:21–
429:10). We, thus, determine that Dr. Reinholtz’s testimony regarding
Andersson’s teaching of a neural network does not negate our finding that
Andersson’s speed plan generator calculates a desired speed.
As discussed above, Petitioner relies on Urmson for teaching specific
details of calculating the desired speed. With respect to Petitioner’s reliance
on Urmson’s teachings, we are similarly persuaded that Urmson suggests a
speed planner as claimed. Like Andersson, the speed planner of Urmson “is
responsible for ensuring driving speeds are safe.” Ex. 1008, 490. Urmson
uses onboard sensors to avoid and account for obstacles on the planned
route. Id. at 469, 476 (“LIDAR and RADAR are used to detect obvious
obstacles at long ranges.”), 478. Navigating obstacles is identified as a
principal risk because “[h]itting large obvious obstacles . . . can destroy a

15 There is evidence of record to suggest that a neural network may involve
calculations, in particular by applying “the weighted sum of inputs.”
Ex. 2005; Ex. 1027, 45:21–46:5.
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vehicle.” Id. at 481. Sensor information is fed into the geometric planner
and then to the speed planner. Id. at 480 (Fig. 14). According to Urmson, in
“[t]he first stage, the geometric planner, adjusts the path to avoid
obstacles . . . [and then] [t]he speed planner operates on the output of the
geometric planner and pre-emptively slows the robot for any sharp turns that
may result when the geometric planner generates a plan to avoid obstacles.”
Id. at 488; see also id. at 491 (explaining that the “speed planner will slow
the output path to account for obstacle avoidance”). Urmson makes clear
that its speed plan is not based only on calculations occurring in advance, but
rather, Urmson’s speed planner combines both preplanned and real-time
information to generate a new speed plan. Id. at 479 (“[I]ncoming sensor
data [is combined] with a preplanned route to generate a new safe and
traversable route.” (emphasis added)).
Further, Patent Owner’s additional argument that “Urmson’s ‘Speed
Planner’ operates on the output of Urmson’s ‘Geometric Planner’ [and
therefore] Urmson’s sensors do not input to the ‘Speed Planner’” lack merit.
Sur-reply 9. Patent Owner’s claims do not require direct input of sensor
information into the speed planner; rather, the claims require only that the
speed planner calculate a desired speed based, in part, on data obtained from
one or more sensors.
Accordingly, the weight of the evidence supports a determination that
Petitioner has established by a preponderance of the evidence that the
combination of Andersson and Urmson teaches “a speed planner . . .
configured to calculate a desired speed based, at least in part, on data
obtained from the one or more sensors,” as claimed.
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c. whether Andersson teaches or suggests a “speed
command category”
In addition to the arguments discussed above, Patent Owner asserts
that “none of Andersson, Urmson, and/or Ahmed-Zaid disclose or render
obvious [the] . . . recited ‘speed command category.’” PO Resp. 26.
According to Patent Owner, Andersson does not output a speed command
category as part of the speed plan, but rather, “Andersson explicitly defines
the speed planner output (i.e., the speed plan) as ‘speed, accelerations and
retardations” and nothing in Andersson suggests that the messages displayed
on display unit 6 (illustrated in Figures 1 and 2) are output from the speed
planner. Id. at 27 (citing Ex. 1004, 3:58–4:5).
We are persuaded by Petitioner’s argument and evidence. Figure 2 of
Andersson, reproduced below, illustrates the relevant features relating to the
“speed command category.”

Andersson’s Figure 2, above, is a “block diagram disclosing certain
preferred additional functions” in accordance with one preferred
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embodiment. Ex. 1004, 2:40–49, 3:27–29. In the embodiment of Figure 2,
in addition to sensor data from environmental sensors 15, a driver behavior
model output from computing device 2 is input into speed plan generator 12
to generate a vehicle plan for a current and upcoming road section. Id. at
3:50–57. “The speed plan, containing information regarding preferred
vehicle speed, accelerations and retardations . . . is thereafter inputted to a
mode selector 7,” where the user chooses between a manual drive mode, in
which speed information and recommendations are displayed on unit 6, or
an autonomous control mode where the speed plan is input into system
control device 8 to control braking and acceleration. Id. at 3:58–67.
Andersson explains that it is possible to use both operational modes
simultaneously, such that the upcoming changes may be viewed on display 6
in an autonomous control mode. Id. at 4:2–5; see also id. at 5:14–20 (“[I]n
autonomous speed control mode, . . . an indication of a speed limit condition
and vehicle control actions may be displayed to the driver . . . .”). The speed
plan also includes “information regarding the appropriate changes of the
vehicle speed in order to respond to said driver model,” which is
“transmitted to the manual/automatic mode selector 7, as described above,
and the signal is thereafter transmitted to the vehicle system control device 8
for autonomous speed adaptation and/or the display unit 6, for displaying
appropriate speed alterations to the driver of the vehicle.” Id. at 4:25–34.
Therefore, the speed plan of Andersson includes more than simply vehicle
speed, accelerations, and retardations, as Patent Owner alleges. See id.
2:35–39.
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Therefore, we determine that Petitioner has demonstrated by a
preponderance of the evidence that a “speed command category” is taught or
suggested by Andersson.
d. whether a person ordinarily skilled in the art would
have had reason to combine Andersson and Urmson
Patent Owner contends that the grounds based on Andersson and
Urmson (with or without Ahmed-Zaid) “also fail because there is not
motivation to combine the prior art.” PO Resp. 28. First, Patent Owner
argues that Andersson teaches away from speed calculation and speed
command categories because Andersson “selects speeds using a neural
network, which is not calculating speed to a POSA.” Id. Further, Patent
Owner contends that “Andersson’s disclosure . . . is limited to the display of
information that is not based on sensor input, [and] a POSA would not be
motivated to modify Andersson to calculate speeds or display information
based on sensor input, including speed command categories, because
Andersson does not disclose, teach, or suggest calculation of desired speeds
based on sensor input.” Id. Therefore, according to Patent Owner,
Andersson teaches away from modification. Id.
We do not agree with Patent Owner’s argument that Andersson
teaches away.16 To teach away, a reference must discourage one of ordinary
skill in the art from following the path set out in the reference, or lead that
person in a direction divergent from the path taken by the applicant. In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“[A] reference will teach away if

16 As an initial matter, Patent Owner’s “teaching away” argument simply
repeats the arguments presented (and rejected) above in Sections II.D.2.b.
and c., i.e., Patent Owner’s position that the prior art does not teach a “speed
planner” or a “speed command category,” as claimed.
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it suggests that the line of development flowing from the reference’s
disclosure is unlikely to be productive of the result sought by the
applicant.”). “A reference does not teach away . . . if it merely expresses a
general preference for an alternative invention but does not ‘criticize,
discredit, or otherwise discourage’ investigation into the invention claimed.”
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327
(Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004)). “Silence does not imply teaching away.” Allergan, Inc. v. Apotex
Inc., 754 F.3d 952, 964 (Fed. Cir. 2014). Therefore, the fact that Andersson
exemplifies a neural network—in a preferred embodiment (Ex. 1004, 4:47–
60, 6:7–9)—does not teach away from pursuing the path taken in the ’174
patent. Similarly, Patent Owner’s additional position that because the speed
planner of Andersson does not calculate speeds or output speed command
categories based on sensor input, it teaches away from modifying
Andersson’s system, is unsound. Silence, without more, is not a teaching
away. Allergan, 754 F.3d at 964.
Next, Patent Owner argues that because Andersson and Urmson
address fundamentally different problems, a person of ordinary skill in the
art would not have had reason to combine their teachings. PO Resp. 29.
According to Patent Owner, “Andersson relates to cruise control
technologies and determining speed along route segments,” and Urmson
“relates to autonomous vehicles where route planning leads to path planning,
and both speed and heading (steering angle) must be controlled in
coordination.” Id. Patent Owner explains that because Andersson does not
discuss path planning, “Andersson does not relate to autonomous vehicles
and is a very different technology from Urmson.” Id.
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On this record, we disagree with Patent Owner’s arguments. Whether
Andersson’s teachings are limited to adaptive cruise control systems, as
Patent Owner alleges, is not the inquiry.17 Perfect overlap in technologies is
not required. Rather, one of ordinary skill can use his or her ordinary skill,
creativity, and common sense to make the necessary adjustments and further
modifications to result in a properly functioning device. See KSR, 550 U.S.
at 418 (“[A] court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.”). Furthermore, “if a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill.” See id. at 417.
Here, Andersson’s methods and systems, at a minimum, control
vehicle speed. Ex. 1004, 1:57–59 (“By such a method, it is possible to
generate a speed plan, which may be used to adapt the speed of the vehicle
to the chosen road section in a suitable manner.”), 2:25–32 (“[T]he method
comprises the step of feeding the outputted speed plan to a throttle control
device for controlling the throttle of a vehicle . . . .”), 3:58–4:1 (explaining
that the system control device is “connected with a brake control unit 9
and/or engine control unit such as a throttle control unit 10, for autonomous
vehicle speed control.”). Urmson, similarly, relates to speed control in
addition to steering control. Ex. 1008, 474 (“[S]peed control must be
accurate and responsive as it is constantly being adjusted to ensure vehicle
stability.”), 491 (“[T]he algorithm runs on the output of the planner . . .

17 Patent Owner’s argument based on its assertion that Andersson does not
describe an autonomous vehicle was rejected above in Section II.D.4.a.
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allowing the vehicle to slow for unexpected obstacles.”). Petitioner relies on
Urmson to describe “how the sensor inputs are used to generate the desired
speeds.” Pet. 25 (“[A] PHOSITA . . . would have been motivated to look to
. . . Urmson to find the details for generating the desired speeds, including
specific algorithms used by a speed planner to calculate the desired
speeds.”). Therefore, overlap exists in the teachings of Andersson and
Urmson in the aspect of speed control—the very aspect that is improved by
modifying Andersson to include Urmson’s algorithms in the combination
advanced by Petitioner.
Lastly, Patent Owner argues that Urmson teaches away from a
combination with Andersson “because any combination would only add
complexity without improving functionality.” PO Resp. 30. Here, Patent
Owner relies on the testimony of Dr. Reinholtz, who explains that even
minor alterations to the programming algorithm would result in “wide
ranging impacts on other aspects of the system.” Id. (citing Ex. 2001
¶¶ 119–121). According to Patent Owner, because “Urmson focuses on the
simplicity of the interaction between its Navigation Subsystem and Vehicle
Subsystem” and “[c]alculating desired speeds based on sensor input and
outputting speed command category would only add complexity to
Urmson’s system,” Urmson thus teaches away. Id. (citing Ex. 1008,
sec. 2.2).
Again, we disagree with Patent Owner’s teaching away argument. As
explained above, teaching away requires that the reference “‘criticize,
discredit, or otherwise discourage’ investigation into the invention claimed.”
DePuy Spine, 567 F.3d at 1327. In this case, Patent Owner identifies no
such criticism in Urmson (and we find none) that would have cautioned the
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skilled artisan against pursuing the solution described in the ’174 patent. See
generally PO Resp.; Sur-reply. And while Urmson does discuss the
simplicity of its design, “[t]he fact that the motivating benefit comes at the
expense of another benefit, however, should not nullify its use as a basis to
modify the disclosure of one reference with the teachings of another.
Instead, the benefits, both lost and gained, should be weighed against one
another.” Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8
(Fed. Cir. 2000). Furthermore, Petitioner does not propose to modify
Urmson as Patent Owner suggests. Instead, Petitioner proposes modifying
Andersson with algorithms taught by Urmson. Accordingly, no complexity
is added to Urmson.
Therefore, we determine that Petitioner has demonstrated by a
preponderance of the evidence that each limitation of claim 1 is taught or
suggested by the combination of Andersson and Urmson, and further that the
skilled artisan would have had reason to make the suggested combination
with a reasonable expectation of success.
5. Analysis of Claims 2 and 4–6
With respect to dependent claims 2 and 4–6, Petitioner identifies
where the combination of Andersson and Urmson suggests each limitation
of these claims. Pet. 34–38. Petitioner demonstrates that each of Andersson
and Urmson suggest the autonomous vehicles are “ground vehicles” as
required by claim 2. See id. at 41 (citing Ex. 1004, Abstract, 5:49, 6:36;
Ex. 1008, Fig. 2). Petitioner further demonstrates that Urmson describes a
geometric planner (i.e., path planner) that calculates a planned path and the
speed planner determines the maximum safe speed for points on the planned
path, as required by claims 4 and 5. Id. at 41–46 (citing Ex. 1008, 479, 488,
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490–91, Figs. 14, 25; Ex. 1003 ¶¶ 132, 135–36, 140–41; Ex. 1004, 6:27–31
(describing a route planner to calculate a planned path permit “a speed plan
for the entire route [to] be calculated in advance”)). And, relevant to claim
6, Petitioner shows that Andersson teaches radar sensors, IR sensors, and
cameras, which detect obstacles and that the speed planner of Urmson
ensures safe driving speeds and adjusts to slow the vehicle and swerve
around obstacles. Id. at 46–49 (Ex. 1004, 2:40–47, 3:3–4, 5:49–50; Ex.
1008, 490–491; Ex. 1003 ¶¶ 144, 146, 148–49).
Patent Owner does not substantively address Petitioner’s arguments
with respect to claims 2 and 4–6 in its Patent Owner Response. See
generally PO Resp. Instead, Patent Owner argues that these claims “are
patentable for the same reasons as set forth above with regard to claim 1.”
Id. at 32.
Upon review of the arguments and evidence of record, we determine
that Petitioner has demonstrated by a preponderance of the evidence that
each of the limitations recited in claims 2 and 4–6 are present in or
suggested by the combination of Andersson and Urmson, and that the skilled
artisan would have had reason to make the combination with a reasonable
expectation of success. See NuVasive, 841 F.3d at 974.
6. Analysis of Claim 7
Claim 7 depends from claim 1 and additionally requires that “the
speed planner is configured to calculate a desired speed which does not
cause the autonomous vehicle to violate one or more constraints.” Ex. 1001,
10:7–10. Petitioner contends that Andersson and Urmson (with or without
Ahmed-Zaid) renders claim 7 obvious. Pet. 49–52, 71. Petitioner argues
that both Andersson and Urmson suggest the additional limitation of
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claim 7. Id. at 49–52. In particular, Petitioner alleges that the “driver
models” of Andersson are used to restrict or limit the execution of the speed
plan. Id. at 50 (citing Ex. 1004, 5:25–28). Therefore, because “the speed
plan generator is limited by each user-specific individual driver model, and
consequently, a speed plan would not include speed values that, e.g., differ
from ‘speed a certain driver prefers when entering a curve,’ as doing so
would violate this particular constraint,” Andersson suggests the added
limitation of claim 7. Id. at 50–51 (citing Ex. 1004, 5:25–28, 5:32–34;
Ex. 1003 ¶ 154). Petitioner also alleges that Urmson teaches or suggests this
limitation. Id. at 51. According to Petitioner, Urmson describes a “two-pass
process” where the maximum safe speed is determined for each point on the
path—the first pass constrains the lateral velocity of the vehicle and the
second pass limits rate of change in velocity. Id. (citing Ex. 1008, 491; Ex.
1003 ¶ 155). Petitioner reasons that the skilled artisan would have had
reason to modify the system of Andersson to include constraints suggested
by Urmson because “constraint[s] that limit[] the rate at which speed can
change (i.e., caps acceleration and deceleration) serve[] the important
purpose of preventing dramatic accelerations and decelerations during
vehicle operation, thus improving passenger/driver safety and comfort.” Id.
at 51–52 (citing Ex. 1003 ¶ 156).
In addition to the arguments advanced (and rejected) above for
claim 1, Patent Owner argues that “Andersson does not disclose claim 7,
which requires the speed planner be ‘configured to calculate a desired speed
which does not cause the vehicle to violate one or more constraints.” PO
Resp. 32. Patent Owner explains that Andersson’s use of speed limits and
“what speed a certain driver prefers when entering a curve” is not a “speed
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calculation to avoid violation of a constraint (e.g. to avoid an obstacle),
because it does not effect movement of the vehicle.” Id. Furthermore,
Patent Owner argues that “any speeds selected as part of the speed plan are
not based on sensor input . . . and accordingly, are not speed calculations”
according to the claim. Id. In support of its position, Patent Owner
references Dr. Ducharme’s annotated Figure 2 of Andersson (see Ex. 1003
¶¶ 153–154) and notes that the “constraint” does “not involve sensor input at
all.” Sur-reply 12.
We disagree with Patent Owner’s arguments. To begin, we reject the
suggestion by Patent Owner (id.) that the desired speed must be calculated
exclusively based on sensor input, as such position is inconsistent with the
claims themselves. Ex. 1001, 9:38–53, 10:7–10. Claim 7 requires that the
desired speed is calculated so as not to violate one or more constraints, and
claim 1 explains that the desired speed is calculated “based, at least in part,
on data obtained from one or more sensors.” Id. (emphasis added).
Accordingly, Dr. Ducharme’s testimony identifying Andersson’s “user
specific driver models” as a constraint that is not violated, is consistent with
the requirements of the ’174 patent. Ex. 1003 ¶¶ 154–155 (citing Ex. 1004,
5:25–28, 5:32–34); see also Pet. 50 (same). We also observe that sensor
input may, in fact, be used to create the driver models, i.e., constraints, in
Andersson. Ex. 1004, 5:44–55.
Furthermore, we disagree with Patent Owner’s contention (PO Resp.
32) that the calculated desired speed identified by Petitioner is not based on
a constraint that affects vehicle movement. The ’174 patent describes
“constraints” broadly as limits that generally should not be violated.
Ex. 1001, 3:7–48; see also PO Resp. 14 (describing the plain meaning as “a
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limit that generally cannot be violated”). Constraints include, for example,
speed limits, traffic lights, avoiding obstacles, maintaining valid operating
conditions, distance to obstacles, path curvature, turn radius, and road
conditions. Ex. 1001, 3:36–39, 4:14–16, 7:21–25, 8:28–38. The speed a
driver prefers when entering a turn in Andersson, like the “speed selected to
enforce path curvature constraint” of the ’174 patent, does affect vehicle
movement because it accounts for the “speed a certain driver prefers when
entering a curve, considering factors such as curve radius, speed limits, lane
width, pavement and so on.” Ex. 1004, 5:32–34; Ex. 1003 ¶¶ 152–154. We,
thus, also find that Petitioner has established by a preponderance of the
evidence that Andersson alone satisfies the additional limitation of claim 7.
Lastly, as noted, Petitioner also relies on Urmson (separate from
Andersson) to meet the additional limitation of claim 7. Pet. 51–52. Patent
Owner’s arguments relating to Urmson are solely based on those considered
and rejected above in Section II.D.4.b, regarding the claim 1 recitation of
“speed planner.” See PO Resp. 32; Sur-reply 12–13. We have reviewed the
parties’ briefing and evidence cited therein and are persuaded by Petitioner’s
arguments and supporting evidence regarding Urmson’s teachings in relation
to claim 7. We, thus, also find that Petitioner has established by a
preponderance of the evidence that Urmson alone satisfies the additional
limitation of claim 7. See NuVasive, 841 F.3d at 974.
Therefore, we determine that Petitioner has demonstrated by a
preponderance of the evidence that claim 7 would have been suggested by
the combined disclosures of Andersson and Urmson, and that a person of
ordinary skill in the art would have had reason to make the combination with
a reasonable expectation of success.
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E. Obviousness of Claim 3 in view of Andersson and Urmson, alone
or in combination with Ahmed-Zaid, and with Augenbraun
Petitioner contends the subject matter of claim 3 would have been
obvious over the combined disclosures of Andersson, Urmson, and
Augenbraun, alone or in combination with Ahmed-Zaid. Pet. 53, 71–72. As
discussed above, we do not address the parties’ contentions regarding
Petitioner’s alternative position based additionally on Ahmed-Zaid.
1. Augenbraun
Augenbraun “relate[s] generally to the field of robotic devices, and
more particularly to a multi-function robotic device having utility in various
applications.” Ex. 1005 ¶ 3. “[M]ulti-function robotic device (‘robot’) 100
may generally be characterized by an ability to perform tasks autonomously
or automatically with little or no intervention on the part of a user or
operator.” Id. ¶ 49. Augenbraun describes robots having a body with a
drive mechanism and a functional cartridge, coupled to the body, to operate
“in accordance with the characteristics of the functional cartridge.” Id.
¶¶ 10–12; see also id. ¶¶ 13–14 (same). Embodiments exemplified in
Augenbraun include functional cartridges “to perform a mopping function, a
vacuuming function, or a sweeping function.” Id. ¶ 12. “The body may
further comprise an electronics module to provide instructions to the drive
mechanism to position the robot in an operating environment, and a sensing
apparatus to provide data to the electronics module.” Id. ¶ 10. “The data
may be related to the position of the robot relative to an object in the
operating environment.” Id. The electronics module may include any
suitable electronics “to provide necessary or desired control functions for
robot 100.” Id. ¶ 57. Suitable electronics include “a microprocessor, an
application specific integrated circuit (ASIC), a programmable logic
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36
controller (PLC), an arrangement of field programmable gate arrays
(FPGA), or any other type of processor or addressable memory capable of
providing instructions to influence the behavior of robot 100 or its
components.” Id. The sensor array and a drive mechanism operate under
the control of the electronics module, which “enable[s] robot 100 to navigate
about an operating environment with precision, while avoiding obstacles.”
Id. ¶ 76. The electronics module also signals the drive mechanism to permit
“slowing or speeding one or both motors 241 and 243 as necessary for
desired obstacle avoidance.” Id.
2. Analysis of Claim 3
Claim 3 depends from claim 1 and additionally requires that “the
speed planner is implemented in one of an application specific integrated
circuit or a field programmable gate array.” Ex. 1001, 9:59–61. Petitioner
acknowledges that the combination of Andersson and Urmson fails to
describe the additional limitation of claim 3, i.e., hardware necessary to
implement the speed plan generator. Pet. 53. Petitioner, however, contends
that Augenbraun discloses an electronics module for an autonomous vehicle
that can include any suitable electrical components and exemplifies
implementation as an ASIC or FPGA. Id. (citing Ex. 1005 ¶¶ 57, 60, 76;
Ex. 1003 ¶ 179). Petitioner contends that a person of ordinary skill in the art
at the time of invention would have had reason to combine the teachings of
Andersson and Urmson with that of Augenbraun, because Andersson and
Urmson are silent about the type of hardware used and a person of ordinary
skill would have been “motivated to look to another reference disclosing the
specific hardware details.” Id. at 54 (citing Ex. 1003 ¶ 182). Furthermore,
Petitioner alleges the skilled artisan would have known that
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“implement[ation] on an ASIC or FGPA is a common practice known by
those skilled in the art” and there are limited options for implementing a
computer program. Id. at 54–55 (citing Ex. 1003 ¶ 183).
Patent Owner does not dispute Petitioner’s contention that
Augenbraun describes an electronics module that may comprise an ASIC or
FPGA. See generally PO Resp. 33–34. Rather, Patent Owner contends that
a person of ordinary skill in the art would not have had reason to modify
Andersson or Urmson to include ASIC or FPGA, as suggested by
Augenbraun, and would have no reasonable expectation of success in the
outcome. Id. at 33 (citing Ex. 2001 ¶¶ 123–128, 178–180). Specifically,
Patent Owner states that while “ASICs and FPGAs are lower cost in high
volume and lower power consumption, . . . they require greater design and
programming time, effort and cost,” and “the autonomous vehicles of the
‘174 patent and Urmson as well as the cruise control technologies of
Andersson are not well-suited for such programming.” Id. (citing Ex. 2001
¶¶ 123–128, 178–180). Patent Owner explains that “Andersson and Urmson
themselves each emphasize the importance of simplicity and flexibility.” Id.
(citing Ex. 2001 ¶¶ 123–128, 178–180; Ex. 1004, 1:39–43; Ex. 1008,
Introduction).
We disagree with Patent Owner’s argument that the skilled artisan
would not have had reason to modify Andersson and Urmson to include the
ASICs or FPGAs of Augenbraun. As Dr. Reinholtz testifies, ASICs or
FPGAs have certain advantages, i.e., low cost and low power consumption
that must be weighed against disadvantages including difficulty in
programming time and design. Ex. 2001 ¶¶ 125–126. As our reviewing
court has recognized, “[a] given course of action often has simultaneous
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advantages and disadvantages, and this does not necessarily obviate
motivation to combine.” See, e.g., Medichem, S.A. v. Rolabo, S.L., 437 F.3d
1157, 1165 (Fed. Cir. 2006); Winner Int'l Royalty, 202 F.3d at 1349 n.8.
Patent Owner also argues that a person skilled in the art would not
have had reason to combine Augenbraun with Andersson because
“Augenbraun is directed to an entirely different technological area in that it
involves small, differentially steered floor cleaning robots” where
“Andersson and Urmson, by contrast, involve full-size front-wheel-steered
automobiles.” PO Resp. 34 (citing Ex. 2001 ¶¶ 127–128). We disagree.
Augenbraun embraces certain similarities that are relevant to the
combination with Andersson. Specifically, Augenbraun describes an
electronics module, similar to Andersson’s speed planner, which provides
instructions to the drive mechanism to affect vehicle movement. See Ex.
1005 ¶¶ 10, 13; Ex. 1004, 3:58–4:2. Furthermore, like Andersson,
Augenbraun includes sensors to sense aspects of the operating environment,
including obstacles in the vehicle path, which communicate with the drive
mechanism to adjust progress of the vehicle. Ex. 1005 ¶¶ 60, 66–67, 76
(“[E]lectronics module 220 may provide appropriate signals to drive
mechanism 240, slowing or speeding one or both motors . . . as necessary or
desired for obstacle avoidance . . . .”); Ex. 1004, 2:40–47. Given these
apparent similarities between Andersson and Augenbraun, a person of
ordinary skill in the art would have had reason to look to references
describing hardware and software for autonomous vehicle control systems to
implement a speed planner to provide instructions the drive mechanism.
“[I]f a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
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devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” KSR, 550 U.S. at 417.
Accordingly, we determine that Petitioner has demonstrated by a
preponderance of the evidence that the additional limitation of claim 3
would have been suggested by the disclosures of Andersson, Urmson, and
Augenbraun, and that a person of ordinary skill in the art would have had
reason to make the proposed combination with a reasonable expectation of
success.
F. Obviousness of Claim 6 in view of Andersson and Urmson, alone
or in combination with Ahmed-Zaid, and with Mandow
Petitioner contends the subject matter of claim 6 would have been
obvious over the combined disclosures of Andersson, Urmson, and
Mandow, alone or in combination with Ahmed-Zaid. Pet. 55, 72. As
discussed above, we do not address the parties’ contentions regarding
Petitioner’s alternative position based additionally on Ahmed-Zaid.
1. Mandow
Mandow describes a speed control system for “autonomous mobile
robots,” i.e., vehicles. Ex. 1009, 231 (“The paper addresses the control of
the vehicle’s speed while executing a planned trajectory.”). The disclosed
speed plan includes “speed commands . . . , which have been computed by
considering a number of operational and vehicle speed restrictions.” Id.
These speed restrictions, i.e., speed constraints, impose speed limitations on
the vehicle. Id. Constraints may set a speed based on vehicle operational
parameters, the particular task performed, or dynamic limitations, such as
the presence of unexpected obstacles. Id. In the event of unexpected
obstacles, onboard sensors provide real-time information to “define these
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dynamic speed limitations, which are needed in order to stop the vehicle
smoothly or change its planned speed.” Id.
2. Analysis of Claim 6
Claim 6 depends from claim 1 and additionally requires that “[1] the
one or more sensors are configured to detect obstacles; [2] wherein the speed
planner is configured to calculate the desired speed such that the desired
speed is the maximum safe speed when no obstacles are detected and the
minimum safe speed when obstacles are detected.” Ex. 1001, 10:1–6.
Petitioner argues that Mandow describes or suggests the additional
requirements of claim 6. Pet. 55. In particular, Petitioner argues that
Mandow describes an autonomous vehicle that controls vehicle speed and
includes ultrasonic sensors or radial laser scanners to sense the robot
environment for obstacles and “prevent[] collision with any obstacle which
is actually in the robot’s path.” Id. at 55–56 (citing Ex. 1009, 231, 233, 234,
237, Fig 3). In addition, Petitioner asserts that Mandow discloses a
maximum safe speed where it describes operation “when obstacles have not
yet been detected . . . [and] ‘append[s] a speed component to each posture
of the path’ during the global speed planning process, and more specifically,
assigns a ‘top speed vi’ to each posture of the path based on speed
limitations introduced by vehicle features and operational speed constraints.”
See Pet. 57 (citing Ex. 1009, 232–233, 237; Ex. 1003 ¶ 188). According to
Petitioner, Mandow similarly describes “minimum safe speeds,” as it
explains that the top speed is subject to change when “further speed
constraints are detected through the sensor system.” Id. (quoting Ex. 1009,
233). Petitioner explains that “[w]hen an obstacle is detected, Mandow uses
an ‘unexpected obstacle controller,’ which is part of Mandow’s dynamic
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planner, to slow down the vehicle, and in some instances, stop the vehicle.”
Id. at 57–58 (citing Ex. 1009, 233). Therefore, Petitioner resolves that
Mandow—in slowing or stopping a vehicle when an obstacle is detected—
describes a “minimum safe speed.” Id. at 58 (citing Ex. 1009, 233–234, Fig.
5; Ex. 1003 ¶ 190). Petitioner argues that a person of ordinary skill in the art
would have had reason to combine Mandow’s obstacle sensor and speed
control parameters with the proposed Andersson-Urmson system because
each of Andersson and Urmson describe a speed planner that slows the
vehicle when necessary and the skilled artisan would have looked to another
reference “such as Mandow, that discloses ways to calculate a slowest
possible safe speed (e.g., stopping the vehicle) depending on the presence of
obstacles.” Id. at 59–60 (citing Ex. 1009, 233–234; Ex. 1003 ¶¶ 191–193;
Ex. 1004, 2:40–47; 3:3–4, 3:43–45; Ex. 1008, 490–491).
Patent Owner does not dispute Petitioner’s additional allegations that
Mandow teaches or suggests “one or more sensors are configured to detect
obstacles” or a “speed planner is configured to calculate the desired speed
such that the desired speed is the maximum safe speed when no obstacles are
detected,” as recited in claim 6. Rather, Patent Owner argues only that
Mandow fails to disclose a “speed planner is configured to calculate the
desired speed such that the desired speed is . . . the minimum safe speed
when obstacles are detected” and a lack of a motivation to combine the
references. See PO Resp. 34–35 (emphasis added). Upon review of the
arguments and evidence of record, we are persuaded by Petitioner’s
arguments and supporting evidence for the undisputed aspects of the
additional limitation of claim 6, as summarized above. Accordingly, we
determine that Petitioner has established by a preponderance of the evidence
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that each of the limitation of claim 6 not challenged by Patent Owner are
present in or suggested by the combination of Andersson, Urmson, and
Mandow. See NuVasive, 841 F.3d at 974. We address Patent Owner’s
specific arguments below.
Patent Owner argues18 that Mandow does not suggest a “minimum
safe speed.” PO Resp. 35. Patent Owner further contends that “Petitioner’s
reliance on Mandow’s ‘zero or close to zero’ speed when obstacles are
present is not the ‘minimum safe speed’ as that term would be understood to
a POSA in view of the ‘174 patent.” Id. (citing Ex. 2001 ¶¶ 129–135, 181–
185).
With respect to the “minimum safe speed” recited in claim 6, we are
persuaded by Petitioner’s argument and evidence. The term “minimum safe
speed,” according to the claim, is the desired speed when obstacles are
present. Ex. 1001, 10:1–6; PO Resp. 12–13, 34. Mandow relates to a speed
control system for autonomous vehicles that include on-board sensors to
detect the presence of unexpected obstacles. Ex. 1009, 231–232. Mandow
describes dynamic speed planning where “a basic controller is introduced
that sets a speed command to slow down the vehicle in the presence of
obstacles on the way.” Id. at 233. In addition, Mandow implements safety
rules that allow the robot vehicle to “adapt the speed of the robot to the

18 Patent Owner additionally asserts that “[b]ecause Andersson and Urmson
each do not teach speed calculation based on sensor input, they do not teach
calculation of a minimum safe speed,” as claimed. PO Resp. 34 (citing
Ex. 2001 ¶¶ 102–103). We do not address this argument because Petitioner
does not rely on either of Andersson or Urmson to teach or suggest
calculation of a “minimum safe speed.” See Pet. 55–58 (arguing only that
Andersson and Urmson disclose one or more sensors configured to detect
obstacles), 72–73.
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distance of a moving object driving ahead in the same direction, or to slow
down and stop if a mobile obstacle crosses the robot path.” Id. at 234.
According to Mandow, “[o]ne simple way of coping with obstacles found
unexpectedly on the robot’s way is to adapt its speed according to their
measured distance”—if the obstacle is not removed before it is reached, the
vehicle stops, but if the obstacle is removed, the robot resumes its operating
speed. Id. at 233. Mandow’s rule set is adaptive such that “objects that will
cross a close point in the trajectory after a longer period of time, produce
very slow commands [and] [w]hen more than one obstacle is processed, the
lowest speed reference is considered. Id. at 236. Patent Owner’s position
that “Mandow’s ‘zero or close to zero’ speed when obstacles are present is
not the ‘minimum safe speed’” offers little in the way of explanation. PO
Resp. 35 (citing Ex. 2001 ¶¶ 131–132). Patent Owner cites to the
Declaration of Dr. Reinholtz, however, his testimony is similarly lacking
explanation and is conclusory. Ex. 2001 ¶ 131. Mandow’s disclosure is not
limited to a speed of zero or close to zero but rather embraces the desired
minimum speed when obstacles are present.
Turning to the reason to combine, Patent Owner asserts that “[a]
POSA would further not be motivated to combine Andersson and Urmson
with Mandow . . . because Mandow adds nothing new to Andersson and
Urmson, which both teach the need to reduce speed in certain vehicle
situations” and because “Mandow is directed to autonomous vehicles, a
different technology from Andersson’s cruise control technology.” PO
Resp. 35 (citing Ex. 2001 ¶¶ 133–135, 183).
For the reasons discussed above in Section II.D.4.d., we disagree with
Patent Owner’s arguments relating to the differences between the
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technologies described in Andersson, Urmson, and Mandow. Andersson’s
methods and systems, at a minimum, control vehicle speed. Ex. 1004, 1:57–
59 (“By such a method, it is possible to generate a speed plan, which may be
used to adapt the speed of the vehicle to the chosen road section in a suitable
manner.”), 2:25–32 (“[T]he method comprises the step of feeding the
outputted speed plan to a throttle control device for controlling the throttle of
a vehicle . . . .”), 3:58–4:1 (explaining that the system control device is
“connected with a brake control unit 9 and/or engine control unit such as a
throttle control unit 10, for autonomous vehicle speed control.”). And, like
Urmson, Mandow describes an autonomous vehicle, and in particular,
relates to speed control of that vehicle. Ex. 1009, 231. In particular,
Mandow explains that
[t]he paper addresses the control of the vehicle’s speed while
executing a planned trajectory. The plan incorporates speed
commands for each point dong the path, which have been
computed by considering a number of operational and vehicle
speed restrictions. When the robot is actually performing the
task, these planned speed commands may have to be dynamically
replanned according to run-time restrictions, mainly concerned
with safety, detected through the sensor system.
Id. Petitioner relies on Mandow to describe a speed planner that “calculates
the maximum safe speed when no obstacles are detected” and a “minimum
safe speed (e.g., a slowest possible speed that is safe: zero or close to zero)
when obstacles are detected.” Pet. 57–58. Therefore, overlap exists in the
teachings of Andersson and Mandow in the aspect of speed control—the
very aspect that is improved by modifying the Andersson-Urmson
combination to include dynamic planning system in the combination
advanced by Petitioner. “[I]f a technique has been used to improve one
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device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.” See KSR, 550 U.S. at
417.
Therefore, we determine Petitioner has established by a
preponderance of the evidence that the additional limitation of claim 6 is
present in or suggested by the combination of Andersson, Urmson, and
Mandow. In addition, we determine that Petitioner has shown by a
preponderance of the evidence that the skilled artisan would have had reason
to make the suggested combination with a reasonable expectation of success.
G. Obviousness of Claim 8 in view of Andersson and Urmson, alone
or in combination with Ahmed-Zaid, and with Fregene
Petitioner contends the subject matter of claim 8 would have been
obvious over the combined disclosures of Andersson, Urmson, and Fregene,
alone or in combination with Ahmed-Zaid. Pet. 61, 73. As discussed above,
we do not address the parties’ contentions regarding Petitioner’s alternative
position based additionally on Ahmed-Zaid.
1. Fregene
Fregene describes methods and systems for collision avoidance for
autonomous vehicles. Ex. 1006 ¶¶ 7–10, 22. The disclosed collision
avoidance system utilizes two types of constraints. Id. ¶ 38. “The first
constraint type includes the constraints under normal operation of the
vehicle, . . . called the nominal constraints. The second constraint type
includes the constraints under an emergency operation of the vehicle, . . .
called the emergency constraints.” Id. “The nominal constraints are more
restrictive than the actual operating limits of the vehicle, since maximum
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performance is used for a vehicle only in emergency situations.” Id.
Emergency constraints “include maximum vehicle acceleration, minimum
vehicle acceleration, maximum vehicle speed and minimum vehicle speed.”
Id. ¶ 25. When normal collision avoidance schemes fail, vehicles apply
emergency maneuver procedures. Id. ¶¶ 53–57. When the emergency has
passed, “[t]he onboard processor determines what instruction the vehicle
requires to switch out of emergency maneuver mode and back to normal
operation mode.” Id. ¶ 64.
2. Analysis of Claim 8
Claim 8 depends from claim 1 and additionally requires that “each of
the one or more constraints is assigned a priority, wherein the speed planner
is configured to allow violation of a lower priority constraint in order to
avoid violation of a higher priority constraint.” Ex. 1001, 10:11–15.
Petitioner argues that Fregene describes or suggests the additional
requirements of claim 8. Pet. 61–63. Petitioner explains that Fregene
assigns priorities to its constraints and that collision avoidance is a high
priority constraint. Id. (citing Ex. 1006 ¶¶ 7, 9). For example, “Fregene’s
autonomous vehicle has a ‘collision avoidance system’ that will ‘switch
[the] vehicle into an emergency maneuver mode in the event that an object
enters the buffer zone and stays there for more than a preset threshold
time.’” Id. (quoting Ex. 1006 ¶¶ 7, 9). According to Petitioner, “in
Fregene’s system, avoidance of an obstacle takes higher priority over normal
operation of the vehicle,” thereby meeting the requirement of assigning
priorities to one or more constraints. Id. at 61–62 (citing Ex. 1006 ¶¶ 7, 9,
38; Ex. 1003 ¶¶ 198–199). Petitioner further explains that Fregene allows
violation of lower priority constraints, such as speed, acceleration, and
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deceleration in favor of collision avoidance, a higher priority constraint,
during emergency operation. Id. at 62–63 (citing Ex. 1006, 25, 47).
Petitioner asserts that one skilled in the art would have had reason to include
Fregene’s functionality in the proposed combination of Andersson and
Urmson in order “to improve its autonomous vehicle’s ability to avoid
collisions” which, in turn, “improv[es] passenger/driver comfort.” Id. at 64
(citing Ex. 1003 ¶¶ 201–203).
Patent Owner disputes Petitioner’s showing for claim 8. In addition to
the reasons advanced for claim 1, Patent Owner argues that “none of
Andersson, Urmson or Fregene disclose assigning priorities to constraints
and violating a lower priority constraint in order to avoid violating a higher
priority constraint as recited in claim 8.” PO Resp. 35–36. Patent Owner
alleges that “Fregene explicitly does not violate constraints at all: this set
associated with the emergency constraints of the vehicle is positively
invariant,” which “is entirely different from the concept embodied in the
‘174 patent and claim 8—the concept that some constraints are better to
violate than others.” Id. (citing Ex. 1006 ¶ 25; Ex. 2001 ¶¶ 61, 140–141).
Patent Owner explains that the nominal and emergency constraints taught by
Fregene are two sets of operations that are alternatives to one another and
“[w]ithin the set of constraints applied, Fregene makes clear that the
constraints are not violated and does not disclose or contemplate a situation
where its system confronts two constraints at the same time.” Sur-reply 18.
Further, Patent Owner alleges that Fregene does not prioritize constraints for
speed calculation. Id. at 19.
We find persuasive Petitioner’s evidence and argument that Fregene
suggests assigning priorities to different constraints and that lower priority
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constraints may be violated in favor of higher priority constraints. See Ex.
1006 ¶¶ 7, 9, 25, 38, 47, 67, 72; Ex. 1003 ¶¶ 198–205, 255; Ex. 1025,
418:19–419:9, 420:10–13, 421:1–5; Pet. 61–65, 73; Pet. Reply 21–24.
Fregene explains that two types of constraints are employed:
The first constraint type includes the constraints under normal
operation of the vehicle, herein called the nominal constraints.
The second constraint type includes the constraints under an
emergency operation of the vehicle, herein called the emergency
constraints. The nominal constraints are more restrictive than the
actual operating limits of the vehicle, since maximum
performance is used for a vehicle only in emergency situations.
Ex. 1006 ¶ 38. And Fregene explains that while the set associated with
either of the normal constraints and the emergency constraints are positively
invariant, “the intersection of two positively invariant sets is not positively
invariant.” Id. ¶ 37. When the collision avoidance system of the normal
mode fails, “[t]he vehicles are then operable to switch to an emergency
mode and implement an emergency maneuver procedure.” Id. ¶ 53. Then
when the emergency has passed, “[t]he onboard processor determines what
instruction the vehicle requires to switch out of the emergency maneuver
mode and back to normal operation mode.” Id. ¶ 64. Fregene adjusts
vehicle speed depending on which constraints are applied. Id. ¶¶ 25, 38, 43,
52, 58, 71–74. Whether viewed as a set of constraints for different
operational modes or as single set of constraints, the nominal constraints
yield to emergency constraints when the vehicle transitions between normal
and emergency mode. Therefore, we determine Petitioner has demonstrated
by a preponderance of the evidence that Fregene suggests “each of the one
or more constraints is assigned a priority, wherein the speed planner is
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configured to allow violation of a lower priority constraint in order to avoid
violation of a higher priority constraint,” as required by claim 8.
Patent Owner further argues that “[a] POSA would also not be
motivated to combine Fregene with Andersson and Urmson.” PO Resp. 36
(citing Ex. 2001 ¶¶ 146–152, 189). First, Patent Owner asserts that
Andersson teaches away from a prioritized constraint system because it does
not contemplate obstacle avoidance or discuss constraint priorities. Id.
We disagree with Patent Owner’s argument that Andersson teaches
away from a prioritized constraint system. As we explained above, Section
II.D.4.d., silence does not imply teaching away. Allergan, 754 F.3d at 964.
That Andersson is purported to be silent regarding prioritized constraint
systems or obstacle avoidance does not constitute a teaching away because
such disclosure, or lack thereof, does not criticize, discredit, or otherwise
discourage the solution claimed in the ’174 patent.
Second, Patent Owner argues that because of the difficulties
associated with the complexity of autonomous vehicle systems and
Urmson’s teaching away from added complexities, a person of skill in the art
would not have had reason to modify the combination of Andersson and
Urmson to include the priority constraint system of Fregene. PO Resp. 36–
37 (citing Ex. 2001 ¶¶ 146–152, 189). For the reasons discussed above in
Section II.D.4.d., we do not agree with Patent Owner’s arguments.
And third, Patent Owner contends that “Fregene is directed to obstacle
avoidance systems for vehicles which is not in the same technological field
as Andersson’s cruise control technology or Urmson’s autonomous vehicle
technology.” Id. at 37 (citing Ex. 2001 ¶¶ 146–152, 189). Patent Owner
also argues that “Fregene’s system is based in a controller external to the
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vehicle and a POSA would simply not combine such an external controller
with the on-board vehicle systems of Andersson and Urmson.” Id. (citing
Ex. 2001 ¶¶ 146–152, 189).
For the reasons discussed above in Section II.D.4.d., we disagree with
Patent Owner’s arguments relating to the differences between the
technologies described in Andersson, Urmson, and Fregene. Further, we
also disagree with Patent Owner’s position that Fregene utilizes an external
processor for certain tasks such that a person skilled in the art would not
seek out the teachings of Fregene. We note that Fregene uses a combination
of an external processor, an onboard processor, and vehicle controllers for
implementing its collision avoidance system. Ex. 1006 ¶ 8. Furthermore,
Petitioner does not propose to substitute Fregene’s external processor into
the combination of Andersson and Urmson; rather, Petitioner relies on
Fregene to suggest a system where “one or more constraints is assigned a
priority, wherein the speed planner is configured to allow violation of a
lower priority constraint in order to avoid violation of a higher priority
constraint.” Pet. 61. It is well established that a determination of
obviousness based on teachings from multiple references does not require an
actual, physical substitution of elements. In re Mouttet, 686 F.3d 1322, 1332
(Fed. Cir. 2012).
Accordingly, Petitioner has shown that the additional limitation of
claim 8—“each of the one or more constraints is assigned a priority, wherein
the speed planner is configured to allow violation of a lower priority
constraint in order to avoid violation of a higher priority constraint”
(Ex. 1001, 10:11–15)—is taught or suggested by Fregene. Therefore,
Petitioner has established by a preponderance of the evidence that claim 8 is
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taught or suggested by the combination of Andersson, Urmson, and Fregene,
and further that the skilled artisan would have had reason to make the
suggested combination with a reasonable expectation of success.
III. CONCLUSION19
We conclude that Petitioner has satisfied its burden of demonstrating,
by a preponderance of the evidence, that the subject matter of claims 1–8 of
the ’174 patent is unpatentable.
In summary:

19 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
Claims

35 U.S.C. § Reference(s)/Basis Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
1, 2, 4–7 103(a) Andersson,
Urmson
1, 2, 4–7
3 103(a) Andersson,
Urmson,
Augenbraun
3
6 103(a) Andersson,
Urmson, Mandow
6
8 103(a) Andersson,
Urmson, Fregene
8
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IV. ORDER
Accordingly, it is:
ORDERED that Petitioner has established, by a preponderance of the
evidence, that claims 1–8 of the ’174 patent are unpatentable; and
FURTHER ORDERED that because this is a final written decision,
parties to the proceeding seeking judicial review must comply with the
notice and service requirements of 37 C.F.R. § 90.2.

20 As explained above, we do not reach Petitioner’s alternative grounds
including Ahmed-Zaid, because they are premised on a claim construction
position not advanced by either party.
1, 2, 4–7 103(a) Andersson,
Urmson, Ahmed-
Zaid20

3 103(a) Andersson,
Urmson, Ahmed-
Zaid, Augenbraun

6 103(a) Andersson,
Urmson, Ahmed-
Zaid, Mandow

8 103(a) Andersson,
Urmson, Ahmed-
Zaid, Fregene

Overall
Outcome
1–8
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PETITIONER:
Qingyu Yin
Joshua Goldberg
qingyu.yin@finnegan.com
joshua.goldberg@finnegan.com

PATENT OWNER:
John Abramic
Katherine Johnson
Timothy C. Bickham
Matthew Bathon
Harold H. Fox
Katherine D. Cappaert
Steptoe & Johnson LLP
jabramic@steptoe.com
kjohnson@steptoe.com
tbickham@steptoe.com
mbathon@steptoe.com
hfoc@steptoe.com
kcappaert@steptoe.com