AutoBrilliance, LLC

Patent Trials and Appeals Board

Jul 6, 2021

IPR2020-00354 (P.T.A.B. Jul. 6, 2021)

Trials@uspto.gov Paper 40
571-272-7822 Entered: July 6, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

UNIFIED PATENTS, LLC,
Petitioner,
v.
AUTOBRILLIANCE, LLC,
Patent Owner.

IPR2020-00354
Patent 6,792,351 B2

Before KEN B. BARRETT, TIMOTHY J. GOODSON, and
MATTHEW S. MEYERS, Administrative Patent Judges.

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

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I. INTRODUCTION
A. Background and Summary
Unified Patents, LLC, (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
requesting inter partes review of claims 1, 2, and 4–7 of U.S. Patent No.
6,792,351 B2 (Ex. 1001, “the ’351 patent”). AutoBrilliance, LLC, (“Patent
Owner”) filed a Preliminary Response. Paper 7. With our authorization, the
parties filed additional pre-institution briefing. See Paper 8; Paper 9. We
instituted an inter partes review on claims 1, 2, and 4–7 on all grounds
asserted in the Petition. See Paper 10 (“Dec. on Inst.”). After institution of
trial, Patent Owner filed a Patent Owner Response (Paper 18, “PO Resp.”),
Petitioner filed a Reply (Paper 21, “Pet. Reply”), and Patent Owner filed a
Sur-Reply (Paper 26, “Sur-Reply”).1 We held a hearing on April 12, 2021, a
transcript of which is included in the record. See Paper 39 (“Tr.”).
We have authority under 35 U.S.C. § 6. Petitioner bears the burden of
proving unpatentability of the challenged claims, and the burden of
persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l
Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail, Petitioner
must prove unpatentability by a preponderance of the evidence. See
35 U.S.C. § 316(e) (2018); 37 C.F.R. § 42.1(d) (2019). 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

1 With our authorization, Petitioner filed a list of allegedly improper sur-
reply arguments (see Paper 29) and Patent Owner responded. Paper 31. We
have considered these submissions, but we determine that it is unnecessary
to resolve these disputes because even without excluding any arguments in
the Sur-Reply, we still find for Petitioner on the merits.
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a preponderance of the evidence that claims 1, 2, and 4–7 of the ’351 patent
are unpatentable.
B. Real Parties in Interest
Unified Patents indicates that it alone is the real party-in-interest, and
that “no other party exercised control or could exercise control over
Unified’s participation in this proceeding, the filing of this petition, or the
conduct of any ensuing trial.” Pet. 1. Patent Owner indicates that it alone is
the real party-in-interest. Paper 5, 1.
C. Related Matters
Petitioner and Patent Owner each state that the ’351 patent is involved
in AutoBrilliance, LLC v. Toyota Motor Corporation et al., LLC, Case 4-19-
cv-00712 (E.D. Tex.). Pet. 1; Paper 5, 1. We note that this case was
dismissed without prejudice on March 4, 2020. AutoBrilliance, Case 4-19-
cv-00712, Dkt. 10.
II. BACKGROUND
A. The ’351 Patent
The ’351 patent, titled “METHOD AND APPARATUS FOR
MULTI-VEHICLE COMMUNICATION,” issued on September 14, 2004.
Ex. 1001, code (54), (45). The ’351 patent discloses a communication
system that transmits, receives, and relays messages between vehicles. Id. at
2:5–8. More particularly, the ’351 patent describes that its system transmits
messages to vehicles within reception range of a communication portal. Id.
at 2:2–6. Once a vehicle receives the message, the vehicle may then relay
the message to other vehicles. Id. at 2:6–8. The ’351 patent discloses that
“[t]he message 24 continues to be relayed by vehicles receiving the message
24,” and thus, the message may “be propagated directly point-to-point to
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multiple vehicles along roadway 12 without having to use a cellular or
satellite communication infrastructure.” Id. at 2:8–12.
In one embodiment, the ’351 patent discloses that its communication
system transmits “recall messages or other messages associated with certain
vehicles.” Id. at 2:14–18. For example, a message transmitted by a portal or
another vehicle may include a VIN or “any vehicle identifier or user
identifier” that identifies vehicles associated with the message. Id. at 2:37–
43. Once the message is received, a processor “compares a stored vehicle
identifier with the identifier contained in the received message.” Id. at 2:43–
45. After processing, “[i]f the message identifier matches the vehicle
identifier, the message is reported to a vehicle operator or a reply message is
sent back in block 36.” Id. at 2:46–48. And, “[i]f the message identifier
does not match some stored identifier associated with the vehicle, the
message is either discarded or stored in a message buffer in block 38.” Id. at
2:53–56.
In another embodiment, the ’351 patent describes that its
communication system can update digital route maps using information
transferred between vehicles. Id. at 4:54–61. Figure 6, reproduced below,
shows how map routes are automatically updated for different road
conditions.
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Figure 6 “is a diagram showing how map routes are automatically
updated for different road conditions.” Ex. 1001, 1:55–56.
Figure 6 shows vehicle 90 on direct route 82 from home 84 to work
86, accident 88, stopped vehicle 92, message 94, and new route 96. Id. at
4:43–67. The ’351 patent describes that a “vehicle 92 that is actually
traveling along route 82 may detect the event 88 either using vision sensors
that detect a collision or using speed and velocity sensors that detect vehicle
92 in a stop or slow down condition.” Id. at 4:48–51. In that situation, the
“event detected by vehicle 92 is transmitted in a message 94 to vehicle 90.”
Id. at 4:51–53. According to the ’351 patent, the navigation system “initially
generates the preferred route 82 for vehicle 90 in block 108,” but then
“compares the route with any messages . . . received from other vehicles. If
messages 94 indicate a traffic stoppage event 88 along the original route 82,
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the navigation system generates a new route 96 (FIG. 6) for vehicle 90
around the event 88 in block 112.” Id. at 4:54–61.
B. Illustrative Claims
Petitioner challenges claims 1, 2, and 4–7 of the ’351 patent. Pet. 3.
Claims 1 and 4 are independent claims. Challenged claim 2 depends directly
from claim 1, and challenged claims 5–7 depend directly from claim 4.
Independent claims 1 and 4 are reproduced below.
1. A method for processing messages in a vehicle, comprising:
receiving a message containing a message identifier;
comparing the message identifier to [a] vehicle identifier;
processing the message according to the comparison between the
message identifier and the vehicle identifier; and
storing the message in memory located in the vehicle and
periodically transmitting the stored message from the
vehicle to other vehicles.
Ex. 1001, 6:17–26.
4. A method for using an electronic map, comprising:
identifying an original route using the electronic map;
receiving messages identifying events associated with the
original route;
identifying a new route according to the identified events; and
receiving the messages from vehicles traveling along the original
route.
Id. at 6:49–56.
C. Asserted Grounds of Unpatentability
Pursuant to 35 U.S.C. § 314(a), on July 7, 2020, we instituted inter
partes review on all grounds asserted in the Petition, namely:
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Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
4–7 103(a)2 Shyu,3 Kiendl4
4, 6 102(e) King5
4, 6 103(a) King
1, 2 103(a) Shyu, Yoshida6
See Pet. 12–65. Petitioner also relies on testimony from Christopher K.
Wilson. Ex. 1003 (“Wilson Decl.”). Patent Owner relies on testimony from
Dr. Steven Goldberg. Ex. 2002 (“Goldberg Decl.”). Mr. Wilson was cross-
examined. See Ex. 2001 (deposition transcript of Christopher K. Wilson,
“Wilson Dep.”); see also Ex. 1019 (final deposition transcript of Christopher
K. Wilson, “Final Wilson Dep.”).7
III. ANALYSIS
A. Principles of Law
To prevail in its challenges to Patent Owner’s claims, Petitioner must
demonstrate by a preponderance of the evidence that the claims are
unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d) (2019). A patent
claim is unpatentable under 35 U.S.C. § 103(a) if the differences between

2 The relevant sections of the Leahy-Smith America Invents Act (“AIA”),
Pub. L. No. 112–29, took effect on March 16, 2013. Because the application
that issued as the ’351 patent was filed before March 16, 2013, we apply the
pre-AIA version of §§ 102 and 103.
3 US 5,428,544, issued June 27, 1995 (Ex. 1004, “Shyu”).
4 WO 00/46777, published August 10, 2000 (Ex. 1006, “Kiendl,” a certified
translation from the original publication in German).
5 US 6,351,709 B2, issued Feb. 26, 2002 (Ex. 1005, “King”).
6 US 5,699,056, issued Dec. 16, 1997 (Ex. 1012, “Yoshida”).
7 According to Petitioner, Patent Owner “filed a rough version of Mr.
Wilson’s deposition transcript as EX2001. For accuracy, Unified submits
the final version of that deposition transcript as EX1019.” Pet. Reply 4, n. 2.
When addressing Patent Owner’s arguments that point to Exhibit 2001, our
decision identifies where the relied upon portions may also be found in
Exhibit 1019.
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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.
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; (3) the level of ordinary
skill in the art; and (4) when in evidence, objective evidence of
nonobviousness.8 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
B. Level of Ordinary Skill in the Art
We review the grounds of unpatentability in view of the
understanding of a person of ordinary skill in the art at the time of invention.
Graham, 383 U.S. at 17. Petitioner asserts one of ordinary skill in the art
“would have had a bachelor’s degree in computer science, computer
engineering, electrical engineering, or a related subject, and one to two years
of work experience with navigation systems.” Pet. 6 (citing Ex. 1003 ¶¶ 36–
39). Patent Owner does not dispute Petitioner’s assertion or otherwise argue
that that it would affect the merits of the case. See PO Resp. 2 (“Patent
Owner does not dispute Petitioner’s characterization of the level of ordinary
skill in the art, as it is not dispositive.”).
We accept the assessment offered by Petitioner as it is consistent with
the ’351 patent and the asserted prior art. We further note that the prior art
of record in the instant proceeding reflects the appropriate level of ordinary

8 Patent Owner presents no objective indicia in its papers. See generally PO
Resp.; PO Sur-Reply.
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skill in the art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir.
2001) (the prior art itself may reflect an appropriate level of skill in the art).
C. Claim Construction
In an inter partes review for a petition filed on or after November 13,
2018, “[claims] of a patent . . . shall be construed using the same claim
construction standard that would be used to construe the [claims] in a civil
action under 35 U.S.C. 282(b), including construing the [claims] in
accordance with the ordinary and customary meaning of such [claims] as
understood by one of ordinary skill in the art and the prosecution history
pertaining to the patent.” See 37 C.F.R. § 42.100(b) (2019); see also
Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc).
“In determining the meaning of the disputed claim limitation, we look
principally to the intrinsic evidence of record, examining the claim language
itself, the written description, and the prosecution history, if in evidence.”
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1015, 1014
(Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17).
In our Institution Decision, we discussed the term “message.” Neither
party has indicated that our interpretation was improper, and we do not
perceive any reason or evidence that now compels any deviation from our
initial interpretation. Accordingly, we maintain that the term “message,” in
the context of the ’351 patent, may include a “message identifier,” but is not
limited to being “a message having a location identifier.” See, e.g.,
Ex. 1001, 5:48–55 (discussing identification field 130).
We further determined in our Institution Decision that we did not need
to construe the terms “events” and “message identifier” or any other claim
terms explicitly at that stage of the proceeding. Dec. on Inst. 10–14. We
invited the parties to further address the proper constructions of those terms
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during trial. Id. at 14. In its Response, Patent Owner addresses claim
constructions for the terms “events” and “message identifier.” PO Resp.
2–3. In its Reply, Petitioner addresses constructions for the same terms
addressed by Patent Owner. Pet. Reply 1–2.
With the full record now before us, we determine that there is no
dispute that requires us to expressly construe the term “message identifier.”
Patent Owner does not dispute that the cited art teaches this element in the
context of the challenged claims. See generally PO Resp.; Sur-Reply. Thus,
we determine that we need only construe the term “events” as recited in
claim 4. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868
F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g,
Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be
construed that are in controversy, and only to the extent necessary to resolve
the controversy.”).
1. “events”
Petitioner asserts that “a POSITA would have understood the meaning
of the term ‘event’ to include at least any one of ‘an accident, a traffic
stoppage, an average speed of travel for the vehicle over some period of time
or for a particular segment, speed information, or collision information.’”
Pet. 11 (citing Ex. 1003 ¶¶ 43–47). According to Petitioner, this
understanding is consistent with the ’351 patent Specification. Id. at 10–11
(citing Ex. 1001, 4:45–61, 5:13–15, 6:65–67).
In its Response, “Patent Owner objects to Petitioner’s proposed
construction to the extent it deviates from the plain and ordinary meaning of
‘events,’” but offers no other explanation. PO Resp. 2. In its Reply,
Petitioner maintains its position. Pet. Reply 1 (citing Pet. 10–11).
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In its Sur-Reply, Patent Owner argues, for the first time, that
Petitioner’s proposed construction is incorrect because one of ordinary skill
in the art “would understand speed information is not an ‘event,’ but rather
simply information about the vehicle’s travel—in comparison to, for
example, an accident which is an ‘event’ as claimed.” Sur-Reply 1.
According to Patent Owner, the ’351 patent discloses “that ‘a real-time
event, such as an accident 88, may happen along path 82 that requires a
vehicle 90 to take an alternate route.’” Id. at 2 (quoting Ex. 1001, 4:45–47).
Patent Owner explains that this sentence “tells us that an event is something
that can ‘happen.’ An accident can ‘happen.’ The average speed of a
vehicle, by contrast, does not ‘happen.’” Id. Patent Owner acknowledges
that the ’351 patent describes “traffic events” (id. at 2 (citing Ex. 1001,
5:10–17)), but argues that it is improper to “construe the term ‘events’ to
include the disclosed ‘traffic events’” because doing so would be
inconsistent with the plain and ordinary meaning of the term “events.” Id.
at 3.
Having reviewed and considered the record presented, including
Petitioner’s and Patent Owner’s proposed constructions, we reject Patent
Owner’s proposed construction. We find Patent Owner’s contention that the
term “events” must be narrowly construed to exclude “traffic events” from
its meaning to be unsupported by, and inconsistent with, the ’351 patent’s
disclosure. As discussed in greater detail below, we find the record supports
construing “events” to include traffic events.
The ’351 patent discloses that an “event” may be an accident, i.e., “a
real time event, such as an accident 88,” that “may happen along path 82 that
requires a vehicle 90 to take an alternate route.” Ex. 1001, 4:45–47.
However, the ’351 patent also discloses that “events” may include “traffic
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stoppage events” (id. at 4:48–61) and “traffic events.” Id. at 5:11–12 (“The
traffic events may include average speed of travel for the vehicle over some
period of time or for a particular segment along path 96.”). We note that the
’351 patent identifies both of these events interchangeably as “event 88.”
For instance, the ’351 patent refers to an accident, i.e., “accident 88,” in one
example and “traffic stoppage event 88” in another example. Id. at 4:45–47,
4:58–67. We also note that claim 6 of the’351 patent, which depends from
claim 4, sets forth that “events include speed information or collision
information from vehicles traveling along the original route.” Id.
at 6:65–67.
Patent Owner’s proposed construction would require us to import the
term “accident” into the construction of the term “event” based on
exemplary language in the ’351 patent’s Specification, i.e., “a real time
event, such as an accident 88.” Ex. 1001, 4:45–47 (emphasis added). We
do not find the argument persuasive because it would exclude other types of
disclosed events and “there is a strong presumption against a claim
construction that excludes a disclosed embodiment.” See In re Katz
Interactive Call Processing Patent Litig., 639 F.3d 1303, 1324 (Fed. Cir.
2011); Oatey Co. v. IPS Corp., 514 F.3d 1271, 1277 (Fed. Cir. 2008)
(“[W]here claims can reasonably [be] interpreted to include a specific
embodiment, it is incorrect to construe the claims to exclude that
embodiment, absent probative evidence on the contrary.”).
Nonetheless, Patent Owner argues that construing “events” to include
“traffic events” is still improper because the ’351 patent “distinguishes
between an ‘event’ and its consequences, e.g., traffic stoppage. An accident
is an ‘event’; the average speed of the vehicle is at best a consequence of an
event.” Sur-Reply 2. However, Patent Owner’s argument is inconsistent
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with the ’351 patent’s disclosure. For instance, in one example, the ’351
patent describes providing an alternate route due to an accident, i.e., “a real
time event, such as an accident 88, may happen along path 82 that requires a
vehicle 90 to take an alternate route.” Ex. 1001, 4:45–47. And in another
example, the ’351 patent describes providing a new route in response to a
traffic stoppage event, i.e., “[i]f the messages 94 indicate a traffic stoppage
event 88 along the original route 82, the navigation system generates a new
route 96 (FIG. 6) for vehicle 90 around the event 88 in block 112.” Id. at
4:58–61. Thus, we find that Patent Owner’s analysis of the ’351 patent’s
Specification does not support its theory that it is improper to “construe the
term ‘events’ to include the disclosed ‘traffic events.’” Sur-Reply 3.
Patent Owner’s argument is also inconsistent with the language of
claim 6. As discussed above, claim 6, which depends from claim 4, recites
that “events include speed information or collision information.” Ex. 1001,
6:65–67. From this, one of ordinary skill in the art would understand that
the term “events,” as used in claim 4, is not so limited as to exclude “traffic
events.” Therefore, we find that Patent Owner’s proposed construction for
“events” is not supported by the claim language of the ’351 patent.
Accordingly, we construe the term “events” to include “traffic events” such
as those described in the ’351 patent Specification. Because our
construction of “events” is sufficient to resolve the issues presented in this
proceeding, no further construction of this term is necessary. See Nidec, 868
F.3d at 1017.
D. Alleged Obviousness over Shyu and Kiendl (Ground 1: Claims 4–7)
Petitioner asserts that claims 4–7 are unpatentable as obvious over
Shyu and Kiendl. Pet. 12–38; Pet. Reply 3–22. Petitioner also relies on the
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testimony of Mr. Wilson to support its arguments. Pet. 12–38; Pet. Reply
3–22. Patent Owner, relying on the testimony of Dr. Goldberg, responds to
Petitioner’s assertions. PO. Resp. 4–22; Sur-Reply 4–13; Ex. 2002.
We begin our discussion with a brief summary of Shyu and Kiendl
and then address the evidence and arguments presented.
1. Overview of Shyu (Ex. 1004)
Shyu is directed to a system for getting “traffic information and using
the information to navigate,” where the vehicle acquires traffic status
information from the vehicle in front of it “by means of information
transference from the passing vehicles.” Ex. 1004, 1:9–14. More
particularly, Shyu’s system equips vehicles “with an apparatus” to collect
and interchange data, i.e., “traffic information such as the driving speed and
the path,” with other vehicles while following or passing. Id. at 1:58–66.
These data exchanges enable Shyu’s system to “achieve navigation by
incorporating map data and traffic information” between vehicles without
the use of “any central computer, satellites or roadside posts.” Id. at
1:54–57, 1:64–66.
In Shyu’s system, each “vehicle is equipped with an electronic map
device which can display digitized road map information and identification
of the position of the vehicle on the map.” Id. at 3:5–8. The device
“comprises a map-drawing module 181 and a navigation module 182. The
map-drawing module 181 generates the map and displays it with the
indicator 8 (on the screen 81 shown in FIG. 4) based on information 110 of
the position and direction of the vehicle.” Id. at 5:5–12. Shyu’s “navigation
module 182” provides “driving forecast and speed-control instruction,”
“searches for all the available paths based on road information 121” (e.g.,
speed limit, allowed directions) and “front-vehicle information 151” (e.g.,
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average driving speed), and “calculates the driving times for all the available
routes respectively, and constructs several better timesaving routes displayed
on the map for reference.” Id. at 5:38–49.
2. Overview of Kiendl (Ex. 1006)
Kiendl, a translated version of a German-language PCT application
published on August 10, 2000. Ex. 1006, code (43). Petitioner asserts that
Kiendl is prior art to the ’351 patent “under at least 35 U.S.C. § 102(a), (b).”
Pet. 3.9
Kiendl is directed to “a self-organizing traffic information system
and/or traffic guidance system” that obtains “relevant traffic information”
and dynamically optimizes “a route of a first vehicle” based on the acquired
traffic information. Ex. 1006, 1:7–14, 3:19–23. According to Kiendl, its
system “allows for an autonomous, self-organizing traffic information
network in which the participating vehicles at the same time generate,
distribute, bundle and utilize the required information.” Id. at 4:4–7.

9 At oral argument, Patent Owner argues for the first time that Petitioner did
not make a prima facie showing that Kiendl is prior art. See Tr. 57:1–4; see
also id. at 56:11–13 (“First I want to mention that it doesn’t seem like the
petitioners actually met their burden of making a prima facie showing that
Kiendl is actually prior art.”). This argument is untimely. We do not
consider arguments raised for the first time during oral arguments. See Dell
Inc. v. Acceleron, LLC, 884 F.3d 1364, 1369 (Fed. Cir. 2018) (“Unless it
chose to exercise its waiver authority under 37 C.F.R. § 42.5(b), the Board
was obligated to dismiss Dell’s untimely argument given that the untimely
argument in this case was raised for the first time during oral argument.”);
accord Consolidated Trial Practice Guide 85–86 (“No new evidence and
arguments. During an oral hearing, a party may rely upon appropriate
demonstrative exhibits as well as evidence that has been previously
submitted in the proceeding, but may only present arguments relied upon in
the papers previously submitted.” (italics added)).
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Kiendl’s system utilizes “on-board sensors” in a first vehicle, where
the data from the sensors may be stored, and transmitted to other vehicles,
and data from sensors in other vehicles, which may be received, stored, and
retransmitted. Id. at 3:19–4:2. Kiendl discloses that
[t]ransmitted data may include information concerning a signal
type, a vehicle identification, the utilized transmitting field
strength, a location of the vehicles, an unambiguous action code,
as well as a list of identifications of previously used transmitter
vehicles in the form of a history list, whereby first information
contents are defined.
Id. at 9:29–10:2. Kiendl further discloses that the transmitted data may also
“include information concerning way segment identifications, a moving
direction, a proportion of a covered way segment, a mean speed, a maximum
speed, the vehicle density, and/or an up-to-dateness/time marking of the
information, whereby second information contents are defined.” Id. at
10:4–8. Kiendl still further discloses that the transmitted data may include
information regarding “a particular event” such as accidents and distress
calls. Id. at 14:6–10, 29:8–14.
With these various transmitted data, Kiendl’s system is able to create
an optimized route for a first vehicle based on its traffic guidance system.
Id. at 15:4–27. Kiendl discloses that “[t]he route of the first vehicle from its
current position to a selected target is determined by means of stored way
data, and the route is subdivided into way segments.” Id. at 6:24–26.
During travel, “[t]he first vehicle can transmit inquiries for information
relating to a practicability and other traffic-relevant quantities on candidate
way segments to be travelled later on.” Id. at 6:28–30. Kiendl discloses that
replies to inquiries may be delivered directly to the first vehicle where they
are stored, accumulated, and processed for retransmission or utilization at
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the first vehicle. Id. at 7:1–6. More particularly, Kiendl discloses that “[t]he
travel history data, source data, buffer memory data which in particular
contain the stored, accumulated and processed information, and reply data in
the vehicles may each be stored in an individual map structure superseding a
static global map structure or existing in parallel therewith.” Id. at 7:8–12;
see also id. at 7:15–17 (“[I]t is possible to also create, modify or delete new
map structure elements in the individual map structure data.”). In this
regard, Kiendl discloses that its route optimization system performs “[a] first
calculation of the route of the first vehicle from its current position to a
selected target” and then performs a recalculation of the route “based on
modified data in the individual map structure for the purpose of iterative
optimization of the route.” Id. at 8:1–11.
3. Analysis of Claim 4
Petitioner asserts claim 4 is unpatentable as obvious over Shyu and
Kiendl. Pet. 12–27; Pet. Reply 3–12. Patent Owner contends that Petitioner
has failed to establish that limitations [4.2] and [4.4] are taught by the
references. PO Resp. 4–14; Sur-Reply 3–9. Petitioner’s contentions
regarding the preamble and limitations [4.1] and [4.3] are undisputed. We
have reviewed the evidence and arguments provided by the parties and are
persuaded that Petitioner has demonstrated by a preponderance of the
evidence that claim 4 is unpatentable as obvious over Shyu and Kiendl.
We use Petitioner’s notations to identify the claim elements.
a) [4.0] A method for using an electronic map, comprising:
Petitioner asserts that Shyu discloses a system for transmitting traffic
information between vehicles “‘equipped with an electronic map device
which can display digitized road map information’ using ‘a digitized
map.’” Pet. 16 (citing Ex. 1004, Abstract, 1:52–54, 3:5–8, 4:51–53, Fig. 4).
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Petitioner further asserts that Shyu discloses using the electronic map via
input commands. Pet. 17–18 (citing Ex. 1004, 4:64–5:2, 5:49; Ex. 1003
¶¶ 64–68). We find that Petitioner’s contentions, which Patent Owner does
not dispute, are persuasive in demonstrating that Shyu discloses the
preamble to the extent it is limiting.
b) [4.1] identifying an original route using the electronic map
Petitioner asserts that Shyu discloses “a navigation module” for
“providing a path indication and a driving instruction.” Pet. 18 (citing Ex.
1004, 7:14–18). Petitioner further asserts that “[t]he output of the navigation
module is ‘a line indicated on the displayed map showing an optimum
route for said first navigatable vehicle.’” Id. According to Petitioner,
[a] POSITA would have recognized the “optimum route”
indicated on the display map when the user initially enters a
destination corresponds to an identified original route because
Shyu describes a process of updating routes, and accordingly, a
first displayed “optimum route” (before a subsequent update)
would correspond to the original route recited in claim 4.
Pet. 18 (citing Ex. 1003 ¶¶ 71–72) (emphases omitted); see also Pet. 18
(citing Ex. 1003 ¶¶ 69–73 (“[B]y describing the display of an optimum route
on a map, Shyu discloses, or at least renders obvious, identifying an original
route using the electronic map.”). We find that Petitioner’s contentions,
which Patent Owner does not dispute, are persuasive in demonstrating that
Shyu discloses this limitation to an ordinarily skilled artisan.
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c) [4.2] receiving messages identifying events associated with the
original route10
Petitioner asserts that Shyu’s system “continuously receive[s] traffic
information” from other vehicles. Pet. 19 (citing Ex. 1004, 2:59–60,
4:28–29, 5:59–60, Fig. 3). Petitioner asserts “that the ‘traffic information’
includes events such as ‘the driving path and speed.’” Pet. 20 (citing Ex.
1004, 2:22–24). Petitioner explains that in Shyu,
“the traffic information of the vehicle itself as well as of other
vehicles” is transmitted by the transmitting vehicle using the
following format: “”
Pet. 20 (citing Ex. 1004, 3:49–59) (alteration in original). According to
Petitioner,
[a] POSITA would have understood that the traffic information
transferred using the above format corresponds to a plurality of
messages; as Mr. Wilson explains, each pair of code and traffic
information elements within the format above constitutes a
message, and Shyu describes at least two vehicles each sending
at least one message (e.g., the message from vehicle 1, and the
message from vehicle 2).
Pet. 20 (citing Ex. 1003 ¶¶ 76–77) (emphases omitted); see also Pet. 25
(citing Ex. 1003 ¶ 87) (“[A] POSITA would have understood as including
multiple events, at least because Shyu refers to traffic information sent by
multiple passing vehicles, each of which would send a message
corresponding to an event.” (emphases omitted)).

10 The analysis for limitation [4.2] also addresses aspects related to
limitation [4.4].
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Petitioner maintains that the “average driving speed” information
transmitted between vehicles in Shyu constitutes “events associated with the
original route.” Pet. 21 (emphasis omitted). However, Petitioner also relies
on Kiendl as disclosing “additional types of events.” Id. (emphasis omitted).
More particularly, Petitioner asserts that Kiendl discloses “a ‘method . . . for
dynamically obtaining relevant traffic information and/or for dynamic
optimization of a route of a first vehicle,’ and describes broadcasts that
include ‘events such as, e.g., accidents (activation of an airbag, etc.) and
distress calls.’” Pet. 21–22 (citing Ex. 1006, 3:19–21, 29:8–10) (alteration
in original). Petitioner takes the position that the combined system of Shyu
and Kiendl “would result in a navigation system that would determine its
‘available paths’ based on ‘front-vehicle information’ that included both the
driving speed of a path, as disclosed by Shyu, as well as other information
such as accidents, as provided by Kiendl’s teachings.” Pet. 22 (citing Ex.
1003 ¶ 80) (emphases omitted). Petitioner explains that one of ordinary skill
in the art would have been motivated to combine Shyu and Kiendl because
doing so “would have been no more than the combination of prior art
elements according to known methods to yield predictable results” and
“each element of Shyu and Kiendl would operate with no change in their
respective functions.” Pet. 22–23 (citing Ex. 1003 ¶ 81). Petitioner further
explains that one of ordinary skill in the art “would have recognized the
desirability of including additional types of events that occur along a route,
e.g., accident and distress calls as described in Kiendl into the method and
system of Shyu.” Pet. 23–24 (citing Ex. 1003 ¶ 82).
In response, Patent Owner contends that the combination of Shyu and
Kiendl fails to disclose or suggest “receiving messages identifying events
associated with the original route.” PO Resp. 4–14; Sur-Reply 3–9. Patent
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Owner first argues that Petitioner fails to establish that Shyu discloses or
suggests “receiving messages.” PO Resp. 11–14; Sur-Reply 3–5. Patent
Owner next argues that Shyu “fails to disclose that the messages identify
events ‘associated with the original route’ or are ‘received from vehicles
traveling along the original route.[11]’” Sur-Reply 6–8; see also PO Resp.
4–10. In the Sur-Reply, Patent Owner argues, for the first time, that the
combination of Shyu and Kiendl fails to disclose “events.” Sur-Reply 8–9.
We address each argument in turn.
(1) “receiving messages”
Patent Owner argues that Shyu fails to disclose or suggest “receiving
messages.” PO Resp. 11–14; Sur-Reply 3–5. More particularly, Patent
Owner asserts that Petitioner fails to establish that Shyu discloses receiving
“at least two messages,” as required by claim 4. Sur-Reply 3. According to
Patent Owner, “Petitioner’s argument relies on its expert’s speculative
extrapolation of a single data structure disclosed in Shyu to a plurality of
‘messages’ allegedly received by a vehicle.” PO Resp. 11 (citing Pet.
18–20; Ex. 1003 ¶¶ 76–77). Patent Owner asserts that Petitioner’s expert
“was clear that the only position his testimony supports is one in which the
multiple message[s] are those that are included within a single transference.”
Id. (citing Ex. 2001, 57:23–58:3).12 To support its position, Patent Owner
reproduces the following question and answer from Mr. Wilson’s testimony:

11 We note that the language “received from vehicles traveling along the
original route” is recited in limitation [4.4].
12 We note this same portion of the Wilson Deposition is also found in
Exhibit 1019 at 64:11–15, which Patent Owner cites in its Sur-reply. Sur-
reply 5.
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Q. So it’s your understanding there that in the situation in
which there are multiple messages those multiple messages are
included within a single transference?
A. Yes.
Id.
Patent Owner’s arguments do not persuade us that Mr. Wilson’s
testimony supports only a single transference including multiple messages.
As Petitioner correctly notes, “Mr. Wilson’s statement[] d[oes] not preclude
the fact that a plurality of messages are received from multiple passing
vehicles regardless of whether they were relayed by the sending vehicle to
the receiving vehicle in a single transference or multiple transferences.” Pet.
Reply 4 (citing Ex. 1019, 64:11–15) (emphasis omitted). Petitioner provides
the following copy of Figure 1 of Shyu, annotated to include “an additional
vehicle a0 (purple) traveling in front of vehicle a1 (green).” Pet. Reply 6.
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Figure 1, annotated, “shows an example of the invented method
in which the traffic information of a first vehicle is transferred
via a second vehicle to a third vehicle.” Ex. 1004, 2:3–5.
Relying on Mr. Wilson’s deposition testimony together with the
annotated copy of Figure 1, Petitioner asserts that:
In this example, Shyu’s vehicle b (orange) would have
passed vehicle a0 (purple) first and received its traffic
information. EX1019, 53:12–54:3. Then, as vehicle b (orange)
continued to drive, it would have passed vehicle a1 (green) and
received its traffic information. Id. Vehicle b (orange) would
then combine the traffic information received separately from
vehicles a0 (purple) and a1 (green) into a transference that is
sent to vehicle a2 (blue). That is, vehicle b (orange) concatenates
multiple individual messages including traffic information from
vehicle a0 (purple) and traffic information from vehicle a1 (green)
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into a transference that is sent to vehicle a2 (blue). Id. Thus,
vehicle a2 (blue) receives multiple messages in the transference
from vehicle b (orange).
Pet. Reply 6–7 (emphasis added); see also Ex. 1019, 53:19–22 (Vehicle B
“would have then proceeded on down the road and received code of the
vehicle itself and traffic information about the vehicle itself from Vehicle A1
being a different vehicle.”).
We find Petitioner and Mr. Wilson’s explanation to be consistent with
Shyu’s disclosure. For example, Shyu discloses that “[t]he whole system,
switched on, will continuously receive traffic information sent by the
passing vehicles and update the information 151; therefore, it may refresh
aforesaid better route displays at intervals, such as every 10 seconds.”
Ex. 1004, 5:59–63. We credit Mr. Wilson’s testimony that one of ordinary
skill in the art would have understood the aforementioned portion of Shyu
“as including multiple events, at least because Shyu refers to traffic
information sent by multiple passing vehicles, each of which would send a
message corresponding to an event.” Ex. 1003 ¶ 87. Patent Owner’s expert,
Dr. Goldberg does not dispute Mr. Wilson’s understanding. See, e.g.,
Ex. 2002 ¶¶ 52–56 (discussing the entirety of Dr. Goldberg’s patentability
analysis of claim 4). Thus, we find that Petitioner has provided sufficient
evidence that Shyu discloses “receiving messages” as required by claim 4.
(2) “receiving messages identifying events associated with the
original route”
Patent Owner argues that the combination of Shyu and Kiendl “fails
to disclose that the messages identify events ‘associated with the original
route’ or are ‘received from vehicles traveling along the original route.’”
Sur-Reply 6–8; see also PO Resp. 4–10. More particularly, Patent Owner
argues that Petitioner fails to establish that Shyu discloses the argued
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limitations “because Petitioner cannot establish that vehicles a0 and a1 are in
fact traveling on the original route as claimed.” Sur-Reply 8; see also PO
Resp. 10 (“Petitioner’s expert does not make clear that ‘messages’ in Shyu
come from vehicles that were on the original route when the message was
sent.”). We are not persuaded by Patent Owner’s argument.
Instead, we agree with Petitioner that “Shyu discloses relaying traffic
information which includes events such as “the driving path and speed”
from vehicles traveling in front of the receiving vehicle, i.e., associated with
the original route.” Pet. Reply 7–8 (footnote omitted) (citing Pet. 20–21
(citing Ex. 1004, 2:22–32; Ex. 1003 ¶¶ 78–79)); see also Pet. 26–27 (citing
Ex. 1004, 3:66–68; Ex. 1003 ¶¶ 76–77, 91–95) (addressing limitation [4.4]).
In this regard, Shyu discloses
[t]he vehicle al in the front on road A sends its traffic information,
such as the driving path and speed, to the passing-by vehicle b at
a position Pl. When the vehicle b passes on the vehicle a2 in the
rear of the road A at a position P2 later, the traffic information of
the vehicle al will then be sent to the vehicle a2 by the vehicle b.
As a result, the vehicle a2 obtains the traffic status (e.g. the
average driving speed of a certain path) in front according to the
information it gets.
Ex. 1004, 2:23–32. We credit Mr. Wilson’s testimony that this disclosure
demonstrates that one of ordinary skill in the art “would have recognized
that, because vehicle a2 is traveling on road A, it is part of the vehicle’s
original route, and that events occurring on road A are associated with the
route.” Ex. 1003 ¶ 79.
Patent Owner responds that that Petitioner fails to adequately establish
that Shyu discloses the argued limitations because the theory set forth in the
Petition is “contrary to Petitioner’s expert’s testimony.” PO Resp. 7–10.
More particularly, Patent Owner argues that Petitioner’s expert, Mr. Wilson,
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testifies that Shyu discloses “receiving the messages from vehicles traveling
along the original route” even though he “acknowledges that his opinion
relies on a characterization of Shyu that doesn’t change even when the
receiving vehicle and the information-source vehicle are on different
roads.” PO Resp. 9 (citing Ex. 2001, 61:12–1913); Sur-Reply 6–8. We
disagree with Patent Owner.
Instead, we agree with Petitioner that Patent Owner improperly
“focuses on Mr. Wilson’s testimony that Shyu ‘includes a situation where
vehicle b passes [a1] and then subsequently vehicle b passes vehicle [a2]
whether those are on the same road or different roads is immaterial to my
understanding of the figure.’” Pet. Reply 8 (citing PO Resp. 9 (citing
Ex. 2001, 61:12–1914)). As Petitioner correctly notes, “there is no limitation
that a route cannot include multiple roads” or anything in the claims that
“precludes the receiving vehicle from receiving other information in addition
to information identifying events associated with the original route.” Id.
(emphases omitted). For the reasons given by Petitioner and summarized
above, we find that the combination of Shyu and Kiendl discloses argued
limitations [4.2] and [4.4].
(3) “events”
Patent Owner argues that “traffic information including ‘events’ such
as ‘the driving path and speed’” disclosed in Shyu fails to constitute the term
“events,” as properly construed. Sur-Reply 8. Patent Owner further argues
that although “Kiendl discloses transmitting ‘event-type’ information about

13 We note this same portion of the Wilson Deposition is also found in
Exhibit 1019 at 69:2–12.
14 We note this same portion of the Wilson Deposition is also found in
Exhibit 1019 at 69:2–12.
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accidents such as the activation of an airbag as well as distress calls” (id.
(citing Ex. 1006, 8:8–10)), one of ordinary skill in the art would understand
that “the transmitting vehicle is no longer “traveling along the original
route.” Id. at 8–9.
However, as discussed supra in Part III.C.1., we construe the term
“events” to include “traffic events” such as those described in the ’351
patent Specification. Here, in at least one example, the ’351 patent identifies
an “event” as “traffic stoppage event 88.” Ex. 1001, 4:58–61. We credit
Mr. Wilson’s testimony that, in light of the ’351 patent, one of ordinary skill
in the art “would have understood the meaning of the term ‘event’ to include
any one of ‘an accident, a traffic stoppage, an average speed of travel for the
vehicle over some period of time or for a particular segment, speed
information, or collision information.’” Ex. 1003 ¶ 47; see also id. ¶¶ 45–46
(citing Ex. 1001, 4:45–61, 5:13–15, 6:65–67) (identifying “events”
contemplated by the ’351 patent). Thus, we find Shyu discloses events
under the construction discussed above. See, e.g., Pet. 20 (citing Ex. 1004,
2:22–24 (“[T]he ‘traffic information’ includes events such as ‘the driving
path and speed.’”) (emphases omitted)), Id. at 21 (citing Ex. 1004, 2:28–32)
(“In this way, ‘vehicle a2 obtains the traffic status (e.g. the average driving
speed of a certain path) in front.”).
Even if Shyu does not explicitly disclose “events,” Kiendl describes
that its “event-type information” may include “particular events such as,
e.g., accidents (activation of an airbag, etc.) and distress calls.” Ex. 1006,
29:8–10. Patent Owner argues that one of ordinary skill in the art
would understand the activation of an airbag and distress calls
are sent by the car involved in the “event.” But neither Petitioner
nor its expert explain how this relates to vehicle a1 – the vehicle
Petitioner identifies as “traveling along the original route” and
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from which Petitioner contends the “messages identifying
events” are received. Indeed, having been involved in an
accident, the transmitting vehicle is no longer “traveling along
the original route” – it is not traveling anywhere at all.
Sur-Reply 8–9.
We have considered Patent Owner’s argument, but do not find it to be
persuasive. Patent Owner’s assertion that a stopped vehicle is no longer
“traveling along the original route” amounts to attorney argument,
unsupported by any testimony from Dr. Goldberg or other evidence.
Instead, we agree with Petitioner that “the 351 Patent allows for vehicles
traveling along the route to be stopped.” Tr. 16:19–20. For example, the
’351 patent discloses that a stopped vehicle 92 may be able to transmit a
message. Ex. 1001, 4:62–67 (“One report from stopped vehicle 92 may not
be enough to cause the navigation System in vehicle 90 to generate a reroute
96.”).
For these reasons, we find that the combination of Shyu and Kiendl
discloses “events” under the construction set forth supra in Part III.C.1.
d) [4.3] identifying a new route according to the identified events
Petitioner asserts that the combination of Shyu and Kiendl renders
obvious this limitation. Pet. 24–26. Petitioner asserts that Shyu’s system
constructs “better time-saving routes” based on “‘continuously receive[d]
traffic information sent by the passing vehicles.’” Pet. 24 (citing Ex. 1004,
5:46–49, 5:60–61; Ex. 1003 ¶ 87) (emphasis omitted, alteration in original).
Petitioner explains that
[a] POSITA would have recognized that the displayed better
routes are the identified new route[s] and displaying one of the
better routes corresponds to identifying a new route, because a
POSITA would have understood that an initial route displayed
on Shyu’s route would be replaced by a new route, i.e., a
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refreshed or better time-saving route, as explained by Shyu at
5:60–63.
Pet. 25 (citing Ex. 1003 ¶¶ 85–86) (second alteration in original). We find
that Petitioner’s contentions regarding this limitation, which Patent Owner
does not dispute, are persuasive.
e) [4.4] receiving the messages from vehicles traveling along the
original route
Petitioner asserts that the combination of Shyu and Kiendl renders
obvious this limitation. Pet. 26–27. Petitioner asserts Shyu discloses “that
the receiving vehicle receives traffic information from multiple vehicles that
are in front of the receiving vehicle.” Pet. 27 (citing Ex. 1003 ¶¶ 91–95); see
also Pet. 26–27 (citing Ex. 1004, 3:67–68 (“[T]raffic information about
vehicles 1 to n was transferred to the receiving vehicle.”), 3:66–67
(“[V]ehicles 1 to n are those in front of the receiving vehicle.”). Patent
Owner does not present any additional argument for limitation [4.4] other
than the argument that we have already considered with respect to limitation
[4.2]. We find that Petitioner’s contentions regarding this limitation are
persuasive.
For the foregoing reasons, we determine that Petitioner has
demonstrated by a preponderance of the evidence that claim 4 would have
been obvious in view of Shyu and Kiendl.
f) Analysis of Claim 5
Claim 5 recites “[a] method according to claim 4 including: sending
out queries for events associated with the original route, receiving messages
identifying events associated with the original route; and selecting the new
route according to the identified events for the original route.” Ex. 1001,
6:49–56.
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Petitioner asserts that claim 5 would have been obvious over Shyu and
Kiendl. Pet. 27–33; Pet. Reply 12–14. Petitioner asserts that Kiendl
discloses “that ‘requests relating to the moving data for the route sections
are dispatched via the transmitter/receiver means of the vehicles.’”
Pet. 28 (citing Ex. 1006, 20:14–16). Petitioner further asserts that “the
moving data in Kiendl is similar to Shyu’s traffic information” (Pet. 28
(citing Ex. 1003 ¶ 100)), and “by teaching ‘requests’ or ‘inquiries’ that are
‘dispatched via the transmitter’ for data related of the route sections, such as
events that occur on the route sections, Kiendl teaches sending out queries
for events.” Pet. 28 (citing Ex. 1003 ¶ 101).
Petitioner explains that one of ordinary skill in the art “would have
been motivated to improve Shyu’s method and apparatus to include the
capability to send requests for traffic information from other vehicles for
several reasons.” Pet. 29 (citing Ex. 1003 ¶ 102). Petitioner first asserts that
incorporating Kiendl’s ability to send a request for information would allow
the receiving vehicle in Shyu to obtain optimal traffic information. Pet. 29
(citing Ex. 1003 ¶ 103). Petitioner next asserts that Kiendl describes that
requests relating to moving data are “costly in the sense that it brings about a
communication volume or a communication expenditure.” Pet. 30 (citing
Ex. 1006, 20:16–21). Consistent with this disclosure, Petitioner asserts that
one of ordinary skill in the art “would have recognized that incorporating the
capability to request traffic information would lead to a vehicle that can
request traffic information on [an] as needed basis” (Pet. 30) which would
help conserve vehicle computing resources for other tasks. Id. (citing Ex.
1003 ¶¶ 104–105). Petitioner also asserts that incorporating Kiendl’s
requests into Shyu’s navigation system would have been an obvious use of a
known technique. Pet. 30–31 (citing Ex. 1003 ¶ 106). Petitioner still further
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asserts that “issuing a request for traffic information would have been
obvious to try for a POSITA to reduce communication volume among the
vehicles.” Pet. 31 (citing Ex. 1006, 20:16–21; Ex. 1003 ¶ 106).
Petitioner performs a similar analysis for the remaining limitations of
dependent claim 5 with reference to limitations [4.2], [4.3], and [4.4]
discussed above. Pet. 32–33.
In response, Patent Owner contends that “Petitioner’s suggested
combination of Shyu and Kiendl would be completely incapable of ‘sending
out queries for events associated with the original route,’ as recited in
challenged dependent claim 5.” PO Resp. 14. According to Patent Owner,
“Petitioner ignores the fact that the transmitter of Kiendl ha[s] no knowledge
of the original route. Thus, there is no reason for one of ordinary skill in the
art to read either Shyu or Kiendl as disclosing ‘sending out queries for
events associated with the original route.’” Id. at 15.
Petitioner responds that Patent Owner improperly
alleges that the query must be implemented in a manner to
request only information for events associated with the original
route. [PO Resp. 14–16]. But the claim does not contain any
such negative limitation. The query only needs to be
implemented in a manner to request information that includes
events associated with the original route. And [Patent Owner]
does not argue that Shyu as modified by Kiendl fails to include
such a query. Id.
Pet. Reply 13. Petitioner also notes that “Kiendl discloses that that the
queries are “requests relating to the moving data for the route sections.”
Pet., 28 (quoting EX1006, 20:14–16). Thus, Kiendl teaches that that the
queries are specific to particular route segments.” Pet. Reply 13–14.
In response, Patent Owner argues that Petitioner's interpretation is
contradicted by the language of claim 5 and “simply ignores the ‘original
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route’ requirement, instead only requiring a request for events.” Sur-Reply
9–10. Patent Owner further contends that Petitioner’s argument that “Kiendl
discloses ‘requests relating to the moving data for the route sections’” is a
new position, which was not identified in the Petition. Id. at 10 (citing Pet.
Reply 13).
We agree with Petitioner that the language of claim 5 does not
preclude a receiving vehicle from receiving additional information, in
response to “queries for events associated with the original route,” that
would include information identifying “events associated with the original
route,” but also identifying events at other locations. See Pet. Reply 13
(“The query only needs to be implemented in a manner to request
information that includes events associated with the original route.”).
We also disagree with Patent Owner’s contention that Petitioner’s
reference to Kiendl’s disclosure regarding “requests relating to the moving
data for the route sections’” in the Reply Brief is a new position. Petitioner
asserts that Kiendl discloses “that ‘requests relating to the moving data for
the route sections are dispatched via the transmitter/receiver means of the
vehicles.’” Pet. 28 (citing Ex. 1006, 20:14–16). Petitioner further asserts
that “the moving data in Kiendl is similar to Shyu’s traffic information” (id.
at 28 (citing Ex. 1003 ¶ 100)), and “by teaching ‘requests’ or ‘inquiries’ that
are ‘dispatched via the transmitter’ for data related of the route sections,
such as events that occur on the route sections, Kiendl teaches sending out
queries for events.” Id. (citing Ex. 1003 ¶ 101). We agree with Petitioner
that “Kiendl teaches . . . that the queries are specific to particular route
segments.” Pet. Reply 13–14.
Patent Owner further argues that:
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Even under Petitioner’s strained understanding of Shyu,
Shyu’s traffic information is only organized by time, not
location. (See, e.g., EX1004, 3:5–59.) The proxy vehicle in
Shyu cannot therefore respond specifically to any query for
events “associated with the original route,” as the proxy vehicle
does not know what the original route is. (Id.)
PO Resp. 16. However, as Petitioner correctly notes, “Shyu’s traffic
information includes the necessary information for determining and sending
information related to particular route sections.” Pet. Reply 14 (citing Ex.
1004, 3:27–33; Ex. 1019, 44:15–45:2, 48:21–49:5). Thus, Patent Owner’s
argument is not persuasive.
For the foregoing reasons, we determine that Petitioner has
demonstrated by a preponderance of the evidence that claim 5 would have
been obvious in view of Shyu and Kiendl.
g) Analysis of Claim 6
Claim 6 recites “[a] method according to claim 4 wherein the events
include speed information or collision information from vehicles traveling
along the original route.” Ex. 1001, 6:65–67.
Petitioner asserts that claim 6 would have been obvious over Shyu and
Kiendl. Pet. 33–34. Petitioner asserts that Shyu discloses that its system
“receives events that include speed and accident information,” as discussed
with reference to limitations [4.2] and [4.4]. Id. (citing Ex. 1004, 2:22–24;
Ex. 1003 ¶¶ 113–118) (emphasis omitted). Petitioner further asserts that
Kiendl discloses “events such as, e.g., accidents (activation of an airbag,
etc.) and distress calls.” Pet. 33 (quoting Ex. 1006, 29:8–10). Petitioner
explains that it would have been obvious to include Kiendl’s collision
information into Shyu’s traffic information for the reasons discussed with
respect to limitation [4.2]. Pet. 34 (citing Ex. 1003 ¶ 116).
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Patent Owner does not present any argument for claim 6 other than
what we have already considered with respect to claim 4. After considering
the evidence and arguments of record, we determine that Petitioner has
demonstrated by a preponderance of the evidence that claim 6 would have
been obvious in view of Shyu and Kiendl.
h) Analysis of Claim 7
Petitioner asserts claim 7 would have been obvious over Shyu and
Kiendl. Pet. 34–38. For example, claim 7 recites “[a] method according to
claim 4 including: receiving messages from different vehicles traveling over
the original route.” Ex. 1001, 7:1–3. Petitioner asserts that Shyu discloses
that “traffic information (messages) is received from different vehicles such
as ‘vehicles 1 to n . . . in front of the receiving vehicle.’” Pet. 35 (citing
Ex. 1004, 3:66–67; Ex. 1003 ¶¶ 120–122).
Claim 7 further recites “selecting the new route according to the
messages from the different vehicles most recently traveling the original
route.” Ex. 1001, 7:4–6. Petitioner first asserts that
as discussed in [4.3] and [4.4], Shyu renders obvious that one of
the “better time-saving routes” corresponds to a new route
identified according to the received traffic information formatted
as the messages. Shyu further discloses that “[t]he result,
depending on the user’s selection through key punching, can be
constructed into several displays.” Shyu (EX1004), 5:56–59.
The “result” in Shyu corresponds to the selected new route. Id.
at 5:46–59. Accordingly, Shyu renders obvious selecting the new
route according to the messages.
Pet. 35–36 (citing Ex. 1003 ¶¶ 124–125) (alteration in original). Petitioner
further asserts that Shyu’s navigation system “continuously receive[s]
traffic information sent by the passing vehicles and . . . may refresh
aforesaid better route displays at intervals, such as every 10 seconds.”
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Pet. 36 (citing Ex. 1004, 5:59–63) (alteration in original). According to
Petitioner, “[b]ecause the navigation system in Shyu teaches continuously
receiving traffic information about vehicles 1 to n in the front of the
receiving vehicle, Shyu renders obvious selecting the new route according to
the messages from the different vehicles most recently traveling the original
route.” Pet. 38 (citing Ex. 1003 ¶¶ 123–129).
In response, Patent Owner contends that the combination of Shyu and
Kiendl fails to disclose or suggest the subject matter claim 7. PO Resp.
17–22; Sur-Reply 13–18. Patent Owner first argues that Shyu fails to
disclose or suggest “receiving messages from different vehicles traveling
over the original route.” PO Resp. 17. Patent Owner argues next that Shyu
fails to disclose or suggest “selecting the new route according to the
messages from the different vehicles most recently traveling the original
route.” PO Resp. 18–22; Sur-Reply 13–18. We address each argument in
turn.
(1) “receiving messages from different vehicles traveling over
the original route.”
Patent Owner asserts that Petitioner fails to establish that the
“‘messages’ in Shyu come from vehicles that were on the original route
when the message was sent” because vehicle b “is travelling in the opposite
direction.” PO Resp. 17 (citing Ex. 2002 ¶ 68). Patent Owner also argues
that “Shyu does not address whether or not the vehicles 1 to n were actually
on the original route when they passed messages to vehicle b.” Id. (citing
Ex. 2002 ¶ 69).
At the outset, we agree with Petitioner that “the claims do not require
that the different vehicles send the messages directly to the receiving vehicle
without any intermediaries.” Pet. Reply 14. Petitioner provides the
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following copy of Figure 1 of Shyu, annotated to include “an additional
vehicle a0 (purple) traveling in front of vehicle a1 (green).” Pet. Reply 16.

Figure 1, annotated, “shows an example of the invented method
in which the traffic information of a first vehicle is transferred
via a second vehicle to a third vehicle.” Ex. 1004, 2:3–5.
Petitioner’s annotated Figure 1 demonstrates that even though
vehicle b may be travelling in the opposite direction on path Y, it is passing
information from different vehicles, e.g., vehicles a1 and a0, that are
travelling in front of vehicle a. Vehicle a2 is following the same path X on
the same road A, and thus, “traveling over the original route,” as required by
claim 7. Ex. 1004, 2:19–34. We credit Mr. Wilson’s testimony that one of
ordinary skill in the art “would have understood that Shyu’s vehicles that are
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“in front of the receiving vehicle” would include at least those vehicles
traveling on the same road (e.g., highway) as the receiving vehicle, and
accordingly correspond to different vehicles traveling over the original
route.” Ex. 1003 ¶ 121.
We also disagree with Patent Owner’s contention that “Shyu does not
address whether or not the vehicles 1 to n were actually on the original route
when they passed messages to vehicle b.” PO Resp. 17. Instead, we find
that Shyu discloses that “[t]he vehicles 1 to n are those in front of the
receiving vehicle” and “[t]he traffic information about vehicles 1 to n was
previously gotten from adjacent passing vehicles.” Ex. 1004, 3:66–68.
Therefore, when a vehicle 1 to n passes messages to vehicle b, the vehicle 1
to n, was on the original route. See also Ex. 1019, 79:15–20 (“The example
in figure one -- I don't know that in my description of this the Vehicle A2 is
presumed to have a route that it is currently on. That’s called at the original
route. And that route is identified by that Vector X I guess in front of A2
and then beyond that.”).
(2) “selecting the new route according to the messages from
the different vehicles most recently traveling the original
route.”
Patent Owner argues that Petitioner fails to establish that Shyu
discloses or suggests “selecting the new route according to the messages
from the different vehicles most recently traveling the original route.”
PO Resp. 17–22; Sur-Reply 13–18. According to Patent Owner, in Shyu,
“the receiving vehicle can only receive and evaluate the most recently
received data structure,” but “[t]he most recently received data structure only
contains data from the most recently passed proxy vehicle, not the vehicle
most recently traveling the original route. There is nothing in Shyu that
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would teach or suggest that the data structure is in any way related to the
‘original route.’” PO Resp. 20 (emphasis omitted).
Petitioner replies that “in the scenario when vehicles a0 (purple), a1
(green), and a2 (blue) are all traveling on road A, as shown in annotated
Figure 1 above, vehicle b (orange) passes vehicle a0 first, then vehicle a1,
and then vehicle a2.” Pet. Reply 18 (citing Ex. 1004, 2:20–34; Pet. 20–21;
Ex. 1003 ¶¶ 78–79; Ex. 1019, 53:12–54:3). Petitioner explains that
[w]hen the originally planned route includes vehicle a2 (blue)
continuing to travel down past the locations where vehicle b
(orange) passed vehicle a0 (purple) and vehicle a1 (green), then
the traffic information received from vehicles a1 (green) and a0
(purple) is from the different vehicles . . . traveling the original
route. EX1019, 111:10–22. Furthermore, when vehicle b
(orange) does not pass any other vehicles between vehicle a0
(purple) and vehicle a2 (blue), vehicles a0 (purple) and a1 (green)
are the different vehicle most recently traveling the original
route. Pet., 36–38; EX1003, ¶¶127–29. That is, the closest
vehicles directly in front of the receiving vehicle (a2 (blue)) are
the different vehicles most recently traveling the original route.
Because Shyu’s system uses the data received most recently (e.g.,
the data received in the last 10 seconds) to update its route, the
data received . . . from the different vehicles most recently
traveling the original route would be included in the
computation for selecting a new route. Pet., 36–38; EX1003,
¶¶123–29.
Pet. Reply 18. According to Petitioner,
[t]he recitation of selecting the new route according to the
messages from the different vehicles most recently traveling the
original route refers back to recitation of receiving messages
from different vehicles traveling over the original route, which
provides the antecedent basis for the messages from the different
vehicles most recently traveling the original route. That is, the
time of most recently is determined from the different vehicles
traveling the original route whose messages were received.
Thus, of the messages received from different vehicles traveling
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the original route, at least the messages from the different
vehicles most recently traveling the original route are used to
select[] the new route.
Id. at 19. We agree with Petitioner.
Patent Owner does not provide a persuasive explanation as to why the
information received by proxy vehicle B from recently passed vehicle a0
(purple) and vehicle a1 (green), i.e., the closest vehicles traveling directly in
front of receiving vehicle a2, are not “different vehicles most recently
traveling the original route.” And, as discussed above, Shyu discloses that
its system “will continuously receive traffic information sent by the passing
vehicles and update the information 151; therefore, it may refresh aforesaid
better route displays at intervals, such as every 10 seconds.” Ex. 1004,
5:59–63. In light of Shyu’s disclosure, we credit Mr. Wilson’s testimony
that one of ordinary skill in the art
would have understood that Shyu uses the most recent[] data
(e.g., the data received in the last 10 seconds) to update routes.
This data would correspond to data received from multiple
vehicles most recently traveling the original route, as the data
would include the data of the vehicles in front of the receiving
vehicle, transmitted to vehicle b and relayed to the receiving
vehicle, within the last period of time.
Ex. 1003 ¶ 128.
In its Sur-Reply, Patent Owner asserts that “Petitioner’s contention is
wrong as a matter of claim construction because it rewrites the claim to
eliminate the requirement that the route is selected ‘according to’ such
messages.” Sur-Reply 13. Patent Owner asserts that claim 7 “use[s]
recentness to determine which messages to use in selecting the new route,
e.g., by comparing the timestamps of messages corresponding to a same
route segment.” Sur-Reply 14. Patent Owner further asserts, that
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[w]ith Petitioner’s argument, all of the messages would be
considered and the system would have to consider the traffic
stoppage messages and the no traffic stoppage messages to make
a decision. The combined system fails to disclose any method to
make such a selection (and Shyu only teaches messages that
include speed and direction information as a further example and
fails to differentiate messages to consider or not consider based
on recency).
Id. at 16.
We are not persuaded by Patent Owner’s interpretation because it
contradicts the language of claim 7, which recites-in-part “selecting the new
route according to the messages.” Ex. 1001, 7:5 (emphasis added). Patent
Owner argues that under Petitioner’s reasoning “all of the messages would
be considered . . . to make a decision” (Sur-Reply 16), yet other than
requiring that the messages be “from the different vehicles most recently
traveling the original route” (Ex. 1001, 7:5–7), claim 7 provides no
mechanism that would serve to differentiate messages with the particularity
Patent Owner suggests.
Patent Owner contends that claim 7 differentiates messages, in order
to select the new route, by “comparing the timestamps of messages
corresponding to a same route segment.” Sur-Reply 14; see also Tr. 38:16–
19 (“If all you’re considering is stuff as it comes in, then the issue is you
don’t need to pay attention to the recentness. You don’t need to look at the
timestamps, for example, to compare them.”), 41:15–18 (“We’re going to
look at the more recent ones, and not at the less recent ones. So, we’re going
to look at those messages we received, look at those time stamps, and say,
we’re going to look at these, and not those.”). However, claim 7 does not
recite any limitation directed to a “timestamp.” We must be careful not to
read a particular embodiment appearing in the written description into the
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claim if the claim language is broader than the embodiment, as is the case
here. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). “Though
understanding the claim language may be aided by the explanations
contained in the written description, it is important not to import into a claim
limitations that are not a part of the claim.” SuperGuide Corp. v. DirecTV
Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Thus, it would be
improper for us to import from the description of this particular embodiment
the additional limitation argued by Patent Owner for a “timestamp” into the
language of claim 7.
We acknowledge that claim 7 does require some process to
differentiate messages in order to consider “the messages from the different
vehicles most recently traveling the original route.” However, Patent Owner
has not provided a clear and persuasive explanation as to what this
constitutes other than by importing limitations from the Specification into
the claim. We find more credible Petitioner’s argument and Mr. Smith
testimony that “[b]ecause Shyu’s system uses the data received most recently
(e.g., the data received in the last 10 seconds) to update its route, the data
received [] from the different vehicles most recently traveling the original
route would be included in the computation for selecting a new route.” Pet.
Reply 18 (citing Pet. 36–38; Ex. 1003 ¶¶ 123–129). By updating a better
route “at intervals, such as every 10 seconds” (Ex. 1004, 5:59–63), Shyu’s
navigation system discloses a process for differentiating messages in order
to consider “the messages from the different vehicles most recently traveling
the original route.” Thus, Patent Owner’s argument is not persuasive.
For the foregoing reasons, we determine that Petitioner has
demonstrated by a preponderance of the evidence that claim 7 would have
been obvious in view of Shyu and Kiendl.
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E. Alleged Anticipation by or Obviousness over King (Grounds 2 and 3:
Claims 4 and 6)
Because we determine that claims 4 and 6 are unpatentable obvious over
Shyu and Kiendl, we do not reach the Petition’s second and third grounds of
unpatentability over King.
F. Alleged Obviousness over Shyu and Yoshida (Ground 4: Claims 1
and 2)
Petitioner asserts that claims 1 and 2 are unpatentable as obvious over
Shyu and Yoshida. Pet. 50–65; Pet. Reply 24–29. Petitioner also relies on
the testimony of Mr. Wilson to support its arguments. Id. Patent Owner
responds to Petitioner’s assertions. PO. Resp. 26–34; Sur-Reply 23–27.
1. Overview of Yoshida (Ex. 1012)
Yoshida “relates to a traffic information system for reporting traffic
information including traffic jam information, accident information, weather
information and the like to a vehicle traveling on a road.” Ex. 1012, 1:5–8.
Yoshida discloses that on a vehicle, a “vehicle information area stores for
each vehicle ID the preceding data, the current data, a traveling lane and the
other information,” which is “transmitted at least twice at predetermined
time intervals from the on-vehicle apparatus 3 on the vehicle 2. . . . The data
include time data, position data and vehicle speed data.” Id. at 17:58–66.
2. Analysis of Claim 1
Petitioner asserts that claim 1 would have been obvious over Shyu and
Yoshida. Pet. 50–65. Patent Owner contends that Petitioner has failed to
establish that limitations [1.2] and [1.3] are taught by the references.
PO Resp. 26–33; Sur-Reply 23. Patent Owner argues further that one of
ordinary skill in the art would not have been motivated to combine the
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references. PO Resp. 33–34; Sur-Reply 24–27. We have reviewed the
evidence and arguments provided by the parties and are persuaded that
Petitioner has demonstrated by a preponderance of the evidence that claim 1
is unpatentable as obvious over Shyu and Yoshida.
We use Petitioner’s notations to identify the claim elements.
a) [1.0] A method for processing messages in a vehicle
Petitioner asserts that Shyu discloses a system for transferring traffic
information between vehicles to facilitate navigation of those vehicles.
Pet. 51 (citing Ex. 1004, 1:52–54). Petitioner further asserts that “Shyu
discloses that ‘the traffic information from other vehicles is received by a
receiver 4 and decoded by a decoder 14 . . . stored in a passing-by
vehicle information register 16 and is provided to the encoder 17 and
the transmitter 7 to send out.” Pet. 52 (citing Ex. 1004, 4:28–35).
According to Petitioner, “[a] POSITA would have recognized that Shyu’s
receiving, decoding, storing, encoding, and/or transmitting of the traffic
information corresponds to processing messages as recited.” Pet. 52 (citing
Ex. 1003 ¶ 168). We find that Petitioner’s contentions, which Patent Owner
does not dispute, are persuasive in demonstrating that Shyu discloses the
preamble to the extent it is limiting.
b) [1.1] receiving a message containing a message identifier
Petitioner asserts that “Shyu discloses that ‘the traffic information
from other vehicles is received by a receiver 4.’” Pet. 52 (citing Ex. 1004,
4:28–29). Petitioner explains that one of ordinary skill in the art would have
recognized that the traffic information received from another vehicle
corresponds to a message. Pet. 53 (citing Ex. 1003 ¶ 171). Petitioner further
asserts Shyu discloses that
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[t]he traffic information transferred among the vehicles includes
the traffic information of the vehicle itself as well as of other
vehicles” in the following format ”
Pet. 53 (citing Ex. 1004, 3:49–59, 4:53–59). According to Petitioner, one of
ordinary skill in the art “would have recognized that the code of the vehicle
in the traffic information corresponds to a message identifier . . . because the
vehicle code identifies the vehicle that is associated with the corresponding
traffic information.” Pet. 53 (citing Ex. 1003 ¶¶ 172–173). We find that
Petitioner’s contentions, which Patent Owner does not dispute, are
persuasive in demonstrating that Shyu discloses this limitation to an
ordinarily skilled artisan.
c) [1.2] comparing the message identifier to [a] vehicle identifier
Petitioner asserts that Shyu discloses storing “traffic information”
(Pet. 55 (citing Ex. 1004, 4:30–33), and that in order “to avoid accumulating
repeated information, the information is stored based on the codes of the
vehicles and is continuously updated.” Pet. 55 (citing Ex. 1004, 4:41–43).
According to Petitioner,
[a] POSITA would have recognized Shyu’s description of
storing information based on the codes of the vehicles as an
explicit disclosure of comparing the message identifier to [a]
vehicle identifier. Specifically, a POSITA would have
understood that, to update traffic information that is stored based
on vehicle codes, the system would compare the vehicle code
associated with traffic information received from a vehicle in a
message, with vehicle codes that are already stored in the
passing-by vehicle information register 16. This would prevent
the passing-by vehicle from storing multiple instances of traffic
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information from the same vehicle or “accumulating repeated
information” as Shyu explains (at 4:41–43).
Pet. 55 (citing Ex. 1003 ¶¶ 177–180). Petitioner explains that Shyu’s
system would examine the vehicle code associated with a
received traffic information message, determine that the
information associated with the vehicle code in that message
does not exist in the passing-by vehicle information register (e.g.,
by comparing that vehicle code to vehicle codes in the register),
and then store the traffic information associated with that vehicle
code for passing along to other vehicles.
Pet. 56 (citing Ex. 1003 ¶ 180). We find that Petitioner’s contentions
regarding this limitation are persuasive. Patent Owner’s rebuttal arguments
regarding this limitations are discussed in the next subsection.
d) [1.3] processing the message according to the comparison
between the message identifier and the vehicle identifier
Petitioner asserts Shyu discloses that in order “to avoid accumulating
repeated information, the information is stored based on the codes of the
vehicles and is continuously updated.” Pet. 57 (citing Ex. 1004, 4:41–43).
Petitioner explains that “[a] POSITA would have recognized that updating
the traffic information stored in the passing-by-vehicle information register
16 with the traffic information in the message constitutes processing the
message according to the comparison.” Pet. 57–58 (citing Ex. 1003
¶¶ 185–186).
In response to Petitioner’s assertions for limitations [1.2] and [1.3],
Patent Owner contends that the combination of Shyu and Yoshida fails to
disclose or suggest “comparing the message identifier to a vehicle identifier
because Petitioner points to the same value for both identifiers.” PO Resp.
27; Sur-Reply 23. However, Petitioner’s reliance on the same value for the
“message identifier” and “vehicle identifier” is consistent with the ’351
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patent’s disclosure. The ’351 patent identifies that a “message may include
a Vehicle Identification Number (VIN number) that identifies specific
vehicles associated with the message.” Ex. 1001, 2:38–41; see also id. at
2:42–43 (describing that “any vehicle identifier or user identifier can be
used” as a “message identifier.”). And, when performing a comparison, the
’351 patent discloses that a processor simply “compares a stored vehicle
identifier with the identifier contained in the received message.” Id. at
2:43–45.
Patent Owner further argues that under “Petitioner’s characterization
of Shyu, the message identifier will always either match the vehicle
identifier or be unable to be compared to the vehicle identifier because the
vehicle identifier will not exist.” PO Resp. 28. According to Patent Owner,
[i]f the result of the comparison is always the same, then there is
no point to processing the message according to the comparison.
The method would just process the message. There must be
some meaningful result of the comparison in order for the recited
“processing . . . according to the comparison” to have any
meaning.
PO Resp. 29. However, the ’351 patent’s Specification informs us that the
“comparing” step is simply based on whether or not a match has occurred.
In this regard, while describing the “comparing” step, the ’351 patent’s
Specification discloses that “[i]f the message identifier matches the vehicle
identifier, the message is reported to a vehicle operator or a reply message is
sent back in block 36.” Ex. 1001, 2:46–48. And, “[i]f the message identifier
does not match some stored identifier associated with the vehicle, the
message is either discarded or stored in a message buffer in block 38.” Id. at
2:53–56.
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Consistent with this understanding, we agree with Petitioner that
although claim 1 does not require a “meaningful result,” Shyu “provide[s] a
meaningful result that allows for further processing to be conducted based
on that result.” Pet. Reply 25 (citing Pet. 54–57; Ex. 1003 ¶¶ 176–182).
Petitioner, relying on the testimony of Mr. Wilson explains, that “if there is a
match, Shyu’s system processes the traffic information stored in the message
such that it replaces the previously stored traffic information corresponding
to that vehicle identifier. Id. (citing Pet. 54–57; Ex. 1003 ¶¶ 176–182;
Ex. 1004, 4:41–43). And, if there is no match found, Petitioner, relying on
the testimony of Mr. Wilson, explains that “Shyu’s system processes the
traffic information stored in the message to add a new register field
containing the information from the message. Thus, the message can be
processed to either replace an existing register field or add a new register
field.” Id. at 25–26 (citing Pet. 54–57; Ex. 1003 ¶¶ 176–182; Ex. 1004,
4:41–43).
Patent Owner asserts that Petitioner’s entire argument regarding how
Shyu further processes information after the comparison is based on a single
sentence in Shyu that states “[t]o avoid accumulating repeated information,
the information is stored based on the codes of the vehicles and is
continuously updated.” PO Resp. 30 (quoting Ex. 1004, 4:41–43).
According to Patent Owner, “[e]verything else in Petitioner’s argument is
based on their expert’s speculative extrapolation from this sentence.” Id. at
30–31 (citing Pet. 55–57; Ex. 1003 ¶¶ 176–182).
We find credible Petitioner’s argument and Mr. Wilson testimony that
one of ordinary skill in the art “would have recognized that updating the
traffic information stored in the passing-by-vehicle information register 16
with the traffic information in the message constitutes processing the
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message according to the comparison.” Ex. 1003 ¶ 186. In particular, Mr.
Wilson testifies that
[i]f the vehicle code exists, the system would process[] the
message by updating the corresponding traffic information
stored in the passing-by-vehicle information register 16 with the
traffic information in the message, which a POSITA would have
understood as including the manipulation of the message data so
as to be stored in the register 16. See, e.g., Microsoft Computer
Dictionary (EX1013), p. 423 (“processing . . . The manipulation
of data within a computer system.”).
Id. Mr. Wilson further testifies that “[i]f the comparison determines that the
matching vehicle code does not exist, the system would process the message
by inserting a new vehicle code and traffic information into the passing-by-
vehicle information register 16.” Id.
We have considered Patent Owner’s arguments, but do not find them
to be persuasive. Patent Owner’s assertion largely consists of attorney
argument, unsupported by any testimony from Dr. Goldberg or other
evidence to support its assertion that Shyu fails to disclose or suggest
“processing the message according to the comparison,” as recited by
limitation [1.3].
Patent Owner further contends that “[t]here is nothing in Shyu to
teach or suggest parsing every incoming data structure to update individual
fields of an already-stored data structure. The complicated process of doing
so is purely a creation of Mr. Wilson.” Id. at 32; see also id. at 31 (“Shyu
only discloses that ‘the information is stored’ in the same way it is received
and or transmitted—as a whole data structure.”). However, we are not
persuaded that Shyu is so limited. Patent Owner’s argument runs counter to
the description in the reference itself, which discloses that Shyu’s
“transference,” i.e., the traffic information from other vehicles, is received
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and then first decoded. Ex. 1004, 4:28–30; Fig. 3. As Petitioner correctly
notes,
the information stored in passing-by vehicle register 16 only
includes the information from the passing-by vehicles, such as
vehicle a1, and not the vehicles in front of vehicle b, which is
stored separately in front-vehicle register 15. EX1004, 4:28–43.
Therefore, the transference received by vehicle b is already
separated prior to being stored.
Pet. Reply 27.
In its Sur-Reply, Patent Owner argues that there would be no need to
perform the “comparison” Petitioner proposes because it “does not really
compare anything, but instead only uses the identified ‘message identifier’ to
determine where to store the traffic information: in an existing data entry or
a new data entry.” Sur-Reply 23. We disagree.
Patent Owner has not provided a clear and persuasive explanation as
to why Shyu “does not really compare anything.” Id. Here, Shyu describes
storing data based on codes in order to avoid storing duplicative data. See
Ex. 1004, 4:41–43 (“To avoid accumulating repeated information, the
information is stored based on the codes of the vehicles and is continuously
updated.”). We credit Mr. Wilson’s testimony that one of ordinary skill in
the art “would have recognized that to update traffic information that is
stored based on vehicle codes, the system would compare the vehicle code
associated with traffic information received from a vehicle in a message,
with vehicle codes that are already stored in the passing-by vehicle
information register 16.” Ex. 1003 ¶ 178. We also agree with Petitioner and
Mr. Wilson that such a comparison “would prevent the passing-by vehicle
from storing multiple instances of traffic information from the same vehicle
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or “accumulating repeated information” as Shyu explains. Id. (citing
Ex. 1004, 4:41–43).
Patent Owner last argues that even if Shyu discloses “the general
functions of comparing and storing,” it “completely omits the ‘processing’
step required by the claim language.” Sur-Reply 24. However, the
descriptions in Shyu along with the testimony provided by Mr. Wilson,
already discussed above, disclose the separate functions of “comparing” and
“processing,” as required by the language of claim 1. See, e.g., Ex. 1003
¶¶ 176–187.
For these reasons, we find that Shyu discloses “processing the
message,” as required by limitation [1.3].
e) [1.4] storing the message in memory located in the vehicle and
periodically transmitting the stored message from the vehicle
to other vehicles
Petitioner asserts that “Shyu discloses that “each first traffic
information (of the vehicle itself that sends it out) will be stored in a
passing-by-vehicle information register 16 and is provided to the encoder
17 and the transmitter 7 to send out.” Pet. 58–59 (citing Ex. 1004, 4:30–
33; Ex. 1003 ¶¶ 189–190). Petitioner explains that “[a] POSITA would have
recognized that the passing-by-vehicle information register 16 is a memory”
(Pet. 59 (citing Ex. 1003 ¶ 189; Ex. 1013, 445; Ex. 1004, 4:57–58)), and as
such, “Shyu’s description of storing the traffic information and sending it out
discloses storing the message in memory and transmitting the stored
message from the vehicle.” Pet. 59 (citing Ex. 1003 ¶ 189).
Petitioner further asserts that Yoshida similarly discloses storing
“traffic data similar to that of Shyu” and then transmitting that data “at
predetermined time intervals from the on-vehicle apparatus 3 on the
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vehicle 2.” Pet. 61 (citing Ex. 1012, 17:58–66). According to Petitioner,
“[a] POSITA would have been motivated to combine Shyu’s teachings of
transmitting traffic information with Yoshida’s teachings of transmitting
information periodically, such as at predetermined time intervals.” Pet. 61
(citing Ex. 1003 ¶ 194). Petitioner explains that “modify[ing] Shyu’s
transmitter 7 to send information from the passing-by-vehicle information
register 16 at predetermined time intervals” would have been no more than
the combination of prior art elements according to known methods to yield
predictable results. Pet. 61–62 (citing Ex. 1003 ¶ 194). Petitioner further
explains that “a POSITA would have recognized the desirability of periodic
transmission because it would have the effect of saving power resources.”
Pet. 62 (citing Ex. 1003 ¶ 195; Ex. 1014 ¶¶ 34, 37 (Knaian roadway
monitoring patent application)).
In response, Patent Owner argues that one of ordinary skill in the art
would not have been motivated to combine Shyu and Yoshida because Shyu
is directed to a mesh communication system and Yoshida is directed to a
“star-based communication system.” PO Resp. 33. Patent Owner asserts
that “Yoshida discloses repeating of information from a vehicle to the
central computer to provide a time snapshot of the traffic and/or situation at
the vehicle.” Id. (citing Ex. 2002 ¶ 89). Patent Owner further asserts that, in
contrast, the ʼ351 patent “periodically transmit[s] the exact same stored
messages on the vehicle as a means to guarantee the reliable reception of any
given message at the receiving vehicle.” Id. at 34 (citing Ex. 2002 ¶ 90).
Petitioner replies that Shyu and Yoshida both “use known wireless
transmission methods, such as radio waves to transmit information.”
Pet. Reply 28 (citing Ex. 1004, 3:43–48; Ex. 1012, 12:33–46). According to
Petitioner, a person of ordinary skill would have been motivated to make the
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combination because “[t]he use of periodic transmissions over wireless
networks allows for the well-known benefit of saving or reallocating power
resources.” Id. (citing Ex. 1003 ¶ 195). Petitioner asserts that whether or
not Yoshida “transmit[s] the exact same message each time” is irrelevant
because “Yoshida is not relied on for its disclosure of the content of the
message. Rather, Yoshida is relied on for teaching the use of periodic
transmissions.” Id.
Upon review of the evidence in the current record and the parties’
contentions, we determine that Petitioner has shown sufficiently that a
person of ordinary skill in the art would have had reason, with rational
underpinnings, to combine Shyu and Yoshida in the manner Petitioner
proposes. We credit Mr. Wilson’s testimony that it would have been
obvious to “modify Shyu’s transmitter 7 to send information from the
passing-by-vehicle information register 16 at predetermined time intervals.”
Pet. 62 (citing Ex. 1003 ¶ 194). Mr. Wilson provides testimony that
“[i]ncorporating the teachings of Yoshida into those of Shyu would have
been no more than the combination of prior art elements according to known
methods to yield predictable results.” Ex. 1003 ¶ 194. Petitioner, with
support from Mr. Wilson, contends that one of ordinary skill in the art would
have recognized multiple “advantages of transmitting the traffic information
periodically as taught by Yoshida.” Pet. 62 (citing Ex. 1003 ¶ 195). For
example, Mr. Wilson testifies that one of ordinary skill in the art “would
have recognized the desirability of periodic transmission because it would
have the effect of saving power resources” (Ex. 1003 ¶ 195), and submitted
evidence supporting such testimony. Id. (citing Ex. 1014 ¶ 37 (“Periodic
transmissions are well adapted to applications where relatively small
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amounts of data are transferred and offer the advantages of both power
conservation and efficient utilization of limited frequency bandwidth.”).
In its Sur-Reply, Patent Owner asserts that the proposed combination
of Shyu and Yoshida is “unsuitable.” Sur-Reply 27. More particularly,
Patent Owner argues that even though “it may be beneficial to use periodic
transmissions i[n] some systems, Shyu is not such a system” and “[t]hat is
why Shyu’s mesh-based network uses continuous transmission.” Id. at 26–
27.
We do not find Patent Owner’s argument persuasive. The motivation
analysis takes into consideration whether a modification renders the prior art
unsatisfactory or inoperable for its intended purpose. In re Gordon, 733
F.2d 900, 902 (Fed. Cir. 1984). However, merely showing that the result of
the modification may be inconsistent with some of the reference’s goals is
not sufficient for a modification to be unsatisfactory or inoperable for its
intended purpose. In re Gurley, 27 F.3d 551, 554 (Fed. Cir. 1994).
Patent Owner asserts that one of ordinary skill in in the art would not
be motivated to modify Shyu to incorporate Yoshida’s periodic
transmissions because the information in Shyu is distributed by passing
information from vehicle to vehicle continuously. Sur-Reply 25–27.
However, Shyu identifies that it is not always beneficial to receive traffic
information, e.g., when “the traffic status is visible.” Ex. 1004, 2:48–57.
Therefore, while Patent Owner may be correct that “[i]f vehicle a1 does not
actively transmit information at the time while passing vehicle b, vehicle b
would not receive the most recent information about the route on which
vehicle a1 was traveling” (Sur-Reply 27), “a given course of action often has
simultaneous advantages and disadvantages, and this does not necessarily
IPR2020-00354
Patent 6,792,351 B2
54
obviate motivation to combine.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d
1157, 1165 (Fed. Cir. 2006).
For the foregoing reasons, we determine that Petitioner has
demonstrated by a preponderance of the evidence that claim 1 would have
been obvious in view of Shyu and Yoshida.
f) Analysis of Claim 2
Dependent claim 2 recites “[a] method according to claim 1 including
deleting the message from memory according to when the message was
received in the vehicle.” Ex. 1001, 6:27–29.
Petitioner asserts that Shyu discloses storing “traffic information”
from other vehicles. Pet. 64. Petitioner further asserts that Shyu discloses
“that the “storage in the register 16 is updated in a process of first-in &
first-out and removing any information of the path already behind the
receiving vehicle.” Id. (citing Ex. 1004, 4:34–36). According to Petitioner,
“[a] POSITA would have recognized that in a FIFO process, the traffic
information that is received first (first-in), would be deleted first (first-out).”
Pet. 64 (citing Ex. 1003 ¶ 200).
Patent Owner does not present any argument for claim 2 other than
what we have already considered with respect to claim 1. After considering
the evidence and arguments of record, we determine that Petitioner has
demonstrated by a preponderance of the evidence that claim 2 would have
been obvious in view of Shyu and Yoshida.
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Patent 6,792,351 B2
55
IV. CONCLUSION15
In summary:

VI. ORDER
For the reasons given, it is:
ORDERED that Petitioner has established based on a preponderance
of evidence that claims 1, 2, and 4–7 of U.S. Patent 6,792,351 B2 are
unpatentable as set forth above; and
FURTHER ORDERED because this is a final written decision, the
parties to this proceeding seeking judicial review of our Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

15 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
4–7 103(a) Shyu, Kiendl 4–7
4, 6 102(e) King
4, 6 103(a) King
1, 2 103(a) Shyu, Yoshida 1, 2
Overall
Outcome
1, 2, 4–7
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Patent 6,792,351 B2
56
FOR PETITIONER:
Alyssa Holtslande
Roshan Mansinghani
Jung Hahm
UNIFIED PATENTS, LLC
alyssa@unifiedpatents.com
roshan@unifiedpatents.com
jung@unifiedpatents.com
Raghav Bajaj
David L. McCombs
Dina Blikshteyn
HAYNES AND BOONE, LLP
raghav.bajaj.ipr@haynesboone.com
david.mccombs.ipr@haynesboone.com
dina.blikshteyn.ipr@haynesboone.com

FOR PATENT OWNER:
Robert R. Brunelli
Brian S. Boerman
SHERIDAN ROSS P.C.
rbrunelli@sheridanross.com
bboerman@sheridanross.com

Jeffrey G. Toler
TOLER LAW GROUP, PC
jtoler@tlgiplaw.com