Toyota Motor Corporationv.Cellport Systems, Inc.

Patent Trial and Appeal Board

Oct 28, 2015

08050910 (P.T.A.B. Oct. 28, 2015)

Trials@uspto.gov Paper No. 7
571-272-7822 Filed: October 28, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

TOYOTA MOTOR CORPORATION,
Petitioner,

v.

CELLPORT SYSTEMS, INC.,
Patent Owner.
____________

Case IPR2015-01423
Patent 5,479,479
____________

Before JAMESON LEE, JAMES B. ARPIN, and SCOTT C. MOORE,
Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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I. INTRODUCTION
A. Background
Toyota Motor Corporation filed a Petition (Paper 2, “Pet.”) to institute
inter partes review of claims 1–29 of expired U.S. Patent No. 5,479,479
(Ex. 1001, “the ’479 patent”). Patent Owner, Cellport Systems, Inc., filed a
Preliminary Response (Paper 6, “Prelim. Resp.”).
Upon consideration of the Petition and Preliminary Response, we
reject the Petition under 35 U.S.C. § 325(d), because substantially the same
prior art and substantially the same arguments previously were presented by
Petitioner in IPR2015-00634. Accordingly, we do not institute an inter
partes review of any claim of the ’479 patent. The Petition is denied.
B. Related Matters
The ’479 patent has been asserted in two lawsuits in the United States
District Court for the District of Colorado. Pet. 4; Paper 5, 2. The ’479
patent also is the subject of a petition filed by Toyota Motor Corporation, the
same petitioner as in this proceeding, in IPR2015-00634.
C. Evidence Relied Upon by Petitioner
Petitioner relies on the following references:1

1 Petitioner also relies on the Declaration of John Villasenor (Ex. 1004).
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Reference Date Exhibit
Boatwright US 5,465,207 Issued:
Nov. 7, 1995
Filed:
Sep. 21, 1992
Ex. 1002
Mansell US 5,223,844 Issued:
June 29, 1993
Filed:
Apr. 17, 1992
Ex. 1014
Hoto US 5,410,541 Issued:
Apr. 25, 1995
Filed:
May 4, 1992
Ex. 1015
Guy US 5,187,591 Filed:
Feb. 16, 1993
Filed:
Jan. 24, 1991
Ex. 1016
Thompson US 5,444,855 Issued:
Aug. 22, 1995
Filed:
Apr. 17, 1992
Ex. 1017
CAN Szydlowski, C., CAN
Specification 2.0: Protocol and
Implementations, SAE Technical
Paper 921603, Future
Transportation Technology
Conference and Exposition,
Costa Mesa, California August
10–13, 1992
1992 Ex. 1026

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D. The ’479 Patent
The ’479 patent relates to transmitting and receiving digital
information through an air link. Ex. 1001, Title. The specific disclosure
pertains to sending and receiving digital data between a plurality of
peripheral devices, through a cellular telephone, to remote devices. Id. at
Abstr. One aspect of the ’479 patent concerns providing a universal
interface to different kinds of cellular phones in the form of an adaptor cable
that provides for selectable coding to identify the type of the attached phone,
and the application environment for that aspect of the invention can be that
of a car kit environment. Id. at 2:40–55. Another aspect of the ’479 patent
concerns using a controller attached to a common bus to which a plurality of
peripheral devices also are attached to permit digital data to be
communicated to and from the peripheral devices via a wireless telephone.
Id. at 3:30–44. Figure 15 of the ’479 patent is reproduced below:

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Figure 15 shows cellular phone 10 connected to car kit controller 200
through an interconnect cable having universal connector 45 that connects
with car kit connector 204. Id. at 10:10–17. Car kit controller 200 includes
bus logic 268 to control common bus 280 to which peripheral devices CD
ROM 292, display 288, and GPS Receiver 284 are connected. Id. at 11:59–
61.
With regard to operation of the system, the ’479 patent states:
In operation, cellular phone 10 may receive RF signals
containing data addressed to one of the peripheral devices. The
data is passed via interconnect cable 46 to microprocessor 208.
Microprocessor 208 formats the data according to the needs of
the peripheral device to which the data is addressed. The data
is then either buffered or passed directly through bus connector
276 to the appropriate peripheral device [on] bus 280.

Car kit controller 200 further comprises circuitry to allow
this process to be reversed to allow any of the peripheral
devices to send data through car kit controller 200 and cellular
phone 10 and out of the car using RF signals. Accordingly, a
duplex digital path is provided between bus 280 and cellular
phone 10, for allowing digital information to be transmitted
through car kit controller 200 in either direction.
Id. at 12:39–54.
II. ANALYSIS
Title 35, Section 325(d) of the U.S. Code provides, in pertinent part:
In determining whether to institute or order a proceeding under
this chapter, chapter 30, or chapter 31, the Director may take
into account whether, and reject the petition or request because,
the same or substantially the same prior art or arguments
previously were presented to the Office.
The following table shows the alleged grounds of unpatentability
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asserted by Petitioner in this proceeding:
Reference(s) Basis Claim(s) Challenged
Boatwright, CAN, and
Mansell § 103(a)
1, 2, 4, 6–19, 21–25, and
27–29
Boatwright, CAN,
Mansell, and Hotto § 103(a) 3 and 5
Boatwright, CAN,
Mansell, and Guy § 103(a) 20
Boatwright, CAN,
Mansell, and Thompson § 103(a) 26
Mansell and CAN § 103(a) 1, 2, 4, 6–12, 15–19, 22–24, and 27–29

The following table shows the alleged grounds of unpatentability
Petitioner previously alleged in IPR2015-00634:
Reference(s) Basis Claim(s) Challenged
Boatwright, RS-4852, and
Mansell § 103(a)
1, 2, 4, 6–19, 21–25, and
27–29
Boatwright, RS-485,
Mansell, and Hotto § 103(a) 3 and 5
Boatwright, RS-485,
Mansell, and Guy § 103(a) 20
Boatwright, RS-485,
Mansell, and Thompson § 103(a) 26
Mansell and RS-485 § 103(a) 1, 2, 4, 6–12, 15–19, 22–24, and 27–29

2 Standard for Electrical Characteristics of Generators and Receivers for
Use in Balanced Digital Multipoint Systems, RS-485, Electronic Industries
Association (April 1983).
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But for substituting CAN for RS-485, the alleged grounds of
unpatentability in this proceeding are the same as those grounds of
unpatentability in IPR2015-00634. The Petition in IPR2015-00634 was
filed on February 5, 2015, prior to filing of the Petition in this proceeding on
June 19, 2015. Despite the substitution of CAN for RS-485, the prior art
and arguments presented in this proceeding are substantially the same as
those previously presented in IPR2015-00634.
Each of Boatwright, Mansell, Hotto, Guy, and Thompson is applied in
the same manner in this case, i.e., based on the same teachings therein,
against the same claims of the ’479 patent, as it was previously applied in
IPR2015-00634. Although in this case Petitioner has replaced RS-485 with
CAN, both RS-485 and CAN disclose a standard for a bus useable to
connect multiple devices. CAN was published in 1992, whereas RS-485
was published in 1983. The teaching that is required from each to cure the
deficiency of the other prior art references is the same.
Petitioner makes no explanation as to why the disclosure of CAN is
substantively and meaningfully different from the disclosure of RS-485,
insofar as the claimed subject matter of the challenged claims is concerned.
Citing page 3 of CAN, Petitioner refers to CAN as disclosing a bus protocol
“designed” for use in vehicles. Pet. 3. We have reviewed the cited portion
of CAN and do not see any disclosure that CAN was designed specifically
for use in vehicular systems, as opposed to other environments. Rather,
CAN simply is useable in vehicular systems. Even assuming that CAN was
designed specifically for use in vehicular systems, that fact would be
inconsequential because it is not reasonably disputable that the RS-485 bus
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standard is useable on vehicles. Petitioner does not identify any
functionality provided by the CAN standard, significant to the claimed
subject matter of the challenged claims, that it believes the RS-485 standard
does not provide. In that regard, we note that in the Petition in IPR2015-
00634 (Paper 2, 45), Petitioner asserted that RS-485 discloses a bus in which
any slave device on an RS-485 bus can communicate with any other of 32
slave devices without going through a master device. Petitioner also
asserted in that previous Petition (id. at 21) that the RS-485 standard “was a
well-known bus protocol providing a simple way to interconnect peripherals
such that they could be communicable with each other.”
Additionally, Petitioner presents no argument or evidence that CAN
was not known or available to Petitioner at the time of filing of the Petition
in IPR2015-00634. Without explanation, Petition seeks another opportunity
to challenge the same claims on essentially the same grounds, albeit not
based on the identical set of prior art references. Such a second bite at the
apple wastes the Board’s limited resources and imposes undue burden on the
Patent Owner. Also, the Petition in this case was filed on June 19, 2015,
subsequent to the filing of Patent Owner’s Preliminary Response in
IPR2015-00634 on May 20, 2015. Especially given the similarity between
the earlier application of RS-485 and the application here of the CAN
standard, the opportunity to read Patent Owner’s Preliminary Response in
IPR2015-00634, prior to filing the Petition here, is unjust. See 35 U.S.C.
§ 314(a) (“The Director may not authorize an inter partes review unless . . .”;
emphasis added); 37 C.F.R. §§ 42.1(b), 108(b).

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On this record, we exercise our discretion and “reject the petition”
because substantially the same prior art and substantially the same
arguments previously were “presented to the Office” in IPR2015-00634.
35 U.S.C. § 325(d); see also Unilever, Inc., v. The Proctor & Gamble Co.,
Case IPR2014-00506, slip op. at 6 (PTAB July 7, 2014) (Paper 17)
(informative).
III. ORDER
Accordingly, it is
ORDERED that the Petition is denied, and no inter partes review is
instituted as to any claim of the ’479 patent.

For PETITIONER:
James Barney
Thomas Winland
Joshua Goldberg
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
james.barney@finnegan.com
tom.winland@finnegan.com
joshua.goldberg@finnegan.com

For PATENT OWNER:
Gregory Howison
Peter Thoma
HOWISON &ARNOTT
ipr@dalpat.com