Toyota Motor Corporationv.LeRoy G. Hagenbuch

Patent Trial and Appeal Board

Dec 5, 2014

12727537 (P.T.A.B. Dec. 5, 2014)

Trials@uspto.gov Paper 37
Tel: 571-272-7822 Entered: December 5, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
TOYOTA MOTOR CORP.,
Petitioner,
v.
LEROY G. HAGENBUCH,
Patent Owner.
_______________

Case IPR2013-00483
Patent 8,014,917 B2
_______________

Before JAMESON LEE, MICHAEL W. KIM, and
JEREMY M. PLENZLER, Administrative Patent Judges.

PLENZLER, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

IPR2013-00483
Patent 8,014,917 B2

2

I. INTRODUCTION
A. Background
Toyota Motor Corp. (“Petitioner”) filed a Petition to institute an inter
partes review of claims 1–3, 5–8, 18–20, and 22–25 of U.S. Patent No.
8,014,917 B2 (Ex. 1001, “the ’917 patent”). Paper 1 (“Pet.”). The Petition
was accompanied by an expert declaration from David McNamara.
Ex. 1008. Leroy G. Hagenbuch (“Patent Owner”) filed a Preliminary
Response. Paper 7 (“Prelim. Resp.”). We granted the Petition and instituted
trial on the following grounds: (1) obviousness of claims 1–3, 5–8, 18–20,
and 22–25 over Aoyanagi1 and Oishi2; and (2) obviousness of claims 1–3, 5–
8, 18–20, and 22–25 over Aoyanagi and Vollmer3. Paper 9 (“Dec. on
Inst.”).
During trial, Patent Owner filed a Patent Owner Response (Paper 23,
“PO Resp.”), which was accompanied by an expert declaration from
Michael Nranian (Ex. 2057). Petitioner filed a Reply to the Patent Owner
Response. Paper 26 (“Pet. Reply”). An oral hearing was held on August 27,
2014. A transcript of the hearing has been entered into the record. Paper 36
(“Tr.”).

1 Japanese Patent Publication No. H03-085412, published
April 10, 1991 (Ex. 1002, “Aoyanagi”). Citations to this reference refer to
its English translation (Ex. 1003).
2 Japanese Patent Publication No. S58-16399, published January
31, 1983 (Ex. 1004, “Oishi”). Citations to this reference refer to its English
translation (Ex. 1005).
3 International Patent Publication No. WO 90/03899, published
April 19, 1990 (Ex. 1006, “Vollmer”). Citations to this reference refer to its
English translation (Ex. 1007).
IPR2013-00483
Patent 8,014,917 B2

3

We have jurisdiction under 35 U.S.C. § 6(c). This final written
decision is issued pursuant to 35 U.S.C. § 318(a).
We determine that Petitioner has shown by a preponderance of the
evidence that claims 1–3, 5–8, 18–20, and 22–25 of the ’917 patent are
unpatentable.
B. Related Proceedings
The ’917 patent is involved in a district court proceeding, Hagenbuch
v. Toyota Motor Sales, U.S.A., Inc., No.1:13-cv-6713 (N.D. Ill. filed Sept.
18, 2013). Pet. 1; Prelim. Resp. 4. Another inter partes review of the ’917
patent is pending between the same parties (IPR2013-00638), and is directed
to claims 4, 9–17, 21, and 26–38.
C. The ’917 Patent
The ’917 patent relates generally to a vehicle including various
sensors that monitor vital signs and production-related parameters of the
vehicle. Ex. 1001, 6:23–27. The ’917 patent provides a list of vital sign
sensors that detect engine oil temperature, engine oil pressure, engine
coolant level, engine crankcase pressure, engine fuel pressure, transmission
oil temperature, transmission oil level, differential oil temperature,
differential oil level, current amperes to the drive motor, drive motor
temperature, a crash, and tire air pressure, and a list of production-related
sensors that determine engine revolutions per minute (RPM), throttle
position, engine fuel consumption, distance traveled, ground speed, incline,
angle of turn, steering wheel position, brake status, vehicle direction, load,
and dump status. Id. at 6:30–58. The ’917 patent notes that each of the
sensors listed above was known and commercially available at the time of
the ’917 patent’s filing. Id. at 6:59–61. The ’917 patent provides additional
IPR2013-00483
Patent 8,014,917 B2

4

detail on a number of the sensors, including the sensors related to vehicle
braking, for example. Id. at 10:6–11:10.
The ’917 patent describes two types of sensors related to vehicle
braking: “a simple on/off status sensor” and a sensor “which senses the
degree of braking.” Id. at 10:43–49. The ’917 patent explains that the
illustrated embodiment includes a “degree of braking” sensor and provides
various examples employing the data obtained from the “degree of braking”
sensor to determine various vehicle conditions based on the timing of when
the brakes were applied to diagnose a crash condition, for example. Id. at
10:49–62.
The ’917 patent further explains that a crash event can trigger
downloading data saved from the various sensors, and that data can continue
to be gathered and stored after the crash event. Id. at 7:36–38, 7:57–60,
11:59–62, 25:10–14. A distress signal is automatically sent after the crash
event to alert other personnel that aid may be required. Id. at 7:35–41. The
crash event is described as being detected when the value of data sampled
from an accelerometer exceeds a pre-programmed critical value.
Id. at 25:8–10.
D. Illustrative Claims
Of challenged claims 1–3, 5–8, 18–20, and 22–25, claims 1 and 18 are
the only independent claims, with claims 2, 3, and 5–8 depending from
claim 1 and claims 19, 20, and 22–25 depending from claim 18. Claim 1
illustrates the claimed subject matter and is reproduced below:
1. A method for recording operation of a vehicle, the
method comprising:
monitoring production-related parameters of the
vehicle, including a ground speed of the vehicle, a
IPR2013-00483
Patent 8,014,917 B2

5

position of a throttle for an engine of the vehicle
and a degree of braking of the vehicle;
monitoring vital sign parameters of the vehicle,
including information indicative of a change in the
velocity of the vehicle;
detecting a collision of the vehicle in response to a
sudden change in the velocity of the vehicle;
automatically sending a wireless distress signal from
the vehicle in response to detecting the collision;
and
capturing the production-related parameters of the
vehicle before detection of the collision and the
vital sign parameters after detection of the
collision.
Id. at 25:44–59.

II. ANALYSIS
For the challenged claims, Petitioner must prove unpatentability by a
preponderance of the evidence. 35 U.S.C. § 316(e). We begin with a claim
construction analysis, and then follow with specific analysis of the prior art.
A. Claim Construction
The ’917 patent expired subsequent to the institution of trial in this
proceeding. See Paper 11, 2. We review the expired patent claims
according to the standard applied by the district courts. See In re Rambus,
694 F.3d 42, 46 (Fed. Cir. 2012). Specifically, we apply the principles set
forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005). “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.”
IPR2013-00483
Patent 8,014,917 B2

6

DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014
(Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17).
After considering the various claim constructions presented by both
Petitioner and Patent Owner, no particular term requires an express
construction in order to conduct properly our analysis of the prior art. Only
those terms which are in controversy need to be construed, and only to the
extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. &
Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
B. Obviousness over Aoyanagi and Oishi
We have reviewed the Petition, the Patent Owner Response, and
Petitioner’s Reply, as well as the relevant evidence discussed in those
papers. We are persuaded, by a preponderance of the evidence, that claims
1–3, 5–8, 18–20, and 22–25 would have been obvious over Aoyanagi and
Oishi under 35 U.S.C. § 103.
1. Claim 1
Claim 1 is directed to a method including detecting a vehicle collision,
transmitting a distress signal after the collision, and monitoring and
capturing certain vehicle parameters before and after the collision.
Petitioner contends that Aoyanagi teaches each element of claim 1, except
“automatically sending a wireless distress signal from the vehicle in
response to detecting the collision.” Pet. 8–14. We have reviewed, and are
persuaded by, Petitioner’s contentions regarding the teachings of Aoyanagi.
For example, Aoyanagi describes “a recording apparatus for vehicle running
conditions . . . that records running data at the time when the vehicle has
received shocks due to an accident or the like” (Ex. 1003, 70:2:3–8), and
explains that “[t]he recording apparatus uses sensors to record data of the
IPR2013-00483
Patent 8,014,917 B2

7

running conditions of the vehicle from these sensors, and the recorded data
are used to judge the circumstances of the accident” (id. at 71:1:6–9).
Aoyanagi describes the recorded data as including vehicle speed (id. at
71:1:65–2:2), accelerator pedal position (id. at 71:2:18–27), and brake pedal
position (id. at 71:2:28–35), which Petitioner contends correspond to the
production-related parameters recited in claim 1 including “a ground speed
of the vehicle, a position of a throttle for an engine of the vehicle and a
degree of braking of the vehicle,” respectively (Pet. 8–9, 11–12). Aoyanagi
additionally describes the recorded data including vehicle acceleration and
deceleration from an acceleration sensor (Ex. 1003, 71:2:3–6, 71:2:65–
72:1:2), which Petitioner contends correspond to the “vital sign parameters
of the vehicle, including information indicative of a change in the velocity of
the vehicle” recited in claim 1 (Pet. 13).
Patent Owner does not dispute Petitioner’s contentions regarding the
specific production-related and vital sign parameters recited in claim 1, but
argues that “the skilled artisan would not seek to design an event data
recorder that monitors and captures each and every data element disclosed
by Aoyanagi” due to memory requirements, and because Aoyanagi states
that all of the data (parameters) described are not necessary but are just
illustrative. PO Resp. 24–25. Patent Owner additionally argues that
Petitioner’s expert, Mr. McNamara is not qualified to opine on the selection
of specific parameters from Aoyanagi, and that the specific parameters
recited in the claim are only reached through hindsight. Id. at 2, 31–32.
These arguments are not persuasive.
Aoyanagi’s statement that “[t]he data described . . . are not always
necessary but just illustrative” (Ex. 1003, 71:1:44–45) indicates to one with
IPR2013-00483
Patent 8,014,917 B2

8

ordinary skill that all of the parameters listed could be recorded. We see no
reason why memory constraints would have prevented one with ordinary
skill in the art from monitoring the entire list of parameters. Patent Owner
contends that excessive storage by an event data recorder increases memory
costs and increases the risk of system failure by overburdening
microprocessing and memory capabilities of EDRs, but has not presented
persuasive evidence that the state of the art at the time of the invention was
such that one with ordinary skill in the art would not have been able to
record all of the listed parameters. See PO Resp. 26–28.
Even if some memory limitation did exist in Aoyanagi that would not
allow all listed parameters to be monitored, we are persuaded by Petitioner’s
contention that “one of ordinary skill in the art would have readily
recognized that larger amounts of memory could be used to store more data
and the resulting cost tradeoff of employing a larger memory.” Pet. Reply 9.
We are not persuaded by Patent Owner’s allegations of hindsight or the
attacks on Petitioner’s expert, Mr. McNamara, relative to the specific
combination of parameters cited by Petitioner, because Aoyanagi
specifically lists the combination of the parameters relied on by Petitioner,
as discussed above. To the extent that Patent Owner alleges that Petitioner
is required to provide an express rationale for selecting the exact subset of
the parameters listed in independent claim 1, Patent Owner’s allegation is
unpersuasive, as independent claim 1 uses the open-ended transitional
terminology “comprising.” Accordingly, Aoyanagi’s disclosure of a myriad
of parameters, including those recited in independent claim 1, is sufficient to
teach the claim limitation.
IPR2013-00483
Patent 8,014,917 B2

9

As for the “detecting a collision of the vehicle in response to a sudden
change in the velocity of the vehicle” recited in claim 1, Petitioner cites
Aoyanagi’s discussion of “the acceleration sensor detect[ing] the impact
force and its direction” (Ex. 1003, 72:1:1–2) and “when a shock occurs and
then the vehicle speed becomes zero in a short time, it is judged that a crash
accident has occurred” (id. at 72:2:21–23). Pet. 13. Patent Owner responds
that “Aoyanagi does not store data as a result of merely detecting a collision,
in the manner specified by the claims” and, instead, “discloses a two-step
process for judging if a crash has occurred: ‘when a shock occurs and then
the vehicle speed becomes zero in a short time, it is judged that a crash
accident has occurred.’” PO Resp. 23 (quoting Ex. 1003, 72:2:21–22)).4
Patent Owner does not explain persuasively, however, why the “shock” and
“the vehicle speed becom[ing] zero in a short time” do not indicate a
“sudden change in velocity” as recited in the claim.
Aoyanagi describes “shocks” as being due to “an accident or the like”
(Ex. 1003, 70:2:7–8) and, as noted above, provides the example that “when a
shock occurs and then the vehicle speed becomes zero in a short time, it is
judged that a crash accident has occurred” (id. at 72:2:21–23). Based on this
description in Aoyanagi, we are persuaded that one skilled in the art would
have appreciated that the “shock” and “the vehicle speed becom[ing] zero in
a short time” described in Aoyanagi indicate a “sudden change in velocity.”
We are also persuaded, therefore, that Aoyanagi’s discussion of “judging
that a crash accident has occurred” based on these parameters teaches
“detecting a collision in response to a sudden change in velocity,” as recited

4 Patent Owner appears to mistakenly cite Exhibit 1001, rather than Exhibit
1003.
IPR2013-00483
Patent 8,014,917 B2

10

by claim 1. To the extent Patent Owner’s argument additionally requires
detecting a collision each and every time there is a sudden change in velocity
of the vehicle (see Pet. 23–24), this argument finds no support in the claim.
The claim simply requires “detecting a collision of the vehicle in response to
a sudden change in the velocity of the vehicle,” not that a collision must be
detected each and every time there is a sudden change in velocity. The
specification of the ’917 patent also fails to specify such a requirement.
Patent Owner’s argument that because Aoyanagi does not define
specifically the term “shock” or the magnitude of the time or velocity for the
“vehicle speed becom[ing] zero in a short time,” it does not teach the
claimed “sudden change in velocity” (PO Resp. 23–24) is also unpersuasive.
Patent Owner fails to identify, and we do not see, anything in the claim
requiring a specific magnitude for the claimed “sudden change in velocity.”
The specification of the ’917 patent also fails to require a specific magnitude
for the “sudden change in velocity.” For example, the discussion at column
25 of the ’917 patent simply explains that “[i]n the illustrated embodiment,
the system recognizes a crash when the value of the data sampled from the
accelerometer 73L exceeds a pre-programmed critical value 116.” Ex. 1001,
25:7–10.
With respect to the “capturing the production-related parameters of
the vehicle before detection of the collision and the vital sign parameters
after detection of the collision” recited in claim 1, Petitioner cites
Aoyanagi’s discussion of recording vehicle data both before and after an
accident occurs. Pet. 15 (citing Ex. 1003, 71:1:6–9, 71:1:50–2:65, 72:1:6–
36). Patent Owner argues that “if the Board determines that Aoyanagi
‘detect[s] a collision’ as a result of sensing both ‘shock’ and the vehicle
IPR2013-00483
Patent 8,014,917 B2

11

coming to rest in a ‘short time,’ then Aoyanagi provides no reason to
‘captur[e] . . . vital sign parameters after detection of the collision.’” PO
Resp. 24 fn. 5. This argument is unpersuasive because, as Petitioner notes
(Pet. 15), Aoyanagi explains expressly that “when an accident occurs, the
recording apparatus can keep recording for a specific period of time after
receiving shocks and the like” (Ex. 1003, 72:1:34–36).
Turning to the “automatically sending a wireless distress signal from
the vehicle in response to detecting the collision” limitation from claim 1,
Petitioner cites Oishi as teaching this limitation. Pet. 10, 14. We have
reviewed, and are persuaded by, Petitioner’s contentions regarding the
teachings of Oishi. Petitioner reasons that one skilled in the art would have
combined the teachings of Oishi with Aoyanagi because both references are
directed to an apparatus installed on a vehicle to address collisions (id. at 8),
and “Oishi teaches that automatically sending a distress signal upon
detection of an accident facilitates the handling of the accident and the
treatment of injured persons” (id. at 11 (citing Ex. 1005 (633:2:25–27)).
Petitioner further reasons that one skilled in the art would have combined the
teachings of the references based on Oishi’s discussion of “significant
improvements in emergency response times” and “reduc[ing] traffic jams”
based on the automatically generated distress signal being included with an
accident detection apparatus. Id. (citing Ex. 1005, 633:2:20–25, 27–29).
Patent Owner does not dispute Petitioner’s contentions regarding the
teachings of Oishi, which we find persuasive as noted above, but challenges
Petitioner’s rationale for combining Oishi’s teachings with Aoyanagi. PO
Resp. 32–39. Patent Owner argues that: (1) the references would not have
been combined because the references detect accidents in different ways
IPR2013-00483
Patent 8,014,917 B2

12

(id.); (2) the references have different functions (id. at 35–36); (3) Oishi is
not designed to preserve data (id. at 36); and (4) Petitioner’s reason to
combine the references is based solely on Oishi’s distress signal
functionality, without any reference to the event data monitoring or storage
features of either Aoyanagi or the claims (id. at 36–39).
Oishi describes “an apparatus which can automatically notify an
automobile accident after obtaining the impact force of the accident.” Ex.
1005, 634:1:3–5. As Petitioner contends (Pet. 8, 11), and Patent Owner
acknowledges (PO Resp. 35), both Aoyanagi and Oishi are directed to
accident detection, with Oishi providing the additional benefit of automatic
accident notification. We are persuaded that one skilled in the art would
have combined the automatic distress signal from the accident detection
system of Oishi with Aoyanagi’s accident detection system based on the
benefits cited by Petitioner, discussed above, regardless of whether the
systems of Aoyanagi and Oishi detect accidents in different ways.
2. Claim 2
Claim 2 depends from claim 1 and further recites that “the production-
related parameters include an RPM of the engine.” Petitioner contends that
Aoyanagi’s discussion of engine speed calculated from engine ignition
timing pulse signals corresponds to the claimed “RPM of the engine.” Pet.
15. Patent Owner responds by arguing that “even if Aoyanagi did
necessarily convert the ignition timing pulse rate to engine RPM . . . , there
is no teaching or suggestion in any reference of record to also capture such
engine RPM data in addition to the ignition timing pulse data which
Aoyanagi allegedly captures.” PO Resp. 21. Patent Owner further argues
that “ignition timing pulse rate is not necessarily proportional to engine
IPR2013-00483
Patent 8,014,917 B2

13

RPM,” citing examples including faulty ignition signals. Id. at 22. These
arguments are unpersuasive.
Aoyanagi describes engine speed being included in the recorded data,
and describes the engine speed as calculated from engine ignition timing
pulse signals from an engine speed sensor. Ex. 1003, 71:2:12–14. Patent
Owner does not identify a metric, other than engine revolutions per minute
(RPM), which indicates engine speed. For example, when asked at oral
hearing what alternate metrics indicate engine speed, Patent Owner
responded “I’m not sure what other metrics may be available” and that “[i]t
could be referring to storing engine ignition pulse signals itself.” Tr. 51:15–
17. We are not persuaded that the engine speed discussed in Aoyanagi is
simply ignition pulse signals, as Aoyanagi clearly explains that “[t]he engine
speed is calculated from engine ignition timing pulse signals.” Ex. 1003,
71:2:13–14. Nor are we apprised of any alternate metric for engine speed,
other than engine RPM, contemplated by Aoyanagi. Thus, we are persuaded
that Aoyanagi teaches the additional limitations recited in claim 2.
3. Claims 3, 5, 7, and 8
Claims 3, 5, 7, and 8 depend from claim 1. Claim 3 further recites
that “the production-related parameters include actions of a steering wheel.”
Claim 5 further recites that “the vital sign parameters include an acceleration
of the vehicle.” Claim 7 further recites that “the production-related
parameters include a status of a seat belt.” Claim 8 further recites that “the
information indicative of the change in velocity is a sequence of speed
measurements taken at known time intervals.” Petitioner identifies portions
of Aoyanagi teaching each of the limitations of these claims. Pet. 16–17
(citing Ex. 1003, 71:2:3–11, 71:2:45–50, 71:2:62–64, 72:1:9–12, 72:2:19–
IPR2013-00483
Patent 8,014,917 B2

14

23). Patent Owner does not dispute Petitioner’s contentions regarding these
claims. See, e.g., Tr. 41:1–11. We have reviewed the cited portions of
Aoyanagi and are persuaded by Petitioner’s contentions.
4. Claim 6
Claim 6 depends from claim 1 and further recites that “the production-
related parameters include an on/off status of a braking system of the
vehicle.” As noted above with respect to claim 1, Patent Owner does not
dispute Petitioner’s contention that Aoyanagi’s determination of brake pedal
position (Ex. 1003, 71:2:28–35) teaches monitoring a degree of braking as
required by claim 1. Petitioner also contends that Aoyanagi’s brake pedal
position corresponds to the claimed “on/off status of a braking system”
recited in claim 6. Pet. 16; Pet. Reply 4–5. Patent Owner offers no
explanation as to why brake pedal position does not teach the claimed
“on/off status.” PO Resp. 14–21; Tr. 56:8–9. Instead, Patent Owner focuses
on whether a brake pressure measurement provides brake on/off status (PO
Resp. 15–16), whether Aoyanagi also teaches capturing brake on/off status
(id. at 16–17), and the presumption of different scope for claims 1 and 6 (id.
at 17).
Initially, we note that we are persuaded that determining the position
of a brake pedal also determines whether the brake is on or off. We are also
persuaded, therefore, that Aoyanagi teaches capturing brake on/off status by
capturing the brake pedal position. Ex. 1003, 71:2:28–35. With respect to
Patent Owner’s argument regarding the presumption of different claim scope
for claim 1 (“degree of braking”) and claim 6 (“brake on/off status”), we
note that this is only a presumption. Phillips v. AWH Corp., 415 F.3d 1303,
1315 (Fed. Cir. 2005) (“the presence of a dependent claim that adds a
IPR2013-00483
Patent 8,014,917 B2

15

particular limitation gives rise to a presumption that the limitation in
question is not present in the independent claim.”). The claims, however,
must be read in view of the specification. Id. “[A]ny presumption created
by the doctrine of claim differentiation will be overcome by a contrary
construction dictated by the written description or prosecution history.”
Retractable Technologies, Inc. v. Becton, Dickinson and Co., 653 F.3d 1296,
1305 (Fed. Cir. 2011) (citations and internal quotation marks omitted).
Claim 6 does not require a separate sensor for monitoring brake on/off
status, and the specification of the ’917 patent does not discuss using both a
sensor for degree of braking and a sensor for brake on/off status in the same
system. See Ex. 1001, 10:43–62. Rather, the ’917 patent explains that a
“simple on/off status sensor” or a “sensor [that] senses the degree of
braking” can be used, and discusses the example of “the brake sensor 67I . . .
which senses the degree of braking” to determine various conditions (e.g.,
vehicle speed, inclination, etc.) when the brakes are applied (i.e., based on
brake on/off status). Id. Thus, we are not persuaded that the claims require
more than the degree of braking to provide an indication of brake on/off
status. We are persuaded, therefore, that the brake pedal position discussed
in Aoyanagi teaches the “brake on/off status” recited in claim 6.
5. Claim 18
Similar to claim 1, discussed above, claim 18 is directed to a method
including detecting a vehicle collision, transmitting a distress signal after the
collision, and monitoring and capturing certain vehicle parameters before
and after the collision. The only difference between claim 1 and claim 18 is
that claim 18 recites “monitoring . . . an on/off status of a braking system of
the vehicle,” while claim 1 recites “monitoring . . . a degree of braking of the
IPR2013-00483
Patent 8,014,917 B2

16

vehicle.” We additionally note that claim 6, which depends from claim 1
and is discussed above, recites the same “on/off status of a braking system”
recited in claim 18. Petitioner’s contentions regarding claim 18 are the same
as those discussed above regarding claims 1 and 6 (Pet. 17–24; Pet. Reply 1–
5, 7–15), and Patent Owner’s response to those contentions is the same as
the response to Petitioner’s contentions regarding claims 1 and 6 (PO Resp.
14–20, 22–44). We are persuaded by Petitioner’s contentions for the reasons
discussed above relative to claims 1 and 6.
6. Claim 19
Claim 19 depends from claim 18 and further recites that “the
production-related parameters include an RPM of the engine,” similar to
claim 2, discussed above. Petitioner’s contentions regarding claim 19 are
the same as those discussed above regarding claim 2 (Pet. 24; Pet. Reply 5–
7), and Patent Owner’s response to those contentions is the same as the
response to Petitioner’s contentions regarding claim 2 (PO Resp. 21–22).
We are persuaded by Petitioner’s contentions for the reasons discussed
above relative to claim 2.
7. Claims 20, 22, 24, and 25
Claims 20, 22, 24, and 25 depend from claim 18, and recite limitations
similar to those in claims 3, 5, 7, and 8, respectively. Petitioner identifies
the same portions of Aoyanagi teaching each of the limitations of these
claims as noted above regarding claims 3, 5, 7, and 8. Pet. 25–26 (citing Ex.
1003, 71:2:3–11, 71:2:45–50, 71:2:62–64, 72:1:9–12, 72:2:19–23). Patent
Owner also does not dispute Petitioner’s contentions regarding these claims.
See, e.g., Tr. 41:1–11. As noted above regarding claims 3, 5, 7, and 8, we
IPR2013-00483
Patent 8,014,917 B2

17

have reviewed the cited portions of Aoyanagi and are persuaded by
Petitioner’s contentions.
8. Claim 23
Claim 23 depends from claim 18, and the limitations recited in claims
18 and 23 are the same as those recited in claims 1 and 6 (claims 1 and 23
recite “degree of braking” and claims 6 and 18 recite “on/off status of a
braking system”). Petitioner’s contentions regarding these limitations are
same for claims 18 and 23 as those discussed above for claims 1 and 6 (Pet.
17–25; Pet. Reply 1–5, 7–15), and Patent Owner’s response is also the same
as discussed above (PO Resp. 14–20, 22–44). We are persuaded by
Petitioner’s contentions for the reasons discussed above relative to claims 1
and 6.
9. Commercial Success
Patent Owner presents certain evidence of commercial success to be
considered along with Petitioner’s evidence of obviousness. PO Resp. 39–
44. Patent Owner alleges that “the commercial success of the claimed
inventions is demonstrated by Toyota’s own infringement of several claims
of the ’917 Patent.” Id. at 40. We are not persuaded by Patent Owner’s
arguments.
Patent Owner simply cites to the sales price of Toyota’s subscription
service as commercial success. Id. at 42 (citing Ex. 2050). That does not
establish “commercial success” as objective evidence of nonobviousness.
Patent Owner does not provide information regarding sales volume or
market share information as compared to providers of competing products.
Even the number of units sold, without market share information, is only
IPR2013-00483
Patent 8,014,917 B2

18

weak evidence, if any, of commercial success. See In re Applied Materials,
Inc., 692 F.3d 1289, 1299. (Fed. Cir. 2012).
Furthermore, Patent Owner has not even attempted to show a nexus
between any sales and the merits of the claimed invention. Although Patent
Owner references several claim limitations, there is no explanation as to how
these limitations are related to the alleged commercial success of the claimed
invention other than simply alleging that the limitations are present in
Toyota’s 12EDR device. See PO Resp. 40–42. For example, Patent Owner
simply alleges that “vehicles equipped with Toyota’s 12EDR system in
combination with Safety Connect systems are covered by at least claims 1–3,
5–7, 18–20 and 22–24 of the ‘917 Patent.” Id. at 42 (emphasis added).
Patent Owner’s general allegation of “a strong nexus between Toyota’s sales
of EDR/ACN-equipped vehicles and the claims of the ’917 Patent” because
“[a]bsent infringement of at least claims 18 and 24 of the ’917 Patent,
Toyota would be unable to equip its vehicles with both an event data
recorder compliant with the EDR Regulations and the automatic collision
notification functionality of its Safety Connect system” (id. at 43) is also
unpersuasive.
Initially, we note that Petitioner disputes Patent Owner’s claim that
Toyota infringes claims 18 and 24 of the ’917 patent. Pet. Reply 13. We
further note that, in this proceeding, Patent Owner has not established the
alleged infringement. Nevertheless, “[e]vidence of commercial success, or
other secondary considerations, is only significant if there is a nexus
between the claimed invention and the commercial success.” Ormco Corp.
v. Align Tech., Inc., 463 F.3d 1299, 1311–12 (Fed. Cir. 2006). To show how
commercial success supports nonobviousness, Patent Owner must prove that
IPR2013-00483
Patent 8,014,917 B2

19

the sales were a direct result of the unique characteristics of the invention,
and not a result of economic and commercial factors unrelated to the quality
of the patented subject matter. Applied Materials, 692 F.3d at 1299–1300.
Patent Owner, however, fails to provide sufficient proof of such a
relationship between any alleged sales and the unique characteristics of the
invention.
As Petitioner notes, any alleged commercial success could be due to
the automatic collision notification feature (Toyota’s “Safety Connect”
system), rather than the other limitations recited in the claims. Pet. 13.
Patent Owner does not dispute that automatic collision notification systems
were known in the art. See PO Resp. 11–13, 39–44. If the feature that
created the commercial success was known in the prior art, the success is not
pertinent to the issue of obviousness. Galderma Laboratories, L.P. v.
Tolmar, Inc., 737 F.3d 731, 740 (Fed. Cir. 2013).
10. Conclusion
We have considered the entirety of the evidence as a whole, including
the evidence of obviousness and the evidence submitted by Patent Owner to
show commercial success. For the reasons set forth above, Petitioner has
established, based on a preponderance of the evidence, that claims 1–3, 5–8,
18–20, and 22–25 would have been obvious over the combination of
Aoyanagi and Oishi.
C. Obviousness over Aoyanagi and Vollmer
We have reviewed the Petition, the Patent Owner Response, and
Petitioner’s Reply, as well as the relevant evidence discussed in those
papers. We are persuaded, by a preponderance of the evidence, that claims
IPR2013-00483
Patent 8,014,917 B2

20

1–3, 5–8, 18–20, and 22–25 would have been obvious over Aoyanagi and
Vollmer under 35 U.S.C. § 103.
The claims challenged as obvious over the combination of Aoyanagi
and Vollmer are the same as those challenged as obvious over the
combination of Aoyanagi and Oishi, discussed above. Petitioner’s
contentions regarding the teachings of Aoyanagi are the same as those
discussed above with respect to the challenge based on the combination of
Aoyanagi and Oishi. Pet. 28–33, 35–40; Pet. Reply 1–10. Patent Owner’s
response is the same as discussed above regarding these contentions. PO
Resp. 14–32. We are persuaded by Petitioner’s contentions regarding
Aoyanagi for the reasons discussed above.
Again, Petitioner acknowledges that Aoyanagi does not teach
“automatically sending a wireless distress signal in response to detecting the
collision,” as required in claim 1, but now cites Vollmer for this teaching.
Pet. 27–28, 30, 33–35, 37; Pet. Reply 10–12. Petitioner’s reasoning for the
combination of Aoyanagi and Vollmer is similar to that discussed above
relative to the combination of Aoyanagi and Oishi. Specifically, Petitioner
reasons that one skilled in the art would have combined the teachings of
Aoyanagi and Vollmer because “both Aoyanagi and Vollmer are directed to
the same field of endeavor” (Pet. 27) and “Vollmer teaches that
automatically sending a distress signal and relevant sensor data upon
detection of an accident decreases the time before emergency services are
notified relative to a manually-made emergency call” (id. at 27–28 (citing
Ex. 1007, 1:3–9)). Petitioner further reasons that “the automatic distress
signal avoids problems that a person may have in making a call manually”
and “avoids a situation where emergency services receive incomplete
IPR2013-00483
Patent 8,014,917 B2

21

information from a person manually making a call to report an accident.” Id.
at 28 (citing Ex. 1007, Abstract, 1:3–2:3, 3:5–13).
Patent Owner does not dispute Petitioner’s contentions regarding the
teachings of Vollmer, but challenges Petitioner’s rationale for combining
Vollmer’s teachings with Aoyanagi. PO Resp. 32–39. Patent Owner’s
response to Petitioner’s rationale for combining Aoyanagi and Vollmer is
similar to that provided in response to Petitioner’s rationale for combining
Aoyanagi and Oishi, discussed above.
Vollmer describes “[a]n emergency call system for vehicles [that]
sends an automatic emergency call in the event of danger, accident or
breakdown.” Ex. 1007, Abstract. Although Patent Owner contends that
“Vollmer fails to describe the specific means by which its device would
detect an ‘accident,’” Patent Owner acknowledges that both Aoyanagi and
Vollmer are directed to accident detection, and simply contends that “one
cannot conclude that both Aoyanagi and Vollmer detect accidents in similar
ways.” PO Resp. 35. We are persuaded that one skilled in the art would
have combined the automatic distress signal from the system of Vollmer,
which includes accident detection, with Aoyanagi’s accident detection
system based on the benefits cited by Petitioner, discussed above, regardless
of whether the systems of Aoyanagi and Vollmer detect accidents in
different ways.
We have considered Patent Owner’s evidence of commercial success
and Petitioner’s evidence of obviousness, and conclude that the evidence of
obviousness outweighs the evidence of nonobviousness. As explained
above, Patent Owner simply cites to the sales price of Toyota’s subscription
service as commercial success (id. at 42 (citing Ex. 2050)), which is not
IPR2013-00483
Patent 8,014,917 B2

22

sufficient to establish “commercial success,” and has not even attempted to
show a nexus between any sales and the merits of the claimed invention.
Accordingly, after considering the entirety of the evidence as a whole,
including the evidence of obviousness and the evidence submitted by Patent
Owner to show commercial success, we determine that Petitioner has
established, based on a preponderance of the evidence, that claims 1–3, 5–8,
18–20, and 22–25 would have been obvious over Aoyanagi and Vollmer.

III. SUMMARY
Petitioner has demonstrated, by a preponderance of the evidence, that
claims 1–3, 5–8, 18–20, and 22–25 are unpatentable as obvious over the
combination of Aoyanagi and Oishi, and that claims 1–3, 5–8, 18–20, and
22–25 are unpatentable as obvious over the combination of Aoyanagi and
Vollmer. This is a final written decision of the Board under 35 U.S.C.
§ 318(a).

IV. ORDER
For the reasons given, it is
ORDERED that claims 1–3, 5–8, 18–20, and 22–25 of the ’917 patent
are unpatentable.
FURTHER ORDERED that parties to the proceeding seeking judicial
review of this final written decision must comply with the notice and service
requirements of 37 C.F.R. § 90.2.

IPR2013-00483
Patent 8,014,917 B2

23

PETITIONER:

Robert C. Mattson
John S. Kern
OBLON, SPIVAK, McCLELLAND,
MAIER &, NEUSTADT, L.L.P.
cpdocketmattson@oblon.com
cpdocketkern@oblon.com

PATENT OWNER:

John B. Conklin
LEYDIG, VOIT, & MAYER, LTD.
jconklin@leydig.com