Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 50
`Entered: February 26, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`K-40 ELECTRONICS, LLC
`Petitioner
`
`v.
`
`ESCORT, INC.
`Patent Owner
`_______________
`
`Case IPR2013-00203
`Patent 7,999,721
`______________
`
`Before GLENN J. PERRY, THOMAS L. GIANNETTI, and
`TRENTON A. WARD, Administrative Patent Judges.
`
`
`WARD, Administrative Patent Judge.
`
`
`
`DECISION
`Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`

`

`IPR2013-00203
`Patent 7,999,721
`
`
`I.
`INTRODUCTION
`Patent Owner Escort Inc. filed a Request for Rehearing (Paper 48, “Req.
`Reh’g”) of the Board’s Final Written Decision, dated Aug. 27, 2014 (Paper 45,
`“Final Dec.”), which found Petitioner demonstrated by a preponderance of the
`evidence that claims 1–10 of U.S. Patent 7,999,721 are unpatentable. Patent
`Owner contends that the Board misapprehended and/or overlooked evidence in the
`record and misapplied the legal standards for the case. Req. Reh’g. 1. For the
`reasons stated below, Patent Owner’s request is denied.
`
`II. STANDARD OF REVIEW
`Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a
`panel will review the decision for an abuse of discretion.” An abuse of discretion
`occurs when a “decision was based on an erroneous conclusion of law or clearly
`erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v.
`Celanese Polymer Specialties Co. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988)
`(citations omitted). The request must identify, specifically, all matters the party
`believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d).
`
`III. DISCUSSION
`A. PATENT OWNER ARGUES THAT THE “GPS LOCKOUT CONCEPT” IS NOT AN
`ELEMENT OF THE CHALLENGED CLAIMS
`Patent Owner notes that the decision states that “Patent Owner fails to
`provide any objective evidence to corroborate Mr. Orr’s testimony that he reduced
`to practice the GPS lockout concept and associated position determining circuit
`prior to January 27, 1998 other than the tst4600k.bas file.” Req. Reh’g. 1–2.
`Patent Owner argues that none of the challenged claims require a GPS lockout
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`IPR2013-00203
`Patent 7,999,721
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`concept and, thus, the inclusion or absence of a GPS lockout concept is irrelevant.
`Id. at 3.
`The Final Decision generally associates Patent Owner’s use of the
`abbreviation “GPS lockout concept” with claim limitations, such as the recitation
`in claim 1 of the “warning produced by the warning section varying in relation to a
`vehicle location derived from a position determining circuit.”1 The Final Decision
`states the following:
`In evaluating the date of the actual reduction to practice, we begin
`with the key aspects of the claimed invention, namely claim 1’s
`recitation “the warning produced by the warning section varying in
`relation to a vehicle location derived from a position determining
`circuit.” Ex. 1001, col. 25, ll. 34-36. Patent Owner and Mr. Orr
`generally refer to this concept as the GPS lockout concept, as the
`device can lockout certain false alarms experienced at a particular
`GPS location. See Ex. 2073 ¶¶ 79-82. Furthermore, we analyze the
`recitation of the “position determining circuit” in claim 2.
`Final Dec. 12.
`Therefore, contrary to Patent Owner’s argument, claim 1 requires the limitation
`associated with the abbreviation “GPS lockout concept,” namely, “the “warning
`produced by the warning section varying in relation to a vehicle location derived
`from a position determining circuit.”
`
`
`1 Patent Owner and the inventor, Mr. Orr, generally refer to the GPS lockout
`concept in the record. For example, in its Request for Rehearing, Patent Owner
`quotes the following statement by Mr. Orr at the hearing: “[w]hat was missing in
`the 1996 setting was the ability to bring GPS coordinates into the process. So what
`I am saying here is that in 1996 I added the GPS lockout capability that I have
`spoken about in this session today.” Req. Reh’g. 11 (quoting Hearing Transcript,
`Paper 44, 33–34). Furthermore, in his Declaration, Mr. Orr. states the following:
`“I used the laptop and spacebar in the laboratory in Stage 1 to illustrate the GPS
`lockout concept to other CMI employees.” Ex. 2073, ¶ 80.
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`IPR2013-00203
`Patent 7,999,721
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`Additionally, we note that regardless of Patent Owner’s arguments regarding the
`“GPS lockout concept,” the “position determining circuit” is a required element of
`all challenged claims, as it is recited in independent claims 1 and 2, and claims 3–
`10 are dependent on claim 2. Final Dec. 8–9. Furthermore, we determined that
`“the only evidence of the successful reduction to practice of the position
`determining circuit and the associated GPS lockout concept of the claimed
`invention for its intended purpose prior to January 27, 1998 is the testimony of the
`inventor, Mr. Orr.” Final Dec. 16 (emphasis added). Accordingly, we determined
`that Patent Owner failed to prove by a preponderance of the evidence its claim of
`reduction to practice of the challenged claims 1–10 prior to January 27, 1998. Id.
`at 17.
`
`B. PATENT OWNER ARGUES THAT NOT EVERY CONTESTED FACTUAL ISSUE
`REQUIRES CORROBORATION
`Patent Owner argues that “corroborating evidence” is supplementary to that
`already given but is not required to be an independent source of proof.
`Req. Reh’g. 5 (citing Black’s Law Dictionary 344 (6th ed. 1990)). Patent Owner’s
`arguments are contrary to precedent setting forth the requirements for establishing
`an actual reduction to practice. As set forth in the Final Decision, “‘[i]t has long
`been the case that an inventor’s allegations of earlier invention alone are
`insufficient—an alleged date of invention must be corroborated.’” Final Dec. 16
`(quoting In re NTP, Inc., 654 F.3d at 1291 (citing Medichem, 437 F.3d at 1170;
`Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1371 (Fed. Cir.
`1998))). Furthermore, we determined that “the only evidence of the successful
`reduction to practice of the position determining circuit and the associated GPS
`lockout concept of the claimed invention for its intended purpose prior to January
`27, 1998 is the testimony of the inventor, Mr. Orr.” Final Dec. 16 (emphasis
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`added). Accordingly, we determined that Patent Owner failed to prove by a
`preponderance of the evidence its claim of reduction to practice of the challenged
`claims 1–10 prior to January 27, 1998. Id. at 17.
`C. PATENT OWNER ARGUES THAT AN OVER-THE-SHOULDER OBSERVER IS
`NOT REQUIRED
`Patent Owner argues that even if the record is lacking an over-the-shoulder
`observer, “‘sufficient circumstantial evidence of an independent nature can satisfy
`the corroboration requirement.’” Req. Reh’g. 5–6 (quoting Cooper v. Goldfarb,
`154 F.3d 1321, 1330 (Fed. Cir. 1998)). In the case cited by Patent Owner, the
`Federal Circuit held that, although there was no direct evidence to support the
`testimony of the inventor Goldfarb, Goldfarb’s testimony was corroborated by the
`testimony of two other individuals, Mendenhall and Green. Cooper, 154 F.3d at
`1330. Accordingly, the Federal Circuit found sufficient circumstantial evidence to
`satisfy the corroboration requirement. Id.
`Here, we determined that the only evidence of a successful reduction to
`practice was the inventor’s own testimony. Final Dec. 16. Patent Owner does not
`allege that the Board misapprehended and/or overlooked any evidence in the
`record regarding a successful reduction to practice of the claimed invention, only
`that the Board should have been more persuaded by the evidence in the record.
`See Req. Reh’g. 6–13. Therefore, Patent Owner has not demonstrated an abuse of
`discretion in the Board’s determination that Patent Owner failed to prove by a
`preponderance of the evidence its claim of reduction to practice of the challenged
`claims prior to January 27, 1998.
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`IPR2013-00203
`Patent 7,999,721
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`D. PATENT OWNER ARGUES THAT ALL OF THE PROTOTYPE EVIDENCE AND
`TESTIMONY EVIDENCE MUST BE CONSIDERED
`Patent Owner argues that if a position determining circuit was a required
`part of the prior reduction to practice, then claims 2–3 and 5–10 are patentable.
`Req. Reh’g. 6. Patent Owner argues that evidence regarding both the 1992
`prototype and the 1996 prototype must be considered regarding the position
`determining circuit. Id. at 6–11. Patent Owner fails, however to allege that the
`Board misapprehended and/or overlooked any evidence or testimony in the record
`regarding a successful reduction to practice of the position determining circuit.
`In fact, the Board specifically addressed the evidence regarding the position
`determining circuit in both the 1992 prototype and the 1996 prototype. See Final
`Dec. 12–17. Specifically, after consideration of the evidence and testimony
`regarding the 1992 prototype, the Board determined that “the 1992 prototype fails
`at least to meet the limitation of a ‘position determining circuit,’ required by the
`challenged claims.” Final Dec. 13. Furthermore, after considering the evidence
`and testimony regarding the 1996 prototype, the Board determined that the Patent
`Owner failed “provide sufficient objective evidence supporting the actual reduction
`to practice by the 1996 prototype of the position determining circuit,” and that the
`only testimony regarding “the successful reduction to practice of the position
`determining circuit” was that of the inventor. Final Dec. 15–16. Patent Owner
`fails to identify any evidence or testimony regarding the prototypes that was
`misapprehended or overlooked. Accordingly, Patent Owner has not demonstrated
`an abuse of discretion in the Board’s determination that Patent Owner failed to
`prove by a preponderance of the evidence its claim of reduction to practice of the
`challenged claims prior to January 27, 1998.
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`IPR2013-00203
`Patent 7,999,721
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`E. PATENT OWNER ARGUES THAT THE BOARD APPLIED A DE FACTO CLEAR
`AND CONVINCING EVIDENTIARY STANDARD
`Patent Owner argues that “despite the facially correct legal standard,” the
`Board applied a de facto clear and convincing evidentiary standard to its
`consideration of Patent Owner’s reduction to practice of the challenged claims.
`Req. Reh’g. 13. Contrary to its arguments, Patent Owner acknowledges that the
`Board expressly stated that “Patent Owner has failed to prove by a preponderance
`of the evidence its claim of reduction to practice of the challenged claims prior to
`January 27, 1998.” Final Dec. 17. In its arguments, Patent Owner points to case
`law and an article regarding the clear and convincing evidentiary standard. Req.
`Reh’g. 14–15. Patent Owner does not, however, point to any indications, much
`less express statements, by the Board in the Final Decision that it used a clear and
`convincing evidentiary standard. Thus, Patent Owner has not demonstrated that
`the Board misapplied the legal standards for the case.
`
`
`IV. CONCLUSION
`The Board denies the relief requested in the request for rehearing.
`
`
`V. ORDER
`
`Accordingly, it is hereby
`ORDERED that Patent Owner’s request for rehearing is denied.
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`IPR2013-00203
`Patent 7,999,721
`
`For PETITIONER:
`Greg Gardella
`Scott McKeown
`Michael Kiklis
`OLBON SPIVAK
`cpdocketgardella@oblon.com
`cpdocketmckeown@oblon.com
`cpdocketkiklis@oblon.com
`
`
`
`For PATENT OWNER:
`Thomas W. Humphrey
`John Paul Davis
`WOOD HERRON & EVANS, LLP
`thumphrey@whe-law.com
`jdavis@whe-law.com
`
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