Trials@uspto.gov
`571-272-7822
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`Paper 17
`Entered: May 7, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AUTEL U.S. INC.
`and
`AUTEL INTELLIGENT TECHNOLOGY CO. LTD.
`Petitioner
`
`v.
`
`BOSCH AUTOMOTIVE SERVICE SOLUTIONS LLC.
`Patent Owner
`____________
`
`Case IPR2014-00183
`Patent 6,904,796 B2
`_____________
`
`Before JOSIAH C. COCKS, SHERIDAN K. SNEDDEN, and
`SCOTT A. DANIELS, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 17
`Entered: May 7, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AUTEL U.S. INC.
`and
`AUTEL INTELLIGENT TECHNOLOGY CO. LTD.
`Petitioner
`
`v.
`
`BOSCH AUTOMOTIVE SERVICE SOLUTIONS LLC.
`Patent Owner
`____________
`
`Case IPR2014-00183
`Patent 6,904,796 B2
`_____________
`
`Before JOSIAH C. COCKS, SHERIDAN K. SNEDDEN, and
`SCOTT A. DANIELS, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`Case IPR2014-00183
`Patent 6,904,796 B2
`
`
`I. INTRODUCTION
`
`A. Background
`Autel U.S. Inc. and Autel Intelligent Technology Co. Ltd.
`(collectively, “Petitioner”) filed a petition to institute an inter partes review
`of claims 1, 4-16, and 20-22 of U.S. Patent No. 6,904,796 B2 (“the ’796
`patent”). Paper 1 (“Pet.”). Patent Owner, Bosch Automotive Service
`Solutions LLC., timely filed a preliminary response. Paper 16 (“Prelim.
`Resp.”).
`The standard for instituting an inter partes review is set forth in 35
`U.S.C. § 314(a):
`THRESHOLD – The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311
`and any response filed under section 313 shows that there is a
`reasonable likelihood that the Petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.
`
`Upon consideration of the petition and the preliminary response, we
`determine that Petitioner has established a reasonable likelihood that it
`would prevail with respect to claims 1, 4-16, and 20-22 of the ’796 patent.
`Accordingly, pursuant to 35 U.S.C. § 314, we institute an inter partes review
`of claims 1, 4-16, and 20-22 of the ’796 patent.
`B. Related Matters
`Petitioner indicates that the ’796 patent is the subject of litigation in
`Service Solutions U.S. LLC v. Autel U.S. Inc. and Autel Intelligent
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`Technology Co. Ltd., Case No. 4:15-10534-TGB-LJM in the U.S. District
`Court for the Eastern District of Michigan.1 Pet. 2; Paper 14, 1.
`C. The ’796 Patent
`The ’796 patent (Ex. 1001), titled “Remote Tire Monitoring Systems
`Tool,” generally relates to a tool, i.e., a tire positioning tool, for activating
`RTMS (“Remote Tire Monitoring Systems”) tire sensors by a plurality of
`methods, and receiving data from the activated RTMS tire sensors at various
`different radio frequency signals. Ex. 1001, Abst., 2:38-48. The tool also is
`capable of communicating with a vehicle’s RTMS receiving unit. Id. at
`1:22-23. Vehicles can be equipped with an onboard RTMS receiving unit,
`which receives data from the tire sensors and indicates, via a visual or
`audible alarm to a driver, a specific tire characteristic, such as low air
`pressure. Id. at 1:29-32. The tool also is intended to transmit/receive
`information from a variety of RTMS receiving units using one of a plurality
`of signal frequencies. Id. at 2:56-60. The ’796 patent describes that “[i]n
`this manner a technician tasked to install a new tire or to rotate tires can
`utilize a single tool to work with remote tire monitoring systems made by
`different manufacturers.” Id. at 2:60-63.
`Figure 1 of the ’796 patent illustrates a preferred embodiment of the
`tire positioning tool. Id. at 10:14-15.
`
`
`
`1 Service Solutions U.S. LLC transferred the ’796 patent to Bosch
`Automotive Service Solutions LLC, by way of assignment recorded
`December 6, 2013, with the U.S. Patent and Trademark Office. Reel and
`frame No: 031770/0167. http://assignments.uspto.gov/assignments/
`q?db=pat&pat=6904796, last visited May 6, 2014.
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`As depicted by the diagrammatic circuit in Figure 1 of the ’796 patent
`above, tool 100 includes several different approaches for activating a tire
`sensor; magnet 102 can generate a magnetic field to activate the tire sensor;
`frequency generator 108, driver 110, and inductor 112 may send a signal to
`activate the tire sensor; and antenna 122 allows different transmitters 124,
`126 to transmit signals at various frequencies to activate a tire sensor. Ex.
`1001, 10:14-50.
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`The tool can receive signals from either an RTMS tire sensor, or a
`RTMS receiving unit (not shown) via antenna 116. Id. at 10:34-35.
`Moreover, antenna 116 is connected to different receivers 118, 120, each
`capable of receiving a different frequency. Id. at 10:35-40. The tool has
`display 128 for displaying information to a technician. Id. at 60-63.
`The technician can switch between different modes of operation of the
`tool via user switches 130. Id. at 10:66, 11:2. One mode of operation could
`activate a tire sensor and display data received from the activated sensor on
`display 128. Another mode could involve input of data to the tool for
`transmission to an RTMS receiving unit, for example, inputting a desired tire
`pressure level that would trigger the receiving unit to warn a driver of low
`tire pressure. Id. at 11:2-15.
`The ’796 patent Specification states that the electronics for the tool
`can all be “fit in a casing that is sufficiently small to be easily carried and
`handled by a technician.” Id. at 12:48-51.
`D. Illustrative Claims
`Of the challenged claims, the independent claims are 1, 7, 9, 11, 13,
`15, 16, and 20. Claims 1, 7, 9, 11, 13, 15, and 16 are apparatus claims
`drawn to “a tool,” and claim 20 recites a method of using the tool. Claim 1
`illustrates the claimed subject matter and is reproduced below:
`
`1. A tool comprising a plurality of means for activating remote
`tire monitoring system tire sensors, the plurality of means
`selected from the group consisting of a magnet, a valve core
`depressor, means for generating continuous wave signals, and
`means for generating modulated signals, wherein the tool is
`capable of activating a plurality of tire sensors, each of the
`plurality of tire sensors utilizing a different method for
`activating the said tire sensor.
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`E. Prior Art Relied Upon
`Petitioner relies upon the following prior art references:
`McClelland et al., EP 1 026 015 A2 (published Sept. 8, 2000)
`(“McClelland,” Ex. 1002).
`Kranz, U.S. 2003/0080862 A1 (published May 1, 2003) (“Kranz,” Ex.
`1003).
`Dixit, U.S. 6,414,592 B1 (issued Jul. 2, 2002) (“Dixit,” Ex. 1005).
`Howell et al., GB 2 305 074 A (published Mar. 26, 1997) (“Howell,”
`Ex. 1006).
`Pacsai, U.S. 6,438,467 B1 (issued Aug. 20, 2002) (“Pacsai ’467,” Ex.
`1007).2
`Gaborit, WO 02/36368 (published May 10, 2002) (“Gaborit,” Ex.
`1008).
`
`F. The Alleged Grounds of Unpatentability
`Petitioner contends that the challenged claims are unpatentable under
`35 U.S.C. §§ 102 and/or 103 on the following specific grounds.3
`Reference(s)
`Basis
`Claims challenged
`McClelland (Ex. 1002), Kranz (Ex.
`§ 103
`1 and 4-14
`1003), Dixit (Ex. 1005), and Howell
`(Ex. 1006).
`McClelland (Ex. 1002), Kranz (Ex.
`
`2 The inventor of the ’796 patent, Ernest Pascai, is the same inventor named
`on the face of the prior art reference Pascai ’467 (Ex. 1007).
`3 Petitioner supports its challenge with a Declaration of Dr. Valdis Liepa,
`Ph.D. (Ex. 1009)(“Liepa Decl.”). See infra.
`
`
`
`
`§ 103
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`1003), Dixit (Ex. 1005), and Howell
`(Ex. 1006), Pascai ’467 (Ex. 1007),
`and Gaborit (Ex. 1008).
`McClelland (Ex. 1002).
`McClelland (Ex. 1002).
`
`
`
`§ 102
`§ 103
`
`16, 20-22
`16, 20-22
`
`II. CLAIM CONSTRUCTION
`A. Legal Standard
`In an inter parties review, the Board will interpret claims of an
`unexpired patent using the broadest reasonable construction in light of the
`specification of the patent. See OFFICE PATENT TRIAL PRACTICE GUIDE, 77
`Fed. Reg. 48,756, 48,766 (Aug. 14, 2012); 37 C.F.R. § 42.100(b). Under the
`broadest reasonable construction standard, the claim language is read in light
`of the specification, as it would be interpreted by one of ordinary skill in the
`art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
`2004). Moreover, words of the claim are generally given their ordinary and
`accustomed meaning, unless the inventor has provided a specific definition
`in the specification or the file history. In re Paulsen, 30 F.3d 1475, 1480
`(Fed. Cir. 1994).
`The parties do not dispute that certain limitations in the claims invoke
`35 U.S.C. § 112, paragraph six. Pet. 6-7; Prelim. Resp. 3-7. For example,
`claims 1, 7, 9, 13, and 15 recite “means for activating remote tire monitoring
`system tire sensors,” and “means for generating continuous wave signals.”
`We agree that these terms invoke paragraph six, because they specify a
`function but no structure for performing that function. In re Donaldson Co. ,
`16 F.3d 1189, 1193 (Fed. Cir. 1994). The Office interprets limitations
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`arising under 35 U.S.C. § 112, paragraph six, in light of the corresponding
`structure, material, or acts described in the Specification for performing the
`recited function. Id.
`We provide our interpretation of the following claim terms used for
`purposes of this decision.
`B. Means for activating remote tire monitoring system tire sensors
`Independent claims 1, 7, 9, 13, and 15 include the limitation, “means
`for activating remote tire monitoring system tire sensors.” According to
`Petitioner, the structure for the “means for activating” may be any one of a
`magnet, a valve core depressor, means for generating continuous wave
`signals, and means for generating modulated signals including the structure,
`and equivalents thereof, described in the Specification of the ’796 patent.
`Pet. 7-8. Patent Owner does not oppose Petitioner’s construction. See
`Prelim. Resp. 3-7.
`Each of claims 1, 7, 9, 13, and 15 recites the “means for activating”
`being “selected from the group consisting of a magnet, a valve core
`depressor, means for generating continuous wave signals, and means for
`generating modulated signals” (emphasis added). The term “consisting of,”
`signals that this is a closed claim and not inclusive of structures besides
`those listed in the claim, and their equivalents. See In re Taylor, 445 F.
`App’x. 343, 346 (Fed. Cir. 2011) (“[T]he Board properly construed the
`‘consisting of’ claims to require one or more of the stated additives.”)
`The Specification of the ’796 patent describes that the tire sensors
`may be activated by a magnetic field, “or by utilizing a tool’s valve core
`depressor.” Ex. 1001, 11:39-40. The Specification further discloses that
`continuous wave signals can be transmitted by the tool to activate the tire
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`sensors, or alternatively, “microprocessor 114 can be advantageously
`utilized in various ways known in the art to modulate signals, encode
`signals, decode signals, etc.” Id. at 10:25-27. The only structure for
`generating and transmitting continuous wave signals disclosed in the ’796
`patent is power supply 104, frequency generator 108, driver 110, and
`inductor 112. Id. at Fig. 1, 5:11-22, 10:13-34. The structure for modulating
`the signals is described as “a microprocessor in addition to frequency
`generating circuitry.” Id. at 5:53-54, 6:3-7, Fig. 1.4
`In view of the Specification description and claims, we determine that
`the structures for activating the tire sensors are: (1) a magnet, (2) a valve
`core depressor, (3) the frequency generating circuitry and microprocessor for
`generating and transmitting continuous wave signals, and (4) modulated
`signals as described in, and shown in Figure 1 of, the ’796 patent.
`C. Means for receiving tire sensor signals, and means for receiving
`signals transmitted by remote tire monitoring system receiving units
`
`Independent claims 7, 9, 11, 13, 15, and 16 recite a “means for
`receiving tire sensor signals.” Claim 15 includes the additional limitation of
`“means for receiving signals transmitted by remote tire monitoring system
`receiving units.” According to Petitioner, in either case the phrases mean:
`“the structure disclosed in the ’796 patent to provide this function,”
`specifically, “antennas, receiving circuitry, and microprocessors,” including
`first receiver 118, second receiver 120, antenna 116, and microprocessor
`114. Pet. 9-10 (citing Ex. 1001, 7:29-42, 10: 34-44) (brackets omitted).
`Our review of the ’796 patent indicates that the only structure for
`
`4 In each of claims 1, 7, 9, 11, 13, and 15 the “means for activating” includes
`the further limitations of “means for generating continuous wave signals,”
`and “means for generating modulated signals.”
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`performing either of the claimed functions of “receiving tire sensor signals”
`or “receiving signals transmitted by remote tire monitoring system receiving
`units” is the signal receiving circuitry described and shown in Figure 1,
`namely antenna 116, receivers 118, 120, and microprocessor 114. Ex. 1001,
`10:34-44. We find Petitioner’s proposed claim constructions to be the
`broadest reasonable and consistent with the plain meaning and Specification
`of the ’796 patent and Patent Owner does not oppose those constructions.
`See Prelim. Resp. 3-7. In light of the Specification, “means for receiving tire
`sensor signals” and “means for receiving signals transmitted by remote tire
`monitoring system receiving units” are the signal receiving circuitry antenna
`116, receivers 118, 120, and microprocessor 114 as shown and described in
`Figure 1. Ex. 1001, 10:34-44.
`D. A plurality of means
`Each of claims 1, 7, 9, 11, 13, and 15 recites “a plurality of means” in
`
`the clause “a plurality of means for activating remote tire monitoring system
`tire sensors” (emphasis added). Petitioner asserts that “a plurality of means”
`requires two or more means. Pet. 8. We find this construction to be
`reasonable as it is well settled that “‘plurality,’ when used in a claim, refers
`to two or more items, absent some indication to the contrary.” Dayco
`Products, Inc. v. Total Containment, Inc., 258 F.3d 1317, 1327-28 (Fed. Cir.
`2001) (citing York Prods., Inc. v. Cent. Tractor Farm & Family Ctr., 99
`F.3d 1568, 1575 (Fed. Cir. 1996)). Patent Owner does not contest this
`construction. See Prelim. Resp. 3-7. Thus, for purposes of this Decision, we
`interpret “a plurality of means” to require two or more means.
`E. Means for transmitting signals to remote tire monitoring system
`receiving units
`Independent claims 13, 15, and 16 recite “means for transmitting
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`signals to remote tire monitoring system receiving units.” Petitioner
`proposes that “means for transmitting” be construed as the structure
`disclosed in the ’796 patent, specifically, “an antenna connected to
`transmitting circuitry for transmitting signals and microprocessor for
`encoding signals,” and equivalents thereof. Pet. 10 (citing Ex. 1001, 8:53,
`9:1). Our review of the Specification reveals that the structure disclosed for
`performing the function of “transmitting signals to remote tire monitoring
`system receiving units” is antenna 122, transmitters 124, 126, and
`microprocessor 114 as shown in Figure 1. Ex. 1001, 10:45-56. We find
`Petitioner’s proposed construction to be the broadest reasonable and
`consistent with the plain meaning and Specification of the ’796 patent and
`Patent Owner does not oppose this construction. See Prelim Resp. 3-7. For
`purposes of this Decision, “means for transmitting signals to remote tire
`monitoring system receiving units” is an antenna connected to transmitting
`circuitry for transmitting signals and a microprocessor for encoding signals,
`as shown and described in the ’796 patent. Ex. 1001, 10:45-56, Fig. 1.
`F. Tool
`Claims 1, 4-16, and 20-22 all recite the term “tool” in the preamble.
`Petitioner proposes that “tool” be construed “as any device which contains
`the recited means and performs the recited functions.” Pet. 7. Patent Owner
`opposes this construction, and contends that “tool” should be interpreted as
`“a handheld device that aids in accomplishing a task.” Prelim. Resp. 7.
`As discussed above, the claims are to be given their broadest
`reasonable interpretation consistent with the Specification, reading claim
`language in light of the Specification as it would be interpreted by one of
`ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
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`1364 (Fed. Cir. 2004). The Specification does not define specifically the
`term “tool,” but does explain that “components of tire positioning tools of
`the present invention can be integrated by one of ordinary skill in the
`electronic arts to fit in a casing that is sufficiently small to be easily carried
`and handled by a technician.” Ex. 1001, 12:48-51. In this case, an ordinary
`and customary meaning of the term “tool” is “a handheld device that aids in
`accomplishing a task.” MERRIAM-WEBSTER ONLINE DICTIONARY,
`http://www.merriam-webster.com/dictionary/tool (last visited March 24,
`2014); see Prelim. Resp. 6. Based on the record before us, we find Patent
`Owner’s proposed construction to be the broadest reasonable construction
`consistent with both the Specification of the ’796 patent and the plain
`meaning of “tool.” Consequently, we construe “tool” as a handheld device
`that aids in accomplishing a task.
`
`G. Other Constructions Offered by Petitioner
`Petitioner offers constructions for the phrases, “wherein the tool is
`capable of adding data to a received tire sensor signal and transmitting the
`added data to a remote tire monitoring system receiving unit” (Pet. 11),
`“wherein the tool is capable of activating a plurality of tire sensors, each of
`the plurality of tire sensors utilizing a different method for activating the
`said tire sensor” (Pet. 8), “activating remote tire monitoring system tire
`sensors” (Pet. 7), and “display apparatus for displaying data received from
`tire sensor signals” (Pet. 10). However, Petitioner does not explain
`adequately why these terms require an express construction for this
`Decision. On this record, no express construction is needed for these
`phrases.
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`III. ANALYSIS
`We turn now to Petitioner’s asserted grounds of unpatentability, and
`Patent Owner’s arguments in its preliminary response, to determine whether
`Petitioner has met the threshold standard of 35 U.S.C. § 314(a).
`A. Claims 1 and 4-14 – Obvious over McClelland, Kranz, Dixit, and
`Howell.
`
`Petitioner has established a reasonable likelihood of prevailing on its
`assertion that claims 1 and 4-14 would have been obvious for the reasons
`explained below.
`Petitioner argues that McClelland describes an RTMS tool, referred to
`as an “exciter,” for activating tire sensors. Pet. 18 (citing Ex. 1002,
`¶¶ [0009]-[[0]011]). Petitioner asserts that McClelland’s exciter sends a
`continuous wave signal that activates tire sensors in a range of frequencies,
`causing the tire sensors to transmit data, such as tire pressure, back to the
`exciter. Id. (citing Ex. 1002 ¶ [0024]). According to Petitioner, the operator
`of the exciter can add data, such as tire position, to the received data and
`then transmit all such data to a receiver. Id. (citing Ex. 1002 ¶¶ [0012]-
`[0014], [0024], [0037]). Petitioner contends that the only aspect of the
`claimed invention that McClelland does not disclose is the use of a plurality
`of activation methods. Pet. 19. Petitioner supports this position with the
`Declaration of Dr. Valdis Liepa, alleging that “claim 1 differs from the
`disclosure of [McClelland] only by specifying that the tool is ‘capable of
`activating a plurality of tire sensors, each of the plurality of tire sensors
`utilizing a different method for activating the said tire sensor.’ [McClelland]
`discloses identically a tool for activation of RTMS tire sensors using a
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`continuous wave activation signal.” Ex. 1009 ¶ 56.
`Petitioner relies upon Kranz for teaching that, in an RTMS system, the
`tire sensor activation tool can transmit either a continuous wave signal or
`modulated signals, including signals at different frequencies to activate the
`tire sensors. Pet. 19-20 (citing Ex. 1003 [0013], [0030], [0032]). Petitioner
`then turns to Dixit for the teaching that a hand held transmitter tool for
`communicating with tire sensors can be a universal tool to communicate by
`different methods with different tire condition sensors in different RTMS
`systems. Pet. 20 (citing Ex. 1005, 4:55-65).
`Patent Owner argues that the same prior art, including McClelland,
`Kranz, and Dixit, were considered by the Examiner in the prosecution of the
`’796 case, and that presentation of such cumulative art does not meet the
`standard for granting inter partes review. Prelim. Resp. 7. Patent Owner’s
`position is that because the Examiner considered the references during
`prosecution of the ’796 patent, the issues of obviousness and anticipation
`based on these references have been addressed sufficiently, and further
`analysis of these references is unnecessary Id. at 9.
`While it may be a consideration, 35 U.S.C. § 325(d) does not require
`the Director to defer to a prior determination of the Patent and Trademark
`Office. See IPR2012-00004, Paper No. 18, pp. 16-19, Decision, Institution
`of Inter Partes Review, Jan. 24, 2013. Patent Owner directs us to no part of
`the prosecution history establishing any substantive consideration of these
`references. Indeed, Patent Owner provides no explanation or evidence as to
`what arguments were presented to the Examiner regarding these references,
`or how this prior art was considered or analyzed during the original
`prosecution. Prelim. Resp. 9. Accordingly, we are not persuaded that
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`review and analysis in this inter partes review of prior art presented during
`the prosecution of the ’796 patent would be unnecessary.
`Patent Owner next argues that McClelland fails to suggest a tool that
`uses “both the magnetic-activation system of the prior art and the continuous
`wave system claimed in the patent.” Id. at 11. As acknowledged by Patent
`Owner, Kranz recognizes that some tire sensors are activated by continuous
`wave generation and some by modulated wave generation, but Patent Owner
`asserts that Kranz teaches away from a combination of these different
`methods and “solves the problem by making all tire sensors the same.” Id.
`at 12. Patent Owner asserts that Dixit’s system does not “activate” tire
`sensors, specify a modulated or unmodulated signal, or even receive signals
`from the tire sensor as the signals go directly to a controller. Id. at 13.
`Patent Owner further contends that Howell’s use of RFID tags is not
`pertinent to the ’796 patent because the data storage devices are passive and
`have no internal power source. Id. at 14.
`We are not persuaded that Kranz teaches away from combination with
`McClelland merely because both references describe respective (different)
`RTMS systems, where each system uses tire sensors of a consistent type.
`See Prelim. Resp. 15. McClelland discloses tire sensors activated by
`continuous wave signals, and Kranz teaches tire sensors activated by
`modulated wave signals. Ex. 1002, [0009]-[0011]; Ex. 1003, [0013], [0032].
`Even if neither reference specifically discloses a universal tool, as Patent
`Owner asserts, teaching away requires that a reference actually criticizes,
`discredits, or otherwise discourages investigation into the claimed solution.
`See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (holding that prior art
`does not teach away from claimed subject matter merely by disclosing a
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`different solution to a similar problem unless the prior art also criticizes,
`discredits, or otherwise discourages the solution claimed).
`Petitioner’s rationale is that the combination of McClelland and
`Kranz’s known tire sensor activation systems “would have been obvious as
`the simple combination or integration of known elements for their intended
`purposes, accompanied by no change in function of the individual, known
`structures.” Pet. 25; see also Ex. 1001, 5:37-39, 6:7-9. Patent Owner has
`not demonstrated otherwise.
`Dixit is relied upon by Petitioner mainly for teaching a universal
`hand-held tool for communicating with different RTMS systems. Pet. 20.
`Patent Owner argues that Dixit does not activate the tire sensors in the
`manner required by the claims “with a signal that causes the sensors to
`respond and to transmit signals or information to an RTMS receiving unit
`such as vehicle-based unit 28.” Prelim. Resp. 14-15. This argument is not
`commensurate in scope with the claims. Claim 1, for example, recites
`merely that “the tool is capable of activating a plurality of tire sensors.”
`Thus, the claim does not require that the tool operate actively to activate a
`plurality of tire sensors, and instead merely must be “capable of” activating
`the sensors. Moreover, Petitioner contends that activation of the tire sensors
`is taught by McClelland and Kranz. Pet. 18-19. In reviewing the
`disclosures of McClelland and Kranz, we do not discern error in the
`Petitioner’s contention. For purposes of this Decision, we are persuaded that
`Dixit discloses the limitation of a universal tool for communicating with tire
`sensors in different RTMS systems.
`We are also persuaded that Howell’s use of an RFID tag reader that
`can determine different modulation and/or the data transmission systems of a
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`Case IPR2014-00183
`Patent 6,904,796 B2
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`passive data storage device, i.e., an RFID tag, is pertinent to the ’796 patent.
`See Prelim. Resp. 15. Howell discloses a reader that is capable of
`interrogating and reading the data storage devices using “different
`modulation and/or data transmission system . . . to identify the modulation
`and data transmission system of the data storage device and thus, enable
`retrieval of the data transmitted by the data storage device.” Ex. 1006, 7:7-
`16. We appreciate that Howell may disclose a passive data storage device,
`however, Petitioner relies upon McClelland and Kranz as disclosing RTMS
`systems which have active, as opposed to passive, tire sensors. Pet. 18-19.
`For these reasons, Petitioner has established a reasonable likelihood of
`prevailing on the ground of unpatentability of claims 1 and 4-14 as obvious
`over McClelland, Kranz, Dixit, and Howell.
`
`B. Claim 15 – Obvious over McClelland, Kranz, Dixit, Howell, Pascai
`’476, and Gaborit
`
`Petitioner has established a reasonable likelihood of prevailing on its
`assertion that claim 15 would have been obvious for the reasons explained
`below.
`In addition to McClelland, Kranz, Dixit, and Howell as discussed
`above, Petitioner relies upon Pascai ’476 and Gaborit for disclosing the
`additional limitation in claim 15 of “a means for receiving signals
`transmitted by remote tire monitoring system receiving units.”
`Pascai ’476 relates to a tire monitoring system and discloses a
`portable transceiver 44 which receives signals transmitted from a control and
`communications means 40, i.e. a receiving unit, in the vehicle. Ex. 1007,
`1:38-58, Fig. 1. Gaborit discloses a reader 30, i.e., a receiving unit, in the
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`17
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`Case IPR2014-00183
`Patent 6,904,796 B2
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`vehicle and a hand-held unit 50 which communicates both with the tire
`sensors 20 and the reader 30. Ex. 1008, 7:17-19, 8:6-8, Fig. 1.
`Petitioner persuasively reasons that a person of skill in the art would
`combine the two-way communication between an RTMS receiver and a tool
`as disclosed in Pascai ’476 and Gaborit so that the receiving unit could be
`accessed and information therefrom viewed by a technician via the hand-
`held tool. Pet. 41.
`Patent Owner relies only on its arguments with respect to the prior art
`as applied to claims 1 and 4-14, and does not dispute specifically Petitioner’s
`position as to claim 15 with respect to Pascai ’476 and Gaborit. Prelim.
`Resp. 17. Based on our review of the record before us, Petitioner has
`established a reasonable likelihood of prevailing on the ground of
`unpatentability of claim 15 as obvious over McClelland, Kranz, Dixit,
`Howell, Pascai ’476, and Gaborit under 35 U.S.C. § 103.
`
`C. Claim 16 – Anticipated by, or Obvious over McClelland
`Petitioner has established a reasonable likelihood of prevailing on the
`assertion that claim 16 is anticipated, or obvious for the reasons explained
`below.
`Petitioner points out that claim 16 is broader than, for instance
`claim 1, as it does not include the limitation requiring “a plurality of means
`for activating remote tire monitoring system tire sensors.” Pet. 42 (emphasis
`added). Petitioner argues that McClelland discloses all of the limitations of
`claim 16, including “wherein the tool is capable of adding data to a received
`tire sensor signal and transmitting said added data to a remote tire
`monitoring system receiving unit.” Id. McClelland discloses that tire
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`Case IPR2014-00183
`Patent 6,904,796 B2
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`position information for example, can be added to receive tire sensor
`information, whereupon “the exciter 16 communicates the information to the
`receiving unit 14.” Ex. 1002, [0013]-[0014].
`Patent Owner does not contest Petitioner’s argument, but has
`indicated intent to cancel claim 16.5 Prelim. Resp. 17. Based on the record
`before us, Petitioner has established a reasonable likelihood of prevailing on
`the ground of unpatentability of claim 16 as anticipated by, or obvious
`overMcClelland.
`
`D. Claims 20-22 – Anticipated by, or Obvious over McClelland
`Petitioner has established a reasonable likelihood of prevailing on its
`assertion that claims 20-22 would have been obvious over McClelland, for
`the reasons explained below.
`Petitioner contends that the Specification of the ’796 patent
`acknowledges that the phrase “plurality of means” as called for in claim 20
`includes the tool using continuous wave (“CW”) signals at different
`frequencies. Pet. 44. The ’796 patent Specification explains that
`The plurality of means for activating RTMS tire sensors may be
`any combination of the means discussed above. For example,
`tire positioning tools of the present invention may only include
`means for generating CW signals at two or more different
`frequencies and not include any other means for activating
`RTMS tire sensors.
`
`Ex. 1001, 6:15-20. Where “plurality of means” is understood to include
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`5 Appropriate procedures for canceling a claim include filing a statutory
`disclaimer (see Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`48,764) or alternatively, a Motion to Amend in accordance with 37 C.F.R. §
`42.221, Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766-77.
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`19
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`Case IPR2014-00183
`Patent 6,904,796 B2
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`signals at different frequencies, Petitioner argues that McClelland’s
`disclosure of “a range of frequencies” means “that the tool comprises a
`‘plurality of means’ for activating RTMS tire sensors.” Pet. 44 (citing Ex.
`1009 ¶¶ 107,108). Petitioner supports this position with its declarant,
`Dr. Liepa, who alleges that in McClelland, “[t]he statement that a ‘range of
`frequencies’ can be used teaches one skilled in the art that the exciter tool
`can send different frequencies of RF signal to activate the RTMS tire
`sensors.” Ex. 1009 ¶ 48.
`McClelland explains that the tool, i.e., the exciter, can be designed to
`generate different frequencies, describing that “[i]n the preferred
`embodiment, the high frequency transmitter circuit transmits a radio
`frequency signal at, for example 315 MHz. Other frequencies or ranges of
`frequencies may be suitably used.” Ex. 1002, 4:23-27. What is not clear
`from McClelland’s preferred embodiment is whether the exciter itself
`generates only one frequency or a pluralit
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