UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`TOYOTA MOTOR CORPORATION
`
`Petitioner
`
`
`
`v.
`
`
`
`Patent of American VEHICULAR SCIENCES
`
`Patent Owner
`
`
`
`Patent No. 6,738,697
`
`Issue Date: May 18, 2004
`
`Title: TELEMATICS SYSTEM FOR VEHICLE DIAGNOSTICS
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`TO PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 6,738,697 PURSUANT TO 35 U.S.C. §§ 42.107
`
`Case No. IPR2013-00412
`
`
`
` 
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`Honda Exhibit 1011
`Page 1
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`
`TABLE OF CONTENTS
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`
`
`I.
`II.
`
`INTRODUCTION ........................................................................................... 1
`SUMMARY OF THE ‘697 PATENT AND DEFICIENCIES IN
`ASSERTED REFERENCES ........................................................................... 2
`III. CLAIM CONSTRUCTION ............................................................................ 7
`IV. NO REVIEW SHOULD BE INSTITUTED WITH RESPECT TO
`THE GROUNDS RAISED BY PETITIONER ............................................. 11
`A. Ground 1: Fry Does Not Anticipate Under 35 U.S.C. § 102(a)
`Claims 1, 2, 10, 17, 19-21, 32, 40, and 61 ..................................................... 12
`B. Ground 2: Ishihara Does Not Anticipate Under 35 U.S.C. §
`102(b) Claims 1, 2, 5, 10, 17, 18, 21, 26, 27, 32, and 61 .............................. 18
`C. Ground 3: Asano Does Not Anticipate Under 35 U.S.C. § 102(b)
`Claims 1, 2, 5, 10, 17, 18, 21, 26, 27, 32, and 61 .......................................... 27
`D. Ground 4: Fry In View of Ishihara Does Not Render Obvious
`Under 35 U.S.C. § 103(a) Claims 5, 18, 26, and 27 ...................................... 34
`E. Ground 5: Fry In View of Asano Does Not Render Obvious
`Under 35 U.S.C. § 103(a) Claims 5, 18, 26, and 27 ...................................... 37
`F. Ground 6: Ishihara In View of Fry Does Not Render Obvious
`Under 35 U.S.C. § 103(a) Claims 19, 20, and 40 .......................................... 40
`G. Ground 7: Asano In View of Fry Does Not Render Obvious
`Under 35 U.S.C. § 103(a) Claims 19, 20, and 40 .......................................... 43
`CONCLUSION .............................................................................................. 45
`
`V.
`
`
`
`i
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`Honda Exhibit 1011
`Page 2
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`PATENT OWNER’S PRELIMINARY RESPONSE
`IPR2013-00412
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Andersen Corp. v. Pella Corp.,
`300 Fed. Appx. 893 (Fed. Cir. 2008) ............................................................. 30, 34
`Bicon, Inc. v. Straumann Co.,
`441 F.3d 945 (Fed. Cir. 2006) .............................................................................. 13
`CAE Screen Plates, Inc. v. Heinrich Fiedler GMBH & Co. KG,
`224 F.3d 1308 (Fed. Cir. 2000) ............................................................................ 13
`In re Bond,
`910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990) .............................................. 11
`In re Wilson,
`424 F.2d 1382, 165 USPQ 494 (CCPA 1970) .................................................... 11
`Phillips v. AWH Corp.,
`415 F.3d 1303, 75 USPQ2d 1321 (Fed. Cir. 2005) ............................................ 11
`Richardson v. Suzuki Motor Co.,
`868 F.2d 1226, 9 USPQ2d 1913 (Fed. Cir. 1989) ............................................. 11
`Verdegaal Bros. v. Union Oil Co. of California,
`814 F.2d 628, 2 USPQ2d 1051 (Fed. Cir. 1987) ................................................. 11
`Statutes 
`35 U.S.C. § 313 .......................................................................................................... 1
`35 U.S.C. § 314 .......................................................................................................... 1
`Other Authorities 
`MPEP § 2111 ........................................................................................................... 14
`MPEP § 2131 .......................................................................................................... 14
`MPEP § 2141 ................................................................................................... passim
`MPEP § 2143 .................................................................................................. passim
`Rules 
`37 C.F.R. § 42 ........................................................................................................ i, 1
`
`
` 
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`ii
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`Honda Exhibit 1011
`Page 3
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`I.
`
`INTRODUCTION
`
`Patent Owner American Vehicular Sciences (“American”) submits the
`
`following preliminary response to the Petition filed by Toyota Motor Corporation
`
`(“Toyota”) requesting inter partes review of claims 1, 2, 5, 10, 17-21, 26, 27, 32,
`
`40, and 61 of U.S. Pat. No. 6,738,697 (“the ‘697 patent”). This filing is timely
`
`under 35 U.S.C. § 313 and 37 C.F.R. § 42.107 because it is filed within three
`
`months of the July 17, 2013 mailing date of the Notice granting the Petition a July
`
`8, 2013 filing date. This petition was one of two filed by Toyota relating to the
`
`‘697 patent, the other being Case Number IPR2013-00413.
`
`“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 . . . shows that there is a reasonable likelihood that the petitioner
`
`would prevail with respect to at least 1 of the claims challenged . . . .” 35 U.S.C. §
`
`314(a) (emphasis added). Here, the prior art cited by Toyota, either alone or in
`
`combination, fails to disclose each and every limitation of claims 1, 2, 5, 10, 17-21,
`
`26, 27, 32, 40, and 61 of the ‘697 patent. As such, Toyota has failed to show a
`
`reasonable likelihood that it would prevail with respect to the grounds asserted in
`
`its Petition. This Patent Owner Preliminary Response establishes that no review
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` 
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`Honda Exhibit 1011
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`PATENT OWNER’S PRELIMINARY RESPONSE
`IPR2013-00412
`should be instituted with respect to at least the claims and grounds identified
`
`below.1
`
`II.
`
`SUMMARY OF THE ‘697 PATENT AND DEFICIENCIES IN
`ASSERTED REFERENCES
`
`The ‘697 patent claims the benefit of an initial priority application filed June
`
`7, 1995, which disclosed a revolutionary new vehicle diagnostic system positioned
`
`on the vehicle. (See ‘697 patent at cover, claiming priority to U.S. Pat. App. No.
`
`08/476,077, now U.S. Pat. No. 5,809,437.) That application disclosed a system of
`
`sensors on a vehicle, a diagnostic computer positioned on the vehicle for
`
`processing the sensor output and outputting a diagnosis, a display in the vehicle for
`
`displaying the diagnosis received from the vehicle diagnostic computer, and a
`
`separate transmission means for transmitting the diagnosis information to a remote
`
`site. (See, e.g., U.S. Pat. No. 5,809,437 at claims 1, 9.) A later application filed on
`
`June 19, 2002 (U.S. Pat. App. No. 10/174,709, now U.S. Pat. No. 6,736,506)
`
`disclosed including GPS location data with a diagnosis transmission. (See, e.g.,
`
`U.S. Pat. No. 6,736,506 at claims.) The application leading to the ‘697 patent is a
`
`                                                            
`1 In its Preliminary Patent Owner’s Response, American has set forth preliminary
`
`positions in response to grounds recited in Toyota’s Petition. Should the Board
`
`decide to institute a trial, American reserves the right to set forth additional
`
`reasons, arguments and evidence in support of patentability.
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` 
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`2
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`Honda Exhibit 1011
`Page 5
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`continuation-in-part from both of those applications and several others, combining
`
`the concepts from the applications.
`
`The ‘697 patent in particular relates to on-board diagnosis of the state of a
`
`vehicle and its components. (See, e.g., See Ex. 1001, ‘697 patent at claim 1.) The
`
`‘697 patent invention, however, is much more than just a diagnosis system. Key
`
`inventive elements of the ‘697 patent not found in the art cited by Petitioner
`
`Toyota include:
`
`
`
`The concept of on-board diagnosis. The ‘697 patented inventions
`
`require the vehicle to collect sensor data and process it to arrive at a diagnosis of
`
`the state of the vehicle or vehicle components—all on board the vehicle. (See, e.g.,
`
`See Ex. 1001, ‘697 patent at claims 1, 2, 21.) In other words, the system of the
`
`‘697 patent transmits a completed diagnosis to a remote site. (See id.) This
`
`distinction is how the applicant overcame certain prior art with respect to certain
`
`claims of the ‘697 patent. For example, the ‘697 patent distinguished U.S. Pat. No.
`
`5,400,018 to Scholl by stating that in Scholl:
`
`[t]he vehicle does not include a system for performing diagnosis.
`Rather, the raw sensor data is processed at an off-vehicle location in
`order to arrive at a diagnosis of the vehicle’s operating conditions. . . .
`Scholl does not teach the diagnosis of the problem or potential
`problem on the vehicle itself nor does it teach the automatic
`diagnostics or any prognostics.
`
`
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`(See Ex. 1001, ‘697 patent at 2:67-3:13.) During prosecution, the inventor
`
`overcame rejections in view of U.S. Pat. No. 5,056,023 to Abe (“Abe”) and U.S.
`
`Pat. Pub. No. 2002/0103622 to Burge (“Burge”), by showing that Abe and Burge
`
`do not process sensor data to arrive at a “diagnosis” on the vehicle, but instead off-
`
`load diagnostic capability to a remote facility. (See Ex. 1006, ‘697 Patent File
`
`History at 352-354.) In short, the inventions of the ‘697 patent do not merely
`
`consist of vehicle sensors, diagnosis performed somewhere (whether on the vehicle
`
`or not), and transmission of information to a remote site. The concept of on-board
`
`diagnosis is completely lacking in at least two of the art references upon which
`
`Toyota relies, namely, Japanese patent application H01-197145 to Ishihara
`
`(“Ishihara”) and U.S. Pat. No. 5,157,610 to Asano (“Asano”), while Toyota has not
`
`sufficiently shown that a third reference (a 1995 article by K.N. Fry (“Fry”)) is in
`
`fact prior art. (See below at §IV.A-C.)
`
`
`
`The ability to diagnose the “state of the vehicle or the state of a
`
`component of a vehicle,” as opposed to simply detecting vehicle or component
`
`failures. This is an important distinction in the ‘697 patent. Diagnosing the “state”
`
`of the vehicle requires “a diagnosis of the condition of the vehicle with respect to
`
`its stability and proper running and operating condition.” (See Ex. 1001, ‘697
`
`patent at 10:29-32.) “Thus, the state of the vehicle could be normal when the
`
`vehicle is operating properly on a highway or abnormal when, for example, the
`
` 
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`vehicle is experiencing excessive angular inclination . . ., the vehicle is
`
`experiencing a crash, the vehicle is skidding, and other similar situations.” (See
`
`Ex. 1001, ‘697 patent at 10:32-38.) The cited Ishihara and Asano references fail to
`
`disclose any diagnosis of the “state” of the vehicle or components. Ishihara
`
`discloses only component failure “detection” and separate off-vehicle diagnosis,
`
`while Asano discloses only detecting “operating condition” information that is
`
`transmitted to a separate base station for processing and diagnosis. (See infra §
`
`IV.A-B.)
`
`
`
`Further, dependent claims of the ‘697 patent add other features. For
`
`example, claims 5 and 26 claim a “display” to “display the diagnosis of the state of
`
`the vehicle or the state of the component of the vehicle.” (Ex. 1001, ‘697 patent at
`
`claims 5, 26.) Notably, the diagnosis information shown on the display is “the
`
`diagnosis” performed by the on-board vehicle computer—not just messages or a
`
`diagnosis received from a remote facility or other information. (See, e.g., Ex.
`
`1001, ‘697 patent at 13:24-33 (“A display may be arranged in the vehicle . . . Such
`
`a display is . . . arranged to display the diagnosis of the state of the vehicle or the
`
`state of a component of the vehicle . . .”).) Fry contains no disclosure of any
`
`display whatsoever. (See infra § IV.A.) Ishihara and Asano contain no disclosure
`
`of displaying “the diagnosis” performed on the vehicle—rather, they disclose
`
`displaying only information received from a remote site. (See infra §§ IV.B-C.)
`
` 
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`5
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`Honda Exhibit 1011
`Page 8
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`Claims 18 and 27 similarly claim a “warning” device or system for
`
`indicating a diagnosis—something recited separately from the “display,” such as a
`
`warning lamp or sound. (See, e.g., Ex. 1001, ‘697 patent at 81:32-36 (“The [output
`
`system] may be a display as mentioned above or a warning device.”), 13:24-33 (“A
`
`display may be arranged in the vehicle . . . Such a display is . . . arranged to display
`
`the diagnosis of the state of the vehicle or the state of a component of the vehicle . .
`
`. A warning device may also be coupled to the diagnostic system for relaying a
`
`warning . . .”) (emphasis added).) Fry again contains no disclosure of any warning
`
`system, while Ishihara and Asano fail to disclose a system for communicating a
`
`warning related to the “state of the vehicle or the state of the components of the
`
`vehicle.” (See infra § IV.A-C.)
`
`
`
`Dependent claim 17 adds the feature of using the diagnosis output to
`
`“control” at least one part of the vehicle. The ‘697 patent clarifies that “control” of
`
`the vehicle or a component means to variably direct the operation of at least one
`
`part of the vehicle based on the diagnosis of the state of the vehicle or component.
`
`(See, e.g., Ex. 1001, ‘697 patent at 41:9-18, 84:9-18.) In other words, claim 17
`
`recites that a diagnostic system’s processor is able to, for example, turn a
`
`component on or off, change the operation of a component, etc., based on the
`
`vehicle or component diagnosis. An example could be turning off a passenger air-
`
`bag if a sensor detects a child seated in a seat or disabling a vehicle if the driver is
`
` 
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`Honda Exhibit 1011
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`drunk. (See, e.g., Ex. 1001, ‘697 patent at 24:64-67, 26:39-42 (disclosing sensors
`
`for detecting if a child or child seat is present in a seat), 19:52-55 (disclosing
`
`sensors for detecting if a seat is occupied by a drunk adult).) The ‘697 patent
`
`describes this “control” “based on” the diagnosis as being more functional than just
`
`transmitting the diagnosis information or displaying the information—neither the
`
`transmitter or display are being “controlled”, nor are they being controlled “based
`
`on” the diagnosis information. None of the cited references including Fry,
`
`Ishihara, or Asano, disclose such claimed “control” based on the diagnosis. (See
`
`infra §§ IV.A-C.)
`
`For these reasons and other reasons discussed below, and because the art
`
`relied upon by Toyota does not disclose, either alone or in combination, all of the
`
`claim limitations, Toyota’s Petition should be denied.
`
`III. CLAIM CONSTRUCTION
`
`The ‘697 patent specification provides express definitions for a number of
`
`claim terms (which Petitioner Toyota set forth in its Petition), including:
`
`Claim Term
`
`Definition Set Forth in ‘697 Patent
`
`“component” (claims 1, 21)
`
`“any part or assembly of parts which is
`
`mounted to or a part of a motor vehicle
`
`and which is capable of emitting a
`
`signal representative of its operating
`
` 
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`Honda Exhibit 1011
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`state” (see Ex. 1001, ‘697 patent at
`
`30:58-31:22).
`
`“part” (claim 17)
`
`“any component, sensor, system or
`
`subsystem of the vehicle such as the
`
`steering system, braking system, throttle
`
`system, navigation
`
`system,
`
`airbag
`
`system,
`
`seatbelt
`
`retractor, air bag
`
`inflation valve,
`
`air bag
`
`inflation
`
`controller and airbag vent valve, as well
`
`as those listed below in the definitions
`
`of ‘component’ and ‘sensor’” (see id. at
`
`10:51-57).
`
`“sensor” (claims 2, 10, 32)
`
`“any measuring or sensing device
`
`mounted on a vehicle or any of its
`
`components
`
`including new
`
`sensors
`
`mounted
`
`in conjunction with
`
`the
`
`diagnostic module in accordance with
`
`the invention” (see Ex. 1001, ‘697
`
`patent at 31:23-32:11).
`
`“sensor system” (claim 10)
`
`“any of the sensors listed below in the
`
` 
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`Honda Exhibit 1011
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`definition of ‘sensor’ as well as any type
`
`of
`
`component
`
`or
`
`assembly
`
`of
`
`components which detect, sense or
`
`measure something (see id. at 10:58-61).
`
`“diagnosis of the state of the vehicle
`
`“diagnosis of
`
`the condition of
`
`the
`
`(claims 1, 21)
`
`vehicle with respect to its stability and
`
`proper running and operating condition”
`
`(see id. at 10:29-32).
`
`American also disputes, however, the manner in which Toyota has applied
`
`(and therefore effectively construed) certain other claim terms. Specifically,
`
`Toyota has ignored the plain language and ordinary meaning of the following
`
`claim terms, for which American provides a proposed construction:
`
`Claim Term
`
`Correct Construction
`
`“diagnostic system arranged on the
`
`a system having all the components for
`
`vehicle” (claims 1, 21)
`
`diagnosing the state of the vehicle or the
`
`state of a component of the vehicle
`
`located on the vehicle (Ex. 1001, ‘697
`
`patent at 10:29-41, 3:9-13).
`
`
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`9
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`Honda Exhibit 1011
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`indicative or representative
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`PATENT OWNER’S PRELIMINARY RESPONSE
`IPR2013-00412
`output indicating the condition of the
`
`“output
`
`thereof” or “output
`
`indicative or
`
`vehicle with respect to its stability and
`
`representative of the diagnosed state of
`
`proper running and operating condition
`
`the vehicle or the diagnosed state of the
`
`or indicating that one of the parts of the
`
`component of the vehicle” (claims 1, 21)
`
`vehicle, e.g., a component, system, or
`
`subsystem, is operating abnormally (id.
`
`at 10:29-41).
`
`“control at
`
`least one part of
`
`the
`
`variably directing the operation of at
`
`vehicle” (claim 17)
`
`least one part of the vehicle based on the
`
`diagnosis (Id. at 41:9-18, 84:9-18).
`
`“display” (claim 5)
`
`a screen for showing information, as
`
`opposed to a warning lamp (See, e.g., id.
`
`at 81:32-36 (“The [output system] may
`
`be a display as mentioned above or a
`
`warning device.”), 13:24-33 (“A display
`
`may be arranged in the vehicle . . . Such
`
`a display is . . . arranged to display the
`
`diagnosis of the state of the vehicle or
`
`the state of a component of the vehicle .
`
`. . A warning device may also be
`
` 
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`10
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`Honda Exhibit 1011
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`coupled to the diagnostic system for
`
`relaying a warning . . .”).
`
`“display . . . arranged to display the
`
`the display is able to show the diagnosis
`
`diagnosis” (claim 5)
`
`output from the diagnostic system on-
`
`board the vehicle (Ex. 1001, ‘697 patent
`
`at claim 1 and 13:24-28).
`
`IV. NO REVIEW SHOULD BE INSTITUTED WITH RESPECT TO THE
`GROUNDS RAISED BY PETITIONER
`
`In its Petition, Toyota has proposed seven separate groups of rejections
`
`against various claims of U.S. Patent No. 6,738,697 (“the ‘303 Patent”).
`
`Specifically, Toyota has proposed the following grounds and rejections:
`
`Ground 1. Proposed rejection of claims 1, 2, 10, 17, 19-21, 32, 40, and 61 under
`
`35 U.S.C. § 102(a) over K.N. Fry, “Diesel Locomotive Reliability
`
`Improvement by System Monitoring,” Proc. Instn. Mech. Engrs. Vol. 209, 3-
`
`12 (1995) (“Fry”).
`
`Ground 2. Proposed rejection of 1, 2, 5, 10, 17, 18, 21, 26, 27, 32, and 61 under
`
`35 U.S.C. § 102(b) over Japanese Unpublished Patent Application H01-197145
`
`to Ishihara (“Ishihara”).
`
`Ground 3. Proposed rejection of claims 1, 2, 5, 10, 17, 18, 21, 26, 27, 32, and
`
`61 under 35 U.S.C. § 102(b) over U.S. Pat. No. 5,157,610 to Asano et al.
`
` 
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`(“Asano”).
`
`Ground 4. Proposed rejection of claims 5, 18, 26, and 27 under 35 U.S.C. §
`
`103(a) over Fry in view of Ishihara.
`
`Ground 5. Proposed rejection of claim 5, 18, 26, and 27 under 35 U.S.C. §
`
`103(a) over Fry in view of Asano.
`
`Ground 6. Proposed rejection of claim 19, 20, and 40 under 35 U.S.C. §
`
`103(a) over Ishihara in view of Fry.
`
`Ground 7. Proposed rejection of claims 19, 20, and 40 under 35 U.S.C. § 103(a)
`
`over Asano in view of Fry.
`
`The cited references, however, either alone or in combination, fail to
`
`disclose, teach, or suggest all the elements of the claims to which they are
`
`applied, and hence they fail to establish a prima facie case of unpatentability
`
`with respect to those claims. Accordingly, with respect to at least the claims
`
`discussed below, the Petition does not establish a reasonable likelihood that
`
`those claims are unpatentable, and, therefore, the Board should not institute an
`
`inter partes review proceeding based on the proposed grounds.
`
`A. Ground 1: Fry Does Not Anticipate Under 35 U.S.C. § 102(a)
`Claims 1, 2, 10, 17, 19-21, 32, 40, and 61
`
`Petitioner Toyota argues that claims 1, 2, 10, 17, 19-21, 32, 40, and 61 are
`
`anticipated by Fry. (Toyota does not argue that claims 5, 18, 26, or 27 are
`
`anticipated by Fry.)
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`As an initial matter, Toyota has failed to provide sufficient evidence that Fry
`
`is in fact prior art to each of the challenged ‘697 patent claims. Toyota
`
`acknowledges that the ‘697 patent claims priority to June 7, 1995. (See Petition at
`
`p. 5, fn. 2.) Toyota argues only that claims 19, 20, and 40 of the ‘697 patent,
`
`which relate to GPS location identification, have a later effective filing date of
`
`June 19, 2002. The Fry reference, however, indicates only that it was published in
`
`“1995,” with no more specific date. Toyota asserts that because a third-party
`
`website later recorded the publication as January 1, 1995, that this is the actual date
`
`of publication. (See Petition at p. 5.) However, the Fry reference itself discloses
`
`on its face that it was not accepted for publication until December 22, 1994,
`
`making it highly unlikely that the reference was published and publicly available
`
`by January 1, 1995.2
`
`Further, for at least the reasons set forth below, Toyota has not shown that
`
`Fry discloses all of the limitations. For a proper showing that a claim is
`
`anticipated, all elements of the claim must be disclosed in the cited reference.
`
`“A claim is anticipated only if each and every element as set forth in the claim
`                                                            
`2 Moreover, Toyota only asserts the Fry reference as a § 102(a) reference.
`
`American reserves the right to provide any antedating declarations. (See 37 C.F.R.
`
`§ 1.131 (providing for affidavits or declarations swearing behind an asserted
`
`reference).)
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`Honda Exhibit 1011
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`is found, either expressly or inherently described, in a single prior art
`
`reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631,
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`(Fed. Cir. 1987). “The identical invention must be shown in as complete detail
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`as is contained in the . . . claim.” MPEP § 2131 (citing Richardson v. Suzuki
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`Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989)). “All words in a claim must
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`be considered in judging the patentability of that claim against the prior art.”
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`MPEP § 2143.03 (citing In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496
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`(CCPA 1970)). “During patent examination, the pending claims must be ‘given
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`their broadest reasonable interpretation consistent with the specification.’” MPEP
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`§ 2111 (citing Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321,
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`1329 (Fed. Cir. 2005)). Further, the elements must be arranged as required by
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`the claim. In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990).
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`Specifically, independent claim 1 (and therefore dependent claims 2, 5,
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`10 and 17-20) recites “automatically” transmitting diagnosis information from the
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`vehicle to a remote facility “without manual intervention,” as shown below:
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`Claim 1: A vehicle comprising:
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`a diagnostic system arranged on the vehicle to diagnose the state of
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`the vehicle or the state of a component of the vehicle and generate an
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`output indicative or representative thereof; and
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`a communications device coupled to said diagnostic system and
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`to automatically establish a communications channel
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`arranged
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`between the vehicle and a remote facility without manual intervention
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`and wirelessly transmit the output of said diagnostic system to the
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`remote facility.
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`(Ex. 1001, ‘697 patent at claim 1.) Fry does not disclose “automatic” transmission
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`to a diagnostic system. Fry does disclose “automatic analysis of data,” but does
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`not expressly disclose that data is transmitted without manual intervention. (See
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`Ex. 1002, Fry at Abstract (“The key elements in the success of the system are the
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`automated analysis of data on board the vehicle and its ability to call for help ahead
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`of the occurrence of service failures.”).) With respect to actual transmission of the
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`data, Fry states that “messages should be sent from the vehicle immediately, but
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`this is not necessarily the case when prognosis is involved.” (Ex. 1002, Fry at p. 5,
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`§2.4.) Fry also states that information can be provided to the owning business “on
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`demand,” which suggests manual intervention. (Id. at p. 4, § 2.3.)
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`Further, claim 17 also requires a processor “arranged to control at least one
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`part of the vehicle based on the output indicative or representative of the state of
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`the vehicle or the state of a component of the vehicle,” as shown below:
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`Claim 17. The vehicle of claim 2, wherein said processor is arranged
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`to control at least one part of the vehicle based on the output
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` 
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`indicative or representative of the state of the vehicle or the state of a
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`component of the vehicle.
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`(Ex. 1001, ‘697 patent at claim 17.) The ‘697 patent clarifies that “control” of the
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`vehicle or a component means variably directing the operation of at least one part
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`of the vehicle based on the diagnosis. (See, e.g., id. at 41:9-18, 84:9-18.) In other
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`words, claim 17 recites that the diagnosis processor is able to, for example, turn a
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`component on or off, change the operation of a component, etc., based on the
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`vehicle or component diagnosis. One example is detecting that a vehicle is
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`skidding or sliding and “sending messages to the various vehicle control systems to
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`activate throttle, brake, and/or steering to correct for the vehicle sliding or skidding
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`motion.” (‘697 patent at 16:24-28.) Another example would be turning off a
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`passenger air-bag if a sensor detects a child seated in a seat or disabling a vehicle if
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`the driver is drunk. (See, e.g., ‘697 patent at 24:64-67, 26:39-42 (disclosing
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`sensors for detecting if a child or child seat is present in a seat), 19:52-55
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`(disclosing sensors for detecting if a seat is occupied by a drunk adult).)
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`Fry does not disclose any such “control” of the vehicle or vehicle
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`components in response to any diagnosis. Toyota cites only to the disclosure in
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`Fry of a communication device to send vehicle status information to a remote
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`facility—something
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`that has no relation
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`to “controlling”
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`the vehicle or
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`components, and is in no way doing so “based on the output indicative or
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` 
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`representative of the state of the vehicle or the state of a component of the
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`vehicle.” (See Petition at 34-35.) Transmission occurs regardless of the content of
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`the diagnosis, so the transmitter is not controlled “based on” the diagnosis.
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`Further, transmitting diagnosis information is claimed as a separate element in
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`claim 1 from the “control” element of claim 17. (See, e.g., claim 1 (claiming
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`transmission of the diagnosis).) Under the doctrine of claim differentiation, the
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`requirement in claim 17 of “control” of a component is presumed to be distinct
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`from the transmission element of claims 1—otherwise the “control” element of
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`claim 17 would be meaningless and redundant to claim 1. See, e.g., Bicon, Inc. v.
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`Straumann Co., 441 F.3d 945, 951 (Fed. Cir. 2006) (“Claim language, however,
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`“should not [be] treated as meaningless.”); CAE Screen Plates, Inc. v. Heinrich
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`Fiedler GMBH & Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence
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`of any evidence to the contrary, we must presume that the use of these different
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`terms in the claims connotes different meanings.”).
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`
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`And again, Toyota does not even attempt to argue that Fry discloses all of
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`the limitations of claims 5, 18, 26, or 27. (Toyota seeks to invalidate these claims
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`on other grounds.) Each of these claims relates to either a display or a warning
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`system in the vehicle for displaying or indicating the state of the vehicle or the
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`state of a component of the vehicle.
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` 
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`Accordingly, Toyota has not demonstrated a reasonable likelihood that each
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`of these claims are unpatentable under § 102 in view of Fry. The Board should
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`therefore decline to institute an inter partes review based on this ground.
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`B. Ground 2: Ishihara Does Not Anticipate Under 35 U.S.C. §
`102(b) Claims 1, 2, 5, 10, 17, 18, 21, 26, 27, 32, and 61
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`Toyota argues that claims 1, 2, 5, 10, 17, 18, 21, 26, 27, 32, and 61 are
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`anticipated by Ishihara. (Toyota does not argue that claims 19, 20, or 40 are
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`anticipated by Ishihara.) For the reasons discussed above, Toyota’s arguments
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`regarding Ishihara fail to raise a ground for review.
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`As an initial matter, Ishihara is an unexamined patent application that
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`published in Japanese. (See Ex. 1004.) Toyota was required to provide a
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`translation and “an affidavit attesting to the accuracy of the translation.” 37 C.F.R.
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`§ 42.63(b). A translation of a foreign language document into English, however,
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`must be accompanied by “an affidavit attesting to the accuracy of the
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`translation.” Id. In lieu of an affidavit, a party may submit a declaration “only if,
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`the declarant is, on the same document, warned that willful false statements and the
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`like are punishable by fine or imprisonment, or both (18 U.S.C. 1001) . . . .” 37
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`C.F.R. § 1.68 (emphasis added); see also 37 C.F.R. § 42.2. The certification is not
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`an affidavit or compliant declaration. (Ex. 1005 at 7.)
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`Further, Toyota’s
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`certification
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`is
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`deficient
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`because
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`it
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`lacks
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`authentication. Under the Federal Rules of Evidence (which apply to inter partes
`18
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`review) “[w]itness testimony translated from a foreign language must be properly
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`authenticated and any interpretation must be shown to be an accurate translation
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`done by a competent translator.” Jack v. Trans World Airlines, Inc., 854 F. Supp.
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`654, 659 (N.D. Cal. 1994) (emphasis added); see also Townsend Eng’g Co. v.
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`HiTec Co., 1 U.S.P.Q.2d 1987, 1988 (N.D. Ill. 1986); 37 C.F.R. § 42.62. The
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`certification offered by Toyota does not properly authenticate the translation of
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`Ishihara. The certification merely states: “This is to certify that the attached
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`translation is, to the best of my knowledge and belief, a true and accurate
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`translation from Japanese into English of the patent that is entitled: Unexamined
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`Patent Application Publication H01-197145.” (Ex. 1005 at 7.) The certification,
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`signed by a “Project Manager,” does not describe this individual’s qualifications to
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`make the translation. (Id.) In fact, the certification does not even state that this
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`individual is fluent in Japanese or that this individual actually translated the
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`document in question. (Id.) The certification therefore fails to properly
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`authenticate the translation. See Jack, 854 F. Supp. at 659 (striking translations
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`from the record where the party only provided “a statement by an individual at a
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`local translation center stating that the translations were true and correct”);
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`Townsend, 1 U.S.P.Q.2d at 1988.
`
`I