UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
`
`
`
`FORD MOTOR COMPANY,
`Petitioner,
`
`v.
`
`CUOZZO SPEED TECHNOLOGIES LLC,
`Patent Owner.
`
`____________
`
`
`
`
`
`CASE IPR: 2014-01393
`Patent 6,778,074
`____________
`
`PATENT OWNER’S RESPONSE
`
`
`
`
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`
`
`
`TABLE OF CONTENTS
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`Page
`INTRODUCTION. .......................................................................................... 1 
`I.
`LEGAL PRINCIPLES. .................................................................................... 2 
`II.
`III. CLAIM CONSTRUCTION. ........................................................................... 5 
`A.
`“Integrally Attached” Means “Joined Or Combined To Work
`As A Unit.” ............................................................................................ 5 
`IV. THE PETITION DOES NOT SHOW THAT THE CITED
`REFERENCE ANTICIPATES THE CHALLENGED CLAIMS. ................. 9 
`A. Ground 1: Nagoshi Does Not Anticipate Claims 1, 9, 10 or 19. ......... 9 
`1.
`The Petition Does Not Show That Nagoshi Discloses A
`“Display Controller Adjusts Said Colored Display
`Independently Of Said Speedometer To Continuously
`Update The Delineation Of Which Speed Readings Are
`In Violation Of The Speed Limit At A Vehicle’s Present
`Location” (Claim 1). ................................................................... 9 
`The Petition Does Not Show That Nagoshi Discloses A
`“Said Display Controller Further Comprises A Tone
`Generator” (Claims 9 and 19). .................................................. 11 
`The Petition Does Not Show That Nagoshi Discloses “A
`Global Positioning System Receiver” (Claim 10). ................... 13 
`B. Ground 2: Claims 2, 11–13 And 20 Are Not Obvious Over
`Nagoshi And Vaughn. ......................................................................... 14 
`1.
`The Petition Does Not Show That Nagoshi And Vaughn
`Discloses “Said Colored Display Is A Liquid Crystal
`Display” (Claims 2 and 12). ...................................................... 14 
`The Petition Does Not Show That Nagoshi And Vaughn
`Discloses “Said Global Positioning System Receiver
`Further Comprises A Database Of Locations And Their
`Corresponding Speed Limits” (Claim 11). ............................... 17 
`The Petition Does Not Show That Nagoshi And Vaughn
`Discloses “Said Display Controller Adjusts Said Liquid
`Crystal Display Independently Of Said Speedometer To
`Continuously Update The Delineation Of Which Speed
`
`2.
`
`3.
`
`2.
`
`3.
`
`i
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`

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`
`
`V.
`
`Readings Are In Violation Of The Speed Limit At A
`Vehicle’s Present Location” (Claim 13). .................................. 18 
`C. Grounds 3, 4 and 5 .............................................................................. 18 
`D. Ground 6: Claim 1 Is Not Obvious Over Tegethoff, Vaughn,
`Evans and Wendt. ................................................................................ 19 
`1.
`The Petition Does Not Show That The Cited
`Combination Discloses “Display Controller Adjusts Said
`Colored Display Independently Of Said Speedometer To
`Continuously Update The Delineation Of Which Speed
`Readings Are In Violation Of The Speed Limit At A
`Vehicle’s Present Location” (Claim 1). .................................... 19 
`CONCLUSION. ............................................................................................. 24 
`
`ii
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`

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`
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`TABLE OF AUTHORITIES
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`Page
`
`CASES 
`ActiveVideo Networks, Inc. v. Verizon Commc’n, Inc., 694 F.3d 1312 (Fed.
`Cir. 2012) ............................................................................................................ 20
`C.R. Bard v. M3 Sys., 157 F.3d 1340 (Fed. Cir. 1998) .............................................. 2
`Ex Parte Stefan Jacob, Martin Peisel, & Harald Zweck, 10/386,974, 2011
`WL 3877046 (B.P.A.I. Aug. 31, 2011) ................................................................ 5
`Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323 (Fed. Cir. 2008) ................... 2
`Fleming v. Escort Inc., 774 F.3d 1371 (Fed. Cir. 2014) ............................................ 4
`Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966) ................................. 4
`In re Bond, 910 F.2d 831 (Fed. Cir. 1990) ................................................................ 2
`In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent
`Litig., 676 F.3d 1063 (Fed. Cir. 2012) .................................................................. 4
`In re Gordon, 733 F.2d 900 (Fed. Cir. 1984) ............................................................ 4
`In re Ratti, 270 F.2d 810 (C.C.P.A. 1959) ................................................................. 4
`In re Rijckaert, 9 F.3d 1531 (Fed. Cir. 1993) ............................................................ 3
`In re Robertson, 169 F.3d 743 (Fed. Cir. 1999) ........................................................ 3
`Kinetic Technologies, Inc. v. Skyworks Solutions, Inc., IPR 2014-00529,
`Paper 8 (PTAB Sept. 23, 2014) .......................................................................... 21
`K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d 1364 (Fed. Cir. 2012) ............................... 3
`Net MoneyIn, Inc. v. Verisign, Inc., 545 F.3d 1359 (Fed. Cir. 2008) ................. 2, 12
`Tec Air, Inc. v. Denso Mfg. Michigan Inc., 192 F.3d 1353 (Fed. Cir. 1999) ............ 5
`
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`

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`Case No.: IPR2014-01393
`Patent No: 6,778,074
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` Attorney’s Docket No.: CUO0003-IPR
` Page 1
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`INTRODUCTION.
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`
`
`I.
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`Pursuant to 37 C.F.R. § 42.120, Patent Owner Cuozzo Speed Technologies
`
`LLC (“Patent Owner”) submits this response to the Petition for Inter Partes
`
`Review (“Petition”) of claims 1-20 of U.S. Patent No. 6,778,074 (the “‘074
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`Patent”) filed by Ford Motor Company (“Petitioner”). Paper 4 (“Petition” or
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`“Pet.”) at 1.
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`On February 9, 2014, the Patent Trial and Appeal Board (“Board”) instituted
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`inter partes review based on the following grounds of unpatentability alleged in
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`the Petition:
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`1. Claim 1, 9, 10, and 19, under 35 U.S.C. § 102(b), as anticipated by Nagoshi;
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`2. Claims 2, 11–13, and 20, under 35 U.S.C. § 103(a), as obvious over Nagoshi
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`and Vaughn;
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`3. Claims 4 and 5, under 35 U.S.C. § 103(a), as obvious over Nagoshi and
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`Evans;
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`4. Claims 6 and 18, under 35 U.S.C. § 103(a), as obvious over Nagoshi and
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`Tegethoff; and
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`5. Claims 3 and 14–17 under 35 U.S.C. § 103(a), as obvious over Nagoshi,
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`Evans, and Wendt; and
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`Case No.: IPR2014-01393
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`6. Claim 1 under 35 U.S.C. § 103, as obvious over Tegethoff, Vaughn, Evans,
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`and Wendt.
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`II. LEGAL PRINCIPLES.
`
`“To anticipate a claim, a single prior art reference must expressly or
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`inherently disclose each claim limitation.” Finisar Corp. v. DirecTV Group, Inc.,
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`523 F.3d 1323, 1334 (Fed. Cir. 2008); In re Bond, 910 F.2d 831, 832 (Fed. Cir.
`
`1990). Additionally, “a finding of anticipation requires that the publication
`
`describe all of the elements of the claims, arranged as in the patented device.”
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`C.R. Bard v. M3 Sys., 157 F.3d 1340, 1349 (Fed. Cir. 1998) (emphasis added)
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`(string citation omitted). Thus, the prior art reference “must not only disclose all
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`elements within the four corners of the document, but must also disclose those
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`elements arranged as in the claim.” Net MoneyIn, Inc. v. Verisign, Inc., 545 F.3d
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`1359, 1369 (Fed. Cir. 2008) (citation and internal quotation marks omitted). “[I]t
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`is not enough that the prior art reference discloses part of the claimed invention,
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`which an ordinary artisan might supplement to make the whole, or that it includes
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`multiple, distinct teachings that the artisan might somehow combine to achieve the
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`claimed invention.” Id. at 1371.
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`Case No.: IPR2014-01393
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`
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`The fact that a certain result or characteristic may occur or be present in the
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`prior art is not sufficient to establish the inherency of that result or characteristic.
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`In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993). “To establish inherency, the
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`extrinsic evidence ‘must make clear that the missing descriptive matter is
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`necessarily present in the thing described in the reference, and that it would be so
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`recognized by persons of ordinary skill. Inherency, however, may not be
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`established by probabilities or possibilities. The mere fact that a certain thing may
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`result from a given set of circumstances is not sufficient.’” In re Robertson, 169
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`F.3d 743, 745 (Fed. Cir. 1999).
`
`“To qualify as prior art for an obviousness analysis, a reference must qualify
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`as ‘analogous art,’ i.e., it must satisfy one of the following conditions: (1) the
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`reference must be from the same field of endeavor; or (2) the reference must be
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`reasonably pertinent to the particular problem with which the inventor is involved.
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`A reference is reasonably pertinent if it, as a result of its subject matter, ‘logically
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`would have commended itself to an inventor’s attention in considering his
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`problem.’” K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d 1364, 1375 (Fed. Cir. 2012).
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`Petitioner bears the burden to establish that a reference is analogous art. See id. at
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`1376.
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`Case No.: IPR2014-01393
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`
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`A patent is invalid for obviousness only “if the differences between the
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`subject matter sought to be patented and the prior art are such that the subject
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`matter as a whole would have been obvious at the time the invention was made to a
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`person having ordinary skill in the art to which said subject matter pertains.” 35
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`U.S.C. § 103 (2006); see Fleming v. Escort Inc., 774 F.3d 1371, 1374 (Fed. Cir.
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`2014). Obviousness is a question of law based on underlying factual findings: (1)
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`the scope and content of the prior art; (2) the differences between the claims and
`
`the prior art; (3) the level of ordinary skill in the art; and (4) objective indicia of
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`nonobviousness. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18
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`(1966). Graham factors must be considered prior to reaching a conclusion
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`regarding obviousness. In re Cyclobenzaprine Hydrochloride Extended-Release
`
`Capsule Patent Litig., 676 F.3d 1063, 1076-77 (Fed. Cir. 2012).
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`Obviousness cannot be found where the proposed combination of prior art
`
`references would render the prior art unsatisfactory for its intended purpose or
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`change the principle of operation of the prior art invention being modified. See
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`MPEP § 2143.01(V) (citing In re Gordon, 733 F.2d 900 (Fed. Cir. 1984)) and §
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`2143.01(VI) (citing In re Ratti, 270 F.2d 810, 813 (C.C.P.A. 1959)); see Ex Parte
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`Stefan Jacob, Martin Peisel, & Harald Zweck, 10/386,974, 2011 WL 3877046, at
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`Case No.: IPR2014-01393
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`*2 (B.P.A.I. Aug. 31, 2011) (“If the Examiner’s proposed modification renders the
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`prior art unsatisfactory for its intended purpose, the Examiner has failed to make a
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`prima facie case of obviousness”); and Tec Air, Inc. v. Denso Mfg. Michigan Inc.,
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`192 F.3d 1353, 1360 (Fed. Cir. 1999) (“[I]f the references would produce a
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`seemingly inoperative device, then they teach away from their combination….”).
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`III. CLAIM CONSTRUCTION.
`
`A.
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`“Integrally Attached” Means “Joined Or Combined To Work As
`A Unit.”
`
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`Claim 10 requires “a speedometer integrally attached to said colored
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`display.” The specification repeatedly describes the colored display as one of the
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`many components of the speedometer.
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`Figure 1 shows a current embodiment of the speed limit indicator 10
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`according to the invention which has a speedometer 12. Ex. 1001, 5:6-8. The
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`specification expressly states, “[s]peedometer 12 has a backplate 14 made of
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`plastic, speed denoting markings 16 painted on backplate 14, a colored display 18
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`made of a red plastic filter, and a plastic needle 20 rotatably mounted in the center
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`of backplate 14.” Id. at 8-10. Clearly, like the speed denoting markings 16 and the
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`needle 20, the colored display 18 is a component joined or combined with the
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`
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`speedometer 12 to work as a unit, i.e., the inventive speed limit indicator 10 that
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`provides an integrated display for the driver.
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`Figure 2 shows a block diagram of a method used by the speed limit
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`indicator 10 depicted in Figure 1. Steps 50 and 52 describe adjustment of the
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`speedometer based on the speed limit information – “[50] vehicle speed above
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`posted speed limit is displayed on red speedometer region” and “[52] vehicle
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`speed up to speed limit is displayed on white speedometer region.” Ex. 1001,
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`Figure 2. Steps 50 and 52 provide clear support for the conclusion that the colored
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`display is a component of the speedometer. If the colored display was a separate
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`physical part from the speedometer, then steps 50 and 52 would have been written
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`as “red/white colored display region.”
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`The Board characterizes the specification as “disclos[ing] that colored
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`display 18, in the form of a red plastic filter, is a separate item from backplate 14,
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`speed denoting marking 16 on backplate 14, and needle 20, which form a
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`speedometer separate from the red plastic filter.” Paper 9, p. 11. Patent Owner
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`agrees with the first part of the Board’s characterization – the colored display 18 is
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`described as a separate item from backplate 14, speed denoting marking 16 on
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`backplate 14, and needle 20. However, the second part of the Board’s
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`characterization is incorrect – according to the specification, all of these separate
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`components (backplate 14, speed denoting marking 16, needle 20 and colored
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`display 18) are part of the speedometer 12, because the speedometer 12 “has” all of
`
`these components. Thus, contrary to the Board’s assertion, the ‘074 Patent does
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`not include any statement requiring that the speedometer is separate from the
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`colored display.
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`The Board’s preliminary construction is contrary to the plain and ordinary
`
`meaning of the terms “integrally” and “attached.” The word “attached” is
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`generally defined to mean “connect[ed] or join[ed]; to connect as an adjunct or
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`associated part.” Ex. 2000 at 72. The word “integrally” is generally defined to
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`mean “essential to completeness; constituent; formed as a unit with another part.”
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`Ex. 2001 at 606. The Board’s preliminary construction requires “discrete parts”
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`that are “physically” joined “without each part losing its own separate identity.”
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`Paper 9, p. 13. There is no support for these limitations in the plain and ordinary
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`meaning of “integrally” or “attached,” and the ‘074 Patent never uses any of these
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`terms. Further, the Board notes that this is not a situation in which the inventor
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`acted as his own lexicographer to define the term “integrally attached.” Paper 9, p.
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`10. Accordingly, there is no reason to depart from the plain and ordinary meaning
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`of the terms “integrally” and “attached.”
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`The Board’s preliminary construction is also unclear, because there is no
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`explanation of how the speedometer 12 is a “discrete” part or what the “separate
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`identity” of the speedometer 12 is. The ‘074 Patent describes speedometer 12 as a
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`combination of many “discrete” parts with their own identities – backplate 14 with
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`speed markings 16, colored display 18, plastic needle 20, axle 30, and speedometer
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`cable 32. Ex. 1001, 5:8-12, 49-50; Figs. 1, 3, 4. The Board has selected one of
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`those discrete parts, the “colored display 18,” and determined that it is “discrete”
`
`from the other components that form the speedometer 12, has its own separate
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`identity, and cannot be “subsumed completely within” the speedometer 12. Paper
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`9, p. 13. The fact that the colored display 18 is a component within the
`
`speedometer 12 does not mean the colored display 18 loses its identity – it is still a
`
`colored display. It is the same for all of the parts that comprise the speedometer
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`12. For example, although the needle 20 is a component subsumed within the
`
`speedometer 12, it maintains a separate identity as a needle 20.
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`Accordingly, the Board should construe “integrally attached” as “joined or
`
`combined to work as a unit.”
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`Case No.: IPR2014-01393
`Patent No: 6,778,074
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` Attorney’s Docket No.: CUO0003-IPR
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`
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`IV. THE PETITION DOES NOT SHOW THAT THE CITED
`REFERENCE ANTICIPATES THE CHALLENGED CLAIMS.
`
`A. Ground 1: Nagoshi Does Not Anticipate Claims 1, 9, 10 or 19.
`1.
`The Petition Does Not Show That Nagoshi Discloses A
`“Display Controller Adjusts Said Colored Display
`Independently Of Said Speedometer To Continuously
`Update The Delineation Of Which Speed Readings Are In
`Violation Of The Speed Limit At A Vehicle’s Present
`Location” (Claim 1).
`
`Claim 1 requires a display controller that adjusts the colored display
`
`“independently of said speedometer” to continuously update the delineation of
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`which speed readings are in violation of the speed limit at a vehicle’s present
`
`location. The Petition alleges that the microcomputer 12 in Nagoshi “adjusts the
`
`colored LEDs independently of the speedometer.” Pet. at 15. However, this
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`unsupported conclusion is not express in Nagoshi, and Petitioner does not allege
`
`that it is inherent.
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`Petitioner states, “the speed limit information represented by the colored
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`LEDs changes as the speed limit information is acquired from the microcomputer
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`12 [and] the detected current speed of the vehicle changes and is shown on the
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`speedometer of Figs. 4 and 5.” Pet. at 15. However, Figures 4 and 5 of Nagoshi
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`have nothing to do with operation of the speedometer. Figure 4 is meant to show
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`the alphanumeric display of the speed limit and orientation of the green and red
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`LEDs, whereas Figure 5 is meant to show “[v]ehicle restriction information, other
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`than the speed limit information,…and information on the prohibition of right or
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`left turns at the next intersection.” Ex. 1003, compare [0015] with [0016].
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`Furthermore, Figures 4 and 5 of Nagoshi do not show how “detected current
`
`speed of the vehicle changes” as alleged by Petitioner, because the detected speed
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`of the vehicle (~38 km/h) is the same in both figures:
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`
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`Based on this incorrect characterization of Nagoshi, Petitioner concludes,
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`“[t]he operation of the Nagoshi speedometer is not otherwise interrupted by the
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`respective emitting of the green or red LEDs based on the current speed limit.”
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`Pet. at 15. The Petitioner does not cite to any disclosure in Nagoshi which
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`
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`discusses non-interruption of the speedometer. In fact, Nagoshi expressly states
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`that the alphanumeric display showing the speed limit is “part of the speedometer.”
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`Ex. 1003, [0016]. Thus, if the micrcomputer12 controls the alphanumeric display,
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`which is expressly described as part of the speedometer, Nagoshi does not disclose
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`that microcomputer 12 adjusts the display 13 “independently of the speedometer.”
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`Accordingly, the Petition fails to show that Nagoshi discloses a display
`
`controller that adjusts the colored display “independently of said speedometer” to
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`continuously update the delineation of which speed readings are in violation of the
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`speed limit at a vehicle’s present location as recited in claim 1.
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`2.
`
`The Petition Does Not Show That Nagoshi Discloses A “Said
`Display Controller Further Comprises A Tone Generator”
`(Claims 9 and 19).
`
`
`Claim 9 (which depends from claim 1) and claim 19 (which depends from
`
`claim 10) require that the display controller further comprises “a tone generator.”
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`The Petition alleges that the “warning buzzer” in Nagoshi’s alternative
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`embodiment meets the “tone generator” limitation of claim 9:
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`Pet. at 36.
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`
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`In paragraph [0018], Nagoshi discusses an alternative embodiment in which
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`the display 13 is replaced by a warning buzzer:
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`
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`Now, when the driven speed of the vehicle exceeds the speed limit,
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`instead of displaying the speed limit on the speedometer, the driver
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`can be informed thereof by the sounding of a warning buzzer, and
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`instead of displaying the left or right turn prohibition information
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`on the speedometer, when the winker [indicator] is operated just
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`before an inoperable turn, the driver can be informed of the
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`prohibition of the left turn by a warning buzzer.
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`Ex. 1003, [0018] (emphasis added). Use of the term “instead” clearly indicates
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`that the “warning buzzer” is an alternative to the display 13. Accordingly, the
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`combination of Nagoshi’s disparate embodiments is an improper basis for an
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`allegation of anticipation. Net MoneyIn, 545 F.3d at 1371.
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`
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`Accordingly, the Petition fails to show that Nagoshi discloses that the
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`display controller further comprises “a tone generator” as recited in claims 9 and
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`19.
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`
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`3.
`
`The Petition Does Not Show That Nagoshi Discloses “A
`Global Positioning System Receiver” (Claim 10).
`
`
`Claim 10 requires “a global positioning system receiver.” The Petition
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`alleges that the “means 3 ‘may be configured by employing GPS’ and is a
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`navigation system 11.” Pet. at 37. There are at least two reasons why Petitioner’s
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`allegations fail.
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`First, Nagoshi uses the acronym “GPS” but does not provide any
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`explanation of what it is or what it refers to. Petitioner assumes that “GPS” refers
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`to a global positioning system, but there is no evidence to support this assumption.
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`And, there is no discussion anywhere in Nagoshi of a global positioning system
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`receiver.
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`Second, Nagoshi merely asserts that vehicle computation means may be
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`“configured” by “employing” a GPS, not that the vehicle computation means is a
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`GPS. Even assuming that “GPS” in Nagoshi means global positioning system,
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`Nagoshi does not explain whether the GPS would be employed to configure the
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`previously-discussed vehicle computation means 3 or would be used as the vehicle
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`computation means 3. For example, in the former instance, the GPS could be used
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`solely to configure/calibrate the vehicle computation means 3.
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`Accordingly, the Petition fails to show that Nagoshi discloses a global
`
`positioning system receiver recited in claim 10.
`
`B. Ground 2: Claims 2, 11–13 And 20 Are Not Obvious Over
`Nagoshi And Vaughn.
`1.
`
`The Petition Does Not Show That Nagoshi And Vaughn
`Discloses “Said Colored Display Is A Liquid Crystal
`Display” (Claims 2 and 12).
`
`Claims 2 and 12 require that the colored display is a liquid crystal display.
`
`The Petition acknowledges that Nagoshi’s LEDs are not a liquid crystal display but
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`alleges that Vaughn’s LCD cures this deficiency and one of ordinary skill in the art
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`“would have a credible reason for substituting Nagoshi’s LEDs with an LCD.”
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`Pet. at 24. However, all of Petitioner’s stated reasons for substituting Vaughn’s
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`LCD for Nagoshi’s LEDs actually teach away from such a substitution:
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`Petitioner’s proposed reason for
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`Teaching away because:
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`substituting one LCD for many LEDs
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`An LCD is much larger than an LED.
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`So, there would be no decrease in size
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`achieved by replacing an LED with an
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`LCD. In fact, the result would be an
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`increase in size.
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`Decreased size
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`Increased reliability
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`An LCD is much less reliable than many
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`LEDs. For example, if one LED is
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`defective, only that LED has to be
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`replaced and the Nagoshi system would
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`still be somewhat functional, whereas if
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`the LCD is defective, the entire LCD
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`has to be replaced and the Nagoshi
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`system would not be functional at all.
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` Attorney’s Docket No.: CUO0003-IPR
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`There would be a much larger power
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`requirement for an LCD rather than a
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`series of LEDs. Also, the LCD would
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`require more software to vary the liquid
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`crystal to display different colors,
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`whereas dual-color LEDs would just be
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`operated between two on states.
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`Case No.: IPR2014-01393
`Patent No: 6,778,074
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`Simplified operation
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`Reduced cost
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`An LCD (and the accompanying control
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`software) is many times more expensive
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`than multiple LEDs, and would increase
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`the cost.
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`Accordingly, Petitioner’s proposed reasons for substituting Vaughn’s LCD
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`for Nagoshi’s LEDs clearly teaches away from such a substitution. Because the
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`Petition does not articulate a sufficient motivation to combine Vaughn’s LCD and
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`Nagoshi’s LEDs, the Petition fails to show that Nagoshi and Vaughn meet the
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`limitations of claims 2 and 12.
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`Case No.: IPR2014-01393
`Patent No: 6,778,074
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` Attorney’s Docket No.: CUO0003-IPR
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`2.
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`The Petition Does Not Show That Nagoshi And Vaughn
`Discloses “Said Global Positioning System Receiver Further
`Comprises A Database Of Locations And Their
`Corresponding Speed Limits” (Claim 11).
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`Claim 11 requires that the global positioning system receiver further
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`comprises a database of locations and their corresponding speed limits. The
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`Petition acknowledges that Nagoshi does not disclose such a database but alleges
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`that Vaughn cures this deficiency and one of ordinary skill in the art “would have a
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`credible reason for substituting Nagoshi’s LEDs with an LCD.” Pet. at 34-36.
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`Nagoshi and Vaughn are inherently incompatible, because they are directed
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`to completely different problems. Nagoshi’s device provides a speed warning
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`whereas Vaughn ensures that a vehicle can never exceed the speed limit. Ex. 1008,
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`Abstract (“The GPS-map speed matching system for controlling the speed of the
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`vehicle is described….The GPS computer or an engine computer perform the
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`comparisons between the vehicle speed and the maximum posted speed and signal
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`the odometer to decrease the vehicle speed if the vehicle speed exceeds the
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`maximum posted speed plus some predetermined value.”) (Emphasis added). The
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`Nagoshi device would be useless when combined with the Vaughn system because
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`the Vaughn system would automatically prevent the vehicle from exceeding the
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`speed limit, so the Nagoshi device would never be invoked. Moreover, the speed
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`Case No.: IPR2014-01393
`Patent No: 6,778,074
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` Attorney’s Docket No.: CUO0003-IPR
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`limit (and Nagoshi LED indicators) would be irrelevant to a driver using the
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`Vaughn system because Vaughn prevents the vehicle from exceeding the speed
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`limit.
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`Accordingly, because the Petition does not articulate a sufficient motivation
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`to combine Vaughn and Nagoshi, the Petition fails to show that Nagoshi and
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`Vaughn meet the limitations of claim 11.
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`3.
`
`The Petition Does Not Show That Nagoshi And Vaughn
`Discloses “Said Display Controller Adjusts Said Liquid
`Crystal Display Independently Of Said Speedometer To
`Continuously Update The Delineation Of Which Speed
`Readings Are In Violation Of The Speed Limit At A
`Vehicle’s Present Location” (Claim 13).
`
`Claim 13 depends from claim 12 and recites the same “independently of said
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`speedometer” limitation as claim 1. Thus, for the reasons stated above with regard
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`to claims 1, 10 and 12, the Petition fails to show that Nagoshi and Vaughn meets
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`the limitations of claim 13.
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`C. Grounds 3, 4 and 5
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`Grounds 3, 4 and 5 involve obviousness challenges to dependent claims based
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`primarily on Nagoshi. Because the Petition does not allege that the secondary
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`references (Evans, Tegethoff and Wendt) cure the above-described deficiencies of
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`Case No.: IPR2014-01393
`Patent No: 6,778,074
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` Attorney’s Docket No.: CUO0003-IPR
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`Nagoshi with respect to the claims from which the challenged dependent claims
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`depend, Grounds 3-5 should be denied for the reasons explained above.
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`D. Ground 6: Claim 1 Is Not Obvious Over Tegethoff, Vaughn,
`Evans and Wendt.
`1.
`
`The Petition Does Not Show That The Cited Combination
`Discloses “Display Controller Adjusts Said Colored Display
`Independently Of Said Speedometer To Continuously
`Update The Delineation Of Which Speed Readings Are In
`Violation Of The Speed Limit At A Vehicle’s Present
`Location” (Claim 1).
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`Claim 1 requires a display controller that adjusts the colored display
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`“independently of said speedometer” to continuously update the delineation of
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`which speed readings are in violation of the speed limit at a vehicle’s present
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`location. The Petition only addresses this limitation with two conclusory,
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`unsupported statements which are nothing more than a verbatim recitation of the
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`limitation of claim 1:
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` “Tegethoff teaches a display controller for adjusting the colored tick mark
`
`independently of any speedometer readings.” (Pet. at 18); and
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` “Tegethoff teaches a display controller for adjusting a colored display
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`independently of the speedometer’s readings.” (Pet. at 19).
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`Case No.: IPR2014-01393
`Patent No: 6,778,074
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` Attorney’s Docket No.: CUO0003-IPR
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`The Petition does not explain either of these statements or cite to any
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`supporting disclosure in Tegethoff. The Petition also does not assert that Vaughn,
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`Evans or Wendt meets this limitation. Accordingly, the Petition does not show that
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`the combination of Tegethoff, Vaughn, Evans and Wendt meets the limitations of
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`claim 1.
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`Further, the Petition does not provide anything other than unsupported,
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`conclusory statements as the alleged motivation to combine Tegethoff, Vaughn,
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`Wendt and Evans. The Petition does not explain the “how,” “what,” and “why” of
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`the proposed combination of references – how the teachings of the specific
`
`references could be combined, which combination(s) of elements in specific
`
`references would yield a predictable result, or how any specific combination would
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`operate or read on the asserted claims. ActiveVideo Networks, Inc. v. Verizon
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`Commc’n, Inc., 694 F.3d 1312, 1327 (Fed. Cir. 2012). As the Board has
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`repeatedly explained, “statements of general principles from the case law that a
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`proposed combination ‘involves no more than a combination of known elements,’
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`or that a proposed combination is ‘the predictable use of such elements according
`
`to their established functions,’ or that a proposed combination yields ‘predictable
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`results’ are conclusions; they are not a substitute for a fac