Case IPR 2015-01341
`Patent Owner Preliminary Response
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`
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`Filed on behalf of Seymour Levine
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`________________
`
`
`
`THE BOEING COMPANY
`Petitioner,
`
`v.
`
`SEYMOUR LEVINE
`Patent Owner
`
`________________
`
`Case IPR2015-01341
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`Patent RE039,618
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`_________________
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`
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107
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`
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`06012-00001/7232001.1
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`Case IPR 2015-01341
`Patent Owner Preliminary Response
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`TABLE OF CONTENTS
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`Page
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`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
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`THE ’618 PATENT AND RELATED TECHNOLOGY ............................... 4
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`III. CLAIM CONSTRUCTION ............................................................................ 6
`
`A.
`
`“Maintenance advice” (claims 4, 14) .................................................... 7
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`IV. All Limitations of the Challenged Claims Are Entitled to Patentable
`Weight ............................................................................................................ 10
`
`A.
`
`B.
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`Each Claim Limitation is Comprised Of Functional Descriptive
`Material and Should Therefore Be Afforded Patentable Weight ........ 10
`
`None of the Limitations of the Challenged Claims Are Directed
`to Intended Uses of Prior Art Systems ................................................ 15
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`V. NONE OF THE PROPOSED GROUNDS SHOW A REASONABLE
`LIKELIHOOD OF PREVAILING WITH RESPECT TO THE
`CHALLENGED CLAIMS ............................................................................ 16
`
`A. Ground 1: The Proposed Combination of Ward, ARINC 624-1
`and Monroe Does Not Render Obvious the Challenged Claims ........ 16
`
`1.
`
`2.
`
`3.
`
`The Petition Cites No Evidence that Any of the
`References Cited for Ground 1 Disclose or Suggest a
`Transmitter that is “portable” or “positionable” ....................... 16
`
`Patent Owner Will Swear Behind Monroe Without
`Which Petitioner Cannot Demonstrate that Claims 8-10
`are Obvious. .............................................................................. 19
`
`Petitioner Has Not Demonstrated a Motivation to
`Combine Monroe with the Other References of Ground
`1. ................................................................................................ 22
`
`B.
`
`Ground 2: The Proposed Combination of Dyson, Chetail and
`Monroe Does Not Render Obvious the Challenged Claims ............... 23
`
`1.
`
`2.
`
`The References of Ground 2 do Not Disclose or Render
`Obvious the Generation of “Maintenance Advice” .................. 23
`
`The Petition Cites No Evidence that Any of the
`References Cited for Ground 2 Disclose or Suggest a
`transmitter that is “portable” or “positionable” ........................ 25
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`3. Without Monroe Petitioner Cannot Demonstrate that
`Claims 8-10 are Obvious. ......................................................... 26
`
`4.
`
`Petitioner Has Not Demonstrated a Motivation to
`Combine Monroe with the Other References of Ground
`2. ................................................................................................ 27
`
`C.
`
`Ground 3: The Proposed Combination of Dowling, ARINC
`624-1 and Monroe Does Not Render Obvious the Challenged
`Claims .................................................................................................. 28
`
`1.
`
`The Petition Cites No Evidence that Any of the
`References Cited for Ground 3 Disclose or Suggest a
`transmitter that is “portable” or “positionable” ........................ 28
`
`2. Without Monroe Petitioner Cannot Demonstrate that
`Claims 8-10 are Obvious. ......................................................... 29
`
`3.
`
`Petitioner Has Not Demonstrated a Motivation to
`Combine Monroe with the Other References of Ground
`3. ................................................................................................ 29
`
`4.
`
`Dowling Has Not Been Shown to Qualify as Prior Art ............ 30
`
`D. Ground 4: Combination of the FAA Publication and ARINC
`702-6 Do Not Render Obvious Claims 8, 9 and 10 ............................ 31
`
`E.
`
`Ground 5: The Combination of the FAA Publication and
`Farmakis Do Not Render Obvious Claims 8, 9 and 10 ....................... 32
`
`VI. CONCLUSION .............................................................................................. 35
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`TABLE OF AUTHORITIES
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`Page
`
`Cases
`
`Bey v. Kollonitsch,
`806 F.2d 1024 (Fed. Cir. 1986) .................................................................... 21, 22
`
`Bicon, Inc. v. Straumann Co.,
`441 F.3d 945 (Fed.Cir. 2006) ............................................................................. 17
`
`Brown v. Barbacid,
`276 F.3d 1327 (Fed. Cir. 2002) .......................................................................... 19
`
`Cont'l Can Co. USA v. Monsanto Co.,
`948 F.2d 1264 (Fed. Cir. 1991) .......................................................................... 15
`
`Cooper v. Goldfarb,
`154 F.3d 1321 (Fed. Cir. 1998) .......................................................................... 19
`
`In re Cronyn,
`890 F.2d 1158 (Fed. Cir. 1989) ...................................................................... 2, 30
`
`Crown Operations Int'l, Ltd. v. Solutia Inc.,
`289 F.3d 1367 (Fed. Cir. 2002) .......................................................................... 15
`
`In re Gulack,
`703 F.2d 1381 (Fed. Cir. 1983) .............................................................. 10, 11, 14
`
`KSR Int'l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .......................................................................... 23, 27, 30, 33
`
`King Pharms., Inc. v. Eon Labs, Inc.,
`616 F.3d 1267 (Fed. Cir. 2010) .......................................................................... 14
`
`Loral Fairchild Corp. v. Matsushita Elec.,
`266 F.3d 1358 (Fed. Cir. 2001) .......................................................................... 19
`
`In re Lowry,
`32 F.3d 1579 (Fed. Cir. 1994) ............................................................................ 11
`
`Mahurkar v. C.R. Bard, Inc.,
`79 F.3d 1572 (Fed. Cir. 1996) ...................................................................... 19-20
`
`Microsoft Corporation v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015) ............................................................................ 6
`
`Ex Parte Nehl,
`88 U.S.P.Q. 2d 1883, 2008 WL 258370 (BPAI 2008) ....................................... 10
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ........................................................ 6, 8
`
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`In re Suitco Surface, Inc.,
`603 F.3d 1255 (Fed. Cir. 2010) ............................................................................ 6
`
`Synopsys, Inc. v. Mentor Graphics Corp.,
`IPR2012-00041 (PTAB Feb. 22, 2013) ................................................................ 6
`
`Ex Parte United States of America Patent Owner, Appellant,
`2015 WL 2354023, Appeal 2014-009367 (PTAB May 13, 2015) ............... 21, 22
`
`In re Wilson,
`57 C.C.P.A. 1029, 424 F.2d 1382 (C.C.P.A.1970) ............................................ 17
`
`Rules/Statutes
`
`35 U.S.C. § 102(b) ............................................................................................... 2, 30
`
`35 U.S.C. § 102(e)(2) ................................................................................... 19, 21, 22
`
`35 U.S.C. § 103 .................................................................................................. 11, 14
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`35 U.S.C. § 314(a) ..................................................................................................... 4
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`37 C.F.R. § 42.100(b) ................................................................................................ 6
`
`37 C.F.R. § 42.104(b)(4) ..................................................................17, 18, 26, 28, 29
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`Other Authorities
`
`3 Annotated Patent Digest (Matthews) § 17:71 ....................................................... 15
`
`The Manuel of Patent Examining Procedure § 2111.05 .......................................... 10
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`
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`LIST OF EXHIBITS
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`Description
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`Joint Claim Construction and Prehearing Statement , Seymour Lev-
`ine v. The Boeing Company, No. 14-cv-1991 (W.D. Wash.)
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`Handwritten notes of inventor Seymour Levine
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`Draft invention disclosures prepared by Seymour Levine, dated
`October 9, 1996.
`
`Draft invention disclosures prepared by Seymour Levine, dated
`October 23, 1996.
`
`Letter from Patent Attorney Norton R. Townsley requesting pa-
`tentability search.
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`Letter from Patent Attorney Norton R. Townsley reporting results
`of patentability search.
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`Patent Preparation Contract between Norton R. Townsley and
`Seymour Levine
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`Levine
`Exhibit
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`2001
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`2002
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`2003
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`2004
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`2005
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`2006
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`2007
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`2008
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`Transmittal letter from Norton R. Townsley to Seymour Levine
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`Case IPR 2015-01341
`Patent Owner Preliminary Response
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`Patent Owner Seymour Levine (“Levine”) hereby submits this preliminary
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`response to the Petition filed by Petitioner The Boeing Company (“Boeing”) ac-
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`corded a filing date of June 4, 2015, which seeks inter partes review of claims 4, 5,
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`8, 9, 10, 14 and 16 of U.S. Reissued Patent No. RE39,618 (“the ’618 patent”). As
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`discussed in detail below, Petitioner has failed to meet its burden of showing a rea-
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`sonable likelihood of prevailing on any of these challenged claims. Accordingly,
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`Patent Owner respectfully requests that the Patent Trial and Appeal Board
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`(“Board”) deny inter partes review for all Grounds set forth in the Petition.
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`I.
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`INTRODUCTION
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`The ’618 Patent discloses and claims an aircraft maintenance system that al-
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`lows aircraft operators to anticipate aircraft maintenance needs before an aircraft
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`lands. The ’618 patent specification summarizes the invention as follows:
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`SUMMARY OF THE INVENTION
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`The present invention is a remotely located, aircraft,
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`flight data recorder and advisory system. These functions
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`are achieved by continuously monitoring aircraft sensors
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`such as aircraft position, altitude, speed, control surface
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`settings, engine revolutions per minute, temperatures,
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`stress, and fuel. Then by rf world wide transmission, such
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`as via satellite communication links, these parameters are
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`communicated, along with cockpit audio data, video
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`data, aircraft identification and configuration, to a central
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`ground based monitoring station where
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`they are
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`continually and safely recorded
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`Ex. 1001 (’618 Patent) at 2:58-67. The downloaded data parameters are analyzed
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`on the ground and this analysis indicates that some maintenance is necessary,
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`maintenance advisories are generated while the aircraft is still in flight. Id. at 2:58-
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`3:6, 4:19-24, 5:13-20, 7:66-8:48, 12:5-8.
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`For each ground Petitioner has been forced to combine no fewer than three
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`separate references in order to argue that all of the challenged claims are obvious.
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`Two of the cited references, Monroe and Farmakis, were of record in the reissue
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`prosecution and Patent Owner can swear behind one of those, Monroe, which is
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`common to three of the five grounds. A third reference, Dowling, Exhibit 1014
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`does not appear to be available as prior art as of 1996 because Petitioner has not
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`shown that as of the priority date, or any other date, it was separately indexed or
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`otherwise findable by one of ordinary skill in the art. See In re Cronyn, 890 F.2d
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`1158, 1161 (Fed. Cir. 1989), where the Federal Circuit found that a document was
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`not a printed publication under 35 U.S.C. § 102(b) because the alleged publication
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`was not catalogued or indexed by title or subject matter.
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`For Grounds 1, 2 and 3, Petitioner relies on the combination of at least two
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`references to meet the limitations of independent claims 4 and 14 and dependent
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`claims 5 and 16: Ward (Ex. 1015) and ARINC 624-1 (Ex. 1014) for Ground 1;
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`Chetail (Ex. 1018) and Dyson (Ex. 1019) for Ground 2; and Dowling (Ex. 1013)
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`and ARINC 624-1 for Ground 3. In each of these Grounds, however, Petitioner
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`relies on Monroe (Ex. 1017) for dependent claims 8, 9 and 10, which require
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`downloading position data, including GPS data (claim 9) and INS data (claim 10).
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`For Grounds 4 and 5, Petitioner starts with its Ground 1 combination of Ward and
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`ARINC 624-1, but cites different references for claims 8, 9 and 10: FAA Increased
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`FDR Parameters and ARINC 702-6 for Ground 4 and FAA Increased FDR Pa-
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`rameters and Farmakis for Ground 5.
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`Patent Owner can swear behind Monroe, which predates the filing date of
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`the ’618 patent by only a few months, before which none of Petitioner’s references
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`disclose or even suggest downloading position data from an aircraft to the ground
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`while the aircraft is in flight as part of an aircraft maintenance system. Petitioner’s
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`attempt to fill this gap in Grounds 4 and 5 relies on references showing only that
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`position data was recorded on the aircraft and that position data was used for air
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`traffic control. None of the references cited in Grounds 4 and 5 disclose actually
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`communicating position data to the ground while the aircraft is in flight as part of
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`an aircraft maintenance system and none of those references suggest that doing so
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`would have been obvious at the time of the claimed invention.
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`Each of the challenged claims also requires that the central station/ground
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`based station be configured to generate “maintenance advice.” As discussed be-
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`low, as properly construed, the term “maintenance advice” requires more than
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`simply providing alerts or other information gleaned directly from the data collect-
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`ed from the aircraft as argued by Petitioner. Rather, it requires actual advice, i.e.,
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`some recommendation as to what maintenance action should be taken. None of the
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`references relied on for at least Ground 2 disclose the generation of such mainte-
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`nance advice.
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`Each of the challenged claims also requires that the transmitter used to
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`transmit the data from the aircraft to the ground be “portable” [claim 4] or “posi-
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`tionable” [claim 14]. Petitioner has not cited to any reference disclosing such a
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`transmitter and Petitioner’s declarant has offered no opinion on this required fea-
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`ture of the claimed transmitter.
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` For at least these reasons (as well as others discussed below), the Petition
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`does not give rise to a reasonable likelihood of Petitioner prevailing with respect to
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`at least one challenged claim as required for the grant of inter partes review under
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`35 U.S.C. § 314(a). Accordingly, Patent Owner requests that the Board deny inter
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`partes review as to all proposed grounds raised in the Petition.
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`II. THE ’618 PATENT AND RELATED TECHNOLOGY
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`At the time of the invention in 1996, commercial aircraft were required to
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`monitor various aircraft parameters and record them on a flight data recorder
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`(FDR) or “black box.” The FDR was designed to withstand an aircraft crash so that
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`crash investigators could use the stored data to hopefully understand what had
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`caused the crash. The data stored in the FDR was not typically retained or other-
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`wise analyzed for any purpose other than crash investigations. ’618 patent at 1:20-
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`40.
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`Moreover, the data needed to investigate a crash always needed to be recov-
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`ered from the crash wreckage, which was not always possible. The ’618 patent
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`discloses the idea of taking this data that was stored in the FDR and sending it to
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`the ground while the aircraft is in flight together with aircraft identification, a con-
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`figuration label and aircraft position data. In this way accident investigations could
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`begin immediately and the data indicating the aircraft’s position would make locat-
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`ing the wreckage easier.
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`In addition to essentially providing for a ground-based “black box,” the ’618
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`patent also discloses taking advantage of the transmitted data to assess the condi-
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`tion of the aircraft so as to anticipate maintenance needs before the aircraft lands at
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`its destination. In this way maintenance crews could obtain necessary parts and be
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`prepared to make necessary repairs to minimize schedule interruptions. Id. at Ab-
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`stract, 2:24-38, 4:18-24.
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`Because none of the cited references disclose a system in which aircraft pa-
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`rameters and location data, as described and claimed in the patent, are sent from an
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`aircraft during flight and which generates maintenance advice while the aircraft is
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`still in flight, none of these references suggest, let alone disclose, what is described
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`and claimed in the ’618 Patent.
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`III. CLAIM CONSTRUCTION
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`As part of the determination whether to institute a trial, the Board must in-
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`terpret the challenged claims, which may include determining a specific meaning
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`for certain critical claim terms or phrases, by applying the “broadest reasonable in-
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`terpretation” standard. 37 C.F.R. § 42.100(b); see also Synopsys, Inc. v. Mentor
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`Graphics Corp., IPR2012-00041 (PTAB Feb. 22, 2013), Paper 16 at 5-7. General-
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`ly, claim terms should be given their ordinary and customary meaning as would be
`
`understood by one of ordinary skill in the art. Phillips v. AWH Corp., 415 F.3d
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`1303, 1312-13 (Fed. Cir. 2005) (en banc). This standard, however, does not give
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`the Board (or a petitioner) “an unfettered license to interpret claims to embrace any-
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`thing remotely related to the claimed invention.” In re Suitco Surface, Inc., 603
`
`F.3d 1255, 1259 (Fed. Cir. 2010). Rather, it is well settled that the “broadest rea-
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`sonable interpretation” must be applied in view of the specification as interpreted
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`by one of ordinary skill in the art at the time of the invention. Thus, claim interpre-
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`tations are only reasonable if they are consistent with the specification. Id.
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`(“claims should always be read in light of the specification and teachings in the
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`underlying patent.”). See also Microsoft Corporation v. Proxyconn, Inc., 789 F3d
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`1292, 1298-99 (Fed. Cir. 2015) (“That is not to say, however, that the Board may
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`construe claims during IPR so broadly that its constructions are unreasonable under
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`general claim construction principles. . . . The Boards construction . . . is unreason-
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`ably broad in light of the language of the claims and specification.”)
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`In a section entitled “Claim Construction,” Petitioner proposes a construc-
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`tion for a number of claim terms. Although Patent Owner submits that many of the
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`claim terms addressed in the Petition do not need to be construed for the purposes
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`of this proceeding and, instead, should be given their plain and ordinary meaning
`
`in light of the specification, Patent Owner specifically objects to only one of Peti-
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`tioner’s proposed constructions as being inconsistent with the claim language and
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`the specification. As discussed in detail below, this claim term is critical to evalu-
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`ating at least one proposed ground and, when construed properly, makes clear that
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`the asserted references of that Ground do not teach or suggest elements required by
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`the challenged claims. Specifically, Patent Owner disagrees with Petitioner’s pro-
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`posal for the following claim term:
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`A.
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`“Maintenance advice” (claims 4, 14)
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`Patent Owner submits that the phrase “maintenance advice” should be con-
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`strued based on the specification and claims to mean “problem-specific mainte-
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`nance information, including recommended maintenance actions” The parties’
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`proposed constructions differ in a significant way:
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`Petitioner’s Proposed Construction Patent Owner’s Proposed Construction
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`problem-specific maintenance
`information, such as trends, alerts, or
`isolation of faults
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`problem-specific maintenance
`information, including recommended
`maintenance actions
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`Unlike Petitioner’s proposed construction, which simply requires sending
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`information that could be used to assess or diagnose a problem, i.e., “trends, alerts,
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`or isolation of faults,” the claimed “maintenance advice” is actual advice, which
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`recommends that certain maintenance activity be undertaken. Phillips, 415 F. 3d at
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`1312 (“we look to the words of the claims themselves . . . to define the scope of the
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`patented invention”). Petitioner agrees that the specification’s description of
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`maintenance advisories is the best evidence for what the claims call “maintenance
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`advice,” Pet. at 11, but the specification describes maintenance advisories as more
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`than just relaying alerts and other fault information received from the aircraft. It
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`describes them as “represent[ing] the latest diagnostic procedures and problem
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`specific maintenance information” ’618 patent at 7:1-2. The maintenance
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`advisories are “based on an expert system for fault isolation that will save both
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`time and money in getting a safe to fly aircraft back in service.” Id. at 3:35-39.
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`See also, Id. at 7:61-65 (“The manufacturer’s facility 108 transmits expert system
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`repair advisories to the aircraft’s 10 maintenance personnel. These include the
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`latest approved, problem specific, service manual data to efficiently and safely
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`correct the aircraft’s problem.”) In other words, the expert system, for example,
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`takes the data from the aircraft and, in addition to calculating trends, issuing alerts
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`and isolating any indicated faults, which is all that is required by Petitioner’s
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`proposed construction, the system also makes some recommendation for an
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`appropriate maintenance action.
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`The broadest reasonable construction of “maintenance advice” must be
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`actual advice and provide some sort of recommended maintenance action.
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`With respect to the remaining terms for which Petitioner has proposed a
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`construction, Patent Owner submits that these terms do not need to be specifically
`
`construed and should, instead, be given their plain and ordinary meaning consistent
`
`with the specification. Solely for the purpose of this Preliminary Response, how-
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`ever, to the extent that the Board deems that a particular construction is needed for
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`any of these terms, Patent Owner does not object to Petitioner’s proposed construc-
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`tions.
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`IV. All Limitations of the Challenged Claims Are Entitled to Patentable
`Weight
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`A. Each Claim Limitation is Comprised Of Functional Descriptive
`Material and Should Therefore Be Afforded Patentable Weight
`
`Petitioner’s attack on the claims as including non-functional limitations, Pet.
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`at 16, conjures the law related to descriptive material or printed matter,1 which is
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`afforded patentable weight when the printed matter and associated product share a
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`functional relationship that is new and unobvious. In re Gulack, 703 F.2d 1381,
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`1386 (Fed. Cir. 1983). A functional relationship exists “where the printed matter
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`performs some function with respect to the product to which it is associated,” or
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`“where the product performs some function with respect to the printed matter to
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`which it is associated.” M.P.E.P. § 2111.05. The Federal Circuit has explained
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`1 The Manuel of Patent Examining Procedure and the cases on which Petitioner
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`relies analyze the patentability of functional descriptive material as an issue of
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`“printed matter.” See e.g., M.P.E.P. § 2111.05 (titled “Functional and
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`Nonfunctional Descriptive Material” and stating “USPTO personnel need not give
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`patentable weight to printed matter absent a new and unobvious functional
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`relationship between the printed matter and substrate.”) See also Ex Parte Nehl,
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`88 U.S.P.Q.2d 1883, 2008 WL 258370 (BPAI 2008) (“The distinction between
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`functional and nonfunctional descriptive material arose in the context of printed
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`matter limitations.”)
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`that the printed matter must merely “perform a function” (emphasis added); the
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`case law “requires no more.” In re Lowry, 32 F.3d 1579, 1584 (Fed. Cir. 1994).
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`The Federal Circuit has also made explicit that “[t]he burden of establishing the
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`absence of a novel, nonobvious functional relationship rests with the PTO.” Id. at
`
`1584 (internal citations omitted). Perhaps unsurprisingly, these Federal Circuit
`
`cases counsel against “a liberal use of ‘printed matter’ rejections,” Id. at 1583,
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`because “‘printed matter rejection[s]’ under § 103 stand[] on questionable legal
`
`and logical footing.” In re Gulack, 703 F.3d at 1385 n.8.
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`Despite the Federal Circuit’s warnings to the contrary, Petitioner now seeks
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`to discount the patentable weight of a number of limitations from the challenged
`
`claims on the grounds that they constitute non-functional descriptive material.
`
`However, as is evident from the ’618 patent’s specification and claims, a new and
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`unobvious functional relationship exists between the allegedly printed matter—the
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`data collected and transmitted to the ground—and the product with which it is
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`associated, the maintenance advice produced by the aircraft maintenance system.
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`The patent’s specification expressly describes how various flight parameters
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`are transmitted and subsequently “analyzed in conjunction with [various data] to
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`allow identification of maintenance problems, on-ground safety advisories and in-
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`flight safety advisories,” including “maintenance actions.” ’618 Patent at 2:30-38.
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`See also, Claim 1, which identifies a “processing means” for “generating said
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`maintenance advisory based upon said configuration label.” The various
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`parameters and data are therefore collected for the explicit purpose of generating
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`advisories, such as maintenance advice. Collectively, the specification makes clear
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`that the collected and transmitted data (the alleged printed matter) performs some
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`function with respect to the advisories generated by the aircraft’s maintenance
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`system (the product with which the printed matter is associated).
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`The functional relationship is equally apparent from the challenged claims.
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`For example, Claim 4 recites an “aircraft maintenance system” consisting of “a
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`central station” that is “configured to receive and analyze said digital aircraft
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`performance data to generate maintenance advice for said aircraft while said
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`aircraft is in flight.” Similarly, the “aircraft maintenance system” claimed in Claim
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`14 is comprised of a “ground based station” that is “configured to receive and
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`analyze said transmission of data, while said aircraft is in flight, to generate
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`maintenance advice for said aircraft.” Each of these claims thus demonstrates the
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`functional relationship between the collected data and the maintenance advisories
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`generated by the ground-based central station.
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`Despite this clear language to the contrary, Petitioner nevertheless contends
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`that a functional relationship is wanting because “neither the specification nor the
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`challenged claims anywhere describe the use of configuration information or
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`aircraft position information to generate maintenance advice.” Pet. at 18. As
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`noted above, this assertion is plainly incorrect. Similarly, in distinguishing
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`Levine’s invention from the prior art, the specification provides that no prior
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`systems “combin[e] information from aircraft with global position data” to deliver
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`“real-time feedback in the form of real-time ground and in-flight advisories to the
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`aircraft.” ’618 patent at 2:19-23. Claim 8, which depends from Claim 4, recites
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`“[t]he aircraft maintenance system of claim 4 wherein said digital aircraft
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`performance data includes aircraft position data;” the “aircraft maintenance
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`system” identified in Claim 4 is “configured to receive and analyze said digital
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`aircraft performance data to generate maintenance advice.” Accordingly, on its
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`face, the patent specifically describes the use of both configuration and aircraft
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`position information in generating maintenance advice.2
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`2 In addition, Petitioner’s proposed claim constructions further evidence the role of
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`configuration information and aircraft position information in the generation of
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`maintenance advice. For example, Claim 4 recites an “aircraft maintenance
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`system” comprising “digital aircraft performance data” received and analyzed by a
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`“central station” “to generate maintenance advice.” Petitioner’s proposed
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`construction for the term “digital aircraft performance data” is “digital information
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`about aircraft operation, identity, and configuration,” which “would encompass,
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`among other things, position [data].” Pet. at 9. Petitioner’s proposed construction
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`of “digital aircraft performance data” therefore undermines its argument that the
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`Petitioner asks the Board to excise the alleged printed matter and evaluate
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`the claims without it. This is precisely what the Federal Circuit said should not be
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`done: “‘[T]he board cannot dissect a claim, excise the printed matter from it, and
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`declare the remaining portion of the mutilated claim to be unpatentable. The claim
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`must be read as a whole.’” King Pharms., Inc. v. Eon Labs, Inc., 616 F.3d 1267,
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`1279 (Fed. Cir. 2010), quoting In re Gulack, 703 F.3d at 1385.
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`In addition to being functionally related, for all the reasons discussed below
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`with respect to Grounds 1-5, these functional relationships between the collected
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`data and the generation of maintenance advice claimed in the challenged claims are
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`sufficiently new and unobvious over the prior art.
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`In summary, Petitioner has not demonstrated the absence of a novel,
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`nonobvious functional relationship between the data collected and transmitted and
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`the aircraft maintenance system of the challenged claims. The claim limitations
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`relating to this functional relationship must therefore be accorded patentable
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`weight. This conclusion not only comports with the patent’s specification and
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`claims, but is also consistent with Federal Circuit precedent disfavoring printed
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`matter rejections under § 103.
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`challenged claims fail to describe the use of configuration information or aircraft
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`position information to generate maintenance advice.
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`B. None of the Limitations of the Challenged Claims Are Directed to
`Intended Uses of Prior Art Systems
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`That a prior art reference discloses the “same structure as claimed by a
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`patent” does not imply that the prior art also discloses “the resulting property.”
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`Crown Operations Int’l, Ltd. v. Solutia Inc., 289 F.3d 1367, 1377 (Fed. Cir. 2002);
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`see also Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir.
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`1991) (“Inherency [] may not be established by probabilities or possibilities. The
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`mere fact that a certain thing may result from a given set of circumstances is not
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`sufficient.”) Petitioner bears the heavy burden of proving that the identified
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`limitations of the challenged claims are inherently disclosed by prior art, a bu