Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 10
` Entered: December 21, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`THE BOEING COMPANY,
`Petitioner,
`
`v.
`
`SEYMOUR LEVINE,
`Patent Owner.
`_______________
`
`Case IPR2015-01341
`Patent RE39,618
`_______________
`
`Before MICHAEL W. KIM, TRENTON A. WARD, and
`DANIEL N. FISHMAN, Administrative Patent Judges.
`
`WARD, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`Tel: 571-272-7822
`
`Paper 10
` Entered: December 21, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`THE BOEING COMPANY,
`Petitioner,
`
`v.
`
`SEYMOUR LEVINE,
`Patent Owner.
`_______________
`
`Case IPR2015-01341
`Patent RE39,618
`_______________
`
`Before MICHAEL W. KIM, TRENTON A. WARD, and
`DANIEL N. FISHMAN, Administrative Patent Judges.
`
`WARD, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2015-01341
`Patent RE39,618
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`
`A. Background
`
`
`
`
`
`I. INTRODUCTION
`
`The Boeing Company (“Petitioner”) filed a Petition seeking to
`
`institute an inter partes review of claims 4, 5, 8, 9, 10, 14, and 16 (“the
`
`challenged claims”) of U.S. Patent No. RE39,618 (Ex. 1001,
`
`“the ’618 patent”) pursuant to 35 U.S.C. §§ 311–319. Paper 2 (“Pet.”).
`
`Seymour Levine (“Patent Owner”) filed a Preliminary Response. Paper 7
`
`(“Prelim. Resp.”). We have statutory authority under 35 U.S.C. § 314(a),
`
`which provides that an inter partes review may not be instituted “unless . . .
`
`there is a reasonable likelihood that the petitioner would prevail with respect
`
`to at least 1 of the claims challenged in the petition.”
`
`Upon consideration of the Petition, Patent Owner’s Preliminary
`
`Response, and the associated evidence, we conclude Petitioner has
`
`established a reasonable likelihood it would prevail with respect to at least
`
`one of the challenged claims. Accordingly, for the reasons that follow, we
`
`institute an inter partes review.
`
`B. Additional Proceedings
`
`The parties indicated the ’618 patent is the subject of the following
`
`district court action: Levine v. The Boeing Company, No. 14-cv-1991 (W.D.
`
`Wash.). Pet. 1; Paper 4, 1.
`
`C. The ’618 Patent
`
`The ’618 patent is titled “Remote, Aircraft, Global, Paperless
`
`Maintenance System” and generally relates to a system that monitors
`
`performance parameters and aircraft operational parameters, and broadcasts
`
`this information along with aircraft identification, audio, video, global
`
`positioning and altitude data, to a worldwide two-way RF network.
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`IPR2015-01341
`Patent RE39,618
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`Ex. 1001, Abstract. The ’618 patent discloses that the information is
`
`
`
`
`
`monitored and recorded at a remote, centralized location and analysis of this
`
`information allows identification of problems and generation of advisories.
`
`Id.
`
`Figure 1 of the ’618 patent, reproduced below, illustrates an
`
`embodiment of the system described:
`
`As shown above in Figure 1, the ’618 patent discloses an aircraft 10 with
`
`Sensor Multiplexer Receiver & Transmitter (“SMART”) 14, which can
`
`receive aircraft performance and control data 18, acoustic data 22, video
`
`
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`3
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`data 26, and information from GPS receiver system 16. Id. at 4:57–65.
`
`
`
`
`
`SMART 14 periodically samples the sensor signals 18, 22, 26, 44 and adds
`
`to each signal a sensor identification label, an aircraft identification label,
`
`and a configuration label. Id. at 5:1–5. Aircraft 10 equipped with SMART
`
`14 transmits the sensor data over a UHF radio to communication satellite 38,
`
`which relays the data to Central Ground Based Processing Station
`
`(“CGBS”) 42. Id. at 5:21–28. CGBS 42 includes processing station 62 for
`
`data analysis and problem simulation and advisory module 70 for generating
`
`aircraft advisories. Id. at 5:49–53.
`
`D. Illustrative Claims
`
`Claims 4 and 8 are illustrative of the claimed subject matter and are
`
`reproduced below.
`
`4. An aircraft maintenance system for use on an aircraft having
`a flight data recorder, the maintenance system comprising:
`
` a
`
` transmitter portable to be placed on an aircraft, said
`transmitter configured for transmission of digital aircraft
`performance data across a communication network while said
`aircraft is in flight; and
`
` a
`
` central station connected to said communication network
`configured
`to receive and analyze said digital aircraft
`performance data to generate maintenance advice for said
`aircraft while said aircraft is in flight,
`
`wherein said digital aircraft performance data includes an
`identifier unique to a particular aircraft and a configuration
`label, and at least a portion of said digital aircraft performance
`data comprises data directed to the flight data recorder.
`
`8. The aircraft maintenance system of claim 4 wherein said
`digital aircraft performance data includes aircraft position data
`directed to said flight data recorder.
`
`4
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`IPR2015-01341
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`E. The Asserted Grounds of Unpatentability
`
`Petitioner challenges the patentability of the challenged claims of the
`
`’618 patent based on the following grounds:
`
`Claims
`4, 5, 14, and 16
`8, 9, and 10
`
`4, 5, 14, and 16
`8, 9, and 10
`
`4, 5, 14, and 16
`8, 9, and 10
`
`8, 9, and 10
`
`8, 9, and 10
`
`References
`Ward1 in view of ARINC 624-12
`Ward in view of ARINC 624-1 in
`further view of Monroe3
`Dyson4 in view of Chetail
`Dyson in view of Chetail5 in further
`view of Monroe
`Dowling6 in view of ARINC 624-1
`Dowling in view of ARINC 624-1 in
`further view of Monroe
`Ward in view of ARINC 624-1,
`ARINC 702-6,7 and FAA, Increased
`FDR Parameters8
`Ward in view of ARINC 624-1, FAA,
`Increased FDR Parameters and
`Farmakis9
`
`Basis
`§ 103
`§ 103
`
`§ 103
`§ 103
`
`§ 103
`§ 103
`
`§ 103
`
`§ 103
`
`
`1 M J Ward, “Power Plant Health Monitoring – The Human Factor,”
`February 1992 (Ex. 1015) (“Ward”).
`2 “Design Guidance for Onboard Maintenance System,” ARINC Report
`624-1, August 1993 (Ex. 1014) (“ARINC 624-1”).
`3 US Patent No. 5,798,458, filed October 28, 1996 (Ex. 1017) (“Monroe”).
`4 R.J.E. Dyson, “Commercial Engine Monitoring Status at GE Aircraft
`Engines,” October 1988 (Ex. 1019) (“Dyson”).
`5 P. Chetail, “LE CFM 56-5 SUR A320 A Air France,” October 1988 (Ex.
`1018) (“Chetail”).
`6 Drew Dowling and Richard A. Lancaster, “Remote Maintenance
`Monitoring Using a Digital Link,” December 1984 (Ex. 1013) (“Dowling”).
`7 “Flight Management Computer System,” ARINC Characteristic 702-6,
`June 10, 1994 (Ex. 1016) (“ARINC 702-6”).
`8 “Increased Flight Data Recorder Parameters,” Federal Register 13,862–
`13,864, March 14, 1995 (Ex. 1011) (“FAA, Increased FDR Parameters”).
`
`5
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`IPR2015-01341
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`
`
`II. ANALYSIS
`
`A. Claim Construction
`
`The Board will interpret claims of an unexpired patent using the
`
`broadest reasonable construction in light of the Specification of the
`
`patent. 37 C.F.R. § 42.100(b); see In re Cuozzo Speed Techs., LLC, 793
`
`F.3d 1268, 1275–79 (Fed. Cir. 2015).
`
`1. “maintenance advice”
`
`Claim 4 recites “a central station connected to said communication
`
`network configured to receive and analyze said digital aircraft performance
`
`data to generate maintenance advice.” Petitioner proposes that the term
`
`“maintenance advice” should be construed as “problem-specific
`
`maintenance information, such as trends, alerts, or isolation of faults.”
`
`Pet. 12. Petitioner argues that term “maintenance advice” does not appear in
`
`the specification outside of the claims, but that the specification describes
`
`the presumably synonymous term of “maintenance advisories.” Pet. 10–11
`
`(citing Ex. 1001, 7:1–2). Petitioner argues that the specification discloses
`
`that, in one embodiment, these “advisories represent the latest diagnostic
`
`procedures and problem specific maintenance information.” Pet. 11 (citing
`
`Ex. 1001, 7:1–2).
`
`Patent Owner agrees with the first portion of Petitioner’s proposed
`
`construction, but argues that the term “maintenance advice” should be
`
`construed as “problem-specific maintenance information, including
`
`recommended maintenance actions.” Prelim. Resp. 8 (emphasis added).
`
`Patent Owner argues that the claimed “maintenance advice” must not only
`
`
`
`9 US Patent No. 5,714,948, filed April 16, 1996 (Ex. 1021) (“Farmakis”).
`
`6
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`be information that could be used to assess or diagnose a problem, but must
`
`
`
`
`
`be actual advice, which recommends that certain maintenance activity be
`
`undertaken. Id. Patent Owner agrees with Petitioner that the term
`
`“maintenance advice” is synonymous with the term “maintenance
`
`advisories” used in the specification, but argues that the “maintenance
`
`advisories” rely upon the latest diagnostic procedures and problem specific
`
`maintenance information and must include some recommendation for an
`
`appropriate maintenance action. Id. at 8–9 (citing Ex. 1001, 7:1–2).
`
`The specification of the ’618 patent broadly describes various
`
`maintenance advisories, including those that “can be requested and viewed
`
`via a plug-in terminal 76” while “the aircraft is on the ground.” Ex. 1001,
`
`5:17–19. Additionally, the specification describes that a “preferred
`
`maintenance advisory” can be based “on an expert system for fault
`
`isolation.” Ex. 1001, 3:36–37. Petitioner’s Declarant Dr. Albert Helfrick
`
`provides that a person of ordinary skill in the art would understand that the
`
`terms “maintenance advice” and “maintenance advisories” could encompass
`
`a wide variety of computer-generated information useful for performing
`
`maintenance. Declaration of Dr. Albert Helfrick (“Helfrick Decl.”),
`
`Ex. 1002 ¶ 63.
`
`We are not persuaded by Patent Owner’s argument that “maintenance
`
`advice” must include recommended maintenance actions. The definition of
`
`“advice” is “information or notice given.” Webster’s Third New
`
`International Dictionary (1971), Ex. 3001, 3. Thus, the plain and ordinary
`
`meaning of “maintenance advice” can include maintenance information. For
`
`purposes of this decision, we adopt the portion of the proposed definitions
`
`7
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`on which the parties agree and determine that the term “maintenance advice”
`
`
`
`
`
`means “problem-specific maintenance information.”
`
`2. “configuration label”
`
`Claim 4 also recites “wherein said digital aircraft performance data
`
`includes an identifier unique to a particular aircraft and a configuration
`
`label.” Petitioner proposes that the term “configuration label” should be
`
`construed to mean “an indicator identifying or describing equipment
`
`onboard an aircraft.” Pet. 15. Patent Owner did not propose a construction
`
`at this stage of the proceeding.
`
`Outside of the claims, the ’618 patent specification only uses the term
`
`“configuration label” once, in the following description:
`
`SMART 14 periodically samples the sensor signals 18, 22, 26,
`44 converts all non-digital sensor signals 18, 22, 26, 44 into
`digital format, adds a sensor identification label to each signal
`18, 22, 26, 44 plus an aircraft identification and configuration
`label.
`
`Ex. 1001, 5:1–5. In the prosecution history for the reissue application,
`
`Patent Owner addressed the term “configuration label” and stated that “even
`
`identical models of aircraft are likely configured differently” and that the
`
`“present invention circumvents this issue by transmitting the aircraft
`
`configuration along with the aircraft ID.” Ex. 1004, 123–124. Patent Owner
`
`further stated that this configuration information could include
`
`“[n]avigational equipment, radios, avionics, instrumentation . . . hydraulic
`
`systems, electrical systems, flight controls, etc.” Id. at 123. “[T]he
`
`prosecution history . . . is to be consulted even in determining a claim’s
`
`broadest reasonable interpretation.” Straight Path IP Group, Inc. v. Sipnet
`
`EU S.R.O., No. 2015-1212, 2015 WL 7567492, at *6 (Fed. Cir. Nov. 25,
`
`2015) (citing Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed.
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`Cir. 2015)). Petitioner argues that the statements in the specification and the
`
`
`
`
`
`prosecution history require the broadest reasonable interpretation of
`
`“configuration label” to mean an indicator identifying or describing
`
`equipment onboard an aircraft, including the make, model, position, or
`
`version of an on-board system. Pet. 15.
`
`On this record, we agree with Petitioner’s proposed construction.
`
`Accordingly, we construe the term “configuration label” to mean “an
`
`indicator identifying or describing equipment onboard an aircraft.”
`
`
`
`B. Level of Ordinary Skill in the Art
`
`According to Petitioner’s Declarant, Dr. Helfrick, a person of ordinary
`
`skill in the art relevant to the ’618 patent would have a “B.S. degree in
`
`electrical, systems, or computer engineering, or an FAA Mechanic
`
`Certificate with an airframe rating in accordance with 14 CFR part 65.71 and
`
`65.85.” Helfrik Decl., Ex. 1002 ¶ 15.
`
`Patent Owner does not offer, at this time, any contrary explanation
`
`regarding who would qualify as a person of ordinary skill in the art relevant
`
`to the ’618 patent. Based on our review of the ’618 patent, the types of
`
`problems and solutions described in the ’618 patent and cited prior art, and
`
`the testimony of Petitioner’s Declarant, we adopt, for purposes of this
`
`decision, Petitioner’s definition of a person of ordinary skill in the art at the
`
`time of the claimed invention. Based on the stated qualifications of
`
`Dr. Helfrick (Ex. 1002 ¶¶ 5–9), Petitioner’s Declarant meets the
`
`requirements of this definition. We note that the applied prior art also
`
`reflects the appropriate level of skill at the time of the claimed invention.
`
`See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
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`C. Alleged Non-Functional Descriptive Material and Intended Use
`Limitations
`
`Petitioner argues that certain limitations in the challenged claims are
`
`non-functional descriptive material entitled to no patentable weight. Pet. 17.
`
`Petitioner argues that limitations in the challenged claims are analogous to
`
`limitations found to be non-functional descriptive material in the Board’s
`
`decision in Ex parte Nehls, 2008 WL 258370 (BPAI Jan. 28, 2008). Prelim.
`
`Resp. 17. In Ex parte Nehls, the Board stated that “the nature of the
`
`information being manipulated does not lend patentability to an otherwise
`
`unpatentable computer-implemented product or process.” 2008 WL 258370,
`
`at *16.
`
`Here, Petitioner argues that claim 4 indicates that “digital aircraft
`
`performance data” is analyzed for the purpose of generating “maintenance
`
`advice,” but nothing in the claims at issue specifies which types of “digital
`
`aircraft performance data” are used to generate such advice. Pet. 16–17
`
`(quoting claim 4). Additionally, Petitioner argues that neither the
`
`specification nor the claims describe the use of configuration information or
`
`aircraft position information to generate maintenance advice. Pet. 18.
`
`Patent Owner counters that the ’618 patent “specification expressly
`
`describes how various flight parameters are transmitted and subsequently
`
`‘analyzed in conjunction with [various data] to allow identification of
`
`maintenance problems, on-ground safety advisories and in-flight safety
`
`advisories,’ including ‘maintenance actions.’” Prelim. Resp. 11 (quoting Ex.
`
`1001, 2:30–38).
`
`We are not persuaded by Petitioner that the limitations on the claimed
`
`“digital aircraft performance data” should be construed as non-functional
`
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`descriptive material. In Ex parte Nehls, the Board identified that
`
`
`
`
`
`“‘functional descriptive material’ consists of data structures and computer
`
`programs which impart functionality when employed as a computer
`
`component.” 2008 WL 258370, at *16. As discussed in the specification of
`
`the ’618 patent and set forth in claim 4, the identifier unique to a particular
`
`aircraft and configuration label is explicitly considered by, and thus may
`
`alter the functionality of, the claimed “central station” that is “to receive and
`
`analyze said digital aircraft performance data to generate maintenance
`
`advice for said aircraft.” See Ex. 1001, 5:1–5, claim 4. We are unpersuaded
`
`by Petitioner’s implication that a lack of express disclosure of how the
`
`identifier is used in generating the maintenance advice, or that in some cases
`
`the identifiers may not alter the generated maintenance advice, is sufficient
`
`to render such identifiers as non-functional descriptive material.
`
`In addition to arguing that the claims contain limitations constituting
`
`non-functional descriptive material, Petitioner argues that these limitations
`
`amount to statements of intended use and should be not be afforded
`
`patentable weight. Pet. 19–21. More particularly, Petitioner argues that
`
`claim recitations of a transmitter “configured for transmission of digital
`
`aircraft performance data” and a central station “configured to receive and
`
`analyze said digital aircraft performance data” are merely statements of
`
`intended use. Pet. 20. We are not persuaded by Petitioner, however, that
`
`these limitations are merely statements of the intended use of the
`
`“transmitter” and “central station,” but instead determine that they comprise
`
`structural limitations for these components of the claimed “aircraft
`
`maintenance system.” For similar reasons as to why we were not persuaded
`
`by Petitioner’s arguments with respect to non-functional descriptive
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`material, we are not persuaded that these claim limitations are statements of
`
`
`
`
`
`intended use.
`
`
`
`D. Asserted Obviousness of Claims 4, 5, 14, and 16 Based on Ward
`and ARINC 624-1
`
`1. Overview of Ward
`
`Ward is titled “Power Plant Health Monitoring – The Human Factor”
`
`and provides a discussion of condition monitoring systems and particularly,
`
`various types of Engine Condition Monitoring (“ECM”) systems that have
`
`been employed in gas turbine aero engines. Ex. 1015, 1. Figure 7 from
`
`Ward illustrates a condition monitoring system overview, and is reproduced
`
`below:
`
`
`
`As shown above in Figure 7 from Ward, the system includes an airplane
`
`with an onboard Aircraft Condition Monitoring System (“ACMS”) which
`
`can continually monitor the Aeronautical Radio, Inc. (“ARINC”) databases.
`
`Id. at 7. Ward discloses that the onboard ACMS system can send reports via
`
`near “real time” data links, such as an Aircraft Communications Addressing
`
`and Reporting System (“ACARS”). Id. Ward discloses that the ACARS
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`system provides data links that allow a multitude of messages/data to be sent
`
`
`
`
`
`between an aircraft and the airline ground base using VHF communication
`
`satellites or ground network systems. Id.
`
`2. Overview of ARINC 624-1
`
`ARINC 624-1 is titled “Design Guidance for Onboard Maintenance
`
`System” and provides a discussion of an ACMS, which “monitors and
`
`records selected airplane data related to airplane maintenance, performance,
`
`troubleshooting, and trend monitoring,” thereby “allowing the user to plan
`
`timely maintenance actions.” The figure below from ARINC 624-1
`
`illustrates an on-board maintenance system:
`
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`Ex. 1014, 57. The On-board Maintenance System (“OMS”), shown in the
`
`
`
`
`
`figure from ARINC 624-1 above, discloses a Central Maintenance Computer
`
`(“CMC”) that collects fault and failure data aircraft systems. “Member
`
`systems fault detection and [Built-In Test Equipment] BITE will be the
`
`primary source of data used by the OMS for detection and isolation of
`
`internal LRU faults, internal system faults and external interface faults.” Id.
`
`at 6. ARINC 624-1 discloses that the failures reported to the CMC should
`
`include a “[f]ailed LRU, part number or serial number, or interface.” Id. at
`
`9.
`
`3. Analysis
`
`Petitioner argues that claims 4, 5, 14, and 16 are obvious in view of
`
`Ward and ARINC 624-1. Pet. 26–38. In support of these asserted grounds
`
`of unpatentability, Petitioner provides its arguments and proffers a
`
`Declaration of Dr. Helfrick to support its contentions. Pet. 26–38; Ex. 1002.
`
`With respect to claim 4, Petitioner argues that Ward discloses an ECM
`
`system including an aircraft with an onboard ACMS, which collects data
`
`from “engine mounted units” and “other engine/flight/aircraft data” and
`
`transmits it to the ground via a data link, such as an ACARS system.
`
`Pet. 26–27 (quoting Ex. 1015, 7). Petitioner admits that Ward does not
`
`expressly discuss the claimed “configuration label.” Pet. 27. Petitioner
`
`argues that the ARINC 624-1 teaches the “configuration label” by disclosing
`
`a Central Maintenance Computer (“CMC”) that integrates ACMS function
`
`and teaches reporting failures on an aircraft to a CMC, including the “part
`
`number or serial number” of a failed Line-Replaceable Unit (“LRU”).
`
`Pet. 28–29 (quoting Ex. 1014, §§ 3.3.1.1, 3.2.2.2.7). Furthermore, Petitioner
`
`argues that it would have been obvious to one of skill in the art to combine
`
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`Ward and ARINC 624-1 as both disclose using ACMS to collect aircraft
`
`
`
`
`
`performance data and using an ACARS system to transmit the data to a
`
`ground station. Pet. 30 (citing Ex. 1002 ¶ 75).
`
`Patent Owner argues that Petitioner’s challenge based on Ward and
`
`ARINC 624-1 is deficient because Petitioner fails to identify a transmitter in
`
`either reference that is “portable,” as set forth in claim 4, or “positionable,”
`
`as set forth in claim 14. Prelim. Resp. 16–17. Patent Owner provides that
`
`the parties agreed in the related District Court action that “transmitter
`
`portable” and “transmitter positionable” should be construed to mean “a
`
`removable device for generating radio frequency signals.” Prelim. Resp. 17
`
`(quoting Joint Claim Construction and Prehearing Statement, Ex. 2001, 1).
`
`The plain and ordinary meaning of “removable” is “capable of being
`
`removed, displaced, transferred, dismissed or eradicated.” See Webster’s
`
`Third New International Dictionary (1971), Ex. 3002, 3. Thus, in
`
`accordance with Patent Owner’s proposed construction, in order for the
`
`transmitter device to be “removable” or “positionable,” a person of ordinary
`
`skill in the art would simply need to be able to change the location of the
`
`transmitter.
`
`As Patent Owner concedes, Petitioner argues that “Ward discloses a
`
`transmitter portable to be placed on an aircraft.” Pet. 33 (citing Ex. 1015, 7)
`
`(emphasis removed). More particularly, Ward discloses that the data link to
`
`the ground systems is an ACARS system, a system that includes a
`
`transmitter. Ex. 1015, 7. Furthermore, Petitioner offers Dr. Helfrick’s
`
`statement that ARINC 624-1 discloses a standards-compliant ACARS
`
`system, including a VHF transceiver and an HF transceiver. Pet. 33 (citing
`
`Ex. 1002 ¶ 25). We are not persuaded, on this record, that such disclosures
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`of discrete transmitters do not indicate that they were capable of changing
`
`
`
`
`
`location. Accordingly, for purposes of this decision, we are sufficiently
`
`persuaded by Petitioner that it would have been obvious to a person of
`
`ordinary skill in the art to have a portable/positionable transmitter in the
`
`ACARS system disclosed in both Ward and ARINC 624-1.
`
`We have reviewed Petitioner’s analysis and supporting evidence
`
`regarding the proposed ground of obviousness based on Ward and
`
`ARINC 624-1. On the record before us, we are persuaded that Petitioner has
`
`demonstrated a reasonable likelihood that claims 4, 5, 14, and 16 are
`
`obvious in view of Ward and ARINC 624-1.
`
`
`
`E. Asserted Obviousness of Claims 8, 9, and 10 Based on Ward,
`ARINC 624-1, and Monroe
`
`1. Overview of Monore
`
`Monroe is titled “Acoustic Catastrophic Event Detection And Data
`
`Capture And Retrieval System For Aircraft” and discloses an acoustic sensor
`
`system for detecting failures or terrorist events in commercial aviation and is
`
`adapted for assisting in the detection and post event analysis of such events.
`
`Ex. 1017, Abstract. Figure 1 from Monroe illustrates a portion on this
`
`system and is reproduced below:
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`IPR2015-01341
`Patent RE39,618
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`Ex. 1017, Fig. 1. As shown above in Figure 1 from Monroe, aircraft
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`fuselage 10 is provided with multiple audio sensor devices 19a–19m, “for
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`detecting acoustic energy and transmitting a signal which may be
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`transmitted to [the] ground, recorded in a ‘black box’ recorder, monitored on
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`board, and[ ] analyzed for action.” Id. at 4:66–5:8. Monroe further discloses
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`that other signals can be collected for recording, transmission, and
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`monitoring, including “global positioning” data. Id. at 8:1–17.
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`2. Analysis
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`Petitioner argues that claims 8, 9, and 10 would have been obvious in
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`view of Ward, ARINC 624-1, and Monroe. Pet. 31–38.
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`a. Status of Monroe as Prior Art
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`Patent Owner argues that Monroe does not qualify as prior art because
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`“Patent Owner [w]ill [s]wear [b]ehind Monroe.” Prelim. Resp. 19
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`(emphasis added).10 Patent Owner argues that Monroe has an effective filing
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`10 In multiple paragraphs in the Preliminary Response, Patent Owner
`indicates that it will swear behind Monroe, presumably in the future, but also
`presents arguments and evidence presumably attempting to swear behind
`Monroe in the Preliminary Response. See Prelim. Resp. 19–22, 26, and 29.
`For purposes of this decision, we evaluate the arguments and evidence
`presented as a present attempt to swear behind Monore.
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`date no earlier than October 11, 1996. Id. Patent Owner states that Mr.
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`Levine, the named inventor of the ’618 patent, conceived of his invention as
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`early as May of 1996, prior to the earliest effective date of Monroe. Prelim.
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`Resp. 20 (citing Ex. 2002). Furthermore, Patent Owner argues that
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`reasonable diligence was exercised from before Monroe’s earliest effective
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`date, October 11, 1996, until Patent Owner’s alleged constructive reduction
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`to practice on December 17, 1996. Id. at 20. Patent Owner alleges that this
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`reasonable diligence is established by letters between Mr. Levine and his
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`patent counsel, Norton Townsley. Id. at 20–21 (citing Exs. 2004, 2005,
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`2006, 2007, 2008).
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`An inventor may swear behind a reference if he was the first to
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`conceive of a patentable invention, and then connects the conception of his
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`invention with its reduction to practice by reasonable diligence on his part,
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`such that conception and diligence are substantially one continuous act.
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`Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1577 (Fed. Cir. 1996). An
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`inventor’s testimony, standing alone, is insufficient to prove conception and
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`diligence, as some form of corroboration is required. Mahurkar, 79 F.3d at
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`1577; Price v. Symsek, 988 F.2d 1187, 1194 (Fed. Cir. 1993). A rule of
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`reason applies to determine whether the inventor’s testimony has been
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`corroborated. Price, 988 F.2d at 1194. During the period in which
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`reasonable diligence must be shown, there must be continuous exercise of
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`reasonable diligence. In re McIntosh, 230 F.2d 615, 619 (CCPA 1956); see
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`also Burns v. Curtis, 172 F.2d 588, 591 (CCPA 1949) (referring to
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`“reasonably continuous activity”).
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`A party alleging diligence must provide corroboration with evidence
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`that is specific both as to facts and dates. Gould, 363 F.2d at 920; Kendall v.
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`18
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`Searles, 173 F.2d 986, 993 (CCPA 1949). The rule of reason does not
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`dispense with the need for corroboration of diligence that is specific as to
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`dates and facts. Gould, 363 F.2d at 920; Kendall, 173 F.2d at 993; see also
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`Coleman v. Dines, 754 F.2d 353, 360 (Fed. Cir. 1985) (“The rule of
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`reason . . . does not dispense with the requirement for some evidence of
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`independent corroboration.”).
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`At this stage in the proceeding, we do not have testimony from the
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`inventor, his patent attorney, or any other relevant declarants regarding the
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`alleged conception, exercise of reasonable diligence, and reduction to
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`practice. Patent Owner also states that “[i]f necessary, Patent Owner will
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`submit the declarations of Mr. Levine and Mr. Townsley to further
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`illuminate this evidence.” Prelim. Resp. 22. Based on the current record,
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`we have insufficient evidence upon which to evaluate many factors,
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`including whether there was a continuous exercise of reasonable diligence
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`during the critical period. A party alleging diligence must account for the
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`entire critical period. Griffith v. Kanamuru, 816 F.2d 624, 626 (Fed. Cir.
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`1987); Gould v. Schawlow, 363 F.2d 908, 919 (CCPA 1966). Even a short
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`period of unexplained inactivity is sufficient to defeat a claim of diligence.
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`Morway v. Bondi, 203 F.2d 742, 749 (CCPA 1953); Ireland v. Smith, 97
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`F.2d 95, 99–100 (CCPA 1938). In In re Mulder, 716 F.2d 1542, 1542–46
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`(Fed. Cir. 1983), for example, the Federal Circuit affirmed a determination
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`of lack of reasonable diligence, where the evidence of record was lacking for
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`a two-day critical period. Likewise, in Rieser v. Williams, 255 F.2d 419, 424
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`(CCPA 1958), there was no showing of diligence where no activity was
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`shown during the first thirteen days of the critical period. Accordingly,
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`applying the rule of reason to the current record, we are not persuaded for
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`purposes of this decision that Patent Owner has provided sufficient evidence
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`to remove Monroe as prior art.
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`b. Analysis of Alleged Obviousness Based on Ward,
`ARINC 624-1, and Monroe
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`Petitioner argues that Monroe discloses an aircraft monitoring system
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`that collects and transmits aircraft data, including “global positioning” data.
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`Pet. 31 (citing Ex. 1017, 8:1–17, Fig. 12). Furthermore, Petitioner argues
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`that it would have been obvious to one of ordinary skill in the art to combine
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`Monroe with Ward and ARINC 624-1 because each discloses a system for
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`transmitting data collected and recorded on-board the aircraft during flight to
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`the ground for analysis, and Monroe teaches that position data is of “great
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`value.” Pet. 32 (citing Ex. 1017, 6:54–55).
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`Patent Owner argues that Petitioner fails to demonstrate a motivation
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`to combine Monroe with Ward and ARINC 624-1 because Monroe is
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`designed to detect a “terrorist event” using acoustic sensors and not to
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`monitor an aircraft. Prelim. Resp. 22 (quoting Ex. 1017, 1:63–66). Contrary
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`to Patent Owner’s assertion, however, the system disclosed in Monroe is not
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`limited exclusively to detecting terrorist events. For example, in the same
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`sentence quoted by Patent Owner describing the detection of terrorist events,
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`Monroe states that the “subject invention provides a low cost system for
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`detecting failures or terrorist events in commercial aviation.” Ex. 1017,
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`1:63–66 (emphasis added). Thus, Monroe expressly identifies that the
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`detection of failures and not simply terrorist events. Accordingly, we are
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`persuaded that Petitioner has shown sufficiently for purposes of this decision
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`that there would have been a reason to combine Monroe with Ward and
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`ARINC 624-1.
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`We have reviewed Petitioner’s analysis and supporting evidence
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`regarding the proposed ground of obviousness based on Ward, ARINC 624-
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`1, and Monroe. On the record before us, we are persuaded that Petitioner
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`has demonstrated a reasonable likelihood that claims 8, 9, and 10 of the
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`’618 patent would have been obvious in view of Ward, ARINC 624-1, and
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`Monroe.
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`F. Asserted Obviousness of Claims 4, 5, 14, and 16 Based on Dyson
`and Chetail
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`1. Overview of Dyson
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`Dyson is titled “Commercial Engine Monitoring Status at GE Aircraft
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`Engines” and provides a discussion of the design and development of
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`commercial engine monitoring systems at GE Aircraft Engines. Ex. 1019,
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`22-1. Dyson discloses Aircraft Integrated Monitoring System (“AIMS”)
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`enabled to tag acquired data with the appropriate serial number. Id. at 22-4.
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`Figure 4 from Dyson illustrates the flow of engine monitoring data and is
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`reproduced below:
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`IPR2015-01341
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`As shown above in Figure 4 from Dyson, the system includes on-board data
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`acquisition (AIMS) and the capability to transmit that data via an ACARS
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`system to Ground-based computer. Id. at 22-4–22-5
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