Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper No. 7
`Filed: October 28, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TOYOTA MOTOR CORPORATION,
`Petitioner,
`
`v.
`
`CELLPORT SYSTEMS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01423
`Patent 5,479,479
`____________
`
`
`
`Before JAMESON LEE, JAMES B. ARPIN, and SCOTT C. MOORE,
`Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`571-272-7822
`
`
`
`
`
`Paper No. 7
`Filed: October 28, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TOYOTA MOTOR CORPORATION,
`Petitioner,
`
`v.
`
`CELLPORT SYSTEMS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01423
`Patent 5,479,479
`____________
`
`
`
`Before JAMESON LEE, JAMES B. ARPIN, and SCOTT C. MOORE,
`Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`IPR2015-01423
`Patent 5,479,479
`
`
`I. INTRODUCTION
`
`A. Background
`Toyota Motor Corporation filed a Petition (Paper 2, “Pet.”) to institute
`inter partes review of claims 1–29 of expired U.S. Patent No. 5,479,479
`(Ex. 1001, “the ’479 patent”). Patent Owner, Cellport Systems, Inc., filed a
`Preliminary Response (Paper 6, “Prelim. Resp.”).
`Upon consideration of the Petition and Preliminary Response, we
`reject the Petition under 35 U.S.C. § 325(d), because substantially the same
`prior art and substantially the same arguments previously were presented by
`Petitioner in IPR2015-00634. Accordingly, we do not institute an inter
`partes review of any claim of the ’479 patent. The Petition is denied.
`
`B. Related Matters
`
`The ’479 patent has been asserted in two lawsuits in the United States
`District Court for the District of Colorado. Pet. 4; Paper 5, 2. The ’479
`patent also is the subject of a petition filed by Toyota Motor Corporation, the
`same petitioner as in this proceeding, in IPR2015-00634.
`
`C. Evidence Relied Upon by Petitioner
`Petitioner relies on the following references:1
`
`
`
`
`
`1 Petitioner also relies on the Declaration of John Villasenor (Ex. 1004).
`
` 2
`
`
`
`
`
`
`
`Date
`Issued:
`Nov. 7, 1995
`Filed:
`Sep. 21, 1992
`Issued:
`June 29, 1993
`Filed:
`Apr. 17, 1992
`Issued:
`Apr. 25, 1995
`Filed:
`May 4, 1992
`Filed:
`Feb. 16, 1993
`Filed:
`Jan. 24, 1991
`Issued:
`Aug. 22, 1995
`Filed:
`Apr. 17, 1992
`1992
`
`Exhibit
`
`Ex. 1002
`
`Ex. 1014
`
`Ex. 1015
`
`Ex. 1016
`
`Ex. 1017
`
`Ex. 1026
`
`IPR2015-01423
`Patent 5,479,479
`
`Reference
`
`Boatwright US 5,465,207
`
`Mansell
`
`US 5,223,844
`
`Hoto
`
`US 5,410,541
`
`Guy
`
`US 5,187,591
`
`Thompson
`
`US 5,444,855
`
`Szydlowski, C., CAN
`Specification 2.0: Protocol and
`Implementations, SAE Technical
`Paper 921603, Future
`Transportation Technology
`Conference and Exposition,
`Costa Mesa, California August
`10–13, 1992
`
`
`
` 3
`
`
`
`CAN
`
`
`
`
`
`
`
`
`
`IPR2015-01423
`Patent 5,479,479
`
`D. The ’479 Patent
`The ’479 patent relates to transmitting and receiving digital
`information through an air link. Ex. 1001, Title. The specific disclosure
`pertains to sending and receiving digital data between a plurality of
`peripheral devices, through a cellular telephone, to remote devices. Id. at
`Abstr. One aspect of the ’479 patent concerns providing a universal
`interface to different kinds of cellular phones in the form of an adaptor cable
`that provides for selectable coding to identify the type of the attached phone,
`and the application environment for that aspect of the invention can be that
`of a car kit environment. Id. at 2:40–55. Another aspect of the ’479 patent
`concerns using a controller attached to a common bus to which a plurality of
`peripheral devices also are attached to permit digital data to be
`communicated to and from the peripheral devices via a wireless telephone.
`Id. at 3:30–44. Figure 15 of the ’479 patent is reproduced below:
`
`
`
` 4
`
`
`
`
`
`
`
`IPR2015-01423
`Patent 5,479,479
`
`Figure 15 shows cellular phone 10 connected to car kit controller 200
`through an interconnect cable having universal connector 45 that connects
`with car kit connector 204. Id. at 10:10–17. Car kit controller 200 includes
`bus logic 268 to control common bus 280 to which peripheral devices CD
`ROM 292, display 288, and GPS Receiver 284 are connected. Id. at 11:59–
`61.
`
`
`With regard to operation of the system, the ’479 patent states:
`
`In operation, cellular phone 10 may receive RF signals
`containing data addressed to one of the peripheral devices. The
`data is passed via interconnect cable 46 to microprocessor 208.
`Microprocessor 208 formats the data according to the needs of
`the peripheral device to which the data is addressed. The data
`is then either buffered or passed directly through bus connector
`276 to the appropriate peripheral device [on] bus 280.
`
`
`
`Car kit controller 200 further comprises circuitry to allow
`this process to be reversed to allow any of the peripheral
`devices to send data through car kit controller 200 and cellular
`phone 10 and out of the car using RF signals. Accordingly, a
`duplex digital path is provided between bus 280 and cellular
`phone 10, for allowing digital information to be transmitted
`through car kit controller 200 in either direction.
`Id. at 12:39–54.
`
`II. ANALYSIS
`Title 35, Section 325(d) of the U.S. Code provides, in pertinent part:
`In determining whether to institute or order a proceeding under
`this chapter, chapter 30, or chapter 31, the Director may take
`into account whether, and reject the petition or request because,
`the same or substantially the same prior art or arguments
`previously were presented to the Office.
`
`The following table shows the alleged grounds of unpatentability
`
` 5
`
`
`
`
`
`
`
`
`
`
`
`IPR2015-01423
`Patent 5,479,479
`
`asserted by Petitioner in this proceeding:
`
`Reference(s)
`Boatwright, CAN, and
`Mansell
`Boatwright, CAN,
`Mansell, and Hotto
`Boatwright, CAN,
`Mansell, and Guy
`Boatwright, CAN,
`Mansell, and Thompson
`Mansell and CAN
`
`Basis
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`Claim(s) Challenged
`1, 2, 4, 6–19, 21–25, and
`27–29
`3 and 5
`
`20
`
`26
`1, 2, 4, 6–12, 15–19, 22–
`24, and 27–29
`
`
`
`The following table shows the alleged grounds of unpatentability
`Petitioner previously alleged in IPR2015-00634:
`
`Reference(s)
`Boatwright, RS-4852, and
`Mansell
`Boatwright, RS-485,
`Mansell, and Hotto
`Boatwright, RS-485,
`Mansell, and Guy
`Boatwright, RS-485,
`Mansell, and Thompson
`Mansell and RS-485
`
`Basis
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`
`
`
`
`
`Claim(s) Challenged
`1, 2, 4, 6–19, 21–25, and
`27–29
`3 and 5
`
`20
`
`26
`1, 2, 4, 6–12, 15–19, 22–
`24, and 27–29
`
`
`2 Standard for Electrical Characteristics of Generators and Receivers for
`Use in Balanced Digital Multipoint Systems, RS-485, Electronic Industries
`Association (April 1983).
`
` 6
`
`
`
`
`
`
`
`IPR2015-01423
`Patent 5,479,479
`
`But for substituting CAN for RS-485, the alleged grounds of
`
`unpatentability in this proceeding are the same as those grounds of
`unpatentability in IPR2015-00634. The Petition in IPR2015-00634 was
`filed on February 5, 2015, prior to filing of the Petition in this proceeding on
`June 19, 2015. Despite the substitution of CAN for RS-485, the prior art
`and arguments presented in this proceeding are substantially the same as
`those previously presented in IPR2015-00634.
`
`Each of Boatwright, Mansell, Hotto, Guy, and Thompson is applied in
`the same manner in this case, i.e., based on the same teachings therein,
`against the same claims of the ’479 patent, as it was previously applied in
`IPR2015-00634. Although in this case Petitioner has replaced RS-485 with
`CAN, both RS-485 and CAN disclose a standard for a bus useable to
`connect multiple devices. CAN was published in 1992, whereas RS-485
`was published in 1983. The teaching that is required from each to cure the
`deficiency of the other prior art references is the same.
`
`Petitioner makes no explanation as to why the disclosure of CAN is
`substantively and meaningfully different from the disclosure of RS-485,
`insofar as the claimed subject matter of the challenged claims is concerned.
`Citing page 3 of CAN, Petitioner refers to CAN as disclosing a bus protocol
`“designed” for use in vehicles. Pet. 3. We have reviewed the cited portion
`of CAN and do not see any disclosure that CAN was designed specifically
`for use in vehicular systems, as opposed to other environments. Rather,
`CAN simply is useable in vehicular systems. Even assuming that CAN was
`designed specifically for use in vehicular systems, that fact would be
`inconsequential because it is not reasonably disputable that the RS-485 bus
`
` 7
`
`
`
`
`
`
`
`IPR2015-01423
`Patent 5,479,479
`
`standard is useable on vehicles. Petitioner does not identify any
`functionality provided by the CAN standard, significant to the claimed
`subject matter of the challenged claims, that it believes the RS-485 standard
`does not provide. In that regard, we note that in the Petition in IPR2015-
`00634 (Paper 2, 45), Petitioner asserted that RS-485 discloses a bus in which
`any slave device on an RS-485 bus can communicate with any other of 32
`slave devices without going through a master device. Petitioner also
`asserted in that previous Petition (id. at 21) that the RS-485 standard “was a
`well-known bus protocol providing a simple way to interconnect peripherals
`such that they could be communicable with each other.”
`
`Additionally, Petitioner presents no argument or evidence that CAN
`was not known or available to Petitioner at the time of filing of the Petition
`in IPR2015-00634. Without explanation, Petition seeks another opportunity
`to challenge the same claims on essentially the same grounds, albeit not
`based on the identical set of prior art references. Such a second bite at the
`apple wastes the Board’s limited resources and imposes undue burden on the
`Patent Owner. Also, the Petition in this case was filed on June 19, 2015,
`subsequent to the filing of Patent Owner’s Preliminary Response in
`IPR2015-00634 on May 20, 2015. Especially given the similarity between
`the earlier application of RS-485 and the application here of the CAN
`standard, the opportunity to read Patent Owner’s Preliminary Response in
`IPR2015-00634, prior to filing the Petition here, is unjust. See 35 U.S.C.
`§ 314(a) (“The Director may not authorize an inter partes review unless . . .”;
`emphasis added); 37 C.F.R. §§ 42.1(b), 108(b).
`
`
`
` 8
`
`
`
`
`
`
`
`IPR2015-01423
`Patent 5,479,479
`
`On this record, we exercise our discretion and “reject the petition”
`
`because substantially the same prior art and substantially the same
`arguments previously were “presented to the Office” in IPR2015-00634.
`35 U.S.C. § 325(d); see also Unilever, Inc., v. The Proctor & Gamble Co.,
`Case IPR2014-00506, slip op. at 6 (PTAB July 7, 2014) (Paper 17)
`(informative).
`
`III. ORDER
`
`Accordingly, it is
`ORDERED that the Petition is denied, and no inter partes review is
`instituted as to any claim of the ’479 patent.
`
`
`
`
`For PETITIONER:
`James Barney
`Thomas Winland
`Joshua Goldberg
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`james.barney@finnegan.com
`tom.winland@finnegan.com
`joshua.goldberg@finnegan.com
`
`
`
` 9
`
`
`
`For PATENT OWNER:
`Gregory Howison
`Peter Thoma
`HOWISON &ARNOTT
`ipr@dalpat.com
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
