Trials@uspto.gov Paper 10
`571-272-7822 Entered: January 13, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNDER ARMOUR, INC.,
`Petitioner,
`
`v.
`
`ADIDAS AG,
`Patent Owner.
`____________
`
`Case IPR2015-01532
`Patent 8,652,009 B2
`____________
`
`
`
`
`
`Before JENNIFER S. BISK, MICHAEL J. FITZPATRICK, and
`JUSTIN BUSCH, Administrative Patent Judges.
`
`BUSCH, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`571-272-7822 Entered: January 13, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNDER ARMOUR, INC.,
`Petitioner,
`
`v.
`
`ADIDAS AG,
`Patent Owner.
`____________
`
`Case IPR2015-01532
`Patent 8,652,009 B2
`____________
`
`
`
`
`
`Before JENNIFER S. BISK, MICHAEL J. FITZPATRICK, and
`JUSTIN BUSCH, Administrative Patent Judges.
`
`BUSCH, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`IPR2015-01532
`Patent 8,652,009 B2
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`I. INTRODUCTION
`Under Armour, Inc. (“Petitioner”) filed a Petition for inter partes
`review of claims 13–15, 17, 18, and 20 (“the challenged claims”) of U.S.
`Patent No. 8,652,009 B2 (Ex. 1001, “the ’009 patent”). Paper 1 (“Pet.”).
`Adidas AG (“Patent Owner”) filed a Preliminary Response. Paper 8
`(“Prelim. Resp.”). Institution of an inter partes review is authorized by
`statute when “the information presented in the petition . . . and any
`response . . . shows that there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. Upon consideration
`of the Petition, we determine the information presented shows a reasonable
`likelihood that Petitioner would prevail in establishing the unpatentability of
`at least one claim. Accordingly, we institute an inter partes review.
`
`A. Related Matters
`The parties identify the district court proceeding adidas AG v. Under
`Armour, Inc., Case No. 14-130-GMS (D. Del.) as a related matter. Pet. 1;
`Paper 5, 1. Petitioner also has filed petitions for inter partes reviews of
`eight other patents: three other patents asserted in the district court
`proceeding and five patents related to the ’009 patent. Paper 5, 1.
`
`B. The ’009 Patent
`The ’009 patent is directed to “modular personal network systems and
`methods” in which “wireless networks of individual components . . . can be
`easily added to or removed from the network to change its functions, and in
`which the individual components are worn, carried, or used on or about the
`person of the user.” Ex. 1001, 1:20–25.
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`Relevant to the challenged claims, the ’009 patent describes guidance
`functions that “may include providing position, elevation, and speed
`information, providing route guidance, and collecting and annotating
`position information with text, audio, video, and personal data” and
`“recommending an athletic training route based on desired workout
`parameters.” Ex. 1001, 4:47–53. The ’009 patent describes using a global
`positioning system (GPS) or other location devices, including an elevation
`monitor and a compass. Id. at 10:7–9. The ’009 patent may collect, upload,
`and display location data, provide route guidance functions, and
`“recommend a route in a later athletic session, based on a desired distance,
`elevation profile, or difficulty,” including “automatically guid[ing a user]
`through the recommended route,” or “simulat[ing] a previous route.” Id.;
`see also id. at 11:37–49 (describing travel-related functions).
`
`C. Illustrative Claim
`Among the challenged claims, claim 13 is the only independent claim
`and is reproduced below:
`13. A method for recommending a route for traversal by
`an individual, comprising:
`storing data associated with one or more routes available
`to be traversed by an individual;
`receiving position data relating to a position of the
`individual; and
`processing the position data with one or more processors
`and recommending a route for traversal by the individual from
`the stored route data based on the position data.
`
`Ex. 1001, 72:21–29.
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`D. Asserted Grounds of Unpatentability
`Petitioner contends that the challenged claims are unpatentable based
`on the following specific grounds:
`
`Basis
`Reference(s)
`Challenged Claims
`Bouve1
`13, 14, 17
`35 U.S.C. § 102(b)
`Bouve and DeLorme2
`13, 18, 20
`35 U.S.C. § 103(a)
`Kim3
`13–15, 17, 20
`35 U.S.C. § 102(b)
`Pet. 9–37. In its analysis, Petitioner relies on the declaration testimony of
`Shawn Burke, Ph.D. Ex. 1003.
`
`II. DISCUSSION
`
`A. Claim Construction
`In an inter partes review, we construe claim terms in an unexpired
`patent according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); In
`re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275–79 (Fed. Cir. 2015).
`Consistent with the broadest reasonable construction, claim terms are
`presumed to have their ordinary and customary meaning as understood by
`a person of ordinary skill in the art in the context of the entire patent
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). “In determining the meaning of the disputed claim limitation, we
`look principally to the intrinsic evidence of record, examining the claim
`language itself, the written description, and the prosecution history, if in
`
`
`1 U.S. Patent 5,648,768, issued July 15, 1997 (Ex. 1004, “Bouve”).
`2 U.S. Patent 6,321,158, issued Nov. 20, 2001, (Ex. 1005, “DeLorme”).
`3 U.S. Patent 5,742,922, issued Apr. 21, 1998 (Ex. 1006, “Kim”).
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`evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d
`1005, 1014 (Fed. Cir. 2006) (citing Phillips v. AWH Corp., 415 F.3d 1303,
`1312–17 (Fed. Cir. 2005) (en banc)).
`We construe only those claim terms in controversy, and we do so
`only to the extent necessary to resolve the controversy. See Vivid Techs.,
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). On the
`present record, no claim term requires an express construction.
`We note, however, that Patent Owner argues the “recommending a
`route . . .” limitation, which is recited in claim 13, requires that the route
`recommendation is “based only on the received position data relating to a
`single position of the user.” Prelim. Resp. 8–9 (emphases added). Patent
`Owner’s proposed construction unduly narrows the scope of the
`“recommending a route . . .” limitation beyond what is recited by
`introducing the concepts that: 1) the route recommendation cannot be
`determined using factors other than the position data; and 2) the position
`data is only a single position of the user.
`With respect to the recommendation being based only on the
`received position data, we are not persuaded that the claim language or
`specification is so limiting. The claim merely recites that a route is
`recommended “based on the position data,” and does not exclude using
`other factors when determining which route(s) to recommend. Patent
`Owner’s argument that the route recommendation must be based on only a
`single position is similarly unpersuasive. See Prelim. Resp. 8–9. As an
`initial matter, it is nonsensical to argue that a system provides a route
`recommendation using only a single position. Regardless of how the
`second position is received or determined, a system necessarily requires
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`both a starting position and an ending position in order to provide route
`recommendations. To the extent Patent Owner is arguing that the claim
`recites receiving position data related to only one position, the claim does
`not exclude receiving additional position data. Moreover, a route
`recommendation that is “based on” two positions also is necessarily “based
`on” each of those positions.
`
`B Asserted Grounds Based on Bouve or Bouve and DeLorme
`Petitioner contends claims 13, 14, and 17 are unpatentable under
`35 U.S.C. § 102(b) as anticipated by Bouve. Pet. 9–19. Petitioner also
`alleges claims 13, 18, and 20 are unpatentable under 35 U.S.C. § 103(a) as
`obvious in view of Bouve and DeLorme. Id. at 19–26. Relying on the
`testimony of Dr. Burke, Petitioner explains how Bouve allegedly discloses
`the subject matter of claims 13, 14, and 17 and how Bouve and DeLorme
`allegedly teach the subject matter of claims 13, 18, and 20. Id. at 9–26
`(citing Ex. 1003).
`
`1. Overview of Bouve (Ex. 1004)
`Bouve is directed to a “system for identifying and presenting
`information relating to travel within a geographic region,” including “a data
`base for storing a plurality of travel routes within the geographic region and
`one or more types of travel information associated with one or more of the
`plurality of travel routes.” Ex. 1004, Abs. , 2:5–10, 2:49–54. Bouve
`explains that a user may employ various input devices to enter two locations
`between which the user wishes to travel and, in response to the entered
`locations, the system retrieves at least one route and travel information
`associated with the route(s) from the database(s) containing the plurality of
`stored routes and travel information. Id. at 2:10–19, 2:54–60. Bouve then
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`uses any of several various audio or visual display devices to present the
`retrieved route(s) and travel information to the user. Id. at 2:19–22, 2:60–
`61.
`
`Bouve discloses “tabulat[ing] the retrieved routes and travel
`information and stor[ing] the tabulated information” in the database(s) for
`future use and calculating “mileage and/or travel time indicators to locate
`each item of retrieved travel information with respect [to the] retrieved
`route(s).” Id. at 2:32–38.
`
`2. Overview of DeLorme (Ex. 1005)
`DeLorme is directed to an “Integrated Routing/Mapping Information
`System (IRMIS)” that provides “route information, area, and route maps,”
`which may be used “in conjunction with [a] GPS receiver . . . to display
`directions, text and map formats, the user’s current position, heading , speed,
`elevation, and so forth.” Ex. 1005, Abs. “The IRMIS also enables the user
`to mark or record specific locations and/or log actual travel routes, using
`GPS position information.” Id. The logged information may be saved. Id.
`
`3. Analysis of Anticipation Challenge of
`Claims 13, 14, and 17
`
`Petitioner asserts that Bouve discloses all of the limitations of
`independent claim 13 and dependent claims 14 and 17. Pet. 10–19. With
`respect to claim 13, Petitioner points to aspects of Bouve that disclose a
`system and method for providing route recommendations selected from a
`plurality of possible travel routes stored in a database as meeting the recited
`preamble and “storing data associated with one or more routes available to
`be traversed by an individual.” Pet. 10–12 (quoting Ex. 1004, Abs., 1:66–
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`2:21, 2:5–10, 2:51–54, 4:12–14, 4:65–67, 5:30–37; citing Ex. 1003 ¶¶ 30,
`32).
`
`Petitioner contends Bouve discloses the recited “receiving position
`data relating to a position of the individual” because Bouve explains that a
`user may enter two geographic locations between which the user wishes to
`travel by using various input devices. Pet. 12–13 (quoting Ex. 1004, 2:10–
`13, 3:63–66; citing Ex. 1003 ¶ 34). Petitioner also points to Bouve’s
`disclosure that its system may be incorporated into an automobile, allowing
`the user to enter the data while in the automobile and select or change routes
`or obtain information about “Incidents or Conditions,” allowing the user to
`change a route of travel while traveling. Id. at 13 (quoting Ex. 1004, 2:43–
`45, 5:6–9, 5:11–15). Thus, Petitioner asserts the first position is either the
`user’s current position or some future position from which the user will
`travel. Id. at 12–13.
`Petitioner argues Bouve’s processor retrieves at least one available
`route between the positions entered by the user and presents the route(s) to
`the user on a display. Pet. 13–14. Petitioner maps that disclosure in Bouve
`to the limitation regarding processing the position data and recommending a
`route based on the position data. Id.
`Patent Owner argues Petitioner has not demonstrated that Bouve
`discloses “receiving position data relating to a position of the individual” or
`“processing the position data with one or more processors and
`recommending a route for traversal by the individual from the stored route
`data based on the position data.” Prelim. Resp. 10–14 (emphases added).
`Patent Owner asserts that Bouve merely discloses receiving two geographic
`locations and “[n]othing in Bouve ties its routing features to a position of the
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`individual.” Id. at 10–11. In particular, Patent Owner contends that nothing
`in Bouve requires that a user of the system be interested in or enter a
`geographic location where the user currently is or will be at any future time.
`Id. at 11–12. Patent Owner also argues that Petitioner’s reliance on an
`ordinarily skilled artisan’s understanding does not establish anticipation by
`Bouve. Id. at 12. Patent Owner further contends that Petitioner failed to
`demonstrate that Bouve discloses recommending a route based on the
`position data. Prelim. Resp. 13–15. Patent Owner’s contention depends on
`Patent Owner’s proposed construction of the recommending step, which
`requires that a route be recommended based only on a single position of the
`user.
`
`Bouve explains that the two positions entered are “[g]eographic
`locations representing the location at which overland travel will begin and
`end” and that the “vehicle system is particularly beneficial to a traveler
`desiring to select or change the route of travel during the course of travel.”
`Ex. 1004, 3:63–66, 5:11–13 (emphasis added). Thus, we agree with
`Petitioner that Bouve sufficiently discloses “receiving position data relating
`to a position of the individual.” We reject Patent Owner’s assertion that an
`ordinarily skilled artisan’s understanding of Bouve’s disclosure is irrelevant
`to anticipation. See In re Preda, 401 F.2d 825, 826 (CCPA 1968) (even in
`the context of anticipation, “it is proper to take into account not only specific
`teachings of the reference but also the inferences which one skilled in the art
`would reasonably be expected to draw therefrom”). Bouve explicitly states
`that the first geographic location may be a beginning point of travel and that
`the vehicular embodiment of the system may allow the traveler to “change
`the route . . . during the course of travel.” Ex. 1004, 3:63–66, 5:12–13. We
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`determine that an ordinarily skilled artisan would infer that the first
`geographic position could be a current or future position of the user. We
`also find persuasive Petitioner’s argument that Bouve discloses
`recommending a route based on the position data, as recited in claim 13. As
`previously discussed, we do not adopt Patent Owner’s narrow construction
`of the recommending limitation. Therefore, we find Patent Owner’s
`argument regarding the recommending limitation unavailing.
`Claim 14 further recites “recommending a route for traversal by the
`individual based on the stored route data.” Petitioner points to disclosures in
`Bouve regarding a user selecting route types (e.g., highway, back roads,
`scenic route, etc.) and the processor retrieving “one or more routes
`corresponding to the input data route selection and identified start and end
`locations from the route selection data base stored in storage device 14 or
`200.” Pet. 15–16 (quoting Ex. 1004, 6:44–7:27). Petitioner contends that
`Bouve’s comparison of a route type selected by a user to the route type
`stored in its database meets the additional limitation recited in claim 14. Id.
`at 16 (citing Ex. 1003 ¶¶ 42, 43). Petitioner also asserts Bouve stores
`information relating to landmarks, facilities, incidents, and conditions with
`its route data, and that Bouve additionally meets the further limitation of
`claim 14 because Bouve discloses recommending a route based on that
`landmark, facility, incident, and condition information. Id. at 16–17
`(quoting Ex. 1004, 1:66–2:21, 6:62–7:27; citing Ex. 1003 ¶ 44). We find
`Petitioner’s argument persuasive, and Patent Owner does not argue, in its
`Preliminary Response, that Petitioner has not met its burden with respect to
`the additional limitation recited in claim 14. Accordingly, we determine
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`Petitioner has sufficiently demonstrated a reasonable likelihood of
`establishing that claim 14 is anticipated by Bouve.
`With respect to claim 17, which depends from claim 14 and further
`recites “the stored route data comprises a length of the route,” Petitioner
`points to disclosures in Bouve regarding computing or calculating the
`mileage indication along a route. Pet. 17–19 (quoting Ex. 1004, 1:28–35,
`4:20–34, 6:30–39, 8:18–22; citing Ex. 1003 ¶ 46, 47). Patent Owner argues
`Petitioner merely points to disclosures in Bouve that the route length is
`calculated or computed by the system and that Bouve does not disclose
`storing the route length in the databases where Petitioner alleges the stored
`route data resides. Prelim. Resp. 15–18. We agree with Patent Owner, and
`find Petitioner’s argument insufficient to demonstrate that Bouve discloses
`“the stored route data comprises a length of the route.”
`After reviewing the Petition, the Preliminary Response, and the
`relevant evidence, we determine Petitioner has shown sufficiently that
`Bouve discloses the limitations recited in claims 13 and 14, but not the
`additional limitation recited in claim 17. Accordingly, the information
`presented shows a reasonable likelihood that Petitioner would prevail in
`establishing that claims 13 and 14 are anticipated by Bouve. The
`information presented, however, does not show a reasonable likelihood that
`Petitioner would prevail in establishing that claim 17 is anticipated by
`Bouve.
`
`4. Analysis of Obviousness Challenge of
`Claims 13, 18, and 20
`
`Petitioner asserts that the combination of Bouve and DeLorme teaches
`all of the limitations of claims 13, 18, and 20. Pet. 19–26. With respect to
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`claim 13, Petitioner argues that, to the extent not disclosed explicitly by
`Bouve, the combination of Bouve and DeLorme teaches both “receiving
`position data relating to a position of the individual” and the recommending
`limitation. Id. at 19–20, 21–23. Specifically, Petitioner contends that Bouve
`discloses a user entering geographic locations using a “keyboard, voice
`recognition subsystem, or other input device,” and that DeLorme
`recommends a route based on receipt of a GPS signal indicating the user’s
`current location. Id. at 22–23. Petitioner further contends an ordinarily
`skilled artisan would have combined the teachings of Bouve and DeLorme,
`because both systems are directed to recommending routes stored in a
`database. Id. at 20. Petitioner asserts that incorporating DeLorme’s known
`technique of using GPS to provide a current position into Bouve’s known
`system would have yielded predictable results. Id. at 20–21. Thus,
`Petitioner argues that an ordinarily skilled artisan would have combined
`DeLorme’s teaching of using a GPS signal to obtain a current location with
`Bouve’s teaching of allowing for various methods or devices to input a
`starting location to result in a teaching meeting the recited “receiving
`position data relating to a position of the individual.” Id. at 22–23.
`Petitioner contends DeLorme teaches the additional limitations of
`claims 18 and 20, which each depend directly from claim 13 and
`respectively recite “the stored route data comprises data associated with one
`or more routes previously traversed by the individual” and “the position data
`is received with a global positioning satellite receiver.” Pet. 23–26.
`Specifically, Petitioner asserts DeLorme’s disclosure of “log[ging] actual
`travel routes, using GPS position information,” transferring those logs to a
`desktop or central system, and incorporating the stored information “for use
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`in future travel planning” meets the additional limitation recited in claim 18.
`Id. at 23–24. Petitioner further asserts various reasons an ordinarily skilled
`artisan would have combined the disclosed feature of DeLorme with Bouve,
`including that Bouve explicitly states that route retrieval may be based on
`which routes are most often retrieved. Id. at 24–25. For similar reasons
`asserted with respect to claim 13, Petitioner argues the additional limitation
`that the position data is received with a GPS receiver, recited in claim 20,
`would have been obvious in view of the combination of Bouve and
`DeLorme. Id. at 25–26.
`At this time, Patent Owner’s only substantive argument with respect
`to Petitioner’s challenges based on the combination of Bouve and DeLorme
`is that the combination requires two points to provide a route
`recommendation, whereas claim 13 provides a route recommendation based
`on a single location. Prelim. Resp. 18–20. Because we do not agree with
`Patent Owner’s proposed construction of claim 13 that the route
`recommendation must be based on a single position, we determine Petitioner
`has demonstrated sufficiently that Bouve and DeLorme teach the
`recommending limitation.
`After reviewing the Petition, the Preliminary Response, and the
`relevant evidence, we determine Petitioner has shown sufficiently that the
`combination of Bouve and DeLorme teaches the limitations recited in claims
`13, 18, and 20. We also determine Petitioner has sufficiently articulated a
`reason with a rational underpinning that a person of ordinary skill in the art
`would have combined Bouve and DeLorme. Accordingly, the information
`presented shows a reasonable likelihood that Petitioner would prevail in
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`establishing that claims 13, 18, and 20 are obvious in view of Bouve and
`DeLorme.
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`C. Asserted Ground Based on Kim
`Petitioner contends claims 13–15, 17, and 20 are unpatentable under
`35 U.S.C. § 102(b) as anticipated by Kim. Pet. 26–37. Relying on the
`testimony of Dr. Burke, Petitioner explains how Kim allegedly discloses the
`subject matter of claims 13–15, 17, and 20. Id. (citing Ex. 1013).
`
`1. Kim (Ex. 1006)
`Kim is directed to a vehicle navigation system and method for
`determining a recommended route of travel that consumes the least amount
`of fuel. Ex. 1006, Abs. The disclosed system determines a current vehicle
`position using GPS satellites and routes between the current position and
`desired destination. Id. Based on altitude information associated with each
`of various alternative routes, the system determines a preferred route that
`consumes the least amount of fuel. Id. at 2:25–35.
`
`2. Analysis of Anticipation Challenge of
`Claims 13–15, 17, and 20
`Petitioner asserts that Kim discloses all of the limitations of
`independent claim 13 and dependent claims 14, 15, 17, and 20. Pet. 26–37.
`With respect to claim 13, Petitioner argues Kim discloses the recited
`preamble and “storing data associated with one or more routes available to
`be traversed by an individual” because Kim discloses “a memory for storing
`data representative of local area routes and altitude information for the
`routes, and a controller . . . for determining a current vehicle position and
`alternative routes from the current vehicle position to the destination” as
`well as selecting “a preferred path requiring the least amount of fuel
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`consumption.” Pet. 27–29 (quoting Ex. 1006, 2:12–14, 4:5–9, 4:38–42;
`citing Ex. 1003 ¶¶ 67, 69). Petitioner further maps portions of Kim,
`including Kim’s disclosure of an antenna to receive GPS signals and a
`controller that uses those signals to determine “a current vehicle position and
`alternative routes from the current vehicle position to the destination” to the
`recited steps of “receiving position data relating to a position of the
`individual” and “processing the position data . . . and recommending a route
`. . . based on the position data.” Id. at 29–31 (quoting Ex. 1006, 2:12–24);
`see id. (quoting Ex. 1006, Abs., 1:50–54, 3:22–32, 4:5–9; citing Ex. 1003
`¶¶ 71–73). Petitioner concedes that Kim determines the position of a vehicle
`rather than an individual. Id. at 30. Nevertheless, Petitioner contends Kim
`discloses receiving data relating to a position of the individual because Kim
`explains that an individual uses the system while traveling in the vehicle. Id.
`Petitioner points to the same disclosures in Kim already discussed
`with respect to claim 13 as meeting the additional limitations recited in
`dependent claims 14 and 17. Pet. 31–32, 34–36. Specifically, Petitioner
`argues Kim’s use of stored altitude information for various optional routes
`and determination of a route based on the use of that altitude information
`meets the additional limitation recited in claim 14 of “recommending a route
`for traversal by the individual based on the stored route data.” Id. at 31–32.
`Petitioner asserts Kim’s receipt of position information using GPS signals
`meets the additional limitation recited in claim 20 that “the position data is
`received with a global positioning satellite receiver.” Id. at 36–37. With
`respect to claim 15, Petitioner argues Kim’s use and storage of altitude
`information associated with intervals along the stored alternative routes
`discloses the recited limitation that “the stored route data comprises
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`elevation profile data.” Id. at 33–34. Regarding claim 17, Petitioner
`contends that Kim discloses using a “total altitude distance of travel” as part
`of its method for recommending a route of travel and that this disclosure
`meets the recited limitation that “the stored route data comprises a length of
`the route.” Id. at 34–35. Alternatively, Petitioner argues Kim inherently
`discloses “the stored route data comprises a length of the route” because the
`length of the route would be necessary to calculate the total fuel needed to
`traverse a route. Id. at 35–36.
`At this time, Patent Owner’s only substantive argument with respect
`to Petitioner’s challenge that claim 13 is anticipated by Kim is that Kim
`requires two points to provide a route recommendation, whereas claim 13
`provides a route recommendation based on a single location. Prelim. Resp.
`18–20. For the same reasons discussed above, we do not agree with Patent
`Owner’s proposed construction of claim 13; accordingly, we disagree with
`Patent Owner that Kim fails to disclose the recommending limitation.
`Regarding claim 17, we are not persuaded by Petitioner’s assertions.
`In particular, and taking Petitioner’s arguments in reverse order, Petitioner
`has not demonstrated sufficiently that “the stored route data comprises a
`length of the route” is inherently disclosed by Kim. Even if we assume that
`Kim’s calculation of the fuel needed to traverse a route uses a formula that
`requires a length of the route, it is not inherent that the length of the route is
`part of the stored route data. With respect to Kim’s explicit disclosure of a
`total altitude distance of travel, we are also unpersuaded by Petitioner’s
`contentions. Petitioner does not propose, let alone support, an express
`construction for “a length of the route” that would include Kim’s total
`altitude distance, which does not account for the actual distance driven by a
`
`16
`
`
`
`IPR2015-01532
`Patent 8,652,009 B2
`
`vehicle. Also, the plain and ordinary meaning of “a length of the route”
`does not include total altitude distance.
`After reviewing the Petition, the Preliminary Response, and the
`relevant evidence, we determine Petitioner has shown that Kim discloses the
`limitations recited in claims 13–15 and 20, but not the additional limitation
`recited in claim 17. Accordingly, the information presented shows a
`reasonable likelihood that Petitioner would prevail in establishing that
`claims 13–15 and 20 are anticipated by Kim. The information presented,
`however, does not show a reasonable likelihood that Petitioner would prevail
`in establishing that claim 17 is anticipated by Kim.
`
`III. CONCLUSION
`For the foregoing reasons, we determine that the information
`presented establishes a reasonable likelihood that Petitioner would prevail in
`showing that claims 13–15, 18, and 20 are unpatentable. At this preliminary
`stage, the Board has not made a final determination with respect to the
`patentability of the challenged claims or any underlying factual and legal
`issues.
`
`IV. ORDER
`
`Accordingly, it is:
`
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`
`review is instituted as to claims 13–15, 18, and 20 of the ’009 patent on the
`following grounds of unpatentability:
`
`A.
`Claims 13 and 14 under 35 U.S.C. § 102(b) as anticipated
`by Bouve;
`
`17
`
`
`
`IPR2015-01532
`Patent 8,652,009 B2
`
`Claims 13, 18, and 20 under 35 U.S.C. § 103(a) as
`B.
`
`obvious over Bouve and DeLorme; and
`
`C.
`Claims 13–15 and 20 under 35 U.S.C. § 102(b) as
`anticipated by Kim; and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial, which
`commences on the entry date of this decision.
`
`
`
`FOR PETITIONER:
`Brian E. Ferguson
`Anish R. Desai
`WEIL, GOTSHAL & MANGES LLP
`brian.ferguson@weil.com
`anish.desai@weil.com
`
`
`
`FOR PATENT OWNER:
`Mitchell G. Stockwell
`Wab P. Kadaba
`KILPATRICK TOWNSEND & STOCKTON LLP
`mstockwell@kilpatricktownsend.com
`wkadaba@kilpatricktownsend.com
`
`
`18
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