Trials@uspto.gov
`571-272-7822
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` Paper 12
` Entered: July 19, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WESTINGHOUSE AIR BRAKE TECHNOLOGIES CORPORATION,
`(d/b/a WABTEC CORPORATION)
`Petitioner,
`
`v.
`
`SIEMENS INDUSTRY, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00650
`Patent 7,742,850 B2
`____________
`
`
`Before KRISTEN L. DROESCH, MEREDITH C. PETRAVICK, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`GOODSON, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`571-272-7822
`
`
`
`
`
`
` Paper 12
` Entered: July 19, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WESTINGHOUSE AIR BRAKE TECHNOLOGIES CORPORATION,
`(d/b/a WABTEC CORPORATION)
`Petitioner,
`
`v.
`
`SIEMENS INDUSTRY, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00650
`Patent 7,742,850 B2
`____________
`
`
`Before KRISTEN L. DROESCH, MEREDITH C. PETRAVICK, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`GOODSON, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2017-00650
`Patent 7,742,850 B2
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`INTRODUCTION
`I.
`Petitioner filed a Petition (Paper 2, “Pet.”) requesting inter partes
`review of claims 1–14 of U.S. Patent No. 7,742,850 B2 (Ex. 1001, “the ’850
`patent”). Patent Owner filed a Preliminary Response to the Petition.
`Paper 10 (“Prelim. Resp.”). We have authority under 35 U.S.C. § 314,
`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.” We decide whether to
`institute an inter partes review on behalf of the Director. Upon
`consideration of the Petition and Patent Owner’s Preliminary Response, we
`do not institute an inter partes review of any claims of the ’850 patent.
`A. Related Matters
`The parties report that Patent Owner is asserting the ’850 patent
`against Petitioner in Siemens Industry, Inc. v. Westinghouse Air Brake Tech.
`Corp., Case No. 1-16-cv-00284 in the U.S. District Court for the District of
`Delaware. Pet. 13; Paper 4, 2; Paper 6, 1. In addition, the parties identify
`one Board proceeding as a related matter: Case IPR2017-00582, which
`concerns U.S. Patent No. 7,467,032. Paper 4, 2; Paper 6, 1.
`B. The ’850 Patent
`The ’850 patent relates to a “method for keeping track of end of train
`units.” Ex. 1001, 1:16–18. According to the Background of the ’850 patent,
`“end of train (EOT) units are typically attached at the rear of the last car on a
`train” and can perform various functions, including monitoring pressure in
`the air brake pipe and transmitting that information to the head of the train
`(HOT). Id. at 1:20–25. EOT units can also accept a command from the
`HOT to open the air brake pipe, thereby activating the brakes to stop the
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`train. Id. at 1:26–28. EOT units can include motion detectors or GPS
`receivers that are used to provide motion or location information to the
`HOT. Id. at 1:29–34.
`“[I]t is often necessary to install and remove EOT units from
`individual cars in a train yard,” such as when the train’s cars are shuffled or
`reformed. Id. at 1:47–50. EOT units that are removed are often placed by
`the wayside for later collection, and then become lost or temporarily
`misplaced. Id. at 1:51–54. Lost EOT units cause expense beyond the cost of
`the EOT unit itself because “rent must be paid for the time when an EOT
`unit from one railroad is in another railroad’s territory.” Id. at 1:54–59.
`The ’850 patent seeks to address this problem by providing an EOT
`unit “that includes a positioning system such as a GPS receiver and that is
`configured to transmit a message including the EOT unit’s location” when
`various conditions occur, such as a loss of air pipe pressure or in response to
`a query from a device located off the train. Id. at 1:65–2:4. A transceiver in
`the EOT unit is capable of two-way communications with the HOT relating
`to various on-train functions, and can also transmit a message including
`location information to an EOT monitoring station located off the train. Id.
`at 2:4–6, 4:45–63.
`
`C. Challenged Claims
`Petitioner challenges claims 1–14. Claims 1 and 8 are independent
`claims. Claim 1 is reproduced below, with bracketed labels as added by
`Petitioner to facilitate reference to particular elements:
`1. A method for end of train unit operation comprising the steps
`of:
`[a] transmitting a first wireless message from an end of train unit-
`to an end of train unit-monitoring station located off of any
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`train, the first wireless message including a location of the
`end of train unit and an identifier that uniquely identifies
`the end of train unit, the end of train unit including an end
`of train marker light and a pressure sensor configured to
`determine air pressure in an air brake pipe;
`[b] receiving the first message including the location of the end
`of train unit at the end of train unit monitoring station;
`[c] transmitting the location of the train the end of train unit from
`the end of train unit monitoring station to a central
`authority;
`[d] transmitting the location of the end of train unit from the
`central authority to fourth device:
`[e] receiving the location of the end of train unit at the fourth
`device and displaying a location of the end of train unit on
`a map image on a display connected to the fourth device;
`and
`[f] transmitting a second wireless message to a fifth device
`located at the head of the train, the second wireless
`message including an air pressure sensed by the pressure
`sensor.
`Ex. 1001, 10:10–34; see also Pet. 18–19 (adding bracketed labels).
`D. Alleged Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`
`Reference
`
`Basis Claims Challenged
`
`Curtis1 in view of Collins2 and Doner3
`
`§ 103 1–3, 6–12, and 14
`
`Curtis in view of Collins, Doner, and Mays4 § 103 1–3, 6–12, and 14
`
`
`1 U.S. Patent No. 6,081,769, June 27, 2000, Ex. 1005.
`2 U.S. Patent App. Pub. No. 2002/0004693 A1, Jan. 10, 2002, Ex. 1006.
`3 U.S. Patent App. Pub. No. 2001/0044695 A1, Nov. 22, 2001, Ex. 1018.
`4 U.S. Patent App. Pub. No. 2002/0049520 A1, Apr. 25, 2002, Ex. 1008.
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`Curtis in view of Collins, Doner, Mays, and
`Bezos5
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`§ 103 4, 5, and 13
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`Curtis in view of Collins, Doner, and Bezos § 103 4, 5, and 13
`
`See Pet. 18. In addition to the references listed above, Petitioner relies on
`the declaration of Steven R. Ditmeyer (Ex. 1002).
`II. ANALYSIS
`A. Claim Construction
`We interpret the claims of an unexpired patent using the broadest
`reasonable interpretation in light of the specification of the patent. 37 C.F.R.
`§ 42.100(b); Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144–46
`(2016). Under that standard, a claim term generally is given its ordinary and
`customary meaning, as would be understood by one of ordinary skill in the
`art in the context of the entire disclosure. See In re Translogic Tech., Inc.,
`504 F.3d 1249, 1257 (Fed. Cir. 2007). For the purposes of this decision,
`resolution of the disputed issues does not require an express interpretation of
`any claim term. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in
`controversy, and only to the extent necessary to resolve the controversy.”).
`B. Obviousness Ground Based on Curtis in view of Collins and Doner
`1. Summary of Curtis
`Curtis describes a method and apparatus for determining the length of
`a train. Ex. 1005, at (54), (57), 1:8–9. Curtis explains that safe operation of
`a train requires knowledge of its length so that an operator can assess
`
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`5 U.S. Patent No. 5,267,473, Dec. 7, 1993, Ex. 1009.
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`whether the train has cleared a point on the track. Id. at 1:10–14. Figure 1
`of Curtis is reproduced below:
`
`
`Figure 1 depicts train 100 having a system for determining the length of the
`train. Id. at 2:62–64. First receiver 104 on end car 102 receives a signal
`from satellite 114 operating as part of a Global Positioning System. Id. at
`2:67–3:5, 3:35–40. Based on that signal, a geo-referenced end-of-train
`position for end of train 106 is determined. Id. at 3:3–5. Second receiver
`110 on front locomotive 108 also receives a signal from the GPS and
`determines a geo-referenced front-of-train position for the front of the train
`112. Id. at 3:5–10. First receiver 104 communicates the first position to a
`processor via second receiver 110, and the processor calculates the length of
`train 100 based on the first and second positions. Id. at 3:10–17.
`2. Summary of Collins
`Collins relates to monitoring the radio transmissions of End of Train
`devices and Head of Train devices and tracking the locations of such
`devices. Ex. 1006 ¶ 3. Collins explains that radio transceivers in HOT and
`EOT devices transmit operational messages to each other for testing,
`“control of the EOT device by the HOT device, and the transmission of
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`status information from the EOT device to the HOT.” Id. ¶ 8. Collins
`further describes that “when a train carrying the EOT device of one
`company reaches a destination within the rail network of another company,
`the EOT device is removed and replaced by an EOT belonging to the
`company of the network being traversed.” Id. ¶ 12.
`These practices lead to frequent loaning or renting of EOT devices
`among different railroad companies, but the rental fees become substantial
`“when an EOT device becomes ‘lost’ or cannot readily be returned to its
`owner.” Id. “Accordingly, it would be beneficial to have a system that
`could locate EOT devices and automatically provide a message including
`return instructions . . . to railway personnel at each successive stop made by
`the EOT bearing train.” Id. Figure 4 of Collins is reproduced below:
`
`
`
`Figure 4 is a schematic view of an apparatus for tracking EOT device 204
`entering from a foreign system and providing return instructions to railway
`personnel. Id. ¶ 29. Wayside monitoring unit 1 proximate railroad tracks
`202 monitors radio transmissions 210 between EOT device 204 and HOT
`device 206 of train 208. Id. ¶ 58. Transmissions 210 include unique
`identifying information for EOT device 204, which wayside monitoring unit
`1 receives and transmits via communication link 14 to central unit 16 along
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`with location information for wayside monitoring station 1. Id. “Central
`unit 16 then cross references the wayside location information and the EOT
`identification code with available EOT device ownership lists and train
`schedules.” Id. Based on that information, central unit 16 generates a
`message containing return instructions for EOT device 204 and transmits
`that message to user interface 220 for railway personnel at scheduled stop
`222 of train 208. Id.
`3. Summary of Doner
`Doner is entitled “Methods and Apparatus for Locomotive Tracking.”
`Ex. 1018, at [54]. Doner describes that tracking systems in the prior art may
`leave the location of locomotives unknown for long periods of time. Id. ¶ 3.
`Wayside automatic equipment identification employed by some railroads
`provide minimal position data and are expensive. Doner seeks to address the
`need for cost-effective tracking of locomotives. Id. Relevant to Petitioner’s
`challenge, Doner describes a data center that can permit access via the
`internet to data related to a locomotive’s location. Id. ¶ 45. “[T]he data may
`be used to geographically display location of a locomotive on a map.” Id.
`4. Summary of Rosencrance
`Rosencrance6 is a news article describing the use of GPS technology
`in the railroad industry. Rosencrance reports that railroad companies are
`“experimenting with satellite-based monitoring systems.” Ex. 1007, 24.
`
`6 Linda Rosencrance, Railroads Hot for Satellite Monitoring,
`COMPUTERWORLD, Apr. 3, 2000, at 24, Ex. 1007. Although Petitioner’s
`heading for this ground does not include Rosencrance as an asserted
`reference, Petitioner argues in support of this ground that Rosencrance
`provides a motivation to combine Curtis and Collins. See Pet. 35–37. Thus,
`we summarize Rosencrance here to facilitate understanding of Petitioner’s
`arguments in this ground.
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`One such system uses monitoring sensors placed on freight cars “to detect
`potentially damaging events such as theft or break-ins.” Id. Rosencrance
`explains that “[t]he system sends the information via satellite to the railroad
`operating manager, private car owner or shipper. The satellite link provides
`interactive communication, allowing the owner or operator of a railcar to ask
`about location, load status and performance via the Internet or [the] internal
`systems [of the rail company employing the system].” Id. However,
`according to Rosencrance, “critics abound.” Id. Some in the industry “say
`GPS is unnecessary and a waste of money because the industry already uses
`the land-based Automatic Equipment Identification (AEI) system to monitor
`the whereabouts of equipment.” Id. In the AEI system, “railcars and
`locomotives have tags that send information to the railroads as the tags pass
`AEI readers, which are usually placed at major intersections.” Id.
`5. Discussion
`Petitioner argues that the subject matter of claim 1 would have been
`obvious over Curtis in view of Collins and Doner. See Pet. 34–50.
`Petitioner asserts that the combination of Curtis and Collins discloses step
`[a]. Id. at 41–43. Specifically, Petitioner asserts that Curtis teaches an EOT
`unit that transmits GPS position information to the HOT. Id. at 41–42. In
`Petitioner’s proposed combination, Collins’s wayside monitoring unit 1
`monitors communications from the EOT that include the content of outgoing
`messages from Curtis’s EOT unit. Id. at 43. Further, Petitioner asserts that
`Collins teaches that the EOT has a unique identification number that is used
`for communications with it. Id. Petitioner asserts that Curtis’s EOT unit
`includes a marker light and pressure sensor, features that EOT units have
`long included. Id. at 42. Thus, Petitioner argues that the proposed
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`combination discloses all of the features of step [a].
`Regarding step [b], Petitioner argues that Collins’s wayside
`monitoring unit 1 corresponds to the claimed “end of train monitoring
`station.” Id. at 43–44. Petitioner contends that “when the wayside unit 1 of
`Collins monitors communications from the EOT that include the content of
`the outgoing messages of Curtis, the combination discloses this claim
`limitation.” Id. at 44. Similarly, Petitioner asserts that when Collins’s
`monitoring unit 1 monitors communications that include the content of
`Curtis’s outgoing messages, the combination would satisfy step [c] when
`that information is transmitted from wayside monitoring unit 1 to central
`unit 16 and would satisfy step [d] when that information is transmitted from
`central unit 16 to user interface 220. Id. at 44–46. Petitioner relies on Doner
`as teaching displaying a location on a map image as recited in step [e]. Id. at
`48. Petitioner asserts that both Curtis and Collins teach transmitting a
`message to the HOT that includes air pressure, as recited in step [f]. Id. at
`49–50.
`Petitioner further argues that a skilled artisan would have been
`motivated to combine Curtis, Collins, and Doner. See id. at 34–40.
`Specifically, Petitioner argues that the similarities in architecture and
`capability would have motivated those of skill in the art to consider Curtis
`with Collins. Id. at 35. Petitioner also argues that Rosencrance evidences a
`motivation in the industry to combine Curtis and Collins. Id. at 35–37.
`According to Petitioner, a motivation exists when there is a known need with
`an obvious solution, and it was known that a need existed to track EOT
`units, both to maintain control and to know where the last car of a train is
`located. Id. at 39. Concerning Doner, Petitioner argues that “combining
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`Doner’s disclosure of displaying a map with Collins and Curtis merely
`reflects the specific disclosure of a functionality that a POSA would have
`known would have been present in the combined system.” Id. at 40.
`Patent Owner challenges Petitioner’s arguments concerning a
`motivation to combine. Prelim. Resp. 24–27. Concerning similarity in
`architecture, Patent Owner argues that “the only similarity is that both
`involve transmitting information from an EOT unit to an HOT unit on a
`train.” Id. at 25. Regarding Rosencrance, Patent Owner avers that Curtis
`already includes GPS, so “Rosencrance would not have led a person of skill
`in the art to look to other references, let alone to Collins, which does not use
`GPS positioning at all.” Id. at 27.
`Apart from attacking Petitioner’s motivation arguments, Patent Owner
`also contends that:
`the asserted combination does not result in an EOT unit that is
`configured to both: (i) ‘transmit[] a first wireless message from
`an end of train unit-to an end of train unit-monitoring station
`located off of any train, the first wireless message including a
`location of the end of train unit,’ and (ii) ‘transmit[] a second
`wireless message to a fifth device located at the head of the train,
`the second wireless message including an air pressure,’ as claim
`1 expressly requires.
`Id. at 28. In Collins, wayside monitoring station 1 eavesdrops on
`communications between EOT and HOT. Id. at 29 (citing Ex. 1006 ¶ 58). In
`Patent Owner’s view, this is different than the method of claim 1, which
`“does not recite a single transmission by an EOT unit that is received by two
`different recipients. Rather, it recites two distinct transmissions by the EOT
`unit: one to the HOT unit on the train, and a second one to the EOT unit
`monitoring station located off the train.” Id. at 28–29. In addition, Patent
`Owner argues that
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`[s]ince the monitoring station of Collins is reliant upon the ability
`to intercept transmissions from an EOT unit to an HOT unit,
`when there are no such transmissions to intercept – such as when
`an EOT unit has been removed from a train, and thus is not
`communicatively linked with an HOT unit – Collins has no
`ability to locate the EOT unit.
`Id. at 30 (citing Ex. 1006 ¶ 41, Fig. 3).
`We agree with Patent Owner that Petitioner has not shown a sufficient
`reason why an ordinarily skilled artisan would combine the references in the
`manner recited in claim 1. An obviousness analysis based on a combination
`of references must be supported by a reason to combine that is based on
`rational underpinnings. See In re Nuvasive, Inc., 842 F.3d 1376, 1382 (Fed.
`Cir. 2016); In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with
`approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)).
`The requirement of a reason to combine is a safeguard against
`hindsight bias, which is characterized by the “temptation to read into the
`prior art the teachings of the invention in issue.” KSR, 550 U.S. at 421
`(quoting Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 36 (1966));
`Translogic, 504 F.3d at 1260 (“[A]s the Supreme Court suggests, a flexible
`approach to the TSM test prevents hindsight and focuses on evidence before
`the time of invention, without unduly constraining the breadth of knowledge
`available to one of ordinary skill in the art during the obviousness analysis.”)
`(internal citation omitted); see also InTouch Technologies, Inc. v. VGO
`Commc’ns, Inc., 751 F.3d 1327, 1351 (Fed. Cir. 2014) (finding that
`testimony did not articulate reasons to combine and improperly used the
`challenged patent as a roadmap); ActiveVideo Networks, Inc. v. Verizon
`Commc’ns, Inc., 694 F.3d 1312, 1327 (Fed. Cir. 2012) (“[T]he expert’s
`testimony on obviousness was essentially a conclusory statement that a
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`person of ordinary skill in the art would have known, based on the ‘modular’
`nature of the claimed components, how to combine any of a number of
`references to achieve the claimed inventions. This is not sufficient and is
`fraught with hindsight bias.”).
`Here, Petitioner’s obviousness case against claim 1 appears to be
`based on improper hindsight reasoning because the asserted motivations do
`not provide a sufficient reason supported by rational underpinnings for
`combining the references in the claimed manner. Petitioner’s argument
`regarding the similarity of architecture and capabilities in Curtis and Collins
`(Pet. 35) is unpersuasive because Petitioner does not explain what
`similarities would have provided a reason to combine those references in the
`claimed manner. We note that the question of whether prior art references
`qualify as analogous art is a separate issue from whether there is a
`motivation to combine those references. See Wyers v. Master Lock Co., 616
`F.3d 1231, 1237–39 (Fed. Cir. 2010). Petitioner’s asserted similarities
`between Curtis and Collins go to the analogous art issue but do not establish
`a reason to combine the references as claimed.
`Petitioner’s motivation argument based on Rosencrance is also
`unpersuasive. According to Petitioner, Rosencrance demonstrates that
`incorporating GPS into train cars for tracking purposes was known, and that
`because railcars can be separated from locomotives, it is better to
`incorporate tracking technology on railcars. Pet. 35 (citing Ex. 1007, 24).
`Because incorporating GPS into EOT units provides greater accuracy in
`EOT unit monitoring, Petitioner contends that a motivation exists for
`combining GPS messages between the EOT and HOT (as in Curtis) with
`monitoring stations (as in Collins). Id. at 36 (citing Ex. 1002 ¶ 105). Yet
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`Petitioner’s analysis does not explain why Rosencrance would motivate
`combining Curtis and Collins in the claimed manner.
`Rosencrance describes that GPS systems being developed for
`monitoring railcars were viewed as alternative, competing technologies to
`existing AEI systems in which tags on railcars and locomotives send
`information to AEI readers placed at major railroad intersections. See Ex.
`1007, 24. Collins’s network connecting wayside monitoring unit 1 and
`central station 16 appears to be an example of an AEI system such as
`Rosencrance refers to insofar as it is a land-based network in which wayside
`monitoring unit 1 is positioned proximate to railroad tracks, preferably
`“along a heavily traveled corridor to detect signals emitted by EOT 204
`passing nearby.” Ex. 1006 ¶¶ 58–59, Fig. 4.
`Rosencrance notes that some railroad industry analysts “say GPS is
`unnecessary and a waste of money because the industry already uses the
`land-based Automatic Equipment Identification (AEI) system to monitor the
`whereabouts of equipment.” Id.; see also id. (reporting the comments of
`another analyst that GPS is good technology in theory but it is not
`financially viable because railroads are already accomplishing what they
`want to accomplish by using AEI technology). Rather than suggesting that
`GPS could be combined with or incorporated into the land-based systems,
`Rosencrance indicates that “GPS may one day replace AEI.” Id.; see also
`id. (quoting industry critic of GPS as stating, “[w]hile GPS is a good idea,
`. . . [t]he railroads would have to be presented with a strong business plan if
`they [are to be convinced to replace the AEI] system that is only 10 years
`old”).
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`Petitioner does not point to, and we do not find, any indication in
`Rosencrance that some elements of a GPS system could or should be
`incorporated into systems having a wayside monitoring unit such as Collins
`teaches. Instead, Rosencrance describes GPS and AEI as two alternative
`technologies, each having its own advantages and disadvantages. While one
`of the advantages Rosencrance describes for a satellite-based GPS system is
`its accuracy or its potential to provide greater accuracy in the future, there is
`no apparent reason why a skilled artisan reviewing Rosencrance interested in
`enhanced accuracy would combine some features of a GPS system with
`other features of a land-based monitoring systems, as Petitioner proposes.
`Instead, Rosencrance teaches that greater accuracy can be achieved, albeit at
`significant expense, by employing GPS technology in lieu of existing land-
`based AEI technology. Stated differently, Petitioner does not provide any
`persuasive reason why an ordinarily skilled artisan seeking to achieve
`enhanced accuracy via GPS monitoring as taught in Rosencrance would
`employ wayside monitoring stations as taught in Collins.
`Thus, Petitioner does not articulate a reason why a skilled artisan
`reviewing Curtis, Collins, and Rosencrance would have sought to combine
`the various teachings of those references in the manner Petitioner proposes.
`In our view, Petitioner’s analysis improperly selects features from the
`references to arrive at the claimed configuration based on hindsight, without
`considering the teachings of the references as a whole. See In re Hedges,
`783 F.2d 1038, 1041 (Fed. Cir. 1986) (“It is impermissible within the
`framework of section 103 to pick and choose from any one reference only so
`much of it as will support a given position, to the exclusion of other parts
`necessary to the full appreciation of what such reference fairly suggests to
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`one of ordinary skill in the art.”); In re Mercier, 515 F.2d 1161, 1166
`(CCPA 1975) (reversing an obviousness rejection that improperly “rel[ied]
`on isolated teachings of the prior art without considering the over-all context
`within which those teachings are presented”).
`Petitioner’s remaining arguments concerning motivation to combine
`are also unpersuasive. Petitioner argues that
`[b]y combining the known transmission of a message including
`the location of an EOT device from the EOT device to a HOT
`device, as disclosed by Curtis, with the known monitoring of
`transmissions between end of train units and head of train units,
`as disclosed by Collins, a person of skill in the art would have
`recognized that the art teaches a single system that includes an
`EOT monitoring station for monitoring the transmission of a
`location message sent from an EOT, where the EOT monitoring
`station routes the information to a central authority.
`Pet. 38–39. This amounts to an argument that the individual elements of the
`claim were known and that combining them would have yielded the claimed
`invention, but Petitioner does not explain why an ordinarily skilled artisan
`would have combined those elements in the claimed manner. See KSR, 550
`U.S. at 418 (“[A] patent composed of several elements is not proved obvious
`merely by demonstrating that each of its elements was, independently,
`known in the prior art.”).
`Finally, Petitioner argues that “[i]t was known that a need existed to
`track EOT units, and to know where the last car of a train is located. The
`combined disclosure of Curtis and Collins teach a system that is capable of
`solving the problem addressed in the ’850 Patent.” Pet. 39 (citing Ex. 1002
`¶ 107). Petitioner’s analysis suggests improper hindsight because it begins
`with the problem addressed in the ’850 patent and considers whether the
`combined references are capable of solving that problem. Yet “an invention
`
`
`
`
`16
`
`
`
`IPR2017-00650
`Patent 7,742,850 B2
`
`can often be the recognition of a problem itself.” Leo Pharmaceutical
`Prods., Ltd. v. Rea, 726 F.3d 1346, 1353 (Fed. Cir. 2013) (citing Cardiac
`Pacemakers, Inc. v. St. Jude Med., Inc., 381 F.3d 1371, 1377 (Fed. Cir.
`2004)). Here, as summarized above, the problem addressed by the ’850
`patent is locating EOT units that have been removed from cars and left on
`the wayside for later collection. See Ex. 1001, 1:43–56. Petitioner does not
`point to, and we do not find, any recognition in the cited references of this
`particular problem. Further, Patent Owner argues, plausibly, that the
`proposed combination could not solve this problem because Collins’s
`wayside monitoring station eavesdrops on communications between EOT
`and HOT, such that the monitoring station would be unable to locate an EOT
`unit that is not communicatively linked with an HOT. Prelim. Resp. 30 (Ex.
`1006 ¶ 41).
`Because Petitioner has not articulated a sufficient reason to combine
`supported by rational underpinnings, Petitioner has not shown a reasonable
`likelihood of prevailing in showing that claim 1 would have been obvious
`over Curtis in view of Collins and Doner. Petitioner’s challenge to claim 8
`relies on the same motivation to combine arguments as just discussed. See
`Pet. 34 (presenting the motivation to combine arguments as applicable to all
`claims challenged in this ground). Thus, Petitioner also has not shown a
`reasonable likelihood of prevailing in its challenge to claim 8. Petitioner
`also has not shown a reasonable likelihood of prevailing in its obviousness
`challenge of any of claims 2, 3, 6, 9–12, and 14, each of which depends from
`claim 1 or 8. See In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992)
`(“[D]ependent claims are nonobvious if the independent claims from which
`they depend are nonobvious.”).
`
`
`
`
`17
`
`
`
`IPR2017-00650
`Patent 7,742,850 B2
`
`
`C. Obviousness Ground Based on Curtis in view of Collins, Doner, and
`Mays
`
`1. Summary of Mays
`Mays describes that railways have not taken full advantage of real-
`time communications technologies. Ex. 1008 ¶ 5. Mays seeks to realize the
`benefits of real-time tracking of equipment and inventory and fill a need for
`“real-time data collection and reporting for interconnected mobile systems,
`such as railways.” Id. Figure 1 of Mays is reproduced below:
`
`
`Figure 1 is schematic diagram depicting wireless railway data collection and
`communications system 10, which collects data from railway vehicles 12 of
`train 14. Id. ¶¶ 8, 14. Railway data collection and communications system
`10 includes intra-train communication system 26 and external
`communication system 28, which interface with one another via master
`control unit 30. Id. ¶ 15.
`
`
`
`
`18
`
`
`
`IPR2017-00650
`Patent 7,742,850 B2
`
`
`Intra-train communication system 26 includes master control unit 30
`on locomotive 16 and data transmission units 32 on railway vehicles 12. Id.
`¶¶ 16–17. “[E]ach of the data transmission units 32 communicate with a
`data transmission unit 32 carried by the adjacent railway vehicle.” Id. ¶ 16.
`Mays teaches that this “daisy-chain communications path” is low cost and
`provides efficient routing of data, considerations that are important for a
`railway communications system. Id.
`“[M]aster control unit 30 serves as . . . the interface between the intra-
`train communications system 26 and the outside world.” Id. ¶ 19. Master
`control unit may use existing communications infrastructure, such as a way
`side communication link, a 2-way radio interface, a satellite link, or a
`cellular telephone interface. Id.
`2. Discussion
`Petitioner contends that claims 1–3, 6–12, and 14 would have been
`obvious over Curtis in view of Collins, Doner, and Mays. See Pet. 63–73.
`Petitioner explains that this ground is offered to account for the possibility
`that Patent Owner
`may attempt to construe the “EOT unit monitoring station”
`broadly enough to include existing cellular infrastructure such as
`a cellphone
`tower
`that
`is not specific
`to a
`railway
`communications network. To the extent the claim limitations of
`independent claims 1 and 8, and dependent claims 2-3, 6-7, 9-12
`and 14 are satisfied by transmitting messages from the EOT
`device to a cellular tower (i.e., a device not specifically designed
`for railroad communications tasks) and then further to a central
`station, Mays clarifies that one mechanism for transmitting
`messages from the train to the central station involves the use of
`already-implemented cellular communications infrastructure
`equipment.
`
`
`
`
`19
`
`
`
`IPR2017-00650
`Patent 7,742,850 B2
`
`Id. at 63. Petitioner’s challenge in this ground again refers back to the same
`motivation arguments discussed above for combining Curtis and Collins.
`See id. at
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