Trials@uspto.gov
`571-272-7822
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`Paper 15
`Entered: November 2, 2017
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`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 Request for Rehearing
`37 C.F.R. § 42.71
`
`

`

`IPR2017-00650
`Patent 7,742,850 B2
`
`I.
`
`INTRODUCTION
`
`On August 18, 2017, Petitioner filed a Request for Rehearing
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`(Paper 13, “Req. Reh’g”) of our Decision Denying Institution (Paper 12,
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`“Dec.”), which denied institution of inter partes review of claims 1–14 of
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`U.S. Patent No. 7,742,850 B2 (Ex. 1001, “the ’850 patent”).
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`For the reasons set forth below, the request for rehearing is denied.
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`II.
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`LEGAL STANDARD
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`Under the rules governing requests for rehearing on a decision
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`whether to institute a trial, the decision is reviewed for an abuse of
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`discretion. 37 C.F.R. § 42.71(c). “The burden of showing a decision should
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`be modified lies with the party challenging the decision.” 37 C.F.R.
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`§ 42.71(d). Further, “[t]he request must specifically identify all matters the
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`party believes the Board misapprehended or overlooked, and the place where
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`each matter was previously addressed in a motion, an opposition, or a reply.”
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`Id.
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`III. ANALYSIS
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`Petitioner argues that rehearing should be granted for five reasons.
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`We address each of the five arguments in turn.
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`First, Petitioner argues that we overlooked its evidence of a
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`motivation to combine and improperly limited the motivation to combine
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`analysis to the problem recited in the ’850 patent. Req. Reh’g 4–7. This
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`argument misapprehends the analysis in the Decision Denying Institution.
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`The Petition presented argument regarding motivation to combine Curtis and
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`Collins at pages 34–39. In its arguments regarding other asserted grounds,
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`the Petition refers back to this section for the motivation to combine Curtis
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`and Collins. See Pet. 63, 74, 78.
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`IPR2017-00650
`Patent 7,742,850 B2
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`In our Decision Denying Institution, we determined that Petitioner’s
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`“asserted motivations do not provide a sufficient reason supported by
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`rational underpinnings for combining the references in the claimed manner.”
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`Dec. 13. We considered, and found unpersuasive, Petitioner’s argument that
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`“[t]he similarity in architecture and capability would have motivated those
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`of skill in the art to consider Curtis with Collins.” See Pet. 35; Dec. 13. We
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`considered Petitioner’s arguments based on Rosencrance (see Pet. 35–37),
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`but we found those arguments unpersuasive as well. See Dec. 13–15. Next,
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`we considered Petitioner’s argument that combining certain elements of
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`Curtis with certain features of Collins would yield a system that has the
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`features of the claimed invention, but we found that argument also did not
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`provide a sufficient reason to combine. See Pet. 38–39; Dec. 16.
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`Addressing Petitioner’s final argument regarding motivation, we stated as
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`follows:
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`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 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
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`IPR2017-00650
`Patent 7,742,850 B2
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`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. 27 (Ex. 1006 ¶ 41).
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`Dec. 16–17.
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`As indicated in this summary, the Decision Denying Institution did
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`not overlook Petitioner’s arguments regarding motivation to combine, as
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`Petitioner contends in the Request for Rehearing. See Req. Reh’g 6.
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`Further, the Decision Denying Institution did not “limit[ the] motivation to
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`combine inquiry to the specific problem faced by the inventors of the
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`’850 Patent” nor did it “require Petitioner to find the particular problem of
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`the ’850 Patent recited in the prior art references,” as contended in the
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`Request for Rehearing. Id. at 6, 7. Rather, the Decision Denying Institution
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`pointed out that Petitioner’s final argument regarding motivation was
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`suggestive of hindsight because it began with the problem that the
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`’850 patent purported to solve and then considered whether the combined
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`references were capable of solving that problem. Id. at 16–17. Reliance on
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`the disclosure of the patent being challenged for an obviousness argument is
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`an indication of improper hindsight. “The inventor’s own path itself never
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`leads to a conclusion of obviousness; that is hindsight.” Otsuka Pharm. Co.
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`v. Sandoz, Inc., 678 F.3d 1280, 1296 (Fed. Cir. 2012).
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`Petitioner’s second argument for rehearing is that we overlooked the
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`declaration of Petitioner’s expert, Mr. Steven Ditmeyer. Id. at 7–9. We
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`disagree. We noted Petitioner’s reliance on Mr. Ditmeyer’s declaration in
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`discussing Petitioner’s asserted motivations. See Dec. 13, 16. And as
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`summarized above, we explained why the motivation arguments Petitioner
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`presented, including the arguments relying on Mr. Ditmeyer’s testimony for
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`IPR2017-00650
`Patent 7,742,850 B2
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`support, were unpersuasive in demonstrating a reason to combine the
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`references in the claimed manner. See id. at 12–17. That we found
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`Petitioner’s motivation arguments insufficient does not mean that we
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`overlooked or “cast[] aside [Mr. Ditmeyer’s] opinion as if it had not been
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`submitted at all,” as Petitioner contends. Req. Reh’g. 8.
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`Third, Petitioner contends that we overlooked evidence of motivation
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`to combine Curtis and Collins provided in Rosencrance. Id. at 9–12. In the
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`Petition, Petitioner argued that Rosencrance demonstrates that incorporating
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`GPS into train cars for tracking purposes was known, and that because
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`railcars can be separated from locomotives, it is better to incorporate
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`tracking technology on railcars. Pet. 35 (citing Ex. 1007, 24). Because
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`incorporating GPS into EOT units provides greater accuracy in EOT unit
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`monitoring, Petitioner contended that a motivation exists for combining
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`GPS messages between the EOT and HOT (as in Curtis) with monitoring
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`stations (as in Collins). Id. at 36 (citing Ex. 1002 ¶ 105). In our Decision
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`Denying Institution, we determined that Petitioner’s analysis did not
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`sufficiently explain why Rosencrance would have motivated one with
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`ordinary skill in the art to combine Curtis and Collins in the claimed manner:
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`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.
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`IPR2017-00650
`Patent 7,742,850 B2
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`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”).
`
`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.
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`Dec. 14–15.
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`In its Request for Rehearing, Petitioner argues that we “overlooked
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`the explicit disclosure of Rosencrance that AEI systems and GPS can, and
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`often do, coexist.” Req. Reh’g 10. In particular, Petitioner points to
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`IPR2017-00650
`Patent 7,742,850 B2
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`Rosencrance’s disclosure “that CSX, one of the Class-1 freight railroad
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`companies, ‘is using a combination of GPS and AEI tags and readers to
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`monitor its fleet, but plans to expand its use of the GPS in the future.’” Id.
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`(citing Ex. 1007, 24). The Petition’s motivation arguments do not rely on or
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`cite the disclosure in Rosencrance that is quoted in the Request for
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`Rehearing.
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`In any event, the disclosure Petitioner now points to does not describe
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`how CSX was “using a combination of GPS and AEI tags and readers to
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`monitor its fleet.” Ex. 1007, 24. Rosencrance indicates that AEI was not
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`available in all regions. See id. (quoting industry participant’s comments on
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`AEI that “[t]he problem is there are only so many readers out there and, and
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`short-line railroads, like our local railroad, don’t use [the system]. And not
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`even large railroads use [AEI technology] as much as they should.”). Id.
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`Rosencrance further describes that CSX “has equipped 300 locomotives with
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`a Global Positioning System (GPS) and will have 2,800 more online by
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`October.” Id. Thus, Rosencrance’s description that CSX was “using a
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`combination of GPS and AEI tags and readers to monitor its fleet” suggests
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`that a portion of its fleet used GPS and another portion of its fleet used AEI
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`tags and readers. Accordingly, even considering this disclosure in
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`Rosencrance that was not cited in the Petition’s motivation arguments, we
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`still do not find that Petitioner has shown a persuasive reason why an
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`ordinarily skilled artisan seeking to achieve enhanced accuracy via GPS
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`monitoring as taught in Rosencrance would employ wayside monitoring
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`stations as taught in Collins. Petitioner’s Request for Rehearing further
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`disputes our analysis of Petitioner’s Rosencrance-based motivation
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`arguments (Req. Reh’g 11–12), but these arguments do not persuade us that
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`IPR2017-00650
`Patent 7,742,850 B2
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`we misapprehended or overlooked any argument in the Petition based on
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`Rosencrance.
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`Fourth, Petitioner avers that we misapprehended the proposed
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`combination of Curtis and Collins because “the Petition describes using the
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`architecture of Collins (i.e., the ability to send information off the train), but
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`replacing its use of AEI tags with the GPS system used in Curtis.” Id. at 12.
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`This argument does not persuade us that our Decision Denying Institution
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`misapprehended Petitioner’s arguments. As already stated, the deficiency in
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`Petitioner’s obviousness argument was the absence of a sufficient reason
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`supported by rational underpinnings for combining the references in the
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`claimed manner. For the reasons stated in the Decision and reiterated above,
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`the Petition’s reliance on Rosencrance for the motivation was unpersuasive.
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`Fifth, and finally, Petitioner argues that new evidence, in the form of
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`deposition testimony from Mr. John Mix, one of the inventors of the
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`’850 patent, shows that the Board’s decision was in error. Id. at 13–15.
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`Petitioner asserts that we should consider this new evidence because
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`Mr. Mix was deposed in the parallel District Court case on July 18, 2017, the
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`day before the Board issued its Decision Denying Institution, such that
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`“Petitioner had no chance to properly present Mr. Mix’s testimony to the
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`Board before the Decision.” Req. Reh’g 14.1 Even considering the new
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`evidence, Petitioner does not identify why Mr. Mix’s testimony
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`1 The publicly available docket sheet for the parallel District Court case
`indicates Petitioner began serving discovery requests on July 22, 2016. See
`Ex. 3001, docket entry 21. Petitioner filed its Petition in this proceeding on
`January 12, 2017. See Paper 2, 1. If Petitioner had wished to present
`Mr. Mix’s testimony as part of its Petition, there is no apparent reason why
`they could not have deposed him earlier.
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`IPR2017-00650
`Patent 7,742,850 B2
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`demonstrates error in our Decision Denying Institution. Petitioner argues
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`that
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`Mr. Mix did not seem to place any value at all in the GPS
`functionality of the purported invention, but rather testified that
`what was new was “using a cell modem to communicate to the
`back office.” Ex. 1019, Mix Dep. Tr. at 39:8–11. But Mr. Mix
`then testified that he “knew about cell modems and their
`capability -- and [he] can determine their capabilities, and so it
`was relatively easy to -- to determine that it was feasible.” Id. at
`41:22–25 (emphasis added).
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`Req. Reh’g 14.
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`The ease with which Mr. Mix was able to determine the technical
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`feasibility of a certain modification is not probative on the issue of whether a
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`hypothetical person of ordinary skill in the art would have had a reason to
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`combine the references Petitioner relies on in the claimed manner. Thus,
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`Petitioner’s arguments concerning Mr. Mix’s testimony do not apprise us of
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`any error in our determination that Petitioner did not provide a sufficient
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`reason supported by rational underpinnings for combining the references in
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`the claimed manner.
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`IV. CONCLUSION
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`Petitioner has not carried its burden of demonstrating that the Board
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`misapprehended or overlooked any matters in the Decision Denying
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`Institution. 37 C.F.R. § 42.71(d). Accordingly, the Request is denied.
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`IPR2017-00650
`Patent 7,742,850 B2
`
`PETITIONER:
`
`Jason Engel
`Jason.engel.ptab@klgates.com
`
`Alan Barry
`Al.barry.ptab@klgates.com
`
`Benjamin Weed
`Benjamin.weed.ptab@klgates.com
`
`Erik Halverson
`Erik.halverson@klgates.com
`
`
`PATENT OWNER:
`
`Jeffrey Sanok
`jsanok@crowell.com
`
`Vincent Galluzzo
`vgalluzzo@crowell.com
`
`
`
`
`
`
`
`
`10
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