UNITED STATES PATENT AND TRADEMARK OFFICE
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`PATENT TRIAL AND APPEAL BOARD
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`WESTINGHOUSE AIR BRAKE TECHNOLOGIES CORPORATION
`Petitioner
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`v.
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`SIEMENS INDUSTRY, INC.
`Patent Owner
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`_____________________
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`
`CASE: IPR2017-01270
`U.S. PATENT NO. 7,236,860
`______________________
`
`PETITION FOR INTER PARTES REVIEW
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`
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`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`IPR2017-01270
`U.S. Patent No. 7,236,860
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`Table of Contents
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`Page
`Mandatory Notices (37 C.F.R. § 42.8(b)) ................................................................ vi
`A. Real Parties-In-Interest (37 C.F.R. § 42.8(b)(1)) ......................................... vi
`B. Related Matters (37 C.F.R. § 42.8(b)(2)) .................................................... vi
`C. Lead and Backup Counsel and Service (37 C.F.R. § 42.8(b)(3)-(4)) ......... vii
`INTRODUCTION ............................................................................................. 1
`I.
`II. TECHNOLOGY OF THE ‘860 PATENT ........................................................ 1
`A. Overview of PTC and Grade Crossings ......................................................... 1
`B.
`‘860 Patent Overview .................................................................................... 5
`C. Prosecution History of the ‘860 Patent .......................................................... 5
`III.
`GROUNDS FOR STANDING (37 C.F.R. § 42.104(A)) .............................. 6
`IV.
`PAYMENT OF FEES (37 C.F.R. §§ 42.15 AND 42.103) ............................ 7
`V. PERSON OF ORDINARY SKILL IN THE ART ............................................ 7
`VI.
`CLAIM CONSTRUCTION ........................................................................... 7
`A. Configurable Device ...................................................................................... 8
`B. Transmitting…to a configurable device ........................................................ 9
`VII.
`STATEMENT OF THE PRECISE RELIEF REQUESTED AND THE
`REASONS THEREFORE (37 C.F.R. § 42.22(a) AND 42.104(b)) ........................ 10
`A. Statement Regarding Non-Redundancy ....................................................... 11
`B. Overview of the Prior Art ............................................................................ 12
`1. Petit .......................................................................................................... 12
`2. Blesener .................................................................................................... 15
`3. RSAC ....................................................................................................... 18
`C. Ground 1: Challenged Claims are Unpatentable Under 35 U.S.C. § 103(a)
`as Obvious Over Petit and Blesener. ................................................................... 24
`1. Motivation to Combine ............................................................................ 25
`2. The Challenged Claims are Obvious ....................................................... 31
`a.
`Independent Claim 1 ............................................................................ 31
`b. Dependent Claims 3, 5, 7 and 10 ......................................................... 41
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`IPR2017-01270
`U.S. Patent No. 7,236,860
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`
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`c.
`Independent Claim 15 .......................................................................... 45
`d. Dependent Claims 16, 18, 20, 25 ......................................................... 47
`D. Ground 2: Challenged Claims are Unpatentable Under 35 U.S.C. § 103(a)
`as Obvious Over RSAC and Blesener. ................................................................. 48
`1. Motivation to Combine ............................................................................ 48
`2. The Challenged Claims are Obvious ....................................................... 52
`a.
`Independent Claim 1 ............................................................................ 52
`b. Dependent Claims 3, 5, 7 and 10 ......................................................... 59
`c.
`Independent Claim 15 .......................................................................... 61
`d. Dependent Claims 16, 18, 20, 25 ......................................................... 63
`E. Ground 3: Challenged Claims are Unpatentable Under 35 U.S.C. § 103(a)
`as Obvious Over RSAC, Petit and Blesener. ........................................................ 64
`1. Motivation to Combine ............................................................................ 65
`2. Challenged Claims ................................................................................... 66
`VIII. CONCLUSION ............................................................................................ 67
`CLAIM APPENDIX OF THE CHALLENGED CLAIMS ..................................... 68
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`ii
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`
`List of Exhibits
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`IPR2017-01270
`U.S. Patent No. 7,236,860
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`Ex. 1001 U.S. Patent No. 7,236,860 (the “‘860 Patent”), filed November 18,
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`2005, issued June 26, 2007.
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`Ex. 1002 Declaration of Steven R. Ditmeyer.
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`Ex. 1003 Curriculum vitae of Steven R. Ditmeyer.
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`Ex. 1004: Prosecution History of the ‘860 Patent.
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`Ex. 1005: Report of the Railroad Safety Advisory Committee to the Federal
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`Railroad Administrator, Implementation of Positive Train Control
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`Systems (August 1999) (“RSAC”).
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`Ex. 1006: Prosecution History of U.S. Patent No. 6,996,461 (the “‘461 Patent”).
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`Ex. 1007: PCT Publication No. WO 02/091013 to Blesener et al. (“Blesener”).
`
`Ex. 1008: U.S. Patent No. 5,092,544 to Petit et al. (“Petit”).
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`Ex. 1009: Federal Railroad Administration, Railroad Communications and Train
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`Control Report to Congress (July 1994) (“FRA report”).
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`Ex. 1010: ARES Operators Manual, Rockwell Int’l, Operators Manual for
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`Advanced R.R. Elecs. Sys. For Burlington Northern R.R., (June 1,
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`1987).
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`Ex. 1011: Pulse Electronics Prepares for Move to German Town, June 11, 1997
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`Ex. 1012: Safety Analysis of ARES, William W. Weinstein et al. (October
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`1987).
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`iii
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`Ex. 1013: U.S. Patent No. 7,769,544 to Blesener et al.
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`IPR2017-01270
`U.S. Patent No. 7,236,860
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`Ex. 1014: U.S. Provisional Patent Application No. 60/289,320 to Blesener et al.
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`Ex. 1015: Affidavit of Christopher Butler of Archive.org, February 24, 2017,
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`http://web.archive.org/web/20010717113545/http://rsac.fra.dot.gov/m
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`eetings/ptc_report.htm.
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`Ex. 1016: Letter to Al Gore, President of the Senate, from Jolene Molitoris,
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`Administrator of Federal Railroad Administration, regarding the
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`RSAC Report, May 17, 2000 and coversheet of the RSAC Report
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`forwarded therewith.
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`Ex. 1017: Report of the Railroad Safety Advisory Committee to the Federal
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`Railroad Administrator, Implementation of Positive Train Control
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`Systems (September 8, 1999), FRA Research & Development Library.
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`Ex. 1018: Railroad Safety Advisory Committee (RSAC) Meeting Minutes,
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`September 8, 1999.
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`Ex. 1019: Letter to RSAC PTC Working Group Members and Alternates from
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`Grady Cothen, and Attached Report of the Railroad Safety Advisory
`
`Committee to the Federal Railroad Administrator, Implementation of
`
`Positive Train Control Systems (July 1999), Illinois Dept. of
`
`Transportation.
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`Ex. 1020:
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`Journal of the Senate, May 22, 2000.
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`iv
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`146 Cong. Rec. H5167 (daily ed. June 26, 2000) (8362).
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`IPR2017-01270
`U.S. Patent No. 7,236,860
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`
`Ex. 1021:
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`Ex. 1022:
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`66 Fed. Reg. 42354 (Aug. 10, 2001) (proposed rules).
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`Ex. 1023: Railroad Safety: Hearing Before the Subcommittee on Surface
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`Transportation and Merchant Marine of the Committee on Commerce,
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`Science, and Transportation United States Senate 107th Cong. (July
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`10, 2002).
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`Ex. 1024: Testimony of Marion C. Blakey, Chairman, National Transportation
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`Safety Board, before the Subcommittee on Railroads, Committee on
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`Transportation and Infrastructure, House of Representatives (June 6,
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`2002) available at
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`https://app.ntsb.gov/news/speeches/blakey/mcb020606.html.
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`Ex. 1025: Testimony of Marion C. Blakey, Chairman, National Transportation
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`Safety Board, before the Subcommittee on Surface Transportation and
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`Merchant Marine, Committee on Commerce, Science, and
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`Transportation (July 10, 2002) available at
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`https://app.ntsb.gov/news/speeches/blakey/mcb020710.html.
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`Ex. 1026: Declaration of Erik Halverson.
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`Mandatory Notices (37 C.F.R. § 42.8(b))
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`IPR2017-01270
`U.S. Patent No. 7,236,860
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`A. Real Parties-In-Interest (37 C.F.R. § 42.8(b)(1))
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`Westinghouse Air Brake Technologies Corporation (“Wabtec”), located at
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`1001 Air Brake Ave., Wilmerding, PA 15148, and Wabtec Railway Electronics
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`Inc. (“WRE”), located at 21200 Dorsey Mill Road, Germantown, Maryland 20876,
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`are the real parties-in-interest.
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`B. Related Matters (37 C.F.R. § 42.8(b)(2))
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`Patent Owner Siemens Industry, Inc. (“PO”) is presently asserting U.S.
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`Patent No. 7,236,860 (“‘860 Patent”) (Ex. 1001) against Wabtec and WRE in
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`District of Delaware Case No. 1-16-cv-00284.
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`Petitioner requested inter partes review of U.S. Patent No. 6,996,461, which
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`is the parent of the ‘860 Patent, in Patent Trial and Appeal Board Case No.
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`IPR2017-01263.
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`C. Lead and Backup Counsel and Service (37 C.F.R. § 42.8(b)(3)-(4))
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`IPR2017-01270
`U.S. Patent No. 7,236,860
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`
`
`Lead Counsel
`Jason A. Engel
`Reg. No. 51,654
`K&L GATES LLP
`70 W. Madison Street, Suite 3100
`Chicago, IL 60602
`Jason.Engel.PTAB@klgates.com
`T: (312) 807-4236
`F: (312) 827-8145
`
`Backup Counsel
`Alan L. Barry
`Reg. No. 30,819
`K&L GATES LLP
`70 W. Madison Street, Suite 3100
`Chicago, IL 60602
`al.barry.ptab@klgates.com
`T: (312) 807-4438
`F: (312) 827-8196
`
`Benjamin E. Weed
`Reg. No. 65,939
`K&L Gates LLP
`70 W. Madison Street, Suite 3100
`Chicago, IL 60602
`benjamin.weed.PTAB@klgates.com
`T: (312) 781-7166
`F: (312) 827-8152
`
`Erik J. Halverson
`Reg. No. 73,552
`K&L GATES LLP
`70 W. Madison St., Suite 3100
`Chicago, IL 60602
`erik.halverson@klgates.com
`T: (312) 807-4240
`F: (312) 345-8529
`
`
`Petitioner consents to electronic service by email.
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`vii
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`I.
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`INTRODUCTION
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`IPR2017-01270
`U.S. Patent No. 7,236,860
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`Westinghouse Air Brake Technologies Corporation (“Petitioner” or
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`“Wabtec”) requests inter partes review (“IPR”) of claims 1, 3, 5, 7, 10, 15, 16, 18,
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`20, and 25 (“Challenged Claims”) of the ‘860 Patent.
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`II. TECHNOLOGY OF THE ‘860 PATENT
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`A. Overview of PTC and Grade Crossings
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`Since the early 1980s, the railroad industry has acknowledged the
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`advantages of using data radio communications to enhance train control. (Ex.
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`1005, 1; Ex. 1017, 1; Ex. 1002, ¶¶22-24). Advanced Train Control System
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`(“ATCS”) was developed in the mid-1980s after the enactment of the Staggers Rail
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`Act of 1980. (Ex. 1005, viii; Ex. 1017, vi). The primary goal was to create a
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`comparable or even safer train control system that would cost less than
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`conventional systems. The Federal Railroad Administration (“FRA”), a body
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`tasked with overseeing the development of such systems, recognized early on that
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`these train control systems would include an onboard computer (“OBC”) that
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`continuously calculated predicted braking distances and included automatic stop
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`protection. (Ex. 1009, 59; Ex. 1002, ¶¶25-27).
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`In 1985, Burlington Northern (“BN”) contracted with Rockwell Collins to
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`develop and test a system that would become known as the Advanced Railroad
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`Electronics System (“ARES”). (Ex. 1005, 23; Ex. 1017, 22; Ex. 1002, ¶28).
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`ARES included three major sub-systems (or “segments”): (1) the Control Segment;
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`IPR2017-01270
`U.S. Patent No. 7,236,860
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`(2) the Data Segment; and (3) the Vehicle Segment. (Ex. 1005, 23; Ex. 1017, 22).
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`ARES was developed according to specifications advanced by BN and Rockwell
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`Collins, with Rockwell Collins and Pulse Electronics1 supplying the components.
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`(Ex. 1005, 23; Ex. 1017, 22).
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`ARES allowed for communications between OBCs and wayside devices,
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`such as switches and grade crossings, via wayside interface units (“WIUs”). (Ex.
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`1010, vi; Ex. 1012, 3-4; Ex. 1002, ¶¶29-30). WIUs are devices that can take
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`information from components alongside the track and convert the information into
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`digital signals to be transmitted to a rail operations control system (“ROCS”). (Ex.
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`1010, 24; Ex. 1002, ¶31). WIUs activate devices, such as switches, along the
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`track. (Ex. 1002, ¶31).
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`ROCS could receive over switch “clear message[s]…from wayside track
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`indicator[s]” and transmit them to the Train Situation Indicator (“TSI”) in the
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`locomotive cab. (Ex. 1010, 25). In ARES, the over-the-switch clear message (to
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`indicate that an upcoming switch was in the expected position) was received from
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`a wayside track indicator, which was in communication with a switch to which the
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`1 Pulse Electronics was purchased in 1995 by Westinghouse Air Brake Co. (Ex.
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`1011).
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`2
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`message pertained. (Ex. 1010, 25; Ex. 1002, ¶32). ARES’ in-locomotive display
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`IPR2017-01270
`U.S. Patent No. 7,236,860
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`device could display upcoming configurable devices and signals in its “TRACK
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`PLAN view” (Ex. 1010, 38-39):
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`
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`Between 1987 and 1995, the Canadian National (“CN”) Railroad conducted
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`tests on a transponder-based system that used ATCS specifications as the
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`foundation of its architecture. (Ex. 1005, 21; Ex. 1017, 20; Ex. 1002, ¶33).
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`Switches were controlled primarily through the locomotive, either automatically or
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`through locomotive engineer action. (Ex. 1005, 21; Ex. 1017, 20; Ex. 1002, ¶33).
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`The position of each switch was displayed in the cab of the locomotive. (Ex. 1005,
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`21-22; Ex. 1017, 21; Ex. 1002, ¶33). CN’s ATCS included equipment that
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`enforced speed restrictions and ensured trains did not traverse an improperly set
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`switch by automatically applying the train’s brakes. (Ex. 1005, 22; Ex. 1017, 21;
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`Ex. 1002, ¶33).
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`In 1995, the Michigan Department of Transportation received funding from
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`the FRA and contracted with Harmon Industries to develop the Incremental Train
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`Control System (“ITCS”) on Amtrak’s line in Michigan. (Ex. 1005, 25; Ex. 1017,
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`IPR2017-01270
`U.S. Patent No. 7,236,860
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`24; Ex. 1002, ¶34).
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` ITCS included a Wayside Equipment Segment, a
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`Communications Segment, and a Locomotive Segment. (Ex. 1005, 25; Ex. 1017,
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`24). The Locomotive Segment included an OBC, which continuously calculated
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`braking distances, monitored speed, and initiated braking in the event speed or stop
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`restrictions were violated. (Ex. 1005, 26; Ex. 1017, 25; Ex. 1002, ¶34).
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`The Wayside Equipment Segment incorporated the existing wayside signals
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`and added to them WIUs to enable communication between the wayside signals,
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`trains, and grade crossing warning devices. (Ex. 1002, ¶¶34-35).
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`On the Michigan line, to account for faster train speeds, grade crossing
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`signals had to be activated when the trains were further from crossings. (Ex. 1002,
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`¶36). The train transmitted its passage of a specific location via a data radio to a
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`WIU at the grade crossing, which provided an electrical signal to activate the
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`crossing gate. (Ex. 1002, ¶36). When the gate was down, it sent a signal through
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`the WIU to the locomotive to confirm it was safe to proceed. (Ex. 1002, ¶36).
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`Thus, hose of skill in the art, by the late 1990s, understood that trains could
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`communicate with configurable devices along the wayside, both through messages
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`sent directly from the train to configurable devices, as well as through messages
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`sent from the train to a WIU and on to configurable devices. (Ex. 1002, ¶¶37, 41;
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`see generally Ex. 1005, 25-26, 28). They also understood the utility of the
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`4
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`information returned by configurable devices including switches and grade
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`IPR2017-01270
`U.S. Patent No. 7,236,860
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`crossings. (Ex. 1005, 22; Ex. 1017, 21; Ex. 1002, ¶33).
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`B.
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`‘860 Patent Overview
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`The ‘860 Patent is directed to a train safety system that includes a controller
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`and a radio transmitter on a train. (Ex. 1001, 2:39-43; 3:5-12; Ex. 1002, ¶38-39).
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`The controller is configured to send a message to a configurable device, receive a
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`response, allow the train to proceed if a proper response is received, and stop the
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`train otherwise. (Ex. 1001, 6:10-23). The controller confirms that the response
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`message corresponds to the device to which the message was originally directed.
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`(Ex. 1001, 6:18-20). The response message includes the configuration of a
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`configurable device. (Ex. 1001, 5:4-20; Ex. 1002, ¶40).
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`C.
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`Prosecution History of the ‘860 Patent
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`The application leading to the ‘860 Patent was filed on November 18, 2005.
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`(Ex. 1001, Cover). The application claims priority to U.S. Patent Application
`
`10/267,959, now U.S. Patent No. 6,996,461 (“‘461 Patent”), filed October 10,
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`2002. In prosecuting the ‘461 Patent, Applicant distinguished the claims from the
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`prior art by arguing that the prior art involved communication between a train
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`and a wayside controller (which may be in communication with a switch);
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`confirming the then-pending claims required direct communication between the
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`train and the switch itself. (Ex. 1006, 116-117) (“Thus, any communication of
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`the status of the switch occurs between the switch and the wayside controllers, not
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`IPR2017-01270
`U.S. Patent No. 7,236,860
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`between the train and the switch as required by [the claims].”). Applicant specified
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`that an interrogation message requires a response from the switch, not just an
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`outgoing message. (Ex. 1006, 118).
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`Further examination of the application that became the ‘461 Patent required
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`Applicant to make additional amendments to require confirmation that a received
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`identifier corresponded to the device to which the interrogation message was
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`directed. (Ex. 1006, 137-138).
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`During prosecution of the ‘860 Patent, Applicant argued the prior art did
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`“not include any database of any locations of upcoming configurable devices.”
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`(Ex. 1004, 89). As described below, this purportedly patentable feature of the
`
`claims of the ‘860 Patent is taught by the previously unconsidered combinations of
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`Petit and Blesener, RSAC and Blesener, and RSAC, Petit and Blesener.
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`III. GROUNDS FOR STANDING (37 C.F.R. § 42.104(A))
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`Petitioner certifies that (1) the ‘860 Patent is available for IPR; (2) Petitioner
`
`is not barred or estopped from requesting an IPR on the Grounds identified herein;
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`and (3) Petitioner has not filed a complaint relating to the ‘860 Patent. This
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`Petition is filed in accordance with 37 C.F.R. § 42.106(a).
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`IV. PAYMENT OF FEES (37 C.F.R. §§ 42.15 AND 42.103)
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`IPR2017-01270
`U.S. Patent No. 7,236,860
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`Petitioner authorizes the USPTO to charge any required fees to Deposit
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`Account 02-1818.
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`V.
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`PERSON OF ORDINARY SKILL IN THE ART
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`A person of ordinary skill in the art (“POSA”) is a hypothetical person who
`
`is presumed to know the relevant prior art. (See Gnosis S.P.A et al. v. S. Ala. Med.
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`Sci. Foundation, Case IPR2013-00116, Paper 68 at 9, 37 (PTAB June 20, 2014)).
`
`A POSA has ordinary creativity, is not an automaton, and is capable of combining
`
`teachings of the prior art. (Id. (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
`
`420-421 (2007))).
`
`With respect to the ‘860 Patent, a POSA as of October 10, 2002 would have
`
`had an undergraduate degree or the equivalent thereof and at least five (5) years of
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`experience in train operations or train control systems. (Ex. 1002, ¶¶42-44). Such
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`a POSA would have had knowledge of train control systems, train safety systems
`
`that include wayside systems, and train communication systems, and would have
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`understood how to search available literature for relevant publications. (Ex. 1002,
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`¶43).
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`VI. CLAIM CONSTRUCTION
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`The challenged claims must be given their “broadest reasonable construction
`
`in light of the specification” of the ‘860 Patent. (37 C.F.R. § 42.100(b)).
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`Under this standard, claim terms are generally given their ordinary and
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`IPR2017-01270
`U.S. Patent No. 7,236,860
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`customary meaning, as would be understood by a POSA in the context of the
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`disclosure. (In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007)).
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`Other than the terms specifically addressed below, a POSA would have understood
`
`each term of each Challenged Claim to have its ordinary and customary meaning.
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`A. Configurable Device
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`“Configurable device” is not defined in the specification of the ‘860 Patent.
`
`The ‘860 Patent describes a “configurable device” as a device capable of being
`
`responsive to a message, and provides examples of a switch or a grade crossing
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`gate. (Ex. 1001, 2:64-66). These devices may be in a variety of different states
`
`reflective of the position of the switch or gate. (Ex. 1001, 5:4-16). During
`
`prosecution of the parent ‘461 Patent, the Applicant explained that the claims
`
`required direct communication between the train and the configurable device (e.g.,
`
`the switch or crossing), not from the train to the wayside controller and on to the
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`configurable device (e.g., the switch or crossing). (Ex. 1006, 116).
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`Based on the examples given in the specification, Petitioner submits that the
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`claimed “configurable device” should be interpreted as “any device along the
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`wayside of a train track that is capable of being in at least two physical states.”
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`Applicant’s arguments
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`to distinguish
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`the art confirm
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`that
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`the requisite
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`communication does not involve a wayside controller; Petitioner therefore believes
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`there
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`is no reasonable
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`interpretation of “configurable device”
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`that
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`IPR2017-01270
`U.S. Patent No. 7,236,860
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`that
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`encompasses an intervening wayside device such as a wayside controller.
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`Nevertheless, Petitioner believes that PO may propose a construction of
`
`“configurable device” that permits communication between the train and the
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`configurable device to occur via a WIU. Although Petitioner submits that the
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`intrinsic record does not support this interpretation, Petitioner also addresses this
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`broader construction in the Grounds below. In particular, Petitioner notes that the
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`communications identified in each ground would meet a broader construction such
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`as a construction that encompasses a WIU.
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`B.
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`Transmitting…to [a]…configurable device
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`During prosecution of the parent application, the Applicant differentiated the
`
`claimed invention from a prior art reference where a message was sent from the
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`train to a WIU and on to a configurable device, as opposed to directly from the
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`train to the configurable device. (Ex. 1006, 116). Applicant also argued that the
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`prior art did not teach a “grade crossing gate transmit[ting] its configuration back
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`to the train.” (Ex. 1006, 118). The claims on their face may not require the
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`interrogation message to originate on the train; however, in view of the arguments
`
`the Applicant made in prosecution, Petitioner submits that any reasonable
`
`construction taking into account the intrinsic record (including the arguments made
`
`to obtain allowance of the ‘461 Patent) would require the control unit to be located
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`on the train and would require direct communication (i.e., without any intervening
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`IPR2017-01270
`U.S. Patent No. 7,236,860
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`routing devices) between the onboard control unit (via its associated onboard
`
`transceiver) and the configurable device. Petitioner therefore believes the claim
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`phrase “transmitting…to [a]…configurable device” should be interpreted as
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`“sending a message from the controller on a train directly to a configurable
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`device.”
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`VII. STATEMENT OF THE PRECISE RELIEF REQUESTED AND THE
`REASONS THEREFORE (37 C.F.R. § 42.22(a) AND 42.104(b))
`
`Petitioner requests the institution of IPR and the cancellation of the
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`Challenged Claims on the following Grounds:
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`Relied-On References
`Ground Basis
`1
`§ 103 U.S. Patent No. 5,092,544 to Petit et al.
`(“Petit”) in view of PCT Publication No.
`02/091013 to Blesener et al. (“Blesener”).2
`§ 103 RSAC Report (“RSAC”) in view of Blesener.3
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`2
`
`3
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`§ 103 RSAC in view of Blesener and Petit
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`U.S. Patent No. 7,236,860
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`Claims
`1, 3, 5, 7, 10,
`15, 16, 18,
`20, and 25
`1, 3, 5, 7, 10,
`15, 16, 18,
`20, and 25
`1, 3, 5, 7, 10,
`15, 16, 18,
`20, and 25
`
`Petitioner provides the declaration of Mr. Steven Ditmeyer, an expert in the field of
`
`the ‘860 Patent and the prior art, in support of these Grounds. (Ex. 1002, ¶¶1-21;
`
`Ex. 1003).
`
`A.
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`Statement Regarding Non-Redundancy
`
`Ground 1 explains why the prior art renders the Challenged Claims obvious
`
`under what Petitioner believes is the correct construction, which requires direct
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`communication between a train and a configurable device. Ground 1 is equally
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`2 While Petit is cited on the face of the ‘860 Patent, the Board should nonetheless
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`institute trial under 35 U.S.C. § 325(d) as the elements described during
`
`prosecution to distinguish the ‘860 Patent from the prior art are present in
`
`previously-unconsidered Blesener. Petitioner also submits the unconsidered
`
`declaration of Mr. Ditmeyer to help explain the art and the Grounds. (See
`
`generally Ex. 1002).
`
`3 Neither RSAC nor Blesener was considered during examination.
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`applicable under a construction in which direct communication is not required (i.e.,
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`U.S. Patent No. 7,236,860
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`where an intervening WIU can serve a routing function).
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`Ground 2 explains why the prior art renders the Challenged Claims obvious,
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`in the event a construction that does not require direct communication between the
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`train and the configurable device is proposed by PO and adopted by the Board.
`
`Ground 3 explains a modification to the prior art of Ground 2, in which
`
`Petit’s teachings of direct communication between the train and the configurable
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`devices can be applied to the RSAC-based combination of Ground 2 to render the
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`Challenged Claims obvious under Petitioner’s proposed construction.
`
`B. Overview of the Prior Art
`
`1.
`
`Petit
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`U.S. Patent No. 5,092,544 to Petit et al. (“Petit”) published March 3, 1992,
`
`and is prior art under 35 U.S.C. § 102(b). Petit is directed to a communication
`
`protocol between a train and a crossing controller in which the train sends an
`
`interrogation message, and the crossing sends an acknowledgement message, to
`
`permit the train’s onboard CPU to determine whether to apply the train’s brakes.
`
`(Ex. 1008, Abstract; Ex. 1002, ¶¶45-47).
`
`Petit teaches a control system that prevents trains from entering a crossing
`
`unless the protection equipment at the crossing is in a safe configuration. (Ex.
`
`1008, 1:59-65; Ex. 1002, ¶47). Petit’s communication protocol permits vital (fail-
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`safe) operation by both the configurable devices (e.g., crossing protection
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`U.S. Patent No. 7,236,860
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`equipment) and the trains that are approaching the configurable device (e.g., the
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`crossing). (Ex. 1008, 1:9-12; Ex. 1002, ¶¶47, 51).
`
`Petit accomplishes the disclosed control with a CPU on the train that
`
`establishes a communications link with a crossing gate and is capable of actuating
`
`a train’s braking systems. (Ex. 1008, 4:32-34; 4:49-51). A confirming message
`
`from highway crossing equipment is needed to provide movement authority to a
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`train. (Ex. 1008, 8:37-39; Ex. 1002, ¶55). Without receiving this message in a
`
`timely manner, the train’s CPU will apply the brakes, and no movement across the
`
`highway will be permitted. (Ex. 1008, 6:62-7:19; Ex. 1002, ¶55).
`
`A beacon transponder associated with a configurable device alerts the train’s
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`CPU that a configurable device is ahead. (Ex. 1008, 2:31-34; Ex. 1002, ¶¶48-49).
`
`Upon notification, the train CPU sends a message to the crossing identified by the
`
`beacon; the message contains a crossing I.D. (to address the message to a particular
`
`crossing (see Ex. 1008, 5:12-14)), the direction of approach, the track number, and
`
`the distance to the crossing. (Ex. 1008, 4:3-13; Ex. 1002, ¶50). The crossing
`
`validates that the message using the crossing I.D. to ensure that the message was
`
`intended for that specific crossing during a vital check. (Ex. 1008, Claims 7, 11;
`
`Ex. 1002, ¶52).
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`After the configurable device validates that it was the intended recipient, the
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`U.S. Patent No. 7,236,860
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`
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`crossing transmits a response back to the train. (Ex. 1008, 5:23-25; 5:41-48).
`
`Messages are coded with the identity of the approaching train to address those
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`messages to the approaching train. (Ex. 1008, Claim 9). The approaching train’s
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`CPU uses this I.D. to do a final check that the message was intended for it and that
`
`the configurable device is in an expected condition; this represents vital processing
`
`that is performed by the onboard CPU. (Ex. 1008, 4:58-5:11; Ex. 1002, ¶54). A
`
`POSA would understand that vital checking could readily be performed to validate
`
`data in the received message with data already available to Petit’s onboard CPU.
`
`(Ex. 1008, 5:67-6:1; Ex. 1002, ¶54).
`
`Petit also teaches “means for stopping said train and operating said
`
`equipment to its second state when said vital checks indicate an error in said
`
`messages.” (Ex. 1008, Claim 25; Ex. 1002, ¶56). Braking is carried out after a
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`period of allowable time has passed and no conforming response has been
`
`returned. (Ex. 1008, 6:62-7:19; Ex. 1002, ¶57). That is, if the CPU determines an
`
`error during its vital processing, it assumes an unsafe condition and stops the train.
`
`(Ex. 1008, 5:63-6:8; Ex. 1002, ¶58). Likewise, if the onboard CPU determines that
`
`the configurable device is in an impermissible configuration, it can stop the train.
`
`(Ex. 1008, 5:63-6:8; Ex. 1002, ¶58). A POSA would understand that the onboard
`
`CPU of Petit is generally able to validate messages and conditions of trackside
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`devices to perform vital determinations about when to apply the brakes; indeed, the
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`onboard CPU is the last processor that can make such a determination. (Ex. 1002,
`
`¶54).
`
`In the event of multiple track crossings, the onboard CPU receives multiple
`
`messages and the worst case minimum time will be used to determine whether to
`
`apply the brakes. (Ex. 1008, 7:47-50; Ex. 1002, ¶62). A POSA would understand
`
`that these “worst case” assumptions are dynamically calculated based on the train’s
`
`speed and an assumption about acceleration to determine a currently-relevant
`
`braking distance (and thus a currently-relevant braking time). (Ex. 1008, 7:9-19;
`
`Ex. 1002, ¶¶59-60). Petit confirms: it discloses that braking distances will depend
`
`upon conditions around the crossing such as grades and the maximum speeds of
`
`the trains and minimum braking rate of the train. (Ex. 1008, 3:49-52; Ex. 1002,
`
`¶59).
`
`The CPU can actuate both the brakes and/or an alarm. (Ex. 1008, 4:49-51;
`
`Ex. 1002, ¶61). Actuation of either brakes or alarms may be corrected by
`
`acknowledgement of a speed restriction, correction of a signal issue, or
`
`reestablishment of communication. (Ex. 1008, 4:49-51; Ex. 1002, ¶¶61, 63).
`
`2.
`
`Blesener
`
`PCT Publication No. 02/091013 to Blesener et al. (“Blesener”) was filed in
`
`English on May 7, 2002, designated the United States, and claims priority to U.S.
`
`
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`Provisional Application No. 60/289,320 filed May 7, 2001. Blesener is prior art
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`IPR2017-01270
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`under at least 35 U.S.C. § 102(e)4. Blesener is directed to a safety communication
`
`system that includes a vehicle with a local database of components in the system.
`
`(Ex. 1007, Abstract; Ex. 1014, 31; Ex. 1002, ¶¶64-65). Deployed units receive a
`
`message from a locomotive and communicate the status of the units back to the
`
`locomotive. (Ex. 1007, p.3, ll.4-6; p.7, ll.15-17; p.12, ll.14-25; Ex. 1014, 19-21).
`
`An onboard database organizes the location and type of crossings and other
`
`configurable devices that a train may encounter along a wayside. (Ex. 1007, p.10,
`
`ll.22-26; Ex. 1014, 20-22; Ex. 1002, ¶66). The database provides the locomotive
`
`control systems with the location of configurable devices a train may encounter.
`
`(Ex. 1002, ¶66). The system provides for two-way communi