Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 35
`Entered: November 20, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BMW OF NORTH AMERICA, LLC AND BAYERISCHE MOTOREN
`WERKE AKTIENGESELLSCHAFT,
`Petitioner,
`
`v.
`
`THEODORE & ASSOCIATES, LLC,
`Patent Owner.
`
`Case IPR2017-01380
`Patent 9,045,163 B2
`
`
`
`
`
`
`
`
`
`Before MITCHELL G. WEATHERLY, FRANCES L. IPPOLITO, and
`SEAN P. O’HANLON, Administrative Patent Judges.
`
`WEATHERLY, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a), 37 C.F.R. § 42.73
`
`I.
`
`INTRODUCTION
`
`A. BACKGROUND
`
`BMW of North America, LLC and Bayerische Motoren Werke
`
`Aktiengesellschaft (collectively “Petitioner”) filed a petition (Paper 2,
`
`“Pet.”) to institute an inter partes review of claims 1–4, 6–14, 16–37, and
`
`43–49 of U.S. Patent No. 9,045,163 B2 (Ex. 1001, “the ’163 patent”).
`
`
`Tel: 571-272-7822
`
`Paper 35
`Entered: November 20, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BMW OF NORTH AMERICA, LLC AND BAYERISCHE MOTOREN
`WERKE AKTIENGESELLSCHAFT,
`Petitioner,
`
`v.
`
`THEODORE & ASSOCIATES, LLC,
`Patent Owner.
`
`Case IPR2017-01380
`Patent 9,045,163 B2
`
`
`
`
`
`
`
`
`
`Before MITCHELL G. WEATHERLY, FRANCES L. IPPOLITO, and
`SEAN P. O’HANLON, Administrative Patent Judges.
`
`WEATHERLY, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a), 37 C.F.R. § 42.73
`
`I.
`
`INTRODUCTION
`
`A. BACKGROUND
`
`BMW of North America, LLC and Bayerische Motoren Werke
`
`Aktiengesellschaft (collectively “Petitioner”) filed a petition (Paper 2,
`
`“Pet.”) to institute an inter partes review of claims 1–4, 6–14, 16–37, and
`
`43–49 of U.S. Patent No. 9,045,163 B2 (Ex. 1001, “the ’163 patent”).
`
`
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`IPR2017-01380
`Patent 9,045,163 B2
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`35 U.S.C. § 311. Petitioner supported the Petition with a Declaration from
`
`Donald D. Parker (Ex. 1003). Theodore & Associates, LLC (“Patent
`
`Owner”) timely filed a Preliminary Response. Paper 7 (“Prelim. Resp.”).
`
`On November 21, 2017, based on the record before us at the time, we
`
`instituted an inter partes review of claims 2–4, 6, 8–10, 19, 23, 24, 27–37,
`
`43–46, 48, and 49.1 Paper 8, 30 (“Institution Decision” or “Dec.”). We
`
`instituted the review on the following challenges to the claims:
`
`References
`
`Basis
`
`Claims
`
`German Patent Publication No. DE
`102009038834 A1 (Ex. 1016, “Greil”)
`
`§ 103 6, 8–10, 19, 23, 24,
`43–46, 48, and 49
`
`Greil and Japanese Patent Publication No. 5-
`69854 (Ex. 1017, “Hiroshima”)
`
`§ 103 32–34, 36, and 37
`
`Greil and German Patent Publication No.
`DE 102010018725 A1 (Ex. 1018, “Brandt”)
`
`§ 103 2–4 and 27–31
`
`Greil, Hiroshima, and Brandt
`
`§ 103 35
`
`After we instituted this review, Patent Owner filed a Patent Owner
`
`Response in opposition to the Petition (Paper 12, “PO Resp.”) that was
`
`supported by a Declaration from Scott Kunselman (Ex. 2012). Petitioner
`
`filed a Reply in support of the Petition (Paper 19, “Reply”). Patent Owner
`
`did not move to amend any claim of the ’163 patent.
`
`
`1 Patent Owner filed a disclaimer of claims 1, 7, 11–14, 16–18, 20–22, 25,
`26 and 47 of the ’163 patent under 35 U.S.C. § 253(a) that was effective as
`of August 22, 2017. Dec. 2–4; Ex. 2002. Accordingly, we did not institute
`review of these claims, which were no longer part of the ’163 patent on the
`date of our Institution Decision, and we do not address the patentability of
`these claims in this Decision.
`
`2
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`IPR2017-01380
`Patent 9,045,163 B2
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`Both parties have filed motions to exclude evidence in this proceeding
`
`and both motions have been fully briefed with oppositions and replies,
`
`respectively. See Papers 26, 29, 32 (briefing relating to Petitioner’s Motion
`
`to Exclude); Papers 28, 30, 31 (briefing relating to Patent Owner’s Motion to
`
`Exclude).
`
`We heard oral argument on August 15, 2018. A transcript of the
`
`argument has been entered in the record (Paper 34, “Tr.”).
`
`We have jurisdiction under 35 U.S.C. § 6(c). The evidentiary
`
`standard is a preponderance of the evidence. See 35 U.S.C. § 316(e);
`
`37 C.F.R. § 42.1(d). This Final Written Decision is issued pursuant to
`
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`
`For the reasons expressed below, we conclude that Petitioner has
`
`demonstrated by a preponderance of evidence that claims 2, 4, 19, 23, 24,
`
`27–31, 35, 44–46, 48, and 49 are unpatentable, but has failed to do so for
`
`claims 3, 6, 8–10, 32–34, 36, 37, and 43.
`
`B. RELATED PROCEEDINGS
`
`The parties have identified as a related proceeding the co-pending
`
`district court proceeding of Theodore & Associates, LLC v. BMW of North
`
`America, LLC and Bayerische Motoren Werke AG, Case No. 2:16-cv-14253-
`
`VAR-DRG (E.D. Mich.). Pet. 90; Paper 3, 2. Petitioner also filed another
`
`petition challenging the same claims of the ’163 patent in IPR2017-01379.
`
`Pet. 90.
`
`C. THE ’163 PATENT
`
`The ’163 patent is directed to “a universal chassis apparatus for an
`
`automotive vehicle” that “includes a battery and/or fuel storage compartment
`
`in a rigid backbone structure.” Ex. 1001, 1:42–45. A fuel tank can
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`optionally be attached to the rear structure. Id. at 6:29–31. The backbone
`
`structure connects a front structure with a front suspension to a rear structure
`
`with a rear suspension. Id. at 6:46–51. The front and rear suspensions are:
`
`rigidly affixed to the front and rear structures (or backbone
`mounting structures) such that the suspension loads (in the
`preferred embodiment) stress the engine block and transaxle
`case, to create a complete, self-supporting chassis without the
`need for a separate frame, or the need to attach the front and rear
`suspension subassemblies to a rigid uni-body.
`
`Id. at 1:50–55. The universal chassis is purportedly lighter than a traditional
`
`automotive frame and “particularly well suited for Battery Electric Vehicles
`
`(BEVs) and Plug-in Hybrids (PHEVs), since the battery pack can be
`
`mounted inside the backbone—eliminating the need for a separate battery
`
`box—thus reducing cost and weight.” Id. at 2:21–47.
`
`Claims 27, 32, 43, and 44 are the independent claims among the
`
`challenged claims. Claim 27 is illustrative and recites:
`
`27. An automotive vehicle chassis apparatus comprising:
`
`a single central chassis structure spanning between a front set of
`wheels and a rear set of wheels, the central chassis structure
`further comprising a hollow longitudinally elongated segment
`and a hollow
`laterally crossing segment defining a
`substantially T-shape when viewed from above; and
`
`a set of batteries being removeably located within the segments
`of the central chassis structure.
`
`Id. at 15:16–24. This claimed arrangement is illustrated, for example, in
`
`Figure 36, which we reproduce below.
`
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`Figure 36 is a diagrammatic top view of a universal chassis with
`a T-shaped backbone 451.
`
`
`
`Id. at 11:63–65.
`
`II. ANALYSIS
`
`A. THE PARTIES’ POST-INSTITUTION ARGUMENTS
`
`In our Institution Decision, we concluded that the argument and
`
`evidence adduced by Petitioner demonstrated a reasonable likelihood that
`
`claims 2–4, 6, 8–10, 19, 23, 24, 27–37, 43–46, 48, and 49 were unpatentable
`
`as obvious based on the challenges identified in the table in Part I.A above.
`
`Dec. 30. We must now determine whether Petitioner has established by a
`
`preponderance of the evidence that the specified claims are unpatentable
`
`over the cited prior art. 35 U.S.C. § 316(e). We previously instructed Patent
`
`Owner that “any arguments for patentability not raised in the [Patent Owner
`
`Response] will be deemed waived.” Paper 9, 6; see also In re Nuvasive,
`
`Inc., 842 F.3d 1376, 1381 (Fed. Cir. 2016) (holding that patent owner’s
`
`failure to proffer argument at trial as instructed in scheduling order
`
`constitutes waiver). Additionally, the Board’s Trial Practice Guide states
`
`that the Patent Owner Response “should identify all the involved claims that
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`are believed to be patentable and state the basis for that belief.” Office
`
`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).
`
`B. THE LEVEL OF ORDINARY SKILL IN THE ART
`
`Petitioner contends that an ordinarily skilled artisan would have a
`
`degree in mechanical engineering or an equivalent field and at least two
`
`years of industry experience with a working knowledge of vehicle chassis
`
`structural properties and propulsion system and drivetrain packaging and
`
`attributes for electric and hybrid electric technologies. Pet. 35 (citing
`
`Ex. 1003 ¶ 20).
`
`Patent Owner disagrees regarding the level of industry experience
`
`possessed by an ordinarily skilled artisan, which Patent Owner asserts to be
`
`“at least ten years,” because a “vehicle chassis is one of the most important
`
`components of a vehicle.” PO Resp. 18. Patent Owner relies on
`
`Mr. Kunselman, who opines that because “chassis architecture is selected in
`
`the advanced stages of the design process,” the selection is performed by a
`
`“team” with “both a broad and appropriately deep understanding of vehicle
`
`systems and their effect on performance.” Ex. 2012 ¶¶ 18–19. He also
`
`opines that members of such a team typically “include engineers who are the
`
`most seasoned and skilled veterans who also have a broad set of
`
`experiences.” Id. ¶ 19. Mr. Kunselman thus concludes that an ordinarily
`
`skilled artisan “would have a minimum of 10 years of experience, having
`
`also a breadth that would include specific experience in Chassis and Vehicle
`
`Development” and “additional experience in Body and Powertrain.” Id.
`
`¶ 21. Patent Owner further contends that an ordinarily skilled artisan
`
`“would also have experience in Body and Powertrain” without explaining
`
`precisely what is meant by “Body and Powertrain.” PO Resp. 18.
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`Petitioner responds that Patent Owner’s alleged level of skill is
`
`“extraordinary” rather than “ordinary.” Reply 20. Petitioner contends that
`
`Mr. Kunselman incorrectly focuses on the skill level of a team of designers
`
`rather than a “person having ordinary skill.” Id. Mr. Parker opines that
`
`Expertise in the selection of a chassis architecture and having
`ordinary skill in the art of chassis design are two different things.
`A chassis selection team would consider external influences such
`as market trends, customer preferences, competitor offerings and
`perhaps even the financial strength and position of an OEM. One
`of ordinary skill in the art of chassis design need not have that
`breadth of experience as most of it is beyond the actual nuts and
`bolts of designing a chassis.
`
`Ex. 1061 ¶ 12. Mr. Parker thus deemphasizes the wide-ranging
`
`consequences on manufacturing processes and tooling that designing a
`
`modular chassis that is adaptable across an entire automotive product line.
`
`Instead, he reduces the inquiry about the appropriate level of skill to the skill
`
`required to design the “nuts and bolts” of a chassis after a “chassis selection
`
`team” settles on a design concept.
`
`Both parties rely wholly upon testimony from either Mr. Parker or
`
`Mr. Kunselman, neither of whom supports his opinion with objective
`
`evidence. Pet. 35 (citing Ex. 1003 ¶ 20); PO Resp. 11–12 (referring to Mr.
`
`Kunselman’s opinion appearing at Ex. 2012 ¶¶ 15–21); Reply 20–21 (citing
`
`Ex. 1003 ¶ 20; Ex. 1061 ¶¶ 11–13). The level of skill is determined “in the
`
`art to which the claimed invention pertains,” 35 U.S.C. § 103, and neither
`
`party identifies that art explicitly.
`
`The Specification describes the field of invention as follows: “This
`
`invention is related to the field of automotive chassis design and more
`
`specifically to the area of interchangeable chassis for use with many models
`
`of vehicles.” Ex. 1001, 1:17–19. The Specification repeatedly refers to the
`
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`IPR2017-01380
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`chassis as having “universal” characteristics. Id. at Title, passim. The
`
`Specification also describes an advantage of its chassis as having “an ability
`
`to adapt to different bodies and body styles,” id. at 2:17–21, and criticizes
`
`prior art chassis designs that “are not readily adaptable to a wide variety of
`
`vehicles without forcing major and expensive redesign work for each
`
`vehicle,” id. at 1:29–33. Claims 43 and 44 expressly require that the
`
`claimed chassis be “universally adapted” for more than one type of vehicular
`
`configuration. Id. at 16:40–17:19. Based on these descriptions of the
`
`chassis and the express requirements in at least some of the claims at issue,
`
`we determine that the art to which the claimed invention pertains is the
`
`design of interchangeable chassis for use with many models of vehicles.
`
`We consider Mr. Kunselman’s testimony on the level of ordinary skill
`
`to be tied more closely to this relevant art of designing a chassis for use with
`
`many models of vehicles. Accordingly, we adopt Patent Owner’s definition
`
`of the level of ordinary skill for purposes of this Decision and evaluate
`
`priority of invention and obviousness from that perspective. We note that
`
`both Mr. Parker and Mr. Kunselman possess such a skill level. Ex. 1003
`
`¶¶ 6–13; Ex. 2012 ¶¶ 4–9.
`
`C. PRIORITY OF CLAIMS AND SCOPE OF PRIOR ART
`
`The ’163 patent issued from U.S. App. 13/950,060, filed July 24,
`
`2013 (“the Final App”), which was a continuation-in-part of U.S. App.
`
`13/397,329, filed February 15, 2012 (“the 2012 CIP”), which is a
`
`continuation-in-part of U.S. App. 12/019,490, filed on January 24, 2008
`
`(“the ’490 App”), which claims priority to U.S. Prov. App. 60/897,771, filed
`
`on January 26, 2007 (“the ’771 App”). Ex. 1001, (65), 1:7–12. Petitioner
`
`contends that claims 32–34, 36, 37, and 43 are entitled only to a priority date
`
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`of February 15, 2012, the filing date of the 2012 CIP. Pet. 22–24. Petitioner
`
`also contends that claims 2–4, 6, 8–10, 19, 23, 24, 27–31, 35, 44–46, 48, and
`
`49 are entitled only to priority dating back to the filing date of the Final App,
`
`July 24, 2013. Id. at 24–34. Petitioner provides its analysis on a claim-by-
`
`claim basis and supports its contentions with Mr. Parker’s testimony.
`
`Patent Owner argues that Greil is not prior art to claims 6, 8–10, 19,
`
`23, 24, 32–34, 36, 37, and 43 because those claims are entitled to a priority
`
`date based on the ’490 App filed on January 24, 2008. PO Resp. 18–30. For
`
`the reasons expressed below, we determine that Greil is prior art to claims
`
`2–4, 19, 23, 24, 27–31, 35, 44, 45, 47, and 48, but Greil is not prior art to
`
`claims 6, 8–10, 32–34, 36, 37, and 43. We address various materially
`
`related subsets of these claims below.
`
`1. Legal Standards for Determining Priority
`
`“It is elementary patent law that a patent application is entitled to the
`
`benefit of the filing date of an earlier filed application only if the disclosure
`
`of the earlier application provides support for the claims of the later
`
`application, as required by 35 U.S.C. § 112.” In re Chu, 66 F.3d 292, 297
`
`(Fed. Cir. 1995). “While a prior application need not contain precisely the
`
`same words as are found in the asserted claims, the prior application must
`
`indicate to a person skilled in the art that the inventor was ‘in possession’ of
`
`the invention as later claimed.” PowerOasis, Inc. v. T-Mobile USA, Inc.,
`
`522 F.3d 1299, 1306 (Fed. Cir. 2008) (citations omitted). Upon a showing
`
`that a reference is prior art based on the filing date of the application
`
`resulting in a claim at issue, the burden of coming forward with evidence to
`
`prove that the claim is entitled to priority based on an earlier-filed
`
`application rests upon the patent owner. Id. at 1305–06. Priority is
`
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`determined on a claim-by-claim basis, X2Y Attenuators, LLC v.
`
`International Trade Commission, 757 F.3d 1358, 1366 (Fed. Cir. 2014).
`
`While the meaning of terms, phrases, or diagrams in a disclosure
`is to be explained or interpreted from the vantage point of one
`skilled in the art, all the limitations must appear in the
`specification. The question is not whether a claimed invention is
`an obvious variant of that which is disclosed in the specification.
`Rather, a prior application itself must describe an invention, and
`do so in sufficient detail that one skilled in the art can clearly
`conclude that the inventor invented the claimed invention as of
`the filing date sought.
`
`Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997);
`
`see also Martin v. Mayer, 823 F.2d 500, 505 (Fed. Cir. 1987) (holding that
`
`the written description requirement is “not a question of whether one skilled
`
`in the art might be able to construct the patentee’s device from the teachings
`
`of the disclosure. . . . Rather, it is a question whether the application
`
`necessarily discloses that particular device”).
`
`2. Claims 9, 32–37, and 43: Wire Claims
`
`Petitioner argues that claims 9, 32–37, and 43 are not entitled to
`
`priority earlier than February 15, 2012. Pet. 22–24; see also id. at 22, n.5
`
`(including claim 9 in the analysis). Each of these claims requires an
`
`“electrical wire located within the central spine”2 or an “electrical wire
`
`located within and extending the entire length of the central spine.”3 Claim
`
`9 also recites “a wire . . . within a longitudinal length of the backbone
`
`structure.” Ex. 1001, 14:2–3. Petitioner contends that none of the priority
`
`
`2 Because independent claim 32 recites this limitation, Ex. 1001, 15:47,
`claim 32 and its dependent claims 33–37 include the limitation.
`
`3 Claim 43 recites this limitation. Ex. 1001, 16:44–45.
`
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`applications filed before the filing of the 2012 CIP provided written
`
`description support for the claimed electrical wire. Pet. 22–24. Petitioner
`
`correctly notes that any express discussion of wiring first appears in the
`
`2012 CIP and only then as follows: “[t]he backbone structure also provides
`
`a secure environment to pass electrical wiring, fuel lines and brakes lines
`
`through the bearing supports so that these components are protected from the
`
`environment and impact (crash) events.” Ex. 1008, 2:27–31; see also
`
`Ex. 1010, 2 (illustrating changes made in 2012 CIP). Petitioner relies upon
`
`Mr. Parker’s testimony to establish that the applications preceding the 2012
`
`CIP do not inherently describe using electrical wire within the backbone
`
`structure. Pet. 22–23 (citing Ex. 1003 ¶¶ 62–65). Mr. Parker testifies that
`
`an ordinarily skilled artisan would have known of many ways for connecting
`
`batteries together other than using wire including: “soldered metal tabs,
`
`cables, buss bars, printed circuits, and other types of common electrical
`
`conductors.” Ex. 1003 ¶ 65.
`
`In response, Patent Owner contends that Mr. Parker recants his
`
`declaration testimony and was “forced to concede that only wires have been
`
`used to connect[] batteries to an engine.” PO Resp. 30 (citing Ex. 2013,
`
`85:24–86:23). However, the testimony includes no such concession. At the
`
`end of the cited testimony, Patent Owner asks, “Are you aware of any
`
`printed circuit boards that connect batteries to any of an ignition system,
`
`starter motor [for an engine]?” Ex. 2013, 86:15–17. Mr. Parker answers, “It
`
`seems like a very odd context, but within the limited scope of that context,
`
`no, I guess I’m not aware of other methods.” Id. at 86:20–23. At most, it
`
`seems that Mr. Parker concedes that he is unaware of connecting batteries to
`
`an ignition system or starter motor via a printed circuit board.
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`Patent Owner also argues that the ’490 App describes the wire recited
`
`in claims 9 and 32–43 when it states that: “During attachment of the central
`
`backbone between the front and rear structures, the operational components
`
`(e.g., quill shaft for conventional vehicle, battery for electric or hybrid
`
`vehicle), are suitably coupled or connected.” Ex. 1006 ¶ 43. Based on this
`
`disclosure in the ’490 App, Mr. Kunselman opines without citing any
`
`objective evidence in support that: “The only suitable connection it could be
`
`is a wire and a cable. No other option has ever been used, not a metal tab,
`
`buss bar, or printed circuit board.” Ex. 2012 ¶ 75 (citing Ex. 1006 ¶ 43).
`
`Because the testimony cited by the parties on this issue leads to stalemate,
`
`we examine other aspects of the ’490 App and other evidence.
`
`Figure 16 of the ’490 App,
`
`reproduced at right, illustrates batteries
`
`located in a central structure that
`
`connects one end of a chassis with a
`
`generator to the other end of the chassis
`
`with an electric motor. Mr. Parker
`
`testifies that components such as wires
`
`connecting batteries were “conventional components” that were “well
`
`known” and “found in almost all vehicles decades before the ’163 patent
`
`was filed.” Ex. 1003 ¶ 61. Figure 16 illustrates batteries within the central
`
`spine of the plug-in hybrid chassis, along with the generator on one end,
`
`which would charge those batteries, and an e-motor on the other end, which
`
`would be powered by those batteries. Ex. 1006, Figure 16. Both experts
`
`agree that an electrical wire is a well known type of electrical connection
`
`that would be suitable. Ex. 1003 ¶ 61, Ex. 2012 ¶ 75.
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`On the record before us, we determine that Figure 16 in the ’490 App,
`
`along with the description of batteries being “suitably coupled and
`
`connected” constitutes a description of an electrical connection spanning the
`
`batteries within the central spine and to components connected to opposite
`
`ends of that spine. This is especially true given the high degree of skill
`
`possessed by an ordinarily skilled artisan. Such an artisan would have no
`
`trouble recognizing that the ’490 App described using wire to connect
`
`batteries located within the central structure and that those wires would span
`
`the entire central spine. Ex. 2012 ¶ 75. For this reason, we determine that
`
`the wire features of claims 9, 32–37, and 43 are supported by the description
`
`in the ’490 App.
`
`For claims 32–37 and 43, we conclude that Greil is not prior art. For
`
`claim 9, we must analyze Petitioner’s other challenge to the priority date
`
`discussed in Part II.C.3 below before determining whether Greil is prior art
`
`to claim 9. For claim 35, we must analyze Petitioner’s other challenge to the
`
`priority date discussed in Part II.C.5 below before determining whether Greil
`
`is prior art to claim 35.
`
`3. Claims 2–4, 6, 8–10: “Primarily Transmitted”
`
`Claims 2–4, 6, 8–10, all of which depend from disclaimed
`
`independent claim 1, recite a backbone structure in which “ride, handling
`
`and impact crash loads are primarily transmitted” between the structures
`
`connected to opposite ends of the backbone. Ex. 1001, 13:23–36. Petitioner
`
`argues that claims 2–4, 6, and 8–10 are entitled only to the filing date of the
`
`Final App because none of the priority applications describes backbone
`
`structures that “primarily transmit” loads between the front and rear wheels.
`
`Pet. 32–34. Petitioner contends that the earlier applications exclusively
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`describe the backbone as solely transmitting loads between the front and rear
`
`structures. Id. at 33 (citing, e.g., Ex. 1006 ¶ 35, claim 15). Petitioner relies
`
`on the following passage from the ’163 patent, which also appears in the
`
`’490 App:
`
`Because the uni-chassis 10 does not incorporate a conventional
`frame, the backbone structure 18 forms the connection between
`the front and rear structures 14 and 16. The chassis loads are
`therefore transmitted solely by the backbone structure 18
`between the first and second structures 14 and 16.
`
`Ex. 1006 ¶ 35; Ex. 1001, 7:9–14. Mr. Parker opines that an ordinarily
`
`skilled artisan would understand this passage to mean that the “backbone
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`decouples chassis loads (e.g., ride and handling loads) from body loads and
`
`absorbs crash loads in the backbone rather than the body.” Ex. 1003 ¶ 71.
`
`Petitioner further argues that solely transmitting loads is a narrower
`
`concept than primarily transmitting loads because primarily transmitting
`
`loads encompasses the possibility of structures other than the backbone
`
`assisting the backbone in transmitting loads. Pet. 34 (citing Ex. 1003 ¶¶ 70–
`
`75). Petitioner concludes, that because the broader concept of “primarily
`
`transmitting” is not described until the filing date of the Final App, July 24,
`
`2013, claims reciting this concept are not entitled to an earlier priority date.
`
`Id. at 34.
`
`Patent Owner responds that the claims in this group4 are entitled to
`
`priority dating back to the ’490 App because that application sufficiently
`
`
`4 Patent Owner expressly addresses the priority date for claims 8 and 10 but
`mentions “claim 1 and its dependent claims” in the heading for its argument.
`PO Resp. 20. Accordingly, we consider Patent Owner’s argument regarding
`claims 8 and 10 also to apply to claims 2–4 and 9, which through their
`dependency upon claim 1, also recite the same disputed concepts.
`
`14
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`Patent 9,045,163 B2
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`described the concept of the central backbone providing the primary rather
`
`than the sole structural connection between the front and rear structures. PO
`
`Resp. 20–28. More specifically, Patent Owner argues that the ’490 App
`
`describes the manner in which the chassis backbone and body share “ride,
`
`handling and impact crash loads” as recited in claim 1 as follows:
`
`With reference to FIGS. 10 and 11, various exemplary
`body mounts 90 are shown. A vehicle body 92 includes a lateral
`beam or cross-member 94 coupled to the backbone structure 18.
`As can be appreciated, the vehicle body 92 can comprise various
`body components, such as seats 96. The cross-member 94 can
`be suitably attached to the backbone structure 18 at or near a
`torsional node defined in the tube 64. The uni-chassis 10 of the
`present invention allows various loads associated with the
`vehicle body 92 to be substantially de-coupled from various
`loads associated with the uni-chassis 10.
`
`PO Resp. 24 (quoting Ex. 1006 ¶ 39). Precisely the same passage appears in
`
`the ’163 patent. Ex. 1001, 7:49–59.
`
`Based on our review of the record, we determine that the ’490 App
`
`sufficiently describes the concept of “ride, handling and impact crash loads
`
`[being] primarily transmitted between the first and second structures by the
`
`central backbone structure” as required in claim 1 and its dependent claims
`
`2–4, 6, and 8–10. The ’490 App indicates that a vehicle body 92 will be
`
`connected via body mounts 90 and cross-member 94 to the backbone
`
`structure 18. Ex. 1006 ¶ 39. Although this coupling “allows various loads
`
`associated with the vehicle body 92 to be substantially de-coupled from
`
`various loads associated with the uni-chassis 10,” both experts agree that the
`
`body is not completely decoupled from the backbone. Ex. 2012 ¶ 36;
`
`Ex. 2013, 39:25–40:14. Because the body and backbone are coupled to
`
`some degree, we determine that an ordinarily skilled artisan would
`
`15
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`IPR2017-01380
`Patent 9,045,163 B2
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`understand that the body and backbone of the ’490 App (and the ’163 patent)
`
`would share some of the “ride, handling and impact crash loads.” Ex. 2012
`
`¶ 36. Because claims 6 and 8–10 are entitled to priority based upon the
`
`filing date of the ’490 App, Greil is not prior art to these claims. For claims
`
`2–4, we must analyze Petitioner’s other challenge to the priority date
`
`discussed in Part II.C.5 below before determining whether Greil is prior art
`
`to claims 2–4.
`
`4. Claims 19, 23 and 24: “Fluid Fuel Compartment”
`
`Claims 19, 23, and 24 depend directly from claim 11, which recites:
`
`“an energy storage compartment located inside of the central chassis
`
`structure; and at least one of: a battery and fluid fuel located in the energy
`
`storage compartment.” Ex. 1001, 14:14–18. Petitioner argues that none of
`
`the ’771 App, ’490 App, or the 2012 CIP describes a fluid fuel compartment
`
`in the backbone and that the concept was first introduced in the Final App by
`
`the addition of Figures 38–40 and the accompanying text. That text reads:
`
`“[f]uel 513 may be either directly contained within an enclosed wall section
`
`of backbone structure 501, as is shown in FIG. 39, or an additional fuel tank
`
`515 is mounted within the universal chassis backbone structure 501, as is
`
`illustrated in FIG. 40.” Id. at 12:32–36. Petitioner concludes that claims 19,
`
`23, and 24, therefore, are only entitled to a priority date of July 24, 2013, the
`
`filing date of the Final App.
`
`Patent Owner contends that claims 19, 23, and 24 exclude fuel
`
`because all three claims recite that the energy storage compartment holds a
`
`battery. PO Resp. 28. Because the ’490 App illustrates and describes
`
`batteries within the backbone (Ex. 1006 ¶ 42, Figures 15, 16) and claims 19,
`
`23, and 24 recite batteries in the backbone, Patent Owner concludes that the
`
`16
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`IPR2017-01380
`Patent 9,045,163 B2
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`claims are entitled to priority based on the filing date of the ’490 App. PO
`
`Resp. 28–29.
`
`Patent Owner’s argument is unpersuasive because we disagree that
`
`claims 19, 23, and 24 exclude fluid fuel in the backbone. Claim 11, like
`
`claims 19, 23, and 24, all encompass a backbone having an “energy storage
`
`compartment” that must have “at least one of: a battery and fluid fuel.”
`
`Ex. 1001, 14:14–17. Accordingly, all these claims cover a chassis that has
`
`either a battery or fluid fuel or both. None of claims 19, 23, and 24
`
`expressly excludes fluid fuel in the energy storage compartment. Moreover,
`
`the only mention of which we are aware in the priority applications to a fuel
`
`tank occurs in the 2012 CIP, which states: “the fuel tank and rear energy
`
`management structure (not specifically shown) can be attached to the rear
`
`structure 16,” Ex. 1006 ¶ 32, which is not within the backbone. To be
`
`entitled to priority, the specification must describe the full scope of the
`
`claimed invention. Therefore, we determine that Petitioner has sufficiently
`
`established that claims 19, 23, and 24 are not entitled to priority earlier than
`
`July 24, 2013. Accordingly, Greil is prior art to claims 19, 23, and 24.
`
`5. Claims 2–4, 27–31, and 35: “T-shaped”
`
`Claim 2 recites that its backbone has a “T-shape as viewed from
`
`above,” and claims 3 and 4 include the same limitation through dependency
`
`from claim 2. Ex. 1001, 13:41–51. Independent claim 27 similarly recites
`
`that its central chassis structure has “T-shape when viewed from above,” and
`
`claims 28–31 include the same limitation through dependency from claim
`
`27. Id. at 15:15–41. Claim 35 recites that its central spine has “a T-shape
`
`when viewed from above.” Id. at 15:58–61. Petitioner contends that the
`
`concepts of a T-shaped central structure were “newly added” in the
`
`17
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`IPR2017-01380
`Patent 9,045,163 B2
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`’163 patent as Figures 30, 36, and 37 and the accompanying text. Pet. 27
`
`(citing Ex. 1011, 5, 12, 13, Figures 30, 36, 37). Because none of the priority
`
`applications describes the concept of a T-shaped central structure, Petitioner
`
`argues that claims 2–4, 27–31, and 35 are entitled only to the filing date of
`
`the Final App.
`
`Patent Owner does not contest Petitioner’s contentions on this issue.
`
`Based on our review of the Final App as compared to the priority
`
`applications, Petitioner persuades us by a preponderance of evidence that
`
`claims 2–4, 27–31, and 35 are only entitled to priority based on the filing
`
`date of the Final App. Accordingly, Greil is prior art to claims 2–4, 27–31,
`
`and 35.
`
`6. Claims 44, 45, 46, 48 and 49: “Vehicle Configuration”
`
`Independent claim 44 is directed to an automobile vehicle chassis
`
`“comprising a single, closed section backbone structure universally adapted
`
`to be the primary structural connection between front and rear wheels for at
`
`least two of the following vehicular configurations.” Ex. 1001, 16:49–53.
`
`Claim 44 then lists seventeen different “vehicular configurations” that are
`
`denominated as “(a)” through “(q).” Id. at 16:55–17:18. Claims 45, 46, 48,
`
`and 49 depend directly from claim 44. Id. at 18:1–17.
`
`Petitioner argues that none of the ’771 App, ’490 App, or 2012 CIP
`
`expressly or inherently describes configurations (a)–(f), all of which are
`
`directed to a form of hybrid drivetrain with varying combinations of the
`
`location of the engines and whether the front or rear pair of wheels is driven.
`
`Pet. 29–30; see also Ex 1001, 16:55–67 (reciting configurations (a)–(f)).
`
`Petitioner contends that the only mention of hybrid configurations in any of
`
`the priority applications appears in the ’771 App, which states: “[s]everal
`
`18
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`IPR2017-01380
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`variations of the basic chassis embodiment are disclosed to accommodate
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`rear wheel drive, front wheel drive, four wheel drive, as well as internal
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`combustion, electrical and hybrid p
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