Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 64
`
` Entered: January 29, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WESTINGHOUSE AIR BRAKE TECHNOLOGIES CORPORATION,
`Petitioner,
`
`v.
`
`SIEMENS MOBILITY, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01669
`Patent 6,824,110 B2
`____________
`
`
`Before KRISTEN L. DROESCH, MEREDITH C. PETRAVICK, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a), 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`Paper 64
`
` Entered: January 29, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WESTINGHOUSE AIR BRAKE TECHNOLOGIES CORPORATION,
`Petitioner,
`
`v.
`
`SIEMENS MOBILITY, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01669
`Patent 6,824,110 B2
`____________
`
`
`Before KRISTEN L. DROESCH, MEREDITH C. PETRAVICK, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a), 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2017-01669
`Patent 6,824,110 B2
`
`I. INTRODUCTION
`A. Background
`We have authority to hear this inter partes review under 35 U.S.C.
`§ 6, and this Final Written Decision is issued pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73. For the reasons that follow, we determine by a
`preponderance of the evidence that claims 1–9 and 11–19 (“challenged
`claims”) of U.S. Patent No. 6,824,110 B2 (Ex. 1001, “’110 Patent”) are
`unpatentable.
`
`B. Procedural History
`Westinghouse Air Brake Technologies Corporation (“Petitioner”)
`filed a Petition (Paper 1, “Pet.”) for inter partes review of the challenged
`claims of the ’110 Patent. See 35 U.S.C. §§ 311–312. Siemens Mobility,
`Inc. (“Patent Owner”) filed a Preliminary Response. Paper 8, “Prelim.
`Resp.” Pursuant to 35 U.S.C. § 314, we instituted trial on January 31, 2018,
`as to all of the challenged claims of the ’110 Patent (Paper 11, “Institution
`Decision” or “Dec.”).
`After institution of trial, Patent Owner filed a Response (Paper 17,
`“PO Resp.”), to which Petitioner filed a Reply (Paper 42, “Reply”).
`Petitioner relies on a Declaration of Steven R. Ditmeyer (Ex. 1002) to
`support its Petition. Patent Owner relies on a Declaration of Nabil Ghaly,
`Eng. Sc. D. (Ex. 2005) to support its Patent Owner Response. Both
`witnesses were cross-examined during the trial, and transcripts of their
`depositions are in the record. Ex. 1015 (Ghaly Deposition); Ex. 2006
`(Ditmeyer Deposition).
`
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`Patent 6,824,110 B2
`Petitioner filed a Motion to Exclude Exhibits 2010 and 2011 (Paper
`31, “Mot. to Excl.”), to which Patent Owner filed an Opposition (Paper 37,
`“Opp. Mot. to Excl.”), to which Petitioner filed a Reply (Paper 38).
`Patent Owner submitted Supplemental Information (Paper 41, “Supp.
`Info.”), to which Petitioner filed a Response (Paper 48, “Resp. Supp. Info.”).
`Petitioner filed a Motion to Exclude Exhibit 2017 (Paper 53, “2nd
`Mot. to Excl.”), to which Patent Owner filed an Opposition (Paper 56, “Opp.
`2nd Mot. to Excl.”), to which Petitioner filed a Reply (Paper 57).
`
`Oral argument was held on November 13, 2018. A transcript of the
`oral argument is included in the record. Ex. 2019 (“Tr.”).
`
`C. Related Proceedings
`The parties indicate the ’110 Patent is asserted in Siemens Industry,
`
`Inc. v. Westinghouse Air Brake Technologies Corporation, Case No. 1:16-
`cv-00284 (D. Del.). See Pet. viii; Paper 4, 1; Paper 7, 2.
`
`Petitioner indicates that the ’110 Patent is a continuation of U.S.
`Patent No. 6,609,049, for which Petitioner has requested inter partes review
`in Case No. IPR2017-02044. See Paper 7, 2.
`
`D. The ’110 Patent (Ex. 1001)
`The ’110 Patent discloses a system and method for automatically
`activating a train warning device, such as a train horn, at a grade crossing.
`See Ex. 1001, 1:14–18, 2:53–57. The system includes a control unit, a
`global positioning system (GPS) receiver, a database of crossing locations in
`the system, and an electrically activated horn. See id. at 2:30–58, Fig. 1.
`The control unit determines the next crossing based on the train location
`reported by the GPS receiver by indexing the database. See id. at 2:60–63,
`
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`Patent 6,824,110 B2
`Fig. 2:210. If the next crossing is subject to state regulations, the warning is
`activated in accordance with state regulations. See id. at 2:63–67, Fig.
`2:220, 230. If the next crossing is not subject to state regulations, the system
`treats the grade crossing as subject to Federal Regulation 49 C.F.R. § 222.
`See id. at 3:1–4, Fig. 2:220. In that case, the control unit determines whether
`the train is within ¼ mile of the crossing, and if it is, calculates the estimated
`time of arrival at the crossing based on the position and speed of the train
`reported by the GPS receiver. See id. at 3:4–10, Fig. 2:240, 250. If the
`estimated time of arrival is less than 24 seconds, the horn is activated. See
`id. at 3:12–14, Fig. 2:260, 270.
`
`E. Illustrative Claims
`Of the challenged claims, claims 1 and 11 are independent, with
`
`claims 2–9 dependent from claim 1, and claims 12–19 dependent from claim
`11. Claims 1 and 11 are illustrative and are reproduced below with labels
`added by Petitioner for ease of reference:
`1. A computerized method for activating a warning device
`on a train at a location comprising the steps of:
`[a] maintaining a database of locations at which the warning
`device must be activated and corresponding regulations
`concerning activation of the warning device;
`[b] obtaining a position of the train from a positioning
`system;
`[c] selecting a next upcoming location from among the
`locations in the database based at least in part on the
`position;
`[d] determining a point at which to activate the warning
`device in compliance with a regulation corresponding to
`the next upcoming location; and
`[e] activating the warning device at the point.
`
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`Patent 6,824,110 B2
`11. A system for automatically activating a warning device
`on a train at a location, the system comprising:
`[a] a control unit connected to the warning device;
`[b] a storage device connected to the control unit, the storage
`device having stored therein a database of locations at
`which the warning device must be activated and
`corresponding regulations concerning activation of the
`warning device;
`[c] a positioning system in communication with the control
`unit, the positioning system being configured to supply a
`position of the train to the control unit; and
`[d] wherein the control unit is configured to perform the
`steps of
`selecting a next upcoming location from among the
`locations in the database;
`[e] determining a point at which to activate the
`warning device in compliance with a regulation
`corresponding to the next upcoming location; and
`[f] activating the warning device at the point.
`Ex. 1001, 3:42–56, 4:17–36; see Pet. 64–66 (reproducing claims with
`added labels).
`
`F. Asserted Grounds of Unpatentability
`We instituted an inter partes review challenging the patentability of
`the following claims of the ’110 Patent on the following grounds and prior
`art (Pet. 10–62; Dec. 36–37):
`Claims
`Statutory Basis
`1–9 and 11–19
`§ 103
`1–7, 9, 11–17, 19
`§ 103
`
`Reference(s)
`FR22301 and Blesener2
`FR2230 and Haas3
`
`
`1 Ex. 1006, Use of Locomotive Horns at Highway-Rail Grade Crossings, 65
`Fed. Reg. 2230–2270 (Jan. 13, 2000) (“FR2230”).
`2 Ex. 1007, WO 02/091013 A2, published Nov. 14, 2002 (“Blesener”).
`3 Ex. 1008, US 6,519,512 B1, issued Feb. 11, 2003 (“Haas”).
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`Patent 6,824,110 B2
`Claims
`1–7, 9, 11–17, 19
`8 and 18
`
`Statutory Basis
`§ 103
`§ 103
`
`Reference(s)
`Byers4
`Byers and Michalek5
`
`II. ANALYSIS
`A. Principles of Law
`In Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966), the
`
`Supreme Court set out a framework for assessing obviousness under § 103
`that requires consideration of four factors: (1) the scope and content of the
`prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of skill in the art; and (4) the presence of objective
`indicia of nonobviousness. Id. at 17–18; KSR Int’l Co. v. Teleflex Inc., 550
`U.S. 398, 407 (2007).
`
`Objective indicia of nonobviousness, when present, must always be
`considered en route to the determination of obviousness. See Stratoflex, Inc.
`v. Aeroquip Corp., 713 F.2d 1530, 1538 (Fed. Cir. 1983). It is only a part of
`the “totality of the evidence;” its mere existence does not control the
`conclusion of obviousness. See Richardson-Vicks Inc. v. Upjohn Co., 122
`F.3d 1476, 1483 (Fed. Cir. 1997) (citations omitted). Objective indicia of
`nonobviousness “is only relevant to the obviousness inquiry ‘if there is a
`nexus between the claimed invention and the [objective indicia of
`nonobviousness].’” In re Affinity Labs of Tex., LLC, 856 F.3d 883, 901
`(Fed. Cir. 2017) (quoting Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299,
`1312 (2006)). A “nexus” is a legally and factually sufficient connection
`between the objective evidence and the claimed invention such that the
`
`
`4 Ex. 1011, US 7,095,861 B2, issued Aug. 22, 2006 (“Byers”).
`5 Ex. 1010, US 5,620,155, issued Apr. 15, 1997 (“Michalek”).
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`objective evidence should be considered in the determination of
`obviousness. In re Paulsen, 30 F.3d 1475, 1482 (Fed. Cir. 1994).
`
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016). The burden of persuasion never shifts to Patent Owner.
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
`(Fed. Cir. 2015). To prevail, Petitioner must support its challenge by a
`preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
`We analyze the challenges presented in the Petition in accordance with the
`above-stated principles.
`B. Person of Ordinary Skill in the Art
`In determining the level of skill in the art, we consider the type of
`
`problems encountered in the art, the prior art solutions to those problems, the
`rapidity with which innovations are made, the sophistication of the
`technology, and the educational level of active workers in the field. Custom
`Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir.
`1986); Orthopedic Equip. Co., Inc. v. United States, 702 F.2d 1005, 1011
`(Fed. Cir. 1983). Petitioner asserts a person of ordinary skill in the art
`as of July 1, 2002, would have had at least an undergraduate
`degree or the equivalent and at least five (5) years of experience
`in train operations or train control systems. . . . . Such a [person
`of ordinary skill in the art] would have had knowledge of train
`control systems, train safety systems that include wayside
`systems, and train communication systems, and would have
`understood how to search available literature for relevant
`publications.
`Pet. 9 (citing Ex. 1002 ¶¶ 33–34, 37–39).
`
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`Patent Owner asserts that their witness, Dr. Ghaly, and Petitioner’s
`witness, Mr. Ditmeyer, provide different definitions of a person of ordinary
`skill in the art for the ’110 Patent. See PO Resp. 12 (citing Ex. 1002 ¶ 38;
`Ex. 2004 ¶ 64). Nonetheless, Patent Owner asserts the difference should not
`affect the analysis of any issue raised in this inter partes review. See id.
`
`After considering the factors outlined in Custom Accessories and
`Orthopedic Equipment, we adopt Petitioner’s definition of a person of
`ordinary skill in the art.
`
`C. Claim Construction
`For petitions filed before November 13, 20186, claims of an unexpired
`
`patent are interpreted using the broadest reasonable interpretation in light of
`the specification. See 37 C.F.R. § 42.100(b) (2017); Cuozzo Speed Techs.,
`LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under the broadest
`reasonable interpretation standard, claim terms are given their ordinary and
`customary meaning as would be understood by one of ordinary skill in the
`art in the context of the entire disclosure. In re Translogic Tech., Inc., 504
`F.3d 1249, 1257 (Fed. Cir. 2007). Although claims are to be interpreted in
`light of the specification, limitations from the specification are not to be read
`into the claims. See E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364,
`1369 (Fed. Cir. 2003).
`
`
`6 A recent amendment to this rule does not apply here because the Petition
`was filed before November 13, 2018. See Changes to the Claim
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018)
`(amending 37 C.F.R. § 100(b) effective November 13, 2018).
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`
`Petitioner does not submit proposed constructions for any claim term
`or phrase. See Pet. 9–10. Patent Owner provides an explicit claim
`construction for “corresponding regulations.” See PO Resp. 12–25.
`“corresponding regulations”
`Claim 1 recites “maintaining a database of locations at which the
`
`warning device must be activated and corresponding regulations concerning
`activation of the warning device” (“database limitation”), and “determining
`a point at which to activate the warning device in compliance with a
`regulation corresponding to the next upcoming location” (“determining
`limitation”). Ex. 1001, 3:45–47, 3:53–55. Similar to claim 1, independent
`claim 11 recites “a control unit . . . ; a storage device . . . having stored
`therein a database of locations at which the warning device must be
`activated and corresponding regulations concerning activation of the
`warning device” (“database limitation”), and “the control unit is configured
`to perform the steps of . . . determining a point at which to activate the
`warning device in compliance with a regulation corresponding to the next
`upcoming location” (“determining limitation”). Ex. 1001, 4:20–25, 4:29–35.
`
`The ’110 Patent does not provide an explicit definition for
`“corresponding regulations.” See Ex. 1001. Indeed, “corresponding
`regulations,” or variants thereof, does not appear in the ’110 Patent
`Specification apart from claims 1 and 11. See id.; see also Tr. 42:7–8
`(Patent Owner’s counsel stating that “corresponding regulations” is not
`found in the ’110 Patent Specification; only in the claims.).
`
`In the Preliminary Response, Patent Owner set forth the following
`proposed construction for “corresponding regulations”: “governing
`regulations applicable for each location at which a warning device must be
`
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`activated, such as federal or state rules.” Prelim. Resp. 9, 13. For the
`purpose of the Institution Decision, we did not adopt Patent Owner’s
`proposed explicit claim construction, and determined that an explicit claim
`construction was not necessary. Dec. 6–7.
`
`Patent Owner requests reconsideration of the claim construction
`determinations from the Institution Decision. See PO Resp. 12. Patent
`Owner asserts that its proposed construction for “corresponding
`regulations,” which is “governing regulations applicable for each location at
`which a warning device must be activated, such as federal or state rules,” is
`the correct construction. See id. at 16–23. Patent Owner contends its
`proposed construction comports with the Federal Circuit’s articulated
`broadest reasonable construction standard, stems from the context in which
`the term is used in the claims, tracks the only description of the invention
`provided in the ’110 Patent Specification, and is consistent with the
`understanding of the terms by a person of ordinary skill it the art. See id. at
`17–22 (citations omitted).
`
`The plain language of claims 1 and 11 recites a database of locations
`(i.e., plural) at which the warning device must be activated and
`corresponding regulations (i.e., plural) concerning activation of the warning
`device, and, based on the determining limitation, further recites a regulation
`(i.e., one or more regulations) corresponding to the next upcoming location.
`We note that the recitation of “a regulation” in the determining limitations of
`claims 1 and 11 means “one or more regulations.” See KCJ Corp. v. Kinetic
`Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000) (“[A]n indefinite
`article a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in
`open-ended claims containing the transitional phrase ‘comprising.’”). To
`
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`IPR2017-01669
`Patent 6,824,110 B2
`illustrate the aforementioned concepts recited by the plain language of
`claims 1 and 11, we provide the following visual examples of the data
`maintained or stored in the database.
`
`Table 1 below depicts an example of data maintained or stored in a
`database, including plural locations, plural corresponding regulations, and
`one regulation corresponding to an upcoming location.
`Location A
`Regulation W
`Upcoming Location B
`Regulation X
`Table 1 above depicts two columns and two rows: the first column includes
`location A in the first row and upcoming location B in the second row; and
`the second column includes regulation W in the first row corresponding to
`location A in the first row, and regulation X in the second row
`corresponding to upcoming location B in the second row of the first column.
`
`Table 2 below depicts an example of data maintained or stored in a
`database, including plural locations, plural corresponding regulations, and
`plural regulations corresponding to an upcoming location.
`
`Location A
`Regulation W
`Regulation Z
`Upcoming Location B
`Regulation X
`Table 2 above depicts three columns and two rows: the first column
`includes location A in the first row and upcoming location B in the second
`row; the second column includes regulation W in the first row corresponding
`to location A in the first row of the first column, and regulation X in the
`second row corresponding to upcoming location B in the second row of the
`first column; and the third column includes regulation Z in the second row
`corresponding to upcoming location B in the second row of the first column.
`We also note that the plain language of claims 1 and 11 do not recite or
`require the regulations (e.g., Regulations W, X, and Z shown in the
`11
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`Patent 6,824,110 B2
`examples of Table 1 and Table 2) to be different from one another. Thus,
`the plain language of claims 1 and 11 permits the regulations (e.g.,
`Regulations W, X, and Z shown in the examples of Table 1 and Table 2) to
`be identical or different from one another.
`
`In contrast, Patent Owner’s proposed construction for “corresponding
`regulations” in the context of the plain language of the claims 1 and 11
`requires a database of locations (i.e., plural) at which the warning device
`must be activated and governing regulations (plural) applicable for each
`location at which a warning device must be activated, such as federal or
`state rules, concerning activation of the warning device, and, based on the
`determining limitation, further requires a regulation (i.e., one or more
`regulations) corresponding to the next upcoming location. In other words,
`Patent Owner’s construction requires plural regulations for each of the plural
`locations in the database. To illustrate the aforementioned concept required
`by the plain language of claims 1 and 11, as modified by Patent Owner’s
`explicit proposed claim construction, we provide the following visual
`example of data maintained or stored in the database.
`
`Table 3 below depicts an example of data maintained or stored in a
`database, including plural locations and plural regulations for each location,
`and one or more regulations corresponding to an upcoming location.
`Location A
`Regulation W
`Regulation Y
`Upcoming Location B
`Regulation X
`Regulation Z
`Table 3 above depicts three columns and two rows: the first column
`includes location A in the first row and upcoming location B in the second
`row; the second column includes regulation W in the first row corresponding
`to location A in the first row of the first column, and regulation X in the
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`second row corresponding to upcoming location B in the second row of the
`first column; and the third column includes regulation Y in the first row also
`corresponding to location A in the first row of the first column, and
`regulation Z in the second row also corresponding to upcoming location B in
`the second row of the first column. We note that the plain language of
`claims 1 and 11, as modified by Petitioner’s explicit proposed construction,
`also does not recite or require the regulations (e.g., Regulations W, X, Y,
`and Z shown in the example of Table 3) to be different from one another.
`
`We conclude that Patent Owner’s proposed construction adds
`additional limitations to claims 1 and 11 beyond what is recited by the plain
`language of claims 1 and 11 because Patent Owner’s proposed construction
`requires maintaining or storing plural regulations for each of the plural
`locations in the database. Our conclusion is supported by Patent Owner’s
`following arguments: (1) the ’110 Patent Specification “explains that the
`determination of when to sound a train’s horn depends on the analysis of
`state and federal regulations that may govern a certain location on the track”
`(PO Resp. 18); (2) Figure 2 of the ’110 Patent Specification shows
`consideration of state rules and federal rules for each location (see id. at 18–
`19 (reproducing Ex. 1001, Fig. 2; citing Ex. 1001, 2:58–3:14)); (3) the
`“proposed construction reflects the fact that the ‘corresponding regulations’
`may include both federal and state rules, and that the determination of when
`to sound the warning device depends on which stored rule governs at that
`next locations” (id. at 19); (4) the ’110 Patent Specification describes that
`the invention is necessitated at least in part by the fact that there are certain
`locations on tracks that require consideration of multiple, potentially
`conflicting rules, such as when state rules supersede federal rules at a
`
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`particular location (see id. at 19–20); and (5) “[t]he proposed construction
`provides context for the term ‘corresponding regulations’ . . . [a]nd it makes
`clear that the database must maintain multiple regulations, such as federal
`and state rules, so that a determination can be made” of which regulation
`governs any particular location (id. at 23).
`
`Patent Owner’s aforementioned arguments make clear that Patent
`Owner’s explicit proposed construction also seeks to import limitations from
`the ’110 Patent Specification into claims 1 and 11. Although claims are to
`be interpreted in light of the specification, it is improper to read limitations
`from the specification into the claims. See E-Pass, 343 F.3d at 1369.
`Further, it is improper to read limitations into a claim from the preferred
`embodiment described in the specification, even if it is the only embodiment
`described, absent clear disclaimer in the specification. In re Am. Acad. of
`Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (quoting Liebel–
`Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004); citing
`Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002)).
`As pointed out by Petitioner, instead of a disclaimer, the ’110 Patent
`Specification discloses: “‘[s]pecific details, such as regulations, distances
`and times, are set forth in order to provide a thorough understanding of the
`present invention. The preferred embodiments [i.e., Figure 2] and specific
`details discussed herein should not be understood to limit the invention.’”
`Reply 4 (quoting Ex. 1001, 2:23–28 (Petitioner’s additions and emphasis)).
`Petitioner also points out that the ’110 Patent Specification “explains that
`‘[o]bviously, numerous modifications and variations of the present invention
`are possible in light of the above teachings.’” Id. (quoting Ex. 1001, 3:37–
`39). We note the ’110 Patent Specification also discloses: “[i]t is . . . to be
`
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`understood that within the scope of the appended claims, the invention may
`be practiced otherwise than as specifically described herein.” Ex. 1001,
`3:39–41.
`
`Patent Owner also makes additional statements that undermine Patent
`Owner’s explicit proposed claim construction for “corresponding
`regulations.” Specifically, Patent Owner argues:
`Patent Owner is not suggesting that there must be multiple
`regulations stored for every location in the database, but there
`must be multiple regulations stored for some locations, or at least
`the capacity to store and make a determination among multiple
`locations. Indeed, the algorithm contemplates that certain
`locations would not have multiple regulations because it
`describes first looking to see whether state rules are in effect and,
`if none are stored or otherwise in effect at that location, then it
`will apply federal rules.
`PO Resp. 20 n.6. And at oral argument, Patent Owner’s counsel could not
`explain the specifics of how the corresponding regulations are stored in the
`database. See Tr. 43–45. Initially, Patent Owner’s counsel acknowledged
`that the text of the regulations are not stored in the database, but that there
`are parameters in the database for implementing each regulation. See Tr.
`43:7–9. According to Patent Owner’s counsel, parameters are “what one of
`skill in the art would understand to be stored in the database.” Id. at 43:7–
`10. In response to further questions regarding the parameters stored in the
`database, such as whether the parameters could be a data point that is either
`a true or false, a data point that is either a zero or one, a pointer to something
`else, or a variable for an algorithm, (see Tr. 43:11–44:7), Patent Owner’s
`counsel answered that “it can be implemented in probably numerous ways.”
`Tr. 44:8–9. Upon further questions regarding how the data maintained or
`stored in the database for “corresponding regulations” is implemented in the
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`Patent 6,824,110 B2
`’110 Patent (see Tr. 44:14–15), Patent Owner’s counsel acknowledged that
`the ’110 Patent Specification “describes essentially just storing the
`corresponding regulation, the governing regulations. I think one of skill in
`the art would implement that in any number of ways.” Tr. 44:16–18.
`Finally, in response to additional questions asking about the data or
`parameters in the database for “corresponding regulations,” whether it is a
`zero or one, true or false, or some variable (see Tr. 45:11–16), counsel for
`Patent Owner acknowledged that he did not know what exactly constitutes
`the parameter or data for “corresponding regulations,” and further stated “the
`specification is just telling you what is stored – what regulations govern
`activation.” Tr. 45:17–24.
`
`Based on the foregoing discussion, we summarize that Patent Owner’s
`explicit proposed construction requires maintaining or storing plural
`locations in the database and plural regulations for each of the plural
`locations in the database (see PO Resp. 16–20), yet, Patent Owner asserts
`that its proposed construction does not require multiple regulations stored
`for every location (see PO Resp. 20 n.6), and Patent Owner does not know
`how the data or parameters for “corresponding regulations” in the database
`are implemented in the ’110 Patent (see Tr. 43–45). We determine that in
`addition to improperly importing limitations from the Specification into the
`claims, Patent Owner’s contradictory positions counsel against adopting
`Patent Owner’s proposed construction.
`
`Patent Owner also asserts that the Board’s additional claim
`construction determinations in the Institution Decision are directly contrary
`to how the invention is described in the Specification and with how a person
`of ordinary skill in the art would understand “corresponding regulations.”
`
`
`
`16
`
`
`
`IPR2017-01669
`Patent 6,824,110 B2
`See PO Resp. 22; see also id. at PO Resp. 18–22 (addressing the ’110 Patent
`Specification disclosure and witness testimony pertaining to “corresponding
`regulations”). Specifically, Patent Owner takes issue with the following
`determinations from the Institution Decision: (1) the scope of claims 1 and
`11 include “corresponding regulations” that may be identical for all
`locations, and (2) claims 1 and 11 do not recite or otherwise require a
`determination by an onboard system of which regulation governs and
`particular track location. See id. at 22 (citing Dec. 6–7, 16, 23, 29). Patent
`Owner argues the ’110 Patent Specification “only describes a system that
`indexes a database 130 at step 210, and then determines whether state rules
`are in effect at a crossing and, if not, whether to apply the federal rule.” Id.
`(citing Ex. 1001, Fig. 2: steps 220–260, 2:56–3:14). Patent Owner asserts
`that there would be no point to these steps if the system was only required to
`store and apply one regulation. See id. at 22–23. According to Patent
`Owner, “the Board’s initial claim construction determination is improper as
`it is ‘divorced from the specification.’” Id. at 23 (citing In re Smith Int’l,
`Inc., 871 F.3d 1375, 1382 (Fed. Cir. 2017)).
`
`We do not agree with Patent Owner’s arguments. Patent Owner’s
`arguments utilize its proposed construction for “corresponding limitations”
`as a vehicle for importing additional limitations into the claim from the
`Specification despite these additional limitations (i.e., different regulations;
`determining which regulation applies) not being part of Patent Owner’s
`explicit proposed construction. We acknowledge that the ’110 Patent
`Specification discloses different regulations, i.e., state and federal
`regulations, and describes determining which regulation applies to a
`particular location (see Ex. 1001, Fig. 2), however, we decline Patent
`
`
`
`17
`
`
`
`IPR2017-01669
`Patent 6,824,110 B2
`Owner’s invitation to read limitations from the Specification into the claims
`because it is improper to do so. See E-Pass, 343 F.3d at 1369. Moreover,
`certain statements by Patent Owner, highlighted above, also undermine
`Patent Owner’s arguments. Specifically, Patent Owner asserts that the ’110
`Patent Specification discloses an “algorithm [that] contemplates that certain
`locations would not have multiple regulations because it describes first
`looking to see whether state rules are in effect and, if none are stored or
`otherwise in effect at that location, then it will apply federal rules.” PO
`Resp. 20 n.6. Stated another way, the ’110 Patent Specification discloses an
`algorithm that contemplates that certain locations may have only federal
`rules stored. Finally, we note that, at oral hearing, Patent Owner’s counsel
`also acknowledged that the inclusion of “such as state and federal” in Patent
`Owner’s explicit proposed construction was exemplary and may be
`removed. See Tr. 52:21–53:11.
`
`In sum, we determine that Patent Owner’s proposed construction for
`“corresponding regulations” is improper because it adds limitations from the
`Specification into the claims, and contradicts Patent Owner’s additional
`positions regarding what is disclosed in the ’110 Patent Specification. We
`further determine that no explicit construction for “corresponding
`regulations” is necessary. The plain language of claims 1 and 11 reciting a
`database of locations (i.e., plural) at which the warning device must be
`activated and corresponding regulations (i.e., plural) concerning activation
`of the warning device, and a regulation (i.e., one or more regulations),
`corresponding to the next upcoming location, as shown in the exemplary
`Tables 1 and 2 above, corresponds with the invention disclosed in the ’110
`Patent Specification (see Ex. 1001, 2:43–3:20; Fig. 2) and is consistent with
`
`
`
`18
`
`
`
`IPR2017-01669
`Patent 6,824,110 B2
`Patent Owner’s argument that the ’110 Patent discloses an algorithm that
`“contemplates that certain locations would not have multiple regulations.”
`See PO Resp. 20 n.6.
`
`Other Claim Terms and Phrases
`Aside from addressing “corresponding regulations,” for purposes of
`this Decision, we need not construe explicitly any additional claim terms or
`phrases. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`(Fed. Cir. 1999) (“[O]nly those terms need be construed that are in
`controversy, and only to the ext
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