Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper 28
`Entered: January 22, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`DENSO CORPORATION,
`Petitioner,
`
`v.
`
`COLLISION AVOIDANCE TECHNOLOGIES INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01709
`Patent 6,268,803 B1
`____________
`
`Before BARRY L. GROSSMAN, MATTHEW R. CLEMENTS, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`MELVIN, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`Incorporating Decision on
`Petitioner’s Motion to Exclude Evidence
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`Paper 28
`Entered: January 22, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`DENSO CORPORATION,
`Petitioner,
`
`v.
`
`COLLISION AVOIDANCE TECHNOLOGIES INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01709
`Patent 6,268,803 B1
`____________
`
`Before BARRY L. GROSSMAN, MATTHEW R. CLEMENTS, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`MELVIN, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`Incorporating Decision on
`Petitioner’s Motion to Exclude Evidence
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`Case IPR2017-01709
`Patent 6,268,803 B1
`
`
`I.
`INTRODUCTION
`In this inter partes review, instituted under 35 U.S.C. § 314,
`Petitioner, Denso Corporation, challenges claims 1–9, 17–22, and 24–28 (the
`“challenged claims”) of U.S. Patent No. 6,268,803 B1 (Ex. 1001, “the ’803
`patent”). Petitioner presents its unpatentability arguments in its Petition
`(Paper 2, “Pet.”). Patent Owner, Collision Avoidance Technologies Inc.,
`filed a Preliminary Response. Paper 6. On January 23, 2018, in our
`Institution Decision, we instituted inter partes review of claims 1–9, 17–22,
`24, 25, and 28. Paper 7 (“DI”). On April 27, 2018, we expanded the scope of
`the review to include all challenged claims. Paper 14; SAS Inst., Inc. v.
`Iancu, 138 S. Ct. 1348 (2018). Patent Owner, Collision Avoidance
`Technologies Inc., presents its arguments against unpatentability in a
`Response (Paper 15, “PO Resp.”) and Petitioner responds in its Reply (Paper
`18, “Reply”).
`Petitioner filed a Motion to Exclude Patent Owner’s Evidence.
`Paper 20. Patent Owner filed a Response to Petitioner’s Motion (Paper 22)
`and Petitioner filed a Reply to the Motion (Paper 24).
`We held a joint hearing for IPR2017-01709 and IPR2017-01715 on
`October 2, 2018, and a transcript of the hearing appears in the record.
`Paper 27 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Final Written Decision
`is entered pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the
`reasons discussed below, Petitioner has shown by a preponderance of the
`evidence that claims 1–3, 5, 6, 9, 17–22, 24, 25, and 28 are unpatentable but
`has not proven that claim 4, 7, 8, 26, or 27 is unpatentable. Petitioner’s
`Motion to Exclude is dismissed.
`
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`A. RELATED MATTERS
`The parties identify two related federal district court cases involving
`the ’803 patent: Collision Avoidance Technologies Inc. v. Ford Motor
`Company, Case No. 6:17-cv-00051 (E.D. Tex. filed January 26, 2017) and
`Collision Avoidance Technologies Inc. v. Toyota Motor Sales, USA, Inc.,
`Case No. 6:16-cv-00971 (E.D. Tex. filed June 30, 2016). Pet. 56; Paper 3, 3.
`The ’803 patent also is the subject of four additional inter partes
`reviews: IPR2017-01336, challenging claims 1–8, 21, 22, 24, 25, and 28,
`and IPR2017-01337, challenging claims 9, 10, 17–22, and 24, both filed by
`RPX Corporation; IPR2017-01355, filed by Unified Patents Inc.,
`challenging claims 21, 22, and 24–28; and IPR2017-01715, filed by Denso
`Corporation, challenging claims 1–6, 10, 18–22, 24 and 26–28. The
`challenged claims and applied references in the five petitions challenging the
`’803 patent are summarized in the chart below.
`Case
`Petitioner
`Challenged Claims
`IPR2017-
`RPX Corporation 1–8, 21, 22, 24, 25, 28
`01336
`
`References1
`Naruse
`Gauthier
`Tagami
`Cherry
`Hayashikura
`Ramer
`Naruse
`Ramer
`Lemelson
`Cherry
`Gauthier
`Hayashikura
`
`IPR2017-
`01337
`
`RPX Corporation 9, 10, 17–22, 24
`
`
`1 We use the shorthand identification used in each Petition to identify the
`references asserted. Not all references are asserted against all claims in
`each case. As necessary, in other sections of this Decision, we provide
`complete citations of the specific references asserted against each claim.
`
`3
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`
`Case
`IPR2017-
`01355
`
`Petitioner
`Unified Patents
`Inc.
`
`IPR2017-
`01709
`
`IPR2017-
`01715
`
`Denso
`Corporation
`
`Denso
`Corporation
`
`Challenged Claims
`21, 22, 24–28
`
`References1
`Hayashikura
`Cherry
`Nakajima
`1–9, 17–22, and 24–28 Kikuta
`Nakajima
`Yamamoto
`Ichinose
`Hayashikura
`Yamamoto
`
`1–6, 10, 18–22, 24 and
`26–28
`
`B. THE ’803 PATENT
`The ’803 patent discloses a system and method to help drivers of
`vehicles avoid collisions. The disclosed system and method is a multi-sensor
`collision avoidance system which combines data from two or more sensors
`to provide range, range rate, or location information of objects in proximity
`to a vehicle. Ex. 1001, 1:8–10. To put the disclosed system in a specific
`context, some embodiments of the disclosed invention are in the context of a
`tractor-trailer truck. E.g., id. at 4:51–63 (tractor-trailer avoiding a post
`behind the truck; id. at 6:29–42 (tractor-trailer backing up to a loading
`dock).
`The basic elements of the disclosed system are shown in Figure 1
`from the ’803 patent, which is reproduced below.
`
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`Figure 1 from the ’803 patent is a schematic illustration of a control module
`and two sensors, with each sensor including a transmitter and a receiver. As
`shown in Figure 1, collision avoidance system 10 includes control module
`12 and at least two sensors 14. Ex. 1001, 3:36–42. Each sensor includes
`transmitter 16 and receiver l8. Id. The sensors may be, for example, acoustic
`transducers (id. at 3:43–44), micropower impulse radar devices (id. at 3:54–
`55), or microwave transceiver devices (id. at 3:62–63). A plurality of sensors
`may be mounted around the periphery of a vehicle. Id. at 4:5–7; Fig. 2.
`Figure 3 from the ’803 patent, reproduced below, shows a system
`block diagram of a more complete collision avoidance systems, including a
`plurality of peripheral sensors.
`
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`Figure 3 from the ’803 patent is a system block diagram of the disclosed
`collision avoidance system. As shown in Figure 3, sensors 14 are grouped in
`peripheral detection subsystems, such as a forward-looking detector
`subsystem, a proximity detector subsystem, and a rear-guard subsystem. Ex.
`1001, 4:15–19. The output of each sensor in each detection subsystem is fed
`into control module 12. Id. at 4:19–20. The system also includes operator
`interface 32 and optional subsystems, such as rear warning lights 98 and side
`warning lights 99. Id. at 4:21–25.
`Control module 12 takes readings from the sensors, triangulates from
`the data received, and calculates an actual perpendicular distance from the
`vehicle to an object, and its transverse location. Id. at 4:39–42, 60–63. The
`distance calculated and the “transverse location” of the object are displayed
`to the driver. Id. at 4:60–63; see also id. at 5:59–62 (“in one embodiment,
`
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`control module 12 calculates transverse location and communicates that
`information via a graphical indicator such as bar graph 22 of FIG. 4a.”). The
`Specification states that “the transverse location of the object” is a
`representation of whether the object is “directly behind the vehicle, off to the
`side, or far enough to the left or right that the driver will not hit it.”
`Id. at 2:12–15.
`According to the Specification, the triangulation procedure provides
`“a precision distance measuring system.” Id. at 4:47–48. In order to
`triangulate, however, the distance between sensors “must be known.”
`Id. at 5:44–45. In general operation, the transmitter of each sensor transmits
`a signal to its associated receiver, and the receiver receives the signal sent
`and transmits a return signal. The control module includes measurement
`circuitry to process the signals and determine the distance and transverse
`location of a detected object. Id. at 2:49–67.2
`
`C. CHALLENGED CLAIMS
`Petitioner challenges claims 1–9, 17–22, and 24–28. Challenged
`claims 1, 5, 9, 17, and 21 are independent. Claim 1 (reproduced below) is
`illustrative of the claimed subject matter:
`1. A collision avoidance system, comprising:
`a control module;
`a plurality of transmitting devices connected to the control
`module, wherein the plurality of transmitting devices
`
`2 We note to ensure full consideration of the entire disclosure of the ’803
`patent that the patent includes a fifty-one page Certificate of Correction.
`Ex. 1001, 48–98 (Cert. of Correction). Beginning at column 16, line 64,
`the Certificate of Correction adds 46 pages of detailed description of the
`disclosed invention. Numerous other corrections are made to the
`Specification and drawings.
`
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`includes a first and a second transmitting device,
`wherein the first and second transmitting devices
`transmit a first signal and a second signal, respectively;
`a plurality of receiving devices connected to the control
`module, wherein the plurality of receiving devices
`includes a first and a second receiving device, wherein
`the first receiving device receives a return representative
`of the signal transmitted from the first transmitting
`device and transmits to the control module a first return
`signal representative of the first return and wherein the
`second receiving device receives a return of the signal
`transmitted from the second transmitting device and
`transmits to the control device a second return signal
`representative of the return; and
`wherein the control module includes measurement circuitry
`used to measure the first and second return signals and
`calculate a transverse location of an object as a function
`of said first and second return signals and further
`wherein the control module includes a display means for
`displaying the transverse location.
`Ex. 1001, 17:7–32.
`
`D. PROPOSED GROUNDS OF UNPATENTABILITY
`Petitioner asserts the following grounds of unpatentability:3
`Basis
`Claim(s) Challenged
`Reference(s)
`§ 102(b)
`1–3, 5, 6, 9, 21, and 25–27 Kikuta4
`
`
`3 The America Invents Act included revisions to, inter alia, 35 U.S.C. § 103
`effective on March 16, 2013. Because the ’803 patent issued from an
`application filed before March 16, 2013, the pre-AIA versions of
`35 U.S.C. §§ 102 and 103 apply.
`4 JPU S60-41878 (Ex. 1005 (English translation); Ex. 1008 (Japanese
`original)).
`
`8
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`
`Basis
`§ 102(b)
`§ 103(a)
`§ 102(b)
`§ 103(a)
`§ 103(a)
`
`Claim(s) Challenged
`21, 22, and 25–28
`4, 7, 8, 21, and 22
`17
`18–20, and 24
`18–20, and 24
`
`Reference(s)
`Nakajima5
`Kikuta and Nakajima
`Yamamoto6
`Yamamoto and Kikuta
`Yamamoto and Nakajima
`
`Pet. 2. Petitioner also relies on the declaration of Dr. Art MacCarley, Ph.D.
`(Exhibit 1003). Id.
`
`E. LEGAL FRAMEWORK
`“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) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”)); see also 37 C.F.R. § 42.104(b)
`(requiring a petition for inter partes review to identify how the challenged
`claim is to be construed and where each element of the claim is found in the
`prior-art patents or printed publications relied upon). Petitioner cannot
`satisfy its burden of proving obviousness by employing “mere conclusory
`statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed.
`Cir. 2016).
`
`
`5 JPA H7-92265 (Ex. 1006 (English translation); Ex. 1009 (Japanese
`original)).
`6 JPA H7-35848 (Ex. 1007 (English translation); Ex. 1010 (Japanese
`original)).
`
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`A patent claim is unpatentable under 35 U.S.C. § 102 if “the four
`corners of a single, prior art document describe every element of the claimed
`invention, either expressly or inherently, such that a person of ordinary skill
`in the art could practice the invention without undue experimentation.”
`Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed.
`Cir. 2000). “A single prior art reference may anticipate without disclosing a
`feature of the claimed invention if such feature is necessarily present, or
`inherent, in that reference.” Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 958
`(Fed. Cir. 2014) (citing Schering Corp. v. Geneva Pharm., 339 F.3d 1373,
`1377 (Fed. Cir. 2003)). We analyze the grounds based on anticipation in
`accordance with the above-stated principles.
`An invention is not patentable “if the differences between the subject
`matter sought to be patented and the prior art are such that the subject matter
`as a whole would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains.”
`35 U.S.C. § 103(a).7 The question of obviousness is resolved on the basis of
`underlying factual determinations including (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) where in evidence, so-called
`secondary considerations, including commercial success, long-felt but
`unsolved needs, and failure of others. Graham v. John Deere Co.,
`383 U.S. 1, 1718 (1966). When evaluating a combination of teachings, we
`
`
`7 The America Invents Act included revisions to, inter alia, 35 U.S.C. § 103
`effective on March 16, 2013. Because the application resulting in the ’798
`patent was filed before March 16, 2013 (see Ex. 1001, (22)), the pre-AIA
`version of 35 U.S.C. § 103 applies.
`
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`also “determine whether there was an apparent reason to combine the known
`elements in the fashion claimed by the patent at issue.” KSR Int’l Co. v.
`Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441, F.3d 977,
`988 (Fed. Cir. 2006)). Whether a combination of elements produced a
`predictable result weighs in the ultimate determination of obviousness. KSR,
`550 U.S. at 416–17.
`
`II. DISCUSSION
`A. REAL PARTY IN INTEREST
`Patent Owner “objects to the Board’s denial of discovery under
`37 C.F.R. §§ 42.51 & 42.52.” PO Resp. 2. To the extent Patent Owner is
`referring to the determination, in our Decision on Institution, that Patent
`Owner had not presented sufficient evidence that Toyota is an unnamed real
`party-in-interest to this proceeding (Inst. Dec. 12–13), we note that Patent
`Owner neither requested rehearing of that Decision nor subsequently sought
`authorization for a Motion for Additional Discovery. However, in light of
`the Federal Circuit’s subsequent decisions in Applications in Internet Time,
`LLC v. RPX Corp., 897 F.3d 1336, 1351 (Fed. Cir. 2018) and in Worlds Inc.
`v. Bungie, Inc., 903 F.3d 1237, 1241 (Fed. Cir. 2018), we reconsider the
`arguments and evidence raised in Patent Owner’s Preliminary Response .
`A petition for inter partes review may be considered only if, inter
`alia, “the petition identifies all real parties in interest” (RPIs). 35 U.S.C.
`§ 312(a)(2). “[T]he Board generally accepts an IPR petitioner's identification
`of the real parties in interest at the time the petition is filed.” Worlds,
`903 F.3d at 1241 (citations omitted). This does not shift the burden of
`persuasion, which remains on the Petitioner. Id.
`
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`A patent owner must produce some evidence to support an argument
`that a particular third party should be named a real party in interest. Id. at
`1242 (citations omitted). When a patent owner provides sufficient evidence
`prior to institution that reasonably brings into question the accuracy of a
`petitioner's identification of RPIs, the overall burden remains with the
`petitioner to establish that it has complied with the statutory requirement to
`identify all RPIs. Unified Patents Inc. v. Bradium Technologies, Inc.,
`IPR2018-00952, 2018 WL 6721788, at *2 (Dec. 20, 2018) (citing Zerto, Inc.
`v. EMC Corp., Case No. IPR2014-01295, slip op. at 6–7 (PTAB Feb. 12,
`2015) (Paper 31)).
`“Determining whether a non-party is a ‘real party in interest’ demands
`a flexible approach that takes into account both equitable and practical
`considerations, with an eye toward determining whether the non-party is a
`clear beneficiary that has a preexisting, established relationship with the
`petitioner.” Applications in Internet Time, 897 F.3d at 1351.
`Here, we determined in our Decision to Institute that the Patent
`Owner’s “evidence” was not sufficient to raise a reasonable question
`concerning the real party-in-interest. Dec. Inst. 12–13. In its Preliminary
`Response, Patent Owner asserts that we should deny the Petition in its
`entirety because Petitioner fails to name Toyota Motor Sales U.S.A., Inc.
`(“Toyota Motor Sales”) as a real party in interest. Prelim. Resp. 27–28.
`Patent Owner relies on the fact that Toyota Motor Sales is a defendant in
`Patent Owner’s district-court infringement action and that Toyota Motor
`Sale’s lead counsel in that district court case is Petitioner’s backup counsel
`in this proceeding. Id. Patent Owner further relies on Petitioner Denso listing
`“Toyota-related entities as its top TWO shareholders in its most recent
`
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`Annual Report.” Id. at 28. The two “Toyota-related entities” cited by Patent
`Owner are Toyota Motor Corporation and Toyota Industries Corporation. Id.
`(citing Ex. 2002). Patent Owner provides neither persuasive argument nor
`evidence, however, establishing any legal or other relationship between
`Toyota Motor Sales (the alleged omitted real party-in-interest) and Toyota
`Motor Corporation or Toyota Industries Corporation. Patent Owner argues
`that, based solely on the foregoing assertions, we should determine that
`Petitioner failed to name all real parties in interest and decline to institute
`review. Id. at 28–29. Alternatively, Patent Owner argues “if the Board is
`inclined to investigate further Petitioner’s status as real party-in-interest,
`Patent Owner requests the opportunity to conduct discovery related to the
`real party in interest.” Id. (emphasis added).
`We determined in our Decision to Institute that Patent Owner did not
`raise an issue based on evidence or law regarding Petitioner’s identification
`of the real party in interest sufficient to either deny the Petition or warrant
`further discovery. Dec. Inst. 12–13. As we explained, the fact that (1) Toyota
`Motor Corporation and Toyota Industries Corporation owned in 2016 a
`significant, but minority, share of Denso Corporation’s stock and (2) a
`different Toyota-named company, Toyota Motor Sales, shares counsel with
`Petitioner does not demonstrate that Toyota Motor Sales, a defendant in
`district court litigation, controls or has the opportunity to control Petitioner’s
`positions in this proceeding. Id. We adopt this analysis and conclusion in
`this Final Written Decision.
`We also stated in our Decision to Institute that “Our factual findings
`and determinations at this stage of the proceeding are preliminary, and based
`on the evidentiary record developed thus far.” Dec. Inst. 2. Patent Owner
`
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`made no effort to further develop the evidentiary record regarding the real
`party-in-interest issue or to follow our rules regarding requests for additional
`discovery. Patent Owner did not, for example, seek authorization to file a
`motion for discovery. The “objection” in its Patent Owner Response (PO
`Resp. 2 (Patent Owner “objects to the Board’s denial of discovery”)) does
`not constitute a request for authorization for such a motion. Thus, Patent
`Owner’s only “request” for discovery in this case is the conditional
`statement in its Preliminary Response that “if the Board is inclined to
`investigate further Petitioner’s status as real party-in-interest, Patent Owner
`requests the opportunity to conduct discovery related to the real party in
`interest” (Prelim. Resp. 28–29 (emphasis added)).
`The general rules governing our requirements for motions are set forth
`in 37 C.F.R. §§ 42.20–25. The specific rules governing discovery motions
`are set forth in 37 C.F.R. §§ 42.51, 42.52. See also Garmin Int’l v. Cuozzo
`Speed Techs LLC, IPR2012-00001, Paper 26 (PTAB Mar. 5, 2013)
`(precedential) (discussing the standards for “additional” discovery requests
`in inter partes reviews, and explaining the factors for evaluating motions for
`additional discovery). Patent Owner’s one sentence contingent request in its
`Preliminary Response (“if the Board is inclined . . .) does not meet the
`requirements of a discovery motion.
`Rule 51(b)(2) states the required showing for a motion for additional
`discovery in an inter partes review proceeding. The moving party “must
`show that such additional discovery is in the interests of justice.”
`37 C.F.R. § 42.51(b)(2); see also 35 U.S.C. § 316(a)(5)(B) (“The Director
`shall prescribe regulations . . . setting forth standards and procedures for
`discovery of relevant evidence, including that such discovery shall be
`
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`limited to . . . what is otherwise necessary in the interest of justice”).
`Rule 52(a) states “[a] party seeking to compel testimony or production of
`documents or things must file a motion for authorization.” 37 C.F.R.
`§ 42.52(a). Patent Owner complied with neither rule.
`Moreover, there is no evidence establishing that the undefined,
`unlimited, informal request for “discovery” in Patent Owner’s Preliminary
`Response is in the interests of justice. The mere possibility of finding
`something useful, and mere allegation that something useful will be found,
`are insufficient to demonstrate that the requested discovery is necessary in
`the interest of justice. Garmin, slip op. at 6. The party requesting discovery
`should already be in possession of evidence tending to show beyond
`speculation that in fact something useful will be uncovered. Id. There is no
`evidence that the two named 2016 shareholders in Petitioner Denso’s 2016
`Annual Report, Toyota Motor Corporation and Toyota Industries
`Corporation, played any role in making decisions related to this IPR
`proceeding filed June 30, 2017.8 There also is no evidence that the two
`named shareholders in Denso have any relationship to Toyota Motor Sales,
`the named defendant in Patent Owner’s infringement litigation and alleged
`omitted real party-in-interest.
`In discussing the issue of whether a party is a real party-in-interest for
`purposes of an inter partes review, the Office Patent Trial Practice Guide
`cites Gonzalez v. Banco Cent. Corp., 27 F.3d 751, 759 (1st Cir. 1994). See
`77 Fed. Reg. 48,759. As explained in Gonzalez, “the concept of substantial
`control can be illustrated better by examples than by linguistic constructs.”
`
`
`8 Exhibit 2002, on which Patent Owner relies, is a 2016 Annual Report “For
`the year ended March 31, 2016.
`
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`Gonzalez, 27 F.3d at 759. For instance, substantial control has been found
`where a liability insurer assumes the insured’s defense; where an indemnitor
`participates in defending an action brought against the indemnitee; and
`where the owner of a close corporation assumes control of litigation brought
`against the firm. Id. (citations omitted). Conversely, courts have refused to
`find substantial control merely because a nonparty retained the attorney who
`represented a party to the earlier action; the nonparty assisted in financing
`the earlier action; the nonparty testified as a witness in the earlier action; the
`nonparty procured witnesses or evidence; or the nonparty furnished its
`attorney's assistance. Id. (citations omitted).
`The fact that a lawyer is representing both Toyota Motor Sales in the
`infringement litigation and Petitioner Denso in this IPR proceeding does not
`establish a sufficient relationship between Toyota Motor Sales and Petitioner
`Denso to justify the undefined, unlimited, informal request for “discovery”
`in its Preliminary Response.
`We note that the complaint filed in district court against Toyota Motor
`Sales was filed on June 30, 2016. The Petition in the case before us was filed
`by Petitioner on June 30, 2017. See Paper 5 (stating that the Petition “has
`been accorded the filing date of June 30, 2017.”). There is neither argument
`nor evidence in the record before us asserting that the Petition in this
`proceeding was filed more than 1 year after the date on which the petitioner,
`real party in interest, or privy of the petitioner was served with a complaint
`alleging infringement of the patent. See 35 U.S.C. § 315(b). Thus, this is not
`a case in which Patent Owner argues that the Petition is time-barred under
`§ 315(b).
`
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`The only evidence cited to us by Patent Owner was one page from
`Petitioner Denso’s 2016 Annual Report. See Prelim. Resp. 28 (citing
`Ex. 2002, 59). This page lists the 10 principal shareholders in Denso. As
`stated above, the top two shareholders are Toyota Motor Corporation, and
`Toyota Industries Corporation. Neither of these companies are named as
`defendants in the infringement suit filed by Patent Owner against Toyota
`Motor Sales alleging infringement of the ’803 patent. There is no evidence
`of any relationship between Toyota Motor Corporation or Toyota Industries
`Corporation and Toyota Motor Sales (the asserted omitted RPI) other than
`the fact that all three use the word “Toyota” in their name. Thus, based on
`the evidence, we determined there was no basis on the record before us for
`speculative additional discovery.
`In both Worlds Inc. and Applications in Internet Time, there was a
`question under 35 U.S.C. § 315(b) as to whether the petition was time
`barred. In both Worlds Inc. and Applications in Internet Time, the patent
`owner filed a motion for additional discovery in accordance with our rules.
`Worlds Inc., 903 F.3d at 1239–40 (“Worlds moved under 37 C.F.R.
`§ 42.51(b) for routine discovery or, alternatively, additional discovery”
`regarding whether Activision should have been named as a real party in
`interest to the proceedings); Applications in Internet Time, 897
`F.3d at 1339–40 (“AIT filed motions for additional discovery” to compel
`RPX to produce documents relevant to identifying the real parties in
`interest). Neither situation applies in this case. Here, there was no issue
`about a time-bar under § 315(b) and there was no motion filed seeking
`additional discovery.
`
`17
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`Case IPR2017-01709
`Patent 6,268,803 B1
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`Under the Board's procedures, the burden is on the party seeking
`discovery to show that the requested discovery would be likely to produce
`favorable evidence. 37 C.F.R. § 42.51(b)(2) (“The moving party must show
`that such additional discovery is in the interests of justice.”). Here, Patent
`Owner was not entitled to additional discovery regarding the real party-in-
`interest because it failed to file a motion seeking additional discovery in
`accordance with our rules, and failed to meet its burden for obtaining such
`discovery
`
`B. MOTION TO EXCLUDE
`Petitioner moves to exclude Exhibits 2004 and 2005 from this case,
`along with portions of papers that reference those exhibits. Paper 20
`(“Motion”), 1. Petitioner argues that those exhibits are inadmissible hearsay.
`Id. It also argues they are irrelevant, unduly prejudicial, misleading, and
`confuse the issues. Id. Exhibit 2004 is the testimony of Mr. Myles Kitchen
`taken during a deposition in IPR2017-01355, where he was Unified
`Patents’s declarant (Ex. 2004, 1) and Exhibit 2005 is the testimony of Dr.
`Nikolaos Papanikolopoulos taken during a deposition in IPR2017-01336 and
`IPR2017-01337, where he was RPX’s declarant (Ex. 2005, 8:10–14). The
`parties agree that after Patent Owner submitted Exhibits 2004 and 2005 with
`its Response, Patent Owner refused to contact the declarants of the
`respective exhibits to arrange for a deposition by Petitioner. Tr. 37:11–14,
`44:13–14. There is also no dispute that Petitioner properly objected to the
`challenged evidence. Paper 16.
`When Patent Owner refused to contact the declarants whose testimony
`it submitted as evidence, Petitioner did not raise the issue with the Board as
`contemplated by our rules. Tr. 77:1–15; see 37 C.F.R. § 42.53(d)(1) (“If the
`
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`Case IPR2017-01709
`Patent 6,268,803 B1
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`parties cannot agree, the party seeking the testimony must initiate a
`conference with the Board to set a time and place.”). Petitioner contends that
`the rule requiring a party to seek assistance from the Board does not apply
`where the opposing party denies the availability of a deposition outright.
`Tr. 77:9–12.
`For Exhibit 2004, Patent Owner cites Mr. Kitchens’s testimony to
`support what the Specification’s “fusion algorithm” teaches. PO Resp. 10–
`11 (arguing that Mr. Kitchens’s testimony agrees that “[t]he fusion algorithm
`itself teaches the merger of multiple object tracks to resolve location and
`distance, as well as updating location and distance location data based on
`additional input from sensors after a track is created.”). We do not
`understand the parties to dispute that proposition and therefore have no
`reason to consider Mr. Kitchens’s testimony. Accordingly, we dismiss as
`moot Petitioner’s motion as to Exhibit 2004.
`Similarly, Patent Owner does not rely on Exhibit 2005 for any
`disputed issue in this case. See PO Resp. 7 (citing Ex. 2005 only to argue
`that we should discount Dr. Papanikolopoulos’s opinion regarding claim
`construction). Because neither party argues we should consider Dr.
`Papanikolopoulos’s testimony when construing the claims in this case, we
`dismiss as moot Petitioner’s motion as to Exhibit 2005.
`
`C. LEVEL OF ORDINARY SKILL IN THE ART
`Petitioner submits that a person of ordinary skill in the art at the time
`of invention would have had “a bachelor’s degree in electrical engineering
`or an equivalent engineering or science specialization, and at least two years
`of experience with automotive sensor systems, electrical devices, and
`
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`displays.” Pet. 15 (citing Ex. 1003 ¶ 41). Patent Owner does not propose a
`different level of skill. See generally PO Resp.
`Based on the record, we adopt Petitioner’s proposed level of skill
`because it reflects the considerations behind it, it is a balanced consideration
`of education and relevant work experience, and it is consistent with the ’803
`patent and the asserted prior art.
`
`D. CLAIM CONSTRUCTION
`The ’803 patent expired on August 6, 2018. Ex. 1001, (22); 35 U.S.C.
`§ 154(a)(2). Thus, the claim-construction standard from Phillips v. AWH
`Corp., 415 F.3d 1303 (Fed. Cir. 2005), applies. See 37 C.F.R. 42.100(b)
`(2016);9 In re CSB-Sys. Int’l, Inc., 832 F.3d 1335, 1342 (Fed. Cir. 2016),
`cert. denied sub nom. CSB-Sys. Int’l, Inc. v. Lee, 137 S. Ct. 1384, (2017)
`(“[O]nce a patent expires, the PTO should apply the Phillips standard for
`claim construction.”); Black & Decker, Inc. v. Positec USA, Inc., 646 F.
`App’x 1019, 1024 (Fed. Cir. 2016) (noting that BRI was an “improper
`standard” when the patent expired before the Board’s final written decision).
`The “words of a claim are generally given their ordinary and
`customary meaning,” which is “the meaning that the term would have to a
`person of ordinary skill in the art in question at the time of the invention, i.e.,
`as of the effective filing date of the patent application.” Phillips, 415 F.3d at
`1312–13. The specification is “the single best guide to the meaning of a
`
`
`9 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)
`(to be codified at 37 C.F.R. pt. 42).
`
`
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`disputed term and . . . acts as a dictionary when it expressly defines terms
`used in the claims or when it defines terms by implicati
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