Paper No. 9
`Trials@uspto.gov
`571-272-7822 Entered: February 27, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`IRON OAK TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01553
`Patent 5,699,275
`____________
`
`
`
`
`
`Before SALLY C. MEDLEY, PATRICK R. SCANLON, and
`ARTHUR M. PESLAK, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`Trials@uspto.gov
`571-272-7822 Entered: February 27, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`IRON OAK TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01553
`Patent 5,699,275
`____________
`
`
`
`
`
`Before SALLY C. MEDLEY, PATRICK R. SCANLON, and
`ARTHUR M. PESLAK, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`IPR2018-01553
`Patent 5,699,275
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`I. INTRODUCTION
`Samsung Electronics Co., Ltd. (“Petitioner”)1 filed a Petition for inter
`partes review of claim 1 of U.S. Patent No. 5,699,275 (Ex. 1001, “the
`’275 patent”). Paper 1 (“Pet.”). Iron Oak Technologies, LLC (“Patent
`Owner”) filed a Preliminary Response. Paper 8 (“Prelim. Resp.”).
`Institution of an inter partes review is authorized by statute when “the
`information presented in the petition . . . and any response . . . shows that
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a);
`see 37 C.F.R. § 42.108. Upon consideration of the Petition and Preliminary
`Response, we conclude the information presented shows that there is a
`reasonable likelihood that Petitioner would prevail in establishing the
`unpatentability of claim 1 of the ’275 patent.
`
`A. Related Matters
`The parties indicate that the ’275 patent is the subject of several court
`proceedings. Pet. 1–2; Paper 6, 2–3. The ’275 patent also is the subject of
`Board proceedings IPR2018-01552, IPR2019-00106, IPR2019-00110, and
`IPR2019-00111. Pet. 2; Paper 6, 3.
`
`B. The ’275 Patent
`The specification of the ’275 patent describes a system “for remote
`patching or updating of operating code located in a mobile unit.” Ex. 1001,
`[57]. The system includes a manager host operable to initiate transmission
`of a discrete patch message to a mobile unit. Id. The mobile unit is operable
`
`
`1 Petitioner, Samsung Electronics Co., Ltd., identifies Samsung Electronics
`America, Inc. as a real party-in-interest. Pet. 1.
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`to create patched operating code by merging the patch with the current
`operating code and to switch execution to the patched operating code. Id.
`The mobile unit also can receive a download message defining new
`operating code to replace current operating code. Id.
`
`C. Illustrative Claims
`Petitioner challenges claim 1 of the ’275 patent. Claim 1 is
`reproduced below.
`1. A system for remote patching of operating code
`located in a mobile unit, comprising:
`a manager host operable to initiate transmission through a
`wireless communication network of at least one discrete patch
`message defining at least one patch;
`a first mobile unit operable to receive the at least one
`discrete patch message, the first mobile unit further operable to
`create patched operating code by merging the at least one patch
`with current operating code located in the first mobile unit and to
`switch execution to the patched operating code; and
`a second mobile unit operable to receive the at least one
`discrete patch message, the second mobile unit further operable
`to create patched operating code by merging the at least one
`patch with current operating code located in the second mobile
`unit and to switch execution to the patched operating code; and
`wherein the manager host is further operable to address the
`at least one discrete patch message such that the at least one
`discrete patch message is transmitted to the first mobile unit but
`not to the second mobile unit.
`Id. at 13:32–53.
`
`D. Asserted Grounds of Unpatentability
`Petitioner asserts that claim 1 is unpatentable based on the following
`grounds (Pet. 3):
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`References
`Hapka2 and Parrillo3
`Hapka, Parrillo, and
`Wortham4
`
`Basis
`§ 103
`§ 103
`
`Challenged Claim
`1
`1
`
`II. DISCUSSION
`
`A. Claim Construction
`The ’275 patent is expired. Ex. 1001; Pet. 8. For claims of an expired
`patent, our claim interpretation is similar to that of a district court. See In re
`Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). Moreover, for claims of an
`expired patent, the Board construes claims to generally have their ordinary
`and customary meaning, as that meaning would be understood by one of
`ordinary skill in the art in the context of the entire patent disclosure. See
`Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc).
`Petitioner contends that the claims should be construed consistent with the
`principles set forth in Phillips. Pet. 8.
`
`Petitioner proposes constructions for the following claim terms found
`in challenged claim 1: “mobile unit,” “operating code,” “manager host
`operable to initiate transmission through a wireless communication network
`of at least one discrete patch message defining at least one patch,” “merging
`the at least one patch with current operating code,” and “manager host is
`further operable to address the at least one discrete patch message.” Pet. 8–
`16. Patent Owner does not oppose Petitioner’s proposed constructions. See
`generally Prelim. Resp.; id. at 4.
`
`
`2 U.S. Patent No. 5,619,412, issued Apr. 8, 1997 (Ex. 1008, “Hapka”).
`3 U.S. Patent No. 5,442,553, issued Aug. 15, 1995 (Ex. 1009, “Parrillo”).
`4 U.S. Patent No. 5,155,689, issued Oct. 13, 1992 (Ex. 1014, “Wortham”).
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`“merging the at least one patch with current operating code”
`Claim 1 recites “the first mobile unit [second mobile unit] further
`operable to create patched operating code by merging the at least one patch
`with current operating code.” Petitioner argues that “merging the at least
`one patch with current operating code” means “incorporating the at least one
`patch into the current operating code, without replacing the entire current
`operating code.” Pet. 12. Petitioner explains that the specification of the
`’275 patent consistently describes merging as incorporating at least one
`patch into the current operating code without replacing the entire operating
`code. Id. at 12 (citing Ex. 1001, 1:54–61, 2:2–5, 3:63–66, 4:65–5:10, 6:60–
`7:5, 7:28–30, 10:24–32, 11:22–25, 11:54–12:26). Petitioner further argues
`that the specification of the ’275 patent contrasts the patch process with
`downloading messages defining new operating code received to replace
`current operating code in the mobile units. Id. at 13 (citing Ex. 1001, 10:24–
`32). Petitioner further directs attention to the prosecution history of the ’275
`patent and “a German counterpart,” in support of its construction. Pet. 13–
`14 (citing Ex. 1004, 86–97; Ex. 1010, 4–5).
`Based on our review of the current record, we determine Petitioner’s
`proposed claim construction for the phrase “merging the at least one patch
`with current operating code” to be consistent with the specification and the
`prosecution history. Therefore, for purposes of this Decision, we adopt
`Petitioner’s proposed claim construction, interpreting “merging the at least
`one patch with current operating code” as “incorporating the at least one
`patch into the current operating code, without replacing the entire current
`operating code.”
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`“manager host is further operable to address
`the at least one discrete patch message”
`Claim 1 recites that the “manager host is further operable to address
`the at least one discrete patch message such that the at least one discrete
`patch message is transmitted to the first mobile unit but not to the second
`mobile unit.” Petitioner argues that “manager host is further operable to
`address the at least one discrete patch message” means that the “[manager
`host is further operable to] decide which specific mobile unit to send [the at
`least one discrete patch message] to before beginning transmission” of the
`message. Id. at 15. Petitioner argues that based on the claim language,
`“address” refers to determining the specific mobile unit to which the patch
`message is sent. Id. Petitioner further explains that the proposed
`construction is consistent with the specification of the ’275 patent. Id. at 15–
`16 (citing Ex. 1001, 2:19–24, 3:40–42, 4:11–20, 5:15–41).
`Based on our review of the current record, we determine Petitioner’s
`proposed claim construction for the phrase “manager host is further operable
`to address the at least one discrete patch message” to be consistent with the
`specification. Therefore, for purposes of this Decision, we adopt Petitioner’s
`proposed claim construction, interpreting “manager host is further operable
`to address the at least one discrete patch message” as “[manager host is
`further operable to] decide which specific mobile unit to send [the at least
`one discrete patch message] to before beginning transmission” of the
`message.
`For purposes of this decision, we need not expressly construe any
`other claim term at this time. See Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need
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`be construed that are in controversy, and only to the extent necessary to
`resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad
`Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid
`Techs. in the context of an inter partes review).
`
`B. Principles of Law
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter 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. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). 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 ordinary skill in the art;5 and (4) when in evidence, objective
`evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966).
`
`
`5 Relying on the testimony of Dr. Benjamin Bederson, Petitioner offers an
`assessment as to the level of skill in the art as of the earliest effective filing
`date on the face of the ’275 patent. Pet. 4 (citing Ex. 1002 ¶¶ 20–21). At
`this time, Patent Owner does not propose an alternative assessment. To the
`extent necessary, and for purposes of this Decision, we accept the
`assessment offered by Petitioner as it is consistent with the ’275 patent and
`the asserted prior art.
`
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`C. Asserted Obviousness of Claim 1 over Hapka and Parrillo
`Petitioner contends claim 1 is unpatentable under 35 U.S.C. § 103(a)
`as obvious over Hapka in view of Parrillo. Pet. 16–61. In support of its
`showing, Petitioner relies upon the declaration of Dr. Bederson. Id. (citing
`Ex. 1002).
`
`1. Hapka
`Hapka describes “[a] system for remotely accessing an engine control
`system and selectively controlling and changing an existing engine
`algorithm.” Ex. 1008 [57]. Hapka describes a remote command interface
`device that modifies data using translating software so it is readable by the
`engine control system. Id. at 3:23–25. The translating software may be
`incorporated into the computer terminal at the fixed base site, the on-board
`vehicle communications system, or the engine control system. Id. at 3:32–
`34. The system allows a remote user to enable or disable an engine idle
`shutdown device attached to a vehicle’s engine. Id. at 4:34–36. Figures 1a
`and 1b of Hapka are reproduced below.
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`Figure 1a of Hapka illustrates a block diagram of a vehicle control
`system.
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`Figure 1b illustrates a vehicle idle control system.
`Figure 1a of Hapka shows vehicle control system 1 with fixed base
`site equipment 37, on-board communications system 4 located on a vehicle,
`remote command interface section 35 and engine control system. 36. Id. at
`4:5–10. Fixed base site equipment includes computer 12 with radio
`telephone 24, modem 25, and communications channel 26. Id. at 4:10–12.
`Engine control system 36 includes engine control device 9 which includes
`microprocessor 33 for storing, processing, and implementing a sequence of
`data commands received from data bus 29. Id. at 4:25–29. Engine control
`device 9 is connected to idle shutdown device 2 which houses electronic
`control module 34 for monitoring throttle, clutch, and service brake. Id. at
`4:29–32.
`
`2. Parrillo
`Parrillo describes a wireless software upgrade system for mobile and
`stationary vehicles. Ex. 1009, 1:31–33. Parrillo describes that when specific
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`programs are upgraded or new algorithms are developed/adapted, the
`upgrade or complete new program is transmitted to the vehicle’s
`microprocessor during a time that the vehicle is not being used. Id. at 4:60–
`64. Figure 1 of Parrillo is reproduced below.
`
`
`
`Figure 1 of Parrillo illustrates a diagnostic and software upgrade
`system.
`Parrillo describes that in the operation of the wireless diagnostic and
`software upgrade system, remote station 12 interrogates vehicle 15 at some
`time when it is not being used. Id. at 4:65–68.
`3. Discussion
`The preamble of claim 1 recites “a system for remote patching of
`operating code located in a mobile unit.” The present record supports
`Petitioner’s contention that Hapka discloses a “system” which includes a
`fixed base site and components on board a vehicle, where the system
`provides remote updating of software for controlling the vehicle’s engine.
`Pet. 25 (citing Ex. 1008, 3:66–4:32, Figs. 1a–1b; Ex. 1002 ¶¶ 202–203). In
`particular, the present record supports the contention that Hapka’s described
`engine control system 36, which includes control device 9, microprocessor
`33, and idle shutdown device 2, on board a vehicle is a mobile unit. Id. at
`25–26 (citing Ex. 1008, 4:5–53, 6:9–29, Figs. 1a–1b; Ex. 1002 ¶¶ 202–203).
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`Petitioner asserts system 36 is a “mobile unit” under Petitioner’s
`construction because system 36 is mounted to or otherwise associated with a
`vehicle for use while in motion and is thus portable and battery-powered. Id.
`at 26–27 (citing Ex. 1008, 4:5–54, 5:1–12, 6:9–55, 7:32–8:61, Fig. 1b; Ex.
`1002 ¶¶ 202–203). Petitioner further argues that, to the extent Hapka’s
`system 36 is not battery-powered, it would have been obvious to configure
`system 36 to be battery-powered to further Hapka’s goal of modifying
`software code remotely while the vehicle is in motion. Id. at 27–28 (citing
`Ex. 1008, 2:17–28, 2:35–42, 3:7–10, 3:34–37, 9:45–54; Ex. 1002 ¶ 204).
`The present record further supports the contention that Hapka’s description
`of an algorithm, which Petitioner contends includes the sequence of
`operating commands implemented by a computer operated engine controller
`that is stored in the vehicle’s engine control system 36 (“mobile unit”) is
`“operating code.” Id. at 28–29 (citing Ex. 1008, 2:11–16, 3:65–4:4, 6:44–
`7:9, 8:33–61; Ex. 1002 ¶ 205). Petitioner further asserts that Hapka
`describes a system for remote patching of operating code located in a mobile
`unit, because engine control system 36 (“mobile unit”) can modify an engine
`algorithm (“operating code”) based on a received message from computer 12
`of a fixed base site. Id. at 29 (citing Ex. 1008, 2:36–46, 3:7–13, 8:33–61,
`Figs. 1a–1b; Ex. 1002 ¶¶ 206–207).
`Petitioner relies on Parrillo for its description of details of the claimed
`“patching of operating code” and provides reasons for combining Hapka and
`Parrillo. Pet. 30–39. In particular, Petitioner contends that Parrillo’s
`disclosure that an upgrade or a complete new program can be wirelessly
`transmitted from a remote station to a vehicle’s microprocessor meets the
`claimed “patching of operating code.” Id. at 30–35 (citing Ex. 1009,
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`Abstract, 1:28–38, 2:8–21, 2:32–3:28, 3:39–4:50, 4:60–5:2, 5:14–30, Figs.
`1, 2; Ex. 1002 ¶¶ 208–216). Petitioner provides reasons for combining
`Hapka and Parrillo, by explaining, for example, that due to the compatibility
`of Hapka and Parrillo, a person having ordinary skill in the art would have
`been motivated to implement the patching features of Parrillo to allow
`corrections and/or updates to be remotely installed in the current executing
`algorithms of Hapka’s vehicle components. Id. at 36 (citing Ex. 1002
`¶ 218). Petitioner provides additional reasons for combining, along with
`reasons why such a modification would have been expected to have been
`successful. Id. at 36–39.
`Claim 1 further recites “a manager host operable to initiate
`transmission through a wireless communication network of at least one
`discrete patch message defining at least one patch.” The present record
`supports the contention that Hapka’s base site equipment including computer
`12 is a manager host. Id. at 39–41. The host is operable to transmit
`information through a wireless network (communications channel 26) to one
`or more vehicles to transmit a message defining a modification of engine
`algorithms executed by the engine control system. Id. at 39 (citing Ex. 1008,
`4:5–7, 4:33–37, 4:54–66, Figs. 1a, 1b). The present record further supports
`the contention that Hapka describes that a fleet manager operates computer
`12 to provide updates to engine algorithms executed by the on-board
`components of a vehicle and thus initiates transmission of the messages to
`the mobile units. Id. at 40–41 (citing Ex. 1008, 8:33–41, Figs. 1a, 1b, 5).
`Petitioner further contends that Hapka begins transmission of the algorithm
`update message to vehicle components without first receiving a request for a
`patch from a mobile unit, and to the extent it does not, Parrillo discloses
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`beginning transmission without first receiving a request. Id. at 41–44 (citing
`multiple passages from Ex. 1008 and Ex. 1009; Ex. 1002 ¶¶ 228–231).
`Petitioner further provides reasons for making the modification to Hapka.
`Id. The present record further supports the contention that it would have
`been obvious to a person having ordinary skill in the art to configure
`Hapka’s computer 12 (manager host) in the combined Hapka-Parrillo system
`to be operable to transmit at least one discrete patch message defining at
`least one patch. Id. at 44–45. Petitioner contends that Hapka refers to
`communications sent from computer 12 to the vehicle’s component as
`messages, and, thus, the message transmitted defines a modification for an
`engine algorithm, given the instructions in the message are used by system
`36 to modify the engine algorithm. Id. at 45 (citing Ex. 1002 ¶ 233).
`Petitioner further contends that Parrillo similarly describes the use of a
`message to transmit software code updates for vehicle components. Id. at
`45–46 (citing Ex. 1009, 5:16–19). Petitioner concludes, for example, that a
`person having ordinary skill in the art would have reason to configure
`computer 12 to be operable to initiate transmission of the engine algorithm
`in the combined Hapka-Parrillo system via a separate and distinct message
`that included the updated code that eventually modifies the currently
`executed and installed algorithm by engine control system 36. Id. at 46
`(citing Ex. 1002 ¶ 234).
`Claim 1 further recites a “a first mobile unit operable to receive the at
`least one discrete patch message, the first mobile unit further operable to
`create patched operating code by merging the at least one patch with current
`operating code located in the first mobile unit and to switch execution to the
`patched operating code.” The present record supports the contention that
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`Hapka describes multiple mobile communications terminals (system 36
`located on a fleet of vehicles), any one of which is a first mobile unit. Id. at
`48 (citing Ex. 1002 ¶ 237). Further, the present record supports the
`contention that Hapka describes that the system 36 on a given vehicle
`receives an update message, and that the combined Hapka-Parrillo system
`discloses a discrete patch message that would be received by system 36 (at
`least one discrete patch message). Id. The present record also supports the
`contention that a person having ordinary skill in the art would have
`understood from Hapka that engine control system 36 was configured to
`incorporate the received information from computer 12 to modify the current
`algorithm executed by control system 36, which controls operations of
`engine 3. Id. at 49 (citing Ex. 1008, 3:65–4:4, 8:32–61; Ex. 1002 ¶ 238).
`Petitioner explains that while Hapka does not explicitly disclose that the
`modification to the existing algorithm is a partial update and not a wholesale
`replacement, it would have been obvious to a person having ordinary skill in
`the art to provide a patch to a portion of the engine algorithm code without
`replacing the algorithm stored and executed by the control system 36, in
`light of Parrillo. Id. at 50 (citing Ex. 1008, 3:65–4:4, 8:32–61; Ex. 1009,
`4:60–64; Ex. 1002 ¶¶ 239–240). Petitioner contends that a person having
`ordinary skill in the art would have been motivated to configure engine
`control system 36 such that the received software update code was merged
`with the existing software code executed and stored by control system 36 to
`allow new functionalities that a fleet manager intended for the target vehicle
`to be executed. Id. at 50 (citing Ex. 1002 ¶ 239). Petitioner further contends
`that the combined Hapka-Parrillo system discloses switching execution to
`the patched operating code, because a person having ordinary skill in the art
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`would have found it obvious to configure the system such that engine
`control system 36 would execute the updated engine algorithm to provide
`the objects and goals disclosed by Hapka. Id. at 52 (citing Ex. 1008, 10:3–
`11; Ex. 1002 ¶ 242).
`Claim 1 further recites a “a second mobile unit operable to receive the
`at least one discrete patch message, the second mobile unit further operable
`to create patched operating code by merging the at least one patch with
`current operating code located in the second mobile unit and to switch
`execution to the patched operating code.” Petitioner’s showing for this
`phrase is similar to the showing for the claimed “first mobile unit.” The
`present record supports the contention that Hapka in view of Parrillo meets
`this phrase of claim 1. Id. at 53–55 (citing multiple paragraphs from Ex.
`1008; Ex. 1002 ¶¶ 244–245).
`Claim 1 recites “wherein the manager host is further operable to
`address the at least one discrete patch message such that the at least one
`discrete patch message is transmitted to the first mobile unit but not to the
`second mobile unit.” Petitioner contends that Hapka discloses that computer
`12 (manager host) is operable to “address” the engine algorithm
`modification communication such that it is transmitted to engine control
`system 36 of the first vehicle but not to engine control 36 of a second
`vehicle, as Hapka’s fleet manager can transmit a message to “one or more
`vehicles in her fleet.” Id. at 55 (citing Ex. 1008, 8:33–38; Ex. 1002 ¶ 247).
`Petitioner further contends that, to the extent Hapka is found not to disclose
`that the manager host is operable to address the message as claimed, Parrillo
`discloses the claimed addressing element. Id. at 56–61 (citing Ex. 1009,
`2:10–14, 2:22–31, 5:14–46; Ex. 1002 ¶¶ 249–256).
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`Patent Owner argues that the Petition does not show that Hapka
`discloses patching operating code, because Hapka describes modifying the
`value of data or a parameter used by an algorithm, but does not describe
`modifying operating code. Prelim. Resp. 6–7. We are not persuaded by
`such arguments, because Hapka, for example, describes a “system that can
`change an existing engine algorithm from a remote location.” Ex. 1008,
`2:39–41. Dr. Bederson explains, directing attention to several passages in
`Hapka, that a person having ordinary skill in the art would have understood
`that Hapka discloses operating code because Hapka’s described algorithm is
`used to operate the engine control components, which control operations of
`engine 3, or any other engine operation that may be controlled and modified
`remotely as disclosed by Hapka. Ex. 1002 ¶ 205 (citing multiple supporting
`passages from Ex. 1008).
`Patent Owner further argues that Petitioner has failed to show that
`either Hapka or Parrillo discloses merging a patch with operating code and
`then switching execution to the patched operating code. Prelim. Resp. 8–11.
`Patent Owner argues that while Parrillo purports to upgrade software, it has
`no disclosure of how such software is upgraded, and does not describe
`transmitting “at least one patch message” to a mobile unit. We are not
`persuaded by Patent Owner’s conclusory attorney arguments. In essence,
`Patent Owner overlooks Petitioner’s showing, supported by the testimony of
`Dr. Bederson. In particular, Dr. Bederson testifies that Parrillo discloses
`remotely patching operating code of a mobile unit by upgrading portions of
`the programs installed and operating in vehicle components. Ex. 1002 ¶ 216
`(citing Ex. 1009, 4:60-64 where Parrillo describes that an “upgrade or
`complete new program is transmitted.”). Patent Owner’s argument does not
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`address the detailed explanation provided by Petitioner explaining how the
`prior art would have been understood by one of ordinary skill in the art
`based on their knowledge at the time of the invention.
`Based on the current record before us, we determine the information
`presented shows a reasonable likelihood that Petitioner would prevail in
`establishing that claim 1 is unpatentable under § 103 as obvious over Hapka
`and Parrillo.
`
` D. Asserted Obviousness of Claim 1 over Hapka, Parrillo, and Wortham
`
`Petitioner contends claim 1 is unpatentable under 35 U.S.C. § 103(a)
`as obvious over Hapka, Parrillo, and Wortham. Pet.61–64. In support of its
`showing, Petitioner relies upon the declaration of Dr. Bederson. Id. (citing
`Ex. 1002).
`Petitioner argues that to the extent the Hapka-Parrillo engine control
`system does not disclose or render obvious the mobile unit limitations under
`Petitioner’s construction (portable, battery-operated device for use while in
`motion), Wortham describes such a mobile unit. Pet. 61. Petitioner further
`provides reasons for combining the modified Hapka-Parrillo system with
`Wortham. Id. at 62–64. Patent Owner does not make separate arguments
`with respect to this challenge. See generally Prelim. Resp.
`Having reviewed Petitioner’s showing, and based on the current
`record before us, we determine the information presented shows a
`reasonable likelihood that Petitioner would prevail in establishing that claim
`1 is unpatentable under § 103 as obvious over Hapka, Parrillo, and
`Wortham.
`
`18
`
`
`
`IPR2018-01553
`Patent 5,699,275
`
`III. CONCLUSION
`For the foregoing reasons, we determine that the information
`presented establishes a reasonable likelihood that Petitioner would prevail in
`showing that claim 1 of the ’275 patent is unpatentable.
`
`IV. ORDER
`
`Accordingly, it is:
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`
`review is hereby instituted as to claim 1 of the ’275 patent on the grounds set
`forth in the Petition; and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; the trial
`will commence on the entry date of this decision.
`
`
`
`19
`
`
`
`IPR2018-01553
`Patent 5,699,275
`
`For PETITIONER:
`Joseph Palys
`Naveen Modi
`Phillip Citroen
`PAUL HASTINGS LLP
`josephpalys@paulhastings.com
`naveenmodi@paulhastings.com
`phillipcitroen@paulhastings.com
`
`For PATENT OWNER:
`
`Albert Deaver
`JONES WALKER LLP
`Adeaver@joneswalker.com
`
`Robert McAughan
`Jeffrey Andrews
`Christopher Lonvick
`YETTER COLEMAN LLP
`bmcaughan@yettercoeman.com
`jandrews@yettercoleman.com
`clonvick@yettercolemancom
`
`20
`
`
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