Trials@uspto.gov
`571-272-7822
`
`Paper 33
`Entered: July 21, 2021
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`KEEP TRUCKIN, INC.,
`Petitioner,
`v.
`INNOVATIVE GLOBAL SYSTEMS, LLC,
`Patent Owner.
`
`IPR2020-00694
`Patent 10,157,384 B2
`
`
`
`Before JUSTIN T. ARBES, JOHN F. HORVATH, and
`FREDERICK C. LANEY, Administrative Patent Judges.
`
`LANEY, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 33
`Entered: July 21, 2021
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`KEEP TRUCKIN, INC.,
`Petitioner,
`v.
`INNOVATIVE GLOBAL SYSTEMS, LLC,
`Patent Owner.
`
`IPR2020-00694
`Patent 10,157,384 B2
`
`
`
`Before JUSTIN T. ARBES, JOHN F. HORVATH, and
`FREDERICK C. LANEY, Administrative Patent Judges.
`
`LANEY, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`IPR2020-00694
`Patent 10,157,384 B2
`
`INTRODUCTION
`I.
`This is a Final Written Decision in an inter partes review challenging
`the patentability of claims 1–11 and 14–20 (“Challenged Claims”) of U.S.
`Patent No. 10,157,384 B2 (Ex. 1001, “the ’384 patent”). We have
`jurisdiction under 35 U.S.C. § 6 and enter this Decision pursuant to
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons set forth below,
`we determine that Petitioner has shown, by a preponderance of the evidence,
`that claims 1–11 and 14–20 are unpatentable. See 35 U.S.C. § 316(e).
`II. BACKGROUND
`A. Procedural History
`Keep Truckin, Inc. (“Petitioner”) filed a petition for inter partes
`review under 35 U.S.C. § 311. Paper 2 (“Pet.”). Petitioner supported its
`Petition with the Declaration of Scott Andrews. Ex. 1003.
`Innovative Global Systems, LLC (“Patent Owner”) filed a Preliminary
`Response. Paper 6. And pursuant to 35 U.S.C. § 314, in view of the record
`at that time, we instituted an inter partes review of all Challenged Claims on
`all grounds presented in the Petition:
`
`References
`Skeen,2 Warkentin,3 Transportation
`Regulations4
`
`Claim(s) Challenged 35 U.S.C. §
`1–6, 10, 11, 14–20
`103(a)1
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284,
`287–88 (2011), amended 35 U.S.C. § 103, effective March 16, 2013.
`Because the ’384 patent claims priority to an application that has an
`effective filing date before this date (see Ex. 1001, code (63) (claiming
`priority to an application with an effective filing date of August 15, 2005);
`see also Pet. 14; PO Resp. 3), the pre-AIA version of § 103 applies.
`2 Skeen, US 6,832,141 B2, iss. Dec. 14, 2004 (Ex. 1009).
`3 Warkentin, US 2002/0035421 A1, pub. Mar. 21, 2002 (Ex. 1010).
`4 Transportation Regulations, Title 49 of the Code of Federal Regulations,
`Sections 390–396 (Oct. 1, 2003) (Ex. 1008).
`
`2
`
`
`
`IPR2020-00694
`Patent 10,157,384 B2
`Claim(s) Challenged 35 U.S.C. §
`8
`103(a)
`
`7, 9
`
`103(a)
`
`References
`Skeen, Warkentin, Transportation
`Regulations, Murphy5
`Skeen, Warkentin, Transportation
`Regulations, Berenz6
`
`Paper 7 (“Institution Decision” or “Inst. Dec.”).
`After institution, Patent Owner filed a Response, Paper 16
`(“PO Resp.”), supported with the Declarations of Andrew D. Smith
`(Ex. 2006), William T. Brown (Ex. 2007), and Alan C. Lesesky (Ex. 2009).
`Petitioner filed a Reply, Paper 24 (“Reply”), supported with an additional
`Declaration of Mr. Andrews (Ex. 1034). Finally, Patent Owner filed a
`Sur-reply. Paper 27 (“Sur-reply”).
`An oral hearing was held on April 22, 2021. A copy of the transcript
`is included in the record. Paper 32 (“Tr.”).
`B. Real Parties in Interest
`Petitioner identifies Keep Truckin, Inc. as the real party-in-interest.
`Pet. 1. Patent Owner identifies Innovative Global Systems, LLC as the real
`party-in-interest. Paper 5, 2.
`C. Related Matters
`The parties agree there are several proceedings related to this matter.
`Pet. 2; Paper 5, 2. Petitioner was served with a complaint, which is
`captioned Innovative Global Systems, LLC v. Keep Truckin, Inc., Civil Case
`No. 0:19-cv-00641-MN (D. Del.), that alleges infringement of the ’384
`patent. Pet. 2. The ’384 patent was asserted also against Samsara Networks,
`Inc. in a separate district court action captioned Innovative Global Systems,
`
`
`5 Murphy, US 6,225,890 B1, iss. May 1, 2001 (Ex. 1007).
`6 Berenz, US 6,724,920 B1, iss. Apr. 20, 2004 (Ex. 1011).
`
`3
`
`
`
`IPR2020-00694
`Patent 10,157,384 B2
`LLC v. Samsara Networks, Inc., Civil Case No. 0:19-cv-01708-MN (D.
`Del.). Id. Finally, another related proceeding is the concurrently filed
`petition in Keep Truckin, Inc. v. Innovative Global Systems, LLC, IPR2020-
`00692, which challenges several claims of related U.S. Patent No. 8,032,277
`B2. Id.
`
`D. The ’384 patent (Ex. 1001)
`The ’384 patent describes a system “for logging and reporting driver
`activity and vehicle operation.” Ex. 1001, 1:8–10. In particular, it describes
`a system that includes an electronic logging system with an onboard recorder
`connected to a vehicle’s data bus, which continuously monitors, obtains, and
`calculates the vehicle’s operation data. Id. at 11:4–17. This operational data
`includes mileage, engine use, time the vehicle’s engine is turned off, the
`vehicle’s speed, and the engine’s run time while the vehicle is on but not
`moving. Id. at 11:52–62, 12:61–13:9, 13:36–59. The system includes a
`transmitter, which sends vehicle operation data from the recorder to a
`portable handheld communications device. Id. at 16:54–17:5, 18:12–19.
`The ’384 patent describes using data processing software to generate a
`hours of service (“HOS”) log. Id. at 13:60–14:3. This log is generated from
`the vehicle operational data obtained from the onboard recorder that is
`continuously connected to the vehicle’s data bus, and records the vehicle
`operator’s duty status, such as whether the operator is on or off duty and
`whether an on-duty operator is driving or not driving. Id. at 13:1–24. In
`creating the log, a recorder “continuously calculates the time the driver has
`been in each duty status over the course of a day.” Id. at 13:17–19.
`Additionally, the log includes the total hours on duty for seven days, total
`hours on duty for eight days, and the driver’s changes in duty status, as well
`as the time the duty status changes occurred. Id. at 13:19–14:3. The log can
`
`4
`
`
`
`IPR2020-00694
`Patent 10,157,384 B2
`be used to determine whether a driver was in compliance with hours of
`service regulations. Id. at 13:10–13. “By continuously emitting a signal
`indicating the compliance status of the driver, [the system] provides a way
`whereby authorized federal, state or local officials can immediately check
`the status of a driver’s hours of service.” Id. at 14:42–45.
`E. Illustrative Claims
`Of the Challenged Claims, claims 1 and 14 are independent. Claims
`2–11 depend from claim 1; claims 15–20 depend from claim 14. Claim 1,
`reproduced below,7 illustrates the subject matter of the challenged claims:
`1.
`[1 preamble] An onboard electronic system for logging and
`reporting driver activity and operation data of a vehicle, said system
`comprising:
`[1a] an onboard recorder adapted for continuously connecting to a
`data bus of the vehicle to continuously monitor, obtain and
`calculate vehicle operation data comprising mileage data,
`engine use data, time the engine is turned off, speed of the
`vehicle, and time the engine remains on while the vehicle is not
`moving, and said onboard recorder comprising a processor, a
`transmitter, and a memory device for recording and storing said
`vehicle operation data;
`[1b] said transmitter adapted for transmitting said vehicle operation
`data from said onboard recorder to a portable handheld
`communication device;
`[1c] data processing software operable on the handheld
`communications device comprising a processor and a display,
`said data processing software utilized to generate a hours of
`service log using said vehicle operation data continuously
`monitored, obtained and calculated from the data bus of the
`vehicle, and to present the hours of service log in a grid form on
`the display, the hours of service log comprising a driver’s total
`hours driven today, total hours on duty today, total miles driven
`
`7 Annotation to the elements has been added to be consistent with the
`labeling used by Petitioner. See Pet. 8–9.
`
`5
`
`
`
`IPR2020-00694
`Patent 10,157,384 B2
`today, total hours on duty for seven days, total hours on duty
`for eight days, and the driver’s changes in duty status and the
`times the duty status changes occurred, whereby the driver’s
`hours of service log is applicable for comparison to a hours of
`service regulation to determine a compliance status of the
`driver; and
`[1d] a compliance signal emitted by said transmitter and indicating
`whether said onboard recorder is functioning to record vehicle
`operation data needed to generate the driver’s hours of service
`log, such that the compliance status of the driver can be
`accurately determined, and in the event of a malfunction of said
`onboard recorder, said compliance signal is adapted for
`activating a visual indicator to the driver signifying an out-of-
`compliance condition of said onboard recorder.
`Ex. 1001, 23:7–45. Independent claim 14 is identical to claim 1, except the
`preamble of claim 14 recites “incorporating” the onboard electronic system
`into “a commercial motor vehicle.” See id. at 25:1–26:6.
`
`III. ANALYSIS
`We have reviewed the parties’ respective briefs as well as the relevant
`evidence discussed in those papers. Petitioner contends the disclosures of
`Skeen, Warkentin, Transportation Regulations, Murphy, and Berenz, as a
`whole, demonstrate that the recited combinations of elements in the
`Challenged Claims would have been obvious at the time of the invention to a
`skilled artisan. Patent Owner asserts several defects and gaps exist with
`Petitioner’s contention, preventing Petitioner from establishing the
`unpatentability of the Challenged Claims. In particular, Patent Owner
`asserts Petitioner’s contention is defective because it relies on an unqualified
`expert (Mr. Andrews) and because it relies on non-analogous art (Skeen). In
`addition, Patent Owner argues that there are evidentiary gaps in Petitioner’s
`patentability challenge because none of the references, alone or in
`
`6
`
`
`
`IPR2020-00694
`Patent 10,157,384 B2
`combination, disclose claimed subject matter in claim elements [1c]/14[c]
`and [1d]/14[d]. Nor does Petitioner articulate sufficient reasoning for why a
`skilled artisan would have combined the disclosures from the references in
`the manner claimed. Patent Owner does not separately address Petitioner’s
`challenge of the dependent claims. For the reasons discussed in detail
`below, we are persuaded that Petitioner has shown by a preponderance of the
`evidence that the Challenged Claims of the ’384 patent are unpatentable
`under 35 U.S.C. § 103.
`
`A. Principles of Law
`To prevail in its challenges to the patentability of all claims of the
`’384 patent, Petitioner must demonstrate by a preponderance of the evidence
`that the claims are unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d)
`(2019). “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) (2012) (requiring inter partes
`review petitions to identify “with particularity . . . the evidence that supports
`the grounds for the challenge to each claim”)). This burden of persuasion
`never shifts to patent owner. See Dynamic Drinkware, LLC v. Nat’l
`Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015); see also In re
`Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1375–78 (Fed. Cir. 2016)
`(discussing the burden of proof in inter partes review).
`A claim is unpatentable for obviousness if, to one of ordinary skill in
`the pertinent art, “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.” 35 U.S.C. § 103(a)
`(2006); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
`
`7
`
`
`
`IPR2020-00694
`Patent 10,157,384 B2
`The question of obviousness is resolved on the basis of underlying factual
`determinations including: (1) the level of ordinary skill in the art; (2) the
`scope and content of the prior art; (3) any differences between the claimed
`subject matter and the prior art; and (4) when in evidence, objective
`evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966).
`A petitioner cannot satisfy its burden of proving obviousness by
`employing “mere conclusory statements.” Magnum Oil, 829 F.3d at 1380.
`Moreover, to persuasively show obviousness, Petitioner must include an
`“articulated reasoning with some rational underpinning to support the legal
`conclusion of obviousness.” KSR, 550 U.S. at 418 (citing In re Kahn, 441
`F.3d 977, 988 (Fed. Cir. 2006)).
`We analyze Petitioner’s asserted grounds of unpatentability in
`accordance with the above-stated principles.
`B. Level of Ordinary Skill in the Art
`We consider the asserted grounds of unpatentability in view of the
`understanding of a person of ordinary skill in the art (“POSITA”) and, thus,
`begin with the level of ordinary skill in the art. The level of ordinary skill in
`the art is “a prism or lens through which . . . the Board views the prior art
`and the claimed invention” to prevent hindsight bias. Okajima v. Bourdeau,
`261 F.3d 1350, 1355 (Fed. Cir. 2001).
`Petitioner and Patent Owner agree that the relevant level of skill in the
`art at the time of the ’384 patent (August 2005) is a person having “a
`bachelor’s degree in electrical engineering, or equivalent, at least two years
`of experience related to designing and/or developing on-board recording
`devices for commercial vehicles, and familiarity with the rules and
`regulations governing logging and reporting of data for drivers of motor
`
`8
`
`
`
`IPR2020-00694
`Patent 10,157,384 B2
`carriers.” Pet. 10 (citing Ex. 1003 ¶ 16); PO Resp. 4. We agree with the
`parties’ definition, which we adopt as our own, because it is consistent with
`the teachings of the ’384 patent and the prior art of record.
`Patent Owner challenges the qualifications of Petitioner’s expert to
`provide testimony regarding a POSITA in this proceeding. PO Resp. 6–12;
`Sur-reply 6–8. Although a consensus exists for the relevant background of
`an ordinarily skilled artisan in the art, Patent Owner asserts that “Petitioner’s
`arguments fail because they depend upon Scott Andrews’ unqualified
`opinions” and his “testimony is neither competent nor credible.” See id.
`Patent Owner, however, does not show persuasively that Mr. Andrews,
`Petitioner’s expert, is unqualified.
`Patent Owner argues that Mr. Andrews is “unqualified” because
`“[n]othing in his background, education, or training renders him qualified to
`opine on the subject matter of the Challenged Claims—systems that log and
`present data to ensure compliance with the HOS Regulations[8].” PO Resp.
`6. Patent Owner argues that Mr. Andrews “has no experience designing or
`developing systems that log and present data to ensure compliance with the
`HOS Regulations,” nor does Mr. Andrews have any other related experience
`associated with ensuring compliance with the HOS Regulations. Id. at 7–8.
`In particular, Patent Owner highlights Mr. Andrews’s lack of familiarity
`with “key aspects of the HOS Regulations, including 49 C.F.R. § 395.8 and
`§ 395.15,” which are allegedly “critical in the development of the
`Challenged Claims [because] they define, in part, the problem to be solved.”
`Id. at 8–9. Patent Owner argues that, because Mr. Andrews lacks familiarity
`
`
`8 “HOS Regulations” is specifically defined by Patent Owner to mean
`“49 C.F.R. pt. 395, subpt. A.” PO Resp. vi (Glossary of Terms).
`
`9
`
`
`
`IPR2020-00694
`Patent 10,157,384 B2
`with “HOS Regulations” and because he failed to take “steps to become
`skilled in the art of HOS logging or compliance,” “Mr. Andrews cannot
`provide any competent or credible testimony about what a POSITA would
`have reviewed or would have been motivated to do.” Id. at 9–12.
`In response, Petitioner observes initially that Patent Owner’s
`argument “does not allege that Mr. Andrews lacks the level of education or
`technical experience both parties attribute to a POSITA.” Reply 2.
`Petitioner contends that this is because “Mr. Andrews has a Master’s Degree
`in electrical engineering and extensive experience designing onboard
`recording devices for commercial vehicle[s].” Id. (citing Ex. 1003 ¶¶ 6–11;
`Ex. 1004 (Mr. Andrews’s curriculum vitae); Ex. 2008, 58:17–20 (“I’d say
`I’ve developed a lot of systems that are able to calculate and log the kind of
`data associated with hours of service . . . .”), 88:4–11). Petitioner points to
`Mr. Andrews’s specific experience developing “a lot of systems that are able
`to calculate and log the kind of data associated with hours of service” to
`demonstrate his familiarity with different kinds of duty statuses and
`regulations associated with logging and reporting data for drivers of motor
`carriers. Id. (citing Ex. 2008, 30:1–5, 32:21–33:9, 48:18–19, 49:6–8, 58:17–
`20, 90:6–92:2, 207:1–209:18).
`
`Petitioner characterizes Patent Owner’s argument as follows: “Mr.
`Andrews[’s] testimony cannot support Petitioner’s challenges because Mr.
`Andrews does not meet requirements beyond the definition of a POSITA on
`which both parties agreed.” Reply 2. Petitioner contends that “[t]he
`definition of a POSITA adopted by both parties . . . says nothing of
`designing or developing systems for logging and presenting data to ensure
`compliance with HOS regulations.” Id. at 3. Petitioner presses that “[t]he
`parties agreed that the only technical expertise required of a POSITA is a
`
`10
`
`
`
`IPR2020-00694
`Patent 10,157,384 B2
`degree in electrical engineering, or equivalent, and experience related to
`designing or developing on-board recording devices for commercial
`vehicles, both of which Mr. Andrews clearly has.” Id.
`
`Patent Owner argues in reply that “Petitioner does not claim that Mr.
`Andrews has any experience relating to systems designed to log and record
`data to ensure compliance with an ‘hours of service regulation’ and generate
`an ‘hours of service log.’” Sur-reply 7. “This lack of experience matters,”
`Patent Owner asserts, because systems designed for this purpose “need to
`have specific functionality” and “[n]o electrical engineer could appreciate
`these issues without some experience developing or designing a system
`having the same general purpose as the one claimed in the Challenged
`Claims.” Id.
`
`As an initial matter, we note that Patent Owner did not move to
`exclude either of Mr. Andrews’s declarations (Exhibits 1003 and 1034) and
`thereby waived any argument that Mr. Andrews is not “qualified as an
`expert by knowledge, skill, experience, training, or education [to] testify in
`the form of an opinion or otherwise” under Federal Rule of Evidence 702.
`See 37 C.F.R. § 42.64 (setting forth the procedure for objecting to evidence
`and filing a motion to exclude to “preserve” such objections); Paper 8, 8–10
`(listing the time periods for motions to exclude); Patent Trial and Appeal
`Board Consolidated Trial Practice Guide (Nov. 2019), 79, available at
`https://www.uspto.gov/TrialPracticeGuideConsolidated (“A motion to
`exclude must explain why the evidence is not admissible (e.g., relevance or
`hearsay) . . . . A motion to exclude is not a vehicle for addressing the weight
`to be given evidence—arguments regarding weight should appear only in the
`merits documents.”). Thus, although Patent Owner’s arguments are framed
`in terms of whether Mr. Andrew is “qualified,” PO Resp. 6, we understand
`
`11
`
`
`
`IPR2020-00694
`Patent 10,157,384 B2
`Patent Owner’s position to be that Mr. Andrews’s testimony should be
`accorded no weight in our analysis of whether Petitioner has proven that the
`Challenged Claims would have been obvious.
`Indeed, we note that with respect to the issue of whether an expert has
`sufficient qualifications to offer admissible testimony, there is no
`requirement that the expert’s experience be a perfect match to the field of art
`at issue. SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed.
`Cir. 2010). To testify as an expert, an individual does not need to be a
`person of ordinary skill in the art, but rather must be “qualified in the
`pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356,
`1363–64 (Fed. Cir. 2008).
`
`We find Patent Owner’s criticisms of Mr. Andrews’s qualifications in
`this proceeding are unwarranted. As Petitioner has argued, and Patent
`Owner has not disputed, Mr. Andrews’s advanced degree in electrical
`engineering and extensive experience designing onboard recording devices
`for commercial vehicles demonstrate that he has technical expertise that is
`particularly relevant to the subject matter of ’384 patent. See Ex. 1004, 3–6.
`A focus of Mr. Andrews’s experience includes “the development and
`management of technologies in support of Intelligent Transportation
`Systems” and “a strong working knowledge of the various technologies that
`comprise location-based vehicle status logging and tracking.” Ex. 1003
`¶¶ 6, 8. Mr. Andrews has experience working with “systems for logging the
`location and operational status of vehicles, and providing automated
`roadside assistance and emergency response based on relaying GPS position
`and vehicle status to a service center using wireless communications.” Id.
`¶ 7. Mr. Andrews has experience also with “work[ing] on various systems
`associated with trucking applications,” including “driver hour logging and
`
`12
`
`
`
`IPR2020-00694
`Patent 10,157,384 B2
`associated parking reservation systems, and various types of navigation,
`communications, and dispatching systems.” Id. ¶ 8.
`
`Although Patent Owner appears to be correct that Mr. Andrews’s
`experience does not include working on any specific projects in which
`logging and recording data was specifically for the purpose of ensuring
`compliance with a hours of service regulation, we do not find this absence of
`first-hand knowledge to impact the weight we should give his testimony.
`Mr. Andrews has considerable technical experience related to the
`“[t]echnical [f]ield” of the ’384 patent, namely logging and reporting driver
`activity and operation data of a vehicle, which is a focus of the ’384 patent.
`See Ex. 1001, code (54), 1:5–10; Ex. 1003 ¶¶ 3–8; Ex. 1004; Reply 2–4
`(describing Mr. Andrews’s experience as recounted during his deposition).
`Therefore, we reject Patent Owner’s argument that Mr. Andrews’s testimony
`should be given no weight because he is an “unqualified” expert.
`For similar reasons, we reject Petitioner’s arguments that the
`testimony of Patent Owner’s expert, Mr. Brown, should be given no weight
`because he “does not qualify as a POSITA.” See Reply 4–5. Mr. Brown has
`education equivalent to a bachelor’s degree in electrical engineering and the
`requisite level of technical experience. See Sur-reply 3–6 (citing Ex. 2007
`¶¶ 13, 16, 18, 20; Ex. 1035, 18, 19:20–23, 62–66). We have considered and
`weighed both individuals’ testimony according to the strength of their
`opinions posited in the context of the record before us. As explained herein,
`we conclude that Mr. Andrews’s opinions are more credible, as they are
`consistent with the disclosures of the cited prior art references and evidence
`that he relies upon.
`
`13
`
`
`
`IPR2020-00694
`Patent 10,157,384 B2
`C. Scope and Content of the Prior Art
`Petitioner contends Skeen, Warkentin, Transportation Regulations,
`Murphy, and Berenz are all prior art references to the ’384 patent. Pet. 14–
`15. Patent Owner, however, argues Skeen is outside the scope of available
`art because it is non-analogous. PO Resp. 12–23. Therefore, we first
`address whether Skeen is within the scope of analogous art for the ’384
`patent before we discuss the subject matter disclosed by Skeen and the
`remaining references.
`
`1. Skeen Is Analogous Art
`Patent Owner states, “Petitioner’s reliance on Skeen is misplaced
`because Skeen is not analogous art.” PO Resp. 13. The “[c]riteria for
`determining whether prior art is analogous may be summarized as
`‘(1) whether the art is from the same field of endeavor, regardless of the
`problem addressed, and (2) if the reference is not within the field of the
`inventor’s endeavor, whether the reference still is reasonably pertinent to the
`particular problem with which the inventor is involved.’” Scientific Plastic
`Prods., Inc. v. Biotage AB, 766 F.3d 1355, 1359 (Fed. Cir. 2014) (citing In
`re Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992)). Petitioner contends that
`“Skeen . . . [is] in the same field of endeavor as the ’384 Patent––logging
`and reporting driver activity and vehicle operation data.” Pet. 21; see also
`Reply 6–9. Patent Owner disagrees because the field of endeavor for the
`’384 patent “is logging and presenting data for the specific purpose of
`ensuring compliance with the HOS Regulations” and “Skeen has nothing to
`do with logging and presenting data to ensure compliance with the HOS
`Regulations.” PO Resp. 14–15. Because Patent Owner does not dispute
`Skeen and the ’384 patent are within the same field of endeavor if
`
`14
`
`
`
`IPR2020-00694
`Patent 10,157,384 B2
`Petitioner’s characterization of the field is accurate (see id. at 13–18), the
`issue we must decide is the applicable field of endeavor of the ’384 patent.
`“To determine the applicable field of endeavor, the factfinder must
`consider ‘explanations of the invention’s subject matter in the patent
`application, including the embodiments, function, and structure of the
`claimed invention.’” Airbus S.A.S. v. Firepass Corp., 941 F.3d 1374, 1380
`(Fed. Cir. 2019) (quoting In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004)).
`“In [In re Wood, 599 F.2d 1032, 1036 (C.C.P.A. 1979)], for example, . . .
`[the] court determined the field of endeavor based on an express disclosure
`in the Background of the Invention section of the applicant’s specification.”
`Id. An indication that a reference is from the same field of endeavor exists
`when the reference discloses technology with “essentially the same function
`and structure” as the claimed technology. In re Deminski, 796 F.2d 436, 442
`(Fed. Cir. 1986) (finding that the challenged prior art references were in the
`same field of endeavor because they disclosed pumps and compressors that
`had “essentially the same function and structure” as the claimed piston
`devices).
`Petitioner contends, “[t]he title of the ’384 Patent, the Challenged
`Claims, including their preambles, and the specification of the ’384 Patent
`demonstrate that the relevant field of endeavor is logging and reporting
`driver activity and operation data of a vehicle.” Reply 6. The ’384 patent is
`titled “System for Logging and Reporting Driver Activity and Operation
`Data of a Vehicle” and, in the section of the patent describing the “Technical
`Field,” it states that the disclosure “relates broadly and generally [to]
`systems, methods, and apparatus for logging and reporting driver activity
`and vehicle operation.” Ex. 1001, code (54), 1:5–10. In the “Summary of
`Exemplary Embodiments” section of the ’384 patent, a wide range of
`
`15
`
`
`
`IPR2020-00694
`Patent 10,157,384 B2
`examples and aspects of systems that include logging and reporting driver
`activity and vehicle operation are described generally. Id. at 1:19–9:44. The
`’384 patent describes its disclosure as comprising,
`exemplary systems, methods and apparatus capable of logging
`driver activity and vehicle operating data, creating reports from
`the data containing information required to comply with [hours
`of service] regulations and IFTA fuel tax reporting, and
`emitting a signal indicating whether the driver is in-compliance
`or out-of-compliance with applicable [hours of service] laws or
`regulations.
`Id. at 10:58–63 (emphasis added). In addition, the ’384 patent discloses
`other “exemplary embodiments” of systems, methods, and apparatus capable
`of “automat[ing] at-the-pump management of vehicle fuel purchases,” as
`well as, “diagnosing and managing vehicle faults.” Id. at 10:65–11:3. Each
`of these exemplary systems share in common an electric onboard recorder
`(e.g., 200 and 901 in Figures 2, 9) that functions, inter alia, to collect driver
`activity and vehicle operation data from a vehicle. See Ex. 1001, 11:4–13:9,
`19:29–36, 21:49–55. Likewise, each independent claim preamble in the
`’384 patent (i.e., claims 1, 13, and 14) recites an “onboard electronic system
`for logging and reporting driver activity and operation data of a vehicle.” Id.
`at 23:7–8, 24:24–25, 25:1–3.
`Patent Owner does not address the description of the disclosed subject
`matter in the Specification of the ’384 patent. See PO Resp. 13–18;
`Sur-reply 1–25. Instead, Patent Owner relies exclusively on “the Challenged
`Claims repeatedly refer[ring] to logging data to create an ‘hours of service
`log’ or to comply with an ‘hours of service regulation’” to support its more
`narrow characterization of the field of art––logging and presenting data for
`the specific purpose of ensuring compliance with the HOS Regulations.
`PO Resp. 13–15. Patent Owner asserts that because “[i]nfringing the
`
`16
`
`
`
`IPR2020-00694
`Patent 10,157,384 B2
`Challenged Claims . . . requires creation of an ‘hours of service log’ . . . the
`field of endeavor for the ’384 Patent is limited to logging and presenting
`data for the exclusive purpose of ensuring compliance with the HOS
`Regulations.” Id. at 14. From this, Patent Owner asserts a skilled artisan
`“would have understood that logging and presenting data for purposes of
`compliance with the HOS Regulations was a distinct and unique field of
`endeavor.” Id. According to Patent Owner, “[g]iven the challenges specific
`to ensuring compliance with the HOS Regulations, [skilled artisans] in this
`field generally were not looking at art relating to general data logging in
`passenger vehicles in 2005.” Id. at 15 (citing Ex. 2007 ¶ 26; Ex. 2006
`¶¶ 31–36).
`
`We find Petitioner’s characterization of the field of endeavor more
`persuasive because it correctly captures the breadth that the ’384 patent
`states expressly was intended by the disclosure. The ’384 patent
`unambiguously states that the disclosure has a broad scope because “the
`particular arrangements disclosed are meant to be illustrative only and not
`limiting as to scope of the invention” and “many embodiments, such as
`adaptions, variations, modifications, and equivalent arrangements, will be
`implicitly disclosed by embodiments described . . . and fall within the scope
`of the present invention.” Id. at 10:17–19, 10:21–25. When considering the
`’384 patent as whole, we agree with Petitioner that the title of the ’384
`patent, the Challenged Claims, including their preambles, and the
`Specification demonstrate that the relevant field of endeavor is logging and
`reporting driver activity and operation data of a vehicle.
`
`Limiting the field of art to the specific purpose of ensuring
`compliance with the “HOS Regulations,” or 49 C.F.R. pt. 395, subpt. A (see
`PO Resp. vi), would be directly contrary to what the ’384 patent teaches.
`
`17
`
`
`
`IPR2020-00694
`Patent 10,157,384 B2
`Although Patent Owner contends reciting “hours of service log” and “hours
`of service regulation” in the claims would lead a skilled artisan to such a
`conclusion, the ’384 patent supports a different conclusion. See Unwired
`Planet, LLC v. Google Inc., 841 F.3d 995, 1001 (Fed. Cir. 2016) (“The field
`of endeavor of a patent is not limited to the specific point of novelty, the
`narrowest possible conception of the field, or the particular focus within a
`given field.”). As explained above, the ’384 patent describes the relevant
`“field” of art more broadly. See Ex. 1001, code (54), 1:5–10. Further, the
`’384 patent states, “[a]lthough specific terms are employed herein, they are
`used in a generic and descriptive sense only and not for the purposes of
`limitation.” Ex. 1001, 10:26–28 (emphasis added). Still further, a skilled
`artisan would view the field of art broader than the one proposed by Patent
`Owner because several of the exemplary embodiments and aspects discussed
`in the ’384 patent address logging and reporting driver activity and operation
`data of a vehicle for purposes that are wholly unre
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
