Takeaway: Without articulated reasoning with some rational underpinning to support the legal conclusion of obviousness, a bare recitation of disparate claim elements in multiple prior art references is insufficient to render obvious a claim.
In its Decision, the Board denied institution of inter partes review (“IPR”) of claims 1, 2, and 6 of the ’927 patent. According to the Board, the ’927 patent relates to side detection vehicle radar systems that control an alarm or alert indicator to increase the perceived coverage of a vehicle’s blind spot. Petitioner asserted that claims 1, 2, and 6, of the ’927 patent are obvious over Bernhard, Pakett, and Fujiki. Neither party proposed constructions of any claim terms. However, the Board construed “alert command” as raw alert data that is used to generate an “alert signal,” which refers to a signal that provides a visual or an audio alert to a driver.
Turning to the merits, Petitioner alleged that Pakett and Fujiki disclose the limitation, “at the end of the alert command, determining whether the alert signal was active for a threshold time.” The Board was not persuaded that the “determining” portion of the limitation was taught by Pakett. Petitioner asserted a different portion of Pakett for the “at the end of the alert command” portion of the limitation. The Board determined that Pakett “merely teaches alert commands…being active during the persistence period because Pakett teaches an alert signal…cannot be active during the persistence period.” Petitioner also relied upon Fujiki for the above limitation of claim 1. The Board was unpersuaded that Pakett or Fujiki taught the “determining” portion of the limitation.
Petitioner asserted that, “it was well known at the time the ’927 patent was filed to combine the features of the object detection systems of Pakett and Fujiki with the object detection systems used in Bernhard.” Patent Owner argued that Petitioner’s assertion to combine the references is merely a catalog of the parts of the claims and “an index as to where those disparate parts may be found in the cited references.” The Board agreed with Patent Owner noting that an invention is not rendered obvious merely because its elements were independently known in the prior art. The Board stated that Petitioner merely provided conclusory motivation of why one of ordinary skill in the art would have combined Bernhard, Pakett, and Fujiki. Thus, the Board held that Petitioner had not established a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any challenged claim.
VOLKSWAGEN GROUP OF AMERICA, INC. v. SIGNAL IP, INC., IPR2015-00968
Paper 6: Decision on Institution of Inter Partes Review
Dated: August 25, 2015
Before: Donna M. Praiss, Peter P. Chen, and Jason J. Chung
Written by: Chung
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