Takeaway: Merely asserting that cited references are “in the same field” and concluding that the proposed combination is based on a simple design choice is insufficient to render the challenged claims obvious.
In its Decision, the Board denied institution of inter partes review (IPR) of claims 1, 2, and 4-10 of the ’780 patent.
The ’780 patent relates to a system and method for controlling the brakes on a trailer being towed by a towing vehicle. Petitioner asserted that: (1) claims 1, 2, and 8 are anticipated by Vangalis, claims 1 and 10 are obvious over Brearley and Gee, (3) claims 1, 8, and 10 are obvious over McGrath, Vangalis, and Gee, and (4) claims 4-7 and 9 are obvious over McGrath, Vangalis, Gee, Frait, and Tomecek.
Petitioner argued that a “deceleration signal” should be construed to mean “a component of accelerometer output caused by the force of a change in velocity acting on the accelerometer.” Petitioner relied on testimony of Dr. Horenstein who stated that “[d]eceleration is a more specific term, meaning a negative value of acceleration (i.e., a slowing down).” Patent Owner argued that Petitioner’s interpretation is unreasonable and that a “deceleration signal” is a separate and distinct signal that is separate from another signal carrying other information. The Board determined that a “deceleration signal” is not limited to an output signal generated by an accelerometer and that it is separate and distinct from the inclination signal.
Petitioner also argued that “inclination signal” should be construed to mean, “a component of accelerometer output caused by the force of gravity acting on the accelerometer when it is at an angle to the horizon.” The Board determined that an “inclination signal” is not limited to an accelerometer output caused by the force of gravity acting on the accelerometer and that it is separate and distinct from the deceleration signal.
Turning to Petitioner’s anticipation challenge of claims 1, 2, and 8, Petitioner argued that Vangalis anticipates claims 1 and 8 because a single structure may satisfy two limitations. The Board noted that, given its claim construction above, the deceleration signal and the inclination signal are separate and distinct. Thus, the Board determined that Petitioner had not demonstrated a reasonable likelihood that claims 1, 2, and 8 are anticipated by Vangalis.
Petitioner next alleged claims 1 and 10 are obvious based on Brearley and Gee. Petitioner acknowledged that Brearley does not disclose trailer braking, but Petitioner alleged that Gee cures this deficiency. Patent Owner asserted that neither Brearley nor Gee discloses trailer braking and that Brearley does not disclose the step of sending a brake amperage output signal to control the brakes of the trailer.” Petitioner directed the Board to Dr. Horenstein’s testimony that one of ordinary skill would have been motivated to combine Gee with Brearley as a matter of design choice to accurately determine the angle of inclination. The Board determined that neither Petitioner nor Dr. Horenstein provided any fact-based reason that would have prompted a person of ordinary skill to combine the elements in the manner recited or to modify the prior art to render the claims obvious. Instead, Petitioner had merely asserted that the cited references are “in the same field” and concluded that the proposed combination is based on a simple design choice. Thus, the Board concluded that claims 1 and 10 have not been shown to be obvious in view of Brearley and Gee.
Petitioner asserted claims 1, 8, and 10 would have been obvious in view of McGrath, Vangalis, and Gee. The Board stated, as above, that Petitioner did not provide a persuasive fact-based rationale for the proposed combination of references. Thus, the Board concluded that Petitioner had established that claims 1, 8, and 10 would have been obvious based on McGrath, Vangalis, and Gee.
Lastly, Petitioner asserted that claims 4-7 and 9 were obvious in view of McGrath, Vangalis, Gee, Frait, and Tomecek. Given that these claims depended from claims 1 or 8, and that Frait and Tomecek do not remedy the deficiencies in the references as described above, the Board concluded that claims 4-7 and 9 were not obvious over the cited references.
HOPKINS MANUFACTURING CORPORATION and THE COAST DISTRIBUTION SYSTEM, INC. v. CEQUENT PERFORMANCE PRODUCTS, INC., IPR2015-00613
Paper 9: Decision Denying Institution of Inter Partes Review
Dated: August 7, 2015
Before: William V. Saindon, Barry L. Grossman, and Jeremy M. Plenzler
Written by: Grossman