VOLKSWAGEN GROUP OF AMERICA, INC.v.SIGNAL IP, LLC

Patent Trial and Appeal Board

Nov 20, 2015

08762090 (P.T.A.B. Nov. 20, 2015)

Trials@uspto.gov Paper 9
571-272-7822 Entered: November 20, 2015
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

VOLKSWAGEN GROUP OF AMERICA, INC.,
Petitioner,

v.

SIGNAL IP, INC.,
Patent Owner.
____________

Case IPR2015-00968
Patent 5,714,927 B1
____________

Before DONNA M. PRAISS, PETER P. CHEN, and
JASON J. CHUNG, Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

DECISION
Denying Petitioner’s Request for Rehearing
37 C.F.R. § 42.71

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I. INTRODUCTION
Petitioner, Volkswagen Group of America, Inc., filed a Request for
Rehearing of our Decision (Paper 6, “Dec.”) denying inter partes review of
claims 1, 2, and 6 of U.S. Patent No. 5,714,927 B1 (Ex. 1001, “the
’927 patent”). Paper 7 (“Req.”).
For the reasons set forth below, Petitioner’s Request for Rehearing is
denied.
II. STANDARD OF REVIEW
Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition,
a panel will review the decision for an abuse of discretion.” An abuse of
discretion may be determined if a decision is based on an erroneous
interpretation of law, if a factual finding is not supported by substantial
evidence, or if the decision represents an unreasonable judgment in weighing
relevant factors. See Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed.
Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004);
In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The request must
identify, with specificity, all matters that the moving party believes the
Board misapprehended or overlooked. See 37 C.F.R. § 42.71(d).
III. DISCUSSION
In its Request, Petitioner argues that: (1) the Examiner previously
considered Bernhard as “prior art made of record and not relied upon,” and
stated that Bernhard disclosed “at the end of the alert command, determining
whether the alert signal was active for a threshold time,” as recited in
claim 1 (Req. 3–4); (2) Pakett, Fujiki, and the Declaration of Dr. David M.
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Bevly (“the Bevly Declaration,” Ex. 1002) disclose “selecting a variable
sustain time as a function of relative vehicle speed” and “if the alert signal
was active for the threshold time” because the Board’s Decision does not
conclude that Pakett, Fujiki, and the Bevly Declaration do not disclose these
claim limitations (Req. 5–6); (3) none of the claim terms were in
controversy, and even if “alert signal” were in controversy, the Board
misconstrued “alert signal” as “a signal that provides a visual or audio alert
to a driver” because the Specification of the ’927 patent discloses an “alert
signal” output from a microprocessor in the format of an “information
signal” (Req. 6–9); and (4) the references are combinable because it is not
necessary for there to be a motivation to combine, and the Decision
overlooked teachings in Bernhard, Pakett, and Fujiki and how these
references relate to the claims of the ’927 patent (Req. 9–12). We address
Petitioner’s arguments in turn.
Regarding Petitioner’s first argument, we previously considered
Petitioner’s arguments concerning Bernhard. Dec. 8. Petitioner’s argument
that the Examiner found that Bernhard discloses “determining whether the
alert signal was active for a threshold time” is not supported by the record.
As Petitioner acknowledges, the Examiner did not rely on Bernhard to reject
“at the end of the alert command, determining whether the alert signal was
active for a threshold time,” as recited in claim 1, because the Examiner
considered Bernhard “prior art made of record and not relied upon”
(emphasis added). See Req. 3 (quoting Pet. 5–6). At most, the Examiner
described Bernhard as disclosing “a method for providing guiding assistance
for a vehicle in changing lane.” See Pet. 5–6. Moreover, Petitioner has not
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proffered how Bernhard teaches or suggests “at the end of the alert
command, determining whether the alert signal was active for a threshold
time,” as recited in claim 1. See Pet. 32–33. Accordingly, we did not abuse
our discretion in declining to institute for reasons not argued in the Petition.
As for Petitioner’s second argument, our Decision denying institution
was not based on whether Pakett, Fujiki, and the Bevly Declaration disclose
“selecting a variable sustain time as a function of relative vehicle speed” and
“if the alert signal was active for the threshold time” as recited in claim 1.
Accordingly, we did not misapprehend or overlook Pakett, Fujiki, and the
Bevly Declaration.
Regarding Petitioner’s third argument, we properly determined that “it
is necessary to construe the distinction, if any, between ‘alert command’ and
‘alert signal’ recited in claim 1.” Dec. 6. Moreover, we must apply the
broadest reasonable meaning to the claim language, taking into account any
definitions presented in the specification. Id. (citing In re Bass, 314 F.3d
575, 577 (Fed. Cir. 2002)). As a result, we turned to the Specification to
construe “alert command” and “alert signal.” Id. We construed “alert
signal” as “a signal that provides a visual or audio alert to a driver” because
of the Specification’s disclosure corresponding to Figures 3c and 3d. Id. at
6–7. Although Petitioner contends the Specification discloses “[a]n output
port of the microprocessor carries an alert signal to the alert signal devices”
(Req. 7–8 (citing Ex. 1001, 3:26–27)), we consider the microprocessor’s
outputted alert signal as merely an “information signal” and the alert signal
devices’ outputted signals as “alert signals.” Petitioner similarly considers
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Fujiki’s “information signal” to be the same as the output signal from the
microprocessor to the alert signal devices. Req. 8.
In defining “alert signal,” however, the Specification recites “[t]he
algorithm for sustaining the alert signal is generally represented by the flow
chart of FIG. 5” (emphasis added). Ex. 1001, 4:22–23. Figure 5 of the
’927 patent is reproduced below.

Figure 5, above, “is a flow chart representing an algorithm for carrying out
the invention,” which means Figure 5 defines the invention’s algorithm for
sustaining the alert signal and is not merely an embodiment of the invention.
Ex. 1001, 2:53–54 (emphasis added). Element 84 illustrates determining
whether the “alert [signal] devices [were] active for [at least the] threshold
time,” which provides a definition for “determining whether the alert signal
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was active for a threshold time” as recited in claim 1. Ex. 1001, Fig. 5.
Thus, element 84 of Figure 5 requires determining whether a visual or audio
alert on the alert signal devices were active for at least the threshold time in
order to determine whether the alert signal devices were active.
Accordingly, we did not misapprehend or overlook other portions of the
Specification when construing “alert command” and “alert signal.” Even if
“alert signal” were construed correctly as “information signal,” which it is
not, Petitioner has not shown persuasively how the cited portions of Pakett
and Fujiki teach or suggest “at the end of the alert command, determining
whether the [information signal] was active for a threshold time” as recited
in claim 1.
Regarding Petitioner’s fourth argument, its explanation for the alleged
motivation to combine is conclusory and lacks any evidence of a reason to
combine. Dec. 12–16. We did not overlook or misapprehend, as Petitioner
alleges, that
Bernhard discloses a radar-based object detection system for
detecting objects all around the vehicle. The Board’s Decision
also does not address the comparisons made between the
’927 patent and the prior art. For example, the Petition
describes on pages 37 to 38 that, “[j]ust as described in the
’927 patent, Pakett and Fujiki each describe sustaining the alert,
even when a hazardous condition is no longer sensed, to ensure
that the hazardous condition has passed before the signal is
removed,” and that “[i]n both the ’927 patent and in Fujiki, the
alert condition is sustained as a function of the relative vehicle
speed to address concerns of prematurely indicating that no
objects are in the vicinity of the vehicle.”
Req. 10–11.
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Although Bernhard does include “forward, rear, and blind spot radar
devices,” as Petitioner argues (Req. 12; Ex. 1003, Fig. 7), Bernhard and
Pakett “pertain to an alert system when obstacles are detected in blind spots
[on the side of a vehicle, whereas] Fujiki . . . pertains to a braking system
[for monitoring obstacles in front of a vehicle] and does not mention or
otherwise relate to blind spots” (Dec. 15). In particular, Bernhard’s
“invention relates to a process for providing guidance assistance for a
vehicle in changing lanes from a current lane to an adjacent lane”
(emphasis added) and Pakett’s “invention relates to automotive radar
systems, and more particularly to a radar system for sensing the presence of
obstacles in a vehicle’s ‘blind spots’” (emphasis added). Ex. 1003, 1:8–10;
Ex. 1005, 1:9–11. In contrast, Fujiki’s “invention relates to an automatic
safety braking system for a motor vehicle” by monitoring obstacles in the
“front of the vehicle” (emphasis added). Ex. 1006, 1:5–6, 1:31–32, 2:35–38,
Fig. 3A. We, thus, disagree with Petitioner because “[a]n invention
‘composed of several elements is not proved obvious merely by
demonstrating that each of its elements was, independently, known in the
prior art.’” Dec. 14 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007). Accordingly, we did not abuse our discretion in determining that
Petitioner’s rationale for combining the references was insufficient.
For the foregoing reasons, Petitioner has not shown that the Board
abused its discretion in declining to institute a trial.
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IV. ORDER
Accordingly, it is hereby ORDERED that Petitioner’s request for
rehearing is denied.

PETITIONER:
Michael Lennon
Clifford Ulrich
Michelle Carniaux
Kenyon & Kenyon LLP
ptab@kenyon.com

PATENT OWNER:
Tarek Fahmi
Ascenda Law Group, PC
tarek.fahmi@ascendalaw.com