Carrum Technologies, LLC

Patent Trials and Appeals Board

Jul 15, 2020

IPR2019-00481 (P.T.A.B. Jul. 15, 2020)

Trials@uspto.gov Paper 33
571-272-7822 Date: July 15, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

UNIFIED PATENTS INC.,
Petitioner,
v.
CARRUM TECHNOLOGIES, LLC
Patent Owner.
____________

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Patent 7,925,416 B2
____________

Before LYNNE H. BROWNE, PATRICK R. SCANLON, and
JON B. TORNQUIST, Administrative Patent Judges.

BROWNE, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)

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I. INTRODUCTION
A. Background
Unified Patents, Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
requesting institution of an inter partes review of claims 1, 2, 7, and 9–11 of
U.S. Patent No. 7,925,416 B2 (Ex. 1001, “the ’416 patent”). Carrum
Technologies, LLC (“Patent Owner”) filed a Preliminary Response (Paper
6). We instituted an inter partes review of all challenged claims. Paper 8
(“Inst. Dec.”).
After institution, Patent Owner filed a Patent Owner Response (Paper
10, “PO Resp.”), Petitioner filed a Reply to Patent Owner’s Response (Paper
18, “Pet. Reply”), and Patent Owner filed a Sur-Reply (Paper 20). With
prior authorization, Petitioner filed a Motion to Strike Patent Owner’s Sur-
Reply and the second Shaver Declaration (Ex. 2010). Patent Owner filed an
Opposition (Paper 25) to Petitioner’s Motion to Strike. We granted
Petitioner’s Motion to Strike. Paper 26. Patent Owner filed a corrected Sur-
Reply (Paper 28, “PO Sur-Reply”). An oral hearing was held on April 21,
2020, and a copy of the transcript was entered in the record. Paper 32
(“Tr.”).
We have jurisdiction pursuant to 35 U.S.C. § 6. This Decision is a
Final Written Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 as to
the patentability of the challenged claims. 35 U.S.C. § 316(e) (2012); 37
C.F.R. § 42.1(d) (2018). Petitioner bears the burden of proving
unpatentability of the challenged claims, and the burden of persuasion never
shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail, Petitioner must prove
unpatentability by a preponderance of the evidence. See 35 U.S.C. § 316(e);
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37 C.F.R. § 42.1(d). Having reviewed the arguments and the supporting
evidence, we determine that Petitioner has demonstrated, by a
preponderance of the evidence, that challenged claims 1, 2, 7, and 9–11 of
the ’416 patent are unpatentable.
B. Related Proceedings
The parties indicate that the ’416 patent is the subject of Carrum
Technologies, LLC v. BMW of North America, LLC, et al., Case No. 1:18-
cv-01645 (D. Del.), Carrum Technologies, LLC v. FCA US, LLC, Case No.
1:18-cv-01646 (D. Del.), and Carrum Technologies, LLC v. Ford Motor
Company, Case No. 1:18-cv-01647 (D. Del.). Pet. 1; Paper 5, 2.
C. Real Parties in Interest
Petitioner identifies itself as the real party in interest. Pet. 1. Patent
Owner identifies itself and Pratima Instruments, LLC as real parties in
interest. Paper 5, 2.
D. Instituted Ground of Unpatentability
Petitioner asserts claims 1, 2, 7, and 9–11 of the ’416 patent are
unpatentable as set forth in the chart below:
Claims Challenged 35 U.S.C. §1 References/Basis
10, 11 103(a) Harada,2 Russell,3 Mazda4
1, 2, 7, 9 103(a) Russel, Fukada,5 Mazda

1 The Leahy-Smith America Invents Act (“AIA”) included a revision to 35
U.S.C. § 103 that became effective on March 16, 2013. Because the ’416
patent issued from an application filed before March 16, 2013, we apply the
pre-AIA version of the statutory basis for unpatentability.
2 Ex. 1004, US 5,508,929, issued April 16, 1996.
3 Ex. 1005, US 6,675,094 B2, issued January 6, 2004.
4 Ex. 1006, JP H05-36000, published February 12, 1993.
5 Ex. 1007, US 5,627,756, issued May 6, 1997.
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Petitioner supports its challenge with the Declaration of Scott
Andrews, dated December 31, 2018 (“Andrews Declaration”) (Ex. 1008).
Patent Owner supports its arguments with the declaration Gregory
Shaver, Ph.D. (Ex. 2007).
E. The ’416 Patent
The ’416 patent is directed to “a method and system for controlling a
vehicle having an ACC system.” Ex. 1001, 1:12–13. The system used with
this method is shown in Figure 2, reproduced below:

Figure 2 is a schematic of a vehicle including system 210. Id. at 3:54–55.
“System 210 is implemented in host vehicle 200 that has braking system 212
and engine management system 214.” Id. at 4:16–18. “System 210 includes
vehicle speed sensor 215 for measuring vehicle’s 200 speed, lateral
acceleration sensor 216 for measuring the acceleration of vehicle 200 . . .
and yaw rate sensor 218 for measuring the rate that vehicle 200 is rotating
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about its vertical axis.” Id. at 4:19–23. “System 210 also includes sensor
220 for generating a range signal corresponding to a distance between host
vehicle 200 and a target, and a target range rate signal corresponding to a
rate that the distance between host vehicle 200 and the target is changing.”
Id. at 4:23–27.
Figure 4, reproduced below, shows the method used with system 210.

Figure 4 is a flowchart illustrating this method. Id. at 3:58–59. In this
method “controller 222 continuously monitors vehicle’s 302 speed, lateral
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acceleration and yaw rate, each of which is provided to controller 222 as
signals from sensors 215, 216, 218 (FIG. 2).” Ex. 1001, 5:19–23. “At step
402, controller 222 obtains and stores vehicle’s 302 lateral acceleration data,
yaw rate data and vehicle speed data.” Id. at 5:23–25. “At step 404,
controller 222 uses a time lag filter to filter the raw lateral acceleration, yaw
rate and vehicle speed data, and at step 406, controller 222 processes this
filtered data.” Id. at 5:25–28.
“[C]ontroller 222 determines vehicle’s 302 position within the turn by
using programmed instructions that recognize patterns exhibited in lateral
acceleration data when a vehicle is in the entry of a turn, in the middle of a
tum, or exiting a turn.” Ex. 1001, 6:20–24. “After controller 222
determines at step 410 where in tum 306 vehicle 302 is positioned, controller
222 then instructs braking system 212 at step 412 to preemptively reduce
vehicle’s 302 speed so that vehicle’s 302 lateral acceleration speed is
reduced to a predetermined maximum limit according to vehicle’s 302
position in the turn.” Id. at 6:24–29.
F. Illustrative Claims
Petitioner challenges claims 1, 2, 7, and 9–11. Claims 1 and 10 are
independent. Both claims are reproduced below:
1. A method of controlling a vehicle having an adaptive cruise
control system capable of obtaining a vehicle lateral acceleration, said
method comprising the steps of:
determining when the vehicle is in a turn based on a
detected change in the vehicle lateral acceleration;
determining a vehicle path during the turn;
detecting an object;
determining whether the object is in the vehicle path during
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the turn;
reducing the vehicle speed if the object is determined to be
in the vehicle path during the turn; and
ignoring the object for braking purposes if the object is
determined not to be in the vehicle path during the turn.
Ex. 1001, 8:7–19.

10. A system for use in controlling a vehicle at a vehicle
speed, said system including:
an adaptive cruise control system;
a controller in communication with said adaptive cruise
control system and capable of determining when the vehicle is
in a turn, said controller operative to reduce the vehicle speed
according to a vehicle position in the tum;
at least one lateral acceleration sensor for generating a
signal corresponding to a vehicle lateral acceleration, said
lateral acceleration sensor in electrical communication with said
controller and operative to detect a change in the vehicle lateral
acceleration; and
at least one object detection sensor for detecting an object
in a vehicle path of the vehicle during the tum, said object
detection sensor in electrical communication with said
controller, wherein said controller includes control logic
operative to determine whether the object is in the vehicle path
during the turn and ignoring the object for braking purposes
when the object is not determined to be in the vehicle path.
Ex. 1001, 8:63–9:16.

II. ANALYSIS
A. Level of Ordinary Skill in the Art
Petitioner asserts that a person of ordinary skill at the relevant time
would have had “a bachelor’s degree in electrical engineering or mechanical
engineering, or a related subject, and two to three years of work experience
in the field of automotive control systems” Pet. 9. Petitioner asserts further
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that “[a] lack of experience can be remedied with additional education (e.g.,
a Master’s degree), and likewise, a lack of education can be remedied with
additional work experience (e.g., 5–6 years).” Id. (citing Ex. 1008 ¶¶ 55–
58). “Patent Owner [does] not dispute Petitioner’s definition of a personal
of ordinary skill in the art.” PO Resp. 2 (citing Pet. 9; Ex. 2007 ¶ 20). We
agree with Petitioner’s definition of the level of ordinary skill in the art as it
is consistent with the level of ordinary skill reflected in the ’416 patent and
the prior art of record.
B. Claim Construction
For inter partes reviews filed on or after November 13, 2018, we
apply the same claim construction standard used by Article III federal courts
and the ITC, both of which follow Phillips v. AWH Corp., 415 F.3d 1303
(Fed. Cir. 2005) (en banc), and its progeny. See Changes to the Claim
Construction Standard for Interpreting Claims in Trial Proceedings Before
the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,340, 51,358
(Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13,
2018) (now codified at 37 C.F.R. § 42.100(b) (2019)). Because the instant
Petition was filed on December 31, 2018, we apply that standard here.
Accordingly, we construe each challenged claim of the ’416 patent to
generally have “the ordinary and customary meaning of such claim as
understood by one of ordinary skill in the art and the prosecution history
pertaining to the patent.” Id. Only those claim terms that are in controversy
need to be construed, and only to the extent necessary to resolve the
controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
(Fed. Cir. 1999); see also Nidec Motor Corp. v. Zhongshan Broad Ocean
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Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs.in
the context of an inter partes review).
Petitioner proposes constructions for two limitations. Pet. 12–15.
Patent Owner proposes construction of a different limitation. PO Resp. 11–
12. We address each of these proposed claim constructions below.
1. “at least one lateral acceleration sensor . . . operative to detect a
change in the vehicle lateral acceleration”
This limitation appears in claim 10. Ex. 1001, 9:2–7. According to
Petitioner, “Patent Owner, in each of its District Court complaints, has taken
the position that a ‘sensor capable of measuring lateral acceleration will
inherently detect a change in the measured lateral acceleration.’” Pet. 12–13
(citing Ex. 1011 ¶ 38; Ex. 1009 ¶ 39; Ex. 1010 ¶ 38 (parenthetical quotations
omitted)). Based on these statements, Petitioner asserts that a person of
ordinary skill in the art “would have understood that a lateral acceleration
sensor disclosed in the prior art necessarily discloses ‘at least one lateral
acceleration sensor . . . operative to detect a change in the vehicle lateral
acceleration.’” Pet. 13 (citing Ex. 1008 ¶¶ 63–65). “Patent Owner does not
contest this construction” in its Response. PO Resp. 12.
We agree with and adopt Petitioner’s construction of this claim
limitation as it is consistent with the Specification of the ’416 patent, which
states that “the lateral acceleration sensor [is] in electrical communication
with the controller and operative to detect a change in the vehicle’s lateral
acceleration.” Ex. 1001, 3:24–26.
2. “means for generating an object range signal corresponding to a
distance between the vehicle and the object; and an object angle
signal corresponding to the object’s angle in relation to the
vehicle”
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This limitation appears in claim 11. Ex. 1001, 9:18–22. As noted by
Petitioner, “because this claim term includes the word “means,” there is a
rebuttable presumption that 35 U.S.C. § 112 ¶ 6 applies.” Pet. 14.
According to Petitioner, “[t]he claim term recites no structure that
overcomes that presumption. Thus, this term is a means-plus-function claim
term under 35 U.S.C. § 112 ¶ 6, which must be construed pursuant to 37
C.F.R. § 42.104(b)(3).” Id.
Petitioner asserts that “[t]he functions recited in the term are
‘generating an object range signal corresponding to a distance between the
vehicle and the object and an object angle signal corresponding to the
object’s angle in relation to a vehicle.’” Pet. 14. Petitioner then identifies
portions of the specification that pertain to this function. Id. at 14–15 (citing
Ex. 1001, 4:23–25, 4:42–46; 4:56–62). In view of these disclosures in the
specification, Petitioner asserts that a person of ordinary skill in the art
“would have understood the corresponding structure for this means plus-
function limitation to include ‘any object detecting sensor known in the art,’
including those explicitly listed, and equivalents.” Id. at 15 (citing Ex. 1008
¶¶ 66–69) (footnote omitted). “Patent Owner does not contest this
construction” in its Response.” PO Resp. 13.
We agree with and adopt Petitioner’s construction of this claim
limitation as it is consistent with the Specification of the ’416 patent in the
portions of the specification cited by Petitioner. See Ex. 1001, 4:23–25,
4:42–46; 4:56–62.
3. “controller…capable of determining when the vehicle is in a turn,
said controller operative to reduce the vehicle speed according to
a vehicle position in the turn”
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This limitation appears in claim 10. Ex. 1001, 8:66–9:2. Patent
Owner asserts that this limitation requires “a controller that ‘detects when a
vehicle is in a turn,’ because claim 10’s controller could not be operative to
reduce the vehicle speed according to a vehicle position in the turn—unless
it also detects when a vehicle is in a turn.” PO Resp. 12. (citing Ex. 2007
¶¶43–45) (emphasis omitted).
Petitioner asserts that this claim construction should be rejected. Pet.
Reply 2. Although, Petitioner agrees that “the claim requires that the
controller have knowledge that the vehicle is turning,” Petitioner asserts that
the controller could gain such knowledge “in many ways; for example, the
vehicle’s turn could be indicated to the controller rather than detected” by it.
Id. (citing Ex. 1023 ¶¶ 17–18). Petitioner asserts further that “[i]t could also
be ‘determined’ (e.g., based on the controller receiving an angle of operation
of a steering wheel).” Id. (citing Ex. 1023 ¶¶ 15–16). Given these
alternative ways in which the controller could obtain the necessary
information, Petitioner contends that “it does not necessarily follow that
determining when the vehicle is in a turn requires ‘detecting.’” Id.
Patent Owner disagrees, asserting that “Petitioner’s expert admitted
on cross-examination that claim 10 . . . requires ‘determining when the
vehicle is in a turn,’ and that the controller is ‘operative to reduce the vehicle
speed according to the vehicle’s position in the turn.’” PO Sur-Reply 1.
Patent Owner’s argument conflates the claim term “determining” with
the terms “detect” or “detecting.” In other words, Patent Owner construes
the claim term “determining” to mean the same thing as the claim term
“detecting.” Patent Owner, however, does not provide any evidence that
these different claim terms mean the same thing. In the absence of sufficient
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evidence to the contrary, we “must presume that the use of these different
terms in the claim[] connotes different meanings.” CAE Screenplates Inc. v.
Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000).
We agree with Petitioner that the claim term “determining” is broader than
the claim terms “detect” or “detecting” and encompasses other ways of
obtaining the information necessary to ascertain whether the vehicle is in a
turn.
Accordingly, we agree with and adopt Petitioner’s understanding of
this limitation. Specifically, we agree that claim 10 does not require a
controller that detects when a vehicle is in a turn. Rather, claim 10 requires
a controller “capable of determining when the vehicle is in a turn,” which
encompasses determination made in ways other than detecting.
C. 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; and, when presented, (4) objective
evidence of nonobviousness.6 Graham v. John Deere Co., 383 U.S. 1, 17–
18 (1966).

6 Patent Owner provides no such evidence for our consideration. See
generally PO Resp.
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We analyze the asserted grounds of unpatentability in accordance with
the above-stated principles.
D. Obviousness of Claims 10 and 11 in View of Harada, Russell, and
Mazda
Petitioner contends that claims 10 and 11 are unpatentable under 35
U.S.C. § 103(a) over Harada, Russell, and Mazda. Pet. 15–42. Having now
considered the evidence in the complete record established during trial, we
are persuaded that Petitioner has demonstrated by a preponderance of the
evidence that these claims would have been obvious in view of Harada,
Russell, and Mazda. We begin our analysis with an overview of the prior
art.
1. Harada
Harada is directed to “a vehicle control apparatus which controls one
or more running conditions of a vehicle so that the vehicle reaches a target
position intended by a driver.” Ex. 1004, 1:60–62. Harada’s control
apparatus is shown in Figure 1 reproduced below:

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Figure 1 “is a diagrammatic view of an electric construction of a vehicle
control apparatus in accordance with the present invention.” Id. at 3:62–64.
As shown in this figure, Harada’s vehicle control apparatus includes vehicle-
speed sensor 10, lateral-acceleration sensor 14, steering-angle sensor 16,
electronic control unit 18, rear-wheel steering actuator 20, and vehicle-speed
changing actuator 22. Id. at 4:25–35.
Harada’s “vehicle-speed sensor 10 detects or estimates a running
velocity or speed, V, of the center of gravity of the vehicle, based on the
speed of rotation of the output shaft of the engine (not shown) of the
vehicle.” Ex. 1004, 4:36–39. Harada’s “lateral-acceleration sensor 14
detects an acceleration, Gy, of the vehicle in the lateral direction of the
vehicle.” Id. at 4:64–65. And, Harada’s “steering-angle sensor 16 detects
an angle, θ, of operation or rotation of the steering wheel.” Id. at 5:1–2.
In Harada, control unit 18 “determines an intended target position and
an estimated target position of the vehicle based on the output signals of the
above described three sensors 10, 14, 16, and controls the rear-wheel
steering actuator 20 or vehicle-speed changing actuator 22 based on the
difference between the intended and estimated target positions.” Ex. 1004,
5:53–59 (emphasis added).
2. Russell
Russell is directed to “a path prediction system and method for use
with adaptive cruise control and collision avoidance systems for an
automotive vehicle, the path prediction system tracking targets in the same
highway lane as the vehicle.” Ex. 1005, 1:16–20. Russell’s path prediction
system is shown in Figure 1 reproduced below:
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Figure 1 “illustrates a vehicle having a path prediction system in accordance
with the present invention.” Id. at 3:28–29. Russell’s detection system 12
includes forward looking sensor 14, velocity measuring system 16, yaw rate
measuring system 18, digital interface unit 22, and signal processing system
20. Id. at 3:55–4:3. In Russell’s system “signal processing system 20
collects the data inputs. From forward looking sensor 14 it receives data, for
each tracked target, relating to the range, angle, velocity and acceleration
relative to host vehicle 10.” Id. at 5:36–39. Russell explains that “[f]rom
this information, system 20 converts the data to range, angle, velocity and
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acceleration. It uses the angle and the range to calculate lateral velocity.”
Id. at 5:39–42.
3. Mazda
Mazda is directed to “a vehicular automatic braking device.” Ex.
1006 ¶ 1. The problem solved by Mazda’s device is the “unnecessary
application of automatic braking as a vehicle negotiates a curved road.” Id.
¶ 3. Mazda’s device achieves this goal by detecting, independently of
steering wheel inputs, whether a vehicle is running through a curve and
preventing the application of unnecessary automatic braking. Id. ¶ 5
4. Independent Claim 10
Petitioner provides claim charts and arguments with citations to the
relevant portions of Harada, Russell, or Mazda that teach or suggest the
elements of claim 10 with citations to supporting declarant testimony.
Pet. 18–40.
a. A system for use in controlling a vehicle at a vehicle speed,
said system including: (preamble)
Petitioner contends that “[t]o the extent the preamble is limiting,
Harada discloses it or at least renders it obvious.” Pet. 18 (citation omitted).
Specifically, Petitioner asserts that Harada discloses a vehicle control
apparatus for controlling at least one running condition of a vehicle
including a vehicle-speed sensor. Id. (citing Ex. 1004, Abst., Fig. 1; Ex.
1008 ¶¶ 80–81). Patent Owner does not contest Petitioner’s argument that
Harada teaches the preamble of claim 10. See generally PO Resp.
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For the reasons explained by Petitioner above, which we expressly
adopt, Petitioner has shown that Harada teaches the preamble of claim 10.7
b. an adaptive cruise control system (limitation 10.1)
Petitioner contends “Harada discloses a ‘control apparatus for an
automotive four-wheel vehicle’ but does not explicitly disclose that its
system is, or includes, an adaptive cruise control system.” Pet. 18 (citing
Harada, 4:21–23). According to Petitioner, “[a]daptive cruise control
system[s] were well-known before the time of the ’416 Patent, however, and
Russell explicitly discloses an adaptive cruise control system.” Id. (citing
Ex. 1005, 3:51–4:5; 5:5–25; 1:14–20, Ex. 1008). Petitioner asserts that a
person of ordinary skill in the art “would have been motivated to combine
Russell’s teachings of an adaptive cruise control system for multiple
reasons.” Id. at 19 (citing Ex. 1008 ¶¶ 84–84). Petitioner notes that
“Harada discloses a vehicle control apparatus, just like the ’416 Patent
discloses an invention that ‘provides smooth vehicle control’ and that
“Russell is also analogous art to the ’416 Patent, as both disclose systems for
use with adaptive cruise control systems.” Id. at 19–20 (citing Ex. 1001,
Abst.; Ex. 1005, 1:14–19). With these observations in mind, Petitioner
contends that “combining the teachings of Harada with those of Russell
would have been no more than the combination of known elements
according to known methods to yield predictable and beneficial results.” Id.

7 We need not determine whether the preamble of claim 10 is limiting as the
parties have not raised that issue before us and Petitioner persuasively
demonstrates that the limitations of the preamble are disclosed in Harada.
Nonetheless, Patent Owner has waived any argument for patentability
directed to the preamble of claim 10. See Paper 9, 7–8 (“Patent Owner is
cautioned that any arguments for patentability not raised in the response may
be deemed waived.”).
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at 20 (citing Ex. 1008 ¶ 86). According to Petitioner, a person of ordinary
skill in the art “would have recognized that incorporating Russell’s teachings
with the teachings of Harada would have provided benefits, such as
improved safety and mitigation of a wider set of external factors.” Id.
Petitioner contends further that a person of ordinary skill in the art
“would have recognized that Russell’s adaptive cruise control system . . .
could have been incorporated easily into the control apparatus of Harada by
simply adding the hardware used by Russell’s adaptive cruise control system
24 into Harada’s . . . control apparatus.” Pet. 20–21 (citing Harada, 4:33–
35; Ex. 1008 ¶ 87). According to Petitioner, a person of ordinary skill in the
art “would have recognized that any additional programming needed by the
combination would be within the level of skill in the art, and would have
been accomplished, for example, by adding basic software routines to
Harada’s ‘ROM of the ECU 18.’” Id. at 21 (citing Harada, 5:49–53).
Petitioner also asserts that “Russell helpfully roadmaps the use of the
adaptive cruise control system with other components of a vehicle control
apparatus . . . and provides flow charts and other information to guide a
[person of ordinary skill in the art] in implementing its system and
methods.” Id. (citing Russel, 5:5–25). Based on these assertions, Petitioner
submits that a person of ordinary skill in the art “would have recognized a
reasonable expectation of success in incorporating the adaptive cruise
control system and appropriate software routines into the system of Harada.
Id. (citing Ex. 1008 ¶ 88). In addition, Petitioner contends that a person of
ordinary skill in the art “would have been motivated to incorporate Russell’s
teachings to provide the benefits of a ‘path prediction system and method
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which is simple, accurate, cost-effective and reliable.’” Id. (citing Russel,
2:6–18, Ex. 1008 ¶ 88).
Patent Owner asserts that “[a]lthough Petitioner asserts numerous
purported rationales under which ‘[a person of skill in the art] would have
been motivated to combine [Harada with] Russell’s teachings of an adaptive
cruise control system,’ none of them stand up to the slightest scrutiny. PO
Resp. 30 (citing Pet. 19). Patent Owner raises four arguments in support of
this position. We discuss each argument in turn below:
i. Analogous Art
Patent Owner contends that Harada is not analogous art because
“Harada is not directed to [a system for] overriding the driver’s intended
speed—which is the central purpose of ACC systems.” PO Resp. 31 (citing
Ex. 1008 ¶¶ 100–103). Patent Owner also asserts that “[f]or the same
reasons, Harada is also not analogous art to Russell’s path prediction system
for ACC and collision avoidance—and thus a [person of ordinary skill in the
art] reviewing Harada’s stability controller would not have any reason to
look to Russell’s ACC and collision avoidance disclosure.” Id. (citing Ex.
1008 ¶¶ 105–106). Patent Owner contends further that “even if Harada is
analogous art . . . Petitioner’s assertion that a [person of ordinary skill in the
art] would combine the Harada and Russell references because they ‘were
drawn from the same general field of art’ is ‘simply too conclusory to satisfy
[Petitioner’s] burden.’” PO Resp. 31–32 (citing Securus Techs., Inc. v.
Glob. Tel*Link Corp., 701 F. App’x 971, 976 (Fed. Cir. 2017); Agilent
Techs., Inc. v. Bio-Rad Labs., Inc., IPR2019-00268, Paper 8, 18–19 (PTAB
May 16, 2019)).
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In reply, Petitioner contends that Patent Owner’s “analogous art test is
wrong.” Pet. Reply 13. Petitioner asserts that “[a]rt is analogous if it is
‘from the same field of endeavor’ as the subject patent (In re Bigio, 381 F.3d
1320, 1325 (Fed. Cir. 2004)) and the scope of analogous art is broad.” Id.
citing Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010)).
Petitioner asserts further that “[a]rt is also analogous ‘if the reference is not
within the field of the inventor’s endeavor’ but if reasonably pertinent to the
patent’s problem.” Id. (citing Bigio, 381 F.3d at 1325).
Turning to the merits of Patent Owner’s assertion, Petitioner contends
that “PO’s expert admits the ‘subject matter areas relevant to this matter’ are
broadly ‘vehicle control systems,’ not simply adaptive cruise control
systems. Id. (citing Ex. 2007 ¶ 15).8 According to Petitioner, “Dr. Shaver’s
confirmation that the field of vehicle control systems is relevant means
Harada, which discloses a ‘vehicle control apparatus,’ (EX1004, Abstract))
satisfies the ‘same field of endeavor’ analogous art test.” Id. Petitioner also
contends that because the systems described in the ’416 patent have lateral
acceleration sensors, “Harada ‘logically would have commended itself’ to a
[person of ordinary skill in the art]’s attention.” Id. (citing Ex. 1001, 4:12–
29; quoting In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1380 (Fed.
Cir. 2007)). Thus, Petitioner asserts that “[u]nder either test, Harada is
analogous art.” Id.
Patent Owner disagrees again, contending that the field of endeavor is
not vehicle control systems and that Petitioner’s expert testimony does not

8 Petitioner also cites “57:11–15.” It is, however, unclear what document
Petitioner is referencing at page 57 lines 11–15.
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support its position that Harada would have logically commended itself to
the attention of a person of ordinary skill in the art. PO Sur-Reply 16.
Petitioner sets forth the correct tests for analogous art. See Bigio, 381
F.3d at 1325 (“Two separate tests define the scope of analogous prior art: (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.” (citing In re Deminski, 796
F.2d 436, 442 (Fed. Cir. 1986); In re Wood, 599 F.2d 1032, 1036 (CCPA
1979))). We agree with Petitioner that Harada is in the same field of
endeavor as the ’416 patent, thus satisfying the first test. We reach this
conclusion because, as noted by Petitioner, Harada is directed to a “control
apparatus for an automotive four-wheel vehicle” and so is the ’416 patent.
Ex. 1004, 4:21–23; Ex. 1001, 1:12–13 (“this invention relates to a method
and system for controlling a vehicle having an ACC system”) (emphasis
added). The fact that this field of endeavor is large does not negate the fact
Harada and the ’416 patent are in the same field of endeavor. Moreover,
Patent Owner’s expert essentially admits as much. Ex. 2007 ¶ 15; Ex. 1022
57:8–60:5). For these reasons, we find that Harada is analogous art to the
’416 patent.9
ii. No Problem in Harada for Russell to Solve
Patent Owner contends that Petitioner does not identify a problem in
Harada that Russell solves. PO Resp. 32. Specifically, Patent Owner asserts
that “Petitioner omits the disclosure from Russell that explicitly states that it

9 Having determined that Harada is analogous art under the first test, we
need not consider whether it qualifies under the second test.
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is directed to ‘a path prediction system and method for use with adaptive
cruise control and collision avoidance systems for an automotive vehicle.”
Id. (citing Ex. 1005, 1:15–16). According to Patent Owner, “because
Harada does not involve cruise control, a [person of ordinary skill in the art]
would not look to Russell—because those two references are not even
directed to the same kind of vehicle control, much less to the same vehicle
control problems.” Id. at 33 (citing Shaver ¶ 111). Patent Owner asserts
that “neither Petitioner, nor its expert, nor any of the cited Ground 1 prior art
references identifies or points to any problem in Harada at all— much less a
specific problem in Harada that would prompt a [person of ordinary skill in
the art] to look to Russell to solve.” Id. (citing Pet., passim). Based on this
observation, Patent Owner contends that “[t]his failure alone is sufficient to
find that Petitioner has defaulted on showing a motivation to combine the
two references.” Id. at 33–34 (citing Westinghouse Air Brake Techs. Corp.
v. Siemens Indus., Inc., IPR2017-00582, 16 (Paper 12); In re Zurko, 111
F.3d 887, 889–90 (Fed. Cir. 1997).
In reply, Petitioner contends that “obviousness does not require
identification of such a problem. Rather, any need in the art ‘can provide a
reason for combining the elements in the manner claimed.’” Pet. Reply 14
(quoting KSR, 550 U.S. at 420). Petitioner asserts that “the prior art
recognized that Russell addressed intelligent cruise control and collision
avoidance applications, and a person of ordinary skill in the art “would have
recognized benefits of incorporating such systems” into Harada’s vehicle.
Id. (citing Ex. 1008 ¶ 89). According to Petitioner, a person of ordinary skill
in the art “would have appreciated that Russell improved safety using its
‘forward looking sensor,’ (see EX1008, ¶¶110–111) motivating a [person of
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ordinary skill in the art] to incorporate Russell’s ACC system with Harada.”
Id. (citing Ex. 1018, 1:4–7).
Petitioner contends further that “[i]t’s not necessary that the
combination be made for the reasons that motivated the ’416 Patent’s
inventors; even before KSR, the law did ‘not require that the references be
combined for the reasons contemplated by the inventor.’” Pet. Reply 14
(quoting In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992); KSR, 550 U.S.
at 420). Petitioner asserts that Patent Owner’s “cited cases do not compel
otherwise.” Id. Petitioner explains that “[i]n Westinghouse, the challenger
cited the challenged patent as the motivation to combine; the Board found
this analysis suggestive of improper hindsight.” Id. at 14–15 (citing
Westinghouse, IPR2017-00582, Paper 12, 16). Petitioner also explains that
“in In re Zurko, the court reversed because the motivation was not found in
the references.” Id. at 15 (citing In re Zurko, 111 F.3d at 889–90 (Fed. Cir.
1997). According to Petitioner, the facts of these cases do not apply because
“[h]ere, Russell provides the motivation.” Id. (citing Ex. 1008 ¶ 111)
(internal citation omitted).
In addition, Petitioner submits that Patent Owner “provides no
analysis or evidence to contradict Petitioner’s conclusion that a [person of
ordinary skill in the art] would have found benefits to incorporating Harada
and Russell.” Pet. Reply 15. Rather, according to Petitioner, Patent
Owner’s expert alleges “only that he would not have been convinced of
Petitioner’s argument, and he does not contend that a [person of ordinary
skill in the art] would not have appreciated the advantages to combining
Harada and Russell.” Id. (citing Ex. 2007 ¶¶ 107–112). In its Sur-Reply,
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Patent Owner does not specifically refute this argument. See generally PO
Sur-Reply.
Petitioner is correct that there is no requirement that it identify a
problem in Harada that Russell solves. Rather, as noted by Petitioner “any
need or problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the elements in
the manner claimed.” KSR, 550 U.S. at 420; see also Pet. Reply 15.
Petitioner also correctly notes that “the law does not require that the
references be combined for the reasons contemplated by the inventor.” See
Beattie, 974 F.2d at 1312 (citing In re Kronig, 539 F.2d 1300, 1304 (CCPA
1976); In re Lintner, 458 F.2d 1013, 1016 (CCPA 1972)). For these reasons,
we agree with Petitioner that Patent Owner’s test for obviousness is overly
narrow and that Patent Owner’s argument that Petitioner fails to identify a
problem in Harada that Russell solves does not apprise us of a flaw in
Petitioner’s reasoning. Pet. Reply 14.
iii. No Motivation to Combine
Patent Owner contends that the fact that a person of ordinary skill in
the art could combine Russell with Harada does not provide motivation to
combine these references. PO Resp. 34. According to Patent Owner,
Petitioner’s assertion that “combining the teachings of Harada with those of
Russell would have been no more than the combination of known elements
according to known methods to yield predictable and beneficial results,” is
conclusory because a person of skill in the art “would not have considered
all of the elements of Harada to be known or to yield predictable results.”
Id. at 34–35 (citing Pet. 20, 32; Ex. 2007 ¶¶ 69–98). Based on this alleged
deficiency in Petitioner’s reasoning, Patent Owner asserts that Petitioner
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“does not address at all why a [person of ordinary skill in the art] would have
combined” Harada and Russell. Id. at 35.
Patent Owner contends further that Petitioner’s reasoning “that a
[person of ordinary skill in the art] ‘would have recognized that Russell’s
adaptive cruise control system . . . could have been incorporated easily into
the control apparatus of Harada by simply adding the hardware used by
Russell’s adaptive cruise control system 24 into Harada’s Figure 1 control
apparatus,’” likewise “does not address why a [person of ordinary skill in the
art] would have been combined the references, even if easy to do so.” PO
Resp. 35 (citing Pet. 20–21, 32).
In reply, Petitioner asserts that its “rationale that combining Russell’s
teachings with Harada was no more than combining prior art elements
according to known methods” is a rationale suggested with approval in KSR.
Pet. Reply 15 (citing Pet. 20). Responding to Patent Owner’s allegation that
“the Petition did not address ‘why a [person of ordinary skill in the art]
would have combined the references,’” Petitioner reiterates its position “that
the combination ‘would have provided benefits, such as improved safety and
mitigation of a wider set of external factors.’” Id. (citing PO Resp. 35; Pet.
20). In addition, Petitioner asserts that “Petitioner also established ‘a
reasonable expectation of success’ because Russell ‘roadmaps the use of the
adaptive cruise control system with other components of a vehicle control
apparatus’ and includes details to guide implementation of its teachings.”
Id. at 18 (citing Pet. 21). In its Sur-Reply, Patent Owner does not
specifically refute this argument. See generally PO Sur-Reply.
As discussed above, Petitioner provides several reasons why a person
of ordinary skill in the art at the time of the invention would have combined
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the teachings of Harada and Russell. See, e.g., Pet. 18–21. Petitioner’s
reasoning is supported by the testimony of its expert, Scott Andrews. See,
e.g., Ex. 1008 ¶¶ 84–88. In particular, Mr. Andrews testifies that the
proposed combination would yield predictable results. Id. ¶ 87. Further,
Mr. Andrews explains how the combination could be accomplished. Id. We
agree with Petitioner that this discussion demonstrates a reasonable
expectation of success. Pet. 21.
Further, the fact the Petitioner relies on one of the rationales set forth
in KSR (i.e., that the combination is no more than combining prior art
elements according to known methods) does not demonstrate the Petitioner
failed to meet its burden of showing that limitation 10.1 is obvious. When,
as in this case, Petitioner provides evidence to support its contention of
obviousness and that evidence accords with one of the rationales enumerated
in KSR, Petitioner meets its burden.
iv. Motivation Too Generic
Noting Petitioner’s assertion “that a [person of ordinary skill in the
art] ‘would have recognized that incorporating Russell’s teachings with the
teachings of Harada would have provided benefits, such as improved safety
and mitigation of a wider set of external factors,’” Patent Owner contends
that “Petitioner does not present any evidence that a [person of ordinary skill
in the art] reading Harada would have recognized a safety problem that
needed to be solved or improved.” PO Resp. 36 (citing Pet. 20, 32; also id.,
passim). According to Patent Owner, “[t]hat should end the inquiry.” Id.
Patent Owner contends further that “Russell’s ACC disclosure is not directed
to improved vehicle safety. . . . Rather, Russell acknowledges that its
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invention recognizes ‘the need for increased automotive convenience.’” Id.
(citing Ex. 2007 ¶¶ 113–119; Russel, 1:22–26, 2:6–9).
In addition, Patent Owner contends that the facts of this case are
similar to those in ActiveVideo, where “the Federal Circuit specifically held
that an asserted motivation to combine asserting a general desire ‘to build
something better,’ ‘more efficient, cheaper,’ that ‘had more features’ or was
‘more attractive to [] customers’ ‘is generic’ and thus insufficient to
establish obviousness.” PO Resp. 37 (citing ActiveVideo Networks, Inc. v.
Verizon Commc’ns, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012)). Patent
Owner contends further that the Board followed ActiveVideo in Jaguar Land
Rover N. Am. v. Blitzsafe Texas, LLC, IPR2018-00544, slip op. at 18 (PTAB
Aug. 10, 2018) and should do so in this case as well. Id. at 37–41.
Specifically, Patent Owner contends that although “Petitioner argues that a
[person of ordinary skill in the art] ‘would have recognized that Harada
provides teachings that enhance vehicle safety when considering natural
factors (e.g., wind), while Russell provides teachings that enhance vehicle
safety when considering obstacles (e.g., other vehicles in traffic),’” “none of
the elements for which Petitioner relies on Harada have anything to do with
‘vehicle safety when considering natural factors (e.g., wind).’” Id. at 38–39
(citing Pet. 20).
Similarly, Patent Owner contends that although Petitioner argues that
“because ‘Russell presents braking in response to object detection . . . and
Harada presents a complementary approach of engine throttling in response
to lateral slip of a vehicle[, b]y incorporating Russell’s adaptive cruise
control system into Harada’s ‘vehicle control apparatus’ [], benefits of each
type of control are provided,’” “Petitioner presents no evidence that a
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[person of ordinary skill in the art] reading Harada would have thought it
desirable to add ‘braking in response to object detection’ to Harada’s
stability control disclosure.” PO Resp. 39 (citing Pet. 22, passim.). Patent
Owner contends further that “none of the elements for which Petitioner
relies on Harada have anything to do with utilizing engine throttling,
particularly in response to lateral slip of a vehicle.” Id. According to Patent
Owner, “Petitioner’s motivation to combine allegations are unrelated to
whether a [person of ordinary skill in the art] would have combined specific
prior art elements to arrive at the specific invention claimed in the ’416
Patent, [and as such] Petitioner’s allegations are insufficient to establish
obviousness.” Id. at 40 (citing Jaguar, slip op. at 18). Thus, Patent Owner
asserts that “Petitioner arguments purporting to show a motivation to
combine would apply to the combination of almost any dynamic stability
control reference with almost any ACC reference—without regard to
anything specific disclosed in Harada and Russell—a rationale the Federal
Circuit has rejected.” Id.
Petitioner disagrees with Patent Owner’s assertion that improved
safety is insufficient motivation by distinguishing ActiveVideo and Jaguar.
Pet. Reply 15–19. Regarding ActiveVideo, Petitioner asserts that
“ActiveVideo does not categorically exclude ‘improved safety’ as a valid
motivation.” Id. at 16 (citing ActiveVideo, 694 F.3d at 1328). Rather,
according to Petitioner, in ActiveVideo “the challenger asserted the ‘modular
nature of the components’ and ‘efficiency and market demand’ supported
obviousness, such that any one of six references could be combined with
another using these broad motivations.” Id. (citing ActiveVideo, 694 F.3d at
1327). Petitioner contends that in ActiveVideo “[t]he expert provided only
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generic motivations: building something better, more efficient, or with more
features; all were unrelated to the prior art or claim limitations.” Id. (citing
ActiveVideo, 694 F.3d at 1327–28). Petitioner asserts that “[t]he Federal
Circuit affirmed that this was insufficient, because the ‘expert failed to
explain how specific references could be combined, which combination(s) of
elements in specific references would yield a predictable result, or how any
specific combination would operate or read on the asserted claims.’” Id. at
16–17.
In contrast, Petitioner contends that in this proceeding “the Petition’s
motivations are not ‘divorced from the prior art elements.’” Pet. Reply 17
(citing Apple Inc. v. Qualcomm Inc., IPR2018-01316, Paper 7, 37;
ActiveVideo, 694 F.3d at 1328). According to Petitioner, its “reason to
combine is achieved by incorporating an ACC system like Russell’s” in to
Harada’s system. Id. Petitioner asserts that “[t]his is not generic, but rather
directly linked to the prior art.” Id.
Petitioner contends that Jaguar “does [not] categorically exclude
‘improved safety’” either. Pet. Reply 18. Petitioner asserts that in Jaguar,
“the Board found a ‘generic goal of providing a single, cohesive system’
insufficient, and likewise found assertions of a ‘safer driving experience’ as
“bear[ing] little relation to any specific combination of elements.’” Pet.
Reply 18 (citing Jaguar, 18). According to Petitioner, “[t]hat’s not the case
here: the combination of Russell with Harada achieves advantages
expressly supported by the references.” Id. (citing Pet. 20; Ex. 1024).
Petitioner asserts further that the proposed combination “and its supporting
motivations [unlike the combination and supporting motivation in Jaguar],
are directly related to ‘whether a [person of ordinary skill in the art] would
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have combined specific prior art elements to arrive at the specific invention
claimed in the ’416 Patent.’” Id. (citing PO Resp. 40).
In addition, Petitioner contends that its “proposed motivation also
provides a ‘reasoned explanation’ consistent with precedent.” Pet. Reply 18.
Petitioner contends further that “[e]xplanations of approved motivations to
combine include those that ‘identif[y] a reason why a [person of ordinary
skill in the art] would have combined the prior art references . . . that had a
foundation in the prior art.’” Id. at 18–19 (citing In re Nuvasive, Inc., 842
F.3d 1376, 1382–83 (Fed. Cir. 2016)). Based on these contentions,
Petitioner argues that the Petition provides “a ‘reasoned explanation’ and
supports finding that a [person of ordinary skill in the art] would have been
motivated to combine Harada and Russell. Id. at 19.
In its Sur-Reply, Patent Owner essentially reiterates its arguments
based on ActiveVideo and Jaguar. PO Sur-Reply 16–18.
We do not agree with Patent Owner’s contention that the benefits
identified by Petitioner in support of its “motivation to combine” are too
generic and unrelated to the challenged claims. PO Resp. 36; PO Sur-Reply
16. Rather than address these benefits as described by Russell, Patent
Owner relies on a superficial similarity between the benefits enumerated in
Russell and the benefits alleged in ActiveVideo and Jaguar to support this
contention. See Ex. 1005, 1:14–19, 47–53. But in this case, Russell
explicitly discusses the benefits relied on by Petitioner in support of its
rationale. Id. Thus, the benefits relied upon by Petitioner (i.e., collision
avoidance and object detection) are specific rather than generic.
Furthermore, they are related to the challenged claims, which are also
concerned with object detection. Ex. 1001, 9:8–15.
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For these reasons, we agree with Petitioner that the facts of both
ActiveVideo and Jaguar are distinguishable from the facts of this case.
c. a controller in communication with said adaptive cruise
control system and capable of determining when the vehicle
is in a turn, said controller operative to reduce the vehicle
speed according to a vehicle position in the turn (limitation
10.2)
Petitioner contends the “[t]he combination of Harada and Russell
discloses, or at least renders obvious, this claim limitation.” Pet. 23.
Specifically, Petitioner asserts that “Harada discloses a controller in
communication with other elements.” Id. Petitioner identifies these
elements as “sensors 10, 14, 16,” which “are connected to an input part of an
electronic control unit 18 . . . computer including a central processing unit.”
Id. at 23–24. According to Petitioner, “[t]he output part of the ECU 18 is
connected to a rear-wheel steering actuator 20 and a vehicle-speed changing
actuator 22.’” Id. at 24 (citing Ex. 1004, 4:27–35). Petitioner explains that
“[i]n the proposed combination with Russell . . . the controller (ECU 18) is
in communication with said adaptive cruise control system.” Id. at 24.
Petitioner asserts further that “Harada discloses that its controller is
capable of determining when the vehicle is in a turn” because Harada
describes “that the ‘steering-angle sensor 16 detects an angle, θ, of operation
or rotation of the steering wheel (not shown) by the driver to steer the front
wheels (not shown), from a neutral position (θ=0) of the steering wheel
where the vehicle can run straightly frontward in the longitudinal direction
thereof.’” Pet. 24–25 (citing Ex. 1004, 5:1–6). According to Petitioner,
“Harada states that ‘ECU 18 determines an intended target position and an
estimated target position of the vehicle based on the output signals of the
above-described three sensors 10, 14, 16’” and “Harada detects when the
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vehicle is in the turn (e.g., non-zero lateral displacements versus time in y
direction indicate vehicle is in a turn).” Id. at 25 (citing Ex. 1004, 5:54–59;
Ex. 1008 ¶ 94). Petitioner also asserts that in Russell “the ‘intended target
position may be represented by a lateral displacement amount, y1,’ [and] the
‘estimated target position [may be] represented by a lateral displacement
amount, y2.’” Id. at 27 (citing Ex. 1005, 6:4–16). Based on these assertions,
Petitioner argues that a person of ordinary skill in the art “would have
understood that, by determining an intended target position and an estimated
target position by the signals of the sensors, Harada discloses a controller
capable of determining when the vehicle is in a turn.” Id. at 26. In addition,
Petitioner notes that “a non-zero steering angle θ, fed into ECU 18,
additionally shows a controller capable of determining when the vehicle is in
a turn.” Id.
Next, Petitioner contends that “Harada also discloses said controller
operative to reduce the vehicle speed according to a vehicle position in the
turn. Pet. 26. Specifically, Petitioner asserts that in Harada
“ECU 18 determines an intended target position and an estimated
target position of the vehicle based on the output signals of the
above-described three sensors 10, 14, 16, and controls the rear-
wheel steering actuator 20 or vehicle-speed changing actuator
22 based on the difference between the intended and estimated
target positions.”
Id. (quoting Ex. 1004, 5:54–59) (alteration in original). Thus, according to
Petitioner, “Harada explicitly discloses reducing the vehicle speed.” Id.
(citing Ex. 1008 ¶ 96).
Quoting Harada at column 9 lines 41–51 for support, Petitioner also
contends that Harada “discloses that this [reduction in vehicle speed] is
performed according to a vehicle position in the turn.” Pet. 26–27.
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Petitioner explains that “the ‘intended target position may be represented by
a lateral displacement amount, y1’ which is compared to the ‘estimated
target position [] represented by a lateral displacement amount, y2’ (i.e., the
vehicle position in the turn), and based on the comparison of the two,
Harada describes lowering vehicle speed.” Id. at 27.
Considering the combined teachings of Harada and Russell, Petitioner
contends that “by describing a controller that determines an intended target
position and which controls a vehicle-speed changing actuator, and an
adaptive cruise control system, the combination of Harada and Russell”
disclose this limitation of claim 10. Pet. 27–28 (citing Ex. 1008 ¶¶ 92–99).
Patent Owner disagrees arguing that Harada does not reduce speed
according to the vehicle position in a turn, Harada does not disclose
determining a positon in a turn, and Harada teaches away from reducing
vehicle speed during a turn. PO Resp. 15, 20, 26. We discuss each of these
arguments below.
i. Harada Does Not Disclose Determining A Vehicle
Position In a Turn, Much Less Reducing Vehicle
Speed on This Basis
Patent Owner asserts that “Petitioner wrongly assumes that Harada
discloses determining a vehicle position in a turn.” PO Resp. 20. In support
of this assertion, Patent Owner argues that “both Petitioner and its expert
marshal nothing more than an ‘i.e.’ parenthetical to assert (incorrectly) that
Harada’s estimated target position represented by a lateral displacement
amount is the same as determining the vehicle’s position in the turn.” Id. at
21 (citing Ex. 1008 ¶ 98). Patent Owner argues further that “Petitioner’s
conclusory assertion is wrong because a [person of ordinary skill in the art]
reading Harada would understand that y2 cannot be the same as the vehicle
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position in the turn.” Id. (citing Ex. 2007 ¶¶ 73–75). According to Patent
Owner, “y2 does not represent a determination of the vehicle position in a
turn—it represents the estimated lateral displacement of the vehicle” and
“the fact that y2 can have a high value even when the vehicle is not turning,
such that there is no position in the turn to determine, further illustrates that
y2 does not represent a determination that a vehicle is in a turn.” Id. at 21–
22 (citing Ex. 1004, 7:1–53; Ex. 2007 ¶¶ 75–76).
In addition, Patent Owner contends that “Harada explicitly excludes
turns from the situations in which Harada teaches that the absolute value |y2-
y1| may become greater than the reference value d.” PO Resp. 22. In
support of this contention, Patent Owner quotes Harada as stating ‘“[w]hen
the vehicle is running in a normal manner with, e.g., usual change of the
steering angle of the steering wheel, there is substantially no case where the
absolute value |y2-y1| becomes greater than the reference value d.’” Id.
(citing Ex. 1004, 10:3–6). Rather, Patent Owner asserts, “Harada discloses
that in . . . ‘sudden disturbance’ scenarios [such as a sudden side wind or
abrupt change in the road surface friction coefficient], the absolute value of
|y2-y1| is high and ‘may be come greater than the reference value d [width of
a lane].’” Id. (quoting Ex. 1004, 10:7–10). According to Patent Owner,
“because y1 should be 0 in these ‘sudden disturbance’ scenarios, the value of
y2 must necessarily be high in order for the absolute value of |y2-y1| to be
high” and “a high y2 value cannot represent a determination of a vehicle
position in the turn in these scenarios, as Petitioner incorrectly asserts,
because they are non-turning events.” Id. (citing Ex. 2007 ¶ 76). Thus,
Patent Owner argues that a person of skill in the art “would understand that
y2 cannot be the same as the vehicle position in the turn” and would further
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understand that Harada does not disclose determining a vehicle position in a
turn as required by claim 10. Id. at 22–23.
Patent Owner contends that “[t]he situations [such as when skidding
on a snowy or icy road] where Harada discloses reducing vehicle speed
have nothing to do with the vehicle position in a turn.” PO Resp. 23 (citing
Ex. 2007 ¶¶ 78–80). According to Patent Owner, a person of ordinary skill
in the art
would understand that Harada teaches that reducing vehicle
speed in these unstable situations may occur regardless of any
position in a turn, and even when the vehicle is not turning at
all—such as “[w]hen the vehicle is receiving a sudden
disturbance, such as sudden side wind or abrupt and large change
of the friction coefficient μ of the road surface.”
Id. at 23–24 (quoting Ex. 2007 ¶¶ 81–82; Ex. 1004, 10:3–9). Thus, Patent
Owner asserts, “Harada does not teach or render obvious to a [person of
ordinary skill in the art] reducing vehicle speed according to the vehicle
position in the turn, because Harada is simply not addressing turn position
at all.” Id. at 24 (citing Ex. 2007 ¶ 84, Ex. 1004, 3:52–53).
Then, Patent Owner contends that “neither [Harada’s] Figure 4 nor its
description in the specification mention anything about lowering vehicle
speed.” PO Resp. 25. Rather, Patent Owner asserts Harada explains “that
‘during the time duration τ, the vehicle speed V, steering angle Ɵ, yaw rate
γ, and lateral acceleration Gy each are not changed’ . . . Thus, Figure 4 is
explicitly not discussing lowering vehicle speed for any reason.” Id.
(quoting Ex. 1004, 6:4–22). Based on this assertion, Patent Owner argues
that a person of ordinary skill in the art “would understand that Figure 4
merely shows a comparison between the car’s intended and estimated lateral
displacement at a single point in time during the turn, without regard to the
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vehicle’s position (i.e., entry, vertex, or exit) within the turn.” Id. (citing
Ex. 2007 ¶ 91).
In reply, Petitioner contends that Patent Owner misinterprets claim 10
by adding unrecited limitations. Pet. Reply 3. Specifically, Petitioner
asserts that Patent Owner’s arguments are based on the premise that claim
10 “requires ‘determining a vehicle position in a turn,’” but “[c]laim 10
simply requires ‘determining when the vehicle is in a turn.’” Id. (citing PO
Resp. 20–21, Ex. 1001, 8:67–9:1). Petitioner asserts further that “Dr.
Shaver’s analysis appears to rest on this misinterpretation of the claim (see,
e.g., EX2007, ¶77) and thus, his analysis is of little probative weight.” Id. at
4.
Petitioner also contends that Patent Owner “attempts to implicitly
construe ‘position’ as limited to a turn’s “entry, vertex, or exit.’” Pet. Reply
4 (citing PO Resp. 25). Petitioner disagrees, noting that “[t]he specification
merely describes the entry, middle, and exit as examples of locations,” such
that claim 10 “only requires determining when the vehicle is in a turn and
reducing a vehicle speed.” Id. (citing Ex. 1001, 5:41–45). In addition,
Petitioner asserts that Patent Owner “adds yet another unrecited limitation to
the claim by requiring the vehicle’s position in a turn serve ‘as a basis or
trigger’ to reduce speed.” Id. (citing PO Resp. 24). According to Petitioner,
“the claims do not recite any requirement for a ‘vehicle position in a turn’ to
be a ‘trigger,’ but in any event, as described below, Harada’s vehicle control
apparatus acts to slow a vehicle on the basis of a vehicle’s position during a
turn, meeting even this unrecited limitation.” Id.
In response, Patent Owner contends that “[t]he Petition never alleges
that Harada discloses ‘determining a vehicle position in a turn,’ and in its
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Reply, Petitioner does not dispute this.” PO Sur-Reply 2. Then Patent
Owner argues that “it is common sense that the controller must determine
the vehicle’s position in the turn in order to be able to reduce the vehicle
speed ‘according to a vehicle position in a turn’ as claim 10 requires.” Id. at
3 (citing Lisle Corp. v. A.J. Mfg. Co., 398 F.3d 1306, 1314 (Fed. Cir. 2005);
N. Am. Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 1346
(Fed. Cir. 2005)). In support of this assertion, Patent Owner quotes sections
of the Specification describing the operation of the ’416 patent’s controller.
Id. at 3–4.
We agree with Petitioner that Patent Owner’s contentions
misrepresent the language of limitation 10.2. See PO Resp. 20; see also PO
Sur-Reply 2. This limitation of claim 10 requires “a controller . . . capable
of determining when the vehicle is in a turn.” Ex. 1001, 8:67–9:1. As
explained in Section II.B.3 above, it does not require “determining a vehicle
position in a turn” as argued by Patent Owner. PO Resp. 20–26; PO Sur-
Reply 2–5. Thus, Patent Owner’s argument that y2 is not the vehicle
position in the turn misses the point because determining the vehicle position
in the turn is not required by claim 10. We further agree with Petitioner that
“[a]s shown in Figure 4 of Harada, the system of Harada detects when the
vehicle is in the turn (e.g., non-zero lateral displacements versus time in y
direction indicate vehicle is in a turn).” Pet. 27 (citing Ex. 1008 ¶ 94).
Furthermore, we do not agree with Patent Owner that “Harada is
simply not addressing turn position at all.” PO Resp. 23. Although Harada
discusses reducing vehicle speed when the vehicle experiences a sudden
disturbance (i.e., sudden side wind or abrupt and large change in the
coefficient of friction of the road surface), we do not agree that this
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disclosure means Harada precludes reducing vehicle speed during a turn.
See Ex. 1004, 10:3–9. Harada states
ECU 18 determines an intended target position and an estimated
target position of the vehicle based on the output signals of the
above-described three sensors 10, 14, 16, and controls the rear-
wheel steering actuator 20 or vehicle-speed changing actuator 22
based on the difference between the intended and estimated
target positions.
Ex. 1004, 5:54–59 (emphases added). For this reason, we determine that
Harada discloses reducing vehicle speed.
For these reasons, we determine that Petitioner has sufficiently
demonstrated that Harada discloses a controller capable of determining when
the vehicle is in a turn and operative to reduce the vehicle speed according to
a vehicle position in a turn, as required by limitation 10.2.
ii. Harada Teaches Away From Reducing Vehicle Speed
During a Turn
Patent Owner contends that “Harada specifically teaches away from
reducing vehicle speed during turns.” PO Resp. 26 (citing Ex. 2008 ¶ 92).
Patent Owner asserts that “Harada teaches that ‘where the absolute value of
the difference [between the intended and estimated target positions of the
vehicle] is small, it may be unnecessary to effect the vehicle condition
control, which the driver may feel as an excessive control.’” Id. at 26–27
(citing Ex. 1004, 3:8–11). For this reason, according to Patent Owner,
“Harada goes on to teach that ‘[w]hen the value |y2-y1| is smaller than the
reference value d [equal to the width of a traffic lane], the vehicle will not
deviate out of the lane and therefore it is not necessary to effect the vehicle-
condition control.’” Id. at 27 (citing Ex. 1004, 8:64–9:2). Patent Owner
details Harada’s disclosure in this regard. Id. at 27–28. Then, Patent Owner
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asserts that consistent with Harada’s disclosure “turns are excluded from
Harada’s listed scenarios.” Id. at 28 (citing Ex. 1004, 9:46–47, 11:26–48).
Patent Owner asserts further that it is in situations other than turns “that
Harada teaches that ‘the vehicle speed V is lowered for improving the
degree of driving safety.’” Id.
In addition, Patent Owner contends that in turns “Harada discloses
controlling ‘the vehicle to actually reach a position which is less deviated
from the intended target position than a position reached by the vehicle
controlled by the [] conventional control device.’” PO Resp. 29 (citing Ex.
1004, 2:38–41, 8:66–67). In support of this contention, Patent Owner
asserts that
Specifically, in the paragraphs that precede the passage
Petitioner cites, Harada discloses that it accomplishes this more
minor control, not by reducing the vehicle speed as Petitioner
argues, but by operating “the rear-wheel steering actuator . . . to
steer the rear wheels” either “to the phase or side opposite to the
side to which the front wheels are being steered through
operation of the steering wheel,” or “to the same side as the side
to which the front wheels are being steered through operation of
the steering wheel”—depending on the signs of y1, y2 and the
value of the difference (y2-y1).
Id. (citing Ex. 1004, 9:3–26). Based on these disclosures, Patent Owner
argues that a person of skill in the art “would understand that Harada
actually teaches away from reducing vehicle speed during turns.” Id. (citing
Ex. 1004 ¶¶ 93–96, 98; DePuy Spine, Inc. v. Medtronic Sofamor Danek,
Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009)). Thus, according to Patent
Owner, “it would not be obvious to a [person of ordinary skill in the art]
reading Harada to reduce vehicle speed according to a vehicle position in
the turn as claims 10 and 11 of the ’416 Patent require.” Id. at 29–30 (citing
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Ex. 2007 ¶ 98); McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1354
(Fed. Cir. 2001)).
Petitioner disagrees, asserting that “P[atent] O[wner] introduced no
evidence that Harada discourages reducing vehicle speed during a turn.”
Pet. Reply 12. According to Petitioner, “[a]t most, Harada suggests
following another path in other circumstances, but it does not criticize
controlling during instability.” Id. (citing In re Ethicon, Inc., 844 F.3d 1344,
1351 (Fed. Cir. 2017) (no teaching away where reference did not present
“clear discouragement”)). In addition, Petitioner does not agree that “turns
are excluded from Harada’s listed scenarios.” Id. (quoting PO Resp. 28).
Rather, Petitioner reiterates that “Harada explicitly applies in turning
scenarios.” Id.
In reply, Patent Owner maintains its position that Harada teaches
away. PO Sur-Reply 11–15. Patent Owner asserts that
Because Harada teaches exercising vehicle control other than
speed reduction “[w]hen the vehicle is running in a normal
manner with, e.g., usual change of the steering angle of the
steering wheel,” reserving speed reduction for non-turning
unstable situations, Harada teaches away from “reduc[ing] the
vehicle speed according to a vehicle position in the turn” as
claims 10-11 require.
Id. at 12.
We do not agree with Patent Owner. “A reference does not teach
away . . . if it merely expresses a general preference for an alternative
invention but does not ‘criticize, discredit, or otherwise discourage’
investigation into the invention claimed.” DePuy, 567 F.3d at 1327 (citing
In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). The passages identified
by Patent Owner in support of its argument, do not criticize, discredit, or
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otherwise discourage reducing vehicle speed according to a vehicle position
in the turn, they merely suggest a preferred alternative. Such encouragement
does not constitute “teaching away” in this case.
d. at least one lateral acceleration sensor for generating a
signal corresponding to a vehicle lateral acceleration, said
lateral acceleration sensor in electrical communication with
said controller and operative to detect a change in the
vehicle lateral acceleration (limitation 10.3)
Petitioner contends that “Harada discloses, or at least renders
obvious, this limitation.” Pet. 28. Specifically, Petitioner asserts that
Harada discloses a lateral acceleration sensor generating a signal
corresponding to a vehicle lateral acceleration and a lateral acceleration
sensor in electrical communication with the controller. Id. Noting Patent
Owner’s “position in district court that a ‘sensor capable of measuring lateral
acceleration will inherently detect a change in the measured lateral
acceleration,’” Petitioner asserts that “Harada’s lateral acceleration sensor is
inherently operative to detect a change in the vehicle lateral acceleration as
recited under Patent Owner’s admissions and as the term lateral
acceleration sensor is construed herein.” Id. at 29 (citing Ex. 1008 ¶ 103).
Petitioner asserts further that “Harada also explicitly describes detection of
the change of lateral acceleration.” Id. In support of this assertion,
Petitioner quotes Harada at column 7 lines 17–37. Id. at 29–30.
According to Petitioner, “[b]y describing that the initial signal
magnitude of the output of the lateral-acceleration sensor is ‘suddenly
changed,’ and by describing integration of this output signal of the lateral-
acceleration sensor, Harada discloses a lateral acceleration sensor operative
to detect a change in the vehicle lateral acceleration as recited.” Id. at 30
(citing Ex.1008 ¶¶ 104–105).
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Patent Owner does not contest Petitioner’s argument that Harada
teaches this limitation of claim 1. See generally PO Resp.
For the reasons explained by Petitioner above, which we expressly
adopt, we determine that Petitioner has demonstrated that Harada teaches “at
least one lateral acceleration sensor for generating a signal corresponding to
a vehicle lateral acceleration, said lateral acceleration sensor in electrical
communication with said controller and operative to detect a change in the
vehicle lateral acceleration,” as required by claim 10.10
e. at least one object detection sensor for detecting an object in
a vehicle path of the vehicle during the turn, said object
detection sensor in electrical communication with said
controller, wherein said controller includes control logic
operative to determine whether the object is in the vehicle
path during the turn and ignoring the object for braking
purposes when the object is not determined to be in the
vehicle path (limitation 10.4)
Petitioner contends that Harada, Russel, and Mazda render this
limitation obvious. See, e.g., Pet. 31. In support of this contention,
Petitioner asserts that “Russell discloses in its system at least one object
detection sensor as it states ‘[f]orward looking sensor 14 utilizes radar
technology and is adapted for mounting on a vehicle to detect one or more
objects, or targets in the field of view of forward looking sensor 14.’” Id.
(citing Ex. 1005, 4:23–27). Petitioner asserts further that Russell describes
“signal processing system 20 collects the data inputs. From forward looking
sensor 14 it receives data, for each tracked target, relating to the range,

10 Patent Owner has waived any argument for patentability directed to this
limitation of claim 10. See Paper 9, 7–8.
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angle, velocity and acceleration relative to host vehicle 10.” Id. at 31–32
(quoting Ex. 1005, 5:35–42; Ex. 1008 ¶ 108).
Petitioner argues that a person of ordinary skill in the art “would have
been motivated to incorporate these teachings of Russell into the system of
Harada for multiple reasons.” Pet. 32. Noting that “both references are
analogous art to the ’416 [p]atent,” Petitioner argues that “combining the
teachings of an object detection sensor as taught by Russell would have
again been no more than the combination of prior art elements according to
known methods, with a reasonable expectation of success.” Id. (quoting Ex.
1008 ¶¶ 108, 110). Petitioner argues further that a person of ordinary skill in
the art “would have recognized that incorporating Russell’s teachings with
the teachings of Harada would have provided benefits, such as improved
safety and mitigation of a wider set of external factors, such as ‘obstacles in
the path of the host vehicle’ as described by Russell.” Id. (citing Ex. 1005,
1:14–19, 47–53). According to Petitioner, “Russell improves safety by
detecting such obstacles in the path of the vehicle using its ‘forward looking
sensor,’ and thus, a [person of ordinary skill in the art] would have been
motivated to incorporate these teachings of Russell to enhance vehicle safety
using the detection of obstacles.” Id. As an example, Petitioner explains
that a person of ordinary skill in the art
would have recognized that the combination would have required
no more than incorporating Russell’s forward-looking sensor 14
depicted in Figure 1 into Harada’s system, by simply adding the
forward-looking sensor into the apparatus of Harada’s Figure 1,
such that the forward-looking sensor communicated with
Harada’s ECU 18 of its vehicle control apparatus.
Id. (citing Ex. 1008 ¶ 110).
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In addition, Petitioner asserts that a person of ordinary skill in the art
“would have recognized that any additional software programming needed
by the combination would have been within the level of skill in the art, and
would have been accomplished, for example, by adding software routines to
Harada’s ‘ROM of the ECU 18.’” Pet. 33 (citing Ex. 1004, 5:49–53).
Petitioner asserts further that a person of ordinary skill in the art “would
have recognized a reasonable expectation of success in incorporating the
object detection sensor and appropriate software routines into the system of
Harada” and “Russell provides motivation to incorporate its forward-
looking sensor, for example, to provide a ‘path prediction system and
method which is simple, accurate, cost-effective and reliable . . . ’ for both
‘intelligent cruise control and collision avoidance applications.’” Id. (Ex.
1008 ¶ 111; Ex. 1005, 1:38–65, 2:6–13). Based on these assertions,
Petitioner contends that a person of ordinary skill in the art “would have
been motivated to incorporate Russell’s object detection sensor and
associated hardware and software” into Harada’s system. Id. (citing Ex.
1008 ¶¶ 108–112). Petitioner provides further details of the proposed
modification of Harada in view of Russell on pages 33–37 of the Petition. In
the interest of brevity, we do not reproduce this discussion, but instead turn
to Petitioner’s proposed modification of the Harada-Russell combination in
view of the teachings of Mazda.
Petitioner contends that “Russell discloses an object detection sensor
that detects objects during a turn . . . [that] has a goal of ‘avoiding
collisions,’ e.g., using an adaptive, or ‘intelligent,’ cruise control system for
‘actuating the vehicle’s brakes.’” Pet. 37 (citing Ex. 1005, 1:38–46). Based
on this disclosure, Petitioner asserts that although “Russell teaches that a
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vehicle that is better able to detect objects in its path, such as while in a turn,
will improve adaptive cruise control systems,” Russell “does not provide
specific details connecting its determined object and vehicle path estimates
with decisions whether to apply brakes or provide collision avoidance.” Pet.
at 37–38 (citing Ex. 1008 ¶ 118). According to Petitioner, “Mazda supplies
such teachings.” Id. at 38.
Petitioner contends that in Mazda “if the vehicle is traveling through a
curve and the obstacle ahead is outside the expected range of travel of the
vehicle, flag F is set to ‘1’ in step S66 meaning that automatic braking is
restricted.” Pet. 38. Petitioner explains that in other words “Mazda
determines whether the vehicle is turning, and if the vehicle is turning and
an object is outside of the vehicle’s path, Mazda restricts operation of its
automatic braking system.” Id. (citing Ex. 1008 ¶ 118). Thus, according to
Petitioner, “Mazda discloses ignoring the object for braking purposes when
the object is not determined to be in the vehicle path [as required by claim
10].” Id.
Based on these disclosures, Petitioner contends that a person of
ordinary skill in the art “would have been motivated to incorporate the
teachings of Mazda for multiple reasons.” Pet. 38 (citing Ex. 1008 ¶ 119).
Noting that “Mazda is analogous art to the ’416 Patent, as it discloses a
control system for a vehicle,” Petitioner asserts that “incorporating the
teachings of Mazda into the combined system of Harada and Russell would
have been no more than the combination of prior art elements according to
known methods, with a reasonable expectation of success.” Id. As an
example, Petitioner asserts that a person of ordinary skill in the art
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would have recognized that the combination would have required
no more than applying Mazda’s teachings in Figure 14 and the
associated description to the system of the Harada–Russell
combination, which, when incorporated, would have controlled
operation of either Harada’s “vehicle-speed changing actuator
22” or Russell’s “brakes” that are part of adaptive cruise control,
instead of Mazda’s automatic braking apparatus.
Id. at 38–39 (citing Ex. 1008 ¶ 120).
In addition, Petitioner asserts that “[a]pplying the teachings described
in Mazda would have required no more than routine software programming
that would be added to Harada’s ROM, which already contains a control
program, such that the ROM would thus include additional control
program(s).” Pet. 39. Based on this assertion, Petitioner argues that a
person of ordinary skill in the art “seeking to combine the teachings
accordingly would have had a reasonable expectation of success, as
performing such programming would have been within the level of skill in
the art, guided by Mazda’s flow chart and textual description” and a person
of ordinary skill in the art “would have been motivated to incorporate the
teachings of Mazda because it describes that it accomplishes ‘accurately
preventing erroneous automatic braking and further improving the reliability
of automatic braking.’” Id. (emphasis added) (citing Ex. 1008 ¶ 120; Ex.
1006 ¶ 53). Thus, according to Petitioner, “the teachings of Russell and
Mazda, when incorporated into the system of Harada, render obvious”
limitation 10.4. Id.
Patent Owner disagrees, responding that a person of ordinary skill
would not have been motivated to combine Mazda with Harada and Russell.
PO Resp. 41. Specifically, Patent Owner contends that “[l]ike Russell,
Mazda is directed to solving a problem that does not exist in Harada. Id.
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According to Patent Owner, “it is axiomatic that a [person of ordinary skill
in the art] reviewing Harada would not be looking to improve automatic
braking in turns.” Id. (citing Ex. 2007 ¶¶ 126–128). In addition, Patent
Owner asserts that “Petitioner also fails to connect Mazda to Russell in [its]
motivation to combine allegation. For this reason, Petitioner has failed to
demonstrate a motivation to combine Mazda with Harada and Russell.” Id.
at 42 (citing HTC Corp. v. Cellular Commc’ns Equip. LLC, IPR2016-01493,
slip op. at 18 (PTAB Feb. 12, 2018) (Paper 33)).
Patent Owner also contends that “Petitioner provides no allegation
that a [person of ordinary skill in the art] would combine Mazda specifically
with Harada, other than the generic allegations that Petitioner made with
respect to combining Harada and Russell.” PO Resp. 42 (citing Pet. 38).
Patent Owner asserts that Petitioner’s allegations with respect to the
combination of Harada and Russell “are insufficient to prove obviousness.”
Id. at 42–43 (citing Apple Inc. v. Uniloc Luxembourg S.A., IPR2017-01993,
slip op. at 17 (PTAB Mar. 8, 2018) (Paper 10)).
In addition, Patent Owner contends that “Petitioner appears to use the
’416 Patent as a roadmap when combining Mazda with Harada and
Russell.” PO Resp. 43. In support of this contention, Patent Owner notes
that prior to introducing Mazda’s teaching, Petitioner admits that Russell
does not provide specific details regarding the connection between its
determined object and vehicle path estimates and its decision process for
brake application or collision avoidance. Id. (citing Pet. 37–38). Patent
Owner also contends that “Petitioner never identifies why a [person of
ordinary skill in the art] would have been looking for ‘specific details
connecting [Russell’s] determined object and vehicle path estimates with
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decisions whether to apply brakes or provide collision avoidance.’” Id. at
44.
Petitioner disagrees, responding that it has “explained what the
references would have taught in combination, and the unambiguous
motivation to combine Mazda.” Pet. Reply 19 (citing Pet. 38–39; Ex. 1008
¶ 120; Ex. 1006 ¶ 54). According to Petitioner, “[u]nder a proper
obviousness analysis, the Petition sufficiently established reasons to
combine.” Id. Petitioner also asserts “there is again no reason to identify a
problem in Harada for Mazda to solve, nor a reason to point out why a
[person of ordinary skill in the art] would look for a particular reference,”
noting that Patent Owner “cites no authority for such requirements, and this
reasoning has been rejected.” Id. at 20 (citing PO Resp. 41, 44; Ruiz v. AB
Chance Co., 357 F.3d 1270, 1276 (Fed. Cir. 2004) (no requirement for
express, written motivation before finding obviousness)).
In addition, Petitioner contends that it “did not ‘use the ’416 Patent as
a roadmap.’” Pet. Reply 20 (citing PO Resp. 43–44). Rather, according to
Petitioner, “Mazda itself provides the motivation, because it provides
techniques for avoiding erroneous braking, as would otherwise be present in
a system like the Harada-Russell combination.” Id. (citing In re
McLaughlin, 443 F.2d 1392, 1396 (CCPA 1971) (reconstructions are proper
if they only incorporate knowledge at the time of the invention)). Petitioner
contends further that a person of ordinary skill in the art “would have been
motivated to incorporate Mazda’s teachings as an advancement to Russell’s”
automatic braking system, as “Mazda represents an improvement to Russell,
because it can ‘accurately prevent erroneous automatic braking.’” Id. (citing
Pet. 38–39; Ex. 1006 ¶ 53).
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Patent Owner does not address Mazda or this specific limitation in its
Sur-Reply. See generally PO Sur-Reply. To the extent that Patent Owner’s
argument that the benefits identified by Petitioner in support of its
articulated reasons for the proposed combination apply to this limitation,
those arguments are addressed above in Section II.D.4.b.iv explaining that
Petitioner has demonstrated that the benefits relied upon are explicitly
disclosed in the references and relate to the challenged claims.
For this limitation, we agree with Petitioner that there is no
requirement that it identify a problem in Harada for Mazda to solve. Pet.
Reply 20. We also agree that Petitioner has sufficiently established reasons
for the proposed modification (namely that Mazda improves on Russell’s
system by restricting operation of its automatic braking system when a
detected object is outside the vehicles path). Pet. 38. Further, as Petitioner
has identified explicit teachings in the references relied upon for the
proposed combination, we do not agree with Patent Owner that Petitioner
has used the ’416 patent as a roadmap for the proposed combination.
f. Conclusion Regarding Claim 10
For the reasons discussed above and in view of the full record in this
proceeding, we determine that Petitioner has demonstrated by a
preponderance of evidence that claim 10 is unpatentable under 35 U.S.C.
§ 103(a) over Harada, Russell, and Mazda.
5. Claim 11
Petitioner provides claim charts and arguments with citations to
relevant portions of Harada, Russell, and Mazda that teach or suggest the
elements of claim 11 with citations to supporting declarant testimony. Pet.
40–42. As Patent Owner argues claim 11 with claim 10 and does not present
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further arguments for this claim, we do not reproduce Petitioner’s challenge
to claim 11. For the reasons explained by Petitioner on pages 40–42 of the
Petition, which we expressly adopt, Petitioner has demonstrated that claim
11 is unpatentable under 35 U.S.C. 103(a) over Harada, Russell, and Mazda.
E. Obviousness of Claims 1, 2, 7, and 9 in View of Russell, Fukada,
and Mazda
Petitioner contend that claims 1, 2, 7, and 9 are unpatentable under 35
U.S.C. § 103(a) over Russell, Fukada, and Mazda. Pet. 42–63. Having
considered the evidence in the complete record established during trial, we
are persuaded that Petitioner has demonstrated by a preponderance of the
evidence that these claims would have been obvious in view of Russell,
Fukada, and Mazda. As we provided an overview of Russell and Fukada in
Section II.D above, we begin our analysis of this challenge with an overview
of Fukada.
1. Fukada
Fukada is directed to “a device for controlling turn behavior of a
vehicle so as to suppress and reduce undesirable behavior such as drift out or
spin which can occur during turn of a vehicle such as an automobile.”
Ex. 1007, 1:7–10. Fukada’s device is applied to a braking system and
control system shown in Figure 1 below:
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Figure 1 “is a schematic view showing the braking system and the electric
control system of a vehicle to which the behavior control device of the
present invention is applied.” Id. at 13:49–51. Fukada’s “electric control
means 50 consists of a microcomputer 52 and driving circuit 54.” Id. at
16:41–42. According to Fukada,
input port means of the microcomputer 52 is supplied with a
signal representing vehicle speed V from a vehicle speed sensor
56, a signal representing lateral acceleration Gy of a vehicle body
from a lateral acceleration sensor 58 mounted substantially at a
center of gravity of the vehicle body, a signal representing yaw
rate r of the vehicle body from a yaw rate sensor 60, a signal
representing steering angle θ from a steering angle sensor 62,
signals representing wheel speeds of left and right front vehicle
wheels and left and right rear vehicle wheels VFL, VFR, VRL,
VRR from wheel speed sensors 64FL-64RR, and a signal
representing longitudinal acceleration Gx of the vehicle body
from a longitudinal acceleration sensor 66 mounted substantially
at the center of gravity of the vehicle body.
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Id. at 16:48–61. As noted by Petitioner, “Fukada discloses a ‘turn behavior
control device that detects lateral acceleration Gy of a vehicle body’ and
‘presumes the turn behavior of the vehicle’ and ‘controls the turn behavior
of the vehicle based upon the presumed turn behavior.’” Pet. 42 (citing Ex.
1007,11 Abst.).
2. Independent Claim 1
Petitioner provides claim charts and arguments with citations to the
relevant portions of Russell, Fukada, or Mazda that teach or suggest the
elements of claim 1 with citations to supporting declarant testimony. Pet.
43–56.
a. A method of controlling a vehicle having an adaptive
cruise control system capable of obtaining a vehicle
lateral acceleration, said method comprising the steps
of: (preamble)
Petitioner contends that “[t]o the extent the preamble is limiting,
Russell and Fukada disclose it or at least render it obvious.” Pet. 43. In
support of this contention, Petitioner asserts that “Russell discloses a method
performed in a vehicle having an adaptive cruise control system as it
describes ‘a method of detecting objects in a predicted path of a host vehicle
moving on a highway lane’ and a ‘method for use with adaptive cruise
control and collision avoidance systems.’” Id. (citing Ex. 1005, Abst., 1:14–
19; Ex. 1008 ¶ 133). Petitioner admits that “[a]lthough Russell discloses a
method ‘for use with adaptive cruise control’ (i.e., controlling a vehicle),
Russell does not explicitly disclose that its method is performed in a vehicle

11 As Petitioner is citing to the Fukada reference here, it appears Petitioner
meant to cite to Exhibit 1007 not to Exhibit 1006, which represents the
Mazda reference.
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capable of obtaining a vehicle lateral acceleration as recited.” Id. (citing
Ex. 1008 ¶ 134). Petitioner submits, however, that Fukada “discloses
‘control[ling] turn behavior of a vehicle’ in a system [when] a ‘turn behavior
control device detects lateral acceleration Gy of a vehicle body . . . ’
(Fukada (EX1007), Abstract), including use of a ‘lateral acceleration sensor
58.’” Id. at 43–44 (citing Ex. 1007, 16:51, Fig. 1). Thus, according to
Petitioner, “Fukada teaches a method of controlling a vehicle having a
system capable of obtaining a vehicle lateral acceleration.” Id. at 44 (citing
Ex. 1008 ¶ 134).
Petitioner reasons that a person of ordinary skill in the art “would
have been motivated to incorporate Fukada’s teachings for multiple
reasons.” Pet. 44 (citing Ex. 1008 ¶ 135). Specifically, Petitioner asserts
that “Fukada is analogous art to the ’416 Patent, because it discloses a
method of controlling a vehicle, much like the claims of the ’416 Patent,”
and a person of ordinary skill in the art “would have recognized that
incorporating Fukada’s teachings with the teachings of Russell would have
provided benefits, such as improved safety and mitigation of a wider set of
factors.” Id. (citing Ex. 1007, Abst.; Ex. 1001, 8:7–19; Ex. 1008 ¶¶ 136–
137). As examples of such benefits, Petitioner asserts that a person of
ordinary skill in the art “would have recognized that Fukada discloses a
vehicle control apparatus which ‘reduce[s] undesirable behavior such as drift
out or spin,’ that is, conditions of the vehicle itself,” and that “Russell
provides teachings of ‘automotive driver aids’ that assist in mitigating the
effects of ‘obstacles in the path of the host vehicle,’ that is, conditions
external to the vehicle.” Id. (citing Ex. 1007, 1:6–10; Ex. 1005, 1:14–19,
1:47–53). According to Petitioner, a person of ordinary skill in the art
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“would have recognized that Fukada beneficially provides teachings that
enhance vehicle safety based on conditions of the vehicle itself (e.g., a spin),
while Russell provides teachings that enhance vehicle safety when
considering external factors (e.g., other vehicles in traffic).” Id. at 44–45.
Petitioner reasons further that “[c]ombining the teachings of Fukada
with those of Russell would have been no more than the combination of
prior art elements according to known methods to yield predictable and
beneficial results.” Pet. 45. Specifically, Petitioner asserts that
“[c]ombining the teachings of Fukada with those of Russell would have
required no more than adding into the apparatus of Russell’s Figure 1 the
lateral acceleration sensor 58 and/or yaw rate sensor 60 of Fukada and other
components of the electric control means 50.” Id. (citing Ex. 1008 ¶ 139).
Thus, according to Petitioner, a person of ordinary skill in the art “would
have been motivated to combine the teachings of Russell and Fukada, and in
combination, the references teach a method of controlling a vehicle having
an adaptive cruise control system capable of obtaining a vehicle lateral
acceleration as recited.” Id. at 47–48 (citing Ex. 1008 ¶¶ 132–144).
In response, Patent Owner asserts that “Petitioner[’s] proffered
explanations for modifying Russell based on Fukada’s disclosure are
conclusory and lack any reasoned analysis or evidentiary support sufficient
to establish why a [person of ordinary skill in the art] would have modified
Russell based on Fukada.” PO Resp. 45 (citing Pet. 44–56). Patent Owner
sets forth five arguments in support of this assertion, which are essentially
the same as the arguments discussed in Section II.D.4 above except that
Patent Owner argues them with respect to Fukada instead of Harada. Id. at
45–53. Specifically, Patent Owner’s first argument is that Fukada is not
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analogous art. PO Resp. 46. Its second argument is that Petitioner’s
reasoning consists of conclusory statements that are inadequate to
demonstrate why a person of skill in the art would have made the proposed
modification. Id. at 46–47. Patent Owner’s third argument is that the
reasons to combine identified by Petitioner are too generic. Id. at 47–48. Its
fourth argument is that Petitioner’s reasoning is insufficient to establish
obviousness because it bears no relation to any specific combination of prior
art elements and its fifth argument simply refers back to its arguments
regarding Mazda for Ground 1 without further explanation. Id. at 49–53.
Patent Owner’s arguments are no more persuasive as applied to
Fukada than as applied to Harada. Specifically, we agree with Petitioner
that because it is a vehicle control apparatus and for reasons similar to those
discussed above in Section II.D.4.b.i. Fukada is analogous art. For reasons
similar to those discussed above in Sections II.D.4.b.iii and, II.D.4.b.iv, we
determine that Petitioner’s reasoning demonstrates why a person of ordinary
skill in the art at the time of the invention would have made the proposed
modification, that the articulated reasoning is not too generic, and that it
bears a relation to a specific combination of prior art elements as set forth in
the Petition. Pet. 43–48. In addition, for reasons discussed above in Section
II.D.4.e, we determine that Petitioner has demonstrated that a person of
ordinary skill in the art would have further modified the Russell-Fukada
combination in view of Mazda.12 Accordingly, we do not further discuss
these arguments.

12 We note that Petitioner does not discuss Mazda in its explanation of how
the references meet the preamble of claim 1. Patent Owner has addressed
Mazda in this context, however, so we do so as well.
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For the reasons explained by Petitioner above, which we expressly
adopt, Petitioner has demonstrated that the combined teachings of Russell
and Fukada teach the preamble of claim 1.13
b. determining when the vehicle is in a turn based on a
detected change in the vehicle lateral acceleration
(limitation 1.1)
Petitioner contends that “Fukada discloses, or at least renders
obvious, determining when the vehicle is in a turn based on a detected
change in the vehicle lateral acceleration.” Pet. 48. In support of this
contention, Petitioner asserts that
Fukada describes “a device . . . comprising: means for
detecting lateral acceleration Gy of a vehicle body, means for
detecting vehicle speed V, means for detecting yaw rate r of the
vehicle body, [and] means for presuming turn behavior of the
vehicle based upon at least lateral slide velocity Vy of the vehicle
by obtaining the lateral slide velocity Vy through integration of
deviation Gy-Vr with a predetermined integration time
constant.”
Id. (citing Ex. 1007, 2:1–8). Petitioner asserts further that “Fukada teaches
an example of specific algorithm for calculating lateral acceleration
deviation (which is integrated) that explicitly involves detected changes in
lateral acceleration.” Id. (citing Ex. 1007, 19:55–65; Ex. 1008 ¶ 145).
Petitioner reasons that a person of ordinary skill in the art “would
have understood that Fukada’s system presumes turn behavior, or

13 We need not determine whether the preamble of claim 1 is limiting as the
parties have not raised that issue before us. Nonetheless, Petitioner has
persuasively demonstrated that Russel and Fukada teach or suggest the
limitations set forth in the preamble of claim 1 and Patent Owner has waived
any argument for patentability directed to this portion of the claim. See
Paper 9, 7–8 (“Patent Owner is cautioned that any arguments for
patentability not raised in the response may be deemed waived.”).
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determin[es] when the vehicle is in a turn, based on the integration over time
of the difference between the lateral acceleration and the product of the
speed and yaw rate, which indicates the change over time of that data.” Pet.
48–49 (citing Ex. 1008 ¶ 146). Petitioner explains that “[t]he data would
have changed over time if one or more of the following occurred: (1) the
lateral acceleration Gy changed over time; (2) the vehicle speed changed
over time; and/or (3) the yaw rate changed over time.” Id. at 49 (citing Ex.
1008 ¶ 146). Petitioner explains further that “by incorporating Fukada’s
lateral acceleration sensor 58 into Russell’s path prediction system and using
Fukada’s measurements and calculations as Fukada describes, ‘turn
behavior of the vehicle can be controlled so as to decrease or suppress an
unstable behavior of the vehicle such as spinning.’” Id. (citing Ex. 1007,
7:5–33; Ex. 1008 ¶ 146). Thus, according to Petitioner, “Fukada describes
presuming the turn behavior of the vehicle which, in part, may be based on
the change over time in the vehicle’s lateral acceleration, which teaches
determining when the vehicle is in a turn based on a detected change in the
vehicle lateral acceleration as recited.” Id. (citing Ex. 1008 ¶¶ 145–147).
In response, Patent Owner asserts that Fukada does not disclose or
suggest “determining when the vehicle is in a turn based on a detected
change in the vehicle lateral acceleration.” PO Resp. 53. In support of this
assertion, Patent Owner argues that a person of skill in the art “would not
have equated Petitioner’s cited disclosure of Fukada’s ‘means for presuming
turn behavior of the vehicle based upon at least lateral slide velocity Vy of
the vehicle’ with ‘determining when the vehicle is in a turn.’” Id. at 54–55
(citing Ex. 2007 ¶¶ 145–148). Patent Owner asserts further that
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Fukada makes clear that its “means for presuming turn behavior
of the vehicle based upon at least lateral slide velocity Vy of the
vehicle” does not disclose determining when the vehicle is in a
turn, but instead detects “an unstable behavior of the vehicle such
as spinning,” which is the type of unstable behavior that is
sometimes, but not always, associated with being in a turn.
Id. at 55 (citing Ex. 2007 ¶ 149). According to Patent Owner, “because
spinning vehicles are not always in a turn, a [person of ordinary skill in the
art] would understand that Fukada’s method of detecting the type of
instability associated with only some turns does not disclose a method of
determining when the vehicle is in a turn.” Id. (citing Ex. 2007 ¶ 149; Ex.
1007, 7:25–33, 20:13–19). In support of these assertions, Patent Owner
provides the following Venn diagram:

Id. at 56. This Venn diagram shows an oval overlapping a circle. The circle
is larger than the oval and is labeled “A: Vehicles Turning.” The oval
(labeled “B: Vehicles experiencing drift out or spin”) is positioned near the
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top and on the right side of the circle with about three quarters of the oval
overlapping the circle. Comments indicate that the portion of circle A that
does not overlap with oval B represents “[s]low speed or otherwise stable
turns,” the overlapping portion represents “[v]ehicles in unstable turns,” and
the portion of oval B that does not overlap with circle A represents
“[v]ehicles experiencing an external disturbance such as wind, slipping on a
slick surface, spinning on ice, etc.” Id.
Next, Patent Owner argues that “[t]he ’416 Patent’s prosecution
history also contradicts Petitioner’s argument.” PO Resp. 56. Specifically,
Patent Owner asserts, “during prosecution of the parent ’475 Patent, the
Examiner made and then withdrew an argument similar to Petitioner’s with
respect to Kato—a reference with a disclosure similar to Fukada.” Id.
According to Patent Owner, “[l]ike Fukada, Kato discloses a method ‘to
prevent the turning state of the vehicle from being unstable due to the
occurrence of an excessive roll angle on the vehicle,’ ‘whereby the turning
state of the vehicle can be judged to be the understeer state.’” Id. at 56–57
(Ex. 2001 ¶¶ 4, 17).
In addition, Patent Owner asserts that “the portions of Fukada that
Petitioner cites as allegedly disclosing this claim element come from two
different embodiments—‘construction 1’ . . . and ‘construction 5.’” PO
Resp. 59 (citing Ex. 1007, 2:1–8, 19:55–65).
In reply, Petitioner contends that Patent Owner is attempting “to lead
the Board into discounting Fukada’s explicit text in favor of [Patent
Owner’s] baseless characterization” of Fukada. Pet. Reply 25. In support of
this contention, Petitioner submits that “Fukada describes judging the
‘absolute value of change rate of lateral acceleration Gy.’” Id. (citing Ex.
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1007, 19:55–65). Petitioner submits further that “Mr. Andrews explained
‘Fukada’s system presumes turn behavior . . . based on the integration over
time of the difference between the lateral acceleration and the product of the
speed and yaw rate, which indicates the change over time of that data.’” Id.
(citing Ex. 1008 ¶ 146). Petitioner also submits that Mr. Andrews
“explained this data ‘would have changed over time if one or more of the
following occurred: (1) the lateral acceleration Gy changed over time.’” Id.
Thus, according to Petitioner, “Mr. Andrews concluded that Fukada
describes determining the turn behavior of the vehicle which, in part, is
based on the change over time in lateral acceleration, thus teaching this
limitation.” Id. at 26.
Petitioner also contends that Patent Owner’s “response rehashes its
previously-unsuccessful attempt to cast Fukada as cumulative of a reference
cited during prosecution, Kato.” Pet. Reply 26 (citing PO Resp. 56–58).
Petitioner submits that “the references are distinguishable: Kato, unlike
Fukada, did not disclose a ‘means for presuming turn behavior,’ and
contains substantively dissimilar teachings than Fukada.” Id. According to
Petitioner, “Kato taught use of lateral acceleration deviation: a difference
between a target lateral acceleration and a measured lateral acceleration, and
Kato assigned the variable ΔGy to this deviation” but, “this variable and its
associated calculation is different than that of Fukada.” Id. (citing PO
Resp. 60–61; Ex. 1022, 81:7–20). Thus, Petitioner asserts that Patent
Owner’s “prosecution arguments over Kato are immaterial to whether
Fukada discloses the limitation.” Id.
Next, Petitioner contends that Patent Owner’s argument that
“Petitioner cited two embodiments of Fukada is wrong.” Pet. Reply 26
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(citing PO Resp. 59). According to Petitioner, “Fukada’s ‘first
embodiment’ is described in the flowchart shown in FIG. 2” and “[w]ithin
this embodiment are steps 300 and 400.” Id. at 26–27 (citing Ex. 1007,
17:8–11). Petitioner explains that “Step 300 is ‘a part of the above-
mentioned construction 1’ while step 400 ‘corresponds to a part of the
above-mentioned construction 5.’” Pet. Reply 27 (citing Ex. 1007, 19:34–
36; 20:13–15). Thus, according to Petitioner, “both construction 1 and
construction 5 are part of the same ‘first embodiment’ of Fukada’s
invention—not separate embodiments.” Id.
Petitioner also submits that Patent Owner’s argument that Fukada’s
detection of unstable behavior, precisely Patent Owner’s statement that this
is “the type of unstable behavior that is sometimes, but not always,
associated with being in a turn” is an admission that Fukada meets this
limitation. Pet. Reply 28 (citing Ex. 2007 ¶ 149; Ex. 1007, 7:25–33).
Petitioner asserts that “by acknowledging Fukada at least detects a behavior
that, in some circumstances, is associated with being in a turn, [Patent
Owner] admits Fukada teaches this limitation,” because “[a]s long as a prior
art reference teaches the claimed feature in some circumstances, it renders
the limitation obvious.” Id. (citing Unwired Planet, LLC v. Google, Inc.,
841 F.3d 995, 1002 (Fed. Cir. 2016) (“[c]ombinations of prior art that
sometimes meet the claim elements are sufficient to show obviousness”)).
In addition, Petitioner contends that “[o]ther disclosure of Fukada
supports Petitioner’s contention.” Id. at 29. In support of this contention,
Petitioner submits that “Fukada’s Abstract indicates its device ‘presum[es]
the turn behaving of the vehicle at higher precision’ and throughout, Fukada
describes its ‘means for presuming turn behavior’ based on, for example, the
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‘absolute value of change rate of lateral acceleration.’” Id. (citing Pet. 48).
Thus, according to Petitioner, “Fukada teaches this limitation.” Id.
Petitioner concludes its reply by disagreeing with Patent Owner’s
assertion that “a [person of ordinary skill in the art] would not have
understood that Fukada presumes turn behavior based on a detected change
in the vehicle lateral acceleration” and reiterating its position that “Fukada
teaches determining when the vehicle is in a turn for the same reasons as laid
out in the Petition.” Pet. Reply 29–30 (citing PO Resp. 59).
In reply Patent Owner essentially repeats its arguments set forth in its
Response. PO Sur-Reply 20–24. In particular, Patent Owner reiterates its
arguments in support of its assertion that Fukada does not disclose
“determining when the vehicle is in a turn,” as required by claim 1. Id.
For this limitation, we agree with Petitioner that Fukada discloses or
suggests “determining when the vehicle is in a turn based on a detected
change in the vehicle lateral acceleration,” as required by claim 1. Pet. 48.
As clearly illustrated by the overlapping portion of circle A and oval B in
Patent Owner’s Venn diagram reproduced above, Fukada discloses
limitation 1.1 of claim 1 because “[a]s long as a prior art reference teaches
the claimed feature in some circumstances, it renders the limitation
obvious.” Unwired Planet, 841 F.3d at 1002.
We also agree with Petitioner that the variable ΔGy and its associated
calculation in Kato is different than in Fukada, because Fukada discloses
means for presuming turn behavior. Pet. Reply 26. In addition, we agree
that Petitioner did not cite two separate embodiments of Fukada, because
Fukada’s steps 300 (construction 1) and 440 (construction 5) are both part of
its first embodiment.
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For the reasons explained by Petitioner above, which we expressly
adopt, Petitioner has demonstrated that Fukada discloses, or at least
suggests, limitation 1.1.
c. The Remaining Limitations of Claim 1
Petitioner contends that Russell discloses or suggests “determining a
vehicle path during the turn” (limitation 1.2), “detecting an object”
(limitation 1.3), and “determining whether the object is in the vehicle path
during the turn” (limitation 1.4). Pet. 49–51. Petitioner also contends that
Russell and Mazda disclose or suggest “reducing the vehicle speed if the
object is determined to be in the vehicle path during the turn” (limitation
1.5). Id. at 52–55. In addition, Petitioner contends that Mazda discloses or
suggests “ignoring the object for braking purposes if the object is determined
not to be in the vehicle path during the turn (limitation 1.6). Id. at 55–56.
Petitioner supports these contentions with citations to the relevant portions
of the references and expert testimony. Id. at 49–56.
Patent Owner does not contest Petitioner’s contentions regarding these
limitations of claim 1. See generally PO Resp.
For the reasons explained by Petitioner set forth on pages 49–56 of the
Petitioner, which we expressly adopt, we determine that Petitioner has
demonstrated that Russell, Fukada, and Mazda disclose or suggest these
limitations.14
d. Conclusion Regarding Claim 1
For the reasons discussed above and in view of the full record in this
proceeding, we determine that Petitioner has demonstrated by a

14 Patent Owner has waived any argument for patentability directed to these
limitations of claim 1. See Paper 9, 7–8.
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preponderance of evidence that claim 1 is unpatentable under 35 U.S.C.
§ 103(a) over Russell, Fukada, and Mazda.
F. Claims 2, 7, and 9
Petitioner provides claim charts and argument with citations to
relevant portions of Russell, Fukada, and Mazda that teach or suggest the
elements of claims 2, 7, and 9 with citations to supporting declarant
testimony. Pet. 56–63. As Patent Owner argues claims 2, 7, and 9 with
claim 1 and does not present further arguments for these claims, we do not
reproduce Petitioner’s challenge to these claims. See generally PO Resp.
For the reasons explained by Petitioner on pages 56–63 of the Petition,
which we expressly adopt, Petitioner has demonstrated that claims 2, 7, and
9 are unpatentable under 35 U.S.C. 103(a) over Russell, Fukada, and Mazda.
III. SUMMARY15
For the reasons discussed above, Petitioner has demonstrated, by a
preponderance of evidence that claims 10 and 11 are unpatentable under 35
U.S.C. §103(a) over Harada, Russell, and Mazda. Petitioner has further
demonstrated by a preponderance of evidence that claims 1, 2, 7, and 9 are
unpatentable under 35 U.S.C. § 103(a) over Russell, Fukada, and Mazda.

15 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
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The chart below summarizes our conclusions regarding the challenged
claims.

IV. ORDER
After due consideration of the record before us, and for the foregoing
reasons, it is:
ORDERED that claims 1, 2, 7, and 9–11 of the ’416 patent are held
unpatentable; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

Claim(s)
35
U.S.C.
§
References
Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
10, 11 103(a) Harada, Russell,
Mazda
10, 11
1, 2, 7, 9 103(a) Russell, Fukada,
Mazda
1, 2, 7, 9
Overall
Outcome
1, 2, 7, 9–11
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PETITIONER:
Raghav Bajaj
Clint Wilkins
David L. McCombs
HAYNES AND BOONE, LLP
raghav.bajaj.ipr@haynesboone.com
clint.wilkins.ipr@haynesboone.com
david.mccombs.ipr@haynesboone.com

Jonathan Stroud
Roshan Mansinghani
UNIFIED PATENTS INC.
jonathan@unifiedpatents.com
roshan@unifiedpatents.com

PATENT OWNER:
Sarah E. Spires
SKIERMONT DERBY LLP
sspires@skiermontderby.com

kis