XRS Corporation

Patent Trials and Appeals Board

Aug 26, 2021

IPR2021-00323 (P.T.A.B. Aug. 26, 2021)

Trials@uspto.gov Paper 13
571-272-7822 Date: August 26, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

PLATFORM SCIENCE, INC.,
Petitioner,

v.

XRS CORPORATION,
Patent Owner.
____________

IPR2021-00323
Patent 8,626,568 B2
____________

Before KEN B. BARRETT, NEIL T. POWELL, and
FREDERICK C. LANEY, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION
Denying Petitioner’s Request for Rehearing of Denying Institution
37 C.F.R. § 42.71(d)

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I. INTRODUCTION
Petitioner Platform Science, Inc. filed a Request for Rehearing under
37 C.F.R. 42.71(d). Paper 12 (“Request” or “Req. Reh’g”). The Request for
Rehearing seeks reconsideration of our decision (Paper 9, “Decision” or
“Dec.”) denying institution of inter partes review of claims 1–24 of U.S.
Patent No. 8,626,568 B2 (“the ’568 patent,” Ex. 1001).
The Petition asserts that the challenged independent claims would
have been obvious over Nehowig and the Department of Transportation
(DOT) Regulations. Pet. 5. In our Decision, we determined that Petitioner
failed to explain adequately and persuasively why a person of ordinary skill
in the art would have had a reason to configure the system in the manner
proposed by Petitioner. See Dec. 14. We concluded that Petitioner had not
demonstrated that there is a reasonable likelihood of establishing the
unpatentability of at least one of the challenged claims of the ’568 patent.
Id. at 15.
As we explain below, we have considered the arguments presented by
Petitioner in its Request for Rehearing, but we discern no reason to modify
our Decision. As a result, we deny Petitioner’s Request for Rehearing.
II. STANDARD OF REVIEW
A party requesting rehearing bears the burden of showing that the
decision should be modified. 37 C.F.R. § 42.71(d). “The request must
specifically identify all matters the party believes the Board misapprehended
or overlooked, and the place where each matter was previously addressed in
a motion, an opposition, or a reply.” Id. When rehearing a decision on a
petition, we review the decision for an abuse of discretion. 37 C.F.R.
§ 42.71(c).
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III. ANALYSIS
The bulk of Petitioner’s Request for Rehearing is devoted to arguing
that the Petition detailed how the proposed combination meets what
Petitioner identifies as the “wireless transfer limitations.” See Req. Reh’g 3–
11. It is not until page 11 of the 15 page brief that Petitioner begins
discussing that which the Board purportedly overlooked or misapprehended.
See id. at 11–15. A rehearing request is not an opportunity for the
requesting party to reargue its case or merely to express disagreement with
the underlying decision. Nor is it an opportunity for the requesting party to
present new arguments that were not in its original submissions.
Nonetheless, we address Petitioner’s arguments serially in the order
presented in the Request.
A. The assertion that the Petition detailed how the combined system meets
the wireless transfer limitations
Claim 1, for example, recites a system having an “electronic onboard
recorder unit configured to mount inside a vehicle” and a “portable wireless
display unit,” which has a short-range wireless communication device for
communicating with the onboard recorder. Ex. 1001, 21:59–22:5. The
portable wireless display unit has a memory to store a driver summary
electronic report that is generated by the portable wireless display unit in
response to wirelessly receiving the vehicle usage information from the
electronic onboard recorder unit. Id. at 22:11–17.
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The last provision of claim 1, which Petitioner now identifies as “the
Wireless Transfer Limitation[]” (Req. Reh’g 31), is of particular pertinence
to the Decision and this Request, and recites,
wherein in response to user input on the user interface of the
portable wireless display unit indicative of a request to export
the driver summary electronic report from the electronic
onboard recorder unit mounted to the vehicle, the portable
wireless display unit is configured to wirelessly transfer the
driver summary electronic report to the electronic onboard
recorder unit mounted to the vehicle for exporting the driver
summary electronic report via the data connection port of the
electronic onboard recorder unit to the remote computer device.
Ex. 1001, 22:20–29. In the Petition, Petitioner argued that, “[a]lthough
lengthy, this limitation distills to the basic, well-understood concept of
saving a file to a remote computer over a local network upon a user request.”
Pet. 36. The Petition purports to address various aspects of the “lengthy”
claim limitation. See id. at 36–40. Petitioner contends that “Nehowig
implementing the DOT Regulations teaches or suggests this limitation.” Id.
at 36 (citing Ex. 1003 ¶¶ 124–125).
As we stated in the Decision, “Petitioner’s distillation of the ‘wherein’
clause is, at least, an oversimplification.” Dec. 11. The data flow described
in the claim language involves much more than merely saving a file to a
remote computer upon request. The language describing the claimed system
indicates that the vehicle-mounted electronic onboard recorder unit collects
vehicle usage information, which is wirelessly transferred to the portable
wireless display unit, which generates a driver summary electronic report.
See Ex. 1001, 22:12–16. The portable wireless display unit has a memory to

1 In contrast, the Petition identified this as the “‘export’ limitation.” Pet. 36.
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store that report. Id. at 22:10–12. Then, we come upon the “wherein”
clause. The portable wireless display receives a user input “indicative of a
request to export the driver summary electronic report from the electronic
onboard recorder unit mounted to the vehicle.” Id. at 22:20–23. The report
is sent wirelessly from the portable unit to the onboard recorder unit for
exporting to a remote computer device (e.g., a safety inspector’s laptop) via
a wired connection from the data connection port of the electronic onboard
recorder unit. See id. at 22:24–29. Thus, even though the portable unit
seemingly is more capable than the onboard recorder and has wireless
communication capability, the report is routed through the onboard unit,
which transfers the report via a wired connection to the remote computer.
Petitioner’s articulated theory of the case, as set forth in the Petition,
includes the assertion that a person of ordinary skill in the art “would have
been motivated to integrate the requirements of the DOT [(Department of
Transportation)] Regulations into a commercial fleet management system.”
Pet. 18. To address the claim language that leads to the somewhat
convoluted flow of the report from the portable unit to the onboard unit to
the remote computer, the Petition contains the unqualified assertion that
“[t]he DOT Regulations require that the driver summary report be exported
from the ‘electronic onboard recorder unit mounted to the vehicle’ via the
‘data connection port.’” Pet. 38 (italicizing in original omitted, emphasis
added). In support of this assertion, Petitioner quotes the DOT Regulations
as stating that the hours-of-service information must be made available to
the safety official for review without requiring the official to enter the
vehicle. Id. The Petition then states that, “[t]o achieve this goal, the official
‘will provide a cable to the driver to plug into the [electronic onboard
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recorder).’” Id. Accordingly, it could be understood that Petitioner implied
that a wired transfer from the onboard unit is the only way for the official to
obtain the information.
The Petition, although making the passing mention of “wireless
methods,” continues to focus on and emphasize the wired method of
transferring the report from the vehicle to the safety official.
The DOT Regulations further state that the “[e]lectronic
records must be capable of one-way transfer through wired
and wireless methods to portable computers used by roadside
safety assurance officials and must provide files in the format
specified” in the DOT Regulations. (PS-1007, 17247, 49 C.F.R.
395.16(i)(5).) As described above in limitation [1B.4], in
Nehowig implementing the DOT Regulations, the electronic
summary record is stored on the in-cab device. Therefore, the
one-way transfer of the log flows from the in-cab device to the
OBC and then to the portable computer via the USB port. (PS-
1003, ¶131.) As discussed above for limitation [1A]-[1B], the
in-cab device provides information “from its transmitter (TX)
to the receiver (RX) of the onboard computer.” (PS-1005, ¶76;
PS-1006, 22:20-22.) In an embodiment of Nehowig, the
transmitter and receiver are Bluetooth (short-range wireless)
devices, respectively. Therefore, the in-cab computing device
“wirelessly transfer[s] the driver summary electronic report to
the electronic onboard recorder unit mounted to the vehicle.”
(PS-1003, ¶131.) In the system of Nehowig implementing the
DOT Regulations, the transfer from the in-cab device to the
OBC is to effectuate “exporting the driver summary electronic
report via the data connection port of the electronic onboard
recorder unit to the remote computer device” as required by the
DOT Regulations.
Id. at 39–40 (bolding in original, italicizing omitted). As we stated in the
Decision, “Petitioner, thus, implies that the DOT Regulations require the
claim’s recited flow of the report from the wireless-capable portable
terminal, where it is generated and saved, to the onboard unit so that the
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report may be transmitted via wired connection to the safety officer.”
Dec. 13.
We did not find Petitioner’s arguments persuasive, stating, inter alia,
that
As for the part of the DOT Regulations indicating that
the report must be transferred without requiring the safety
officer to enter the vehicle, Petitioner did not include the latter
part of the relied-on portion of the DOT Regulations. See
Pet. 38. The wired operation is not the only option discussed in
the DOT Regulations. The full sentence provides: “The
enforcement official will provide a cable to the driver to plug
into the EOBR, or request the driver initiate a wireless
transfer of the RODS data to the officer’s portable computer.”
Ex. 1007, 17228 (Section 6.8.4)) (emphasis added).
Dec. 13. We determined that “Petitioner does not explain adequately and
persuasively why, in such circumstances—where the portable unit could
directly transmit the report to the inspector—a person of ordinary skill in the
art would see a reason to configure the system in a seemingly awkward way
where the report is sent to the onboard system and then sent to the
inspector.” Id. at 14.
The critical proposition in the Petition and that which forms the
foundation of Petitioner’s reasoning to combine the references’ teachings to
result in the claimed subject matter is: “The DOT Regulations require that
the driver summary report be exported from the ‘electronic onboard recorder
unit mounted to the vehicle’ via the ‘data connection port.’” Pet. 38
(original italicizing omitted, emphasis added). This is an unqualified
statement and does not hint of options other than exporting via a wired
transfer from the onboard unit. Similarly, Petitioner’s quoting of the
Regulations for the proposition that the safety official, to avoid having to
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enter the vehicle, will provide a cable to the driver couple with Petitioner’s
omission of the part of the quote indicating that the official also may request
a wireless transfer furthers the understanding that Petitioner implied that
transfer via wired connection is the exclusive way the Regulations will
allow. Again, the theory of the case set forth in the Petition is premised
implicitly on that proposition that the Regulations dictate the flow of the
report between the various units.
In the Request for Rehearing, Petitioner characterizes that critical
“Regulations require” proposition as merely a “topic sentence,” and then
pivots to a discussion as to how the Petition purportedly established that the
proposed combination would have necessary components (for example, a
wired interface at the onboard unit) in order to be capable of implementing
that particular data flow. Req. Reh’g 5–11; see also id. at 7–8 (“Cited
Section 395.16(i)(5) also leaves no room for doubt that an EOBR
implementing the DOT Regulations must have the capability for a wired
connection to the computer of a roadside safety assurance official[.]”). In
the Request, Petitioner asserts that, in accordance with the Regulations, an
electronic on-board recorder must be capable of both wired and wireless
transfer. Id. at 8. Building on this idea that the Regulations require the
capability for two options, Petitioner argues that the proposed combination
must transfer the report via wired connection “when requested to do so by
the roadside safety assurance official,” and that, “[w]hen a wired connection
is desired by the officer, the DOT Regulations specify that the official ‘will
provide a cable to the driver to plug into the EOBR.’” Id. at 9 (internal
quotations omitted, emphasis added); see also id. at 10 (“That is, upon
request of the safety officer for a transfer to her computer via a wired
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connection, the driver report (which is on the in-cab computer device) is
transferred to the [on-board computer] via the wireless (Bluetooth)
connection. The OBC then exports the driver report to the remote computer
via the data connection port via the cable provided by the roadside safety
officer.” (emphasis added)); id. at 15 (“When Petitioner’s argument and
evidence are properly considered, the Petition explained that a POSITA
would configure Nehowig’s system to implement the DOT Regulations and
this configuration results in the driver report being wirelessly transferred
from the in-cab device to the OBC for export via the data connection port
when a wired connection is requested.” (emphasis added)). The Petition,
however, did not articulate clearly and persuasively a theory of the case
where there were options and the specific data flow of the claim is
conditioned upon the safety official selecting, desiring, or requesting the
wired option. We are not persuaded that we misapprehended or overlooked
the obviousness theory now presented in the Request.
The implication in the Petition—that the Regulations require the data
flow described in the claim—is not consistent with the evidence, which
indicates that the wired connection is not the exclusive method of transfer
required by the Regulations. Thus, the proffered reasoning set forth in the
Petition lacks rational underpinning. See KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006)).
B. The assertion that the Board made an erroneous finding by overlooking
argument and evidence in the Petition
In the Request, Petitioner argues as follows:
In the Institution Decision, the Board made a factual
finding that wired operation is optional in an EOBR
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implementing the DOT Regulations. . . . The Board’s factual
finding was in error because it overlooked arguments and
evidence presented in the Petition that the DOT Regulations
mandate that an EOBR include a data connection port (USB
Interface) and support wired transfer of reports to a remote
computer in addition to wireless transfer. . . . The Petition’s
argument and evidence . . . established the wired connection is
not optional in the system of Nehowig implementing the DOT
Regulations—the OBC has a data connection port (USB
Interface) and has the capability to transfer the driver report via
the wired connection to a remote computer of the requesting
roadside officer.
Req. Reh’g 11–13. Petitioner’s argument transitions from an allegation of
error regarding the optional nature of the “wired operation”—i.e. the manner
in which data flows—to an assertion that it has proven that a “wired
connection”—i.e., the physical component through which data flows—is not
optional. As to the former, Petitioner now concedes that the safety inspector
can select to receive the data either via wired or wireless operation. See
Req. Reh’g 9. As such, we are not persuaded that we erred in stating that
“[t]he wired operation is not the only option discussed in the DOT
Regulations,” which appears to be the allegedly erroneous fact finding. See
id. at 11. As to the latter, Petitioner does not indicate where the Decision
includes a finding that the on-board unit need not have a data connection
port (USB interface).
C. The assertion that the Board misapprehended Petitioner’s combination
Petitioner argues that “[t]he Board . . . misapprehended Petitioner’s
argument that, in the combined system of Nehowig implementing the DOT
Regulations, Nehowig’s [on-board computer] has a USB interface for wired
transfer of data to a remote computer as required by the DOT Regulations.”
Req. Reh’g 14. The Decision acknowledges that “Petitioner notes that the
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electronic summary report is, in Petitioner’s proposed combination, stored
on the in-cab device (the portable unit) and [Petitioner] reasons that,
‘[t]herefore, the one-way transfer of the log flows from the in-cab device to
the OBC and then to the portable computer via the USB port.’” Dec. 13
(quoting Pet. 39). We did not misapprehend Petitioner’s argument as to the
proposed combination. It, however, is not enough for Petitioner to show that
Nehowig has a USB port. It was Petitioner’s burden to explain adequately,
in the Petition, why, under its theory of the case, the data flow of the report
would be from the portable unit to on-board recorder to the safety officer’s
computer.
Petitioner further argues as follows:
The Petition also established that upon request from a
safety officer, a driver report is wirelessly transferred from the
in-cab device to the OBC and is then exported (transferred)
from the OBC to the remote computer of the safety officer via
the wired connection. (See Section III.A.3; Pet., 39-40.) The
Board overlooked and misapprehended this argument and its
supporting evidence.
Req. Reh’g 14. We understand Petitioner to argue that we overlooked or
misapprehended that the Petition identified a particular proposed
combination. We acknowledged Petitioner’s proposed combination. See
Dec. 12–13 (“Petitioner then describes a scenario, argued ‘[t]o achieve this
goal [of not having the official enter the vehicle],’ where the official ‘will
provide a cable to the driver to plug into the EOBR’ . . . . Petitioner notes
that the electronic summary report is, in Petitioner’s proposed combination,
stored on the in-cab device (the portable unit) and reasons that, ‘[t]herefore,
the one-way transfer of the log flows from the in-cab device to the OBC and
then to the portable computer via the USB port.’”). And, even had we
overlooked or misapprehended it, the outcome would not change. Again,
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the basis for the Decision is that Petitioner failed to explain adequately and
persuasively why a person of ordinary skill in the art would arrange the data
flow in this manner. Dec. 14.
IV. CONCLUSION
For the foregoing reasons, Petitioner has not demonstrated that we
abused our discretion in not instituting an inter partes review of the
challenged claims of the ’568 patent.
V. ORDER
Accordingly, it is
ORDERED that Petition’s Request for Rehearing is denied.

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For PETITIONER:

Lori Gordon
PERKINS COIE LLP
gordon-ptab@perkinscoie.com

Brent Ray
KING & SPALDING LLP
bray@kslaw.com

For PATENT OWNER:

Gianni Cutri
Adam Alper
Michael DeVries
Akshay Deoras
KIRKLAND & ELLIS LLP
gianni.cutri@kirkland.com
adam.alper@kirkland.com
michael.devries@kirkland.com
akshay.deoras@kirkland.com