Takeaway: That the two prior art disclosures would not have been combined by businessmen for economic reasons does not necessarily mean that those skilled in the art believed that some technological incompatibility prevented their combination.
In its Final Written Decision, the Board found that Petitioner had sufficiently demonstrated that claims 1-5, 10, 12-19, and 21 of the ‘524 patent are unpatentable. At the same time, the Board found that Petitioner had failed to establish sufficiently that claims 6 and 9 of the ‘524 patent are unpatentable.
Petitioner had sought inter partes review of claims 1-6, 9-19, and 21 of the ‘524 patent by way of a Petition that was not filed along with any accompanying expert declaration. The Board instituted trial with respect to all of these claims, except for claim 11, under the following grounds: anticipation of claims 1-2, 5-6, 9-10, 13, 15, 17-19, and 21 under 35 U.S.C. § 102 in view of Oselin; obviousness of claims 1-2, 5-6, 9-10, 13, 15, 17-19, and 21 under 35 U.S.C. § 103 in view of Oselin; obviousness of claims 4, 12, and 16 under 35 U.S.C. § 103 in view of Oselin and Schultz; obviousness of claims 3 and 10 under 35 U.S.C. § 103 in view of Oselin and Nowicki; and obviousness of claim 14 under 35 U.S.C. § 103 in view of Oselin and Barabino.
The ‘524 patent relates to technology for monitoring and reporting the air pressure of tires mounted on a vehicle. In this type of system, transmitting devices transmit signals corresponding to each of the wheels to a receiving device. In operation, the receiving device analyzes the signals provided by the transmitting devices associated with the tires, respectively, in order to determine “whether the identification-signal portion matches the identification signal stored in the receiving device” and, “[i]f the receiving device determines that the signals match, the data portion of the signals provided by transmitting devices . . . are evaluated.”
Because the ‘524 patent is expired, the Board construed the claims in accordance with Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc). That is, the words of the claims were given their ordinary and customary meaning. Using this standard, the Board construed the claim term “pressure measuring device” as including “a switch-based pressure sensor or a pressure sensor that outputs a numeric value of pressure;” interpreted the claim term “bit sequence” as requiring two or more bits; and construed the claim term “emittance” as meaning “something sent out, such as a signal, which may be sent by a wired or wireless transmission.”
Regarding the proposed grounds based on Oselin by itself, the Board determined that Oselin disclosed a switch-based pressure sensor and, hence, it taught the recited “pressure measuring device.” The Board also found that “the alarm message transmitted in Oselin is ‘a pressure transmitting signal corresponding to said air pressure’ because it corresponds to air pressure being too low or too high, as indicated by the signal from ‘pressure sensor P.’” These and other findings led the Board to conclude that Petitioner had sufficiently shown that claims 1-2, 5, 10, 13, 15, 17-19, and 21 are anticipated by Oselin. Moreover, “[b]ecause anticipation is the epitome of obviousness,” the Board also found that these claims would have been obvious in view of Oselin.
In contrast, the Board found that Petitioner had not persuasively shown that dependent claims 6 and 9 were anticipated or rendered obvious by Oselin. Among other things, the Board noted that Petitioner had not provided any expert testimony in support of its contentions; that it was not clear that the disclosure of Oselin taught or suggested a “constant frequency” as recited in claim 6; and that the “bit sequence” recited in claim 9 was not taught or suggested by the single-bit disclosure of Oselin. Moreover, the Board found that Patent Owner had not alleged any secondary considerations to overcome the assertions of obviousness.
As for the asserted obviousness grounds based on Oselin taken in combination with another reference, the Board did not accept Patent Owner’s argument that “a person of ordinary skill in the art would not have incorporated Schultz’s filter and amplifier U1 into the processor U3” because, for example, an “increase [of] the area of the processor by approximately 40%,” which “would undoubtedly entail additional expense to accommodate the larger processor.” As stated by the Board, that the two prior art disclosures would not have been combined by businessmen for economic reasons does not necessarily mean that the combination could not be carried out because those skilled in the art believed that some technological incompatibility prevented their combination. The Board did not find Patent Owner’s arguments regarding the combination of Oselin with other references convincing either. Thus, the Board agreed with Petitioner’s obviousness contentions with respect to claims 4, 12, and 16 based on Oselin and Schultz; with respect to claims 3 and 10 based on Oselin and Nowicki; and with respect to claim 14 based on Oselin and Barabino.
Schrader-Bridgeport International, Sensata Technologies Holding N.V., and SI International (Topco), Inc. v. Wasica Finance GmbH & BlueArc Finance AG, IPR2014-00476
Paper 30: Final Written Decision
Dated: July 22, 2015
Before: Rama G. Elluru, Scott A. Daniels, and Jeremy M. Plenzler
Written by: Plenzler
Related Proceedings: Wasica Finance GmbH v. Continental Automotive Systems US, Inc., Case No. 1-13-cv-01356 (D. Del.); Wasica Finance GmbH v. Schrader International, Inc., Case No. 1-13-cv-01353 (D. Del.); and IPR2014-00295 (a related IPR in which the Board had entered a final written decision finding that claims 1-3, 5, 10-19, and 21 of the subject ‘524 patent are unpatentable)