Trials@uspto.

gov Paper 7
Tel: 571-272-7822 Entered: October 2, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE

____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

UNIFIED PATENTS INC.,

Petitioner,

v.

AUTOLOXER LLC,
Patent Owner.
____________

Case IPR2017-01271
Patent 7,084,735 B2
____________

Before JUSTIN T. ARBES, BRIAN J. McNAMARA, and

SCOTT B. HOWARD, Administrative Patent Judges.

HOWARD, Administrative Patent Judge.

DECISION
Institution of Inter Partes Review
37 C.F.R. 42.108
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Patent 7,084,735 B2

I. INTRODUCTION
Unified Patents Inc. (Petitioner) filed a Petition to institute an inter
partes review of claims 13, 5, 6, and 28 of U.S. Patent No. 7,084,735 B2
(Ex. 1001, the 735 patent) pursuant to 35 U.S.C. 311319. Paper 3
(Pet.). Autoloxer LLC (Patent Owner) did not file a Patent Owner
Preliminary Response.
We have authority to determine whether to institute an inter partes
review under 35 U.S.C. 314 and 37 C.F.R. 42.4(a). Inter partes review
may be not instituted unless the information presented in the petition filed
under section 311 and any response filed under section 313 shows that there
is a reasonable likelihood that the petitioner would prevail with respect to at
least 1 of the claims challenged in the petition. 35 U.S.C. 314(a). Based
on the record before us and for the reasons that follow, we institute an inter
partes review as to claims 13, 5, 6, and 28 of the 735 patent on certain
grounds of unpatentability.
A. Related Proceedings
The parties identify no pending administrative or judicial proceedings
involving the 735 patent. Pet. 12; Paper 6, 2. Petitioner identifies twelve
district court proceedings, all of which have been dismissed, in which the
735 patent had been asserted. Pet. 12.
B. The 735 Patent
The 735 patent relates generally to the field of selectively limiting
one or more operational performance characteristics of a vehicle. Ex. 1001,
1:57. More specifically, the 735 patent describes a system in which a
remotely issued vehicle limitation control signal is received wirelessly by a
device on a vehicle. Id. at 1:2936. The received control signal is used to

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limit a performance characteristic of a vehicle, such as speed. Id. at 1:36

40. According to the 735 patent, this will avert or minimize the effects of a
security breach, such as a carjacking. Id. at 1:1320.
C. The Challenged Claims
Petitioner challenges claims 13, 5, 6, and 28. Claims 1 and 28 are
independent claims. Claim 1 is illustrative of the challenged claims and is
reproduced below:
1. A system for limiting performance of a vehicle,
comprising:
a first controller located aboard said vehicle and configured to
control, in accordance with a stimulus originating from a
location local to the vehicle, to a first operational
performance characteristic;
a command device located remotely from the vehicle and
configured to send a control signal via a wireless
communication network;
a receiving device located aboard said vehicle and configured to
receive said control signal; and
a second controller located aboard the vehicle and configured to
limit, in response to said control signal, said control of said
vehicle to a second operational performance characteristic
when said stimulus indicates to said first controller to
control said vehicle to the first operational performance
characteristic;
wherein said second controller is further configured to (i)
transmit to said first controller, responsive to said control
signal, a vehicle limitation command message to place
said vehicle in a vehicle limitation mode, and (ii) cause a
vehicle limitation flag to be stored in non-volatile
memory, and wherein said vehicle limitation flag is
indicative of maintaining said vehicle in said vehicle
limitation mode.
Id. at 9:5710:14.

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D. Asserted Grounds of Unpatentability

Petitioner asserts the following grounds of unpatentability:
Reference(s) Basis1 Challenged Claims
Silvernagle2 and Chakraborty3 103(a) 13, 5, and 28
Silvernagle, Chakraborty, and 103(a) 6
AAPA4

Pet. 19, 42.

II. ANALYSIS
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are
interpreted according to their broadest reasonable construction in light of the
specification of the patent in which they appear. 37 C.F.R. 42.100(b);
Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 214246 (2016).
Consistent with that standard, claim terms are generally given their ordinary
and customary meaning, as would be understood by one of ordinary skill in

1
The Leahy-Smith America Invents Act (AIA) included revisions to 35
U.S.C. 100 et seq. effective on March 16, 2013. Because the 735 patent
issued from an application filed before March 16, 2013, we apply the pre-
AIA version of the statutory basis for unpatentability.
2
U.S. Patent No. 6,253,143 B1 (issued June 26, 2001) (Ex. 1002,
Silvernagle).
3
U.S. Patent No. 5,839,534 (issued Nov. 24, 1998) (Ex. 1003,
Chakraborty).
4
Petitioner identifies the following statements in the Specification of the
735 patent as Applicants Admitted Prior Art (AAPA): the J1922
standard recites that a speed limit command code be transmitted at least
every 250 ms to maintain a maximum vehicle speed in place. Pet. 43
(quoting Ex. 1001, 4:1013).

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the art in the context of the entire disclosure. See In re Translogic Tech.,
Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
Petitioner proposes constructions of two terms: command message
and flag. Pet. 1214. Having considered the evidence presented, we
conclude that no express claim construction is necessary for our
determination of whether to institute review of the challenged claims. See
Vivid Techs., Inc. v. Am. Sci. & Engg, Inc., 200 F.3d 795, 803 (Fed. Cir.
1999) ([O]nly those terms need be construed that are in controversy, and
only to the extent necessary to resolve the controversy.).5
B. Legal Principles
An invention is not patentable as obvious if the differences between
the subject matter sought to be patented 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. 35 U.S.C. 103(a). 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 skill in the art; and, (4) where
in evidence, objective evidence of nonobviousness such as commercial
success, long-felt but unsolved needs, and failure of others. Graham v. John

5
Although we conclude that no express constructions are necessary at this
time, the parties are encouraged to address during trial the term located
remotely in claim 1, and specifically (1) whether that term imposes any
spatial limitation regarding the location of the command device when it is
used to send a control signal via a wireless communication network or (2)
whether the claim term is broad enough to encompass any wireless
communication regardless of the location of the device.

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Deere Co., 383 U.S. 1, 1718 (1966). When evaluating a combination of

teachings, we also must determine whether there was an apparent reason to
combine the known elements in the fashion claimed by the patent at issue.
KSR Intl Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn,
441, F.3d 977, 988 (Fed. Cir. 2006)). We analyze the grounds based on
obviousness in accordance with the above-stated principles.
C. Level of Ordinary Skill in the Art
In determining the level of ordinary skill in the art, various factors
may be considered, including the type of problems encountered in the art;
prior art solutions to those problems; rapidity with which innovations are
made; sophistication of the technology; and educational level of active
workers in the field. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
(citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955,
962 (Fed. Cir. 1986)). In a given case, one or more factors may
predominate. Id.
Petitioner asserts that a person having ordinary skill in the art at the
time of the invention would have had at least a Bachelors Degree in
electrical engineering, computer science, or a related subject or the
equivalent and one year of experience working with vehicle network
systems, or at least three years of experience working with vehicle network
systems. Pet. 8 (citing Ex. 1004 29).
Because Petitioners definition is supported by the testimony of its
declarant, Robert Leale, for purposes of this Decision and based on the

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current record, we agree with and apply Petitioners definition of the level of
ordinary skill in the art.6
D. Obviousness based on Silvernagle and Chakrabarty
Petitioner asserts that claims 13, 5, and 28 would have been obvious
to a person of ordinary skill in the art at the time of the invention in light of
the teachings of Silvernagle and Chakraborty. Petitioner relies on
Silvernagle (Ex. 1002), Chakraborty (Ex. 1003), and the Declaration of
Robert Leale (Ex. 1004). Based on the current record, we are persuaded that
Petitioner has established a reasonable likelihood of prevailing on its
asserted ground for the reasons explained below.
1. Summary of Silvernagle
Silvernagle7 is directed an engine limiter which regulates the engine
speed and ground speed of a powered vehicle, particularly an off-road
vehicle. Ex. 1002, 1:711. More particularly, Silvernagle relates to a
programmable electronic module which may be easily added to vehicles
having electronic ignition systems to prevent dangerous or reckless
operation of the vehicle. Id. at 1:1115. Preferably, the vehicle control
unit limits both ground speed and engine speed by suppressing or
removing pulses from the original tachometer signal to prevent the
combustion of fuel and thereby reduce engine power when the ground or
engine speeds exceed predetermined limits. Id. at 1:5257.

6
If Patent Owner proposes a different level of ordinary skill in the art in the
Patent Owners Response, the parties are encouraged to address whether
there are any material differences between the two proposals and what
impact, if any, the different level has on the obviousness analysis.
7
Silvernagle was not considered during prosecution of the 735 patent.

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A programmer unit may be used for programming various operation

parameters of [the] vehicle control unit. Id. at 4:1114. In one
embodiment, shown in Figure 5 below, programmer unit 126 includes
[m]icrocontroller 170 [which] communicates the commands and parameter
settings to the vehicle control unit 122 via 50 infrared port logic 176. The
infrared port logic 176 communicates with infrared port logic 156 of vehicle
control unit 122. Id. at 5:4953.

Figure 5 shows a block diagram of one embodiment of a handheld

programmer unit which may be employed with the vehicle control unit. Id.
at 2:4244. The programmer unit can also be used to transport information
to a central location for analysis and long term storage. Id. at 5:6667.
2. Summary of Chakraborty
Chakraborty discloses a system for implementing an intelligent cruise
control on a vehicle using standard engine control modes. Ex. 1003,
Abstract. The system includes an electronic control module (ECM) which
controls an engine. Id. at 4:5759. The ECM contains logic rules
implemented in a programmed microprocessor to effect control of various
vehicle systems and subsystems. Id. at 8:1720. The ECM communicates
with a variety of sensors, such as an electronic accelerator pedal sensor, and

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controls the engine based on signals from these sensors. Id. at 7:611,
11:3140.
Chakraborty further discloses the Society of Automotive Engineers
(SAE) J1922 standard for providing electronic engine control for vehicles.
Id. at 2:442. The SAE J1922 standard define[d] various control modes for
electronically controlled engines including a normal mode, a speed control
mode, a torque control mode, and a speed and torque control mode. Id. at
2:1518. Additionally, override modes [could] be used to override the
current operating mode and command the engine to [operate at] a particular
engine speed or engine output torque. Id. at 2:3032. The control mode is
based on current operating conditions and commands received by the engine
controller[,] which may be generated by various other vehicle systems and
subsystems or by the vehicle operator. Id. at 2:32 42.
3. Claims 1 and 288
Petitioner argues that the combination of Silvernagle and Chakraborty
teaches all of the limitations recited in claim 1 and that a person of ordinary
skill in the art would have been motivated to combine the teachings of the
two references. Pet. 2435.
Petitioner argues Silvernagle teaches [a] system for limiting
performance of a vehicle, as recited in claim 1. See id. at 2426.
Specifically, Petitioner argues Silvernagle teaches modifying a prior art
configuration of an engine to limit a vehicles engine speed or ground speed.

8
Petitioner primarily relies on the evidence and arguments presented for
claim 1 to show that the prior art discloses the various limitations of claim
28, which are similar to those of claim 1. Compare Pet. 2435, with id. at
3842. Because our analysis of the two claims is substantially the same, we
focus on claim 1.

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Id. (citing Ex. 1002, 1:3740, 1:4246, 1:5257, 3:2833, 3:3546, 4:1113,
4:655:7, 6:17, 6:5257, Fig. 3; Ex. 1004 5659).
Petitioner further argues Silvernagle teaches a first controller located
aboard said vehicle and configured to control, in accordance with a stimulus
originating from a location local to the vehicle, to a first operational
performance characteristic, as recited in claim 1. See id. at 2627.
Specifically, Petitioner argues Silvernagle teaches a vehicle control system
that passes a tachometer signal received from a tachometer sensor to an
electronic ignition system. Id. at 26 (citing Ex. 1002, 3:4046, 4:625:2,
Fig. 1, 3; Ex. 1004 60, 61). Petitioner further argues the electronic
ignition system controls the conversion of fuel by the engine based on the
tachometer sensor to maintain a desired engine speed or ground speed. Id.
at 2627 (citing Ex. 1002, 3:3540; Ex. 1004 60, 62).
Petitioner also argues Silvernagle teaches a command device located
remotely from the vehicle and configured to send a control signal via a
wireless communication network, as recited in claim 1. See id. at 27. More
specifically, Petitioner argues Silvernagle teaches a handheld programming
unit for programming operation parameters and that the unit is not wired to
the vehicle control unit and can be used to transport information received
from the vehicle to a central computer system for archiving and more
extensive analysis. Id. (citing Ex. 1002, 2:1824, 4:1113, 5:336:7, Fig.
5; Ex. 1004 63, 64).
Petitioner also argues Silvernagle teaches a receiving device located
aboard said vehicle and configured to receive said control signal, as recited
in claim 1. See id. at 28. More specifically, Petitioner argues [t]he
microcontroller of the vehicle control unit is coupled to infrared port logic,

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which receives commands and parameter settings (e.g., engine speed limit,
ground speed limit, acceleration limit) from the handheld programmer unit.
Id. (citing Ex. 1002, 5:2333, Fig. 4, 5).
Petitioner also argues Silvernagle teaches a second controller located
aboard the vehicle and configured to limit, in response to said control signal,
said control of said vehicle to a second operational performance
characteristic when said stimulus indicates to said first controller to control
said vehicle to the first operational performance characteristic, as recited in
claim 1. See id. at 2829. More specifically, Petitioner argues Silvernagle
teaches a vehicle control unit which monitors signals received from the
tachometer sensor and the speedometer sensor and determines whether the
engine speed or ground speed has exceeded a limit set by one of the
operational parameters. Id. at 28 (citing Ex. 1002, 1:5262, 3:664:4).
According to Petitioner, when the speed of the vehicle exceeds a pre-set
limit, the vehicle control unit limits the firing of the ignition system to an
amount associated with a second speed. Id. 2829 (citing Ex. 1002, 5:215;
Ex. 1004 6770).
Petitioner also argues Silvernagle teaches wherein said second
controller is further configured to (i) transmit to said first controller,
responsive to said control signal, a vehicle limitation command message to
place said vehicle in a vehicle limitation mode, as recited in claim 1. See
id. at 2930. More particularly, Petitioner argues that when an engine speed
or ground speed exceeds a pre-set limit, the vehicle control unit produces a
modified tachometer signal that is sent to the electronic ignition system to
reduce engine power. Id. (citing Ex. 1002, 1:522:6; Ex. 1004; 71, 72.

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Petitioner also argues Silvernagle teaches [wherein said second

controller is further configured to] cause a vehicle limitation flag to be
stored in non-volatile memory, and wherein said vehicle limitation flag is
indicative of maintaining said vehicle in said vehicle limitation mode, as
recited in claim 1. See id. at 3032. More particularly, Petitioner argues
that programmable parameters, such as a limit on speed or acceleration, may
be stored in nonvolatile memory within the vehicle control unit. Id. at 3031
(citing Ex. 1002, 5:2333, 5:4653, 5:6266, 6:17; Ex. 1004 73, 74).
Petitioner also argues Silvenagle teaches a software loop shown in Figure 6
which uses a KILLCOUNT to determine which path to follow. Id. at 3132
(citing Ex. 1002, 6:587:35, Fig. 6; Ex. 1004 7578). Petitioner further
avers that because the software loop, which checks the engine and ground
speed limits, repeats over time, [t]he programmed engine speed and ground
speed limits are therefore indicative of maintaining said vehicle in said
vehicle limitation mode. Id. at 32 (citing Ex. 1004 75, 79).
Although Petitioner argues Silvernagle discloses all of the limitations
of claim 1, see id. at 2431, Petitioner asserts in the alternative9 that
Chakraborty teaches the first controller and that the second controller is
configured to (i) transmit to said first controller . . . a vehicle limitation

9
Petitioner states it is relying on the teachings of Chakraborty [t]o the
extent a narrow interpretation of either of the terms first controller or
second controller is configured to (i) transmit to said first controller . . . a
vehicle limitation command message to place said vehicle in a vehicle
limitation mode is taken, and to the extent one might argue that the
electronic ignition system of Silvernagle is not a controller, or that the
modified tachometer signal of Silvernagle is not a vehicle limitation
command message to place the vehicle in a vehicle limitation mode. Pet.
32.

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command message to place said vehicle in a vehicle limitation mode, as

recited in claim 1, see id. at 3235. Specifically, Petitioner argues
Chakraborty teaches an intelligent cruise control system which includes an
electronic control module for controlling an engine based on signals
received from various sensors. Id. at 3233 (citing Ex. 1003, Abstract,
4:5759, 7:611, 8:17-20, 11:3140; Ex. 1004 81). Chakraborty further
teaches using the SAE J1922 standard for controlling engines, including the
use of an override mode which could be used to override the current
operating mode and command the engine to operate at a particular engine
speed or engine output torque. Id. at 3334 (citing Ex. 1003, 1:5659, 2:4
10, 2:1521, 2:2342; Ex. 1004 8283).
Petitioner further argues that both Silvernagle and Chakraborty are
directed to systems designed to control speed of a vehicle and, in light of
the similarities in structure, objectives, and operation between Silvernagle
and Chakraborty, a person of ordinary skill in the art at the time of the
invention would have been motivated to implement Chakrabortys technique
of using an ECM and a standardized vehicle network protocol for
communication in Silvernagles system. Id. at 3435 (citing Ex. 1004
8485) (emphasis omitted). According to Petitioner, such a modification
would have provide[d] greater customization flexibility, by allowing
standardized components from different manufacturers to be integrated
together in a vehicle communications network. Id. at 35 (citing Ex. 1004
85). Petitioner further avers that such a modification would have been
within the abilities of a [person having ordinary skill in the art] and could be
accomplished with a high chance of success. Id. (citing Ex. 1004 86).

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We have reviewed Petitioners arguments regarding independent

claims 1 and 28. On the present record, Petitioner has shown sufficiently for
the purpose of institution that the combination of Silvernagle and
Chakraborty teaches each limitation of claims 1 and 28, and that a person of
ordinary skill in the art would have had reason to combine the references
teachings in the manner asserted. Accordingly, Petitioner has demonstrated,
on this record, a reasonable likelihood of prevailing on its assertion that
claims 1 and 28 are unpatentable over Silvernagle and Chakraborty.
Claims 2, 3, and 5 depend from independent claim 1. We have
reviewed Petitioners contentions regarding claims 2, 3, and 5. See id. at
3637. Having reviewed the record, we determine that Petitioner has shown
sufficiently at this stage that the combination of Silvernagle and Chakraborty
teaches each limitation of claims 2, 3, and 5, and that a person of ordinary
skill in the art would have had reason to combine the references teachings
in the manner asserted. Therefore, based on the evidence presented in the
Petition, we are persuaded that Petitioner has demonstrated, on this record, a
reasonable likelihood of prevailing on its asserted ground as to claims 2, 3,
and 5.
E. Obviousness over Silvernagle, Chakraborty, and AAPA
Petitioner asserts that the subject matter of claim 6 would have been
obvious to a person of ordinary skill in the art at the time of the invention in
light of the teachings of Silvernagle, Chakraborty, and AAPA. Petitioner
relies on Silvernagle (Ex. 1002), Chakraborty (Ex. 1003), AAPA (see Ex.
1001, 4:1013), and the Declaration of Robert Leale (Ex. 1004). Based on
the current record, we are persuaded that Petitioner has established a

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reasonable likelihood of prevailing on its asserted obviousness ground for

the reasons explained below.
1. Summary of AAPA
According to Petitioner, AAPA discloses that the J1922 standard
recites that a speed limit command code be transmitted at least every 250 ms
to maintain a maximum vehicle speed in place. Pet. 43 (quoting Ex. 1001,
4:1013.
2. Claim 6
Petitioner argues that, in light of the teachings of Chakraborty, it
would have been obvious to a [person of ordinary skill in the art] at the
time of the alleged invention to modify the vehicle control unit of
Silvernagle to transmit a control mode message in accordance with the SAE
J1922 standard to an ECM. Id. (emphasis omitted) (citing Ex. 1004 118).
Petitioner further argues AAPA teaches transmitting a vehicle limitation
command message at least once every 250 milliseconds to comply with the
J1922 standard. Id. (citing Ex. 1001, 4:1013; Ex. 1004 119). Petitioner
further argues that a person of ordinary skill in the art would have been
motivated to transmit that speed limit command code at least every 250
milliseconds to conform with the standard and ensure that a maximum
vehicle speed is maintained in place. Id. at 4344 (citing Ex. 1001, 4:10
13; Ex. 1004 120).
Having reviewed the record, we determine that Petitioner has shown
sufficiently for the purpose of institution that the combination of Silvernagle,
Chakraborty, and AAPA teaches each limitation of claim 6, and that a
person of ordinary skill in the art would have had reason to combine the
references teachings in the manner claimed. Therefore, Petitioner has

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demonstrated, on this record, a reasonable likelihood of prevailing on its

assertion that claim 6 is unpatentable over Silvernagle, Chakraborty, and
AAPA.
III. CONCLUSION
We conclude that Petitioner has demonstrated a reasonable likelihood
of prevailing on its challenges to claims 13, 5, 6, and 28 of the 735 patent
as set forth above. At this stage of the proceeding, we have not made a final
determination as to the patentability of any of these challenged claims or the
construction of any claim term.
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that an inter partes review is instituted as to claims 13,
5, 6, and 28 of the 735 patent;
FURTHER ORDERED that pursuant to 35 U.S.C. 314(a), inter
partes review of the 735 patent is hereby instituted commencing on the
entry date of this Decision, and pursuant to 35 U.S.C. 314(c) and
37 C.F.R. 42.4, notice is hereby given of the institution of a trial; and
FURTHER ORDERED that the trial is limited to the following
grounds of unpatentability, and no other grounds set forth in the Petition as
to claims 13, 5, 6, and 28 of the 735 patent are authorized:
Claims 13, 5, and 28 under 35 U.S.C. 103(a) as unpatentable
over Silvernagle and Chakraborty; and
Claims 6 under 35 U.S.C. 103(a) as unpatentable over
Silvernagle, Chakraborty, and AAPA.

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PETITIONER:
David Cavanaugh
Michael Van Handel
Wilmer Cutler Pickering Hale and Dorr LLP
david.cavanaugh@wilmerhale.com
michael.vanhandel@wilmerhale.com

Jonathan Stroud
Ashraf Fawzy
Unified Patents Inc.
jonathan@unifiedpatents.com
afawzy@unifiedpatents.com

PATENT OWNER:
David Bennett
DIRECTION IP LAW
dbennett@directionip.com

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