• Denso Corporation / Clarion Co. Ltd. v. Beacon Navigation GmbHAll claims unpatentable
  PTAB · Mar 14, 2014 · IPR2013-00026 · APJ Glenn J Perry · IPR · Final written decision

  Claims 2, 3, 5, 6, 11-13, and 18-20, and 22 are unpatentable, principally as anticipated by Geier, Anderson, and Endo; Maki also anticipates claim 6.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “and have engaged in the strategic planning, preparation, and review of the present petition for inter partes review, thereby making them related parties in interest to this proceeding. Id. 5. Patent Owner further states: “It is also likely that other parties in the litigations regarding infringement of the ’111 patent are in privity with Denso and Clarion.” Id. 5. We disagree with Patent Owner’s conclusion. The only relationship alleged by Patent Owners between the named real parties-in-interest and the alleged real parties-in-interest not named is that of being co-defendants or concurrent defendants in related litigation. The mere fact that parties are co-defendants or concurrent defendants in litigation does not make them real parties-in-interest. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48759. Patent Owner argues that the alleged additional real parties-in-interest have engaged in strategic planning, preparation, and review of the Petition. There is, however, no evidence that the alleged real parties-in-interest guide or otherwise control this inter parties review. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48759. We are not persuaded that any real parties-in-interest have been omitted.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “The ’111 patent does not provide a specific definition of the word “position.” It uses the word “position” in various ways and manners throughout the specification, not all of which refer to a position plotted or to be plotted on a map. For example, the patent states “[f]rom this information, the user computes the satellite's precise position and clock offset.” Ex. 1001, 1:38-40. (emphasis added). Here, the word “position” refers to the position of a satellite, not to the position of a GPS receiver being plotting on a map. The satellite’s position is never plotted on a map. Another example is found in the description of Figures 4A and 4C of the patent. That description uses “position” to refer to “raw data” that is not plotted on a map, but used as an intermediate value to calculate data that is plotted on a map. Another example is a portion of the specification that describes correcting bias errors in differential GPS: “A [r]eference [s]tation receiver measures ranges from all visible satellites to its surveyed position.” Ex. 1001, 4:59-61. (emphasis added). The surveyed position is a fixed position of a reference station, not the position of a GPS receiver being plotted on a map. Thus, within the four corners of the ’111 patent, we find uses of the word “position” that are outside of Patent Owner’s construction. Based on this intrinsic evidence alone, Patent Owner’s proposed construction is too narrow. Petitioner argues that claim 2 puts no further limitation on the term “position.” Pet. Reply 1. We agree. We construe the word “position” as referring to a location.7 Our construction does not require that “position” only refer to a location that is ultimately plotted on a map. For example, a “position” may be that of a GPS satellite or a location represented by a signal that is used in an intermediate calculation.” slip op. at 8

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “We are not persuaded by Petitioner’s argument that east and north displacements inherently are taught by Maki. Petitioner’s argument begins with the proposition that international regulations require airplane navigation to be referenced to the WGS-84 geodetic frame. Ex. 1017 ¶ 18. This may be so, but Maki does not describe guidance for an airplane. It describes guidance for a space vehicle. We find no mention of WGS-84 in Maki and we are not persuaded to infer that WGS-84 is utilized. As Petitioner argues, Maki describes a “velocity vector.” Patent Owner’s expert, Dr. Dafesh, agrees that a velocity vector can be expressed in components to the east and to the north, regardless of the direction in which it points. Ex. 1019, 128:25 to 129:3. Further, Dr. Dafesh, admits that “position” is “not limited to being relative to a geographical reference.” Ex. 1019, 74:22-75:4. However, there is no evidence presented demonstrating that the position vector is resolved into components at all, a precursor to resolving into “east” and “north” components. For this reason, we are not persuaded that Maki inherently teaches east and north displacements as claimed. Petitioner has not carried its burden with respect to anticipation by Maki of claim 2.” slip op. at 15

  • BurdenMixed

    “orthogonal axes accelerometer.” Patent Owner’s expert, Dr. Dafesh, states that Endo does not mention among its recitation of sensors an accelerometer. Ex. 2005 ¶ 26. We agree. Unlike Anderson, Endo does not disclose an accelerometer of any kind. According to Petitioner, the use of orthogonal axes accelerometers were well known automotive sensors to one having skill in the art at the time of Endo. Therefore, Petitioner argues, the claims represent a “predictable variation” of what is taught by Endo. Pet. Reply 15. That may be so. However, Petitioner’s challenge is based on anticipation, which requires the reference to disclose expressly or inherently all features of the claim. With respect to Anderson, we determined that explicit mention of an accelerometer infers to one of ordinary skill the use of an orthogonal axes accelerometer. However, in Endo there is no mention of an accelerometer. Furthermore, there is no persuasive evidence to suggest that as to Endo, the presence of an orthogonal axes accelerometer is inherent. Nor is there evidence to suggest that the use of an orthogonal axes accelerometer would have been inferred by one of ordinary skill at the time of the invention. Unlike Anderson, which described an accelerometer, Endo does not. As such, Petitioner has not met its burden in establishing slip op. at 36

  Patent outcomesUS 6,029,111 unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 6,029,111

Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.