PTAB

IPR2013-00104

HYundai Motor AmERICa Inc v. CLear With Computers LLC

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1. Case Identification

2. Patent Overview

  • Title: Electronic Proposal Preparation System
  • Brief Description: The ’904 patent describes a computer system for creating customized sales proposals for tangible products. The system presents queries to a user, and based on the user's answers, it automatically selects and combines stored images and text segments into a pre-defined template to generate a single, composite customized output.

3. Grounds for Unpatentability

Ground 1: Anticipation over Nohmi - Claims 22-24, 27-29, 31-32, 34-36, and 38-40 are anticipated by Nohmi under 35 U.S.C. § 102(b).

  • Prior Art Relied Upon: Nohmi (a 1989 publication from the Information Processing Society of Japan).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Nohmi, which describes a "multimedia presentation system" for car sales, discloses every limitation of the challenged claims. The Nohmi system presents a user with selectable keywords ("KEY") and menu items that function as "questions" about desired car features (e.g., "hardtop") or uses (e.g., "4WD principles"). In response to a user's selection ("answer"), the system automatically selects product images (cars), environment images (road scenes), and text segments (technical specifications). These elements are then integrated into a composite "page," which Petitioner asserted is the claimed "single composite customized output." Petitioner mapped Nohmi's functionality for storing user color preferences to the "active database" limitation and its use of CD-ROM for storing text and images to the "static database" limitation. The system's use of a list-based page structure to render the output was argued to meet the "dynamically building a template" limitation.

Ground 2: Anticipation over Matsuzaki - Claims 22-24, 27-29, 31-32, 34-36, and 38-40 are anticipated by Matsuzaki under 35 U.S.C. § 102(e).

  • Prior Art Relied Upon: Matsuzaki (Patent 5,357,439).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Matsuzaki, which discloses a computerized system for custom-ordering products like toy airplanes, also teaches all challenged claim elements. The system receives user "answers" regarding desired features and uses (e.g., "performance," "speed," "cost") through a series of interactive screens. In response, a "combination design unit" automatically selects images of the product (toy plane designs) and an environment (a virtual hangar or street) and integrates them with text segments (specifications) to generate a composite design for the user. Petitioner contended that Matsuzaki's "customer management data storing unit," which stores information about the selected toy plane, meets the "active database" limitation. The "specification storing unit" and "product model storing unit," which are not altered during output generation, were argued to constitute the claimed "static database."

Ground 3: Obviousness over Nohmi and Miyaoka - Claims 22-24, 27-29, 31-32, 34-36, and 38-40 are obvious over Nohmi in view of Miyaoka under 35 U.S.C. § 103(a).

  • Prior Art Relied Upon: Nohmi (a 1989 publication), Miyaoka (a 1991 publication).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted that while Nohmi anticipates the claims, the combination with Miyaoka renders them obvious in the alternative. Should the Board find Nohmi's disclosure of integrating product and environment images deficient, Miyaoka explicitly teaches this capability. Miyaoka describes a sales support system with the "function of creating an image of a scene showing a product placed in the environment in which it is actually used with the product colors or patterns being changed." Further, if Nohmi's feature for storing user color preferences was deemed insufficient to teach an "active database," Miyaoka discloses collecting user input to facilitate business processes like placing orders, thus clearly teaching an alterable database for storing customer information.
    • Motivation to Combine: A POSITA would combine Nohmi and Miyaoka to enhance the functionality of Nohmi's sales presentation system. Miyaoka addresses the same problem as Nohmi—effective product presentation—and its image compositing techniques would have been a known and desirable improvement. Petitioner noted that the authors of both references were part of the same research endeavor at Hitachi, making the combination of their teachings particularly straightforward.
    • Expectation of Success: The combination involved applying known image processing and data collection techniques to an existing sales system, which would have been a predictable implementation for a POSITA.

  • Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations of Nohmi or Matsuzaki with Kobayashi (teaching page templates), Takashi (teaching image-compositing), Detailer (adding printing functionality), The 1987 Mailer (providing examples of text segments), and Dimension (adding financing queries and printing).

4. Key Claim Construction Positions

Petitioner argued that claim terms should be given their ordinary and customary meaning, proposing constructions adopted by the U.S. District Court for the Eastern District of Texas in related litigation.

  • "proposal" (Claims 22-24, 26, 31, 35-36, 39-40): "information intended for conveyance to a customer."
  • "single composite customized output" (Claims 22-25, 27-33, 39-40): "a single image that includes the selected text and an image of a product in a product environment."
  • "static database" (Claims 22, 31, 39-40): "a database that is not alterable during generation of a composite visual output."
  • "active database" (Claims 22, 31, 39-40): "a database that is alterable based on user input."
  • "selection device" (Claims 22, 31, 39-40): "computer code data structure."

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 22-40 of Patent 8,121,904 as unpatentable.