Hyundai Motor America Inc v. Clear With Computers LLC

1. Case Identification

• Case #: IPR2013-00104
• Patent #: 8,121,904
• Filed: January 16, 2013
• Petitioner(s): Hyundai Motor America, Inc.
• Patent Owner(s): Clear With Computers, LLC
• Challenged Claims: 22-40

2. Patent Overview

• Title: Electronic Proposal Preparation System
• Brief Description: The ’904 patent discloses a computer system for generating customized sales proposals for tangible products. The system combines stored images (of the product and its environment) and text segments into a template based on a user's answers to predetermined queries.

3. Grounds for Unpatentability

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

• Prior Art Relied Upon: Nohmi (Multimedia Presentation Systems – Prototyping for Electronic Catalogs, 1989).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Nohmi, a 1989 publication describing a computerized sales presentation system for cars, discloses every limitation of the challenged claims. The Nohmi system receives user answers via interactive on-screen objects (KEY, MENU) to generate a customized output. In response, it automatically selects and integrates product images (e.g., car models), environment images (e.g., a road), and text segments (e.g., "4WD principles") into a composite "page." Petitioner asserted Nohmi's system uses a database alterable by user input (e.g., storing a color preference) that functions as the claimed "active database" and a non-alterable database on CD-ROM for images and text that functions as the "static database." The system's processing of a "page" structure to create the output was argued to meet the "dynamically building a template" limitation.

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

• Prior Art Relied Upon: Matsuzaki (Patent 5,357,439).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Matsuzaki, which describes a custom-order manufacturing system for a toy plane, also anticipates the challenged claims. The system receives user input regarding desired features and uses (e.g., "speed," "stability") through a series of interfaces. Based on these answers, it automatically selects images of the product (toy plane designs) and an environment (a virtual street or hangar), along with text describing product specifications. These elements are integrated into a single composite output for the customer. Petitioner mapped Matsuzaki's "customer management data storing unit" to the claimed "active database" and its "specification storing unit" and "product model storing unit" to the "static database."

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

• Prior Art Relied Upon: Nohmi (as above), Miyaoka (Image Processing in Presentations Systems, 1991).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that even if Nohmi does not anticipate all claims, the claimed invention is obvious over Nohmi combined with Miyaoka. Nohmi provides the foundational system for customized sales presentations. Miyaoka, which discusses similar systems, explicitly teaches advanced capabilities that supplement Nohmi, such as compositing a product image (a car) into various background environment images ("Germany," "London," "Florida") and connecting the presentation system to business processes like placing orders. Petitioner asserted Miyaoka's teachings would cure any alleged deficiency in Nohmi regarding the selection of environment images or the functionality of the active database.
  • Motivation to Combine: A POSITA would combine Nohmi and Miyaoka because they address the exact same problem of providing customized product information to support sales. The authors of the references were part of the same research endeavor at Hitachi, making the combination particularly straightforward. A POSITA would have been motivated to incorporate Miyaoka's enhanced image-compositing and business-process features to improve the effectiveness of the system disclosed in Nohmi.
  • Expectation of Success: Given that both references describe similar hypermedia-based sales systems, a POSITA would have had a high expectation of success in integrating Miyaoka's features into the Nohmi system.

• Additional Grounds: Petitioner asserted additional challenges, including obviousness grounds combining Nohmi or Matsuzaki with references such as Kobayashi (for templating features), Takashi (for image-compositing), Detailer (for printing proposals), The 1987 Mailer (for specific types of text content), and Dimension (for financing queries).

4. Key Claim Construction Positions

Petitioner argued that claim terms should be given their ordinary and customary meaning, adopting constructions from a prior district court litigation involving related patents.

• "proposal": "information intended for conveyance to a customer."
• "single composite customized output": "a single image that includes the selected text and an image of a product in a product environment." This construction is central to Petitioner's mapping of prior art systems that generate a single, integrated screen display.
• "static database": "a database that is not alterable during generation of a composite visual output." This allows Petitioner to map read-only media like CD-ROMs or fixed data files to this limitation.
• "active database": "a database that is alterable based on user input." This construction supports mapping any data store that saves user selections or preferences (e.g., car color, product configuration) to the claims.
• "selection device": "computer code data structure."

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 22-40 of the ’904 patent as unpatentable.