KOMatsu AmERICa Corp v. Leydig Voit & Mayer Ltd

1. Case Identification

• Patent #: 7,039,507
• Filed: January 29, 2013
• Petitioner(s): Komatsu America Corp.
• Patent Owner(s): Hagenbuch
• Challenged Claims: 1, 3, 8-12, and 19-24

2. Patent Overview

• Title: Apparatus for Tracking and Recording Vital Signs and Task-Related Information of a Vehicle to Identify Operating Patterns
• Brief Description: The ’507 patent discloses techniques for identifying operational anomalies in a motorized vehicle. The system uses an on-board processor to acquire "vital sign" and "task-related" data, identify when the vehicle enters a "critical state," and record a chronology of the parameters leading up to that state for subsequent diagnosis.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1 and 23 - Claims 1 and 23 are anticipated under 35 U.S.C. §102(b) by Hagenbuch MIS.

• Prior Art Relied Upon: Hagenbuch MIS (SAE Technical Paper Series, Sept. 1986).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Hagenbuch MIS, a technical paper authored by the named inventor of the ’507 patent more than seven years before the patent’s effective filing date, discloses every element of independent claim 1. It allegedly taught an integrated system for monitoring both vehicle "vital signs" (e.g., oil pressure, temperature) and "performance signs" (i.e., task-related parameters like equipment loading). Petitioner asserted that Hagenbuch MIS explicitly described monitoring these parameters, using "exception reporting" to identify critical states (abnormal conditions that could lead to component failure), and creating a historical record of data for later review, thus teaching the claimed chronology.
  • Key Aspects: The core of this argument was that the patent owner’s own prior publication taught the allegedly novel integration of vehicle health and performance monitoring, rendering the claims invalid.

Ground 2: Obviousness of Claims 3, 8-10, 19, 20, and 24 - Claims are obvious under 35 U.S.C. §103 over Hagenbuch MIS in view of Mitsugi.

• Prior Art Relied Upon: Hagenbuch MIS (SAE Technical Paper Series, Sept. 1986) and Mitsugi (Japanese Patent Application H03-0005626).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon Ground 1, addressing claims that added crash-specific features. Petitioner contended that while Hagenbuch MIS taught the baseline system of monitoring and recording vital and task-related parameters around a critical state, it did not explicitly name a "crash" as a trigger. Mitsugi allegedly supplied this missing element by teaching a vehicle navigation and accident recording system that used an acceleration sensor to detect a crash, which it treated as a critical state. Upon crash detection, Mitsugi recorded prior operational data (engine RPM, speed) and automatically broadcast a distress signal containing vehicle location and driver ID.
  • Motivation to Combine: A POSITA would have been motivated to integrate Mitsugi's crash detection and reporting features into the Hagenbuch MIS system. This would enhance the "exception reporting" functionality of Hagenbuch MIS by providing a clear explanation for certain abnormal events (e.g., a truck failing to arrive at its destination), thereby improving fleet management and safety, which were the stated goals of both references.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in this combination, as it involved incorporating a known type of sensor (accelerometer) and reporting module into an existing vehicle monitoring framework to achieve a predictable improvement in functionality.

Ground 3: Anticipation of Claims 1, 3, 23, and 24 - Claims are anticipated under §102(b) by Zottnik.

• Prior Art Relied Upon: Zottnik (Patent 4,638,289).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that Zottnik, as a standalone reference, anticipated the key claims. Zottnik allegedly disclosed an accident data recorder that monitored both "vital signs" (acceleration data to detect a crash) and "task-related parameters" (travel speed, distance). Zottnik described a cyclical recording process where data was continuously stored in a buffer. Upon detection of a trigger event (a crash, or "critical state"), the system would freeze the data recorded immediately before the event and continue recording for a limited time after, thereby preserving a complete "chronology of the one or more values... leading up to the critical state."
  • Key Aspects: This ground asserted that a single prior art patent from the late 1980s disclosed a complete "black box" recorder that performed all the core steps of the ’507 patent's independent claims, demonstrating the invention was not novel.

• Additional Grounds: Petitioner asserted numerous additional grounds, including that Steiner (Patent 4,939,652) and Hamilton (a 1988 article) each independently anticipated claims 1, 3, 23, and 24. Further obviousness grounds combined Zottnik, Steiner, or Hamilton with Asano (Patent 5,157,610) to add remote data transmission capabilities, and with Mitsugi to add driver ID and specific location data to the distress signal.

4. Key Claim Construction Positions

• "Vital Signs": Petitioner proposed this term includes vehicle parameters indicative of the health of the vehicle, such as engine oil temperature, coolant level, acceleration, and tire pressure. This broad construction was used to map acceleration data from crash recorders like Mitsugi and Zottnik to this limitation.
• "Task-Related Parameters": Petitioner argued this term covers parameters indicating the work done by the vehicle, such as engine RPM, ground speed, distance traveled, and load status. This was used to show that prior art accident recorders captured not just crash data but also performance data.
• "Critical State": Petitioner proposed this term includes any state of a component which, if maintained, will cause it to fail. This construction allowed Petitioner to equate the "trigger events" in prior art accident recorders (e.g., a crash detected by an accelerometer) with the claimed "critical state."

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1, 3, 8-12, and 19-24 of the ’507 patent as unpatentable.