PTAB

IPR2013-00176

Hyundai Motor America Inc v. Clear With Computers LLC

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Petition
petition

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. The system generates these proposals by populating electronic templates with stored images and text segments based on a user's answers to queries about their product interests.

3. Grounds for Unpatentability

Ground 1: Claims 1-8, 10, 12, and 14-17 are obvious over Nohmi in view of Hill.

  • Prior Art Relied Upon: Nohmi (a 1989 publication from the Information Processing Society of Japan) and Hill (Patent 5,528,490).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Nohmi, a paper describing a multimedia sales presentation system for cars, taught nearly all limitations of independent claim 1. Nohmi’s system used a user interface with selectable menus to query user interests, stored user selections in an active database, and used a report generator to populate page layouts (from a report database) with product information (from a static database) to create a customized proposal. To meet the "difference database" limitation, Petitioner pointed to Hill, which taught an electronic catalog system that used a "data base log of changes" to update product information stored locally on a customer's computer, ensuring the catalog was current.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Hill’s update functionality with Nohmi’s presentation system to solve a known problem. Nohmi’s system was designed for distribution on non-rewritable media like CD-ROMs, which would quickly become outdated. Hill’s method of pushing updates directly addressed this shortcoming, making the combination a predictable solution to improve the effectiveness of Nohmi’s electronic catalog.
    • Expectation of Success: Petitioner asserted that integrating a known update mechanism (Hill) with an electronic catalog system (Nohmi) involved applying known techniques to a known system to yield predictable results.

Ground 2: Claims 9 and 18 are obvious over Nohmi and Hill in further view of Miyaoka.

  • Prior Art Relied Upon: Nohmi, Hill, and Miyaoka (a 1991 journal article on image processing in presentation systems).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the Nohmi/Hill combination to address dependent claims 9 and 18, which require page layouts configured to display a product picture in an environment selected by the user. While Nohmi showed a car on a road, Petitioner argued Miyaoka explicitly taught allowing a user to separately select an environment (e.g., "London," "Florida") and then compositing an image of the product into that chosen scene.
    • Motivation to Combine: A POSITA would have been motivated to incorporate Miyaoka's teachings to enhance the user experience and sales effectiveness of the Nohmi/Hill system. Miyaoka and Nohmi originated from the same research endeavor (sharing co-authors) and addressed the same goal of improving computerized sales presentations, making their combination a natural and obvious design choice.

Ground 3: Claim 21 is obvious over Nohmi, Hill, Miyaoka, the Complete Car Cost Guide, and Von Kohorn.

  • Prior Art Relied Upon: Nohmi, Hill, Miyaoka, the Complete Car Cost Guide (a 1989 publication), and Von Kohorn (Patent 4,876,592).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner contended that independent claim 21 was an amalgam of features found in claims 1-20, all of which were taught by the combined prior art. The core system was provided by Nohmi and Hill. Miyaoka provided the user-selectable environment. The Complete Car Cost Guide, a known type of omnibus product catalog, taught storing the claimed "price specifications" and "life cycle specifications" (e.g., projected ownership costs). Von Kohorn, which described a "home shopping" system, taught including "salesperson information" (e.g., a contact phone number) in a customized printout.
    • Motivation to Combine: A POSITA would combine these references as an exercise of ordinary creativity. Each reference provided a known, useful feature for a sales presentation system. Adding detailed cost data (Complete Car Cost Guide) and salesperson contact information (Von Kohorn) to the interactive catalog of Nohmi/Hill/Miyaoka were obvious steps to make the resulting sales proposal more comprehensive and effective.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations of Nohmi and Hill with Kobayashi (for teachings on page layout templates) and with Roux (as an alternative to Hill for teaching a "difference database").

4. Key Claim Construction Positions

Petitioner argued that since the ’904 patent had expired, terms should be given their ordinary and customary meaning and proposed adopting several constructions from a prior district court case involving parent patents. Petitioner also proposed constructions for three terms new to the ’904 patent:

  • "update information" (claims 1, 21): Proposed construction is "changes to database content." This term is part of the "difference database" limitation, and Petitioner argued its plain meaning in context refers to the changes being transmitted to the static database.
  • "transmit the report" (claims 13, 21): Proposed construction is "send the report for printing." Petitioner argued that within the specification, the report generator's only purpose is to generate a printed proposal.
  • "life cycle specifications" (claims 11, 19, 21): Proposed construction is "specifications relating to projected ownership costs for the product." This was argued to align with the ordinary meaning and examples like maintenance, financing, and repair costs.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-21 of Patent 8,121,904 as unpatentable under 35 U.S.C. §103.