PTAB

IPR2015-00397

Mercedes Benz USA LLC v. Proximity Monitoring Innovations LLC

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: System and apparatus for detecting the approach of a vehicle
  • Brief Description: The ’701 patent describes a system to notify a user of an approaching vehicle, such as a transit bus. The system uses a transmitter on the vehicle that sends a unique identification code and a remote receiver that detects the code, compares it to user-selected codes, and generates an alert. A key feature is a "lock-out" function to prevent the receiver from generating unwanted or redundant alerts.

3. Grounds for Unpatentability

Ground 1: Obviousness over Porter, alone or in view of secondary references - Claims 1-2 and 4-17 are anticipated by or obvious over Porter, alone or combined with Dulaney, Brei, or Sadamori.

  • Prior Art Relied Upon: Porter (Patent 6,714,142), Dulaney (WO 93/13503), Brei (Patent 6,636,160), and Sadamori (Patent 5,311,172).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Porter discloses a nearly identical proximity signaling system for alerting a user to an approaching vehicle. Porter teaches an on-vehicle transmitter sending a unique "receiver address" (the claimed "code") to a remote receiver that monitors for the signal, decodes the address, compares it to user-selected addresses, and generates an alert. Petitioner contended that the central "lock-out" feature of claim 1 is met by Porter's disclosure that the receiver's voice chip can be set to play a message only a preset number of times or for a preset time period, thereby preventing subsequent alerts even if the vehicle remains in range. Independent claim 10, a means-plus-function claim, was argued to be met by the corresponding microprocessor-controlled structures in Porter. Dependent claims were also allegedly met; for example, claim 5 (adding a header) was obvious in view of Brei, and claim 17 (collision detection) was obvious in view of Sadamori.
    • Motivation to Combine (for §103 grounds): Petitioner asserted that in the alternative, a person of ordinary skill in the art (POSITA) would combine Porter with Dulaney. Dulaney explicitly discloses a "lock out timer" in a transit notification system for the express purpose of "inhibiting the further generation of sensible alerts" to prevent unwanted, multiple alerts. Because both references address the identical problem in the same technical field, a POSITA would have been motivated to incorporate Dulaney's well-known timer solution into Porter's system to improve its functionality. Similarly, a POSITA would combine Brei to add control information via headers and Sadamori to add standard collision detection to improve system reliability.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in these combinations, as they involved applying known, conventional electronic features (timers, headers, collision detection) to a known type of system to achieve predictable results.

Ground 2: Obviousness over Winkler, alone or in view of secondary references - Claims 1-2 and 4-17 are anticipated by or obvious over Winkler, alone or combined with Dulaney, Brei, or Sadamori.

  • Prior Art Relied Upon: Winkler (Patent 6,700,506), Dulaney (WO 93/13503), Brei (Patent 6,636,160), and Sadamori (Patent 5,311,172).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Winkler discloses all elements of the challenged claims. Winkler describes a notification system with a vehicle transmitter that broadcasts a "vehicle identification information" signal (the "code") to remote receiving units. The receiver detects the signal, extracts the vehicle ID, compares it to a stored ID, and triggers an alert. Petitioner asserted that Winkler's system meets the "lock-out" limitation by disclosing multiple conditions that prevent an alert even when a matching vehicle ID is detected. For example, Winkler's receiver prevents an alert if it determines the vehicle is traveling in the incorrect direction or is not within a specified threshold distance or time of arrival. These functions, which prevent undesired alerts, constitute a "lock-out."
    • Motivation to Combine (for §103 grounds): The motivation to combine Winkler with the secondary references mirrored the arguments for Porter. A POSITA would have been motivated to incorporate Dulaney's explicit "lock out timer" into Winkler to provide a simple, time-based method for preventing redundant alerts, a common problem that both patents sought to solve. The motivation to add header information from Brei or collision detection from Sadamori was based on the desire to add well-known features to enhance control and robustness in a standard communication system.
    • Expectation of Success: Combining the conventional teachings of Dulaney, Brei, or Sadamori with the Winkler system would have yielded predictable results and was well within the capabilities of a POSITA.

4. Key Claim Construction Positions

Petitioner proposed several constructions critical to its unpatentability arguments, asserting they represented the broadest reasonable interpretation.

  • "a lock-out for preventing said generation of indication of identity..." (Claim 1): Petitioner argued this term should be construed broadly to mean "wherein said receiver can prevent the triggering of an undesired alert." This construction is not limited to a specific mechanism, allowing features from Porter (e.g., alert timers) and Winkler (e.g., directional checks) to satisfy the limitation.
  • "a means to prevent..." (Claim 10): For this means-plus-function limitation, Petitioner identified the function as "preventing the triggering of an undesired alarm or alert" and the corresponding structure disclosed in the ’701 patent as "microprocessor 220." This construction allowed Petitioner to map the limitation to the microprocessors disclosed in Porter and Winkler that perform similar alert-prevention functions.

5. Relief Requested

  • Petitioner requests the institution of an inter partes review and the cancellation of claims 1-2 and 4-17 of Patent 6,958,701 as unpatentable.