PTAB

IPR2017-01379

BMW Of North America LLC v. Theodore & Associates LLC

Key Events

Petition

petition

Case #: IPR2017-01379
Patent #: 9,045,163
Filed: May 5, 2017
Petitioner(s): BMW of North America, LLC, Bayerische Motoren Werke Aktiengesellschaft
Patent Owner(s): Theodore & Associates, LLC
Challenged Claims: 1-4, 6-14, 16-37, 43-49

Title: Universal Chassis Apparatus for Automotive Vehicle
Brief Description: The ’163 patent describes a self-supporting and interchangeable "uni-chassis" for vehicles. The core of the invention is a rigid central "backbone structure" that connects front and rear vehicle structures and is configured to house an energy storage compartment, such as a battery or fuel tank, to create a simple and adaptable platform for various vehicle designs.

Prior Art Relied Upon: Gastesi (Patent 5,833,269).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Gastesi disclosed all limitations of the independent claims. Gastesi taught a modular vehicle chassis with a single, central, and elongated "tubular structural member" that functions as a backbone connecting front and rear structural members. This backbone enclosed an energy storage compartment (a fuel tank) and was disclosed as supporting the "majority of the torsional, lateral and longitudinal loads," thereby meeting the claim limitation that loads are "primarily transmitted" by the backbone. Petitioner asserted that Gastesi’s chassis, which included suspension attachment points, constituted a "rolling chassis" as described in the ’163 patent.
- Key Aspects: This ground established Gastesi as the foundational prior art, disclosing the core concept of a central backbone chassis with an integrated energy storage compartment that serves as the primary load-bearing structure.

Prior Art Relied Upon: Gastesi (Patent 5,833,269) and Berghauer (German Application DE 42 43 455 A1).
Core Argument for this Ground:
- Prior Art Mapping: This ground built upon Gastesi by adding the teachings of Berghauer to address claims related to electric and hybrid vehicles. Berghauer disclosed a vehicle "base unit" with a central "support pipe" backbone that contained batteries to power an electric motor. Petitioner argued that incorporating Berghauer’s electric traction motor and battery system into Gastesi’s chassis was an obvious modification. For example, Berghauer’s disclosure of batteries within its backbone structure rendered claims reciting an electric motor and batteries in the energy compartment obvious.
- Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Berghauer’s teachings on electric and hybrid powertrains with Gastesi’s modular chassis to expand the commercial applicability of the chassis beyond combustion-based vehicles. Since both references were in the same field of central backbone chassis design and Berghauer expressly aimed to optimize space by placing batteries in the backbone, the combination was presented as a predictable design choice.
- Expectation of Success: A POSITA would have a high expectation of success, as it involved placing a known type of energy source (batteries) into a structure (Gastesi's hollow backbone) already designed to house an energy source (fuel tank).

Prior Art Relied Upon: Gastesi (Patent 5,833,269), Berghauer (German Application DE 42 43 455 A1), and EV1 (a collection of publications including a service manual and a Popular Mechanics article (Oct. 1986) for the General Motors EV1 electric vehicle).
Core Argument for this Ground:
- Prior Art Mapping: This ground addressed dependent claims requiring a "T-shaped" backbone structure. Petitioner asserted that the EV1 documents taught arranging batteries in a distinct T-shaped compartment located in the central tunnel of the vehicle, with the lateral portion of the "T" located under the passenger seats.
- Motivation to Combine: A POSITA would have been motivated to modify the linear backbone of the Gastesi/Berghauer combination into the T-shape taught by EV1. This modification would be a simple and well-known design choice to increase the energy storage capacity (to hold more batteries or fuel) and extend the vehicle’s driving range without compromising passenger cabin space. Locating the lateral portion under the seats was argued to be the most efficient and obvious use of space.

"Backbone Structure" / "Central Spine": Petitioner argued that various terms for the central chassis element (e.g., "central backbone structure," "single central chassis structure," "central spine") were used interchangeably in the patent and should be construed consistently to mean a single, central, and elongated structure connecting the front and rear of the chassis.
"Primarily" / "Primary": Petitioner contended that these terms of degree were indefinite. However, for the purposes of the IPR, it proposed a construction of "at least mainly" or "the main load-bearing structure." Petitioner further argued that Gastesi met even a stricter interpretation, as it disclosed that its backbone supported the "majority" of loads while only a "minor part" was supported by other structures.
"Structural Connection Between Wheel 'Axes'": Petitioner argued that a structural connection between geometric "axes" is nonsensical. It proposed that a POSITA would interpret this limitation to require a structural connection between the front and rear structures or sub-frames through which the wheel axes pass, which is what the prior art disclosed.

Petitioner argued that this petition was not redundant with a concurrently filed "Second Petition." The petitions were asserted to be distinct because:
- The prior art in this petition predated the ’163 patent’s earliest priority date, whereas the art in the Second Petition qualified as prior art by challenging the patent’s claim to priority.
- The primary references in each petition (Gastesi here, Greil-DE in the other) differed in their express teachings versus what would be understood from general knowledge, leading to different obviousness analyses.

Petitioner requested institution of an inter partes review and cancellation of claims 1-4, 6-14, 16-37, and 43-49 of Patent 9,045,163 as unpatentable.