PTAB

IPR2017-01379

BMW of North America, LLC v. Theodore & Associates, LLC

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, and 43-49

Title: Universal Chassis Apparatus for Automotive Vehicle
Brief Description: The ’163 patent describes a self-supporting and interchangeable "universal chassis" for various vehicle models. 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 for a fuel tank or batteries.

Prior Art Relied Upon: Gastesi (Patent 5,833,269).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Gastesi disclosed all key limitations of the independent claims. Gastesi teaches a modular vehicle chassis with a single, central, tubular backbone structure ("tubular structural member B") longitudinally disposed on the vehicle's centerline. This backbone connects front and rear structural members and encloses an energy storage compartment in the form of a fuel tank. Petitioner asserted that Gastesi's chassis constitutes a "rolling chassis" with front and rear suspensions, and its backbone is the primary load-bearing component, supporting the "majority of the torsional, lateral and longitudinal loads."
- Motivation to Combine (for §103 grounds): Not applicable as this is a single-reference ground. Petitioner contended that Gastesi alone renders the claims obvious.
- Expectation of Success (for §103 grounds): Not applicable.
- Key Aspects: Petitioner contended that Gastesi's disclosure that its passenger compartment supports only a "minor part" of the loads directly teaches the '163 patent's limitation that loads are "primarily transmitted" by the backbone.

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 teachings from Berghauer for electric and hybrid vehicle applications. Berghauer was cited for disclosing a vehicle chassis with a central "support pipe" backbone that contains batteries to power an electric motor. It also discloses various powertrain configurations, including hybrid systems with both an internal combustion engine and an electric motor, as well as front-wheel and all-wheel drive systems.
- Motivation to Combine (for §103 grounds): Petitioner argued a person of ordinary skill in the art (POSITA) would combine Berghauer’s electric/hybrid powertrain teachings with Gastesi’s modular chassis to expand the commercial viability and use cases of Gastesi’s design beyond combustion-based race cars to include electric vehicles (EVs) and hybrid electric vehicles (HEVs). Housing Berghauer's batteries in Gastesi's hollow backbone was argued to be an obvious space-saving measure.
- Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success, as both references operate in the same field of vehicle chassis design and address the common problem of component packaging within a central backbone structure.

Prior Art Relied Upon: Gastesi (Patent 5,833,269) and EV1 (a 1986 Popular Mechanics article and a GM EV1 service manual).
Core Argument for this Ground:
- Prior Art Mapping: This ground addressed dependent claims requiring a "T-shaped" backbone structure. The EV1 references were cited for disclosing that the GM EV1 electric vehicle employed a distinct T-shaped battery compartment located in the center tunnel, extending longitudinally between the seats and laterally behind them.
- Motivation to Combine (for §103 grounds): A POSITA would combine EV1's T-shaped energy storage design with Gastesi’s backbone chassis to increase the energy storage capacity (for either fuel or batteries). This modification would increase the vehicle's driving range without intruding on passenger seating space, a well-known design goal in vehicle engineering.
- Expectation of Success (for §103 grounds): The combination was straightforward, involving applying a known compartment shape (from EV1) to a known chassis type (from Gastesi) to achieve a predictable improvement in energy capacity.
Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 1(d)) against claims 27-31 and 35 based on the combination of Gastesi, Berghauer, and EV1, relying on similar motivations to combine all the cited features.

Backbone Structure: Petitioner argued that terms like "central backbone structure," "central spine," and "single central chassis structure" should all be construed consistently to mean a single, central, and elongated structure connecting the vehicle's front and rear. This construction was based on the specification's interchangeable use of the terms and consistent depiction across all figures.
Terms of Degree ("primarily," "primary"): For claim 1's requirement that loads are "primarily transmitted" by the backbone, Petitioner argued for the broadest reasonable interpretation of "at least mainly." Petitioner anticipated that the Patent Owner might argue for a narrower construction meaning "substantially all" or "solely," but contended this would improperly import limitations from other claims and conflate distinct terms.
Structural Connection Between Wheel "Axes": Petitioner argued that claims reciting a structural connection "between front and rear wheel axes" (e.g., claims 11 and 32) are technically nonsensical, as an axis is an imaginary geometric line. For the purpose of the IPR, Petitioner proposed construing this limitation to mean a structural connection between the front and rear structures through which the wheel axes pass, an interpretation supported by the patent's figures.

Petitioner argued against discretionary denial based on redundancy with a concurrently filed "Second Petition." The reasons provided were:
- The prior art references have different qualifying dates. The art in this petition predates the '163 patent's earliest possible priority date, whereas the art in the second petition qualifies by challenging the patent's claim to that priority date.
- The primary references in the two petitions (Gastesi here, Greil-DE in the other) differ in their express teachings versus what a POSITA would understand from them, leading to different obviousness rationales.
- Denying institution before the Patent Owner contests the differing obviousness analyses would be premature and would materially prejudice the Petitioner.

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