PTAB

IPR2017-01380

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

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1. Case Identification

2. Patent Overview

  • Title: Universal Chassis Apparatus for Automotive Vehicle
  • Brief Description: The ’163 patent describes a self-supporting "universal chassis" for vehicles. The design features a central, rigid "backbone structure" that connects front and rear vehicle structures and is configured to house an energy source, such as batteries or a fluid fuel tank, aiming to create a simple chassis adaptable to various vehicle designs.

3. Grounds for Unpatentability

Ground 1: Obviousness over Greil - Claims 1, 6-11, 16, 18, 19, 21-25 and 43-49 are obvious over Greil.

  • Prior Art Relied Upon: Greil (DE 10 2009 038 834 A1).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Greil taught a “universal vehicle architecture” with a three-module chassis functionally identical to the ’163 patent. Greil’s “central module” was a closed-section backbone structure connecting front and rear modules. This central module was shown to enclose an energy storage compartment containing either batteries or a fluid fuel tank. Petitioner asserted that Greil disclosed all limitations of independent claims 1, 11, and 43, including the front and rear structures with engine and suspension components, the central backbone as the sole structural connection, and its universal adaptability to different powertrain configurations (front-wheel, rear-wheel, and hybrid).
    • Motivation to Combine (for §103 grounds): This ground relied on a single reference. Petitioner contended that adapting Greil’s disclosed features, such as adding a service plate for battery access (claim 6), was a matter of obvious design choice to provide simple and inexpensive access to components.
    • Expectation of Success (for §103 grounds): A person of ordinary skill in the art (POSITA) would have had a high expectation of success in implementing these known features, as they were conventional in vehicle design.

Ground 2: Obviousness over Greil in view of Hiroshima - Claims 17, 20, 26, 32-34, 36 and 37 are obvious over Greil in view of Hiroshima.

  • Prior Art Relied Upon: Greil (DE 10 2009 038 834 A1) and Hiroshima (JP Patent Appl. Publ. No. 5-69854).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon Greil by addressing claims that added a “body floor pan.” Petitioner argued that while Greil depicted passenger seats that imply a floor pan, Hiroshima explicitly taught a backbone-type chassis with a floor pan placed on the chassis structure. Hiroshima’s floor pan included a “tunnel portion” formed to enclose the central backbone frame, directly corresponding to the limitations in claims like 17 and 20.
    • Motivation to Combine (for §103 grounds): A POSITA, starting with Greil’s rolling chassis, would have needed to attach a body and floor pan. Petitioner argued it would have been obvious to look to Hiroshima, which addressed the same problem of integrating a floor pan with a central backbone chassis. The similar modular, backbone-based designs of both references would have motivated a POSITA to combine Hiroshima’s floor pan solution with Greil’s chassis.
    • Expectation of Success (for §103 grounds): The combination was argued to be a predictable integration of known components (a chassis and a floor pan) to achieve a well-understood result.

Ground 3: Obviousness over Greil in view of Brandt - Claims 2-4, 12-14, and 27-31 are obvious over Greil in view of Brandt.

  • Prior Art Relied Upon: Greil (DE 10 2009 038 834 A1) and Brandt (DE 10 2010 018 725 A1).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addressed claims requiring the backbone structure to have a "T-shape." Petitioner asserted that Greil's backbone was primarily a longitudinal tunnel. Brandt, however, explicitly disclosed a T-shaped battery support structure for an electric vehicle, comprising a longitudinal battery unit in the central tunnel and a lateral battery unit in the rear region. This combination directly taught the T-shaped structure recited in claims 2 and 27.
    • Motivation to Combine (for §103 grounds): A POSITA seeking to increase the battery capacity and range of the electric vehicle disclosed in Greil would have been motivated to modify the battery arrangement. Petitioner contended that Brandt’s T-shape was a known method for arranging batteries to maximize space and power. Combining Brandt’s T-shaped battery layout with Greil’s chassis was an obvious way to accommodate more battery cells.
    • Expectation of Success (for §103 grounds): A POSITA would have expected success in modifying the shape of Greil's battery compartment to the T-shape taught by Brandt to achieve the predictable advantage of longer vehicle runtime.
  • Additional Grounds: Petitioner asserted an additional obviousness challenge against claim 35 based on the combination of Greil, Hiroshima, and Brandt, relying on the combined teachings detailed in the grounds above.

4. Key Claim Construction Positions

  • Backbone Structure: Petitioner argued that various terms across independent claims (e.g., “central backbone structure,” “single central chassis structure,” “central spine”) should be interpreted consistently to mean a single, central, and elongated structure connecting the front and rear of the chassis, as this reflects the universal depiction in the patent and the understanding of a POSITA.
  • Relative Terms of Degree ("primarily," "primary"): Petitioner contended that terms like "primarily transmitted" (claim 1) and "primary structural connection" (claims 20, 44) were indefinite. For the purpose of the IPR, Petitioner proposed they be interpreted broadly under the broadest reasonable interpretation standard to mean "at least mainly" or the "main load-bearing" connection, not "solely" or "exclusively," as the patent specification itself used the term "solely" elsewhere, indicating a different intended scope.
  • Structural Connection Between Wheel "Axes": For claims requiring a structural connection "between front and rear wheel axes" (claims 11, 32), Petitioner argued an "axis" is a geometric line, not a physical structure. Therefore, the phrase should be construed to mean a structural connection between the front and rear vehicle structures through which the wheel axes pass.

5. Key Technical Contentions (Beyond Claim Construction)

  • Priority Date Challenge: A central contention of the petition was that most challenged claims were not entitled to the filing date of the earliest provisional application. Petitioner argued that key limitations were new matter added in later continuation-in-part (CIP) applications. These included: the "fluid fuel compartment" (claims 7, 11-14, etc.), the "T-shaped" backbone (claims 2-4, 12-14, etc.), and the use of the term "primarily" instead of "solely" for load transmission. This argument was critical, as it established that Greil and Brandt, published in 2011, qualified as prior art against claims only entitled to a 2012 or 2013 filing date.

6. Arguments Regarding Discretionary Denial

  • Non-Redundant Petitions: The petition disclosed that a second IPR was being filed concurrently and argued against discretionary denial for redundancy. Petitioner asserted the petitions were distinct because: (1) the prior art in this petition qualified based on the challenged claims’ later effective priority dates, whereas the art in the second petition predated all priority applications; (2) the primary references (Greil here, Gastesi in the other) expressly taught different aspects of the claimed invention; and (3) the underlying obviousness analyses and motivations to combine were different.

7. Relief Requested

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