PTAB

IPR2019-00014

Toyota Motor Corp v. General Electric Co

Key Events

Petition

petition

Title: Vehicle Climate Pre-Conditioning Control System
Brief Description: The ’237 patent relates to systems and methods for pre-heating or pre-cooling a vehicle cabin using external grid power before driver use. The disclosed control systems are intended to provide timely heating and cooling to enhance driver comfort while minimizing power consumption from the vehicle's own battery, particularly in hybrid and electric vehicles.

Prior Art Relied Upon: Hotta (Patent 5,330,385) and the general knowledge of a person of ordinary skill in the art (POSITA).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Hotta, a reference not considered during prosecution, teaches the key limitations of independent claim 1. Hotta discloses an air-conditioning system for an electric vehicle that performs pre-conditioning using an external power supply. Its controller (CPU 62) determines a pre-conditioning activation time based on user inputs for desired vehicle use time and cabin temperature, as well as sensor data for current cabin temperature. Critically, Hotta also teaches a deactivation feature added to the ’237 patent claims during prosecution: stopping the pre-conditioning if the vehicle is not started within a preset time (one hour) of the expected use time to conserve energy.
- Motivation to Combine: This ground primarily relies on a single reference. Petitioner asserted that routine details, such as the configuration of a power connector to mate with a grid receptacle, would have been well-known to a POSITA.

Prior Art Relied Upon: Hotta (Patent 5,330,385) and Hirokazu (Published Japanese Application No. 2007-269161).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner asserted that Hotta provides the foundational pre-conditioning system, and Hirokazu supplies the specific feature recited in claims 6, 11, and related system/method claims: determining the vehicle activation time based on a "pattern of past vehicle usage." Hirokazu explicitly discloses a system with "learning controls" that analyze weekly driving patterns to determine the optimal time to begin pre-cooling or pre-heating, thereby automating a key input.
- Motivation to Combine: A POSITA would combine the references to improve the functionality and convenience of Hotta's system. Petitioner argued both references address the same technical problem (A/C control in electric vehicles during charging) and a POSITA would be motivated by market pressures to add Hirokazu's automated "learning" feature to eliminate the need for drivers to manually input an expected departure time.
- Expectation of Success: The combination was presented as a predictable integration of known elements. Hirokazu's driving-pattern-recognition function would perform its known purpose within Hotta's control system, yielding no more than the expected result of enhanced convenience.

Prior Art Relied Upon: Hotta (Patent 5,330,385), Hirokazu (Published Japanese Application No. 2007-269161), and Gerard (Application # 2006/0080007).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner built upon the combination of Hotta and Hirokazu by asserting that Gerard teaches the remaining limitation of claim 8: receiving the desired vehicle activation time via a wireless signal, internet-based protocol, or CAN-bus protocol from a remote device. Gerard discloses a system allowing a user to schedule vehicle pre-conditioning remotely using a cellular phone to transmit the schedule over the internet to the vehicle.
- Motivation to Combine: The motivation to add Gerard’s teachings was based on the clear desire for remote scheduling to improve user convenience and overcome the limited range of conventional remote starters. A POSITA would be motivated to integrate Gerard's well-known remote communication methods into the base system of Hotta and Hirokazu.
- Expectation of Success: The combination would be a predictable variation, as it would only change the method of inputting data (the activation time) without altering the system's underlying pre-conditioning control logic.

Prior Art Relied Upon: Hotta (Patent 5,330,385) and Heinle (Application # 2005/0109051).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued this combination renders obvious claims 12 and 23, which are directed to a vehicle with an internal combustion engine (ICE), not a hybrid. The claims require that grid power is received solely for powering the climate control system, without recharging an on-board energy storage system. Heinle was asserted to teach this exact scenario: a "standstill air-conditioning mode" for an ICE vehicle where grid power operates an electric motor to drive the A/C compressor, explicitly avoiding battery charging.
- Motivation to Combine: A POSITA would be motivated to apply the benefits of Hotta's pre-conditioning control logic to the conventional ICE vehicle application described in Heinle. Doing so would increase driver comfort, save fuel, and reduce noise compared to pre-conditioning by idling the engine.
- Expectation of Success: Petitioner contended there would be a high expectation of success, as applying Hotta's control scheme to Heinle's grid-powered ICE system would be a straightforward implementation of a known technology (pre-conditioning) in a known context (standstill ICE vehicles) to achieve predictable benefits.

Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate. The core of this argument was that the asserted combinations of prior art—specifically relying on Hotta, Hirokazu, Gerard, and Heinle—were not before the Examiner during the original prosecution of the ’237 patent. Therefore, Petitioner contended the grounds were not cumulative of issues previously presented to or considered by the Office.

Petitioner requests the institution of an inter partes review of claims 1-23 of Patent 8,118,237, a final written decision finding claims 1-23 unpatentable, and the cancellation of those claims.