BMW of North America, LLC v. Carrum Technologies, LLC, which is wholly owned by Pratima Instruments, LLC (a Delaware limited liability company)

1. Case Identification

• Case #: IPR2019-00902
• Patent #: 7,512,475
• Filed: April 20, 2019
• Petitioner(s): BMW of North America, LLC
• Patent Owner(s): Carrum Technologies, LLC
• Challenged Claims: 1-12

2. Patent Overview

• Title: Automatic Lateral Acceleration Limiting and Non Threat Target Rejection
• Brief Description: The ’475 patent describes methods and systems for an adaptive cruise control (ACC) system that controls vehicle speed during turns. The system uses a lateral acceleration sensor to detect when the vehicle is turning, reduces speed to prevent excessive lateral acceleration, and distinguishes between objects that are in the vehicle’s path and those that are not.

3. Grounds for Unpatentability

Ground 1: Claims 1, 4, and 5 are obvious over Winner in view of Schmitt and Applicant Admitted Prior Art (AAPA)

• Prior Art Relied Upon: Winner (Application # 2002/0165657), Schmitt (Patent 6,456,924), and Applicant Admitted Prior Art (AAPA) from the ’475 patent specification.
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Winner taught a standard ACC system for controlling vehicle speed, including in curves, but acknowledged problems with maintaining safe speeds and detecting in-path objects during turns. Schmitt addressed this gap by teaching a traction control system that measures lateral acceleration, detects a change in lateral acceleration to determine when a vehicle enters a curve, and reduces vehicle speed if a preset limit is exceeded. AAPA, as described in the ’475 patent, confirmed the known problem of excessive lateral acceleration in turns for prior art ACC systems.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Winner and Schmitt to solve the known problem, acknowledged in both Winner and AAPA, of maintaining safe speeds in curves with an ACC system. A POSITA would have been motivated to incorporate Schmitt’s method of using lateral acceleration changes to detect turns and control speed into Winner’s ACC system to improve its safety and performance in curves.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because combining the references involved applying a known technique (Schmitt’s turn detection and speed reduction) to improve a known system (Winner’s ACC) to solve a known problem. The combination was a predictable integration of existing technologies.

Ground 2: Claims 2 and 3 are obvious over Winner, Schmitt, and Ishizu

• Prior Art Relied Upon: Winner (Application # 2002/0165657), Schmitt (Patent 6,456,924), and Ishizu (Application # 2001/0044691).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on the combination of Winner and Schmitt for the limitations of independent claim 1. Dependent claims 2 and 3 add limitations related to measuring vehicle speed, yaw rate, and rate of change of yaw rate to calculate lateral acceleration. Petitioner asserted that while Winner/Schmitt taught the base invention, Ishizu explicitly taught a vehicle speed control system that calculates lateral acceleration using vehicle speed and yaw rate data obtained from corresponding sensors.
  • Motivation to Combine: A POSITA, having combined Winner and Schmitt, would look to other known techniques for implementing the lateral acceleration calculation. Ishizu provided a known and suitable method for doing so by using speed and yaw rate sensors, which were common in the art. A POSITA would combine Ishizu with the Winner/Schmitt system to provide an effective way to obtain the lateral acceleration data needed for the system to function.
  • Expectation of Success: The combination would have been successful because Ishizu teaches the precise calculations and sensor inputs (speed, yaw rate) needed to implement the lateral acceleration-based control taught by Schmitt within the ACC framework of Winner.

Ground 3: Claims 10-12 are obvious over Winner, Schmitt, and Khodabhai

• Prior Art Relied Upon: Winner (Application # 2002/0165657), Schmitt (Patent 6,456,924), and Khodabhai (Patent 5,959,569).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground challenges claims dependent on independent claim 6, which is a method claim analogous to claim 1. Dependent claims 10-12 add limitations for improving in-turn object detection, including measuring object range, range rate, and object angle, and determining the vehicle’s path radius of curvature. Petitioner argued that Khodabhai taught a collision avoidance system that performed these exact functions—it determined if an obstacle was in the path of a host vehicle by measuring range, range rate, and angle, and by calculating the vehicle’s radius of curvature.
  • Motivation to Combine: A POSITA would be motivated to incorporate Khodabhai’s teachings to solve the other known problem with ACC systems in turns: poor object discrimination. Winner’s ACC system needed a more robust way to determine if an object was truly in its path during a curve. Khodabhai provided a detailed, known solution for calculating the vehicle path and object position to make this determination.
  • Expectation of Success: Integrating Khodabhai’s path and object analysis into the Winner/Schmitt ACC system would be a predictable improvement. The combination would use Khodabhai's known methods to enhance the object detection capabilities of the primary system.

• Additional Grounds: Petitioner asserted several additional obviousness challenges that relied on the same core references. The grounds for claims 6, 8, and 9 mirrored the arguments for claims 1, 4, and 5. The grounds for claim 7 mirrored the arguments for claims 2 and 3. All grounds relied on combining known elements from the prior art to arrive at the claimed inventions.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate. It was contended that although Winner was cited in an Information Disclosure Statement (IDS) during prosecution of the ’475 patent, the Examiner never used it as a basis for rejection. Petitioner asserted that merely listing a reference in an IDS does not mean it was substantively considered by the Office, and therefore the arguments presented in the petition were not the "same or substantially the same" as those previously presented.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-12 of the ’475 patent as unpatentable under 35 U.S.C. §103.