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 #: IPR2019-00905
• Patent #: 7,925,416
• Filed: April 20, 2019
• Petitioner(s): BMW OF NORTH AMERICA, LLC
• Patent Owner(s): CARRUM TECHNOLOGIES, LLC
• Challenged Claims: 1-14

2. Patent Overview

• Title: Automatic Lateral Acceleration Limiting and Non Threat Target Rejection
• Brief Description: The ’416 patent discloses a method and system for an adaptive cruise control (ACC) system in a vehicle. The system is designed to improve performance in turns by detecting a turn based on lateral acceleration, reducing speed according to the vehicle's position in the turn, and distinguishing between in-path and out-of-path objects to prevent unnecessary braking.

3. Grounds for Unpatentability

Ground 1: Obviousness over BMW Brochure and AAPA - Claims 1, 6, and 9 are obvious over the BMW Brochure in view of Applicant Admitted Prior Art (AAPA).

• Prior Art Relied Upon: BMW Brochure (a printed publication describing BMW's ACC system, disseminated before March 2004) and AAPA from the ’416 patent specification.
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the BMW Brochure taught all limitations of independent claim 1 except for "ignoring the object for braking purposes if the object is determined not to be in the vehicle path." The Brochure's ACC system used a radar sensor and data from a Dynamic Stability Control (DSC) unit, including lateral acceleration, to project a vehicle's path around a curve and reduce speed if an in-path object was detected. The AAPA, taken from the ’416 patent's own background section, allegedly supplied the missing element by acknowledging that a known problem with prior art ACC systems was unnecessary braking for out-of-path objects, which caused driver discomfort. Dependent claims 6 (reducing speed when lateral acceleration exceeds a limit) and 9 (measuring lateral acceleration) were also allegedly taught by the Brochure's disclosure of a DSC system that monitors a stream of data including the lateral acceleration rate.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would have been motivated to combine the Brochure's system with the problem described in the AAPA. Specifically, a POSITA would seek to solve the known problem of unnecessary braking for out-of-path targets by modifying the Brochure's system to ignore such targets, a straightforward solution to improve system performance and driver comfort.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because the Brochure already taught a system capable of distinguishing between in-path and out-of-path targets; modifying it to ignore the latter for braking purposes was presented as a predictable improvement.

Ground 2: Obviousness over BMW Brochure, AAPA, and Ishizu - Claims 2 and 3 are obvious over the BMW Brochure and AAPA in view of Ishizu.

• Prior Art Relied Upon: BMW Brochure, AAPA, and Ishizu (Application # 2001/0044691).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon Ground 1 for the limitations of claim 1. To meet the additional limitations of dependent claims 2 and 3, Petitioner relied on Ishizu. Ishizu was argued to teach a speed control system that can calculate lateral acceleration using vehicle speed and yaw rate data. Claim 2 requires measuring vehicle speed and yaw rate, while claim 3 requires using that data to calculate lateral acceleration. Ishizu allegedly disclosed a system with a vehicle speed sensor and a yaw-rate sensor, and explicitly provided equations for deriving lateral-G (lateral acceleration) from vehicle speed and processed yaw rate.
  • Motivation to Combine: A POSITA would combine Ishizu with the Brochure/AAPA system to improve the accuracy of the turn determination. While the Brochure taught using a lateral acceleration sensor, a POSITA would know that using a second, independent method for calculating lateral acceleration (as taught by Ishizu) would increase confidence in the system's measurements and lead to more reliable path projection.
  • Expectation of Success: The combination was asserted to be predictable because both the Brochure and Ishizu operated in the same field of vehicle control systems, and using redundant sensor inputs (direct measurement and calculation) to improve system reliability was a well-known engineering principle.

Ground 3: Obviousness over BMW Brochure, Schmitt, and Khodabhai - Claims 10-12 are obvious over the BMW Brochure in view of Schmitt and Khodabhai.

• Prior Art Relied Upon: BMW Brochure, Schmitt (Patent 6,456,924), and Khodabhai (Patent 5,959,569).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground addressed independent system claim 10. Petitioner argued the BMW Brochure taught most elements, including an ACC system with a controller, a lateral acceleration sensor, and an object detection sensor. Schmitt was introduced to teach a "controller operative to reduce the vehicle speed according to a vehicle position in the turn." Schmitt disclosed a traction control system that detects a curve based on lateral acceleration and reduces engine power or applies brakes to improve stability. Khodabhai was introduced to teach specific "means for" limitations in dependent claims 11 and 12, including generating object range and angle signals and determining a radius of curvature.
  • Motivation to Combine: A POSITA would combine Schmitt with the Brochure to address the known safety risk of excessive lateral acceleration in turns, a problem explicitly mentioned in the ’416 patent's AAPA. Schmitt provided a known solution: reducing speed based on the vehicle’s position in the turn. A POSITA would integrate Khodabhai's detailed path-calculation techniques to improve the object detection and path-projection capabilities of the Brochure's ACC system.
  • Expectation of Success: Success was expected because the references all relate to automotive safety and control systems. Integrating Schmitt’s speed-in-turn logic and Khodabhai’s object analysis into the Brochure’s ACC framework was argued to be a combination of known elements to achieve a predictable result.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations of the BMW Brochure, AAPA, Ishizu, and Khodabhai to address claims 4, 5, 7, and 8, and a combination of the Brochure, Schmitt, Khodabhai, and Ishizu for claims 13 and 14. These grounds relied on similar rationales, using Ishizu to add yaw-rate calculations and Khodabhai to add more detailed object-detection parameters (e.g., filtering data, measuring object range/angle) to improve the accuracy and robustness of the base system.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) was unwarranted. The petition addressed the General Plastic factors, contending they favored institution despite a prior IPR filed by a different party (Unified Patents) against the ’416 patent. Petitioner argued that as an actual defendant in a co-pending district court litigation, its interests were different from the prior petitioner. It also asserted that it was not relying on the same prior art or arguments, that its petition was filed well before the patent owner’s preliminary response in the earlier IPR, and that instituting this IPR would not strain the Board's resources.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-14 of the ’416 patent as unpatentable.