PTAB

IPR2021-00457

Mercedes Benz Grand Prix Ltd Daimler AG v. Nygaard Jens Halstein Seeberg

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Strengthening Member for a Road Vehicle
  • Brief Description: The ’178 patent discloses a strengthening member for a road vehicle, designed to provide structural support to the vehicle or windscreen without obstructing the driver's vision. The invention is characterized by the member having the specific form of a triangular prism that has been sheared or a truncated sheared triangular pyramid.

3. Grounds for Unpatentability

Ground 1: Claims 1-11 are anticipated by or obvious over DeRuffi

  • Prior Art Relied Upon: DeRuffi (European Published Application No. EP0686543A1).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that DeRuffi, which was not considered during prosecution, discloses every limitation of the challenged claims. DeRuffi teaches windshield support uprights for a vehicle that function as strengthening members. These uprights are disclosed as an "open-worked lattice structure" comprising "at least three longitudinal members" in a triangular arrangement, connected by inclined spacers. Petitioner contended this structure inherently possesses the claimed "form of a triangular prism which has been sheared in a vertical plane." The uprights are fixed to the vehicle body, extend in front of the driver's position, and are dimensioned to prevent vision obstruction by ensuring an object is not masked from both of the driver's eyes simultaneously. For dependent claims, Petitioner mapped DeRuffi's disclosure of the uprights as A-pillars (claim 3), the use of non-horizontal "spacers" (claim 9), and a width for the longitudinal members explicitly stated to be less than the average interpupillary distance of 64 mm, which satisfies the claimed "not exceeding 65 mm" limitation (claim 10).
    • Motivation to Combine (for §103 grounds): This ground was primarily asserted as anticipation under 35 U.S.C. §102. In the alternative, for obviousness, Petitioner argued a person of ordinary skill in the art (POSITA) would have been motivated to apply the clear teachings of DeRuffi for their stated purposes of providing rigidity and maintaining visibility.
    • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success as DeRuffi explicitly teaches a complete, functional vehicle support structure with all the claimed features, solving the same technical problems.

Ground 2: Claims 1, 4, and 5-7 are anticipated by or obvious over Dean

  • Prior Art Relied Upon: Dean (Patent 2,242,746).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Dean, also not considered during prosecution, discloses a central "division pillar" for an automobile windshield that anticipates the claims. The pillar provides structural strength, is fixed to the vehicle's cowl and frame, and is positioned in front of the driver. Dean's pillar is described as being thin to minimize visual obstruction. Petitioner argued that the pillar's triangular cross-section, which extends the length of the windshield, meets the "form of a triangular prism which has been sheared" limitation, for instance, by having its back face "sheared" off. Dependent claims were mapped to Dean's disclosure of the pillar being mounted within the passenger compartment (claim 5), extending between the vehicle's front structure and the top of the windshield frame (claim 6), and using a "rubber channel frame" that separates the glass from the pillar core, thus satisfying the non-contact limitation (claim 7).

Ground 3: Claims 1, 4, and 5-7 are anticipated by or obvious over C&D

  • Prior Art Relied Upon: C&D (Car and Driver magazine, Nov. 1998).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued the C&D article, describing the Mosler Raptor road car, discloses an anticipating center pillar for a "split-pane windshield." This pillar acts as a strengthening member, is fixed to the vehicle's body crossmember and roof, and is positioned in front of the driver's seat. The article's photos show the pillar is a narrow strip, minimizing visual intrusion. Petitioner contended the pillar's shape, which comes to a point at the front and has a flat back facing the driver, forms a triangular prism that can be considered "sheared." The pillar's mounting within the passenger compartment (claim 5) and its extension from the front body crossmember to the roof frame (claim 6) were mapped to dependent claims. Furthermore, the article's mention of "black caulking" sealing the windshield was argued to meet the non-contact limitation of claim 7.

4. Key Claim Construction Positions

  • “extending in front of the driver’s position”: Petitioner argued the patentee acted as their own lexicographer by explicitly defining this term in the specification. The proposed construction, based on the patent’s definition, is "located ahead of the driver’s position, along the longitudinal axis of the vehicle, when seen in side view," which does not require the member to be placed directly in front of the driver.
  • “front windscreen”: Petitioner asserted this term should be construed to mean “front windshield.” This construction is based on the consistent use of other British terminology (e.g., “bonnet,” “centre”) throughout the ’178 patent and is supported by dictionary definitions.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial under Fintiv by highlighting that the co-pending district court case was in a very early stage. At the time of filing, fact discovery had not begun, and a trial was scheduled for April 2022. Petitioner contended an IPR trial would conclude around the same date, and that the prior art presented in the petition had never been considered by the USPTO, weighing in favor of institution.

6. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-11 of the ’178 patent as unpatentable.