EquipMentshaRECom Inc v. Ahern Rentals Inc

1. Case Identification

• Case #: IPR2021-00834
• Patent #: 9,193,330
• Filed: May 4, 2021
• Petitioner(s): Equipmentsharecom Inc.
• Patent Owner(s): Ahern Rentals, Inc.
• Challenged Claims: 1-3, 7-13, 17-20

2. Patent Overview

• Title: Method and System for Controlling and Monitoring Operation of a Device
• Brief Description: The ’330 patent discloses a method and system for controlling and monitoring rental equipment, such as construction machinery or vehicles. The system uses a keyless start arrangement and requires an operator to enter an access code via a keypad, which is then compared to a stored authorization code to permit or deny operation of the equipment.

3. Grounds for Unpatentability

Ground 1: Claims 1, 3, 9-11, 13, 19-20 are obvious over Shibata in view of Kaman.

• Prior Art Relied Upon: Shibata (Application # 2003/0137398) and Kaman (Patent 5,661,246).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Shibata discloses a security system for rental construction machines that meets most limitations of the challenged claims. Shibata’s system includes a remote management source (a rental company server) that communicates an authorization code (PIN) to a processor on the machine. An operator enters an access code via a cell phone keypad, and the processor compares the codes to authorize engine start. Kaman was cited to supply the limitations of "locking out operation" and "logging in the actual duration of time the machine was in use." Kaman discloses a central computer that can send a lock-out command to a vehicle's security system and a controller that logs the vehicle's usage time.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Kaman’s security and monitoring features into Shibata’s rental system to improve its commercial utility. Specifically, a POSITA would be motivated to add Kaman’s lock-out feature to prevent theft and its usage logging feature to monitor rental compliance and schedule maintenance, which are predictable solutions for managing a fleet of rental equipment.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in this combination, as it involves integrating known vehicle security and monitoring functions into a similar existing system for their intended purposes.

Ground 2: Claims 1, 3, 7, 10-11, 13, 17, 20 are obvious over Chase in view of Cheung and Kaman.

• Prior Art Relied Upon: Chase (Application # 2003/0034873), Cheung (Patent 4,438,752), and Kaman (Patent 5,661,246).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Chase teaches an automated car-sharing system that functions as the claimed rental machine system. Chase discloses a central server (remote management source) that communicates reservation information, including authorization codes (PIN and card IDs), to a processor in the vehicle. The processor enables the ignition based on these codes. If Chase were deemed not to teach a keyless start arrangement explicitly, Cheung was cited for its disclosure of a keypad-based keyless ignition system. As in Ground 1, Kaman was cited to provide the lock-out and usage-duration logging functionalities.
  • Motivation to Combine: A POSITA would combine Cheung with Chase to implement a conventional and reliable keypad-based keyless start system, avoiding the need for physical keys. A POSITA would further incorporate Kaman’s features for the same reasons as in Ground 1: to enhance security against unauthorized use and to add robust fleet management capabilities by logging usage duration for billing and maintenance purposes.
  • Expectation of Success: The combination would have been straightforward for a POSITA, as it involves applying known technologies (keypad ignition, lock-out commands, usage logging) to an analogous vehicle rental system to achieve predictable benefits.

Ground 3: Claims 1-3, 7-13, 17-20 are obvious over Harvey in view of Cheung and Kaman.

• Prior Art Relied Upon: Harvey (Application # 2009/0219135), Cheung (Patent 4,438,752), and Kaman (Patent 5,661,246).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that Harvey, which was considered during the patent’s prosecution but not in this combination, discloses a system for controlling and monitoring rental equipment. Harvey’s system includes a remote server that communicates a digital key code to a processor in the vehicle to authorize operation, thereby teaching the core elements of the challenged claims. Cheung was again cited to explicitly teach a keyless start arrangement using a keypad. Kaman was cited to supply the lock-out and usage-duration logging limitations.
  • Motivation to Combine: A POSITA would be motivated to modify Harvey's system with Cheung’s keyless start to eliminate physical keys and with Kaman’s lock-out and logging features to provide enhanced security and fleet management. The motivation stems from the known benefits of these features in the context of managing rental equipment.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in combining these references, as it represents the application of conventional solutions to solve known problems in the field of vehicle and equipment rental management.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations of Shibata/Kaman with Chase or Bernosky, and combinations of Chase/Cheung/Kaman with Bernosky or Ehrman, which relied on similar teachings and motivations for adding features like lock-out after multiple failed PIN entries or service monitoring.

4. Key Claim Construction Positions

• "Lock(-)Out"/"Locking(-)Out" (Claims 1-2, 6, 8, 10-12, 16): Petitioner proposed this term be construed to mean "not allowing any user to access and/or operate the machine." This construction was argued to be consistent with the specification’s description of a mode where all users are locked out until an administrator clears the flag. This construction distinguishes a simple denial of access from a complete, persistent lock-out, a feature Petitioner argued is taught by Kaman.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) was unwarranted because the petition presented prior art and arguments substantially different from those considered during prosecution. Specifically, the primary references of Shibata and Chase were not before the examiner.
• Petitioner further argued against discretionary denial under §314(a) based on the Fintiv factors. Petitioner contended that the parallel district court litigation was in its early stages, with a trial date far enough in the future to allow for a Final Written Decision (FWD) beforehand. Petitioner also stipulated that, if the IPR is instituted, it would not pursue the same grounds or any grounds that it reasonably could have raised in the IPR in the district court litigation.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-3, 7-13, and 17-20 of the ’330 patent as unpatentable.