PTAB

IPR2023-00031

American Honda Motor Co Inc v. Intellectual Ventures II LLC

Key Events

Petition

Title: System for Notifying a Recipient of a Violation by a Driver of a Vehicle
Brief Description: The ’475 patent relates to an in-vehicle computing device that determines when a driver has committed a traffic violation, such as speeding, and transmits a notification of the violation to a remote computing system for viewing by a designated recipient.

Prior Art Relied Upon: Flick (Application # 2002/0158778).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Flick disclosed a complete vehicle tracking and alerting system that meets all limitations of the challenged claims. Flick’s in-vehicle tracking unit included a GPS to determine vehicle information (location, speed), a controller (CPU) to determine that a speeding violation occurred based on a preset speed threshold, and a wireless communications device to send an alert message to a remote monitoring station. The monitoring station was configured to then notify a recipient (subscriber) about the violation via computer or telephone, thereby satisfying the limitations of independent claims 1, 8, and 15.

Prior Art Relied Upon: Flick (Application # 2002/0158778), Mittelsteadt (Patent 6,556,905).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner asserted that Flick taught the base system for vehicle violation monitoring, while Mittelsteadt explicitly taught the limitation missing from Flick required by claims 3 and 10: determining a violation based on vehicle speed exceeding a posted speed limit. Mittelsteadt disclosed a vehicle monitoring system where a CPU uses GPS location data to access a road-map database containing posted speed limits and calculates if a driver is exceeding that limit.
- Motivation to Combine: A POSITA would combine Mittelsteadt’s use of posted speed limits with Flick's alert system to improve the system’s accuracy and utility. This combination would provide more meaningful violation alerts tied to actual traffic laws rather than arbitrary thresholds, directly advancing the shared goal of both references to make roadways safer and lessen abusive driving.
- Expectation of Success: The integration was argued to be predictable. Combining a known method for determining legal speed limits (Mittelsteadt) with a known system for reporting violations (Flick) involved applying established technologies for their intended purposes and would have yielded the predictable result of a more context-aware alert system.

Prior Art Relied Upon: Fernandez (Patent 6,748,322).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Fernandez disclosed a speed monitoring device that anticipated all challenged claims. The system included an in-vehicle computing device (comprising a GPS, computerized unit, memory, and transceiver) that determined vehicle information. The computerized unit determined a speeding violation by comparing the vehicle's speed and position against a database of "maximum speed limits for certain geographical areas." Upon detecting a violation, the system sent a signal via a transceiver to a remote station, which then generated and transmitted an output message to a recipient via the internet ("INTERNET WWW") or a public telephone network.
Additional Grounds: Petitioner asserted additional obviousness challenges, including combining Flick with Treyz (Patent 6,526,335) to add browser-based violation viewing, a three-way combination of Flick, Mittelsteadt, and Treyz, and an alternative obviousness ground over Fernandez alone.

Petitioner argued that the "module" terms in claims 15 and 20 ("information module," "processing module," "transmission module") should be interpreted under their plain and ordinary meaning.
In the alternative, should the Board construe these terms as means-plus-function limitations under 35 U.S.C. §112, ¶6, Petitioner proposed constructions based on corresponding structures from the ’475 patent's specification. These structures included a GPS receiver for the "information module," a microprocessor for the "processing module," and various hardwired or wireless connectivity components (e.g., WiFi, cellular) for the "transmission module."

Petitioner argued that discretionary denial under Fintiv would be inappropriate, asserting first that the petition presented compelling evidence of unpatentability, which under recent USPTO guidance weighs against denial.
Separately, Petitioner contended that the Fintiv factors strongly favor institution. The arguments included that the parallel district court litigation was in a very early stage (focused on a motion to transfer venue), no trial date was set, and there had been minimal investment by the court and parties. Critically, Petitioner stipulated that, if the IPR is instituted, it will not pursue in the related litigation the same grounds raised in the Petition.

Petitioner requests institution of an inter partes review and cancellation of claims 1-20 of Patent 9,291,475 as unpatentable.