PTAB

IPR2024-00786

Toyota Motor Corp v. Emerging Automotive LLC

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: Setting and Transferring User Profiles to Vehicles
  • Brief Description: The ’268 patent relates to systems for setting and transferring a user-specific profile to different vehicles. The invention aims to overcome vehicle-specific settings by identifying "applicable settings" from a user profile that are also compatible with the selected vehicle's capabilities, allowing for seamless personalization across multiple cars.

3. Grounds for Unpatentability

Ground 1: Claims 10, 11, 13, and 15-19 are anticipated under 35 U.S.C. §102 by Xiao.

  • Prior Art Relied Upon: Xiao (Application # 2012/0164989).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Xiao, which teaches a "wireless automobile key service," discloses every limitation of independent claim 10. Xiao’s system uses a server to receive a command request to customize vehicle settings (e.g., climate, audio) based on a stored "operator profile." Petitioner contended that Xiao's use of vehicle-specific "command codes" to implement these preferences inherently discloses the claimed "compatibility" feature. Specifically, Xiao's server looks up the appropriate command code from a library based on both the vehicle's ID and the user's desired setting, thus determining an applicable setting that is compatible with the selected vehicle.
    • Key Aspects: The core of the anticipation argument rested on the assertion that Xiao’s mechanism for selecting a vehicle-specific command code to execute a user preference is functionally identical to the ’268 patent’s central concept of determining "compatible" settings.

Ground 2: Claims 10, 11, 13, and 15-19 are obvious under 35 U.S.C. §103 over Xiao in view of Hayashi.

  • Prior Art Relied Upon: Xiao (Application # 2012/0164989), Hayashi (Japanese Application # 2012-076627).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that if Xiao is found not to explicitly teach the "compatibility" determination, Hayashi provides this element. Hayashi discloses a database that stores different operating methods for various vehicle functions based on specific vehicle models. It explicitly addresses vehicle heterogeneity by mapping functions to methods and using a "none" indicator for incompatible function-vehicle pairs, thereby teaching an explicit compatibility check.
    • Motivation to Combine: A POSITA would combine Hayashi's explicit compatibility-checking database structure with Xiao's user profile system to improve system reliability. This combination would prevent Xiao's server from sending commands for functions a vehicle does not support, thus avoiding errors and unpredictable vehicle behavior.
    • Expectation of Success: A POSITA would have a high expectation of success, as integrating Hayashi's database logic into Xiao's system would be a straightforward modification. This could be achieved by adding a compatibility field or a "none" indicator to Xiao's existing command code tables.

Ground 3: Claim 12 is obvious over Xiao in view of Patenaude.

  • Prior Art Relied Upon: Xiao (Application # 2012/0164989), Patenaude (Application # 2006/0136106).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that claim 12 adds limitations related to generating "learned settings" by analyzing a "history of use." While Xiao provides the base system for applying user profiles, Patenaude teaches a method for determining a user's entertainment preferences by monitoring selections over time, identifying patterns, and automatically activating entertainment units based on this learned profile.
    • Motivation to Combine: A POSITA would combine Patenaude's learning capabilities with Xiao's profile system to enhance user convenience, a goal shared by both references. Automating the process of updating user profiles based on learned behavior, rather than requiring manual user input, represented a well-known path for improving user experience in such systems.
    • Expectation of Success: Success would be expected because implementing a known pattern-recognition algorithm to predict user preferences and update a server-stored profile was a well-understood technique. The combination would yield the predictable result of a more convenient and automated vehicle personalization system.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including that claim 14 is obvious over Xiao in view of Singh (Application # 2007/0255464) for teaching profile deactivation and returning settings to neutral, and that claim 20 is obvious over a combination of Xiao, Hayashi, and Patenaude. These grounds relied on similar motivations to improve user experience, convenience, and system reliability.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under Fintiv is not warranted. Key factors cited included that the district court trial is scheduled for July 2025, well after a potential Final Written Decision, and the court's investment in the case is currently minimal. Petitioner also stipulated it will not pursue the same grounds in the parallel litigation if the IPR is instituted and argued the petition presents strong merits with non-cumulative prior art not considered during prosecution.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 10-20 of the ’268 patent as unpatentable.