PTAB

PGR2019-00051

Procon Analytics, LLC v. Spireon, Inc.

Title: Methods and Apparatus for Monitoring and Control of Electronic Devices
Brief Description: The ’598 patent describes a vehicle inventory management system. The system uses a location device that couples to a vehicle's on-board diagnostic (OBD) port to retrieve a vehicle identifier (VIN). Upon connection, the device transmits its own identifier and the VIN to a remote server, which automatically updates a database to associate the device with the vehicle for dealer inventory tracking.

Priority Date Challenge: A central argument of the petition is that the ’598 patent is not entitled to its claimed priority date from the parent ’325 application. Petitioner contended that the parent application, which describes general telemetry systems, fails to provide adequate written description support under 35 U.S.C. §112 for the specific vehicle inventory management methods claimed in the ’598 patent. Specifically, the parent application allegedly does not disclose key features like determining vehicle ownership or monitoring battery voltage. Petitioner argued the effective filing date for all challenged claims is therefore the actual filing date of the continuation-in-part application, April 21, 2015, making all asserted prior art references, including the primary reference [Boling](https://ai-lab.exparte.com/case/ptab/PGR2019-01000/doc/1005), valid.

Prior Art Relied Upon: Boling (Patent 8,452,673).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Boling discloses every limitation of independent claim 1. Boling describes a vehicle inventory monitoring system for a lending entity that manages devices both before and after installation. The petition mapped limitations by arguing Boling teaches: (1) associating an uncoupled location device (with a Unique Identification Number, or UIN) with a dealer's inventory in a database; (2) coupling the device to a vehicle's OBD port; (3) transmitting a "connection notice" comprising the VIN and the device's UIN to a central server; and (4) in response, the server's processor associates the device with the vehicle and disassociates it from the pool of available devices. Petitioner asserted that claim 11 of Boling is nearly identical to claim 1 of the ’598 patent.
- Key Aspects: The inventor of Boling was the one-time CEO of Spireon (the Patent Owner), and Petitioner argued that Spireon was aware of Boling but failed to disclose it during prosecution of the ’598 patent.

Prior Art Relied Upon: Boling (Patent 8,452,673), Zlojutro (Application # 2013/0033386), and Jefferies (Patent 8,768,565).
Core Argument for this Ground:
- Prior Art Mapping: This ground builds on Boling to address dependent claims related to ownership changes. Petitioner argued Zlojutro teaches querying a database for vehicle ownership information upon receiving a communication from a vehicle. Jefferies was cited for its disclosure of a rental/car-share system that receives updated ownership information (e.g., a new customer's identifier) and creates a user account for the new owner/user.
- Motivation to Combine: A POSITA would combine Boling with Zlojutro or Jefferies to add necessary functionality for managing vehicle leases or rentals. For instance, after a vehicle loan is paid off (an event contemplated in Boling), the system would need to handle the change in ownership status. Jefferies provides a known method for managing temporary "ownership" by renters, including creating user accounts, which would have been a predictable solution to implement in Boling’s inventory system.
- Expectation of Success: A POSITA would have a reasonable expectation of success because Boling’s system already included the necessary components (server, database, vehicle-specific data) to query and update ownership information.

Prior Art Relied Upon: Boling (Patent 8,452,673), Lee (Patent 9,635,518), and Zlojutro (Application # 2013/0033386).
Core Argument for this Ground:
- Prior Art Mapping: This ground addresses claims related to power management and battery monitoring. While Boling teaches that its device is powered by the vehicle, Lee was cited for explicitly teaching a telematics device that monitors vehicle battery voltage, transmits a low-battery-state indication to a management system, and enters a power-saving or "sleep" mode to reduce battery drain. Lee further discloses that in this low-power mode, the device can wake periodically to query the server for required actions before re-entering the sleep state.
- Motivation to Combine: A POSITA would be motivated to incorporate Lee's power-saving features into Boling's telematics device to solve the known and common problem of vehicle battery drain from aftermarket devices. Scheduling maintenance or preventing a dead battery are predictable reasons to add such functionality.
- Expectation of Success: Success would be expected because implementing power-saving logic and low-voltage alerts was a well-known technique in vehicle telematics at the time. Boling's device already connected to the vehicle's power source, making the addition of voltage monitoring a straightforward modification.

Petitioner requests institution of Post Grant Review and cancellation of claims 1-14 of the ’598 patent as unpatentable.