PTAB

PGR2019-00051

Procon Analytics LLC v. SpirEon Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Methods and Apparatus for Monitoring and Control of Electronic Devices
  • Brief Description: The ’598 patent discloses methods and systems for managing vehicle inventory for a dealer. The system uses a location device that couples to a vehicle's on-board diagnostics (OBD) port to automatically associate and disassociate the vehicle with the dealer’s inventory records stored on a remote server.

3. Grounds for Unpatentability

Petitioner argued that the ’598 patent is not entitled to its claimed priority date of July 17, 2009, because the parent application lacks sufficient written description support for the claimed "inventory management system." Petitioner asserted the effective filing date is the actual filing date of April 21, 2015, which makes the cited references, including a patent from the Patent Owner’s former CEO, valid prior art.

Ground 1: Claims 1-4, 6, and 11-13 are anticipated or obvious over Boling

  • Prior Art Relied Upon: Boling (Patent 8,452,673).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Boling, which describes a "vehicle inventory monitoring" system for a lending entity, anticipates or renders obvious every limitation of independent claim 1 and several dependent claims of the ’598 patent. Boling was alleged to disclose a method where an uninstalled monitoring device (a "location device") is first associated with a dealer's or bank's group of available devices. Upon being communicatively coupled to a vehicle via its diagnostics port, the device transmits a "connection notice" comprising a vehicle identifier (VIN) and a unique device identifier (UIN) to a central server. In response, the server's processor associates the device identifier with the vehicle identifier in a database and disassociates the device from the group of available devices, thereby automating the inventory tracking process. Petitioner provided a detailed, element-by-element comparison, contending that claim 1 of the ’598 patent is nearly identical to claim 11 of Boling.
    • Key Aspects: Petitioner emphasized that the inventor of Boling is the former CEO of the Patent Owner, and the Patent Owner was aware of Boling but failed to disclose it during prosecution of the ’598 patent.

Ground 2: Claims 3, 4, and 5 are obvious over Boling in view of Zlojutro and/or Jefferies

  • 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 built upon Boling to address claims related to handling ownership changes. Petitioner argued that while Boling taught receiving a "disconnect notice," it would have been obvious to enhance its functionality using the teachings of Zlojutro and Jefferies. Zlojutro was cited for its disclosure of a system that queries a database for current vehicle ownership information. Jefferies was cited for teaching a rental/car-share system that receives updated ownership information (e.g., a new customer), determines the vehicle has a new owner/user, creates a user account for that new owner, and associates the vehicle with that new account.
    • Motivation to Combine: A POSITA would combine these references to improve Boling's system for managing vehicle lifecycle events, such as loan payoffs, leases, or rentals, which necessitate tracking changes in ownership or authorized use. For example, a dealership would want to identify a lessee to send alerts regarding battery status or mileage overages.
    • Expectation of Success: Petitioner asserted a POSITA would have a high expectation of success, as Boling already provided the necessary database and communication infrastructure for managing vehicle and owner data, making the integration of ownership-querying and account-creation features a straightforward and predictable improvement.

Ground 3: Claims 7-10, 13, and 14 are obvious over Boling in view of Lee and/or Zlojutro

  • 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 addressed claims directed to power management features. Petitioner argued it would have been obvious to modify Boling's system with the power-saving techniques taught by Lee. Lee disclosed a telematics device that determines the vehicle's battery voltage, transmits an indication of a low battery state, and enters a power-saving or "sleep" mode to prevent draining the battery. Lee further taught that in this mode, the device could periodically wake up to query a central computer for required actions before re-entering the sleep state. Zlojutro was cited again for its teachings on retrieving ownership information.
    • Motivation to Combine: A POSITA would be motivated to combine Boling and Lee to solve the well-known problem of telematics devices draining vehicle batteries, especially for vehicles sitting in inventory for extended periods. Implementing a power-saving mode that still allows for periodic system check-ins would be a desirable and logical improvement to ensure vehicle start-up reliability while maintaining inventory control.
    • Expectation of Success: Success was expected because Boling's device already connected to the vehicle's power source via the OBD port and monitored battery voltage. Adding the software logic for a low-power mode, as explicitly taught by Lee and other references, would be a predictable implementation for a POSITA.

4. Relief Requested

  • Petitioner requested the institution of a Post Grant Review and the cancellation of claims 1-14 of Patent 10,089,598 as unpatentable.