from the United States Patent and Trademark Office, Patent
Trial and Appeal Board in No. IPR2014-00183.
Timothy M. McCarthy, Clark Hill, PLC, Chicago, IL, argued for
appellant. Also represented by David J. Marr.
Frances Lynch, Office of the Solicitor, United States Patent
and Trademark Office, Alexandria, VA, argued for intervenor.
Also represented by Thomas W. Krause, Robert McBride, Scott
Newman, Chen, and Hughes, Circuit Judges.
appeal arises from the inter partes review (IPR) of U.S.
Patent No. 6, 904, 796 (the '796 patent) owned by Bosch
Automotive Service Solutions LLC (Bosch). The Patent Trial
and Appeal Board (Board) granted the IPR petition filed by
Autel U.S. Inc. and Autel Intelligent Technology Co. Ltd.
(Autel) and instituted the IPR on claims 1, 4-15, and 20-22
of the '796 patent. Bosch filed a patent owner response
and a "contingent" motion to amend, seeking to
substitute amended claims 23-38 for original claims 1, 4-15,
and 20-22 in the event that the Board found the challenged
claims unpatentable. In its final decision, the Board found
all challenged claims unpatentable and also denied
Bosch's contingent motion to amend. Autel U.S. Inc.
v. Bosch Auto. Serv. Sols. LLC, No. IPR2014-00183, 2015
WL 2149218 (P.T.A.B. May 5, 2015) (Final Written Decision).
Bosch now appeals. For the reasons below, we affirm the
Board's finding of un-patentability of claims 1, 4-15,
and 20-22, and we vacate and remand its denial of Bosch's
motion to amend as to proposed substitute claims 23-38.
'796 patent, titled "Remote Tire Monitoring System,
" relates to a handheld tool for (i) activating remote
tire pressure monitoring system (RTMS) tire sensors and (ii)
communicating with a vehicle's RTMS receiving unit.
See '796 patent col. 1, ll. 6-8; col. 2, ll.
49-63. RTMS sensors measure air pressure in each of a
vehicle's tires and, when activated, communicate pressure
and other tire-specific information to a receiving unit in
the vehicle via radio frequency (RF) signals. Id.
col. 1, ll. 16-23. The RTMS receiving unit can then use that
information to alert the driver, via visual or audible alarm,
of a specific tire characteristic such as low tire pressure.
Id. col. 1, ll. 25-32.
to the '796 patent, different manufacturers in the RTMS
field use different types of devices and/or signals for
activating RTMS tire sensors, including magnets, valve core
depressors, continuous wave signals, and modulated signals.
Id. col. 4, l. 33 - col. 6, l. 32. These
manufacturers also use different methods to transmit data
from the tire sensor to the receiving unit, including RF
signals at particular frequencies including 315 MHz, 433 MHz,
and 916 MHz. Id. col. 2, ll. 38-48. The '796
patent's claimed activation tool is intended to work with
all of these known RTMS architectures; it incorporates, into
a single, handheld tool, all the known, different ways to
activate RTMS tire sensors as well as the different ways
known to communicate with a vehicle's receiving unit.
Id. col. 2, ll. 49-63. The '796 patent contends
that "[i]n this manner, a technician tasked to install a
new tire or to rotate tires can utilize a single tool to work
with remote tire monitoring systems made by different
manufacturers." Id. col. 2, ll. 60-63. When a
technician moves from working on one vehicle to another
vehicle that has a different RTMS activation system, the
technician can simply switch between different modes of
operation using a switch on the tool. Id. col 10, l.
66 - col. 11, l. 2.
'796 patent recites various apparatus claims drawn to
this universal activation tool and method claims for using
the tool. Claim 1 is representative of the claimed apparatus:
1. A tool comprising a plurality of means
for activating remote tire monitoring system tire sensors,
the plurality of means selected from the group consisting of
a magnet, a valve core depressor, means for generating
continuous wave signals, and means for generating modulated
signals, wherein the tool is capable of activating a
plurality of tire sensors, each of the plurality of tire
sensors utilizing a different method for activating the said
Id. col. 12, l. 64 - col. 13, l. 4. Method claim 20
is representative of the functions the claimed tool performs,
i.e., activating the sensor, receiving data from the tire
sensor, and transmitting the tire sensor data to the
RTMS's receiving unit:
20. A method, comprising the steps of:
activating a remote tire monitoring system tire sensor;
receiving a tire sensor signal containing data from the
activated tire sensor; and
transmitting some or all of the data received from the tire
sensor to a remote tire monitoring system receiving unit,
wherein the activating step, the receiving step, and the
transmitting step are all performed by a single tool, and
wherein the tool comprises a plurality of means for
activating remote tire monitoring system tire sensors.
Id. col. 16, ll. 1-10 (as amended by Certificate of
Correction dated Oct. 11, 2005).
Institution and Prior Art
7, 2014, the Board instituted review of claims 1, 4-15, and
20-22 of the '796 patent based on Autel's petition
alleging unpatentability on multiple obviousness and
anticipation grounds. Those grounds included claims 1 and 4-14
as likely obvious over the combination of European Patent
Publication No. 1 026 015 A2 (McClelland), U.S. Patent
Application Publication No. 2003/0080862 (Kranz), U.S Patent
No. 6, 414, 592 (Dixit), and British Patent No. 2305074
(Howell). The Board also instituted review of claim 15 as
likely obvious in view of the same combination of McClelland,
Kranz, Dixit, and Howell, plus two additional references. And
it instituted review of claims 20-22 as likely anticipated by
and, in the alternative, obvious over, McClelland alone.
describes an RTMS for monitoring internal pressure of a
vehicle's tires and transmitting tire pressure readings
via RF transmission to a receiving unit located in the
vehicle. The McClelland RTMS is shown in Figure 1, reproduced
shown in Figure 1, each tire (T) has its own tire monitor 12
that transmits tire pressure signals to the receiving unit
14. Receiving unit 14 provides a warning to the operator of
the vehicle when the indicated tire pressure of any tire is
outside a predetermined range.
activates each tire monitor 12 using a signal from an exciter
unit 16, comprised of a low frequency transmitter circuit 20,
high frequency receiver unit 22, and memory 26. McClelland
discloses using a low frequency signal of approximately 125
kHz for activating the tire monitors and also states that
"other frequencies or ranges of frequencies may be
suitable." J.A. 626. According to McClelland, the
exciter unit 16 may be a handheld unit carried by a service
technician and brought near the tires for activation of each
tire monitor, during assembly or servicing of the vehicle. In
particular, "[t]he operator may, for example, press a
button or otherwise activate the exciter  to energize the
tire monitor  and provide an activation signal."
J.A. 629. In response to an activation signal, the tire
monitor 12 transmits tire-specific information to the exciter
unit 16. The exciter unit 16 then communicates that
information to the receiving unit 14.
similarly discloses a system referred to as a reader for
determining whether the tires on a vehicle have low pressure.
The Kranz reader transmits a modulated frequency signal to
activate and request pressure information from RF tags
co-located with the tires. The RF tags process the request
and transmit tire information-including pressure and an RF
tag ID corresponding to a particular tire-back to the reader.
Kranz discloses that, in one embodiment, the reader is a
handheld unit with an integrated display.
discloses a tire condition sensor unit 18 at each tire to
transmit sensed tire conditions (such as temperature and
pressure) and tire location information to a vehicle-based
central unit. Dixit Figure 2, reproduced below, shows a
handheld transmitter tool 44 for communicating with RF
receiver 46 associated with each tire condition sensor unit