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Bosch Automotive Service Solutions, LLC v. Matal

United States Court of Appeals, Federal Circuit

December 22, 2017

BOSCH AUTOMOTIVE SERVICE SOLUTIONS, LLC, Appellant
v.
JOSEPH MATAL, PERFORMING THE FUNCTIONS AND DUTIES OF THE UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR, U.S. PATENT AND TRADEMARK OFFICE, Intervenor

         Appeal 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 Weidenfeller.

          Before Newman, Chen, and Hughes, Circuit Judges.

          CHEN, CIRCUIT JUDGE.

         This 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.[1] 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.

         BACKGROUND

         I. The '796 Patent

         The '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.

         According 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.

         The '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 tire sensor.

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).

         II. IPR Institution and Prior Art

         On May 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.[2] 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.

         A. McClelland

         McClelland 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 below:

         (Image Omitted)

         As 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.

         McClelland 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 [16] to energize the tire monitor [12] 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.

         B. Kranz

         Kranz 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.

         C. Dixit

         Dixit 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 18.

         (Image ...


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