Saturday, August 14, 2021

PTAB reversed in Carrum Technologies case; improper claim construction

The outcome was reversal:

Carrum Technologies, LLC (“Carrum”) appeals from a final written decision of the Patent Trial and Appeal Board (“Board”) holding claims 10 and 11 of U.S. Patent No. 7,925,416 (“the ’416 patent”) unpatentable over the prior art. Unified Pats. Inc. v. Carrum Techs., LLC, No. IPR2019-00481, 2020 WL 4004893 (P.T.A.B. July 15, 2020). For the reasons explained below, we reverse.

The argument

Independent claim 1 is not at issue on appeal, but the parties rely on it in their arguments on appeal. It recites “[a] method of controlling a vehicle having an adaptive cruise control system” comprising “determining when the vehicle is in a turn,” “determining a vehicle path during the turn,” “detecting an object,” “determining whether the object is in the vehicle path during the turn,” and reducing vehicle speed only if the object is in the vehicle path. See id. at col. 8, ll. 7–19. Only one prior art reference is relevant to this appeal: U.S. Patent No. 5,508,929 (“Harada”). Harada describes a vehicle control apparatus that controls a vehicle’s running conditions so that the vehicle reaches the position intended by its driver.

The Board rejected Carrum’s argument that Harada does not disclose determining a vehicle position in a turn or reducing vehicle speed on that basis. Id. at *14–16. The Board explained that Carrum misrepresented the controller limitation which does not require determining a vehicle position in a turn. Id. at *16. The Board further explained that Harada’s system detects when a vehicle is in a turn and that Harada discloses reducing vehicle speed. Id. The Board finally found that Harada suggests only a preferred alternative but does not criticize, discredit, or otherwise discourage reducing vehicle speed according to a vehicle position in the turn. Id. at *17.
Given this intrinsic evidence, we conclude that “a vehicle position in the turn” refers to the position of a vehicle along the curve of the turn. We are unpersuaded by Unified’s arguments to the contrary.

On forfeiture and waiver

First, Unified argues that Carrum forfeited and waived its right to seek a construction of “a vehicle position in the turn.” According to Unified, Carrum forfeited its new proposed construction on appeal because it presented a different construction—that “determining when the vehicle is in a turn” requires detecting—to the Board. Unified also argues that Carrum waived its new proposed construction on appeal because Carrum purportedly stated in its sur-reply to the Board that the controller limitation required no further construction. Under the doctrine of forfeiture, we generally do not consider arguments that a party failed to present to the Board. See In re Watts, 354 F.3d 1362, 1367–68 (Fed. Cir. 2004); In re Google Tech. Holdings LLC, 980 F.3d 858, 862 (Fed. Cir. 2020) (“[F]orfeiture is the failure to make the timely assertion of a right.” (quoting United States v. Olano, 507 U.S. 725, 733 (1993)). Waiver is the intentional relinquishment or abandonment of a known right. In re Google Tech., 980 F.3d at 862. We conclude that Carrum did not forfeit or waive its arguments on the proper construction of “a vehicle position in the turn.” Unified wrongly compares Carrum’s present arguments on “a vehicle position in the turn” to the dispute over the construction of “determining when the vehicle is in a turn” that is not on appeal. Carrum raised its present arguments in connection with the obviousness section of its Patent Owner Response. J.A. 1011, 1014–16. For example, Carrum argues that a skilled artisan would understand Harada to compare intended and estimated lateral displacements at a single point in time during a turn, “without regard to the vehicle’s position (i.e., entry, vertex, or exit) within the turn.” J.A. 1016.

Of the Board:

In sum, Carrum presented its arguments about the proper construction of “a vehicle position in the turn,” Unified availed itself of the opportunity to respond to those arguments, and the Board agreed with Unified. In doing so, the Board implicitly adopted a construction of the phrase at issue that is inconsistent with the phrase’s plain and ordinary meaning when read in light of the specification

Finally, Unified argues that the ’416 patent’s disclosures are “mere examples” that are not sufficient to redefine the meaning of “position.” Appellee’s Br. 31. Unified correctly states our law—non-limiting examples are not sufficient to redefine a term to have anything other than its plain and ordinary meaning. See Ancora Techs., Inc. v. Apple, Inc., 744 F.3d 732, 735 (Fed. Cir. 2014). But we reject Unified’s premise that Carrum seeks to redefine the phrase at issue. Our construction is the phrase’s ordinary and customary meaning, as understood by a skilled artisan when read in the context of the specification. Phillips, 415 F.3d at 1313. For these reasons, the Board erred in its implicit interpretation of “a vehicle position in the turn.”

The obviousness rejection went away

In view of the proper construction of “a vehicle position in the turn,” substantial evidence does not support the Board’s finding that Harada teaches the controller limitation.

A conclusory expert opinion

Unified’s expert testimony also does not provide the necessary support for the Board’s finding that Harada teaches reducing speed according to a vehicle’s position in a turn. Instead, Unified’s expert asserts, in conclusory fashion, that (a) Harada’s comparison of the intended target position and the estimated target position is the claimed vehicle position in the turn and (b) Harada reduces vehicle speed based on this comparison. J.A. 718. This expert opinion is also contrary to our construction of “a vehicle position in the turn” because a comparison of a vehicle’s intended position (where a driver wants the vehicle to be) and its estimated position (where the vehicle will be) is not the vehicle’s position in a turn (where along the curve the vehicle is). The Board erred by overlooking this shortcoming in Harada. Indeed, it found only that “Harada discloses reducing vehicle speed” and that Harada does not preclude reducing vehicle speed during a turn. Unified, 2020 WL
Of note is footnote 5

We reject Unified’s contention that Carrum’s reliance on the “e.g.” portion of the specification constitutes an improper attempt to import a limitation of only those three positions into the claim. The Latin abbreviations “e.g.” and “i.e.” have very different meanings and should not be equated when construing claims.


Post a Comment

<< Home