Keep Truckin, Inc. v. Innovative Global Systems, LLC, IPR2020-00694

• Decision Date: 21 July 2021
• Docket Number: 384 B2,157,IPR2020-00694,Patent 10
• Parties: KEEP TRUCKIN, INC., Petitioner, v. INNOVATIVE GLOBAL SYSTEMS, LLC, Patent Owner.
• Court: Patent Trial and Appeal Board

KEEP TRUCKIN, INC., Petitioner, v. INNOVATIVE GLOBAL SYSTEMS, LLC, Patent Owner.

IPR2020-00694

Patent 10, 157, 384 B2

United States Patent and Trademark Office, Patent Trial and Appeal Board

July 21, 2021

Before JUSTIN T. ARBES, JOHN F. HORVATH, and FREDERICK C. LANEY Administrative Patent Judges.

JUDGMENT

LANEY Administrative Patent Judge.

Final Written Decision Determining All Challenged Claims Unpatentable 35 U.S.C.§ 318(a)

I. INTRODUCTION

This is a Final Written Decision in an inter partes review challenging the patentability of claims 1-11 and 14-20 ("Challenged Claims") of U.S. Patent No. 10, 157, 384 B2 (Ex. 1001, "the '384 patent"). We have jurisdiction under 35 U.S.C. § 6 and enter this Decision pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons set forth below, we determine that Petitioner has shown, by a preponderance of the evidence, that claims 1-11 and 14-20 are unpatentable. See 35 U.S.C. § 316(e).

II. BACKGROUND

A. Procedural History

Keep Truckin, Inc. ("Petitioner") filed a petition for inter partes review under 35 U.S.C. §311. Paper 2 ("Pet."). Petitioner supported its Petition with the Declaration of Scott Andrews. Ex. 1003.

Innovative Global Systems, LLC ("Patent Owner") filed a Preliminary Response. Paper 6. And pursuant to 35 U.S.C. § 314, in view of the record at that time, we instituted an inter partes review of all Challenged Claims on all grounds presented in the Petition:

Claim(s) Challenged

35 U.S.C. §

References

1—6, 10, 11, 14—20

103(a)^[1]

Skeen, ^[2] Warkentin, ^[3] Transportation Regulations^[4]

8

103 (a)

Skeen, Warkentin, Transportation Regulations, Murphy ^[5]

7, 9

103 (a)

Skeen, Warkentin, Transportation Regulations, Berenz^[6]

Paper 7 ("Institution Decision" or "Inst. Dec.").

After institution, Patent Owner filed a Response, Paper 16 ("PO Resp."), supported with the Declarations of Andrew D. Smith (Ex. 2006), William T. Brown (Ex. 2007), and Alan C. Lesesky (Ex. 2009). Petitioner filed a Reply, Paper 24 ("Reply"), supported with an additional Declaration of Mr. Andrews (Ex. 1034). Finally, Patent Owner filed a Sur-reply. Paper 27 ("Sur-reply").

An oral hearing was held on April 22, 2021. A copy of the transcript is included in the record. Paper 32 ("Tr.").

B. Real Parties in Interest

Petitioner identifies Keep Truckin, Inc. as the real party-in-interest. Pet. 1. Patent Owner identifies Innovative Global Systems, LLC as the real party-in-interest. Paper 5, 2.

C. Related Matters

The parties agree there are several proceedings related to this matter. Pet. 2; Paper 5, 2. Petitioner was served with a complaint, which is captioned Innovative Global Systems, LLC v. Keep Truckin, Inc., Civil Case No. 0:19-cv-00641-MN (D. Del), that alleges infringement of the '384 patent. Pet. 2. The '384 patent was asserted also against Samsara Networks, Inc. in a separate district court action captioned Innovative Global Systems, LLC v. Samsara Networks, Inc., Civil Case No. 0:19-cv-01708-MN (D. Del.). Id. Finally, another related proceeding is the concurrently filed petition in Keep Truckin, Inc. v. Innovative Global Systems, LLC, IPR2020-00692, which challenges several claims of related U.S. Patent No. 8, 032, 277 B2. Id.

D. The '384 patent (Ex. 1001)

The '384 patent describes a system "for logging and reporting driver activity and vehicle operation." Ex. 1001, 1:8-10. In particular, it describes a system that includes an electronic logging system with an onboard recorder connected to a vehicle's data bus, which continuously monitors, obtains, and calculates the vehicle's operation data. Id. at 114-17. This operational data includes mileage, engine use, time the vehicle's engine is turned off, the vehicle's speed, and the engine's run time while the vehicle is on but not moving. Id. at 11:52-62, 12:61-13:9, 13:36-59. The system includes a transmitter, which sends vehicle operation data from the recorder to a portable handheld communications device. Id. at 16:54-17:5, 18:12-19.

The '384 patent describes using data processing software to generate a hours of service ("HOS") log. Id. at 13:60-14:3. This log is generated from the vehicle operational data obtained from the onboard recorder that is continuously connected to the vehicle's data bus, and records the vehicle operator's duty status, such as whether the operator is on or off duty and whether an on-duty operator is driving or not driving. Id. at 13:1-24. In creating the log, a recorder "continuously calculates the time the driver has been in each duty status over the course of a day." Id. at 13:17-19. Additionally, the log includes the total hours on duty for seven days, total hours on duty for eight days, and the driver's changes in duty status, as well as the time the duty status changes occurred. Id. at 13:19-14:3. The log can be used to determine whether a driver was in compliance with hours of service regulations. Id. at 13:10-13. "By continuously emitting a signal indicating the compliance status of the driver, [the system] provides a way whereby authorized federal, state or local officials can immediately check the status of a driver's hours of service." Id. at 1442—45.

E. Illustrative Claims

Of the Challenged Claims, claims 1 and 14 are independent. Claims 2-11 depend from claim 1; claims 15-20 depend from claim 14. Claim 1, reproduced below, ^[7] illustrates the subject matter of the challenged claims:

1. [1 preamble] An onboard electronic system for logging and reporting driver activity and operation data of a vehicle, said system comprising:

[1a] an onboard recorder adapted for continuously connecting to a data bus of the vehicle to continuously monitor, obtain and calculate vehicle operation data comprising mileage data, engine use data, time the engine is turned off, speed of the vehicle, and time the engine remains on while the vehicle is not moving, and said onboard recorder comprising a processor, a transmitter, and a memory device for recording and storing said vehicle operation data;

[1b] said transmitter adapted for transmitting said vehicle operation data from said onboard recorder to a portable handheld communication device;

[1c] data processing software operable on the handheld

communications device comprising a processor and a display, said data processing software utilized to generate a hours of service log using said vehicle operation data continuously monitored, obtained and calculated from the data bus of the vehicle, and to present the hours of service log in a grid form on the display, the hours of service log comprising a driver's total hours driven today, total hours on duty today, total miles driven today, total hours on duty for seven days, total hours on duty for eight days, and the driver's changes in duty status and the times the duty status changes occurred, whereby the driver's hours of service log is applicable for comparison to a hours of service regulation to determine a compliance status of the driver; and

[1d] a compliance signal emitted by said transmitter and indicating whether said onboard recorder is functioning to record vehicle operation data needed to generate the driver's hours of service log, such that the compliance status of the driver can be accurately determined, and in the event of a malfunction of said onboard recorder, said compliance signal is adapted for activating a visual indicator to the driver signifying an out-of-compliance condition of said onboard recorder.

Ex. 1001, 23:7—45. Independent claim 14 is identical to claim 1, except the preamble of claim 14 recites "incorporating" the onboard electronic system into "a commercial motor vehicle." See id. at 25:1-26:6.

III. ANALYSIS

We have reviewed the parties' respective briefs as well as the relevant evidence discussed in those papers. Petitioner contends the disclosures of Skeen, Warkentin, Transportation Regulations, Murphy, and Berenz, as a whole, demonstrate that the recited combinations of elements in the Challenged Claims would have been obvious at the time of the invention to a skilled artisan. Patent Owner asserts several defects and gaps exist with Petitioner's contention, preventing Petitioner from establishing the unpatentability of the Challenged Claims. In particular, Patent Owner asserts Petitioner's contention is defective because it relies on an unqualified expert (Mr. Andrews) and because it relies on non-analogous art (Skeen). In addition, Patent Owner argues that there are evidentiary gaps in Petitioner's patentability challenge because none of the references, alone or in combination, disclose claimed subject matter in claim elements [1c]/14[c] and [1d]/14[d]. Nor does Petitioner articulate sufficient reasoning for why a skilled artisan would have combined the disclosures from the references in the manner claimed. Patent Owner does not separately address Petitioner's challenge of the dependent claims. For the reasons discussed in detail below, we are persuaded that Petitioner has shown by a preponderance of the evidence that the Challenged Claims of the '384 patent are unpatentable under 35 U.S.C. § 103.

A. Principles of Law

To prevail in its challenges to the patentability of all claims of the '384 patent, Petitioner must demonstrate by a preponderance of the evidence that the claims are unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d) (2019). "In an [inter partes review] the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable." Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (2012) (requiring inter partes review petitions to identify "with particularity ... the evidence that supports the grounds for the challenge to each claim")). This burden...