Institution Denied Based On Written Description in “Alternative Embodiments” | Jones Day
On September 21, 2023, the PTAB denied United Services Automobile Association’s petition to institute inter partes review of Auto Telematics’s U.S. Patent No. 9,633,487. IPR2023-00519, Paper 10.
The ’487 patent relates generally to a mobile phone application that can be used in a vehicle for logging driving data, such as speed data and videos. Mobile phones present a less expensive alternative to data-logging, which is useful for determining the cause of traffic accidents and monitoring for unsafe driving. Relevant here, the ’487 patent’s claims recite “determine, based on the inputs received by the user interface and sensor data from the device’s sensor set, a start of a driving period”, which allows the mobile phone to avoid unnecessary data-logging when the vehicle is not being driven. In addition, the claims further recite “wherein the driving information is derived without data from vehicle sensors,” because the patented invention relies on the mobile phone’s sensors rather than vehicle sensors.
Petitioner United Services Automobile Association challenged the ’487 patent’s claims as obvious over two patents. In its Preliminary Response, Patent Owner Auto Telematics argued in rebuttal that the two patents relied on by Petitioner were not prior art because the ’487 patent claimed priority to three parent applications that predated the two patents. In response, Petitioner argued that there was no written description support in the parent applications for the challenged claims. Consequently, the central issue in dispute at institution was whether the challenged claims were supported by written description in the parent applications.
The PTAB focused on two limitations of the challenged claims for written description. The first limitation requires that a mobile phone within a vehicle use inputs from a user to determine when the vehicle started to drive. Petitioner contended that the parent applications taught embodiments that determined when the vehicle was driving without user input. Petitioner further argued that, from the perspective of an insurance company, allowing a driver to control when the device was logging data would defeat the purpose of monitoring a vehicle for unsafe driving. Conversely, Patent Owner pointed to an embodiment disclosed in the parent applications in which a user could press a start/stop button to control recording.
Though the PTAB agreed with Petitioner that the parent applications contain “alternative embodiments” where a user may not choose to enable or disable data-logging, the PTAB ultimately sided with Patent Owner. In doing so, the PTAB noted that there was no reason that the alternative embodiment cited by Petitioner detracted from the other disclosures, including those cited by Patent Owner. In addition, the PTAB credited Patent Owner’s expert, who testified that in the real world, a user’s control may be restricted as a matter of safety to avoid distractions when, for instance, a vehicle is in motion. In that scenario, the mobile phone relies on both sensors and user input for determining when a vehicle is driving.
The second limitation analyzed by the PTAB requires that the mobile phone derive driving information without using data from the vehicle’s sensors. The parties agreed that this was a negative limitation. Petitioner contended that the parent applications did not exclude the use of vehicle sensors or provide a reason for why the invention would exclude such use. Patent Owner countered that one of the parent application’s disclosure of using smartphones with “richer” sensors implies to a person of skill in the art that there are less rich sensors, which would be understood as the vehicle’s sensors.
Again, the PTAB found that Patent Owner’s position was better supported. The PTAB explained that elements can be both positively recited in the specification and expressly excluded in the claims. Turning to the parent applications’ specifications, the PTAB discussed that a mobile phone sensor was used in an embodiment to derive driving information such as driving speed and G-force, even though the phone’s screen was turned off. The PTAB further found that the parent applications disclosed that the vehicle odometer collected data independently from the mobile phone and could be used to confirm that the mobile phone was accurately tracking the driving information. Accordingly, the parent applications provided a reason for excluding the use of vehicle sensors, as required under the standard for adequately-supported negative limitations, by disclosing that the mobile device sensors may or may not be used with the vehicle sensors.
Takeaways: In analyzing written description for determining priority, the PTAB will take into account each of the embodiments in parent applications — independent of other embodiments — even if alternative embodiments detract from the claim language. In particular, claims may be supported by written description, even if those claims are contradicted by certain alternative embodiments. Similarly, negative limitations can be supported even when the inclusion of those elements are supported in certain embodiments. Where the specification provides a reason for excluding the element, there is generally sufficient support for a negative limitation.
