from the United States Patent and Trademark Office, Patent
Trial and Appeal Board in Nos. IPR2014-00295, IPR2014-00476.
Michael J. Kane, Fish & Richardson, PC, Minneapolis, MN,
argued for appellants. Also represented by Craig E.
Countryman, San Diego, CA.
M. Ropski, Brinks Gilson & Lione, Chicago, IL, argued for
cross-appellant Continental Automotive Systems, Inc. Also
represented by Laura A. Lydigsen, Joshua Patrick Smith; James
K. Cleland, John A. Lingl, Ann Arbor, MI; Themi Anagnos,
Continental Automotive Systems, Inc., Deer Park, IL.
Patrick Collins, Pillsbury Winthrop Shaw Pittman LLP, McLean,
VA, argued for cross-appellants Schrader-Bridgeport
International, Inc., Sensata Technologies Holding NV, SI
International (TOPCO), Inc. Also represented by Robert M.
Prost, Chief Judge, Schall, and Chen, Circuit Judges.
Schall, Circuit Judge.
consolidated appeals come to us following two related
inter partes review proceedings before the U.S.
Patent & Trademark Office's Patent Trial and Appeal
Board ("Board"). Both proceedings involve
now-expired U.S. Patent No. 5, 602, 524 ("the '524
patent") owned by Wasica Finance GmbH and Bluearc
Finance AG ("Wasica"). The '524 patent has 21
claims. Claim 1 is the sole independent claim. The first
proceeding, IPR2014-00295, arose from a petition filed by
Continental Automotive Systems, Inc.
("Continental") ("the '295
proceeding"). In the '295 proceeding, the Board
found claims 1-3, 5, 10-19, and 21 of the '524 patent
unpatentable as anticipated or obvious and claims 6-9 and 20
patentable. The Board declined to institute review of claim
4. Cont'l Auto. Sys., Inc. v. Wasica Fin. GmbH,
No. IPR2014-00295, 2015 WL 3811738, at *1, *19 (June 17,
2015) ("Continental Decision"). The second
proceeding, IPR2014-00476, arose from a petition filed by
Schrader-Bridgeport International, Inc., Sensata Technologies
Holdings NV, and SI International (TOPCO), Inc.
(collectively, "Schrader") ("the '476
proceeding"). In the '476 proceeding, the Board
found claims 1-5, 10, 12-19, and 21 of the '524 patent
unpatentable as anticipated or obvious and claims 6 and 9
patentable. The Board declined to institute review of claim
Schrader-Bridgeport Int'l v. Wasica Fin. GmbH,
No. IPR2014-00476, 2015 WL 4500655, at *1, *20 (July 22,
2015) ("Schrader Decision").
now appeals those portions of the Board's decisions in
the '295 and '476 proceedings finding claims 1- 5,
10-19, and 21 unpatentable. For their part, Continental and
Schrader cross-appeal, respectively, those portions of the
Board's decisions in the '295 and '476
proceedings finding claims 6-9 and 20 patentable.
reasons set forth below, we affirm the decisions of the Board
in the '295 and '476 proceedings that claims 1-5,
10-19, and 21 of the '524 patent are un-patentable as
anticipated or obvious. We also affirm the decisions of the
Board in the '295 and '476 proceedings that claims
6-8 and 20 of the '524 patent are patentable. We reverse,
however, the decisions of the Board in the '295 and
'476 proceedings that claim 9 of the '524 patent is
owns the '524 patent, which describes systems for
monitoring tire pressure in vehicles. See '524
patent, Abstract. Typically, these systems communicate
pressure readings through electromagnetic signals.
Id., 1:52-59. According to the patent, prior art
systems fail to relay accurate pressure data due to
interference from internal and external sources.
Id., 1:59-67. As a result, the patent asserts,
drivers experience under- and over-reporting of tire pressure
warnings. Id., 2:1-10.
'524 patent purports to address this problem by
synchronizing components of the tire pressure system. As
illustrated below, each tire (R1-R4) includes a pressure
measuring device and a transmitter (S1-S4). The transmitter
sends pressure data received from the pressure measuring
device to a corresponding receiver (E1-E4):
Id., Fig.1; see also id., 6:1-2, 6:12-15,
Fig.2. To distinguish signals from different transmitters,
transmissions to each receiver include an
"identification signal" specifying the originating
transmitter. Id., 6:61-7:9. The receiver stores this
identifying information and processes pressure data only from
the designated transmitter. Id., 3:4-15. The system
can further synchronize its units by entering a "pairing
mode." Id., 10:1-7. In this mode, a transmitter
couples with the receiver to which it broadcasts the
strongest signal. Id. Tire pressure data is
displayed to the driver of the vehicle by means of a
"display device." Id., 13:34-38.
noted, the '524 patent includes 21 claims. Claim 1 is the
sole independent claim and recites as follows:
1. A device for monitoring the air pressure in the air
chamber of pneumatic tires fitted on vehicle wheels
a pressure measuring device mounted on a vehicle wheel which
measures the air pressure in the air chamber of the wheel end
outputs an electrical pressure signal representative of the
air pressure in the vehicle wheel;
a transmitter mounted to the vehicle wheel which receives the
electrical pressure signal output from the pressure measuring
device and sends out a pressure transmitting signal
corresponding to said air pressure;
a receiver associated with the transmitter and mounted at a
distance to the vehicle wheel which receives the pressure
transmitting signal transmitted from the associated
a display device which is connected with the receiver and
displays data as numbers or symbols which have been taken
from the pressure transmitting signal received from the
wherein the transmitter comprises an emitter-control device
which controls the emittance of the pressure transmitting
signal and a signal-generating device which generates an
identification signal which is unique for the transmitter and
clearly identifies same;
the emitter-control device works such that the identification
signal is transmitted at least once before or after the
emittance of the pressure transmitting signal;
the receiver comprises at least a memory in which is stored
an identification reference signal related to the associated
transmitter in accordance with a predetermined relationship
the receiver comprises a comparison device which checks if an
identification signal transmitted from a transmitter has the
relationship criteria to identification reference signal
stored in the receiver, and that further processing of the
pressure transmission signal taken from the receiver only
takes places if the identification signal received by the
receiver and the identification reference signal stored in
the receiver fulfill the relationship criteria;
the identification reference signal stored in the receiver is
changeable in order that the identification signal from the
associated transmitter matches the identification reference
signal of the receiver; and
the receiver is connected with a switching device which
enables the receiver to switch over from normal operating
mode, in which the air pressure is monitored, to pairing
mode, in which the receiver collects the identification
signal of the transmitter and stores this as an
Proceedings Before the Board
and Schrader each filed inter partes review
("IPR") petitions challenging the patentability of
the '524 patent. In the '295 proceeding, Continental
challenged all 21 claims as anticipated by Italian Patent No.
1, 219, 753 ("Oselin") and/or as obvious over some
combination of Oselin and U.S. Patent Nos. 5, 109, 213
("Williams"), 5, 803, 457 ("Schultz"), 4,
067, 376 ("Barabino"), 4, 912, 463
("Li"), and 4, 750, 118. In the '476
proceeding, Schrader challenged claims 1-6, 9-19, and 21 as
anticipated by Oselin and/or as obvious over some combination
of Oselin, Schultz, Barabino, and U.S. Patent No. 5, 285, 189
("Nowicki"). The Board subsequently instituted
separate trials on the two petitions.
trials focused primarily on the Oselin reference. That
reference, like the '524 patent, relates to vehicular
systems for monitoring tire pressure. J.A. 939. In their
petitions to the Board, both Continental and Schrader argued
that Oselin discloses or suggests most of the features in the
disputed the petitioners' reading of Oselin, contending
that Oselin does not disclose or suggest all of the
limitations of independent claim 1. Specifically, Wasica
argued that Oselin fails to teach a "pressure measuring
device, " an "electrical pressure signal, "
and a "pressure transmitting signal, " as Wasica
construed those terms. Wasica also separately argued the
patentability of various dependent claims by relying on its
constructions of the terms "bit sequence" and
The Board's Decisions
'295 and '476 proceedings culminated in two Final
Written Decisions from the Board. In those decisions, the
Board first construed the terms "pressure measuring
device" from independent claim 1, "bit
sequence" from claim 9, and "emittance" from
claim 17. Continental Decision, 2015 WL 3811738, at
*4-7; Schrader Decision, 2015 WL 4500655, at *5-7.
Armed with those constructions, the Board found that Oselin
anticipated claims 1, 2, 5, 10, 13, 15, 17-19, and 21.
Continental Decision, 2015 WL 3811738, at *19-20;
Schrader Decision, 2015 WL 4500655, at *20. The
Board also found that Oselin-alone or in combination with
Williams, Schultz, Nowicki, Barabino, and/or Li-rendered
claims 3, 4, 10-12, 14, 16, and 17 obvious. The Board further
determined, however, that Continental and Schrader had failed
to establish how Oselin (alone or in combination with
Williams) rendered claims 6-9 and 20 unpatentable.
Continental Decision, 2015 WL 3811738, at *13-14,
*17; Schrader Decision, 2015 WL 4500655, at *10-12
(claims 6 and 9).
appeals the Board's decisions that claims 1-5, 10-19, and
21 are unpatentable. Continental and Schrader each
cross-appeal the Board's decisions that claims 6-9 and 20
are patentable. We have jurisdiction under 28 U.S.C. §
1295(a)(4)(A) and 35 U.S.C. § 141(c).
Standard of Review
appeal from an IPR decision, we review the Board's legal
conclusions de novo and its factual findings for
substantial evidence. 5 U.S.C. § 706(2); Synopsys,
Inc. v. Mentor Graphics Corp., 814 F.3d 1309, 1314 (Fed.
Cir. 2016). Anticipation is a question of fact reviewed for
substantial evidence. Synopsys, 814 F.3d at 1317;
In re Rambus Inc., 694 F.3d 42, 46 (Fed. Cir. 2012).
Obviousness is a question of law based on underlying facts.
In re Magnum Oil Tools Int'l, Ltd., 829 F.3d
1364, 1373 (Fed. Cir. 2016). ...