Omega Patents, LLC v. Bmw of North America, LLC

• Court: Court of Appeals for the Federal Circuit
• Decided: January 22, 2024
• Docket: 22-2012
• Status: Unpublished

Opinion

Case: 22-2012 Document: 42 Page: 1 Filed: 01/22/2024

NOTE: This disposition is nonprecedential.

United States Court of Appeals for the Federal Circuit ______________________

OMEGA PATENTS, LLC, Appellant

v.

BMW OF NORTH AMERICA, LLC, Appellee ______________________

2022-2012 ______________________

Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2021- 00181. ______________________

Decided: January 22, 2024 ______________________

RYAN SANTURRI, Allen, Dyer, Doppelt & Gilchrist, PA, Orlando, FL, argued for appellant. Also represented by DAVID CARUS.

KARA ALLYSE SPECHT, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Atlanta, GA, argued for appellee. Also represented by LIONEL M. LAVENUE, Reston, VA; RYAN VALENTINE MCDONNELL, MICHAEL J. MCLAUGHLIN, DAVID MROZ, Washington, DC. ______________________ Case: 22-2012 Document: 42 Page: 2 Filed: 01/22/2024

Before REYNA, HUGHES, and STARK, Circuit Judges. STARK, Circuit Judge. Omega Patents, LLC (“Omega”) appeals the Patent Trial and Appeal Board’s (“Board”) decision invalidating all claims of its U.S. Patent No. 9,458,814 (the “’814 patent”) on obviousness grounds. Because the Board’s findings are supported by substantial evidence and the Board did not abuse its discretion, we affirm. I The ’814 patent describes “a remote start system for a vehicle that provides additional functionality and user con- venience.” ’814 patent 2:60-62. The system includes a re- mote start transmitter physically separate from the vehicle that is configured to receive a signal from a user and trans- mit the signal to the vehicle. See id. at 5:47-67. Upon re- ceiving the transmitted signal, the vehicle automatically performs multiple functions: a vehicle brake is operated, a climate control system is activated, and the engine is started. See id. at 9:45-58. This multi-functionality, which forms the crux of the parties’ dispute, is recited in representative claim 1, repro- duced below. 1. A remote start control system for a vehicle com- prising a data communications bus extending through the vehicle, an engine, at least one vehicle brake being selectively operable based upon a park- ing brake command on the data communications bus, and a vehicle climate control system operable based upon a climate control command on the data communications bus, the remote start control sys- tem comprising: a remote start transmitter remote from the ve- hicle and configured to generate a remote start signal; and Case: 22-2012 Document: 42 Page: 3 Filed: 01/22/2024

OMEGA PATENTS, LLC v. BMW OF NORTH AMERICA, LLC 3

a vehicle remote start controller at the vehicle and comprising a receiver configured to receive the remote start signal from said remote start trans- mitter, and at least one processor cooperating with said receiver and configured to, in response to the remote start signal, generate the parking brake command on the data communications bus to op- erate the at least one vehicle brake, generate the climate control command on the data communications bus to op- erate the climate control system, and start the engine. ’814 patent 10:9-32 (emphasis added). 1 BMW of North America, LLC (“BMW”) petitioned for inter partes review (“IPR”) of the ’814 patent, challenging the validity of all claims on obviousness grounds. The Board granted institution based on all of BMW’s asserted obviousness combinations including, as pertinent to this appeal, the combination of U.S. Patent Nos. 7,650,864 to Hassan (“Hassan”) and 6,384,490 to Birzl (“Birzl”). Hassan discloses “a remote starter system for a vehicle that is operable to start the vehicle ignition via a remote transmitter or key fob [or] the like.” Hassan at 1:24-26 (J.A. 2895). Hassan’s remote starter system performs mul- tiple functions in response to a received signal, including

1 Although Omega challenges the obviousness deter- mination for all claims, we follow the parties’ lead and fo- cus our analysis on claim 1. On appeal, Omega does not raise any arguments unique to any other claim. Case: 22-2012 Document: 42 Page: 4 Filed: 01/22/2024

“start[ing] the vehicle’s ignition” and “control[ling] the ve- hicle’s . . . climate control system.” Id. at 1:24-41 (J.A. 2895). Hassan describes optional security features de- signed to “limit or substantially preclude a person entering and/or driving the vehicle after it has been remotely started” by “not allow[ing] the vehicle to be shifted out of ‘park’ when in ‘remote start mode’ unless the vehicle key has been inserted into the ignition,” only terminating the remote start mode “in response to the driver inserting the ignition key into the ignition of a vehicle or unlocking the vehicle doors” and “shut[ting] down the engine immedi- ately” upon sensing vehicle movement. Id. at 3:65-5:43 (J.A. 2896-97). While Hassan contemplates other function- ality intended to provide for safety and security, it does not discuss brake control. Birzl discloses a process of automatically activating a vehicular service brake in response to detecting an “immi- nent starting” of the vehicle engine in order to “provide a simple process for increasing driving safety and operating comfort when starting an engine,” doing so by securing the vehicle “against rolling away during the starting opera- tion.” Birzl at 1:48-2:7 (J.A. 2906). More specifically, the process involves sequential steps of detecting an imminent engine start, activating the service brake, starting the en- gine, and then releasing the service brake. See id. at 3:38- 67 (J.A. 2907). Birzl provides several exemplary methods of detecting the imminent engine start, including “the un- locking of the vehicle, the opening of the vehicle door, a driver seat occupation detection and/or an operation of the ignition lock or the ignition/start determination.” Id. at 2:8-14 (J.A. 2906). In its Final Written Decision, the Board invalidated all claims of the ’814 patent as obvious based principally on the combination of Hassan and Birzl, finding, among other things, that “a person with ordinary skill in the art recog- nizing the problem of rollaway would have been motivated to combine Hassan’s remote start features with the Case: 22-2012 Document: 42 Page: 5 Filed: 01/22/2024

OMEGA PATENTS, LLC v. BMW OF NORTH AMERICA, LLC 5

automatic brake engagement of Birzl.” J.A. 31. Omega timely appealed. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A). II Omega’s appeal presents two issues. First, whether the Board erred in finding all claims of the ’814 patent in- valid as obvious. Second, whether the Board properly con- sidered all relevant evidence before it. We address each issue in turn. A “The ultimate question of obviousness is a legal ques- tion that we review de novo with underlying factual find- ings that we review for substantial evidence.” Roku, Inc. v. Universal Elecs., Inc., 63 F.4th 1319, 1324 (Fed. Cir. 2023). “Whether a person of ordinary skill in the art would have been motivated to modify or combine teachings in the prior art, and whether he would have had a reasonable ex- pectation of success, are questions of fact.” OSI Pharm., LLC, v. Apotex, Inc., 939 F.3d 1375, 1382 (Fed. Cir. 2019) (internal quotation marks omitted). Substantial evidence is “such relevant evidence as a reasonable mind might ac- cept as adequate to support a conclusion.” Consol. Edison Co. v. NLRB, 305 U.S. 197, 229 (1938). Hassan discloses all limitations of claim 1 except the step of activating a parking brake in response to the remote signal. Birzl discloses activating a parking brake in re- sponse to detecting an “imminent start,” but only describes local car starting. Neither party disputes these findings as to the scope of the prior art. Omega instead contends that the Board failed to identify a reasoned motivation to com- bine Hassan and Birzl, faulting the Board for impermissi- bly adopting an overly generic motivation of “safety and convenience.” Opening Br. at 18. We, however, find sub- stantial evidence supports the Board’s conclusion that the motivation to combine Hassan and Birzl is derived from the Case: 22-2012 Document: 42 Page: 6 Filed: 01/22/2024

two references themselves. As the Board noted, Hassan al- ready contemplates the need for safety features but does not provide a mechanism for preventing vehicle rollaway during remote start. The Board, crediting the testimony of BMW’s expert, Dr. Eskandarian, was “persuaded . . . that Hassan’s safety features that may reduce risk of rollaway, such as terminating remote start mode if vehicle movement is detected, would have been recognized as insufficient for improving safety from rollaway.” J.A. 30. Consequently, “a person with ordinary skill in the art would have turned to Birzl,” which identifies vehicle rollaway as a safety con- cern when starting a vehicle’s engine and presents a solu- tion of automatically activating a brake upon detecting an imminent engine start, in order “to prevent a vehicle from unintentionally beginning to move.” Id.; see also Birzl at 1:12-25, 1:48-55 (J.A. 2906). The Board’s obviousness con- clusion – that a person of ordinary skill in the art “would have combined Hassan and Birzl to include the well-known safety benefits of brake actuation to a remote start system,” and this combination “would have specifically mitigated the safety risk of a rollaway while preserving the conven- ience of a remote start,” J.A. 29-30 (internal brackets and quotation marks omitted) – is, thus, supported by substan- tial evidence. Omega additionally faults the Board for purportedly ig- noring the testimony of its expert, Mr. McAlexander, con- tending that a skilled artisan would not combine Hassan with Birzl because the references perform opposite and in- compatible functions in response to the same sensed condi- tions. Mr. McAlexander opined that in response to detecting the “sensed critical conditions” of vehicle unlock- ing, key insertion, or vehicle occupancy, Hassan discloses terminating the remote start while Birzl, upon detecting the same conditions, starts the engine; therefore, according to Mr. McAlexander, their combination would defeat each reference’s operability. The Board fully considered and re- jected this opinion, finding it irrelevant because BMW’s Case: 22-2012 Document: 42 Page: 7 Filed: 01/22/2024

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obviousness theory did not involve modifying the use of Birzl’s “sensed critical conditions” into Hassan. J.A. 28; see also id. at 25-26. Obviousness is determined based on “what the combined teachings of the references would have suggested to those having ordinary skill in the art” and “does not require an actual, physical substitution of ele- ments.” In re Mouttet, 686 F.3d 1322, 1332-33 (Fed. Cir. 2012) (emphasis added). Birzl’s teaching of starting the en- gine in response to “sensed critical conditions” is separate from its “teaching of actuating a brake command on igni- tion.” J.A. 28. It was reasonable for the Board to determine that “the combination of Hassan and Birzl teaches or sug- gests [actuating a parking brake command on ignition] re- gardless of the ‘sensed critical conditions.’” Id. This conclusion, based again on the prior art disclosures them- selves, is supported by substantial evidence. Omega makes numerous other arguments against the Board’s motivation-to-combine findings. These conten- tions, at most, provide support for a finding the Board did not reach, but fail to show an absence of substantial evi- dence for the finding the Board actually did reach. Omega’s efforts are unavailing, as “the possibility of draw- ing two inconsistent conclusions from the evidence does not prevent [the Board’s] finding from being supported by sub- stantial evidence.” Consolo v. Fed. Mar. Comm’n, 383 U.S. 607, 620 (1966); see also Standley v. Dep’t. of Energy, 26 F.4th 937, 942-43 (Fed. Cir. 2022) (“Where two different, inconsistent conclusions may reasonably be drawn from the evidence in record, [the Board’s] decision to favor one conclusion over the other is the epitome of a decision that must be sustained upon review for substantial evidence.”) (internal brackets and quotation marks omitted). B We review the Board’s decision for compliance with the Administrative Procedure Act (“APA”), 5 U.S.C. § 550 et seq. pursuant to the standards of review set out in the APA. Case: 22-2012 Document: 42 Page: 8 Filed: 01/22/2024

Under the APA, we must “hold unlawful and set aside agency action, findings, and conclusions found to be . . . ar- bitrary, capricious, an abuse of discretion, or otherwise not in accordance with law,” made “without observance of pro- cedure required by law,” or “unsupported by substantial ev- idence.” 5 U.S.C. § 706(2). The Board abuses its discretion if its “decision was not based on the relevant factors or it fails to examine the relevant data and articulate a satisfac- tory explanation for its action including a rational connec- tion between the facts found and the choice made.” Japanese Found. for Cancer Research v. Lee, 773 F.3d 1300, 1304 (Fed. Cir. 2014) (internal quotation marks omit- ted). While we require the Board to provide sufficient ex- planation to convey that it “has done its job,” “we will uphold a decision of less than ideal clarity if [the Board’s] path may reasonably be discerned.” Alacritech, Inc. v. Intel Corp., 966 F.3d 1367, 1370-71 (Fed. Cir. 2020) (internal quotation marks omitted). Omega argues that the Board abused its discretion by disregarding critical portions of the evidentiary record – specifically, the teachings of the prior art and Mr. McAlex- ander’s expert testimony. Omega suggests that by explic- itly discussing and adopting Dr. Eskandarian’s testimony while simultaneously providing no express analysis of Mr. McAlexander’s testimony, the Board failed to satisfactorily explain its decision. While we have held that the Board “must have both an adequate evidentiary basis for its find- ings and articulate a satisfactory explanation for those findings,” Chemours Co. FC, LLC v. Daikin Indus., Ltd., 4 F.4th 1370, 1374 (Fed. Cir. 2021), this does not require the Board to comprehensively address every argument raised. So long as the Board has “provide[d] an administrative rec- ord showing the evidence on which the findings are based, accompanied by the agency’s reasoning in reaching its con- clusions,” in such a manner that the Board’s path is rea- sonably discernable, the Board has sufficiently performed Case: 22-2012 Document: 42 Page: 9 Filed: 01/22/2024

OMEGA PATENTS, LLC v. BMW OF NORTH AMERICA, LLC 9

its job in accordance with the APA. Alacritech, 966 F.3d at 1370 (internal quotation marks omitted). The Board met these obligations here. The Board acknowledged and rejected all of Omega’s arguments, in- cluding those allegedly supported by Mr. McAlexander’s testimony. The Board then proceeded to “weigh the evi- dence of record,” which is its duty, not an abuse of discre- tion. Regents of the Univ. of Minn. v. Gilead Scis., Inc., 61 F.4th 1350, 1359 (Fed. Cir. 2023). Nor is it an abuse of discretion for the Board to find one expert’s testimony more persuasive than another’s. To the contrary, “[w]e defer to the Board’s findings concerning the credibility of expert witnesses.” Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010). Omega has provided no persuasive basis to conclude that the Board missed any material evidence in the prior art or expert testimony in arriving at its conclusion, and the Board’s path is readily discernable. Omega’s conten- tions, therefore, fail. III We have considered Omega’s remaining arguments and find them unpersuasive. For the forgoing reasons, we affirm the Board’s decision. AFFIRMED COSTS Costs awarded to appellee.