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Federal Circuit Affirms PTAB’s Final Written Decision, Holding That Obviousness Does Not Require An Actual, Physical Substitution Of Elements
01/31/2024On January 22, 2024, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the decision of the Patent Trial and Appeal Board (“Board”) invalidating the claims of U.S. Patent No. 9,458,814 (“’814 patent”) on obviousness grounds. The ’814 patent is directed to a remote start system for a vehicle. The system includes a remote start transmitter physically separate from the vehicle. The transmitter is configured to receive a signal from a user and transmit the signal to the vehicle. The vehicle, upon receiving the transmitted signal, automatically performs multiple functions: a vehicle brake is operated, a climate control system is activated, and the engine is started.
BMW of North America, LLC (“BMW”) petitioned for inter partes review (“IPR”) of the ’814 patent, asserting that the claims are obvious in view 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 via a remote transmitter. Upon receiving a signal, Hassan’s remote starter system performs multiple functions, including starting the engine and controlling the climate control system. Hassan further discloses optional security features designed to preclude a person from entering and/or driving the vehicle after it has been remotely started unless the vehicle key has been inserted into the ignition. These optional security features include not allowing the vehicle to be shifted out of “park” and immediately shutting down the engine upon sensing vehicle movement. Hassan does not discuss brake control. Birzl, on the other hand, discloses a process of automatically activating a vehicular service break when detecting an imminent starting of the vehicle engine to prevent the vehicle from rolling away during the starting operation.
In its Final Written Decision, the Board determined that a person with ordinary skill in the art, recognizing the problem of rollaway, would have been motivated to combine Hassan’s remote start features with the automatic brake engagement of Birzl. On appeal, Omega Patents, LLC (“Omega”) argued that the Board impermissibly adopted an overly generic motivation of safety and convenience to combine Hassan and Birzl. The CAFC rejected Omega’s argument and found that substantial evidence supported the Board’s conclusion. The CAFC determined that Hassan contemplates the need for safety features but does not provide a mechanism for preventing vehicle rollaway during remote start. To prevent vehicle rollaway, the CAFC explained that a person with ordinary skill in the art would have turned to Birzl, which identifies vehicle rollaway as a safety concern when starting a vehicle’s engine and presents a solution of automatically activating a brake upon detecting an imminent engine start.
Omega also argued that Board erred because a skilled artisan would not combine Hassan with Birzl due to the fact that the references perform opposite and incompatible functions in response to the same sensed conditions. Omega’s expert opined that, in response to detecting the “sensed critical conditions” of vehicle unlocking, key insertion, or vehicle occupancy, Hassan discloses terminating the remote start, while Birzl—upon detecting the same conditions—starts the engine. Because BMW’s obviousness theory did not involve modifying the use of Birzl’s “sensed critical conditions” into Hassan, the CAFC found Omega’s argument irrelevant. The CAFC explained that obviousness is determined based on what the combined teachings of the references would have suggested to a skilled artisan and does not require an actual, physical substitution of elements from one reference into another.
