Article by Clyde Shuman
The Patent Trial and Appeal Board of the U.S. Patent and Trademark Office, on rehearing, upheld two patents covering a system for tracking golf carts, months after it initially found the patents on Tuesday, months after it largely rejected four requests for inter partes review of the patents. In Yamaha Golf Car Co. v. Club Car LLC, Case Nos. IPR2017-02141, IPR2017-02142, IPR2017-02143 and IPR2017-02144 (PTAB), the Board found that petitioner Yamaha had not shown that the disputed patent claims in Club Car’s patents were invalid, rejecting Yamaha’s arguments that the claims were anticipated or obvious.
In March 2017, Club Car had Yamaha for infringement of the same patents, in the United States District Court for the Southern District of Georgia, Case No. 1:17-cv-00034-JRH-BKE. Yamaha filed four petitions for inter partes review—two for each patent—in September 2017, and the district court case was stayed in October 2017 pending decision in the inter partes review proceedings.
The patents are directed to a method and system for golf cart control on a golf course, where the cart’s motor responds to driver commands. The system includes a GPS receiver for determining cart position, a limited access map defining limited access areas of the course (e.g., greens, wet areas, other hazards), and a limited access controller interfaced with the GPS receiver and the map. The limited access controller can override a driver command to move the car to violate a limited access area. The system prevents the driver from damaging the course or driving too fast near cliffs and other “natural hazards.”
The Board initially agreed to review only one claim per patent. However, the Board later granted rehearing, in June 2018, following the Supreme Court’s decision in SAS Institute v. Iancu , 138 S.Ct. 1348 (2018), barring the Board from partially instituting inter partes review, and in light of the Patent Office’s Guidance on the Impact of SAS on AIA Trial Proceedings, which states that “if the PTAB institutes a trial, the PTAB will institute on all challenges raised in the petition.”
On rehearing, the Board determined that ” Yamaha has not proven by preponderant evidence that [the challenged claims] are unpatentable.”
The Board rejected Yamaha’s argument, inter alia, that the challenged patents were anticipated by a Japanese patent application covering a caddie cart used to transport a golf bag, saying that a caddie cart was not the same thing as a golf cart people ride. Per the Board, “Because … the claimed ‘golf cart’ is a rideable cart that carries a golfer … we determine that petitioner has not demonstrated by a preponderance of the evidence that these claims are anticipated by the [Japanese patent application].”
The Board also rejected Yamaha’s argument that the challenged claims were obvious over the caddie cart combined with an existing vehicle control system, saying that Yamaha’s “motivation to combine” argument for the two inventions was “facially deficient” and “conclusory.” Again, per the Board, “Simply noting that two references are in the same field of technology says nothing about what one reference lacks that the other reference teaches to fill the gap.”
In light of the Board’s ruling, the stay in the district court case is expected to be lifted, and the case to proceed.
