{"id":3314,"date":"2021-06-21T23:44:56","date_gmt":"2021-06-21T23:44:56","guid":{"rendered":"https:\/\/www.jamesandwells.com\/jlr-in-patent-battle-over-its-terrain-response-system-husband-in-battle-over-family-use-of-vehicle\/"},"modified":"2021-06-21T23:44:56","modified_gmt":"2021-06-21T23:44:56","slug":"jlr-in-patent-battle-over-its-terrain-response-system-husband-in-battle-over-family-use-of-vehicle","status":"publish","type":"post","link":"https:\/\/www.jamesandwells.com\/intl\/jlr-in-patent-battle-over-its-terrain-response-system-husband-in-battle-over-family-use-of-vehicle\/","title":{"rendered":"JLR in patent battle over its terrain response system. Husband in battle over family use of vehicle."},"content":{"rendered":"
Last year, my acquisition of one of the last \u201cold\u201d Defenders spawned an article on JLR\u2019s attempt to stop manufacture of the \u201csame-same but different\u201d Ineos Grenadier. A year later, the Grenadier is in the testing and development stage\u00a0having completed<\/a>\u00a0extreme cold testing in Arjeplog, Sweden and high-altitude testing in the Austrian Alps.\u00a0JLR is embroiled in another IP dispute, this time in the US involving patents for its terrain response system. Meanwhile, my wife has refused to take any family trips in our Defender because \u201cit drives like a tractor and the suspension is bruising our baby\u2019s brain\u201d so an air suspension conversion is looking to be necessary. This article is about the patents, not the air bag conversion.<\/h6>\n

JLR initially took action against Bentley Motors Ltd (Bentley) for breach of its US Patent No 7,349,776 \u201cVehicle Control\u201d. The \u2018776 patent relates to co-ordinated control of a number of sub-systems of a vehicle in different modes, so as to suit different conditions. In layperson\u2019s terms, it protects the technology behind the dial in the centre console which allows a driver to select between general, grass\/gravel\/snow, mud and ruts, sand, and rock crawl settings. Doing so optimises the ABS, throttle, transmission, diff locks, and air suspension to suit the terrain selected by the driver. This \u201cTerrain Response\u201d system was introduced in 2005 and, according to JLR, offered an unprecedented level of control in off-road vehicles at the time.<\/p>\n

Launched in 2016, the Bentayga started life as an\u00a0EXP 9 F concept<\/a>\u00a0which debuted at the 2012 Geneva Auto Show and was described by one magazine as \u201ca Continental GT on stilts\u201d. In fact, it was so universally disliked that it is rumoured Bentley began an exterior redesign mere weeks after the show. The finished product remains polarising and, despite being one of the world\u2019s fastest and most expensive SUV\u2019s, will probably never appear on this writer\u2019s (incredibly long) list of desirable vehicles.<\/p>\n

Like many other vehicles, the Bentayga offers a number of on-road driving modes (comfort, sport, custom and \u201cBentley\u201d1<\/sup>). However, and to JLR\u2019s chagrin, the Bentayga includes an optional \u201cDrive Dynamics\u201d system which, like JLR\u2019s \u201cTerrain Response\u201d, optimises multiple systems to suit a host of off road conditions2<\/sup>, using a rotary dial.<\/p>\n

JLR put Bentley on notice of its rights in 2016 but Bentley declined to pay a royalty or to discontinue what it perceived to be a common-place feature of off-road vehicles. JLR\u2019s response was to reissue its \u2018776 patent with more detail directed to the features used by Bentley, then to sue Bentley for breach in June 2018.<\/p>\n

The re-issued patent<\/h6>\n

The reissued patent (RE 46,828) operates as follows:\u00a0 \u201cthe control of a number of the vehicle subsystems is coordinated by a central vehicle controller, which can be switched between a number of modes thereby controlling all of the subsystems in a coordinated way which is simple for the driver to control.<\/em>\u201d<\/p>\n

According to JLR, prior art systems did not provide the driver with direct input regarding the surface terrain so as to better select the appropriate mode, making the system patentable. The U.S. District Court for the Eastern District of Virginia agreed, denying Bentley\u2019s Motion to Dismiss the infringement proceedings initiated by JLR against it.<\/p>\n

Bentley\u2019s motion to dismiss<\/h6>\n

The question for the Federal Circuit was whether the inventive concept in the \u2018828 patent was merely performing a function (and fell into the non-registrable abstract-idea category) or described \u201ca particular way of performing that function.\u201d\u00a0 In the US, claims that improve the functioning of a computer generally fall in the latter (registrable) category.<\/p>\n

JLR argued that the claims were directed to an improvement in computer functionality because the technology permits the simultaneous manipulation of multiple vehicle subsystems. According to JLR, before the \u2018828 patent drivers had to know the right configurations of subsystems when driving off-road on particular driving surfaces, had to manually change those subsystems one at a time, and could only adjust a limited number at one time.\u00a0According to JLR, the \u2018828 patent improves vehicle control technology by permitting a driver to control multiple subsystems at once and provides pre-set configurations of various subsystems for particular surfaces.<\/p>\n

On the other hand, Bentley said the claims simply computerise what drivers already do in their mind \u2014 for example, by slowing down while going downhill.<\/p>\n

Construing the pleadings most favourably to JLR, the Federal Circuit found that the claims are not directed to an abstract concept since the claims describe manipulating multiple vehicle subsystems to allow a vehicle to better adapt to driving on various types of on-road and off-road surfaces.\u00a0The Court found that the most analogous technology to that embodied in the \u2018828 patent is cruise control technology, which commonly exists in vehicles, and which other courts have ruled is patentable and not an abstract idea.<\/p>\n

It is likely that the New Zealand and Australian courts would have found similarly. In both jurisdictions the key consideration for patentability is whether there is a new \u201cmanner of manufacture\u201d which the High Court of Australia in\u00a0National Research Development Corp v Commissioner of Patents\u00a0<\/em>(1959) 102 CLR 252\u00a0confirmed simply means that a claimed product or process must result in an artificially created state of affairs that offers a material advantage in the field of economic endeavour. An artificially created state of affairs should be understood in the sense of a concrete, tangible, physical, or observable effect3<\/sup>\u00a0so that the product or process offers a material advantage in the sense that it belongs to a useful art as distinct from a fine art.4<\/sup><\/p>\n

In New Zealand, computer programmes \u201cas such\u201d are excluded from patentability, but using a computer to modify the way in which tangible machinery operates will generally be patentable, provided the method is novel and non-obvious.<\/p>\n

PTAB proceedings<\/h6>\n

Undeterred, in 2019 Bentley filed two petitions with the Patent Trial and Appeal Board (PTAB) to negate the claims in the \u2018828 patent being asserted against it by JLR. Bentley referenced the Mitsubishi Lancer Evolution VII, Hummer H2, and Porsche 959 as three \u201cobvious\u201d examples of cars with selectable on- and off-road modes which had been sold before the filing date of JLR\u2019s patent. In August 2019, the Board denied both of Bentley\u2019s petitions and in March and October 2020 it denied Bentley\u2019s request for a rehearing.<\/p>\n

JLR casts the net wider<\/h6>\n

Not one to shy away from a fight, in July 2018 JLR had also sent letters before action to Audi and Lamborghini regarding the \u201cANIMA\u201d system on the Lamborghini Urus and \u201cAudi Drive Select\u201d on the Q5, Q7, and e-tron.<\/p>\n

In November 2020, (and perhaps buoyed by its success before the Federal Circuit and in the PTAB) JLR filed four more lawsuits against Volkswagen Group of America, Porsche Cars North America, Audi of America, and Automobili Lamborghini America for patent infringement. On the same day, JLR also filed a request to the U.S. International Trade Commission (USITC) to ban imports of the Bentayga, Uris, Cayenne, Q5, Q7, Q8, Tiguan, and e-tron<\/p>\n

The USITC is empowered by s.337 of the Tariff Act 1930 to determine whether there is unfair competition in the importation of products into, or their subsequent sale in, the United States. According to s.337 the infringement of a US patent, copyright, or registered trade mark, is an unlawful practice in import trade. Most s.337 investigations involve allegations of patent or registered trade mark infringement but other forms of unfair competition, such as misappropriation of trade secrets, trade dress infringement, passing off, false advertising, and violations of antitrust laws, may also be asserted.<\/p>\n

USITC orders are effective when issued and become final 60 days after issuance, unless disapproved for policy reasons by the U.S. Trade Representative within that 60-day period. Appeals of USITC determinations may be taken to the U.S. Court of Appeals for the Federal Circuit. Violators of USITC s.337 orders are liable for fines of up to $100,000 a day or twice the value of the imported articles.\u00a0So the stakes have now become pretty high for the manufacturers against which the USITC request for investigation has been filed.<\/p>\n

How was JLR able to improve its position?<\/h6>\n

A reissue application can be filed in the United States to correct an error in a patent where, as a result of the error, the patent is wholly or partly inoperative or invalid. There must be at least one error in the patent to provide grounds for reissue of the patent. If there is no error the patent will not be reissued. However, in accordance with\u00a035 U.S.C. 251, the error upon which a reissue is based can be one which causes the patent to be \u201cdeemed wholly or partly inoperative or invalid by reason\u2026 of the patentee claiming more or less than he [sic] had a right to claim in the patent.<\/em>\u201d<\/p>\n

According to the\u00a0USPTO\u2019s website<\/a>:<\/p>\n

\u201cThe reissue error may be directed solely to the failure to previously present narrower claims, which are being added by reissue.\u00a0In re Tanaka,\u00a0640 F.3d 1246, 1251, 98 USPQ2d 1331, 1334 (Fed. Cir. 2011) provides that \u201cthe omission of a narrower claim from a patent can render a patent partly inoperative by failing to protect the disclosed invention to the full extent allowed by law.<\/em>\u201d This permits submission of additional claims that are narrower in scope than the pre-existing patent claims, without any narrowing of the pre-existing patent claims.\u201d<\/p>\n

Claim 1 of the \u2018776 patent read:<\/p>\n

\u201cA vehicle control system having a driver input for selecting a driving surface, the vehicle control system arranged to control a plurality of vehicle subsystems each of which is operable in a plurality of subsystem configuration modes, wherein the vehicle control system is operable in a plurality of driving modes in each of which it is arranged to select the subsystem configuration modes in a manner suitable for a respective driving surface.\u201d<\/p>\n

The \u2018776 patent had a flaw in that it described how the various driving modes worked but didn\u2019t frame them in terms of driver benefit\u2014that a driver would have \u201cdirect input regarding the surface terrain.\u201d5<\/sup><\/p>\n

Claim 21 of the \u2018828 patent now reads (our emphasis):<\/p>\n

\u201cA vehicle control system having a driver input device for selecting a driving surface, the vehicle control system arranged to control a plurality of vehicle subsystems each of which is operable in a plurality of subsystem configuration modes, wherein the vehicle control system is operable in a plurality of driving modes in each of which it is arranged to select the subsystem configuration modes in a manner suitable for a respective driving surface,\u00a0and further wherein the plurality of driving modes includes at least two off-road modes in which the subsystem configurations are controlled in a manner suitable for driving on respective off-road driving surfaces, and an on-road mode in which the subsystem configurations are controlled in a manner suitable for driving on-road<\/strong>\u00a0and still further\u00a0wherein one of the off-road modes is a sand mode in which the vehicle subsystems are controlled in a manner suitable for driving on sand.\u201d<\/p>\n

Thus, the claims of the \u2018828 patent are now directed to a vehicle control system that can be operated by the driver to select from an on-road mode and at least two off road modes in which the sub-system configurations are controlled in a manner suitable for driving on the selected driving surface. In the case of claim 21, one of those off-road modes is a sand mode in which, as the \u2018828\u00a0patent explains, the build-up of sand in front of the wheels under braking can improve braking performance.\u00a0 In this mode, low wheel spin at low speeds prevents the wheel from digging into the sand but high wheel spin at high speeds is less of a problem and can even improve traction and so is permitted. Other claims are now targeted at driving on gravel, and on snow and grass, the order of selection of driving modes via a selector, adjustment of throttle response between modes, adjustment of suspension height between modes etc.<\/p>\n

In New Zealand, s.83\u00a0of the Patents Act 2013 permits a patent specification to be amended after the patent application has been accepted. However, unless the amendment is for the purpose of correcting an obvious mistake it must not:<\/p>\n