Undisputed Testimony on Portability of Setting Apparatus Dooms Orange’s CAFC Appeal

On Friday, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a nonprecedential ruling in Orange Electronic Co. Ltd. v. Autel Intelligent Technology Corp., Ltd. reversing the Eastern District of Texas’ denial of judgment as a matter of law (JMOL) to defendant Autel. The Federal Circuit did not reach Orange’s appeal of Eastern Texas’ JMOL ruling of noninfringement after finding that Autel’s asserted prior art met every limitation of the asserted claims, leading the appellate court to overturn the district court on obviousness instead.

Claimed Setting Apparatus Must Be Portable Relative to Vehicle, Receive Manual Inputs

In June 2021, Orange sued Autel alleging that tire pressure monitoring systems (TPMS) setting mechanisms sold by Autel to its U.S. subsidiary infringed claims of U.S. Patent No. 8031064, Tire Pressure Detecting Apparatus and Tire Pressure Detector Identification Copying Method for the Same. The ‘064 patent is directed to a tire pressure detecting apparatus capable of copying the identification of a failed tire pressure detector for easy replacement. Following trial, the jury returned a verdict finding that Autel infringed claims 26 and 27 of the ‘064 patent, which were not proven by Autel to be invalid under either 35 U.S.C. § 101 or 35 U.S.C. § 103. However, the Eastern Texas district court granted JMOL to Autel on noninfringement for lack of evidence of sales or importation in the United States.

On appeal, the CAFC only needed to consider the district court’s JMOL ruling with respect to Section 103 obviousness. Autel had argued that the asserted claims of the ‘064 patent were rendered obvious by U.S. Patent Application No. 20070055411 (“Nihei”) and U.S. Patent No. 20060208864 (“Nantz”). Nihei discloses a wheel information-acquiring system for transmitting tire data, such as inner pressure and temperature information, via radio to a vehicle body. Nihei’s system uses a setting device connected to a personal computer (PC) to receive information signals from another communication device. Nantz discloses improved methods and systems for testing and diagnosing tire pressure monitoring (TPM) sensors, including one embodiment by which the identification of a damaged sensor is transmitted to a replacement sensor.

The Eastern Texas district court denied Autel’s post-trial motion for JMOL on obviousness because it found that the combination of Nihei and Nantz did not reach “portable setting apparatus” limitations of the ‘064 patent. The tire pressure detecting system of claim 26 of Orange’s ‘064 patent includes a portable setting apparatus communicating with the identification rewritable sensor that is not equipped in the vehicle and is portable relative to the vehicle. The portable setting apparatus can obtain updates for rewriting identification into a new detector either by receiving a signal from the old tire detector or via manual input from the input module.

Patent Claims Don’t Preclude Use of Vehicle Computer, Bank of Sensor IDs

The CAFC agreed with Autel that the trial record can only support the conclusion that Nihei’s setting device and PC satisfy the disputed claim limitation. First, the appellate court found no testimony in the record supporting Orange’s argument that Nihei’s setting device alone was the claimed setting apparatus and couldn’t meet the claim limitation as it wasn’t portable. While Nihei’s setting apparatus must be held so a technician can go to the wheel, the Federal Circuit noted that the claims only require the apparatus to be portable relative to the vehicle, not necessarily handheld. Undisputed testimony from Autel established that Nihei’s setting device and PC are portable such that a technician can move around to different wheels when programming tire sensors.

Orange also challenged Nihei as not disclosing the manual input configuration required by the claims of the ‘064 patent, but the Federal Circuit found testimony supporting that the PC of Nihei’s setting apparatus is configured to receive manual input. The appellate court also found that the claims of the ‘064 patent do not preclude the use of the vehicle’s computer when updating sensor ID, that Nantz does not teach away from a sensor transmitting radio frequency (RF) signals, and that Nantz’s bank of new TPM sensor IDs did not preclude embodiments using IDs from old sensors.

Concluding that Orange did not properly develop other arguments related to secondary considerations and motivation to combine, the Federal Circuit reversed the district court’s Section 103 obviousness ruling without reaching the Section 101 subject matter eligibility or noninfringement issues.