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

N OTE: This disposition is nonprecedential.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
D AVID CARUS .
K ARA ALLYSE SPECHT , Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP, Atlanta, GA, argued for appellee.
Also represented by L IONEL M. L AVENUE , Reston, VA; RYAN
VALENTINE MCD ONNELL , MICHAEL J. MCL AUGHLIN, D AVID
MROZ, Washington, DC.
______________________
Case: 22-2012 Document: 42 Page: 1 Filed: 01/22/2024

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OMEGA PATENTS, LLC v. BMW OF NORTH AMERICA, LLC 2
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
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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.
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OMEGA PATENTS, LLC v. BMW OF NORTH AMERICA, LLC 4
“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
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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
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OMEGA PATENTS, LLC v. BMW OF NORTH AMERICA, LLC 6
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
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OMEGA PATENTS, LLC v. BMW OF NORTH AMERICA, LLC 7
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.
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OMEGA PATENTS, LLC v. BMW OF NORTH AMERICA, LLC 8
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
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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.
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