BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SCHRADER-BRIDGEPORT INTERNATIONAL, INC.
`and SCHRADER ELECTRONICS, INC.
`Petitioner
`
`V.
`
`Patent of CONTINENTAL AUTOMOTIVE SYSTEMS US, INC.
`Patent Owner
`
`Case 1PR2013-00014
`Patent U.S. 6,998,973
`Filed February 5, 2004
`Issued February 14, 2006
`Title: DATA TRANSMISSION METHOD FOR A
`TIRE-PRESSURE MONITORING SYSTEM OF A VEHICLE
`
`Attorney Docket No. 8747-102772
`Customer No: 22242
`
`Filed electronically via the Patent Review Processing System (PRPS) on
`January 10, 2013
`
`Before the Honorable Sally C. Medley, Patent Administration Judge
`
`PRELIMINARY RESPONSE OF PATENT OWNER
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`SCHRADER-BRIDGEPORT INTERNATIONAL, INC.
`and SCHRADER ELECTRONICS, INC.
`Petitioner
`
`V.
`
`Patent of CONTINENTAL AUTOMOTIVE SYSTEMS US, INC.
`Patent Owner
`
`Case 1PR2013-00014
`Patent U.S. 6,998,973
`Filed February 5, 2004
`Issued February 14, 2006
`Title: DATA TRANSMISSION METHOD FOR A
`TIRE-PRESSURE MONITORING SYSTEM OF A VEHICLE
`
`Attorney Docket No. 8747-102772
`Customer No: 22242
`
`Filed electronically via the Patent Review Processing System (PRPS) on
`January 10, 2013
`
`Before the Honorable Sally C. Medley, Patent Administration Judge
`
`PRELIMINARY RESPONSE OF PATENT OWNER
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`Table of Contents
`
`I.
`
`..... ..........
`
`4..
`
`B.
`
`The Invention Of The ‘973 Patent....
`
`Schrader’s Proposed Rejections Fail To Present
`Prima Facie Showings Of Anticipation And
`Obviousness
`
`II.
`
`TIlE.
`
`FOR I)11’VI1G A PE1’ITIO1’t
`
`III. TIl1
`
`.........•
`
`A.
`
`B.
`
`C.
`
`E.
`
`U.S. Patent No. 6,271,748 (“Derbyshire”)
`U.S. Patent No. 6,486,773 (Baj1ie)
`{J.S. Patent 1%o. 6,404,246 (Esfakhri)
`
`IJ.S. Patent No. 5,883,582
`
`IV.
`
`INTER PARTES REVIEW SHOULD NOT BE INITIATED
`BECAUSE SCHRADER HAS NOT MADE A PRIMA
`FACIE SHOWING AS TO THE UNPATENTABILITY OF
`ANV CLAI]’I OF THE ‘973 PATENT
`
`..............
`
`A.
`
`Claims 1-2, 4-5, 7, 9 and 11 Are Not Anticipated By
`Derbyshire (PGJ 1)
`
`.
`
`1.
`
`2.
`
`Schrader offers insufficient evidence to establish a
`prima fade case as to the anticipation of these
`claims
`instead upon inadmissible
`and relies
`attorney speculation
`Derbyshire does not teach or suggest a natural time
`lag between internal clocks
`
`B.
`
`Claims 3, 7, 8, 10, and 11 are not obvious in view of
`Derbyshire (PGR 2)
`
`..
`
`Page
`
`.1
`
`.1
`
`3
`
`8
`
`10
`
`.10
`
`13
`
`14
`
`15
`
`.16
`
`16
`
`16
`
`18
`
`23
`
`1
`
`
`
`C.
`
`D.
`
`Claims 1-5 and 7-11 are not Obvious over Derbyshire
`of Estakhri (PGI 3)
`in
`
`.
`
`..
`
`...
`
`1.
`
`2.
`
`3.
`
`4.
`
`Schrader’s proposed rejection is so unclear that it
`must be denied
`The Derbyshire/Estakhri combination lacks certain
`claim elements
`Derbyshire
`and Estakhri
`combined
`Schrader gives no meaningful reason as to why
`Derbyshire and Estakhri should be combined or
`modified
`
`cannot be properly
`
`Claims 1-5 and 7-11 are not Obvious over Derbyshire
`in 7iev of Boivers (PGI 4)
`
`.....
`
`....
`
`1.
`
`2.
`
`3.
`
`4.
`
`Schrader’s proposed rejection is so unclear that it
`should and must be denied
`Derbyshire and Bowers are from non-analogous art
`fields
`Derbyshire
`combination
`A skilled person would have no reason to combine
`Bowers with Derbyshire
`
`against
`
`the
`
`proposed
`
`teaches
`
`24
`
`24
`
`26
`
`27
`
`30
`
`31
`
`31
`
`32
`
`37
`
`38
`
`39
`
`39
`
`40
`
`E.
`
`Claims 1-5 and 7-11 are not Obvious over Derbyshire
`in Vie’v of Bailie (PR 5)
`
`...
`
`1.
`
`2.
`
`There is no reason to modify Derbyshire with
`Bailie
`There is every reason not to modife Derbyshire
`with Bailie
`
`F.
`
`Bailie does not anticipate claims 1, 4-5, 7, 9, and 9-11
`(P1. 6)
`
`........
`
`...
`
`........42
`
`1.
`
`2.
`
`Schrader admits that Bailie is missing an element
`recited in the claims and therefore Bailie cannot
`anticipate the claims
`IPR should not be granted for PGR 6 because it is
`not clear whether PGR 6
`is
`an anticipation
`rejection or an obviousness rejection
`
`42
`
`43
`
`11
`
`
`
`45
`
`48
`
`50
`
`50
`
`51
`
`52
`
`53
`
`53
`53
`
`55
`
`56
`
`3.
`
`4.
`
`Bailie does not teach or suggest “a natural time lag
`between various internal clocks” as claimed
`Bailie does not
`teach or suggest that “a natural
`time lag between various internal clocks. .
`. is used
`to prevent collisions between transmissions from
`the various wheel units”
`
`Claims 1-5, and 7, and 9-11 are not obvious over
`Bailie in viev of Estakhri (PGR 7)
`
`.............
`
`.
`
`1.
`
`2.
`
`3.
`
`Schrader’s proposed rejection is so unclear that it
`should and must be denied
`The proposed Bailie/Estakhri combination has
`missing claim elements
`Schrader gives no meaningful reason as to why
`Bailie and Estakhri should be combined
`
`Claims 1-5, and 7-11 are not obvious over Bailie in
`of Bovers (PErR. 8)
`v
`
`....
`
`...
`
`G.
`
`H.
`
`1.
`
`2.
`
`Bailie and Bowers cannot be combined because
`they are from non-analogous art fields
`There is no reason to combine Bailie and Bowers
`
`and
`Claims
`are
`7-11
`1-5,
`obvious
`not
`Derbyshire, Bailie, and Bowers (PGR 9)
`
`over
`
`7. CO]CI41JSION ..
`
`....
`
`......
`
`.
`
`111
`
`
`
`Table of Authorities
`
`Statutes
`35 U.S.C. §312. 55,56
`35 U.S.C. §314.9
`Cases
`Bettcher Industries Inc. v. Bunzl USA Inc., 661 F.3d 629 (Fed. Cir. 2010). 21
`Exparte Alexander, 86 U.S.P.Q.2d 1120, 1123 (BPAI 2007)
`30
`Exparte Whalen, 89 U.S.P.Q.2d 1078 (BPAI 2008)
`30, 52
`In reFulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)
`28,37
`In re Gordon, 733 F.2d 900 (Fed. Cir. 1984)
`41
`In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)
`27
`In re Huang, 100 F.3d 135, 139-140 (Fed. Cir. 1996)
`17
`KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007)
`39
`Motorola Inc. v. Interdigital Technology Corp., 121 F3d 1461 (Fed Cir.
`1997)
`23
`Therasense Inc. v. Becton, Dickinson and Co., 593 F3d 1325, 1332
`22
`Transclean Corp. v. Bridgewood Servs., Inc., 290 F.3d 1364 (Fed. Cir. 2002)
`22
`
`Rules
`Changes to Implement IPR Proceedings, Final Rule, 77 Fed. Reg. 48,680,
`48,728 (Aug. 14, 2012) (to be codified at 37 C.F.R. § 42.107)
`9, 55
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,764 (Aug. 14,
`2012)
`9
`Other Authorities
`MPEP2112(IV)
`22
`41
`MPEP2143.01
`MPEP § 2143.03(VI)
`28,29,37
`MPEP2614
`44
`MPEP2616
`44
`MPEP2617
`44,45
`Message from Chief Judge James Donald Smith, Board of Patent Appeals
`and Interferences: USPTO Discusses Key Aspects of New Administrative
`Patent
`Trials,
`http ://www.uspto . gov/aia_implementationlsmith-blog
`extravaganza.jsp (last visited 12/18/20 12)
`9
`
`iv
`
`
`
`I.
`
`INTRODUCTION
`
`Continental Automotive Systems US, Inc. (“Continental”) submits
`
`this Preliminary Response in opposition to the Petition for Inter Partes
`
`Review (IPR) filed by Schrader-Bridgeport International, Inc. and Schrader
`
`Electronics,
`
`Inc.
`
`(collectively “Schrader”)
`
`regarding claims of USPN
`
`6,998,973 (“the ‘973 patent”). For the reasons set forth herein, Schrader’s
`
`Petition should be denied in its entirety and an Inter Partes Review should
`
`not be instituted in whole or in part against the ‘973 patent.
`
`A.
`
`The Invention Of The ‘973 Patent
`
`Tire pressure monitoring (TPM) systems measure and monitor the air
`
`pressure in a tire. A wireless TPM system is comprised of a tire pressure
`
`monitor, which is in the wheel and referred to as a “wheel unit” in the ‘973
`
`patent. When the wheel unit measures a tire pressure that is low, the central
`
`processor which receives that pressure data can alert the driver that the tire
`
`pressure is below a certain threshold. This gives the driver the opportunity to
`
`service the tire to avoid a flat tire, or worse, loss of control of the vehicle due
`
`to tire failure.
`
`With wheel units installed in all four tires of a vehicle such as a
`
`typical automobile, each wheel unit must independently transmit pressure
`
`data to the central processor. In other words, each of four wheel units (i.e.,
`
`1
`
`
`
`one for each tire) transmit data over a given reporting period. Consequently,
`
`transmissions from different wheel units can “collide” when the central
`
`processor receives two or more such transmissions at the exact same time, or
`
`even when transmissions overlap to some extent. Collisions are as if two
`
`radio programs were broadcast on the same channel, at the same time. As a
`
`result, the central processing apparatus is unable to reliably decode the two
`
`transmissions.
`
`To
`
`address
`
`this
`
`“collision” problem, various
`
`solutions were
`
`developed.
`
`These solutions include,
`
`for example,
`
`the intentional
`
`time
`
`shifting of transmissions made from the various wheel units to specifically
`
`avoid such collisions. However, transmission time shifting is complex to
`
`implement since this approach requires that all the wheel units for a given
`
`vehicle be synchronized in operation.
`
`Such an approach to avoiding
`
`collisions can also require complex processing and computations.
`
`In another previous approach, the central processor actively polled
`
`each of the wheel units for their respective pressure data. This last approach
`
`is also complex, costly, and difficult to implement.
`
`The ‘973 patent solved these and other problems in a very counter
`
`intuitive manner.
`
`Specifically,
`
`the ‘973 patent claims methods for tire
`
`pressure monitoring in which the wheel units incorporate imprecise internal
`
`2
`
`
`
`clocks. Because each of their internal clocks is imprecise, a natural time lag
`
`occurs between each of the wheel units that desynchronizes them relative to
`
`one
`
`another.
`
`The
`
`patented methods
`
`take
`
`advantage
`
`of
`
`that
`
`desynchronization to prevent collisions because their transmissions do not
`
`overlap because they each are operating to the timing of their own imprecise
`
`clock.
`
`Not only are collisions prevented, but complex algorithms need not be
`
`used and synchronization between clocks is not required. Moreover, the
`
`claimed invention is easy and cost effective to implement compared to the
`
`previous approaches mentioned above because less expensive circuits (i.e.,
`
`less precise) can be used.
`
`B.
`
`Schrader’s Proposed Rejections Fail To Present Prima
`Facie Showings Of Anticipation And Obviousness
`
`Claim 1 of the ‘973 patent reads:
`
`1. A data transmission method for a tire-pressure
`
`monitoring system (10) of a vehicle, said data
`
`being transmitted by wheel units (12) to a central
`
`computer (13) located in the vehicle, said method
`
`comprising:
`
`a data transmission phase in parking mode,
`
`over a first period; and
`
`3
`
`
`
`a data transmission phase in running mode,
`
`over a second period shorter than the first period;
`
`said method being characterized in that:
`
`a natural time lag between various internal
`
`clocks with which each wheel unit (12) is equipped
`
`is used to prevent collisions between transmissions
`
`from the various wheel units of one and the same
`
`vehicle.
`
`The main dispute of this case involves the final italicized paragraph of
`
`claim 1. All claims depend upon claim 1, so all claims include this
`
`paragraph.
`
`Schrader has proposed nine rejections based on four references.
`
`Schrader’s central contention is that a mere mention of a “clock” in a tire
`
`pressure monitoring reference is itself sufficient to teach that (1) the clock is
`
`imprecise; (2) imprecise clocks result in a natural time lag; (3) the amount of
`
`imprecision is sufficient to prevent collisions; and (4) the system hence
`
`includes collision avoidance. For example, Schrader makes the conclusory
`
`statement that “[s]ince there is no such thing as a perfect clock, every clock
`
`used in a TPMS sensor inherently has some imperfection, and therefore it
`
`will cause transmissions to drift out of synch with the inevitable result that
`
`collisions will be reduced.” Petition, page 11.
`
`4
`
`
`
`Schrader’s proffered series of “conclusions” are nothing more than a
`
`house of cards that collapses when the relevant contextual
`
`facts and
`
`circumstances are considered. For example, during the original prosecution
`
`of the ‘973 patent, the Examiner considered various references and allowed
`
`the present claims over these references. One of these references was PCT
`
`publication WO 1996/015919 (“the ‘919 publication”). As explained in
`
`greater detail elsewhere herein,
`
`the ‘919 publication teaches that “clock
`
`counters” are used in wheel units.
`
`Given the record, it is clear that the Examiner eschewed such a basis
`
`for rejecting these claims because the Examiner understood the unsupported
`
`nature of such a series of presumptions and considered such an approach to
`
`be both untenable and insufficient to support a prima facie showing of
`
`unpatentability. This being the case, Schrader’s TPR should not be granted
`
`because the same “teachings” advanced by Schrader have been considered
`
`by the Office and the claims allowed despite these “teachings.”
`
`In other
`
`words, the relevant references being plied by Schrader are, at best, merely
`
`cumulative. As a result, Schrader offers nothing new that the Office has not
`
`already considered.
`
`Even if it is somehow viewed that Schrader’s clock contentions were
`
`previously not considered, common sense dictates that Schrader’s suggested
`
`5
`
`
`
`series of conclusions are wrong. To be sure, Schrader’s conclusions do not
`
`automatically follow.
`
`To take one example, precise clocks are in fact
`
`employed in many TPM systems including in the cited prior art examples.
`
`There is also no certainty that collision avoidance schemes must be
`
`deployed—for example,
`
`in some prior art systems polling is used and
`
`collisions simply cannot occur. Finally, and quite importantly, just because
`
`a given TPM system might actually employ imprecise clocks does not, in
`
`and of itself’,
`
`lead to an acceptable level of collision avoidance.
`
`For
`
`example,
`
`the degree of imprecision may be insufficient
`
`(or even too
`
`extensive) to tend to ensure that the transmissions of the various wheel units
`
`occur in non-overlapping windows.
`
`All of Schrader’s arguments boil down to the faulty conclusion that
`
`the mere disclosure of any type of internal oscillator is sufficient to read onto
`
`the claims of the’973 patent. For example, Schrader takes Derbyshire’s
`
`passing mention of an RC oscillator (which is a reference to clock signal
`
`generation based upon the interactions of a resistor and a capacitor) and
`
`asserts that this circumstance is enough by itself to meet all requirements of
`
`the third sub-paragraph of claim 1 of the ‘973 patent.
`
`Therefore,
`
`Derbyshire’s discloses no more than the mere existence of an oscillator.
`
`That is insufficient to invalidate claims of the ‘973 patent for three reasons:
`
`6
`
`
`
`first, Derbyshire’s disclosure of RC oscillators is entirely irrelevant to the
`
`timing of transmissions; second, Derbyshire says nothing about the precision
`
`of the clocks in his timing circuit for the timing of his transmissions; and
`
`third, because the RC oscillator of Derbyshire is irrelevant to the timing of
`
`transmissions and the timer circuit in Derbyshire does not disclose precision,
`
`there can be no inherency.
`
`Such contentions, however, are unsupported
`
`guesswork that fail to substantiate aprimafacie showing.
`
`Schrader also misreads the other references to support its proposed
`
`rejections. For example, Schrader mistakenly equates Bailie’s teaching of a
`
`bit format
`
`tolerance for a bit
`
`in a single transmitter to somehow be a
`
`teaching of
`
`timing variances between internal
`
`clocks
`
`in multiple
`
`transmitters. These examples of clock usage, however, materially differ
`
`from the clock usage of the claims at issue.
`
`As for its proposed obviousness rejections, Schrader seeks to modify
`
`certain base references but ignores glaring reasons as to why the references
`
`should not be combined or modified as suggested by Schrader. For instance,
`
`both base references (i.e., Derbyshire and Bailie) clearly teach away from
`
`Schrader’s proposed modifications or do not provide any reasons for these
`
`modifications. Schrader’s proposed rejections based on Bowers ignores that
`
`7
`
`
`
`Bowers is non-analogous art to any of the identified TPM references and
`
`therefore cannot be fairly combined with those references.
`
`Rather than limiting its proposed rejections to a reasonable number of
`
`combinations
`
`and references, Schrader proposes
`
`rejections
`
`including
`
`virtually every possible combination of its four references. This attempt to
`
`see which rejection will “stick” is burdensome on both the Board and
`
`Continental.
`
`In this respect, some of Schrader’s proposed rejections are
`
`actually duplicative of others and should be denied for this reason. Others
`
`are so unclear as to be completely incomprehensible.
`
`In one such example,
`
`Schrader’s final proposed rejection (PGR 9) of three references is so unclear
`
`that Continental finds it virtually impossible to substantively respond to it
`
`since Continental can not decipher its meaning.
`
`As we will show below in detail, Schrader has not presented a prima
`
`facie case as to the unpatentability of any single claim of the ‘973 patent.
`
`Consequently, the petition should not be granted because all of Schrader’s
`
`proposed rejections fail to establish a reasonable likelihood of success as to
`
`at least one claim.
`
`II.
`
`THE LAW FOR DENYING A PETITION
`
`Schrader’s petition is not grantable as a matter of right. The patent
`
`owner, Continental, may file a Preliminary Response that sets out
`
`the
`
`8
`
`
`
`reasons why no inter partes review should be instituted under 35 U.S.C. §
`
`314. Changes to Implement IPR Proceedings, Final Rule, 77 Fed. Reg.
`
`48680, 48,728 (Aug. 14, 2012) (to be codified at 37 C.F.R. § 42.107).
`
`Potential reasons for denial
`
`include that
`
`the prior art
`
`lacks a material
`
`limitation in the independent claims and the prior art teaches away from a
`
`limitation. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,764
`
`(Aug. 14, 2012).
`
`The standard as to whether to grant Schrader’s petition is whether
`
`Schrader has established that there is reasonable likelihood it will succeed as
`
`to at
`
`least one claim. The rules note that
`
`this is a somewhat flexible
`
`standard. However, Chief Judge James Donald Smith, Board of Patent
`
`Appeals and Interferences, has stated that “[t]he reasonable likelihood
`
`standard allows for the exercise of discretion but encompasses a 50/50
`
`chance. . .of prevailing.”
`
`‘Message from Chief Judge James Donald Smith, Board of Patent Appeals
`
`and Interferences: USPTO Discusses Key Aspects of New Administrative
`
`Patent
`
`Trials,
`
`http ://www.uspto . gov/aia_implementation/smith-blog
`
`extravaganza.j sp (last visited 12/18/2012).
`
`9
`
`
`
`III.
`
`THE REFERENCES
`
`Schrader has proposed that
`
`the claims of the ‘973 patent are
`
`unpatentable based upon the four references described below.
`
`A. U.S. Patent No. 6,271,748 (“Derbyshire”)
`
`Derbyshire discloses a tire condition monitoring system configured to
`
`transmit tire pressure and temperature from a wheel unit to a receiver unit.
`
`Derbyshire’s system is aimed at conserving power to extend the installation
`
`life of a wheel unit. To accomplish this, Derbyshire teaches periodically and
`
`selectively applying and removing power from both an analog sensor portion
`
`and a digital circuit of a single transmitter-receiver pair. Derbyshire, FIG. 6
`
`(illustrating normal operating mode), col. 5,
`
`lines 19-28 (explaining that
`
`removing power from the analog portion reduces the power consumed), col.
`
`5, lines 60-64 (explaining that the digital circuit entering sleep mode reduces
`
`power consumed), Background (discussing power conservation as primary
`
`issue). Derbyshire does not discuss the use of multiple transmitters and the
`
`problems associated with collisions between transmitters, much less the use
`
`of an RC oscillator to avoid such collisions.
`
`In Derbyshire, the periods between data transmission are controlled by
`
`a digital circuit with its own timer and clock, and not the RC oscillator
`
`described by Schrader. Derbyshire, col. 7, line 60. Figure 2 of Derbyshire
`
`10
`
`
`
`shows a timer 26 and a system clock, both on the digital circuit 8b. The
`
`timer
`
`and clock are used to determine the
`
`time period between
`
`transmissions. Derbyshire, col. 7, lines 62-67, col. 8, lines 24-29, 65-66.
`
`The RC oscillator described by Schrader is used by the radio frequency
`
`transmitter 23
`
`to generate
`
`a
`
`reference
`
`frequency for
`
`transmission.
`
`Derbyshire, col. 6, lines 1-3. As shown by Figure 2 of Derbyshire, the timer
`
`and clock in the digital circuit 8b are independent of the RF transmitter 23.
`
`The discussion of the RC oscillator
`
`in Derbyshire relates
`
`to
`
`transmission efficiency of the RF transmitter 23, and not
`
`the timing of
`
`transmissions. Derbyshire recommends a more accurate ceramic or crystal
`
`oscillator, rather than an RC oscillator, to improve transmission efficiency.
`
`Derbyshire, col. 14,
`
`lines 41-50, col. 15,
`
`lines 2-10.
`
`If a less accurate
`
`oscillator is used, Manchester encoding of the transmission can help improve
`
`accuracy. Derbyshire, col. 14, lines 41-44.
`
`Transmission efficiency discussed in Derbyshire is not relevant to
`
`timing of transmissions. A car radio with an analog dial presents an
`
`analogous example of transmission efficiency.
`
`If the frequency on the dial
`
`matches the transmission frequency of a radio station, then the listener will
`
`hear the radio station clearly. As the dial is turned further, the sound quality
`
`degrades.
`
`In this example, the accuracy of the dial setting is equivalent to
`
`11
`
`
`
`the accuracy of the reference frequency in Derbyshire, which in turn is
`
`dependent on the accuracy of the oscillator. The sound quality is related to
`
`the concept of transmission efficiency in Derbyshire. Thus, an accurate
`
`oscillator generates an accurate reference frequency, resulting in better data
`
`reception (transmission efficiency). And just as it may take longer for the
`
`listener to recognize a song when sound quality is low, Derbyshire discloses
`
`that more time is required to transmit data transmission efficiency is lower.
`
`Derbyshire, col. 14,
`
`lines 52-54. As a result, Derbyshire recommends a
`
`more accurate ceramic or crystal oscillator
`
`to increase transmission
`
`efficiency, decrease transmission time, and hence reduce power usage.
`
`Derbyshire, col. 14, lines 54-56. This discussion has absolutely nothing to
`
`do with time periods between data transmission.
`
`The oscillator in the RF transmitter 23 is only used to generate a
`
`frequency for data transmission.
`
`It
`
`is true that the oscillations could be
`
`counted to operate a clock or timer (as a wristwatch works), but there is no
`
`such disclosure in Derbyshire.
`
`In fact, Derbyshire quite clearly discloses an
`
`unrelated clock and timer in Figure 2 that operate the digital circuit and
`
`control
`
`the timing between data transmissions. Additionally,
`
`in one
`
`embodiment the RF oscillator operates at 433MHz, whereas the clock in
`
`Figure 2 operates at 300kHz. Derbyshire, col. 19, line 66.
`
`12
`
`
`
`There is no disclosure that that clock and timer in Figure 2, which
`
`control the timing between data transmissions, are inaccurate or have any
`
`natural
`
`time lag.
`
`Derbyshire discusses
`
`the timing of transmissions
`
`extensively. Derbyshire, col. 7, line 60 - col. 9, line 13. All times are stated
`
`precisely (e.g., “two seconds,” “five minutes,” “sixty minutes”) and there is
`
`no mention of any variance or tolerance for the clock and timer.
`
`Because the oscillator
`
`in the RF transmitter simply generates a
`
`frequency and is not involved in the timing between data transmissions, it
`
`cannot be used to prevent collisions. The oscillator is simply not relevant to
`
`claim 1 of the ‘973 patent.
`
`B.
`
`U.S. Patent No. 6,486,773 (“Bailie”)
`
`Bailie is a TPM system that
`
`includes multiple transmitting units.
`
`While Bailie teaches collision avoidance, it does so with two approaches that
`
`have nothing to do with the imprecision of clocks.
`
`In the first approach, the
`
`timing of the transmissions from each transmitting unit is controlled by a
`
`predefined protocol.
`
`“While the time windows occur sequentially, their
`
`spacing in time is not defined by a regular periodicity. Rather, the start of
`
`successive time windows is timed in response to a predetermined duration
`
`code.” Bailie, col. 3, lines 3 6-40. Although Bailie teaches the use of data
`
`13
`
`
`
`bits having widths within certain tolerances, those tolerances have nothing to
`
`do with the precision of circuit clocks or to the natural time lags of clocks in
`
`different transmitters. Figure 2 of Bailie shows that the period between data
`
`transmissions is precise and not subject to any natural variance or tolerances.
`
`Bailie’s second approach for collision avoidance also has no relation
`
`to the natural
`
`time lag in clocks.
`
`In particular, Bailie also teaches an
`
`“increased pressure monitoring mode” utilized when the vehicle is
`
`in
`
`motion. To enter this mode, Bailie uses a switch that closes when wheel
`
`rotation causes the switch to reach a user-selectable gravity constant. Bailie,
`
`col. 6, lines 42-45. A switch is not equivalent to the natural time lag of a
`
`clock, as Schrader contends. This second approach is additionally not
`
`relevant to the ‘973 patent because it only operates when the vehicle is
`
`moving, whereas claim 1 of the ‘973 patent is operative in both parking
`
`mode and moving mode.
`
`C.
`
`U.S. Patent No. 6,404,246 (“Estakhri”)
`
`Estakhri no where mentions tire pressure monitors or collision
`
`avoidance using an imprecise oscillator. Estakhri discloses “[a] system and
`
`method of generating an output signal of very precise frequency without the
`
`use of a crystal oscillator.” Estakhri, Abstract. Instead of crystal oscillators,
`
`Estakhri teaches the use of RC oscillators. However, “to compensate for
`
`14
`
`
`
`component variation within each circuit...
`
`[Estakhri] provides means for
`
`achieving far greater frequency accuracy than is normally possible through
`
`use of RC oscillators,
`
`thereby satisfying circumstances requiring narrow
`
`tolerances.” Estakhri, col. 2, lines 34-3 8.
`
`Therefore, Estakhri is a general oscillator and no where mentions tire
`
`pressure monitoring much less using an imprecise oscillator to achieve
`
`collision avoidance.
`
`D.
`
`U.S. Patent No. 5,883,582 (“Bowers”)
`
`Bowers discloses “[a] method of reading multiple RFID [(radio
`
`frequency identification)] tags located in a field of an interrogating antenna.”
`
`Bowers, Abstract.
`
`Bowers teaches that
`
`its “RFID device has many
`
`applications, including inventory control of tagged items, such as for books
`
`in a library, raw materials in a manufacturing environment, or merchandise
`
`in a retail environment. Bowers, col. 10, lines 13-17; See also, col. 1, lines
`
`21-25 and 46-47. Bowers teaches that by using such RFID tags, costly
`
`mistakes
`
`in inventory during repacking can be avoided and manual
`
`inventory checking can be eliminated. Bowers, col. 1, lines 29-31, 39-39,
`
`and 47-52.
`
`To extract the identification of each RFID tag, an interrogation device
`
`transmits a continuous electromagnetic interrogation signal. Bowers does
`
`15
`
`
`
`not mention deploying his approach with tires or in TPM systems. This
`
`electromagnetic signal then induces a voltage in each RFID tag within the
`
`interrogation zone to provide power thereto. Bowers, col. 2, lines 31-40.
`
`“In response to being powered by the induced voltage, each [tag]. .
`
`. within
`
`the interrogation zone reads a respective prestored data field and repeatedly
`
`transmits a message stored therein.” Bowers, col. 2, lines 4 1-45.
`
`IV.
`
`INTER PARTES REVIEW SHOULD NOT BE INITIATED
`BECAUSE SCHRADER HAS NOT MADE A PRIMA F4CIE
`SHOWING AS TO THE UNPATENTABILITY OF ANY
`CLAIM OF THE ‘973 PATENT
`
`Schrader presents nine proposed grounds for rejection in its Petition
`
`(“PGR 1-9”).
`
`Inter Partes Review should not be granted as to any of these
`
`proposed grounds because Schrader’s petition is not likely to succeed.
`
`A.
`
`Claims 1-2, 4-5, 7, 9 and 11 Are Not Anticipated By
`Derbyshire (PGR 1)
`
`1. Schrader offers insufficient evidence to establish a prima
`facie case as to the anticipation of these claims and relies
`instead upon inadmissible attorney speculation
`
`The final paragraph of claim 1 of the ‘973 patent recites that “a
`
`natural
`
`time lag between various internal clocks. .
`
`. is used to prevent
`
`collisions between transmissions from the various wheel units.”
`
`The
`
`remaining claims 2, 4-5, 7, 9, and 11 depend upon claim 1 and therefore also
`
`include the same limitation. Schrader has failed to show that Derbyshire
`
`16
`
`
`
`teaches or suggests the above-mentioned claim language, and, consequently
`
`Derbyshire cannot be fairly applied as an anticipatory reference.
`
`Schrader’s objective evidence as to how Derbyshire reads onto the
`
`above-mentioned claim language
`
`is
`
`limited to three passages
`
`from
`
`Derbyshire. The first passage discusses the use of a relatively inaccurate RC
`
`oscillator with Manchester encoding in an RF transmitter (Derbyshire, col.
`
`14, lines 4 1-50); the second discusses a tolerance of a single oscillator in an
`
`RF transmitter
`
`(col.
`
`15,
`
`lines 1-9); and the third discusses repeating
`
`transmissions (col. 8, lines 47-51). These passages relate to transmission
`
`accuracy by the RF transmitter 23. They are not relevant to the ‘973 patent
`
`because they do not relate to the timing of data transmissions or the
`
`avoidance of transmission collisions.
`
`The remainder of Schrader’s
`
`“evidence” with respect to Derbyshire consists of pure attorney speculation
`
`that adds to the teachings of Derbyshire in order to arrive at the claimed
`
`invention. However, attorney speculation cannot take the place of factually
`
`supported objective evidence and Schrader’s attempt to add to the teachings
`
`of Derbyshire should be firmly rejected. See, e.g., In re Huang, 100 F.3d
`
`135, 139-140 (Fed. Cir. 1996). Derbyshire does not disclose using the
`
`natural time lag between clocks to prevent collisions.
`
`17
`
`
`
`2. Derbyshire does not teach or suggest a natural time lag
`between internal clocks to prevent collisions.
`
`First, as discussed above, there is no disclosure in Derbyshire that the
`
`RC oscillator is related to the clock and timer that control
`
`the timing
`
`between data transmissions. To the contrary, the RC oscillator disclosed by
`
`Derbyshire relates to the transmission efficiency. Because the RC oscillator
`
`is not involved in the timing of transmissions, it cannot be used to prevent
`
`collisions.
`
`Perhaps because relevant disclosures do not exist
`
`in Derbyshire,
`
`Schrader simply creates them sua sponte. Schrader asserts that “[b]ecause
`
`the ‘748 patent [Derbyshire] has multiple wheel units, and those wheel units
`
`include inaccurate RC oscillator internal clocks having a ‘large tolerance,’
`
`this will naturally create ‘lag’ between those clocks, i.e., the claimed ‘natural
`
`time lag between internal clocks.” Petition, App. A-i, pages 2-3. Schrader
`
`offers no citation from Derbyshire to support this proposition. That
`
`is
`
`because there is none. Schrader completely misses the point and misreads
`
`Derbyshire. The discussion of an RC oscillator in Derbyshire does not relate
`
`to timing between data transmissions. The only disclosed role of the RC
`
`oscillator is the generation of a reference frequency
`
`Moreover, a lag in the RC oscillator would have absolutely no effect
`
`on the operation of the Derbyshire wheel unit, and certainly would do
`
`18
`
`
`
`nothing to avoid data transmission collisions. An example explains why:
`
`consider a musical instrument tuner that generates a reference tone. The
`
`only purpose of the tuner is to generate a reference tone. A time delay in the
`
`tuner’s waveform has no significance. For example, a tuner that begins
`
`operation at time=O. 1 seconds will have a time-delayed waveform compared
`
`to a tuner that begins operation at timeO seconds. But the time-delay is not
`
`relevant and has no effect on a musician tuning an instrument. Only the
`
`pitch/tone (frequency of the waveform) is relevant. Likewise, to the extent
`
`the RC oscillator disclosed in Derbyshire has a lag, the lag has no effect
`
`because only the frequency is used by the RF transmitter
`
`Simply put, Derbyshire does not teach that a natural time lag exists
`
`between internal clocks in multiple wheel units to prevent collisions as
`
`claimed in the ‘973 patent. While Derbyshire does disclose an internal RC
`
`oscillator, that oscillator does not clock transmission timing and is used for a
`
`completely irrelevant purpose. The only thing Derbyshire discloses is a
`
`timing circuit. This is also insufficient because nothing is said as to the
`
`imprecision of any timing devices in that timing circuit.
`
`Second, whatever disclosure there is of timing mechanisms
`
`in
`
`Derbyshire,
`
`that
`
`level of disclosure was already considered during the
`
`prosecution of the ‘973 patent. During the original prosecution of the ‘973
`
`19
`
`
`
`patent, PCT publication WO 1996/015919 (“the ‘919 publication”) was
`
`considered and the claims allowed over this reference. The ‘919 publication
`
`teaches a UHF transmitter circuit 170 that makes tire pressure transmissions.
`
`See,
`
`‘919 publication, FIG. 1. The ‘919 publication specifies that “[t]he
`
`UHF circuit 170 is an oscillator and amplifier configuration which is
`
`frequency controlled by a Surface Acoustic Wave (SAW) resonator.” ‘919
`
`publication, page 8, lines 2-5. The ‘919 publication also mentions that the
`
`ASIC 100 (which drives the transmission process) runs a “clock counter,”
`
`implying a clock.
`
`If Schrader is correct that all oscillators are imprecise and
`
`can be used in all wheel units for effective collision prevention,
`
`the
`
`Examiner did consider this “teaching” of the ‘919 publication, but allowed
`
`the claims anyway.2 This being the case, Schrader’s IPR petition should not
`
`be granted because the same “teachings” present in the ‘919 publicati
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