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`In the Inter Partes Review of:
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`Case No.: IPR2013—000l4 -
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`U.S. Patent No. 6,998,973
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`Filed: February 5, 2004
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`Issued: February 14, 2006
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`Attorney Docket No.: 73139/0000005
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`Inventor(s): Lefaure, Philippe
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`Assignee: Continental Automotive Systems US, Inc.
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`Title: DATA TRANSMISSION METHOD Panel: Administrative Patent Judges
`FOR A TIRE PRES SIRE MONITORING Medley, Cocks and Kim
`SYSTEM OF A VEHICLE
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`Mail Stop Patent Board
`Patent Trial and Appeal Board
`P.O. Box 1450
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`Alexandria, VA 22313-1450
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`REQUEST FOR REHEARING UNDER 37 CFR §42.71gc) and gdg
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`The Petitioners, Schrader-Bridgeport International, Inc. and Schrader
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`Electronics, Inc, (collectively, “Schrader”), respectfully request the Patent Trial &
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`Appeal Board (“the Board”) to reconsider the denial of one of the grounds of
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`rejection set forth in its Decision dated March 13, 2013 (Paper 12) to institute the
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`above—captioned inter partes review.
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`As discussed below, the Board granted review for one ground of rejection
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`based on obviousness (the Derbyshire, Bailie and Bowers combination), denied
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`two anticipation grounds and one ground based on obvious based on its claim
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`interpretation, and denied the remaining five grounds as redundant over the
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`Derbyshire, Bailie, and Bowers combination. Schrader is asking for just one of
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`those grounds, namely the obvious grounds over Bailie and Bowers (Without
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`Derbyshire) (Ground 8 below) to be included in the proceeding to avoid the
`procedural prejudice discussed below.
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`This Request is timely filed within fourteen days of the Decision. 37 CFB
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`§42.71(d). No prior authorization is required to request rehearing. 37 CFR
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`§42.71(c). ‘
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`Statement of Facts
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`. 1.
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`Schrader filed its Petition for Inter Partes Review on October 8,
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`2012. That Petition included nine proposed grounds of rejection based on four
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`patents Derbyshire (US627l748), Estakhri (US6404246), Bailie (US6486773) and
`Bowers (5883582):
`A
`I
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`Ground 1: Claims 1-2, 4-5, 7, 9 and 11 are anticipated by Derbyshire.
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`Ground 2: Claims 3, 7, 8, 10 and 11 are obvious over Derbyshire.
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`Ground 3: Claims 1-5 and 7-11 are obvious over Derbyshire in View
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`of Estakhri.
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`Ground 4: Claims 1-5 and 7-11 are obvious over Derbyshire in view
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`of Bowers.
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`Ground 5: Claims 1-5 and 7-11 are obvious over Derbyshire in View
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`of Bailie.
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`Ground 6: Claims 1,4-5, 7 and 9-11 are anticipated by Bailie.
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`Ground 7: Claims 1-5 and 7-11 are obvious over Bailie in View of
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`Estakhri.
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`Ground 8: Claims 1-5 and 7-11 are obvious over Bailie in View of
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`Bowers.
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`Ground 9: Claims 1-5 and 7-11 are obvious over Derbyshire, Bailie
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`and Bowers.
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`See Paper 1, passim.
`2.
`Bailie and Derbyshire both teach the basic components of a tire
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`pressure monitoring system with the claimed “running mode” and “parking mode”
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`“data transmission phases,” as well as the preamble of claim 1. The charts in
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`Appendices A-1, A-2 and B-1 detailed how Derbyshire applies to the basic
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`elements of claims 1-5 and 9-11, and how Bailie applies to the basic elements of
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`claims 1, 4-5, 7 and 9-11. Paper 1 at 15-16 and 20. Bowers was relied upon in
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`proposed grounds 4, 8 and 9 for the teachings of a highly imprecise oscillator that
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`‘satisfies the last paragraph of claim 1, as well the features in dependent claims 2-3
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`and 8. Id. at 17 and 22-24, and Appendices A-4 and B-3. Hence, for obviousness
`purposes, Schrader proposed in ground 4 that Derbyshire and Bowers could be
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`combined, and in ground 8 that Bailie and Bowers could be combined.
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`3.
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`Bailie expressly discloses the need for an anti—collision feature,
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`and this was acknowledged by the Board. Paper 13 at 16. That teaching was relied
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`upon in its analysis adopting the Derbyshire, Bailie, Bowers combination of
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`proposed ground 9. Bailie also teaches the benefits of using imprecise components
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`in the tire pressure sensors to help avoid transmission collisions, namely the roll
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`switches that trigger thestart of the “driving mode” when the vehicle is rolling and
`the “parking mode” when the vehicleis stopped. Paper 1 at 19-23 (citing Bailie).
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`4.
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`The Board instituted this inter partes review in the Decision
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`dated March 13, 2013 solely on proposed grounds 9, i.e., the Derbyshire, Bailie,
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`and Bowers combination. Paper 12 at 14-19. The Board denied inter partes
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`review on grounds 1, 2, and 6 based on its interpretation of the ‘973 patent claims
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`as compared to the cited prior art. Id. at 10-14. However, the Board also denied
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`grounds 3, 4, 5, 7 and 8 on the basis of redundancy, and particularly because
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`Estahkri was allegedly duplicative of Bowers, and because the Derbyshire/Bowers
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`and Bailie/Bowers combinations were allegedly redundant of the
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`Derbyshire/Bailie/Bowers combination. Id. at 19-20.
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`5.
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`Prior to the Decision, the Patent Owner, Continental
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`Automotive ‘Systems, Inc. (“Continental”) filed its Preliminary Response of Patent
`Owner on January 10, 2013. Paper 11.
`I
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`6.
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`Continental’s Preliminary Response addressed each and every
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`grounds of rejection proposed by Schrader. Paper 11, pczssim. Continental
`disputed proposed ground 9, the Derbyshire, Bailie, and Bowers combination, for
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`an alleged lack of clarity and duplicativeness of other grounds of rejection. Id. at
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`55-56. However, Continental also argued with respect to other grounds of
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`rejection that Derbyshire should not be combined with either Bowers or Bailie, for
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`the alleged reason that Derbyshire teaches away or lacks a sufficient reason to
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`combine. Id. at 37-42.
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`7.
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`The Board disagreed with Continental’s arguments against
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`proposed grounds 9 for lack of clarity and duplicativeness. Paper 13 at 16-17. '
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`Although Continental’s arguments with respect to combining Derbyshire with
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`. Bailie or Bowers were directed to other grounds of rejection, the Board also
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`considered those arguments with respect to proposed ground 9, finding them
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`“unavailing.” Id. at 18. Hence, proposed ground 9 was included in this
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`proceeding.
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`Argument
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`Schrader recognizes that grounds 4, 8 and 9 are quite similar, as Derbyshire
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`and Bailie both teach the basic elements of a tire pressure monitoring system and a
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`data transmission method, while Bowers is relied upon for the highly imprecise
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`clock that gives rise to the “natural time lag”, feature in the last paragraph of claim
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`1, as well as the features of dependent claims 2, 3 and 8. Likewise, Schrader is
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`also understanding of the burden that deciding multiple grounds of rejection based
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`on many different references may place on the Board’s and the parties’ resources,
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`and that normally the Board should have substantial latitude in with respect to
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`managing cumulative grounds of rejection. Here, however, Schrader submits that
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`the Board exceeded this discretion by narrowing the proposed grounds of rejection
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`too far, such that Schrader may be prejudiced by losing its right to argue other
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`Viable grounds that are not based on Derbyshire, and thus would stand separately
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`and unaffected by certain ‘arguments advanced by Continental in its Preliminary
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`Response with respect to Derbyshire.
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`To remedy this issue, Schrader requests the addition to the proceeding of one
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`further proposed ground, namely ground 8 based on Bailie and Bowers. As will
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`be discussed below, the relief requested will add little extra burden on the Board’s
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`and parties’ resources, and is narrowly tailoredl to avoid the possibility that
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`Schrader cannot argue the Bailie/Bowers combination separately from Derbyshire
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`should the Board or Federal Circuit ever change its current view of Derbyshire.
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`Fundamentally, Schrader does not disagree with any of the Board’s technical
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`or legal analysis with respect to proposed ground 9 itself, i.e., the Derbyshire,
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`‘ To ensure that the relief requested is narrowly tailored, Schrader is not asking the
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`Board to consider Estahkri further, understanding that such a request would
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`require the Board to address an additional prior art reference and additional
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`rejections based on permutations of it, Bailie, and Derbyshire.
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`Bailie, and Bowers combination. This requestfor rehearing thus does not object to
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`those merits of the Board’s decision. 2
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`Instead, Schrader’s concern is that Continental has taken the position that
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`Derbyshire cannot be combined with either Bailie or Bowers. "Paper 11 at 37-42;
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`Statement of Fact (“SOF”) 6. In particular, Continental argued that Derbyshire
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`teaches away from including more inaccuracy in its system, and has power
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`consumption concerns that may allegedly arise from the proposed combination. Id.
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`While the Board disagreed with and declined to adopt Continental’s arguments,
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`Paper 13 at 18, the Board’s decision is interlocutory. Although Schrader submits
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`(emphatically) that the Board is correct in this regard, it seems clear from the
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`Preliminary Response that Continental will continue to advance its position on
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`Derbyshire. The likelihood that Continental will maintain this position, of course,
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`is heightened by the fact that the sole ground under review includes Derbyshire as
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`part of the combination. Therefore it is also possible (however unlikely) that the
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`Board could change its mind in its final decision, or that the Court of Appeals for
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`2 Schrader takes no position on proposed -ground 1-3 or 5-7 (without conceding its
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`right to advance those positions in the co-pending District Court litigation based
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`on how the claims are construed in that proceeding).
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`the Federal Circuit could rule differently, thus precluding Derbyshire from being
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`relied upon in the proposed combination.
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`In that event, Schrader would be left without recourse to its proposed ground
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`8 based on Bailie and Bowers (without Derbyshire) — not because the Board has
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`decided it is a position that lacks merit in view ofthe claims as ‘interpreted, but
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`rather solely for the reason that it is allegedly redundant. 37 CFR §42.7l; 35 USC
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`§3 l4(d).3 And the unfortunately reality of such an outcome is that it would reveal
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`that ground 8 was in fact not duplicate — but only after it is procedurally too late to
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`be considered in the proceeding.
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`3 This issue would substantially less of a concern to Schrader if the Board adopted
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`proposed ground 9 in its final decision, but declined to reached proposed ground
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`8 as moot or redundant.
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`In that event, Schrader would have recourse to argue
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`proposed ground 8 on appeal to the Federal Circuit as a separate basis for
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`affirmance, or on remand if ground 9 were reversed. Hence, the concern raised
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`herein by Schrader is not the redundancy or mootness of proposed ground 8 as a
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`general concept. Instead, Schrader’s concern is the timing of that finding in the
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`Board’s interlocutory decision and Schrader’s inability to seek recourse later in
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`the proceeding in the event the final decision is different.
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`As noted above in the Statement of Facts, Bailie on its own as applied in
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`proposed ground 8 can be relied upon as the base reference to teach most of the
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`elements of claim 1, as well as dependent claims 4-5, 7 and 9-11, while Bowers
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`teaches the “natural time lag” feature of claim 1, as well as the features of claims
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`2-3 and 8,. SOF 2 (citing, in particular, Paper 1 at 20 and 22-24, Appendices B-1
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`and B-3, each supporting proposed grounds 8 and 9). Hence, Schrader proposed"-
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`ground 8 that Bailie and Bowers should be combined to render claims 1-5 and 7-11
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`obvious.
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`There is animportant, non-cumulative difference between Bailie and
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`Derbyshire that makes it especially appropriate to consider the Bailie and Bowers
`combination (ground 8) without Derbyshire. Both Bailie and Derbyshire teach the
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`basic elements of claim 1, as well as Various dependent claims, albeit without the
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`sufficiently imprecise clocks required under the Board’s interpretation of claim 1.
`However, ‘Bailie has the furtherteaching ofthe desirability of using an anti-
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`collision feature in tire pressure sensors. This provides the rationale to adopt the
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`highly imprecise anti-collision clocks taught in Bowers, and was relied upon by the
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`“Board in adopting proposed ground 9. Paper 13 at 16. Bailie also teaches the
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`benefits of using imprecise components in the tire pressure sensors, e.g., the roll
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`switches that trigger the start of the “driving mode” when the vehicle is rolling and
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`the “parking mode” when the vehicle is stopped, to help avoid transmission
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`
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`collisions. Paper 1 at 21-23 (citing Bailie). This express teaching of using
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`imprecise components in the tire pressure sensor itself is further rationale to use the
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`‘highly imprecise clock in Bowers for the very same reason.
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`Likewise, Derbyshire shows that RC oscillators can be used in tire pressure
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`sensors, which is something not expressly taught in Bailie.
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`So, Derbyshire and Bail-ie each have similar teachings in regards to the
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`general construct of tire pressure sensor systems and how they operate, but each is
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`different in ways that are related to the proposed grounds of rejection. They are
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`not entirely cumulative of one another.
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`More importantly, Bailie teaches the general construct of tire pressure sensor
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`systems and how they operate, and also teaches the express desirability of an anti-
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`collision feature as the rationale for the combination with the highly imprecise RC
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`anti-collision clocks of Bowers.. Bailie can thus stand on its own as a base
`reference without Derbyshire. That is why Schrader presented the Bailie and
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`"Bowers combination as the separate proposed ground 8. But Derbyshire also
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`teaches that same general construct with the addition of an RC oscillator already in
`the sensor — which is why ground 9 was proposed separately with the Derbyshire,
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`Bailie, and Bowers combination. Moreover, the Bailie/Bowers combination in
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`ground 8 can stand irrespective of Continental’s arguments that Derbyshire should
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`not be combined with those references.
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`10
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`Schrader submits that including proposed ground 8 in the proceeding will
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`not unduly burden the Board or the parties. The Board already has to consider
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`Derbyshire, Bailie and Bowers to decide proposed ground 9. Also, both proposed
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`grounds 8 and 9 rely on Bailie for the same rationale to combine, and on Bowers
`for the highly imprecise anti-collision clocks, so those issues are common to both
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`grounds. Moreover, there appears to be no dispute in the proceeding that both
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`Derbyshire and Bailie teach the general construct of tire pressure sensor systems
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`and how they operate. _ So, requesting consideration of Bailie and Bowers alone is
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`not asking the Board to consider additional prior art references or reasons to
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`combine references. Instead, the main focus of the dispute revolves around (a)
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`whether Bowers is analogous art, and (b) whether Bailie provides sufficient
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`rationale to apply the imprecise clock/anti-collisions teachings of Bowers to tire
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`pressure sensors. The Board will be deciding these issues irrespective of whether
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`proposed ground 8 is added to the proceeding or not.
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`The only remaining issue is Continental’s position that Derbyshire should
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`not be combined with either Bailie or Bowers, a position currently rejected by the
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`Board. However, even if the possibility that the final decision will differ from the
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`interlocutory decision might be unlikely, it is unfortunately not guaranteed. Thus,
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`Schrader has filed this Request to avoid the risk of that prejudice occurring at a
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`time when it is too late to remedy. I
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`11
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`Conclusion
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`_ In summary, the relief Schrader seeks is to avoid the proceduralpprejudice
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`that could occur should the Board (or Federal Circuit) ever differ from the current
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`interlocutory decision and agree with Continental that Derbyshire should not be
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`combined with Bailie and Bowers. If that were to occur, then Schrader would be
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`left with no ability to rely on the teachings of Bailie and Bowers that stand alone
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`independent from Derbyshire in this USPTO proceeding (and pursuing that option
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`in District Court is of course Veryexpensive, which is well—known to be part of the
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`reason for the creation of USPTO proceedings). Schrader submits that the Board’s
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`Decision to limit the inter partes review constitutes an abuse of discretion under 37
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`CFR §4l.72(c) because the risk of prejudice to Schrader’s merits position if it is
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`not allowed to pursue a ground not reliant on Derbyshire, such as ground 8,
`substantially outweighs the minimal burden imposed by considering proposed
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`ground 8 along with ground 9.
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`Request for Relief
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`For the foregoing reasons, the Board is respectfully requested to include
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`proposed ground 8, namely the obviousness rejection over Bailie and Bowers
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`against claims ll-5 and 7-1 1, in this inter partes review proceeding, and to modify A
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`the Decision (Paper 13) to institute inter partes review accordingly, or issue a
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`supplemental Decision or other paper adequate to effect the request relief.
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`12
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`Please charge any fees, if any, associated with the submission of this paper _
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`to Deposit Account Number 033975 (Ref. No. 73139/0000005). The
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`Commissioner for Patents is also authorized to credit any over payments to the
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`aboVe—referenced Deposit Account.
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`Respectfully submitted,
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`PILLSBURY WINTHROP SHAW
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`
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`Tel.-No.‘ 703.770.7538
`Fax No. 703.770.7901
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`P.O. Box 10500
`McLean, VA 22102
`(703) 770-7900
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`
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true copy of the REQUEST FOR REHEARING
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`UNDER 37 CFR §42.71(c) and (d) was served in their entirety by EXPRESS
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`.
`'
`14-
`MAIL® thisig day of March, 2013 on the attorney of record of Continental
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`Automotive Systems US, Inc., owner of the subject patent, as indicated below:
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`Timothy R. Baumann
`Steven G. Parmeleee
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`Fitch Even Tabin & Flannery, LLP
`120 South LaSalle Street
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`Suite 1600
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`Chicago, Illinois 60603
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`4, A courtesy copy of the same was also emailed to tbaumanngalfitcheven.com
`and sgparm@f1tcheven.com, as requested by the petitioner.
`
`PILL BURY WINTHROP SHAW
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`
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`Reg.N .43,560 _
`Te1.No. 703.770.7538‘
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`Fax No. 703.770.7901
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`P.O. Box 10500
`
`McLean, VA 22102
`(703) 770-7900
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`403898675v1