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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In the Inter Partes Review of:
`
`Case No.: IPR2013—000l4 -
`
`U.S. Patent No. 6,998,973
`
`Filed: February 5, 2004
`
`Issued: February 14, 2006
`
`Attorney Docket No.: 73139/0000005
`
`Inventor(s): Lefaure, Philippe
`
`Assignee: Continental Automotive Systems US, Inc.
`
`Title: DATA TRANSMISSION METHOD Panel: Administrative Patent Judges
`FOR A TIRE PRES SIRE MONITORING Medley, Cocks and Kim
`SYSTEM OF A VEHICLE
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`P.O. Box 1450
`
`Alexandria, VA 22313-1450
`
`REQUEST FOR REHEARING UNDER 37 CFR §42.71gc) and gdg
`
`The Petitioners, Schrader-Bridgeport International, Inc. and Schrader
`
`Electronics, Inc, (collectively, “Schrader”), respectfully request the Patent Trial &
`
`Appeal Board (“the Board”) to reconsider the denial of one of the grounds of
`
`rejection set forth in its Decision dated March 13, 2013 (Paper 12) to institute the
`
`above—captioned inter partes review.
`
`As discussed below, the Board granted review for one ground of rejection
`
`based on obviousness (the Derbyshire, Bailie and Bowers combination), denied
`
`two anticipation grounds and one ground based on obvious based on its claim
`
`

`
`interpretation, and denied the remaining five grounds as redundant over the
`
`Derbyshire, Bailie, and Bowers combination. Schrader is asking for just one of
`
`those grounds, namely the obvious grounds over Bailie and Bowers (Without
`
`Derbyshire) (Ground 8 below) to be included in the proceeding to avoid the
`procedural prejudice discussed below.
`
`This Request is timely filed within fourteen days of the Decision. 37 CFB
`
`§42.71(d). No prior authorization is required to request rehearing. 37 CFR
`
`§42.71(c). ‘
`
`Statement of Facts
`
`. 1.
`
`Schrader filed its Petition for Inter Partes Review on October 8,
`
`2012. That Petition included nine proposed grounds of rejection based on four
`
`patents Derbyshire (US627l748), Estakhri (US6404246), Bailie (US6486773) and
`Bowers (5883582):
`A
`I
`
`Ground 1: Claims 1-2, 4-5, 7, 9 and 11 are anticipated by Derbyshire.
`
`Ground 2: Claims 3, 7, 8, 10 and 11 are obvious over Derbyshire.
`
`Ground 3: Claims 1-5 and 7-11 are obvious over Derbyshire in View
`
`of Estakhri.
`
`Ground 4: Claims 1-5 and 7-11 are obvious over Derbyshire in view
`
`of Bowers.
`
`Ground 5: Claims 1-5 and 7-11 are obvious over Derbyshire in View
`
`of Bailie.
`
`Ground 6: Claims 1,4-5, 7 and 9-11 are anticipated by Bailie.
`
`

`
`Ground 7: Claims 1-5 and 7-11 are obvious over Bailie in View of
`
`Estakhri.
`
`Ground 8: Claims 1-5 and 7-11 are obvious over Bailie in View of
`
`Bowers.
`
`Ground 9: Claims 1-5 and 7-11 are obvious over Derbyshire, Bailie
`
`and Bowers.
`
`See Paper 1, passim.
`2.
`Bailie and Derbyshire both teach the basic components of a tire
`
`pressure monitoring system with the claimed “running mode” and “parking mode”
`
`“data transmission phases,” as well as the preamble of claim 1. The charts in
`
`Appendices A-1, A-2 and B-1 detailed how Derbyshire applies to the basic
`
`elements of claims 1-5 and 9-11, and how Bailie applies to the basic elements of
`
`claims 1, 4-5, 7 and 9-11. Paper 1 at 15-16 and 20. Bowers was relied upon in
`
`proposed grounds 4, 8 and 9 for the teachings of a highly imprecise oscillator that
`
`‘satisfies the last paragraph of claim 1, as well the features in dependent claims 2-3
`
`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
`
`combined, and in ground 8 that Bailie and Bowers could be combined.
`
`3.
`
`Bailie expressly discloses the need for an anti—collision feature,
`
`and this was acknowledged by the Board. Paper 13 at 16. That teaching was relied
`
`upon in its analysis adopting the Derbyshire, Bailie, Bowers combination of
`
`proposed ground 9. Bailie also teaches the benefits of using imprecise components
`
`

`
`in the tire pressure sensors to help avoid transmission collisions, namely the roll
`
`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).
`
`4.
`
`The Board instituted this inter partes review in the Decision
`
`dated March 13, 2013 solely on proposed grounds 9, i.e., the Derbyshire, Bailie,
`
`and Bowers combination. Paper 12 at 14-19. The Board denied inter partes
`
`review on grounds 1, 2, and 6 based on its interpretation of the ‘973 patent claims
`
`as compared to the cited prior art. Id. at 10-14. However, the Board also denied
`
`grounds 3, 4, 5, 7 and 8 on the basis of redundancy, and particularly because
`
`Estahkri was allegedly duplicative of Bowers, and because the Derbyshire/Bowers
`
`and Bailie/Bowers combinations were allegedly redundant of the
`
`Derbyshire/Bailie/Bowers combination. Id. at 19-20.
`
`5.
`
`Prior to the Decision, the Patent Owner, Continental
`
`Automotive ‘Systems, Inc. (“Continental”) filed its Preliminary Response of Patent
`Owner on January 10, 2013. Paper 11.
`I
`
`6.
`
`Continental’s Preliminary Response addressed each and every
`
`grounds of rejection proposed by Schrader. Paper 11, pczssim. Continental
`disputed proposed ground 9, the Derbyshire, Bailie, and Bowers combination, for
`
`an alleged lack of clarity and duplicativeness of other grounds of rejection. Id. at
`
`55-56. However, Continental also argued with respect to other grounds of
`
`

`
`rejection that Derbyshire should not be combined with either Bowers or Bailie, for
`
`the alleged reason that Derbyshire teaches away or lacks a sufficient reason to
`
`combine. Id. at 37-42.
`
`7.
`
`The Board disagreed with Continental’s arguments against
`
`proposed grounds 9 for lack of clarity and duplicativeness. Paper 13 at 16-17. '
`
`Although Continental’s arguments with respect to combining Derbyshire with
`
`. Bailie or Bowers were directed to other grounds of rejection, the Board also
`
`considered those arguments with respect to proposed ground 9, finding them
`
`“unavailing.” Id. at 18. Hence, proposed ground 9 was included in this
`
`proceeding.
`
`Argument
`
`Schrader recognizes that grounds 4, 8 and 9 are quite similar, as Derbyshire
`
`and Bailie both teach the basic elements of a tire pressure monitoring system and a
`
`data transmission method, while Bowers is relied upon for the highly imprecise
`
`clock that gives rise to the “natural time lag”, feature in the last paragraph of claim
`
`1, as well as the features of dependent claims 2, 3 and 8. Likewise, Schrader is
`
`also understanding of the burden that deciding multiple grounds of rejection based
`
`on many different references may place on the Board’s and the parties’ resources,
`
`and that normally the Board should have substantial latitude in with respect to
`
`

`
`managing cumulative grounds of rejection. Here, however, Schrader submits that
`
`the Board exceeded this discretion by narrowing the proposed grounds of rejection
`
`too far, such that Schrader may be prejudiced by losing its right to argue other
`
`Viable grounds that are not based on Derbyshire, and thus would stand separately
`
`and unaffected by certain ‘arguments advanced by Continental in its Preliminary
`
`Response with respect to Derbyshire.
`
`To remedy this issue, Schrader requests the addition to the proceeding of one
`
`further proposed ground, namely ground 8 based on Bailie and Bowers. As will
`
`be discussed below, the relief requested will add little extra burden on the Board’s
`
`and parties’ resources, and is narrowly tailoredl to avoid the possibility that
`
`Schrader cannot argue the Bailie/Bowers combination separately from Derbyshire
`
`should the Board or Federal Circuit ever change its current view of Derbyshire.
`
`Fundamentally, Schrader does not disagree with any of the Board’s technical
`
`or legal analysis with respect to proposed ground 9 itself, i.e., the Derbyshire,
`
`‘ To ensure that the relief requested is narrowly tailored, Schrader is not asking the
`
`Board to consider Estahkri further, understanding that such a request would
`
`require the Board to address an additional prior art reference and additional
`
`rejections based on permutations of it, Bailie, and Derbyshire.
`
`

`
`Bailie, and Bowers combination. This requestfor rehearing thus does not object to
`
`those merits of the Board’s decision. 2
`
`Instead, Schrader’s concern is that Continental has taken the position that
`
`Derbyshire cannot be combined with either Bailie or Bowers. "Paper 11 at 37-42;
`
`Statement of Fact (“SOF”) 6. In particular, Continental argued that Derbyshire
`
`teaches away from including more inaccuracy in its system, and has power
`
`consumption concerns that may allegedly arise from the proposed combination. Id.
`
`While the Board disagreed with and declined to adopt Continental’s arguments,
`
`Paper 13 at 18, the Board’s decision is interlocutory. Although Schrader submits
`
`(emphatically) that the Board is correct in this regard, it seems clear from the
`
`Preliminary Response that Continental will continue to advance its position on
`
`Derbyshire. The likelihood that Continental will maintain this position, of course,
`
`is heightened by the fact that the sole ground under review includes Derbyshire as
`
`part of the combination. Therefore it is also possible (however unlikely) that the
`
`Board could change its mind in its final decision, or that the Court of Appeals for
`
`2 Schrader takes no position on proposed -ground 1-3 or 5-7 (without conceding its
`
`right to advance those positions in the co-pending District Court litigation based
`
`on how the claims are construed in that proceeding).
`
`

`
`the Federal Circuit could rule differently, thus precluding Derbyshire from being
`
`relied upon in the proposed combination.
`
`In that event, Schrader would be left without recourse to its proposed ground
`
`8 based on Bailie and Bowers (without Derbyshire) — not because the Board has
`
`decided it is a position that lacks merit in view ofthe claims as ‘interpreted, but
`
`rather solely for the reason that it is allegedly redundant. 37 CFR §42.7l; 35 USC
`
`§3 l4(d).3 And the unfortunately reality of such an outcome is that it would reveal
`
`that ground 8 was in fact not duplicate — but only after it is procedurally too late to
`
`be considered in the proceeding.
`
`3 This issue would substantially less of a concern to Schrader if the Board adopted
`
`proposed ground 9 in its final decision, but declined to reached proposed ground
`
`8 as moot or redundant.
`
`In that event, Schrader would have recourse to argue
`
`proposed ground 8 on appeal to the Federal Circuit as a separate basis for
`
`affirmance, or on remand if ground 9 were reversed. Hence, the concern raised
`
`herein by Schrader is not the redundancy or mootness of proposed ground 8 as a
`
`general concept. Instead, Schrader’s concern is the timing of that finding in the
`
`Board’s interlocutory decision and Schrader’s inability to seek recourse later in
`
`the proceeding in the event the final decision is different.
`
`

`
`As noted above in the Statement of Facts, Bailie on its own as applied in
`
`proposed ground 8 can be relied upon as the base reference to teach most of the
`
`elements of claim 1, as well as dependent claims 4-5, 7 and 9-11, while Bowers
`
`teaches the “natural time lag” feature of claim 1, as well as the features of claims
`
`2-3 and 8,. SOF 2 (citing, in particular, Paper 1 at 20 and 22-24, Appendices B-1
`
`and B-3, each supporting proposed grounds 8 and 9). Hence, Schrader proposed"-
`
`ground 8 that Bailie and Bowers should be combined to render claims 1-5 and 7-11
`
`obvious.
`
`There is animportant, non-cumulative difference between Bailie and
`
`Derbyshire that makes it especially appropriate to consider the Bailie and Bowers
`combination (ground 8) without Derbyshire. Both Bailie and Derbyshire teach the
`
`basic elements of claim 1, as well as Various dependent claims, albeit without the
`
`sufficiently imprecise clocks required under the Board’s interpretation of claim 1.
`However, ‘Bailie has the furtherteaching ofthe desirability of using an anti-
`
`collision feature in tire pressure sensors. This provides the rationale to adopt the
`
`highly imprecise anti-collision clocks taught in Bowers, and was relied upon by the
`
`“Board in adopting proposed ground 9. Paper 13 at 16. Bailie also teaches the
`
`benefits of using imprecise components in the tire pressure sensors, e.g., the roll
`
`switches that trigger the start of the “driving mode” when the vehicle is rolling and
`
`the “parking mode” when the vehicle is stopped, to help avoid transmission
`
`

`
`collisions. Paper 1 at 21-23 (citing Bailie). This express teaching of using
`
`imprecise components in the tire pressure sensor itself is further rationale to use the
`
`‘highly imprecise clock in Bowers for the very same reason.
`
`Likewise, Derbyshire shows that RC oscillators can be used in tire pressure
`
`sensors, which is something not expressly taught in Bailie.
`
`So, Derbyshire and Bail-ie each have similar teachings in regards to the
`
`general construct of tire pressure sensor systems and how they operate, but each is
`
`different in ways that are related to the proposed grounds of rejection. They are
`
`not entirely cumulative of one another.
`
`More importantly, Bailie teaches the general construct of tire pressure sensor
`
`systems and how they operate, and also teaches the express desirability of an anti-
`
`collision feature as the rationale for the combination with the highly imprecise RC
`
`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
`
`"Bowers combination as the separate proposed ground 8. But Derbyshire also
`
`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,
`
`Bailie, and Bowers combination. Moreover, the Bailie/Bowers combination in
`
`ground 8 can stand irrespective of Continental’s arguments that Derbyshire should
`
`not be combined with those references.
`
`10
`
`

`
`Schrader submits that including proposed ground 8 in the proceeding will
`
`not unduly burden the Board or the parties. The Board already has to consider
`
`Derbyshire, Bailie and Bowers to decide proposed ground 9. Also, both proposed
`
`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
`
`grounds. Moreover, there appears to be no dispute in the proceeding that both
`
`Derbyshire and Bailie teach the general construct of tire pressure sensor systems
`
`and how they operate. _ So, requesting consideration of Bailie and Bowers alone is
`
`not asking the Board to consider additional prior art references or reasons to
`
`combine references. Instead, the main focus of the dispute revolves around (a)
`
`whether Bowers is analogous art, and (b) whether Bailie provides sufficient
`
`rationale to apply the imprecise clock/anti-collisions teachings of Bowers to tire
`
`pressure sensors. The Board will be deciding these issues irrespective of whether
`
`proposed ground 8 is added to the proceeding or not.
`
`The only remaining issue is Continental’s position that Derbyshire should
`
`not be combined with either Bailie or Bowers, a position currently rejected by the
`
`Board. However, even if the possibility that the final decision will differ from the
`
`interlocutory decision might be unlikely, it is unfortunately not guaranteed. Thus,
`
`Schrader has filed this Request to avoid the risk of that prejudice occurring at a
`
`time when it is too late to remedy. I
`
`11
`
`

`
`Conclusion
`
`_ In summary, the relief Schrader seeks is to avoid the proceduralpprejudice
`
`that could occur should the Board (or Federal Circuit) ever differ from the current
`
`interlocutory decision and agree with Continental that Derbyshire should not be
`
`combined with Bailie and Bowers. If that were to occur, then Schrader would be
`
`left with no ability to rely on the teachings of Bailie and Bowers that stand alone
`
`independent from Derbyshire in this USPTO proceeding (and pursuing that option
`
`in District Court is of course Veryexpensive, which is well—known to be part of the
`
`reason for the creation of USPTO proceedings). Schrader submits that the Board’s
`
`Decision to limit the inter partes review constitutes an abuse of discretion under 37
`
`CFR §4l.72(c) because the risk of prejudice to Schrader’s merits position if it is
`
`not allowed to pursue a ground not reliant on Derbyshire, such as ground 8,
`substantially outweighs the minimal burden imposed by considering proposed
`
`ground 8 along with ground 9.
`
`Request for Relief
`
`For the foregoing reasons, the Board is respectfully requested to include
`
`proposed ground 8, namely the obviousness rejection over Bailie and Bowers
`
`against claims ll-5 and 7-1 1, in this inter partes review proceeding, and to modify A
`
`the Decision (Paper 13) to institute inter partes review accordingly, or issue a
`
`supplemental Decision or other paper adequate to effect the request relief.
`
`12
`
`

`
`Please charge any fees, if any, associated with the submission of this paper _
`
`to Deposit Account Number 033975 (Ref. No. 73139/0000005). The
`
`Commissioner for Patents is also authorized to credit any over payments to the
`
`aboVe—referenced Deposit Account.
`
`Respectfully submitted,
`
`PILLSBURY WINTHROP SHAW
`
`
`
`Tel.-No.‘ 703.770.7538
`Fax No. 703.770.7901
`
`P.O. Box 10500
`McLean, VA 22102
`(703) 770-7900
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true copy of the REQUEST FOR REHEARING
`
`UNDER 37 CFR §42.71(c) and (d) was served in their entirety by EXPRESS
`
`.
`'
`14-
`MAIL® thisig day of March, 2013 on the attorney of record of Continental
`
`Automotive Systems US, Inc., owner of the subject patent, as indicated below:
`
`Timothy R. Baumann
`Steven G. Parmeleee
`
`Fitch Even Tabin & Flannery, LLP
`120 South LaSalle Street
`
`Suite 1600
`
`Chicago, Illinois 60603
`
`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
`
`
`
`Reg.N .43,560 _
`Te1.No. 703.770.7538‘
`
`Fax No. 703.770.7901
`
`P.O. Box 10500
`
`McLean, VA 22102
`(703) 770-7900
`
`403898675v1

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