IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In the Inter Partes Review of:
`
`Trial Number: To Be Assigned
`
`US Patent No. 6,998,973
`
`Filed: February 5, 2004
`
`Issued: February 14, 2006
`
`Attorney Docket N0.: 73139/0000005
`
`Inventor(s): Lefaure, Philippe
`
`Assignee: Continental Automotive Systems US, Inc.
`
`Title: DATA TRANSMISSION METHOD
`FOR A TIRE PRESSURE MONITORING
`
`Panel: To Be Assigned
`
`SYSTEM OF A VEHICLE
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`PO. Box 1450
`
`Alexandria, VA 22313—1450
`
`PETITION FOR INTER PARTES REVIEW UNDER 37 C.F.R. § 42.100
`
`

`

`TABLE OF CONTENTS
`
`I.
`
`MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1) ......................... l
`
`A. Real Party—In-Interest Under 37 C.F.R. § 42.8(b)(1) ...................................... 1
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2) ................................................ 1
`
`C. Lead and Back—Up Counsel Under 37 C.F.R. § 42.8(b)(3) ............................. 1
`
`D. Service Information Under 37 C.F.R. § 42.8(b)(4) ......................................... 2
`
`II.
`
`PAYMENT OF FEES UNDER 37 C.F.R. § 42.103 ........................................ 2
`
`III.
`
`SUMMARY OF THE ’973 PATENT ............................................................. 2
`
`A. Description of the Alleged Invention of the ’973 Patent ................................ 2
`
`B. Summary of the Prosecution History of the ’973 Patent ................................. 4
`
`C. Summary of Continental’s Litigation Positions Regarding the ‘973
`Patent ................................................................................................................ 4
`
`IV.
`REQUIREMENTS FOR INTER PAR TES REVIEW UNDER
`37 C.F.R. §§ 42.104 ................................................................................................... 5
`
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a) ....................................... 5
`
`B. Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested ......................................................................................................... 6
`
`1. Claims for Which Inter Partes Review Is Requested (37 C.F.R. §
`42.104(b)(1)) .............................................................................................. 6
`
`2. The Specific Art and Statutory Ground(s) on Which the Challenge
`Is Based Under 37 C.F.R. § 42.104(b)(2) .................................................. 6
`
`3. How the Challenged Claim(s) Are to Be Construed (37 C.F.R.
`§42.104(b)(3)) ............................................................................................ 7
`
`a. “Natural Time Lag” ............................................................................... 9
`
`b. “Used to Prevent Collisions” ......................................... _..................... 10
`
`0. “Precision of an RC—type oscillator” ................................................... 11
`
`4. How the Construed Claim(s) Are Unpatentable (37 C.F.R. §
`42.104(b)(4)) ...............................‘............................................................. 1 1
`
`5. Supporting Evidence (37 C.F.R. § 42.104(b)(5)) ..................................... 12
`
`V.
`
`BRIEF DESCRIPTION OF PRIOR ART RELIED UPON ......................... 12
`
`A. US. Patent No. 6,271,748 to Derbyshire (Exh. 1003) .................................. 12
`
`

`

`B. US. Patent No. 6,404,246 to Estakhri (Exh. 1004) ...................................... 12
`
`C. US. Patent No. 5,883,582 to Bowers (Exh. 1005) ....................................... 13
`
`D. US. Patent No. 6,486,773 to Bailie (Exh. 1006) .......................................... 13
`
`VI. DETAILED EXPLANATION OF PERTINENCE AND MANNER
`
`OF APPLYING CITED PRIOR ART TO EVERY CLAIM FOR WHICH
`
`REVIEW IS REQUESTED UNDER 37 C.F.R. § 42.104(b) .................................. 15
`
`A. Claims 1-2, 4—5, 7, 9 and 11 are Anticipated Under 35 U.S.C. §102(b)
`Over Derbyshire ............................................................................................ 15
`
`B. Claims 3, 7, 8, 10 and 11 are Obvious Under 35 U.S.C. §103(a) Over
`Derbyshire ...................................................................................................... 16
`
`C. Claims 1-5, 7—11 are Obvious Under 35 U.S.C. §103(a) Over
`Derbyshire In View of Estakhri ..................................................................... 16
`
`D. Claims 1—5 and 7-11 are Obvious Under 35 U.S.C. §103(a) Over
`Derbyshire In View of Bowers ...................................................................... 17
`
`E. Claims 1-5 and 7—11 are Obvious Under 35 U.S.C. §103(a) Over
`Derbyshire In View of Bailie ........................................................................ 18
`
`F. Claims 1, 4-5, 7 and 9—11 are Anticipated Under 35 U.S.C. §102(b) In
`View of Bailie ................................................................................................ 21
`
`G. Claims 1-5, 7 and 9-11 are Obvious Under 35 U.S.C. §103(a) Over
`Bailie In View of Estakhri ............................................................................. 21
`
`H. Claims 1-5 and 7-11 are Obvious Under 35 U.S.C. §103(a) Over
`Bailie In View of Bowers .............................................................................. 22
`
`1. Claims 1-5 and 7-11 are Obvious Under 35 U.S.C. §103(a) Over
`Derbyshire, Bailie and Bowers ...................................................................... 23
`
`VII. CONCLUSION ............................................................................................. 24
`
`403653227v7
`
`ii
`
`

`

`Inter partes review is respectfully requested for claims 1~5 and 7—11 of US.
`
`Patent No. 6,998,973 (“the ’973 Patent”)(EXh. 1001).
`
`I.
`
`MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1)
`
`The following mandatory notices are provided as part of this Petition.
`
`A.
`
`Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(l)
`
`Schrader-Bridgeport International, Inc. and Schrader Electronics, Inc.
`
`(“Schrader”) are the real parties—in-interest for Petitioner.
`
`B.
`
`Related Matters Under 37 C.F.R. § 42.8(b)(2)
`
`The ’973 Patent is presently the subject of a patent infringement lawsuit
`
`brought by the assignee, Continental Automotive Systems US, Inc. and captioned
`
`Continental Automotive Systems US, Inc. v. Schrader Electronics, Inc. et al.,
`
`USDC Eastern District of Michigan, Case No.2 2:11—cv-14525—SJM—MJH.
`
`C.
`
`Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`
`Petitioner provides the following designation of counsel.
`
`
`Back—Up Counsel
`
`Lead Counsel
`
` Email: bryan.collins@pillsburylaw.com Email: robert.fuhrer@pillsburylaw.com
`
`Bryan P. Collins (Reg. No. 43,560)
`PILLSBURY WINTHROP
`
`Robert M. Fuhrer (Reg. No. 52,925)
`PILLSBURY WINTHROP
`
`SHAW PITTMAN LLP
`
`SHAW PITTMAN LLP
`
`Postal and Hand Delivery Address
`1650 Tysons Boulevard
`McLean, Virginia 22102
`Telephone: 703.770.7900
`Facsimile: 703.770.7901
`
`Postal and Hand Delivefl Address
`1650 Tysons Boulevard
`. McLean, Virginia 22102.
`Telephone: 703.770.7900
`Facsimile: 703.770.7901
`
`

`

`D.
`
`Service Information Under 37 C.F.R. § 42.8(b)(4)
`
`Service of any documents via hand—delivery may be made at the postal
`
`mailing address of the respective lead or back—up counsel designated above with
`
`courtesy email copies to the email addresses and docket_ip@pillsburylaw.com.
`
`II.
`
`PAYMENT OF FEES UNDER 37 C.F.R. § 42.103
`
`The undersigned authorizes the Office to charge $27,200.00 to Deposit
`
`Account No. 033975 for the fee set forth in 37 C.F.R. § 42.15(a) for this Petition
`
`for Inter Partes Review. The undersigned further authorizes payment for any
`
`additional fees that might be due in connection with this Petition to be charged to
`
`the above-referenced Deposit Account.
`
`III.
`
`SUMMARY OF THE ’973 PATENT
`
`A.
`
`Description of the Alleged Invention of the ’973 Patent
`
`For the ‘973 Patent, the purported invention relates to a data transmission
`
`method for a tire-pressure monitoring system (“TPMS”) of a vehicle. In particular,
`
`the patent claims a method of transmitting data by wheel unit sensors to a central
`
`computer located in the vehicle. The method comprises differing data transmission
`
`phases in parking mode and running mode, wherein the parking mode
`
`transmissions are less frequent than the running mode transmissions. The concept
`
`of reducing the number of transmissions of a TPMS sensor while the vehicle is
`
`stopped was well known at the time of the filing of the ‘973 Patent as disclosed in
`
`the prior art references and in the ‘973 Patent Specification which states, “It is also
`
`

`

`known to transmit the data, measured by the suitable sensors located in the wheel
`
`units, at different time intervals depending on the movement of the vehicle.” ‘973
`
`Patent (Exh. 1001), col. 1, 1n. 29-31.
`
`The ‘973 Patent adds what is portrayed as a novel concept for avoiding data
`
`transmission collisions (referred also as “scrambling” by the ‘973 Patent) between
`
`the various TPMS sensors on the wheels of the vehicle at the central receiver. The
`
`problem alleged by the ‘973 Patent, which was already well known in the prior art,
`
`is that if all sensors on a vehicle (e.g. 4 sensors, one for each tire) transmit at the
`
`same time, the transmissions will interfere with each other and not be understood
`
`by the receiver. The claimed invention discloses taking advantage of “a natural
`
`time lag” between various internal clocks having a characteristically poor precision
`
`within each wheel unit to prevent such collisions. The ‘973 Patent also describes
`
`such a clock as an RC—type oscillating circuit. As further detailed in the ‘973
`
`Specification, “More precisely, the relatively poor precision of the [RC oscillating]
`
`circuits producing the internal clock of the wheel unit is put to good use in order to
`
`automatically [naturally] time-shift (randomly) the transmissions from the wheel
`
`units.” Id. at col. 2, 1n. 20—23. Finally, the ‘973 Patent Specification discloses that
`
`“the degree of precision may be different from +-15%, provided that this, [clock]
`
`automatically introduces a time lag in the transmissions, thus avoiding any risk of a
`
`collision.” Id. at col. 3, ln. 52—58.
`
`

`

`B.
`
`Summary of the Prosecution History of the ’973 Patent
`
`The ’973 Patent was filed on February 5, 2004, and issued February 14,
`
`2006, with 12 claims. The ’973 Patent as filed included all 12 claims, effectively
`
`unchanged. The Reason for Allowance stated:
`
`The primary reason for allowance is the inclusion of a
`method for monitoring the [sic] a tire pressure system
`wherein the system includes wheel units and wherein
`data transmission phases in parking and running modes
`over
`first
`and
`second
`periods,
`respectively,
`are
`performed, and wherein a natural time lag exists between
`various internal clocks included in each wheel unit.
`
`C.
`
`Summary of Continental’s Litigation Positions Regarding
`the ‘973 Patent
`
`Continental accuses numerous Schrader remote tire pressure sensor models
`
`of infringing the ‘973 Patent in the above—mentioned litigation. Representative
`
`examples of the preliminary and amended contentions setting forth Continental’s
`
`infringement theory, and revealing its underlying claim interpretation, are attached
`
`as Exhibit 1002. In these contentions, Continental notes that its own testing of the
`
`accused TPMS sensors showed that a single sensor data transmission was allegedly
`
`asynchronous over time and that these asynchronous transmission periods, at least
`
`in part, are through the alleged use of an internal clock with a natural time lag.
`
`According to Continental’s Infringement Contentions, this means that all clock
`
`oscillators that have any imperfection must include “some” natural lag such that
`
`any deviation in transmission timing (i.e. initial frequency) must be due, in part, to
`
`

`

`the presence of the “natural lag.” Based on this (overly) broad View of the scope of
`
`the ‘973 Patent, Continental accuses Schrader TPMS sensors using oscillators with
`
`an alleged precision of about +/— 1%. In fact, in the representative contentions at
`
`Exhibit 1002, the variances are on the order of 0.2 seconds over a time period of
`
`about 66.7 seconds, which is on the order of well less than 1% — about 0.3%.
`
`While. Schrader disagrees in litigation with this overly broad interpretation
`
`of the ‘973 Patent claims, Continental cannot disavow this interpretation, and thus
`
`it is being used in this inter partes review for comparison to the prior art.
`
`IV. REQUIREMENTS FOR INTER PARTES REVIEW UNDER
`
`37 C.F.R. §§ 42.104
`
`As set forth below and pursuant to 37 C.F.R. § 42.104, each requirement for
`
`inter partes review of the ’973 Patth is satisfied.
`
`A.
`
`Grounds for Standing Under 37 C.F.R. § 42.104(a)
`
`Petitioner hereby certifies that the ’973 Patent is available for inter partes
`
`review and that the Petitioner is not barred or estopped from requesting inter partes
`
`review challenging the claims of the ’973 Patth on the grounds identified herein.
`
`More particularly, Petitioner certifies that: (1) Petitioner is not the owner of the
`
`’973 Patent; (2) Petitioner has not filed a civil action challenging the validity of a
`
`claim of the ’973 Patent; (3) this Petition is filed less than one year after the date
`
`on which the Petitioner, the Petitioner’s real party—in—interest, or a privy of the
`
`Petitioner was served with a complaint alleging infringement of the ’973 Patent;
`
`

`

`(4) the estoppel provisions of 35 U.S.C. § 315(e)(1) do not prohibit this inter
`
`partes review; and (5) this Petition is filed after the later of (a) the date that is nine
`
`months after the date of the grant of the ’973 Patent or (b) the date of termination
`
`of any post—grant review of the ’973 Patent.
`
`B.
`
`Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested
`
`The precise relief requested by Petitioner is that claims 1—5 and 7—11 of the
`
`’973 Patent are found unpatentable.
`
`1.
`
`Claims for Which Inter Partes Review Is Requested (37 C.F.R.
`§ 42.104(b)(l))
`
`Inter partes review of claims 1—5 and 7-11 of the ‘973 Patent is requested.
`
`2.
`
`The Specific Art and Statutory Ground(s) on Which the
`Challenge Is Based Under 37 C.F.R. § 42.104(b)(2)
`
`Inter partes review is requested in view of the following references:
`
`
`
`Exhibit
`Country Of
`Patent Number
`Date Of Issuance or
`
`Origin
`ubllcatlon
`
`US.
`6,271,748 B1 (Derbyshire)
`2001-08-07
`1003 .i
`
`
`
`
`
`US.
`6,404,246 B1 (Estakhri)
`2002—06—11
`
`
`6,486,773 B1 (Bailie)
`
`
`
`5,883,582 (Bowers)
`
`
`1999—03—16
`
`2002—11—26
`
`
`
`—-—-————-|
`
`1004
`
`1005
`
`1006
`
`Each of these references qualifies as prior art under § 102(b), and none were cited
`
`during prosecution of the ‘973 Patent. The following specific grounds of rejection
`
`are asserted under §§102 and 103:
`
`1. Claims 1-2, 4-5, 7, 9 and 11 are anticipated by Derbyshire.
`
`

`

`2. Claims 3, 7, 8, 10 and 11 are obvious over Derbyshire.
`
`3. Claims 1-5 and 7-11 are obvious over Derbyshire in View of Estakhri.
`
`4. Claims 1—5 and 7-11 are obvious over Derbyshire in view of Bowers.
`
`5. Claims 1-5 and 7-11 are obvious over Derbyshire in View of Bailie.
`
`6. Claims 1, 4—5, 7 and 9-11 are anticipated by Bailie.
`
`7. Claims 1—5 and 7—11 are obvious over Bailie in View of Estakhri.
`
`8. Claims l-5 and 7-11 are obvious over Bailie in view of Bowers.
`
`9. Claims 1-5 and 7-11 are obvious over Derbyshire, Bailie and Bowers.
`
`3.
`
`How the Challenged Claim(s) Are to Be Construed (37 C.F.R.
`§42.104(b)(3))
`
`The ‘973 Patent relates to a transmission method in a TPMS system having
`
`multiple sensors, where the sensors have a “natural time lag” between their clocks,
`
`so that their transmissions will allegedly not be sent to the central receiver at the
`
`same time. Because a vehicle has only a single receiver and multiple tires each
`
`with a pressure sensor/transmitter, if all the sensors transmit at the exact same time,
`
`the transmissions will “collide” or interfere with one another such that they cannot
`
`be understood by the receiver. To avoid this problem, the typical prior art
`
`approach acknowledged by the ‘973 Patent is to use “time shifting” methods to
`
`force the transmissions out of sync so that they are less likely to collide.
`
`‘973
`
`Patent, (Exh. 1001) col. 1, ln. 49—55. Examples of such time shifting methods are
`
`known in the art, and may include inserting a random delay in between the
`
`

`

`transmissions so that they are sent at random times. Another known time shifting
`
`method involves predetermined (not random) delays of different lengths that
`
`similarly change the length of time between transmissions. Schrader’s own prior
`
`art US. Patent No. 6,486,773 (“‘773 patent” or “Bailie” —Exh. 1006) is an example
`
`of such an approach where defined time shifting is used.
`
`However, the ‘973 Patent alleges that such prior art “time shifting”
`
`approaches are “complex, time-consuming and expensive.” Id. at col. 2, In. 19 and
`
`col. 3, ln. 44-48. Thus, it proposed the use of highly imprecise clocks within each
`
`sensor/transmitter, which allegedly would cause the multiple sensor/transmitters to
`
`be so out of sync that their transmissions would not be sent at the same time, thus
`
`avoiding collisions. The ‘973 Patent states that this approach is allegedly “simple,
`
`inexpensive, and fast.” Id. at col. 2, ln. 2. In the ‘973 Patent’s own words:
`
`Thus, unlike what is usually produced in the wheel unit
`[i.e.,
`the sensor/transmitter],
`in which it
`is general
`practice to seek to have extremely precise internal clocks
`so as to be able to operate a defined time shift between
`the transmission of the data and thus prevent collisions,
`the present
`invention uses, on the contrary,
`internal
`clocks of poor precision, and therefore there [sic] are less
`expensive and less difficult to implement
`in order to
`obtain a similar result.
`
`Id. at col. 2, ln. 27—34. The ‘973 Patth describes the characteristics of such a clock
`
`as having a level of imprecision on the order of +/- 15%, but states that other levels
`
`of imprecision may be used as well. The key claim interpretation question
`
`

`

`revolves around the amount of lag or imprecision required and how that
`
`contributes to the avoidance of collisions.
`
`a.
`
`“Natural Time Lag”
`
`Schrader contends for the purposes of inter partes review that the term
`
`“natural time lag,” which appears in the sole independent claim 1, and is referred
`
`to in dependent claim 2 as “internal time lag,” is “an ever—present, inherent, delay
`
`of various clocks that causes transmissions to be transmitted at different times.” A
`
`“time lag between various internal clocks” is a delay between those clocks, which
`
`is what causes the sensors to transmit at different times. Similarly, the term
`
`“natural” means that the delay is inherent to the clocks themselves. This is a
`
`straightforward reading of the claim in the context of the specification under the
`
`broadest reasonable interpretation standard. Id. at col. 2, 1n. 20—24, 27-34; col. 3,
`
`ln.13-14, 30-48 and 55-58.
`
`Under Continental’s theory in the infringement litigation, sensors with any
`
`amount of imprecision, even lower than +/— 1%, creates a sufficient “natural lag” to
`
`be covered by the claim. Indeed, claim 1 itself does not expressly identify a
`
`minimum amount of lag or inaccuracy in the clock. Thus, accepting Continental’s
`
`theory, it cannot deny that the broadest reasonable interpretation of the limitation
`
`for the purposes of inter partes review is that any amount of imprecision is
`
`

`

`sufficient to create the claimed “natural lag.”1 If Continental contends otherwise, it
`
`would demonstrate the unreasonableness of its own claim construction.
`
`[7.
`
`“Used to Prevent Collisions”
`
`The plain claim language attributes this result of preventing “collisions” to
`
`the “natural time lag between various internal clocks with which each wheel unit is
`
`equipped.” Continental proposes a construction of the term “used to prevent” in
`
`the pending litigation that merely requires the “lag” to “reduce” collisions, rather
`
`than outright preventing them from happening, arguing that:
`
`This is the only term that Continental proposes to construe
`because, unlike the others, it uses a word—“prevent”—— that has
`more than one commonly understood meaning and, thus, could
`be confusing to the jury. For example, “prevent” can mean to
`completely prohibit from occurring (as in, “the locked door
`prevented the thief from entering”), or it can mean to reduce the
`chance of something occurring (as in, “flu shots prevent people
`from getting sick”).
`
`Exhibit 1007 at 11—12 (emphasis added).
`
`While Schrader disagrees with Continental’s position in litigation, for
`
`purposes of this inter partes review Continental should be held to its overly broad
`
`1 Schrader takes this position based on the broadest reasonable interpretation
`
`standard before the USPTO, but does not endorse such an interpretation as part
`
`of the district court litigation. The USPTO’s approach to claim interpretation is
`
`different for the reason that the applicant/patentee can amend the claims to be
`
`more specific. In re Yamamoto, 740 F.2d 1569, 1571—72 (FedCir. 1984).
`
`10
`
`

`

`interpretation before the USPTO. The reality is that Continental’s interpretation
`
`that preventing collisions merely requires “reducing” collisions is such a
`
`nonsensically broad interpretation that it reads on every sensor in the prior art.
`
`Since 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 sync with the inevitable result that collisions will be reduced. Continental’s
`
`attempts to distort the ‘973 Patent in such a manner to support its infringement
`
`theory should thus serve as its undoing for purposes of invalidity.
`
`0.
`
`“Precision ofcm RC—type oscillator ”
`
`The Specification is clear about what an RC oscillator is, and there can be no
`
`reasonable dispute that it must have some notable level of imprecision because the
`
`claimed invention relies on a low level of precision to create the claimed “natural
`
`time lag” between sets of clocks. It also seems (or at least it should be) beyond
`
`dispute that an RC oscillator functions as a clock by oscillating at a given
`
`frequency.
`
`‘246 patent (Exh. 1004), 1:38—2:39. Hence, the level of precision
`
`claimed for any given oscillator is the inherent variance in that frequency from its
`
`intended value or target.
`
`4.
`
`How the Construed Claim(s) Are Unpatentable (37 CPR. §
`42.104(b)(4))
`
`An explanation of how the construed claims 1—5 and 7—11 of the ’973 Patth
`
`are unpatentable under the statutory grounds identified above, including
`
`11
`
`

`

`identification of where each element of the claim is found in the prior art patents or
`
`printed publications, is provided in Section VI, below, and in the form of claims
`
`charts Appendices Al-AS and B1-B3.
`
`5._
`
`Supporting Evidence (37 CPR. § 42.104(b)(5))
`
`The exhibit numbers of the supporting evidence relied upon to support the
`
`challenge and the relevance of the evidence to the challenge raised, including
`
`identifying specific portions of the evidence that support the challenge, are
`
`provided in Section VI, below, and in the form of claim charts (Al-A5, B1~B3).
`
`An Appendix of Exhibits identifying the exhibits is also attached.
`
`V.
`
`BRIEF DESCRIPTION OF PRIOR ART RELIED UPON
`
`A.
`
`US. Patent No. 6,271,748 to Derbyshire (Exh. 1003)
`
`Derbyshire discloses the use of an inaccurate RC oscillator in a tire sensor in
`
`lieu of a crystal oscillator. Derbyshire also specifically discloses a transmission
`
`encoding technique that can be used to accommodate the inaccuracies it expressly
`
`recognizes as being present in the RC oscillator it discloses. Col. 14, In. 41—50.
`
`Thus, inherent in the Derbyshire system and method of using a less precise RC
`
`oscillator clock is the remaining imprecision and resulting potential natural time
`
`lag between various internal clocks based on inherent differences between the
`
`clocks. Moreover, Derbyshire also discloses the different parking and running
`
`mode data transmission phases as claimed in the “973 Patent.
`
`B.
`
`US. Patent No. 6,404,246 to Estakhri (EXh. 1004)
`
`12
`
`

`

`Estakhri discloses a system for and method of developing a clock
`
`mechanism for use in digital circuits that avoids the use of crystal oscillators in
`
`clock signal generation. Estakhri filrther discloses a system for and method of
`
`using a relatively inexpensive RC oscillator in digital applications. Estakhri also
`
`discusses the range of inaccuracies/errors in RC oscillator clocks.
`
`C.
`
`US. Patent No. 5,883,582 to Bowers (Exh. 1005)
`
`Bowers discloses a method of reading multiple. RFID tags located in a field
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`of an interrogating antenna based on periodic transmissions from the tags with
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`large, non—transmission intervals between transmissions. The non-transmission
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`intervals are fixed for a given tag, but are random between tags due to
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`' manufacturing tolerances in electrical components from which the tag is
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`constructed, such that no coordination of transmissions is required to avoid
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`overlap. Bowers specifically teaches the use of RC clock circuits with large
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`tolerances on the order of +/— 20% for this purpose. This use of inaccurate RC
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`oscillators with large tolerance RC oscillators to avoid or minimize the likelihood
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`of simultaneous transmissions is the same approach used in the ‘973 Patent.
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`D.
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`US. Patent No. 6,486,773 to Bailie (Exh. 1006)
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`Bailie discloses increasing the sampling and transmission rates of the tire
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`senor transmitter due to a change in the rotational speed of the tire (Le, a parking
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`mode and a running mode). Bailie further discloses a controller responsive to
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`reference timing to space the aperiodic time windows according to a repeating
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`pattern to avoid collisions. In the illustrated example, the repeating pattern is stored
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`in the memory 78 and is, for example, the repeating pattern 68664444. An interval
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`of 25ms, e.g., is multiplied by the numbers 4, 6, and 8 which are used in different
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`sequences, so the interval inserted may be lOOms, 150ms, or 200ms. ‘773 Patent at
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`Figs. 2, 5, col. 2,1n. 36 — col. 3, ln.'36 and col. 5,1n. 47 — col. 6, In. 10. Thus,
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`Bailie discloses a transmitter configured to transmit data during a time window,
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`wait a predetermined variable time defined at least in part by the repeating pattern,
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`and transmit a next data word during a next time window. But inherent in the
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`Bailie method is any relative natural time lag between the various internal clocks
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`based on differences in the clocks. Bailie discloses the natural tolerance of the
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`clocks used in remote tire pressure sensors, specifically disclosing a variance of +/—
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`1%. Thus Bailie discloses the inherent imprecision in clocks as disclosed in the
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`‘973 Patent, which provides the claimed lag between clocks.
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`Moreover, Bailie discloses the benefit of taking advantage of imprecision in
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`roll switches with varying g force values to further assist in avoiding transmission
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`collisions. The identified benefit of this imprecision is the same as in the ‘973
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`Patent — a natural time shift of transmissions due to component inaccuracies within
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`the sensors. Based on the express teaching in Bailie that imprecision in a sensor
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`component relating to the transmission method advantageously randomizes the
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`transmissions, it would be obvious to take advantage of that inaccuracy in other
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`such components, including the clock circuit itself.
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`VI. DETAILED EXPLANATION OF PERTINENCE AND MANNER OF
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`APPLYING CITED PRIOR ART TO EVERY CLAIM FOR WHICH
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`REVIEW IS REQUESTED UNDER 37 C.F.R. § 42.104(b)
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`A.
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`Claims 1-2, 4—5, 7, 9 and 11 are Anticipated Under 35 U.S.C.
`§102(b) Over Derbyshire
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`The claim chart attached as Apr. A—l details how each and every element
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`recited in claims 1-2, 4-5, 7, 9 and 11 is anticipated by Derbyshire.
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`Derbyshire discloses the use of an inaccurate RC oscillator and use of a
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`crystal oscillator as a more expensive, more precise alternative:
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`The above described digital circuit in the wheel transmitter unit
`is designed for use with a resistor—capacitor oscillator. Such
`oscillators have a relatively large tolerance and in order to
`accommodate
`this
`a transmission format based on the
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`is,
`It
`Manchester coding method is proposed hereinabove.
`however, possible instead to use a ceramic resonator or crystal
`oscillator. A ceramic resonator or crystal oscillator has a
`relatively small tolerance and, if used in the system, enables the
`data coding for transmission to be simplified.
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`‘748 Patent (Exh. 1003), col. 15, In. 2-9.
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`Derbyshire also discloses both a stand—by and operating mode as it relates to
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`the rate of transmission. Id. at col. 7, 1n. 40—58.
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`As is discussed in Appx. A—l in more detail, the structures of Derbyshire and
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`these claims of the ‘973 Patent are identical because they both use “large” or
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`“substantial” tolerance RC oscillator clocks that are described in eaCh as inaccurate
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`or imprecise. Therefore the result of creating “lag” that can “prevent collisions”
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`must be naturally inherent in that structure both in the ‘973 and the ‘748 Patents.
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`The ‘973 Patent does nothing more than call out an alleged advantage of using RC
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`oscillator clocks. Because the structures in the ‘748 Patent and the ‘973 Patent are
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`the same, the ‘748 Patent must also achieve the very same advantage.
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`B.
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`Claims 3, 7, 8, 10 and 11 are Obvious Under 35 U.S.C. §103(a)
`Over Derbyshire
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`To the extent Derbyshire does not disclose the limitations of dependent
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`claims 3, 7, 8, 10 and 11, it renders those claims obvious as detailed in Appx. A-2.
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`C.
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`Claims 1-5, 7—11 are Obvious Under 35 U.S.C. §103(a) Over
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`Derbyshire In View of Estakhri
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`Appendices A—l (for claims 1—2, 4-5, 7, 9 and 11) and A—2 (for claims 3, 7,
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`8, 10 and l 1) are relied upon here for the relevant teachings of Derbyshire. To the
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`extent Derbyshire does not disclose the certain claim limitations, especially those
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`in claims 1—3 and 8 related to the natural degree of imprecision of RC oscillators,
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`Estakhri discloses anything that may arguably be missing from Derbyshire, as
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`detailed in Appx. A—3. Indeed, Estakhri unambiguously describes the effects that
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`the imprecision of RC oscillators can have, to include identifying the standard level
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`of variance in RC oscillators as between 5-10%:
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`Unfortunately, the manufacturing tolerances in RC components
`typically run in the five to ten percent range.
`In addition,
`semiconductor devices that are conventionally used in RC
`oscillators vary as a result of variations in the manufacturing
`process used to fabricate such devices. Thus, while RC
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`oscillators can be made to operate at a constant and unvarying
`frequency, the initial frequency of an RC oscillator may not
`operate at a desired frequency.
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`‘246 Patent (Exh. 1004), col. 2, 1n. 5—13. Estakhri further discloses
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`[U]sing an RC oscillator can introduce errors in the oscillation
`frequency as a result of variations among resistors, capacitors
`and circuit parameters. These errors are a result of resistors and
`capacitors not generally being precision devices. These
`tolerance variations can cause the frequency of a clock
`synthesizer to fall outside of a desired specification.
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`‘246 Patent (Exh. 1004), col. 5, ln. 31-37.
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`Thus, Estakhri describes the naturally occurring lag described and claimed in
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`claims 1—3 and 8 of the ‘973 Patent, and thus shows that the alleged advantage of
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`the natural imprecision in RC oscillators occurs in the various sensor wheel units
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`of Derbyshire. The limitations of claims 4, 5, 7 and 9—11 are present in Derbyshire
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`per Appxs. A1 and A2, and are not repeated in Appx. A—3.
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`D.
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`Claims 1-5 and 7-11 are Obvious Under 35 U.S.C. §103(a) Over
`Derbyshire In View of Bowers
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`Appendices A—l (for claims 1—2, 4—5, 7, 9 and 11) and A-2 (for claims 3, 7,
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`8, 10 and 11) are relied upon here for the relevant teachings of Derbyshire. To the
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`extent Derbyshire does not disclose certain claim limitations, especially those in
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`claims 1—3 and 8 related to taking advantage of natural time lags due to imprecision
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`in RC oscillators to avoid collisions in transmission, Bowers discloses anything
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`that may arguably be missing from Derbyshire, as detailed in Appx. A-4. The
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`limitations of claims 4, 5, 7 and 9-11 are present in Derbyshire per Appxs. A-1 and
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`A-2, and are not repeated in Appx. A~4.
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`Bowers discloses a method of reading multiple RFID tags or other intelligent
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`devices based on periodic transmissions with large, non—transmission intervals
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`between transmissions. The key to avoiding clash or collision of transmission by
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`the receiver (interrogator) is that despite using fixed intervals between
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`transmissions, there is randomness between tags due to manufacturing tolerances
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`in the electrical timer (clock) component of each transmitting tag, such that no
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`coordination of transmissions from th