`
`
`
`Trial Number: To Be Assigned
`
`
`
`
`
`
`
`
`
`
`Panel: To Be Assigned
`
`
`
`In the Inter Partes Review of:
`
`
`U.S. Patent No. 8,217,612
`
`
`Filed: January 28, 2009
`
`Issued: July 10, 2012
`
`Inventor(s): Mario Boisvert, Randall
` Perrin, John Washeleski
`
`Assignee: UUSI, LLC
`
`Title: Collision Monitoring System
`
`Mail Stop Inter Partes Review
`Commissions for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`SUBMISSION PURSUANT TO 35 U.S.C. § 301 AND 37 C.F.R. § 1.501 IN
`SUPPORT OF PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,217,612
`
`
`
`
`
`Submission Pursuant to 35 U.S.C. § 301 and 37 C.F.R. § 1.501 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 8,217,612
`
`Pursuant to 35 U.S.C. § 301 and 37 C.F.R. § 1.501, Brose North America,
`
`Inc. (“BNA”) and Brose Fahrzeugteile GmbH & Co. KG, Hallstadt (“Brose”)
`
`(collectively, “Petitioners”) offer this Submission Pursuant to 35 U.S.C. § 301 and
`
`37 C.F.R. § 1.501 in Support of Petition for Inter Partes Review of U.S. Patent No.
`
`8,217,612 (“Submission”) regarding: (1) prior art that bears on the patentability of
`
`claims 1-2, 5 and 6-8 of U.S. Patent No. 8,217,612 (“the ’612 Patent”); and (2)
`
`statements that the patent owner, UUSI, LLC (“UUSI”) has served in Federal court
`
`proceedings regarding the scope of claims 1-2, 5 and 6-8 of the ’612 Patent. BNA
`
`and Brose file this Submission in connection with, and as Exhibit 1003 to, their
`
`Petition for Inter Partes Review Under 37 C.F.R. § 42.100 of U.S. Patent No.
`
`8,217,612 (“Petition”).
`
`I.
`
`PRIOR ART BEARING ON THE PATENTABILITY OF CLAIMS 1-
`2, 5 AND 6-8 OF U.S. PATENT NO. 8,217,612
`
`Pursuant to 35 U.S.C. § 301(a)(1) and 37 C.F.R. § 1.501(a)(1), Petitioners
`
`identify the following prior art that they believe bears on the patentability of claims
`
`1-2, 5 and 6-8 of the ’612 Patent:
`
`• U.S. Patent No. 4,870,333 to Itoh et al. (“Itoh”). Itoh was filed in the
`
`United States on October 2, 1987, and issued September 26, 1989, and is
`
`thus prior art under 35 U.S.C. § 102 (b). (Ex. 1007.)
`
`
`
`1
`
`
`
`Submission Pursuant to 35 U.S.C. § 301 and 37 C.F.R. § 1.501 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 8,217,612
`• U.S. Patent No. 4,468,596 to Kinzl et al. (“Kinzl”). Kinzl was filed in the
`
`United States on September 10, 1981, issued August 28, 1984, and is thus
`
`prior art under 35 U.S.C. § 102(b). (Ex. 1008.)
`
`• U.S. Patent No. 5,069,000 to Zuckerman (“Zuckerman”). Zuckerman was
`
`filed in the United States on March 22, 1990, issued December 3, 1991, and
`
`is thus prior art under at least 35 U.S.C. § 102(e). (Ex. 1009.)
`
`As required by 37 C.F.R. § 1.501(b)(1), the pertinence of this prior art to
`
`claims 1-2, 5, and 6-8 of the ’612 Patent is explained in Section V of the Petition,
`
`and in particular, the manner of applying this prior art to claims 1-2, 5, and 6-8 of
`
`the ’612 Patent may be found in the claim-by-claim analysis of Section V.E of the
`
`Petition, and a summary of how the construed Challenged Claims are unpatentable
`
`is provided in Section V.C of the Petition.
`
`II.
`
`STATEMENTS ABOUT THE SCOPE OF CLAIMS 1-2, 5, AND 6-8
`OF U.S. PATENT NO. 8,217,612 IN A PROCEEDING BEFORE A
`FEDERAL COURT OR THE OFFICE
`
`Pursuant to 35 U.S.C. § 301(a)(2) and 37 C.F.R. § 1.501(a)(2), Petitioners
`
`identify the following statements made by UUSI in which UUSI implicitly took a
`
`position on the scope of claims 1-2, 5, and 6-8 of the ’612 Patent and that were
`
`served in a proceeding before a Federal Court.
`
`
`
`2
`
`
`
`Submission Pursuant to 35 U.S.C. § 301 and 37 C.F.R. § 1.501 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 8,217,612
`
`UUSI’s Infringement Positions in UUSI v. Brose North America, Inc.
`
`UUSI implicitly took a position on the scope of claims 1-2, 5, and 6-8 of the
`
`’612 Patent when it made statements about how the accused BNA products
`
`allegedly infringe independent claims 1 and 6 of the ’612 Patent. (Ex. 1021,
`
`UUSI’s September 19, 2013 First Supplemental Response to Interrogatory No. 1,
`
`including Attachment F thereto.) As required by 37 C.F.R. § 1.501(a)(3),
`
`Petitioners identify the following:
`
`37 C.F.R. § 1.501(a)(3)(i), Forum: UUSI served these statements during the
`
`district court litigation captioned UUSI, LLC v. Robert Bosch LLC and Brose
`
`North Am., Inc., Case No. 2:13-cv-10444 (United States District Court for the
`
`Eastern District of Michigan).
`
`37 C.F.R. § 1.501(a)(3)(ii), Specific Documents: UUSI made these
`
`statements about the scope of claims 1-2, 5 and 6-8 of the ’612 Patent in the
`
`following document: UUSI’s September 19, 2013 First Supplemental Response to
`
`Interrogatory No. 1, including Attachment F thereto. (Ex. 1021.)
`
`37 C.F.R. § 1.501(a)(3)(iii), How Statement is a Position on the Scope of
`
`Any Claim: UUSI’s infringement contentions, as set forth in its interrogatory
`
`response, are an implicit statement about the scope of the asserted claims. By
`
`saying that certain features or functionalities of the BNA accused products
`
`allegedly infringe a limitation of independent claims 1 and 6, UUSI is stating that
`
`
`
`3
`
`
`
`Submission Pursuant to 35 U.S.C. § 301 and 37 C.F.R. § 1.501 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 8,217,612
`
`the scope of that claim limitation is such that it would encompass that feature or
`
`functionality. (See Ex. 1021.)
`
`An explanation of the pertinence of these statements and how to apply them
`
`to independent claims 1 and 6 (and their respective dependent claims 2, 5 and 7-8)
`
`of the ’612 Patent, as required by 37 C.F.R. § 1.501(b)(1), may be found in
`
`Sections IV.C (claim construction), V.C (summary of invalidity positions) and V.E
`
`(detailed invalidity claim charts) of the Petition. In that Petition, Petitioners note
`
`that UUSI has taken the position that a Hall effect sensor that indirectly monitors
`
`window movement by monitoring the rotation of a motor coupled to the window
`
`satisfies the “sensor” limitations of the Challenged Claims. See Ex. 1021 at 14-15
`
`and 20-21.
`
`Ground 2 in the Petition asserts that Itoh anticipates the Challenged Claims
`
`under the apparent constructions advocated by UUSI. In its infringement
`
`positions, UUSI takes the position that a system that does not de-active the motor
`
`in response to an obstacle, but instead reverses the motor, falls within the “de-
`
`activate” limitations of the Challenged Claims. See Ex. 1021 at 13-14, 19-20 and
`
`24.
`
`In its infringement positions, UUSI also takes the position that the limitation
`
`in claim 1 of the ’612 Patent of “one or more switches for use by the controller to
`
`determine window or panel position” is found in the accused Brose products in the
`
`
`
`4
`
`
`
`Submission Pursuant to 35 U.S.C. § 301 and 37 C.F.R. § 1.501 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 8,217,612
`
`form of “Window Control Switch Inputs” (which are ports for connections to the
`
`user controls) connected to a processor and that “determine the position of the
`
`window based on counting the revolutions of the motor armature with the Hall-
`
`effect sensor and/or using motor current, voltage, or other input signals.” (Ex.
`
`1021 at 16-17.) Itoh discloses user input switches (Switch Panel 38 in Figure 7)
`
`connected to a microcontroller running an obstruction detection algorithm that will
`
`determine the position of the window based on counting the revolutions of the
`
`motor armature using a sensor that relies on motor current. Kinzl also discloses
`
`user input switches (Operating Elements 16 and 18 in Figure 1) connected to a
`
`microcomputer running an obstruction detection algorithm that will determine the
`
`position of the window based on counting the revolutions of the motor armature
`
`using a sensor that Kinzl discloses could be a Hall effect sensor.
`
`Respectfully submitted,
`
` Craig D. Leavell /
`
` /
`
`
`Craig D. Leavell (Reg. No. 48505)
`Alyse Wu (Reg. No. 68926)
`KIRKLAND & ELLIS LLP
`300 North LaSalle Street
`Chicago, Illinois 60654
`P: 312.862.2000; F: 312.862.2200
`craig.leavell@kirkland.com
`alyse.wu@kirkland.com
`Attorneys For Petitioner
`
`5
`
`
`Date: February 6, 2014
`
`
`
`
`
`
`
`
`
`
`
`Submission Pursuant to 35 U.S.C. § 301 and 37 C.F.R. § 1.501 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 8,217,612
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Submission
`
`
`
`Pursuant to 35 U.S.C. § 301 and 37 C.F.R. § 1.501 in Support of Petition for Inter
`
`Partes Review of U.S. Patent No. 8,217,612 was served on February 6, 2014 via
`
`Federal Express upon the following:
`
`
`
`Correspondence Address of Record
`Stephen J. Schultz
`TAROLLI, SUNDHEIM, COVELL & TUMMINO L.L.P.
`1300 East Ninth Street, Suite 1700
`Cleveland, Ohio 44114
`
`Attorney of Record for U.S. Pat. No. 8,217,612
`
`
`A copy was also served via electronic mail upon the following:
`
`Litigation Counsel
`George D. Moustakas
`HARNESS, DICKEY & PIERCE, P.L.C.
`5445 Corporate Drive, Suite 200
`Troy, Michigan 48098
`gmoustakas@hdp.com
`
`Attorney for UUSI, LLC, d/b/a Nartron,
`Case No. 2:13-cv-10444 (E.D. Mich.)
`
`
`
`
`
`
`
`
`
`
`
`Submission Pursuant to 35 U.S.C. § 301 and 37 C.F.R. § 1.501 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 8,217,612
`
`
`
`By:
`
`/ Ellen DeBatty /
`
`Ellen DeBatty
`Legal Assistant
`KIRKLAND & ELLIS LLP
`300 North LaSalle Street
`Chicago, Illinois 60654
`Telephone: (312) 862-2000
`Facsimile: (312) 862-2200
`ellen.debatty@kirkland.com