`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`In the Inter Partes Review of:
`
`
`U.S. Patent No. 8,217,612
`
`
`Filed: January 28, 2009
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`Issued: July 10, 2012
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`Inventor(s): Mario Boisvert, Randall
` Perrin, John Washeleski
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`Assignee: UUSI, LLC
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`Title: Collision Monitoring System
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`Trial Number: IPR2014-00416
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`
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`
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`Panel: To Be Assigned
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`
`
`Mail Stop Inter Partes Review
`Commissions for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`CORRECTED PETITION FOR INTER PARTES REVIEW
`UNDER 37 C.F.R. § 42.100
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`
`
`
`
`
`
`TABLE OF CONTENTS
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`IV.
`
`B.
`
`C.
`
`I. MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8(a)(1) ............ 1
`A.
`37 C.F.R. § 42.8(b)(1): Real Party-In-Interest ...................................... 1
`B.
`37 C.F.R. § 42.8(b)(2): Related Matters ............................................... 1
`C.
`37 C.F.R. § 42.8(b)(3): Lead and Back-Up Counsel and Service
`Information ............................................................................................ 1
`PAYMENT OF FEES PURSUANT TO 37 C.F.R. § 42.103 ......................... 2
`II.
`III. GROUNDS FOR STANDING PURSUANT TO 37 C.F.R.
`§ 42.104(a) ....................................................................................................... 2
`IDENTIFICATION OF CHALLENGE PURSUANT TO 37 C.F.R.
`§ 42.104(b) ....................................................................................................... 3
`37 C.F.R. § 42.104(b)(1): Claims for Which Inter Partes
`A.
`Review Is Requested ............................................................................. 3
`37 C.F.R. § 42.104(b)(2): The Specific Art and Statutory
`Ground(s) on Which the Challenge Is Based ........................................ 3
`37 C.F.R. § 42.104(b)(3): How the Challenged Claims Are to
`Be Construed ......................................................................................... 4
`37 C.F.R. § 42.104(b)(4): How the Construed Claim is
`Unpatentable Under the Statutory Grounds Identified ......................... 8
`37 C.F.R. § 42.104(b)(5): Evidence Supporting the Challenge ............ 8
`E.
`THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST
`ONE OF THE CHALLENGED CLAIMS IS UNPATENTABLE. ................ 8
`A. Description of the Alleged Invention of the ’612 Patent ...................... 8
`B.
`Summary of the Prosecution History of the ’612 Patent .................... 10
`C.
`Summary of Invalidity Arguments ...................................................... 12
`D.
`Identification of the References as Prior Art ....................................... 26
`
`D.
`
`V.
`
`i
`
`
`
`
`
`E.
`
`Claim-By-Claim Explanation of Grounds for Unpatentability
`and Claim Charts ................................................................................. 27
`Ground 1: Claims 1-2 and 5-8 are Obvious under 35 U.S.C.
`§ 103(a) over Itoh in View of the Ordinary Skill in the
`Art. 27
`Ground 2: Under the Apparent Constructions Advocated by
`UUSI, Claims 1-2 and 5-8 are Anticipated by Itoh .................. 40
`Ground 3: Claims 1-2 and 5-8 are Obvious under 35 U.S.C.
`§ 103(a) over Itoh in View of the Ordinary Skill in the
`Art and Kinzl. ............................................................................ 41
`Ground 4: Claims 6-8 are Anticipated by Kinzl. ............................. 47
`Ground 5: Claims 6-8 are Obvious under 35 U.S.C. § 103(a)
`over Kinzl in View of the Ordinary Skill in the Art. ................ 56
`Ground 6: Claims 6-8 are Obvious under 35 U.S.C. § 103(a)
`over Kinzl in View of the Ordinary Skill in the Art and
`Itoh. 57
`Ground 7: Claims 1-2 and 5 are Obvious under 35 U.S.C.
`§ 103(a) over Itoh in View of the Ordinary Skill in the
`Art and Zuckerman ................................................................... 57
`Ground 8: Claims 1-2 and 5 are Obvious under 35 U.S.C.
`§ 103(a) over Itoh in View of the Ordinary Skill in the
`Art, Kinzl, and Zuckerman ....................................................... 58
`VI. CONCLUSION .............................................................................................. 60
`
`
`
`
`ii
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 8,217,612
`
`On behalf of Brose North America, Inc. (“BNA”) and Brose Fahrzeugteile
`
`GmbH & Co. KG, Hallstadt (“Brose”) and in accordance with 35 U.S.C. § 311 and
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`37 C.F.R. § 42.100, inter partes review is respectfully requested for claims 1-2 and
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`5-8 (“the Challenged Claims”) of U.S. Patent No. 8,217,612 (“the ’612 Patent”),
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`attached hereto as Exhibit 1005.
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`I. MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8(a)(1)
`Pursuant to 37 C.F.R. § 42.8(a)(1), the mandatory notices identified in 37
`
`C.F.R. § 42.8(b) are provided below as part of this Petition.
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`37 C.F.R. § 42.8(b)(1): Real Party-In-Interest
`
`A.
`BNA and Brose are the real parties-in-interest for Petitioner.
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`37 C.F.R. § 42.8(b)(2): Related Matters
`
`B.
`UUSI, LLC (“UUSI”) has asserted the ’612 Patent in two pending lawsuits:
`
`• UUSI, LLC v. Robert Bosch LLC and Brose North Am., Inc., No. 2:13-cv-10444
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`(E.D. Mich.) (“UUSI v. BNA”), filed February 4, 2013, and served on Bosch
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`and BNA on February 7, 2013.
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`• UUSI, LLC v. Webasto Roof Sys., Inc., No. 2:13-cv-11704 (E.D. Mich.) (“UUSI
`
`v. Webasto”), filed April 15, 2013, and served April 16, 2013.
`
`C.
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`37 C.F.R. § 42.8(b)(3): Lead and Back-Up Counsel and Service
`Information
`
`Petitioners provide the following designation of counsel:
`
`
`
`1
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,217,612
`
`Lead Counsel
`Craig D. Leavell (Reg. No. 48505)
`craig.leavell@kirkland.com
`Postal and Hand-Delivery Address:
`KIRKLAND & ELLIS LLP
`300 North LaSalle Street
`Chicago, Illinois 60654
`Telephone: (312) 862-2000
`Fax: (312) 862-2200
`
`Pursuant to 37 C.F.R. § 42.10(b), Powers of Attorney accompany this
`
`Back-up Counsel
`Alyse Wu (Reg. No. 68926)
`alyse.wu@kirkland.com
`Postal and Hand-Delivery Address:
`KIRKLAND & ELLIS LLP
`300 North LaSalle Street
`Chicago, Illinois 60654
`Telephone: (312) 862-2000
`Fax: (312) 862-2200
`
`Petition. Please address all correspondence to lead and back-up counsel at the
`
`address above. Petitioners also consent to service by email.
`
`II.
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`PAYMENT OF FEES PURSUANT TO 37 C.F.R. § 42.103
`
`The undersigned authorizes the Office to charge the fee set forth in 37
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`C.F.R. § 42.15(a) for this Petition to Deposit Account No. 506092. Review of six
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`(6) claims is requested, so no excess claim fees are required. The undersigned
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`further authorizes payment for any additional fees that might be due in connection
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`with this Petition to be charged to the above-referenced Deposit Account.
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`III. GROUNDS FOR STANDING PURSUANT TO 37 C.F.R. § 42.104(A)
`Petitioners certify that the ’612 Patent is available for inter partes review
`
`and that neither is barred nor estopped from requesting inter partes review of the
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`Challenged Claims. Petitioners certify that (1) neither is the owner of the ’612
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`Patent; (2) neither BNA nor Brose (or any real party-in-interest) has filed a civil
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`action challenging the validity of any claim of the ’612 Patent; (3) this Petition is
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`
`
`2
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`
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`Petition for Inter Partes Review of U.S. Patent No. 8,217,612
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`filed less than one year after the date on which a Petitioner, any real party-in-
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`interest, or a privy of a Petitioner was served with a complaint alleging
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`infringement of the ’612 Patent; (4) the estoppel provisions of 35 U.S.C.
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`§ 315(e)(1) do not prohibit this inter partes review; and (5) this Petition is filed
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`after the date of grant of the ’612 Patent.
`
`IV.
`
`IDENTIFICATION OF CHALLENGE PURSUANT TO 37 C.F.R.
`§ 42.104(B)
`
`Petitioners request claims 1-2 and 5-8 of the ’612 Patent be found
`
`unpatentable.
`
`A.
`
`37 C.F.R. § 42.104(b)(1): Claims for Which Inter Partes Review Is
`Requested
`
`Petitioners request inter partes review of claims 1-2 and 5-8 of the ’612
`
`Patent.
`
`B.
`
`37 C.F.R. § 42.104(b)(2): The Specific Art and Statutory
`Ground(s) on Which the Challenge Is Based
`Inter partes review of the Challenged Claims is requested in view of the
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`following prior art: (1) U.S. Patent No. 4,870,333 to Itoh et al. (“Itoh”) (Ex.
`
`1007); (2) U.S. Patent No. 4,468,596 to Kinzl et al. (“Kinzl”) (Ex. 1008); and
`
`Zuckerman, U.S. Patent No. 5,069,000 (“Zuckerman”) (Ex. 1009).
`
`The particular references that render each Challenged Claim invalid, and the
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`statutory basis for invalidity, are as follows:
`
`
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`3
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`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,217,612
`
`Proposed Statutory Rejections for the ’612 Patent
`Claims 1-2 and 5-8 are invalid as obvious under 35 U.S.C. § 103(a)
`over Itoh in view of the ordinary skill in the art.
`Claims 1-2 and 5-8 are anticipated under 35 U.S.C. § 102(b) by Itoh
`under the apparent claim constructions advocated by UUSI.
`Claims 1-2 and 5-8 are invalid as obvious under 35 U.S.C. § 103(a)
`over Itoh in view of the ordinary skill in the art and Kinzl.
`Claims 6-8 are anticipated under 35 U.S.C. § 102(b) by Kinzl.
`Claims 6-8 are invalid as obvious under 35 U.S.C. § 103(a) over Kinzl
`in view of the ordinary skill in the art.
`Claims 6-8 are invalid as obvious under 35 U.S.C. § 103(a) over Kinzl
`in view of the ordinary skill in the art and Itoh.
`Claims 1-2 and 5 are invalid as obvious under 35 U.S.C. § 103(a) over
`Itoh in view of the ordinary skill in the art and Zuckerman.
`Claims 1-2 and 5 are invalid as obvious under 35 U.S.C. § 103(a) over
`Itoh in view of the ordinary skill in the art, Kinzl, and Zuckerman.
`
`Ground
`1
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`2
`
`3
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`4
`5
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`6
`
`7
`
`8
`
`
`C.
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`37 C.F.R. § 42.104(b)(3): How the Challenged Claims Are to Be
`Construed
`The ’612 Patent is expired. Consistent with MPEP § 2217 and Innolux
`
`Corp. v. Semiconductor Energy Lab. Co. Ltd., IPR2013-00065, Paper 11, 10 (Apr.
`
`30, 2013), the claims are to be construed based upon the standard set forth in
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`Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005). Evidence
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`supporting these constructions includes the infringement positions taken by the
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`patent owner, UUSI, in its litigation against BNA. 35 U.S.C. § 301(a)(2); 37
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`C.F.R. § 1.501. Attached as Exhibit 1003 is Petitioners’ Submission Pursuant to
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`35 U.S.C. § 301 and 37 C.F.R. § 1.501 in support of this Petition. Petitioners
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`submit, for purposes of this IPR only, the following proposed constructions:
`
`
`
`4
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`
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`Petition for Inter Partes Review of U.S. Patent No. 8,217,612
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`i. “a control signal . . . to deactivate said motor” (claims 1 and 6)
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`Petitioners propose that the phrase “a control signal . . . to deactivate said
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`motor” should be given its plain meaning and construed to require a control signal
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`to deactivate the motor. Such a construction would exclude a system that uses a
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`control signal to immediately reverse (without first deactivating) the motor. The
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`1992 application to which the ‘612 Patent claims priority discloses “de-energizing”
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`the motor, and distinguishes reversing the motor, which it says might be
`
`impossible at higher speeds. (Ex. 1020 at 6:64-7:2.) The ’612 Patent’s
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`specification explicitly distinguishes (and even disparages) an approach of
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`immediately reversing (without first deactivating) the motor in response to an
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`obstacle.
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` (Ex. 1005 at 3:44-57 (describing such “motor plugging,” as
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`“unnecessary” and “undesirable” due to “undesired motor heating,” because it is
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`“detrimental to the life and reliability” and because it “can also cause undesirable
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`transients, trip breakers, and blow fuses in a power supply system”).) At least one
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`of patentee’s other, earlier patents shows it knew how to recite the broader concept
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`of altering the motor. (Ex. 1010 at Claims.) The choice of the word “de-activate”
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`in the Challenged Claims was thus a conscious decision that should be given
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`effect. Petitioners’ construction is consistent with how one of skill in the art would
`
`understand this term. (Ex. 1001 at ¶ 50.)
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`
`
`5
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`
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`Petition for Inter Partes Review of U.S. Patent No. 8,217,612
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`ii. “a sensor for sensing movement of the window or panel” (claims 1
`and 6)
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`Petitioners propose that the phrase “a sensor for sensing movement of the
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`window” should be construed to include both direct and indirect sensing of the
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`window/panel movement, and not limited to just direct sensing. This construction
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`is consistent with the plain meaning and is supported by the ’612 Patent’s
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`specification. The 1992 application to which the ‘612 Patent claims priority
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`discloses Hall sensors, a type of indirect sensor, as well as explaining that other
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`types of sensors could be used. (Ex. 1020 at 1:61-63 and 3:49-52.) It discloses
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`both types of sensors: (1) sensors that directly sense movement of the window (Ex.
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`1005 at 10:6-10), and (2) sensors that indirectly sense movement of the window by
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`sensing something else, such as motor rotation. (Id. at 9:61-10:5.)
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`During prosecution, the Examiner found that a Hall effect sensor that
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`indirectly monitored movement of the window (by directly monitoring the rotation
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`of the motor, which is physically coupled to the window) met the “sensor”
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`limitation of independent claims 1 and 6 (pending claims 29 and 35). (Ex. 1014 at
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`3-4.) The Examiner also accepted applicant’s assertion (Ex. 1018 at 2, 4) that such
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`a Hall effect sensor satisfied the “sensor” limitations of those claims. UUSI also
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`applies such a construction in the UUSI v. BNA litigation. (Ex. 1021 at 14-15 and
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`20-21 (accusing a Hall effect sensor).) Petitioners’ construction is consistent with
`
`how one of skill in the art would understand this term. (Ex. 1001 at ¶ 51.)
`
`
`
`6
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`
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`Petition for Inter Partes Review of U.S. Patent No. 8,217,612
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`iii. “sensing said window or panel has stopped moving” (claim 6)
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`As discussed above, the specification and prosecution history support a
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`construction of the “sensor” that includes a sensor that indirectly senses window
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`movement by monitoring a motor parameter. The element of “sensing said
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`window or panel has stopped moving” should likewise be construed to encompass
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`indirectly sensing that the window has stopped moving, including by recognizing a
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`change in behavior of the motor.
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`During prosecution, the Examiner rejected claim 6 (pending claim 35),
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`noting that the prior art disclosed a system which detects rotation of the motor,
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`calculates the the motor speed and the variation in motor speed, to determine the
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`presence of a pinching condition. (Ex. 1014 at 3-4.) The Examiner also accepted
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`applicant’s assertion (Ex. 1018 at 5), that the “hard obstruction” detection in the
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`1992 specification satisfied this limitation of claim 6 (pending claim 35). That
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`“hard obstruction” detection will de-energize the motor based on a comparison of
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`motor current values. (Ex. 1020 starting at 6:47.) In other words, the system
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`would recognize a spike in the motor current, but would not directly sense a
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`stoppage of the window. Petitioners’ construction is consistent with how one of
`
`skill in the art would understand this term. (Ex. 1001 at ¶ 52.)
`
`
`
`7
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`
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`Petition for Inter Partes Review of U.S. Patent No. 8,217,612
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`D.
`
`37 C.F.R. § 42.104(b)(4): How the Construed Claim is
`Unpatentable Under the Statutory Grounds Identified
`
`A detailed explanation of how the construed Challenged Claims are
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`unpatentable, including the identification of where each element of the claim is
`
`found in the prior art relied upon, is provided in Section V.E., with claim charts
`
`comparing each Challenged Claim to the prior art in Section V.E. A summary of
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`how the construed Challenged Claims are unpatentable is provided in Section V.C.
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`37 C.F.R. § 42.104(b)(5): Evidence Supporting the Challenge
`
`E.
`An Appendix of Exhibits is attached identifying all exhibits supporting this
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`Petition and assigning them exhibit numbers. Additionally, the relevance of the
`
`evidence to the challenge raised, including identifying specific portions of the
`
`evidence that support the challenge, may be found in Section V.E. Petitioners
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`further submit a declaration of Dr. Art MacCarley (Ex. 1001) in support of this
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`Petition in accordance with 37 C.F.R. § 1.68.
`
`V. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`OF THE CHALLENGED CLAIMS IS UNPATENTABLE.
`A. Description of the Alleged Invention of the ’612 Patent
`The ’612 Patent describes a number of systems, methods and features, many
`
`of which were added over the course of 16 years through continuations-in-part.
`
`Significant portions of specification are unrelated to the subject matter recited in
`
`the Challenged Claims. Nevertheless, the specification is generally directed to
`
`reducing the risk of personal injury that could result if a limb (e.g., an arm) is
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`
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`8
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`
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`Petition for Inter Partes Review of U.S. Patent No. 8,217,612
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`caught by a power-operated device, for example, during the closing of a power
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`window or sunroof in a vehicle. (Ex. 1005 at 1:30-55 and 1:59-2:20.)
`
`Independent claim 1 is directed to an apparatus for controlling a motor (e.g.,
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`a power window or sunroof motor) and recites the combination of a sensor, a
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`switch, one or more other switches, and a controller. The controller monitors the
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`sensor and controls the operation of the motor, via the switch, based on the sensor
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`output, which is related to speed. The “one or more [other] switches” are used by
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`the controller to determine the window/panel position. The controller will
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`deactivate the motor in response to a sensing of a collision with an obstacle. The
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`controller senses such a collision by monitoring the sensor signal, adjusting a
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`threshold in real time based on immediate past measurements of the signal, and
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`comparing the most recent sensor signal to the threshold. (Ex. 1005, claim 1.)
`
`Independent claim 6 is directed to an apparatus for controlling such a motor
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`and recites the combination of a sensor, a controller, and a switch. The controller
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`monitors the sensor and controls the motor, via the switch, based on the sensor
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`output, which is related to position. The controller will deactivate the motor in
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`response to a sensing that the window has stopped moving (e.g., because of an
`
`obstruction) before the window reaches a position limit. (Ex. 1005, claim 6.)
`
`
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`9
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`Petition for Inter Partes Review of U.S. Patent No. 8,217,612
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`Dependent claims 2 and 7, which depend from claims 1 and 6, respectively,
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`add limitations directed to the details of the controller, such as a processing unit, a
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`control program, and memory. (Ex. 1005, claims 2 and 7.)
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`Dependent claim 5, which depends from claim 1, adds a limitation about the
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`time frame (40 ms) within which the “immediate past measurements of said signal
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`are sensed.” (Ex. 1005, claim 5.)
`
`Dependent claim 8, which depends from claim 6, requires “one or more
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`position limits programmed for use by the controller to determine window or panel
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`position for use in identifying whether the window or panel is open or closed.”
`
`(Ex. 1005, claim 8.)
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`Summary of the Prosecution History of the ’612 Patent
`
`B.
`The ’612 Patent issued July 10, 2012 from U.S. Patent Appl. No. 12/360,942
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`(“the ’942 Application”) (Ex. 1011). The chain of priority is shown in Exhibit
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`1022. During prosecution, the Challenged Claims were numbered as follows:
`
`(Issued) Challenged Claim
`Independent claim 1
` Dependent claim 2
` Dependent claim 5
`Independent claim 6
` Dependent claim 7
` Dependent claim 8
`
`During Prosecution
`Claim 29
`Claim 30
`Claim 34
`Claim 35
`Claim 36
`Claim 37
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`The application was filed with claims 1-28, but those claims were canceled,
`
`and claims 29-39 were added in a preliminary amendment. Claims 29-39 were
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`
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`10
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`
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`Petition for Inter Partes Review of U.S. Patent No. 8,217,612
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`carried over from applicant’s U.S. Pat. Appl. No. 10/765,487 (U.S. Patent No.
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`7,579,802), where they had been rejected over U.S. Patent No. 4,608,637 to
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`Obuyama et al. and EP 0 581 509 to Bamford. (Ex. 1012 at 8.) In the preliminary
`
`amendment (Id.), applicant asserted that Bamford was not prior art because the
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`pending claims were supported by applicant’s April 22, 1992 application (Appl.
`
`No. 07/872,190, issued as Patent No. 5,334,876 (Ex. 1020).)
`
`On February 10, 2009, applicant submitted a second preliminary amendment
`
`amending claim 35 and its dependent claim 37. (Ex. 1013.) The Examiner
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`rejected all pending claims as anticipated by Terashima. (Ex. 1014.) Applicant
`
`then argued that pending claims 29-31, 34 and 35-37 were supported by applicant’s
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`1996 application (Appl. No. 08/736,786, issued as Patent No. 6,064,165) and
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`Terashima was therefore not prior art. (Ex. 1015.)
`
`The Examiner then rejected all pending claims as anticipated by Takeda et
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`al. (Ex 1016.) During an interview, “[i]t was agreed that the ’876 reference
`
`provided support for the present claims and a claim chart will be provided in the
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`response to verify the support. . . .” (Ex. 1017.) Applicant then argued that
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`pending claims 29-31, 34 and 35-37 were supported by its April 22, 1992
`
`application (Appl. No. 07/872,190, issued as the ’876 Patent.) (Ex. 1018.) After a
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`double-patenting rejection, the claims were allowed, with one amendment to
`
`pending claim 29 (issued claim 1). (Ex. 1019.)
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`
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`11
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`Petition for Inter Partes Review of U.S. Patent No. 8,217,612
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`C.
`
`Summary of Invalidity Arguments
`
`1. Summary of Itoh
`
`Itoh issued in 1989, was disclosed during prosecution of the ’612 Patent, but
`
`was never discussed in any Office Action.
`
`
`
`
`
`a. Itoh and Independent Claims 1 and 6
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`Itoh discloses multiple embodiments. Embodiment 3, described in detail
`
`beginning in Column 7 of the specification, is the most relevant. Itoh discloses a
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`controller (32) with a CPU (34) for controlling a motor (20) for a power window in
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`a vehicle. (Ex. 1007 at 7:53-8:9 and Fig. 7.) The controller/CPU controls the
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`motor via motor driving circuit 28. (Id.) Motor driving circuit 28 switches the
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`motor, controlling the direction of rotation of the motor and controlling whether
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`the motor is on or off. (Id. at 7:57-59, 7:67-8:11, 11:16-19, 11:48-50; Fig. 5
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`(“pulse counter clearing” 113 and “pulse counter resetting” 111); Fig. 6
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`(“Ascending Action” and resulting decrement or increment of the pulse counter);
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`Fig. 8 (showing how the timer interruption signal will control the pulse counting).)
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`The switching of the motor (and the resulting counting of the window position) is
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`in response to both the disclosed algorithm and user control switches shown in
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`Figure 7 as “Switch Panel” 38.
`
`Embodiment 3 includes a sensor (30), from which the CPU 34 detects a
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`position of the window with counter 36. Counter 36 counts pulses and compares
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`the count to a memory map 46 as the window moves along its path. (Id. at 8:10-
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`
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`12
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`Petition for Inter Partes Review of U.S. Patent No. 8,217,612
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`16.) The sensor is a motor current ripple counter used to detect both window
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`movement and speed. (Id. at 5:6-10, 8:33-48; 9:16-34 (position), 9:37-62 (speed).)
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`Itoh’s CPU is programmed with known positions along the window travel
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`path, including (i) “window entirely closed” (designated as the 0 count), (ii)
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`window “full-opened” (e.g., a count value of 2000, Pmax), and (iii) window nearly
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`closed (e.g., a count value of 100, P). (Id. at 8:14-21, 9:24-34, 10:48-60, 11:35-47,
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`Figs. 10(a), 10(b), 11(a), and 11(b).)
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`Itoh’s CPU detects an obstacle caught between the window frame and the
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`window using the algorithm shown in FIG. 5. (Id. at 8:49-52.) Itoh does so by
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`storing a number of “n” immediately prior speed values in a FIFO-type memory
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`(Id. at 10:12-17, Fig. 9), calculating the average (Tm) of those speed values (Id. at
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`10:36-44), calculating the rate-of-change of motor speed (Tp/Tm, where Tp is the
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`instant motor speed value), and comparing that rate-of-change to a threshold (α).
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`(Id. at 10:61-66.) If the rate-of-change of the speed (Tp/Tm) exceeds the α
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`threshold, the CPU issues a signal to the driving circuit 28 to make the motor
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`reverse and the window to descend/open. (Id. at 11:16-20.)
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`In Embodiment 3, Itoh discloses that, in response to an obstacle, its CPU
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`will output a signal to reverse the motor. (Id. at 11:16-20.) But Itoh elsewhere
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`discloses the idea of deactivating the motor. In the Summary, Itoh teaches
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`deactivating the motor if the motor speed exceeds a threshold and the window is
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`“near to the closed position.” (Id. at 3:52-60.) Itoh also teaches that “it is possible
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`to stop the opening or closing action of the window at a halfway, or possible to
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`convert the action of the window in the reverse direction.” (Id. at Abstract.)
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`Accordingly, even though Embodiment 3 discloses reversing the motor, Itoh
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`elsewhere teaches the concept of deactivating the motor, and one of ordinary skill
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`in the art would readily recognize that those teachings could be applied to
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`Embodiment 3 to de-activate the motor, rather than reversing the motor, in
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`response to obstacle detection. (See Ex. 1001 at ¶¶ 88 and 92-95.)
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`It was well within the ordinary skill in the art, and was a routine design
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`choice, as to how to respond to an obstacle condition, including at least the options
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`of (i) deactivating the window motor, (ii) de-activing and then reversing the
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`window motor, or (iii) reversing the window motor without first deactivating the
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`motor. (Id.) To the extent a reference is necessary to support the obviousness of
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`this routine design choice, Kinzl discloses deactivating the motor in response to an
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`obstacle. (Ex. 1008 at 2:24-30, 3:21-49.)
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`The threshold (α) in Itoh is described as a constant. However, upon closer
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`review, Itoh’s equation is mathematically identical to the approach recited in claim
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`1. Itoh’s equation is described as follows (Ex. 1007 at 10:34-11:7):
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`Collision identified if Tp/Tm > α
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`Where: Tp = instant speed (most recent speed value)
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`Petition for Inter Partes Review of U.S. Patent No. 8,217,612
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`Tm = average of several, immediately preceding, speed values
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`α = a constant speed threshold
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`However, this equation is the same as the following:
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`
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`Collision identified if Tp > α*Tm
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`(See Ex. 1001 at ¶ 113-117.)
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`Itoh identifies a collision based on a comparison that is mathematically
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`identical to comparing the most recent speed measurement (Tp) to a threshold
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`adjusted in real time based on the average of the immediately prior speed values.
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`This is the same as claim 1, which requires that the collision be identified by
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`“comparing a value based on a most recent signal form the sensor with the obstacle
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`detection threshold” and “adjusting the obstacle detection threshold in real time
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`based on immediate past measurements of the signal sensed by the sensor.” Thus,
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`Itoh discloses the equation of claim 1, or at least a mathematically identical and
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`obvious variation thereof. (Id.)
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`To the extent a prior art reference is necessary to establish the obviousness
`
`of thinking of an equation in terms of its mathematical identity for purposes of
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`obstacle detection in a moving panel in a vehicle (a concept that was well within
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`the ordinary skill in the art), the Zuckerman reference, U.S. Patent No. 5,069,000
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`teaches exactly that. (Ex. 1009 at 20:67-21:6.) Zuckerman discloses a collision
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`detection system for a moving panel in a vehicle (such as a sliding door on a van).
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`Petition for Inter Partes Review of U.S. Patent No. 8,217,612
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`(Id. at Figs. 1 and 2.) The system measures motor current, and determines the
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`difference between (i) the present, instantaneous motor current, and (ii) the motor
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`current averaged over the preceding 0.5 second. This difference is then compared
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`to a reference value, and then the control circuit sends a signal to deactivate and
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`reverse the door based on the result of that comparison. (Id. at 20:19-39.)
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`Zuckerman then explains that “the reversing apparatus of the present invention
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`senses such obstruction-caused current changes by circuit logic that effectively
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`compares the instantaneous motor current with a time-averaged reference
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`current that ‘tracks’ the normally varying motor current in order to accurately
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`detect the presence of predetermined obstruction-caused resistance.” (Id. at
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`20:67-21:6 (emphasis added).) (See also, Ex. 1001 at ¶¶ 118, 284-292.)
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`Kinzl also discloses an adjustable obstacle detect threshold calculated in real
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`time based on motor speed detected earlier during the present run, and then
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`comparing a currently sensed motor speed to the threshold in order to detect an
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`obstacle. (Ex. 1008 at 4:17-41.) Kinzl’s would teach and motivate one of ordinary
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`skill in the art to recognize the obvious point that Itoh’s approach is
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`mathematically identical to (and can thought of in terms identical to) the approach
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`recited in claim 7. (Ex. 1001 at ¶¶ 191, 293, 296 and 220-26.)
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`Regarding claim 6, Itoh’s algorithm detects an obstacle by determining that
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`the window is decelerating too much—i.e., more than an acceptable threshold.
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`Petition for Inter Partes Review of U.S. Patent No. 8,217,612
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`Itoh is designed to allow the CPU to take action before the rotation of the motor
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`completely stops. However, in all cases, Itoh’s CPU will respond with a motor
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`control signal—even in an extreme case in which the presence of a hard obstacle
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`causes the window to suddenly and completely stop moving. Moreover, claim 6
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`of the ’612 Patent merely requires that the controller output a signal “in response to
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`a sensing said window or panel has stopped moving . . . .” Thus, even if the
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`processor in Itoh is focused on deceleration, the CPU will, in fact, respond to a
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`sensing of the stoppage of the window, even though it recognizes that stoppage as
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`an extreme deceleration. (See Ex. 1001 at ¶ 159.) Alternatively, setting the
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`threshold in Itoh at an appropriate level will result in the CPU outputting a signal
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`only in response to a stoppage. (Id. at ¶¶ 159-160.) In addition, the choice of a
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`direct window movement sensor, which would directly sense stoppage of the
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`window in the event of a collision, was an obvious design choice, well within the
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`ordinary skill in the art. (Id. at ¶¶ 153.) To the extent a reference is necessary to
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`establish the obviousness of this concept, Kinzl discloses the use of a direct
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`window movement sensor, which would result in an actual sensing of the stoppage
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`of the window, and a triggering of a CPU signal in response thereto. (See Ex. 1008
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`at 2:17-19; Ex. 1001 at ¶¶ 210-213.)
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`b. Itoh and Dependent Claims 2 and 7
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`Regarding dependent claims 2 and 7, Itoh discloses CPU 34 in controller 32.
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`Petition for Inter Partes Review of U.S. Patent No. 8,217,612
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`The CPU is programmed to execute a control program outlined in the flowcharts
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`shown in, for example, Figures 5 and 6. Itoh discloses a FIFO-like memory in the
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`form of the “speed data table” shown in Figure 9, which will store multiple speed
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`values corresponding to a signal received from the sensor. (Ex. 1007 at 10:12-17;
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`Fig. 9.) Itoh also discloses memory 46 (shown in Figure 7) for storing multiple
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`window position values (including 0, P, and Pmax) that correspond to the signal
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`received from the sensor. The CPU 34 detects a position of the window by using
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`the counter that corresponds to the window position. “Namely, the CP[U] 34 has a
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`map 46 able to compare and contrast the position of the window 26 in accordance
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`with the pulse number, and detect that the window 26 is entirely closed when the
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`pulse number is 0 and the window 26 is fully opened with the pulse number is
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`2000 (Pmax), for example.” (Id. at 8:10-21; see also, 9:16-34.)
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`c. Itoh and Dependent Claim 5
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`Regarding dependent claim 5, which adds a limitation about the time frame
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`(40 ms) within which the “immediate past measurements of said signal are
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`sensed,” Itoh discloses this limitation. Itoh uses immediate past measurements
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`measured by a clock running at 0.1 msec. The clock takes measurements at a rate
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`between 0.4 msec and 0.8 msec, according to Figure 8. Itoh discloses that, in
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`experiments, the measurements were taken at 1.2 msec at maximum speed. (Ex.
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`1007 at 9:63-68.) Thus, 33 measurements would be taken within 40 ms (40/1.2 =
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