`
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEALS BOARD
`
`BROSE NORTH AMERICA, INC.
`and
`BROSE FAHRZEUGTEILE GMBH & CO. KG, HALLSTADT,
`Petitioners
`
`v.
`
`UUSI, LLC
`Patent Owner
`
`Case No. IPR2014-00416
`Patent No. 8,217,612
`
`PETITIONERS’ DEMONSTRATIVE EXHIBITS
`
`
`
`
`
`
`
`
`
`Technik fflr Automobile
`
`IPR2014-00417
`U.S. Patent No. 7,579,802
`
`lPR2014-00417
`
`IPR2014-00416
`U.S. Patent No. 7,579,802
`U.S. Patent No. 8,217,612
`
`lPR2014-00416
`
`U.S. Patent No. 8,217,612
`
`1
`
`
`
`Overview of Prior Art Reference Itoh
`
`IPR2014-00417: Ex. 1007; Paper 6 (Corr. Pet.) at 14
`IPR2014-00416: Ex. 1007; Paper 5 (Corr. Pet.) at 12
`
`2
`
`
`
`Overview of Prior Art Reference Itoh
`
`controller
`
`motor
`
`IPR2014-00416: Ex. 1007 at Fig. 7; Paper 5 (Corr. Pet.) at 12
`IPR2014-00417: Ex. 1007 at Fig. 7; Paper 6 (Corr. Pet.) at 14
`
`3
`
`
`
`Overview of Prior Art Reference Itoh
`
`IPR2014-00417: Ex. 1007 at Fig. 7; Paper 6 (Corr. Pet.) at 14
`IPR2014-00416: Ex. 1007 at Fig. 7; Paper 5 (Corr. Pet.) at 12
`
`4
`
`
`
`Overview of Prior Art Reference Kinzl
`
`IPR2014-00417: Ex. 1008
`IPR2014-00416: Ex. 1008
`
`5
`
`
`
`Overview of Prior Art Reference Kinzl
`
`IPR2014-00417: Ex. 1008 at Fig. 1, 2:11-17; Paper 6 (Corr. Pet.) at 23-24
`IPR2014-00416: Ex. 1008 at Fig. 1, 2:11-17; Paper 5 (Corr. Pet.) at 22
`6
`
`
`
`Overview of Prior Art Reference Kinzl
`
`IPR2014-00417: Ex. 1008 at Fig. 2; Paper 6 (Corr. Pet.) at 24-25
`IPR2014-00416: Ex. 1008 at Fig. 2; Paper 5 (Corr. Pet.) at 23
`
`7
`
`
`
`Technik fur Automobile
`
`U.S. Patent No. 7,579,802
`
`U.S. Patent No. 7,579,802
`IPR2014-00417
`
`|PR2014-OO417
`
`8
`
`
`
`’802 Patent: Overview of Grounds Initiated
`
`Claim 1
`
`Dep. Claim 6
`
`Claim 7
`
`Dep. Claim 8
`
`Dep. Claim 9
`
`Claim 14
`
`Ground 1
`Obvious over Itoh
`
`Ground 2
`Anticipated by Itoh
`
`Ground 3
`Anticipated Kinzl
`
`Ground 4
`Obvious over Kinzl
`
`Not
`instituted
`Not raised
`by Brose
`
`Not
`raised
`by
`Brose
`
`Ground 5
`Obvious over Itoh
`in view of Kinzl
`Ground 6
`Obvious over Itoh
`
`in view of Zuckerman Not raised
`by Brose
`
`Ground 7
`Obvious over Itoh
`in view of Kinzl and
`Zuckerman
`
`9
`
`
`
`’802 Patent: Oral Argument Roadmap
`
`Claim 1
`
`Dep. Claim 6
`
`Claim 7
`
`Dep. Claim 8
`
`Dep. Claim 9
`
`Claim 14
`
`Ground 1
`Obvious over Itoh
`
`Ground 2
`Anticipated by Itoh
`
`Ground 3
`Anticipated Kinzl
`
`Ground 4
`Obvious over Kinzl
`
`Not
`instituted
`Not raised
`by Brose
`
`Ground 5
`Obvious over Itoh
`in view of Kinzl
`Ground 6
`Obvious over Itoh
`
`in view of Zuckerman Not raised
`by Brose
`
`Ground 7
`Obvious over Itoh
`in view of Kinzl and
`Zuckerman
`
`UUSI does
`not separately
`argue.
`
`Rises and falls
`with Claim 7.
`Not
`raised
`by
`Brose
`
`UUSI
`does not
`separately
`argue.
`
`Rises and
`falls with
`Claim 7
`
`UUSI
`does not
`separately
`argue.
`Rises and
`falls with
`Claim 7.
`
`Based on
`UUSI’s
`concessions,
`Grounds
`6 & 7
`essentially
`overlap
`Grounds
`1 & 5
`
`Based on
`UUSI’s
`concessions,
`Grounds
`6 & 7
`essentially
`overlap
`Grounds
`1 & 5
`
`10
`
`
`
`’802 Patent Argument Road Map: Claim 1
`
`Main Issue: Claim construction
`• Claim 1 is not limited to a current
`amplitude sensor
`
`11
`
`
`
`Construction of Claim 1 of the ’802 Patent
`1. Apparatus for controlling motion of a motor driven element in a vehicle over a
`range of motion and for altering said motion when undesirable resistance to
`said motion is encountered, said apparatus comprising:
`a) a sensor for measuring a parameter of a motor coupled to the motor
`driven element that varies in response to a resistance to motion during
`all or part of a range of motion of the motor driven element;
`b) a memory for storing a number of measurement values from the sensor
`based on immediate past measurements of said parameter over at least a
`portion of a present traversal of said motor driven element through said
`range of motion;
`c) a controller coupled to the memory for determining to de-activate the motor
`based on a most recent sensor measurement of the parameter and the
`immediate past measurement values stored in the memory obtained during
`a present run through the motor driven element range of motion; and
`d) a controller interface coupled to the motor for altering motion of said motor
`driven element during the present run in response to a determination made
`by the controller.
`
`Ex. 1005 at claim 1
`
`12
`
`
`
`Construction of Claim 1 of the ’802 Patent
`
`a) a sensor for measuring a parameter of a motor coupled to the
`motor driven element that varies in response to a resistance to
`motion
`
`Brose’s Position
`
`UUSI’s Position
`
`Plain and ordinary meaning, i.e., any
`sensor that measures any motor
`parameter that varies as a result of
`resistance to motion.
`
`Current amplitude sensor
`
`(i.e., excludes a speed or position
`sensor).
`
`(Includes a current amplitude sensor,
`but would also include sensors that are
`used to measure speed (such as a Hall
`effect senor, other types of rotary
`encoders, or a motor current
`commutation pulse sensor), because
`speed is a motor parameter that varies
`in response to a resistance to motion.)
`
`Paper 31 (Response) at 10-11; Paper 34 (Reply) at 1-2
`
`13
`
`
`
`Construction of Claim 1 of the ’802 Patent
`
`Ex. 1005 at claim 1
`
`14
`
`
`
`Construction of Claim 1 of the ’802 Patent
`Other claims of the ’802 Patent establish that motor speed is
`a parameter that can be used for detecting an obstacle
`
`* * *
`
`* * *
`
`Ex. 1005 at claims 7, 15
`
`15
`
`
`
`Construction of Claim 1 of the ’802 Patent
`Identical claim language in UUSI’s related ’165 patent confirms
`that speed is “a parameter that varies in response to a resistance
`to motion.”
`
`Ex. 1010 at claims 1, 14
`
`16
`
`
`
`Construction of Claim 1 of the ’802 Patent
`UUSI’s expert admits there are no qualifications on the
`“parameter” or the “sensor” recited in Claim 1 of the ‘802 Patent:
`Dr. Ehsani – UUSI’s Expert
`Q: Mr. Leavell also asked about the sensor of Claim 1 of the same patent and I
`assume you see that at subsection A of claim 1. Let me rephrase. Do you see
`the sensor in subsection A of Claim 1?
`A. Yes.
`Q. Could you look at paragraph 53 of your '802 Declaration that discusses the
`sensor?
`A. Yes.
`Q. Thank you. Are there any characteristics associated with the term in Claim 1
`"a sensor for measuring the parameter of a motor"?
`[[objection]]
`A. Okay. So repeat the question again.
`Q. Sure. The sensor for measuring a parameter recited Claim 1A --
`A. Right.
`Q. -- are there any qualification on that what sensor or parameter is?
`A. No. It's a parameter, a sensor for a parameter.
`
`Paper 34 (Reply) at 1; Ex. 1050 at 455:8-456:7, Ex. 1063 at ¶ 24
`
`17
`
`
`
`Construction of Claim 1 of the ’802 Patent
`
`During litigation, UUSI conceded that motor speed is “a parameter of a
`motor…that varies in response to a resistance to motion.”
`
`* * *
`
`Paper 34 (Reply) at 2; Ex. 1033 at 14-16; Ex. 1063 at ¶ 55; Ex. 1059 at 1-10; see also id. at 13-22, 24-33
`
`18
`
`
`
`Construction of Claim 1 of the ’802 Patent
`Specification does not disavow speed as a parameter that varies in
`response to a resistance to motion.
`
`relied upon by UUSI
`
`Ex. 1005 (‘802 Pat.) at 10:4-11, 18:31-40, 23:49-54;
`Paper 34 (Reply) at 2; Ex. 1063 at ¶ ¶ 42-48
`
`19
`
`
`
`Construction of Claim 1 of the ’802 Patent
`Prosecution History: No clear and unmistakable disavowal of scope
`
`Claim Chart Used In Prosecution to Assert PriorityClaim Chart Used In Prosecution to Assert Priority
`
`Cited Specification PassageCited Specification Passage
`
`Paper 34 (Reply) at 2; Ex. 1063 at ¶ 51-52; Ex. 1014 at 14;
`Ex. 1031 at 5:14-21
`
`20
`
`
`
`Construction of Claim 1 of the ’802 Patent
`Prosecution History: No disclaimer. On the contrary, the Examiner found
`that Wang’s speed sensor disclosed the “sensor” of claim 1:
`
`Examiner’s findings:
`
`Wang discloses a speed sensor:
`
`Ex. 1013 at 4; Ex. 1047 at 2:50-67, Fig. 1; Ex. 1063 at ¶ 52; Reply (Paper 34) at 2
`
`21
`
`
`
`Claim 1: Unpatentable
`(Grounds 1, 2, and 3)
`
`UUSI argues that Itoh and Kinzl do not “teach or suggest” a
`current amplitude sensor:
`
`* * *
`
`* * *
`
`UUSI’s sole distinction is premised on its unduly narrow construction
`
`Paper 31 (Response) at 16-17; Ex. 1063 at ¶¶ 139, 147, 158
`
`22
`
`
`
`’802 Patent Argument Road Map: Claim 6
`
`Main Issue: 40 ms claim limitation
`• Itoh teaches 40 ms limitation
`• 40 ms limitation was obvious in view of Itoh
`• 40 ms limitation was an obvious design choice
`
`23
`
`
`
`Claim 6 of the ’802 Patent
`
`Ex. 1005 at claim 6
`
`24
`
`
`
`Claim 6: Unpatentable
`(Grounds 1 and 5)
`
`UUSI’s expert, Dr. Ehsani, concedes it is possible within the scope
`of Itoh for all the measurements to be taken within the prior 40 ms:
`
`Ex. 2001 at ¶ 64; Ex. 1063 at ¶ 172
`
`25
`
`
`
`Claim 6: Unpatentable
`(Grounds 1 and 5)
`
`Itoh teaches selection of “n” number of samples:
`
`Paper 6 (Corr. Pet.) at 17; Ex. 1007 at Figs 8-9, 10:40-45; Ex. 1063 at ¶ 177; Paper 34 (Reply) at 4
`
`26
`
`
`
`Claim 6: Unpatentable
`(Grounds 1 and 5)
`
`UUSI’s expert incorrectly calls the 40
`ms time interval “uniquely successful”
`
`•
`•
`
`40 ms not discussed in ’802 patent specification
`Preferred embodiment teaches using samples from much
`more than 40 ms ago
`
`Ex. 2001 at ¶ 64; Ex. 1005 at 10:22-26,19:60-67; Ex. 1063 at ¶ ¶ 182-185; Paper 34 (Reply) at 4
`
`27
`
`
`
`Claim 6: Unpatentable
`(Grounds 1 and 5)
`Specification expressly teaches that 40 ms is not uniquely successful,
`but is instead a mere design choice to be optimized through routine
`experimentation and manipulation of known variables based on
`predictable effects.
`
`Ex. 1005 at 19:16-26, 30-36, 45-59; Ex. 1063 at ¶¶ 186; Paper 34 (Reply) at 5
`
`28
`
`
`
`Claim 6: Unpatentable
`(Grounds 1 and 5)
`Brose’s expert, Dr. MacCarley, explains why 40 ms would have been an
`obvious design choice to a POSITA:
`
`* * *
`
`Ex. 1063 at ¶¶ 175-176; Paper 34 (Reply) at 4-5
`
`29
`
`
`
`Claim 6: Unpatentable
`(Grounds 1 and 5)
`UUSI’s expert concedes that the “art of engineering” should be exercised
`to arrive at an appropriate time period:
`
`Dr. Ehsani – UUSI’s ExpertDr. Ehsani – UUSI’s Expert
`
`
`
`
`
`* * ** * ** * *
`
`
`
`
`
`* * ** * ** * *
`
`Ex. 1050 at 298:18-300:4; Ex. 1063 at ¶ 176; Paper 34 (Reply) at 5
`
`30
`
`
`
`Claim 6: Unpatentable
`(Grounds 1 and 5)
`
`UUSI’s expert admitted that numbers other than 40 ms can be
`successful:
`
`
`
`Dr. Ehsani – UUSI’s ExpertDr. Ehsani – UUSI’s Expert
`
`Ex. 1050 at 499:13-24; Ex. 1063 at ¶ 193; Paper 34 (Reply) at 5
`
`31
`
`
`
`Claim 6: Unpatentable
`(Grounds 1 and 5)
`Prosecution History: The Examiner repeatedly found 40 ms limitation
`to be an obvious design choice:
`
`Ex. 1017 at 9-10; Ex. 1020 at 9; Ex. 1063 at ¶¶ 187-189; Paper 34 (Reply) at 5-6
`
`32
`
`
`
`Claim 6: Unpatentable
`(Grounds 1 and 5)
`
`
`“[W]here the general conditions of a claim are “[W]here the general conditions of a claim are
`
`disclosed in the prior art, it is not inventive to disclosed in the prior art, it is not inventive to
`
`discover the optimum or workable ranges by discover the optimum or workable ranges by
`
`routine experimentation.”routine experimentation.”
`
`
`
`In re Aller, 42 CCPA 824, 220 F.2d 454, 456 (1955)In re Aller, 42 CCPA 824, 220 F.2d 454, 456 (1955)
`
`Paper 34 (Reply) at 5
`
`33
`
`
`
`’802 Patent Argument Road Map: Claim 7
`
`Main Issue: Claim construction
`• Claim 7 is not limited to a “specialized”
`“hardware” sensor
`• Claim 7 does not require monitoring movement
`of an object or performing obstacle detection-
`based motor control along the entire travel path
`
`34
`
`
`
`Construction of Claim 7 of the ’802 Patent:
`“Movement Sensor”
`7. Apparatus for controlling activation of a motor for moving an object along a travel
`path and de-activating the motor if an obstacle is encountered by the object
`comprising:
`a) a movement sensor for monitoring movement of the object as the motor
`moves said object along a travel path;
`b) a switch for controlling energization of the motor with an energization signal; and
`c) a controller including an interface coupled to the switch for controllably
`energizing the motor and said interface additionally coupling the controller to the
`movement sensor for monitoring signals from said movement sensor; said
`controller comprising a stored program that:
`i) determines motor speed of movement from an output signal from the
`movement sensor;
`ii) calculates an obstacle detect threshold based on motor speed of
`movement detected during a present run of said motor driven element;
`iii) compares a value based on currently sensed motor speed of movement
`with the obstacle detect threshold; and
`iv) outputs a signal from the interface to said switch for stopping the motor if
`the comparison based on currently sensed motor movement indicates the
`object has contacted an obstacle.
`
`Ex. 1005 at claim 7
`
`35
`
`
`
`Construction of Claim 7 of the ’802 Patent:
`“Movement Sensor”
`
`a) a movement sensor for monitoring movement of the object
`
`Brose’s Position
`Plain and ordinary meaning, i.e., any
`sensor that monitors (directly or
`indirectly) movement of the object.
`
`(Note: Sensor must also be such that
`the controller can “determine motor
`speed of movement from an output
`signal from the movement sensor,”
`based on limitation (c)(i).
`
`Thus, this phrase includes a variety of
`sensors that are used to measure
`speed, such as a Hall effect senor, other
`types of rotary encoders, and a motor
`current commutation pulse sensor.)
`
`UUSI’s Position
`
`“[T]he movement sensor must
`correspond to a separate discrete,
`physical hardware-based sensor, not
`simply to measurement of existing motor
`current or voltage. In other words, the
`sensor is a separate sensor such as a
`position encoder or Hall effect sensor,
`not simply a current pulse counter as
`used in ‘sensorless’ control.”
`
`Paper 34 (Reply) at 6-7; Paper 31 (Response) at 29
`
`36
`
`
`
`Construction of Claim 7 of the ’802 Patent:
`“Movement Sensor”
`
`• Plain meaning of “sensor for monitoring
`movement” is any sensor that directly or
`indirectly monitors movement.
`
`• POSITA would understand “sensor” to include,
`e.g., Hall effect, rotary encoders, MCCP sensor.
`
`• Nothing in the plain language requires sensor to
`be “specialized” or “separate,” “discrete” or
`“physical hardware.”
`
`Ex. 1005 at claim 7; Paper 34 (Reply) at 6-9
`
`37
`
`
`
`Construction of Claim 7 of the ’802 Patent:
`“Movement Sensor”
`
`UUSI’s Position, Claim 7
`“[T]he movement sensor must
`correspond to a separate discrete,
`physical hardware-based sensor, not
`simply to measurement of existing
`motor current or voltage. In other
`words, the sensor is a separate
`sensor such as a position encoder or
`Hall effect sensor, not simply a current
`pulse counter as used in ‘sensorless’
`control.”
`
`• A motor current commutation pulse (MCCP)
`sensor is a discrete, physical, hardware-based
`sensor
`
`•
`
`It includes structure identical to current
`magnitude sensor (op-amp and shunt resistor)
`
`• UUSI’s position (in connection with Claim 1 is
`that a current magnitude sensor is a sensor
`
`• Nonsensical for the same structure to be a
`“sensor” for purposes of claims 1, but not be a
`“sensor” for purposes of claim 7
`
`• UUSI’s position (in connection with Claim 14) is that the phrase “a sensor for sensing
`movement of a window or panel along a travel path” must include a MCCP sensor.
`
`• Nonsensical for the phrase in claim 7, “a movement sensor for monitoring movement of
`the object . . .” to necessarily exclude a MCCP sensor
`
`Paper 31 (Response) at 29-30; Paper 34 (Reply) at 6-9
`
`38
`
`
`
`Construction of Claim 7 of the ’802 Patent:
`“Movement Sensor”
`Examiner found no material distinction between the claim 1 “sensor”
`and the claim 7 (then claim 12) “movement sensor”:
`
`* * *
`
`Ex. 1015 at 3, 6; see also Ex. 1017 at 3, 5-6; Ex. 1063 at ¶ 79; Paper 34 (Reply) at 8
`
`39
`
`
`
`Construction of Claim 7 of the ’802 Patent:
`“Movement Sensor”
`Examiner found no material distinction between the claim 1 “sensor”
`and the claim 7 (then claim 12) “movement sensor”:
`
`* * *
`
`sic [Okuyama]
`
`Ex. 1020 at 3, 5-6; see also Ex. 1024 at 3, 5-6; Ex. 1063 at ¶ 79; Paper 34 (Reply) at 8
`
`40
`
`
`
`Construction of Claim 7 of the ’802 Patent:
`“Movement Sensor”
`As explained by Brose’s expert:
`
`Ex. 1063 at ¶ 66-67; Paper 34 (Reply) at 7
`
`41
`
`
`
`Construction of Claim 7 of the ’802 Patent:
`“Movement Sensor”
`
`Dependent claim 13 demonstrates that UUSI’s construction of
`claim 7 is wrong.
`
`MCCP sensor is a type of “current sensor”
`from which motor speed can be determined
`
`Ex. 1005 at claim 13; Ex. 1063 ¶ 69; Paper 34 (Reply) at 7
`
`42
`
`
`
`Construction of Claim 7 of the ’802 Patent:
`“Movement Sensor”
`UUSI’s expert agreed that a MCCP sensor may be the only type of
`current sensor from which motor speed can be determined:
`
`
`
`Dr. Ehsani – UUSI’s ExpertDr. Ehsani – UUSI’s Expert
`
`* * *
`
`Ex. 1050 at 55:12-17, 153:4-8; Ex. 1063 at ¶ 69
`
`43
`
`
`
`Construction of Claim 7 of the ’802 Patent:
`“Movement Sensor”
`UUSI’s related application and patent establish that the disputed
`language covers a motor current commutation pulse sensor:
`
`
`
`Related U.S. Pub. No. 2002/0121872Related U.S. Pub. No. 2002/0121872
`
`
`
`Related U.S. Pat. No. 6,404,158Related U.S. Pat. No. 6,404,158
`
`Ex. 1045 at claims 28, 33; Ex. 1044 at claims 1, 2; Ex. 1063 at ¶¶ 71-72; Paper 34 (Reply) at 7
`
`44
`
`
`
`Construction of Claim 7 of the ’802 Patent:
`“Movement Sensor”
`
`• UUSI concedes that the specification discloses both
`“specialized sensors” and “sensorless” sensing.
`• UUSI admits that a “hardware” sensor is merely
`“preferred in some situations.”
`• Not an express definition or clear disavowal of
`“sensorless” sensing.
`
`Paper 31 (Response) at 31; Ex. 1063 at ¶ 75; Paper 34 (Reply) at 7
`
`45
`
`
`
`Construction of Claim 7 of the ’802 Patent:
`“Movement Sensor”
`
`
`
`Claim Chart Used In Prosecution to Assert PriorityClaim Chart Used In Prosecution to Assert Priority
`
`
`
`Cited Specification PassageCited Specification Passage
`
`Not a clear and unmistakable
`disavowal of scope
`
`Ex. 1014 at 17; Ex. 1031 at 4:16-18; Ex. 1063 at ¶¶ 76, 78
`
`46
`
`
`
`Construction of Claim 7 of the ’802 Patent:
`“Movement Sensor”
`
`• Doctrine of claim differentiation does not support UUSI’s construction.
`• Claim 7 is narrower than claim 1, because claim 7 requires the sensor
`parameter to be motor speed.
`
`Ex. 1005 at claims 1, 7; Ex. 1063 at ¶ 73
`
`47
`
`
`
`Construction of Claim 7 of the ’802 Patent:
`“Travel Path”
`
`[preamble] apparatus for controlling activation of a motor for moving an
`object along a travel path…(a) movement sensor for monitoring movement
`of the object as the motor moves said object along a travel path
`
`Brose’s Position
`
`UUSI’s Position
`
`Plain and ordinary meaning, i.e., a
`movement sensor that monitors
`movement of an object, as the object is
`moved by the motor along a travel path.
`
`Does not require movement monitoring
`or obstacle detection based on the later-
`recited algorithm of claim 7 along the
`entire possible travel path.
`
`“The correct construction…is
`therefore an apparatus that monitors
`movement of an object along an
`entire travel path and performs obstacle
`detection-based motor control
`along the entire travel path.”
`
`Paper 34 (Reply) at 8-9; Paper 31 (Response) at 39-40
`
`48
`
`
`
`Construction of Claim 7 of the ’802 Patent:
`“Travel Path”
`
`• Plain meaning simply requires: (1) the apparatus is
`for controlling activation of a motor that moves an
`object along a travel path, and (2) the movement
`sensor monitors movement of the object as the
`motor moves the object along the travel path.
`In other words, “along a travel path” modifies
`“moving an object” and “movement of the object.”
`• Claim does not refer to or mention obstacle
`detection-based motor control along the entire
`travel path.
`
`•
`
`Ex. 1005 at claim 7; Ex. 1063 at ¶¶ 87-88; Paper 34 (Reply) at 8
`
`49
`
`
`
`Construction of Claim 7 of the ’802 Patent:
`“Travel Path”
`
`7. Apparatus for controlling activation of a motor for moving an object along a travel
`path and de-activating the motor if an obstacle is encountered by the object comprising:
`a) a movement sensor for monitoring movement of the object as the motor moves
`said object along a travel path;
`b) a switch for controlling energization of the motor with an energization signal; and
`c) a controller including an interface coupled to the switch for controllably energizing the
`motor and said interface additionally coupling the controller to the movement sensor
`for monitoring signals from said movement sensor; said controller comprising a stored
`program that:
`i)
`determines motor speed of movement from an output signal from the
`movement sensor;
`ii) calculates an obstacle detect threshold based on motor speed of movement
`detected during a present run of said motor driven element;
`iii) compares a value based on currently sensed motor speed of movement with
`the obstacle detect threshold; and
`iv) outputs a signal from the interface to said switch for stopping the motor if the
`comparison based on currently sensed motor movement indicates the object
`has contacted an obstacle.
`
`Ex. 1005 at claim 7
`
`50
`
`
`
`Construction of Claim 7 of the ’802 Patent:
`“Travel Path”
`
`No support
`in the
`specification
`for UUSI’s
`expert’s
`opinion
`
`Ex. 2001 at ¶ 76; Ex. 1063 at ¶¶ 95-96; Paper 34 (Reply) at 8
`
`51
`
`
`
`Construction of Claim 7 of the ’802 Patent:
`“Travel Path”
`
`
`
`Claim Chart Used In Prosecution to Assert PriorityClaim Chart Used In Prosecution to Assert Priority
`
`
`
`Cited Specification PassageCited Specification Passage
`
`* * *
`
`Speed-based obstacle detection is
`only used for a very short period of
`time, after motor start-up (450 ms),
`not the entire travel path.
`
`Ex. 1014 at 17; Ex. 1031 at 7:12, 28-34; Ex. 1063 at ¶ 98; Paper 34 (Reply) at 8
`
`52
`
`
`
`Construction of Claim 7 of the ’802 Patent:
`“Travel Path”
`• Examiner rejected all claims over Wang:
`
`• Wang’s “anti-trap zone” is active for only about half the entire travel range:
`
`Ex. 1013 at 3; Ex. 1047 at 3:36-46; Ex. 1063 at ¶ 97; Paper 34 (Reply) at 8
`
`53
`
`
`
`Construction of Claim 7 of the ’802 Patent:
`“Travel Path”
`UUSI’s “object of the invention” position regarding claim 7 is inconsistent
`with its concession that claim 1 does not require protection along entire
`travel path.
`
`Ex. 2001 at ¶ 76; Paper 31 (Response) at 37; Ex. 1063 at ¶ 90
`
`54
`
`
`
`Construction of Claim 7 of the ’802 Patent:
`“Travel Path”
`
`Claim differentiation does not apply
`• Claim 7’s “travel path” can include the entire travel or part of the
`window or even just part of it.
`• Under Brose’s construction, no claim is rendered meaningless or
`superfluous.
`• Even if claim differentiation applied, it would be overcome by the plain
`meaning of the claims in view of the intrinsic evidence.
`
`Ex. 1005 at claims 1, 7; Ex. 1063 at ¶ 89; Paper 34 (Reply) at 9
`
`55
`
`
`
`Claim 7: Unpatentable
`(Grounds 1, 2, and 5)
`
`* * *
`
`* * *
`
`* * *
`
`* * *
`
`All premised on UUSI’s incorrect claim constructions
`
`Paper 31 (Response) at 40-42, 45; Ex. 1063 at ¶¶ 210, 224, 239
`
`56
`
`
`
`Claim 7: Unpatentable
`(Grounds 1, 2, and 5)
`
`Even under UUSI’s incorrect construction of “movement sensor”,
`use of a “specialized” or “hardware” sensor would have been
`obvious.
`
`* * *
`
`* * *
`
`•
`
`•
`
`Itoh discloses optional non-
`use of a “specialized sensor”
`in a particular embodiment,
`and thus discloses optional
`use of a “specialized sensor”
`Itoh does not teach that use
`of a specialized sensor will
`not work or cannot be used
`
`Ex. 1007 at 7:47, 12:32-38, 13:58-61; Ex. 1063 at ¶¶ 214-223, 273-274; Paper 34 (Reply) at 9
`
`57
`
`
`
`Claim 7: Unpatentable
`(Grounds 1, 2, and 5)
`
`Prosecution History: The Examiner repeatedly noted the obviousness of
`modifying the type of sensor utilized in a prior art reference:
`
`Ex. 1017 at 9; Ex. 1063 at ¶ 369; Paper 34 (Reply) at 14
`
`58
`
`
`
`Claim 7: Unpatentable
`(Grounds 1, 2, and 5)
`
`Brose’s expert explains why it would have been obvious to replace
`Itoh’s sensor with another type of sensor, e.g., Hall effect:
`
`* * *
`
`Ex. 1063 at ¶¶ 216-217; Paper 34 (Reply) at 9
`
`59
`
`
`
`Claim 7: Unpatentable
`(Grounds 1, 2, and 5)
`
`Controller does not distinguish
`between pulses from MCCP
`sensor vs. Hall effect sensor:
`
`UUSI’s expert agreed Hall
`effect sensors were familiar
`technology as of 1992:
`
`* * *
`
`Ex. 1063 at ¶¶ 66, 218; Ex. 1050 at 403:4-9, 20-23; Paper 34 (Reply) at 9
`
`60
`
`
`
`Claim 7: Unpatentable
`(Ground 5)
`
`UUSI made the additional Ground 5 argument in its Preliminary
`Response that Kinzl does not disclose the claimed “movement sensor”:
`
`Premised on UUSI’s incorrect claim construction
`
`Paper 10 (Prelim. Response) at 12
`
`61
`
`
`
`Claim 7: Unpatentable
`(Ground 5)
`
`Even under UUSI’s incorrect construction of the “movement sensor”
`limitation, Kinzl discloses the claimed “movement sensor”:
`
`Ex. 1008 at 2:11-19; Ex. 1063 at ¶ 266
`
`62
`
`
`
`Claim 7: Unpatentable
`(Grounds 3 and 4)
`
`* * *
`
`* * *
`
`UUSI’s sole distinction is premised on its
`incorrect claim construction
`
`Paper 31 (Response) at 43-44; Ex. 1063 at ¶¶ 254, 261
`
`63
`
`
`
`Claim 7: Unpatentable
`(Grounds 3 and 4)
`UUSI’s expert concedes that Kinzl does monitor movement along the entire
`travel path (all three zones):
`
`* * *
`
`UUSI’s
`expert’s
`explanation
`of Kinzl
`
`Ex. 2001 at ¶¶ 47-48; Ex. 1063 at ¶¶ 252, 254, 275; Paper 34 (Reply) at 10-11
`
`64
`
`
`
`Claim 7: Unpatentable
`(Grounds 3 and 4)
`
`In its Preliminary Response (but not in its Response), UUSI argued that
`Kinzl lacks a “stored program” that “determines motor speed of
`movement,” as claimed in claim 7:
`
`7. …. a controller including an
`interface coupled to the switch
`for controllably energizing the
`motor and said interface
`additionally coupling the
`controller to the movement
`sensor for monitoring signals
`from said movement sensor;
`said controller comprising
`a stored program that:
`i)
`determines motor
`speed of movement
`from an output signal
`from the movement
`sensor; ….
`
`* * *
`
`Ex. 1005 at claim 7; Paper 10 (Prelim. Response) at 15-16; Paper 34 (Reply) at 10
`
`65
`
`
`
`Claim 7: Unpatentable
`(Grounds 3 and 4)
`
`Kinzl discloses measuring speed:
`
`Ex. 1008 at 2:1-23; Ex. 1063 at ¶¶ 248-250; Paper 34 (Reply) at 10
`
`66
`
`
`
`Claim 7: Unpatentable
`(Grounds 3 and 4)
`
`UUSI’s expert admits that Kinzl discloses utilization of speed:
`
`Ex. 2001 at ¶ 48; Ex. 1063 at ¶ 248
`
`67
`
`
`
`’802 Patent Argument Road Map: Claim 14
`
`Main Issue: Claim construction
`• Claim 14 is not in means-plus-function format
`
`68
`
`
`
`Construction of Claim 14 of the ’802 Patent
`14. Apparatus for controlling activation of a motor for moving a window or panel along a travel
`path and de-activating the motor if an obstacle is encountered by the window or panel
`comprising:
`a) a sensor for sensing movement of a window or panel along a travel path;
`b) a switch for controlling energization of the motor with an energization signal; and
`c) a controller coupled to the switch for controllably energizing the motor and
`having an interface coupling the controller to the sensor and to the switch; said
`controller comprising decision making logic for:
`i) monitoring a signal from the sensor;
`ii) calculating a real time obstacle detect threshold based on the signal that is
`detected during at least one prior period of motor operation during movement
`along a present or current run through a path of travel of said window or panel
`iii) comparing a value based on a currently sensed motor parameter with the
`obstacle detect threshold; and
`iv) stopping movement of the window or panel by controlling an output to said
`switch that controls motor energization if the comparison based on a currently
`sensed motor parameter indicates the window or panel has contacted an
`obstacle.
`Ex. 1005 at claim 14
`
`69
`
`
`
`Construction of Claim 14 of the ’802 Patent
`
`a controller coupled to the switch for controllably energizing
`the motor and having an interface coupling the controller to the sensor and
`to the switch; said controller comprising decision making logic
`for…monitoring…calculating…comparing…stopping
`
`Brose’s Position
`
`UUSI’s Position
`
`Limitations (c) and (c)(i)-(iv) in claim 14 are not
`means-plus-function limitations, are not limited
`in structure to “a general-purpose processor
`and memory and an analog-to-digital
`converter,” and do not require all of the various
`algorithms Dr. Ehsani enumerates in his
`declaration.
`
`“The correct construction of this limitation of
`Claim 14 is as means-plus-function under 35
`U.S.C. § 112(6). …. ‘Decision making logic’ of
`Claim 7 is not and was not a known structure
`to those of skill in the art prior to the priority
`date of the ‘802 Patent. …. The structure in
`the specification that directly corresponds to
`the ‘decision making logic’ is a general-
`purpose processor, memory and an analog-to-
`digital converter (ADC). …. [A]lgorithms from
`the Detailed Description of the ‘802 Patent
`accomplish the functions listed in Claim 14.”
`
`Paper 34 (Reply) at 12-13; Paper 31 (Response) at 48-52
`
`70
`
`
`
`Construction of Claim 14 of the ’802 Patent
`
`
`“[T]he presumption flowing from the absence of “[T]he presumption flowing from the absence of
`
`the term ‘means’ is a strong one that is not the term ‘means’ is a strong one that is not
`
`readily overcome.”readily overcome.”
`
`
`
`Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004)Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004)
`
`Paper 34 (Reply) at 12
`
`71
`
`
`
`Construction of Claim 14 of the ’802 Patent
`• UUSI omits important claim language:
`
`• The complete phrase is,
`“a controller…said controller
`comprising decision making
`logic for monitoring…calculating
`…comparing…stopping…”
`
`Paper 31 (Response) at 48; Ex. 1005 at claim 14; Ex. 1063 at ¶ 114
`
`72
`
`
`
`Construction of Claim 14 of the ’802 Patent
`
`The claim itself already recites
`detailed algorithmic functionality
`that can be implemented in the
`structural form of circuits and/or
`program code.
`
`Ex. 1005 at claim 14; Ex. 1063 at ¶ 118; Paper 34 (Reply) at 13
`
`73
`
`
`
`Construction of Claim 14 of the ’802 Patent
`Although the specification does not use the phrase “decision
`making logic,” the specification does expressly disclose software
`to execute obstacle detection:
`
`Ex. 1005 at 18:26-30; Ex. 1063 at ¶ 111, 119-121
`
`74
`
`
`
`Construction of Claim 14 of the ’802 Patent
`UUSI did not contend during prosecution that claim 14 (then 19) was a
`means-plus-function claim:
`
`Ex. 1014 at 18; Ex. 1063 at ¶ 124; Paper 34 (Reply) at 12
`
`75
`
`
`
`Construction of Claim 14 of the ’802 Patent
`
`Ex. 1019 at 22-23; see also Ex. 1025 at 18-19; Ex. 1063 at ¶ 124; Paper 34 (Reply) at 12
`
`76
`
`
`
`Construction of Claim 14 of the ’802 Patent
`During litigation, UUSI did not interpret claim 14 to be a means-plus-
`function claim:
`
`* * *
`
`Ex. 1033 at 36-38; Ex. 1063 at ¶¶ 128-130; Paper 34 (Reply) at 12
`
`77
`
`
`
`Construction of Claim 14 of the ’802 Patent
`During litigation, UUSI did not interpret claim 14 to be a means-plus-
`function claim:
`
`Ex. 1033 at 38-39; Ex. 1063 at ¶¶ 128-130; Paper 34 (Reply) at 12
`
`78
`
`
`
`Construction of Claim 14 of the ’802 Patent
`Brose’s expert explains what a “controller” with “decision making logic”
`would have indicated to a POSITA:
`
`Ex. 1063 at ¶ 115; Paper 34 (Reply) at 13
`
`79
`
`
`
`Construction of Claim 14 of the ’802 Patent
`Contemporaneous dictionary definitions support Brose’s expert:
`The Computer Glossary (1989)
`
`McGraw-Hill Electronics Dictionary (1994)
`
`The Illustrated Dict. of Electronics (1994)
`
`Ex. 1056; Ex. 1058; Ex. 1057; Ex. 1063 at ¶ 116
`
`80
`
`
`
`Construction of Claim 14 of the ’802 Patent
`
`UUSI’s expert admitted that a POSITA in 1992, upon reviewing the flow
`charts in the specification, would know he could use software code to
`implement them:
`
`
`
`Dr. Ehsani – UUSI’s ExpertDr. Ehsani – UUSI’s Expert
`
`Ex. 1050 at 431:2-14; Ex. 1063 at ¶ 106; Paper 34 (Reply) at 13
`
`81
`
`
`
`Construction of Claim 14 of the ’802 Patent
`
`UUSI’s expert does not know whether the phrase “decision making logic”
`was in common parlance for a POSITA as of 1992:
`
`
`
`Dr. Ehsani – UUSI’s ExpertDr. Ehsani – UUSI’s Expert
`
`Ex. 1050 at 416:9-15, 484:2-5; Ex. 1063 at ¶ 107; Paper 34 (Reply) at 13
`
`82
`
`
`
`Claim 14: Unpatentable
`(Grounds 1, 2, and 5)
`
`* * *
`
`* * *
`
`* * *
`
`All premised on UUSI’s incorrect claim constructions
`
`Paper 31 (Response) at 55-58; Ex. 1063 at ¶¶ 308, 315, 340
`
`83
`
`
`
`Claim 14: Unpatentable
`(Grounds 1, 2, and 5)
`
`* * *
`
`* * *
`
`* * *
`
`Irrelevant, because Brose does not rely on Kinzl for its algorithm
`
`Paper 31 (Response) at 55-58; Ex. 1063 at ¶ 342
`
`84
`
`
`
`Claim 14: Unpatentable
`(Grounds 3 and 4)
`
`* * *
`
`All premised on UUSI’s incorrect claim constructions
`
`Paper 31 (Response) at 56-57
`
`85
`
`
`
`86
`
`
`
`Technik fur Automobile
`
`U.S. Patent No. 8,217,612
`
`U.S. Patent No. 8,217,612
`IPR2014-00416
`
`|PR2014-OO416
`
`87
`
`
`
`’612 Patent: Overview of Grounds Initiated
`
`Claim 1
`
`Dep. Claim 2
`
`Dep. Claim 5
`
`Claim 6
`
`Dep. Claim 7
`
`Dep. Claim 8
`
`PR not
`instituted
`
`Brose does not raise
`these Grounds as
`to these claims
`
`Ground 1
`Obvious over Itoh
`
`Ground 2
`Anticipated by Ito
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