`
`Filed on behalf of UUSI, LLC
`By: Monte L. Falcoff (mlfalcoff@hdp.com)
`Michael R. Nye (mnye@hdp.com)
`HARNESS, DICKEY & PIERCE, P.L.C.
`5445 Corporate Drive, Ste. 200
`Troy, MI 48098
`Telephone: (248) 641-1600
`Facsimile: (248) 641-0270
`
`
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________________________
`
`BROSE NORTH AMERICA, INC.
`and
`BROSE FAHRZEUGTEILE GMBH & CO. KG, HALLSTADT
`Petitioner
`
`v.
`
`UUSI, LLC
`Patent Owner
`______________
`
`Case IPR2014-00416
`Patent 8,217,612
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`Case IPR2014-00416
`Patent No. 8,217,612
`
`I.
`
`INTRODUCTION ................................................................... 3
`
`II.
`
`TRIAL SHOULD NOT BE INSTITUTED FOR PETITIONER’S FAILURE
`
`TO SET FORTH A PRIMA FACIE SHOWING ....................................... 4
`
`A. GROUNDS 1, 2, 3, 7, AND 8 ........................................ 4
`
`1. GROUND 2 ...................................................... 5
`
`A)
`
`B)
`
`C)
`
`CLAIM LIMITATIONS ................................. 5
`
`DEFICIENCIES OF ITOH ............................. 5
`
`THE PETITION MISAPPLIES THE DOCTRINE
`OF INHERENCY ........................................ 6
`
`D)
`
`ITOH CANNOT ANTICIPATE CLAIM 5 ............ 8
`
`2. GROUND 1 ...................................................... 8
`
`3. GROUND 3 ...................................................... 9
`
`4. GROUND 7 ...................................................... 9
`
`5. GROUND 8 .................................................... 10
`
`B. GROUND 4 ............................................................. 11
`
`1.
`
`CLAIM 6 ........................................................ 11
`
`A)
`
`B)
`
`C)
`
`CLAIM LIMITATIONS ............................... 11
`
`DEFICIENCIES OF KINZL ......................... 11
`
`KINZL CANNOT ANTICIPATE CLAIM 6 ........ 13
`
`2.
`
`CLAIMS 7 AND 8 ............................................. 13
`
`III. CONCLUSION ................................................................... 14
`
`
`
`
`
`
`
`Page 2 of 15
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`
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`Case IPR2014-00416
`Patent No. 8,217,612
`
`Pursuant to 35 U.S.C. § 313 and 37 C.F.R. § 42.107, Patent
`
`Owner UUSI, LLC (“UUSI”) submits the following Preliminary Re-
`
`sponse to the Petition for Inter Partes Review of U.S. Patent
`
`8,217,612 (“the ‘612 patent”).
`
`I.
`
`INTRODUCTION
`
`The Corrected Petition (Paper No. 5, “Petition”) for inter partes
`
`review of the ‘612 patent should be denied at least in part. The Peti-
`
`tioner does not meet its prima facie burden in establishing anticipa-
`
`tion, relying improperly on the doctrine of inherency and failing to es-
`
`tablish a reasonable likelihood that the applied references teach each
`
`and every limitation of the ‘612 patent claims. Petitioner’s other pro-
`
`posed anticipation grounds shall also fail, but these more substantive
`
`issues will be later addressed if the inter partes action proceeds.
`
`Although the Petitioner does not meet its burden in establishing
`
`a reasonable likelihood of obviousness with respect to the challenged
`
`claims, UUSI will address the deficiencies of the obviousness grounds
`
`as may be necessary and appropriate if inter partes review is institut-
`
`ed. In other words, this Preliminary Response simply refutes the
`
`clearest alleged grounds of unpatentability asserted by Petitioner
`
`without requiring a full substantive claim-by-claim analysis; the Pa-
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`Page 3 of 15
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`
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`tent Owner shall challenge the Petitioner’s other grounds at a later
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`time.
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`Case IPR2014-00416
`Patent No. 8,217,612
`
`II.
`
`TRIAL SHOULD NOT BE INSTITUTED FOR PETITIONER’S
`
`FAILURE TO SET FORTH A PRIMA FACIE SHOWING
`
`A. GROUNDS 1, 2, 3, 7, AND 8
`
`With respect to Ground 2, the Petition fails to establish a rea-
`
`sonable likelihood that at least Claim 5 is anticipated by U.S. Pat. No.
`
`4,870,333 (“Itoh”, Ex. 1007).
`
`With respect to Ground 1, the Petition fails to establish a rea-
`
`sonable likelihood that at least Claim 5 is obvious over Itoh in view of
`
`ordinary skill in the art.
`
`With respect to Ground 3, the Petition fails to establish a rea-
`
`sonable likelihood that at least Claim 5 is obvious over Itoh in view of
`
`the ordinary skill in the art and U.S. Pat. No. 4,468,596 (“Kinzl”, Ex.
`
`1008).
`
`With respect to Ground 7, the Petition fails to establish a rea-
`
`sonable likelihood that at least Claim 5 is obvious over Itoh in view of
`
`the ordinary skill in the art and U.S. Pat. No. 5,069,000 (“Zucker-
`
`man”, Ex. 1009).
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`Page 4 of 15
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`
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`With respect to Ground 8, the Petition fails to establish a rea-
`
`sonable likelihood that at least Claim 5 is obvious over Itoh in view of
`
`Case IPR2014-00416
`Patent No. 8,217,612
`
`the ordinary skill in the art, Kinzl, and Zuckerman.
`
`1. GROUND 2
`
`a) CLAIM LIMITATIONS
`
`Claim 5 depends from Claim 1, which recites “adjusting an ob-
`
`stacle detection threshold in real time based on immediate past meas-
`
`urements of the signal sensed by the sensor to adapt to varying condi-
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`tions encountered during operation of the window or panel.” Ex. 1005
`
`at 27:31-34. Claim 5 recites that “the immediate past measurements of
`
`said signal are sensed within a forty millisecond interval prior to the
`
`most recent signal from the sensor.” Ex. 1005 at 28:4-6.
`
`b) DEFICIENCIES OF ITOH
`
`Itoh does not teach and the Petition does not identify any teach-
`
`ing or suggestion in Itoh of immediate past measurements of a signal
`
`being sensed within a forty millisecond interval prior to the most re-
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`cent signal from the sensor, as Claim 5 recites. Instead, the Petition
`
`simply states that “Itoh leaves it as a design choice how many imme-
`
`diately past measurements are used, but suggests at least 4 or 5.” Peti-
`
`tion, page 19. Given that this proposed ground is on the basis of antic-
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`Page 5 of 15
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`
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`Case IPR2014-00416
`Patent No. 8,217,612
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`ipation, Patent Owner can only assume that this is an argument for in-
`
`herency.
`
`c)
`
`THE PETITION MISAPPLIES THE DOCTRINE OF INHERENCY
`
`“Inherent anticipation requires that the missing descriptive ma-
`
`terial is ‘necessarily present,’ not merely probably or possibly present,
`
`in the prior art.” Trintec Industries, Inc. v. Top-U.S.A. Corp., 295 F.3d
`
`1292, 1297 (Fed. Cir. 2002) (internal citations omitted).
`
`The Petition argues that Itoh could be configured such that im-
`
`mediately preceding values were taken within the preceding 40 ms.
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`“Itoh discloses that, in experiments, the measurements were taken at
`
`1.2 msec at maximum speed. Thus, 33 measurements would be taken
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`within 40 ms (40/1.2 = 33.3).” Petition, pages 18-19 (internal citations
`
`omitted). However, even if Itoh could, as the Petition alleges, be con-
`
`figured to use measurements from within the last 40 ms, this limita-
`
`tion is not necessarily present and is therefore not inherent.
`
`The Petition points to the prosecution history of the ‘612 patent,
`
`and relies on a tenuous assertion that the Examiner would probably
`
`have believed the limitation of Claim 5 to be inherent in Itoh: “During
`
`prosecution of the ’612 Patent, the Examiner found that the cited ref-
`
`erences would inherently meet this 40 ms limitation because time
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`Page 6 of 15
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`
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`Case IPR2014-00416
`Patent No. 8,217,612
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`could be ‘set/preset.’ The same is true for Itoh.” Petition, page 19 (in-
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`ternal citations omitted). Notably, Itoh was actually considered by the
`
`Examiner during prosecution of the ‘612 patent, yet not relied upon in
`
`any rejection. Regardless, whether the Examiner would have believed
`
`something to be inherent is irrelevant to the legal standard of inheren-
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`cy and is without evidentiary foundation.
`
`Apparently recognizing the weakness of the inherency position,
`
`the Petitioner then subtly attempts to upend the plain meaning of
`
`Claim 5: “In Itoh, even at very low motor speeds, several immediately
`
`preceding values, taken within 40 ms, are used in the obstacle detec-
`
`tion equation, even if not all the values used are from within that time
`
`frame.” Petition, page 19 (emphasis in original). Claim 5 recites that
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`“the immediate past measurements of said signal are sensed within a
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`forty millisecond interval prior to the most recent signal from the sen-
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`sor,” not that one or more of the immediate past measurements are
`
`sensed within a forty millisecond interval, as the Petition appears to
`
`argue.
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`Page 7 of 15
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`
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`Case IPR2014-00416
`Patent No. 8,217,612
`
`The declaration of Dr. Arthur MacCarley (“MacCarley Declara-
`
`tion”, Ex. 1001)1 does not shed any additional light on the inherency
`
`argument, as it simply repeats the Petition arguments, including the
`
`discussion of design choice and the attempt to redefine the limitations
`
`of Claim 5.
`
`d)
`
`ITOH CANNOT ANTICIPATE CLAIM 5
`
`Accordingly, for at least the above reasons, Itoh does not ex-
`
`plicitly or inherently teach at least Claim 5, and the Petition fails to
`
`establish a reasonable likelihood that Claim 5 would be anticipated by
`
`Itoh.
`
`2. GROUND 1
`
`The Petition fails to set forth a prima facie case of obviousness
`
`of at least Claim 5. The deficiencies of Itoh are simply matched with a
`
`conclusory statement that the limitations of Claim 5 would be obvious
`
`over Itoh in view of the ordinary skill in the art. The MacCarley Dec-
`
`laration similarly makes only conclusory statements. For example:
`
`“Such options are routine design choices, as is the number of immedi-
`
`
`
`1 UUSI disputes many aspects of the MacCarley Declaration. UUSI
`will address the deficiencies of the MacCarley Declaration as may be
`necessary and appropriate if inter partes review is instituted.
`
`Page 8 of 15
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`
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`Case IPR2014-00416
`Patent No. 8,217,612
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`ately preceding values that would be used in Itoh’s calculation.” Ex.
`
`1001 at ¶ 129.
`
`Therefore, for at least the above reasons, the Petition fails to
`
`provide evidence that at least Claim 5 would be obvious over Itoh in
`
`view of the ordinary skill in the art.
`
`3. GROUND 3
`
`The Petition fails to provide any evidence that Kinzl remedies
`
`the deficiencies of Itoh with respect to at least Claim 5. The claim
`
`chart for Claim 5 according to Ground 3 is simply “See charts for
`
`Grounds 1 & 2, above, at claim 5.” Petition, page 43. As a result, the
`
`Petition fails to set forth a prima facie case of obviousness of at least
`
`Claim 5.
`
`4. GROUND 7
`
`The Petition fails to provide any evidence that Zuckerman rem-
`
`edies the deficiencies of Itoh with respect to at least Claim 5. The
`
`claim chart for Claim 5 according to Ground 7 states simply “depend-
`
`ent claims 2 and 5 are each invalid as obvious over Itoh in view of the
`
`ordinary skill in the art and Zuckerman. Petitioners incorporate by
`
`reference the charts for Grounds 1 & 2, above.” Petition, page 43. As
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`Page 9 of 15
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`
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`a result, the Petition fails to set forth a prima facie case of obviousness
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`Case IPR2014-00416
`Patent No. 8,217,612
`
`of at least Claim 5.
`
`5. GROUND 8
`
`The Petition fails to provide any evidence that Kinzl remedies
`
`the deficiencies of Itoh with respect to at least Claim 5. The claim
`
`chart for Claim 5 according to Ground 8 states simply “dependent
`
`claims 2 and 5 are each invalid as obvious over Itoh in view of the or-
`
`dinary skill in the art, Kinzl and Zuckerman. Petitioners incorporate
`
`by reference the chart for Ground 3, above.” Petition, pages 58-59.
`
`Further, the Petition only makes conclusory statements regard-
`
`ing combining the references, instead of identifying evidence support-
`
`ing combination for the particular claim limitations at issue. For ex-
`
`ample, the entire argument for combination of references is repro-
`
`duced here as: “Petitioners submit that one of skill in the art would
`
`have been motivated to combine Itoh, with Kinzl and/or Zuckerman
`
`because each is from the same time period and addresses the same
`
`problem, obstruction detection in an automotive panel setting.” Peti-
`
`tion, pages 25-26. This argumentation hardly suffices to set forth pri-
`
`ma facie support for alleged obviousness.
`
`Page 10 of 15
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`
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`Case IPR2014-00416
`Patent No. 8,217,612
`
`B. GROUND 4
`
`With respect to Ground 4 of the Petition, the Petition fails to es-
`
`tablish a reasonable likelihood that at least Claims 6-8 are anticipated
`
`by Kinzl.
`
`1. CLAIM 6
`
`a) CLAIM LIMITATIONS
`
`Independent Claim 6 recites “a controller… programmed with
`
`multiple position limits that define an acceptable travel range.” Ex.
`
`1005 at 28:17-20
`
`b) DEFICIENCIES OF KINZL
`
`The Petition asserts that:
`
`Kinzl’s microcomputer is programmed with a number
`
`of known position limits along the travel path of the
`
`window and defining an acceptable travel range, in-
`
`cluding (i) the “window closed” position (designated
`
`as the 0 count value) (Ex. 1008 at 2:61-64), (ii) the po-
`
`sition that represents the transitions between Zone 1
`
`and Zone 2, and (iii) the position that represents the
`
`transition from Zone 2 and Zone 3.
`
`Petition, pages 22-23. Kinzl does disclose storing a value of zero for a
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`first end (fully-closed position) of an acceptable range of travel:
`
`“When the vehicle's battery is connected, the microcomputer 24 des-
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`Page 11 of 15
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`
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`Case IPR2014-00416
`Patent No. 8,217,612
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`ignates the position of the window pane 10 at that time as the state
`
`‘window closed’ and sets its position counter to the value ‘0’.” Ex.
`
`1008 at 2:61-64.
`
`Kinzl, however, does not disclose storing a value for an oppo-
`
`site end (fully-opened position) of an acceptable range of travel, as re-
`
`quired by the limitation of claim 6 that the multiple limits “define an
`
`acceptable travel range.” Ex. 1005 at 28:19-20. By definition, a range
`
`requires limits on either end. The Petition does not explain this defi-
`
`ciency, instead describing other position values, such as the position
`
`of the transition between Zones 1 and 2 and the position of the transi-
`
`tion between Zones 2 and 3. Both of these positions are within the ac-
`
`ceptable range of travel and therefore cannot define the acceptable
`
`range of travel, as required by Claim 6.
`
`The MacCarley Declaration does not address this deficiency,
`
`instead simply further describing the position of zone boundaries and
`
`not position limits defining an acceptable travel range. For example:
`
`The counts that correspond to the boundaries between
`
`zones 1, 2, and 3, must be programmed into the micro-
`
`computer for use in the algorithms disclosed in Kinzl.
`
`This programming is inherent in the systems described
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`Page 12 of 15
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`
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`Case IPR2014-00416
`Patent No. 8,217,612
`
`in Kinzl, even if it is too obvious to be explicitly stat-
`
`ed.
`
`MacCarley Declaration, ¶ 239. The MacCarley Declaration then de-
`
`votes another three paragraphs to lengthy block quotes from Kinzl
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`without providing any evidence for why Kinzl would inherently dis-
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`close position limits that define an acceptable travel range.
`
`c)
`
`KINZL CANNOT ANTICIPATE CLAIM 6
`
`Accordingly, for at least the above reasons, Kinzl does not
`
`teach and the Petition fails to establish a reasonable likelihood that
`
`Claim 6 would be anticipated by Kinzl.
`
`2. CLAIMS 7 AND 8
`
`Claims 7 and 8 depend from independent Claim 6. Therefore,
`
`for at least the above reasons, the Petition fails to establish a reasona-
`
`ble likelihood that Claims 7 and 8 would be anticipated by Kinzl.
`
`Page 13 of 15
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`
`
`Case IPR2014-00416
`Patent No. 8,217,612
`
`III. CONCLUSION
`
`For the above reasons, UUSI requests that the Board deny at
`
`least in part the Petition for inter partes review of the ‘612 patent.
`
`
`
`Respectfully submitted,
`
`Dated: May 6, 2014
`
`
`
`
`
`By: /Monte L. Falcoff/
`Monte L. Falcoff
`Reg. No. 37,617
`Michael R. Nye
`Reg. No. 62,126
`Attorneys for Patent Owner UUSI
`
`
`
`Page 14 of 15
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`
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`Case IPR2014-00416
`Patent No. 8,217,612
`
`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6(E)(4)
`
`It is hereby certified that today, May 6, 2014, a copy of the
`
`foregoing document was served via electronic mail upon the follow-
`
`ing:
`
`
`Craig D. Leavell
`craig.leavell@kirkland.com
`Alyse Wu
`alyse.wu@kirkland.com
`KIRKLAND & ELLIS LLP
`Attorneys for Petitioner
`
`
`
`Dated: May 6, 2014
`
`
`
`
`
`18584433.5
`
`Respectfully submitted,
`
`By: /Michael R. Nye/
`Monte L. Falcoff
`Reg. No. 37,617
`Michael R. Nye
`Reg. No. 62,126
`Attorneys for Patent Owner UUSI
`
`Page 15 of 15
`
`
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