Trials@uspto.gov
`571-272-7822
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`Paper 12
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` Entered: 1 August 2014
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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
`____________
`
`
`
`
`Before GLENN J. PERRY, HYUN J. JUNG, and GEORGE R. HOSKINS,
`Administrative Patent Judges.
`
`
`PERRY, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`Paper 12
`
`
` Entered: 1 August 2014
`
`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
`____________
`
`
`
`
`Before GLENN J. PERRY, HYUN J. JUNG, and GEORGE R. HOSKINS,
`Administrative Patent Judges.
`
`
`PERRY, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`IPR2014-00416
`Patent 8,217,612
`
`
`I. INTRODUCTION
`
`Petitioner, Brose North America, Inc. and Brose Fahrzeugteile GmbH
`
`& Co. KG, Hallstadt, filed a Petition requesting an inter partes review of
`
`claims 1, 2, and 5-8, less than all of the claims, of U.S. Patent No. 8,217,612
`
`(Ex. 1005, “the ’612 Patent”) pursuant to 35 U.S.C. §§ 311-319. Paper 5
`
`(“Pet.”)1. The Petition is supported by a Declaration of Art MacCarley,
`
`Ph.D. (Ex. 1001). Patent Owner, UUSI, LLC, submitted a Preliminary
`
`Response. Paper 11 (“Prelim. Resp.”). We have jurisdiction under 35
`
`U.S.C. § 314.
`
`To institute an inter partes review, we must determine the information
`
`presented in the Corrected Petition and the Preliminary Response
`
`demonstrates “a reasonable likelihood that the petitioner would prevail with
`
`respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.
`
`§ 314(a). Petitioner contends the challenged claims are unpatentable under
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`35 U.S.C. §§ 102 and 103. See Pet. 4.
`
`We determine that there is a reasonable likelihood Petitioner would
`
`prevail in establishing the unpatentability of claims 1, 2, and 5-8 and
`
`institute inter partes review as to those claims. Our factual findings and
`
`conclusions at this stage of the proceeding are based on the evidentiary
`
`record developed thus far (prior to Patent Owner’s Response). This is not a
`
`final decision as to patentability of claims for which inter partes review is
`
`instituted. Our final decision will be based on the record as fully developed
`
`during trial.
`
`
`1 Throughout this decision we refer to the Corrected Petition for Inter Partes
`Review filed on Feb. 24, 2014 (Paper 5).
`
`
`
`2
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`
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`IPR2014-00416
`Patent 8,217,612
`
`
`A. The ’612 Patent
`
`The ’612 Patent describes protecting against pinching objects in the
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`travel path of a vehicle power-driven movable panel, such as a window or
`
`sliding sun roof. Sensor signals are analyzed to determine panel movement
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`directly or indirectly and determine whether a panel collides with an object
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`in its travel path. See Ex. 1005, Abstract and Summary.
`
`Figure 1 of the ‘612 Patent is shown here:
`
`
`
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`3
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`IPR2014-00416
`Patent 8,217,612
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`Figure 1 is a schematic diagram of an exemplary actuator safety feedback
`
`control system 1. Ex. 1005, 2:24-25, 2:63-65. Controller 2 monitors and
`
`controls movement of a motor driven panel. See id. at 2:65-3:5. Forward
`
`and reverse motor drives 7a and 7b drive the motor (not shown in Figure 1)
`
`in forward and reverse directions, respectively. See id. at 3:36-41.
`
`Controller 2 can sense obstacles in the panel’s path in various ways based on
`
`sensor signals from, e.g., a paired infrared emitter and detector disposed
`
`along the panel’s path (see id. at 3:60-4:64), a motor current monitor (see id.
`
`at 4:9-11, 7:20-8:3, 8:33-10:5), and other monitors (see id. at 11:14-20).
`
`Of the challenged claims, claims 1 and 6 are independent and are
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`illustrative of the claimed subject matter:
`
`1. Apparatus for controlling activation of a motor coupled to a
`motor vehicle window or panel for moving said window or
`panel along a travel path and de-activating the motor if an
`obstacle is encountered by the window or panel, said apparatus
`comprising:
`
`a) a sensor for sensing movement of the window or panel and
`providing a sensor output signal related to a speed of movement
`of the window or panel;
`
`b) a switch for controllably actuating the motor by providing an
`energization signal;
`
`c) one or more switches for use by the controller to determine
`window or panel position; and
`
`d) a controller having an interface coupled to the sensor and the
`switch for controllably energizing the motor; said controller
`sensing a collision with an obstruction when power is applied to
`the controller by:
`
`i) monitoring movement of the window or panel by monitoring
`a signal from the sensor related to the movement of the window
`or panel;
`
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`4
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`IPR2014-00416
`Patent 8,217,612
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`ii) adjusting an obstacle detection threshold in real time based
`on immediate past measurements of the signal sensed by the
`sensor to adapt to varying conditions encountered during
`operation of the window or panel;
`
`iii) identifying a collision of the window or panel with an
`obstacle due to a change in the signal from the sensor that is
`related to a change in movement of the window or panel by
`comparing a value based on a most recent signal from the
`sensor with the obstacle detection threshold; and iv) outputting
`a control signal to said switch to deactivate said motor in
`response to a sensing of a collision between an obstacle and
`said window or panel.
`
`
`
`6. Apparatus for controlling activation of a motor coupled to a
`motor vehicle window or panel for moving said window or
`panel along a travel path and de-activating the motor when
`movement of the window or panel is stopped prior to reaching a
`predetermined position, said apparatus comprising:
`
`a) a sensor for sensing movement of the window or panel and
`providing a sensor output signal related to a position of the
`window or panel;
`
`b) a switch for controllably actuating the motor by providing an
`energization signal; and
`
`c) a controller having an interface coupled to the sensor and the
`switch for controllably energizing the motor; said controller
`programmed with multiple position limits that define an
`acceptable travel range and further programmed for controlling
`movement of the window or panel when power is applied to the
`controller by:
`
`i) monitoring the sensor output signal from the sensor related to
`the position of the window or panel;
`
`ii) identifying the position of the window or panel based on the
`sensor output signal from the sensor; and
`
`iii) outputting a control signal to said switch to deactivate said
`motor in response to a sensing said window or panel has
`stopped moving prior to reaching a position limit.
`
`
`
`5
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`
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`IPR2014-00416
`Patent 8,217,612
`
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`B. Asserted Grounds of Unpatentability
`
`
`
`Petitioner contends that claims 1, 2, and 5-8 of the ’612 Patent are
`
`unpatentable under 35 U.S.C. §§ 102 and 103 as summarized below:
`
`
`
`Basis
`Reference[s]
`Itoh2
`§ 102(b), § 103(a)
`Itoh and Kinzl3
`§ 103(a)
`§ 102(b), § 103(a)
`Kinzl
`Itoh and Zuckerman4
`§ 103(a)
`Itoh, Kinzl, and Zuckerman § 103(a)
`Kinzl and Itoh
`§ 103(a)
`
`Challenged Claims
`1, 2, and 5-8
`1, 2, and 5-8
`6-8
`1, 2, and 5
`1, 2, and 5
`6-8
`
`C. Related Proceedings
`
`The parties state that the ’612 Patent is asserted in the following
`
`district court proceedings:
`
`1. UUSI, LLC v. Robert Bosch LLC and Brose North Am., Inc., No.
`
`2:13-cv-10444 (E.D. Mich.) (“UUSI v. BNA”), filed February 4, 2013. See
`
`Pet. 1 and Paper 7, 2.
`
`2. UUSI, LLC v. Webasto Roof Sys., Inc., No. 2:13-cv-11704 (E.D.
`
`Mich.) (“UUSI v. Webasto”), filed April 15, 2013. See Pet. 1 and Paper 7,
`
`2.
`
`The ’612 Patent belongs to a family of patents involved in multiple
`
`inter partes reviews including IPR2014-00416, IPR2014-00417, IPR2014-
`
`00648, IPR2014-00649, and IPR2014-00650.
`
`
`2 U.S. Patent No. 4,870,333, issued Sept. 26, 1989 (Ex. 1007, “Itoh”)
`3 U.S. Patent No. 4,468,596, issued Aug. 28, 1984 (Ex. 1008, “Kinzl”)
`4 U.S. Patent No. 5,069,000, issued Dec. 3, 1991 (Ex. 1009, “Zuckerman”)
`
`
`
`6
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`IPR2014-00416
`Patent 8,217,612
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`
`II. ANALYSIS
`
`A. Claim Construction
`
`In determining whether or not to institute inter partes review, we
`
`construe claim terms as necessary to apply the references. Claim
`
`constructions may change as a result of the record developing during trial.
`
`The ’612 Patent has expired. We therefore construe its claims in a
`
`manner similar to that of a district court, as articulated in Phillips v. AWH
`
`Corp., 415 F.3d 1303, 1316, 1327 (Fed. Cir. 2005), albeit without any
`
`presumption of validity. Words of a claim “are generally given their
`
`ordinary and customary meaning” as understood by a person of ordinary
`
`skill in the art in question at the time of the invention. Id.
`
`Petitioner proposes constructions for several claim terms. Pet. 5-7.
`
`Although Patent Owner filed a Preliminary Response (Paper 11), it has
`
`neither challenged Petitioner’s proposed claim constructions nor proposed
`
`alternatives. Aside from the claim terms discussed below, no other claim
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`terms require express construction at this stage of the proceeding.
`
`1. “a control signal . . . to deactivate said motor”
`
`Claims 1 and 6 require “a control signal . . . to deactivate said
`
`motor.” Petitioner construes this phrase “to require de-activating / stopping
`
`the motor” which would “exclude a system that immediately reverses the
`
`motor without first deactivating / stopping the motor.” Pet. 5. Patent
`
`Owner’s Preliminary Response does not address this proposal.
`
`Petitioner notes that the ’612 Patent’s Specification explicitly
`
`distinguishes and even disparages immediately reversing (without first
`
`deactivating) the motor in response to an obstacle (Ex. 1005, 3:44-57),
`
`describing “motor plugging,” as “unnecessary” and “undesirable” as causing
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`
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`7
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`IPR2014-00416
`Patent 8,217,612
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`“undesired motor heating,” because it is “detrimental to the life and
`
`reliability” and because it “can also cause undesirable transients, trip
`
`breakers, and blow fuses in a power supply system.” Pet. 5. According to
`
`Petitioner, at least one of Patent Owner’s earlier patents shows it knew how
`
`to recite motor control more broadly. Ex. 1010, Claims. Therefore,
`
`according to Petitioner, the choice of the word “de-activate” in the
`
`challenged claims was a conscious decision that should be given effect.
`
`Petitioner further argues that its construction is consistent with how one of
`
`ordinary skill in the relevant art would have understood this term. Ex. 1001
`
`¶ 50. We agree.
`
`For purposes of this Decision, we construe this claim term to require
`
`de-activating or stopping the motor, and to exclude immediate reversing of
`
`the motor without first de-activating or stopping the motor.
`
`2. “a sensor for sensing movement of the window or panel”
`
`Claims 1 and 6 require a sensor for sensing movement of the window
`
`or panel. Petitioner argues that this term should be construed to embrace
`
`indirect as well as direct sensing. Pet. 6.
`
`Petitioner argues, and we agree, that this construction is consistent
`
`with plain meaning and is supported by the ’612 Patent’s Specification. The
`
`1992 application to which the ’612 Patent claims priority discloses Hall
`
`sensors, a type of indirect sensor, as well as explaining that other types of
`
`sensors could be used. Ex. 1020, 1:61-63 and 3:49-52. The ’612 Patent
`
`Specification discloses both types of sensors: (1) sensors that directly sense
`
`movement of the window (Ex. 1005, 10:6-10), and (2) sensors that indirectly
`
`sense movement of the window by sensing something else, such as motor
`
`rotation (id. at 9:61-10:5).
`
`
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`8
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`IPR2014-00416
`Patent 8,217,612
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`Petitioner recounts that during prosecution, the Examiner found that a
`
`Hall sensor that indirectly monitored movement of the window (by directly
`
`monitoring the rotation of the motor, which is physically coupled to the
`
`window) met the “sensor” limitation of independent claims 1 and 6 (then
`
`pending claims 29 and 35 according to Petitioner). Ex. 1014, 3-4. The
`
`Examiner also accepted Applicant’s assertion (Ex. 1018, 2, 4) that a Hall
`
`sensor satisfied the “sensor” limitations of those claims. Patent Owner also
`
`applies such a construction in the UUSI v. BNA lawsuit. Ex. 1021, 14-15
`
`and 20-21 (accusing a system including a Hall sensor). We are persuaded
`
`that Petitioner’s construction is consistent with how one of skill in the art
`
`would have understood this term. Ex. 1001 ¶ 51.
`
`3. “sensing said window or panel has stopped moving”
`
`Claim 6 requires “sensing said window or panel has stopped moving.”
`
`Petitioner construes this claim term as encompassing indirectly as well as
`
`directly sensing that the window has stopped moving, including by
`
`recognizing a change in behavior of the motor. Pet. 7.
`
`Petitioner describes the prosecution history of the ’612 Patent in
`
`which the Examiner rejected claim 6 (then pending claim 35), noting that the
`
`prior art disclosed a system which detects rotation of the motor, and
`
`calculates motor speed and variation in motor speed, to determine the
`
`presence of a pinching condition. Ex. 1014, 3-4. The Examiner accepted
`
`Applicant’s assertion (Ex. 1018, 5) that “hard obstruction” detection
`
`described in the specification satisfied this limitation of claim 6 (then
`
`pending claim 35). Detection of a “hard obstruction” de-energizes the motor
`
`based on a comparison of motor current values. Ex. 1020 starting at 6:47.
`
`The system would recognize a spike in the motor current, but would not
`
`
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`9
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`IPR2014-00416
`Patent 8,217,612
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`directly sense a stoppage of the window. Petitioner argues, and we agree,
`
`that the proposed construction is consistent with how one of skill in the art
`
`would have understood this term. Ex. 1001 ¶ 52.
`
`B. Anticipation and Obviousness based on Itoh (Ex. 1007)
`
`Petitioner contends that claims 1, 2, and 5-8 are anticipated and
`
`rendered obvious by Itoh (Pet. 4), a reference that, according to Petitioner,
`
`was disclosed to, but not discussed by the Examiner during prosecution of
`
`the ’612 Patent. Pet. 12. Independent claims 1 and 6 require systems that
`
`react to objects in the travel path of a vehicle window or panel. The claim 1
`
`system detects speed change of the window or panel. The claim 6 system
`
`determines whether the panel has stopped before reaching a pre-defined
`
`“position limit” of the window’s or panel’s travel.
`
`1. Independent Claim 1
`
`Petitioner points to portions of Itoh that correspond to features of
`
`claim 1 (Pet. 12-17 and 28-38) focusing on Itoh’s “Embodiment 3” (Itoh’s
`
`Figures 5-7) as being the “most relevant.” Pet. 12. Itoh’s Figure 7 is
`
`reproduced below:
`
`
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`10
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`IPR2014-00416
`Patent 8,217,612
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`
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`Figure 7 is a schematic diagram of a system for opening and closing
`
`window 26. Ex. 1007, 7:50-52. The Itoh system indirectly measures the
`
`speed of window 26 by detecting (30) pulses of motor current ripple from
`
`motor driving circuit 28. A rate of motor speed change is compared to a
`
`threshold α (Fig. 5 decision block 108). If the threshold is exceeded, it is
`
`determined that the window has collided with an object. The system may
`
`then reverse the direction of travel of window 26 to move it in an opening
`
`(downward in Fig. 7) direction. See id. at 8:49-52, 11:16-20.
`
`
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`11
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`IPR2014-00416
`Patent 8,217,612
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`Itoh’s controller 32, including CPU 34 and counter 36, controls motor
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`20 (Ex. 1007, 7:53-8:9 and Fig. 7) via motor driving circuit 28, which
`
`switches the motor, controlling the direction of rotation of the motor and
`
`controlling whether the motor is on or off. Id. at 7:57-59, 7:67-8:11, 11:16-
`
`19, 1:48-50, Fig. 5 (pulse counter clearing and resetting). Motor switching
`
`(and the resulting counting of the window position) responds to both the
`
`disclosed algorithm and user control switches shown in Figure 7 as “Switch
`
`Panel” 38.
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`CPU 34 is programmed with known positions (memory map 46
`
`shown in Fig. 7) along the window travel path, including (i) “window
`
`entirely closed” (designated as the 0 count), (ii) window “full-opened” (e.g.,
`
`a count value of 2000, Pmax), and (iii) window nearly closed (e.g., a count
`
`value of 100, P). Id. at 8:14-21, 9:24-34, 10:48-60, 11:35-47, Figs. 10(A),
`
`10(B), 11(A), and 11(B). CPU 34 detects a position of the window by
`
`counting (counter 36) pulses of motor ripple current (sensor 30) and
`
`comparing the count to memory map 46. Id. at 8:10-16, 5:6-10, 8:33-48,
`
`9:16-34 (position), 9:37-62 (speed).
`
`CPU 34 detects an obstacle caught between the window frame and the
`
`window using the algorithm shown in Figure 5. Id. at 8:49-52. It does so by
`
`storing a number of “n” immediately prior speed values in a FIFO-type
`
`memory (Id. at 10:12-17, Fig. 9), calculating the average (Tm) of those
`
`speed values (Id. at 10:36-44), calculating the rate-of-change of motor speed
`
`(Tp/Tm, where Tp is the instant motor speed value), and comparing that
`
`rate-of-change to a threshold (α). Id. at 10:61-66. If the rate-of-change of
`
`the speed (Tp/Tm) exceeds the α threshold, the CPU issues a signal to the
`
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`12
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`IPR2014-00416
`Patent 8,217,612
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`driving circuit 28 to make the motor reverse and the window to
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`descend/open. Id. at 11:16-20.
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`In response to an obstacle, CPU 34 reverses the motor. Id. at 11:16-
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`20. Elsewhere (i.e., not Embodiment 3) Itoh discloses deactivating the
`
`motor. See e.g., Abstract. Itoh teaches deactivating the motor if the motor
`
`speed exceeds a threshold and the window is “near to the closed position.”
`
`Id. at 3:52-60. Itoh also teaches that “it is possible to stop the opening or
`
`closing action of the window at a halfway, or possible to convert the action
`
`of the window in the reverse direction.” Id. at Abstract.
`
`Claim 1 requires “adjusting an obstacle detection threshold in real
`
`time based on immediate past measurements.” Ex. 1005, 27:31-34.
`
`Petitioner argues that although Itoh describes its threshold (α) as being a
`
`constant, it is actually mathematically identical to the approach recited in
`
`claim 1. Pet. 14-15. Petitioner’s explanation of equivalence is supported by
`
`the MacCarley Declaration. See Ex. 1001 ¶¶ 113-117. The Patent Owner
`
`Preliminary Response does not comment on Petitioner’s argued equivalence.
`
`Petitioner and MacCarley explain that Itoh compares a rate of change
`
`of speed against α. The Itoh system senses speed, not a rate of change of
`
`speed (acceleration) and the threshold for obstacle detection in Itoh is
`
`actually constantly being adjusted based on immediate past speed
`
`measurements. Ex. 1001 ¶ 113. Based on the explanations provided in the
`
`Itoh reference itself, and those provided by Petitioner and MacCarley, we are
`
`persuaded that the “adjusting” limitation of claim 1 is met by Itoh.
`
`We have reviewed the passages referred to and find, for at least the
`
`foregoing reasons, that it is reasonably likely that Petitioner will establish
`
`that claim 1 is anticipated by or would have been obvious over Itoh.
`
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`13
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`IPR2014-00416
`Patent 8,217,612
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`2. Independent Claim 6
`
`Claim 6 is directed to determining a collision based on the position of
`
`the window, rather than on its speed (claim 1), when its motion is impeded.
`
`Specifically, claim 6 requires “outputting a control signal to said switch to
`
`deactivate said motor in response to a sensing said window or panel has
`
`stopped moving prior to reaching a position limit.” Ex. 1005, 28:27-30. To
`
`the extent claim 6 differs from claim 1, Petitioner applies Itoh to the
`
`limitations of claim 6 at pages 16-17 of the Petition as follows.
`
`Itoh’s algorithm (see Itoh Fig. 5) detects an obstacle by determining
`
`that the window is decelerating more than an acceptable threshold. Itoh
`
`allows the CPU to take action before the rotation of the motor completely
`
`stops. However, in all cases, Itoh’s CPU responds with a motor control
`
`signal—even in an extreme case in which the presence of a hard obstacle
`
`causes the window to suddenly and completely stop moving. The algorithm
`
`takes into account window position. See e.g., decision block 107 in Fig. 5.
`
`Even though Itoh’s controller 32 focuses on deceleration, it will, in
`
`fact, respond to a sensing of the stoppage of the window (extreme
`
`deceleration). See Ex. 1001 ¶ 159. Alternatively, setting the threshold in
`
`Itoh at an appropriate level will result in the CPU outputting a signal only in
`
`response to a stoppage. Id. ¶¶ 159-160.
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`We have reviewed the passages referred to and find, for at least the
`
`foregoing reasons, that it is reasonably likely that Petitioner will establish
`
`that claim 6 is anticipated by or would have been obvious over Itoh.
`
`3. Claims 2 and 7
`
`Claims 2 and 7 depend respectively from claims 1 and 6. They
`
`require the controller to be “programmable” and to be able to execute a
`
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`14
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`IPR2014-00416
`Patent 8,217,612
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`control program and have memory for storing multiple window or panel
`
`speed values corresponding to a signal received from the sensor. Ex. 1005,
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`28:44-48, 8:31-35. Petitioner points to Itoh’s CPU 34 in controller 32 (Pet.
`
`17), which executes a control program described by flowcharts in Figures 5
`
`and 6. With respect to claim 2, Petitioner points to Itoh’s “speed data table”
`
`shown in Figure 9 which stores multiple speed values corresponding to a
`
`signal received from the sensor. Ex. 1007, 10:12-17, Fig. 9. Petitioner
`
`points to Itoh’s memory 46 (Fig. 7) as storing multiple window position
`
`values. CPU 34 compares map 46 values to the position of window 26.
`
`We have reviewed the passages referred to and find, for at least the
`
`foregoing reasons, that it is reasonably likely that Petitioner will establish
`
`that claims 2 and 7 are anticipated by or would have been obvious over Itoh.
`
`4. Claim 5
`
`Claim 5, which depends from claim 1, requires that “immediate past
`
`measurements of said signal are sensed within a forty millisecond interval
`
`prior to the most recent signal from the sensor.” Ex. 1005, 28:4-6. Patent
`
`Owner correctly notes that Petitioner does not point to any teaching of Itoh
`
`explicitly describing a forty-millisecond interval during which immediate
`
`past measurements are made (Prelim. Resp. 5). Petitioner argues that Itoh
`
`indicates that it is a matter of design choice as to how many immediately
`
`past measurements are used, but suggests 4 or 5. Pet. 19.
`
`Petitioner in part asserts: “In Itoh . . . even at very low motor speeds,
`
`several immediately preceding values, taken within 40 ms, are used in the
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`obstacle detection equation, even if not all the values used are from within
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`that time frame.” Pet. 18; see also Ex. 1001 ¶ 108. According to Petitioner,
`
`claim 5 is satisfied so long as some of the immediate past measurements fall
`
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`15
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`IPR2014-00416
`Patent 8,217,612
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`within the 40 millisecond time frame, even if other past measurements
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`falling outside that time frame are also used.
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`The plain language of the claim indicates “the immediate past
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`measurements” were taken within the 40 millisecond time frame, not (for
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`example) “a portion” or “at least one” of such measurements. That is, claim
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`5 requires that all of the immediate past measurements used in the
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`“determining” step (c) of claim 1 are taken within the 40 millisecond time
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`frame specified by claim 5.
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`We are not persuaded by Petitioner’s contention that Itoh explicitly
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`discloses this limitation. See Pet. 18-19, 32; Ex. 1001 ¶ 107. Petitioner’s
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`analysis is provided here with numerals [1] to [5] added to each statement
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`for easier reference below:
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`[1] Itoh uses immediate past measurements measured by a
`clock running at 0.1 msec. [2] The clock takes measurements at
`a rate between 0.4 msec and 0.8 msec, according to Figure 8.
`[3] Itoh discloses that, in experiments, the measurements were
`taken at 1.2 msec at maximum speed. (Ex. 1007, 9:63-68.) [4]
`Thus, 33 measurements would be taken within 40 ms (40/1.2 =
`33.3). [5] Itoh leaves it as a design choice how many
`immediately past measurements are used, but suggests at least 4
`or 5. (Id. at 10:40-45; Fig. 9.) (See also, Ex. 1001, ¶ 127.)
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`Pet. 18-19; see also Ex. 1001 ¶ 127. Statement [1] is supported by the
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`record. See Ex. 1007, 8:62-63, Fig. 8. Statement [2] is not supported by the
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`record, because Figure 8 describes 0.4 msec as a “high speed” signal (not a
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`maximum signal) and 0.8 msec as a “low speed” signal (not a minimum
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`signal), so signals lower than 0.4 msec or higher than 0.8 msec are possible.
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`Id. at Fig. 8. Itoh does not indicate under what condition(s) the
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`experiment(s) were performed, and we find little probative value in
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`attempting to extrapolate the reported “maximum speed” to the requirement
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`16
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`IPR2014-00416
`Patent 8,217,612
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`of claim 5. See id. at 9:63-68. It is not clear whether the same motor(s) used
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`in the experiment(s) might in fact reasonably achieve a speed which exceeds
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`the 1.2 msec “maximum speed” cycle of the experiments.
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`Thus, we are not persuaded that Itoh discloses “the immediate past
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`measurements” of the motor parameter “were taken within a forty
`
`millisecond interval prior to the most recent sensor measurement.” We
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`therefore determine Petitioner has not shown a reasonable likelihood it can
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`establish claim 5 is anticipated by Itoh. Nevertheless, we conclude that
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`Petitioner has met its threshold with respect to establishing a reasonable
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`likelihood that claim 5 would have been obvious over Itoh alone.
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`The ’612 Patent does not describe any particular advantage in
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`selecting the claimed 40 ms time window. Nor does it require a particular
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`number of measurements. Petitioner argues that the 40 ms limitation within
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`which “immediate past measurements of said signal are sensed” would have
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`been obvious to one of ordinary skill based on Itoh. Pet. 18-19. Itoh uses
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`immediate past measurements measured by a clock running at 0.1 msec.
`
`The clock takes measurements at a rate between 0.4 msec and 0.8 msec,
`
`according to Figure 8. Itoh discloses that, in experiments, the measurements
`
`were taken at 1.2 msec at maximum speed. Ex. 1007, 9:63-68. Thus, 33
`
`measurements would be taken within 40 ms (40/1.2 =33.3). Itoh leaves it as
`
`a design choice how many immediately past measurements are used, but
`
`suggests at least 4 or 5. Id. at 10:40-45; Fig. 9.
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`We therefore conclude that Petitioner has shown that it is reasonably
`
`likely that it can establish that claim 5 would have been obvious over Itoh
`
`alone.
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`17
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`IPR2014-00416
`Patent 8,217,612
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`
`5. Claim 8
`
`Claim 8, which depends from claim 6, further requires “one or more
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`position limits programmed for use by the controller to determine window or
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`panel position for use in identifying whether the window or panel is opened
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`or closed.” Ex. 1005, 28:36-39. At pages 19-21 of the Petition, Petitioner
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`applies Itoh to the limitations of claim 8.
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`Petitioner asserts Itoh discloses that its CPU is programmed with a
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`number of known positions along the travel path of the window for use in
`
`determining window position, including (i) the “window entirely closed”
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`position (designated as the 0 count value), (ii) the window “full opened
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`position” (e.g. a count value of 2000, designated as Pmax), and (iii) the
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`window nearly closed position (e.g., a count value of 100, designated as P,
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`which marks the beginning of the “range of entirely closed position” or the
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`“vicinity of entirely closed position”). Ex. 1007, 8:14-21, 9:24-34, 10:48-
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`60, 11:35-47, Figs. 10(A), 10(B), 11(A), and 11(B); Ex. 1001 ¶¶ 166-69.
`
`These positions are taken into account by Itoh’s algorithm. See e.g.
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`Decision Block 107 in Itoh Fig. 5.
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`We have reviewed the passages referred to and find, for at least the
`
`foregoing reasons, that it is reasonably likely that Petitioner will establish
`
`that claim 8 is anticipated by or would have been obvious over Itoh.
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`C. Anticipation and Obviousness based on Kinzl (Ex. 1008) alone
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`Petitioner contends that claims 6-8 are anticipated by Kinzl and also
`
`rendered obvious by it. Pet. 47-55. In support of its contention, Petitioner
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`provides a detailed explanation of how each claim limitation allegedly is
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`described in Kinzl. Id. at 47-55.
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`
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`18
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`IPR2014-00416
`Patent 8,217,612
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`Figures 1 and 2 of Kinzl are reproduced below.
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`1. Claim 6
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`
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`Figure 1 is a schematic diagram of a system for operating an electric window
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`of an automotive vehicle, and Figure 2 shows three zones of window
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`position established for operation of the system. See Ex. 1008, 1:7-13, 2:37-
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`41. Microcomputer 24 uses sensor 26 to monitor the opening and closing of
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`electric window 10, via drive motor 12. See id. at 2:44-57. Microcomputer
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`24 determines from sensor 26 whether window 10 has been blocked and, if a
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`19
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`IPR2014-00416
`Patent 8,217,612
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`block is detected, responds in different manners dependent upon whether
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`window 10 is in zone 1, 2, or 3. See id. at 3:6-26.
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`Petitioner maps the Kinzl disclosure to claim 6 as follows. Kinzl’s
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`sensor 26 is a “sensor for sensing movement of the window or panel and
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`providing a sensor output signal related to a position of the window or
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`panel” as recited in claim 6. See Pet. 23-24, 41. As construed above, this
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`limitation includes both direct and indirect sensing of the object’s
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`movement. See supra Part II.A.2. Sensor 26 monitors movement of
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`window 10 either directly via the window itself, or indirectly via drive motor
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`12. See Ex. 1008, 2:1-2, 2:11-22, 2:53-57.
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`Kinzl discloses a “switch for controllably actuating the motor by
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`providing an energization signal” as recited in claim 6. See Pet. 23, 41. In
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`particular, open relay 20 and close relay 22 switch power to drive motor 12
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`to open and close window 10, respectively. See Ex. 1008, 2:47-53.
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`Kinzl’s microcomputer 24 is a “controller having an interface coupled
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`to the sensor and the switch for controllably energizing the motor,” as
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`recited in claim 6. See Pet. 41; Ex. 1008, Fig. 1, 3:66-4:16. Microcomputer
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`24 has an interface coupled to sensor 26 for monitoring signals from sensor
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`26. See Pet. 41-42; Ex. 1008, 2:53-57. In addition, Kinzl’s microcomputer
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`24 performs operations (i) through (iii) of claim 6. See Pet. 24-25, 42-44.
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`Patent Owner contends that Kinzl does not disclose storing a value for an
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`opposite end (fully-opened position) of an acceptable range of travel, and
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`thus, does not meet the claim 6 requirement that the multiple position limits
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`“define an acceptable travel range.” Prelim. Resp. 12. There is evidence,
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`however, suggesting that Kinzl does disclose providing a count for a fully
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`closed position. See Kinzl claim 3. A difference between the count obtained
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`20
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`IPR2014-00416
`Patent 8,217,612
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`during a close cycle and the count obtained during an open cycle tells where
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`the window is positioned. There is an inherent max count when the window
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`begins at a fully closed position (count = 0) and travels toward and reaches a
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`fully open position. Pet. 22-24; Ex. 1001 ¶ 239; Ex. 1005, 28:19-20.
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`For the above reasons we determine that Petitioner has shown a
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`reasonable likelihood it can establish claim 6 is anticipated and would have
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`been rendered obvious by Kinzl.
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`2. Claim 7
`
`Petitioner argues that Kinzl describes the controller details required by
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`claim 7, focusing on the Kinzl algorithm (Ex. 1008, Abstract; 2:1-11; 2:22-
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`23), comparing speed of the drive motor with measured values (id. at 2:1-4)
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`and programmed positions (transitions between zones). Id. at 2:68-3:20;
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`4:17-34; Ex. 1001 ¶¶ 81-83 and 253; Pet. 24. Patent Owner does not
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`separately argue claim 7.
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`We have reviewed these passages and conclude that Petitioner has
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`shown that it is reasonably likely to prevail in establishing that claim 7 is
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`anticipated and would have been rendered obvious by Kinzl.
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`3. Claim 8
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`Petitioner argues that Kinzl describes the position limits required by
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`claim 8, noting that the Kinzl microcomputer is programmed with a number
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`of known positions along the travel path of the window, including the
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`“window closed” position (zero count value). Pet. 25; Ex. 1008, 2:61-64;
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`Ex. 1001 ¶¶ 83 and 255-256. Patent Owner does not separately argue claim
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`8.
`
`We have reviewed the cited portions of the record and determine tha
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