`
`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
`
`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 RESPONSE
`
`
`
`
`
`
`
`
`
`
`

`

`IPR2014-00416
`Patent 8,217,612
`
`TABLE OF CONTENTS
`
`I.
`
`Introduction ................................................................................................. 1
`
`A.
`
`B.
`
`C.
`
`Background of Patent Owner ............................................................. 1
`
`State of the Art .................................................................................. 1
`
`Petitioner’s Alleged Expert MacCarley is Not Familiar with the State
`of the Art ........................................................................................... 4
`
`II.
`
`Independent Claim 1 .................................................................................. 10
`
`A.
`
`Claim Construction .......................................................................... 10
`
`1.
`
`2.
`
`Identifying and Sensing .......................................................... 10
`
`No Construction Needed for Deactivate ................................ 13
`
`Ground 1 – Alleged Obviousness over Itoh ...................................... 14
`
`Ground 2 – Alleged Anticipation over Itoh ....................................... 15
`
`Ground 3 – Alleged Obviousness over Itoh and Kinzl ....................... 15
`
`Ground 7 – Alleged Obviousness over Itoh and Zuckerman ............. 17
`
`Ground 8 – Alleged Obviousness over Itoh, Kinzl, and Zuckerman ... 18
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`III.
`
`Dependent Claim 5 .................................................................................... 19
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`Claim Construction .......................................................................... 19
`
`Ground 1 – Alleged Obviousness over Itoh ...................................... 21
`
`1.
`
`2.
`
`3.
`
`Explicit Teachings of Itoh ....................................................... 21
`
`Design Choice Law ................................................................. 23
`
`Failure of Petitioner to Provide Basis for Finding of Design
`Choice .................................................................................... 24
`
`Ground 3 – Alleged Obviousness over Itoh and Kinzl ....................... 29
`
`Ground 7 – Alleged Obviousness over Itoh and Zuckerman ............. 30
`
`Ground 8 – Alleged Obviousness over Itoh, Kinzl, and Zuckerman ... 32
`
`IV.
`
`Independent Claim 6 .................................................................................. 32
`
`A.
`
`Claim Construction .......................................................................... 32
`
`
`
`

`

`IPR2014-00416
`Patent 8,217,612
`
`1. Window Stoppage.................................................................. 32
`
`2.
`
`Travel Range .......................................................................... 35
`
`B.
`
`Ground 1 – Alleged Obviousness over Itoh ...................................... 36
`
`1.
`
`Itoh Does Not Disclose Detecting a Window Abruptly Stopping
`Along a Range of Travel ......................................................... 36
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`Ground 2 – Alleged Anticipation over Itoh ....................................... 38
`
`Ground 3 – Alleged Obviousness over Itoh and Kinzl ....................... 38
`
`Ground 5 – Alleged Obviousness over Kinzl ..................................... 40
`
`1.
`
`Kinzl Does Not Disclose Programming a Fully-Opened Position
`to Define an Acceptable Travel Range ................................... 40
`
`Ground 4 – Alleged Anticipation over Kinzl ...................................... 43
`
`Ground 6 – Alleged Obviousness over Kinzl and Itoh ....................... 43
`
`V.
`
`Dependent Claim 7 .................................................................................... 44
`
`VI.
`
`Dependent Claim 8 .................................................................................... 44
`
`VII. Non-enablement ........................................................................................ 44
`
`VIII. Conclusion ................................................................................................. 46
`
`
`
`
`
`
`
`
`
`

`

`IPR2014-00416
`Patent 8,217,612
`
`TABLE OF AUTHORITIES
`
`CASES
`
`CAE Screenplates, Inc. v. Heinrich Fiedler GmbH & Co.,
`224 F.3d 1308 (Fed. Cir. 2000) ......................................................................... 11
`
`In re Cyclobenzaprine Hydrochloride Extended-Release Capsule
`Patent Litig., 676 F.3d 1063 (Fed. Cir. 2012)....................................................... 5
`
`In re Gal, 980 F2d 717 (Fed. Cir. 1992) ................................................................. 24
`
`In re Kumar, 418 F.3d 1361 (Fed. Cir. 2005) ......................................................... 45
`
`In re Ochiai, 71 F.3d 1565 (Fed. Cir. 1995) ........................................................... 39
`
`In re Ratti, 270 F.2d 810 (CCPA 1959) .................................................................. 16
`
`Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561 (Fed. Cir. 1987) ....................... 5
`
`Phillips v AWH, 415 F.3d 1303 (Fed. Cir. 2005) ..................................................... 35
`
`Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343 (Fed. Cir. 2013) .............................. 17
`
`Rexnord Indus., LLC v. Kappos, 705 F.3d 1347 (Fed. Cir. 2013) ............................. 23
`
`Virginia Innovation Sciences, Inc. v. Samsung Electronics Co.,
`976 F. Supp. 2d 794, 814 (E.D. Va. 2013) .......................................................... 12
`
`Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC,
`683 F.3d 1356 (Fed. Cir. 2012) .............................................................. 15, 38, 43
`
`World Class Tech. Corp. v. Ormco Corp., 2014 U.S. App. LEXIS 20061,
`October 20, 2014 (Fed. Cir. 2014) ............................................................... 19, 33
`
`IPR2014-00530, Institution Decision, Paper 8 ...................................................... 28
`
`BOARD DECISIONS
`
`
`
`

`

`IPR2014-00416
`Patent 8,217,612
`
`I. INTRODUCTION
`
`A. BACKGROUND OF PATENT OWNER
`
`Patent owner, UUSI, LLC, dba Nartron Corporation, was founded in 1967 and
`
`is based in Reed City, Michigan. Nartron designs, develops, manufactures, and
`
`markets electronic systems and components for automotive, truck, military, and
`
`consumer product markets. Narton is a privately owned company with more than
`
`one hundred employees at its Michigan manufacturing plant.
`
`Nartron invented the safety technology described in U.S. Patent No. 8,214,612
`
`(the ‘612 Patent) and U.S. Patent No. 7,579,802 (the ‘802 Patent), which is
`
`included in a motor controller it sold to Webasto Roof Systems Inc. After Webasto
`
`stopped purchasing this controller from Nartron, Nartron sued Webasto (a
`
`Petitioner in pending IPRs 2014-00648, 2014-00649, and 2014-00650) in addition
`
`to the present Petitioner Brose for infringement of the ‘612 and ‘802 Patents.
`
`Photos of this controller are shown in Exhibit 2008. Photographs of the
`
`Brose/Bosch motor and controller incorporating Nartron’s patented technology
`
`are shown in Exhibit 2009.
`
`B. STATE OF THE ART
`
`Manually cranked window lift mechanisms were being replaced by electric
`
`motor driven window lift mechanisms in the 1980s. Expert Declaration in Support
`
`Page 1
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`

`

`IPR2014-00416
`Patent 8,217,612
`
`of Patent Owner Response, Ex. 2001 at ¶ 18 (all future references to Exhibit 2001
`
`are made by paragraph number, not by page). Then, luxury automobiles began
`
`using “express-up” switches with the electric motor driven window lift
`
`mechanisms such that the window would automatically continue to close after
`
`initial activation of the switch by the vehicle occupant. But electric motor driven
`
`window lift mechanisms caused safety problems. Ex. 2001 at 19. According to a
`
`1997 National Highway Traffic Safety Administration (NHTSA) Technical Report Ex.
`
`2003, a “conservative” (Ex. 2003 at pg. 9) estimate of power window injuries was
`
`437 injuries per year. Ex. 2003 at pg. 30, Table 17. These injuries were estimated
`
`for the 1-year period from October 1993 through September 1994, and include
`
`injuries caused by the closing of a power window. Ex. 2001 at 22.
`
`Furthermore, the majority of these injuries were to children under the age of
`
`fifteen. Ex. 2003 at pg. 32, Table 18. This industry data is prior to commercial
`
`implementation of Patent Owner’s invention covered by the present patent,
`
`which was later used for vehicular sunroof systems, and copied by others for side
`
`window lift mechanisms. In the years leading up to 1992, automotive suppliers
`
`were unable to bring motor control circuitry to market due to excessive false
`
`positives and false negatives. Ex. 2001 at 20.
`
`Page 2
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`

`

`IPR2014-00416
`Patent 8,217,612
`
`As Patent Owner’s expert, Dr. Mark Ehsani, explains:
`
`A false positive is when an obstruction is detected (which may
`
`cause the window to stop and/or reverse) even though there is
`
`in fact no obstruction present. This is a nuisance and a
`
`significant concern to original equipment manufacturers
`
`concerned with perceived quality. False positives may also have
`
`an impact on safety, such as by distracting a driver from
`
`operating the vehicle when determining why the window has
`
`not responded as expected. A false negative is when an
`
`obstruction that is actually present is not detected. This may
`
`lead to damage to the window, the motor, the lift mechanism,
`
`or worse, to a person whose body part is caught between the
`
`window and the window seal.
`
`Ex. 2001 at 21.
`
`The 1992 priority application (the earliest application to which the ‘612 Patent
`
`claims priority) is the first practical development of a system that, in real world
`
`automobile scenarios, exhibits a very low false positive rate and an even lower
`
`false negative rate. Ex. 2001 at 23. These real-world conditions encompass
`
`conditions experienced by many moving object systems (such as mechanical
`
`wear), situations more specific to motor vehicles (such as battery voltage
`
`fluctuation), and conditions uniquely applicable to a vehicle in motion (such as
`
`wind buffeting). Ex. 2001 at 23.
`
`Page 3
`
`

`

`IPR2014-00416
`Patent 8,217,612
`
`The 1992 priority application achieves these results by, among a number of
`
`inventive details, concurrently using multiple obstacle detection algorithms. The
`
`obstacle detection algorithms are selected to detect different forms of obstacles,
`
`such as hard obstacles (for example, a bone) and soft obstacles (for example, a
`
`person’s throat). By using multiple obstacle detection algorithms, the various
`
`obstacle types can each be detected more accurately according to the parameters
`
`that characterize them respectively, thereby reducing false negatives. Ex. 2001 at
`
`24-25.
`
`It is noteworthy that the Petitioner-cited Itoh and Kinzl patents are not
`
`indicative of the production vehicle state of the art. Itoh and Kinzl also do not
`
`overcome many of the real-world vehicular problems such as the varying loads
`
`caused by wind buffeting or booming caused by the pressure difference between
`
`inside and outside the passenger compartment of a vehicle moving at high
`
`speeds. Ex. 2001 at 26.
`
`C. PETITIONER’S ALLEGED EXPERT MACCARLEY IS NOT FAMILIAR WITH THE
`
`STATE OF THE ART
`
`It is easy to see the combination of disparate teachings from multiple
`
`references with the benefit of hindsight.
`
`Page 4
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`

`

`IPR2014-00416
`Patent 8,217,612
`
`No effective, uniform, reliable patent system could long survive
`
`if the
`
`law permitted a decisional approach to § 103
`
`determinations like that here employed by the district court…:
`
`considering not the problem solved by the invention (here a
`
`successful cable tie), but speculating on a ‘problem’ of how prior
`
`devices might be reconstructed to match the claimed structure,
`
`with the benefit of hindsight aided by the inventor's engineering
`
`testimony about the inventions in suit….
`
`Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1574 (Fed. Cir. 1987).
`
`“Virtually all inventions are necessarily combinations of old elements. The notion,
`
`therefore, that combination claims can be declared invalid merely upon finding
`
`similar elements in separate Prior patents would necessarily destroy virtually all
`
`patents and cannot be the law under the statute, § 103.” Id., 810 F.2d at 1575.
`
`The test for obviousness is from the vantage point of one of ordinary skill in
`
`the art at the time of filing: “hindsight analysis is inappropriate because
`
`obviousness must be assessed at the time the invention was made” and from the
`
`perspective of one of ordinary skill in the art. In re Cyclobenzaprine Hydrochloride
`
`Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1073 (Fed. Cir. 2012).
`
`Such a person of ordinary skill in the art would not have the benefit of 22
`
`years of hindsight or of the teachings of the ‘612 Patent and its priority
`
`applications. Petitioner’s alleged expert, Dr. MacCarley, did not have personal
`
`Page 5
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`

`

`IPR2014-00416
`Patent 8,217,612
`
`experience with the state of the art in 1992, when the original priority application
`
`of the ‘612 Patent was filed. Furthermore, Dr. MacCarley is not an expert in
`
`automotive vehicle window or sunroof movement mechanisms or their control
`
`systems such that his declarations should be given little if any weight. Prior to the
`
`preparation of the instant Petition, Dr. MacCarley had never worked with power
`
`window controls or even power sunroof controls:
`
`Q. Let's move on then. With window lift mechanisms, when I
`
`use that term, I'm including the motors and control systems. Did
`
`you work on a window lift mechanism for automotive vehicles
`
`prior to your work in this IPR?
`
`A. No.
`
`Q. Prior to your work in this IPR, have you ever worked on any
`
`automotive sunroof window movement mechanisms? And by
`
`that I include the motors and control systems.
`
`A. No.
`
`Transcript of Deposition of Dr. MacCarley, Ex. 2004 at 32:1-11.
`
`Q. Prior to your work on these IPRs, have you ever reviewed an
`
`electrical diagram or software code for an automotive vehicle
`
`sunroof?
`
`A. No.
`
`Page 6
`
`

`

`Q. Prior to your work on these IPRs, have you ever reviewed a
`
`diagram or software code for an automotive vehicle side
`
`IPR2014-00416
`Patent 8,217,612
`
`window lift system?
`
`A. No.
`
`Ex. 2004 at 33:22-34:5.
`
`While clearly an accomplished and experienced engineer in other areas, Dr.
`
`MacCarley did not have experience with the actual operations or algorithms that
`
`represented the state of the art in power window control systems at any time and
`
`specifically in or before 1992.
`
`Q. When you say the -- let's clarify here. Maybe you are
`
`misunderstanding what I'm asking or maybe I'm making it too
`
`complicated.
`
`Based on your current knowledge, do you know the details,
`
`circuitry as well as function, for the obstruction detection in
`
`windows in production vehicles prior to April of 1992?
`
`MR. LEAVELL: Objection. Compound. Go ahead and answer.
`
`THE WITNESS: What I know now --
`
`BY MR. FALCOFF:
`
`Q. You can repeat that back if you want.
`
`A. I think I got it. Historically, you are asking if I know now what
`
`was common in production before 1992; is that correct?
`
`Q. That is correct.
`
`Page 7
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`

`

`IPR2014-00416
`Patent 8,217,612
`
`A. I know some of the applications. It would be a stretch to say I
`
`know what was common because I'm looking through the lens
`
`of what is published or documented. And it's kind of hard to find
`
`out what was used in each particular manufacturer's case. So
`
`I'm sorry for the vague answer.
`
`Ex. 2004 at 46:20-47:18.
`
`Q. If you have the knowledge, let me know.
`
`A. I don’t. I don't know anything about that aspect of a Buick
`
`manufactured in that year, nor -- nor the overwhelming
`
`majority of car models. In fact, I will –
`
`Q. Which ones do you know the functional and circuitry
`
`diagrams on for the window obstruction detection in production
`
`vehicles prior to April of 1992?
`
`A. None specifically.
`
`Ex. 2004 at 49:23-50:8.
`
`Dr. MacCarley did not attempt to remedy these shortcomings in his
`
`understanding of the skill in the art by speaking with any people knowledgeable
`
`on the subject.
`
`Q. Did you actually personally talk to any engineers or other
`
`technical people that had been active in automotive anti-pinch
`
`or obstruction detection windows from back in the early 1990s?
`
`A. No.
`
`Ex. 2004 at 61:15-20.
`
`Page 8
`
`

`

`IPR2014-00416
`Patent 8,217,612
`
`The ’612 Patent discloses systems and methods that overcome many of the
`
`real-world problems experienced in the industry by using separate algorithms for
`
`hard and soft obstruction detection. Ex. 2001 at 24-26. Dr. MacCarley was
`
`unaware of these concerns in 1992:
`
`Q. That is to what -- I actually asked did you -- do you know the
`
`details of those at that time that were in production vehicles?
`
`A. Details, no, I will have to say I didn't know the details.
`
`Q. Okay.
`
`A. I knew of the function.
`
`Q. Okay. But just in a very general sense; is that correct?
`
`A. In an operational sense, what it -- what it needed to do. I had
`
`no reason to get directly involved at the time in the engineering
`
`behind how it did it.
`
`Q. Okay. At that time, prior to April of 1992, were you aware if
`
`they can sense hard objects versus soft objects for these
`
`automotive windows?
`
`A. In 1992, I was not aware of the need for that distinction.
`
`Ex. 2004 at 45:6-24.
`
`As a result, Dr. MacCarley’s pronouncements on what he believes one of
`
`ordinary skill in the art would recognize or be motivated to do with only having
`
`read what Petitioner’s attorneys recently put before him should be viewed with
`
`skepticism. There is no real-world evidence of the state of the art submitted with
`
`Page 9
`
`

`

`IPR2014-00416
`Patent 8,217,612
`
`the Petition. It is noteworthy that some of the cited patent references are merely
`
`theoretical concepts that suffer many of the real-world problems found in the
`
`industry, as will be discussed in greater detail hereinafter.
`
`In contrast, Patent Owner’s expert witness, Dr. Mark Ehsani, has personal
`
`knowledge of the state of the art and the state of commercial implementations
`
`on and before 1992, and has discussed that real-world state of the art with those
`
`active in it at the relevant time. Ex. 2001 at 10-16. Patent Owner’s expert has a
`
`very different view of the cited references and industry that is far more credible,
`
`as will be discussed in detail hereafter.
`
`II. INDEPENDENT CLAIM 1
`
`A. CLAIM CONSTRUCTION
`
`1.
`
`Identifying and Sensing
`
`Claim 1 of the ’612 Patent, at (d)(iii) and (iv), recites “identifying a collision of
`
`the window or panel with an obstacle” and “deactivate said motor in response to
`
`a sensing of a collision.” As the Institution Decision correctly states:
`
`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
`
`Page 10
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`

`

`IPR2014-00416
`Patent 8,217,612
`
`meaning” as understood by a person of ordinary skill in the art
`
`in question at the time of the invention. Id.
`
`IPR2014-00416, Institution Decision, Paper 12 at pg. 7.
`
`The controller “identifying” and “sensing” features of Claim 1 must each be
`
`given weight. The sensing is a different claim limitation from the identifying claim
`
`limitation. If sensing and identifying simply corresponded to the same algorithm,
`
`Claim 1 would have been written accordingly. For example, the final limitation of
`
`Claim 1 might then have been written as “deactivate said motor in response to
`
`the identified collision.”
`
`Given that a different verb – identify, compared to sense – was used, a
`
`distinction is presumed to be present. Further, the indefinite article “a” is present
`
`before the “sensing” verb. “In the absence of any evidence to the contrary, we
`
`must presume that the use of these different terms in the claims connotes
`
`different meanings.” CAE Screenplates, Inc. v. Heinrich Fiedler GmbH & Co., 224
`
`F.3d 1308, 1317 (Fed. Cir. 2000) (internal citations omitted).
`
`According to antecedent basis rules, this indefinite article indicates that the
`
`“sensing” is being newly introduced – not that the “sensing” refers back to a prior
`
`feature, such as identifying. In addition, the “collision” following “sensing” is also
`
`introduced with the indefinite article, indicating that the newly-introduced
`
`Page 11
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`

`

`IPR2014-00416
`Patent 8,217,612
`
`collision is distinct from any collision identified by the prior feature in Claim 1.
`
`See, e.g., Virginia Innovation Sciences, Inc. v. Samsung Electronics Co., 976 F.
`
`Supp. 2d 794, 814 (E.D. Va. 2013) (internal citations omitted): “The introduction
`
`of a new element is accomplished through the use of an indefinite article and not
`
`through the use of a definite article.”
`
`Properly construed, Claim 1 therefore requires that the “identifying” and the
`
`“sensing” are concurrently performed, but remain logically distinct. This is amply
`
`supported by the Detailed Description of the ’612 Patent and the priority
`
`applications, which describe both hard obstruction (identifying) and soft
`
`obstruction (sensing) algorithms. Ex. 2001 at 51-56.
`
`The “identifying” limitation builds on controller limitations including, in brief,
`
`“monitoring a signal” (Claim 1 at d(i)) and “adjusting an obstacle detection
`
`threshold in real time based on immediate past measurements of the signal”
`
`(Claim 1 at d(ii))). The “identifying” limitation therefore requires use of an
`
`algorithm based on an obstacle detection threshold adjusted in real time. The
`
`“sensing” limitation is not so restricted. Instead, the sensing limitation is, in full,
`
`“deactivate said motor in response to a sensing of a collision,” which
`
`encompasses any other algorithm that is capable of sensing a collision.
`
`Page 12
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`

`

`IPR2014-00416
`Patent 8,217,612
`
`Accordingly, these two features of Claim 1 should properly be construed as:
`
`(i) identifying a collision using a first algorithm that is based on an obstacle
`
`detection threshold adjusted in real time, and (ii) sensing a collision using a
`
`second algorithm distinct from the first algorithm and deactivating the motor in
`
`response to the sensing based on the second algorithm. Ex. 2001 at 50, 57. Patent
`
`Owner notes that this claim construction does not exclude also deactivating the
`
`motor in response to the collision identified using the first algorithm.
`
`2. No Construction Needed for Deactivate
`
`No construction is needed of the verb “deactivate” in any claim, including
`
`independent Claim 1. Whether “deactivate” encompasses immediate reversal, or
`
`is limited to reversal after some intermediate period during which the motor is
`
`de-energized, or includes a mechanical or electrical stoppage of motion optionally
`
`before a reversal, is irrelevant to the determination of patentability of the present
`
`claims. Patent Owner has not and will not make any arguments in this inter partes
`
`review that rely on this distinction. Petitioner is only seeking a construction from
`
`the Board for improper litigation-related reasons.
`
`When there is no need for a claim to be construed to arrive at a final decision,
`
`the Board should not be asked to spend time on such gratuitous claim
`
`construction arguments and should not issue advisory opinions on claim
`
`Page 13
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`

`

`IPR2014-00416
`Patent 8,217,612
`
`constructions not at issue in the proceeding. See, for example, IPR2014-00419,
`
`where the Board decided not to construe a limitation: “[e]xpress construction of
`
`this phrase is unnecessary for purposes of this Decision, because no issue in this
`
`Decision turns on this phrase.” IPR2014-00419, Paper 9 at 5. See also IPR2013-
`
`00044, where the Board again decided not to construe claim terms where the
`
`construction was not material to the decision: “According to [Patent Owner], it is
`
`unnecessary, for purposes of this decision, to construe any claim terms. We have
`
`considered [Petitioner’s] comments but find that none of them is material for
`
`purposes of this decision.” IPR2013-00044, Paper 12 at 4 (internal citation
`
`omitted).
`
`B. GROUND 1 – ALLEGED OBVIOUSNESS OVER ITOH
`
`Itoh only discloses using a single algorithm, which compares a ratio to a
`
`threshold value. Ex. 2001 at 37-40. In contrast to Claim 1, Itoh does not teach a
`
`second algorithm, corresponding to the sensing a collision limitation of Claim 1.
`
`To the contrary, Patent Owner’s expert states that even Itoh’s use of two
`
`different parameters (α and β) are mutually exclusive, and are simply used as a
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`parameter of interest for a single algorithm. Ex. 2001 at 39.
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`There is no evidence that remedying this deficiency of Itoh would have been
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`obvious to one of ordinary skill in the art. Ex. 2001 at 58. If a cited reference,
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`enlightened by ordinary skill in the art back in 1992, does not teach all of the
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`claim limitations, the proposed ground of rejection must fail, and the validity of
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`the claims survive.
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`For at least these reasons, Ground 1 must fail with respect to Claim 1.
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`C. GROUND 2 – ALLEGED ANTICIPATION OVER ITOH
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`For at least the reasons stated above for why Itoh does not render Claim 1
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`obvious, Itoh does not anticipate Claim 1. As the Federal Circuit has stated: “For a
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`prior art reference to anticipate a claim, it must disclose all of the limitations of
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`the claim, arranged or combined in the same way as in the claim.” Wm. Wrigley
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`Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1361 (Fed. Cir. 2012) (internal
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`citations omitted). But, Itoh does not disclose the second algorithm required by
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`Claim 1. Therefore, Ground 2 must fail with respect to Claim 1.
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`D. GROUND 3 – ALLEGED OBVIOUSNESS OVER ITOH AND KINZL
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`Kinzl does not remedy the deficiencies of Itoh with respect to Claim 1. Ex.
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`2001 at 59-60. Kinzl discloses two separate algorithms (speed threshold and
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`blocking counter), but these algorithms are used in separate non-overlapping
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`zones. Ex. 2001 at 42-45. Furthermore, Kinzl and Itoh cannot be combined,
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`without the improper benefit of hindsight reasoning, since using the Hall effect
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`sensor of Kinzl (in a substituted and/or additive manner) would defeat one of the
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`express objectives of Itoh, which is to avoid “mounting of a special sensor.” Itoh
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`at 3:65. For example, see In re Ratti, where the Court reversed a rejection
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`because the "suggested combination of references would require a substantial
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`reconstruction and redesign of the elements shown in [the primary reference] as
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`well as a change in the basic principle under which the [primary reference's]
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`construction was designed to operate.” In re Ratti, 270 F.2d 810, 813 (CCPA
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`1959).
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`Bare common sense alone cannot be invoked to arrive at obviousness despite
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`the contradictory teachings of Itoh and Kinzl.
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`“the mere recitation of the words ‘common sense’ without any
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`support adds nothing to the obviousness equation.” Mintz v.
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`Dietz & Watson, 679 F.3d 1372, 1377 (Fed. Cir. 2012). Thus, we
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`have required that [obviousness findings] grounded in “common
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`sense” must contain explicit and clear reasoning providing some
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`rational underpinning why common sense compels a finding of
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`obviousness. See KSR, 550 U.S. at 418; In re Kahn, 441 F.3d 977,
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`988 (Fed. Cir. 2006) (“Rejections on obviousness grounds cannot
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`be sustained by mere conclusory statements; instead, there
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`must be some articulated reasoning with some rational
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`underpinning to support the legal conclusion of obviousness.”).
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`In re Nouvel, 493 F. App’x 85, 92 (Fed. Cir. 2012).
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`Where, as here, the necessary reasoning is absent, we cannot
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`simply assume that “an ordinary artisan would be awakened to
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`modify prior art in such a way as to lead to an obviousness
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`rejection.” Id. It is in such circumstances, moreover, that it is
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`especially important to guard against the dangers of hindsight
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`bias.
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`Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013). For at least the
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`above reasons, Ground 3 must fail with respect to Claim 1.
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`E. GROUND 7 – ALLEGED OBVIOUSNESS OVER ITOH AND ZUCKERMAN
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`Zuckerman does not remedy the deficiencies of Itoh with respect to Claim 1.
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`Ex. 2001 at 61. Zuckerman discloses a circuit that performs a single analog
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`calculation and therefore does not disclose two separate algorithms being used
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`concurrently. Ex. 2001 at 47-49. Furthermore, Zuckerman and Itoh cannot be
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`combined because they are concerned with moving panels that will experience
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`different loads and conditions. For example, while Itoh is lifting the weight of a
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`window, Zuckerman is not lifting the weight of a sliding door, and instead
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`translates the door sideways. Further, Zuckerman teaches a device that is not
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`intended for use on a moving vehicle and is therefore not subjected to wind
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`buffeting and the like.
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`Q. And the Zuckerman patent, is the door intended to be
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`opened or closed when the vehicle is moving?
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`A. I'm assuming it's intended to be closed.
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`Q. Okay. So in the normal operation, it should not be opened or
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`closed, moved between one or the other while the vehicle is
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`moving; is that your understanding?
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`A. That would make sense, yes.
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`Ex. 2004 at 135:20-136:5. The only embodiments Zuckerman explains in detail are
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`incompatible with Itoh, as explained by Dr. MacCarley:
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`Q. Okay. Does that require different electrical components than
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`Itoh?
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`A. Well, the electrical components envisioned by Zuckerman are
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`fundamentally different than Itoh because Zuckerman uses
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`entirely an analog solution....
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`Ex. 2004 at 153:18-23. For at least these reasons, Ground 7 must fail.
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`F. GROUND 8 – ALLEGED OBVIOUSNESS OVER ITOH, KINZL, AND ZUCKERMAN
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`Because neither Kinzl nor Zuckerman remedies the deficiencies of Itoh with
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`respect to Claim 1, the combination of Itoh, Kinzl, and Zuckerman also fails to
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`render Claim 1 obvious. Ex. 2001 at 62-63. In addition, for at least the reasons
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`described above with respect to Ground 3, Itoh could not be combined with Kinzl.
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`And for at least the reasons described above with respect to Ground 7,
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`Zuckerman could not be combined with Kinzl. Therefore, Ground 8 must fail with
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`respect to Claim 1.
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`III. DEPENDENT CLAIM 5
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`A. CLAIM CONSTRUCTION
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`Claim 5 depends from Claim 1 and recites that “immediate past
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`measurements are sensed within a forty millisecond interval.” The correct
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`construction of this phrase is that immediate past measurements used to adjust
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`the obstacle detection threshold of Claim 1 must all be taken within the preceding
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`40 milliseconds (40 ms). This is based on the plain and ordinary meaning as
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`unambiguously expressed in the claims.
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`We generally give words of a claim their ordinary meaning in
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`the context of the claim and the whole patent document; the
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`specification particularly, but also the prosecution history,
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`informs the determination of claim meaning
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`in context,
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`including by resolving ambiguities; and even if the meaning is
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`plain on the face of the claim language, the patentee can, by
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`acting with sufficient clarity, disclaim such a plain meaning or
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`prescribe a special definition.
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`World Class Tech. Corp. v. Ormco Corp., 2014 U.S. App. LEXIS 20061, October 20,
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`2014, at 7 (Fed. Cir. 2014) (internal citations omitted).
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`Claim 5 recites that “the immediate past measurements of said signal are
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`sensed within a forty millisecond interval prior to the most recent signal from the
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`sensor,” not that one or more of the immediate past measurements are sensed
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`within a forty millisecond interval, as the Petition appears to argue. Corrected
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`Petition, Pap