UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEALS BOARD
`
`BROSE NORTH AMERICA, INC.
`and
`BROSE FAHRZEUGTEILE GMBH & CO. KG, HALLSTADT,
`Petitioners
`
`v.
`
`UUSI, LLC
`Patent Owner
`
`Case No. IPR2014-00417
`Patent No. 7,579,802
`
`
`
`REPLY DECLARATION OF DR. C. ARTHUR MACCARLEY
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 7,579,802
`
`
`
`
`
`
`BNA/Brose Exhibit 1063
`IPR2014-00417
`Page 1
`
`

`

`Reply Declaration of Dr. C. Arthur MacCarley in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,579,802
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`CONSTRUCTION OF CLAIM 1 ................................................................. 10
`
`A.
`
`Limitation 1(a) Does Not Require a Current Value (Magnitude)
`Sensor; Instead, the Limitation is Sufficiently Broad to Include
`Other Types of Sensors, Including Speed Sensors, Including a
`Speed Sensor in the Form of a Motor Current Commutation
`Pulse Sensor ........................................................................................ 10
`
`B.
`
`The “De-Activate” Limitation of Claim 1 .......................................... 40
`
`II.
`
`CONSTRUCTION OF CLAIM 7 ................................................................. 41
`
`A.
`
`Limitation 7(a) Does Not Require a Separate, Discrete Physical
`Sensor (Such as a Hall Effect Sensor or Other Encoder);
`Instead, the Limitation is Sufficiently Broad to Include Other
`Types of Sensors From Which Motor Speed of Movement Can
`Be Determined, Including, For Example, a Motor Current
`Commutation Pulse Sensor. ................................................................ 41
`
`B. Neither the Preamble of Claim 7, Nor Limitation (a) (the Sensor
`Limitation) of Claim 7, Requires that Detection Based on the
`Obstacle Detect Threshold be Performed Along the Entire Path
`of Travel of the Window. .................................................................... 58
`
`C.
`
`The “signal…for stopping the motor” Limitation of Claim 7 ............ 71
`
`III. CONSTRUCTION OF CLAIM 14 ............................................................... 72
`
`A.
`
`Limitations (c) and (c)(i)-(iv) of Claim 14 of the ’802 Patent
`Are Not Written in “Means-Plus-Function” Form .............................. 72
`
`B.
`
`The “Deactivating the Motor” Limitation of Claim 14 ....................... 91
`
`I.
`
`UNPATENTABILITY OF INDEPENDENT CLAIM 1 .............................. 92
`
`A.
`
`Claim 1 Would Have Been Obvious Over Itoh (Ground 1)
`Under Either Party’s Proposed Construction ...................................... 92
`
`
`
`i
`
`BNA/Brose Exhibit 1063
`IPR2014-00417
`Page 2
`
`

`

`Declaration of Dr. C. Arthur MacCarley Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 8,217,612
`
`
`B.
`
`Claim 1 is Anticipated by Itoh, Subject to the “Deactivating”
`Issue, Which UUSI Does Not Address (Ground 2) ............................ 95
`
`C.
`
`Claim 1 Would Have Been Obvious Over Itoh in View of Kinzl
`(Ground 5) ........................................................................................... 98
`
`II. UNPATENTABILITY OF DEPENDENT CLAIM 6 ................................100
`
`A.
`
`B.
`
`Claim 6 Would Have Been Obvious Over Itoh (Ground 1) .............100
`
`Claim 6 would have been obvious over Itoh in view of Kinzl
`(Ground 5) .........................................................................................128
`
`III. UNPATENTABILITY OF INDEPENDENT CLAIM 7 AND ITS
`DEPENDENT CLAIMS 8–9 .......................................................................129
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`Claims 7–9 Would Have Been Obvious over Itoh (Ground 1) .........130
`
`the
`to
`Itoh Subject
`Claims 7–9 Are Anticipated by
`“Deactivating”
`Issue, Which UUSI Does Not Address
`(Ground 2) .........................................................................................145
`
`Claims 7 and 9 Are Anticipated by Kinzl (Ground 3) ......................148
`
`Claims 7 and 9 would have been obvious over Kinzl (Ground 4) ....154
`
`Claims 7-9 Would Have Been Obvious Over Itoh in View of
`Kinzl (Ground 5) ...............................................................................159
`
`Claims 7-9 Would Have Been Obvious Over Itoh in View of
`Zuckerman (Ground 6) ......................................................................165
`
`Claims 7-9 Would Have Been Obvious Over Itoh in View of
`Kinzl and Zuckerman (Ground 7) .....................................................169
`
`I.
`
`UNPATENTABILITY OF INDEPENDENT CLAIM 14 ..........................173
`
`A.
`
`B.
`
`Claim 14 Would Have Been Obvious Over Itoh (Ground 1) ...........173
`
`Claim 14 is Anticipated by Itoh, Subject to the “De-activating”
`Issue, Which UUSI Does Not Address (Ground 2) ..........................176
`
`C.
`
`Claim 14 is Anticipated by Kinzl (Ground 3) ...................................179
`
`
`
`ii
`
`BNA/Brose Exhibit 1063
`IPR2014-00417
`Page 3
`
`

`

`Declaration of Dr. C. Arthur MacCarley Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 8,217,612
`
`
`D.
`
`Claim 14 Would Have Been Obvious Over Kinzl (Ground 4) .........182
`
`E.
`
`F.
`
`G.
`
`Claim 14 Would Have Been Obvious Over Itoh in View of
`Kinzl (Ground 5) ...............................................................................184
`
`Claim 14 Would Have Been Obvious Over Itoh in View of
`Zuckerman (Ground 6) ......................................................................189
`
`Claim 14 Would Have Been Obvious Over Itoh in View of
`Kinzl and Zuckerman (Ground 7) .....................................................193
`
`II. MOTIVATION AND ABILITY TO COMBINE .......................................199
`
`A.
`
`B.
`
`Combination of Itoh and Kinzl..........................................................199
`
`Combinations of (i) Itoh and Zuckerman, and (ii) Itoh, Kinzl,
`and Zuckerman ..................................................................................208
`
`III. ENABLEMENT ..........................................................................................213
`
`A.
`
`Itoh Enables Claims 1, 6–9, and 14 of the ’802 Patent, Either
`Alone or in Combination with Kinzl and/or Zuckerman ..................213
`
`B. Kinzl Enables Claims 7, 9, and 14 of the ’802 Patent ......................218
`
`IV. SECONDARY CONSIDERATIONS OF NON-OBVIOUSNESS ............221
`
`
`
`
`
`
`
`iii
`
`BNA/Brose Exhibit 1063
`IPR2014-00417
`Page 4
`
`

`

`Reply Declaration of Dr. C. Arthur MacCarley in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,579,802
`
`I, C. Arthur MacCarley, do hereby declare as follows:
`
`INTRODUCTION
`
`
`1.
`
`In my prior declaration, dated February 6, 2014, I set forth my
`
`analyses and opinions that claims 1, 6-9, and 14 (“the Challenged Claims”) of the
`
`’802 patent are anticipated and would have been obvious to a person having
`
`ordinary skill in the art at the time of the alleged invention.
`
`
`2.
`
`Since that declaration, the Board has instituted an IPR trial, and UUSI
`
`has submitted its Preliminary Response and Response. This declaration responds
`
`to issues raised by the Board and UUSI in the year since my prior declaration.
`
`
`3.
`
`In preparing this Declaration, I have reviewed the materials identified
`
`and listed in my February 6, 2014 declarations, as well as the materials discussed
`
`herein and/or listed in Appendix A to this declaration.
`
`
`4.
`
`In forming the opinions expressed in this Declaration, I relied upon
`
`my education and experience in the relevant field of the art, and have considered
`
`the viewpoint of a person having ordinary skill in the relevant art, as of
`
`April 22, 1992. My opinions are based upon readings of the ’802 patent, the prior
`
`art, matters referenced in this declaration, my knowledge of the state of the art, and
`
`my expertise in the field.
`
`COMPENSATION AND QUALIFICATIONS
`
`
` My compensation and qualifications are set forth in my earlier 5.
`
`declaration, dated February 6, 2014.
`
`
`
`BNA/Brose Exhibit 1063
`IPR2014-00417
`Page 5
`
`

`

`Reply Declaration of Dr. C. Arthur MacCarley in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,579,802
`
`
`
`6.
`
`In its Response, UUSI suggests that I am not qualified to render an
`
`opinion in this case. Although UUSI argues that I did not have personal
`
`experience working with obstacle detection for automotive vehicle window or
`
`sunroof systems in the 1992 timeframe, (see Resp. at 5-10), my understanding is
`
`that UUSI’s own proffered expert, has never worked in the field of anti-pinch or
`
`obstacle detection for power windows and sunroofs. As Dr. Ehsani stated in his
`
`deposition, he is not even certain what the term “anti-trap” may have meant in the
`
`context of power window systems, either now or in 1992. (Ex. 1050 at 120:2-
`
`121:19, 122:12-16.) Further, despite UUSI’s assertion that Dr. Ehsani has
`
`“personal knowledge” of the state of the art and of commercial implementations in
`
`the 1992 timeframe (Resp. at 10), the “personal knowledge” Dr. Ehsani has
`
`regarding such technology appears to have come almost entirely from speaking
`
`with John Washeleski—inventor of the ’612 and ’802 patents, and executive vice
`
`president of UUSI—after UUSI retained Dr. Ehsani as an expert witness. (See Ex.
`
`2001 at ¶ 16; Ex. 1050 at 124:22-125:2.) I note that according to Dr. Ehsani’s own
`
`opinion regarding the level of ordinary skill in the art, he himself would not have
`
`met the requirements of a person of ordinary skill in the pertinent art in the 1992
`
`timeframe. As Dr. Ehsani testified, his opinion is that one of ordinary skill in the
`
`art must have experience with or knowledge about power window obstruction
`
`detection. (Ex. 1050 at 421:19-24, 426:9-427:16.)
`
`
`
`2
`
`BNA/Brose Exhibit 1063
`IPR2014-00417
`Page 6
`
`

`

`Reply Declaration of Dr. C. Arthur MacCarley in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,579,802
`
`
`
`7.
`
`As explained below in Paragraphs 18-20, I disagree with Dr. Ehsani’s
`
`opinion regarding the level of ordinary skill in the pertinent art. I believe that one
`
`of ordinary skill in the art need not have had experience with obstacle detection
`
`systems for power windows/sunroofs, but instead, need only have had the
`
`educational background and experience necessary to understand the technology.
`
`As an expert in the field of electrical and computer engineering since before
`
`1992—with specific expertise in the areas of electro-mechanical control systems,
`
`computer-based control systems, microprocessor-based control systems, and
`
`indirect sensing methods, all with applications in the field of automotive
`
`engineering—I have more than the necessary educational background and
`
`experience to understand the ’802 patent and the field of anti-pinch technology, as
`
`well as the state of the art in the 1992 timeframe.
`
`UNDERSTANDING OF PATENT LAW
`
`
`8.
`
`In addition to the concepts set forth in my February 6, 2014
`
`declaration, I have additional understandings in light of UUSI’s Response.
`
`
`9.
`
`Enablement. I understand that it is not necessary, for purposes of
`
`enablement, that a prior art reference enable its full disclosure; the prior art
`
`reference only needs to enable one of ordinary skill in the art to practice the
`
`portions of its disclosure alleged to anticipate the claimed invention without undue
`
`experimentation. I understand that enablement does not require meeting lofty
`
`
`
`3
`
`BNA/Brose Exhibit 1063
`IPR2014-00417
`Page 7
`
`

`

`Reply Declaration of Dr. C. Arthur MacCarley in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,579,802
`
`standards for success in the commercial marketplace—a patent disclosure does not
`
`have to enable one of ordinary skill in the art to make and use a perfected,
`
`commercially viable embodiment. Instead, a prior art reference is prior art for all
`
`that it teaches to one of ordinary skill in the art, even if the prior art reference
`
`discloses a device that is less than ideal, or flawed in one or more of its proposed
`
`embodiments. In addition, I understand that under an obviousness analysis, an
`
`individual prior art reference need not work perfectly (or even at all) to qualify as
`
`prior art—it qualifies as prior art, regardless, for whatever is disclosed therein.
`
`Nevertheless, I understand that in order to render a claimed apparatus or method
`
`obvious, the cited prior art as a whole must enable one skilled in the art to make
`
`and use the apparatus or method, without undue experimentation.
`
` Teaching Away In The Context Of Obviousness/Non-obviousness.
`10.
`
`I understand that a claim would have been obvious if it unites old elements with no
`
`change to their respective functions, or alters prior art by mere substitution of one
`
`element for another known in the field and that combination yields predictable
`
`results. While it may be helpful to identify a reason for this combination, common
`
`sense should guide and no rigid requirement of finding a teaching, suggestion or
`
`motivation to combine is required. When a product is available, design incentives
`
`and other market forces can prompt variations of it, either in the same field or
`
`different one. If a person having ordinary skill in the relevant art can implement a
`
`
`
`4
`
`BNA/Brose Exhibit 1063
`IPR2014-00417
`Page 8
`
`

`

`Reply Declaration of Dr. C. Arthur MacCarley in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,579,802
`
`predictable variation, obviousness likely bars its patentability. For the same
`
`reason, if a technique has been used to improve one device and a person having
`
`ordinary skill in the art would recognize that it would improve similar devices in
`
`the same way, using the technique would have been obvious. I understand that a
`
`claim may be obvious if common sense directs one to combine multiple prior art
`
`references or add missing features to reproduce the alleged invention stated in the
`
`claims. I understand that any need or problem known in the field of endeavor at
`
`the time of invention and addressed by the patent can provide a reason for
`
`combining the elements in the manner claimed.
`
`
`11.
`
`I understand that a prima facie case of obviousness can be rebutted by
`
`UUSI by showing that the prior art teaches away from the claimed invention in any
`
`material respect. I further understand that a reference will teach away when it
`
`suggests that the developments flowing from its disclosures are unlikely to produce
`
`the objective of the applicant’s invention. I also understand that a statement that a
`
`particular combination is not a preferred embodiment does not teach away, absent
`
`clear discouragement of that combination. In addition, I understand that a known
`
`or obvious composition does not become patentable simply because it has been
`
`described as somewhat inferior to some other product for the same use. Finally, I
`
`understand that just because better alternatives exist in the prior art does not mean
`
`that an inferior combination is inapplicable for obviousness purposes.
`
`
`
`5
`
`BNA/Brose Exhibit 1063
`IPR2014-00417
`Page 9
`
`

`

`Reply Declaration of Dr. C. Arthur MacCarley in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,579,802
`
`
`
`
` Claim Construction Standard in an IPR. I understand that claims 12.
`
`in an IPR of an expired patent are given an interpretation based upon how one of
`
`ordinary skill in the art would have understood the claims at the time of the
`
`invention, in view of the patent specification, the prosecution history, and
`
`knowledge of the relevant art.
`
` Claim Construction (Claim Differentiation). I understand that
`13.
`
`there is a presumption that each claim in a patent has a different scope. I
`
`understand that although different claims can define different subject matter within
`
`the totality of the invention, claim drafters can also use different terms to define
`
`exactly the same subject matter. I understand that there is a presumption that an
`
`independent claim should not be construed as requiring a limitation added by a
`
`dependent claim.
`
` Claim Construction (Specification). I understand that in many
`14.
`
`cases, the meaning of a claim term as understood by persons of skill in the art is
`
`not always apparent, and that it is often necessary to look to other information
`
`available to the public that make clear what a person of skill in the art would have
`
`understood disputed claim language to mean. I understand that the specification is
`
`always highly relevant to claim construction and is the single best source of the
`
`meaning of disputed terms—the specification may reveal that the inventor has
`
`chosen to become his or her own lexicographer by clearly and explicitly defining a
`
`
`
`6
`
`BNA/Brose Exhibit 1063
`IPR2014-00417
`Page 10
`
`

`

`Reply Declaration of Dr. C. Arthur MacCarley in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,579,802
`
`given claim term. I understand that the inventor may have disclaimed some
`
`subject matter with the intent to limit the scope of a claim, by words of clear
`
`exclusion or restriction, representing a clear disavowal of claim scope. That being
`
`said, I understand that limitations in the specification should not necessarily be
`
`applied to the claims because an inventor need not describe all embodiments of his
`
`invention. A definition of a claim term in the specification will prevail over a
`
`term’s ordinary meaning only if the inventor has acted as his own lexicographer
`
`and clearly set forth a different definition.
`
` Claim Construction (Prosecution History). I understand that in
`15.
`
`addition to a detailed reading of the specification of the patent, one should also
`
`consider the prosecution history. The prosecution history can clarify the meaning
`
`of the claim language by explaining how the inventor understood the invention and
`
`by demonstrating whether the inventor limited the invention during the course of
`
`prosecution. I understand that there is a doctrine of prosecution disclaimer, which
`
`prevents patentees from recapturing through claim interpretation meanings that
`
`were disclaimed during prosecution. I understand that the prosecution disclaimer
`
`doctrine applies even if it results in a claim construction that departs from the
`
`ordinary meaning of a claim term. I understand that a prosecution disclaimer can
`
`be created by an amendment or statements made by the patentee in the prosecution
`
`history. I understand that a prosecution disclaimer does not apply if it is ambiguous
`
`
`
`7
`
`BNA/Brose Exhibit 1063
`IPR2014-00417
`Page 11
`
`

`

`Reply Declaration of Dr. C. Arthur MacCarley in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,579,802
`
`whether or not there was a disclaimer—the disclaimer must be clear and
`
`unmistakable to one of ordinary skill in the art. I further understand that
`
`limitations clearly adopted by the applicant during prosecution are not subject to
`
`negation during litigation, on the argument that the limitations were not really
`
`needed in order to overcome the reference—when an applicant yields claim scope
`
`in order to secure allowance of the patent, the public notice aspect of the record
`
`inhibits later retrenchment to recover what was yielded.
`
` Claim Construction (Other, Extrinsic Evidence). I understand that
`16.
`
`claim construction may also take into account extrinsic (external) evidence in the
`
`context of the overall intrinsic record. However, extrinsic evidence is less
`
`significant than the intrinsic record in understanding the meaning of language used
`
`in the claims.
`
` Claim Construction (Means-Plus-Function Limitations). My
`17.
`
`understanding is that it is possible for a claim limitation to be written in what is
`
`known as “means-plus-function” format—in such a situation, an element in a claim
`
`is expressed as a means or step for performing a specified function without the
`
`recital of structure, material, or acts in support thereof, such that the claim is
`
`construed to cover the corresponding structure, material, or acts described in the
`
`specification and equivalents thereof. I further understand that a claim limitation
`
`that does not use the word “means” will trigger a rebuttable presumption that the
`
`
`
`8
`
`BNA/Brose Exhibit 1063
`IPR2014-00417
`Page 12
`
`

`

`Reply Declaration of Dr. C. Arthur MacCarley in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,579,802
`
`limitation is not a “means-plus-function” limitation. I understand that such a
`
`presumption can be rebutted only if the claim term fails to recite sufficiently
`
`definite structure or recites a function without reciting sufficient structure for
`
`performing that function. I am further informed that a claim term recites
`
`sufficiently definite structure if the claim term is used in common parlance or by
`
`persons of skill in the pertinent art to designate structure, even if the term covers a
`
`broad class of structures and even if the term identifies the structures by their
`
`function.
`
`LEVEL OF ORDINARY SKILL IN THE PERTINENT ART
`
`
` As noted in my prior Declaration, in my opinion, a person having 18.
`
`ordinary skill in the art in the relevant timeframe would have a Bachelor of Science
`
`degree in engineering (most likely Electrical, Mechanical, or Automotive
`
`Engineering), and would have approximately two (2) years of practical experience
`
`designing and/or manufacturing control systems for automotive applications.
`
`19.
`
` According to Dr. Ehsani, “[a] person of ordinary skill in the pertinent
`
`art at the time of invention would likely be an individual with a Bachelor of
`
`Science degree in Electrical or Electronics Engineering with at least a year of
`
`practical experience. At the time of invention, however, there were many
`
`individuals working in the pertinent art without an engineering Bachelor’s degree
`
`but with an aptitude for electronics and multiple years of hands-on experience
`
`
`
`9
`
`BNA/Brose Exhibit 1063
`IPR2014-00417
`Page 13
`
`

`

`Reply Declaration of Dr. C. Arthur MacCarley in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,579,802
`
`developing electronic motor control systems and programming microcontrollers.”
`
`(Ex. 2001 at ¶ 36.) Moreover, according to Dr. Ehsani, one of ordinary skill in the
`
`art must have experience with or knowledge about power window obstruction
`
`detection. (Ex. 1050 at 421:19-24.) As Dr. Ehsani explained, in his opinion, a
`
`person of ordinary skill in the art “would have to understand what are the
`
`ramifications, among them is both successful operation and the fact that [power
`
`windows] kill people. That’s where obstacle detection comes in. If you don’t
`
`know that, you’re not a person of ordinary skill.” (Id. at 427:11-16.)
`
` My opinions that claims 1, 6-9 and 14 are anticipated by and/or would
`20.
`
`have been obvious over the prior art are not inconsistent with Dr. Ehsani’s criteria
`
`for one of ordinary skill in the art. If the higher level of skill is required, as
`
`Dr. Ehsani contends, then this would only strengthen my conclusions: if the claims
`
`would have been obvious under a lower skill level, then the claims would have
`
`been even more clearly obvious to one of a higher skill level.
`
`CLAIM CONSTRUCTION
`
`I.
`
`CONSTRUCTION OF CLAIM 1
`A. Limitation 1(a) Does Not Require a Current Value (Magnitude)
`Sensor; Instead, the Limitation is Sufficiently Broad to Include
`Other Types of Sensors, Including Speed Sensors, Including a
`Speed Sensor in the Form of a Motor Current Commutation Pulse
`Sensor
` Disputed phrase: The disputed phrase is within limitation (a) of
`21.
`
`claim 1:
`
`
`
`10
`
`BNA/Brose Exhibit 1063
`IPR2014-00417
`Page 14
`
`

`

`Reply Declaration of Dr. C. Arthur MacCarley in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,579,802
`
`
`1. Apparatus for controlling motion of a motor driven element in a
`vehicle over a range of motion and for altering said motion when
`undesirable resistance to said motion is encountered, said apparatus
`comprising:
`
`a) a sensor for measuring a parameter of a motor coupled to the
`motor driven element that varies in response to a resistance to
`motion during all or part of a range of motion of the motor driven
`element;
`
`b) a memory for storing a number of measurement values from the
`sensor based on immediate past measurements of said parameter over
`at least a portion of a present traversal of said motor driven element
`through said range of motion;
`
`c) a controller coupled to the memory for determining to de-activate
`the motor based on a most recent sensor measurement of the
`parameter and the immediate past measurement values stored in the
`memory obtained during a present run through the motor driven
`element range of motion; and
`
`d) a controller interface coupled to the motor for altering motion of
`said motor driven element during the present run in response to a
`determination made by the controller.
`
` UUSI’s Construction: On pages 10-11 of its Response, UUSI argues
`22.
`
`that:
`
`
`
`“[i]ndependent Claim 1 recites ‘a sensor for measuring a parameter of
`a motor that varies in response to a resistance to motion.’ The correct
`construction of this limitation of Claim 1 is that the parameter must
`
`11
`
`BNA/Brose Exhibit 1063
`IPR2014-00417
`Page 15
`
`

`

`Reply Declaration of Dr. C. Arthur MacCarley in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,579,802
`
`
`vary in response to a resistance to motion, not simply to a change in
`speed of the motor, and that the sensor therefore encompasses a
`current amplitude sensor but excludes a mere speed or position
`sensor.”
`
`
`
` Ehsani Declaration: In his declaration, Dr. Ehsani states that his 23.
`
`“understanding of this limitation of Claim 1 is that the parameter must
`vary in response to a resistance to motion.” He further states, “[T]he
`sensor for measuring a parameter of a motor that varies in response to
`a resistance to motion would be understood by one of ordinary skill in
`the art as of the priority date of the ‘802 Patent to denote a current
`value sensor.” (Id. at ¶ 56.) (citation omitted)
`
` Dr. Ehsani’s deposition
`24.
`
`testimony contradicts his declaration:
`
`However, in his deposition, in response to questioning by UUSI’s own attorney,
`
`Dr. Ehsani conceded that there is no qualification on either the sensor or the
`
`parameter recited in this limitation (a) of claim 1 of the ’802 patent:
`
`[MR. NYE:] Okay. Thank you. Mr. Leavell also asked about the
`sensor of Claim 1 of the same patent and I assume you see that at
`subsection A of Claim 1. Let me rephrase. Do you see the sensor in
`subsection A of Claim 1?
`A. Yes.
`Q. Could you look at paragraph 53 of your '802 Declaration that
`discusses the sensor?
`A. Yes.
`
`
`
`12
`
`BNA/Brose Exhibit 1063
`IPR2014-00417
`Page 16
`
`

`

`Reply Declaration of Dr. C. Arthur MacCarley in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,579,802
`
`
`Q. Thank you. Are there any characteristics associated with the term
`in Claim 1 "a sensor for measuring the parameter of a motor"?
`MR. LEAVELL: Objection, leading.
`A. Sir, are we relating paragraph 53 to this claim, or are we now
`concentrating on -- on the Claim 1 only.
`Q. (BY MR. NYE) Let's concentrate on Claim 1.
`A. Okay. So repeat the question again.
`Q. Sure. The sensor for measuring a parameter recited Claim 1A --
`A. Right.
`Q. -- are there any qualification on that what sensor or parameter
`is?
`A. No. It's a parameter, a sensor for a parameter.
`(Ex. 1050 at 455:7-456:7) (emphasis added).
`
` The Board’s Institution Decision: The Board did not discuss claim
`25.
`
`construction of the sensor limitation of claim 1 of the ’802 patent. However, I note
`
`that it did find, preliminarily, that “Itoh’s pulse detecting circuit 30 is ‘a sensor for
`
`measuring a parameter of a motor,’ as recited in claim 1.” Inst. Dec. at 10.
`
` My Opinion as to the Proper Construction: The phrase in limitation
`26.
`
`(a) of claim 1 of the ’802 patent, “(a) a sensor for measuring a parameter of a
`
`motor…that varies in response to a resistance to motion,” should be given its plain
`
`and ordinary meaning, which is any sensor that measures any motor parameter that
`
`varies as a result of resistance to motion. This construction includes a current
`
`value (amplitude or magnitude) sensor, but would also include sensors that are
`
`
`
`13
`
`BNA/Brose Exhibit 1063
`IPR2014-00417
`Page 17
`
`

`

`Reply Declaration of Dr. C. Arthur MacCarley in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,579,802
`
`used to measure speed (such as a Hall effect senor, other types of rotary encoders,
`
`or a motor current commutation pulse sensor) because speed is also a motor
`
`parameter that varies in response to a resistance to motion.
`
`27.
`
` The plain meaning of the phrase “a parameter of a motor…that varies
`
`in response to a resistance to motion” includes the parameter of motor speed. One
`
`of ordinary skill in the art would understand that motor speed is a parameter that
`
`varies in response to a resistance to motion. This is true, particularly in the context
`
`of claim 1 of the ’802 patent, which is directed to de-activating the motor
`
`(limitation (c) of claim 1) following an increase in such resistance to motion.
`
`
`28.
`
`In response to a resistance to motion (e.g., because of an obstruction
`
`to the motion of a window or sunroof), the most apparent change in motor behavior
`
`is for the motor to slow down, i.e., to decrease speed or decelerate. Nearly
`
`concurrently, the drive current of the motor will increase. Sensors for each of
`
`motor speed and drive current fall within the meaning of “(a) a sensor for
`
`measuring a parameter of a motor…that varies in response to a resistance to
`
`motion.”1
`
`
`1 Other motor parameters would also change in response to a resistance to
`
`motion, including the radiated electromagnetic field, noise, and infrared heat
`
`signature (temperature). For purposes of this IPR, the relevant change is speed.
`
`
`
`14
`
`BNA/Brose Exhibit 1063
`IPR2014-00417
`Page 18
`
`

`

`Reply Declaration of Dr. C. Arthur MacCarley in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,579,802
`
`
`
`
` Because they are mechanically coupled, if a window slows down due 29.
`
`to an encounter with an obstacle, the motor physically connected to2 and driving
`
`that window will also slow down. Indeed, other claims of the ’802 patent, such as
`
`independent claims 7 (limitations (c)(i)-(iv)) and 15 (limitations (d)(i)-(iv)),
`
`specifically require that an obstacle is detected based on a change in speed of the
`
`motor.
`
`
`30.
`
`In his declaration, Dr. Ehsani states:
`
`The timing of motor current commutation pulses and the timing of
`Hall effect pulses both vary with respect to speed, but not necessarily
`with respect to a resistance to motion. The timing of these pulses
`varies only if the resistance to motion results in a change in speed.
`This is basic motor and mechanical knowledge: if the speed is
`constant then the commutation frequency and the hall sensor signal
`frequency will be constant and their timings will also be constant.
`However, if the motor load changes while the speed is constant then
`the motor current will change but the frequency of the commutation
`will not change.
`
`(Ex. 2001 at ¶¶ 54, 55.) But, Dr. Ehsani’s statement is merely saying that, if motor
`
`speed does not change (“if the speed is constant”), then sensors that detect speed
`
`changes will not detect any change (“the commutation frequency and the hall
`
`2 Claim 1, limitation (a) also requires the motor to be “coupled to the motor
`
`driven element.”
`
`
`
`15
`
`BNA/Brose Exhibit 1063
`IPR2014-00417
`Page 19
`
`

`

`Reply Declaration of Dr. C. Arthur MacCarley in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,579,802
`
`sensor signal frequency will be constant and their timings will also be constant.”) I
`
`do not dispute that, if speed does not change, then sensors that detect a change in
`
`speed will not detect a change in speed. I also agree that it is theoretically possible
`
`to design a system with a variable supply voltage or motor load in order to counter
`
`a reduction in motor speed (due to a physical resistance in the system) with an
`
`increase in motor voltage or load, in order to try to maintain a relatively constant
`
`motor speed. However, that scenario and theoretical design is irrelevant to th