IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`In the Inter Partes Review of:
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`U.S. Patent No. 7,579,802
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`Filed: January 27, 2004
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`Issued: August 25, 2009
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`Inventor(s): Mario Boisvert, Randall
` Perrin, John Washeleski
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`Assignee: UUSI, LLC
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`Title: Collision Monitoring System
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`Mail Stop Inter Partes Review
`Commissions for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Trial Number: To Be Assigned
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`Panel: To Be Assigned
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`SUBMISSION PURSUANT TO 35 U.S.C. § 301 AND 37 C.F.R. § 1.501 IN
`SUPPORT OF PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 7,579,802
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`In the Inter Partes Review of:
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`U.S. Patent No. 7,579,802
`
`
`Filed: January 27, 2004
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`Issued: August 25, 2009
`
`Inventor(s): Mario Boisvert, Randall
` Perrin, John Washeleski
`
`Assignee: UUSI, LLC
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`Title: Collision Monitoring System
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`Mail Stop Inter Partes Review
`Commissions for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Trial Number: To Be Assigned
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`Panel: To Be Assigned
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`SUBMISSION PURSUANT TO 35 U.S.C. § 301 AND 37 C.F.R. § 1.501 IN
`SUPPORT OF PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 7,579,802
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`Submission Pursuant to 35 U.S.C. § 301 and 37 C.F.R. § 1.501 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,579,802
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`Pursuant to 35 U.S.C. § 301 and 37 C.F.R. § 1.501, Brose North America,
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`Inc. (“BNA”) and Brose Fahrzeugteile GmbH & Co. KG, Hallstadt (“Brose”)
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`(collectively, “Petitioners”) offer this Submission Pursuant to 35 U.S.C. § 301 and
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`37 C.F.R. § 1.501 in Support of Petition for Inter Partes Review of U.S. Patent No.
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`7,579,802 (“Submission”) regarding: (1) prior art that bears on the patentability of
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`claims 1, 6-9 and 14 of U.S. Patent No. 7,579,802 (“the ’802 Patent”); and (2)
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`statements that the patent owner, UUSI, LLC (“UUSI”) has served in Federal court
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`proceedings regarding the scope of claims 1, 6-9 and 14 of the ’802 Patent. BNA
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`and Brose file this Submission in connection with, and as Exhibit 1003 to, their
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`Petition for Inter Partes Review Under 37 C.F.R. § 42.100 of U.S. Patent No.
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`7,579,802 (“Petition”).
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`I.
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`PRIOR ART BEARING ON THE PATENTABILITY OF CLAIMS 1,
`6-9 AND 14 OF U.S. PATENT NO. 7,579,802
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`Pursuant to 35 U.S.C. § 301(a)(1) and 37 C.F.R. § 1.501(a)(1), Petitioners
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`identify the following prior art that they believe bears on the patentability of claims
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`1, 6-9 and 14 of the ’802 Patent:
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`• U.S. Patent No. 4,870,333 to Itoh et al. (“Itoh”). Itoh was filed in the
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`United States on October 2, 1987, and issued September 26, 1989, and is
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`thus prior art under 35 U.S.C. § 102 (b). (Ex. 1007.)
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`1
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`Submission Pursuant to 35 U.S.C. § 301 and 37 C.F.R. § 1.501 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,579,802
`• U.S. Patent No. 4,468,596 to Kinzl et al. (“Kinzl”). Kinzl was filed in the
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`United States on September 10, 1981, issued August 28, 1984, and is thus
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`prior art under 35 U.S.C. § 102(b). (Ex. 1008.)
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`• U.S. Patent No. 5,069,000 to Zuckerman (“Zuckerman”). Zuckerman was
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`filed in the United States on March 22, 1990, issued December 3, 1991, and
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`is thus prior art under at least 35 U.S.C. § 102(e). (Ex. 1009.)
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`As required by 37 C.F.R. § 1.501(b)(1), the pertinence of this prior art to
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`claims 1, 6-9 and 14 of the ’802 Patent is explained in Section V of the Petition,
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`and in particular, the manner of applying this prior art to claims 1, 6-9 and 14 of
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`the ’802 Patent may be found in the claim-by-claim analysis of Section V.E of the
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`Petition, and a summary of how the construed Challenged Claims are unpatentable
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`is provided in Section V.C of the Petition.
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`II.
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`STATEMENTS ABOUT THE SCOPE OF CLAIMS 1, 6-9 AND 14 OF
`U.S. PATENT NO. 7,579,802 IN A PROCEEDING BEFORE A
`FEDERAL COURT OR THE OFFICE
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`Pursuant to 35 U.S.C. § 301(a)(2) and 37 C.F.R. § 1.501(a)(2), Petitioners
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`identify the following statements made by UUSI in which UUSI implicitly took a
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`position on the scope of claims 1, 6-9 and 14 of the ’802 Patent and that were
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`served in a proceeding before a Federal Court.
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`2
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`Submission Pursuant to 35 U.S.C. § 301 and 37 C.F.R. § 1.501 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,579,802
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`UUSI’s Infringement Positions in UUSI v. Brose North America, Inc.
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`UUSI implicitly took a position on the scope of claims 1, 6-9 and 14 of the
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`’802 Patent when it made statements about how the accused BNA products
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`allegedly infringe independent claims 1, 7 and 14 of the ’802 Patent. (Ex. 1033,
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`UUSI’s September 19, 2013 First Supplemental Response to Interrogatory No. 1,
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`including Attachment E thereto.) As required by 37 C.F.R. § 1.501(a)(3),
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`Petitioners identify the following:
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`37 C.F.R. § 1.501(a)(3)(i), Forum: UUSI served these statements during the
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`district court litigation captioned UUSI, LLC v. Robert Bosch LLC and Brose
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`North Am., Inc., Case No. 2:13-cv-10444 (United States District Court for the
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`Eastern District of Michigan).
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`37 C.F.R. § 1.501(a)(3)(ii), Specific Documents: UUSI made these
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`statements about the scope of claims 1, 6-9 and 14 of the ’802 Patent in the
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`following document: UUSI’s September 19, 2013 First Supplemental Response to
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`Interrogatory No. 1, including Attachment E thereto. (Ex. 1033.)
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`37 C.F.R. § 1.501(a)(3)(iii), How Statement is a Position on the Scope of
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`Any Claim: UUSI’s infringement contentions, as set forth in its interrogatory
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`response, are an implicit statement about the scope of the asserted claims. By
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`saying that certain features or functionalities of the BNA accused products
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`allegedly infringe a limitation of independent claims 1, 7 and 14, UUSI is stating
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`3
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`Submission Pursuant to 35 U.S.C. § 301 and 37 C.F.R. § 1.501 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,579,802
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`that the scope of that claim limitation is such that it would encompass that feature
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`or functionality. (See Ex. 1033.)
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`An explanation of the pertinence of these statements and how to apply them
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`to independent claims 1, 7 and 14 (and their dependent claims, claim 6 (dependent
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`on claim 1) and claims 8-9 (dependent on claim 7)) of the ’802 Patent, as required
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`by 37 C.F.R. § 1.501(b)(1), may be found in Sections IV.C (claim construction),
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`V.C (summary of invalidity positions) and V.E (detailed invalidity claim charts) of
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`the Petition. In that Petition, Petitioners note that UUSI has taken the position that
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`a Hall effect sensor that indirectly monitors window movement by monitoring the
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`rotation of a motor coupled to the window satisfies the “sensor” limitations of the
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`Challenged Claims. See Ex. 1033 at 14-16, 26-28, and 34-35.
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`Ground 2 in the Petition asserts that Itoh anticipates the Challenged Claims
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`under the apparent constructions advocated by UUSI. In its infringement
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`positions, UUSI takes the position that a system that does not de-active the motor
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`in response to an obstacle, but instead reverses the motor, falls within the “de-
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`activate” and “stopping” limitations of the Challenged Claims. See Ex. 1033 at 13-
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`14, 18-19, 25-26, 32-34 and 39.
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`4
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`Submission Pursuant to 35 U.S.C. § 301 and 37 C.F.R. § 1.501 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,579,802
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`Respectfully submitted,
`
` /
`
` Craig D. Leavell /
`Craig D. Leavell (Reg. No. 48505)
`Alyse Wu (Reg. No. 68926)
`KIRKLAND & ELLIS LLP
`300 North LaSalle Street
`Chicago, Illinois 60654
`P: 312.862.2000; F: 312.862.2200
`craig.leavell@kirkland.com
`alyse.wu@kirkland.com
`Attorneys For Petitioner
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`5
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`Date: February 6, 2014
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`Submission Pursuant to 35 U.S.C. § 301 and 37 C.F.R. § 1.501 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,579,802
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Submission
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`Pursuant to 35 U.S.C. § 301 and C.F.R. § 1.501 in Support of Petition for Inter
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`Partes Review of U.S. Patent No. 7,579,802 was served on February 6, 2014 via
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`Federal Express upon the following:
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`Correspondence Address of Record
`Stephen J. Schultz
`TAROLLI, SUNDHEIM, COVELL & TUMMINO L.L.P.
`1300 East Ninth Street, Suite 1700
`Cleveland, Ohio 44114
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`Attorney of Record for U.S. Pat. No. 7,579,802
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`A copy was also served via electronic mail upon the following:
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`Litigation Counsel
`George D. Moustakas
`HARNESS, DICKEY & PIERCE, P.L.C.
`5445 Corporate Drive, Suite 200
`Troy, Michigan 48098
`gmoustakas@hdp.com
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`Attorney for UUSI, LLC, d/b/a Nartron,
`Case No. 2:13-cv-10444 (E.D. Mich.)
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`Submission Pursuant to 35 U.S.C. § 301 and 37 C.F.R. § 1.501 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 7,579,802
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`By:
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`/ Ellen DeBatty /
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`Ellen DeBatty
`Legal Assistant
`KIRKLAND & ELLIS LLP
`300 North LaSalle Street
`Chicago, Illinois 60654
`Telephone: (312) 862-2000
`Facsimile: (312) 862-2200
`ellen.debatty@kirkland.com
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