`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In the Inter Partes Review of:
`
`
`U.S. Patent No. 7,579,802
`
`
`Filed: January 27, 2004
`
`Issued: August 25, 2009
`
`Inventor(s): Mario Boisvert, Randall
` Perrin, John Washeleski
`
`Assignee: UUSI, LLC
`
`Title: Collision Monitoring System
`
`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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`
`
`
`
`
`
`
`
`
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`Panel: To Be Assigned
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`
`
`PETITION FOR INTER PARTES REVIEW UNDER 37 C.F.R. § 42.100
`
`
`
`

`

`
`
`TABLE OF CONTENTS
`
`PAGE
`
`
`I. MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8(a)(1) ............ 1
`A.
`37 C.F.R. § 42.8(b)(1): Real Party-In-Interest ...................................... 1
`B.
`37 C.F.R. § 42.8(b)(2): Related Matters ............................................... 1
`C.
`37 C.F.R. § 42.8(b)(3): Lead and Back-Up Counsel and Service
`Information ............................................................................................ 1
`PAYMENT OF FEES PURSUANT TO 37 C.F.R. § 42.103 ......................... 2
`II.
`III. GROUNDS FOR STANDING PURSUANT TO 37 C.F.R.
`§ 42.104(a) ....................................................................................................... 2
`IDENTIFICATION OF CHALLENGE PURSUANT TO 37 C.F.R.
`§ 42.104(b) ....................................................................................................... 3
`37 C.F.R. § 42.104(b)(1): Claims for Which Inter Partes
`A.
`Review Is Requested ............................................................................. 3
`37 C.F.R. § 42.104(b)(2): The Specific Art and Statutory
`Ground(s) on Which the Challenge Is Based ........................................ 3
`37 C.F.R. § 42.104(b)(3): How the Challenged Claims Are to
`Be Construed ......................................................................................... 4
`“a controller . . . for determining to de-activate the
`1.
`motor” (claim 1); “a signal . . . for stopping the motor”
`(claim 7); and “de-activating the motor” (claim 14) .................. 5
`“a movement sensor for monitoring movement of the
`object (claim 7) and “a sensor for sensing movement of a
`window or panel” (claim 14) ...................................................... 6
`37 C.F.R. § 42.104(b)(4): How the Construed Claims are
`Unpatentable Under the Statutory Grounds Identified ......................... 8
`37 C.F.R. § 42.104(b)(5): Evidence Supporting Petitioner’s
`Challenge ............................................................................................... 8
`
`IV.
`
`B.
`
`C.
`
`2.
`
`D.
`
`E.
`
`i
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`

`

`
`
`V.
`
`D.
`E.
`
`THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST
`ONE OF THE CHALLENGED CLAIMS IS UNPATENTABLE. ................ 8
`A. Description of the Alleged Invention of the ’802 Patent ...................... 8
`B.
`Summary of the Prosecution History of the ’802 Patent .................... 10
`C.
`Summary of Invalidity Arguments ...................................................... 14
`1.
`Summary of Itoh ....................................................................... 14
`2.
`Summary of Kinzl ..................................................................... 23
`Identification of the References as Prior Art ....................................... 27
`Claim-By-Claim Explanation of Grounds for Unpatentability
`and Claim Charts ................................................................................. 27
`Ground 1: Claims 1, 6-9, and 14 are Obvious under 35 U.S.C.
`§ 103(a) over over Itoh in View of the Ordinary Skill in
`the Art. ...................................................................................... 28
`Ground 2: Under the Apparent Constructions Advocated by
`UUSI, Claims 1, 6-9, and 14 are Anticipated by Itoh ............... 40
`Ground 3: Claims 7, 9, and 14 are Anticipated by Kinzl ................... 43
`Ground 4: Claims 7, 9, and 14 are Obvious under 35 U.S.C.
`§ 103(a) over Kinzl in View of the Ordinary Skill in the
`Art ............................................................................................. 50
`Ground 5: Claims 1, 6-9, and 14 are Obvious under 35 U.S.C.
`§ 103(a) over Itoh in View of the Ordinary Skill in the
`Art and Kinzl. ............................................................................ 52
`Ground 6: Claims 7-9 and 14 are Obvious under 35 U.S.C.
`§ 103(a) over Itoh in View of the Ordinary Skill in the
`Art and Zuckerman. .................................................................. 58
`Ground 7: Claims 7-9 and 14 are Obvious under 35 U.S.C.
`§ 103(a) over Itoh in View of the Ordinary Skill in the
`Art, Kinzl, and Zuckerman. ...................................................... 59
`VI. CONCLUSION .............................................................................................. 60
`
`
`
`ii
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,579,802
`
`On behalf of Brose North America, Inc. (“BNA”) and Brose Fahrzeugteile
`
`GmbH & Co. KG, Hallstadt (“Brose”) and in accordance with 35 U.S.C. § 311 and
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`37 C.F.R. § 42.100, inter partes review is respectfully requested for claims 1, 6-9,
`
`and 14 (“the Challenged Claims”) of U.S. Patent No. 7,579,802 (“the ’802
`
`Patent”), attached hereto as Exhibit 1005.
`
`I. MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8(A)(1)
`Pursuant to 37 C.F.R. § 42.8(a)(1), the mandatory notices identified in 37
`
`C.F.R. § 42.8(b) are provided below as part of this Petition.
`
`37 C.F.R. § 42.8(b)(1): Real Party-In-Interest
`
`A.
`BNA and Brose are the real parties-in-interest for Petitioner.
`
`37 C.F.R. § 42.8(b)(2): Related Matters
`
`B.
`UUSI, LLC (“UUSI”) has asserted the ’802 Patent in two pending lawsuits:
`
`• 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, and served on Bosch
`
`and BNA on February 7, 2013.
`
`• UUSI, LLC v. Webasto Roof Sys., Inc., No. 2:13-cv-11704 (E.D. Mich.)
`
`(“UUSI v. Webasto”), filed April 15, 2013, and served April 16, 2013.
`
`C.
`
`37 C.F.R. § 42.8(b)(3): Lead and Back-Up Counsel and Service
`Information
`
`Brose provides the following designation of counsel:
`
`
`
`1
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,579,802
`
`Lead Counsel
`Craig D. Leavell (Reg. No. 48505)
`craig.leavell@kirkland.com
`Postal and Hand-Delivery Address:
`KIRKLAND & ELLIS LLP
`300 North LaSalle Street
`Chicago, Illinois 60654
`Telephone: (312) 862-2000
`Fax: (312) 862-2200
`
`Pursuant to 37 C.F.R. § 42.10(b), Powers of Attorney accompany this
`
`Back-up Counsel
`Alyse Wu (Reg. No. 68926)
`alyse.wu@kirkland.com
`Postal and Hand-Delivery Address:
`KIRKLAND & ELLIS LLP
`300 North LaSalle Street
`Chicago, Illinois 60654
`Telephone: (312) 862-2000
`Fax: (312) 862-2200
`
`Petition. Please address all correspondence to lead and back-up counsel at the
`
`address above. Petitioners also consent to service by email.
`
`II.
`
`PAYMENT OF FEES PURSUANT TO 37 C.F.R. § 42.103
`
`The undersigned authorizes the Office to charge the fee set forth in 37
`
`C.F.R. § 42.15(a) for this Petition to Deposit Account No. 506092. Review of six
`
`(6) claims is requested, so no excess claim fees are required. The undersigned
`
`further authorizes payment for any additional fees that might be due in connection
`
`with this Petition to be charged to the above-referenced Deposit Account.
`
`III. GROUNDS FOR STANDING PURSUANT TO 37 C.F.R. § 42.104(A)
`Petitioners certify that the ’802 Patent is available for inter partes review
`
`and that neither is barred nor estopped from requesting inter partes review of the
`
`Challenged Claims on the grounds identified herein. Specifically, Petitioners
`
`certify that (1) neither is the owner of the ’802 Patent; (2) neither BNA nor Brose
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`(or any real party-in-interest) has filed a civil action challenging the validity of any
`
`
`
`2
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,579,802
`
`claim of the ’802 Patent; (3) this Petition is filed less than one year after the date
`
`on which a Petitioner, any real party-in-interest, or a privy of a Petitioner was
`
`served with a complaint alleging infringement of the ’802 Patent; (4) the estoppel
`
`provisions of 35 U.S.C. § 315(e)(1) do not prohibit this inter partes review; and
`
`(5) this Petition is filed after the date of grant of the ’802 Patent.
`
`IV.
`
`IDENTIFICATION OF CHALLENGE PURSUANT TO 37 C.F.R.
`§ 42.104(B)
`
`Petitioners request that claims 1, 6-9, and 14 of the ’802 Patent be found
`
`unpatentable.
`
`A.
`
`37 C.F.R. § 42.104(b)(1): Claims for Which Inter Partes Review Is
`Requested
`
`Petitioners request inter partes review of claims 1, 6-9, and 14 of the ’802
`
`Patent.
`
`B.
`
`37 C.F.R. § 42.104(b)(2): The Specific Art and Statutory
`Ground(s) on Which the Challenge Is Based
`Inter partes review of the Challenged Claims is requested in view of the
`
`following prior art: (1) U.S. Patent No. 4,870,333 to Itoh et al. (“Itoh”)
`
`(Ex. 1007); (2) U.S. Patent No. 4,468,596 to Kinzl et al. (“Kinzl”) (Ex. 1008); and
`
`(3) United States Patent No. 5,069,000 to Zuckerman (“Zuckerman”) (Ex. 1009).
`
`The particular references that render each Challenged Claim invalid, and the
`
`statutory basis for invalidity, are as follows:
`
`
`
`
`
`3
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,579,802
`
`Ground
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`
`C.
`
`Proposed Statutory Rejections for the ’802 Patent
`Claims 1, 6-9, and 14 are invalid as obvious under 35 U.S.C. § 103(a)
`over Itoh in view of the ordinary skill in the art.
`Claims 1, 6-9, and 14 are anticipated under 35 U.S.C. § 102 (b) by
`Itoh under the apparent constructions advocated by UUSI.
`Claims 7, 9, and 14 are anticipated under 35 U.S.C. § 102 (b) by
`Kinzl.
`Claims 7, 9, and 14 are invalid as obvious under 35 U.S.C. § 103(a)
`over Kinzl in view of the ordinary skill in the art.
`Claims 1, 6-9, and 14 are invalid as obvious under 35 U.S.C. § 103(a)
`over Itoh in view of the ordinary skill in the art and Kinzl.
`Claims 7-9 and 14 are invalid as obvious under 35 U.S.C. § 103(a)
`over Itoh in view of the ordinary skill in the art and Zuckerman.
`Claims 7-9 and 14 are invalid as obvious under 35 U.S.C. § 103(a)
`over Itoh in view of the ordinary skill in the art, Kinzl, and
`Zuckerman.
`
`37 C.F.R. § 42.104(b)(3): How the Challenged Claims Are to Be
`Construed
`
`An unexpired claim subject to inter partes review “shall be given its
`
`broadest reasonable construction in light of the specification of the patent in which
`
`it appears.” 37 C.F.R. § 42.100(b). However, the ’802 Patent will expire in
`
`November, 2014, prior to the date on which any IPR initiated based on this petition
`
`is expected to conclude. Therefore, consistent with MPEP § 2217 and Innolux
`
`Corp. v. Semiconductor Energy Lab. Co. Ltd., IPR2013-00065, Paper 11, 10
`
`(Apr. 30, 2013), Petitioners provide information about how the claims are to be
`
`construed based upon the standard set forth in Phillips v. AWH Corp., 415 F.3d
`
`
`
`4
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,579,802
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`1303, 1316 (Fed. Cir. 2005).1 Evidence supporting these constructions includes
`
`the infringement positions taken by the patent owner, UUSI, in its Federal Court
`
`litigation against BNA. 35 U.S.C. § 301(a)(2); 37 C.F.R. § 1.501. Attached as
`
`Exhibit 1003 is Brose’s Submission Pursuant to 35 U.S.C. § 301 and 37 C.F.R.
`
`§ 1.501 in support of this Petition. Petitioners submit, for purposes of this IPR
`
`only, the following proposed constructions:
`
`1.
`
`“a controller . . . for determining to de-activate the motor”
`(claim 1); “a signal . . . for stopping the motor” (claim 7);
`and “de-activating the motor” (claim 14)
`
`Petitioners propose that these three phrases should be given their plain
`
`meanings and construed to require de-activating/stopping the motor. Such a
`
`construction would exclude a system that immediately reverses the motor without
`
`first deactivating/stopping the motor. The 1992 application to which the ‘802
`
`Patent claims priority discloses “de-energizing” the motor, and distinguishes
`
`reversing the motor, which it says might be impossible at higher speeds. (Ex. 1031
`
`at 6:64-7:2). Such a construction is consistent with how one of skill in the art
`
`would understand this term. (Ex. 1001, ¶ 57.) This construction is also supported
`
`by the ’802 Patent’s specification, which distinguishes (and even disparages) an
`
`approach of immediately reversing (without first deactivating/stopping) the motor
`
`1 If instead the “broadest reasonable construction” standard were to be applied,
`
`the Challenged Claims are also invalid under such broader constructions.
`
`
`
`5
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,579,802
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`in response to an obstacle. (Ex. 1005 at 3:44-57 (describing “motor plugging,”
`
`“which is the application of reserve drive polarity while a motor is still rotating” as
`
`“unnecessary” and “undesirable” due to “undesired motor heating,” because it is
`
`“detrimental to the life and reliability” of the electrical switching components, and
`
`because it “can also cause undesirable transients, trip breakers, and blow fuses in a
`
`power supply system”).)
`
`Moreover, a review of the patentee’s other, earlier patents shows that the
`
`patentee knew how to recite the broader concept of altering the motor operation.
`
`(Ex. 1010, ’165 Patent, at Claims.) Therefore, by choosing to use the word “de-
`
`activate” or “stopping” in the Challenged Claims, the patentee meant to exclude a
`
`system that immediately reverses (without first de-activating/stopping) the motor
`
`upon detection of an obstacle and must be held to its choice.
`
`2.
`
`“a movement sensor for monitoring movement of the object
`(claim 7) and “a sensor for sensing movement of a window
`or panel” (claim 14)
`
`Petitioners propose that these phrases should be construed to include both
`
`direct and indirect sensing of the window/panel movement, and not limited to just
`
`direct sensing. The 1992 application to which the ’802 Patent claims priority
`
`discloses Hall sensors, as well as explaining that other types of sensors could be
`
`used. (Ex. 1020 at 1:61-63 and 3:49-52.) This construction is also supported by the
`
`’802 Patent’s specification, which discloses both types of sensors: (1) sensors that
`
`
`
`6
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,579,802
`
`directly sense movement of the window (Ex. 1005 at 10:16-20), and (2) sensors
`
`that indirectly sense movement of the window by sensing something else, such as
`
`motor rotation. (Id. at 10:4-15.) Such a construction is consistent with how one of
`
`skill in the art would understand this term. (Ex. 1001, ¶ 58.)
`
`The prosecution history further supports such a construction. The Examiner
`
`found that a Hall effect sensor that indirectly monitored movement of the window
`
`(by directly monitoring the rotation of the motor, which is physically coupled to
`
`the window) meets the “sensor” limitation of independent claims 7 and 14
`
`(pending claims 12 and 19). (Ex. 1024 (07/23/2008 Office Action).) The
`
`Examiner also accepted applicant’s assertion, in its August 19, 2008 Response, that
`
`such a Hall effect sensor (“Movement sensor, position encoder” citing column 4,
`
`line 16 of the 1992 specification, which is Ex. 1031) satisfied the “sensor”
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`limitation of claim 7 (pending claim 12), and “op amp 110” (citing column 5, line
`
`19, which discloses a motor current sensor) satisfied the “sensor” limitation of
`
`claim 14 (pending claim 19). (Ex. 1025 at 12, 17-18.)
`
`The patentee also consistently applies a construction where the accused
`
`“sensor” is a Hall effect sensor—that monitors motor rotation—in the UUSI v.
`
`BNA litigation. (Ex. 1033 at 14-16, 26-28, and 34-35.)
`
`
`
`7
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,579,802
`
`D.
`
`37 C.F.R. § 42.104(b)(4): How the Construed Claims are
`Unpatentable Under the Statutory Grounds Identified
`
`A detailed explanation of how the construed Challenged Claims are
`
`unpatentable, including the identification of where each element of the claim is
`
`found in the prior art relied upon, is provided in Section V.E., with claim charts
`
`comparing each Challenged Claim to the prior art in Section V.E. A summary of
`
`how the construed Challenged Claims are unpatentable is provided in Section V.C.
`
`E.
`
`37 C.F.R. § 42.104(b)(5): Evidence Supporting Petitioner’s
`Challenge
`
`An Appendix of Exhibits identifying all exhibits supporting this Petition,
`
`and assigning them exhibit numbers, is attached. Additionally, the relevance of the
`
`evidence to the challenge raised, including identifying specific portions of the
`
`evidence that support the challenge, may be found in Section V.E.
`
`Petitioners submit a declaration of Dr. Art MacCarley (Ex. 1001) in support
`
`of this Petition in accordance with 37 C.F.R. § 1.68.
`
`V. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`OF THE CHALLENGED CLAIMS IS UNPATENTABLE.
`A. Description of the Alleged Invention of the ’802 Patent
`The specification of the ’802 Patent describes a number of systems, methods
`
`and features, many of which were added to the specification over the course of 11
`
`years through three continuations-in-part. Significant portions of specification are
`
`unrelated to the subject matter claimed in the Challenged Claims, but the
`
`
`
`8
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,579,802
`
`specification is generally directed to reducing the risk of personal injury that could
`
`result if a limb (e.g., an arm) is caught by a power-operated device, such as, for
`
`example, during the closing of a power window or sunroof in a vehicle. (Ex. 1001
`
`at 1:30-57 (“Background”) and 1:59-2:22 (“Summary of the Invention”).)
`
`
`
`Independent claim 1 is directed to an apparatus for controlling motion of a
`
`motor driven element in a vehicle (e.g., a power window motor, or a power sunroof
`
`motor) in response to an undesirable resistance (e.g., from an obstacle) and recites
`
`the combination of (a) a sensor for measuring a parameter of the motor, (b) a
`
`memory for storing measurement values from the sensor, and (c) a controller for
`
`determining to de-activate the motor based on both (i) the most recent sensor
`
`measurement, and (ii) immediate past measurement values stored in the memory
`
`and obtained during the present run (e.g., obtained earlier in the present closing
`
`cycle of the window). (Ex. 1005, claim 1.)
`
`Dependent claim 6, which depends from claim 1, requires the “immediate
`
`past measurements of said parameter were taken within a forty millisecond interval
`
`prior to the most recent sensor measurement.” (Ex. 1005, claim 6.)
`
`Independent claim 7 recites (a) a movement sensor for monitoring
`
`movement of the object (e.g., a window), (b) a switch for controlling energization
`
`of the motor, and (c) a controller. The controller determines the motor speed,
`
`calculates a threshold based on motor speed detected during the present run,
`
`
`
`9
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,579,802
`
`compares the present speed to the threshold, and outputs a signal to the switch for
`
`stopping the motor if the comparison indicates an obstacle. (Ex. 1005, claim 7.)
`
`Dependent claim 8 depends from claim 7 and adds the requirement of “a
`
`buffer memory for storing successive values of motor movement for use in
`
`determining the obstacle detect threshold.” (Ex. 1005, claim 8.)
`
`Dependent claim 9 depends from claim 7 and is directed to the details of
`
`how the controller uses a clock to count pulses from the sensor in order to
`
`determine the motor speed. (Ex. 1005, claim 9.)
`
`Independent claim 14 recites (a) a sensor for sensing movement of the object
`
`(e.g., a window), (b) a switch for controlling energization of the motor, and (c) a
`
`controller. The controller monitors a signal from the sensor, calculates a real time
`
`threshold based on a sensor signal detected earlier during the present run, compares
`
`the present signal to the threshold, and outputs a signal to the switch for stopping
`
`movement of the window. (Ex. 1005, claim 14.)
`
`Summary of the Prosecution History of the ’802 Patent
`
`B.
`The ’802 Patent issued August 25, 2009 from U.S. Patent Appl. No.
`
`10/765,487 (“the ’487 Application”) filed January 27, 2004. (Ex. 1001.) The
`
`asserted chain of priority is shown in Exhibit 1034. During prosecution, the
`
`Challenged Claims were numbered as follows:
`
`
`
`10
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,579,802
`
`(Issued) Challenged Claim
`
`Pending Claim During
`Prosecution
`
`Independent claim 1
` Dependent claim 6
`Independent claim 7
` Dependent claim 8
` Dependent claim 9
`Independent claim 14
`
`Claim 1
`Claim 36
`Claim 12
`Claim 13
`Claim 14
`Claim 19
`
`In the first Office Action, the Examiner rejected all pending claims (1-35) as
`
`anticipated by Wang (effectively filed August 30, 1995). (Ex. 1013.) In a May 31,
`
`2006 submission, applicant argued that Wang was not prior art because all pending
`
`claims were supported by applicant’s April 22, 1992 application (serial no.
`
`07/872,190, which issued as U.S. Patent No. 5,334,876, Ex. 1031). (Ex. 1014.)
`
`The Examiner then rejected all pending claims as anticipated or rendered
`
`obvious by Jones et al. (Ex. 1015.) In a December 13, 2006 Response, applicant
`
`amended some claims, canceled a claim, and added new claims 36-37. (Ex. 1016.)
`
`The Challenged Claims were treated as follows:
`
`December 13, 2006 Amendment
`
`Pending
`(Issued) Challenged
`Claim
`Claim
`Independent claim 1 Claim 1 Added limitations, including requiring
`“immediate past” measurements from a
`“present traversal”
` Dependent claim 6 Claim 36 Newly added
`Independent claim 7 Claim 12 Added limitations, including requiring the
`threshold be based on “a present run”
` Dependent claim 8 Claim 13 Not itself amended, but depended from
`amended pending claim 12
`
`
`
`11
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,579,802
`
` Dependent claim 9 Claim 14 Not itself amended, but depended from
`amended pending claim 12
`Independent claim 14 Claim 19 Added limitations, including requiring the
`threshold be based on “movement along a
`present or current path of travel”
`
`The Examiner then rejected all claims as obvious over Jones et al. in view of
`
`Wrenbeck et al., which teaches the use of immediate past measurements in a power
`
`window obstacle detection apparatus. (Ex. 1017.) An interview followed, during
`
`which applicant’s priority date was discussed. (Ex. 1018.) In a June 20, 2007
`
`Response, applicant argued that Wrenbeck et al. was not prior art. (Ex. 1019.)
`
`The Examiner agreed that Wrenbeck et al. was not prior art, but then
`
`rejected all claims, relying primarily on Okuyama et al., which pre-dates
`
`applicant’s 1992 filing date. (Ex. 1020.) Applicant then amended certain claims.
`
`(Ex. 1021.) The Challenged Claims were treated as follows:
`
`December 13, 2006 Amendment
`
`(Issued) Challenged
`Claim
`Independent claim 1
`
`Pending
`Claim
`Claim 1 Added limitations, including requiring
`values be “present run” values.
` Dependent claim 6 Claim 36 Not itself amended, but depended from
`amended pending claim 1.
`Claim 12 Not amended.
`Independent claim 7
` Dependent claim 8 Claim 13 Not amended.
` Dependent claim 9 Claim 14 Not amended.
`Independent claim 14
`Claim 19 Added limitations, including that the
`threshold be calculated based on a signal
`detected during movement along a present
`or current run through a path of travel.
`
`
`
`12
`
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`Petition for Inter Partes Review of U.S. Patent No. 7,579,802
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`Applicant argued that Okuyama et al. did not anticipate because the relevant values
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`in that reference were based on “training data stored by the controller during a
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`previous run” as opposed to being “real time data obtained during a present run of
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`the window or panel.” (Ex. 1021 at 12-13.)
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`The Examiner then indicated that most pending claims (including each of the
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`Challenged Claims) were allowable, but maintained the rejection of three pending
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`claims (claims 33-35) as anticipated by Okuyama et al. (Ex. 1022.) Applicant
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`filed a Request for Continued Examination and an Amendment dated June 5, 2008,
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`in which rejected claims 33-35 were cancelled. (Ex. 1023.) The Examiner then
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`rejected all pending claims as obvious over Okuyama et al. in view of Bamford
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`(EP 0 581 509), relying on Bamford for the “immediate past” and “present run”
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`limitations. (Ex. 1024.) In an August 19, 2008 response, applicant argued that
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`Bamford was not prior art. (Ex. 1025.)
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`After another interview (Ex. 1026 is the Examiner’s Summary and Ex. 1027
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`is the applicant’s Response), most claims were allowed, but others were again
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`rejected as obvious over Okuyama et al. in view of Bamford. (Ex. 1028.)
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`Applicant then cancelled the rejected claims (other than claim 36, which applicant
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`Petition for Inter Partes Review of U.S. Patent No. 7,579,802
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`explained was dependent on claim 1 and thus allowable in connection with claim
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`1), (Ex. 1029), and the application was allowed. (Ex. 1030.)2
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`C.
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`Summary of Invalidity Arguments
`1.
`Itoh, which issued in 1989, was disclosed to the Examiner during
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`Summary of Itoh
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`prosecution of the ’802 Patent, but was never discussed in any Office Action.
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`1. Itoh and Claim 1
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`Itoh includes detailed descriptions of multiple embodiments. Embodiment
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`3, which is described in detail beginning in Column 7 of the specification, is the
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`most relevant embodiment. Specifically, Itoh discloses a controller (32) with a
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`CPU (34) for controlling operation of a motor (20) for a power window in a
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`vehicle. (Ex. 1007 at 7:53-8:9 and Fig. 7.) The controller/CPU controls the motor
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`via motor driving circuit 28. (Id.) Motor driving circuit 28 switches the motor,
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`controlling the direction of rotation of the motor and controlling whether the motor
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`is on or off. (Id. at 7:57-59, 7:67-8:11, 11:16-19, 11:48-50; Figure 5 (showing
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`“pulse counter clearing” 113 and “pulse counter resetting” 111); Figure 6 (showing
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`“Ascending Action” and resulting decrement or increment of the pulse counter);
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`2 Rather than continue to argue that Bamford was not prior art, applicant
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`cancelled the rejected claims, copied them into another application, and
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`convinced the Examiner that Bamford was not prior art. (Ex. 1032 at 8.)
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`Petition for Inter Partes Review of U.S. Patent No. 7,579,802
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`Figure 8 (showing how the timer interruption signal will control the pulse
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`counting).) The switching of the motor (and the resulting counting of the window
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`position) will be in response to both the disclosed algorithm, as well as the user
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`control switches shown in Figure 7 as “Switch Panel” 38.
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`Itoh’s Embodiment 3 includes a sensor (30) as a pulse-detecting circuit,
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`from which the CPU 34 detects a position of the window in accordance with a
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`counter 36, which counts the pulses and compares the count to a map 46 stored in
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`memory as the window moves along its path. (Id. at 8:10-16.) The sensor is
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`disclosed as a motor current ripple counter, which is used to detect both window
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`movement and speed. (Id. at 5:6-10, 8:33-48; 9:16-34 (position), 9:37-62 (speed).)
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`Itoh’s “CPU 34 detects at all times whether or not an obstacle 48 is caught
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`between the window frame 24 and the window 26 in accordance with the flow
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`chart shown in FIG. 5.” (Id. at 49-52.) Itoh detects an obstacle by storing a
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`number of “n” immediately prior speed values in a FIFO-type memory (Id. at 12-
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`17, Fig. 9), then calculating the average (Tm) of those speed values (Id. at 10:36-
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`44), then calculating the rate-of-change of motor speed (Tp/Tm, where Tp is the
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`instant motor speed value), and comparing that rate-of-change to a predetermined
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`threshold (α). (Id. at 10:61-66.) If the rate-of-change of the speed (Tp/Tm)
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`exceeds the α threshold, the CPU issues a signal to the driving circuit 28 to make
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`the motor reverse direction and the window to descend/open. (Id. at 11:20.)
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`Petition for Inter Partes Review of U.S. Patent No. 7,579,802
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`In the detailed description of Embodiment 3, Itoh discloses that, in response
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`to an obstacle, its CPU will output a signal to reverse the motor. (Id. at 11:16-20.)
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`But Itoh elsewhere discloses the idea of deactivating the motor. In the Summary of
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`the Invention, Itoh teaches deactivating the motor, without reversing the motor, if
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`the motor speed exceeds a threshold and the window is “near to the closed
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`position.” (Id. at 3:52-60.) Itoh also teaches that “it is possible to stop the opening
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`or closing action of the window at a halfway, or possible to convert the action of
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`the window in the reverse direction.” (Id. at Abstract.)
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`Accordingly, even though the detailed description of Embodiment 3
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`discloses reversing the motor, Itoh elsewhere teaches the concept of deactivating
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`the motor, and one of skill in the art would readily recognize that those teachings
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`could be applied to Embodiment 3 in order to de-activate the motor, rather than (or
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`prior to) reversing the motor, in response to obstacle detection. (See Ex. 1001, ¶¶
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`91, 96-99.)
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`In addition, it was well within the ordinary skill in the art, and was a routine
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`design choice, as to how to respond to an obstacle condition, including at least the
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`options of (i) stopping/deactivating the window motor, (ii) stopping/deactivating
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`and then reversing the window motor, or (iii) reversing the window motor without
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`first stopping/deactivating the motor. (See Ex. 1001, ¶¶ 91, 96-99.) To the extent
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`a reference is necessary to support the obviousness of this routine design choice,
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`Petition for Inter Partes Review of U.S. Patent No. 7,579,802
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`Kinzl discloses the idea of deactivating the motor in response to an obstacle.
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`(Ex. 1008 at 2:24-30 and 3:21-49; Ex. 1001, ¶¶ 91, 96-99.)
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`b. Itoh and Dependent Claim 6
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`Regarding dependent claim 6, which depends from independent claim 1, and
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`recites details about the time interval (40 ms) within which the “immediate past
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`measurements of said parameter are taken,” Itoh discloses this limitation. Itoh uses
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`immediate past measurements measured by a clock running at 0.1 msec. The clock
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`takes measurements at a rate between 0.4 msec and 0.8 msec, according to Figure
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`8. Itoh discloses that, in experiments, the measurements were taken at 1.2 msec at
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`maximum speed. (Ex. 1007 at 9:63-68.) Thus, 33 measurements would be taken
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`within 40 ms (40/1.2 = 33.3). Itoh leaves it as a design choice how many
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`immediately past measurements are used, but suggests at least 4 or 5. (Id. at
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`10:40-45; Fig. 9.) (See also, Ex. 1001, ¶ 107.)
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`During prosecution of the ’802 Patent, the Examiner found that the 40 ms
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`timeframe, although not disclosed in the cited Okuyama reference, was obvious to
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`one having ordinary skill in the art, “since it has been held that where the general
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`conditions of a claim are disclosed in the prior art, discovering the optimum or
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`workable ranges involves only routine skill in the art. (Ex. 1024, 07/23/08 Office
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`Action at 8 (citing In re Aller, 105 USPQ 233). The same is true in the context of
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`Itoh. (See Ex. 1001, ¶ 109.)
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`Petition for Inter Partes Review of U.S. Patent No. 7,579,802
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`In the preferred embodiment disclosed in the 1992 specification (on which
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`applicant relied for priority), the design is such that 20 measurements would be
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`taken within 40 ms and the threshold equation would use a single value from 40 ms
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`ago. (Ex. 1031 at 6:46-63.) In Itoh, even at very low motor speeds, several
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`immediately preceding values, taken within 40 ms, are used in the obstacle
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`detection equation, even if not all the values used are from within that time frame.
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`(See Ex. 1001, ¶ 108.)
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`c. Itoh and Claim 7
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`Regarding claim 7, the threshold (α) in Itoh is described as a constant,
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`whereas claim 7 recites that the obstacle detect threshold is calculated “based on
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`motor speed of movement detected during a present run,” and then recites that an
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`obstacle is detected by “compar[ing] the currently sensed motor speed of
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`movement with the obstacle detect threshold.” However, upon closer review, the
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`equation disclosed in Itoh is mathematically identical to approach recited in claim
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`7. Itoh’s equation is