`
`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 IPR2014-00417
`Patent 7,579,802
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2014-00417
`Patent No. 7,579,802
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ................................................................... 3
`
`II.
`
`TRIAL SHOULD NOT BE INSTITUTED FOR PETITIONER’S
`
`FAILURE TO SET FORTH A PRIMA FACIE SHOWING ......................... 4
`
`A. GROUNDS 1, 2, 5, 6, AND 7 ........................................ 4
`
`1. GROUND 2 ...................................................... 5
`
`A)
`
`B)
`
`C)
`
`D)
`
`CLAIM LIMITATIONS ................................. 5
`
`“MOVEMENT SENSOR” ............................. 5
`
`(1)
`
`(2)
`
`‘802 SPECIFICATION....................... 6
`
`‘802 PROSECUTION HISTORY .......... 8
`
`(3) CLAIM DIFFERENTIATION ................. 9
`
`DEFICIENCIES OF ITOH ........................... 10
`
`ITOH CANNOT ANTICIPATE CLAIMS 7-9 ..... 11
`
`2. GROUND 1 .................................................... 12
`
`3. GROUND 5 .................................................... 12
`
`4. GROUND 6 .................................................... 13
`
`5. GROUND 7 .................................................... 14
`
`B. GROUND 3 ............................................................. 14
`
`1.
`
`2.
`
`3.
`
`CLAIM LIMITATIONS ........................................ 15
`
`DEFICIENCIES OF KINZL .................................. 15
`
`KINZL CANNOT ANTICIPATE CLAIMS 7 AND 9 ...... 17
`
`III. CONCLUSION ................................................................... 18
`
`
`
`
`
`
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`Page 2 of 19
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`Case IPR2014-00417
`Patent No. 7,579,802
`
`Pursuant to 35 U.S.C. § 313 and 37 C.F.R. § 42.107, Patent
`
`Owner UUSI, LLC (“UUSI”) submits the following Preliminary Re-
`
`sponse to the Petition for Inter Partes Review of Patent No. 7,579,802
`
`(“the ‘802 patent”).
`
`I.
`
`INTRODUCTION
`
`The Corrected Petition (Paper No. 6, “Petition”) for inter partes
`
`review of the ‘802 patent should be denied at least in part. The Peti-
`
`tioner does not meet its prima facie burden in establishing anticipa-
`
`tion, failing to establish a reasonable likelihood that the applied refer-
`
`ences teach each and every limitation of the ‘802 patent claims. Peti-
`
`tioner’s other proposed anticipation grounds shall also fail, but these
`
`more substantive issues will be later addressed if the inter partes ac-
`
`tion proceeds.
`
`Although the Petitioner does not meet its burden in establishing
`
`a reasonable likelihood of obviousness with respect to the challenged
`
`claims, UUSI will address the deficiencies of the obviousness grounds
`
`as may be necessary and appropriate if inter partes review is institut-
`
`ed. In other words, this Preliminary Response simply refutes the
`
`clearest alleged grounds of unpatentability asserted by Petitioner
`
`without requiring a full substantive claim-by-claim analysis; the Pa-
`
`Page 3 of 19
`
`
`
`tent Owner shall challenge the Petitioner’s other grounds at a later
`
`time.
`
`Case IPR2014-00417
`Patent No. 7,579,802
`
`II.
`
`TRIAL SHOULD NOT BE INSTITUTED FOR PETITIONER’S
`
`FAILURE TO SET FORTH A PRIMA FACIE SHOWING
`
`A. GROUNDS 1, 2, 5, 6, AND 7
`
`With respect to Ground 2, the Petition fails to establish a rea-
`
`sonable likelihood that Claims 7-9 are anticipated by Patent No.
`
`4,870,333 (“Itoh”, Ex. 1007).
`
`With respect to Ground 1, the Petition fails to establish a rea-
`
`sonable likelihood that Claims 7-9 are obvious over Itoh in view of
`
`ordinary skill in the art.
`
`With respect to Ground 5, the Petition fails to establish a rea-
`
`sonable likelihood that Claims 7-9 are obvious over Itoh in view of
`
`ordinary skill in the art and Patent No. 4,468,596 (“Kinzl”, Ex. 1008).
`
`With respect to Ground 6, the Petition fails to establish a rea-
`
`sonable likelihood that Claims 7-9 are obvious over Itoh in view of
`
`ordinary skill in the art and Patent No. 5,069,000 (“Zuckerman”, Ex.
`
`1009).
`
`Page 4 of 19
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`
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`Case IPR2014-00417
`Patent No. 7,579,802
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`With respect to Ground 7, the Petition fails to establish a rea-
`
`sonable likelihood that Claims 7-9 are obvious over Itoh in view of
`
`ordinary skill in the art, Kinzl, and Zuckerman.
`
`1. GROUND 2
`
`a) CLAIM LIMITATIONS
`
`Claim 7 recites “a movement sensor for monitoring movement
`
`of the object as the motor moves said object along a travel path.” Ex.
`
`1005 at 28:26-27.
`
`b)
`
`“MOVEMENT SENSOR”
`
`The term “movement sensor” in Claim 7 contrasts with the term
`
`“sensor” used in independent Claims 1 and 14, which respectively re-
`
`cite “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”
`
`(Ex. 1005 at 27:34-37) and “a sensor for sensing movement of a win-
`
`dow or panel along a travel path” (Ex. 1005 at 29:20-21).
`
`The specification and prosecution history of the ‘802 patent ex-
`
`plain that there is a distinction between measuring current, which is
`
`often referred to as “sensorless” motor control, and sensing movement
`
`of the motor or window using a specialized sensor, such as a Hall ef-
`
`Page 5 of 19
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`
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`Case IPR2014-00417
`Patent No. 7,579,802
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`fect sensor. Both types of motor control are described in the specifica-
`
`tion, but Claim 7 is limited to the specialized sensor embodiment, ex-
`
`cluding the embodiment that uses a “sensorless” ability to measure
`
`current. This distinction is supported by the specification of the ‘802
`
`patent, its prosecution history, and the doctrine of claim differentia-
`
`tion.
`
`(1)
`
`‘802 SPECIFICATION
`
`Claim 7 recites a specialized sensor, which is consistent with
`
`the specification of the ‘802 patent. The specification additionally de-
`
`scribes that, in some embodiments, current sensing may be “signifi-
`
`cantly simpler and less costly than alternate well-known methods of
`
`sensing position using specialized sensors such as incremental encod-
`
`ers, absolute encoders, and resolvers.” Ex. 1005 at 11:17-20. Although
`
`“sensorless” current measuring may be preferred when cost is a factor,
`
`the ‘802 further patent describes reasons why a “movement sensor” as
`
`recited in Claim 7 is preferred in some situations:
`
`Sensorless electronic sensing of motor current commu-
`
`tation pulses is the preferred low cost method of motor
`
`rotor movement disclosed herein in fair detail. In cer-
`
`tain circumstances, it may be preferable to use alterna-
`
`tive absolute and/or incremental position sensing by at
`
`Page 6 of 19
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`
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`Case IPR2014-00417
`Patent No. 7,579,802
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`least one hardware sensor means. Such circumstances
`
`that might lead to the choice to implement position
`
`sensing via hardware sensors include: 1) desire to
`
`sense a greater number of encoder pulses per motor ro-
`
`tor revolution than produced by motor commutation
`
`segments to enable faster obstacle detection per time
`
`and/or per rotation; 2) high electrical noise environ-
`
`ment that makes it difficult to maintain high accuracy
`
`of position count from electronic sensing of encoder
`
`pulses; 3) actuator mechanisms that potentially allow
`
`mechanical windup and/or jitter that mechanically
`
`feeds back to the motor rotor allowing production of
`
`rotor electronic pulses representing ostensible actuator
`
`motion and/or motion in the incorrect sense; and 4)
`
`systems for which it is desired to maintain strict posi-
`
`tion accuracy regardless of electrical noise and me-
`
`chanical disturbances.
`
`Ex. 1005 at 23:49-67.
`
`For reference, the specification of the ‘802 patent notes that the
`
`specialized sensor includes the following:
`
`Alternate position-sensing technologies include per-
`
`manent magnet fields: Hall effect, magnetoresistive,
`
`magnetodiode, magnetotransistor, Wiegand effect, and
`
`variable reluctance; capacitive; optical: Reflective and
`
`blocking; generated inductive magnetic fields: ECKO
`
`Page 7 of 19
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`Case IPR2014-00417
`Patent No. 7,579,802
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`(eddy current killed oscillator), variable inductor, and
`
`variable transformer; and film resistor.
`
`Ex. 1005 at 11:26-32.
`
`(2)
`
`‘802 PROSECUTION HISTORY
`
`In the prosecution history of the ‘802 patent, a response to a
`
`first Office Action provided a claim chart demonstrating support for
`
`the claimed limitations within the earliest priority application, which
`
`issued as the 5,334,876 patent (‘876 patent). Support for the “sensor”
`
`of Claim 1 is described as being provided by an “op amp 110,” which
`
`measures a magnitude of motor current for use in sensorless control.
`
`Ex. 1014, page 14, element 1D. Meanwhile, support for the “move-
`
`ment sensor” of Claim 7 (during prosecution, numbered as Claim 12)
`
`is described as a “Movement sensor, position encoder, col. 4, line 16.”
`
`Ex. 1014, page 17, element 12C.
`
`The position encoder is described in the ‘876 patent at the indi-
`
`cated location as follows: “A position encoder 83 produces the phase
`
`1 and phase 2 signals for monitoring the speed, direction of movement
`
`and position….” Ex. 1031 at 4:16-18. The ‘876 patent further de-
`
`scribes a specialized sensor as follows: “FIG. 5 depicts representative
`
`phase 1 and phase 2 signals from a motor shaft encoder, however,
`
`Page 8 of 19
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`
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`Case IPR2014-00417
`Patent No. 7,579,802
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`other position sensors such as a potentiometer or linear encoder can be
`
`used.” Ex. 1031 at 3:49-52.
`
`Later in the prosecution history of the ‘802 patent, a response to
`
`a further Office Action provided another claim chart demonstrating
`
`support for the claimed limitations within the ‘876 patent. Once again,
`
`the support for “movement sensor” of Claim 7 (Claim 12 during pros-
`
`ecution) was shown as “Movement sensor, position encoder, col 4,
`
`line 16.” Ex. 1019, page 20, element 12C. Thus, the Patent Owner’s
`
`present position on this issue has been consistent and has not been re-
`
`cently contrived for the purposes of litigation or inter partes review.
`
`(3) CLAIM DIFFERENTIATION
`
`The fact that independent Claims 1 and 14 of the ‘802 patent
`
`recite “a sensor” while independent Claim 7, in contrast, recites “a
`
`movement sensor”, creates a presumption that “the movement sensor”
`
`has a different meaning (as described above) than “the sensor.”
`
`The doctrine of claim differentiation stems from "the
`
`common sense notion that different words or phrases
`
`used in separate claims are presumed to indicate that
`
`the claims have different meanings and scope." Alt-
`
`hough the doctrine is at its strongest "where the limita-
`
`tion sought to be 'read into' an independent claim al-
`
`Page 9 of 19
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`
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`Case IPR2014-00417
`Patent No. 7,579,802
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`ready appears in a dependent claim," there is still a
`
`presumption that two independent claims have differ-
`
`ent scope when different words or phrases are used in
`
`those claims.
`
`Seachange Intl., Inc., v. C-Cor Inc., 413 F.3d 1361, 1368-1369 (Fed.
`
`Cir. 2005) (internal citations omitted). For at least the above reasons,
`
`while “the sensor” of Claims 1 and 14 may encompass current meas-
`
`urement, “the movement sensor” of Claim 7 requires a specialized
`
`sensor.
`
`c) DEFICIENCIES OF ITOH
`
`The Petition has not set forth a prima facie basis of anticipation
`
`of independent Claim 7 since the claimed “movement sensor” is not
`
`disclosed in Itoh.1 In contrast, Itoh explicitly excludes any specialized
`
`sensor from the disclosed embodiments.
`
`Furthermore, in this embodiment the number of rota-
`
`tions of the motor 20 is counted by the counter 36,
`
`whereby the position of the window 26 is detected and
`
`a sensor is never mounted in the part of transmission
`
`mechanism including the motor's own body, so that it
`
`
`
`1 It is noteworthy that Itoh was already considered by the Examiner
`during the prosecution of the ‘802 Patent.
`
`Page 10 of 19
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`
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`Case IPR2014-00417
`Patent No. 7,579,802
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`is possible to reduce the cost and remain free from var-
`
`ious restrictions.
`
`Ex. 1007 at 12: 32-38 (emphasis added). As another example, see the
`
`following passage of Itoh: “Also in this flow chart, it is possible to de-
`
`tect the squeezing of obstacles in an early stage and it is possible to
`
`prevent damage or injury of the squeezed obstacle without providing a
`
`special sensor.” Ex. 1007 at 13:58-61 (emphasis added).
`
`The declaration of Dr. Arthur MacCarley (“MacCarley Declara-
`
`tion”, Ex. 1001)2 does not shed any additional light on this deficiency
`
`of Itoh. In fact, when referring to the above portions of the prosecu-
`
`tion history of the ‘802 patent, the MacCarley Declaration ignores the
`
`word “movement” in Claim 7 and equates “the ‘sensor’ limitation of
`
`claim 7” with “the ‘sensor’ limitation of claim 14.” Ex. 1001 at
`
`¶ 58(iii).
`
`d)
`
`ITOH CANNOT ANTICIPATE CLAIMS 7-9
`
`Accordingly, for at least the above reasons, Itoh does not teach
`
`and the Petition fails to establish a reasonable likelihood that Claim 7
`
`
`
`2 UUSI disputes many aspects of the MacCarley Declaration. UUSI
`will address the deficiencies of the MacCarley Declaration as may be
`necessary and appropriate if inter partes review is instituted.
`
`Page 11 of 19
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`
`
`Case IPR2014-00417
`Patent No. 7,579,802
`
`would be anticipated by Itoh. Claims 8 and 9 depend from independ-
`
`ent Claim 7. Therefore, for at least the above reasons, the Petition fails
`
`to establish a reasonable likelihood that Claims 8 and 9 would be un-
`
`patentable.
`
`2. GROUND 1
`
`The Petition fails to set forth a prima facie case of obviousness
`
`of at least Claim 7. The Petition does not adduce any evidence regard-
`
`ing how the alleged ordinary skill in the art would remedy the above-
`
`identified deficiencies of Itoh with respect to Claim 7. Claims 8 and 9
`
`depend from independent Claim 7. Therefore, for at least the above
`
`reasons, the Petition fails to establish a reasonable likelihood that
`
`Claims 8 and 9 would be unpatentable.
`
`3. GROUND 5
`
`The Petition fails to set forth a prima facie case of obviousness
`
`of at least Claim 7. The Petition does not adduce any evidence regard-
`
`ing how Kinzl would remedy the deficiencies of Itoh with respect to
`
`Claim 7. Further, the Petition only makes conclusory statements re-
`
`garding combining the references, instead of identifying evidence
`
`supporting combination for the particular claim limitations at issue.
`
`Page 12 of 19
`
`
`
`For example, the entire argument for combination of references is re-
`
`produced here:
`
`Case IPR2014-00417
`Patent No. 7,579,802
`
`Petitioners submit that one of skill in the art would
`
`have been motivated to combine Itoh, with Kinzl
`
`and/or Zuckerman because each is from the same time
`
`period and addresses the same problem: obstruction
`
`detection in an automotive panel setting. Further, rules
`
`published in 1991 by the National Highway Safety
`
`Board included for the first time a discussion of anti-
`
`pinch features on car windows. This would have also
`
`motivated one of skill in the art to consider available
`
`obstruction detection literature, including Itoh, Kinzl,
`
`and Zuckerman.
`
`Petition, page 26. Claims 8 and 9 depend from independent Claim 7.
`
`Therefore, for at least the above reasons, the Petition fails to establish
`
`a reasonable likelihood that Claims 8 and 9 would be unpatentable.
`
`4. GROUND 6
`
`The Petition fails to set forth a prima facie case of obviousness
`
`of at least Claim 7. The Petition is merely conclusory and does not
`
`adduce any evidence regarding how Zuckerman would remedy the de-
`
`Page 13 of 19
`
`
`
`Case IPR2014-00417
`Patent No. 7,579,802
`
`ficiencies of Itoh with respect to Claim 7.3 Claims 8 and 9 depend
`
`from independent Claim 7. Therefore, for at least the above reasons,
`
`the Petition fails to establish a reasonable likelihood that Claims 8 and
`
`9 would be unpatentable.
`
`5. GROUND 7
`
`The Petition fails to set forth a prima facie case of obviousness
`
`of at least Claim 7. The Petition is merely conclusory and does not
`
`adduce any evidence regarding how the combination of Kinzl and
`
`Zuckerman would remedy the deficiencies of Itoh with respect to
`
`Claim 7. Claims 8 and 9 depend from independent Claim 7. There-
`
`fore, for at least the above reasons, the Petition fails to establish a rea-
`
`sonable likelihood that Claims 8 and 9 would be unpatentable.
`
`B. GROUND 3
`
`With respect to Ground 3 of the Petition, the Petition fails to es-
`
`tablish a reasonable likelihood that Claims 7 and 9 are anticipated by
`
`U.S. Pat. No. 4,468,596 (“Kinzl”, Ex. 1008).
`
`
`
`3 It is noteworthy that Zuckerman was also already considered by the
`Examiner during the prosecution of the ‘802 Patent.
`
`Page 14 of 19
`
`
`
`Case IPR2014-00417
`Patent No. 7,579,802
`
`1. CLAIM LIMITATIONS
`
`Claim 7 recites “a controller… comprising a stored program
`
`that i) determines motor speed of movement from an output signal
`
`from the movement sensor.” Ex. 1005 at 28:30-36.
`
`2. DEFICIENCIES OF KINZL
`
`Kinzl discloses measuring a speed of a motor. However, Kinzl
`
`is silent regarding a “stored program” that “determines motor speed of
`
`movement from an output signal from the movement sensor,” as recit-
`
`ed in Claim 7 (emphasis added). Instead, the microcomputer of Kinzl
`
`performs the following functions:
`
`Page 15 of 19
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`
`
`Case IPR2014-00417
`Patent No. 7,579,802
`
`Also, the microcomputer 26 determines from the posi-
`
`tion counter where the window 10 is, i.e., which zone
`
`the window is in. If the window is in zone 1, the time
`
`between two changes is measured when the window
`
`enters zone 2 and is stored. This time between these
`
`two changes constitutes the first measured value, and
`
`establishes a limit value with which each subsequent
`
`change is compared. If this limit value is exceeded
`
`while the window 10 is in zone 2, it leads to an emer-
`
`gency opening. However, if the window is in zone 1
`
`and is blocked, the drive motor 12 is stopped after the
`
`time out of the blocking counter of the microcomputer
`
`24.
`
`Ex. 1008 at 4:23-35. In other words, the microcomputer 26 of Kinzl
`
`measures a time interval between signal changes and uses that time
`
`interval as a limit. Kinzl does not teach or suggest determining a
`
`speed using a stored program and, in fact, would not need to deter-
`
`mine a speed as the time interval itself serves as the limit.
`
`As the excerpt above indicates, Kinzl also discloses maintaining
`
`a blocking counter that measures an interval during which signal
`
`changes are not occurring, indicating a lack of movement of the win-
`
`dow. Kinzl describes this function more here:
`
`Page 16 of 19
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`
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`Case IPR2014-00417
`Patent No. 7,579,802
`
`If changes are no longer coupled from the sensor 26 to
`
`the blocking counter, for example, when the window is
`
`completely opened or completely closed, the blocking
`
`counter functions to turn off the drive motor 12 so that
`
`it is not overloaded.
`
`Ex. 1008 at 3:12-17. This aspect of Kinzl therefore also relates to a
`
`time measurement, where the determination of a speed is not dis-
`
`closed and not necessary.
`
`3. KINZL CANNOT ANTICIPATE CLAIMS 7 AND 9
`
`Accordingly, for at least the above reasons, Kinzl does not dis-
`
`close all of the limitations of Claim 7 and, accordingly, the Petition
`
`fails to establish a reasonable likelihood that Claim 7 would be antici-
`
`pated by Kinzl. Claim 9 depends from independent Claim 7. There-
`
`fore, for at least the above reasons, the Petition fails to establish a rea-
`
`sonable likelihood that Claim 9 would be anticipated by Kinzl.
`
`Page 17 of 19
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`
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`Case IPR2014-00417
`Patent No. 7,579,802
`
`III. CONCLUSION
`
`For the above reasons, UUSI requests that the Board deny at
`
`least in part the Petition for inter partes review of the ‘802 patent.
`
`
`
`Respectfully submitted,
`
`Dated: May 6, 2014
`
`
`
`
`
`By: /Monte L. Falcoff/
`Monte L. Falcoff
`Reg. No. 37,617
`Michael R. Nye
`Reg. No. 62,126
`Attorneys for Patent Owner UUSI
`
`
`
`
`Page 18 of 19
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`
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`Case IPR2014-00417
`Patent No. 7,579,802
`
`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6(E)(4)
`
`It is hereby certified that today, May 6, 2014, a copy of the
`
`foregoing document was served via electronic mail upon the follow-
`
`ing:
`
`
`Craig D. Leavell
`craig.leavell@kirkland.com
`Alyse Wu
`alyse.wu@kirkland.com
`KIRKLAND & ELLIS LLP
`Attorneys for Petitioner
`
`
`
`
`Dated: May 6, 2014
`
`
`
`
`
`
`
`18585879.2
`
`Respectfully submitted,
`
`By: /Michael R. Nye/
`Monte L. Falcoff
`Reg. No. 37,617
`Michael R. Nye
`Reg. No. 62,126
`Attorneys for Patent Owner UUSI
`
`Page 19 of 19
`
`
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