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
`
`PETITIONERS’ MOTION TO SUBMIT SUPPLEMENTAL
`INFORMATION
`
`
`
`
`
`
`
`
`
`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
`
`PETITIONERS’ MOTION TO SUBMIT SUPPLEMENTAL
`INFORMATION
`
`
`
`
`
`
`
`
`
`Motion to Submit Supp. Information
`Case No. IPR2014-00417
`Pursuant to 37 C.F.R 42.123, Petitioners Brose North America, Inc. and
`
`Brose Fahrzeugteile GmbH & Co. KG, Hallstadt (collectively, “Brose”) hereby
`
`move to submit as supplemental information one U.S. patent and two U.S. patent
`
`publications. All three patent documents are related to the patent at issue in this
`
`inter partes review, U.S. Patent No. 7,579,802 (“the ’802 patent”), and identify
`
`Patent Owner UUSI, LLC (“UUSI”) as assignee. Brose’s request meets the
`
`standard for supplemental information because the patent documents are “relevant
`
`to” at least claim 7 of the ’802 patent “for which the trial has been instituted” of 37
`
`C.F.R. 42.123(a)(2). More specifically, the three patent documents are relevant to
`
`construction of the claim phrase “a movement sensor for monitoring movement of
`
`the object…” in claim 7. Inclusion of these documents in the record as
`
`supplemental information also would be consistent with the Board’s “mandate to
`
`ensure the efficient administration of the Office and the ability of the Office to
`
`complete IPR proceedings in a timely manner” and its “duty to secure the just,
`
`speedy, and inexpensive resolution of every proceeding.” Redline Detection LLC
`
`v. Star Envirotech, Inc., Case No. IPR2013-00106, Paper 35 at 3–4 (PTAB Sep.
`
`11, 2013) (internal quotation marks omitted).
`
`UUSI has indicated that it does not oppose this motion. Authorization to file
`
`the motion was granted on September 4, 2014. See Order Conduct of the
`
`Proceeding, Paper 18 (Sep. 16, 2014) at 4.
`
`
`
`2
`
`
`
`Motion to Submit Supp. Information
`Case No. IPR2014-00417
`
`I.
`
`BACKGROUND
`
`The Board instituted IPR of the ’802 patent on August 1, 2014, on all
`
`grounds included in Brose’s Petition, including five grounds based on (at least in
`
`part) prior art reference Itoh (U.S. Patent No. 4,870,333). Paper 11 at 26. IPR was
`
`instituted as to all claims in Brose’s Petition: claims 1, 6–9, and 14. Id.
`
`Claim 7 of the ’802 patent states:
`
`7. Apparatus for controlling activation of a motor for moving an
`object along a travel path and de-activating the motor if an obstacle is
`encountered by the object comprising:
`a) a movement sensor for monitoring movement of the object as
`the motor moves said object along a travel path;
`b) a switch for controlling energization of the motor with an
`energization signal; and
`c) a controller including an interface coupled to the switch for
`controllably energizing the motor and said interface additionally
`coupling the controller to the movement sensor for monitoring
`signals from said movement sensor; said controller comprising a
`stored program that:
`i) determines motor speed of movement from an output signal
`from the movement sensor;
`ii) calculates an obstacle detect threshold based on motor speed
`of movement detected during a present run of said motor driven
`element;
`iii) compares a value based on currently sensed motor speed of
`movement with the obstacle detect threshold; and
`iv) outputs a signal from the interface to said switch for
`stopping the motor if the comparison based on currently sensed
`motor movement indicates the object has contacted an obstacle.
`
`Ex. 1005 at claim 7 (emphasis added). The limitation, “a movement sensor for
`
`monitoring movement of the object” (“Limitation (a)”) was addressed in Brose’s
`
`
`
`3
`
`
`
`Motion to Submit Supp. Information
`Case No. IPR2014-00417
`Petition, in UUSI’s Preliminary Response, and in the Institution Decision. Paper 6
`
`at 6–7; Paper 10 at 5–10; Paper 11 at 7–9.
`
`Brose proposed that Limitation (a) be “construed to include both direct and
`
`indirect sensing of the window/panel movement, and not limited to just direct
`
`sensing,” pointing out that such a construction is supported by, inter alia, the
`
`patent specification and the prosecution history. Paper 6 at 6–7. Brose’s
`
`construction would include indirectly sensing movement of a window or panel by
`
`monitoring one or more characteristics of the motor driving movement.
`
`In its Preliminary Response, UUSI argued that Limitation (a) should be
`
`narrowly construed to be limited to a “specialized sensor” and exclude “a
`
`‘sensorless’”—i.e., indirect—“ability to measure current.” Paper 10 at 6. UUSI’s
`
`proposed construction was aimed at excluding a sensor like that shown in prior art
`
`reference Itoh (Ex. 1007), in which the sensor monitors movement of the object
`
`(e.g., a window or sunroof) by sensing commutation pulses of the motor current.
`
`Ex. 1007 at 7:60-64, Figs. 7–8; see also id. at 5:6–10, 8:33–48, 9:16–34, 9:37–62.
`
`The Board adopted, for purposes of its Institution Decision, Brose’s
`
`construction of Limitation (a) and declined to adopt UUSI’s proposed construction,
`
`most importantly because claim 7’s dependent claim 13 specifies “the
`sensor is a current sensor” which senses “dynamic motor current.” It
`would make no sense for claim 13 to specify that the sensor of claim 7
`is a current sensor unless the sensor of claim 7 is sufficiently broad to
`include a current sensor and other sensors.”
`
`
`
`4
`
`
`
`Motion to Submit Supp. Information
`Case No. IPR2014-00417
`
`Paper 11 at 8.
`
`Thus, the proper construction of Limitation (a)—and whether is it limited to
`
`a “specialized sensor,” as UUSI claims, or is broader and encompasses indirect
`
`sensing— is a disputed issue in the IPR.
`
`II. UUSI’S PATENT DOCUMENTS ARE RELEVANT TO CLAIM 7
`The three patent documents Brose seeks to submit as supplemental
`
`information are:
`
`• U.S. Patent No. 6,404,158 (the “’158 patent”);
`• U.S. Patent Application Publication No. 2002/0121872 (the “’872
`publication”); and
`• U.S. Patent Application Publication No. 2002/0101210 (the “’210
`publication”).
`
`Each of these documents is related to the ’802 patent, identifies UUSI as assignee,
`
`contains claim language similar to the claim terms at issue with regard to claim 7
`
`of the ’802 patent, and is relevant to the proper construction of Limitation (a) of
`
`claim 7.
`
`A. The ’158 Patent
`The ’158 patent is entitled “Collision Monitoring System.” Ex. 1044. The
`
`’158 patent is the “grandparent” of the ’802 patent. See Ex. 1034. It claims
`
`priority to the same patent/application as the ’802 patent. Id. The identified
`
`assignee of the ’158 patent is UUSI, and its two named inventors, Mario Boisvert
`
`
`
`5
`
`
`
`Motion to Submit Supp. Information
`Case No. IPR2014-00417
`and Randall Perrin, are two of the named inventors of the ’802 patent. Ex. 1005;
`
`Ex. 1044.
`
`Claim 1 of the ’158 patent includes Limitation (a): “a movement sensor for
`
`monitoring movement of the object as the motor moves said object along a travel
`
`path.” Ex. 1044 at claim 1. Dependent claim 2 of the ’158 patent recites:
`
`2. The apparatus of claim 1 wherein the controller includes a dock
`[sic: clock] and the current signal from the current sensor is in a
`form of a sequence of pulses and further wherein the controller
`counts clock signals occurrences between receipt of current pulses
`to provide an indication of motor speed.
`
`Id. at claim 2 (emphasis added). As reflected above, ’158 patent claim 2 indicates
`
`that the “movement sensor for monitoring movement of the object as the motor
`
`moves said object along a travel path” of claim 1 is a “current sensor,” with a
`
`“current signal” that “is in a form of a sequence of pulses and further wherein the
`
`controller counts clock signals occurrences between receipt of current pulses to
`
`provide an indication of motor speed.” Id.
`
`The Board recognized that claim 13 of the ’802 patent, which is dependent
`
`upon claim 7, “specifies ‘the sensor is a current sensor’ which senses ‘dynamic
`
`motor current.’” Paper 11 at 8. Similarly, in describing the “movement sensor” of
`
`Limitation (a) as a “current sensor,” claim 2 of the ’158 patent provides additional
`
`support for the proper construction of Limitation (a). Moreover, the passage of the
`
`’802 patent UUSI pointed to in its Preliminary Response as alleged support for its
`
`
`
`6
`
`
`
`Motion to Submit Supp. Information
`Case No. IPR2014-00417
`construction of Limitation (a) also is present, verbatim, in the ’158 Patent,
`
`indicating that the passage does not serve to restrict Limitation (a) to a direct (or in
`
`UUIS’s words, “specialized”) sensor. See Paper 10 at 6–7; Ex. 1005 at 23:49–67;
`
`Ex. 1044 at 24:48–67. Accordingly, the ’158 patent is relevant to, and contradicts,
`
`UUSI’s position that Limitation (a) should be interpreted narrowly and should
`
`exclude indirect sensing, or what UUSI calls “measuring current, which is often
`
`referred to as ‘sensorless’ motor control.” Paper 10 at 5. See 37 C.F.R.
`
`42.123(a)(2); NTP, Inc. v. Research In Motion, Ltd., 418 F. 3d 1282, 1293 (Fed.
`
`Cir. 2005) (“Because NTP’s patents all derive from the same parent application
`
`and share many common terms, we must interpret the claims consistently across all
`
`asserted patents.”); Jonsson v. Stanley Works, 903 F. 2d 812, 818 (Fed. Cir. 1990)
`
`(“[T]he ’912 patent, like the ’251 patent, requires the use of ‘diffuse light.’ The
`
`’912 patent is the result of a continuation-in-part application from the original ’008
`
`application, which led to the ’251 patent. …[T]he construction of the term ‘diffuse
`
`light’ contained in that patent, is relevant to an understanding of ‘diffuse light’ as
`
`that term is used in the ’912 patent.”).
`
`Like claim 2 of the ’158 patent, prior art reference Itoh discloses a current
`
`signal in the form of a sequence of pulses. Ex. 1007 at 7:60–64 and Figs. 7, 8
`
`(disclosing “pulse-detecting circuit 30” connected to the motor “which detects a
`
`pulse generated along with rotation of the motor 20 as a pulse-detecting means”
`
`
`
`7
`
`
`
`Motion to Submit Supp. Information
`Case No. IPR2014-00417
`connected to “a central processing unit (CPU) 34 of a controller 32”); Paper 6 at
`
`33. Itoh also discloses that its controller counts clock signal occurrences between
`
`receipt of current pulses to provide an indication of motor speed. Id.; Ex. 1007 at
`
`5:6–10, 8:33–48, 9:16–34, 9:37–62 (disclosing motor current ripple counter that
`
`generates pulses that are used to count rotation of the motor and track speed and
`
`position of the window).
`
`The ’872 Publication
`
`B.
`The ’872 publication, entitled “Collision Monitoring System,” is the
`
`publication of Application Serial No. 10/071,759, which issued as U.S. Patent No.
`
`6,548,979. Ex. 1045. It is a continuation of the ’158 Patent (App. Ser. No.
`
`09/562,986), which, as noted above, is the “grandparent” of the ’802 Patent. Id.
`
`The identified assignee of the ’872 publication is UUSI, and its two named
`
`inventors, Mario Boisvert and Randall Perrin, are two of the named inventors of
`
`the ’802 patent. Ex. 1005; Ex. 1045.
`
`Claim 28 of the ’872 publication is identical to claim 1 of the ’158 patent,
`
`and therefore contains Limitation (a): “a movement sensor for monitoring
`
`movement of the object as the motor moves said object along a travel path.” Ex.
`
`1045; Ex. 1044. Dependent claim 33 of the ’872 publication is identical to claim 2
`
`of the ’158 patent, discussed above. Id. Thus, in the same way as the ’158 patent,
`
`the ’872 publication is relevant to the proper construction of Limitation (a), and
`
`
`
`8
`
`
`
`Motion to Submit Supp. Information
`Case No. IPR2014-00417
`provides the same support as the ’158 patent for Brose’s construction of Limitation
`
`(a).
`
`The ’872 publication, however, goes further. Each of claims 29–32, 28 and
`
`39 of the ’872 publication, which depend from claim 28, expressly requires the use
`
`of “motor current” or a “current sensor”:
`
`29. The apparatus of claim 28 wherein the controller includes a buffer
`memory for storing successive values of motor current for use in
`determining the obstacle detect threshold.
`30. The apparatus of claim 29 wherein the buffer memory is used to
`store a value derived from motor current corresponding to motor
`speed as the window or panel moves along its travel path.
`31. The apparatus of claim 29 wherein the current sensor provides an
`analog current signal and the controller comprises means for
`converting the analog signal to a digital current value and stores
`successive values of the digital current value within the buffer
`memory.
`32. The apparatus of claim 31 wherein the controller adapts a
`resolution of the digital current signal based upon a real time sensed
`current value.
`38. The apparatus of claim 28 wherein the current sensor comprises a
`filter circuit for filtering out DC components from a motor current
`signal to produce a signal related to motor speed.
`39. The apparatus of claim 28 wherein the controller includes means
`for adjusting the obstacle threshold based on dynamic motor current
`as sensed from the current sensor to take into account varying loads
`experienced by the motor.
`
`Ex. 1045 at claims 29–32, 38, 39 (emphasis added). Furthermore, like the ’158
`
`patent, the ’872 publication also contains the very same passage of the ’802 patent
`
`UUSI points to as alleged support for its construction of Limitation (a), meaning
`
`
`
`9
`
`
`
`Motion to Submit Supp. Information
`Case No. IPR2014-00417
`that the ’872 publication indicates that this passage does not limit Limitation (a) to
`
`a direct (or in UUIS’s words, “specialized”) sensor. See Paper 10 at 6–7; Ex. 1045
`
`at ¶ 0206. See NTP, 418 F. 3d at 1293; Jonsson, 903 F. 2d at 818.
`
`C. The ’210 Publication
`The ’210 publication, entitled “Collision Monitoring System,” is the
`
`publication of Application Serial No. 10/100,892, which issued as U.S. Patent No.
`
`7,548,037. Ex. 1046; Ex. 1034. It is the immediate parent of the ’802 Patent, with
`
`the ’802 patent being a divisional of the application. Ex. 1005; Ex. 1034. The
`
`identified assignee of the ’210 publication is UUSI, and its two named inventors,
`
`Mario Boisvert and Randall Perrin, are two of the named inventors of the ’802
`
`patent. Ex. 1005; Ex. 1046.
`
`Claim 12 of the ’210 publication is nearly identical to claim 7 of the ’802
`
`patent.1 Like claim 7 of the ’802 patent, claim 12 of the ’210 publication includes
`
`
`1 The primary difference between claim 7 of the ’802 patent and claim 12 of the
`
`’210 publication is that the calculation in limitation (c)(ii) of claim 12 of the ’210
`
`publication is based on a speed detected “during at least one prior period of motor
`
`operation,” whereas claim 7 of the ’802 Patent recites that the calculation is based
`
`on a speed detected “during a present run of said motor driven element.” See Ex.
`
`1005 at claim 7; Ex. 1046 at claim 12.
`
`
`
`10
`
`
`
`Motion to Submit Supp. Information
`Case No. IPR2014-00417
`Limitation (a): “a movement sensor for monitoring movement of the object as the
`
`motor moves said object along a travel path.” Ex. 1046 at claim 12.
`
`Dependent claim 18 of the ’210 publication recites:
`
`18. The apparatus of claim 12 wherein the sensor is a current sensor
`and wherein the controller includes means for adjusting the obstacle
`threshold based on dynamic motor current as sensed from the
`current sensor to take into account varying loads experienced by the
`motor.
`
`Id. Because claim 18 specifies that the “movement sensor” of Limitation (a) “is a
`
`current sensor” that senses “dynamic motor current,” similar to the way in which
`
`claim 13 of the ’802 patent specifies that “the sensor is a current sensor” which
`
`senses “dynamic motor current,” the ’210 publication is relevant to the proper
`
`construction of Limitation (a) of claim 7 of the ’802 patent, and indeed supports
`
`Brose and the Board’s construction. See NTP, 418 F. 3d at 1293; Jonsson, 903 F.
`
`2d at 818.
`
`III.
`
`IT IS IN THE INTEREST OF EFFICIENCY TO ADMIT UUSI’S
`PATENT DOCUMENTS AS SUPPLEMENTAL INFORMATION
`
`The Board has indicated that, in addition to the question of whether
`
`documents sought to be submitted as supplemental information are relevant under
`
`37 C.F.R. 42.123(a)(2), the Board will consider admission of supplemental
`
`information in light of its mandates “to ensure the efficient administration of the
`
`Office and the ability of the Office to complete IPR proceedings in a timely
`
`manner” and “secure the just, speedy, and inexpensive resolution of every
`
`
`
`11
`
`
`
`Motion to Submit Supp. Information
`Case No. IPR2014-00417
`proceeding.” Redline Detection, Case No. IPR2013-00106, Paper 35 at 3–4.
`
`Inclusion of the ’158 patent, ’872 publication and ’210 publication as supplemental
`
`information would be consistent with these mandates. As discussed above, the
`
`three patent documents are relevant to claim 7 of the ’802 patent, for which trial
`
`was instituted, and specifically to the proper construction of Limitation (a) of claim
`
`7. This issue, on which each party has taken a position, is a threshold one. Akamai
`
`Techs., Inc. v. Cable & Wireless Internet Servs., Inc., 344 F.3d 1186, 1192 (Fed.
`
`Cir. 2003) (“The first step in any invalidity analysis is claim construction…”). The
`
`usefulness of the ’158 patent, ’872 publication and ’210 publication was not
`
`brought to light until UUSI filed its Preliminary Response to Brose’s Petition and
`
`asserted a proposed construction for Limitation (a) that only indirectly responded
`
`to Petitioner’s position and advocated a construction inconsistent with these three
`
`documents. As the Board noted, “Petitioner and Patent Owner both construe these
`
`terms, but from different perspectives. …. Patent Owner’s Preliminary Response
`
`does not directly address [Petitioner’s] proposal, but does so indirectly…” Paper
`
`11 at 7. In view of UUSI’s Preliminary Response, the three patent documents are
`
`now of primary importance with regard to this claim construction issue, and as part
`
`of the body of intrinsic evidence, can help simplify the Board’s analysis. See Bell
`
`& Howell Document Mgmt. Prods. Co. v. Altek Sys., 132 F.3d 701, 705 (Fed. Cir.
`
`1997) (intrinsic evidence can be “sufficient to enable one to determine the meaning
`
`
`
`12
`
`
`
`Motion to Submit Supp. Information
`Case No. IPR2014-00417
`of a claim term.”); Trading Techs. Int’l, Inc. v. Open E Cry, LLC, 728 F.3d 1309,
`
`1323 (Fed. Cir. 2013) (discussing family member patents as part of “the intrinsic
`
`record specific to the” patent at issue). The Board should have the benefit of the
`
`complete body of relevant intrinsic evidence available to it when it considers
`
`UUSI’s Response to Brose’s Petition and other motions or filings that may be
`
`submitted over the course of the IPR.
`
`IV. CONCLUSION
`For the foregoing reasons, the Board should permit Brose to submit the ’158
`
`patent, ’872 publication, and ’210 publication as supplemental information.
`
`Respectfully submitted,
`
`/s/ Craig Leavell
`Craig Leavell (Reg. No. 48505)
`Alyse Wu (Reg. No. 68926)
`Luke L. Dauchot
`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
`luke.dauchot@kirkland.com
`
`Attorneys For Petitioners
`
`
`
`13
`
`
`
`Date: September 24, 2014
`
`
`
`
`
`
`
`
`
`Motion to Submit Supp. Information
`Case No. IPR2014-00417
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies
`
`that a copy of
`
`the
`
`foregoing
`
`
`
`PETITIONERS’ MOTION TO SUBMIT SUPPLEMENTAL INFORMATION
`
`was served on September 24, 2014 via electronic mail upon the following:
`
`Respectfully submitted,
`
`/s/ Craig Leavell
`Craig Leavell (Reg. No. 48505)
`Alyse Wu (Reg. No. 68926)
`Luke L. Dauchot
`Attorneys For Petitioners
`
`
`
`
`
`
`
`
`
`
`
`
`
`Monte L. Falcoff
`Michael R. Nye
`HARNESS, DICKEY & PIERCE, P.L.C.
`5445 Corporate Drive, Suite 200
`Troy, Michigan 48098
`plloyd@hdp.com
`mnye@hdp.com
`
`Attorneys for Patent Owner UUSI, LLC
`
`
`
`
`
`
`14
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
