`
`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 RESPONSE
`
`
`
`
`
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`IPR2014-00417
`Patent 7,579,802
`
`I.
`
`Introduction ................................................................................................. 1
`
`A.
`
`B.
`
`C.
`
`Background of Patent Owner ............................................................. 1
`
`State of the Art .................................................................................. 1
`
`Petitioner’s Alleged Expert MacCarley is Not Familiar with the State
`of the Art ........................................................................................... 4
`
`II.
`
`Independent Claim 1 .................................................................................. 10
`
`A.
`
`Claim Construction .......................................................................... 10
`
`1.
`
`2.
`
`3.
`
`4.
`
`The Prosecution History Requires this Interpretation of the
`Movement Sensor of Claim 1 ................................................. 13
`
`The Detailed Description is Consistent with the Prosecution
`History ................................................................................... 14
`
`Claim Differentiation.............................................................. 15
`
`Summary ............................................................................... 15
`
`B.
`
`C.
`
`D.
`
`Ground 1 – Alleged Obviousness over Itoh ...................................... 16
`
`Ground 2 – Alleged Anticipation over Itoh ....................................... 17
`
`Ground 5 – Alleged Obviousness over Itoh and Kinzl ....................... 17
`
`III.
`
`Dependent Claim 6 .................................................................................... 19
`
`A.
`
`B.
`
`Claim Construction .......................................................................... 19
`
`Ground 1 – Alleged Obviousness over Itoh ...................................... 21
`
`1.
`
`2.
`
`3.
`
`Explicit Teachings of Itoh ....................................................... 21
`
`Design Choice Law ................................................................. 22
`
`Failure of Petitioner to Provide Basis for Finding of Design
`Choice .................................................................................... 23
`
`C.
`
`Ground 5 – Alleged Obviousness over Itoh and Kinzl ....................... 28
`
`IV.
`
`Independent Claim 7 .................................................................................. 29
`
`A.
`
`Claim Construction .......................................................................... 29
`
`1. Movement Sensor ................................................................. 29
`
`
`
`

`

`IPR2014-00417
`Patent 7,579,802
`
`2.
`
`Detection Based on the Obstacle Detect Threshold ............... 37
`
`Ground 1 – Alleged Obviousness over Itoh ...................................... 40
`
`Ground 2 – Alleged Anticipation over Itoh ....................................... 42
`
`Ground 4 – Alleged Obviousness over Kinzl ..................................... 43
`
`Ground 3 – Alleged Anticipation over Kinzl ...................................... 44
`
`Ground 5 – Alleged Obviousness over Itoh and Kinzl ....................... 45
`
`Ground 6 – Alleged Obviousness over Itoh and Zuckerman ............. 45
`
`Ground 7 – Alleged Obviousness over Itoh, Kinzl, and Zuckerman ... 47
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`H.
`
`V.
`
`Dependent Claim 8 .................................................................................... 47
`
`VI.
`
`Dependent Claim 9 .................................................................................... 48
`
`VII.
`
`Independent Claim 14 ................................................................................ 48
`
`A.
`
`Claim Construction .......................................................................... 48
`
`1. Means plus function .............................................................. 48
`
`2.
`
`Corresponding algorithms ...................................................... 52
`
`Ground 1 – Alleged Obviousness over Itoh ...................................... 55
`
`Ground 2 – Alleged Anticipation over Itoh ....................................... 56
`
`Ground 4 – Alleged Obviousness over Kinzl ..................................... 56
`
`Ground 3 – Alleged Anticipation over Kinzl ...................................... 57
`
`Ground 5 – Alleged Obviousness over Itoh and Kinzl ....................... 57
`
`Ground 6 – Alleged Obviousness over Itoh and Zuckerman ............. 58
`
`Ground 7 – Alleged Obviousness over Itoh, Kinzl, and Zuckerman ... 58
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`H.
`
`VIII. Non-enablement ........................................................................................ 59
`
`IX.
`
`Conclusion ................................................................................................. 60
`
`
`
`
`
`
`
`
`

`

`IPR2014-00417
`Patent 7,579,802
`
`TABLE OF AUTHORITIES
`
`CASES
`
`Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002) .......... 34
`
`In re Cyclobenzaprine Hydrochloride Extended-Release Capsule
`Patent Litig., 676 F.3d 1063 (Fed. Cir. 2012)....................................................... 5
`
`In re Gal, 980 F2d 717 (Fed. Cir. 1992) ................................................................. 23
`
`In re Kumar, 418 F.3d 1361 (Fed. Cir. 2005) ......................................................... 59
`
`In re Ochiai, 71 F.3d 1565 (Fed. Cir. 1995) ...................................................... 18, 57
`
`Noah Systems, Inc. v. Intuit Inc., 675 F.3d 1302 (Fed. Cir. 2012) ............... 50, 51, 52
`
`Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561 (Fed. Cir. 1987) ....................... 5
`
`Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298 (Fed. Cir. 1999) .......... 38
`
`Rexnord Indus., LLC v. Kappos, 705 F.3d 1347 (Fed. Cir. 2013) ............................. 23
`
`Robert Bosch, LLC v. Snap-On Inc., 2014 U.S. App. LEXIS 19671
`(Fed. Cir. 2014) ............................................................................................ 49, 50
`
`Seachange Intl. Inc. v. C-Cor Inc., 413 F.3d 1361 (Fed. Cir. 2005) .............. 15, 35, 38
`
`Southwall Techs., Inc. v. Cardinal IG, Co., 54 F.3d 1570 (Fed. Cir. 1995) ............... 13
`
`Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC,
`683 F.3d 1356 (Fed. Cir. 2012) .................................................. 17, 42, 44, 56, 57
`
`World Class Tech. Corp. v. Ormco Corp., 2014 U.S. App. LEXIS 20061,
`October 20, 2014 (Fed. Cir. 2014) ......................................................... 11, 12, 20
`
`BOARD DECISIONS
`
`IPR2014-00416, Institution Decision, Paper 12 .................................................... 15
`
`IPR2014-00530, Institution Decision, Paper 8 ...................................................... 29
`
`
`
`
`
`

`

`IPR2014-00417
`Patent 7,579,802
`
`I. INTRODUCTION
`
`A. BACKGROUND OF PATENT OWNER
`
`Patent owner, UUSI, LLC, dba Nartron Corporation, was founded in 1967 and
`
`is based in Reed City, Michigan. Nartron designs, develops, manufactures, and
`
`markets electronic systems and components for automotive, truck, military, and
`
`consumer product markets. Narton is a privately owned company with more than
`
`one hundred employees at its Michigan manufacturing plant.
`
`Nartron invented the safety technology described in U.S. Patent No. 8,214,612
`
`(the ‘612 Patent) and U.S. Patent No. 7,579,802 (the ‘802 Patent), which is
`
`included in a motor controller it sold to Webasto Roof Systems Inc. After Webasto
`
`stopped purchasing this controller from Nartron, Nartron sued Webasto (a
`
`Petitioner in pending IPRs 2014-00648, 2014-00649, and 2014-00650) in addition
`
`to the present Petitioner Brose for infringement of the ‘612 and ‘802 Patents.
`
`Photos of this controller are shown in Exhibit 2008. Photographs of the
`
`Brose/Bosch motor and controller incorporating Nartron’s patented technology
`
`are shown in Exhibit 2009.
`
`B. STATE OF THE ART
`
`Manually cranked window lift mechanisms were being replaced by electric
`
`motor driven window lift mechanisms in the 1980s. Expert Declaration in Support
`
`Page 1
`
`

`

`IPR2014-00417
`Patent 7,579,802
`
`of Patent Owner Response, Ex. 2001 at ¶18 (all future references to Ex. 2001 are
`
`also by paragraph number). Then, luxury automobiles began using “express-up”
`
`switches with the electric motor driven window lift mechanisms such that the
`
`window would automatically continue to close after initial activation of the switch
`
`by the vehicle occupant. But electric motor driven window lift mechanisms
`
`caused safety problems. Ex. 2001 at 19. According to a 1997 National Highway
`
`Traffic Safety Administration (NHTSA) Technical Report Ex. 2003, a “conservative”
`
`(Ex. 2003 at pg. 9) estimate of power window injuries was 437 injuries per year.
`
`Ex. 2003 at pg. 30, Table 17. These injuries were estimated for the 1-year period
`
`from October 1993 through September 1994, and include injuries caused by the
`
`closing of a power window. Ex. 2001 at 22.
`
`Furthermore, the majority of these injuries were to children under the age of
`
`fifteen. Ex. 2003 at pg. 32, Table 18. This industry data is prior to commercial
`
`implementation of Patent Owner’s invention covered by the present patent,
`
`which was later used for vehicular sunroof systems, and copied by others for side
`
`window lift mechanisms. In the years leading up to 1992, automotive suppliers
`
`were unable to bring motor control circuitry to market due to excessive false
`
`positives and false negatives. Ex. 2001 at 20.
`
`Page 2
`
`

`

`As Patent Owner’s expert, Dr. Mark Ehsani, explains:
`
`IPR2014-00417
`Patent 7,579,802
`
`A false positive is when an obstruction is detected (which may
`
`cause the window to stop and/or reverse) even though there is
`
`in fact no obstruction present. This is a nuisance and a
`
`significant concern to original equipment manufacturers
`
`concerned with perceived quality. False positives may also have
`
`an impact on safety, such as by distracting a driver from
`
`operating the vehicle when determining why the window has
`
`not responded as expected. A false negative is when an
`
`obstruction that is actually present is not detected. This may
`
`lead to damage to the window, the motor, the lift mechanism,
`
`or worse, to a person whose body part is caught between the
`
`window and the window seal.
`
`Ex. 2001 at 21.
`
`The 1992 priority application (the earliest application to which the ’802 Patent
`
`claims priority) is the first practical development of a system that, in real world
`
`automobile scenarios, exhibits a very low false positive rate and an even lower
`
`false negative rate. Ex. 2001 at 23. These real-world conditions encompass
`
`conditions experienced by many moving object systems (such as mechanical
`
`wear), situations more specific to motor vehicles (such as battery voltage
`
`fluctuation), and conditions uniquely applicable to a vehicle in motion (such as
`
`wind buffeting). Ex. 2001 at 23.
`
`Page 3
`
`

`

`IPR2014-00417
`Patent 7,579,802
`
`The 1992 priority application achieves these results by, among a number of
`
`inventive details, concurrently using multiple obstacle detection algorithms. The
`
`obstacle detection algorithms are selected to detect different forms of obstacles,
`
`such as hard obstacles (for example, a bone) and soft obstacles (for example, a
`
`person’s throat). By using multiple obstacle detection algorithms, the various
`
`obstacle types can each be detected more accurately according to the parameters
`
`that characterize them respectively, thereby reducing false negatives. Ex. 2001
`
`at 24-25.
`
`It is noteworthy that the Petitioner-cited Itoh and Kinzl patents are not
`
`indicative of the production vehicle state of the art. Itoh and Kinzl also do not
`
`overcome many of the real-world vehicular problems such as the varying loads
`
`caused by wind buffeting or booming caused by the pressure difference between
`
`inside and outside the passenger compartment of a vehicle moving at high
`
`speeds. Ex. 2001 at 26.
`
`C. PETITIONER’S ALLEGED EXPERT MACCARLEY IS NOT FAMILIAR WITH THE
`
`STATE OF THE ART
`
`It is easy to see the combination of disparate teachings from multiple
`
`references with the benefit of hindsight.
`
`No effective, uniform, reliable patent system could long survive
`
`if the
`
`law permitted a decisional approach to § 103
`
`Page 4
`
`

`

`IPR2014-00417
`Patent 7,579,802
`
`determinations like that here employed by the district court…:
`
`considering not the problem solved by the invention (here a
`
`successful cable tie), but speculating on a ‘problem’ of how prior
`
`devices might be reconstructed to match the claimed structure,
`
`with the benefit of hindsight aided by the inventor's engineering
`
`testimony about the inventions in suit….
`
`Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1574 (Fed. Cir. 1987).
`
`“Virtually all inventions are necessarily combinations of old elements. The notion,
`
`therefore, that combination claims can be declared invalid merely upon finding
`
`similar elements in separate Prior patents would necessarily destroy virtually all
`
`patents and cannot be the law under the statute, § 103.” Id., 810 F.2d at 1575.
`
`The test for obviousness is from the vantage point of one of ordinary skill in
`
`the art at the time of filing: “hindsight analysis is inappropriate because
`
`obviousness must be assessed at the time the invention was made” and from the
`
`perspective of one of ordinary skill in the art. In re Cyclobenzaprine Hydrochloride
`
`Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1073 (Fed. Cir. 2012).
`
`Such a person of ordinary skill in the art would not have the benefit of 22
`
`years of hindsight or of the teachings of the ’802 Patent and its priority
`
`applications. Petitioner’s alleged expert, Dr. MacCarley, did not have personal
`
`experience with the state of the art in 1992, when the original priority application
`
`Page 5
`
`

`

`IPR2014-00417
`Patent 7,579,802
`
`of the ’802 Patent was filed. Furthermore, Dr. MacCarley is not an expert in
`
`automotive vehicle window or sunroof movement mechanisms or their control
`
`systems such that his declarations should be given little if any weight. Prior to the
`
`preparation of the instant Petition, Dr. MacCarley had never worked with power
`
`window controls or even power sunroof controls:
`
`Q. Let's move on then. With window lift mechanisms, when I
`
`use that term, I'm including the motors and control systems. Did
`
`you work on a window lift mechanism for automotive vehicles
`
`prior to your work in this IPR?
`
`A. No.
`
`Q. Prior to your work in this IPR, have you ever worked on any
`
`automotive sunroof window movement mechanisms? And by
`
`that I include the motors and control systems.
`
`A. No.
`
`Transcript of Deposition of Dr. MacCarley, Ex. 2004 at 32:1-11.
`
`Q. Prior to your work on these IPRs, have you ever reviewed an
`
`electrical diagram or software code for an automotive vehicle
`
`sunroof?
`
`A. No.
`
`Q. Prior to your work on these IPRs, have you ever reviewed a
`
`diagram or software code for an automotive vehicle side
`
`window lift system?
`
`A. No.
`
`Page 6
`
`

`

`IPR2014-00417
`Patent 7,579,802
`
`Ex. 2004 at 33:22-34:5.
`
`While clearly an accomplished and experienced engineer in other areas, Dr.
`
`MacCarley did not have experience with the actual operations or algorithms that
`
`represented the state of the art in power window control systems at any time and
`
`specifically in or before 1992.
`
`Q. When you say the -- let's clarify here. Maybe you are
`
`misunderstanding what I'm asking or maybe I'm making it too
`
`complicated.
`
`Based on your current knowledge, do you know the details,
`
`circuitry as well as function, for the obstruction detection in
`
`windows in production vehicles prior to April of 1992?
`
`MR. LEAVELL: Objection. Compound. Go ahead and answer.
`
`THE WITNESS: What I know now --
`
`BY MR. FALCOFF:
`
`Q. You can repeat that back if you want.
`
`A. I think I got it. Historically, you are asking if I know now what
`
`was common in production before 1992; is that correct?
`
`Q. That is correct.
`
`A. I know some of the applications. It would be a stretch to say I
`
`know what was common because I'm looking through the lens
`
`of what is published or documented. And it's kind of hard to find
`
`out what was used in each particular manufacturer's case. So
`
`I'm sorry for the vague answer.
`
`Page 7
`
`

`

`Ex. 2004 at 46:20-47:18.
`
`IPR2014-00417
`Patent 7,579,802
`
`Q. If you have the knowledge, let me know.
`
`A. I don’t. I don't know anything about that aspect of a Buick
`
`manufactured in that year, nor -- nor the overwhelming
`
`majority of car models. In fact, I will –
`
`Q. Which ones do you know the functional and circuitry
`
`diagrams on for the window obstruction detection in production
`
`vehicles prior to April of 1992?
`
`A. None specifically.
`
`Ex. 2004 at 49:23-50:8.
`
`Dr. MacCarley did not attempt to remedy these shortcomings in his
`
`understanding of the skill in the art by speaking with any people knowledgeable
`
`on the subject.
`
`Q. Did you actually personally talk to any engineers or other
`
`technical people that had been active in automotive anti-pinch
`
`or obstruction detection windows from back in the early 1990s?
`
`A. No.
`
`Ex. 2004 at 61:15-20.
`
`The ‘802 Patent discloses systems and methods that overcome many of the
`
`real-world problems experienced in the industry by using separate algorithms for
`
`hard and soft obstruction detection. Ex. 2001 at 24-26. Dr. MacCarley was
`
`unaware of these concerns in 1992:
`
`Page 8
`
`

`

`IPR2014-00417
`Patent 7,579,802
`
`Q. That is to what -- I actually asked did you -- do you know the
`
`details of those at that time that were in production vehicles?
`
`A. Details, no, I will have to say I didn't know the details.
`
`Q. Okay.
`
`A. I knew of the function.
`
`Q. Okay. But just in a very general sense; is that correct?
`
`A. In an operational sense, what it -- what it needed to do. I had
`
`no reason to get directly involved at the time in the engineering
`
`behind how it did it.
`
`Q. Okay. At that time, prior to April of 1992, were you aware if
`
`they can sense hard objects versus soft objects for these
`
`automotive windows?
`
`A. In 1992, I was not aware of the need for that distinction.
`
`Ex. 2004 at 45:6-24.
`
`As a result, Dr. MacCarley’s pronouncements on what he believes one of skill
`
`in the art would recognize or be motivated to do with only having read what
`
`Petitioner’s attorneys recently put before him should be viewed with skepticism.
`
`There is no real-world evidence of the state of the art submitted with the Petition.
`
`It is noteworthy that some of the cited patent references are merely theoretical
`
`concepts that suffer many of the real-world problems found in the industry, as
`
`will be discussed in greater detail hereinafter.
`
`Page 9
`
`

`

`IPR2014-00417
`Patent 7,579,802
`
`In contrast, Patent Owner’s expert witness, Dr. Mark Ehsani, has personal
`
`knowledge of the state of the art and the state of commercial implementations
`
`on and before 1992, and has discussed that real-world state of the art with those
`
`active in it at the relevant time. Ex. 2001 at 10-16. Patent Owner’s expert has a
`
`very different view of the cited references and industry that is far more credible,
`
`as will be discussed in detail hereafter.
`
`II. INDEPENDENT CLAIM 1
`
`A. CLAIM CONSTRUCTION
`
`Because the ‘802 Patent will expire in this month of November 2014, the
`
`correct claim construction standard is set forth in the Institution Decision:
`
`[The] ‘802 Patent will expire in November 2014; the present
`
`review is not likely to be final until after November 2014; and
`
`once the ‘802 Patent expires, the proper claim construction
`
`standard as set forth in Phillips v. AWH Corp., 415 F.3d 1303
`
`(Fed. Cir. 2005), rather than Rule 42.100(b).
`
`Institution Decision, Paper 11 at pg. 6 fn. 3.
`
`Independent Claim 1 recites “a sensor for measuring a parameter of a motor
`
`that varies in response to a resistance to motion.” The correct construction of this
`
`limitation of Claim 1 is that the parameter must vary in response to a resistance
`
`to motion, not simply to a change in speed of the motor, and that the sensor
`
`Page 10
`
`

`

`therefore encompasses a current amplitude sensor but excludes a mere speed or
`
`position sensor. Ex. 2001 at 56.
`
`IPR2014-00417
`Patent 7,579,802
`
`We generally give words of a claim their ordinary meaning in
`
`the context of the claim and the whole patent document; the
`
`specification particularly, but also the prosecution history,
`
`informs the determination of claim meaning
`
`in context,
`
`including by resolving ambiguities; and even if the meaning is
`
`plain on the face of the claim language, the patentee can, by
`
`acting with sufficient clarity, disclaim such a plain meaning or
`
`prescribe a special definition.
`
`World Class Tech. Corp. v. Ormco Corp., 2014 U.S. App. LEXIS 20061, October 20,
`
`2014, at 7 (Fed. Cir. 2014) (internal citations omitted).
`
`Here, the meaning of the term “sensor,” when considered in combination
`
`with its recited operation, is open for different interpretations, and therefore
`
`requires clarification. This ambiguity can be resolved by recourse to the Detailed
`
`Description, and also to the unambiguous explication in the Prosecution History of
`
`the ‘802 Patent.
`
`Rather than providing an unambiguous, clear meaning,
`
`therefore, the claim language leaves uncertainty about whether,
`
`contrary to Ormco’s view, the slide must move along the
`
`support surface…. In such circumstances, we turn to the
`
`specification to resolve the uncertainty. See Phillips, 415 F.3d at
`
`Page 11
`
`

`

`IPR2014-00417
`Patent 7,579,802
`
`1315–16 (quoting Bates v. Coe, 98 U.S. 31, 38 (1878) (“in case of
`
`doubt or ambiguity it is proper in all cases to refer back to the
`
`descriptive portions of the specification to aid in solving the
`
`doubt or in ascertaining the true intent and meaning of the
`
`language employed in the claims”); White v. Dunbar, 119 U.S.
`
`47, 51 (1886) (specification is appropriately resorted to “for the
`
`purpose of better understanding the meaning of the claim”);
`
`Schriber–Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 217
`
`(1940) (“The claims of a patent are always to be read or
`
`interpreted in light of its specifications.”); United States v.
`
`Adams, 383 U.S. 39, 49 (1966) (“[I]t is fundamental that claims
`
`are to be construed in the light of the specifications and both
`
`are to be read with a view to ascertaining the invention.”)).
`
`Where, as here, the claim language itself leaves interpretive
`
`questions unanswered, “[t]he construction that stays true to the
`
`claim language and most naturally aligns with the patent’s
`
`description of the invention will be, in the end, the correct
`
`construction.” Renishaw PLC v. Marposs Societa’ per Azioni, 158
`
`F.3d 1243, 1250 (Fed. Cir. 1998), adopted by Phillips, 415 F.3d
`
`at 1316.
`
`World Class Tech. Corp. v. Ormco Corp., 2014 U.S. App. LEXIS 20061, October 20,
`
`2014, at 8-9 (Fed. Cir. 2014) (internal citation omitted).
`
`Page 12
`
`

`

`IPR2014-00417
`Patent 7,579,802
`1. The Prosecution History Requires this Interpretation of the
`
`Movement Sensor of Claim 1
`
`The prosecution history requires this interpretation of the movement sensor
`
`limitation in Claim 1. A more limited definition may be compelled when the
`
`prosecution history indicates that the patentee has relinquished a broad claim
`
`construction in an amendment to the claim or in an argument to overcome or
`
`distinguish a reference. See, Southwall Techs., Inc. v. Cardinal IG, Co., 54 F.3d
`
`1570, 1576 (Fed. Cir. 1995).
`
`The Applicant three times relied on the disclosure of a current magnitude
`
`sensor to support the sensor limitation of Claim 1 during prosecution of this
`
`application, and in order to overcome prior art. Specifically, the current
`
`magnitude sensor is shown in the application resulting in the ‘876 Patent to
`
`include an operational amplifier that amplifies a voltage across a current-
`
`measuring resistor. Ex. 2011 at 7:16-28.
`
`Note that, during prosecution, Claim 1 was numbered as Claim 1. In the
`
`response to an Office Action dated April 6, 2006, the Applicant indicated that the
`
`sensor of Claim 1 corresponded to “op amp 110, col 5, line 19” of the application
`
`resulting in the ‘876 Patent. Ex. 1014 at 14.
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`In the response to an Office Action dated April 10, 2007, the Applicant
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`indicated that the sensor of Claim 1 corresponded to “Op-amp 110, Col. 5, Line
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`19” of the application resulting in the ‘876 Patent. Ex. 1019 at 14.
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`In the response to an Office Action dated July 23, 2008, the Applicant
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`indicated that the sensor of Claim 1 corresponded to “Op -amp 110, Col. 5, Line
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`19” of the application resulting in the ‘876 Patent. Ex. 1025 at 12. These weren’t
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`merely non-exclusive examples, but narrowing distinctions.
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`2. The Detailed Description is Consistent with the Prosecution History
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`The present definition of the sensor for measure a parameter of Claim 1, as
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`relied upon during prosecution, is consistent with the Detailed Description:
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`“motor current is the primary measured parameter of immediate importance for
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`both hard and soft obstacle detection.” The ‘802 Patent at 18:35-37. The term
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`“motor current” denotes current magnitude as opposed to temporal spacing
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`between current pulses. See, for example, “Nominal values for I (motor current)
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`are from 40 to 80. These do not correspond to units of amperes or milliamperes,
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`but are instead scaled engineering units based upon the motor and circuitry used
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`to sense the motor current.” The ‘802 Patent at 15:66-16:3 (emphasis added).
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`This definition of the sensor of Claim 1 is also consistent with the hard and
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`soft obstruction detection objectives of the ’802 Patent. Ex. 2001 at 54-55.
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`3. Claim Differentiation
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`Further, claim differentiation dictates that the sensor of Claim 1 be
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`interpreted differently from a differently-named “movement sensor” of
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`independent Claim 7.
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`The doctrine of claim differentiation stems from "the common
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`sense notion that different words or phrases used in separate
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`claims are presumed to indicate that the claims have different
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`meanings and scope." Although the doctrine is at its strongest
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`"where the limitation sought to be 'read into' an independent
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`claim already appears in a dependent claim," there is still a
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`presumption that two independent claims have different scope
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`when different words or phrases are used in those claims.
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`Seachange Intl. Inc. v. C-Cor Inc., 413 F.3d 1361, 1368-1369 (Fed. Cir. 2005)
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`(internal citations omitted). Specifically, the recitation in Claim 1 of “a sensor for
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`measuring a parameter of a motor” corresponds to a current amplitude sensor,
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`while the recitation in Claim 7 of “a movement sensor for monitoring movement
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`of the object” corresponds to a Hall effect sensor that senses movement of the
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`motor shaft.
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`4. Summary
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`The limitation “a sensor for measuring a parameter of a motor that varies in
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`response to a resistance to motion” of Claim 1 should therefore properly be
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`construed as a sensor that measures a magnitude of motor current. This
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`interpretation is consistent with the intrinsic patent and its prosecution history.
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`Ex. 2001 at 56.
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`B. GROUND 1 – ALLEGED OBVIOUSNESS OVER ITOH
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`Itoh does not teach or suggest a current amplitude sensor as is required in
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`Claim 1 of the ‘802 Patent. Instead, Itoh discloses measuring a time period
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`between current pulses, which is inversely proportional to motor speed. Itoh at
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`9:46-60. Furthermore, Patent Owner’s expert, Dr. Mark Ehsani, corroborates this
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`distinction in his Expert Declaration, which states that “Itoh simply measures the
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`timing of binary motor commutation current pulses, which is inversely
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`proportional to speed.” Ex. 2001 at 57.
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`This distinction was also recognized by Petitioner’s alleged expert witness, Dr.
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`MacCarley:
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`Q. Okay. Thank you. Does Itoh teach or suggest performing
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`obstacle detection based on current amplitude?
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`MR. LEAVELL: Objection. Compound.
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`THE WITNESS: Itoh is all about speed. It uses AC current as its
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`speed sensing mechanism. And you said amplitude of current.
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`BY MR. FALCOFF:
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`Q. Correct.
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`A. So I will say no.
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`Ex. 2004 at 150:24-151:9. If a cited reference, enlightened by ordinary skill in the
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`art back in 1992, does not teach all of the claim limitation, the proposed ground
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`of rejection must fail, and the validity of the claims survive. As a result, Ground 1
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`with respect to Claim 1 must fail.
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`C. GROUND 2 – ALLEGED ANTICIPATION OVER ITOH
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`For at least the reasons stated above for why Itoh does not render Claim 1
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`obvious, Itoh does not anticipate Claim 1. Accordingly, independent Claim 1 and
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`its dependent claims are novel over Itoh. As the Federal Circuit has stated: “For a
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`prior art reference to anticipate a claim, it must disclose all of the limitations of
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`the claim, arranged or combined in the same way as in the claim.” Wm. Wrigley
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`Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1361 (Fed. Cir. 2012) (internal
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`citations omitted). But, Itoh does not teach the current amplitude sensor as
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`required in Claim 1. Therefore, Ground 2 must fail with respect to Claim 1.
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`D. GROUND 5 – ALLEGED OBVIOUSNESS OVER ITOH AND KINZL
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`Kinzl does not teach or suggest the current amplitude sensor of Claim 1 of the
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`‘802 Patent. The difference is supported by Patent Owner’s Expert Declaration,
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`which states that “Kinzl simply teaches measuring values indicative of the speed
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`of the motor.” Ex. 2001 at 58. When determining whether a claim is obvious, an
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`Examiner must make “a searching comparison of the claimed invention –
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`including all its limitations – with the teaching of the prior art….” In re Ochiai, 71
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`F.3d 1565, 1572 (Fed. Cir. 1995).
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`This distinction between Kinzl’s teaching of speed and Claim 1’s recitation of
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`current amplitude was also corroborated by Petitioner’s alleged expert witness,
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`Dr. MacCarley:
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`Q. But to the best of your knowledge from the prior readings of
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`it, is it correct to state that Kinzl does not teach or suggest
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`performing obstacle detection based on current amplitude?
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`MR. LEAVELL: Objection to form and compound.
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`BY MR. FALCOFF:
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`Q. Is that a correct statement?
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`MR. LEAVELL: Same objections.
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`THE WITNESS: I'm going to follow --
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`MR. LEAVELL: You can still answer. I'm making it for the record.
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`THE WITNESS: As you phrased it, no. It's -- it's -- Kinzl uses speed
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`as the detection mechanism.
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`BY MR. FALCOFF:
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`Q. And not current amplitude, correct?
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`A. Correct, at least I would reserve the right to do a very fine-
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`tooth combed search to be sure nothing could be interpreted to
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`include that. But I'm not -- I'm not aware of any.
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`Ex. 2004 at 152:8-153:3.
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`Furthermore, Kinzl and Itoh cannot be combined (as a substitution or
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`additively), without the improper benefit of hindsight reasoning, since using the
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`Hall effect sensor of Kinzl would defeat one of the express objectives of Itoh,
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`which is to avoid “mounting of a special sensor.” Itoh at 3:65. As supported by
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`Patent Owner’s expert, Ground 5 must fail with respect to Claim 1. Ex. 2001 at 59-
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`60.
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`III. DEPENDENT CLAIM 6
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`A. CLAIM CONSTRUCTION
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`Claim 6 depends from Claim 1 and recites that “immediate past
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`measurements are sensed within a forty millisecond interval.” The correct
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`construction of this phrase is that immediate past measurements used to adjust
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`the obstacle detection threshold of Claim 1 must all be taken within the preceding
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`40 milliseconds (40 ms). This is based on the plain and ordinary meaning as
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`unambiguously expressed in the claims.
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`We generally give words of a claim their ordinary meaning in
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`the context of the claim and the whole patent docume