`By: Monte L. Falcoff (mlfalcoff@hdp.com)
`Hemant M. Keskar (hkeskar@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
`________________________________
`
`WEBASTO ROOF SYSTEMS, INC.
`Petitioner
`
`v.
`
`UUSI, LLC
`Patent Owner
`______________
`Case IPR2014-00648
`Patent 8,217,612
`
`
`DECLARATION OF DR. MARK EHSANI IN SUPPORT OF PAT
`
`
`
`
`
`
`
`Filed on behalf of UUSI, LLC
`By: Monte L. Falcoff (mlfalcoff@hdp.com)
`Hemant M. Keskar (hkeskar@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
`________________________________
`
`WEBASTO ROOF SYSTEMS, INC.
`Petitioner
`
`v.
`
`UUSI, LLC
`Patent Owner
`______________
`Case IPR2014-00648
`Patent 8,217,612
`
`
`DECLARATION OF DR. MARK EHSANI IN SUPPORT OF PATENT OWNER'S RESPONSE
`
`
`
`UUSI, LLC
`Exhibit 2001
`1/109
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`Education and Background ............................................................................ 5
`
`I.A. Summary ................................................................................................... 5
`
`I.B. Education................................................................................................... 6
`
`I.C. Background ................................................................................................ 6
`
`II.
`
`Information Relied On .................................................................................... 8
`
`III. State of the Art ............................................................................................ 12
`
`III.A. Background........................................................................................... 12
`
`IV. Legal Standards ............................................................................................ 18
`
`IV.A. Overview .............................................................................................. 18
`
`IV.B. Anticipation/Novelty ............................................................................ 18
`
`IV.C. Obviousness/Nonobviousness .............................................................. 19
`
`V.
`
`Level of Ordinary Skill in the Art ................................................................... 21
`
`VI. Cited References .......................................................................................... 22
`
`VI.A.
`
`Itoh ....................................................................................................... 22
`
`VI.B. Kinzl ...................................................................................................... 25
`
`VI.C.
`
`Lamm.................................................................................................... 27
`
`VI.D. Bernard................................................................................................. 32
`
`VI.E. Duhame ................................................................................................ 40
`
`VII. Claim 1 ........................................................................................................ 48
`
`Failure of Lamm, Itoh, and Bernard to Teach or Suggest Two
`VII.A.
`Concurrent Obstacle Detection Algorithms ...................................................... 53
`
`Failure of Lamm to Teach or Suggest TWo Concurrent Obstacle
`VII.A.1.
`
`Detection Algorithms: .................................................................................. 53
`
`Failure of Itoh to Teach or Suggest TWo Concurrent Obstacle
`VII.A.2.
`
`Detection Algorithms: .................................................................................. 57
`
`Failure of Bernard to Teach or Suggest TWo Concurrent Obstacle
`VII.A.3.
`
`Detection Algorithms: .................................................................................. 58
`
`VII.A.4.
`
`
`Itoh Cannot be Combined with Lamm: ........................................ 58
`
`VII.A.5.
`
`
`Bernard Cannot be Combined with Lamm: .................................. 60
`
`UUSI, LLC
`Exhibit 2001
`2/109
`
`
`
`Lamm Requires One of ORDINARY Skill in the Art to Perform More
`VII.A.6.
`
`Than Ordinary Amount of Experimentation ................................................. 62
`
`Itoh Requires One of Ordinary Skill in the Art to Perform More
`VII.A.7.
`
`Than Ordinary Amount of Experimentation ................................................. 67
`
`VII.A.8.
`
`
`Conclusion ................................................................................... 69
`
`VII.B. Failure of Duhame and Kinzl to Teach or Suggest TWo Concurrent
`Obstacle Detection Algorithms ........................................................................ 70
`
`VII.C. Failure of Duhame to Teach or Suggest TWo Concurrent Obstacle
`Detection Algorithms ....................................................................................... 70
`
`Failure of Kinzl to Teach or Suggest TWo Concurrent Obstacle
`VII.D.
`Detection Algorithms ....................................................................................... 71
`
`
`
` Duhame and Kinzl Cannot be Combined ..................................... 71 VII.D.1.
`
`Kinzl Requires One of Ordinary Skill in the Art to Perform More
`VII.D.2.
`
`Than Ordinary Amount of Experimentation ................................................. 81
`
`VII.D.3.
`
`
`Conclusion ................................................................................... 84
`
`VIII.
`
`Claim 5 ..................................................................................................... 85
`
`Failure of Lamm to Teach or Suggest a 40 MS Time Interval for
`VIII.A.
`Immediate Past Measurements ....................................................................... 85
`
`Failure of Itoh to Teach or Suggest a 40 MS Time Interval for
`VIII.A.
`Immediate Past Measurements ....................................................................... 89
`
`Failure of Bernard to Teach or Suggest a 40 MS Time Interval for
`VIII.B.
`Immediate Past Measurements ....................................................................... 92
`
`40 MS Time Interval for Immediate Past Measurements is Not a
`VIII.C.
`Routine Design Choice ..................................................................................... 93
`
`VIII.D.
`
`Conclusion ......................................................................................... 94
`
`IX. Claim 6 ......................................................................................................... 94
`
`IX.A. Anticipation by Bernard ........................................................................ 95
`
`IX.B. Obviousness Over Lamm, Itoh, and Bernard ......................................... 98
`
`
`
` Failure of Lamm to Teach Sensing of Window Stoppage ................ 98 IX.B.1.
`
`
`
` Failure of Itoh to Teach Sensing of Window Stoppage .................. 101 IX.B.2.
`
`
`
` Failure of Bernard to Teach Sensing of Window Stoppage ........... 105 IX.B.3.
`
`UUSI, LLC
`Exhibit 2001
`3/109
`
`
`
`IX.B.4.
`
`
`Itoh and Bernard Cannot be Combined with Lamm ...................... 106
`
`
`
` Lamm and Itoh are Non-Enabling ................................................. 106 IX.B.5.
`
`
`
` Conclusion .................................................................................... 106 IX.B.6.
`
`IX.C. Obviousness Over Duhame and Kinzl.................................................. 107
`
`IX.C.1.
`
` Failure of Duhame to Teach Sensing of Window Stoppage ........... 107
`
`IX.C.2.
`
` Failure of Kinzl to Teach Sensing of Window Stoppage................. 107
`
`IX.C.3.
`
` Duhame and Kinzl Cannot be Combined ...................................... 108
`
`IX.C.4.
`
` Conclusion .................................................................................... 108
`
`X. Construction of “De-Activate” .................................................................... 109
`
`XI. Signature .................................................................................................... 109
`
`
`
`
`
`
`
`
`UUSI, LLC
`Exhibit 2001
`4/109
`
`
`
`I. EDUCATION AND BACKGROUND
`
`I.A. SUMMARY
`2. My name is Mark Ehsani. I have been retained by Patent Owner UUSI,
`
`LLC to testify as an engineering expert at the hourly rate of $600 through
`
`Thomson Reuters. My compensation in this matter is not affected in any way by
`
`the opinions I reach or the outcome of this matter.
`
`3.
`
`I submit this Declaration in support of Patent Owner’s Response
`
`regarding the inter partes review of U.S. Patent No. 8,217,612 (the '612 Patent)
`
`filed in the United States Patent and Trademark Office by Petitioner Webasto.
`
`4.
`
`I consider myself an expert in the field of electrical and computer
`
`engineering, specifically within the motor vehicle realm, and have been an expert
`
`in this field since before 1992. That expertise includes specific expertise in the
`
`areas of body control systems, sensorless and Hall-effect-based motor control,
`
`microprocessor-based and discrete circuit logic design and programming, and
`
`safety systems, all with applications in the field of motor vehicles.
`
`5.
`
`A copy of my curriculum vitae is provided as Exhibit 2002 to this
`
`Declaration and provides a comprehensive description of my relevant experience,
`
`including academic and employment history, publications, conference
`
`participation, and patenting activity.
`
`UUSI, LLC
`Exhibit 2001
`5/109
`
`
`
`6.
`
`Based on my review of the '612 Patent, the alleged prior art cited in the
`
`Petition, the additional documents listed below, my understanding of the
`
`applicable legal standards, and my knowledge of the art, it is my expert opinion
`
`that the claims of the '612 Patent are not anticipated or rendered obvious in view
`
`of the references cited by Petitioner Webasto. My opinion is based on my
`
`understanding that the priority date of the '612 Patent is April 22, 1992.
`
`I.B. EDUCATION
`I have a Doctor of Philosophy degree in Electrical Engineering from the
`
`7.
`
`University of Wisconsin-Madison (1981).
`
`8.
`
`I have a Master's of Science degree in Electrical Engineering from the
`
`University of Texas at Austin (1974).
`
`9.
`
`I have a Bachelor's of Science degree in Electrical Engineering from the
`
`University of Texas at Austin (1973).
`
`I.C. BACKGROUND
`For the past 33 years, my research work has been in power electronics,
`
`10.
`
`motor drives, hybrid vehicles, and their control systems. I am a Professor of
`
`electrical engineering at Texas A&M University, College Station, Texas. I am
`
`Director of the Advanced Vehicle Systems Research Program and the Power
`
`Electronics and Motor Drives Laboratory at Texas A&M University.
`
`UUSI, LLC
`Exhibit 2001
`6/109
`
`
`
`11.
`
`I am the co-author of sixteen books on automobile power electronics,
`
`motor drives and advanced vehicle systems, including "Vehicular Electric Power
`
`Systems," Marcel Dekker, Inc. 2003 (identifying pages attached as Exhibit 2021)
`
`and "Modern Electric Hybrid Vehicles and Fuel Cell Vehicles – Fundamentals,
`
`Theory, and Design", CRC Press, 2004. I am the author of over 350 publications in
`
`motor drives, advanced vehicle systems, pulsed-power supplies, high-voltage
`
`engineering, and power electronics. I am an inventor on more than 30 granted or
`
`pending US and EU patents related to automotive power and propulsion systems
`
`and their subsidiary technologies.
`
`12.
`
`In 2005 I was elected as a Fellow of the Society of Automotive Engineers
`
`(SAE). I was selected for the IEEE Vehicular Society 2001 Avant Garde Award for
`
`"Contributions to the theory and design of hybrid electric vehicles." In 2004 I was
`
`elected to the Robert M. Kennedy endowed Chair in Electrical Engineering at
`
`Texas A&M University. In 2003 I was selected for the IEEE Undergraduate
`
`Teaching Award "For outstanding contributions to advanced curriculum
`
`development and teaching of power electronics and drives."
`
`13.
`
`I am the founder of the IEEE Vehicle Power and Propulsion Conference
`
`(VPPC), which
`
`is an annual
`
`international conference that has been held
`
`continuously for the past 15 years all over the world and brings together experts
`
`UUSI, LLC
`Exhibit 2001
`7/109
`
`
`
`and technologies related to vehicle power systems and propulsion systems and
`
`their components. I am also the founding chairman of the IEEE Vehicular
`
`Technology Society (VTS) Vehicle Power and Propulsion Committee, which is the
`
`organizing committee of the VPPC.
`
`14.
`
`In 2002 I was elected to the Board of Governors of the Vehicular
`
`Technology Society (VTS). I serve on the editorial board of several technical
`
`journals and am the associate editor of IEEE Transactions on Industrial Electronics
`
`and IEEE Transactions on Vehicular Technology. I am a Fellow of IEEE, an IEEE
`
`Industrial Electronics Society and Vehicular Technology Society Distinguished
`
`Speaker, and an IEEE Industry Applications Society and Power Engineering Society
`
`Distinguished Lecturer. I am a registered professional engineer in the State of
`
`Texas. I am the recipient of the Prize Paper Awards in Static Power Converters and
`
`motor drives at the IEEE-Industry Applications Society 1985, 1987, and 1992
`
`Annual Meetings.
`
`II. INFORMATION RELIED ON
`I have reviewed a variety of documents in preparing this Declaration,
`
`15.
`
`and have relied on the following for my opinion:
`
`• U.S. Patent No. 8,217,612, Ex. 1001 ("the '612 Patent")
`
`• U.S. Patent No. 7,579,802, Ex. 2010 ("the '802 Patent")
`
`UUSI, LLC
`Exhibit 2001
`8/109
`
`
`
`• U.S. Patent No. 4,870,333, Ex. 1006 ("Itoh")
`
`• U.S. Patent No. 4,468,596, Ex. 1007 ("Kinzl")
`
`• Translation of German Patent No. DE 40 00 730 A1, Ex. 1008 ("Lamm")
`
`• UK Patent No. GB 2 026 723 A, Ex. 1005 ("Bernard")
`
`• U.S. Patent No. 5,218,282, Ex. 1009 ("Duhame")
`
`• The corrected Webasto petition for the '612 Patent (Paper 4 of IPR2014-
`
`00648, referred to as "the '612 Petition") and associated exhibits
`
`• The corrected Webasto petition for the '802 Patent (Paper 4 of IPR2014-
`
`00650, referred to as "the '802 Petition") and associated exhibits
`
`• The declaration of Dr. Toliyat with respect to the '612 Patent (Ex. 1003 of
`
`IPR2014-00648) and associated exhibits
`
`• The declaration of Dr. Toliyat with respect to the '802 Patent (Ex. 1003 of
`
`IPR2014-00650) and associated exhibits, Ex. 2009
`
`• The deposition transcript of Dr. Toliyat, Ex. 2003
`
`• The declaration of Dr. Borrelli with respect to U.S. Patent No. 7,548,037
`
`("the '037 Patent") (Ex. 1001 of IPR2014-00649), Ex. 2011
`
`• The deposition transcript of Dr. Borrelli, Ex. 2004
`
`• Borrelli Deposition Exhibit 9 including figures 2a and 2b of Bernard. Ex.
`
`2005
`
`UUSI, LLC
`Exhibit 2001
`9/109
`
`
`
`• Borrelli Deposition Exhibit 11 including figures 5a-5f of Bernard. Ex. 2006
`
`• Borrelli Deposition Exhibit 10 including figures 5a-5e and 6a-6b of Bernard.
`
`Ex. 2007
`
`• Borrelli Deposition Exhibit 12 including Excerpts from Webster’s New
`
`Universal Unabridged Dictionary, Ex. 2020
`
`• The declaration of Dr. MacCarley with respect to the '612 Patent (Ex. 1001
`
`of IPR2014-00416) and associated exhibits, Ex. 2012
`
`• The declaration of Dr. MacCarley with respect to the '802 Patent (Ex. 1001
`
`of IPR2014-00417) and associated exhibits, Ex. 2013
`
`• The deposition transcript of Dr. MacCarley, Ex. 2008
`
`• UUSI Priority document U.S. Patent No. 5,334,876, Ex. 1013 ("the '876
`
`Patent")
`
`• Application and drawings as filed for application 07/872,190, which issued
`
`as the '876 Patent, Ex. 2017
`
`• UUSI Priority document U.S. Patent No. 6,064,165, Ex. 1019 ("the '165
`
`Patent")
`
`• National Highway Traffic Safety Administration (NHTSA) Technical Report,
`
`1997, Ex. 2015
`
`UUSI, LLC
`Exhibit 2001
`10/109
`
`
`
`• UL 325 Standard for Door, Drapery, Gate, Louver, and Window Operators
`
`and Systems, Third Edition (Revised December 31, 1991)
`
`• U.S. Patent No. 6,686,669, Ex. 2023
`
`• U.S. Patent No. 6,437,530, Ex. 2024
`
`• U.S. Patent No. 6,315,355, Ex. 2025
`
`• U.S. Patent No. 6,408,238, Ex. 2026
`
`• U.S. Patent No. 6,952,087, Ex. 2027
`
`• U.S. Patent No. 7,307,395, Ex. 2028
`
`• U.S. Patent No. 5,734,245, Ex. 2029
`
`• U.S. Patent No. 6,236,176, Ex. 2030
`
`• U.S. Patent No. 6,710,562, Ex. 2031
`
`• U.S. Patent No. 6,701,673, Ex. 2032
`
`• U.S. Patent No. 5,834,658, Ex. 2033
`
`• U.S. Patent No. 6,323,611, Ex. 2034
`
`• Plungis, Jeff, "Feds to Tighten Window Rules", available at
`
`http://www.autosafety.org/feds-tighten-window-rules, Ex. 2016
`
`16.
`
`I have spoken at length with John Washeleski, co-inventor of the '612
`
`Patent and Vice President of Engineering at UUSI. Mr. Washeleski described the
`
`state of the art prior to April of 1992, the level of ordinary skill in the art prior to
`
`UUSI, LLC
`Exhibit 2001
`11/109
`
`
`
`April of 1992, and the design challenges confronted and overcome by the
`
`inventions described in the '612 Patent. Mr. Washeleski showed me photographs
`
`of the window lift mechanisms and controls for systems existing prior to April of
`
`1992, and the evolution of window lift mechanisms and controls subsequent to
`
`April of 1992.
`
`III. STATE OF THE ART
`
`III.A.
`BACKGROUND
`17. Based on my conversation with John Washeleski, and consistent with my
`
`understanding of the state of the art, the subject matter of the April 22, 1992
`
`priority application to which the challenged patents claim priority represented a
`
`significant improvement over systems then existing in production automobiles.
`
`18.
`
`In the 1980s, power windows were transitioning from simply hand-
`
`operated crank windows to those with an electric motor attached to essentially
`
`the same mechanical window lift mechanism instead of a hand-operated crank.
`
`These prior window lift mechanisms were of a bulky sector-gear and scissor arm
`
`design as shown here:
`
`UUSI, LLC
`Exhibit 2001
`12/109
`
`
`
`
`
`Ex. 2014 at Fig. 1. In the mid-1990s, changing the lift mechanism to a cable-
`
`operated mechanism allowed cheaper motors to be used.
`
`19.
`
`There were no explicit safety features built into the motor. Instead, the
`
`motor simply had a certain stall torque, and once the stall torque was reached,
`
`the motor could not apply any further force to the window. The closing speed of
`
`the motor was not very fast, because a higher closing speed would require more
`
`torque, which would then increase the stall torque of the motor, and allow the
`
`UUSI, LLC
`Exhibit 2001
`13/109
`
`
`
`motor to apply more force to anything trapped between the moving window and
`
`the window seal. Even with limited torque, these mechanisms would apply 350
`
`Newtons – 400 Newtons of force, which could snap or strangle the neck of a
`
`toddler or cut off a child's finger.
`
`20. Adding motor control circuitry, which may be able to detect an
`
`obstruction before the motor reaches its stall current, would allow for more
`
`powerful motors and therefore faster window closing cycles. More importantly,
`
`the motor control circuitry would ideally be able to limit the amount of force
`
`applied to an obstruction, thereby limiting or eliminating the risk of injury. In the
`
`years leading up to 1992, automotive suppliers were unable to bring motor
`
`control circuitry to market due to excessive false positives or excessive false
`
`negatives, or sometimes both.
`
`21. 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
`
`UUSI, LLC
`Exhibit 2001
`14/109
`
`
`
`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.
`
`22. According to a 1997 National Highway Traffic Safety Administration
`
`(NHTSA) Technical Report (Ex. 2015), a "conservative" (Ex. 2015 at 9) estimate of
`
`power window injuries was 437 injuries per year. Ex. 2015at 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.
`
`The majority of these injuries were to children under the age of 15. Ex. Id. at 32,
`
`Table 21.
`
`23.
`
`The 1992 priority application is the practical development of a system
`
`that, in real world scenarios, exhibits a very low false positive rate and an even
`
`lower false negative rate. For example only, real world scenarios may include
`
`conditions experienced by many moving object systems, such as mechanical wear
`
`and friction changes in response to heat. The conditions may also include
`
`situations more specific to motor vehicles, such as ice buildup, fluctuating power
`
`supply voltage from the alternator and/or battery, or static pressure changes due
`
`to, for example, ventilation changes. Static pressure changes may change the
`
`amount of force the window applies against the seal, and therefore change the
`
`UUSI, LLC
`Exhibit 2001
`15/109
`
`
`
`amount of friction experienced by the window. Further, the conditions may
`
`include conditions unique to a vehicle in motion, such as wind buffeting.
`
`24.
`
`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). Each obstacle detection algorithm may be set with
`
`less aggressive parameters than if the obstacle detection algorithm were the only
`
`one in use, thereby reducing false positives. By using multiple obstacle detection
`
`algorithms, the various obstacle types can each be detected more accurately
`
`according to the parameters that characterize them respectively, reducing false
`
`negatives.
`
`25.
`
`For example, see "[a]lgorithm processing for hard and soft obstruction
`
`detection is divided into two separate equations, weighting the various terms
`
`depending upon magnitude of importance and processing time requirements."
`
`Ex. 1001 at 22:28-31. An example embodiment of hard obstruction detection
`
`"essentially compares immediate average current with immediately prior average
`
`current and immediately prior average pulse period . . . ." Id. at 22:47-49. An
`
`example embodiment of soft obstruction detection is described as: "Soft
`
`UUSI, LLC
`Exhibit 2001
`16/109
`
`
`
`obstruction detection is not nearly as time sensitive, as is hard obstruction
`
`detection, thus additional terms can be computed in the time allowed before the
`
`slow increase in entrapment force exceeds maximum allowable values." Id. at
`
`22:62-65.
`
`26.
`
`Therefore,
`
`it
`
`is my understanding and belief that production
`
`automobiles prior to April of 1992 did not employ any control logic that sensed or
`
`monitored hard and soft obstacle detection while practically accounting for real-
`
`world operating conditions including wind buffeting, cold versus hot temperature
`
`effects on the window weatherstrips, vehicular voltage variations, G-forces while
`
`hitting holes in the road, and the like. Unfortunately, even after the inventions
`
`described in the '612 Patent, regulations still allowed unsafe older mechanisms to
`
`be used in vehicles. For example, in 2004, Exhibit 2016 describes a NHTSA
`
`meeting with Patent Owner UUSI, and specifically John Washeleski, co-inventor of
`
`the '612 Patent, to discuss mandating the safer systems developed by UUSI. In
`
`2004 alone, a watchdog group had documented 8 children being killed by power
`
`window mechanisms. Ex. 2016.
`
`UUSI, LLC
`Exhibit 2001
`17/109
`
`
`
`IV. LEGAL STANDARDS
`
`IV.A.
`OVERVIEW
`In preparing this report, I have been provided with certain legal
`
`27.
`
`principles, which I have included below. I have formed my opinions with these
`
`legal principles in mind. If it is determined that any other legal principles apply, I
`
`reserve the right to modify and/or supplement the opinions expressed herein.
`
`IV.B.
`ANTICIPATION/NOVELTY
`28. Because of its filing prior to March 16, 2013, I understand the condition
`
`for novelty for the '612 Patent is governed by the following version of 35 U.S.C. §§
`
`102(a) and (b):
`
`A person shall be entitled to a patent unless –
`
`(a) the invention was known or used by others in this country, or
`
`patented or described in a printed publication in this or a foreign
`
`country, before the invention thereof by the applicant for a
`
`patent, or
`
`(b) the
`
`invention was patented or described
`
`in a printed
`
`publication in this or a foreign country or in public use or on sale in
`
`this country, more than one year prior to the date of application
`
`for patent in the United States…
`
`29.
`
`For a claim to be anticipated under Section 102(a) or (b), I understand
`
`that each claim element must be disclosed, either expressly or inherently, in a
`
`single prior art reference, and the claimed arrangement or combination of those
`
`UUSI, LLC
`Exhibit 2001
`18/109
`
`
`
`elements must also be disclosed, either expressly or inherently, in that same prior
`
`art reference.
`
`30.
`
`I understand that the concept of 'inherent disclosure' does not alter the
`
`requirement that all elements must be disclosed in an anticipatory reference in
`
`the same way as they are arranged or combined in the claim and that anticipation
`
`by inherent disclosure is appropriate only when the reference discloses prior art
`
`that must necessarily include the unstated limitation. Thus, to rely on inherent
`
`disclosure to support an argument of anticipation, the limitation inherently
`
`disclosed must be necessarily present, not merely potentially present.
`
`IV.C.
`OBVIOUSNESS/NONOBVIOUSNESS
`In terms of non-obviousness or obviousness, and again, because of the
`
`31.
`
`filing date of the '612 Patent prior to March 16, 2013, I understand the following
`
`version of 35 U.S.C. §103(a) governs:
`
`A patent may not be obtained, though the invention is not
`
`identically disclosed or described as set forth in section 102 of this
`
`title, if the differences between the subject matter sought to be
`
`patented and the prior art are such that the subject matter as a
`
`whole would have been obvious at the time the invention was
`
`made to a person having ordinary skill in the art to which the said
`
`subject matter pertains. Patentability shall not be negated by the
`
`manner in which the invention was made.
`
`UUSI, LLC
`Exhibit 2001
`19/109
`
`
`
`32.
`
`In order to determine obviousness under Section 103,
`
`it
`
`is my
`
`understanding that four factual inquiries must be made concerning: 1) the scope
`
`and content of the prior art; 2) the level of ordinary skill in the art; 3) the
`
`differences between the claimed invention and the prior art; and 4) secondary
`
`considerations of nonobviousness, such as commercial success, long-felt but
`
`unresolved need, failure of others, copying, and unexpected results.
`
`33.
`
`I understand that it is not enough that all of the elements may be found
`
`in a combination of prior art references; rather, a party seeking to invalidate a
`
`patent as obvious must demonstrate that a skilled artisan would have had reason
`
`to combine the teaching of the prior art references to achieve the claimed
`
`invention. I further understand 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.
`
`34.
`
`I understand that, in view of the level of ordinary skill in the art, some
`
`modifications to the teachings of the prior art may be considered obvious design
`
`choices. However, when a structure in the prior art and a structure of the claimed
`
`invention achieve different purposes, modifying the structure of the prior art to
`
`arrive at the structure of the claimed invention would not be considered an
`
`obvious design choice.
`
`UUSI, LLC
`Exhibit 2001
`20/109
`
`
`
`35.
`
`I further understand that a reference must enable one of ordinary skill in
`
`the art (at least as of the effective filing date of a later invention) to make and use
`
`the later invention in order for the reference to render the later invention
`
`obvious. I understand that enablement requires no undue experimentation,
`
`which can be assessed by weighing factors
`
`including the quantity of
`
`experimentation necessary, the amount of direction or guidance presented, the
`
`presence or absence of working examples, the nature of the invention, the state
`
`of the prior art, the relative skill of those in the art, and the predictability of the
`
`art.
`
`V. LEVEL OF ORDINARY SKILL IN THE ART
`36. A person of ordinary skill in the pertinent art at the time of invention
`
`would likely be an individual with a Bachelor of Science degree in Electrical or
`
`Electronics Engineering with at least a year of practical experience. At the time of
`
`invention, however, there were many individuals working in the pertinent art
`
`without an engineering Bachelor's degree but with an aptitude for electronics and
`
`multiple years of hands-on experience developing electronic motor control
`
`systems and programming microcontrollers.
`
`UUSI, LLC
`Exhibit 2001
`21/109
`
`
`
`VI. CITED REFERENCES
`
`VI.A.
`ITOH
`I have read and understood Itoh, which describes an automatic opening
`
`37.
`
`and closing device for a window. Ex. 1006, Abstract. The device controls a motor
`
`based on measuring the commutation ripple current induced in the motor current
`
`by motor rotation. Itoh makes obstacle detection decisions based on the time
`
`between rising edges of motor commutation current pulses. Each measurement
`
`of rising edge to rising edge is called Tp. See Fig. 8 of Itoh:
`
`TIMER INTERRUPTION
`SIGNAL
`
`MOTOR PULSE SIGNAL
`(HIGH SPEED)
`
`0.1 msec
`
`-
`r
`-'- ,- -- -J---
`1 1---"----7
`
`Tp - 0.1 msec
`
`MOTOR PULSE SIGNAL
`(LOW SPEED)
`
`!--
`
`Tp
`
`0.1 msec
`
`
`
`Ex. 1006 at Fig. 8.
`
`38. An integer number, n, of prior Tp values are stored. See Fig. 9 of Itoh:
`
`UUSI, LLC
`Exhibit 2001
`22/109
`
`
`
`Tpn
`
`Tpn-1
`
`Tpn-2
`
`Tp2
`Tpl
`
`Tp
`
`n
`
`Id. at Fig. 9.
`
`SPEED DATA OF THE LAST TIME BUT ONE
`
`SPEED DATA OF THE LAST TIME
`
`SPEED DATA OF THE PRESENT TIME
`
`
`
`39.
`
`The n prior Tp values are averaged to create an average value, Tm. Id. at
`
`10:37-44. The ratio of Tp and Tm is compared to a fixed threshold parameter. The
`
`threshold parameter can assume one of two values depending on which control
`
`regime Itoh is operating in. In a first regime, when the window is opening, the
`
`threshold parameter is β. See decision diamonds 116 and 110 of Fig. 5 of Itoh. In a
`
`second regime, when the window is closing, and is nearly closed (within "range of
`
`closed position"), the threshold parameter for obstacle detection is β. See
`
`decision diamond 112 of Fig. 5 of Itoh. In a third regime, when the window is
`
`closing, but is not nearly closed ("out of range of closed position"), the threshold
`
`parameter for obstacle detection is α. See decision diamond 108 of Fig. 5 of Itoh.
`
`40.
`
`In response to the ratio exceeding the threshold parameter, Itoh
`
`performs an action based on the present control regime. In the first regime, the
`
`UUSI, LLC
`Exhibit 2001
`23/109
`
`
`
`ratio exceeding the threshold parameter causes Itoh to assume the window is
`
`fully opened and resets a pulse counter to a reference value. In the second
`
`regime, the ratio exceeding the threshold parameter causes Itoh to assume the
`
`window is fully closed and clear the pulse counter to zero. In the third regime, the
`
`ratio exceeding the threshold parameter causes Itoh to assume the window has
`
`encountered an obstacle and open the window fully.
`
`41.
`
`In real-world situations, Itoh would be prone to experiencing false
`
`positives – that is, detecting obstacles that do not in fact exist. Itoh declares an
`
`obstacle whenever the ratio of Tp to Tm is greater than a threshold. Tp is a single
`
`measurement, however. If Itoh misses reading a single pulse, which can be caused
`
`by any number of electrical nonidealities or the influence of external forces such
`
`as noise, the resulting value of Tp will be approximately doubled. As a result, the
`
`ratio of Tp to Tm would