`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`—————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`—————
`
`WEBASTO ROOF SYSTEMS, INC.
`Petitioner,
`
`v.
`
`UUSI, LLC,
`Patent Owner.
`
`—————
`
`Case IPR 2013-_____
`Patent 7,548,037
`
`—————
`
`DECLARATION OF FRANCESCO BORRELLI, PH.D.
`
`1
`
`
`
`
`
`
`
`

`

`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`—————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`—————
`
`WEBASTO ROOF SYSTEMS, INC.
`Petitioner,
`
`v.
`
`UUSI, LLC,
`Patent Owner.
`
`—————
`
`Case IPR 2013-_____
`Patent 7,548,037
`
`—————
`
`DECLARATION OF FRANCESCO BORRELLI, PH.D.
`
`1
`
`Webasto Roof Systems, Inc.
`Exhibit 1001
`
`UUSI, LLC
`Exhibit 2011
`1/101
`
`

`

`
`
`I.
`
`II.
`
`Table of Contents
`
`Summary of Qualifications .............................................................................. 9
`
`Understanding of Legal Principles ................................................................ 12
`
`A. Anticipation .............................................................................................. 12
`
`B.
`
`C.
`
`D.
`
`E.
`
`Obviousness .............................................................................................. 13
`
`Claim Construction ................................................................................... 15
`
`Priority Date ............................................................................................. 15
`
`Level of Ordinary Skill in the Art ............................................................ 17
`
`III. Background of the Technology ..................................................................... 18
`
`IV. Summary of the ’037 Patent .......................................................................... 26
`
`V.
`
`Claim Construction ........................................................................................ 30
`
`A.
`
`B.
`
`C.
`
`Regulator .................................................................................................. 30
`
`Predicted Variable Parameter Value ........................................................ 33
`
`System Equation Including a Number of Coefficients Which are
`Multiplied by a Number of Different Parameter Values Measured
`Over a Period of Time .............................................................................. 35
`
`D. De-Activating ........................................................................................... 37
`
`VI. Background of the Prior Art .......................................................................... 39
`
`A.
`
`B.
`
`C.
`
`Bernard ..................................................................................................... 39
`
`Duhame ..................................................................................................... 43
`
`Jones ......................................................................................................... 47
`
`D. Klesing ...................................................................................................... 48
`
`E.
`
`F.
`
`G.
`
`Chikaraishi ................................................................................................ 51
`
`Seppala ...................................................................................................... 52
`
`Takabe ...................................................................................................... 54
`
`VII. Grounds of Invalidity ..................................................................................... 55
`
`A.
`
`Claims 7 and 13 are Anticipated by Bernard ........................................... 55
`
`
`
`2
`
`Webasto Roof Systems, Inc.
`Exhibit 1001
`
`UUSI, LLC
`Exhibit 2011
`2/101
`
`

`

`
`
`
`
`1.
`
`Claim 7: A method for detecting the presence of an object
`caught between a closure and its respective frame of a power
`system ..................................................................................................55
`
`a.
`
`b.
`
`c.
`
`d.
`
`e.
`
`a.
`
`b.
`
`2.
`
`providing a closure for opening and closing via being driven
`by an electric drive motor controlled by a control circuit ..............56
`
`calculating a variable parameter value utilizing a system
`equation, said system equation including a number of
`coefficients which are multiplied by a number of different
`parameter values measured over a period of time, such that
`said variable parameter value for any one of a series of
`different times is based upon a plurality of measured
`parameter values measured over a period of time .........................57
`
`sensing a variable parameter value of the power system
`during closing of the closure ..........................................................59
`
`comparing said sensed variable parameter value to a
`previously calculated variable parameter value based upon a
`presumption of how said predicted variable parameter value
`would behave without the presence of an object ...........................59
`
`detecting an object caught between the closure and its
`respective frame based on the result of the compared
`parameter values .............................................................................60
`
`Claim 13: A method for controlling activation of a motor for
`moving a window or panel along a path of travel and
`deactivating the motor if an obstacle is encountered during
`movement of the window or panel along its path of travel .................60
`
`measuring a parameter of the motor that varies in response
`to the window or panel encountering an obstacle while
`moving along its path of travel ......................................................61
`
`calculating a threshold value utilizing a system equation,
`said system equation including a number of coefficients
`which are multiplied by a number of different parameter
`values measured over a period of time, such that said
`threshold value for any one of a series of different times is
`based upon a plurality of measured parameter values
`measured over a period of time ......................................................62
`
`3
`
`Webasto Roof Systems, Inc.
`Exhibit 1001
`
`UUSI, LLC
`Exhibit 2011
`3/101
`
`

`

`
`
`
`
`c.
`
`d.
`
`sensing a value of the parameter during movement of the
`window or panel along its path of travel ........................................63
`
`determining if an obstacle has been encountered by the
`window or panel by comparing the sensed parameter value
`to the previously calculated threshold value based upon a
`presumption of how said calculated threshold value would
`behave without encountering an obstacle ......................................63
`
`B.
`
`C.
`
`Claim 1 is Obvious in View of Bernard ................................................... 64
`
`Claim 1 is Obvious in View of Bernard in Combination with
`Chikaraishi ................................................................................................ 65
`
`D.
`
`Claims 7 and 13 are Anticipated by Duhame ........................................... 66
`
`1.
`
`Claim 7: A method for detecting the presence of an object
`caught between a closure and its respective frame of a power
`system ..................................................................................................66
`
`a.
`
`b.
`
`c.
`
`d.
`
`e.
`
`providing a closure for opening and closing via being driven
`by an electric drive motor controlled by a control circuit ..............66
`
`calculating a variable parameter value utilizing a system
`equation, said system equation including a number of
`coefficients which are multiplied by a number of different
`parameter values measured over a period of time, such that
`said variable parameter value for any one of a series of
`different times is based upon a plurality of measured
`parameter values measured over a period of time .........................67
`
`sensing a variable parameter value of the power system
`during closing of the closure ..........................................................69
`
`comparing said sensed variable parameter value to a
`previously calculated variable parameter value based upon a
`presumption of how said predicted variable parameter value
`would behave without the presence of an object ...........................70
`
`detecting an object caught between the closure and its
`respective frame based on the result of the compared
`parameter values .............................................................................71
`
`2.
`
`Claim 13: A method for controlling activation of a motor for
`moving a window or panel along a path of travel and
`
`4
`
`Webasto Roof Systems, Inc.
`Exhibit 1001
`
`UUSI, LLC
`Exhibit 2011
`4/101
`
`

`

`
`
`
`
`deactivating the motor if an obstacle is encountered during
`movement of the window or panel along its path of travel .................72
`
`a.
`
`b.
`
`c.
`
`d.
`
`measuring a parameter of the motor that varies in response
`to the window or panel encountering an obstacle while
`moving along its path of travel ......................................................73
`
`calculating a threshold value utilizing a system equation,
`said system equation including a number of coefficients
`which are multiplied by a number of different parameter
`values measured over a period of time, such that said
`threshold value for any one of a series of different times is
`based upon a plurality of measured parameter values
`measured over a period of time ......................................................73
`
`sensing a value of the parameter during movement of the
`window or panel along its path of travel ........................................74
`
`determining if an obstacle has been encountered by the
`window or panel by comparing the sensed parameter value
`to the previously calculated threshold value based upon a
`presumption of how said calculated threshold value would
`behave without encountering an obstacle ......................................74
`
`E.
`
`Claim 1 is Obvious in View of Duhame in Combination with
`Seppala ...................................................................................................... 76
`
`F.
`
`Claims 7 and 13 are Anticipated by Jones ............................................... 77
`
`1.
`
`Claim 7: A method for detecting the presence of an object
`caught between a closure and its respective frame of a power
`system ..................................................................................................77
`
`a.
`
`b.
`
`providing a closure for opening and closing via being driven
`by an electric drive motor controlled by a control circuit ..............78
`
`calculating a variable parameter value utilizing a system
`equation, said system equation including a number of
`coefficients which are multiplied by a number of different
`parameter values measured over a period of time, such that
`said variable parameter value for any one of a series of
`different times is based upon a plurality of measured
`parameter values measured over a period of time .........................78
`
`5
`
`Webasto Roof Systems, Inc.
`Exhibit 1001
`
`UUSI, LLC
`Exhibit 2011
`5/101
`
`

`

`
`
`
`
`2.
`
`c.
`
`d.
`
`e.
`
`a.
`
`b.
`
`c.
`
`d.
`
`sensing a variable parameter value of the power system
`during closing of the closure ..........................................................82
`
`comparing said sensed variable parameter value to a
`previously calculated variable parameter value based upon a
`presumption of how said predicted variable parameter value
`would behave without the presence of an object ...........................83
`
`detecting an object caught between the closure and its
`respective frame based on the result of the compared
`parameter values .............................................................................83
`
`Claim 13: A method for controlling activation of a motor for
`moving a window or panel along a path of travel and
`deactivating the motor if an obstacle is encountered during
`movement of the window or panel along its path of travel .................84
`
`measuring a parameter of the motor that varies in response
`to the window or panel encountering an obstacle while
`moving along its path of travel ......................................................85
`
`calculating a threshold value utilizing a system equation,
`said system equation including a number of coefficients
`which are multiplied by a number of different parameter
`values measured over a period of time, such that said
`threshold value for any one of a series of different times is
`based upon a plurality of measured parameter values
`measured over a period of time ......................................................86
`
`sensing a value of the parameter during movement of the
`window or panel along its path of travel ........................................86
`
`determining if an obstacle has been encountered by the
`window or panel by comparing the sensed parameter value
`to the previously calculated threshold value based upon a
`presumption of how said calculated threshold value would
`behave without encountering an obstacle ......................................87
`
`G.
`
`H.
`
`1.
`
`Claim 1 is Obvious in View of Jones in Combination with Seppala ....... 88
`
`Claims 7 and 13 are Anticipated by Klesing ............................................ 89
`
`Claim 7: A method for detecting the presence of an object
`caught between a closure and its respective frame of a power
`system ..................................................................................................89
`
`6
`
`Webasto Roof Systems, Inc.
`Exhibit 1001
`
`UUSI, LLC
`Exhibit 2011
`6/101
`
`

`

`
`
`
`
`2.
`
`a.
`
`b.
`
`c.
`
`d.
`
`e.
`
`a.
`
`b.
`
`c.
`
`d.
`
`providing a closure for opening and closing via being driven
`by an electric drive motor controlled by a control circuit ..............90
`
`calculating a variable parameter value utilizing a system
`equation, said system equation including a number of
`coefficients which are multiplied by a number of different
`parameter values measured over a period of time, such that
`said variable parameter value for any one of a series of
`different times is based upon a plurality of measured
`parameter values measured over a period of time .........................90
`
`sensing a variable parameter value of the power system
`during closing of the closure ..........................................................93
`
`comparing said sensed variable parameter value to a
`previously calculated variable parameter value based upon a
`presumption of how said predicted variable parameter value
`would behave without the presence of an object ...........................94
`
`detecting an object caught between the closure and its
`respective frame based on the result of the compared
`parameter values .............................................................................94
`
`Claim 13: A method for controlling activation of a motor for
`moving a window or panel along a path of travel and
`deactivating the motor if an obstacle is encountered during
`movement of the window or panel along its path of travel .................95
`
`measuring a parameter of the motor that varies in response
`to the window or panel encountering an obstacle while
`moving along its path of travel ......................................................96
`
`calculating a threshold value utilizing a system equation,
`said system equation including a number of coefficients
`which are multiplied by a number of different parameter
`values measured over a period of time, such that said
`threshold value for any one of a series of different times is
`based upon a plurality of measured parameter values
`measured over a period of time ......................................................97
`
`sensing a value of the parameter during movement of the
`window or panel along its path of travel ........................................98
`
`determining if an obstacle has been encountered by the
`window or panel by comparing the sensed parameter value
`
`7
`
`Webasto Roof Systems, Inc.
`Exhibit 1001
`
`UUSI, LLC
`Exhibit 2011
`7/101
`
`

`

`
`
`
`
`to the previously calculated threshold value based upon a
`presumption of how said calculated threshold value would
`behave without encountering an obstacle ......................................98
`
`I.
`
`Claim 1 is Obvious in View of Klesing in Combination with
`Takabe ...................................................................................................... 99
`
`8
`
`Webasto Roof Systems, Inc.
`Exhibit 1001
`
`UUSI, LLC
`Exhibit 2011
`8/101
`
`

`

`
`
`1.
`
`2.
`
`I, Francesco Borrelli, Ph.D., hereby declare as follows:
`
`I have been retained by counsel for Petitioner Webasto Roof Systems, Inc.
`
`(“WRSI”). I am being compensated for my work in this matter at a rate of $300
`
`per hour for time spent consulting and preparing to testify and being deposed and
`
`at a rate of $500 per hour for time spent testifying at a hearing or trial. My
`
`compensation is not dependent in any way on the outcome of this proceeding.
`
`3.
`
`I have been asked to provide my opinions regarding whether claims 1, 7 and
`
`13 (“the Challenged Claims”) of U.S. Patent No. 7,548,037 (“the ’037 patent”) are
`
`invalid because they are anticipated or would have been obvious to a person of
`
`ordinary skill in the art at the time of the alleged invention. In my opinion, claims
`
`1, 7 and 13 are invalid based on the grounds I discuss below.
`
`I.
`
`SUMMARY OF QUALIFICATIONS
`
`4. My qualifications and background are set forth in my curriculum vitae, a
`
`copy of which is attached as Exhibit 1002. A synopsis of my qualifications and
`
`background is set forth below.
`
`5.
`
`I am an Associate Professor in the Department of Mechanical Engineering at
`
`the University of California, Berkeley. My areas of research include constrained
`
`optimal control, model predictive control and its application to advanced
`
`automotive control and energy efficient building operation.
`
`
`
`9
`
`Webasto Roof Systems, Inc.
`Exhibit 1001
`
`UUSI, LLC
`Exhibit 2011
`9/101
`
`

`

`
`
`6.
`
`In 1998, I received a ‘Laurea’ degree in electrical engineering from the
`
`University “Federico II,” which is located in Napoli, Italy. This is the equivalent
`
`of a Master’s of Science degree from a university in the United States.
`
`7.
`
`In 2002, I received a Ph.D. (Dr. Sc. Tech) from the Automatic Control
`
`Laboratory at the Swiss Federal Institute of Technology ( ETH), which is located
`
`in Zurich, Switzerland. The dissertation that I published in connection with this
`
`degree was titled “Discrete Time Constrained Optimal Control” and related to
`
`methods for controlling any dynamic system (mechanical, electrical, thermal) in an
`
`optimal way when system constrains are present. I received the ETH Medal for
`
`this dissertation, which is awarded annually for the best Ph.D. thesis at the Swiss
`
`Federal Institute of Technology.
`
`8.
`
`From 2002 to 2003, I worked a post-doc at the Automatic Control
`
`Laboratory at the Swiss Federal Institute of Technology ( ETH). In 2005, I
`
`transitioned my work to the Department of Aerospace Engineering and Mechanics
`
`of the University of Minnesota, where I worked as a post-doc and Adjunct
`
`Assistant Professor.
`
`9.
`
`In 2007, I was appointed as an Assistant Professor in the Engineering
`
`Department of the Universita del Sannio, which is located in Benevento, Italy. I
`
`served there through 2007, after which I joined the Mechanical Engineering
`
`Department of the University of California, Berkley. I initially served as an
`
`
`
`10
`
`Webasto Roof Systems, Inc.
`Exhibit 1001
`
`UUSI, LLC
`Exhibit 2011
`10/101
`
`

`

`
`
`Assistant Professor in the Mechanical Engineering Department of the University of
`
`California, Berkley. In 2011, I was elevated to the position of Associate Professor.
`
`10.
`
`In 2004, I was awarded the Innovation Prize from the Swiss Society of
`
`Electrical Engineers (Electro-Swiss). This was awarded to me for the development
`
`of novel feedback control algorithms for constrained dynamical systems.
`
`11. From 2005 through 2010, I worked as a consultant for Honeywell Research
`
`Laboratory, which is located in Minneapolis, Minnesota. As a consultant for
`
`Honeywell Research Laboratory, I worked on automotive control systems.
`
`12. From 2009 through 2011, I served as the Chair of the IEEE Technical
`
`Committee on Automotive Control. The committee focuses on coordinating and
`
`advertising the research activities in the area of modeling, simulation,
`
`identification, estimation, control and diagnostics of present and future automotive
`
`systems.
`
`13.
`
`In 2009, I received the NSF Career Award from the United States National
`
`Science Foundation. I received this award for the study of systematic analysis and
`
`design of distributed controllers that guarantee constraint satisfaction in large scale
`
`networked dynamic systems.
`
`14. Beginning in 2012, I have worked as a consultant for Mitsubishi Electric
`
`Research Laboratories, which is located in Boston, Massachusetts. As a consultant
`
`
`
`11
`
`Webasto Roof Systems, Inc.
`Exhibit 1001
`
`UUSI, LLC
`Exhibit 2011
`11/101
`
`

`

`
`
`for Mitsubishi Electric Research Laboratories, I have worked on control algorithms
`
`for fast tracking in robotic systems.
`
`15.
`
`In 2012, I received the IEEE Control System Technology Award from the
`
`Institute of Electrical and Electronics Engineers. This was awarded to me for the
`
`design, implementation and commercialization of the OnRAMP Design Suite for
`
`Powertrain Control, which is a tool used to design engine control systems.
`
`16.
`
`In 2012, I was appointed as a co-Director of the Hyundai-UC Berkeley
`
`Center of Excellence on Active Safety. Through this Center of Excellence,
`
`Hyundai engineers work with top researchers from the University of California,
`
`Berkley to work on vehicle dynamics and integrated vehicle safety systems.
`
`17.
`
`I am the author of more than one hundred publications and in the field of
`
`predictive control, including the book Constrained Optimal Control of Linear and
`
`Hybrid Systems published by Springer Verlag.
`
`18.
`
`I am also a named inventor on eight U.S. patents. These patents all relate to
`
`automotive control systems.
`
`II. UNDERSTANDING OF LEGAL PRINCIPLES
`
`A. Anticipation
`
`19.
`
`I understand that to anticipate a patent claim, a single prior art reference
`
`must disclose every element of the claim, either explicitly or inherently to a person
`
`of ordinary skill in the art. I understand that an element of a claim is “inherent” in
`
`
`
`12
`
`Webasto Roof Systems, Inc.
`Exhibit 1001
`
`UUSI, LLC
`Exhibit 2011
`12/101
`
`

`

`
`
`the disclosure of a prior art reference when the missing element is the inevitable
`
`outcome of the process and/or thing that is described in the prior art reference.
`
`B. Obviousness
`
`20.
`
`I understand that a prior art reference can render a patent claim obvious to
`
`one of ordinary skill in the art if the differences between the subject matter set
`
`forth in the patent claim and the prior art are such that the subject matter of the
`
`claim would have been obvious at the time the claimed invention was made. In
`
`analyzing obviousness, I understand that it is important to consider the scope of the
`
`claims, the level of skill in the relevant art, the scope and content of the prior art,
`
`the differences between the prior art and the claims, and any secondary
`
`considerations.
`
`21.
`
`I understand that when the claimed subject matter involves combining pre-
`
`existing elements to yield no more than one would expect from such an
`
`arrangement, the combination is obvious. I also understand that in assessing
`
`whether a claim is obvious one must consider whether the claimed improvement is
`
`more than the predictable use of prior art elements according to their established
`
`functions. I understand that there need not be a precise teaching in the prior art
`
`directed to the specific subject matter of a claim because one can take account of
`
`the inferences and creative steps that a person of skill in the art would employ. I
`
`further understand that a person of ordinary skill is a person of ordinary creativity,
`
`
`
`13
`
`Webasto Roof Systems, Inc.
`Exhibit 1001
`
`UUSI, LLC
`Exhibit 2011
`13/101
`
`

`

`
`
`not an automaton. However, I understand that obviousness cannot be based on the
`
`hindsight combination of components selectively culled from the prior art.
`
`22.
`
`I understand that in an obviousness analysis, neither the motivation nor the
`
`avowed purpose of the inventors controls the inquiry. Any need or problem known
`
`in the field at the time of the invention and addressed by the patent can provide a
`
`reason for combining elements. For example, I understand that it is important to
`
`consider whether there existed at the time of the invention a known problem for
`
`which there was an obvious solution encompassed by the patent’s claims. I
`
`understand that known techniques can have obvious uses beyond their primary
`
`purposes, and that in many cases a person of ordinary skill can fit the teachings of
`
`multiple pieces of prior art together like pieces of a puzzle.
`
`23.
`
`I understand that, when there is a reason to solve a problem and there are a
`
`finite number of identified, predictable solutions, a person of ordinary skill has
`
`good reason to pursue the known options within his or her technical grasp. I
`
`further understand that, if this leads to the anticipated success, it is likely the
`
`product not of innovation but of ordinary skill and common sense, which bears on
`
`whether the claim would have been obvious.
`
`24.
`
`I understand that secondary considerations can include, for example,
`
`evidence of commercial success of the invention, evidence of a long-felt need that
`
`was solved by an invention, evidence that others copied an invention, or evidence
`
`
`
`14
`
`Webasto Roof Systems, Inc.
`Exhibit 1001
`
`UUSI, LLC
`Exhibit 2011
`14/101
`
`

`

`
`
`that an invention achieved a surprising result. I further understand that such
`
`evidence must have a nexus, or causal relationship to the elements of a claim, in
`
`order to be relevant. I am unaware of any such secondary considerations.
`
`C. Claim Construction
`
`25.
`
`I understand that the ’037 patent has expired. I understand the claims of an
`
`expired patent should be interpreted in this proceeding in the way a person of
`
`ordinary skill in the art would have understood them at the time of the alleged
`
`invention, principally in view of the patent specification and prosecution history,
`
`and in view other sources of information available at the time.
`
`D.
`
`Priority Date
`
`26.
`
`I understand that the application leading to the ’037 patent was filed on
`
`March 18, 2002, and that the application is a continuation-in-part of various other
`
`patent applications dating back to an earliest application that was filed on April 22,
`
`1992.
`
`27.
`
`I understand that during prosecution of the application giving rise to the ’037
`
`patent, the Applicants repeatedly argued that the effective filing date for this
`
`application was May 1, 2000. Ex. 1004 (2004-08-10 Revised Amendment and
`
`Response to Office Action) at 483 (“The effective filing date of the present
`
`application for the purposes of declaring an interference with [Tyckowski] is May
`
`1, 2000.”); id. at 593 (2005-07-03 Brief on Appeal) (“The effective filing date of
`
`
`
`15
`
`Webasto Roof Systems, Inc.
`Exhibit 1001
`
`UUSI, LLC
`Exhibit 2011
`15/101
`
`

`

`
`
`the present application for the purposes of declaring an interference with
`
`[Tyckowski] is May 1, 2000.”).
`
`28.
`
`In a Brief on Appeal, the Applicants identified three equations, which the
`
`Applicants defined as Equations A through C, to support the second clause of the
`
`independent claims. Specifically, the Applicants relied on page 36, lines 5-9
`
`(Equation A), and 22-24 (Equation B), and page 37, lines 9-11 (Equation C), of the
`
`disclosure they made on May 1, 2000. Id. (2005-07-13 Brief on Appeal) at 598-
`
`607.
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`29.
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`I reviewed the disclosures filed prior to May 1, 2000, and did not find the
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`Equations A-C which the Applicants relied on extensively to try to support their
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`claims in their Brief on Appeal. See Ex. 1007 (U.S. Provisional Pat. App.
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`No. 60/169,061); Ex. 1008 (U.S. Pat. No. 6,064,165).
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`30. An interference was declared, as Applicants had sought, and the application
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`for the ’037 patent was assigned a priority date of May 1, 2000 in the Declaration
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`of Interference. Ex. 1004 (2008-03-18 Declaration – Bd.R. 203(b)) at 813 (“The
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`parties are accorded the following benefit for Count 1: ... Boisvert Application
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`10/100,892: 09/562,986, filed 1 May 2000, now patent 6,404,158, issued 11 June
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`2002.”).
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`31.
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`In view of this information, it is my opinion that claims 1, 7 and 13 of the
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`’037 patent are not entitled to an effective filing date earlier than May 1, 2000. I
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`also have not seen any evidence that the claims of the ’037 patent were conceived
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`by the Applicants before May 1, 2000. All of the prior art references I address in
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`this declaration were published prior to May 1, 2000.
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`E.
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`Level of Ordinary Skill in the Art
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`32.
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`In forming my opinions in this declaration, I have considered the ’037 patent
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`claims and disclosure, relevant portions of the prosecution history of the ’037
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`patent, the Petition for inter partes review of the ’037 patent, the exhibits to the
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`Petition for inter partes review of the ’037 patent and the Patent Owner’s
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`infringement contentions in litigation, and my own experience and expertise.
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`33.
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`It is my understanding that my analysis of the interpretation and validity
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`must be undertaken from the perspective of what would have been known or
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`understood by someone of ordinary skill in the art at least as early as May 1, 2000.
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`Where I address prior art references published prior to April 22, 1992, my opinions
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`should also be understood as applicable to those of ordinary skill in the art on or
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`before this date. It is my opinion that the claims are directed to a person with at
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`least a Bachelor of Science degree (or the equivalent) in a relevant scientific or
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`engineering field, such as electrical engineering, mechanical engineering, or
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`automotive engineering, and having approximately two (2) years of experience
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`related to the control systems.
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`34. Based on my academic experience and my work in connection with industry
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`relating to automotive control systems, as discussed in Section I above, as well as
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`my supervision of and work with numerous graduate students, I am well
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`acquainted with knowledge of one of ordinary skill as of at least May 1, 2000.
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`III. BACKGROUND OF THE TECHNOLOGY
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`35. By May 1, 2000, it was well recognized that systems that control the
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`movement of closures such as windows and doors could cause bodily injury to
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`users during closing operations. See, e.g., Ex. 1003 (’037 patent) at 12 (1:30-37).
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`There was an important need to ensure operational safety of closure devices such
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`as garage doors, elevator doors, and, indeed, motor vehicle windows and panels.
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`Id. For instance, from my understanding, by 1990, Congress issued a mandate in
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`the Consumer Product Safety Improvement Act of 1990 that included an
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`entrapment protection requirement for garage doors with automatic openers. See
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`Ex. 1020 (Press Release, U.S. Consumer Product Safety Commission, Safety
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`Commission Publishes Final Rules for Automatic Garage Door Openers (Dec. 3,
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`1992)). Similarly, as the named inventors of the ’037 patent acknowledged in the
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`background section, Ex. 1003 (’037 patent) at 12 (1:30-37), the National Highway
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`Traffic Safety Administration (NHTSA) Standard 118 contained regulations to
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`assure safe operation of power-operated windows and roof panels. From my
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`understanding, the original version of this standard issued in 1971 and specifies
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`“requirements for power operated window, partition, and roof panel systems to
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`minimize the likelihood of death or injury from their accidental operation.”
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`Ex. 1021 (Federal Motor Vehicle Safety Standards, 36 Fed. Reg. 22,902 (Dec. 2,
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`1971) (previously codified at 49 C.F.R. Part 571)) at 39 (Standard No. 118).
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`36. As a result, a principal goal for those skilled in the art by May 1, 2000, and
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`in fact much earlier, was the accurate and rapid detection of obstructions and
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`collisions in apparatus that control the movement of windows, panels, and other
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`moving objects that could potentially cause physical injury.
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`37. By May 1, 2000, obstruction detectio