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
`
`
`
`PATENT OWNER'S RESPONSE
`
`
`
`
`
`

`
`IPR2014-00648
`Patent 8,217,612
`
`TABLE OF CONTENTS
`
`I.
`
`Introduction ................................................................................................. 1
`
`A.
`
`B.
`
`C.
`
`Background of Patent Owner ............................................................. 1
`
`State of the Art .................................................................................. 2
`
`Petitioner's Alleged Expert Dr. Toliyat is Not Familiar with the State
`of the Art ........................................................................................... 5
`
`II.
`
`Independent Claim 1 .................................................................................. 18
`
`A.
`
`Claim Construction .......................................................................... 18
`
`1.
`
`2.
`
`Identifying and Sensing .......................................................... 18
`
`No Construction Needed for Deactivate ................................ 21
`
`B.
`
`Ground C – Alleged Obviousness over Lamm, Itoh, and Bernard ..... 22
`
`1.
`
`2.
`
`3.
`
`Lamm fails to teach two concurrent obstacle detection
`algorithms .............................................................................. 22
`
`Itoh fails to teach two concurrent obstacle detection
`algorithms .............................................................................. 25
`
`Bernard fails to teach two concurrent obstacle detection
`algorithms .............................................................................. 26
`
`4.
`
`Itoh and Bernard cannot be combined with Lamm ................ 26
`
`C.
`
`Ground D – Alleged Obviousness over Duhame and Kinzl ................ 30
`
`1.
`
`2.
`
`Duhame fails to teach two concurrent obstacle detection
`algorithms .............................................................................. 30
`
`Kinzl fails to teach two concurrent obstacle detection
`algorithms .............................................................................. 31
`
`III.
`
`Dependent Claim 5 .................................................................................... 32
`
`A.
`
`B.
`
`Claim Construction .......................................................................... 32
`
`Ground C – Alleged Obviousness over Lamm, Itoh, and Bernard ..... 33
`
`1.
`
`Lamm does not teach a 40 ms time interval within which past
`measurements for an obstacle detection threshold are
`measured ............................................................................... 33
`
`

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`IPR2014-00648
`Patent 8,217,612
`
`2.
`
`3.
`
`Itoh does not teach a 40 ms time interval within which past
`measurements for an obstacle detection threshold are
`measured ............................................................................... 36
`
`Bernard does not teach a 40 ms time interval within which past
`measurements for an obstacle detection threshold are
`measured ............................................................................... 42
`
`IV.
`
`Independent Claim 6 .................................................................................. 44
`
`A.
`
`B.
`
`C.
`
`Claim Construction .......................................................................... 44
`
`Ground A – Alleged Anticipation by Bernard .................................... 46
`
`Ground C – Alleged Obviousness over Lamm, Itoh, and Bernard ..... 48
`
`1.
`
`2.
`
`3.
`
`Lamm does not disclose detecting an abrupt stoppage of
`window .................................................................................. 48
`
`Itoh does not disclose detecting an abrupt stoppage of window
`............................................................................................... 51
`
`Bernard does not disclose detecting an abrupt stoppage of
`window .................................................................................. 54
`
`4.
`
`Itoh and Bernard cannot be combined with Lamm ................ 55
`
`D.
`
`Ground D – Alleged Obviousness over Duhame and Kinzl ................ 55
`
`1.
`
`2.
`
`Duhame does not disclose detecting an abrupt stoppage of
`window .................................................................................. 55
`
`Kinzl does not disclose detecting an abrupt stoppage of
`window .................................................................................. 55
`
`3.
`
`Duhame and Kinzl cannot be combined ................................. 57
`
`V.
`
`Dependent Claims 2, 7, and 8 .................................................................... 57
`
`VI.
`
`Non-enablement ........................................................................................ 58
`
`VII.
`
`Conclusion ................................................................................................. 59
`
`
`
`

`
`IPR2014-00648
`Patent 8,217,612
`
`TABLE OF AUTHORITIES
`
`CASES
`
`CAE Screenplates, Inc. v. Heinrich Fiedler GmbH & Co.,
`224 F.3d 1308 (Fed. Cir. 2000) ......................................................................... 19
`
`In re Cyclobenzaprine Hydrochloride Extended-Release Capsule
`Patent Litig., 676 F.3d 1063 (Fed. Cir. 2012)....................................................... 6
`
`In re Kumar, 418 F.3d 1361 (Fed. Cir. 2005) ......................................................... 58
`
`KSR Int'l. Co. v. Teleflex Inc., 127 S.Ct. 1727 (2007) ......................................... 28, 30
`
`Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561 (Fed. Cir. 1987) ....................... 5
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) .......................................... 18
`
`Virginia Innovation Sciences, Inc. v. Samsung Electronics Co.,
`976 F. Supp. 2d 794 (E.D. Va. 2013) ................................................................. 19
`
`W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540 (Fed. Cir. 1983)…………….26
`
`World Class Tech. Corp. v. Ormco Corp., 2014 U.S. App. LEXIS 20061,
`October 20, 2014 (Fed. Cir. 2014) ............................................................... 32, 45
`
`BOARD DECISIONS
`
`IPR2013-00044, Institution Decision, Paper 12 .................................................... 22
`
`IPR2014-00416, Institution Decision, Paper 12 ............................................... 33, 38
`
`IPR2014-00419, Institution Decision, Paper 9 ...................................................... 21
`
`IPR2014-00530, Institution Decision, Paper 8 ...................................................... 39
`
`

`
`IPR2014-00648
`Patent 8,217,612
`
`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. Nartron 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. 8,217,612
`
`(the '612 Patent), U.S. Patent No. 7,579,802 (the '802 Patent), and U.S. Patent No.
`
`7,548,037 (the '037 Patent), which was included in a motor controller it sold to
`
`Webasto Roof Systems Inc. After Webasto stopped purchasing this controller
`
`from Nartron, Nartron sued Webasto, the present Petitioner in the pending IPRs
`
`2014-00648, 2014-00649, and 2014-00650 for infringement of the '612, '037, and
`
`'802 Patents. Additionally, Nartron sued Brose, another Petitioner in the pending
`
`IPRs 2014-00416 and 2014-00417 for infringement of the '612 and '802 Patents.
`
`Photographs of this Webasto-Nartron controller are shown in Exhibit 2018.
`
`Photographs of the Brose/Bosch motor and their controller incorporating
`
`Nartron's patented technology are shown in Exhibit 2019.
`
`Page 1
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`

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`IPR2014-00648
`Patent 8,217,612
`
`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 of Dr.
`
`Mark Ehsani in Support of Patent Owner's Response, Ex. 2001 at ¶ 18 (all future
`
`references to Exhibit 2001 are 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. Id. at 19. According to a 1997
`
`National Highway Traffic Safety Administration (NHTSA) Technical Report (Ex.
`
`2015), a "conservative" (Ex. 2015 at pg. 9) estimate of power window injuries was
`
`437 injuries per year. Ex. 2015 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. 2015 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
`
`Page 2
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`IPR2014-00648
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`were unable to bring motor control circuitry to market due to excessive false
`
`positives and false negatives. Ex. 2001 at 20.
`
`As Patent Owner's expert, Dr. Mark Ehsani, explains:
`
`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.
`
`Id. at 21.
`
`The 1992 priority application (the earliest application to which the '612, '037,
`
`and '802 Patents claim 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. Id. 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
`
`Page 3
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`

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`IPR2014-00648
`Patent 8,217,612
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`fluctuation), and conditions uniquely applicable to a vehicle in motion (such as
`
`wind buffeting). Id. at 23.
`
`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. Id. at 24-25.
`
`It is noteworthy that the Petitioner-cited patents including Itoh, Kinzl, Lamm,
`
`and Bernard are not indicative of the production vehicle state of the art. These
`
`patents 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. Id. at 26. The other Petitioner-cited patent, Duhame,
`
`relates to garage doors and therefore neither addresses nor overcomes any of the
`
`real-world vehicular problems.
`
`Page 4
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`

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`IPR2014-00648
`Patent 8,217,612
`
`C. PETITIONER'S ALLEGED EXPERT DR. TOLIYAT
`
`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 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. 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
`
`Page 5
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`IPR2014-00648
`Patent 8,217,612
`
`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 nearly
`
`22 years of hindsight or of the teachings of the '612 Patent and its priority
`
`applications. Petitioner's alleged expert, Dr. Toliyat, did not have personal
`
`experience with the state of the art in 1992, when the original priority application
`
`of the '612 Patent was filed. Furthermore, Dr. Toliyat 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. Toliyat had never worked with power
`
`window controls or even power sunroof controls:
`
`Q.· Have you ever worked on any automotive sunroof or side window
`
`lift systems or electronic controls for such at any time in your career
`
`prior to the present IPR's?
`
`A.· I don't recall.
`
`Ex. 2003 at 19:20-24.
`
`Q.· What were the typical revolutions per minute of an automotive
`
`window lift motor when it was operating at its fastest closing speed
`
`in the early 1990s?
`
`A.· I do not know.
`
`Page 6
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`Q.· Okay.· Would the typical closing RPM's be different for a sunroof
`
`motor in the early 1990s than a side window lift motor?
`
`A.· I'm not certain on that.
`
`Q.· In the early 1990s, what was the typical horsepower of an
`
`automotive window lift motor or sunroof motor?
`
`A.· I do not know for sure.· I can guess.
`
`Id. at 20:10-22
`
`Q.· So prior to April of 1992 did any automobiles use non-
`
`programmable controllers for window lift or sunroof motors?
`
`A.· I do not know.· They might.· I do not know.
`
`Q.· Are there any differences with regard to controllers
`
`in
`
`automobiles prior to 1992 versus currently?
`
`A.· I do not know.· I guess so.· It was '92. This is 2014.· So there might
`
`be some differences but I do not know.
`
`Q.· Were there any differences between window controllers say prior
`
`to 1992 versus 2000?
`
`A.· They might be.· I do not know for sure.
`
`Id. at 64:6-18.
`
`While clearly an accomplished and experienced engineer in other areas at the
`
`present time, Dr. Toliyat did not have experience with the actual operations,
`
`mechanics, circuitry, or algorithms that represented the state of the art in power
`
`window control systems at any time and certainly before the priority date of the
`
`'612 Patent.
`
`Page 7
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`

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`IPR2014-00648
`Patent 8,217,612
`
`Q.· Have you ever seen the control system or movement mechanisms
`
`of a physical automotive sunroof system prior to signing your expert
`
`declarations in these IPRs?
`
`A.· I can't recall.
`
`Q.· Prior to signing your expert declarations in these IPRs had you
`
`seen any electrical diagrams for automotive window lift or sunroof
`
`devices or their control systems that were actually used
`
`in
`
`production vehicles?
`
`A.· I don't recall.· I might have.· I don't remember.
`
`Q.· Did you review any when you were preparing your expert
`
`declarations in these IPRs?
`
`A.· Reviewing circuit diagram you mean?
`
`Q.· Yes.
`
`A.· No, I did not.
`
`Q.· Prior to signing your expert declarations in these IPRs had you
`
`seen any software code, charts or diagrams for automotive window
`
`lift devices or control systems that were actually used in production
`
`vehicles?
`
`A.· No.· I don't recall seeing them.
`
`Q.· How about for automotive sunroofs?
`
`A.· No, I don't -- I don't recall seeing for sunroof as well.
`
`Id. at 23:21-24:23.
`
`Q.· How many milliseconds would it take for one full revolution of a
`
`window lift motor in the early 1990s?
`
`Page 8
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`IPR2014-00648
`Patent 8,217,612
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`A.· I do not know exactly.
`
`Q.· Did you ever know exactly?
`
`A.· I might have at one point in time, but I don't recall.
`
`Q.· Did you know when you were preparing your expert declarations
`
`in these IPRs?
`
`A.· I don't recall.
`
`Q.· How far would the side window close in one full revolution of a
`
`window lift motor in the early 1990s?
`
`MR. SANDERS:· Objection. Incomplete hypothetical.
`
`A.· I do not know.
`
`. . .
`
`Q.· How far would -- let me re-ask the question. When you were
`
`preparing your IPRs -- let me re-ask the question. When you were
`
`preparing your declarations on these IPRs, did you know how many
`
`or how far the side window or a sunroof would move with one full
`
`revolution of a window powering motor?
`
`MR. SANDERS: Objection. Vague.
`
`A.· No, I do not.
`
`Q.· When you were preparing the declarations for these IPRs, did you
`
`know if a sunroof mechanism would move the window a different
`
`amount than a side window lift mechanism for one full revolution of
`
`the motor from the early 1990s?
`
`A.· No, I did not.
`
`Id. at 36:11-37:21.
`
`Page 9
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`IPR2014-00648
`Patent 8,217,612
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`Dr. Toliyat 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.· With regard to these IPR's, have you discussed automotive
`
`window lift systems or sunroof systems with anybody except for
`
`Webasto's attorneys?
`
`A.· No, I have not.
`
`Q.· Have you ever discussed automotive window lift systems or
`
`sunroof systems with any engineers from Webasto?
`
`A.· No, I have not.
`
`Id. at 20:1-9.
`
`The ’612 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. Toliyat was unaware of
`
`these concerns in and before the '612 priority date of April 22, 1992:
`
`Q. . . . Prior to signing your expert declarations in these IPRs, did you
`
`know the details of anti-pinch or anti-trap automotive window
`
`sensing and controls that were present in production vehicles prior
`
`to April of 1992?
`
`A.· No, I did not.
`
`Q.· How about prior to July of 1994?
`
`A.· I can't recall if I knew.
`
`Page 10
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`Q.· How about prior to October of 1996?
`
`A.· Again, I can't recall.
`
`Q.· How about prior to May of 2000?
`
`A.· The same.· I'm not certain.
`
`Ex. 2003 at 20:24-21:12.
`
`Further, Dr. Toliyat's sweeping assertions regarding the state of the art in his
`
`declarations are not based on actual knowledge or experience with the systems
`
`mentioned therein.
`
`Q.· This Section 26 of the '802 and similar Section 26 of the '612
`
`declarations, if that's correct, then why is it many years after 1992
`
`before production automobile included a window system that could
`
`reliably detect and prevent harm to soft and hard obstacles without
`
`false detections?
`
`MR. SANDERS:· Objection.· Assumes facts not in evidence.
`
`Q. Please answer the question.
`
`. . .
`
`A.· I do not know.
`
`Q.· Specifically, which production automobiles included a window
`
`system that could reliably detect and prevent harm to soft and hard
`
`obstacles without false detections prior to April of 1992?
`
`A.· I do not know.
`
`Q.· Did you know when you signed your declaration?
`
`A.· I don't recall.
`
`Page 11
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`Q.· Did you ever know?
`
`A.· I don't know.
`
`. . .
`
`Q.· For each of the items mentioned in your ·declaration for the '802
`
`patent at Section 27 and the similar Section 27 for the '612
`
`declaration, please identify the applicable production automobile or
`
`garage doors that that applies to.
`
`A.· I do not know specifically.
`
`Q.· When you prepared and signed your declarations, did you know
`
`specifically?
`
`A.· No, I did not.
`
`Id. at 40:8-42:12.
`
`Q.· In your declaration for the '802 patent at pg. 14, Section 27, last
`
`three lines, similar Section 27 for the '612 declaration, you mention
`
`yet other prior apparatuses monitored for abrupt changes in the
`
`armature current voltage or temperature of the window regulator
`
`motor.· Do you see that?
`
`. . .
`
`Q.· How many production vehicles prior to April of 1992 did that --
`
`A.· I do not know.
`
`Q.· Did you when you signed your declarations?
`
`A.· No.· I did not know.
`
`Id. at 42:13-44:21.
`
`Page 12
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`Indeed, Dr. Toliyat admitted during deposition that his assertions in his
`
`declarations regarding prior art and persons having ordinary skill in the art were
`
`merely general and theoretical.
`
`Q.· So is it accurate to say in this Section 34 you're talking more
`
`theoretical than based on anything you'd actually seen?
`
`A.· It's more general, yes.· It's a more general we're basically
`
`discussing in here.
`
`Q.· So Section 34 is not based on any facts or vehicles or prior art that
`
`you'd actually seen before signing your declarations, right?
`
`A.· It's not -- it's not directed to any specific vehicle, model, or
`
`system, per se.
`
`Q.· If you could take a look at that last sentence of Section 34 of the
`
`'802 declaration, similar in the '612 declaration, it says "for instance,
`
`during operation, speed and current of the motor at the beginning of
`
`the path might be much less than the speed and motor current of the
`
`motor when the object is in the middle of the path of travel". Can
`
`you please explain that to me, what you meant?
`
`A.· Yes.· What I'm saying in here is that at the beginning of the travel,
`
`if you like, of the window, initially the window is closing or is going up
`
`slowly.· And then in the middle it could go faster and so on and so
`
`forth.
`
`Q.· Have you ever seen any vehicles that really do that?
`
`A.· I cannot recall.· It could be.
`
`Page 13
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`

`
`Q.· No, no.· I'm talking did you actually see any that performed like
`
`IPR2014-00648
`Patent 8,217,612
`
`you just mentioned there.
`
`A.· No, I have not.
`
`Id. at 59:21-61:6.
`
`Q.· You're mentioning in Section 38 of your '802 dec [which is the
`
`same as Section 38 of the '612 Declaration] that there are these prior
`
`art systems that perform as you mention there.·Which ones are you
`
`specifically referring to?
`
`A.· I am giving in a general term, but there are specific references in
`
`this declaration that discusses.
`
`Q.· Are you referring to any production vehicles?
`
`A.· No.· I'm not mentioning any production vehicle.
`
`Q.· So you're relying solely on the patents, the prior patents in this
`
`Section 38, is that correct?
`
`A.· That's correct.
`
`Q.· For those prior patents, do they actually work in real world
`
`vehicles with the normal environmental conditions such as
`
`temperature extremes and wind buffeting?
`
`A.· I do not know.
`
`Q.· Do [sic, Did] you run any tests to find out?
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`A.· No, I did not.
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`Id. at 61:13-62:10.
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`Significantly, Dr. Toliyat has not understood some of the key concepts in the
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`cited prior art, which renders his analyses and opinions thereof unreliable. For
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`example, Dr. Toliyat misinterprets Lamm's first derivative of speed with respect to
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`path traveled as acceleration. Anyone with knowledge of elementary physics
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`knows that first derivative of speed with respect to path traveled is acceleration
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`divided by speed and not acceleration. Ex. 2001 at 90-91.
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`Q.· And the Lamm patent, would the first derivative of speed with
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`respect to the path traveled be acceleration?
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`A.· That's correct.
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`Ex. 2003 at 87:3-6.
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`Q.· So does Lamm detect obstruction based on acceleration?
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`A.· Based on deceleration, yes, first and second derivative.
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`Id. at 89:11-14.
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`Q.· Is it your statement in Section 184 of the '612 declaration based
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`on your understanding that Lamm uses acceleration to detect an
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`obstacle?
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`A.· Correct.
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`Q.· And you're comfortable that Lamm uses acceleration to detect an
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`obstacle?
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`MR. SANDERS:· Objection.· Asked and answered.
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`A.· Yes.· It does based on the first derivative, which is acceleration,
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`and also discusses the second derivative, which is the jerk, so to
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`speak.
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`Id. at 90:20-91:8.
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`Likewise, Dr. Toliyat incorrectly opines that Kinzl's blocking counter counts
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`pulses from Hall-effect sensor in zone 1 and that therefore Kinzl detects obstacle
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`based on pulses from Hall-effect sensor in zone 1.
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`Q.· So it's your position that within zone one of Kinzl, if it senses
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`obstruction, it will stop; is that correct?
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`A.· That's correct.
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`Id. at 184:6-9.
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`Q.· They're just using a blocking counter in zone one, correct?·
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`They're not really using a hall effect sensor, are they?
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`. . .
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`A.· Well, I assume that the blocking counter is getting the signal from
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`the hall sensor.
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`Q.· Is that right?· Are you sure about that?
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`A.· I guess it's not very clear.
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`Q.· So you believe it is or it's not clear?· If you don't understand Kinzl,
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`just let me know.
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`. . .
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`A.· No.· I do understand Kinzl.· It's just that the blocking counter, I'm
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`assuming it's getting the signal from -- basically, it's ·counting the
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`pulses of the hall effect sensor.
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`Id. at 184:18-185:24.
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`More correctly, in zones 1 and 3, the blocking counter, whose time is variable,
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`detects a blocked position if pulses are no longer received from the Hall-effect
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`sensor, for example, when the window is completely open or completely closed,
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`and turns off the motor. Ex. 1007 at 3:6-17; and Ex. 2001 at 44.
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`Dr. Toliyat also lacks expertise or even knowledge of what a person of
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`ordinary skill in the art knew in 1992 about garage door openers.
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`Q.· When you signed your expert declarations in these IPRs, did you
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`review any electrical diagrams for garage door openers that were in
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`your house or commercial use?
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`A.· No, I have not.· I did not.
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`Q.· Have you ever reviewed the software code for garage door
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`openers that were actually used either by yourself or in any industrial
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`or residential building?
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`A.· No, I have not.
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`Ex. 2003 at 25:17-26:2.
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`Based on Dr. Toliyat's above exemplary
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`testimony, Dr. Toliyat's
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`pronouncements on what he believes one of ordinary skill in the art would
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`recognize or be motivated to do with only having read what Petitioner's attorneys
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`recently put before him should be viewed with skepticism if not stricken. There is
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`no real-world evidence of the state of the art submitted with the Petition. It is
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`noteworthy that some of the cited patent references are merely theoretical
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`concepts that suffer many of the real-world problems found in the industry, as
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`will be discussed in greater detail hereinafter.
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`In contrast, Patent Owner's expert, Dr. Mark Ehsani, has personal knowledge
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`of the state of the art and the state of commercial implementations on and
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`before 1992, and has discussed that real-world state of the art with those active
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`in it at the relevant time. Ex. 2001 at 10-16. Patent Owner's expert has a very
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`different view of the cited references and industry that is far more credible, as will
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`be discussed in detail hereafter.
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`II. INDEPENDENT CLAIM 1
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`A. CLAIM CONSTRUCTION
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`1.
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`Identifying and Sensing
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`Claim 1 of the '612 Patent, at (d)(iii) and (iv), recites "identifying a collision of
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`the window or panel with an obstacle" and "deactivate said motor in response to
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`a sensing of a collision." Ex. 1001 at 27:35-43. As the Institution Decision correctly
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`states:
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`The '612 Patent has expired. We therefore construe its claims in a
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`manner similar to that of a district court, as articulated in Phillips v.
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`AWH Corp., 415 F.3d 1303, 1316, 1327 (Fed. Cir. 2005), albeit
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`without any presumption of validity. Words of a claim "are generally
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`given their ordinary and customary meaning" as understood by a
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`person of ordinary skill in the art in question at the time of the
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`invention. Id.
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`Paper 14 at pg. 7.
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`The claimed controller's "identifying" and "sensing" features must each be
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`given weight. The sensing is a different claim limitation from the identifying claim
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`limitation. If sensing and identifying simply corresponded to the same algorithm,
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`Claim 1 would have been written accordingly. For example, the final limitation of
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`Claim 1 might then have been written as "deactivate said motor in response to
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`the identified collision."
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`Given that a different verb – identify, compared to sense – was used, a
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`distinction is presumed to be present. Further, the indefinite article "a" is present
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`before the "sensing" verb. "In the absence of any evidence to the contrary, we
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`must presume that the use of these different terms in the claims connotes
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`different meanings." CAE Screenplates, Inc. v. Heinrich Fiedler GmbH & Co., 224
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`F.3d 1308, 1317 (Fed. Cir. 2000) (internal citations omitted).
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`According to antecedent basis rules, this indefinite article indicates that the
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`"sensing" is being newly introduced – not that the "sensing" refers back to a prior
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`feature, such as identifying. In addition, the "collision" following "sensing" is also
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`introduced with the indefinite article, indicating that the newly-introduced
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`collision is distinct from any collision identified by the prior feature in Claim 1.
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`See, e.g., Virginia Innovation Sciences, Inc. v. Samsung Electronics Co., 976 F.
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`Supp. 2d 794, 814 (E.D. Va. 2013) (internal citations omitted): "The introduction
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`of a new element is accomplished through the use of an indefinite article and not
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`through the use of a definite article."
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`Properly construed, Claim 1 therefore requires that the "identifying" and the
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`"sensing" are concurrently performed, but remain logically distinct. This is amply
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`supported by the Detailed Description of the '612 Patent and the priority
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`applications, which describe both hard obstruction (identifying) and soft
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`obstruction (sensing) algorithms. Ex. 2001 at 81-89.
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`The "identifying" limitation builds on controller limitations including, in brief,
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`"monitoring a signal" (Claim 1 at d(i)) and "adjusting an obstacle detection
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`threshold in real time based on immediate past measurements of the signal"
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`(Claim 1 at d(ii))). Ex. 1001 at 27:28-34. The "identifying" limitation therefore
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`requires use of an algorithm based on an obstacle detection threshold adjusted in
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`real time. The "sensing" limitation is not so restricted. Instead, the sensing
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`limitation is, in full, "deactivate said motor in response to a sensing of a collision,"
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`which encompasses any other algorithm that is capable of sensing a collision.
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`Accordingly, these two features of Claim 1 should properly be construed as:
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`(i) identifying a collision using a first algorithm that is based on an obstacle
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`detection threshold adjusted in real time, and (ii) sensing a co