UNITED STATES PATENT AND TRADEMARK OFFICE
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`—————
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`—————
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`WEBASTO ROOF SYSTEMS, INC.
`Petitioner,
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`v.
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`UUSI, LLC
`Patent Owner.
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`—————
`
`Case IPR2014-00648
`Patent 8,217,612
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`—————
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`REPLY DECLARATION OF HAMID A. TOLIYAT, PH.D.
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`Attorney Docket: 130163.231151
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`1
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`WEBASTO EX. 1021
`WEBASTO ROOF SYSTEMS, INC. v. UUSI, LLC
`IPR2014-00648
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`

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`
`
`Tablee of Contennts
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`PPage
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`SSUMMARYY OF OPINNIONS FOOR THE ’6612 PATENNT ............................
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`..... 4
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`I.
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`II.
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`QQUALIFICCATIONS ...................................................
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`..................................
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`..... 5
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`..................................
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`..... 8
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`III. CCLAIM COONSTRUCCTION .......................................
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`AA.
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`BB.
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`“iden
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`ntifying a ccollision off the windoow or paneel with an
`acle” and “s
`obsta
`sensing of
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`a collisionn between aan obstaclee or
`l” (indepen
`panel
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`ndent claimm 1) ............................
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`..................................
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`..... 9
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`“deac
`dow or g said windresponse too a sensing
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`ctivate saidd motor in
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`g” (indepen
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`panell has stoppped moving
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`ndent claimm 6) ............................
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`... 15
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`IV. CCLAIMS 1-2 AND 5--8 ARE INNVALID BBASED ONN THE PR
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`IOR ART
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`... 17
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`AA.
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` Grouund 1: Antiicipation byy Bernard ..................
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`..................................
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`... 17
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`(a)
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`Inddependent
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`Claim 6 anand Dependdent Claimm 7-8 .........
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`... 17
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`..................................
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`... 20
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`(b) Ennablement ..................................
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`m, Itoh andover LammGrouund 3: Obviousness o
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`Bernard ....................
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`... 22
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` and Enabllement ......
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`... 22
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`s of the Com(a) Obbviousness mbination
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`(b)
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`Inddependent
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`Claim 1 anand Dependdent Claimm 2 .............
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`(c) Deependent CClaim 5 ......................
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`..................................
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`... 33
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`(d)
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`Inddependent
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`Claim 6 anand Dependdent Claimms 7-8 ........
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`... 27
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`... 36
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`... 38
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`.................nzl .............me and Kinover DuhamGrouund 4: Obviousness o
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`BB.
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`CC.
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`mbinations of the Com(a) Obbviousness
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` and Enabllement ......
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`... 39
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`(b)
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`Inddependent
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`Claim 1 anand Dependdent Claimm 2 .............
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`... 43
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`2
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`(c)
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`Independent Claim 6 and Dependent Claims 7-8 ........... 46
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`3
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`I, Hamid A. Toliyat, hereby declare as follows:
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`1.
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`I have been retained by counsel for Petitioner Webasto Roof Systems, Inc. I
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`am being compensated for my work in this matter at a rate of $450 per hour, and
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`my compensation is not dependent in any way on the outcome of this proceeding.
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`2.
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`I previously submitted a declaration regarding the invalidity of the ’612
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`Patent in this inter partes review proceeding. See IPR2014-00648, Ex. 1003. I
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`incorporate and stand by my opinions from my prior declaration that claims 1-2
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`and 5-8 of the ’612 Patent are invalid for anticipation and/or obviousness based on
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`the prior art.
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`3.
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`I submit this declaration to reply to certain statements made by Dr. Ehsani in
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`his Declaration (Ex. 2001) in support of the Patent Owner’s Response and in the
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`Patent Owner, UUSI, LLC’s (“UUSI’s”) Response (Paper No. 20).
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`I.
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`4.
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`SUMMARY OF OPINIONS FOR THE ’612 PATENT
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`The Board instituted an inter partes review of the ’612 Patent for claims 1-2
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`and 5-8 based on the following grounds:
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`
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`Claims 6-8 under 35 U.S.C. 102(b) as anticipated by Bernard (Ex.
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`1005)
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`
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`Claims 1-2 and 5-8 under 35 U.S.C. 102(a) as unpatentable over
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`Lamm et al. (Ex. 1008), in view of Itoh (Ex. 1006) and Bernard; and
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`4
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`
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`Claims 1-2 and 6-8 under 35 U.S.C. 102(a) as unpatentable over
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`Duhame (Ex. 1009), in view of Kinzl (Ex. 1007).
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`IPR2014-00648, Paper 14.
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`5.
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`As I described in my original Declaration (Ex. 1003) and as further
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`described in more detail below, it is my opinion that claims 1-2, and 5-8 of the
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`’612 patent are invalid based on each of the instituted grounds for inter partes
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`review.
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`II. QUALIFICATIONS
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`6.
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`As described in my original Declaration (Ex. 1003), I am familiar with the
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`state of the art as it relates to the ’612 patent during the relevant time period, April
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`1992. My qualifications are set forth more fully in my curriculum vitae (Ex. 1004)
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`and my original Declaration (Ex. 1003), so I will only briefly address them here. I
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`am a licensed Professional Engineer, and earned a Ph.D. with a specialization in
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`Industrial Drives, Electrical Machines, Power Electronics, Power Systems and
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`Control from the University of Wisconsin-Madison in 1991, a M.S. in Electrical
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`Engineering from West Virginia University in 1986, and a B.S. in Electrical
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`Engineering from Sharif University of Technology in May 1982. Since 1987, I
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`have held numerous teaching and research positions in the field of electrical
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`engineering at the University of Wisconsin-Madison (Jan. 1987 – May 1991),
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`5
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`Ferdowsi University of Mashhad (September 1991 – January 1994) and Texas
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`A&M University (March 1994 – present).
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`7.
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`As noted in my original Declaration, I am a member of numerous
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`professional and honorary societies and have received several professional honors
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`in the field of electrical and electronic engineering, including an award as a
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`distinguished lecturer of the IEEE Vehicular Technology Society, along with one
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`of the highest IEEE awards, namely the Nikola Tesla Field Award in 2014 for
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`“Outstanding contributions to the design, analysis and control of fault-tolerant
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`multiphase electric machines.”
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`8.
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`I disagree with UUSI’s contention that I am unfamiliar with the industry
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`relating to the subject matter of the ’612 patent. I have extensive experience in the
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`field of control systems, such as control systems used in automotive vehicles. I am
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`a distinguished lecturer for the IEEE Vehicular Technology Society. In addition, I
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`have authored numerous journal papers and have received many grants for research
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`in this field, including those relating to motor drive applications in vehicles, as
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`described in detail in my curriculum vitae (Ex. 1004). For instance, I co-authored
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`a research paper entitled, “DSP-Based Sensorless Electric Motor Fault Diagnosis
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`Tools for Electric and Hybrid Electric Vehicle Powertrain Applications” that was
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`published in the IEEE Transactions on Vehicular Technology. I have also spoken
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`at numerous seminars in the same field, including seminars regarding “Electric
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`6
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`Motors for Electric and Hybrid Electric Vehicles;” “Electric Motors and Power
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`Converters for Electric Vehicles;” “Fault Tolerant Motor Drives for Hybrid
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`Electric Vehicle Applications;” and “Electric Drives for Electric and Hybrid
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`Vehicles.” I also worked for General Motors in 1991, prior to the filing of the first
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`patent application which ultimately led to the ’612 patent.
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`9.
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`I further note that, like UUSI’s expert, Dr. Mehrdad Ehsani, I am a professor
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`of engineering at the University of Texas A&M and focus my research on power
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`electronics, motor drives, control systems, and electric and hybrid electric vehicles.
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`10. UUSI’s criticism focuses on alleged lack of experience with “production
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`vehicles.” See, e.g., UUSI Response at 8-9. However, direct experience with
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`“production vehicles” is unnecessary and is not required to understand that the
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`claimed invention of the ’612 patent was well known by April 1992, and, at the
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`very least, would have been obvious to a person of ordinary skill in the art at this
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`time. The prior art references I discussed in my original Declaration and below are
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`evidence of the knowledge of the state of the art prior to April 1992.
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`11.
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`I further note that Dr. Ehsani likewise was not familiar with “production
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`vehicles” during the relevant time period, April 1992. See Ex. 1023 at 285:6-14,
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`286:5-11, 286:15-288:2, 293:14-21, 297:7-19, 297:20-298:13. I further note that
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`Dr. Ehsani did not review any experimentation conducted by the inventor, Mr.
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`Washleski, Ex. 1022 at 36:9-13; did not build any system in accordance with the
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`7
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`1992 priority application, Ex. 1022 at 116:2-4; did not test any window or sunroof
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`closure product, Ex. 1022 at 116:10-23; did not investigate whether there is any
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`Nartron product that practices the ’612 patent, Ex. 1022 at 116:24-117:3; did not
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`perform any hardware analysis for this case other than review photographs from
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`the inventor, Mr. Washleski, Ex. 1022:118:23-119:3; and did not believe
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`experience with an automotive sunroof or side window lift system is necessary to
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`understand UUSI’s patents, Ex. 1023 at 282:8-22. Dr. Ehsani also did not perform
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`any analysis to assess the approaches disclosed in the ’612 patent, Ex. 1022 at
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`28:24-30:4; and did not build any system implementing any embodiment of the
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`’612 patent, Ex. 1022 at 116:5-9.
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`III. CLAIM CONSTRUCTION
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`12.
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`I understand that claims in an inter partes review of an expired patent are
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`interpreted in the way a person of ordinary skill in the art would have understood
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`them at the time of the alleged invention, principally in view of the patent
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`specification and prosecution history, and in view other sources of information
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`available at the time. In addition to the terms I addressed in my original
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`Declaration, UUSI has disputed the meaning of additional terms in the claims of
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`the ’612 patent. I address these additional terms here.
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`8
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`e” an obstacleanel with adow or paof the wind“idenntifying a collision o
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`A.
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`and “sensinng of a colllision betwween an oobstacle orr panel” (iindependeent
`laim 1)
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`Aac
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`13. DDr. Ehsani states that “‘identifyiing a collission’ requiires a first
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`algorithm
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`and
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`‘sensingg of a collision’ requiires a second algorithhm” in inteerpreting cclaim 1 of tthe
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`’612 paatent. Ex. 22001, ¶ 81.. Dr. Ehsaani further rrequires thhat these twwo algorithhms
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`be “indeependent oof each other, that is,
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`one is not
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`derived frrom the othher.” Ex.
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`2001, ¶ 89.
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`14.
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`I disagree wwith Dr. Ehhsani’s inteerpretationn. In my viiew, his intterpretationn is
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`inconsisstent with tthe ’612 paatent, partiicularly thee languagee of claim 11 itself. Ass I
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`explain below, claaim 1 does not requirre two indeependent allgorithms.
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` Claim 1 oof
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`the ’6122 patent caan be satisffied by a sinngle algoriithm for obbstacle dettection.
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`15. TThe term “ssensing” apppears threee separatee times in cclaim 1: “(aa) a sensorr for
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`sensing movemennt of the wiindow or panel”; “(d)) a controlller … [for]] sensing aa
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`ch collisionn with an oobstructionn”; and “(ivv) outputtinng a controol signal too said switc
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`to deacttivate said motor in response too a sensing
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`of a collission betweeen an obstaacle
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`and saidd window oor panel.” Ex. 1001
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`“sensingg” is not being used tto refer to
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`used in claim 1 in
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`sense that
`a broader
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`sensing a collisionn.
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`at 27:12-443. This deemonstratees that
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`a distinct aalgorithm.
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` Rather, “
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`sensing” iss
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`includes bboth sensinng movemeent and
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`9
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`16. Of particular significance is element (d) of the claim, which provides in
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`relevant part (with the words sensing and identifying in bold):
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`d) … said controller sensing a collision with an obstruction when
`power is applied to the controller by:
`i) monitoring movement of the window or panel …;
`ii) adjusting an obstacle detection threshold in real time …;
`iii) identifying a collision of the window or panel with an
`obstacle …; and
`iv) outputting a control signal to said switch to deactivate said
`motor in response to a sensing of a collision between an
`obstacle and said window or panel.
`Ex. 1001 at 27:24-43 (emphasis added).
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`17. The step of “identifying a collision” recited in sub-element (d)(iii) is one
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`element of the process of “sensing a collision” recited in element (d). This is
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`mandated by the plain language of claim 1: “said controller sensing a collision
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`with an obstruction when power is applied to the controller by: …. identifying a
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`collision of the window or panel ….”
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`18.
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`In other words, the “identifying” step in sub-element (d)(iii) must be part of
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`the process of “sensing a collision” in element (d). Therefore, it would be
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`inconsistent with the plain language of claim 1 to interpret “identifying a collision”
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`to require a first algorithm that is independent of a second algorithm for “sensing a
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`collision,” as Dr. Ehsani proposes. Under Dr. Ehsani’s interpretation the
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`10
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`“identifying” step would need to be independent of “sensing a collision.” By
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`contrast, the language of claim 1 expressly states that the “identifying” step is part
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`of “sensing a collision.”
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`19. This plain and ordinary meaning of the claim limitations is supported by the
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`specification of the ’612 patent. The term “sensing” is used throughout the
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`specification in a relatively broad manner. Taking the Abstract as an example, the
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`term “sensing” is used to refer to sensing obstructions, as well as in the context of
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`sensors for “sensing movement” (claim 1), current, optical data, pulses, and
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`temperature. Ex. 1001 at Abstract, 3:4-21, 4:4-5:18, 9:61-65, 10:64-11:20, 24:3-
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`16). By contrast, no form of the verb “identify” is used in the ’612 patent outside
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`the claims, so there is nothing in the text of the patent to suggest that “identifying”
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`should be interpreted to require a distinct algorithm.
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`20. Dr. Ehsani expresses the view that “identifying” and “sensing” refer to hard
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`and soft obstruction detection algorithms, but does not explain which term he
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`associates with which algorithm. Ex. 2001, ¶¶ 82-88. UUSI specifically associates
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`“identifying” with hard obstruction detection and “sensing” with soft obstruction
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`detection. Paper 20 at 20. This is inconsistent with the ’612 patent, which use
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`“sensing” in referring to both hard and soft obstruction detection, for example in
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`the first sentence of the Abstract: “Disclosed is an improved system and method
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`11
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`for sensing both hard and soft obstructions for a movable panel such as a sunroof.”
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`Ex. 1001 at Abstract.
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`21. Although the term “identifying” does not appear in the written description of
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`the ’612 patent, the patent includes descriptions using other words that are
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`consistent with “sensing a collision” using a single algorithm that includes an
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`“identifying” step. The ’612 Patent, for instance, states:
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`To detect an obstruction when the sunroof panel is closing in its
`automatic operation mode, in brief, the microprocessor measures the
`motor current and speed for the ongoing actuation and compares
`against an empirically-determined algorithm within the controller for
`motor current and speed versus position and/or time. When
`calculations based upon sensed current, pulse period, derivatives
`thereof, and actuator position cause a calculated threshold to be
`exceeded, an obstruction is ascertained and the sunroof is brought
`back to its full OPEN or full VENT position. …
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`Ex. 1001 at 15:16-25. This paragraph describes how to sense an obstruction (i.e.,
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`“detect an obstruction”) using a single algorithm that involves identifying the
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`obstruction based on specific criteria (i.e., “an obstruction is ascertained”). Dr.
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`Ehsani’s interpretation is not only inconsistent with the claim language but would
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`also preclude claim 1 from covering this this embodiment, which I believe is
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`incorrect.
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`12
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`22. Finally, UUSI’s position now that “identifying” is specifically associated
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`with hard obstruction detection and that claim 1 requires two independent
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`algorithms is the opposite of UUSI’s position during prosecution of the application
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`leading to the ’612 patent. During prosecution, UUSI took the position that
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`“identifying” refers to identification of a soft obstruction and that both the
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`“sensing” and “identifying” steps of claim 1 (claim 29 during prosecution) were
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`met by performing soft obstruction detection.
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`23. Specifically, in the January 13, 2011 Amendment, charted claim 1 (claim 29
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`during prosecution), identifying “Support in text of ‘165 patent from which priority
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`of the present application is claimed.” Ex. 1002 at 147. The relevant portion of
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`this chart is copied below.
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`Ex. 1002 at 148-49.
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`13
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`24. UUSI referenced column 21, lines 14-39 of the ’165 patent as providing
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`disclosure of the “identifying” step, and line 28 of that section as disclosing the
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`final “sensing a collision” step. Lines 14-38 of the ’165 patent, including line 28,
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`refer to soft obstacle detection as set forth below:
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`In summary, predictive processes can be used to build predicted
`profiles from averages across multiple cycles, from values within the
`present cycle or from both. The characteristics of the motion being
`predicted can be stored in the predicted profiles as in Eqs. 1-3 or can
`be stored in the parameters of the process as in Eq. 11. However,
`once a predictive process is applied, the predicted “load profile”
`values are then compared to the measured ones. When there is a
`significant difference (beyond expected statistical fluctuations and/or
`system noise), the existence of an abnormality can be inferred. In a
`particular case of interest, the abnormality could be due to an
`obstruction caught in a moving part. The motion is then stopped,
`slowed and/or reversed to allow the obstruction to be cleared.
`Lowpass filtered load profile and/or bandpass filtered profiles can
`both be used. The lowpass filtered load profile allows detection of
`small long-term changes in load profile such as might be caused
`by a soft obstruction or minor mechanical failure. The bandpass
`filtered version of the load profile allows rapid detection of hard
`obstructions which cause abrupt changes in load profile. For a child
`caught in an automatic door, obstruction detection could avoid
`serious bodily harm. For a piece of automatic machinery,
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`14
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`e that
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`obstruction detection could prevvent seriouus mechani
`cal damag
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`might otherrwise occurr from an oobstructionn or mechaanical failuure.
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`o m
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`Ex. 1019 at 21:14-39 (emphhasis addedd).
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`“deaactivate saiid motor iin responsse to a senssing said wwindow orr
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`B.
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`panel has sstopped mmoving” (inndependennt claim 6))
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`Bp
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`25.
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`Inn my originnal Declarration, I adddressed thee claim terrm “deactivvate said
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`motor.”” Ex. 1003, ¶¶ 50-55
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`. I disagreee with Dr.
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` Ehsani’s aadoption oof a portionn of
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`a dictionnary definiition of “innactive” ass his constrruction of ““deactivatee.” Ex. 20
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`03,
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`¶ 183 (cciting Ex. 22020 at 5-66). The dicctionary deefinition off “deactivaate,” whichh is
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`the claimm term, maakes clear that this teerm refers tto causing
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`or inopeerative, succh as by diisconnectinng it (Ex. 22020 at 5),
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`my interpretation of “to deacctivate saidd motor” inn my originnal Declarration: “to
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`turn
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`off the mmotor.” Exx. 1003, ¶ 50.
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`26. DDr. Ehsani hhas also innterpreted tthe larger cclaim phraase “deactivvate said
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`motor inn responsee to a sensinng said winndow or paanel has sttopped movving.” Dr..
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`Ehsani states that this claim phrase “reequires thatt the contr
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`oller must
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`deactivatee the
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`motor inn responsee to an abruupt stoppagge of the wwindow.” EEx. 2001, ¶¶ 156. I
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`disagreee. The plain languagge of claim 6 only reqquires that
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`the “windoow or paneel
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`has stoppped movinng.” Theree is nothingg in claim
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`6 that requuires this sstoppage too
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`occur abbruptly. DDr. Ehsani ddoes not iddentify anyy support fofor his addiition of an
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`“abrupt” stoppagee requiremeent. The teerm “abruppt” is not uused in the
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`’612 patennt.
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`15
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`27. While Dr. Ehsani only proposes to read in an “abrupt” stoppage requirement
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`in addressing the meaning of “deactivate said motor in response to a sensing said
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`window or panel has stopped moving,” it is clear from his discussion of the prior
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`art that he is also requiring the sensing of the abrupt stoppage occur
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`instantaneously.
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`28. For instance, Dr. Ehsani states “there is a delay of at least 0.1 second before
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`Bernard can detect an abrupt stoppage of the window. Therefore, Bernard does not
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`sense an abrupt stoppage of the window.” Ex. 2001, ¶ 160. In these statements,
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`Dr. Ehsani does not dispute that Bernard can detect an abrupt stoppage, but
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`concludes that the claim is not satisfied because Bernard takes at least 0.1 seconds
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`to do so. In effect, Dr. Ehsani has interpreted the claim phrase “deactivate said
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`motor in response to a sensing said window or panel has stopped moving” to
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`require “deactivat[ing] said motor in response to instantaneously sensing said
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`window or panel has abruptly stopped moving.” I disagree with Dr. Ehsani’s
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`requirement to instantaneously sense that the window or panel has (abruptly)
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`stopped moving, which is not justified anywhere in Dr. Ehsani’s declaration and is
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`not required by the plain language of claim 6.
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`29.
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`In my opinion, Dr. Ehsani has incorrectly added requirements that are not
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`supported by the claim language. As I discuss below, Bernard satisfies claim 6
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`even under the plain language of Dr. Ehsani’s interpretation, which does not
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`16
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`include the “instanntaneouslyy sensing” rrequiremennt he impliicitly appliies when
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`discussiing the prioor art.
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`30.
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`I note that UUUSI characterizes aas “critical”” the fact thhat Kinzl ddoes not
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`“detect
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`abrupt stopppages oveer the entirre range off travel of tthe windoww.” Paper
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`20
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`at 56. UUUSI appeears to arguue that clai
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`m 6 thereffore cannott be satisfieed. I did nnot
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`see Dr. Ehsani raise this issuue in his deeclaration.
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`or Dr. EEhsani havee interpreteed claim 6 to requiree detection
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` In any evvent, to the
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`extent UUUSI
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`of stoppagges (abruptt or
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`otherwiise) over thhe entire raange of winndow traveel, I disagreee. This iss not requirred
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`by the pplain languuage of claiim 6, and II have seenn no reasonns offered bby UUSI ffor
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`importinng this addditional reqquirement iinto claim
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`6 of the ’6612 patent.
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`IV. CCLAIMS 11-2 AND 55-8 ARE INNVALID BBASED OON THE PPRIOR ARRT
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`AA.
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` Grouund 1: Antticipation
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`by Berna
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`(a)
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`Independent Claimm 6 and DDependentt Claim 7-88
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`31. AAs I explainned in my original Declaration,, claims 6-
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`8 are anticcipated by
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`Bernardd. Ex. 1003, ¶¶ 91-1004.
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`32. BBernard disscloses thatt its controoller deactiv
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`esponse to vates the mmotor in re
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`sensing that the wwindow or ppanel has sstopped mooving. Berrnard descrribed that
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`during cclosing opeeration, Beernard’s coontroller deetects that tthe windoww has stoppped
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`movingg based on a high mottor current
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`detected ffrom the mmotor (10).
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` Bernard, iin
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`particullar, describbed that as soon as thee motor cuurrent reachhed a pred
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`etermined
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`17
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`value stored in memory (e.g., value of variable IMAX or IFMAX), the microcontroller
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`would cause the motor to stop via motor driver 14. Ex. 1005 at 1:111-118; 3:94-
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`100; 7:89-110. A person of ordinary skill in the art would have recognized that
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`when the window has stopped due to an obstruction, the result would have been a
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`high current measurement from the sensor that would have triggered the above-
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`described algorithm and caused the window to stop the motor driver 14.
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`33. Based on the foregoing, a person of ordinary skill in the art would have
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`recognized that Bernard’s microprocessor outputs a “control signal to said switch
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`to deactivate said motor in response to a sensing said window or panel has stopped
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`moving prior to reaching a position limit,” as required by independent claim 6 of
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`the ’612 patent.
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`34. Dr. Ehsani’s only explanation for why he believes that Bernard does not
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`satisfy claims 6-8 is premised on his assertion that independent claim 6 requires an
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`abrupt stoppage of the window. Ex. 2001, ¶¶ 157-62. Dr. Ehsani offers no opinion
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`under a proper interpretation of claim 6, which does not require an abrupt
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`stoppage.
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`35. Moreover, there is actually no dispute that Bernard detects an abrupt
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`stoppage. Dr. Ehsani admits that “Bernard can detect an abrupt stoppage of the
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`window” and acknowledges that Bernard does this by de-energizing the motor
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`when the current becomes “abnormally high.” Ex. 2001, ¶¶ 160-61. Therefore,
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`18
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`even under the plain language of Dr. Ehsani’s interpretation which requires an
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`abrupt stoppage, Bernard anticipates claims 6-8 of the ’612 patent.
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`36. Dr. Ehsani’s real complaint is that, in his view, Bernard does not detect an
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`abrupt stoppage quickly enough: “there is a delay of at least 0.1 second before
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`Bernard can detect an abrupt stoppage of the window. Therefore, Bernard does not
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`sense an abrupt stoppage of the window.” Ex. 2001, ¶ 160. Dr. Ehsani similarly
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`asserts, “if the window does not move due to an obstruction when the motor is
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`energized, Bernard’s system takes at least 0.4 seconds to detect that the window
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`does not move ….” Ex. 2001, ¶ 157. Implicitly, Dr. Ehsani is interpreting claim 6
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`to require instantaneously detecting an abrupt stoppage, as I discussed above. This
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`is an incorrect interpretation of claim 6 which is not included in Dr. Ehsani’s
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`explicit interpretation of the claim.
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`37. Even if Bernard takes at least 0.1 second (e.g., 0.4 seconds) to detect to an
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`abrupt stoppage, the claim limitation is still satisfied even using Dr. Ehsani’s
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`explicit interpretation (“the controller must deactivate the motor in response to an
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`abrupt stoppage of the window…,” Ex. 2001, ¶ 156) because Bernard still in fact
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`senses the abrupt stoppage. Since in my view nothing in claim 6 imposes a time
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`constraint on how quickly the detection must occur, I believe Dr. Ehsani has not
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`raised any relevant points in responding to my explanation that Bernard anticipates
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`claim 6-8 of the ’612 patent.
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`19
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`(b) Enablement
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`38. Bernard was also enabling to one of ordinary skill in the art on or before
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`April 1992 for making or using the invention claimed in the ’612 patent. A person
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`of ordinary skill, who would have at least a Bachelor of Science degree (or the
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`equivalent) in a relevant scientific or engineering field, such as electrical
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`engineering, mechanical engineering, or automotive engineering, and
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`approximately two (2) years of experience related to control systems, would be
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`able to make and use the invention disclosed in Bernard (and therefore, make and
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`use the claimed invention of claims 6-8 of the ’612 patent). Bernard, for instance,
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`provides detailed descriptions of the components that make up the apparatus for
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`detecting obstacle detection, including how these components operate with one
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`another during operation. See, e.g., Ex. 1005 at Figs. 1 and 5, 3:94-4:52. In
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`addition, Bernard describes in detail the algorithm that can be used to detect an
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`obstacle along the path of travel of a window or panel. See, e.g., Ex. 1005 at Figs.
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`1 and 5, 1:105-23; 2:16-19, 3:94-4:52, 6:23-98, 7:49-55.
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`39. UUSI states in conclusory fashion that Bernard lacks enablement, without
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`explanation. Paper 20 at 58-59. Dr. Ehsani appears to take the position Bernard
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`lacks enablement because Bernard’s algorithm would “result in an unacceptable
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`amount of false positive and false negative detections in vehicles operating in real-
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`world environment.” Ex. 2001, ¶ 66. However, I understand that the legal
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`20
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`standard for enablement only requires that a person of ordinary skill in the art
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`would have been able to practice the prior art without undue experimentation, not
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`that the prior art would solve all problems in the art perfectly such that there would
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`be no need for further advancements. Applying this legal standard, in my opinion
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`Dr. Ehsani’s unsupported criticism of Bernard is beside the point. Indeed, there is
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`no evidence that the claimed invention of the ’612 patent has ever been
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`implemented in practice, or whether it would work better or worse than the
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`approach set forth in Bernard.
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`40. Dr. Ehsani also appears to argue that Bernard was not enabling on the basis
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`that Bernard did not describe how the constant k is determined. Ex. 2001, ¶ 66.
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`However, Bernard stated that the use of k to determine the threshold is an optional
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`feature. See Ex. 1005 at 7:77-85. I did not rely on this optional feature to opine
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`that Bernard anticipates claims 6-8, so Dr. Ehsani’s criticism is irrelevant.
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`Regardless, when a person of ordinary skill in the art makes and uses the invention
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`of Bernard without the use of k, the limitations of claims 6-8 are satisfied.
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`41.
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`I also understand that a prior art reference is presumed to be enabled. As
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`discussed above, Dr. Ehsani has not offered a basis for overcoming such a
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`presumption.
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`21
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`BB.
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` Grouund 3: Ob
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`viousness
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`over Lammm, Itoh, aand Bernaard
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`42. AAs I describbed in my ooriginal Deeclaration,, claims 1-22 and 5-8 wwould havve
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`been obbvious in view of Lammm, Itoh annd Bernardd. Ex. 10003, ¶¶ 164--217.
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`(a)
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`Obvioussness of the Combinnation andd Enablem
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`ent
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`43. AAs I explainned my oriiginal Decllaration, it
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`would havve been ob
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`vious to
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`combine the teachhings of Laamm, Itoh,
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`and Bernaard becausee they all aaddressed tthe
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`same prroblem (reaaction of aa car windoow or pane
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`l when an
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`detectedd) and taugght methodds to adapt
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`a threshol
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`d indicativve of a winndow
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`obstructtion, so thaat false possitives could be avoidded. Ex. 1
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`003, ¶¶ 2116-17. Onee
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`having oordinary skkill in the aart would hhave underrstood thatt Lamm, Itooh and
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`Bernardd disclosedd complemeentary appproaches too obstructioon detectioon, and thatt
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`elementts from eacch could eaasily have bbeen combbined into
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`a functioniing systemm.
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`Ex. 10003, ¶¶ 216-17. As desscribed in
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`my originaal Declarattion, Standdard 118 seet by
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`U.S. NHHTSA estaablished saffety and opperating reequirementts for poweer-operatedd
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`windowws and rooff panels to reduce thee risks of ppersonal injjury, whichh would haave
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`motivatted one of oordinary skkill in the aart to exammine availaable obstrucction detecction
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`literaturre. Ex. 10003, ¶ 25; EEx. 1001 at
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`1:30-41; EExs. 1011,
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` 1020.
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`44. DDr. Ehsani contends thhat each off Itoh and
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`Bernard caannot be coombined wwith
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`Lamm oon the basiis that Itoh and Bernaard use difffferent vari
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`ables than
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`Lamm to
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`detect aan obstructiion. Ex. 2001, ¶¶ 999-101. I unnderstand ththat the leggal questionn is
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`22
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`not whether the references employ the same variables but rather whether the
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`proposed combination would have been obvious. For instance, I understand that
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`elements from a secondary reference may be relied upon to teach a component and
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`function that were well known in the art, and that the combination would have
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`been obvious where the results of the substitution would have been predictable.
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`45. While I understand prior art references must be considered as a whole, I also
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`understand that a person of ordinary skill in the art is not an unthinking person who
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`would attempt to fit a square peg in a round hole. Clearly, a person of ordinary
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`skill wouldn’t assume one could simply mush together two obstacle detection
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`algorithms. A person of ordinary skill would have understood that aspects of the
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`references could be combined by taking Lamm’s approach obstacle detection as
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`the basis and addin