Paper 24
`Filed: April 3, 2015
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`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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`WEBASTO ROOF SYSTEMS, INC.
`Petitioner,
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`v.
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`UUSI, LLC
`Patent Owner.
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`—————
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`Case IPR2014-00648
`Patent 8,217,612
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`Attorney Docket: 130163.231151
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`IPR201
`4-00648
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`nts Tablee of Conten
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`7,612 Paatent 8,217
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`PPage
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`NER’S INT
`RRESPONSEE TO PATTENT OWN
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`TRODUCTTORY REEMARKS .
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`..... 1
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`A.
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`“iden
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`ntifying a c
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`collision” annd “sensin
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`aim 1) .......
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`..... 2
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`B.
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`“deac
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`response too a sensingg said winddow or pannel
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`ctivate saidd motor in
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`has stopped mo
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`aim 6) ........................
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`..... 5
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`III. TTHE CHALLLENEGEED CLAIMMS ARE INNVALID ..
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`A.
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` Grouund 1: Antiicipation byy Bernard
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`.................(Claims 6--8) ............
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`B.
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`Grouund 3: Obviousness oover Lammm, Itoh, andd Bernard ...................
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`..... 6
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`..... 7
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`..... 2
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`..... 6
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`CLAIM COONSTRUCCTION .......................................
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`C A B
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`I.
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`II.
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`Inddependent
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`Claim 1 anand Dependdent Claimm 2 .............
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`(b) Deependent CClaim 5 ......................
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`... 11
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`(c)
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`Inddependent
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`Claim 6 anand Dependdent Claimms 7-8 ........
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`A B
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`CC.
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`Inddependent
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`Claim 1 anand Dependdent Claimm 2 .............
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`Claim 6 anand Dependdent Claimms 7-8 ........
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`IV. CCONCLUSSION .........
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`.................nzl .............me and Kinover DuhamGrouund 4: Obviousness o
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`... 12
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`... 13
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`... 14
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`... 15
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`IPR2014-00648
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`Patent 8,217,612
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`Table of Authorities
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` Page(s)
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`Cases
`Amgen Inc. v. Hoechst Marion Roussel, Inc.,
`314 F.3d 1313 (Fed. Cir. 2003) .................................................................. 7, 9, 14
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`In re Antor Media,
`689 F.3d 1282 (Fed. Cir. 2012) ............................................................................ 7
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`Broadcom Corp. v. Emulex Corp.,
`732 F.3d 1325 (Fed. Cir. 2013) ............................................................................ 4
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`In re Clay,
`966 F.2d 656 (Fed. Cir. 1992) ............................................................................ 13
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`In re Huang,
`100 F.3d 135 (Fed. Cir. 1996) ............................................................................ 11
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`Impax Labs. v. Aventis Pharms.,
`468 F.3d 1336 (Fed. Cir. 2006) .................................................................. 7, 9, 14
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`Johnson Worldwide Associates, Inc. v. Zebco Corp.,
`175 F.3d 985 (Fed. Cir. 1999) .............................................................................. 5
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`KSR Intern. Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .............................................................................. 8, 9, 12, 14
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`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ............................................................ 3
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`Other Authorities
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`37 CFR § 42.6(a)(3) ................................................................................................. 13
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`ii
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`IPR2014-00648
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`Patent 8,217,612
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`The prior art discloses or suggests all elements of claims 1-2 and 5-8
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`construed according to their plain and ordinary meaning, as proposed in the
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`Petition and reflected in the institution Decision. Patent Owner reads unsupported
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`limitations into the claims to try to preserve their validity. Patent Owner argues
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`that “identifying a collision” in independent claim 1 requires a distinct algorithm
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`from “sensing of a collision,” even though this “identifying” step is part of
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`“sensing a collision” in claim 1. To narrow independent claim 6, Patent Owner
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`asserts that “to deactivate said motor in response to a sensing said window or panel
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`has stopped moving” requires deactivation to occur instantaneously in response to
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`an abrupt stoppage. These incorrect claim constructions should be rejected.
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`Patent Owner also disputes enablement of the cited references, relying on
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`irrelevant arguments about how well they would work. There is no genuine
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`dispute that a person of ordinary skill in the art would have been able to implement
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`them. Patent Owner also argues that references cannot be combined because one
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`cannot merge references wholesale, without modification. However, this is neither
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`how a person of ordinary skill in the art would combine teachings nor how
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`Petitioner has proposed to combine them.
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`I.
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`RESPONSE TO PATENT OWNER’S INTRODUCTORY REMARKS
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`Patent Owner dedicates the first 18 pages of its Response to assertions
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`having little to do with the merits that appear intended to sway the Board to credit
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`1
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`IPR2014-00648
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`Paatent 8,2177,612
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`Patent OOwner oveer Petitioneer. Given tthe page limmit, Petitiooner will o
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`nly responnd
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`briefly. Patent Owwner’s alleegations reggarding itss backgrouund and conntributionss are
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`unsuppoorted. For example, there is noo evidence
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`that the paatent was immplementeed
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`or woulld perform acceptablyy “in real wworld autommobile sceenarios” (PPaper 20 att 3).
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`Ex. 10222 at 28:24-29:22, 116:5-12, 116:24-117:33, 118:17-
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`119:3.
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`PPatent Ownner also criticizes thatt Dr. Toliyyat was nott familiar wwith the deetails
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`of “prodduction vehhicles” succh as “the ttypical revvolutions peer minute oof an
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`automottive windoow lift motor when it
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`was operaating at its
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`sing speedd in
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`early 19990s.” Papper 20 at 6,, 12. How
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`details aree irrelevantt to the issuues
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`here. AAs Dr. Ehsaani admitteed, experience in desiigning autoomotive suunroof or
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`windoww lift systemm is not neeeded to unnderstand tthe ’612 paatent. Ex.
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`1023 at 2882:8-
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`22. Dr. Ehsani coould not annswer the saame questiions posedd to Dr. Tolliyat aboutt
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`these prroduction ddetails, andd criticizedd the questiions as irreelevant. Idd. at 287:6-
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`288:2, 2293:14-21, 297:7-2988:13. Dr. TToliyat is wwell-qualiffied to addrress the iss
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`in this pproceedingg. He is an expert in ccontrol sysstems, suchh as those uused in
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`automottive vehiclles. See Exx. 1004. HHe is a distiinguished llecturer fo
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`r the IEEEE
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`Vehicullar Technoology Socieety and hass authored
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`numerous
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`many grrants, and spoken at several semminars in thhis field. EEx. 1021, ¶¶¶ 8-9.
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`II. CCLAIM COONSTRUCCTION
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`AA.
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`collision”
`“idenntifying a
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`2
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`IPR2014-00648
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`Patent 8,217,612
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`Patent Owner interprets “identifying a collision” and “sensing of a collision”
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`to require two “distinct,” “concurrently” running algorithms. Paper 20 at 18-21.
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`This contradicts the plain language of claim 1, which recites that “identifying a
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`collision” is one of the steps involved in “sensing a collision”: “d) … said
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`controller sensing a collision with an obstruction when power is applied to the
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`controller by: … iii) identifying a collision of the window or panel with an
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`obstacle ….” Ex. 1021, ¶¶ 16-18. Thus, “identifying” cannot require a distinct
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`algorithm from “sensing” because this “identifying” step is part of the process of
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`“sensing a collision” in element (d). Id.; Phillips v. AWH Corp., 415 F.3d 1303,
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`1314 (Fed. Cir. 2005) (en banc) (“the context in which a term is used in the
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`asserted claim can be highly instructive”).
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`Nothing in the ’612 patent suggests “sensing” requires a specific algorithm
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`or imposes any requirements on “identifying.” Id. The term “sensing” is used
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`throughout the claims and specification in a relatively broad manner to refer not
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`only to sensing obstacles but also to sensors for “sensing movement” (claim 1),
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`current, optical data, pulses, and temperature. Ex. 1021, ¶¶ 15, 19 (citing Ex. 1001
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`at, e.g., Abstract, 3:4-21, 4:4-5:18, 9:61-65, 10:64-11:20, 24:3-16). By contrast, no
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`form of the verb “identify” is used in patent outside the claims. Ex. 1021, ¶ 19.
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`Moreover, while Patent Owner associates “identifying” with hard
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`obstruction detection and “sensing” with soft obstruction detection (Paper 20 at
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`3
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`IPR2014-00648
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`20), the ’612 patent uses “sensing” to refer to both hard and soft obstruction
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`Patent 8,217,612
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`detection: “Disclosed is an improved system and method for sensing both hard
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`and soft obstructions ….” Ex. 1001 at Abstract (emphasis added). The
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`specification thus contradicts Patent Owner’s attempt to limit “sensing” to soft
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`obstacle detection. The ’612 patent also discloses sensing a collision (i.e., “detect
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`an obstruction”) using a single algorithm that involves identifying the obstruction
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`(i.e., “an obstruction is ascertained”). Ex. 1001 at 15:16-25; Ex. 1021, ¶ 21.
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`Furthermore, Dr. Ehsani conceded that his interpretation would exclude the general
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`single algorithm for detecting hard and soft obstacles in the specification. Ex.
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`1022 at 51:24-52:11. Patent Owner’s construction, which requires two algorithms,
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`is also incorrect because it would exclude these embodiments. Ex. 1021, ¶ 21; see
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`Broadcom Corp. v. Emulex Corp., 732 F.3d 1325, 1333 (Fed. Cir. 2013) (“This
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`court has clarified that an interpretation which ‘excludes a [disclosed] embodiment
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`from the scope of the claim is rarely, if ever, correct.’”) (citations omitted).
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`Finally, Patent Owner’s position that “identifying” refers to hard obstruction
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`detection while “sensing” refers to soft obstruction detection (Paper 20 at 20) also
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`conflicts with its position during prosecution. Patent Owner identified disclosure
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`of soft obstruction detection as support for both claim elements. Ex. 1002 at 148-
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`49; Ex. 1021, ¶¶ 22-24. Accordingly, claim 1 should be construed according to its
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`plain meaning, i.e., not to require more than one obstacle detection algorithm.
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`4
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`IPR2014-00648
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`Paatent 8,2177,612
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`B.
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`r window orsing said wse to a sensin responsid motor i“deaactivate sai
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`paneel has stopped movinng” (Claimm 6)
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`At institutioon, the Boaard properlly construeed “deactivvate” as “anny of turniing
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`off, remmoving powwer from, aand stoppinng the mot
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`or.” Paperr 14 at 8. PPatent Ownner
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`contendds that the tterm shoulld not be coonstrued, oor should bbe construeed as “not
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`active, uunmoving,, immobilee, inoperatiive.” Papeer 20 at 21--22. The BBoard’s
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`construcction is connsistent wiith Dr. Tolliyat’s interrpretation
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`definitioon on whicch Patent OOwner reliees. Ex. 10221, ¶ 25; EEx. 2020 att 5. There
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`no reasoon that the Board shoould changge its constrruction.
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`PPatent Ownner further proposes llimiting thee larger claaim phrasee “deactivaate
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`said mootor in respponse to a ssensing saiid window
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`or panel hhas stoppedd moving”
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`deactivaating a motor in respoonse to an
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`abrupt stooppage. PPaper 20 at
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`(emphasis added).. Patent O
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`wner relies on “plainn meaning,,” but the pplain meanning
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`of the “wwindow orr panel stoppped moviing” does nnot limit hoow quicklyy it had to
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`stop
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`movingg. Ex. 10211, ¶ 26; seee Johnson Worldwidee Associatees, Inc. v. ZZebco Corprp.,
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`175 F.3d 985, 9899 (Fed. Cir. 1999) (“GGeneral de
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`scriptive teerms will oordinarily bbe
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`given thheir full meeaning; moodifiers willl not be addded to brooad terms sstanding
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`alone.”)). The termm “abrupt”” also does
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`not appearr in the pattent. Ex. 11021, ¶ 26..
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`Inn trying to distinguish the priorr art, Patennt Owner immplicitly a
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`dds the
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`requiremment of insstantaneouusly “sensiing said w
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`indow or ppanel has sstopped
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`movingg.” Paper 220 at 47 (Paatent Own
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`er states “tthere is a ddelay of at
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`second before Berrnard can ddetect an abbrupt stopppage … TTherefore, BBernard dooes
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`not sensse an abruppt stoppagee of the wi
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`in claimm 6 that thee “sensing”” occur insttantaneoussly, and Paatent Owneer’s expres
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`construcction does not even include thiss requiremment. Id. att 45-46. N
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`claim 6 imposes aa time consstraint on hhow quicklly the detecction must
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`othing in
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`1021, ¶¶¶ 28-29, 377. Therefoore, claim 66 should noot be interppreted to r
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`instantaaneously seensing a stooppage, orr that the sttoppage occcur abrupttly.
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`III. TTHE CHAALLENEGGED CLAIIMS ARE
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`INVALIDD
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`by Berna
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`Patent Ownner’s sole aargument aagainst antiicipation reests on its
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`stoppage bbe sensed iinstantaneoously. Papper
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`IPR2014-00648
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`Paatent 8,2177,612
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`interpreetation requuiring that an abrupt
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`20 at 444-47. Therre is no dis
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`pute that BBernard sennsed an abbrupt stopp
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`age, and thhus
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`satisfiess Patent Owwner’s exppress constrruction. EEx. 1021, ¶¶¶ 35, 37. BBernard
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`detectedd that the wwindow ab
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`ruptly stoppped movinng by senssing the inccrease in
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`motor ccurrent resuulting fromm the stall oof the motoor, and de--energizingg the motorr if a
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`thresholld value was exceedeed, as Dr. EEhsani admmits. Id. att ¶ 32; Ex.
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`1005 at 1:
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`abrupt stooppage of tthe windoww”).
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`PPatent Ownner’s argumment is reallly that thee “delay off at least 0.
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`before BBernard caan detect ann abrupt stooppage of
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`too longg because cclaim 6 shoould requirre sensing
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`36. As di
`1021, ¶
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`scussed abbove, Patennt Owner’ss “instantanneous senssing”
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`Paatent 8,2177,612
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`requiremment in unsupported and shouldd be rejecteed.
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`PPatent Ownner makes aa cursory aargument thhat Bernarrd is not ennabled (Papper
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`20 at 588-59) but faails to acknnowledge tthat there iis a presummption thatt a prior artt
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`referencce is enableed. In re AAntor Mediia, 689 F.33d 1282, 12287-88 (Feed. Cir. 20
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`12);
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`Amgen IInc. v. Hoeechst Mariion Rousseel, Inc., 3144 F.3d 131
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`3, 1355 (FFed. Cir. 20003)
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`(both ciited in Capptioncall L..L.C. v. Ultratec, Incc., IPR20133-00540, PPaper 78 (MMar.
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`3, 2015)). Patent Owner proovides no bbasis for ovvercomingg this presuumption
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`becausee Patent Owwner only ddisputes wwhether Berrnard woulld “actuallyy work in tthe
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`real worrld” (Paperr 20 at 59)
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`immateriall (and therre is no eviidence thatt the
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`’612 paatent wouldd work anyy better (Exx. 1021, ¶ 880)). Impaax Labs. v.
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`Aventis
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`Pharmss., 468 F.3dd 1336, 13
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`efficacy is
`83 (Fed. CCir. 2006) ((“proof of e
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` not requirred
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`for purposses of anticcipation”).
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`work toogether to ddetect an obbstacle usiing a detailled algorithhm. Ex. 1
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`021, ¶¶ 388-40.
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`B.
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`be combbined, the Board corrrectly noteed, “Both LLamm and
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`pertinennt to the paarticular prroblem withh which thhe inventorr is involveed —
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`preventing pinchinng. Thus, they both wwould havve commennded themsselves to ann
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`Rejecting PPatent Ownner’s pre-innstitution aargument thhat the refeerences cannnot
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`IPR2014-00648
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`inventor’s attention in considering the problem addressed by claims 1 – 2 and 5 – 8
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`Patent 8,217,612
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`
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`of the ’612 patent.” Paper 14 at 13; see also Ex. 1021, ¶ 43. Patent Owner fails to
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`present a basis for departing from this conclusion. Patent Owner argues that Itoh
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`and Bernard cannot be combined with Lamm on the basis that their obstruction
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`detection algorithms use different variables than Lamm’s algorithm. Paper 20 at
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`26-30. However, obviousness does not require that references use the same
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`variables or be identical to permit direct substitution. Paper 14 at 13
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`(“Obviousness does not require direct substitution”). “A person of ordinary skill is
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`also a person of ordinary creativity, not an automaton.” KSR Intern. Co. v. Teleflex
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`Inc., 550 U.S. 398, 420-421 (2007). Furthermore, Petitioner does not propose to
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`fuse the respective algorithms but rather to take Lamm’s approach as a basis and
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`add a few specific hardware improvements. Ex. 1021, ¶ 45.
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`It would have been obvious to implement Bernard’s rocker switch,
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`photosensors, programmable controller, and/or memory in Lamm’s apparatus. Id.
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`at ¶ 46. Similarly, it would have been obvious to implement Itoh’s programmable
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`memory for storing speed values in Lamm’s apparatus because Lamm also taught
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`speed-based detection. Id. at ¶ 47. A person of ordinary skill, whom the parties
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`agree would have had a B.S. and practical experience, would have been capable of
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`incorporating these well-known components into Lamm’s apparatus. Id. at ¶ 48,
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`Ex. 1003, ¶ 23; Ex. 2001, ¶ 36. Patent Owner does not contend that implementing
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`IPR2014-00648
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`these components would have required more than ordinary skill or would have
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`Patent 8,217,612
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`been incompatible with Lamm’s operation. KSR, 550 U.S. at 416.
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`Patent Owner cursorily argues that Lamm and Itoh are not enabled. Paper
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`20 at 58. As stated above, Patent Owner ignores the presumption that the
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`references are enabled, and fails to rebut the presumption. Instead, Patent Owner
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`disputes how well Lamm and Itoh would work “in production vehicles,” but their
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`efficacy is irrelevant. Impax, 468 F.3d at 1383. Furthermore, enablement is not
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`even necessary for obviousness. Amgen, 314 F.3d at 1357 (“Under § 103,
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`however, a reference need not be enabled; it qualifies as a prior art, regardless, for
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`whatever is disclosed therein.”). In any event, Dr. Toliyat has explained that the
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`references were enabling to those of ordinary skill, and the evidence cited by Dr.
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`Ehsani only reinforces this. Ex. 1021, ¶¶ 49-52.
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`(a)
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`Independent Claim 1 and Dependent Claim 2
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`Patent Owner does not dispute that the combination of Lamm, Itoh, and
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`disclose all elements of claims 1-2 if a single obstacle detection algorithm can
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`satisfy claim 1. Patent Owner’s primary argument against obviousness is that these
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`references do not disclose two separate, concurrently running obstacle detection
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`algorithms, as required by Patent Owner’s improper construction of the
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`“identifying” and “sensing” limitations. Paper 20 at 22-26.
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`Patent Owner’s contention that Lamm does not disclose use of two
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`IPR2014-00648
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`concurrent algorithms is also incorrect. Ex. 1021, ¶ 54. Lamm disclosed
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`Patent 8,217,612
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`performing obstacle detection where “results of the multiple calculations of the
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`derivatives running in parallel are each compared to a threshold value” to detect
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`obstacles. Ex. 1008 at 2; see also Ex. 1021, ¶¶ 54-56. Lamm made clear that this
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`approach would involve multiple algorithms running concurrently. Ex. 1008 at 2
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`(“If more than one derivative is determined, then each result is compared to its own
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`threshold value, wherein the threshold values can be different.”); see also Ex.
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`1021, ¶ 57. Although Lamm disclosed concurrently running algorithms, Patent
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`Owner contends that these algorithms do not satisfy claim 1 on the basis that they
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`are “not independent.” Paper 20 at 24. Even assuming arguendo that claim 1
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`requires two obstacle detection algorithms, there is no basis for requiring that these
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`algorithms be entirely independent. Ex. 1021, ¶ 58.
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`In addition, Lamm disclosed another algorithm that sensed obstructions by
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`detecting when the minimum rotary speed of the motor fell below a pre-specified
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`minimum speed. Ex. 1008 at 2, 4; Ex. 1021, ¶ 60. Dr. Ehsani dismisses this as
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`“merely a fail-safe mechanism” that should not be considered an obstacle detection
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`algorithm. Paper 20 at 25 (citing Ex. 2001, ¶ 96). This is incorrect. Lamm
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`expressly teaches its use for obstacle detection to provide a “further increase in the
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`operating reliability.” Ex. 1008 at 4 (“with this measure it is possible to detect a
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`blocking of the drive or of the component at a point as early as the start of the
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`IPR2014-00648
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`movement from the component resting position.”); Ex. 1021, ¶ 61.
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`Patent 8,217,612
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`(b) Dependent Claim 5
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`Patent Owner’s main argument against obviousness is that Lamm, Itoh, and
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`Bernard do not explicitly recite use of all immediate past measurements taken
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`within a 40 ms interval. Response at 33-44. However, such express disclosure is
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`not required. The claimed range is not patentable unless it produces some new and
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`unexpected benefit that is different in kind. In re Huang, 100 F.3d 135, 139 (Fed.
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`Cir. 1996) (“even though applicant’s modification results in great improvement
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`and utility over the prior art, it may still not be patentable if the modification was
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`within the capabilities of one skilled in the art, unless the claimed ranges ‘produce
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`a new and unexpected result which is different in kind and not merely in degree
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`from the results of the prior art.’”) (citation omitted). The Examiner applied this
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`principle in rejecting a corresponding claim to a 40 ms interval during prosecution
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`of the related ’802 patent, and the applicant did not respond on this point. Ex.
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`1030 at 211-12; Ex. 1021, ¶ 67.
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`There is no evidence that the 40 ms interval is critical. As the Board has
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`recognized, the patent does not describe any particular advantage to using the 40
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`ms time window. IPR2014-00416, Paper 12 at 17. Dr. Ehsani’s basis for
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`concluding that 40 ms is desirable is that this is what is claimed; in other words, he
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`relies on circular reasoning. Ex. 1022 at 86:8-22, 87:15-88:20.
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`IPR2014-00648
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`Patent 8,217,612
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`Furthermore, use of all immediate past measurements taken within a 40 ms
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`interval would have been an obvious design choice. Ex. 1021, ¶¶ 65-71. Itoh
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`disclosed that when measurements were taken at maximum speed (1.2 ms), 33
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`measurements would be taken within 40 ms, as the Board has recognized.
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`IPR2014-00416, Paper 12 at 17; Ex. 1021, ¶ 68; Ex. 1006 at 9:63-68. Dr. Ehsani
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`agrees that Itoh would obtain 33 measurements in 40 ms. Ex. 2001, ¶ 147. Itoh
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`leaves it as a design choice how many immediate past measurements are used. Ex.
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`1006 at 9:63-68; Ex. 1021, ¶ 68; see also IPR2014-0016, Paper 12 at 17.
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`It would have been obvious to use all the immediate past measurements
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`taken within 40 ms to increase accuracy of obstruction detection. Ex. 1021, ¶ 69.
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`Similarly, it would have been obvious to select the time window, e.g., 40 ms, based
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`on the system requirements. Id., ¶ 70; see KSR, 550 U.S. at 421. For example, a
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`person of ordinary skill could have implemented this time window by using a 40
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`ms motor “time out,” where the controller would have deactivated the motor if no
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`signal was received in 40 ms. Ex. 1021, ¶ 71. This was a well-known approach
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`and would have ensured that all measurements were obtained within 40 ms. Id.
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`(c)
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`Independent Claim 6 and Dependent Claims 7-8
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`Patent Owner argues against invalidity based on its incorrect interpretation
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`requiring instantaneous detection of an abrupt stoppage. Even if Patent Owner’s
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`express claim construction (which requires detecting an abrupt stoppage but not
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`Paatent 8,2177,612
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`instantaaneous deteection) werre adoptedd, claims 6--8 would reemain obvvious. Lammm
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`detects an abrupt sstoppage bby detectingg “if the rootary speedd drops bellow [a]
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`minimuum speed,” where thee minimumm speed is sset at zero.
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`1021, ¶¶¶ 73-75. AAs discusseed above, LLamm teacches that thhis is used
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` at 3; Ex.
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`for obstaclle
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`detectioon. Ex. 10008 at 4; Exx. 1021, ¶ 661.
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`PPatent Ownner does noot genuinelly dispute tthat Lammm would deetect an abrrupt
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`stoppagge, but arguues that Laamm “woulld take a fiinite and poossibly siggnificant
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`amount of time” to detect thhe stoppagee. Paper 200 at 49. AAs explaine
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`d in Sectioon
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`III.B, neeither claimm 6 itself nnor Patent OOwner’s e
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`xplicit connstruction rrequires
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`instantaaneously seensing thatt a windoww or panel hhas stoppedd moving.
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`over Duhhame and KKinzl
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`C.
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` Grouund 4: Ob
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`viousness
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`Patent Ownner states inn one senteence that DDuhame annd Kinzl caannot be
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`combined (Paper 220 at 31, 5
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`7), citing DDr. Ehsanii’s testimonny, which
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`amounts too
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`impermmissible incorporationn by referennce. 37 CFFR § 42.6((a)(3); Blacckberry Coorp.
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`v. Mobiilemedia Iddeas LLC, IIPR2013-000016, Papper No. 32
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`Regardlless, a persson of ordinnary skill wwould havve looked too Duhame
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`at 21 (Febb. 25, 2014
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`becausee they addrressed the ssame probllem of obsstruction deetection. EEx. 1003, ¶¶
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`258; Exx. 1021, ¶ 881; In re CClay, 966 F.2d 656, 6559 (Fed. CCir. 1992).
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`It was welll-
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`known tthat obstaccle detectioon methodss can be immplementedd in variouus contextss,
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`includinng motor vvehicles. EEx. 1021, ¶
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`83; Ex. 10008 at 2. AA person o
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`IPR2014-00648
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`skill would have found it obvious to implement Duhame’s algorithm in a vehicle
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`Patent 8,217,612
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`
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`window, and this would have been an obvious use of a known technique to
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`improve a similar device in an expected way. Ex. 1021, ¶ 82; KSR, 550 U.S. at
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`420-21. Again, Dr. Ehsani improperly focuses on how well a vehicle system based
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`on Duhame would work and the UL standard for garage doors, which are
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`irrelevant. Ex. 1021, ¶¶ 79-80 (discussing Ex. 2001, ¶¶ 110-20).
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`Patent Owner does not contest that Duhame is enabled. While Patent Owner
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`conclusorily contends that Kinzl lacks enablement (Paper 20 at 58-59), as
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`previously discussed Patent Owner does not acknowledge the presumption of
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`enablement or that enablement is unnecessary for obviousness. Amgen, 314 F.3d
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`at 1355-57. Patent Owner focuses on how well Kinzl would work, but again
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`efficacy is irrelevant. Impax, 468 F.3d at 1383. In any event, Kinzl is enabled, and
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`the references cited by Dr. Ehsani reinforce this. Ex. 1021, ¶¶ 84-86.
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`(a)
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`Independent Claim 1 and Dependent Claim 2
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`Patent Owner’s only argument against obviousness is premised on its
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`incorrect claim construction requiring two distinct, concurrently running obstacle
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`detection algorithms. Paper 20 at 30-31. Even under Patent Owner’s erroneous
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`interpretation, the combination would have rendered the claims obvious. Duhame
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`disclosed two independent, concurrently running obstacle detection algorithms:
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`(1) one using the detected rate of change of speed (Ex. 1009 at 3:35-41; 24:5-29);
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`14
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`IPR2014-00648
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`and (2) one using a time-out period (Id. at 19:61-20:7). Ex. 1021, ¶¶ 88-89. Patent
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`Patent 8,217,612
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`Owner has ignored Duhame’s second obstruction detection algorithm. Paper 20 at
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`30-31; Ex. 1021, ¶ 89.
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`(b)
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`Independent Claim 6 and Dependent Claims 7-8
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`Patent Owner’s only argument against obviousness is again is based on its
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`express position that claim 6 requires an abrupt stoppage and implicit position that
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`this abrupt stoppage must be sensed instantaneously. Even if Patent Owner’s
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`express claim construction (Paper 20 at 45-46) were adopted, the combination still
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`would have rendered the claims obvious.
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`Duhame detected an abrupt stoppage of the window using a motor time-out
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`period. Ex. 1009 at 19:61-20:7; Ex. 1003, ¶¶ 251-54; Ex. 1021, ¶ 93. While
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`Patent Owner argues that Duhame cannot detect abrupt stoppage of the garage
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`door due to its inertia and because the UL 325 standard only requires a garage door
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`to reverse within 2 seconds upon detecting an abrupt stoppage (Paper 20 at 55),
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`this merely amounts to arguing that it may take some time before the stoppage is
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`detected. Ex. 1021, ¶ 94. This is irrelevant under both a proper construction and
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`Patent Owner’s express construction, and therefore claims 6-8 would remain
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`obvious. The Board should reject any instantaneous detection requirement.
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`IV. CONCLUSION
`Claims 1-2 and 5-8 should be declared unpatentable and canceled.
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`15
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`IPR2014-00648
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`Patent 8,217,612
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`Dated: April 3, 2015
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`Respectfully submitted,
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`/Charles H. Sanders/
`Charles H. Sanders
`Reg. No.: 47,053
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`IPR2014-00648
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`Patent 8,217,612
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`Appendix – List of Exhibits
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`
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`Exhibit
`No.
`Ex. 1001
`Ex. 1002
`Ex. 1003
`Ex. 1004
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`Ex. 1005
`Ex. 1006
`Ex. 1007
`Ex. 1008
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`Ex. 1009
`Ex. 1010
`Ex. 1011
`Ex. 1012
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`Ex. 1013
`Ex. 1014
`Ex. 1015
`Ex. 1016
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`Ex. 1017
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`Ex. 1018
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`Ex. 1019
`Ex. 1020
`Ex. 1021
`Ex. 1022
`Ex. 1023
`Ex. 1024
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`Ex. 1025
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`Description
`U.S. Patent No. 8,217,612 to Boisvert et al.
`Prosecution History of U.S. Patent No. 8,217,612
`Declaration of Hamid A. Toliyat, Ph.D.
`Appendix A to the Declaration of Hamid A. Toliyat, Ph.D.: Dr.
`Toliyat’s curriculum vitae.
`U.K. Published Patent Application GB 2 026 723 to Bernard et al.
`U.S. Patent No. 4,870,333 to Itoh et al.
`U.S. Patent No. 4,468,596 to Kinzl
`Translation of German Published Patent Application DE4000730A1
`to Lamm et al.
`U.S. Patent No. 5,218,282 to Duhame
`U.S. Patent No. 4,831,509 to Jones et al.
`49 CFR Part 571.118 (December 2, 1971)
`Safety Commission Publishes Final Rules for Garage Door Openers,
`U.S. Consumer Product Safety Commission (Dec. 3, 1992)
`U.S. Patent No. 5,334,876 to Washeleski et al.
`U.S. Patent No. 3,513,374 to Koment
`U.S. Patent No. 3,651,389 to Ito et al.
`Excerpt from Plaintiff UUSI, LLC, D/B/A Nartron’s Disclosure Of
`Asserted Claims and Infringement Contentions and Infringement
`Contentions Chart for the ’612 Patent (Feb. 18, 2014)
`German Published Patent Application DE4000730A1 to Lamm et
`al.
`Certification of Translation of German Published Patent Application
`DE4000730A1 to Lamm et al.
`U.S. Patent No. 6,064,165 to Boisvert et al.
`49 CFR Part 571.118 (April 16, 1991)
`Reply Declaration of Dr. Toliyat
`Transcript of the Deposition of Dr. Ehsani (March 13, 2015)
`Transcript of the Deposition of Dr. Ehsani (March 14, 2015)
`Exhibit 1 of the Deposition of Dr. Ehsani (March 13, 2015),
`handwritten notes by Dr. Ehsani
`Exhibit 2 of the Deposition of Dr. Ehsani (March 13, 2015),
`handwritten notes by Dr. Ehsani
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`IPR2014-00648
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`Patent 8,217,612
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`Exhibit
`No.
`Ex. 1026
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`Ex. 1027
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`Ex. 1028
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`Ex. 1029
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`Ex. 1030
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`
`Description
`Exhibit 3 of the Deposition of Dr. Ehsani (March 14, 2015),
`Patent Owner’s Preliminary Response in IPR2014-00649
`Exhibit 4 of the Deposition of Dr. Ehsani (March 14, 2015), excerpt
`of U.S. Patent 7,548,037 with handwritten notes by Dr. Ehsani
`Exhibit 5 of the Deposition of Dr. Ehsani (March 14, 2015),
`U.S. Patent 7,077,462 to De Gaillard
`Exhibit 6 of the Deposition of Dr. Ehsani (March 14, 2015),
`handwritten notes by Dr. Ehsani
`Prosecution History of U.S. Patent No. 7,579,802
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`IPR2014-00648
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`Patent 8,217,612
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies th