Paper 4
`Filed: April 30, 2014
`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.
`
`UUSI, LLC
`Patent Owner.
`
`—————
`
`Case IPR2014-00648
`Patent 8,217,612
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`—————
`
`CORRECTED PETITION FOR INTER PARTES REVIEW
`PURSUANT TO 35 U.S.C. §§ 311–319 AND 37 C.F.R. § 42
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`
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`Attorney Docket: 130163.231151
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`

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`Case IPR2014-00648
`U.S. Patent 8,217,612
`
`
`
`Atty. Docket: 130163.231151
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`Table of Contents
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`Page
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`I. 
`
`II. 
`
`MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ................................... 1 
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`PAYMENT OF FEES ..................................................................................... 2 
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`III.  REQUIREMENTS UNDER 37 C.F.R. § 42.104 ............................................ 2 
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`A.  Grounds for Standing Under 37 C.F.R. § 42.104(a) ............................. 2 
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`B. 
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`C. 
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`D. 
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`Identification of Challenge Under 37 C.F.R. § 42.104(b) .................... 2 
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`How the Challenged Claims are to be Construed ................................. 3 
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`Explanation of Unpatentability ............................................................. 4 
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`IV.  OVERVIEW OF THE TECHNOLOGY AND THE ’612 PATENT ............. 4 
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`V. 
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`CONSTRUCTION OF CLAIM TERM .......................................................... 7 
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`VI.  DETAILED EXPLANATION OF GROUNDS FOR
`UNPATENTABILITY .................................................................................... 8 
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`A. 
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`B. 
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`C. 
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`Bernard Anticipates Claims 6-8 Under 35 U.S.C. § 102(b) ................. 8 
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`Itoh in View of Kinzl Renders Claims 1-2 and 5-8 Obvious
`Under 35 U.S.C. § 103(a) .................................................................... 16 
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`Lamm in View of Itoh, In Further View of Bernard Renders
`Claims 1-2 and 5-8 Obvious Under 35 U.S.C. § 103(a) ..................... 31 
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`D.  Duhame in View of Kinzl Renders Claims 1-2 and 5-8 Obvious
`Under 35 U.S.C. § 103(a) .................................................................... 46 
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`VII.  CONCLUSION .............................................................................................. 60 
`
`i
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`

`

`Case IPR2014-00648
`U.S. Patent 8,217,612
`Petitioner Webasto Roof Systems, Inc. (“WRSI”) requests inter partes
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`Atty. Docket: 130163.231151
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`
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`review (“IPR”) of claims 1-2 and 5-8 of U.S. Patent No. 8,217,612 (“the ’612
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`Patent”) (Ex. 1001). This Petition shows that there is a reasonable likelihood that
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`these claims are unpatentable. Petitioner requests that the claims be declared
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`unpatentable and canceled.
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`I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
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`Real party-in-interest: Webasto Roof Systems, Inc.
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`Related matters: The following matters involving the ’612 Patent would affect, or
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`be affected by, a decision in the proceeding: UUSI, LLC v. Webasto Roof Sys.,
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`Inc., No. 2:13-cv-11704 (E.D. Mich.); UUSI, LLC v. Robert Bosch LLC and Brose
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`North Am., Inc., No. 2:13-cv-10444 (E.D. Mich.); Brose North Am., Inc. and Brose
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`Fahrzeugteile GmbH & Co. KG, Hallstadt v. UUSI, LLC, IPR2014-00416.1
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`Lead and Back-up Counsel and Service Information:
`
`LEAD COUNSEL
`Charles H. Sanders (Reg. No. 47,053)
`(csanders@goodwinprocter.com)
`Goodwin Procter LLP
`Exchange Place, 53 State Street
`Boston, MA 02109
`(T): 617.570.1315; (F): 617. 801.8804
`
`1 The second ground of invalidity herein, obviousness of claims 1-2 and 5-8 based
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`BACK-UP COUNSEL
`Timothy J. Rousseau (Reg. No. 59,454)
`(trousseau@goodwinprocter.com)
`Goodwin Procter LLP
`The New York Times Building
`620 Eighth Avenue
`New York, New York 10018
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`on Itoh in view of Kinzl, is the only ground of invalidity herein that also appears in
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`the petition filed in IPR2014-00416.
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`1
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`

`

`Case IPR2014-00648
`U.S. Patent 8,217,612
`
`
`
`Atty. Docket: 130163.231151
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`(T): 212.813.8000; (F): 212.355.3333
`
`Phong T. Dinh (Reg. No. 67,475)
`(pdinh@goodwinprocter.com)
`Goodwin Procter LLP
`901 New York Ave., NW
`Washington, D.C. 22201
`(T): 202.346.4320; (F): 202.346.4444
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`Counsel consents to electronic service at their email addresses. A power of
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`attorney accompanies this Petition.
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`II.
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`PAYMENT OF FEES
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`We hereby authorize the Office to charge the fee set forth in 37 C.F.R. §
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`42.15(a) for this Petition to a credit card, and further authorize payment of any
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`additional fees to be charged to Deposit Account No. 50-4494.
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`III. REQUIREMENTS UNDER 37 C.F.R. § 42.104
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`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
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`WRSI certifies that the ’612 Patent is available for IPR and that WRSI is not
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`barred or estopped from requesting this IPR.
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`B.
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`Identification of Challenge Under 37 C.F.R. § 42.104(b)
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`WRSI requests IPR of claims 1-2 and 5-8 of the ’612 Patent based on the
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`following prior art references. An Appendix of Exhibits is also attached.
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`Description
`Exhibit
`Ex. 1005 U.K. Published Patent Application GB 2
`026 723 to Bernard et al. (“Bernard”)
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`Publication or
`Filing Date
`Feb. 6, 1980
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`Type of
`Prior Art
`§ 102(b)
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`2
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`Case IPR2014-00648
`U.S. Patent 8,217,612
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`
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`Atty. Docket: 130163.231151
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`Ex. 1006 U.S. Patent No. 4,870,333 to Itoh et al.
`(“Itoh”)
`Ex. 1007 U.S. Patent No. 4,468,596 to Kinzl
`(“Kinzl”)
`Ex. 1008 Translation of German Published Patent
`Application DE4000730A1 to Lamm et
`al.2 (“Lamm”)
`Ex. 1009 U.S. Patent No. 5,218,282 to Duhame
`(“Duhame”)
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`Sep. 26, 1989
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`§ 102(b)
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`Aug. 28, 1984 § 102(b)
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`Aug. 1, 1991 § 102(a)
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`Mar. 22, 1990 § 102(e)
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`Section VI below sets forth, per 37 C.F.R. § 42.104(b)(2), the grounds under
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`35 U.S.C. §§ 102 or 103 on which the challenges to the claims are based.
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`C. How the Challenged Claims are to be Construed
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`As required by 37 C.F.R. § 42.104(b)(3), Petitioner provides interpretation
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`for a claim term in Section V. Because the ’612 Patent has expired, the Patent
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`Trial and Appeal Board construes the terms pursuant to Phillips v. AWH Corp.,
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`415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc). See, e.g., In re Rambus, Inc., 694
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`F.3d 42, 46 (Fed. Cir. 2012); Facebook, Inc., LinkedIn Corp. and Twitter Inc. v.
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`Software Rights Archive, IPR2013-00479, Paper 18 at 9-10 (Feb. 3, 2014).
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`Petitioner has proposed constructions herein that take into account Patent Owner’s
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`apparent interpretation of the claims, even if Petitioner disagrees; Petitioner
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`expressly reserves the right to present interpretations of the claims in litigation that
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`2 Ex. 1017 is the German Published Patent Application DE4000730A1 to Lamm et
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`al., published on August 1, 1991. Ex. 1018 is the certification that Ex. 1008,
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`Lamm, is an accurate translation of Ex. 1017.
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`3
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`Case IPR2014-00648
`U.S. Patent 8,217,612
`may differ from those set forth herein.
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`
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`D. Explanation of Unpatentability
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`Atty. Docket: 130163.231151
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`As required under 37 C.F.R. § 42.104(b)(4) and (5), explanations of how
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`claims 1-2, and 5-8 of the ’612 Patent are unpatentable under the statutory grounds
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`identified above are provided in Section VI below with reference to the supporting
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`evidence. Additional background and support for each ground of rejection is set
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`forth in the Declaration of Hamid A. Toliyat, Ph.D. (Ex. 1003). For purposes of
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`this Petition, Petitioner adopts Dr. Toliyat’s definition of a person of ordinary skill.
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`(Ex. 1003 at ¶ 23 (“[A] person with 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 having
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`approximately two (2) years of experience related to control systems.”)
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`IV. OVERVIEW OF THE TECHNOLOGY AND THE ’612 PATENT
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`The ’612 Patent relates to an apparatus for controlling the movement of a
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`window or panel along a path of travel and stopping the motor if there is an
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`obstruction. The disclosed apparatus contains a microcontroller that monitors the
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`motor current and speed detected from a motor that is driving the movement of a
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`window or panel along a path of travel. (Ex. 1001 at 15:16-22.) Based on the
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`sensed motor current or speed, the microcontroller detects obstructions. (Id. at
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`16:28-17:25.) An obstruction is detected if the monitored motor current, speed, or
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`4
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`“derivattives thereoof,” exceedds a threshhold value. (Id. at 155:21-25.) TThe
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`Atty.. Docket: 1130163.2311151
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`Case IPPR2014-00648
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`U.S. Patent 8,217,,612
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`microcoontroller caan deactivaate, and subbsequentlyy reverse, iif an obstruuction is
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`detectedd. (Ex. 10001 at 16:155-22) (See also Ex. 1
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`003 at ¶ 433.)
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`TThe ’612 Paatent descrribes that thhe thresholld can be ccalculated
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`using
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`the currennt
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`“adaptivve” detectiion algorithhms that usse measureements derrived from
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`run of thhe windoww or panel.
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` (Ex. 10011. at 17:5-442; 15:54-662.) In parrticular, the
`e
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`microcoontroller usses measurrements froom the currrent run st
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`ored in firsst-in-first-oout
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`(FIFO) buffer memmory to geenerate the threshold.. (Id. at 177:56-67). TThis threshhold
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`is then ccompared against thee most receent measurrement in oorder to dettect an
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`obstructtion. (Id.) For instannce, the ’612 Patent ddescribes tthat to deteect a hard
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`recent me
`object oobstructionn, the most
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`asurementt of motor ccurrent (IRR0) is comp
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`ared
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`against a thresholdd that is baased on an immediateely prior mmotor curre
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`nt
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`measure
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`ed measuremotor speeately prior mement (IR1)), immedia ement (PPRR1), and
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`constannts (K1, K2, and K3):
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`(Id. at 222:35-40) ((See also EEx. 1003 att ¶ 43.)
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`TThe ’612 Paatent also ddescribes tthat opticall detectors
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`e could be uused in the
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`apparatuus to track the positioon of the wwindow or
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`panel alonng the path
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`of travel.
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`(Ex. 10001 at 4:12--21; 11:14--20.)
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`5
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`

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`Case IPR2014-00648
`U.S. Patent 8,217,612
`The ’612 Patent sought to solve a problem that was well known in the art by
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`Atty. Docket: 130163.231151
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`
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`April 22, 1992: windows, panels, doors, and other forms of closures were potential
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`hazards that could cause bodily injury when closing, and safety procedures were
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`necessary to ensure user safety. (Ex. 1001 at 1:30-37; Ex. 1003 at ¶¶ 25-26.) For
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`instance, Congress recognized the potential danger and issued a mandate requiring
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`entrapment protection mechanisms in automatic garage door systems in the
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`Consumer Product Safety Improvement Act of 1990. (See Ex. 1012.) Similarly,
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`regulations were also implemented by the National Highway Traffic Safety
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`Administration (NHTSA) for power-operated windows and roof panels in motor
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`vehicles. (Ex. 1001 at 1:30-32; Ex. 1020 (1991 NHTSA regulations); Ex. 1020
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`(1971 regulations).)
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`Thus, a principal goal for those skilled in the art by April 22, 1992, and in
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`fact much earlier, was to design apparatuses that could accurately and rapidly
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`detect obstructions and collisions. (Ex. 1003 at ¶¶ 25-26.) As discussed below, the
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`result was that by April 22, 1992, the features claimed by claims 1-2, and 5-8 of
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`the ’612 Patent were well known and obvious. (Id. at ¶¶ 26-42)
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`Many prior art systems, including those relied upon below, were also
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`capable of detecting an obstruction by comparing speed or motor current against a
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`calculated or adaptive threshold value to detect an obstruction. (Id.) Indeed, those
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`skilled in the art by April 22, 1992 recognized that ice, dirt, grime accumulation,
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`6
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`

`

`Case IPR2014-00648
`U.S. Patent 8,217,612
`temperature, speed of the vehicle, voltage of the motor, inherent mechanical
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`Atty. Docket: 130163.231151
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`
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`properties and other factors could cause the speed or motor current to vary as the
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`window or panel moved along the path of travel. (Id.) They further recognized
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`that obstruction detection accuracy could be improved by adapting the threshold to
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`take into account external and environmental conditions that were experienced by
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`the system during the current run. (See, e.g., Ex. 1010 (published in 1989) at 1:34-
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`40 (“[T]he relationship between motor load and door position will vary with door
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`age, climatic conditions and track condition. Thus setting of load monitoring
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`device to only detect actual obstructions is difficult as each of these variations must
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`be compensated for in order to avoid false tripping of the door mechanism.”))
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`V. CONSTRUCTION OF CLAIM TERM
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`Petitioner proposes that the term, “deactivate,” as recited in independent
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`claims 1 and 6, should be construed according to its plain and ordinary meaning to
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`mean “turn off.” 3 Petitioner’s construction is consistent with how one of ordinary
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`3 Petitioner in IPR2014-00416 identified three phrases for construction: “a control
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`signal … to deactivate the motor,” “a sensor for sensing movement of the window
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`or panel,” and “sensing said window or panel has stopped moving.” Petitioner
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`here construes the key term in the first phrase, “deactivate,” and proposes grounds
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`of invalidity consistent with the interpretations proposed in IPR2014-00416 for the
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`other two phrases, but does not believe that they require construction here.
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`7
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`

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`Case IPR2014-00648
`U.S. Patent 8,217,612
`skill in the art would have understood this term at the time of the alleged invention.
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`Atty. Docket: 130163.231151
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`
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`(Ex. 1003 at ¶¶ 50-55.) There is nothing in the intrinsic record that indicates a
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`clear intention to deviate from the plain and ordinary meaning of this term.
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`Indeed, interpreting “deactivate” as “turn off” is consistent with the
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`specification’s distinction between turning the motor off and reversing it, and is
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`further consistent with the specification’s criticism of motor plugging. The ’612
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`Patent distinguishes deactivation from immediately reversing (without first
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`deactivating) the motor in response to an obstacle, and criticizes use of immediate
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`reversal. (Ex. 1001 at 3:42-55 (describing such “motor plugging,” as
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`“unnecessary” and “undesirable” due to “undesired motor heating,” because it is
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`“detrimental to the life and reliability” and because it “can also cause undesirable
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`transients, trip breakers, and blow fuses in a power supply system”).) In addition,
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`at least one of Patentee’s other, earlier patents indicates that Patentee knew how to
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`claim the broader concept of altering the motion of the motor. (See Ex. 1019 at
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`24:41-44.) The word “de-activate” in the challenged claims has a different
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`meaning than the words “alter” and “reverse,” and this distinction is properly
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`reflected in Petitioner’s construction.
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`VI. DETAILED EXPLANATION OF GROUNDS FOR
`UNPATENTABILITY
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`A. Bernard Anticipates Claims 6-8 Under 35 U.S.C. § 102(b)
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`Bernard described control circuits for electric window winders in vehicles,
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`8
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`Case IPR2014-00648
`U.S. Patent 8,217,612
`including features for protecting against breaking a trapped finger. (Ex. 1005 at
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`Atty. Docket: 130163.231151
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`
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`Abstract.) The preferred embodiment de-energized the motor if the window met
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`an obstruction while it was closing, causing the motor to stall, by sensing that the
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`“window or panel has stopped moving,” as set forth in independent claim 6. (Id. at
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`1:111-18.)4
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`Bernard provided this protection by sensing the increase in motor current
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`resulting from the window meeting the obstruction, and de-energizing the motor if
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`a threshold value for the current was exceeded. (Id. at 1:111-23. 7:49-55; see also
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`Ex. 1003 at ¶¶ 60-61.) Bernard also disclosed maintaining a continuous record of
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`the position of the window using a photosensor and counter arrangement, which
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`made it easy to identify when the window reached the end of its travel. (Ex. 1005
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`at 1:96-105, 2:13-22; see also Ex. 1003 at ¶¶ 56-59.)
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`Bernard was not of record during prosecution.
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`Claim
`6. Apparatus for
`controlling activation of
`a motor coupled to a
`motor vehicle window
`or panel for moving said
`window or panel along a
`travel path and de-
`activating the motor
`when movement of the
`
`Bernard (Ex. 1005)
`Bernard disclosed, “Various control circuits are
`described for electric window winders for vehicles. All
`these circuits allow the window to be fully closed or
`fully opened by a momentary operation of a control
`switch. … Certain of the embodiments also have other
`features; they limit the current supplied to the motor of
`the window winder, so that a trapped finger, for
`example, is unlikely to be broken ….” Ex. 1005,
`Abstract.
`
`
`4 The citations to Ex. 1005 refer to the pagination of the original document.
`
`9
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`Case IPR2014-00648
`U.S. Patent 8,217,612
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`window or panel is
`stopped prior to
`reaching a
`predetermined position,
`said apparatus
`comprising:
`
`a) a sensor for sensing
`movement of the
`window or panel and
`providing a sensor
`output signal related to a
`position of the window
`or panel;
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`b) a switch for
`controllably actuating
`the motor by providing
`an energization signal;
`and
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`
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`Atty. Docket: 130163.231151
`
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`“[I]f the window should meet an obstruction while it is
`closing, the motor of the window winder will stall, and
`the resulting increase in the motor current is sensed,
`and, as soon as the motor current reaches a certain
`value, the input means is restored to its normal state, so
`that the motor is de-energised.” Id. 1:111-18.
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`See also Ex. 1003 at ¶ 91.
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`“[S]ome kind of feedback of the position of the window
`is necessary, in order to establish when the window has
`reached the required position. Various methods can be
`used to achieve this feedback. For example, a photo-
`sensitive element could be arranged to sense a series of
`marks provided on the glass of the window, and to feed
`signals to a counter to increment or decrement the
`counter as the window is closed or opened.” Ex. 1005 at
`1:96-105; see also 2:13-22.
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`“[T]he microprocessor receives signals from a photo-
`electric sensor 156, which co-operates with marks on
`the glass of the window to give a digital measure of the
`position of the window.” Id. at 5:121-28.
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`See also Ex. 1003 at ¶ 92.
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`“Where the input means has only two set [of] states, it is
`necessary to ensure that the window can be set to a
`position intermediate between its fully open and fully
`closed positions. One method of achieving this is to
`include in the circuit manual control means which are
`arranged to energise the motor of the window winder in
`a selected direction for only as long as the manual
`control means are manually operated to an off-normal
`state. Such a manual control means might be similar in
`design to the control switches used with previously
`proposed window winders, which are usually rocker
`switches spring-loaded to a central ‘off’ position.” Ex.
`1005 at 1:43-55.
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`10
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`Case IPR2014-00648
`U.S. Patent 8,217,612
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`Atty. Docket: 130163.231151
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`“[C]ircuit 30 is controlled by two push-buttons 32 and
`34; by pressing the push-button 32, for example, the
`circuit 30 is latched into a state in which it provides a
`signal to the output line 26, to energise the motor in the
`closing direction. … A similar sequence of operations
`will occur, but with the motor 10 energised in the
`opening direction, if the push-button 34 is operated.” Id.
`at 3:116-30. “[I]t will be appreciated that these 70 items
`could all be combined, so that the contacts 22, 24, 32
`and 34 are all controlled by a single member such as a
`rocker.” Id. at 4:67-72.
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`“The motor 10 is energised from the battery of the
`vehicle (shown at 12) through a transistor driver circuit
`14, which is controlled by logic signals on two lines 16
`and 18. A logic ‘1’ signal on the line 16 causes the
`motor 10 to close the window, while a logic ‘1’ signal
`on the line 18 causes the motor to open the window.” Id.
`at 3:94-100.
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`See also Ex. 1003 at ¶¶ 93-94.
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`c) a controller having an
`interface coupled to the
`sensor and the switch
`for controllably
`energizing the motor;
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`“Figures 4 and 5 illustrate the hardware and operation of
`a second form of control circuit. … [I]nstead of the
`logic circuit 30, a microprocessor 150 is used to control
`the operation of the motor 10. … In addition to signals
`from the push-buttons 32 and 34, the microprocessor
`receives signals from a photo-electric sensor 156 ….”
`Ex. 1005 at 5:110-28; 3:94-100.
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`See also Ex. 1003 at ¶¶ 95-98.
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`said controller
`programmed with
`multiple position limits
`that define an
`acceptable travel range
`and further programmed
`for controlling
`movement of the
`window or panel when
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`“Referring first to Figure 4, the circuit includes a motor
`10, a battery 12, a motor driver circuit 14, a series
`current sensing resistor 36, and pushbuttons 32 and 34,
`which all correspond exactly to the same parts of Figure
`1. However, instead of the logic circuit 30, a
`microprocessor 150 is used to control the operation of
`motor 10. The microprocessor is associated with a read-
`only memory 152, and a random-access data memory
`154.” Ex. 1005 at 5:112-21. Bernard disclosed that the
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`power is applied to the
`controller by:
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`Atty. Docket: 130163.231151
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`microprocessor 150, which was substituted for circuit
`30, was programmed for controlling the movement of
`the window when power is applied by the battery 12 of
`the vehicle by producing signals on lines 16 and 18. See
`id. at 3:94-121.
`
`Bernard also disclosed that the controller was
`programmed with multiple position limits, as detailed
`below.
`
`“Where the window winder control circuit maintains a
`continuous record of the position of the window; there is
`no difficulty in determining when the window
`approaches within, say, 2 cm of its fully closed position.
`In the simplified photosensor arrangement, in which the
`photosensor co-operates with isolated marks indicating
`the fully open and fully closed positions of the window,
`a third mark could be provided to signal that the
`window is within a certain distance of its fully closed
`position.” Id. at 3:6-16.
`
`“Figure 5 illustrates the operation of the microprocessor
`in flow chart form; obviously, a corresponding program
`would be permanently stored in read-only memory 152.
`The program makes use of a number of memory
`locations in the random-access memory 154….
`The following memory locations store other parameters:
`W—stores a number indicating the present position of
`the window, as sensed by the photo-sensor 156. When
`the window is fully closed, W stores a value of zero, and
`the value increases from zero as the window opens. …
`L—stores a number corresponding to the fully-open
`position of the window.
`G—stores a number corresponding to the position at
`which the window is, say, 2 cm from its fully closed
`position. …
`Referring now to Figure 5 in more detail, … [a]t Boxes
`4, 5 and 6 the constants IMAX, G and L are set; these
`constants are not altered during program execution.” Id.
`at 5:129-6:90.
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`Bernard also disclosed that the controller is programmed
`to detect when the window or panel reached a fully
`closed position limit, i.e., where the position counter W
`is zero. See id. at 6:112-17.
`
`See also Ex. 1003 at ¶¶ 95-98.
`
`i) monitoring the sensor
`output signal from the
`sensor related to the
`position of the window
`or panel;
`
`“[A] photo-sensitive element could be arranged to sense
`a series of marks provided on the glass of the window,
`and to feed signals to a counter to increment or
`decrement the counter as the window is opened or
`closed.” Ex. 1005 at 1:101-05.
`
`ii) identifying the
`position of the window
`or panel based on the
`sensor output signal
`from the sensor; and
`
`“[T]he microprocessor receives signals from a photo-
`electric sensor 156, which co-operates with marks on
`the glass of the window to give a digital measure of the
`position of the window ….” Id. at 5:110-28.
`
`See also Ex. 1003 at ¶¶ 99-100.
`
`“[T]he photosensor and counter arrangement described
`above … maintains a continuous record of the position
`of the window.” Ex. 1005 at 2:16-19.
`
`“W—stores a number indicating the present position of
`the window, as sensed by the photo-sensor 156. When
`the window is fully closed, W stores a value of zero, and
`the value increases from zero as the window opens.” Id.
`at 6:57-63.
`
`“At Boxes 2 and 3, the position of the window is sensed,
`and stored in W to provide an initial value for W. …
`Program control is then passed to Boxes 12, 13 and 14,
`where the existing value of W is transferred to W’, and
`a new value of W resulting from sensing the position of
`the window is stored.” Id. at 6:85-98.
`
`See also Ex. 1003 at ¶¶ 99-100.
`
`iii) outputting a control
`signal to said switch to
`deactivate said motor in
`
`“The preferred embodiment is so arranged that if the
`window should meet an obstruction while it is closing,
`the motor of the window winder will stall, and the
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`response to a sensing
`said window or panel
`has stopped moving
`prior to reaching a
`position limit.
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`Atty. Docket: 130163.231151
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`resulting increase in the motor current is sensed, and, as
`soon as the motor current reaches a certain value, the
`input means is restored to its normal state, so that the
`motor is de-energised.” Ex. 1005 at 1:111-18.
`
`The following describes specific implementation
`disclosed in Bernard:
`
`“S—is set to ‘1’ when it is necessary to inhibit the
`action of the push-buttons 32 and 34, for example
`because both push-buttons have been operated
`simultaneously, or because the window strikes an
`obstruction, or reaches the end of its travel.” Id. at 6:23-
`28.
`
`“I—is the measured value of the motor current;
`however, this location is not updated during the last 2
`cm of the closing movement of the window.
`IF—is used to store the value of motor current measured
`during the last 2 cm of the closing movement.
`IMAX—is the absolute maximum permitted value of the
`motor current.
`IFMAX—is a value, less than IMAX, to which the motor
`current is limited during the last 2 cm of the closing
`movement.” Id. at 6:71-83.
`
`“[T]he value of I is tested against the absolute limiting
`value IMAX at Box 53; if IMAX is exceeded, program
`control passes to Box 24, so that the inhibiting flag S is
`set and the motor is de-energised, as described above.
`… When the window reaches a position within 2 cm of
`its fully closed position, control is diverted at Box 49 to
`Box 54, where the motor current is again measured;
`however, this time the measured value is stored as IF, at
`Box 55. IF is compared with IFMAX at Box 56; as with the
`test at Box 53, control then passes to either Box 20 or
`Box 24, depending on whether or not IF is less than
`IFMAX. For example, if a finger should be trapped by the
`closing window, the motor 10 [w]ill stall, and the motor
`current will therefore rise, but as soon as it reaches
`IFMAX, the motor will be de-energised, so that the closing
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`force on the trapped finger will be fairly limited.” Id. at
`7:89-110.
`
`“At Box 48, the index W of window position is tested; if
`the window has reached its fully closed position, W is
`zero, and control passes from Box 48 to Box 24, where
`the inhibiting flag S is set to 1, as described above.
`Also, at Boxes 25 to 28, the flags B, E and N are
`cleared, and the motor 1 0 is de-energised.” Id. at 7:49-
`55.
`
`See also Ex. 1003 at ¶ 101 (“Bernard’s algorithm would
`continue to perform the detection until the desired
`position was reached, such as fully opened or fully
`closed.”)
`
`“The microprocessor is associated with a read-only
`program memory 152, and a random-access data
`memory 154.” Ex. 1005 at 5:110-128.
`
`Bernard disclosed that microprocessor executes a
`control program that is stored in read-only program
`memory and a random-access memory for storing
`window position values, as described below.
`
`“Figure 5 illustrates the operation of the microprocessor
`in flow chart form; obviously, a corresponding program
`would be permanently stored in the read-only memory
`152. The program makes use of a number of memory
`locations in the random-access memory 154; … certain
`of the memory locations are used to record data
`parameters such as the position of the window ….” Id.
`at 5:129-6:14. See above in element (c) (describing the
`multiple position limits stored in memory).
`
`See also Ex. 1003 at ¶¶ 102-03.
`
`
`7. The apparatus of
`claim 6 wherein the
`controller comprises a
`programmable
`controller including a
`processing unit for
`executing a control
`program and including a
`memory for storing
`multiple window or
`panel position values
`corresponding to a
`signal received from the
`sensor.
`
`
`8. The apparatus of
`claim 6 additionally
`
`Bernard described position limits programmed for use
`by the microprocessor to determine whether the window
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`comprising one or more
`position limits
`programmed for use by
`the controller to
`determine window or
`panel position for use in
`identifying whether the
`window or panel is
`closed or open.
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`Atty. Docket: 130163.231151
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`is open or closed. For instance, it described: “In the
`simplified photosensor arrangement, in which the
`photosensor co-operates with isolated marks indicating
`the fully open and fully closed positions of the window,
`a third mark could be provided to signal that the
`window is within a certain distance of its fully closed
`position.” Ex. 1005 at 3:6-16.
`
`“W—stores a number indicating the present position of
`the window, as sensed by the photo-sensor 156. When
`the window is fully closed, W stores a value of zero, and
`the value increases from zero as the window opens.” Id.
`at 6:57-63.
`
`“L—stores a number corresponding to the fully open
`position of the window.” Id. at 6:65-66.
`
`“The tests carried out at Boxes 63 and 68 both compare
`the window position with the predetermined constant L;
`equality will occur when the window is fully open.” Id.
`at 8:28-32.
`
`“At Box 48, the index W of window position is tested; if
`the window has reached its fully closed posit[i]on, W is
`zero, and control passes from Box 48 to Box 24, where
`the inhibiting flag S is set to 1, as described above.
`Also, at Boxes 25 to 28, the flags B, E and N are
`cleared, and the motor 10 is de-energised.” Id. at 7:49-
`55.
`
`See also Ex. 1003 at ¶ 104.
`
`B.
`
`Itoh in View of Kinzl Renders Claims 1-2 and 5-8 Obvious Under
`35 U.S.C. § 103(a)
`
`Itoh described an automatic opening and closing device for a window that
`
`could prevent the accident of squeezing an obstacle. (Ex. 1006 at 2:32-39.) Itoh
`
`disclosed a window position-detecting means to detect the position of the window
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`relative to its closed position, and a speed operation means to calculate the
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`Atty. Docket: 130163.231151
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`rotational speed of the motor. (Id. at 3:28-60.) Itoh’s apparatus stopped the motor
`
`if the output of the speed change operation exceeded a predetermined set point and
`
`the window was not at the closed position. (Id.) Itoh disclosed several
`
`embodiments, and Embodiment 3 is discussed in detail in the chart below. (See
`
`Ex. 1003 at ¶¶ 62-76.) It would have been obvious to either reverse or deactivate a
`
`window in response to an obstruction, and thus to modify Embodiment 3 to
`
`deactivate the motor, as discussed below.
`
`Kinzl disclosed a method and apparatus for operating electric windows that
`
`eliminated the danger of body parts getting caught in the window. (Ex. 1007,
`
`Abstract.) Like Itoh, Kinzl also disclosed measuring the speed of the drive motor
`
`and determining the position of the window. (Id.) Kinzl further disclosed
`
`measuring the speed of the window directly by putting a screen into the window
`
`pane and using optical-electronic sensors. (Id. at 2:17-19.) The position was
`
`determined by a microcomputer through use of a position counter. (Id. at 2:64-
`
`3:3.) (See also Ex. 1003 at ¶¶ 65-66.) Itoh’s “CPU 34 detects at all times whether
`
`or not an obstacle 48 is caught between the window frame 24 and the window 26
`
`in accordance wit