Filed on behalf of UUSI, LLC
`By: Monte L. Falcoff (mlfalcofnghdpcom)
`Hemant M. Keskar (hkeskar@,hdp.com)
`HARNESS, DICKEY & PIERCE, P.L.C.
`
`5445 Corporate Drive, Ste. 200
`Troy, MI 48098
`Telephone: (248) 641-1600
`Facsimile: (248) 641-0270
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`WEBASTO ROOF SYSTEMS, INC.
`Petitioner
`
`V.
`
`UUSI, LLC
`Patent Owner
`
`Case IPR2014-00648
`
`Patent 8,217,612
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`By: Monte L. Falcoff (mlfalcofnghdpcom)
`Hemant M. Keskar (hkeskar@,hdp.com)
`HARNESS, DICKEY & PIERCE, P.L.C.
`
`5445 Corporate Drive, Ste. 200
`Troy, MI 48098
`Telephone: (248) 641-1600
`Facsimile: (248) 641-0270
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`WEBASTO ROOF SYSTEMS, INC.
`Petitioner
`
`V.
`
`UUSI, LLC
`Patent Owner
`
`Case IPR2014-00648
`
`Patent 8,217,612
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`Case IPR2014—00648
`
`Patent 8,217,612
`
`I.
`
`INTRODUCTION ................................................................... 3
`
`II.
`
`PRIMA FAOIE FAILURE ......................................................... 3
`
`A.
`
`GROUND D: CLAIMS 1-2 AND 5—8 ............................... 3
`
`1.
`
`CLAIM 1 .......................................................... 4
`
`a)
`
`b)
`
`c)
`
`d)
`
`CLAIM LIMITATIONS ................................. 4
`
`DEFICIENCIES OF DUHAME ....................... 4
`
`DEFICIENCIES OF KINZL ........................... 5
`
`PRIMA FAOIE FAILURE ............................. 7
`
`2.
`
`CLAIM 5 .......................................................... 7
`
`III.
`
`COMBINATION CANNOT BE OBVIOUS IF ONE REFERENCE
`
`EXPRESSLY DEFEATS ANOTHER ................................................... 9
`
`A.
`
`GROUND B: CLAIMS 1-2 AND 5-8 ................................ 9
`
`1.
`
`REQUEST TO STAY INSTITUTION OF
`
`GROUND B ...................................................... 9
`
`2.
`
`ITOH AND KINZL CANNOT BE COMBINED ........... 10
`
`B.
`
`GROUND C: CLAIMS 1-2 AND 5-8 ............................. 11
`
`IV.
`
`CONCLUSION ................................................................... 12
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`Page 2 Of 13
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`Case IPR2014—00648
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`Patent 8,217,612
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`Pursuant to 35 U.S.C. § 313 and 37 CPR. § 42.107, Patent Owner UUSI,
`
`LLC (“UUSI”) submits the following Preliminary Response to the Petition for In—
`
`ter Partes Review of US. Patent 8,217,612 (“the ‘612 patent”).
`
`I.
`
`INTRODUCTION
`
`The Corrected Petition (Paper NO. 4, “Petition”) for inter partes review of
`
`the ‘612 patent should be denied at least with respect to the alleged grounds for
`
`unpatentability discussed below because Petitioner does not meet its burden of es—
`
`tablishing obviousness on these grounds. Petitioner’s other grounds and allegations
`
`not discussed below shall also fail, but UUSI will address the deficiencies of these
`
`grounds as may be necessary and appropriate if the inter partes review is institut-
`
`ed. In other words, this Preliminary Response simply refutes the clearest alleged
`
`grounds of unpatentability asserted by Petitioner without requiring a full substan—
`
`tive claim-by-claim analysis; UUSI shall later challenge Petitioner’s other grounds.
`
`ll.
`
`PRIMA FACIE FAILURE
`
`A.
`
`GROUND D: CLAIMS 1-2 AND 5-8
`
`The Petition fails to establish a reasonable likelihood that at least Claims 1,
`
`2, and 5 are Obvious in View OfU.S. Patent No. 5,218,282 (“Duhame”, Ex. 1010)
`
`and US. Patent No. 4,468,596 (“Kinzl”, EX. 1007).
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`Page 3 of 13
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`1.
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`CLA|M1
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`a)
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`CLAIM LIMITATIONS
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`Case IPR2014—00648
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`Patent 8,217,612
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`Claim 1 recites “adjusting an obstacle detection threshold in real time based
`
`on immediate past measurements of the signal sensed by the sensor to adapt to
`
`varying conditions encountered during operation of the window or panel”. EX.
`
`1001 at 27:31—34.
`
`b)
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`DEFICIENC/ES OF DUHAME
`
`Significantly, Claim 1 is directed to “controlling activation of a motor cou-
`
`pled to a motor vehicle Window or panel.” EX. 1001 at 27:12—13 (emphasis add-
`
`ed). In contrast, Duhame relates to “residential garage doors.” EX. 1010 at 1:8
`
`(emphasis added). Duhame therefore simply cannot and in fact does not account
`
`for the “varying conditions” recited in Claim 1, which are encountered during op-
`
`eration of a motor vehicle window when the motor vehicle operates in real—world
`
`conditions. For example, as the ‘612 patent emphasizes, “[o]bstacle detection
`
`thresholds are actively modified with increasing vehicle air speed and with increas—
`
`ing Wind buffeting. ...” EX. 1001 at 13: 28—31. Duhame’s garage door simply does
`
`not encounter such conditions. As another example, the claimed thresholds can be
`
`adjusted to account for variations in motor speed due to voltage variations caused
`
`by operation of other DC-driven components of the vehicle (e.g., turning on the
`
`vehicle’s headlight). The claimed threshold adjustment is desirable because in the
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`Page 4 of 13
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`Case IPR2014-00648
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`Patent 8,217,612
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`past, wind buffeting and/or voltage variations have been known to adversely affect
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`obstacle detection in window lift anti-trap systems thereby making them less accu—
`
`rate. For example, the ‘612 patent points out that “[o]peration under varying power
`
`supply voltage results in actuator speed variations that result in increased obstacle
`
`detection thresholds.” EX. 1001 at 1:53-55. Further, wind—buffeting “cyclically al-
`
`ters motor loading” and can cause “false obstacle detection”, which is undesirable,
`
`and which the ‘612 patent seeks to prevent as recited in Claim 1. Duhame’s garage
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`door application simply does not experience such variations since the garage door
`
`is operated by an AC motor powered by a power grid. Since Duhame’s garage door
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`does not experience the varying conditions encountered during operation of the
`
`motor vehicle Window, Duhame does not have to and in fact does not adapt obsta-
`
`cle detection thresholds to varying conditions encountered during the operation of
`
`a motor vehicle window or panel.
`
`Accordingly, Duhame does not disclose “adjusting an obstacle detection
`
`threshold in real time based on immediate past measurements of the signal sensed
`
`by the sensor to adapt to varying conditions encountered during operation of the
`
`window or panel” as recited in Claim 1.
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`c)
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`DEFICIENC/ES OF KINZL
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`Petitioner does not rely on Kinzl to disclose the above limitation of Claim 1.
`
`Petition, Pages 52-53. Nonetheless, for completeness it is noted that Kinzl also
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`Page 5 of 13
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`Case IPR2014—00648
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`Patent 8,217,612
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`does not disclose “adjusting an obstacle detection threshold in real time based on
`
`immediate past measurements of the signal sensed by the sensor to adapt to vary-
`
`ing conditions encountered during operation of the window or panel,” as recited in
`
`Claim 1. Specifically, Kinzl discloses “sensor means for detecting .
`
`.
`
`. signals rep-
`
`resenting the position of [an] electrically operable [unit] at fixed positions during
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`the opening and closing cycles thereof,” “[turning] off [an] electric motor means if
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`the time interval between any two consecutive signals exceeds a preestablished
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`standard value and said electrically operable unit is in the first or third zone”, and
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`“[reversing] the direction of travel of said electrically operable [unit] when the
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`time interval between any two consecutive signals during the closing cycle exceeds
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`a preestablished standard value and the unit is in the second zone.” Ex. 1007
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`at 6:31-34, 49-53, and 55—59 (emphasis added).
`
`Indeed, a preestablished standard value is fixed by definition. Further, Kinzl
`
`in fact does not disclose that the “preestablished standard value” is adjusted in real
`
`time based on immediate past measurements of the signal sensed by the sensor to
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`adapt to varying conditions encountered during operation of the window or panel”
`
`as recited in Claim 1. Kinzl also establishes a limit value based on a first measured
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`value in Zone 2 “with which each subsequent change is compared.” Ex. 1007
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`at 17:29. That limit value then remains fixed for the remainder of the Window’s
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`operation and is used for comparison against each subsequent value. Therefore,
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`Page 6 of 13
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`Case IPR2014—00648
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`Patent 8,217,612
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`because the limit value remains fixed for the entire remaining travel of the win—
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`dow, Kinzl does not actually adjust the limit value in real time based on immediate
`
`past measurements to adapt to varying conditions encountered during operation of
`
`the window or panel, as Claim 1 requires. Kinzl therefore does not cure the defi-
`
`ciencies of Duhame.
`
`d)
`
`PRIMA FACIE FAILURE
`
`The cited references do not disclose all of the requisite claim limitations
`
`thereby failing to set forth a primafacie case of obviousness. Accordingly, for at
`
`least the above reasons, neither Duhame nor Kinzl alone or in combination disclos—
`
`es all of the limitations of Independent Claim 1, or Claims 2 and 5 dependent
`
`thereon, such that the Petition fails to establish a reasonable likelihood that these
`
`claims are obvious in View of Duhame and Kinzl.
`
`2.
`
`CLAIM 5
`
`The Petition fails to establish a reasonable likelihood that Claim 5 is obvious
`
`over Duhame and Kinzl for the following additional reasons. Claim 5, which de—
`
`pends from Claim 1, recites “wherein the immediate past measurements of said
`
`signal are sensed within a forty millisecond interval prior to the most recent signal
`
`from the sensor”. EX. 1001 at 28:4—6. This claim limitation is not disclosed in the
`
`cited references.
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`Page 7 of 13
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`Case IPR2014—00648
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`Patent 8,217,612
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`Petitioner argues that the garage—door patent Duhame teaches the limitations
`
`of Claim 5 because Duhame discloses “selection of the number of pulses per rota—
`
`tion enables the same controller to control motors operating on either 60 Hz or 50
`
`Hz power” and because, according to the Petitioner, a “50 Hz or 60Hz motor will
`
`complete 50 or 60 revolutions per second, or every 20 to 16 milliseconds, respec—
`
`tively.” Petition, Page 56. The 60 Hz or 50 HZ power, however, merely indicates
`
`that the frequency of the AC line voltage that powers the motor is 50 or 60 cycles
`
`per second and does not necessarily indicate or imply that the speed of the motor is
`
`50 or 60 revolutions per second as the Petitioner argues.
`
`Further, the Petition seems to imply that if one revolution of the motor oc—
`
`curs in 20 milliseconds, then the time interval over which the immediate past
`
`measurements of the signal are sensed would be less than 20 milliseconds. Howev—
`
`er, the length of time for each revolution of the motor does not determine the time
`
`interval over which the immediate past measurements of the signal are sensed. In
`
`other words, even if Duhame implicitly taught that one revolution of the motor oc—
`
`curs in 20 milliseconds, Duhame would still be silent on the length of the time in—
`
`terval over which immediate past measurements of the signal would be sensed.
`
`Therefore, Duhame does not disclose that “the immediate past measurements of
`
`said signal are sensed within a forty millisecond interval prior to the most recent
`
`signal from the sensor” as recited in Claim 5.
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`Page 8 of 13
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`Case IPR2014—00648
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`Patent 8,217,612
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`Petitioner does not rely on Kinzl and Kinzl in fact does not disclose that “the
`
`immediate past measurements of said signal are sensed Within a forty millisecond
`
`interval prior to the most recent signal from the sensor” as recited in Claim 5. As
`
`such Petitioner has again failed to set forth the requisite primafacz'e elements
`
`needed for properly proving obviousness. Accordingly, for at least the above addi—
`
`tional reasons, Duhame and Kinzl do not render Claim 5 obvious, and the Petition
`
`fails to establish a reasonable likelihood that Claim 5 is obvious in View of Du—
`
`hame and Kinzl.
`
`III.
`
`COMBINATION CANNOT BE OBVIOUS IF ONE REFERENCE
`
`EXPRESSLY DEFEATS ANOTHER
`
`A.
`
`GROUND B: CLAIMS 1-2 AND 5-8
`
`1.
`
`REQUEST To STAY INSTITUTION OF GROUND B
`
`Pursuant to 37 C.F.R § 42.122(a), UUSI respectfully requests the Board to
`
`stay the institution of Ground B in View of Ground 3 in an earlier filed proceeding,
`
`IPR 2014-00416, which also alleged that Claims 1-2 and 5-8 of the ‘612 patent are
`
`obvious under 35 U.S.C. § 103(a) over Itoh in View of the ordinary skill in the art
`
`and Kinzl. Alternatively, UUSI respectfully requests the Board to follow the deci—
`
`sion of Ground 3 in IPR 2014—00416.
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`Page 9 of 13
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`Case IPR2014—00648
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`Patent 8,217,612
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`2.
`
`ITOH AND KINZL CANNOT BE COMBINED
`
`The Petition fails to establish a reasonable likelihood that Claims 1—2 and
`
`5—8 are obvious in View of US. Patent No. 4,870,333 (“Itoh”, Ex. 1006) and US.
`
`Patent No. 4,468,596 (“Kinzl”, Ex. 1007). Kinzl cannot be combined with Itoh to
`
`render Claims 1, 6-9, and 15-16 obvious because Kinzl expressly requires a sensor
`
`to determine window position whereas Itoh expressly emphasizes that no sensor is
`
`desired. Specifically, Kinzl states that “[s]ome of the essential characteristics of
`
`the invention” include “[p]osition recognition which is carried out by the sensor
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`means[.]” Ex. 1007 at 4:59-60, and 521—2 (emphasis added).
`
`In contrast, Itoh states that “the number of rotations of the motor 20 is
`
`counted by the counter 36, whereby the position of the window 26 is detected and
`
`a sensor is never mounted in the part of transmission mechanism including the
`
`motor's own body.” Ex. 1006 at 12:32-36 (emphasis added). Itoh reiterates that “it
`
`is possible to detect the squeezing of obstacles in an early stage and it is possible to
`
`prevent damage or injury of the squeezed obstacle without providing a special
`
`sensor.” Id. at 13:5 8—61 (emphasis added). Accordingly, ordinarily skilled artisans
`
`will not be motivated to combine Kinzl with Itoh because adding Kinzl’s sensor
`
`will defeat the express objectives of Itoh.
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`Page 10 of 13
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`Case IPR2014—00648
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`Patent 8,217,612
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`Therefore, Kinzl cannot be combined with Itoh to render Claims 1-2 and 5—8
`
`Obvious, and the Petition fails to establish a reasonable likelihood that Claims l-2
`
`and 5-8 are obvious over the combination of Itoh and Kinzl.
`
`B.
`
`GROUND C: CLAIMS 1-2 AND 5-8
`
`The Petition fails to establish a reasonable likelihood that Claims 1—2 and 5—
`
`8 are obvious in view of German Published Patent Application No. P 40 00 730.8
`
`corresponding to Patent No. DE 40 00 730 A 1 (“Lamm”, EX. 1008), US. Patent
`
`No. 4,870,333 (“Itoh”, Ex. 1006), and UK. Patent Application Publication No.
`
`GB2 026 723 A (“Bernard”, Ex. 1005) because Lamm and Itoh cannot be com—
`
`bined. Lamm cannot be combined with Itoh to render Claims 1—2 and 5—8 obvious
`
`because Lamm expressly requires a separate sensor to infer the position of the
`
`window whereas Itoh emphasizes that it does not want such. Specifically, Lamm
`
`states that a “sensor 13 detects the rotary speed of the motor 10” and that a “Hall
`
`effect sensor is particularly suitable for the detection of the rotary speed of the
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`drive 10.” EX. 1008; page 3, col. 5; and page 5, col. 7 (emphasis added).
`
`In contrast, Itoh states that “the number of rotations of the motor 20 is
`
`counted by the counter 36, whereby the position of the window 26 is detected and
`
`a sensor is never mounted in the part of transmission mechanism including the
`
`motor's own body”. EX. 1006 at 12:32-36 (emphasis added). Itoh reiterates that “it
`
`is possible to detect the squeezing of obstacles in an early stage and it is possible to
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`Page 11 of 13
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`Case IPR2014—00648
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`Patent 8,217,612
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`prevent damage or injury of the squeezed obstacle Without providing a special
`
`sensor.” Ex. 1006 at 13:58—61 (emphasis added).
`
`Accordingly, ordinarily skilled artisans will not be motivated to combine
`
`Lamm with Itch because adding Lamm’s sensor to Itoh’s system will defeat a sig—
`
`nificant objective of Itoh’s sensor—less system. Therefore, Lamm cannot be com-
`
`bined with Itch to render Claims 1-2 and 5—8 obvious, and the Petition fails to es—
`
`tablish a reasonable likelihood that Claims 1—2 and 5—8 are obvious over the com-
`
`bination of Lamm, Itoh, and Bernard.
`
`IV.
`
`CONCLUSION
`
`For the above reasons, UUSI requests that the Board deny at least in part the
`
`Petition for inter partes review of the ‘6 12 patent.
`
`
`
`MonterlfFalcoff ’
`Reg. No. 37,617
`.,,,/Hemant M. Keskar
`
`Reg. No. 61,776
`Attorneys for Patent Owner UUSI
`
`Page 12 of 13
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`Case IPR2014-00648
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`Patent 8,217,612
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`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6(E)(4)
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`It is hereby certified that today, ‘77 it, 2014, a copy of the foregoing doc—
`
`ument was served Via electronic mail upon the following:
`
`Craig D. Leavell
`craig.leavell@kirkland.com
`Alyse Wu
`alyse.wu@kirkland.com
`KIRKLAND & ELLIS LLP
`
`Attorneys for Petitioner
`
`Respectfully submitted,
`
`Dated:
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`7g Z47 We!”
`
`By:
`
`186824566
`
`
`
`,
`
`Monte L. F alcoff
`
`Reg. No. 37,617
`Hemant M. Keskar
`Reg. No. 61,776
`Attorneys for Patent Owner UUSI
`
`Page 13 of 13
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`j
`}
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