Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`
` Paper 14
`
`
` Entered: October 17, 2014
`
`
`
`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 B2
`____________
`
`
`
`
`Before GLENN J. PERRY, HYUN J. JUNG, and GEORGE R. HOSKINS,
`Administrative Patent Judges.
`
`
`PERRY, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
` Paper 14
`
`
` Entered: October 17, 2014
`
`
`
`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 B2
`____________
`
`
`
`
`Before GLENN J. PERRY, HYUN J. JUNG, and GEORGE R. HOSKINS,
`Administrative Patent Judges.
`
`
`PERRY, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`IPR2014-00648
`Patent 8,217,612
`
`
`I. INTRODUCTION
`
`Petitioner, Webasto Roof Systems, Inc., filed a Petition (Paper 4,
`
`“Pet.”)1 requesting inter partes review of claims 1, 2, and 5–8, less than all
`
`of the claims, of U.S. Patent No. 8,217,612 (Ex. 1001, “the ’612 patent”)
`
`pursuant to 35 U.S.C. §§ 311–319. The Petition is supported by a
`
`Declaration of Hamid A. Toliyat, Ph.D. (Ex. 1003) which includes an
`
`“Appendix A” (Ex. 1004). Patent Owner, UUSI, LLC, submitted a
`
`Preliminary Response. Paper 9 (“Prelim. Resp.”). We have jurisdiction
`
`under 35 U.S.C. § 314.
`
`Under 35 U.S.C. § 314(a), an inter partes review may be instituted
`
`only if “the information presented in the petition filed under section 311 and
`
`any response filed under section 313 shows that there is a reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 of the
`
`claims challenged in the petition.” Petitioner contends the challenged claims
`
`are unpatentable under 35 U.S.C. §§ 102 and 103. See Pet. 8, 16, 31, and 46.
`
`We determine that there is a reasonable likelihood Petitioner will
`
`prevail in establishing the unpatentability of claims 1, 2, and 5–8 and
`
`institute inter partes review as to those claims. Our factual findings and
`
`conclusions at this stage of the proceeding are based on the evidentiary
`
`record developed thus far (prior to Patent Owner’s Response). This is not a
`
`final decision as to patentability of claims for which inter partes review is
`
`instituted. Our final decision will be based on the record as fully developed
`
`during trial.
`
`
`1 Throughout this decision all citations to “Petition” or “Pet.” refer to the
`Corrected Petition for Inter Partes Review filed on April 30, 2014 (Paper 4).
`
`
`
`2
`
`
`
`IPR2014-00648
`Patent 8,217,612
`
`
` The ’612 Patent
`
`The ’612 patent describes protecting against pinching objects in the
`
`travel path of a vehicle power-driven movable panel, such as a window or
`
`sun roof. Sensor signals are analyzed to determine panel movement directly
`
`or indirectly and determine whether a panel collides with an object in its
`
`travel path. See Ex. 1001, [57] (Abstract), l:56 – 2:20.
`
`Figure 1 of the ’612 patent is shown below:
`
`
`
`
`
`3
`
`
`
`IPR2014-00648
`Patent 8,217,612
`
`Figure 1 is a schematic diagram of an exemplary actuator safety feedback
`
`control system 1. Ex. 1001, 2:24–25, 2:63–65. Controller 2 monitors and
`
`controls movement of a motor driven panel. See id. at 2:65 – 3:5. Forward
`
`and reverse motor drives 7a and 7b drive the motor (not shown in Figure 1)
`
`in forward and reverse directions, respectively. See id. at 3:36 – 41.
`
`Controller 2 can sense obstacles in the panel’s path in various ways based on
`
`sensor signals from, e.g., a paired infrared emitter and detector disposed
`
`along the panel’s path (see id. at 3:60 – 4:64), a motor current monitor (see
`
`id. at 4:9 – 11, 7:20 – 8:3, 8:33 – 10:5), and other monitors (see id. at 11:14
`
`– 20).
`
`Of the challenged claims, claims 1 and 6 are independent and
`
`illustrative of the claimed subject matter:
`
`1. 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 if an
`obstacle is encountered by the window or panel, said apparatus
`comprising:
`
`a) a sensor for sensing movement of the window or panel and
`providing a sensor output signal related to a speed of movement
`of the window or panel;
`
`b) a switch for controllably actuating the motor by providing an
`energization signal;
`
`c) one or more switches for use by the controller to determine
`window or panel position; and
`
`d) a controller having an interface coupled to the sensor and the
`switch for controllably energizing the motor; said controller
`sensing a collision with an obstruction when power is applied to
`the controller by:
`
`i) monitoring movement of the window or panel by monitoring
`a signal from the sensor related to the movement of the window
`or panel;
`
`
`
`4
`
`
`
`IPR2014-00648
`Patent 8,217,612
`
`
`ii) 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;
`
`iii) identifying a collision of the window or panel with an
`obstacle due to a change in the signal from the sensor that is
`related to a change in movement of the window or panel by
`comparing a value based on a most recent signal from the
`sensor with the obstacle detection threshold; and
`
`iv) outputting a control signal to said switch to deactivate said
`motor in response to a sensing of a collision between an
`obstacle and said window or panel.
`
`
`
`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 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;
`
`b) a switch for controllably actuating the motor by providing an
`energization signal; and
`
`c) a controller having an interface coupled to the sensor and the
`switch for controllably energizing the motor; 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 power is applied to the
`controller by:
`
`i) monitoring the sensor output signal from the sensor related to
`the position of the window or panel;
`
`ii) identifying the position of the window or panel based on the
`sensor output signal from the sensor; and
`
`
`
`5
`
`
`
`IPR2014-00648
`Patent 8,217,612
`
`
`iii) outputting a control signal to said switch to deactivate said
`motor in response to a sensing said window or panel has
`stopped moving prior to reaching a position limit.
`
` Asserted Grounds of Unpatentability
`
`
`
`Petitioner contends that claims 1, 2, and 5 – 8 of the ’612 patent are
`
`unpatentable under 35 U.S.C. §§ 102 and 103 as summarized below:
`
`
`
`Reference[s]
`Bernard2
`Itoh3 and Kinzl4
`Lamm5, Itoh, and Bernard
`Duhame6 and Kinzl
`
`Basis
`§ 102(b)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`
`Challenged Claims
`6–8
`1, 2, and 5–8
`1, 2, and 5–8
`1, 2, and 5–8
`
`Related Proceedings
`
`The parties state that the ’612 patent is asserted in the following
`
`district court proceedings:
`
`1. UUSI, LLC v. Robert Bosch LLC, No. 2:13-cv-10444 (E.D. Mich.)
`
`(“UUSI v. BNA”), filed February 4, 2013. See Pet. 1 and Paper 6, 2.
`
`2. UUSI, LLC v. Webasto Roof Sys., Inc., No. 2:13-cv-11704 (E.D.
`
`Mich.) (“UUSI v. Webasto”), filed April 15, 2013. See Pet. 1, Paper 6, 2.
`
`The ’612 patent belongs to a family of patents involved in multiple
`
`inter partes reviews including IPR2014-00416, IPR2014-00417, IPR2014-
`
`00648 (this proceeding), IPR2014-00649, and IPR2014-00650. The petition
`
`in IPR2014-00416 (“the ’416 proceeding”), like the present Petition,
`
`2 U.K. Published Patent Application GB 2 026 723 A, published Feb. 6,
`1980 (Ex. 1005, “Bernard”).
`3
` U.S. Patent No. 4,870,333, issued Sept. 26, 1989 (Ex. 1006, “Itoh”).
`4 U.S. Patent No. 4,468,596, issued Aug. 28, 1984 (Ex. 1007, “Kinzl”).
`5 German Published Patent Application DE 40 00 730 A1, published Aug. 1,
`1991 (Translation Ex. 1008, “Lamm”).
`6 U.S. Patent No. 5,218,282, issued June 8, 1993 (Ex. 1009, “Duhame”).
`
`
`
`6
`
`
`
`IPR2014-00648
`Patent 8,217,612
`
`challenges the ’612 Patent. We instituted trial in the ’416 proceeding on
`
`August 1, 2014. See Brose North America, Inc. and Brose Fahrzeugteile
`
`GMBH v. UUSI, LLC, Case IPR2014-00416 (PTAB Aug. 1, 2014) (Paper
`
`12). As discussed further below, some challenges in the ’648 proceeding are
`
`the same as or substantially the same as those in the ’417 proceeding.
`
`II. CLAIM CONSTRUCTION
`
`In determining whether to institute inter partes review, we construe
`
`claim terms as necessary to apply the references. Claim constructions may
`
`change as a result of the record developing during trial.
`
`The ’612 patent has expired. We therefore construe its claims in a
`
`manner similar to that of a district court, as articulated in Phillips v. AWH
`
`Corp., 415 F.3d 1303, 1316, 1327 (Fed. Cir. 2005), albeit without any
`
`presumption of validity. See 35 U.S.C. § 316(e). Claim terms are given
`
`their ordinary and customary meaning, as would be understood by one of
`
`ordinary skill in the art in the context of the entire patent disclosure. In re
`
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). We construe
`
`the terms below in accordance with that standard.
`
`Petitioner proposes a construction for one claim term. Pet. 7 – 8.
`
`Although Patent Owner filed a Preliminary Response (Paper 9), it has
`
`neither challenged Petitioner’s proposed claim construction nor proposed
`
`additional claim constructions. Aside from the claim term discussed below,
`
`no other claim terms require express construction at this stage of the
`
`proceeding.
`
`“a control signal . . . to deactivate said motor”
`
`Claims 1 and 6 require “a control signal . . . to deactivate said
`
`
`
`7
`
`
`
`IPR2014-00648
`Patent 8,217,612
`
`motor.” Petitioner construes the term “deactivate” to mean “turn off”
`
`thereby excluding reversing a motor without turning it off. Pet. 7. Patent
`
`Owner does not comment on this term. See Prelim. Resp.
`
`Petitioner notes that the ’612 patent’s specification explicitly
`
`distinguishes and even disparages immediately reversing (without first
`
`deactivating) the motor in response to detecting an obstacle (Ex. 1001, 3:42
`
`– 55), which may result in “motor plugging,” described as “unnecessary”
`
`and “undesirable” as causing “undesired motor heating,” is “detrimental to
`
`the life and reliability” and because it “can also cause undesirable transients,
`
`trip breakers, and blow fuses in a power supply system.” Pet. 8. According
`
`to Petitioner, at least one of Patent Owner’s earlier patents includes claim
`
`language that is broader with respect to motor control. Pet. 8 (citing
`
`Ex. 1019, Claims). Therefore, according to Petitioner, the choice of the
`
`word “deactivate” in the challenged claims was a conscious decision that
`
`should be given effect. Pet. 8. We agree.
`
`For purposes of this Decision, we construe the claim term
`
`“deactivate” to embrace any of turning off, removing power from, and
`
`stopping the motor. Our construction excludes immediate reversing of the
`
`motor without first turning off or stopping the motor.
`
`III. CLAIM CHALLENGES
`
`In the analysis that follows, we discuss facts as they have been
`
`presented thus far in this proceeding. Any inferences or conclusions drawn
`
`from those facts are neither final nor dispositive of any issue on which we
`
`institute trial.
`
`Grounds based on Bernard (Ex. 1005)
`
`
`
`8
`
`
`
`IPR2014-00648
`Patent 8,217,612
`
`
`Petitioner contends that claims 6 – 8 are anticipated by Bernard (Pet.
`
`8–16). Bernard describes control circuits for electric window winders for
`
`operating moving windows in vehicles. Ex. 1005, p. 16,7 ll. 4 – 6.
`
`Bernard’s Figure 4 is reproduced below.
`
`
`
`Figure 4 is a block diagram of a circuit for controlling an electric
`
`window winder. Id. at p. 18, ll. 75 – 77. Bernard provides protection
`
`against injury by sensing an increase in motor current resulting from a
`
`window meeting an obstruction. It deenergizes window winder motor 10 if
`
`microprocessor 150 determines that a threshold value of motor current is
`
`exceeded. Id. p. 16, ll. 111 – 118; p. 20, ll. 110 – 118; p. 22, ll. 97 – 110.
`
`
`7 Page numbers refer to the page number of the exhibit.
`
`
`
`9
`
`
`
`IPR2014-00648
`Patent 8,217,612
`
`
`Patent Owner does not comment on Bernard in the Preliminary
`
`Response. On the current record, we note that Bernard makes the
`
`obstruction detection decision based on sensed motor current, as does the
`
`’612 patent at issue.
`
`In light of the analysis presented in the Petition with respect to each of
`
`the challenged claims under this ground, we are persuaded that Petitioner
`
`has established a reasonable likelihood of prevailing on the assertion that
`
`Bernard anticipates claims 6 – 8 of the ’612 patent. See Pet. 8 – 16.
`
`Grounds based on Itoh (Ex. 1006) and Kinzl (Ex. 1007)
`
`Petitioner contends that claims 1–2 and 5–8 are rendered obvious by
`
`Itoh and Kinzl. Pet.16 – 31. This ground relies on the same combination of
`
`references to challenge the same claims as a ground already under
`
`consideration in the IPR2014-00416 inter partes review, petitioned by Brose
`
`North America. Petitioner Webasto relies on a different expert declarant
`
`than relied upon in the ’416 inter partes review. See Ex. 1003. Having
`
`reviewed Petitioner’s arguments and evidence thus far in each of the two
`
`proceedings, we conclude that this ground in the instant inter partes review
`
`presents the same or substantially the same arguments as already presented
`
`in the ’416 inter partes review. We exercise our discretion under 35 U.S.C.
`
`§ 325(d) and decline to institute on this ground, which is already under
`
`consideration in the earlier proceeding.
`
`Grounds based on Lamm (Ex. 1008), Itoh, and Bernard
`
`Petitioner contends that claims 1 – 2 and 5 – 8 are rendered obvious by
`
`Lamm, Itoh, and Bernard. Pet. 31 – 46. Lamm “relates to a method and
`
`device for operating power-actuated components which pose a clamping
`
`
`
`10
`
`
`
`IPR2014-00648
`Patent 8,217,612
`
`hazard to objects or body parts of people.” Ex. 1008, p. 2,8 col. 1. Lamm’s
`
`Figure 1 is reproduced below.
`
`Lamm Figure 1
`Figure 1 is a block diagram of a drive of a power-actuated component.
`
`
`
`Id. at p. 3, col. 3. Electric motor 10 is controlled by signal processing device
`
`11 via motor driver circuit 12. Id. Sensor 13 detects the rotary speed of
`
`motor 10 and provides this speed to signal-processing device 11. Id. Device
`
`11 is given commands for controlling motor 10 via operating device 14. Id.
`
`at p. 3, col. 4. Lamm explains a relationship between rotary speed of motor
`
`10 as measured by sensor 13 and “rotary torque” M with reference to Figure
`
`2, reproduced below. Id.
`
`
`8 Page numbers refer to the page number of the exhibit.
`
`
`
`11
`
`
`
`IPR2014-00648
`Patent 8,217,612
`
`
`Lamm Figure 2
`
`
`
`Figure 2 shows a functional correlation between the rotary speed n
`
`and the rotary torque M of a direct current motor. Id. Lamm explains that,
`
`for various motor voltages, relationships between motor speed n and torque
`
`M are represented by curves 16 in Lamm Figure 2. Id. Thus, the force on
`
`an object being pinched is related to motor speed and voltage measured at
`
`motor 10 by a voltage meter 15 (Lamm Figure 1). Id. At least one
`
`derivative with respect to the path traveled by the moving panel is
`
`determined by signal processing device 11. Id. The derivative is compared
`
`to a pre-specified threshold, which, if exceeded, indicates a pinch condition
`
`that causes motor 10 to be switched off or reversed. Id.
`
`This ground depends upon Itoh which describes storing multiple
`
`window speed or position values. Pet. 33. It also relies upon Bernard which
`
`describes the use of switches for determining window position, and end of
`
`window travel detection. Pet. 35.
`
`Patent Owner argues that Lamm and Itoh cannot be combined because
`
`Lamm expressly requires a separate sensor to infer the position of the
`
`window whereas Itoh emphasizes that it does not want to use such a sensor.
`
`Prelim. Resp. 11. Patent Owner notes that Lamm states that “sensor 13
`
`
`
`12
`
`
`
`IPR2014-00648
`Patent 8,217,612
`
`detects the rotary speed of the motor 10” and that a “Hall effect transmitter
`
`is particularly suitable for the detection of the rotary speed of the drive 10.”
`
`Id. (citing Ex. 1008; p. 3, col. 5, p. 5, col. 7. 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.” Id. at
`
`11 (citing Ex. 1006, 12:32 – 36). 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 11–12 (citing Ex. 1006, 13:58 – 61).
`
`We do not find Patent Owner’s argument to be persuasive.
`
`Obviousness does not require direct substitution. Both Lamm and Itoh are
`
`reasonably pertinent to the particular problem with which the inventor is
`
`involved — preventing pinching. Thus, they both would have commended
`
`themselves to an inventor’s attention in considering the problem addressed
`
`by claims 1 – 2 and 5 – 8 of the ’612 patent. See In re Klein, 647 F.3d 1343,
`
`1348 (Fed. Cir. 2011).
`
`In light of the analysis presented in the Petition with respect to each of
`
`the challenged claims under this ground, we are persuaded that Petitioner
`
`has established a reasonable likelihood of prevailing on the assertion that
`
`Lamm, Itoh, and Bernard render obvious claims 1 – 2 and 5 – 8 of the
`
`’612 patent.
`
`Grounds based on Duhame (Ex. 1009) and Kinzl (Ex. 1007)
`
`Petitioner contends that claims 1 – 2 and 5 – 8 are rendered obvious
`
`by Duhame and Kinzl. Pet. 46 – 60.
`
`
`
`13
`
`
`
`IPR2014-00648
`Patent 8,217,612
`
`
`Duhame describes an automatic door operator including an
`
`obstruction detector for stopping the motor when a threshold related to the
`
`torque of the motor is exceeded. Ex. 1009, Abstract. Duhame Figure 1 is
`
`reproduced below.
`
`Duhame Figure 1
`
`
`
`Figure 1 shows a block diagram of an automatic door opener. Id. at
`
`4:66-67. Based on measurements of speed from its Hall-effect sensors 95,
`
`
`
`14
`
`
`
`IPR2014-00648
`Patent 8,217,612
`
`Duhame’s controller (processor circuit 100 including CPU 110 shown in
`
`Duhame Figure 1) detects “[a]n obstruction . . . whenever th[e] rate of
`
`change of speed indicates a rate of increase in torque greater than a
`
`predetermined amount.” Id. at 3:38 – 41, 24:5 – 29. Memory 125 stores
`
`open and close travel limits of a door being controlled. Id. at 6:59 – 62. A
`
`closing torque limits input circuit 60 (detailed in Duhame, Figure 4) and
`
`travel limits circuit 163, among other inputs, establish limits of protection
`
`afforded to an object pinched by the moving door. Id. at 7:63 – 8:3, 11:52 –
`
`57. Travel circuit 163 includes a counter 510 (Duhame Fig. 6) that keeps
`
`track of door position with respect to a fully opened position. Id. at 12:17 –
`
`23.
`
`Patent Owner argues that because Duhame generally relates to
`
`“residential garage doors” it cannot and does not account for the “varying
`
`conditions” required by claim 1; and that 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 required
`
`by claim 1. Prelim. Resp. 4 – 5. On this record, we are not persuaded by
`
`this line of argument.
`
`On this record, Petitioner has at least made a threshold showing
`
`sufficient to institute inter partes review on this ground. Petitioner argues
`
`that Duhame discloses that current speed calculation and immediate previous
`
`speed calculation are compared and are values based on averages of pulses
`
`from Hall-effect sensors. Pet. 47 (citing Ex. 1009, 10:32 – 40). This
`
`comparison, at least to some degree, adapts to varying conditions in that the
`
`
`
`15
`
`
`
`IPR2014-00648
`Patent 8,217,612
`
`prior average speed calculations will depend upon the existing conditions at
`
`the time speed measurements are taken.
`
`Petitioner argues that Duhame meets the claim 5 limitation: “wherein
`
`the immediate past measurements of said signal are sensed within a forty
`
`millisecond interval prior to the most recent signal from the sensor.” Pet.
`
`56. Petitioner reasons that Duhame meets this claim limitation because a
`
`“50 Hz or 60 Hz motor will complete 50 or 60 revolutions per second, or
`
`every 20 to 16 milliseconds, respectively.” Id.
`
`Patent Owner disagrees and argues that the 60 Hz or 50 Hz power
`
`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. Prelim. Resp. 8.
`
`According to Patent Owner, Petitioner implies that if one revolution
`
`of the motor occurs in 20 milliseconds, then the time interval over which the
`
`immediate past measurements of the signal are sensed would be less than 20
`
`milliseconds. However, 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. Even if Duhame implicitly taught
`
`that one revolution of the motor occurs in 20 milliseconds, Duhame would
`
`still be silent on the length of the time interval over which immediate past
`
`measurements of the signal would be sensed. Id. Therefore, according to
`
`Patent Owner, 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. We
`
`agree. Petitioner has not carried its burden with respect to claim 5.
`
`
`
`16
`
`
`
`IPR2014-00648
`Patent 8,217,612
`
`
`Patent Owner correctly notes that Petitioner does not rely on Kinzl as
`
`disclosing 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. Prelim. Resp. 9.
`
`In light of the analysis presented in the Petition with respect to each of
`
`the challenged claims under this Ground, we are persuaded that Petitioner
`
`has established a reasonable likelihood of prevailing on the assertion that
`
`Duhame and Kinzl render obvious claims 1 – 2 and 6 – 8 of the ’612 patent,
`
`but we are not persuaded that Petitioner has made a sufficient showing as to
`
`claim 5.
`
`IV. CONCLUSION
`
`For the foregoing reasons, we institute trial on the indicated grounds.
`
`The Board has not made a final determination under 35 U.S.C. § 318(a) as to
`
`the patentability of claims or any underlying factual and legal
`
`determinations, and will do so only after full consideration of all of evidence
`
`properly admitted during trial.
`
`V. ORDER
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that the Petition is granted;
`
`
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a) an inter
`
`partes review of the ’612 patent is hereby instituted, commencing on the
`
`entry date of this Decision, and pursuant to 35 U.S.C. § 314(c) and
`
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial;
`
`FURTHER ORDERED that the trial is limited to the grounds
`
`(1) Claims 6 – 8 under 35 U.S.C. § 102(b) as anticipated by Bernard;
`
`17
`
`
`
`
`
`
`
`IPR2014-00648
`Patent 8,217,612
`
`
`(2) Claims 1 – 2 and 5 – 8 under 35 U.S.C. § 103(a) as unpatentable
`
`over Lamm, Itoh, and Bernard;
`
`(3) Claims 1 – 2 and 6 – 8 under 35 U.S.C. § 103(a) as unpatentable
`
`over Duhame and Kinzl; and
`
`
`
`FURTHER ORDERED that no other grounds of unpatentability are
`
`authorized for this inter partes review.
`
`
`
`For PETITIONER:
`
`Charles Sanders
`GOODWIN PROCTER LLP
`csanders@goodwinprocter.com
`
`Timothy Rousseau
`GOODWIN PROCTER LLP
`trousseau@goodwinprocter.com
`
`Phong Dinh
`GOODWIN PROCTER LLP
`pdinh@goodwinprocter.com
`
`
`
`For PATENT OWNER:
`
`Monte L. Falcoff
`HARNESS, DICKEY & PIERCE, P.L.C.
`mlfalcoff@hdp.com
`
`
`Hemant M. Keskar
`HARNESS, DICKEY & PIERCE, P.L.C.
`hkeskar@hdp.com
`
`
`
`
`18
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
