`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In the Inter Partes Review of:
`
`
`U.S. Patent No. 7,579,802
`
`
`Filed: January 27, 2004
`
`Issued: August 25, 2009
`
`Inventor(s): Mario Boisvert, Randall
` Perrin, John Washeleski
`
`Assignee: UUSI, LLC
`
`Title: Collision Monitoring System
`
`Mail Stop Inter Partes Review
`Commissions for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`Trial Number: To Be Assigned
`
`
`
`
`
`
`
`
`
`
`
`Panel: To Be Assigned
`
`
`
`
`DECLARATION OF DR. C. ARTHUR MACCARLEY UNDER 37 C.F.R. §
`1.68 IN SUPPORT OF PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 7,579,802
`
`
`
`
`
`
`
`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In the Inter Partes Review of:
`
`
`U.S. Patent No. 7,579,802
`
`
`Filed: January 27, 2004
`
`Issued: August 25, 2009
`
`Inventor(s): Mario Boisvert, Randall
` Perrin, John Washeleski
`
`Assignee: UUSI, LLC
`
`Title: Collision Monitoring System
`
`Mail Stop Inter Partes Review
`Commissions for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`Trial Number: To Be Assigned
`
`
`
`
`
`
`
`
`
`
`
`Panel: To Be Assigned
`
`
`
`DECLARATION OF DR. C. ARTHUR MACCARLEY UNDER 37 C.F.R. §
`1.68 IN SUPPORT OF PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 7,579,802
`
`
`
`
`
`BNA/Brose Exhibit 1001
`
`UUSI, LLC
`Exhibit 2008
`1/148
`
`

`

`Declaration of Dr. C. Arthur MacCarley Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No.7,579,802
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ........................................................................................... 4
`
`II.
`
`BACKGROUND AND QUALIFICATIONS ................................................. 9
`
`III. UNDERSTANDING OF PATENT LAW .................................................... 11
`
`IV. BACKGROUND ........................................................................................... 14
`
`A.
`
`Background of the Field Relevant to the ’802 Patent ......................... 14
`
`B.
`
`C.
`
`Summary of the ’802 Patent ................................................................ 16
`
`Summary of the Prosecution History .................................................. 25
`
`V.
`
`LEVEL OF ORDINARY SKILL IN THE PERTINENT ART .................... 29
`
`VI. CLAIM CONSTRUCTION .......................................................................... 31
`
`VII. DETAILED INVALIDITY ANALYSIS ...................................................... 37
`
`A.
`
`Background on Prior Art References .................................................. 38
`
`1.
`
`2.
`
`3.
`
`Summary of Itoh ....................................................................... 38
`
`Summary of Kinzl ..................................................................... 45
`
`Summary of Zuckerman ........................................................... 49
`
`B.
`
`The Challenged Claims are Each Invalid as Obvious Over Itoh
`in View of the Ordinary Skill in the Art. ............................................ 50
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`Claim 1 ...................................................................................... 50
`
`Claim 6 ...................................................................................... 58
`
`Claim 7 ...................................................................................... 59
`
`Claim 8 ...................................................................................... 72
`
`Claim 9 ...................................................................................... 72
`
`Claim 14 .................................................................................... 73
`
`i
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`

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`Declaration of Dr. C. Arthur MacCarley Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No.7,579,802
`
`
`C. Under UUSI’s Apparent Constructions, Itoh Anticipates Each
`of the Challenged Claims .................................................................... 85
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Claim 1 ...................................................................................... 86
`
`Claim 6 ...................................................................................... 87
`
`Claim 7 ...................................................................................... 87
`
`Claims 8 and 9 ........................................................................... 88
`
`Claim 14 .................................................................................... 89
`
`D.
`
`Claims 7, 9, and 14 are Anticipated by Kinzl ..................................... 90
`
`1.
`
`2.
`
`3.
`
`Claim 7 ...................................................................................... 90
`
`Claim 9 ...................................................................................... 98
`
`Claim 14 .................................................................................... 99
`
`E.
`
`Claims 7, 9, and 14 are Invalid as Obvious over Kinzl in View
`of the Ordinary Skill in the Art. ........................................................107
`
`1.
`
`2.
`
`3.
`
`Claim 7 ....................................................................................108
`
`Claim 9 ....................................................................................109
`
`Claim 14 ..................................................................................110
`
`F.
`
`Claims 1, 6-9, and 14 are Obvious under 35 U.S.C. § 103(a)
`over Itoh combined with Kinzl in View of the Ordinary Skill in
`the Art. ...............................................................................................111
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`Claim 1 ....................................................................................112
`
`Claim 6 ....................................................................................114
`
`Claim 7 ....................................................................................114
`
`Claim 8 ....................................................................................119
`
`Claim 9 ....................................................................................120
`
`Claim 14 ..................................................................................120
`
`
`
`ii
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`

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`Declaration of Dr. C. Arthur MacCarley Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No.7,579,802
`
`
`7.
`
`Combining Kinzl and Itoh ......................................................125
`
`G.
`
`Claims 7-9 and 14 are Invalid as Obvious Over Itoh in View of
`the Ordinary Skill in the Art and Zuckerman....................................127
`
`1.
`
`2.
`
`3.
`
`4.
`
`Claim 7 ....................................................................................128
`
`Claim 9 ....................................................................................129
`
`Claim 14 ..................................................................................130
`
`Combining Itoh and Zuckerman .............................................131
`
`H.
`
`Claims 7-9 and 14 are Invalid as Obvious Over Itoh in View of
`the Ordinary Skill in the Art, Kinzl and Zuckerman. ........................133
`
`1.
`
`2.
`
`3.
`
`4.
`
`Claim 7 ....................................................................................135
`
`Claim 9 ....................................................................................136
`
`Claim 14 ..................................................................................137
`
`Combining Itoh, Kinzl and Zuckerman ..................................137
`
`VIII. SECONDARY CONSIDERATIONS OF NON-OBVIOUSNESS ............138
`
`IX. CONCLUSION ............................................................................................145
`
`
`
`
`
`
`iii
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`

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`Declaration of Dr. C. Arthur MacCarley Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No.7,579,802
`
`I, C. Arthur MacCarley, do hereby declare as follows:
`
`I.
`
`INTRODUCTION
`
`1.(cid:3)
`
`I have been retained as an expert witness for the above-captioned
`
`Petition for Inter Partes Review (“IPR”) of U.S. Patent No. 7,579,802 (“the ’802
`
`Patent”). I am being compensated for my time in connection with this IPR at my
`
`standard consulting rate of $150.00 per hour. My compensation is not affected by
`
`the outcome of this matter.
`
`2.(cid:3)
`
`I have been asked to provide my opinions regarding whether claims 1,
`
`6-9, and 14 (“the Challenged Claims”) of the ’802 Patent are invalid as anticipated
`
`or because they would have been obvious to a person having ordinary skill in the
`
`art at the time of the alleged invention.
`
`3.(cid:3)
`
`The ’802 Patent issued on August 25, 2009, from U.S. Patent Appl.
`
`No. 10/765,487 (“the ’802 Application”), filed on January 27, 2004. (Ex. 1005,
`
`the ’802 Patent.) I have been asked to assume that the invention date of each of
`
`claims 1, 6-9, and 14 of the ’802 Patent is April 22, 1992, the filing date of the
`
`earliest parent application (US Patent No. 5,334,876 or the ’876 Patent) to which
`
`the ’802 Patent could conceivably claim priority. To the extent the invention date
`
`of any of claims 1, 6-9, and 14 is later than April 22, 1992, my analysis still
`
`applies, and my conclusions regarding invalidity remain the same: if (as I
`
`4
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`
`

`

`Declaration of Dr. C. Arthur MacCarley Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No.7,579,802
`
`conclude) the claims were obvious in April 1992, then they would continue to have
`
`been at any later date.
`
`4.(cid:3)
`
`In preparing this Declaration, I have reviewed the ’802 Patent, the file
`
`histories of the applications that led to the ’802 Patent, numerous prior art
`
`references (including each of the references cited on the face of the ’802 Patent),
`
`technical references from the time of the alleged invention, and infringement
`
`positions set forth by UUSI in an interrogatory response dated September 19, 2013.
`
`A list of the items I reviewed in preparing this declaration follows:
`
`•(cid:3) U.S. Patent No. 7,579,802 (and Appl. No. 10/765,487)
`
`•(cid:3) U.S. Patent No. 7,579,802 File History
`
`•(cid:3) U.S. Patent No. 5,334,876 (and Appl. No. 07/872,190)
`
`•(cid:3) U.S. Patent No. 5,334,876 File History
`
`•(cid:3) U.S. Patent Appl. No. 08/275,107 (abandoned)
`
`•(cid:3) U.S. Patent No. 6,064,165
`
`•(cid:3) U.S. Patent No. 6,404,158
`
`•(cid:3) U.S. Patent No. 7,548,037
`
`•(cid:3) U.S. Patent No. 4,870,333
`
`•(cid:3) U.S. Patent No. 4,468,596
`
`•(cid:3) U.S. Patent No. 5,069,000
`
`•(cid:3) U.S. Patent No. 3,513,374
`
`
`
`5
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`

`

`Declaration of Dr. C. Arthur MacCarley Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No.7,579,802
`
`•(cid:3) U.S. Patent No. 3,651,389
`
`•(cid:3) U.S. Patent No. 2,751,219
`
`•(cid:3) U.S. Patent No. 2,756,990
`
`•(cid:3) U.S. Patent No. 2,887,311
`
`•(cid:3) U.S. Patent No. 3,581,174
`
`•(cid:3) References cited on the face of the ’802 Patent
`
`•(cid:3) Plaintiff UUSI, LLC, d/b/a Nartron’s First Supplemental Responses to
`
`Brose North America, Inc.’s First Set of Interrogatories to UUSI, LLC
`
`(NOS. 1-7), from UUSI, LLC, d/b/a Nartron v. Robert Bosch LLC and Brose
`
`North America, Inc., Civil Action No: 2:13-cv-10444
`
`•(cid:3) 49 CFR Part 571
`
`•(cid:3) U.S. Department of Transportation National Highway Traffic Safety
`
`Administration (NHTSA) Federal Motor Vehicle Safety Standard (FMVSS)
`
`No. 118 and amendments thereto
`
`•(cid:3) Otis Elevator Company, Otis: A Visual Timeline (Feb. 6, 2014),
`
`http://www.otisworldwide.com/d31-timeline.html
`
`•(cid:3) Publications by UUSI, LLC (Nartron) personnel, including Washeleski,
`
`J.M.; Gronski, T.; Cox, E., HMI proximity sensing for vehicle
`
`personalization and enhanced safety, SAE Technical Papers (2011), SAE
`
`2011 World Congress and Exhibition; Washeleski, J.; Newman, T.,
`
`
`
`6
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`Exhibit 2008
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`
`

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`Declaration of Dr. C. Arthur MacCarley Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No.7,579,802
`
`Instrument panel and cockpit designers gain freedom of styling with unique
`
`capacitive touch screens, SAE Technical Papers (2010); Strom, P., Dynamic
`
`vehicle weight reduction and safety enhancement, SAE International Journal
`
`of Passenger Cars - Electronic and Electrical Systems, v. 1, n. 1 at 1202-
`
`1207 (2009); Kirby, E.; Guerrero, R.l, Smart touch® sensing places the
`
`power of the microprocessor at your fingertips, SAE International Journal of
`
`Passenger Cars - Electronic and Electrical Systems, v. 2, n. 1, p 159-162,
`
`2009; Kirby, E., Capacitive sensing in an automotive environment, SAE
`
`Technical Paper, 2008 World Congress and Exhibition; Strom, P.r, Low cost
`
`integrated hot fluid windshield cleaning system enhances driver safety, SAE
`
`Technical Paper, 2008 World Congress and Exhibition; Hansen, D.;
`
`Washeleski, J.; Much improved vision with clearfast (heated fluid washer
`
`system), SAE Technical Papers (2004), SAE Commercial Vehicle
`
`Engineering Congress and Exhibition, COMVEC 2004; Kirby, E.; Newman,
`
`T., Child safety via anti-trap proximity technology, SAE Technical Paper,
`
`2006 SAE World Congress and Exhibition
`
`•(cid:3) Sollmann, M.; Schurr, G.; Duffy-Baumgaertner, D.; Huck, C., Anti Pinch
`
`Protection for Power Operated Features, SAE paper No. 2004-01-1108, SAE
`
`World Congress, Detroit, MI (2004)
`
`
`
`7
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`Declaration of Dr. C. Arthur MacCarley Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No.7,579,802
`
`5.(cid:3)
`
` I understand that claims in an IPR of an expired patent are given an
`
`interpretation akin to how one of ordinary skill in the art would understand the
`
`claims at the time of the invention, in view of the patent specification, the
`
`prosecution history, and knowledge of the relevant art. I understand that the ’802
`
`Patent will expire in November 2014, prior to the conclusion of any IPR initiated
`
`based on the petition I submit this declaration in support of, such that the
`
`Challenged Claims may effectively be treated as expired claims for purposes of
`
`claim construction. If, for some reason, the claims were instead given their
`
`“broadest reasonable construction,” then my conclusions that the Challenged
`
`Claims are invalid would remain the same, as my understanding is that such
`
`constructions could generally be broader, but not narrower, than the construction
`
`that would be adopted under the “person of ordinary skill” construction.
`
`6.(cid:3)
`
`In forming the opinions expressed in this Declaration, I relied upon
`
`my education and experience in the relevant field of the art, and have considered
`
`the viewpoint of a person having ordinary skill in the relevant art, as of April 22,
`
`1992. My opinions are based upon readings of the ’802 Patent, the below U.S.
`
`Patents, matters referenced in this declaration, my knowledge of the state of the art,
`
`and my expertise in the field:
`
`Reference
`
`Date of Issuance/Publication
`
`U.S. Patent No. 4,870,333 to Itoh et
`al. (“Itoh”)
`
`September 26, 1989
`
`
`
`8
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`
`

`

`Declaration of Dr. C. Arthur MacCarley Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No.7,579,802
`
`Reference
`
`Date of Issuance/Publication
`
`U.S. Patent No. 4,468,596 to Kinzl
`et al. (“Kinzl”)
`
`August 28, 1984
`
`U.S. Patent No. 5,069,000 to
`Zuckerman (“Zuckerman”)
`
`December 3, 19911
`
`
`II. QUALIFICATIONS
`
`7.(cid:3)
`
`I am an expert in the field of electrical and computer engineering and
`
`have been an expert in this field since before 1992. That expertise includes
`
`specific expertise in the areas of electro-mechanical control systems, computer-
`
`based control systems, microprocessor-based control systems, and advanced
`
`indirect sensing methods, all with applications in the field of automotive
`
`engineering. In formulating my opinions, I have relied upon my training,
`
`knowledge, and experience in the relevant art. A copy of my curriculum vitae is
`
`provided as Exhibit 1002 to this Declaration and provides a comprehensive
`
`description of my relevant experience, including academic and employment
`
`
`1 Zuckerman was filed in the United States on March 22, 1990. I understand that,
`
`therefore, Zuckerman is still “prior art,” even if the inventors of the ’802 Patent
`
`can establish an invention date earlier than the April 22, 1992 filing date of their
`
`earlier priority application, so long as that established invention date is after
`
`March 22, 1990.
`
`
`
`9
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`Exhibit 2008
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`
`

`

`Declaration of Dr. C. Arthur MacCarley Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No.7,579,802
`
`history, publications, conference participation, issued U.S. patents, and prior
`
`engagements as an expert witness.
`
`8.(cid:3)
`
`I received a Bachelor of Science in Engineering (Energy and Kinetics
`
`specialization) and a Master of Science in Electrical Engineering from the
`
`University of California, Los Angeles, in 1976 and 1978, respectively. I was
`
`employed by Hughes Aircraft Corp between 1976 and 1979. Between 1979 and
`
`1984 I was employed by the University of Denver Research Institute and by
`
`American Bosch Division of United Technologies. I received my Ph.D. in
`
`Electrical Engineering, with a specialty in Computer-based Control Systems in
`
`1987 from Purdue University. While at Purdue, I was the recipient of the David
`
`Ross Fellowship for doctoral study, and focused my research on microprocessor-
`
`based control systems and advanced indirect sensing methods for automotive
`
`applications.
`
`9.(cid:3)
`
`I am currently the Interim Department Head of the BioResource and
`
`Agricultural Engineering Department, a Professor and former Chair of the
`
`Electrical and Computer Engineering Department, former Director of the
`
`Computer Engineering Program and the Director of the Transportation Electronics
`
`Laboratory at the California Polytechnic State University, San Luis Obispo, CA
`
`(Cal Poly). I have been on the faculty of the Cal Poly College of Engineering since
`
`1988, tenured since 1994. My teaching and research specialties include digital
`
`
`
`10
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`
`

`

`Declaration of Dr. C. Arthur MacCarley Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No.7,579,802
`
`control systems, automotive and transportation electronics, advanced sensors, and
`
`alternative automotive fuels.
`
`10.(cid:3)
`
`I am a Senior Member of the Society of Automotive Engineers (SAE),
`
`the Institute of Electrical and Electronic Engineers (IEEE), and Sigma Xi
`
`(Scientific Research Honor Society). I have been a Registered Professional
`
`Engineering in good standing in the State of Colorado continuously since 1981.
`
`III. UNDERSTANDING OF PATENT LAW
`
`11.(cid:3)
`
`I understand that prior art to the ’802 Patent includes printed
`
`publications (including issued patents) that were published (i.e., issued, in the case
`
`of a patent) more than one year before the April 22, 1992 filing date of the earliest
`
`application to which the ’802 Patent claims priority. Itoh and Kinzl are both prior
`
`art for this reason. I understand that Itoh and Kinzl qualify as prior art regardless
`
`of the actual invention date of the claims of the ’802 Patent.
`
`12.(cid:3)
`
`I also understand that a patent that issues from an application that was
`
`filed in the United States before the invention date of a claim of the ’802 Patent is
`
`prior art to that claim of the ’802 Patent. Zuckerman, which was filed March 22,
`
`1990, is prior art as to any claim of the ’802 Patent that was invented after March
`
`22, 1990.
`
`13.(cid:3)
`
`I understand that a claim is invalid if it is anticipated or obvious.
`
`Anticipation of a claim requires that every element of a claim be disclosed
`
`
`
`11
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`Declaration of Dr. C. Arthur MacCarley Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No.7,579,802
`
`expressly or inherently in a single prior art reference, as arranged in the claim.
`
`Obviousness of a claim requires that the claim be obvious from the perspective of a
`
`person having ordinary skill in the relevant art at the time the alleged invention
`
`was made. I understand that a claim may be obvious from a combination of two or
`
`more prior art references. I further understand that a claim may be obvious over a
`
`single prior art reference, in combination with the ordinary skill in the art,
`
`especially if any differences between the prior art and the claimed invention are
`
`merely routine or obvious design choices well within the exercise of the ordinary
`
`skill in the art.
`
`14.(cid:3)
`
`I understand that an obviousness analysis requires an understanding of
`
`the scope and content of the prior art, any differences between the alleged
`
`invention and the prior art, and the level of ordinary skill in evaluating the
`
`pertinent art.
`
`15.(cid:3)
`
`I further understand that certain factors may support or rebut the
`
`obviousness of a claim. I understand that such secondary considerations include,
`
`among other things, commercial success of the patented invention, skepticism of
`
`those having ordinary skill in the art at the time of invention, unexpected results of
`
`the invention, any long-felt but unsolved need in the art that was satisfied by the
`
`alleged invention, the failure of others to make the alleged invention, public praise
`
`of the alleged invention by those having ordinary skill in the art, and copying of
`
`
`
`12
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`Declaration of Dr. C. Arthur MacCarley Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No.7,579,802
`
`the alleged invention by others in the field. I understand that there must be a
`
`nexus—a connection—between any such secondary considerations and the alleged
`
`invention. However, I also understand that contemporaneous and independent
`
`invention by others is a secondary consideration tending to show obviousness.
`
`16.(cid:3)
`
`I further understand that a claim is obvious if it unites old elements
`
`with no change to their respective functions, or alters prior art by mere substitution
`
`of one element for another known in the field and that combination yields
`
`predictable results. While it may be helpful to identify a reason for this
`
`combination, common sense should guide and no rigid requirement of finding a
`
`teaching, suggestion or motivation to combine is required. When a product is
`
`available, design incentives and other market forces can prompt variations of it,
`
`either in the same field or different one. If a person having ordinary skill in the
`
`relevant art can implement a predictable variation, obviousness likely bars its
`
`patentability. For the same reason, if a technique has been used to improve one
`
`device and a person having ordinary skill in the art would recognize that it would
`
`improve similar devices in the same way, using the technique is obvious. I
`
`understand that a claim may be obvious if common sense directs one to combine
`
`multiple prior art references or add missing features to reproduce the alleged
`
`invention stated in the claims.
`
`
`
`13
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`Declaration of Dr. C. Arthur MacCarley Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No.7,579,802
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`IV. BACKGROUND
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`A.
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`Background of the Field Relevant to the ’802 Patent
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`17.(cid:3) The focus of anti-pinch technology is to reduce the risk of personal
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`injury that could result if an appendage (e.g., finger(s) or other body parts) is/are
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`caught by the closure of a power-operated device. For example, such injury could
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`result from the closing of a power window, sunroof or sliding door of a vehicle, the
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`closing of a garage door, or the closing of elevator doors. Anti-pinch technology
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`seeks to reduce the risk of injury by sensing an obstruction or the effect of an
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`obstruction in the path of the moving panel of a device, and altering the motion of
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`the panel accordingly.
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`18.(cid:3) Since 1970 or earlier (ref: US Patents 3,513,374 (Ex. 1035) and
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`3,651,389 (Ex. 1036)), a variety of ways to implement anti-pinch technology have
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`been disclosed and known, including non-contact and proximate-contact methods
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`such as electrical capacitive sensing, temperature change upon contact with skin,
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`direct depression of a pressure bar or optical fiber, or optical beam disruption; as
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`well methods which require that substantial pressure be exerted upon the obstacle
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`to facilitate detection, including numerous mechanisms for monitoring abrupt
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`changes in the armature current, voltage or temperature of the window regulator
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`motor or detection of unexpected changes in the window closure speed. The latter
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`14
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`BNA/Brose Exhibit 1001
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`UUSI, LLC
`Exhibit 2008
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`Declaration of Dr. C. Arthur MacCarley Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No.7,579,802
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`(current, voltage, temperature and speed sensing methods) fall within the definition
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`of monitoring motor parameters as defined in the ’802 Patent.
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`19.(cid:3) While
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`the
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`’802 Patent
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`specification mentions optical and
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`current/speed sensing, and even automatic window opening/closing in response to
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`cabin temperature, the claims are directed to pinch detection based upon a signal
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`from a sensor related to the movement of the window or panel such as speed or
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`current. I focus here on the claimed obstacle detection method—changes in the
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`aforementioned signal. This is a form of contact sensing that requires that the
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`force of contact upon the obstacle be sufficient to significantly increase the motor
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`load current, and/or decrease the window closure speed. If the magnitude of the
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`change of the sensed current or speed signal is great enough, the system determines
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`that an obstacle has been encountered, and accordingly deactivates the motor.
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`20.(cid:3)
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`Systems based upon this approach may be prone to errors, however.
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`For instance, the system may be prone to falsely determining that an obstacle is
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`present due to variations in operation caused by environmental or system
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`conditions such as ice or grit accumulation, mechanical distortion of the movement
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`tracks, extreme temperature conditions, and age-related wear of the system
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`components. In such situations, these conditions may manifest with characteristics
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`similar to the design-anticipated obstructions to the movement of the panel, such
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`that the system erroneously determines that an obstacle is present and undesirably
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`15
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`BNA/Brose Exhibit 1001
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`Declaration of Dr. C. Arthur MacCarley Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No.7,579,802
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`alters the motion of the panel as a result. In the case of automotive window or
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`sunroof closure, these unintended system behaviors may be so objectionable to a
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`user that they nullify the safety benefit of anti-pinch technology.
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`21.(cid:3) As such, the threshold required for the sensed signal change to result
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`in alteration of the window actuation must be set to take into account variations
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`caused by environmental conditions, to avoid undesirable false obstacle detection.
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`However, as such systems do not sense an obstacle until the obstacle makes
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`contact with the panel and obstructs its movement, the threshold cannot be set too
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`high—otherwise, the system may not adequately respond to an actual obstacle, and
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`may cause injury if the obstacle is, for instance, a limb. Thus, many approaches
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`have been developed in this field to set the obstacle detection threshold to more
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`accurately determine whether an obstacle has been encountered by a moving panel.
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`Numerous approaches involve the use of so-called “adaptive” thresholds, which
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`utilize immediately prior or previous cycle data regarding the system parameters to
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`calculate a threshold that accounts for variations in the operation of the system that
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`nonetheless indicate normal operation of the system (i.e., operation when no
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`obstacle is encountered).
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`B.
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`Summary of the ’802 Patent
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`22.(cid:3) The specification of the ’802 Patent describes a number of systems,
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`methods and features, many of which were added to the specification of the earliest
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`16
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`BNA/Brose Exhibit 1001
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`UUSI, LLC
`Exhibit 2008
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`Declaration of Dr. C. Arthur MacCarley Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No.7,579,802
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`patent (U.S. Patent No. 5,334,876, filed on April 22, 1992) over the course of 11
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`years through three continuations-in-part. From my review of the specification,
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`significant portions appear unrelated to the subject matter stated in the Challenged
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`Claims. Nevertheless, the specification is generally directed to reducing the risk of
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`personal injury that could result if a limb (e.g., an arm) is caught by a power-
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`operated device, for example, during the closing of a power window or sunroof in
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`a vehicle. (Ex. 1005 at 1:30-57 (“Background”) and 1:59-2:22 (“Summary of the
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`Invention”).)
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`23.(cid:3) During prosecution of the ’802 Patent, the applicant asserted, and the
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`Examiner agreed, that each pending claim was “supported by” the 1992
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`specification and entitled to the 1992 filing date. Amendments to some (but not all)
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`of the Challenged Claims, subsequent to the Examiner accepting this argument, do
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`not relate to the claim terms for which Brose proposes constructions. It is my
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`understanding that, therefore, this 1992 specification is important to the
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`understanding and interpretation of claims 1, 7-9, and 14.
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`24.(cid:3) Although all of the text of the 1992 specification is not expressly
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`repeated in the ’802 specification, I understand that the 1992 specification is
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`“incorporated by reference” into the ’802 specification, and thus should be treated
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`like a part of the ’802 specification. (Ex. 1005 at 1:6-22 (“Cross Reference to
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`Related Applications.”).)
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`17
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`BNA/Brose Exhibit 1001
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`Exhibit 2008
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`Declaration of Dr. C. Arthur MacCarley Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No.7,579,802
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`25.(cid:3) The specification of U.S. Patent No. 5,334,876, filed on April 22,
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`1992, to which the ’802 claims priority, is a relatively short specification that
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`describes obstacle detection at a higher level than the text expressly contained in
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`the ’802 Patent’s text.
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` The 1992 specification describes the use of a
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`microcontroller to compare sensed current from a motor with a “template value.”
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`(Ex. 1020 at 6:11-7:11.)
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`26.(cid:3) Further, the 1992 application discloses that a Hall-effect sensor can be
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`used to monitor the position of a window as it moves through its run. (Id. at 5:59-
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`6:10.)
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`27.(cid:3) Two specific algorithms are discussed. In order to detect “soft
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`obstructions,” the ’876 specification discloses a comparison to determine whether
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`the sensed current value is within 37.5% of the template value. If the sensed value
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`is outside of that 37.5% range, an obstruction is detected. (Id. at 6:25-40.)
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`28.(cid:3)
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`The ’876 specification also states that if an obstruction is not detected
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`(i.e. the sensed current value is within 37.5% of the template value), the template
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`value is “adapted” for the next run of the window using a first-order recursive
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`equation:
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`NewTemplateValue = [2(OldTemplateValue) + Current Reading]/3
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`(Id. at 6:33.)
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`18
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`BNA/Brose Exhibit 1001
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`Exhibit 2008
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`Declaration of Dr. C. Arthur MacCarley Under 37 C.F.R. § 1.68 in Support of
`Petition for Inter Partes Review of U.S. Patent No.7,579,802
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`29.(cid:3)
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`In order to detect “hard obstructions,” the ’876 specification discloses
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`a second comparison, wherein the presently sensed current value is compared
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`against a current value measured 40 milliseconds prior which is stored as an entry
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