Filed on behalf of UUSI, LLC
`
`By: Monte L. Falcoff (mlfalcoff@hdp.com)
`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 IPR2014-00650
`Patent 7,579,802
`
`
`
`PATENT OWNER'S RESPONSE
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`IPR2014-00650
`Patent 7,579,802
`
`I.
`
`Introduction ................................................................................................. 1
`
`A.
`
`B.
`
`C.
`
`Background of Patent Owner ............................................................. 1
`
`State of the Art .................................................................................. 2
`
`Petitioner's Alleged Expert Dr. Toliyat is Not Familiar with the State
`of the Art ........................................................................................... 4
`
`II.
`
`Independent Claim 1 .................................................................................... 8
`
`A.
`
`B.
`
`Claim Construction ............................................................................ 8
`
`Ground C – Alleged Obviousness over Lamm and Itoh ..................... 12
`
`1.
`
`2.
`
`Lamm and Itoh do not teach measuring current magnitude .. 12
`
`Lamm and Itoh cannot be combined ..................................... 13
`
`C.
`
`Ground E – Alleged Obviousness over Duhame and Kinzl ................ 14
`
`III.
`
`Dependent Claim 6 .................................................................................... 15
`
`A.
`
`B.
`
`Claim Construction .......................................................................... 15
`
`Ground C – Alleged Obviousness over Lamm and Itoh ..................... 16
`
`IV.
`
`Independent Claim 7 .................................................................................. 21
`
`A.
`
`Ground E – Alleged Obviousness over Duhame and Kinzl ................ 21
`
`1.
`
`2.
`
`3.
`
`Using Obstacle Detection Threshold Along Entire Travel Path 21
`
`Duhame fails to detect obstacles along the entire travel path 23
`
`Kinzl fails to detect obstacles along the entire travel path ..... 24
`
`B.
`
`Ground C – Alleged Obviousness over Lamm and Itoh ..................... 26
`
`1.
`
`2.
`
`Lamm does not calculate obstacle detection threshold as
`claimed .................................................................................. 26
`
`Itoh does not calculate obstacle detection threshold as claimed
`............................................................................................... 30
`
`V.
`
`Dependent Claim 11 .................................................................................. 30
`
`A.
`
`B.
`
`Claim Construction .......................................................................... 30
`
`Ground B – Alleged Obviousness over Itoh, Kinzl, and Jones ........... 33
`
`

`

`IPR2014-00650
`Patent 7,579,802
`
`1.
`
`2.
`
`3.
`
`Itoh and Kinzl do not disclose elements of Claim 11 .............. 33
`
`Jones does not disclose the elements of Claim 11 ................. 33
`
`Jones cannot be combined with Itoh and Kinzl ...................... 35
`
`C.
`
`Ground D – Alleged Obviousness over Lamm, Itoh, and Duhame .... 37
`
`1.
`
`2.
`
`3.
`
`Lamm and Itoh do not disclose elements of Claim 11 ............ 37
`
`Duhame does not disclose the claimed calibration sequence 37
`
`Duhame cannot be combined with Lamm and Itoh ............... 39
`
`D.
`
`Ground E– Alleged Obviousness over Duhame and Kinzl ................. 44
`
`VI.
`
`Independent Claim 15 ................................................................................ 44
`
`A.
`
`Claim Construction .......................................................................... 44
`
`1.
`
`2.
`
`Obstacle detection along entire travel path ........................... 44
`
`Claimed "logic unit" requires means-plus-function
`interpretation ........................................................................ 45
`
`B.
`
`Ground A – Alleged Obviousness over Itoh and Kinzl ....................... 49
`
`1.
`
`2.
`
`3.
`
`Itoh and Kinzl cannot detect obstacles based on the obstacle
`detection threshold along the entire travel path ................... 49
`
`Itoh and Kinzl do not disclose the claimed logic unit .............. 51
`
`Itoh and Kinzl cannot be combined ........................................ 51
`
`C.
`
`Ground C – Alleged Obviousness over Lamm and Itoh ..................... 53
`
`1.
`
`Lamm and Itoh cannot detect obstacles based on the obstacle
`detection threshold along the entire travel path ................... 53
`
`2.
`
`Lamm and Itoh do not disclose the claimed logic unit ........... 55
`
`D.
`
`Ground E – Alleged Obviousness over Duhame and Kinzl ................ 56
`
`VII. Dependent Claims 8, 9, and 16 .................................................................. 57
`
`VIII. Non-enablement ........................................................................................ 58
`
`IX.
`
`Unnecessary Claim Constructions .............................................................. 59
`
`Conclusion ................................................................................................. 60
`
`X.
`
`
`
`

`

`IPR2014-00650
`Patent 7,579,802
`
`TABLE OF AUTHORITIES
`
`CASES
`
`In re Cyclobenzaprine Hydrochloride Extended-Release Capsule
`Patent Litig., 676 F.3d 1063 (Fed. Cir. 2012)....................................................... 5
`
`In re Kumar, 418 F.3d 1361 (Fed. Cir. 2005) ......................................................... 58
`
`KSR Int'l. Co. v. Teleflex Inc., 127 S.Ct. 1727 (2007). .................................. 36, 44, 53
`
`Noah Systems, Inc. v. Intuit Inc., 675 F.3d 1302 (Fed. Cir. 2012) ..................... 47, 48
`
`Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561 (Fed. Cir. 1987) ....................... 5
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) ............................................ 8,
`
`Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298 (Fed. Cir. 1999) .......... 22
`
`Robert Bosch, LLC v. Snap-On Inc., 2014 U.S. App. LEXIS 19671
`(Fed. Cir. 2014) ............................................................................................ 46, 47
`
`Seachange Intl. Inc. v. C-Cor Inc., 413 F.3d 1361 (Fed. Cir. 2005) .................... 12, 22
`
`Southwall Techs., Inc. v. Cardinal IG, Co., 54 F.3d 1570 (Fed. Cir. 1995) ............... 10
`
`World Class Tech. Corp. v. Ormco Corp., 2014 U.S. App. LEXIS 20061,
`October 20, 2014 (Fed. Cir. 2014) ........................................................... 9, 15, 31
`
`BOARD DECISIONS
`
`IPR2013-00044, Institution Decision, Paper 12 .................................................... 59
`
`IPR2014-00416 Institution Decision, Paper 12 ..................................................... 17
`
`IPR2014-00419, Institution Decision, Paper 9 ...................................................... 59
`
`IPR2014-00530, Institution Decision, Paper 8 ...................................................... 18
`
`
`
`

`

`IPR2014-00650
`Patent 7,579,802
`
`I. INTRODUCTION
`
`A. BACKGROUND OF PATENT OWNER
`
`Patent Owner, UUSI, LLC, dba Nartron Corporation, was founded in 1967 and
`
`is based in Reed City, Michigan. Nartron designs, develops, manufactures, and
`
`markets electronic systems and components for automotive, truck, military, and
`
`consumer product markets. Nartron is a privately owned company with more
`
`than one hundred employees at its Michigan manufacturing plant.
`
`Nartron invented the safety technology described in U.S. Patent No. 8,217,612
`
`(the '612 Patent), U.S. Patent No. 7,579,802 (the '802 Patent), and U.S. Patent No.
`
`7,548,037 (the '037 Patent), which was included in a motor controller it sold to
`
`Webasto Roof Systems Inc. After Webasto stopped purchasing this controller
`
`from Nartron, Nartron sued Webasto, the present Petitioner in the pending IPRs
`
`2014-00648, 2014-00649, and 2014-00650 for infringement of the '612, '037, and
`
`'802 Patents. Additionally, Nartron sued Brose, another Petitioner in the pending
`
`IPRs 2014-00416 and 2014-00417 for infringement of the '612 and '802 Patents.
`
`Photographs of this Nartron-Webasto controller are shown in Exhibit 20013.
`
`Photographs of the Brose/Bosch motor and their controller incorporating
`
`Nartron's patented technology are shown in Exhibit 2014.
`
`Page 1
`
`

`

`IPR2014-00650
`Patent 7,579,802
`
`B. STATE OF THE ART
`
`Manually cranked window lift mechanisms were being replaced by electric
`
`motor driven window lift mechanisms in the 1980s. Expert Declaration of Dr.
`
`Mark Ehsani in Support of Patent Owner's Response, Ex. 2001 at ¶ 18 (all future
`
`references to Exhibit 2001 are by paragraph number). Then, luxury automobiles
`
`began using "express-up" switches with the electric motor driven window lift
`
`mechanisms such that the window would automatically continue to close after
`
`initial activation of the switch by the vehicle occupant. But electric motor driven
`
`window lift mechanisms caused safety problems. Id. at 19. According to a 1997
`
`National Highway Traffic Safety Administration (NHTSA) Technical Report (Ex.
`
`2010), a "conservative" (Ex. 2010 at pg. 9) estimate of power window injuries was
`
`437 injuries per year. Ex. 2010 at pg. 30, Table 17. These injuries were estimated
`
`for the 1-year period from October 1993 through September 1994, and included
`
`injuries caused by the closing of a power window. Ex. 2001 at 22.
`
`Furthermore, the majority of these injuries were to children under the age of
`
`fifteen. Ex. 2010 at pg. 32, Table 18. This industry data is prior to commercial
`
`implementation of Patent Owner’s invention covered by the present patent,
`
`which was later used for vehicular sunroof systems, and copied by others for side
`
`window lift mechanisms.
`
`Page 2
`
`

`

`IPR2014-00650
`Patent 7,579,802
`
`As Patent Owner's expert, Dr. Mark Ehsani, explains, in the years leading up to
`
`1992, automotive suppliers were unable to bring motor control circuitry to
`
`market due to excessive false positives and false negatives. Ex. 2001 at 20-21. The
`
`1992 priority application (the earliest application to which the '612, '037, and '802
`
`Patents claim priority) is the first practical development of a system that, in real
`
`world automobile scenarios, exhibits a very low false positive rate and an even
`
`lower false negative rate. Id. at 23. These real-world conditions encompass
`
`conditions experienced by many moving object systems (such as mechanical
`
`wear), situations more specific to motor vehicles (such as battery voltage
`
`fluctuation), and conditions uniquely applicable to a vehicle in motion (such as
`
`wind buffeting). Id. at 23.
`
`The 1992 priority application achieves these results by, among a number of
`
`inventive details, concurrently using multiple obstacle detection algorithms. The
`
`obstacle detection algorithms are selected to detect different forms of obstacles,
`
`such as hard obstacles (for example, a bone) and soft obstacles (for example, a
`
`person’s throat). By using multiple obstacle detection algorithms, the various
`
`obstacle types can each be detected more accurately according to the parameters
`
`that characterize them respectively, thereby reducing false negatives. Id. at 24-25.
`
`Page 3
`
`

`

`IPR2014-00650
`Patent 7,579,802
`
`It is noteworthy that the Petitioner-cited patents including Itoh, Kinzl, and
`
`Lamm are not indicative of the production vehicle state of the art. These patents
`
`also do not overcome many of the real-world vehicular problems such as the
`
`varying loads caused by wind buffeting or booming caused by the pressure
`
`difference between inside and outside the passenger compartment of a vehicle
`
`moving at high speeds. Id. at 26. The other Petitioner-cited patents – Duhame and
`
`Jones – are related to garage doors and therefore neither address nor overcome
`
`any of the real-world vehicular problems.
`
`C. PETITIONER'S ALLEGED EXPERT DR. TOLIYAT
`
`IS NOT FAMILIAR WITH THE
`
`STATE OF THE ART
`
`It is easy to see the combination of disparate teachings from multiple
`
`references with the benefit of hindsight.
`
`No effective, uniform, reliable patent system could long survive if the
`
`law permitted a decisional approach to § 103 determinations like
`
`that here employed by the district court…: considering not the
`
`problem solved by the invention (here a successful cable tie), but
`
`speculating on a
`
`‘problem’ of how prior devices might be
`
`reconstructed to match the claimed structure, with the benefit of
`
`hindsight aided by the inventor's engineering testimony about the
`
`inventions in suit….
`
`Page 4
`
`

`

`IPR2014-00650
`Patent 7,579,802
`
`Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1574 (Fed. Cir. 1987).
`
`"Virtually all inventions are necessarily combinations of old elements. The notion,
`
`therefore, that combination claims can be declared invalid merely upon finding
`
`similar elements in separate prior patents would necessarily destroy virtually all
`
`patents and cannot be the law under the statute, § 103." Id., 810 F.2d at 1575.
`
`The test for obviousness is from the vantage point of one of ordinary skill in
`
`the art at the time of filing: "hindsight analysis is inappropriate because
`
`obviousness must be assessed at the time the invention was made" and from the
`
`perspective of one of ordinary skill in the art. In re Cyclobenzaprine Hydrochloride
`
`Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1073 (Fed. Cir. 2012).
`
`Such a person of ordinary skill in the art would not have the benefit of nearly
`
`22 years of hindsight or of the teachings of the '802 Patent and its priority
`
`applications. Petitioner's alleged expert, Dr. Toliyat, did not have personal
`
`experience with the state of the art in 1992, when the original priority application
`
`of the '802 Patent was filed. Furthermore, Dr. Toliyat is not an expert in
`
`automotive vehicle window or sunroof movement mechanisms or their control
`
`systems such that his declarations should be given little if any weight. Prior to the
`
`preparation of the instant Petition, Dr. Toliyat had never worked with power
`
`window controls or even power sunroof controls. Ex. 2003 at 19:20-24, 20:10-22,
`
`Page 5
`
`

`

`IPR2014-00650
`Patent 7,579,802
`
`and 64:6-18. Dr. Toliyat did not have experience with the actual operations or
`
`algorithms that represented the state of the art in power window control systems
`
`at any time and specifically in or before 1992. Id. at 23:21-24:23, 36:11-37:21. Dr.
`
`Toliyat did not attempt to remedy these shortcomings in his understanding of the
`
`skill in the art by speaking with any people knowledgeable on the subject. Id. at
`
`20:1-9. The '802 Patent discloses systems and methods that overcome many of
`
`the real-world problems experienced in the industry by using separate algorithms
`
`for hard and soft obstruction detection. Ex. 2001 at 24-26. Dr. Toliyat was
`
`unaware of these concerns in 1992. Ex. 2003 at 20:24-21:12. Further, Dr. Toliyat's
`
`sweeping assertions regarding the state of the art in his declarations are not
`
`based on actual knowledge or experience with the systems mentioned therein. Id.
`
`at 40:8-42:12 and 42:13-44:21. Indeed, Dr. Toliyat admitted during deposition
`
`that his assertions in his declarations regarding prior art were general and
`
`theoretical. Id. at 59:21-61:6 and 61:13-62:10.
`
`Significantly, Dr. Toliyat has not understood some of the key concepts in the
`
`cited references, which renders his analyses and opinions thereof unreliable. For
`
`example, Dr. Toliyat misinterprets Lamm's first derivative of speed with respect to
`
`path traveled as acceleration. Id. at 87:3-6. Trivially, first derivative of speed with
`
`respect to path traveled is acceleration divided by speed and not acceleration. Yet
`
`Page 6
`
`

`

`IPR2014-00650
`Patent 7,579,802
`
`he emphatically maintains that Lamm detects obstruction based on acceleration.
`
`Id. at 89:11-14 and 90:20-91:8. Likewise, Dr. Toliyat incorrectly opines that Kinzl's
`
`blocking counter counts pulses from a Hall-effect sensor in zone 1 and that
`
`therefore Kinzl detects obstacle based on pulses from the Hall-effect sensor in
`
`zone 1. Id. at 184:6-9. He emphatically maintains that Kinzl's blocking counter
`
`counted pulses of the Hall-effect sensor. Id. at 184:18-185:24. More correctly, in
`
`zones 1 and 3, the blocking counter, whose time is variable, detects a blocked
`
`position if pulses are no longer received from the Hall-effect sensor, for example,
`
`when the window is completely open or completely closed, and turns off the
`
`motor. Ex. 1007 at 3:6-17; and Ex. 2001 at 44.
`
`Based on Dr. Toliyat's above exemplary
`
`testimony, Dr. Toliyat's
`
`pronouncements on what he believes one of ordinary skill in the art would
`
`recognize or be motivated to do with only having read what Petitioner's attorneys
`
`recently put before him should be viewed with skepticism if not stricken. There is
`
`no real-world evidence of the state of the art submitted with the Petition. It is
`
`noteworthy that some of the cited patent references are merely theoretical
`
`concepts that suffer many of the real-world problems found in the industry, as
`
`will be discussed in greater detail hereinafter.
`
`Page 7
`
`

`

`IPR2014-00650
`Patent 7,579,802
`
`In contrast, Patent Owner’s expert, Dr. Mark Ehsani, has personal knowledge
`
`of the state of the art and the state of commercial implementations on and
`
`before 1992, and has discussed that real-world state of the art with those active
`
`in it at the relevant time. Ex. 2001 at 10-16. Patent Owner’s expert has a very
`
`different view of the cited references and industry that is far more credible, as will
`
`be discussed in detail hereafter.
`
`II. INDEPENDENT CLAIM 1
`
`A. CLAIM CONSTRUCTION
`
`Because the '802 Patent expired in November 2014, the correct claim
`
`construction standard is set forth in the Institution Decision:
`
`[The] '802 Patent will expire in November 2014; the present review is
`
`not likely to be final until after November 2014; and once the '802
`
`Patent expires, the proper claim construction standard as set forth in
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005), rather than Rule
`
`42.100(b).
`
`Paper 14 at pg. 6, fn. 1.
`
`Independent Claim 1 recites "a sensor for measuring a parameter of a motor
`
`that varies in response to a resistance to motion." Ex. 1001 at 27:34-36. The
`
`correct construction of this limitation of Claim 1 is that the parameter must vary
`
`in response to a resistance to motion, not simply to a change in speed of the
`
`Page 8
`
`

`

`motor, and that the sensor therefore encompasses a current amplitude sensor
`
`but excludes a mere speed or position sensor. Ex. 2001 at 84.
`
`IPR2014-00650
`Patent 7,579,802
`
`We generally give words of a claim their ordinary meaning in the
`
`context of the claim and the whole patent document; the
`
`specification particularly, but also the prosecution history, informs
`
`the determination of claim meaning in context, including by resolving
`
`ambiguities; and even if the meaning is plain on the face of the claim
`
`language, the patentee can, by acting with sufficient clarity, disclaim
`
`such a plain meaning or prescribe a special definition.
`
`World Class Tech. Corp. v. Ormco Corp., 2014 U.S. App. LEXIS 20061, October 20,
`
`2014, at 7 (Fed. Cir. 2014) (internal citations omitted). Here, the meaning of the
`
`term "sensor," when considered in combination with its recited operation, is open
`
`for different interpretations, and therefore requires clarification. This ambiguity
`
`can be resolved by recourse to the Detailed Description, and also to the
`
`unambiguous explication in the Prosecution History of the '802 Patent.
`
`Where, . . ., the claim language itself leaves interpretive questions
`
`unanswered, "[t]he construction that stays true to the claim
`
`language and most naturally aligns with the patent’s description of
`
`the invention will be, in the end, the correct construction."
`
`Id. at 8-9 (internal citations omitted).
`
`The prosecution history requires this interpretation of the movement sensor
`
`limitation in Claim 1. A more limited definition may be compelled when the
`
`Page 9
`
`

`

`IPR2014-00650
`Patent 7,579,802
`
`prosecution history indicates that the patentee has relinquished a broad claim
`
`construction in an amendment to the claim or in an argument to overcome or
`
`distinguish a reference. See, Southwall Techs., Inc. v. Cardinal IG, Co., 54 F.3d
`
`1570, 1576 (Fed. Cir. 1995). Applicant repeatedly relied on the disclosure of a
`
`current magnitude sensor to support the sensor limitation of Claim 1 during
`
`prosecution of this application, and in order to overcome prior art. Specifically,
`
`the current magnitude sensor is shown in the application resulting in the '876
`
`Patent to include an operational amplifier that amplifies a voltage across a
`
`current-measuring resistor. Ex. 2012 at 7:16-28. During prosecution, in the
`
`response to an Office Action dated April 6, 2006, the Applicant indicated that the
`
`sensor of Claim 1 corresponded to "op amp 110, col 5, line 19" of the application
`
`resulting in the '876 Patent. Ex. 1002 at 151. In the response to an Office Action
`
`dated April 10, 2007, the Applicant indicated that the sensor of Claim 1
`
`corresponded to "Op-amp 110, Col. 5, Line 19" of the application resulting in the
`
`'876 Patent. Id. at 234. In the response to an Office Action dated July 23, 2008,
`
`the Applicant indicated that the sensor of Claim 1 corresponded to "Op -amp 110,
`
`Col. 5, Line 19" of the application resulting in the '876 Patent. Id. at 438. These
`
`weren’t merely non-exclusive examples, but narrowing distinctions.
`
`Page 10
`
`

`

`IPR2014-00650
`Patent 7,579,802
`
`The present definition of the "sensor for measuring" a parameter of Claim 1,
`
`as relied upon during prosecution, is consistent with the Detailed Description:
`
`"motor current is the primary measured parameter of immediate importance for
`
`both hard and soft obstacle detection." Ex. 1001 at 18:35-37. The term "motor
`
`current" denotes current magnitude as opposed to temporal spacing between
`
`current pulses. See, for example, "Nominal values for I (motor current) are from
`
`40 to 80. These do not correspond to units of amperes or milliamperes, but are
`
`instead scaled engineering units based upon the motor and circuitry used to
`
`sense the motor current." Id. at 15:66-16:3 (emphasis added). This definition of
`
`the sensor of Claim 1 is also consistent with the hard and soft obstruction
`
`detection objectives of the '802 Patent. Ex. 2001 at 85-86.
`
`Further, claim differentiation dictates that the sensor of Claim 1 be
`
`interpreted differently
`
`from a differently-named "movement sensor" of
`
`independent Claim 7.
`
`The doctrine of claim differentiation stems from "the common sense
`
`notion that different words or phrases used in separate claims are
`
`presumed to indicate that the claims have different meanings and
`
`scope." Although the doctrine is at its strongest "where the limitation
`
`sought to be 'read into' an independent claim already appears in a
`
`dependent claim," there is still a presumption that two independent
`
`Page 11
`
`

`

`IPR2014-00650
`Patent 7,579,802
`
`claims have different scope when different words or phrases are
`
`used in those claims.
`
`Seachange Intl. Inc. v. C-Cor Inc., 413 F.3d 1361, 1368-1369 (Fed. Cir. 2005)
`
`(internal citations omitted). Specifically, the recitation in Claim 1 of "a sensor for
`
`measuring a parameter of a motor" corresponds to a current amplitude sensor,
`
`while the recitation in Claim 7 of "a movement sensor for monitoring movement
`
`of the object" corresponds to a Hall-effect sensor that senses movement of the
`
`motor shaft.
`
`Therefore, the limitation "a sensor for measuring a parameter of a motor that
`
`varies in response to a resistance to motion" of Claim 1 should be construed as a
`
`sensor that measures a magnitude of motor current. This interpretation is
`
`consistent with the intrinsic patent and its prosecution history. Ex. 2001 at 87.
`
`B. GROUND C – ALLEGED OBVIOUSNESS OVER LAMM AND ITOH
`
`1. Lamm and Itoh do not teach measuring current magnitude
`
`Lamm senses speed and therefore does not disclose measuring current
`
`magnitude. Ex. 1008 at pg. 3, col. 3, line 59. Lamm further does not disclose
`
`obstacle detection based on current magnitude. Instead, Lamm teaches sensing
`
`speed, calculating one or more derivatives of speed of the motor with respect to
`
`the path traveled by the window, and comparing the derivatives to respective
`
`pre-specified thresholds to detect obstacles. Id. at pg. 2, col. 1, lines 40-49.
`
`Page 12
`
`

`

`IPR2014-00650
`Patent 7,579,802
`
`Therefore, Lamm does not disclose measuring current magnitude and obstacle
`
`detection based on current magnitude as Dr. Ehsani notes. Ex. 2001 at 88.
`
`Itoh also does not disclose a current amplitude sensor. Instead, Itoh discloses
`
`measuring a time period between current pulses, which is inversely proportional
`
`to motor speed. Ex. 1006 at 9:46-60. Dr. Ehsani corroborates this distinction. Ex.
`
`2001 at 89. This distinction was also recognized by the other Petitioner Brose's
`
`alleged expert, Dr. MacCarley, in IPR2014-00417, which challenged Claim 1 of the
`
`'802 Patent:
`
`Q. Okay. Thank you. Does Itoh teach or suggest performing obstacle
`
`detection based on current amplitude?
`
`MR. LEAVELL: Objection. Compound.
`
`THE WITNESS: Itoh is all about speed. It uses AC current as its speed
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`sensing mechanism. And you said amplitude of current.
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`BY MR. FALCOFF:
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`Q. Correct.
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`A. So I will say no.
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`Ex. 2015 at 150:24-151:9.
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`2. Lamm and Itoh cannot be combined
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`Further, as Dr. Ehsani analyzed and emphasized, Lamm and Itoh cannot be
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`combined for several reasons. Ex. 2001 at 90-91. Therefore, Lamm and Itoh do
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`not render Claim 1 obvious.
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`C. GROUND E – ALLEGED OBVIOUSNESS OVER DUHAME AND KINZL
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`Both Duhame and Kinzl do not teach measuring current magnitude. Duhame
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`does not teach or suggest a current magnitude sensor; instead, it discloses a
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`sensor to detect motor speed. Ex. 1009 at 2:41-42; Fig. 1, element 95. Kinzl does
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`not teach or suggest a current magnitude sensor; instead, it discloses a sensor to
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`detect motor speed. Ex. 1007 at 4:61-63. Indeed, this distinction between Kinzl's
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`teaching of speed and Claim 1's recitation of current amplitude was also
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`corroborated by Brose's alleged expert, Dr. MacCarley, in IPR2014-00417, which
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`challenged Claim 1 of the '802 Patent:
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`Q. But to the best of your knowledge from the prior readings of it, is
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`it correct to state that Kinzl does not teach or suggest performing
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`obstacle detection based on current amplitude?
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`MR. LEAVELL: Objection to form and compound.
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`BY MR. FALCOFF:
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`Q. Is that a correct statement?
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`MR. LEAVELL: Same objections.
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`. . .
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`THE WITNESS: As you phrased it, no. It's -- it's -- Kinzl uses speed as
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`the detection mechanism.
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`BY MR. FALCOFF:
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`Q. And not current amplitude, correct?
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`A. Correct, at least I would reserve the right to do a very fine-tooth
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`combed search to be sure nothing could be interpreted to include
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`that. But I'm not -- I'm not aware of any.
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`Ex. 2015 at 152:8-153:3.
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`Further, as Dr. Ehsani analyzed and emphasized, Duhame and Kinzl cannot be
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`combined for several reasons. Ex. 2001 at 110-120. Therefore, Duhame and Kinzl
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`do not render Claim 1 obvious.
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`III. DEPENDENT CLAIM 6
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`A. CLAIM CONSTRUCTION
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`Claim 6 depends from Claim 1 and recites: "immediate past measurements of
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`said parameter were taken within a forty millisecond interval." Ex. 1001 at 28:19-
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`22. The correct construction of this phrase is that immediate past measurements
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`must all be taken within the preceding 40 milliseconds (40 ms). This is based on
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`the plain and ordinary meaning as unambiguously expressed in the claims. See,
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`World Class Tech. Corp., 2014 U.S. App. LEXIS 20061, at 7.
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`Claim 6 recites that "the immediate past measurements of said parameter
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`were taken within a forty millisecond interval prior to the most recent sensor
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`measurement," not that one or more of the immediate past measurements were
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`taken within a forty millisecond interval, as Petitioner appears to argue. Paper 4
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`at pg. 36. The Board correctly recognized this as the accurate construction:
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`The plain language of the claim indicates “the immediate past
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`measurements" were taken within the 40 millisecond time frame,
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`not
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`(for example) "a portion" or "at
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`least one" of such
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`measurements. Therefore, on the present record, we construe claim
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`6 to require that all of the immediate past measurements used in the
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`"determining" step (c) of claim 1 were taken within the 40
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`millisecond time frame.
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`Paper 14 at pg. 9 (emphasis original). The
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`limitation "immediate past
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`measurements of said parameter were taken within a forty millisecond interval"
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`of Claim 6 should therefore properly be construed as all immediate past
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`measurements were taken within a forty millisecond interval.
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`B. GROUND C – ALLEGED OBVIOUSNESS OVER LAMM AND ITOH
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`Both Lamm and Itoh do not teach or suggest a 40 ms time interval within
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`which past measurements are taken. Petitioner appears to compare the claimed
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`immediate past measurement values to Lamm's thresholds. Paper 4 at pp. 33-34.
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`As Dr. Ehsani explains, however, Lamm's thresholds are pre-specified by
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`performing clamping tests at the factory and are not determined, calculated,
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`adjusted, or adapted during normal operation based on
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`immediate past
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`measurement values, which were taken within a forty millisecond interval prior to
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`the most recent sensor measurement. Ex. 2001 at 131-136. Itoh does not teach a
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`40 ms time window within which past measurements are measured, as
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`contrasted to Claim 6. Ex. 2001 at 137-138. This deficiency has been recognized
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`by the Board in its Institution Decision of IPR2014-00416 in which the other
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`Petitioner Brose challenged Claim 5 of the '612 Patent:
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`We are not persuaded by Petitioner's contention that Itoh explicitly
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`discloses this limitation. See Pet. 18-19, 32; Ex. 1001 ¶ 107.
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`IPR2014-00416 Institution Decision, Paper 12 at pgs. 16-17. The failure of Itoh to
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`teach the 40 millisecond feature is also corroborated by Petitioner's alleged
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`expert Dr. Toliyat and Brose's alleged expert Dr. MacCarley:
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`Q.· You really don't know from reading Itoh -- you can't tell whether
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`those
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`immediate past measurements were taken within 40
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`milliseconds or somewhere outside of that, right?
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`A.· Itoh is not specifically mentioned that all the measurements are
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`within the past 40 milliseconds or outside the 40 milliseconds.· It
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`could be in or out.
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`Ex. 2003 (Dr. Toliyat) at 195:17-196:1.
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`Q. Okay. Thank you. Now Itoh, the Itoh patent, does not literally
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`disclose the claim five feature of the '612, including within a 40-
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`millisecond interval, does it?
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`A. No, it doesn't state a number. I know it does not state a specific
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`value. It leaves that as a design choice.
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`Q. Okay. But it does not literally disclose that, correct?
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`A. It doesn't state a number.
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`Ex. 2015 (Dr. MacCarley) at 148:4-14.
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`Petitioner has failed to provide any basis that the claimed 40 ms
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`measurement interval is a design choice. As Dr. Ehsani opines, "the claimed 40 ms
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`time limit does not represent an obvious design choice for Itoh" and then explains
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`rationale supporting this conclusion Ex. 2001 at 139. Petitioner's alleged expert
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`Dr. Toliyat cites no evidence in his Declaration of why one of ordinary skill in the
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`art would choose a fixed time window instead of a number of samples, or of how
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`the number 40 ms might be arrived at. Only conclusory, speculative, and factually
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`incorrect statements are made instead. Ex. 1003 at pp. 79-80, ¶¶ 179-180.
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`Expert testimony that does not disclose the underlying facts or data
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`on which the opinion is based is entitled to little or no weight. 37
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`C.F.R. § 42.65(a). Dr. Mohapatra's Declaration does not provide any
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`facts, data, or analysis to support the opinion stated. Merely
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`repeating an argument from the Petition in the declaration of a
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`proposed expert does not give that argument enhanced probative
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`value. Accordingly, we give the cited evidence