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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`—————
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`—————
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`WEBASTO ROOF SYSTEMS, INC.
`Petitioner,
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`v.
`
`UUSI, LLC
`Patent Owner.
`
`—————
`
`Case IPR2014-00650
`Patent 7,579,802
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`—————
`
`REPLY DECLARATION OF HAMID A. TOLIYAT, PH.D.
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`Attorney Docket: 130163.231151
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`1
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`WEBASTO EX. 1022
`WEBASTO ROOF SYSTEMS, INC. v. UUSI, LLC
`IPR2014-00650
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`
`
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`I.
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`II.
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`Table of Contents
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`SUMMARY OF OPINIONS FOR THE ’802 PATENT ................................. 4
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`QUALIFICATIONS ........................................................................................ 5
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`Page
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`III. CLAIM CONSTRUCTION ............................................................................ 8
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`A.
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`B.
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`C.
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`D.
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`“a sensor for measuring a parameter of a motor that varies in
`response to a resistance to motion” (independent claim 1) ................... 8
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`“a travel path” (independent claims 7 and 15) ....................................... 9
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`“in response to a specified input the controller conducts a
`calibration motor energization sequence to determine
`parameters of object” (dependent claim 11) ........................................ 11
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`“a logic unit for making a comparison between a value
`representing window or panel speed based on a currently sensed
`motor speed signal with the calculated obstacle detect
`threshold, and generating a control output if an obstacle is
`detected based on said comparison” .................................................... 13
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`IV. CLAIMS 1, 6-9, 11, 15, AND 16 WOULD HAVE BEEN OBVIOUS........ 16
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`A. Ground 1: Obviousness over Itoh and Kinzl ....................................... 16
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`(a) Obviousness of the Combination and Enablement ......... 17
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`(b)
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`Independent Claim 15 and Dependent Claim 16 ............ 21
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`B.
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`Ground 2: Obviousness over Itoh, Kinzl, and Jones ........................... 24
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`(a) Obviousness of the Combination and Enablement ......... 24
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`(b) Dependent Claim 11 ....................................................... 25
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`2
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`C.
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`Ground 3: Obviousness over Lamm and Itoh ..................................... 26
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`(a) Obviousness of the Combination and Enablement ......... 27
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`(b)
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`Independent Claim 1 ....................................................... 31
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`(c) Dependent Claim 6 ......................................................... 34
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`(d)
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`(e)
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`Independent Claim 7 and Dependent Claims 8-9 ........... 38
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`Independent Claim 15 and Dependent Claim 16 ............ 40
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`D. Ground 4: Obviousness over Lamm, Itoh and Duhame ...................... 43
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`(a) Obviousness of the Combination and Enablement ......... 44
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`(b) Dependent Claim 11 ....................................................... 47
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`E.
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`Ground 5: Obviousness over Duhame and Kinzl ................................ 48
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`(a) Obviousness of the Combination .................................... 48
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`(b)
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`(c)
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`Independent Claim 1 ....................................................... 49
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`Independent Claim 7 and Dependent Claims 8-9 ........... 51
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`(d) Dependent Claim 11 ....................................................... 53
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`(e)
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`Independent Claim 15 and Dependent Claim 16 ............ 53
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`3
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`
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`I, Hamid A. Toliyat, hereby declare as follows:
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`1.
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`I have been retained by counsel for Petitioner Webasto Roof Systems, Inc. I
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`am being compensated for my work in this matter at a rate of $450 per hour, and
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`my compensation is not dependent in any way on the outcome of this proceeding.
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`2.
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`I previously submitted a declaration regarding the invalidity of the ’802
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`Patent in this Inter Partes review proceeding. See IPR2014-00650, Ex. 1003. I
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`incorporate and stand by my opinions from my prior declaration that claims 1, 6-9,
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`11, and 15-16 of the ’802 patent are invalid based on the prior art.
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`3.
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`I submit this declaration to reply to certain statements made by Dr. Ehsani in
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`his Declaration (Ex. 2001) in support of the Patent Owner’s Response and in the
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`Patent Owner, UUSI, LLC’s (“UUSI’s”) Response (Paper No. 20).
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`I.
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`4.
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`SUMMARY OF OPINIONS FOR THE ’802 PATENT
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`The Board instituted an Inter Partes Review of the ’802 patent for claims 1,
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`6-9, 11, 15, and 16 based on the following grounds:
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`
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`Claims 15 and 16 under 35 U.S.C. § 103(a) as obvious over Itoh (Ex.
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`1006) and Kinzl (Ex. 1007);
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`
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`Claim 11 under 35 U.S.C. § 103(a) as obvious over Itoh, Kinzl, and
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`Jones (Ex. 1010);
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`Claims 1, 6-9, 15, and 16 under 35 U.S.C. § 103(a) as obvious over
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`Lamm (Ex. 1008) and Itoh;
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`4
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`Claim 11 under 35 U.S.C. § 103(a) as obvious over Lamm, Itoh, and
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`Duhame (Ex. 1009); and
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`
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`Claims 1, 7–9, 11, 15, and 16 under 35 U.S.C. § 103(a) as obvious
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`over Duhame and Kinzl.
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`IPR2014-00650, Paper 14.
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`5.
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`As I described in my original Declaration (Ex. 1003) and as further
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`described in more detail below, it is my opinion that claims 1, 6-9, 11, 15, and 16
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`of the ’612 patent are invalid based on each of the instituted grounds for inter
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`partes review.
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`II. QUALIFICATIONS
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`6.
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`As described in my original Declaration (Ex. 1003), I am familiar with the
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`state of the art as it relates to the ’802 patent during the relevant time period, April
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`1992. My qualifications are set forth more fully in my curriculum vitae (Ex. 1004)
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`and my original Declaration (Ex. 1003), so I will only briefly address them here. I
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`am a licensed Professional Engineer, and earned a Ph.D. with a specialization in
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`Industrial Drives, Electrical Machines, Power Electronics, Power Systems and
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`Control from the University of Wisconsin-Madison in 1991, and a M.S. in
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`Electrical Engineering from West Virginia University in 1986, and a B.S. in
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`Electrical Engineering from Sharif University of Technology in May 1982. Since
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`1987, I have held numerous teaching and research positions in the field of
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`5
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`electrical engineering at the University of Wisconsin-Madison (Jan. 1987 – May
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`1991), Ferdowsi University of Mashhad (September 1991 – January 1994), and
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`Texas A&M University (March 1994 – present).
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`7.
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`As noted in my original Declaration, I am a member of numerous
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`professional and honorary societies and have received numerous professional
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`honors in the field of electrical and electronic engineering, including an award as a
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`distinguished lecturer of the IEEE Vehicular Technology Society, along with one
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`of the highest IEEE awards, namely the Nikola Tesla Field Award in 2014 for
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`“Outstanding contributions to the design, analysis and control of fault-tolerant
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`multiphase electric machines.”
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`8.
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`I disagree with UUSI’s contention that I am unfamiliar with the industry
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`relating to the subject matter of the ’802 patent. I have extensive experience in the
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`field of control systems, such as control systems used in automotive vehicles. I
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`am a distinguished lecturer for the IEEE Vehicular Technology Society. In
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`addition, I have authored numerous journal papers and have received many grants
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`for research in this field, including those relating to motor drive applications in
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`vehicles, as provided in detail in my curriculum vitae (Ex. 1004). For instance, I
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`co-authored a research paper entitled, “DSP-Based Sensorless Electric Motor Fault
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`Diagnosis Tools for Electric and Hybrid Electric Vehicle Powertrain Applications”
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`that was published in the IEEE Transactions on Vehicular Technology. I have also
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`6
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`spoken at numerous seminars in the same field, including seminars regarding
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`“Electric Motors for Electric and Hybrid Electric Vehicles”; “Electric Motors and
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`Power Converters for Electric Vehicles”; “Fault Tolerant Motor Drives for Hybrid
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`Electric Vehicle Applications”; and “Electric Drives for Electric and Hybrid
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`Vehicles.” I also worked for General Motors in 1991, prior to the filing of the first
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`patent application which ultimately led to the ’802 patent. I further note that, like
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`UUSI’s expert, Dr. Mehrdad Ehsani, I am a professor of engineering at the
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`University of Texas A&M and focus my research on power electronics, motor
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`drives, control systems, and electric and hybrid electric vehicles.
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`9.
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`I further note that Dr. Ehsani did not review any experimentation conducted
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`by the inventor, Mr. Washleski, Ex. 1023 at 36:9-13; did not build any system in
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`accordance with the 1992 priority application, Ex. 1023 at 116:2-4; did not test any
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`window or sunroof closure product, Ex. 1023 at 116:10-23; did not investigate
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`whether there is any Nartron product that practices the ’612 patent, Ex. 1023 at
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`116:24-117:3; did not perform any hardware analysis for this case other than
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`review photographs from the inventor, Mr. Washleski, Ex. 1023:23-119:3; and did
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`not believe experience with an automotive sunroof or side window lift system is
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`necessary to understand UUSI’s patents, Ex. 1024 at 282:8-22. Dr. Ehsani also did
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`not perform any analysis to assess the approaches disclosed in the ’612 patent, Ex.
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`7
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`1023 at 28:24-30:4; and did not build any system implementing any embodiment
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`of the ’612 patent, Ex. 1023 at 116:5-9.
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`III. CLAIM CONSTRUCTION
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`10.
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`I understand that claims in an inter partes review of an expired patent are
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`interpreted in the way a person of ordinary skill in the art would have understood
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`them at the time of the alleged invention. In addition to the terms I addressed in
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`my original Declaration, Dr. Ehsani has disputed the meaning of additional terms
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`in the claims of the ’802 patent. I address these additional terms here.
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`A.
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`“a sensor for measuring a parameter of a motor that varies in
`response to a resistance to motion” (independent claim 1)
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`11. Dr. Ehsani assumes that claim 1’s “sensor for measuring a parameter that
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`varies in response to a resistance to motion” requires “that the parameter must vary
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`in response to a resistance to motion, not simply to a change in speed of the
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`motor.” Ex. 2001, ¶ 84. He opines that the prior art’s use of Hall-effect sensors
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`that monitor speed does not satisfy this claim limitation. Ex. 2001, ¶ 85. Instead,
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`Dr. Ehsani opines that the “sensor for measuring a parameter of a motor that varies
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`in response to a resistance to motion” is a “current magnitude sensor.” Ex. 2001, ¶
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`87.
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`12.
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`I understand that Dr. Ehsani’s proposed construction directly conflicts with
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`UUSI’s construction of this term in asserting infringement in the related litigation
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`in district court, where UUSI took the position that accused products’ use of Hall-
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`8
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`effect sensors to monitor speed satisfies this limitation. See Ex. 1026 (stating that
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`the “sensor for measuring a parameter of a motor coupled to the motor driven
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`element that varies in response to a resistance to motion during all or part of a
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`range of motion of the motor driven element” is met by “hall effect sensors
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`electrically connected to the motor” where “[t]he hall effect sensors monitor the
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`speed and position of the window”).
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`13.
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`In my original Declaration, I applied the broader interpretation that UUSI
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`used to assert infringement in litigation. Below I address application of the more
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`narrow interpretation of claim 1 that Dr. Ehsani and UUSI have now set forth in
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`this proceeding to argue that the claims are valid.
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`B.
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`“a travel path” (independent claims 7 and 15)
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`14. For claim 7, Dr. Ehsani states that he understands the “obstacle detection
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`based on the obstacle detect threshold must be performed along the entire path of
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`travel of the window.” Ex. 2001, ¶ 163 (emphasis added). Dr. Ehsani also states:
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`“In Claim 15, obstacle detection based on the obstacle detect threshold must be
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`performed along the entire path of travel of the window.” Ex. 2001, ¶ 207
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`(emphasis added).
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`15. Dr. Ehsani does not cite any portion of the claim language, patent
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`specification, or prosecution history as a basis for requiring obstacle detection
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`along the entire travel path to satisfy claims 7 and 15, which only recite “along a
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`9
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`travel path.” His only basis is that his interpretation is “consistent with the
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`objectives of the ’802 patent.” Ex. 2001, ¶¶ 164, 208. I disagree with Dr. Ehsani’s
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`understanding of claims 7 and 15, which is inconsistent with the plain language of
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`claims 7 and 15.
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`16. Claim 15 clearly cannot be interpreted as limited to obstacle detection
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`algorithm along the entire path of travel because claim 15 expressly states:
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`“obstacle detection controller for monitoring at least a part of the travel path of
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`the window or panel for sensing and generating an obstacle detect signal
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`indicating the presence in said travel path of an obstacle to movement of the
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`window or panel.”
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`17. Furthermore, the plain language of both claims 7 and 15 broadly recites, “a
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`travel path,” and this language does not require that obstacle detection be
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`performed along the entire path of travel. While detecting obstacles along the
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`entire travel path may be desirable, I understand that generally it is not proper to
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`read desired objectives into broader claim language. I also have been informed
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`that generally the indefinite article “a” is broader than the term “entire,” which is
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`consistent with the ordinary English meaning of the words.
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`18. The ’802 patent also describes embodiments in which movement of an
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`object is monitored along a portion of the of the object’s travel path in performing
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`soft obstacle detection. See Ex. 1001 at 16:4-17:42. Instead of performing soft
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`10
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`obstacle detection along the entire path of travel, the ’802 patent describes that the
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`disclosed system performs only hard obstruction detection during the startup
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`portion of the window’s travel path. Ex. 1001 at 16:31-44.
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`C.
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`“in response to a specified input the controller conducts a
`calibration motor energization sequence to determine parameters
`of object” (dependent claim 11)
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`19. Dr. Ehsani states:
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`[T]he limitation “in response to a specified input the controller
`conducts a calibration motor energization sequence to determine
`parameters of object” must be construed to mean “in response to a
`single specified user input, conducting a calibration motor
`energization sequence by moving an object from a fully closed
`position to a fully open position and back to the fully closed position
`to determine movement range parameters of the object.”
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`Ex. 2001, ¶ 177 (emphasis added). I have underlined the text in Dr. Ehsani’s
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`interpretation that has no basis in the claim language. I disagree with Dr.
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`Ehsani in addition of these requirements.
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`20.
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`In my view, his opinion is inconsistent with the ’802 patent, particularly the
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`language of claim 11 itself. The plain language “a specified input” is broad
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`enough to cover multiple user interactions. I understand that the indefinite article
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`“a” generally means “one or more.” As an example, “a specified input” can
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`include when a user presses a sequence of buttons to perform the calibration motor
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`energization sequence. In addition, the words “specified input” themselves are
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`11
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`broad enough to include multiple button presses or other operations that together
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`constitute the “specified input.”
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`21. The calibration sequence described in the ’802 patent and referenced by Dr.
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`Ehsani in his declaration supports this plain language reading of “a specified
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`input.” While Dr. Ehsani focuses on a single button press out of the sequence in
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`the ’802 patent to initiate the calibration (Ex. 2001, ¶ 172), the ’802 patent
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`describes that to initiate the calibration energization sequence, the user’s specified
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`input involves three separate user interactions: “[1] The ignition is turned OFF and
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`[2] within five seconds the OPEN switch is pressed and [3] the ignition is switched
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`ON.” Ex. 1001 at 12:17-20.
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`22. This description of calibration in the ’802 patent is also only an “exemplary
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`description,” as Dr. Ehsani acknowledges. Ex. 2001, ¶ 175. I do not understand
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`what Dr. Ehsani means when he says that “[t]his description provides the following
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`exemplary definitions.” Ex. 2001, ¶ 176. In my view, the plain language of the
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`claim is not limited to this exemplary description, and the example in the
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`specification does not define the meaning of the claim.
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`23. Dr. Ehsani also relies on this example in the ’802 patent to require a specific
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`sequence of movements for performing the calibration (i.e., moving an object from
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`fully closed position to a fully open position and back to the fully closed position),
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`but the plain language of claim 11 does not recite any sequence of movements.
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`12
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`Consequently, I disagree with Dr. Ehsani’s interpretation which requires moving
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`an object from fully closed position to a fully open position and back to the fully
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`closed position.
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`D.
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`“a logic unit for making a comparison between a value
`representing window or panel speed based on a currently sensed
`motor speed signal with the calculated obstacle detect threshold,
`and generating a control output if an obstacle is detected based on
`said comparison”
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`24. Dr. Ehsani contends that claim 15’s “logic unit” should be read as a means-
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`plus-function limitation under 35 U.S.C. 112, paragraph 6, on the basis that that
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`“Logic unit was not a known structure to those of ordinary skill in the art prior to
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`the priority date of the ’802 Patent..” Ex. 2001, ¶ 212.
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`25.
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`I disagree with Dr. Ehsani. I understand that there is a presumption that a
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`limitation is not a means-plus-function limitation when words such as “means for”
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`are not used. In this case, there are no such words in claim 15. I also understand
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`that to be a means-plus-function claim term, it must be the case that a person of
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`ordinary skill in the art as of the relevant time period would conclude that the claim
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`term is devoid of structure. I do not believe the claim language would have been
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`viewed as devoid of structure by a person of ordinary skill in the art as of 1992.
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`26. A controller with a logic unit was common parlance with a well-known
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`structure by April 1992. The structure indicated would have included (i) a
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`controller in the form of, e.g., a microprocessor, running decision-making software
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`13
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`containing code for running the algorithms recited in claim 15, or (ii) dedicated
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`control logic hardware, such as, for example a field programmable gate array
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`(FPGA), resulting in the recited steps being performed.
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`27. Dictionaries from approximately 1992 support my opinion. For instance:
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` “logic - Logic refers to a sequence of operations that is performed by the
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`hardware or the software. Hardware logic is the circuits and chips that
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`perform the computing and controlling operations of the computer. Software
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`logic, or program logic, is the sequence of instructions in a program.” Ex.
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`1027 at 413.
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` “logic 1. In digital-computer practice, the mathematics dealing with the truth
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`or falsity of indicated relationships and their combinations. Also see
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`SYMBOLIC LOGIC. 2. Collectively, the switching circuits and associated
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`hardware for implementing logic functions (see l, above). such as AND,
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`NAND, NOR. OR, etc.” Ex. 1028 at 391.
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`28. Patents in the automotive field and others from this period also support my
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`opinion. For instance:
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` U.S. Patent No. 5,121,386 (Ex. 1029) at 2:67-3:4 (An electrical
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`communication system between a plurality of electrical devices in a vehicle,
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`including a logic unit: “These first and second integrated circuits form a
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`logic unit and may conveniently include specific logic circuits for a
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`14
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`microprocessor, solid state switches, etc., and may form circuits for
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`protection against voltage and current overloads, control and diagnostic
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`circuits, etc.”).
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` U.S. Patent No. 4,463,426 (Ex. 1030) at 4:30-35 (Automatic position control
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`for a vehicle seat system, disclosing, e.g., “Data which is input on the K
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`inputs from the motor rotation pulse detection circuits and from the switches
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`flow to the logic unit for processing. These inputs enter the logic unit and
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`cause modifications to the program execution sequence eventualizing a
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`logical control of the outputs.”)
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` U.S. Patent No. 4,454,589 (ex. 1025) at 1:33-40 (“The programmable
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`arithmetic logic unit of the present invention is microprogrammable and
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`operates in conjunction with a fast microprogram store (control store)
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`program memory and a program controller. As distinguished from the RCA
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`device and other prior art processing elements it performs all of its
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`operations simultaneously at high speed--low power factor related to the
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`CMOS/SOS technology.”)
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`29. Along with structure, claim 15 also expressly recites algorithmic
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`functionality. Ex. 1001, 29:41-30:27.
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`30. Dr. Ehsani’s proposed construction is also improper because it does not
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`adhere to the algorithms he identified in the ’802 patent as the “structure” for
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`15
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`
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`performing the claimed functionality. Dr. Ehsani contends that the logic unit’s
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`corresponding structure is the ’802 patent’s disclosure of the (1) Hard and/or Soft
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`Obstruction Detection, Ex. 1001 at 22:21-50; (2) the Hard Obstruction Detection,
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`Ex. 1001 at 22:51-23:5; and (3) the Soft Obstruction Detection, Ex. 1001 at 23:6-
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`46. Ex. 1023 at 161:5-22. I understand that, under the legal framework for
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`interpreting computer-implemented means-plus-function claim terms, such terms
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`cover the specific algorithms disclosed in the specification and their equivalents.
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`Applying this framework, as Dr. Ehsani proposes, “logic unit” should be
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`interpreted to cover the three specific equations Dr. Ehsani identified in the ’802
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`patent and their equivalents. This is not how Dr. Ehsani interpreted “logic unit.”
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`For example, the equations he identified require measurements of current and pulse
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`period as inputs, but Dr. Ehsani offers a much broader interpretation. Ex. 2001, ¶¶
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`215-17. His interpretation does not refer to pulse period at all—he has omitted this
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`parameter required by the equations in the ’802 patent entirely—and it is unclear
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`whether his reference to “current values readings” (Ex. 2001, ¶ 215) refers to
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`timing or to electrical current.
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`IV. CLAIMS 1, 6-9, 11, 15, AND 16 WOULD HAVE BEEN OBVIOUS
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`A. Ground 1: Obviousness over Itoh and Kinzl
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`31. As I described in my original Declaration, claims 15 and 16 would have
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`been obvious in view of Itoh and Kinzl. Ex. 1003, ¶¶ 61-69.
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`16
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`(a) Obviousness of the Combination and Enablement
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`32.
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`It would have been obvious to a person of ordinary skill in the art to
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`combine Itoh and Kinzl. Both Itoh and Kinzl addressed the same problem:
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`detecting an obstruction when closing a car window. One having ordinary skill in
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`the art would have understood that Itoh and Kinzl disclosed complementary
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`approaches to obstruction detection, and that elements from each easily could have
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`been combined into a functioning system. One having ordinary skill in the art also
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`would have looked to combine Itoh and Kinzl because they both taught methods to
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`adapt a detection threshold indicative of a window obstruction so that false
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`positives (i.e., falsely identified obstructions) could be avoided. Common sense
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`would have directed one of ordinary skill in the art to combine the references.
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`Furthermore, as described above, Standard 118 set by U.S. NHTSA established
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`safety and operating requirements for power-operated windows and roof panels to
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`reduce the risks of personal injury, which would have motivated one of ordinary
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`skill in the art to examine available obstruction detection literature. Ex. 1001 at
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`1:32-43; Ex. 1011 (1971 regulations), Ex. 1005 (1991 regulations). The common
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`teachings of these two references—adaptive obstruction detection in window
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`operation—provided ample rationale for one having ordinary skill in the art to
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`combine them to design an obstruction detecting system to operate, e.g., a car
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`window.
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`17
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`33. Dr. Ehsani contends that it would not have been obvious to combine Itoh
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`and Kinzl because the “Hall-effect sensor of Kinzl cannot be simply ripped out of
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`Kinzl and placed into the system of Itoh instead of the Itoh commutation pulse
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`counter.” Ex. 2001, ¶ 229.
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`34.
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`I first note that the Hall-effect sensor of Kinzl is not being relied upon in the
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`cited combination for showing obviousness of independent claim 15 and that Dr.
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`Ehsani does not dispute that Itoh’s pulse counter meets the “sensor” limitation of
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`claim 15. See Ex. 1003, ¶ 139.
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`35. Furthermore, such a combination would have been obvious. I understand
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`that a person of ordinary skill in the art is not an unthinking person who would
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`thrust a component from one prior art reference into the design of another
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`reference without accounting for modifications which would be apparent to one
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`skilled in the art. I understand that elements from a secondary reference may be
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`relied upon to teach a component and function that were well-known in the art and
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`that the combination would have been obvious where the results of the substitution
`
`would have been predictable. A person of ordinary skill in the art would have
`
`understood that aspects of the references could be combined by taking Itoh’s
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`approach obstacle detection as the basis and adding on a couple of specific
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`improvements, which would have been well-known in the art, that are disclosed in
`
`Kinzl.
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`18
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`36. Dr. Ehsani’s real complaint is that Itoh’s sensor may not provide “reliable
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`signals . . . during motor startup.” Ex. 2001, ¶ 231. His complaint is not relevant
`
`to whether a Hall-effect sensor could be used in Itoh and, in fact, shows that a
`
`person of ordinary skill in the art would have been motivated to modify Itoh to use
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`the more accurate Hall-effect sensor. This combination would have been a simple
`
`substitution of one known element for another to obtain predictable results and
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`would have involved no more than the predictable use of prior art techniques
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`according to the functions established in the respective prior art disclosures.
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`Indeed, a person of ordinary skill in the art would have been motivated to
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`substitute Itoh’s counter with Kinzl’s Hall-effect sensor in order to improve
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`accuracy.
`
`37. Dr. Ehsani also contends that Itoh and Kinzl lack enablement. Ex. 2001, ¶
`
`244. I understand that a prior art reference is presumed to be enabled. Dr. Ehsani
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`has not offered a basis for overcoming such a presumption. UUSI only addresses
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`enablement in conclusory fashion and appears to base its challenge on how well
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`the references would work, rather than offering any explanation as to why they
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`could not be practiced without undue experimentation:
`
`As Patent Owner’s expert Dr. Ehsani opines, the obstacle detection
`features of Lamm, Itoh, and Kinzl would require undue
`experimentation to work in real-world scenarios. Ex. 2001, 92-104
`and 121-127. The inordinate amount of false positives or negatives
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`19
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`
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`that would occur with Lamm, Itoh and Kinzl’s inaccurate algorithms
`would prevent any of them from being implemented in production
`vehicles.
`Response at 58.
`
`38.
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`Itoh and Kinzl were enabling to one of ordinary skill in the art on or before
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`1992 for making or using the invention claimed in the ’802 patent. These
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`references provide detailed descriptions of the components that make up the
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`apparatuses for detecting obstacle detection, including how the components
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`operate with one another during operation. In addition, they provide a detailed
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`description of the algorithms that can be used to detect an obstacle along the path
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`of travel of a window or panel.
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`39. Dr. Ehsani’s criticism is that, in his view, Itoh’s and Kinzl’s inventions do
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`not work well and could result in false positives or false negatives. Ex. 2001, ¶¶
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`101-104, 121-27. I understand that the legal standard for enablement only requires
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`that a person of ordinary skill in the art would have been able to practice the prior
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`art without undue experimentation, not that the prior art would solve all problems
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`in the art perfectly such that there would be no need for further advancements.
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`Whether a disclosed apparatus works well enough to accurately detect an
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`obstruction and reduce false positives or negatives to be implemented in a
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`production vehicle is beside the point. Indeed, there is no evidence that the
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`claimed invention of the ’802 patent has ever been implemented in practice, or
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`20
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`
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`whether it would work better or worse than the approach set forth in Itoh and
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`Kinzl.
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`40. Dr. Ehsani’s opinions regarding Itoh and Kinzl are based on patents that
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`describe improvements to Itoh and Kinzl, pointing out limitations that others found
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`with their approach. Ex. 2001, ¶¶ 101-104, 121-27. These subsequent patents
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`seem to confirm that a person of ordinary skill in the art was capable of
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`implementing Itoh and Kinzl, and therefore support enablement of the references.
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`The fact that Itoh and Kinzl may not have solved all practical issues and that the art
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`was able to advance further does not indicate that they were not enabled, according
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`to my understanding of the standard for enablement.
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`(b)
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`Independent Claim 15 and Dependent Claim 16
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`41. Dr. Ehsani contends that Itoh, in view of Kinzl, does not teach or suggest
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`claim 15 on the basis that (1) Itoh and Kinzl do not detect an obstacle based on the
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`obstacle detection threshold along the entire travel path; and (2) Itoh and Kinzl do
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`not teach the claimed “logic unit” according to Dr. Ehsani’s reading of the “logic
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`unit” limitation as a means-plus-function limitation. Ex. 2001, ¶¶ 247-48.
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`(i) Obstacle Detection Along The Travel Path
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`42. As I explained above in Section III.B, a person of ordinary skill in the art in
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`April 1992 would interpret claim 15 to only require monitoring of the object along
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`at least a portion of the entire travel path of the object. Dr. Ehsani has not disputed
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`21
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`
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`that Itoh and Kinzl would satisfy claim 15 if it is read according to the plain
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`language of the claim. Ex. 1003, ¶¶ 138-54.
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`43. Even if Itoh and Kinzl do not disclose detecting obstacle detection along the
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`entire travel path, it would have been obvious for a person to modify Itoh in this
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`manner because it is desirable to detect an obstacle from beginning to the end of
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`the object’s movement, including at the beginning of the travel path. Dr. Ehsani,
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`for instance, acknowledges that “Being able to perform obstacle detection upon
`
`startup is critical to avoid injuring a person that has wedged themselves into a
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`window opening, as the window will contact the person as soon as the window is
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`actuated.” Ex. 2001, ¶ 219. While Dr. Ehsani points to Itoh’s disclosure that there
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`is “remarkable variation at the starting of the motor,” it would have been obvious
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`to a person of ordinary skill in the art to utilize higher threshold values and utilize
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`higher number of past measurements in order to prevent false positives at the
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`beginning of operation. Ex. 2001, ¶ 220. Itoh, for instance, describes that
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`detection accuracy may be improved: “Further, on the occasion where the
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`detecting accuracy of the cycle TP (motor speed) is intended to improve, the
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`method may be adapted so that the cycle of the timer interrupt signal is small, or an
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`average of motor pulse cycle is determined for present motor speed by measuring it
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`m-times.” Ex. 1006 at 10:6-11.
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`22
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`(ii) Logic Unit
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`44. As I explained in my original Declaration, Itoh, in view of Kinzl, teaches or
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`suggests the plain reading of claim 15’s “logic unit for making a comparison
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`between a value representing window or panel speed based on a currently sensed
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`motor speed signal with the calculated obstacle detect threshold, and generating a
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`control output if an obstacle is detected based on said comparison.” Ex. 1003, ¶¶
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`148-153.
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`45. Even if the logic unit is interpreted as means-plus-function, I note that Itoh
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`and Kinzl disclose the basic corresponding structure of “logic unit” according to
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`Dr. Ehsani: the general-purpose processor with programmable memory. Ex. 1006
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`at 7:60-64; Figs. 1, 7. Ex. 1007 at 2:44-60; Fig. 1.
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`46. Dr. Ehsani contends that Itoh, in view of Kinzl, does not teach or suggest
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`this “logic unit” on the basis that Itoh does not
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