UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Paper 23
`Filed: April 3, 2015
`
`
`—————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`—————
`
`WEBASTO ROOF SYSTEMS, INC.
`Petitioner,
`
`v.
`
`UUSI, LLC
`Patent Owner.
`
`—————
`
`Case IPR2014-00650
`Patent 7,579,802
`
`—————
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`Attorney Docket: 130163.231151
`
`
`
`
`
`Paper 23
`Filed: April 3, 2015
`
`
`—————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`—————
`
`WEBASTO ROOF SYSTEMS, INC.
`Petitioner,
`
`v.
`
`UUSI, LLC
`Patent Owner.
`
`—————
`
`Case IPR2014-00650
`Patent 7,579,802
`
`—————
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`Attorney Docket: 130163.231151
`
`
`
`
`
`IPR2014-00650
`
`Patent 7,579,802
`
`Table of Contents
`
`Page
`
`I.
`
`II.
`
`RESPONSE TO PATENT OWNER’S INTRODUCTORY REMARKS ...... 1
`
`CLAIM CONSTRUCTION ............................................................................ 2
`
`A.
`
`B.
`
`C.
`
`“a sensor for measuring a parameter of a motor that varies in response
`to a resistance to motion” (claim 1) ...................................................... 2
`
`“a travel path” (independent claims 7 and 15) ...................................... 2
`
`“in response to a specified input the controller conducts a calibration
`motor energization sequence to determine parameters of object”
`(dependent claim 11) ............................................................................. 3
`
`D.
`
`“a logic unit” (claim 15) ........................................................................ 4
`
`III. THE CHALLENEGED CLAIMS ARE INVALID ........................................ 5
`
`A. Ground 1: Obviousness over Itoh and Kinzl (Claims 15 and 16) ......... 5
`
`B.
`
`C.
`
`Ground 2: Obviousness over Itoh, Kinzl and Jones (Claim 11) ........... 8
`
`Ground 3: Obviousness over Lamm and Itoh ....................................... 8
`
`(a)
`
`Independent Claim 1 ................................................................... 9
`
`(b) Dependent Claim 6 ................................................................... 10
`
`(c)
`
`(d)
`
`Independent Claim 7 and Dependent Claims 8-9 ..................... 11
`
`Independent Claim 15 and Dependent Claim 16 ...................... 12
`
`D. Ground 4: Obviousness over Lamm, Itoh and Duhame (Claim 11) ... 13
`
`E.
`
`Ground 5: Obviousness over Duhame and Kinzl ................................ 13
`
`(e)
`
`(f)
`
`Independent Claim 1 ................................................................. 14
`
`Independent Claim 7 and Dependent Claims 8-9 ..................... 14
`
`i
`
`
`
`IPR2014-00650
`
`Patent 7,579,802
`
`(g) Dependent Claim 11 ................................................................. 15
`
`(h)
`
`Independent Claim 15 and Dependent Claim 16 ...................... 15
`
`IV. CONCLUSION .............................................................................................. 15
`
`
`
`
`
`
`ii
`
`
`
`IPR2014-00650
`
`
`
`Table of Authorities
`
`Patent 7,579,802
`
` Page(s)
`
`Cases
`Amgen Inc. v. Hoechst Marion Roussel, Inc.,
`314 F.3d 1313 (Fed. Cir. 2003) ........................................................................ 6, 9
`
`In re Antor Media,
`689 F.3d 1282 (Fed. Cir. 2012) ........................................................................ 6, 9
`
`Flo Healthcare Solutions, LLC v. Kappos,
`697 F.3d 1367 (Fed. Cir. 2012) ............................................................................ 4
`
`In re Huang,
`100 F.3d 135 (Fed. Cir. 1996) ............................................................................ 10
`
`Impax Labs. v. Aventis Pharms.,
`468 F.3d 1336 (Fed. Cir. 2006) ........................................................................ 6, 9
`
`Lighting World, Inc. v. Birchwood Lighting, Inc.,
`382 F.3d 1354 (Fed. Cir. 2004) ............................................................................ 4
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ........................................................ 3, 4
`
`TiVo, Inc. v. EchoStar Commc’ns Corp.,
`516 F.3d 1290 (Fed. Cir. 2008) ............................................................................ 4
`
`Statutes
`
`35 U.S.C. § 112, ¶6 .................................................................................................... 5
`
`Other Authorities
`
`37 CFR § 42.6(a)(3) ............................................................................................. 9, 14
`
`
`
`iii
`
`
`
`IPR2014-00650
`
`Patent 7,579,802
`
`To try to avoid invalidity, Patent Owner advocates narrow claim
`
`constructions that lack support in the intrinsic record and conflict with Patent
`
`Owner’s prior positions. For instance, Patent Owner’s position that the sensor in
`
`claim 1 cannot be a speed sensor contradicts its infringement position in litigation.
`
`Patent Owner also proposes narrowing the phrase “a travel path” in claims 7 and
`
`15 to “the entire travel path,” which conflicts with the plain broader meaning of the
`
`claim term. Similarly, Patent Owner seeks to narrow claim 15’s “logic unit” by
`
`interpreting it as a means-plus-function limitation even though there is no “means
`
`for” language. In addition, Patent Owner improperly imports limitations into claim
`
`11 based on what Patent Owner admits is an example in the specification. Setting
`
`aside Patent Owner’s incorrect constructions, the claims would have been obvious,
`
`and in many cases remain obvious even under those constructions. While Patent
`
`Owner argues against combining the prior art, those arguments are misdirected at
`
`how well such combinations would operate in a real-world environment.
`
`I.
`
`RESPONSE TO PATENT OWNER’S INTRODUCTORY REMARKS
`
`Patent Owner devotes the first 8 pages of its Response to assertions having
`
`little to do with the merits that appear intended to sway the Board to credit Patent
`
`Owner over Petitioner. Patent Owner’s allegations regarding its background and
`
`contributions are unsupported. For example, there is no evidence that its patent
`
`was implemented or would perform acceptably “in real world automobile
`
`1
`
`
`
`IPR2014-00650
`
`Patent 7,579,802
`
`scenarios” (Paper 20 at 3). Ex. 1023 at 29:1-22, 116:5-12, 116:24-117:3, 118:17-
`
`119:3. Patent Owner criticizes Dr. Toliyat, but experience in designing automotive
`
`sunroof or window lift system is not needed to understand the patent, as Dr. Ehsani
`
`admitted. Ex. 1024 at 282:8-22. Dr. Ehsani could not answer the same questions
`
`about production details, and criticized the questions as irrelevant. Id. at 287:6-
`
`288:2, 293:14-21, 297:7-298:13. Dr. Toliyat is well-qualified to address the issues
`
`in this proceeding. He is an expert in control systems, such as those used in
`
`automotive vehicles. See Ex. 1004. He is a distinguished lecturer for the IEEE
`
`Vehicular Technology Society and has authored numerous journal papers, received
`
`many grants, and spoken at several seminars in this field. Ex. 1022, ¶¶ 6-8.
`
`II. CLAIM CONSTRUCTION
`
`A.
`
`“a sensor for measuring a parameter of a motor that varies in
`response to a resistance to motion” (claim 1)
`
`Patent Owner construes this limitation to require a sensor that measures a
`
`magnitude of motor current and “excludes a mere speed or position sensor.” Paper
`
`20 at 8-9. While this construction does not avoid invalidity, Patent Owner took the
`
`opposite position to assert infringement in litigation. See Ex. 1026 (limitation met
`
`where “[t]he hall effect sensors monitor the speed and position of the window”).
`
`B.
`
`“a travel path” (independent claims 7 and 15)
`
`Patent Owner improperly limits the claim term “a travel path” to “the entire
`
`travel path.” Paper 20 at 22-23, 44-45. The indefinite article “a” is clearly broader
`
`2
`
`
`
`IPR2014-00650
`
`Patent 7,579,802
`
`than the word “entire.” Furthermore, claim 15 cannot be interpreted as Patent
`
`Owner proposes because it expressly recites “monitoring at least a part of the
`
`travel path of the window or panel.” Ex. 1022, ¶ 16. This reinforces that the
`
`claims only require monitoring movement along some travel path, which can be
`
`less than the entire path of travel. The specification also describes embodiments
`
`that perform obstacle detection only along a post-startup portion of the travel path.
`
`Ex. 1001 at 16:4-17:44; Ex. 1022, ¶ 18. Patent Owner argues that performing
`
`obstacle detection along the entire travel path is desirable (Paper 20 at 22), but it is
`
`improper to read a patent’s objectives into broader claim language. Phillips v.
`
`AWH Corp., 415 F.3d 1303, 1326-27 (Fed. Cir. 2005) (en banc); Ex. 1022, ¶ 17.
`
`Patent Owner identifies no other intrinsic support.
`
`C.
`
`“in response to a specified input the controller conducts a
`calibration motor energization sequence to determine parameters
`of object” (dependent claim 11)
`
`Patent Owner’s construction adds the following underlined words to claim
`
`11: “in response to a single specified input the controller conducts a calibration
`
`motor energization sequence by moving an object from fully closed position to a
`
`fully open position and back to the fully closed position to determine movement
`
`range parameters of [the] object.” Paper 20 at 33. There is no basis for adding in
`
`those requirements. The term “a specified input” is broad enough to cover, e.g.,
`
`multiple button presses, that together constitute the “specified input,” and it is
`
`3
`
`
`
`IPR2014-00650
`
`Patent 7,579,802
`
`well-established that “the words ‘a’ or ‘an’ in a patent claim carry the meaning of
`
`‘one or more.’” TiVo, Inc. v. EchoStar Commc’ns Corp., 516 F.3d 1290, 1303
`
`(Fed. Cir. 2008); Ex. 1022, ¶ 20. Patent Owner admits relying on an “exemplary
`
`description” (Paper 20 at 31), which actually describes three user interactions to
`
`start calibration, as Dr. Ehsani admitted. Ex. 1001 at 12:17-20 (“[1] The ignition is
`
`turned OFF and [2] within five seconds the OPEN switch is pressed and [3] the
`
`ignition is switched ON.”); Ex. 1022, ¶¶ 21-23; Ex. 1023 at 147:7-15.
`
`Patent Owner relies on this same “exemplary description” to require the
`
`specific sequence of moving an object from fully closed position to a fully open
`
`position and back to the fully closed position. This attempt to read a specific
`
`sequence into broader claim language based on an example in the specification
`
`should be rejected. Phillips, 415 F.3d 1323; Ex. 1022, ¶ 23. For the same reason,
`
`the claimed “parameters” should not be limited to “movement range” parameters.
`
`D.
`
`“a logic unit” (claim 15)
`
`Patent Owner contends that the “logic unit” should be construed as a means-
`
`plus-function limitation. Paper 20 at 45. The presumption that a term without the
`
`word “means” is not a means-plus-function term “is a strong one that is not readily
`
`overcome.” Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358
`
`(Fed. Cir. 2004). To overcome it, the claim language must be “devoid of anything
`
`that can be construed as structure.” Flo Healthcare Solutions, LLC v. Kappos, 697
`
`4
`
`
`
`IPR2014-00650
`
`Patent 7,579,802
`
`F.3d 1367, 1374 (Fed. Cir. 2012). This is not true here because logic units were
`
`well-known structures by 1992. Ex. 1022 at ¶¶ 26-28 (citing Ex. 1027 at 413, Ex.
`
`1028 at 391, Ex. 1029 at 2:67-3:3, and Ex. 1030 at 4:30-35).
`
`Even if “logic unit” were interpreted as a means-plus-function limitation,
`
`Patent Owner’s construction is wrong because it is not tied to “the corresponding
`
`structure, material, or acts described in the specification and equivalents” (35
`
`U.S.C. § 112, ¶6), which according to Patent Owner’s expert, are the ’802 patent’s
`
`(1) Hard and/or Soft Obstruction Detection; (2) Hard Obstruction Detection; and
`
`(3) Soft Obstruction Detection. Ex. 1001 at 22:21-23:46; Ex. 1023 at 161:5-22.
`
`These algorithms use current and pulse period values as inputs, but Patent Owner’s
`
`construction improperly does not require both of them. Ex. 2022, ¶ 30.
`
`III. THE CHALLENEGED CLAIMS ARE INVALID
`
`A. Ground 1: Obviousness over Itoh and Kinzl (Claims 15 and 16)
`
`The Board correctly noted that “it would be entirely natural for a person of
`
`ordinary skill in the art to combine these references, as proposed in the Petition.”
`
`Paper 14 at 14-15; Ex. 1022, ¶ 32. Patent Owner fails to present a basis for
`
`departing from this conclusion. Patent Owner argues that Itoh and Kinzl cannot be
`
`combined because Kinzl uses a Hall-effect sensor whereas Itoh utilizes a
`
`commutation pulse counter. Paper 20 at 52. This argument is misplaced because
`
`Kinzl’s Hall-effect sensor is not being relied upon in the combination. Ex. 1022, ¶
`
`5
`
`
`
`IPR2014-00650
`
`Patent 7,579,802
`
`34; Paper 14 at 14. Moreover, as the Board stated, “both Itoh and Kinzl disclose
`
`indirectly sensing motorized window position and obstacle encounters by sensing
`
`pulses generated by rotation of the window’s drive motor,” and thus it would have
`
`been obvious to use Kinzl’s Hall-effect sensor in Itoh’s apparatus. Paper 14 at 14-
`
`15; Ex. 1022, ¶¶ 35-36. A person of ordinary skill would have been motivated to
`
`substitute Itoh’s counter—which Patent Owner’s expert states is unreliable (Ex.
`
`2001, ¶ 231)—with Kinzl’s Hall-effect sensor to improve accuracy. Id., ¶ 36.
`
`Patent Owner makes a cursory argument that Itoh and Kinzl are not enabled
`
`(Paper 20 at 58-59) but fails to acknowledge the presumption that a prior art
`
`reference is enabled. In re Antor Media, 689 F.3d 1282, 1287-88 (Fed. Cir. 2012);
`
`Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003)
`
`(both cited in Captioncall L.L.C. v. Ultratec, Inc., IPR2013-00540, Paper 78 (Mar.
`
`3, 2015). Patent Owner provides no basis for overcoming this presumption
`
`because Patent Owner only disputes how well the combination would work, which
`
`is immaterial. Impax Labs. v. Aventis Pharms., 468 F.3d 1336, 1383 (Fed. Cir.
`
`2006) (“proof of efficacy is not required for a prior art reference to be enabling for
`
`purposes of anticipation”). Furthermore, enablement is not even necessary for
`
`obviousness. Amgen, 314 F.3d at 1357 (“Under § 103, however, a reference need
`
`not be enabled; it qualifies as a prior art, regardless, for whatever is disclosed
`
`therein.”). In any event, Dr. Toliyat has addressed Dr. Ehsani’s conclusory
`
`6
`
`
`
`IPR2014-00650
`
`Patent 7,579,802
`
`arguments, and has explained that Itoh and Kinzl are enabled because they describe
`
`in detail an algorithm that can be used for obstacle detection, the components to be
`
`used, and how those components operate together. Ex. 1022, ¶¶ 37-40.
`
`Patent Owner relies on its improper claim constructions to argue against
`
`obviousness of claim 15, asserting that Itoh and Kinzl do not (1) detect an obstacle
`
`along the entire travel path or (2) teach a “logic unit” under Patent Owner’s means-
`
`plus-function construction. Paper 20 at 49-51. Even if Patent Owner’s
`
`constructions were adopted, the conclusion of obviousness would not change. It
`
`would have been obvious to modify Itoh to detect obstructions along the entire
`
`path of travel, and Dr. Ehsani admits that this was a desirable objective. Ex. 1022,
`
`¶ 43; Ex. 2001, ¶ 219. Even if there were variations at the beginning of device
`
`operation, it was well-known that higher threshold values and/or higher numbers of
`
`past measurements could be used to avoid false positives. Ex. 1022, ¶ 43; Ex.
`
`1006 at 10:6-11; Ex. 1008 at 2-3. Itoh, in view of Kinzl, also disclosed a “logic
`
`unit” under Patent Owner’s means-plus-function construction. Itoh and Kinzl
`
`disclosed a general-purpose processor with memory, which is the basic structure
`
`required under Patent Owner’s construction. Ex. 1006 at 7:60-64; Figs. 1, 7; Ex.
`
`1009 at 2:44-61; Fig. 1. Contrary to Patent Owner’s argument, Itoh also described
`
`averaging speed measurements and comparing the running average to a threshold.
`
`Ex. 1006 at 9:37-11:7, 10:33-11:15; Ex. 1022, ¶ 46.
`
`7
`
`
`
`IPR2014-00650
`
`Patent 7,579,802
`
`B. Ground 2: Obviousness over Itoh, Kinzl and Jones (Claim 11)
`
`Patent Owner’s argues against obviousness based on its improper
`
`construction requiring a single specified input and that the controller perform
`
`calibration specifically by moving the object from a fully closed position to a fully
`
`open position and back to the fully closed position. As discussed in Section II.C
`
`supra, Patent Owner’s construction should be rejected. Patent Owner identifies no
`
`distinction between the combination and claim 11 as interpreted by Petitioner.
`
`Patent Owner also contends that Itoh and Kinzl cannot be combined with
`
`Jones on the basis that, “while the motor driving the drum in Jones needs to vary
`
`its speed to move the roller garage door at a constant speed, the speed of the motor
`
`driving the window need not be changed to move the window at a constant speed.”
`
`Paper 20 at 35. This difference is irrelevant to calibration, which is the key
`
`teaching of Jones. Ex. 1022, ¶ 49. Jones’s calibration approach calibrated the
`
`“limits of door travel.” Ex. 1010 at 5:21-25. It would have been obvious to
`
`modify Itoh and Kinzl by adding calibration based on Jones, as Itoh and Jones
`
`determined the position and the limits of door travel using pulse counts. Ex. 1006
`
`at 5:6-10, 8:33-48; 9:16-34; Ex. 1010 at 5:61-6:26; Ex. 1022, ¶ 50.
`
`C. Ground 3: Obviousness over Lamm and Itoh
`
`Patent Owner states in one sentence that Lamm and Itoh cannot be combined
`
`(Paper 20 at 13, 21, 30), citing Dr. Ehsani’s testimony, which constitutes
`
`8
`
`
`
`IPR2014-00650
`
`Patent 7,579,802
`
`impermissible incorporation by reference. 37 CFR § 42.6(a)(3); Blackberry Corp.
`
`v. Mobilemedia Ideas LLC, IPR2013-00016, Paper No. 32 at 21 (Feb. 25, 2014).
`
`Even if his testimony were considered, he fails to explain why it would not have
`
`been obvious to implement the FIFO-like memory, programmable controller, and
`
`clock taught by Itoh in practicing Lamm. Ex. 2001, ¶¶ 90-91. It would have been
`
`obvious to a person of ordinary skill to incorporate these well-known components
`
`into Lamm’s obstacle detection apparatus to increase system flexibility, add
`
`capabilities, and reduce costs. Ex. 1022, ¶¶ 58-61.
`
`Patent Owner again cursorily asserts lack of enablement. Paper 20 at 58-59.
`
`As stated above, Patent Owner ignores the presumption that the reference is
`
`enabled, and that enablement is unnecessary for obviousness. In re Antor Media,
`
`689 F.3d at 1287-88; Amgen, 314 F.3d at 1355-57. Patent Owner disputes how
`
`well Lamm and Itoh would work “in production vehicles” (Paper 20 at 58), which
`
`is irrelevant. Impax, 468 F.3d at 1383. Regardless, Dr. Toliyat has explained that
`
`Lamm and Itoh are enabled, and the evidence cited by Dr. Ehsani reinforces that
`
`they could be implemented without undue experimentation. Ex.1022, ¶¶ 64-66.
`
`(a)
`
`Independent Claim 1
`
`Patent Owner’s only argument against obviousness relies on limiting the
`
`sensor, contrary to its infringement position, to a “sensor that measures a
`
`magnitude of motor current.” Paper 20 at 12. Even if this construction were
`
`9
`
`
`
`IPR2014-00650
`
`Patent 7,579,802
`
`adopted, it would have been obvious to modify Lamm and Itoh to use a sensor that
`
`measures current magnitude. Ex. 1022, ¶ 68. Lamm left the use of a sensor to take
`
`current measurements as a design choice, and such sensors were well-known by
`
`April 1992. Ex. 1022, ¶ 68; Ex. 1013 at 1:46-55; Ex. 1014. The basic approach to
`
`obstacle detection disclosed in Lamm would have remained the same: When
`
`values of speed measurements are replaced with the measurements of current,
`
`Lamm’s controller deactivates the motor based on a most recent measurement of
`
`current and the immediate past measurement values of current stored in the
`
`memory obtained during a present run through the motor driven element range of
`
`motion, as required by claim 1. Ex. 1022, ¶¶ 71-72.
`
`(b) Dependent Claim 6
`
`Patent Owner’s main argument against obviousness is that Lamm and Itoh
`
`do not explicitly recite use of all immediate past measurements taken within 40 ms
`
`(Paper 20 at 16-17), but express disclosure is not required. The claimed range is
`
`unpatentable unless it produces some new and unexpected benefit that is different
`
`in kind. In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996) (Patentee’s modification
`
`“may still not be patentable if the modification was within the capabilities of one
`
`skilled in the art, unless the claimed ranges ‘produce a new and unexpected result
`
`which is different in kind and not merely in degree from the results of the prior
`
`art.’”) (citation omitted). The Examiner applied this principle in rejection during
`
`10
`
`
`
`IPR2014-00650
`
`Patent 7,579,802
`
`prosecution, and the applicant did not respond on this point. Ex. 1002 at 270; Ex.
`
`1022, ¶ 78. Indeed, there is no evidence that the 40 millisecond interval is critical.
`
`As the Board has recognized, the patent does not describe any particular advantage
`
`to using the 40 ms time window. IPR2014-00416, Paper 12 at 17. Dr. Ehsani’s
`
`basis for concluding that 40 ms is desirable is that this is what is claimed; thus, he
`
`relies on circular reasoning. Ex. 1023 at 86:8-22, 87:15-88:20.
`
`The use of all immediate past measurements taken within a 40 ms interval
`
`would have been an obvious design choice. Ex. 1022, ¶¶ 76-81. Itoh disclosed
`
`that when measurements were taken at maximum speed (1.2 ms), 33 measurements
`
`would be taken within 40 ms, as the Board has recognized and Dr. Ehsani
`
`admitted. IPR2014-00416, Paper 12 at 17; Ex. 1006 at 9:63-68; Ex. 1022, ¶ 75;
`
`Ex. 2001, ¶ 138. Itoh leaves the number of immediate past measurements to use as
`
`a design choice, and it would have been obvious to use all the immediate past
`
`measurements taken within 40 ms to increase the accuracy of obstruction
`
`detection. Ex. 1022, ¶¶ 70, 80; Ex. 1006 at 9:63-68. For example, a person of
`
`ordinary skill could have configured the controller to deactivate the motor if no
`
`signal was received in 40 ms. Ex. 1022, ¶ 81. This was a well-known approach
`
`and would have ensured that all measurements were obtained within 40 ms. Id.
`
`(c)
`
`Independent Claim 7 and Dependent Claims 8-9
`
`Patent Owner argues that Lamm “pre-specifies thresholds” and therefore
`
`11
`
`
`
`IPR2014-00650
`
`Patent 7,579,802
`
`does not disclose an obstacle detection algorithm performed during normal
`
`operations. Paper 20 at 26. However, Patent Owner’s view of Lamm does not
`
`affect the analysis. Ex. 1022, ¶¶ 82-83. Even if Lamm’s so-called “threshold” was
`
`only determined during a clamping test, this threshold was adjusted during a
`
`present run based on immediate past speed measurements St-1 and St-2 to perform
`
`obstacle detection using the following comparison.: St > α + (2 * St-1 – St-2). Id.
`
`Patent Owner also tries to distinguish Lamm on the basis that it disclosed
`
`calculating derivatives with respect to distance rather than time. Paper 20 at 28-29.
`
`Again, this distinction is irrelevant to because nothing in claim 7 requires a time-
`
`based versus distance-based derivative. Ex. 1022, ¶ 84. Lamm still “calculates an
`
`obstacle detect threshold based on motor speed of movement detected during a
`
`present run of said motor driven element,” as required by claim 7.
`
`(d)
`
`Independent Claim 15 and Dependent Claim 16
`
`Patent Owner’s argument against obviousness is premised on incorrectly
`
`requiring obstacle detection along the entire travel path and construing the “logic
`
`unit” as a means-plus-function limitation. Paper 20 at 53-56. Even if Patent
`
`Owner’s constructions were adopted, Lamm teaches, or at the very least suggests,
`
`that the object is monitored along the entire travel path. Ex. 1022, ¶¶ 88-89.
`
`Lamm considers the “entire path of travel,” and one embodiment divides the
`
`“entire path of travel” into subregions for obstacle monitoring. Id.; Ex. 1008 at 2.
`
`12
`
`
`
`IPR2014-00650
`
`Patent 7,579,802
`
`Furthermore, it would have been obvious to monitor along the entire path of travel
`
`to increase safety, as Dr. Ehsani acknowledges. Ex. 1022, ¶ 89; Ex. 2001, ¶ 219.
`
`Even under Patent Owner’s incorrect means-plus-function construction of
`
`the “logic unit,” Lamm, in view of Itoh, also meets this limitation. As stated
`
`above, Itoh discloses a general-purpose processor with memory and teaches
`
`averaging speed measurements from the current run and comparing the running
`
`average to a threshold. Ex. 1006 at 9:37-11:7, 10:33-11:15; Ex. 1022, ¶¶ 46, 94.
`
`D. Ground 4: Obviousness over Lamm, Itoh and Duhame (Claim 11)
`
`Patent Owner’s relies on its incorrect construction, and further requires a
`
`“controller with a stored program” and that the calibration sequence be automatic.
`
`Paper 20 at 37-38. Claim 11 imposes none of these requirements, and casting them
`
`aside, claim 11 would have been obvious. Ex. 1003, ¶¶ 222-27; Ex. 1022, ¶¶ 101-
`
`102. Patent Owner also contends that Duhame cannot be combined with Lamm’s
`
`and Itoh’s automobile windows because Duhame relates to garage doors. Paper 20
`
`at 39-44. However, Lamm describes that obstacle detection methods can be
`
`implemented to control motors in various contexts, including roller door and motor
`
`vehicle applications. Ex. 1008 at 2; Ex. 1022, ¶ 100. Combining the references
`
`would only have involved the use of known techniques to improve a similar device
`
`in the entirely expected way. Ex. 1022, ¶ 100; KSR, 550 U.S. at 420-21.
`
`E. Ground 5: Obviousness over Duhame and Kinzl
`
`13
`
`
`
`IPR2014-00650
`
`Patent 7,579,802
`
`Patent Owner again argues in a single sentence that the references cannot be
`
`combined (Paper 20 at 15, 25, 44, and 57), citing Dr. Ehsani’s testimony, which
`
`constitutes impermissible incorporation by reference. 37 CFR § 42.6(a)(3);
`
`Blackberry, IPR2013-00016, Paper No. 32 at 21. Even if considered, Dr. Ehsani’s
`
`declaration fails to explain why it would not have been obvious to implement
`
`Duhame’s obstacle detection in an automotive window, as discussed above.
`
`(e)
`
`Independent Claim 1
`
`Contrary to its infringement position, Patent Owner relies on confining the
`
`claimed sensor to a “sensor that measures a magnitude of motor current.” Paper 20
`
`at 12. Even if this construction were adopted, it would not alter the conclusion
`
`because it would have been obvious to modify Duhame to use a sensor that
`
`measures current, which was well-known in the art by April 1992. Ex. 1022, ¶¶
`
`108-09; Ex. 1013 at 1:46-55; Ex. 1014. Duhame’s approach to obstacle detection
`
`would be unchanged: Duhame would deactivate the motor based on a most recent
`
`measurement of current (Cx) and the immediate past measurements of current
`
`stored in the memory obtained during a present run (averaged as Cx-1) through the
`
`motor driven element range of motion, as required by claim 1. Id. at ¶¶ 110-11.
`
`(f)
`
`Independent Claim 7 and Dependent Claims 8-9
`
`Even if the Board were to adopt Patent Owner’s improper construction
`
`requiring obstacle detection along the entire travel path, Duhame, in view of Kinzl,
`
`14
`
`
`
`IPR2014-00650
`
`Patent 7,579,802
`
`satisfies the claim. Ex. 1022, ¶ 114-15. Patent Owner argues that Duhame would
`
`not accurately detect an obstruction that is less than an inch in width during
`
`operation, but there is no dispute that Duhame’s obstacle detection algorithm
`
`would nonetheless operate during the entire path of travel. Id., ¶ 113.
`
`(g) Dependent Claim 11
`
`Patent Owner relies on the same arguments against Duhame raised in the
`
`context of Itoh, Lamm, and Duhame, which are misplaced as explained above.
`
`(h)
`
`Independent Claim 15 and Dependent Claim 16
`
`Patent Owner again contends that Duhame, in view of Kinzl, fails to monitor
`
`the object along the entire travel path, and Petitioner has responded to that
`
`argument above. Patent Owner also argues that Duhame, in view of Kinzl, does
`
`not teach the claimed “logic unit” under Patent Owner’s improper means-plus-
`
`function interpretation. Paper 20 at 56-57. This is incorrect. Duhame disclosed a
`
`general-purpose computer with programmable memory. Ex. 1009 at 6:15-27; Fig.
`
`1; Ex. 1022, ¶ 121. Duhame described that his controller “preferably averages a
`
`number of pulses from Hall-effect sensors 95 to provide a more stable indication of
`
`speed.” Ex. 1009 at 10:30-35; Ex. 1022, ¶ 123. Therefore, Duhame disclosed the
`
`“running average” that Patent Owner appears to contend was missing in Duhame.
`
`IV. CONCLUSION
`Claims 1, 6-9, 11, and 15-16 should be declared unpatentable and canceled.
`
`15
`
`
`
`IPR2014-00650
`
`
`
`Patent 7,579,802
`
`Dated: April 3, 2015
`
`Respectfully submitted,
`
`
`
`
`/Charles H. Sanders/
`Charles H. Sanders
`Reg. No.: 47,053
`
`
`
`
`
`IPR2014-00650
`
`Patent 7,579,802
`
`
`
`Exhibit
`No.
`Ex. 1001
`Ex. 1002
`Ex. 1003
`Ex. 1004
`
`Ex. 1005
`Ex. 1006
`Ex. 1007
`Ex. 1008
`
`Ex. 1009
`Ex. 1010
`Ex. 1011
`Ex. 1012
`
`Ex. 1013
`Ex. 1014
`Ex. 1015
`Ex. 1016
`Ex. 1017
`
`Ex. 1018
`
`Ex. 1019
`Ex. 1020
`Ex. 1021
`
`Ex. 1022
`Ex. 1023
`Ex. 1024
`Ex. 1025
`Ex. 1026
`Ex. 1027
`Ex. 1028
`Ex. 1029
`
`Appendix – List of Exhibits
`
`Description
`U.S. Patent No. 7,579,802 to Boisvert et al.
`Prosecution History of U.S. Patent No. 7,579,802
`Declaration of Hamid A. Toliyat, Ph.D.
`Appendix A to the Declaration of Hamid A. Toliyat, Ph.D.: Dr.
`Toliyat’s curriculum vitae.
`49 CFR Part 571.118 (April 16, 1991)
`U.S. Patent No. 4,870,333 to Itoh et al.
`U.S. Patent No. 4,468,596 to Kinzl
`Translation of German Published Patent Application DE4000730A1
`to Lamm et al.
`U.S. Patent No. 5,218,282 to Duhame
`U.S. Patent No. 4,831,509 to Jones et al.
`49 CFR Part 571.118 (December 2, 1971)
`Safety Commission Publishes Final Rules for Garage Door Openers,
`U.S. Consumer Product Safety Commission (Dec. 3, 1992)
`U.S. Patent No. 5,334,876 to Washeleski et al.
`U.S. Patent No. 3,513,374 to Koment
`U.S. Patent No. 3,651,389 to Ito et al.
`U.S. Patent No. 6,064,165 to Boisvert et al.
`German Published Patent Application DE4000730A1 to Lamm et
`al.
`Certification of Translation of German Published Patent Application
`DE4000730A1 to Lamm et al.
`Microsoft Press Computer Dictionary 56 (2nd ed. 1994)
`Webster’s Ninth New Collegiate Dictionary 185 (9th 1988)
`American Heritage Dictionary of the English Language 1771 (3rd
`ed. 1992)
`Reply Declaration of Dr. Toliyat
`Transcript of the Deposition of Dr. Ehsani (March 13, 2015)
`Transcript of the Deposition of Dr. Ehsani (March 14, 2015)
`U.S. Patent No. 4,454,589 to Miller
`Excerpt of UUSI’s Infringement Contentions of the ’802 Patent
`The Computer Glossary (4th ed. 1989)
`The Illustrated Dictionary of Electronics (6th ed. 1994)
`U.S. Patent No. 5,121,386 to Wolfsgruber, et al.
`
`
`
`
`
`IPR2014-00650
`
`Patent 7,579,802
`
`Exhibit
`No.
`Ex. 1030
`Ex. 1031
`
`Ex. 1032
`
`Ex. 1033
`
`Ex. 1034
`
`Ex. 1035
`
`Ex. 1036
`
`
`
`Description
`U.S. Patent No. 4,463,426 to Caddick, et al.
`Exhibit 1 of the Deposition of Dr. Ehsani (March 13, 2015),
`handwritten notes by Dr. Ehsani
`Exhibit 2 of the Deposition of Dr. Ehsani (March 13, 2015),
`handwritten notes by Dr. Ehsani
`Exhibit 3 of the Deposition of Dr. Ehsani (March 14, 2015),
`Patent Owner’s Preliminary Response in IPR2014-00649
`Exhibit 4 of the Deposition of Dr. Ehsani (March 14, 2015), excerpt
`of U.S. Patent 7,548,037 with handwritten notes by Dr. Ehsani
`Exhibit 5 of the Deposition of Dr. Ehsani (March 14, 2015),
`U.S. Patent 7,077,462 to De Gaillard
`Exhibit 6 of the Deposition of Dr. Ehsani (March 14, 2015),
`handwritten notes by Dr. Ehsani
`
`
`
`
`
`IPR2014-00650
`
`Patent 7,579,802
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Petitioner’s
`
`Reply to Patent Owner’s Response and the exhibits thereto (Exhibits 1022-1036)
`
`were served on April 3, 2015, by email directed to the attorneys of record for
`
`Patent Owner at the following addresses:
`
`Monte L. Falcoff (mlfalcoff@hdp.com)
`Hemant M. Keskar (hkeskar@hdp.com)
`HARNESS, DICKEY & PIERCE, P.L.C.
`
`Dated: April 3, 2015
`
`
`
`
`
`
`
`
`
`
`By:
`
`
`
`/Charles H. Sanders/
`Charles H. Sanders
`Reg. No.: 47,053
`
`
`
`
`
`
`
`
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
