Trials@uspto.gov
`571-272-7822
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`Paper No. 32
`Date: October 13, 2015
`
`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 B2
`____________
`
`
`
`Before GLENN J. PERRY, HYUN J. JUNG, and JASON J. CHUNG,
`Administrative Patent Judges.
`
`
`CHUNG, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`571-272-7822
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`
`
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`Paper No. 32
`Date: October 13, 2015
`
`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 B2
`____________
`
`
`
`Before GLENN J. PERRY, HYUN J. JUNG, and JASON J. CHUNG,
`Administrative Patent Judges.
`
`
`CHUNG, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`IPR2014‐00650
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`Patent 7,579,802 B2
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`INTRODUCTION
`I.
`A. Procedural Background
`
`
`
`Webasto Roof Systems, Inc. (“Petitioner”), filed a Corrected Petition
`(Paper 4, “Pet.”) to institute an inter partes review of claims 1, 6–9, 11, 15,
`and 16 of U.S. Patent No. 7,579,802 (Ex. 1001, “the ’802 patent”) pursuant
`to 35 U.S.C. §§ 311–319.
`UUSI, LLC (“Patent Owner”) filed a Preliminary Response. Paper 9.
`On October 17, 2014, we instituted review as to claims 1, 6–9, 11, 15, and
`16 of the ’802 patent and instituted trial on five grounds of unpatentability as
`set forth below. Paper 14 (“Dec. on Inst.”).
`
`
`Grounds
`§ 103(a)
`
`§ 103(a)
`§ 103(a)
`
`Reference
`Lamm1 and Itoh2
`
`Itoh, Kinzl3, and Jones4
`Duhame5 and Kinzl
`
`Claims
`1, 6–9, 15, and
`16
`11
`1, 7–9, 11, 15,
`and 16
`11
`15 and 16
`
`§ 103(a)
`§ 103(a)
`
`Lamm, Itoh, and Duhame
`Itoh and Kinzl
`
`
`Patent Owner filed a Patent Owner’s Response (Paper 20, “PO
`Resp.”), and Petitioner filed a Reply (Paper 23, “Reply”).
`
`
`1 DE 40 00 730 A1 published Aug. 1, 1991 (Ex. 1008 (translation); Ex. 1017
`(original); Ex. 1018 (certification), “Lamm”).
`2 U.S. Patent No. 4,870,333 issued Sept. 26, 1989 (Ex. 1006, “Itoh”).
`3 U.S. Patent No. 4,468,596 issued Aug. 28, 1984 (Ex. 1007, “Kinzl”).
`4 U.S. Patent No. 4,831,509 issued May 16, 1989 (Ex. 1010, “Jones”).
`5 U.S. Patent No. 5,218,282 issued June 8, 1993 (Ex. 1009, “Duhame”).
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`In addition, Petitioner filed a Motion to Exclude (Paper 25,
`“Motion”), seeking to exclude certain of Patent Owner’s evidence in
`Exhibits 2001, 2004, 2005, 2007–09, 2013, 2014, 2018, 2032, and 2033.
`Patent Owner opposed (Paper 27, “Opp.”) Petitioner’s Motion to
`Exclude. We heard Oral Argument on June 29, 2015. Paper 30, “Tr.”
`
`B. Related Matters
`
`
`
`Petitioner indicates that the ’802 patent is being asserted in: UUSI,
`LLC v. Robert Bosch LLC, No. 2:13-cv-10444, filed in the United States
`District Court for the Eastern District of Michigan, on February 4, 2013; and
`UUSI, LLC v. Webasto Roof Sys., Inc., No. 2:13-cv-11704, filed in the
`United States District Court for the Eastern District of Michigan, on April
`15, 2013. Pet. 1.
`The ’802 patent belongs to a family of patents involved in multiple
`inter partes reviews including IPR2014-00416, IPR2014-00417, IPR2014-
`00648, IPR2014-00649, and IPR2014-00650.
`
`C. Summary of Conclusions
`
`In this Final Written Decision, issued pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73, we deny Patent Owner’s Motion to Exclude and we
`determine that Petitioner has demonstrated by a preponderance of the
`evidence that all claims for which trial was instituted, claims 1, 6–9, 11, 15,
`and 16, are unpatentable.
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`II. THE ’802 PATENT (Ex. 1001)
`The ’802 patent describes a system and method for sensing an
`obstruction in the travel path of a moveable panel, such as a window or
`sunroof of a vehicle. See Ex. 1001, Abstract, 1:32–57 (Background). Figure
`1 is reproduced below:
`
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`
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`Figure 1 is a schematic of an exemplary actuator safety feedback control
`system 1. Id. at 2:26–27, 65–66. Controller 2 monitors and controls
`movement of a motor driven panel. Id. at 2:65–3:5. Motor drive outputs 7a
`and 7b control whether the motor (not shown in Figure 1) drives the panel in
`a forward or a reverse direction. Id. at 3:38–39. Controller 2 can sense
`obstacles in the panel’s path in various ways, including a paired infrared
`emitter and detector disposed along the panel’s path (id. at 3:63–4:53), a
`motor current monitor (id. at 5:53–57, 7:26–8:3), and other motor monitors
`(id. at 11:9–32).
`Independent claim 7, reproduced below, is illustrative.
`7. Apparatus for controlling activation of a motor for
`moving an object along a travel path and de-activating the
`motor if an obstacle is encountered by the object comprising:
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`a) a movement sensor for monitoring movement of
`the object as the motor moves said object along a
`travel path;
`b) a switch for controlling energization of the
`motor with an energization signal; and
`c) a controller including an interface coupled to the
`switch for controllably energizing the motor and
`said interface additionally coupling the controller
`to the movement sensor for monitoring signals
`from said movement sensor; said controller
`comprising a stored program that:
`i) determines motor speed of movement from an
`output signal from the movement sensor;
`ii) calculates an obstacle detect threshold based on
`motor speed of movement detected during a
`present run of said motor driven element;
`iii) compares a value based on currently sensed
`motor speed of movement with the obstacle detect
`threshold; and
`iv) outputs a signal from the interface to said
`switch for stopping the motor if the comparison
`based on currently sensed motor movement
`indicates the object has contacted an obstacle.
`
`III. CLAIM CONSTRUCTION
`
`The ’802 patent is now expired.6 In an inter partes review, the proper
`claim construction standard in an expired patent is set forth in Phillips v.
`AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See In re Rambus
`Inc., 694 F.3d 42, 46 (Fed. Cir. 2012) (“[T]he Board’s review of the claims
`of an expired patent is similar to that of a district court’s review.”). The
`district court’s standard is to give claim terms their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art in the
`
`6 The ’802 patent expired in November 2014.
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`context of the entire patent disclosure. Thorner v. Sony Comput. Entm’t Am.
`LLC, 669 F.3d 1362, 1365-66 (Fed. Cir. 2012). We construe the terms
`below in accordance with that standard.
`A. “a sensor for measuring a parameter of a motor . . . that varies in
`response to a resistance to motion” (claim 1)
`
`Patent Owner would have us limit the term “a sensor for measuring a
`parameter of a motor . . . that varies in response to a resistance to motion”
`(claim 1) to “a sensor that measures a magnitude of motor current.” PO
`Resp. 12. We disagree.
`Patent Owner notes a supposedly claim-limiting prosecution history in
`which Applicant argued that the sensor includes an “operational amplifier
`that amplifies a voltage across a current-measuring resistor.” PO Resp. 9–
`10. However, we do not find any clear disavowal in the prosecution history
`that would limit the plain and ordinary meaning of the disputed term.
`Patent Owner also finds support for its proposed narrow construction
`in the Specification, which states “motor current is the primary measured
`parameter of immediate importance for both hard and soft obstacle
`detection” (emphasis added) and “motor current” denotes magnitude. Id. at
`11 (citing Ex. 1001, 15:66–16:3, 18:35–37). The Specification of the
`’802 patent states: “obstacle detection via motor current sensing or current
`sensing and speed sensing means becomes the remaining reliable backup
`method of detecting an obstacle” (emphasis added). Ex. 1001, 4:12–14. We
`are not persuaded to import this narrowing limitation from the Specification
`based on the examples argued.
`Patent Owner further argues that the doctrine of claim differentiation
`limits the sensor of claim 1 to a “current amplitude sensor,” whereas “a
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`movement sensor” recited in claim 7 embraces a “Hall-effect sensor that
`senses movement of the motor shaft.” PO Resp. 11–12.
`Although the doctrine of claim differentiation creates a presumption
`that the limitations in claims 1 and 7 are different in scope, this presumption
`can be overcome by written description or prosecution history. See
`Seachange Int’l, Inc. v. C-COR Inc., 413 F.3d 1361, 1369 (Fed. Cir. 2005).
`As discussed supra, the ’802 patent Specification describes “obstacle
`detection via motor current sensing or current sensing and speed sensing
`means becomes the remaining reliable backup method of detecting an
`obstacle” (emphasis added). Moreover, the Specification does not include a
`special definition, or a disavowal.
`Accordingly, we construe the claim term “sensor for measuring a
`parameter of a motor . . . that varies in response to a resistance to motion” in
`accordance with its plain meaning. Our construction embraces any sensor
`that measures any motor parameter that varies as a result of resistance to
`motion.
`
`
`B. “travel path” (claims 7 and 15)
`
`Claims 7 and 15 refer to a “travel path.” Patent Owner contends that
`this term refers to the “entire travel path” of the object and not just to a
`portion of the entire travel path. PO Resp. 21–23, 44–45. Patent Owner
`argues that although the doctrine of claim differentiation normally applies to
`a claim depending on another claim, the doctrine also requires that “all or
`part of a range of motion” in independent claim 1 be differentiated from
`independent claims 7 and 15, which recite “a travel path.” Id. at 21–23.
`Moreover, Patent Owner argues the controlling activation of a motor
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`described in claims 7 and 15 along the entire travel path is critical to the
`protection of a body part that the window encounters. Id. at 22–23. We
`disagree.
`Although the doctrine of claim differentiation suggests claims 7 and
`15 do not require “all or part of a range of motion” because claim 1 recites
`“all or part of a range of motion” and claims 7 and 15 merely recite “a travel
`path,” this suggestion is not a hard and fast rule and will be overcome by a
`contrary construction dictated by the written description or prosecution
`history. See Seachange Int’l, 413 F.3d at 1369.
`The Specification and prosecution history of the ’802 patent do not
`provide a special definition nor provide a clear disavowal of the plain
`meaning of the “travel path” limitation, and Patent Owner does not argue
`otherwise. Rather, the Specification of the ’802 patent indicates during and
`immediately after the startup phase, obstacle detection will not occur. The
`Specification of the ’802 patent refers to variable I as motor current and to
`variable PP as pulse period in discussing obstacle detection along a travel
`path. Ex. 1001, 15:57–67. In particular, the Specification of the ’802 patent
`states “after allowing some small initial amount of time for the motor rotor
`to begin rotation, I is immediately measured and compared against a fixed
`maximum threshold value and PP is immediately measured and compared
`against some maximum threshold number of clock cycles” (emphasis added).
`Id. at 16:31–36. Thus, in this embodiment, obstacle detection is not
`performed along the entire travel path.
`Because the Specification of the ’802 patent indicates obstacle
`detection is not performed along the entire travel path and the prosecution
`history does not include a special definition nor a clear disavowal of the
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`plain meaning (Ex 1001, 16:31–36), we conclude from the totality of the
`evidence that the “travel path” recited in claims 7 and 15 is not limited to the
`“entire travel path.” Rather, it can refer to a portion of the entire travel path.
`
`C. “in response to a specified input the controller conducts a calibration
`motor energization sequence to determine parameters of object” (claim 11)
`
`
`
`Patent Owner would have us limit the term “in response to a specified
`input the controller conducts a calibration motor energization sequence to
`determine parameters of object” (claim 11) to “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.” PO Resp. 33.
`Patent Owner argues an exemplary description in the Specification
`supports its narrow construction, which states:
`[t]he calibration learning of the movement range and position of
`the sunroof are learned and recorded as follows. The ignition is
`turned OFF and within five seconds the OPEN switch is
`pressed and the ignition is switched ON. The controller 2
`attempts to find the HOME or PARK position then proceeds to
`find the limit of the open area or the sunroof, i.e. the fully open
`position. When a stall condition is sensed the size of the
`sunroof open area (by count of motor encoder pulses) is
`recorded and the controller reverses the direction toward the
`PARK position.
`
`Id. at 31–32 (citing Ex. 1001, 12:17–31). We disagree with Patent Owner.
`Claim terms are given their ordinary and customary meaning, as
`would be understood by one of ordinary skill in the art in the context of the
`entire patent disclosure. See Thorner, 669 F.3d at 1365-66. Here, the claims
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`do not recite “single specified input” and “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” (emphasis added).
`Reply 3. The ordinary and customary meaning of “a specified input” can
`embrace multiple button presses such as a user entering a sequence of letters,
`numbers, and/or special characters in a password. Id. In addition, “the
`words ‘a’ or ‘an’ in a patent claim carry the meaning of ‘one or more.’” Id.
`at 4 (citing TiVo, Inc. v. EchoStar Commc’ns Corp., 516 F.3d 1290, 1303
`(Fed. Cir. 2008); Ex. 1022 ¶ 20). Lastly, Patent Owner acknowledges that it
`relies on an “exemplary description” in the Specification of the ’802 patent,
`which actually describes three user interactions to begin calibrating. Reply
`4. Thus, we decline to adopt Patent Owner’s narrow construction. Rather,
`we construe the limitation “in response to a specified input the controller
`conducts a calibration motor energization sequence to determine parameters
`of object” according to the ordinary and customary meaning.
`
`
`D. Means Plus Function – “logic unit for” (claim 15)
`
`Patent Owner contends that the term “logic unit for” as used in claim
`15 invokes 35 U.S.C. § 112, sixth paragraph7, means plus function analysis
`because logic unit is not and was not a known structure to those skilled in
`the art prior to the priority date of the ’802 patent. PO Resp. 45. Further,
`Patent Owner contends because the Specification of the ’802 patent does not
`
`7 Section 4(c) of the Leahy-Smith America Invents Act (“AIA”) re-
`designated 35 U.S.C. § 112, sixth paragraph, as 35 U.S.C. § 112(f). Pub. L.
`No. 112-29, 125 Stat. 284, 296 (2011). Because the ’802 patent has a filing
`date before September 16, 2012 (effective date of § 4(c)), we will refer to
`the pre-AIA version of § 112.
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`recite explicitly a “logic unit,” the term “logic unit” is a nonce word
`combined with the preposition “for” and functional language. Id. at 46–47.
`We disagree.
`The Federal Circuit has held that “mechanism for,” “module for,”
`“device for,” “unit for,” “component for,” “element for,” “member for,”
`“apparatus for,” “machine for,” or “system for,” are non-structural generic
`placeholders that may invoke 35 U.S.C. § 112, sixth paragraph. Welker
`Bearing Co., v. PHD, Inc., 550 F.3d 1090, 1096 (Fed. Cir. 2008); Mass. Inst.
`of Tech. and Elec. for Imaging Inc. v. Abacus Software, 462 F.3d 1344, 1354
`(Fed. Cir. 2006); Personalized Media Commc’ns, LLC v. ITC, 161 F.3d 696,
`704 (Fed. Cir. 1998); Mas-Hamilton Group v. LaGard, Inc., 156 F.3d 1206,
`1214–15 (Fed. Cir. 1998).
`At the same time, 35 U.S.C. § 112, sixth paragraph, does not apply if
`persons of ordinary skill in the art reading the specification understand the
`term to be the name for the structure that performs the function, even when
`the term covers a broad class of structures or identifies the structures by their
`function. Apex Inc. v. Raritan Computer, Inc., 325 F.3d 1364, 1372–73
`(Fed. Cir. 2003); CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1369
`(Fed. Cir. 2002); Watts v. XL Sys. Inc., 232 F.3d 877, 880–81 (Fed. Cir.
`2000); Personalized Media, 161 F.3d at 704; Greenberg v. Ethicon Endo-
`Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996) (“Many devices take their
`names from the functions they perform.”). The term is not required to
`denote a specific structure or a precise physical structure to avoid the
`application of pre-AIA 35 U.S.C. § 112, sixth paragraph. See Watts, 232
`F.3d at 880. In this case, the Specification of the ’802 patent states “[t]he
`circuitry of FIGS. 2A–2D includes a number of operational amplifiers which
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`require higher voltage than the five volt VCC logic circuitry power signal”
`(emphasis added). Ex. 1001, 6:30–32. As a result, one of ordinary skill in
`the art reading the Specification of the ’802 patent would understand the
`term “logic” to be the name of a type of circuitry (e.g., structure) that
`performs the function.
`Moreover, “circuit” has been found to be a structural term that does
`not invoke pre-AIA 35 U.S.C. § 112, sixth paragraph. Linear Tech. Corp. v.
`Impala Linear Corp., 379 F.3d 1311, 1321, (Fed. Cir. 2004); Apex, 325 F.3d
`at 1373; Greenberg, 91 F.3d at 1583–84; Personalized Media, 161 F.3d at
`704–05; CCS Fitness, 288 F.3d at 1369–70; Cole v. Kimberly-Clark Corp.,
`102 F.3d 524, 531 (Fed. Cir. 1996); Watts, 232 F.3d at 881; Al-Site Corp. v.
`VSI Int’l, Inc., 174 F.3d 1308, 1318–19 (Fed. Cir. 1999).
`Because one of ordinary skill in the art reading the Specification of
`the ’802 patent would understand the term “logic” to be the name of a type
`of circuitry and “circuit” has been found not to invoke pre-AIA 35 U.S.C.
`§ 112, sixth paragraph, we conclude from the totality of the evidence that
`claim 15 does not invoke pre-AIA 35 U.S.C. § 112, paragraph six.
`
`
`IV. THE PRIOR ART
`A. Lamm (Ex. 1008)
`
`Lamm describes a method and device for operating power-actuated
`components that pose a clamping hazard to objects or a person’s body parts.
`Ex. 1008, Abstract. Lamm further describes the system and method are
`particularly suitable for operating sliding sunroofs, window lift motors, door
`closing mechanisms, and seatbelt positioning devices in vehicles. Id. at 2.
`The system and method continuously determine first and/or higher order
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`derivatives with respect to different travel paths to increase reliability of
`detecting an obstacle. Id. at 2–3. The first and/or higher order derivatives
`are compared to multiple pre-specified thresholds and once a single
`threshold value is exceeded, the device is switched off and/or the direction
`of the movement is reversed. Id.
`
`
`B. Itoh (Ex. 1006)
`
`
`
`Itoh describes an automatic opening and closing device for a window.
`Ex. 1006, Abstract. Figure 7 is reproduced below.
`
`
`Itoh illustrates in Figure 7 forward and reverse rotatable motor 20 that
`controls opening and closing of window 26, switch 38 that instructs motor
`20 to rotate, pulse-detecting circuit 30 that detects a pulse along with motor
`20 rotation, counter 36 for counting the pulse number detected by pulse-
`detecting circuit 30, and motor driving circuit 28 that controls the motor. Id.
`at 7:48–8:48. CPU 34 detects at all times if an obstacle is caught between
`window frame 24 and window 26 and stops the motor and reverses the
`motor if an obstacle is detected. Id. at 3:28–60, 8:49–61.
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`C. Duhame (Ex. 1009)
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`Duhame describes an automatic door operator that includes an
`obstruction detector for stopping a motor when the detected motor speed
`indicates a motor torque greater than the selected closing torque limit while
`closing the door, and for stopping the motor when the detected motor speed
`indicates a motor torque greater than the selected opening torque limit while
`opening the door. Ex. 1009, Abstract.
`
`
`D. Kinzl (Ex. 1007)
`
`Kinzl describes a method and apparatus for operating and monitoring
`an opening and closing cycle of objects such as electric windows and
`electric slide roofs. Ex. 1007, Abstract. The operating and monitoring
`eliminate the danger of body parts getting caught in the object and permit a
`complete automatic opening and closing of the object. Id.
`
`
`Kinzl illustrates in Figure 1 sensor 26 measuring the speed of drive
`motor 12. Id. at 2:1–15. In addition, Kinzl illustrates microcomputer 24 that
`processes and compares the measured values. Id. at Abstract. Specifically,
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`microcomputer 24 uses the changes in the measured values to determine the
`position of window 10. Id. at 2:53–57. In case of danger, the determination
`of the position makes it possible to safely turn off drive motor 12 and
`possibly open the window 10. Id. at 3:6–17, 4:3–6.
`
`
`E. Jones (Ex. 1010)
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`
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`Jones describes an automatic door operator including an obstruction
`detector for stopping a motor when the speed of the motor exceeds a limit.
`Ex. 1010, Abstract. Jones in particular indicates the door controller may
`store the door’s lower limit position in memory by an operator first moving
`the door to its lower limit position, and then operating a switch. Id. at 5:26–
`42, 5:58–6:7. A similar operation stores the door’s upper limit position in
`the controller memory. Id. at 5:43–50, 6:8–26.
`
`
`V. ANALYSIS
`A. Challenges Relying on Lamm and Itoh
`
`For reasons stated below, we conclude, based on a preponderance of
`the evidence, that claims 1, 6–9, 15, and 16 are obvious over Lamm and
`Itoh.
`
`1. Independent Claim 1
`The parties’ first dispute is directed to whether Lamm and Itoh teach
`the limitation “a sensor for measuring a parameter of a motor . . . that varies
`in response to a resistance to motion” as recited in claim 1. We begin with
`Petitioner’s contentions regarding this limitation.
`According to Petitioner, the claim 1 limitation “a sensor for measuring
`a parameter of a motor . . . that varies in response to a resistance to motion”
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`embraces Lamm’s sensor 13 detecting the rotary speed of motor 10 that
`measures if a threshold value is exceeded such as when clamping of an
`obstacle occurs. Pet. 32–33; Ex. 1008, 2, 3, 5. Moreover, Petitioner
`contends the claim 1 limitation “a sensor for measuring a parameter of a
`motor . . . that varies in response to a resistance to motion” embraces Itoh’s
`pulse-detecting circuit 30 that detects a ripple current corresponding to the
`rotational frequency of motor 20, and outputs a motor pulse signal to CPU
`34 and counter 36 of controller 32 to calculate the rotational speed of the
`motor at all times to determine if an obstacle squeeze condition exists. Pet.
`14–15; Ex. 1006, 7:60–64, 8:33–53, 9:37–62, Figs. 7–8.
`Patent Owner argues the correct construction for “a sensor for
`measuring a parameter of a motor . . . that varies in response to a resistance
`to motion” (claim 1) is “a sensor that measures a magnitude of motor
`current.” See supra Part III.A. As a result, Patent Owner argues Lamm and
`Itoh do not teach or suggest this limitation because Lamm merely senses
`speed, calculates one or more motor speed derivatives with respect to the
`window’s travel path, and compares the derivatives to respective pre-
`specified thresholds to detect obstacles and Itoh merely measures a time
`period between current pulses that is inversely proportional to motor speed.
`PO Resp. 12–13.
`We are not persuaded by Patent Owner’s argument that Lamm and
`Itoh fail teach or suggest “a sensor for measuring a parameter of a motor . . .
`that varies in response to a resistance to motion.” At the outset, we
`construed the claim 1 limitation “sensor for measuring a parameter of a
`motor . . . that varies in response to a resistance to motion” as “any sensor
`that measures any motor parameter that varies as a result of resistance to
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`motion” rather than as “a sensor that measures a magnitude of motor
`current.” See supra Part III.A.
`The cited portions of Lamm relied upon by Petitioner teach a sensor
`13 detecting the rotary speed of motor 10, which teaches “a sensor for
`measuring a parameter of a motor” as recited in claim 1. Pet. 32–33; Ex.
`1008, 2, 3, 5. Moreover, the cited portions of Lamm relied upon by
`Petitioner teach if a threshold value is exceeded for the result of at least one
`derivative because of clamping of an obstacle, this leads to the component
`being switched off and/or reversal of the direction of movement, which
`teaches “varies in response to a resistance to motion” as recited in claim 1.
`Pet. 32–33; Ex. 1008, 2, 3, 5.
`In addition, the cited portions of Itoh relied upon by Petitioner
`disclose circuit 30 detects a ripple current corresponding to the rotational
`frequency of motor 20, and outputs a motor pulse signal to CPU 34 and
`counter 36 of controller 32, which teaches “a sensor for measuring a
`parameter of a motor” as recited in claim 1. Pet. 15; Ex. 1008, 8:34–43.
`Moreover, the cited portions of Itoh relied upon by Petitioner disclose CPU
`34 detects if an obstacle is stuck between the window frame and window and
`determines whether to descend or interrupt the motion of the window, which
`teaches “varies in response to a resistance to motion” as recited in claim 1.
`Pet. 11, 14–15; Ex. 1006, 8:49–9:62, Figs. 6–8.
`The parties’ next dispute is directed to whether it was obvious to
`combine Lamm and Itoh. We begin with Petitioner’s contentions.
`According to Petitioner, a person of ordinary skill in the art would
`have found it obvious to combine Lamm’s apparatus with a programmable
`controller and Itoh’s first-in-first-out memory in order to achieve a cost-
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`efficient and fast way of customizing and updating the operations of Lamm’s
`controller. Pet. 30–31.
`Patent Owner contends Lamm and Itoh cannot be combined. PO
`Resp. 13 (citing Ex. 2001 ¶¶ 90–91). Lamm and Itoh allegedly cannot be
`combined because Lamm uses a derivative-based obstacle detection scheme
`that calculates derivatives and thresholds whereas Itoh’s speed-based
`obstacle detection scheme does not calculate derivatives and thresholds. Ex.
`2001 ¶ 90. In addition, Patent Owner contends Itoh does not use a Hall-
`effect sensor and is prone to experiencing false positives, whereas Lamm’s
`system uses a Hall-effect sensor and has high detection reliability. Id. at
`¶ 91.
`
`We are not persuaded by Patent Owner’s argument that Lamm and
`Itoh cannot be combined. As explained supra, in the discussion of Lamm
`and Itoh, Petitioner identified a teaching to combine or modify components.
`Thus, Petitioner provided articulated reasoning with rational underpinnings
`to support the motivation to combine the teachings of Lamm and Itoh (see In
`re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
`Based on our claim construction discussed supra in Part III.A, Lamm
`and Itoh’s teachings discussed supra, the articulated reasoning to combine
`Lamm and Itoh, and the record before us, we conclude that Petitioner has
`established by a preponderance of evidence that claim 1 is unpatentable over
`the combination of Lamm and Itoh.
`
`2. Claim 6
`The parties’ dispute is directed to “immediate past measurements . . .
`within a forty millisecond interval” (claim 6). We begin with Petitioner’s
`contentions regarding this limitation.
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`Petitioner contends claim 6 is obvious over Lamm and Itoh. Pet. 36.
`Petitioner contends the 40 millisecond timeframe would have been obvious
`to one of ordinary skill in the art to perform speed measurements at forty
`millisecond intervals or faster. Pet. 12–13, 17, 31, 36; Reply 10–11.
`Petitioner contends a 1.2 millisecond pulse period is an example
`within the scope of Itoh for more than 33 cycles of the motor pulse signal
`(“Tp”) samples to elapse in 40 milliseconds. Pet. 12–13, 17, 31, 36; Reply
`10–11. Moreover, Petitioner contends 40 milliseconds would have been an
`obvious design choice to a person having ordinary skill in the art because 40
`milliseconds is not critical and does not produce a new and unexpected
`result that is different in kind. Reply 10–11.
`Patent Owner contends that the design choice rationale does not apply
`because Petitioner fails to present: 1) evidence for why one of skill in the art
`would choose a fixed time window instead of a number of samples; and 2)
`how 40 milliseconds might be derived. PO Resp. 16–21.
`Because a 1.2 millisecond pulse period is an example within the scope
`of Itoh for more than 33 Tp samples to elapse in 40 milliseconds and one of
`ordinary skill in the art reading the Specification of the ’802 patent would
`understand there is no new and unexpected result of 40 milliseconds that is
`different in kind, Patent Owner’s arguments are not persuasive.
`Lastly, we are not persuaded by Patent Owner’s argument that Lamm
`and Itoh are not combinable because as stated above, we determine that
`Petitioner’s contentions for combining Lamm and Itoh are reasonable and
`supported by the record. See supra Part V.A.1; PO Resp. 21.
`Accordingly, Petitioner has shown by a preponderance of the evidence
`that claim 6 is an obvious design choice.
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`3. Claims 7–9
`The parties’ first dispute is directed to the limitation “an obstacle
`detect threshold based on motor speed of movement detected during a
`present run of said motor driven element” (claim 7). We begin with
`Petitioner’s contentions regarding this limitation.
`According to Petitioner, claim 7’s “an obstacle detect threshold based
`on motor speed of movement detected during a present run of said motor
`driven element” embraces Itoh’s collision identification when the currently
`sensed speed, Tp, is greater than a threshold (e.g., the product of a constant,
`, and an average of the immediate prior number of speed values detected
`during a present run, Tm). Pet. 20–21; Ex. 1006, 10:33–11:15.
`Patent Owner contends Lamm and Itoh fail to teach or suggest this
`limitation because Lamm pre-specifies thresholds instead of calculating the
`thresholds during operation. PO Resp. 26–30 (citing Ex. 1008, 4–5). In
`addition, Patent Owner contends Lamm’s first derivative of speed with
`respect to travel path is the gradient of speed with respect to distance, rather
`than acceleration. Id. at 29. Patent Owner contends Petitioner does not rely
`on Itoh for teaching this limitation, Itoh does not teach this limitation, and
`Lamm and Itoh cannot be combined. PO Resp. 30.
`We are not persuaded by Patent Owner’s argument. At the outset,
`Petitioner sufficiently explains how Lamm and Itoh are combinable. See
`supra Part V.A.1. In addition, Petitioner does rely on Itoh to teach this
`feature so Patent Owner’s arguments regarding Lamm are moot. Pet. 20–21.
`Specifically, the cited portions of Itoh relied upon by Petitioner teach
`collision identification when the currently sensed speed, Tp, is greater than a
`threshold (e.g., the product of a constant, , and an average of the immediate
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`prior number of speed values detected during a present run, Tm), which
`teaches the limitation “an obstacle detect threshold based on motor speed of
`movement detected during a present run of said motor driven element” as
`recited in claim 7. Pet. 20–21; Ex. 1006, 10:33–11:15. Patent Owner
`provides no separate arguments for claims 8 and 9, which depend from claim
`7. PO Resp. 57.
`Accordingly, we conclude that Petition
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