Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 14
`Entered: October 17, 2014
`
`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
`_______________
`
`
`
`Before GLENN J. PERRY, HYUN J. JUNG, and GEORGE R. HOSKINS,
`Administrative Patent Judges.
`
`HOSKINS, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 14
`Entered: October 17, 2014
`
`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
`_______________
`
`
`
`Before GLENN J. PERRY, HYUN J. JUNG, and GEORGE R. HOSKINS,
`Administrative Patent Judges.
`
`HOSKINS, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`IPR2014-00650
`Patent 7,579,802
`
`
`I.
`
`INTRODUCTION
`
`On April 16, 2014, Webasto Roof Systems, Inc. (“Petitioner”) filed a
`
`Petition requesting 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”). Petitioner filed a
`
`Corrected Petition (Paper 4, “Petition” or “Pet.”) on April 30, 2014. UUSI,
`
`LLC (“Patent Owner”) filed a Preliminary Response (Paper 9, “Prelim.
`
`Resp.”) on July 24, 2014. We have jurisdiction under 35 U.S.C. § 314.
`
`To institute an inter partes review, we must determine the information
`
`presented in the Petition and the Preliminary Response shows “a reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 of the
`
`claims challenged in the petition.” 35 U.S.C. § 314(a). Petitioner contends
`
`the challenged claims are unpatentable under 35 U.S.C. § 103.
`
`For reasons stated below, we determine there is a reasonable
`
`likelihood Petitioner would prevail in showing the unpatentability of claims
`
`1, 6–9, 11, 15, and 16. We therefore institute an inter partes review as to
`
`those claims. Our factual findings and conclusions at this stage of the
`
`proceeding are based on the evidentiary record developed thus far (prior to
`
`Patent Owner’s Response). This is not a final decision as to patentability of
`
`claims for which inter partes review is instituted. Our final decision will be
`
`based on the record as fully developed during trial.
`
`A.
`
`The ’802 Patent
`
`The ’802 patent discloses a system and method for sensing
`
`obstructions for a moveable panel, such as a sunroof. See Ex. 1001,
`
`Abstract. Figure 1 is shown below:
`
`2
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`IPR2014-00650
`Patent 7,579,802
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`Figure 1 is a schematic of an exemplary actuator safety feedback control
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`system 1. See id. at 2:26–27, 2:65–66. Controller 2 monitors and controls
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`movement of a motor driven panel. See id. at 2:65–3:5. Motor drive outputs
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`7a and 7b control whether the motor (not shown in Figure 1) drives the panel
`
`in a forward or a reverse direction. See 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 (see id. at 3:63–
`
`4:53), a motor current monitor (see id. at 5:53–57, 7:26–8:3), and other
`
`motor monitors (see id. at 11:9–32).
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`3
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`IPR2014-00650
`Patent 7,579,802
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`B.
`
`Illustrative Claim
`
`Claim 7 of the ’802 patent is illustrative:
`
`Apparatus for controlling activation of a motor for
`7.
`moving an object along a travel path and de-activating the
`motor if an obstacle is encountered by the object comprising:
`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.
`
`C.
`
`Related Matters
`
`Petitioner and Patent Owner have identified two district court
`
`proceedings involving the ’802 patent. The first is UUSI, LLC v. Webasto
`
`Roof Systems, Inc., No. 2:13-cv-11704 (E.D. Mich.). See Pet. 1; Paper 8, at
`
`2. The second is UUSI, LLC v. Robert Bosch LLC, No. 2:13-cv-10444 (E.D.
`
`Mich.). See Pet. 1; Paper 8, at 2. The ’802 patent belongs to a family of
`
`4
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`IPR2014-00650
`Patent 7,579,802
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`patents involved in multiple inter partes reviews including IPR2014-00416,
`
`IPR2014-00417, IPR2014-00648, IPR2014-00649, and IPR2014-00650.
`
`The petition in IPR2014-00417 (“the ’417 Proceeding”), like the
`
`present Petition, challenges the ’802 patent. We instituted trial in the
`
`’417 Proceeding on August 1, 2014. See Brose North Am., Inc. v. UUSI,
`
`LLC, Case IPR2014-00417 (PTAB Aug. 1, 2014), Paper 11 (“IPR2014-
`
`00417 Dec.”). As discussed further below, there is some overlap between
`
`the grounds instituted in the ’417 Proceeding and the grounds proposed by
`
`the present Petition.
`
`D.
`
`Prior Art Relied Upon
`
`Itoh
`
`US 4,870,333
`
`Sept. 1989 Ex. 1006
`
`Kinzl
`
`US 4,468,596
`
`Aug. 1984 Ex. 1007
`
`Lamm DE 40 00 730 A1 Aug. 1991 Ex. 1008 (translation)
`Ex. 1017 (original)
`Ex. 1018 (certification)
`
`Duhame US 5,218,282
`
`June 1993
`
`Ex. 1009
`
`Jones
`
`US 4,831,509
`
`May 1989
`
`Ex. 1010
`
`Petitioner cites to a certified translation of Lamm (Ex. 1008), and we do
`
`likewise. However, while Petitioner cites to page numbers of the translation,
`
`we cite to column and line numbers.
`
`E.
`
`Asserted Grounds of Unpatentability
`
`Petitioner contends claims 1, 6–9, 11, 15, and 16 of the ’802 patent
`
`are unpatentable based on the following grounds. See Pet. 10, 25, 28, 43, 44.
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`5
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`IPR2014-00650
`Patent 7,579,802
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`Basis
`
`References
`
`Claim(s) Challenged
`
`§ 103(a)
`
`Itoh and Kinzl
`
`1, 6–9, 15, and 16
`
`§ 103(a)
`
`Itoh, Kinzl, and Jones
`
`11
`
`§ 103(a) Lamm and Itoh
`
`1, 6–9, 15, and 16
`
`§ 103(a) Lamm, Itoh, and Duhame 11
`
`§ 103(a) Duhame and Kinzl
`
`1, 6–9, 11, 15, and 16
`
`
`
`II. ANALYSIS
`
`A.
`
`Claim Construction
`
`As a step in our analysis, we determine the meaning of the claims for
`
`purposes of this decision. In an inter partes review, a claim in an unexpired
`
`patent shall be given its broadest reasonable construction in light of the
`
`specification of the patent in which it appears. See 37 C.F.R. § 42.100(b)
`
`(2013). Also, 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. In re Translogic Tech., Inc., 504 F.3d 1249,
`
`1257 (Fed. Cir. 2007). We construe the terms below in accordance with that
`
`standard.1
`
`
`1 Petitioner contends the ’802 patent will expire in November 2014; the
`present review is not likely to be final until after November 2014; and once
`the ’802 patent expires, the proper claim construction standard is as set forth
`in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) rather than
`Rule 42.100(b). See Pet. 3–4. On the present record, we discern no
`difference in result between the two claim construction standards as to terms
`we construe herein.
`
`6
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`IPR2014-00650
`Patent 7,579,802
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`1.
`
`“de-activate the motor” (claim 1), “stopping the motor” (claim 7),
`and “stop the motor” (claim 15)
`
`Petitioner proposes construing “de-activate” the motor in claim 1 to
`
`mean “turn off” the motor, and “stopping” and “stop” the motor in claims 7
`
`and 15 to mean “halting” or “halt the motion of” the motor. Pet. 7–9. Patent
`
`Owner’s Preliminary Response does not address this proposal. On the
`
`present record, we adopt Petitioner’s proposed construction for purposes of
`
`this decision.
`
`This construction is supported by the ’802 patent specification, which
`
`describes motor “activation” in conjunction with motor “energization.” See
`
`Ex. 1001, 6:43–56 (controller 2 uses two switching transistors 154, 156 “for
`
`energizing the motor windings,” and “[o]ne or the other of the transistors
`
`must be turned on in order to activate the motor”) (emphases added); id. at
`
`12:36–48. The ’802 patent specification indicates that “application of
`
`reverse drive polarity while a motor is still rotating” is an option, but is
`
`“often undesirable” and is further “unnecessary” in the preferred
`
`embodiment. Ex. 1001, 3:44–57. Moreover, claims 3 and 4 of the
`
`’802 patent specifically recite “reverse” actuation, as opposed to “de-
`
`activation” in claim 1, suggesting Patent Owner knew how to claim reverse
`
`motor actuation but chose not to do so in claim 1. For all these reasons, we
`
`construe “de-activate” the motor to mean “turn off” the motor, and
`
`“stopping” and “stop” the motor to mean “halting” or “halt the motion of”
`
`the motor.2
`
`
`2 These constructions are consistent with our Decision to Institute Review in
`the ’417 Proceeding. See IPR2014-00417 Dec. 6–7.
`
`7
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`IPR2014-00650
`Patent 7,579,802
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`2.
`
`“buffer memory” (claim 8)
`
`Petitioner proposes construing this term to mean a “memory used for
`
`temporary storage of data.” Pet. 9–10. Patent Owner’s Preliminary
`
`Response does not address this proposal. On the present record, we adopt
`
`Petitioner’s proposed construction for purposes of this decision. In context,
`
`claim 8 recites “a buffer memory for storing successive values of motor
`
`movement.” Ex. 1001, 28:47–49. The ’802 patent specification describes,
`
`as an example of such a memory, a first-in-first-out (“FIFO”) memory. See
`
`Ex. 1001, 3:1–5, 16:46–53, 18:8–16, Fig. 1; see also id. at 15:42–44
`
`(“calculation utilizes memory buffers to store motor operation parameter
`
`information needed to make a determination about obstruction detection”).
`
`Such a memory stores “an immediate short history” of “sequential
`
`measurements” of motor movement values. Id. at 16:46–51.
`
`3.
`“the immediate past measurements of said parameter were taken
`within a forty millisecond interval prior to the most recent measurement”
`(claim 6)
`
`Although not discussed directly by either party, we need to construe
`
`this limitation of dependent claim 6 in order to address the merits of the
`
`Petition. In contending claim 6 would have been obvious over Lamm and
`
`Itoh, or over Duhame and Kinzl, Petitioner suggests Itoh and Duhame
`
`disclose the limitation of claim 6 because some, even if not all,
`
`measurements are taken within the 40 msec period recited in claim 6. See
`
`Pet. 36, 51–52; Ex. 1003, ¶¶ 179, 245. Thus, according to Petitioner,
`
`claim 6 is satisfied if some of the immediate past measurements fall within
`
`the 40 millisecond time frame, even if other past measurements falling
`
`outside that time frame are also used. We are not persuaded that Petitioner’s
`
`8
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`IPR2014-00650
`Patent 7,579,802
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`reading of claim 6 is correct. The plain language of the claim indicates “the
`
`immediate past measurements” were taken within the 40 millisecond time
`
`frame, not (for example) “a portion” or “at least one” of such measurements.
`
`Therefore, on the present record, we construe claim 6 to require that all of
`
`the immediate past measurements used in the “determining” step (c) of
`
`claim 1 were taken within the 40 millisecond time frame.
`
`B. Obviousness Over Itoh and Kinzl
`
`Petitioner contends claims 1, 6–9, 15, and 16 of the ’802 patent would
`
`have been obvious over Itoh and Kinzl. See Pet. 10–25.
`
`1.
`
`Claims 1 and 6–9
`
`In the ’417 Proceeding, we previously instituted review of claims 1
`
`and 6–9 as potentially being unpatentable over Itoh and Kinzl. See
`
`IPR2014-00417 Dec. 18–21, 26. The pertinent analysis of the present
`
`Petition is strikingly similar to that of the petition in the ’417 Proceeding in
`
`many regards. As one example, portions of the two analyses of claim 7
`
`contain the exact same verbiage. See Pet. 11–12; Brose North Am., Inc. v.
`
`UUSI, LLC, Case IPR2014-00417 (PTAB), Paper 6 (“IPR2014-00417
`
`Pet.”), 50–51. As another example, portions of the two analyses of claim 6
`
`are virtual carbon copies. See Pet. 17; IPR2014-00417 Pet. 32. We
`
`therefore exercise our discretion and deny review in the present proceeding
`
`of claims 1 and 6–9 as being unpatentable over Itoh and Kinzl, because the
`
`same or substantially the same arguments have already been presented to the
`
`Office. See 35 U.S.C. § 325(d).3
`
`
`3 Given this decision, we need not consider Patent Owner’s request for a stay
`or for a denial based on intra-Petition redundancy. See Prelim. Resp. 4.
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`9
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`IPR2014-00650
`Patent 7,579,802
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`2.
`
`Claims 15 and 16
`
`The petition in the ’417 Proceeding did not challenge claims 15 and
`
`16. Also, while Itoh was submitted to the Examiner during prosecution of
`
`the ’802 patent, it was not discussed in any Office Actions. See Ex. 1001, at
`
`[56]; Pet. 14. We therefore consider Itoh and Kinzl in connection with
`
`claims 15 and 16, and in light of the present Petition.
`
`Petitioner’s arguments concerning claims 15 and 16 focus on Itoh’s
`
`Embodiment 3. See Pet. 10; Ex. 1003, ¶¶ 61–68. That embodiment is
`
`illustrated in Figures 5–7 of Itoh. See Ex. 1006, 7:46–52. Figure 7 is shown
`
`below:
`
`Figure 7 shows a diagram of an opening and closing device for window 26.
`
`Id. at 7:50–52. The Itoh device monitors whether obstacle 48 is present as
`
`
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`10
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`IPR2014-00650
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`window 26 is closed and, in such an event, may reverse window 26 to move
`
`in a downward direction. See id. at 8:49–52, 11:16–20.
`
`We are persuaded, on the present record, by Petitioner’s contentions
`
`comparing the Itoh disclosure with the requirements of claim 15. That is,
`
`Itoh’s pulse detecting circuit 30 is a sensor for generating speed signals
`
`representative of the window 26 speed as motor 20 moves window 26 along
`
`a travel path, as recited in claim 15. See Pet. 18–19, 23; Ex. 1003, ¶¶ 115–
`
`117, 139; Ex. 1006, 7:60–64, 8:67–9:2. Itoh’s controller 32 is an obstacle
`
`detection controller for monitoring the travel path of window 26, and
`
`sensing and generating an obstacle detection signal indicating the presence
`
`of an obstacle in that path, as recited in claim 15. See Pet. 19–20, 23;
`
`Ex. 1003, ¶¶ 122–126, 141–146; Ex. 1006, 7:67–8:12, 8:10–14, 10:67–
`
`11:20. Itoh’s motor driving circuit 28 is a “switch” coupled to controller 32
`
`for controlling energization of motor 20, as recited in claim 15. See Pet. 19,
`
`23; Ex. 1003, ¶¶ 118–121, 140; Ex. 1006, 7:67–8:9, 11:16–19. Itoh’s
`
`controller 32 processes speed signals and obstacle detection signals, and
`
`controls motor 20 in response to those signals. See Pet. 19–20, 23–24;
`
`Ex. 1003, ¶¶ 122–126, 141–146; Ex. 1006, 7:67–8:14, 10:67–11:20.
`
`We are further persuaded, on the present record, that Itoh’s controller
`
`32 includes components (i) through (iii) of claim 15. See Pet. 20–22, 24–25.
`
`As to the component (i) “storage for storing a number of speed signals that
`
`vary with motor speed,” controller CPU 34 “calculates the present rotational
`
`speed (cycle of the motor pulse signal) Tp[4] of the motor 20” using, in part,
`
`a motor pulse signal received from pulse detecting circuit 30. Ex. 1006,
`
`
`4 While Itoh identifies the speed as “TP” here, elsewhere it is identified as
`“Tp”, which we use as being more consistent with the overall disclosure.
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`11
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`8:33–40, 9:44–48. The calculated motor speed is stored in a speed data table
`
`maintained by controller 32. See id. at 9:48–50. The stored speed data table
`
`is illustrated in Figure 9 of Itoh. See id. at 10:12–17. That figure is shown
`
`below:
`
`
`
`In the speed data table of Figure 9, “the cycles Tp are arranged in timewise
`
`order wherein the oldest cycle Tpn in point of time is deleted with every
`
`[newly measured Tp] and are changed such that the former Tp is updated to
`
`Tp1 and former Tp1 is updated to Tp2.” Id.
`
`As to the “processor” component (ii), and the logic unit
`
`component (iii), controller CPU 34 “calculates the average Tm of speed data
`
`(cycle of motor pulse signal) of number n in the speed data table” as follows:
`
`
`
`
`
`
`
`Id. at 10:36–44. Controller CPU 34 then determines whether the ratio
`
`Tp/Tm exceeds a predetermined value α. Id. at 10:62–66. We are
`
`persuaded this determination is mathematically equivalent to determining
`
`whether Tp exceeds the product (α)(Tm). See Pet. 11–12, 20–21, 24–25;
`
`Ex. 1003, ¶¶ 66, 129–134, 148–153. All speed measurements Tp through
`
`Tpn are taken in real time during a present travel path of window 26, as
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`12
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`required by claim 15. See Ex. 1006, 9:44–62, 10:12–11:7. Thus, on the
`
`present record, we are persuaded Itoh discloses comparing a value
`
`representing window speed based on a currently sensed motor speed signal
`
`(Tp) with an obstacle detect threshold as required by claim 15.
`
`Alternatively, in the event we finally conclude Itoh does not expressly
`
`disclose the claimed functionality of components (ii) and (iii), Petitioner
`
`contends “[i]t also would have been obvious to a person of ordinary skill in
`
`the art [to] ‘re-think’ or ‘re-write’ Itoh’s mathematically identical equation
`
`in language identical to what is recited in these limitations, especially in
`
`view of Kinzl.” Pet. 11–12, 21, 24–25 (citing Ex. 1003, ¶¶ 66–69, 129–
`
`134). More specifically, Kinzl discloses an adjustable object detect
`
`threshold, based on motor speed detected earlier during a present run, being
`
`compared against a currently sensed motor speed. See Ex. 1007, 4:17–41;
`
`Ex. 1003, ¶ 134. We are persuaded by these contentions on the present
`
`record.
`
`Claim 15 further requires that the logic unit generates a control output
`
`if an obstacle is detected, and an interface coupled to the switch to stop the
`
`motor. Petitioner concedes Itoh does not disclose that Embodiment 3 turns
`
`motor 20 off in the event of an obstacle encounter, as required by these
`
`portions of claim 15, but rather reverses motor 20. See Pet. 12, 18, 21–22,
`
`24–25. Nonetheless, we are persuaded by Petitioner’s contention that other
`
`disclosures in Itoh reflect turning a motor off based on sensor measurements
`
`indicating an obstacle encounter. See id. at 18 (citing Ex. 1006, Abstract,
`
`3:44–68).
`
`Moreover, Kinzl — similarly to Itoh — discloses a method and
`
`apparatus for operating electric windows in a vehicle, seeking to eliminate
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`13
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`the danger of body parts getting caught in the window by measuring the
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`speed of the drive motor. See Pet. 10–11; Ex. 1007, Abstract. We are
`
`persuaded Kinzl discloses an embodiment where the motor is turned off,
`
`rather than reversed, in response to encountering an obstacle. See Pet. 12,
`
`18, 21–22, 24–25; Ex. 1007, 1:51–55, 2:24–30, 3:21–26. We are further
`
`persuaded, on the present record, that Petitioner has shown it would have
`
`been obvious in light of either Itoh itself, or in light of Kinzl, to modify
`
`Itoh’s Embodiment 3 to turn motor 20 off instead of reversing motor 20. See
`
`Pet. 12, 13–14; Ex. 1003, ¶¶ 104–109, 156–158.
`
`Claim 16 specifies that the sensor of claim 15 “comprises a Hall-
`
`effect sensor.” On this record, we are persuaded a person of ordinary skill in
`
`the art would have known Itoh’s pulse detecting circuit 30 could comprise a
`
`Hall-effect sensor, as disclosed for example in Kinzl. See Pet. 25; Ex. 1003,
`
`¶ 155; Ex. 1006, 4:45–61; Ex. 1007, 2:11–15.
`
`Patent Owner contends Itoh and Kinzl may not be combined “because
`
`Kinzl expressly requires a sensor to determine window position whereas Itoh
`
`expressly emphasizes that no sensor is desired.” Prelim. Resp. 4–5.
`
`“Accordingly, ordinarily skilled artisans would not have been motivated to
`
`combine Kinzl with Itoh because adding Kinzl’s sensor will defeat the
`
`express objectives of Itoh.” Id. at 5 (emphasis added). We are not
`
`persuaded, for two reasons. First, Petitioner’s obviousness case for claim 15
`
`does not propose that Kinzl’s sensor would be “added” to the Itoh system, as
`
`Patent Owner alleges. Rather, Kinzl is cited principally for disclosing
`
`stopping a motor, as an alternative to reversing the motor, if an obstacle is
`
`encountered. See Pet. 12. Second, both Itoh and Kinzl disclose indirectly
`
`sensing motorized window position and obstacle encounters by sensing
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`14
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`pulses generated by rotation of the window’s drive motor. See Ex. 1006,
`
`7:53–67, 8:10–21; Ex. 1007, 1:7–13, 2:1–15. Thus, in our view based on the
`
`present record, it would be entirely natural for a person of ordinary skill in
`
`the art to combine these references, as proposed in the Petition.
`
`We, therefore, determine Petitioner has shown, on the record presently
`
`before us, a reasonable likelihood it can establish claims 15 and 16 would
`
`have been obvious over Itoh and Kinzl.
`
`C. Obviousness Over Itoh, Kinzl, and Jones
`
`Petitioner contends claim 11 of the ’802 patent would have been
`
`obvious over Itoh, Kinzl, and Jones. See Pet. 25–27. Claim 11 depends
`
`directly from independent claim 7. We have denied review of claim 7 as
`
`being unpatentable over Itoh and Kinzl, because the same or substantially
`
`the same arguments concerning claim 7 were presented in the
`
`’417 Proceeding. See supra Part II.B.1. The petition in the ’417 Proceeding
`
`did not challenge dependent claim 11. We, therefore, consider Itoh, Kinzl,
`
`and Jones in connection with claim 11.
`
`The limitations incorporated into claim 11 via its dependency from
`
`claim 7 are substantially similar to limitations discussed above in connection
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`with claim 15. The differences do not materially affect our analysis of the
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`record presently before us in connection with claim 11. We, therefore,
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`merely refer to on our analysis above as applying to the limitations of parent
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`claim 7, and turn directly to the limitations added by claim 11.
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`We are persuaded Itoh’s controller 32 includes, as required by
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`claim 11, “an interface for monitoring user actuation of control inputs for
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`controlling movement of” window 26. See Pet. 19 (element b of parent
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`claim 7); Ex. 1006, 7:67–8:9. Claim 11 additionally requires “wherein in
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`response to a specified input the controller conducts a calibration motor
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`energization sequence to determine parameters” of window 26. For that
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`claim requirement, Petitioner relies on Jones, which discloses a motorized
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`roller door control apparatus having obstruction detection devices. See
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`Pet. 27; Ex. 1010, 1:5–27. Jones in particular indicates the door controller
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`may store the door’s lower limit position in a memory by an operator first
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`moving the door to its lower limit position, and then operating a switch. See
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`Pet. 27; Ex. 1010, 5:26–42, 5:58–6:7. A similar operation stores the door’s
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`upper limit position in the controller memory. See Ex. 1010, 5:43–50, 6:8–
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`26. Petitioner contends it would have been obvious to modify the Itoh
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`window control device to incorporate the lower and upper limit position
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`setting of Jones, to improve upon the “inefficient, burdensome, and
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`potentially costly” process of manually setting Pmax in Itoh. See Pet. 27;
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`Ex. 1003, ¶¶ 159–164.
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`Patent Owner contends Jones is inapplicable to power window
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`systems such as disclosed in Itoh and Kinzl because Jones concerns “roller
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`type” garage doors comprising a “flexible door curtain.” Prelim. Resp. 7–8.
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`However, we are not persuaded that this difference makes Jones non-
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`analogous art to Itoh and Kinzl. Rather, on the present record, we agree with
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`Petitioner that the three references are analogous because they all operate to
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`detect obstructions in the path of a moving panel (whether a rigid window or
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`a flexible door) by monitoring the speed of a motor which drives the
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`movement of the panel. See Pet. 25–26; Ex. 1006, 7:53–67, 8:10–21;
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`Ex. 1007, 1:7–13, 2:1–15; Ex. 1010, Abstract, 3:7–16.
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`Patent Owner further contends one of ordinary skill in the art would
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`not combine Itoh and Jones because Jones indicates its door position is
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`16
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`obtained from an encoder and two sensors, while Itoh expressly states no
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`sensor is desired. See Prelim. Resp. 8. Thus “adding Jones’s multiple
`
`sensors to Itoh’s sensor-less system will defeat Itoh’s objectives.” Id. We
`
`are not persuaded, for two reasons. First, Petitioner’s obviousness case does
`
`not propose that Jones’s sensors would be “added” to the Itoh system, as
`
`Patent Owner alleges. Rather, Jones is cited only for disclosing a sensor
`
`calibration scheme. See Pet. 27. Second, both Itoh and Jones disclose
`
`indirectly sensing a panel position by sensing changes in a motor which
`
`moves the panel. See Ex. 1006, 7:53–67, 8:10–21; Ex. 1010, Abstract, 3:7–
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`16. Thus, in our view based on the present record, it would be entirely
`
`natural for a person of ordinary skill in the art to combine these references,
`
`as proposed in the Petition.
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`Patent Owner also contends one of ordinary skill would not utilize
`
`Jones’s “complex and extensive” and “elaborate” procedure in the “simple”
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`power window system of Itoh. Prelim. Resp. 9–17 (citing Ex. 1010, 3:1–
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`4:46, 5:9–6:34). Patent Owner’s argument misconstrues the obviousness
`
`ground proposed in the Petition. The proposed ground relies solely on the
`
`upper and lower “Limit Setting” disclosure in Jones. See Pet. 27; Ex. 1010,
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`5:8–6:34. Thus, the complexity of Jones’s “Door Characteristic Learning”
`
`and door position monitoring methods is inapposite to the proposed ground.
`
`See Ex. 1010, 3:1–4:46. We also are not persuaded that Jones’s calibration
`
`scheme, described above, is so complicated that it lacks utility in Itoh’s
`
`window system.
`
`We determine Petitioner has shown, on the record presently before us,
`
`a reasonable likelihood it can establish claim 11 would have been obvious
`
`over Itoh, Kinzl, and Jones.
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`D. Obviousness Over Lamm and Itoh
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`Petitioner contends claims 1, 6–9, 15, and 16 of the ’802 patent would
`
`have been obvious over Lamm and Itoh. See Pet. 28–43.
`
`1.
`
`Claim 1
`
`Lamm discloses a method and device for operating power-actuated
`
`components, such as sliding sunroofs or windows, which pose a clamping
`
`hazard. See Ex. 1008, Abstract, 2:7–8. Figure 1 of Lamm is shown below:
`
`
`
`Figure 1 is a diagram of a drive of a power-actuated component. See id. at
`
`3:55–56. The drive includes electric motor 10 to drive the actuated
`
`component (not shown), signal-processing device 11 and motor driver
`
`circuit 12 to control motor 10, and sensor 13 to detect a rotary speed of
`
`motor 10 and relay the speed to signal-processing device 11. See id. at
`
`3:59–4:10.
`
`We are persuaded Lamm’s sensor 13 is “a sensor for measuring a
`
`parameter of a motor” as recited in claim 1. See Pet. 32–33. Sensor 13
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`“detects the rotary speed of the motor 10 and relays the same to the signal-
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`processing device 11.” Ex. 1008, 3:61–62.
`
`We are persuaded Lamm’s signal-processing device 11 includes a
`
`memory. See Pet. 33. For example, processor 11 determines “[a]t least one
`
`derivative with respect to the path traveled by the component . . . from the
`
`profile of the parameter [i.e. the rotary speed of motor 10] in the signal-
`
`processing device 11.” Ex. 1008, 4:24–38 (emphasis added). Similarly to
`
`Lamm’s processor 11 having a memory, Itoh’s controller 32 has a memory.
`
`See Ex. 1006, 9:44–49. Itoh’s memory is a FIFO-like memory in the form
`
`of the speed data table shown in Figure 9 of Itoh, which stores multiple
`
`motor speed values corresponding to a signal received from a sensor. See
`
`Pet. 33; Ex. 1003, ¶ 171; Ex. 1006, 10:12–17, Fig. 9. Petitioner contends it
`
`would have been obvious to use a FIFO-like memory, such as disclosed in
`
`Itoh, in Lamm’s processor 11 which would correspond to the “memory for
`
`storing a number of measurement values from the sensor” required by claim
`
`1. See Pet. 29–31, 33; Ex. 1003, ¶¶ 168–172; Ex. 1006, 10:12–17, Fig. 9.
`
`We are persuaded by this contention on the present record.
`
`We are persuaded Lamm’s processor 11 monitors, as set forth in
`
`claim 1, a “most recent sensor measurement” of a motor parameter and
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`“immediate past measurement values stored in the memory obtained during
`
`a present run through the motor driven element range of motion.” See
`
`Pet. 30, 33–35. In particular, Lamm’s sensor 13 measures the rotary speed
`
`of motor 10, and processor 11 determines at least one derivative of speed
`
`from those measurements. See Ex. 1008, 3:12–17, 3:61–62, 4:26–28, 4:36–
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`48. We are persuaded that such derivative determinations would necessarily
`
`include immediate past motor speed measurements from the present run of
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`motor 10. See Pet. 30, 33–34; Ex. 1003, ¶ 170. For example, Lamm
`
`indicates speed derivatives are determined from a “profile” of speed
`
`measurements. Ex. 1008, 1:38–40, 4:36–39.
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`We are further persuaded Lamm includes a “controller interface
`
`coupled to the motor for altering motion of said motor driven element” as
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`recited in claim 1. See Pet. 35–36. In particular, processor 11 is coupled to
`
`motor 10 via motor driver circuit 12 for controlling motor 10. See Ex. 1008,
`
`3:59–62. Moreover, processor 11 monitors the motor speed derivatives and,
`
`if a pre-set threshold value is exceeded, switches off and / or reverses motor
`
`10. See id. at 1:35–46, 1:55–58, 4:43–45. We are thus persuaded Lamm
`
`discloses de-activating the motor, as recited in claim 1.
`
`Patent Owner contends Lamm and Itoh may not be combined
`
`“because Lamm expressly requires a separate sensor to infer the position of
`
`the window whereas Itoh requires the opposite,” i.e. no sensor. Prelim.
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`Resp. 6–7. “Accordingly, ordinarily skilled artisans will not be motivated to
`
`combine Lamm with Itoh because adding Lamm’s sensor to Itoh’s system
`
`will defeat a significant objective of Itoh’s sensor-less system.” Id.
`
`(emphasis added). We are not persuaded, for two reasons. First, Petitioner’s
`
`obviousness case for claim 1 does not propose that Lamm’s sensor would be
`
`“added” to the Itoh system, as Patent Owner alleges. Rather, Petitioner
`
`proposes modifying Lamm by adding Itoh’s FIFO-like memory. See
`
`Pet. 29–31. Second, both Lamm and Itoh disclose indirectly sensing
`
`motorized window position and obstacle detection by sensing motor
`
`rotation. See Ex. 1006, 7:53–67, 8:10–21; Ex. 1008, 3:59–62, 7:29–35.
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`Thus, in our view based on the present record, it would be entirely natural
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`for a person of ordinary skill in the art to combine these references, as
`
`proposed in the Petition.
`
`We determine Petitioner has shown, on the record presently before us,
`
`a reasonable likelihood it can establish claim 1 would have been obvious
`
`over Lamm and Itoh.
`
`2.
`
`Claim 6
`
`Claim 6 depends from claim 1, and specifies “the immediate past
`
`measurements” of the motor parameter “were taken within a forty
`
`millisecond interval prior to the most recent sensor measurement.” We are
`
`persuaded this is a routine design choice discovering an optimal or workable
`
`range, involving only routine skill in the art. See Pet. 31, 36; Ex. 1003,
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`¶¶ 179–180. Therefore, on the record presently before us, we determine
`
`Petitioner has shown a reasonable likelihood it can establish claim 6 would
`
`have been obvious over Lamm and Itoh.
`
`3.
`
`Claims 7–9
`
`As discussed above, Lamm discloses a method and device for
`
`operating power-actuated components, such as sliding sunroofs or window
`
`lift motors, which pose a clamping hazard. See Pet. 36; Ex. 1008, Abstract,
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`2:7–8. We are persuaded, on the present record, by Petitioner’s contentions
`
`comparing the Lamm disclosure with the requirements of claim 7. That is,
`
`Lamm’s sensor 13 is a “movement sensor for monitoring movement of the
`
`object” — for example a window — as recited in claim 7. See Pet. 36–37.
`
`Sensor 13 “detects the rotary spe
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