UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`VOLKSWAGEN GROUP OF AMERICA, INC,
`Petitioner,
`v.
`SIGNAL IP, INC.,
`Patent Owner.
`______________________
`Case IPR2015-00968
`Patent 5,714,927 B1
`______________________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`VOLKSWAGEN GROUP OF AMERICA, INC,
`Petitioner,
`v.
`SIGNAL IP, INC.,
`Patent Owner.
`______________________
`Case IPR2015-00968
`Patent 5,714,927 B1
`______________________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`TABLE OF CONTENTS
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`1. Introduction. ................................................................................................ 1
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`2. Overview of the ‘927 Patent. ...................................................................... 1
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`3. Argument. ................................................................................................... 9
`
`
`A. Petitioner Has Failed to Provide any Claim Constructions, Hence the
`Petition is Fatally Deficient. ........................................................................ 9
`
`B. Petitioner Has Failed to Demonstrate a Reasonable Likelihood that any
`of the Challenged Claims are Unpatentable. ............................................. 12
`
`B. Petitioner’s Proposed Reasons for Combining the Teachings of the
`References Rely on Impermissible Hindsight, Hence Petitioner’s
`Obviousness Analysis is Defective. .......................................................... 21
`
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`4. Conclusion. ............................................................................................... 24
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`TABLE OF AUTHORITIES
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`
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`CASES
`Alza Corp. v. Mylan Labs., Inc.,
`464 F.3d 1286 (Fed. Cir. 2006) ................................................................. 20
`
`!B
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`!G
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`lackberry Corp. v. MobileMedia Ideas, LLC,
`IPR2013-00036 (P.T.A.B. Mar. 7, 2014) .................................................... 9
`
`rain Processing Corp. v. American Maize-Prods. Co.,
`840 F.2d 902 (Fed. Cir. 1988) ................................................................... 22
`
`artness Int’l. Inc. v. Simplimatic Engineering Co.,
`819 F.2d 1100 (Fed. Cir. 1987) ................................................................. 21
`
`!H
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`!I
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`!I
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`!I
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`!I
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`!I
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`n re Am. Acad. of Sci. Tech. Ctr.,
`367 F.3d 1359 (Fed. Cir. 2004) ................................................................. 10
`
`n re Dembiczak,
`175 F.3d 994 (Fed. Cir. 1999) ................................................................... 23
`
`n re Gorman,
`933 F.2d 982 (Fed. Cir. 1991) ................................................................... 24
`
`n re McLaughlin,
`443 F.2d 1392 (CCPA 1971) ..................................................................... 22
`
`n re Suitco Surface, Inc.,
`604 F. 3d 1255 (Fed. Cir. 2010) ................................................................ 10
`
`inetic Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012) ................................................................. 23
`
`SR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .................................................................................. 13
`
`iii!
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`STATUTES
`35 U.S.C. § 314(a) ........................................................................................ 12
`
`EGULATIONS
`37 C.F.R. § 42.104(b)(3) ........................................................................... 9, 12
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`7 C.F.R. § 42.108(c).............................................................................. 12, 21
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`1. Introduction.
`
`Petitioner challenges the patentability of claims 1, 2, and 6 of U.S.
`
`Patent 5,714,927 (the “’927 Patent”). The Patent Trial and Appeal Board
`
`(“Board”) should not institute inter partes review of the ‘927 Patent because
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`Petitioner has not met its burden to show a reasonable likelihood that any
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`challenged claim of the ‘927 Patent is unpatentable.
`
`
`
`2. Overview of the ‘927 Patent.
`The ‘927 Patent discloses an improved method for using side
`
`detection radar to warn a driver about objects in the blind spot of a vehicle.1
`
`Generally, vehicles that use radar detection systems do so to identify nearby
`
`obstacles, or “targets.”2 Such systems analyze the relative speeds of the host
`
`and target and decide whether to “report” a target.3 Figure 1 of the ‘927
`
`Patent, an annotated version of which is reproduced below, shows a vehicle
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`with side detection radar antennae behind the side view mirror. The antennae
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`are part of a side detection system,4 which also includes a signal processor, a
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`!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
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`1 Ex. 1001 at Abstract.
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`2 Id. at 1:13-4.
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`3 Id. at 1:35-39.
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`4 Id. at 2:66-3:2.
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`!
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`1!
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`transceiver and a microprocessor that receives and processes data.5 Further,
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`the ‘927 Patent incorporates by reference U.S. Patent No. 5,530,447, which
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`discloses a method and system in which the microprocessor computes host
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`vehicle speed to determine whether an object is a hazard.6
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`
`
`
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`The system disclosed in the ‘927 Patent improves upon previous ones
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`by avoiding signal dropout and improving the zone of coverage of the side
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`radar detection system as perceived by the driver.7 The ‘927 Patent meets
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`these two improvements with a specific approach by sustaining an alert
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`signal for a variable time, based on the speed of the vehicles. The increased
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`length (time) of the alert signal both covers up dropouts in the radar system
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`and makes it appear (from the driver’s perspective) that the radar system’s
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`5 Id. at 3:14-24.
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`6 Id. at 3:34-38.
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`7 Id. at 2:9-35.
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`zone of coverage has been extended.8
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`Figures 3a – 3d of the ‘927 Patent illustrate the dropout problem and
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`the manner in which the ‘927 Patent’s sustained alert signal masks it. When
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`a radar signal reflects off of
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`some portions of a target
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`vehicle 36 (e.g., the wheel
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`wells), it creates dips 38 in the
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`return signal’s field strength
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`(Fig. 3b). This results in
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`dropouts in a raw alert
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`command issued by the system
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`(Fig. 3c). These dropouts or
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`gaps 44 in the raw alert command correspond to the weak portions 38 of the
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`radar signal returned from the target vehicle. By “judiciously sustaining each
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`individual alert signal 42,” however, such drop-offs are not present in the
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`alert presented to the driver.9 In other words, by adding “a variable sustain
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`time . . . to each alert signal which exceeds a threshold value” this gap-filling
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`3!
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`8 Id. at 2:25-35.
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`9 Id. at 3:52 – 4:7.
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`
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`method “extend[s] the perceived zone of coverage” of the radar system.10
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`Figure 4 of the ‘927 patent, which is reproduced below, shows the
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`actual radar zone of coverage and the increased perceived zone of coverage
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`that results from the application of a variable sustain time.
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`
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`For a target vehicle 52 travelling slower than the host vehicle 50, the radar
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`“covers a zone 54 to provide a raw alert signal when the vehicle 52 is still in
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`that zone.”11 By sustaining the alert signal, “a zone of extension 56 is created
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`to effectively increase the zone of coverage.”12 Similarly, for a target vehicle
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`60 travelling faster than the host vehicle, the “zone 62 actually monitored by
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`radar is supplemented by a zone extension 64 due to the sustain period 48.”13
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`!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
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`10 Id. at Abstract; 3:65 – 4:7.
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`11 Id. at 4:11-12.
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`12 Id. at 4:13-14.
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`13 Id. at 4:18-19.
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`4!
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`A signal sustaining algorithm determines how long to maintain the
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`alert signal.14 ‘Figure 5 ( reproduced below) depicts a flow chart of the alert
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`signal sustaining algorithm.15 The alert device determines three variables: a
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`minimum alert time threshold
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`“THRESHOLD,” a function of
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`vehicle speed 78; a minimum
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`sustain time delay “HOLD,” a
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`function of speed 80; and a
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`variable minimum sustain time
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`“SUSTIME,” a function of
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`relative vehicle speed 82.16 If
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`an alert is active for longer
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`than the THRESHOLD time,
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`the alert is maintained until the
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`variable sustain time (SUSTIME) is reached; the alert then turns off.17 If the
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`alerts are active for less than the THRESHOLD time, the alert turn-off is
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`14 Id. at 4:22-23.
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`15 Id.
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`16 Id. at 4:35-41.
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`17 Id. at 4:41-44.
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`5!
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`delayed for the HOLD time.18
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`Suggested THRESHOLD, HOLD, and SUSTIME values vary
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`according to vehicle speed.19 Ideal THRESHOLD times are in the range of
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`160-300 milliseconds, decreasing stepwise as a function of speed.20 This
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`sustains the alert signal longer at higher speeds, when there is less
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`probability of a false alarm.21 HOLD values increase as a function of speed,
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`in the 0-200 millisecond range.22 Holding the signal for longer at higher
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`speeds helps to mask flickers due to multiple reflections or weak signals
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`from the front or rear of a target vehicle.23 Suggested variable SUSTIME
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`values decrease stepwise from 2.5-0.6 seconds as a function of relative
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`vehicle speed, as shown in Figure 7 of the ‘927 Patent, which is reproduced
`
`below.24 These values should extend the perceived zone of coverage by
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`!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
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`18 Id. at 4:44-46.
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`19 Id. at 4:37-42.
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`20 Id. at 4:53-56.
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`21 Id. at 4:53-61.
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`22 Id. at 4:61-64.
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`23 Id. at 4:64-67.
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`24 Id. at 5:1-4.
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`!
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`6!
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`about 10 feet beyond what would occur if a sustain time were not used.25
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`The challenged claims of the ‘927 Patent are reproduced below for
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`
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`reference:26
`
`1. In a radar system wherein a host vehicle uses radar to
`detect a target vehicle in a blind spot of the host vehicle
`driver, a method of improving the perceived zone of
`coverage response of automotive radar comprising the
`steps of:
`determining the relative speed of the host and
`target vehicles;
`selecting a variable sustain time as a function of
`relative vehicle speed;
`detecting target vehicle presence and producing an
`alert command;
`activating an alert signal in response to the alert
`command;
`
`7!
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`25 Id. at 5:5-6.
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`26 Id. at 5:28 – 6:5; 2:18-21.
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`
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`at the end of the alert command, determining
`whether the alert signal was active for a threshold time;
`and
`
`if the alert signal was active for the threshold time,
`sustaining the alert signal for the variable sustain time,
`wherein the zone of coverage appears to increase
`according to the variable sustain time.
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`2. The invention as defined in claim 1 wherein the
`variable sustain time is an inverse function of the relative
`vehicle speed.
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`6. The invention as defined in claim 1 including:
`determining host vehicle speed; and
`selecting the threshold time as a function of the
`host vehicle speed.
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`8!
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`3. Argument.
`A. Petitioner Has Failed to Provide any Claim Constructions,
`Hence the Petition is Fatally Deficient.
`
`Petitioner recites the legal framework within which the claims of the
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`‘925 Patent are to be construed,27 but thereafter fails to provide any
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`construction for the terms of the claims. This is a fatal defect in the petition
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`for it is contrary to the requirement that the petition “identify . . . [h]ow the
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`challenged claim is to be construed.”28 Accordingly, no inter partes review
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`should be instituted.
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`More than just an administrative item in the checklist for assembling
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`an inter partes review petition, the need to set forth a proposed construction
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`of the claims is a necessary requirement for any analysis of the claims vis-à-
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`vis the prior art.29 Absent such a construction the teachings of the prior art
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`!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
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`27 Pet. at 8.
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`28 37 C.F.R. § 42.104(b)(3).
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`29 See, e.g., Blackberry Corp. v. MobileMedia Ideas, LLC, IPR2013-00036,
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`Paper 65 at 20 (P.T.A.B. Mar. 7, 2014) (recognizing that one cannot conduct
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`a necessary factual inquiry for determining obviousness—ascertaining
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`differences between the claimed subject matter and the prior art—without
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`arriving at a proper construction of the claims).
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`9!
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`cannot properly be applied to the claims. Nor can a petitioner’s arguments
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`with respect to the prior art be properly evaluated.
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`Here, it is evident that Petitioner has inferred certain meanings with
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`respect to the terms of the claims at issue, but nowhere has petitioner
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`explained why those inferences are appropriate. For example, in connection
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`with claim 1, Petitioner contends that, “an ‘information signal[]’ described
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`by Fujiki, such as the signal fed to the brake actuator 5, constitutes ‘an alert
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`signal’ as claimed in the ’927 patent.”30 Why this should be so is not
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`explained, nor is there any discussion (by Petitioner or its declarant) as to
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`whether this proposed construction would be that understood by a person of
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`ordinary skill in the art having had the benefit of reading the specification.31
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`A further example concerns claim 1’s requirement for “detecting
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`target vehicle presence and producing an alert command.” According to
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`30 Pet. at 20, fn. 2.
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`31 In re Suitco Surface, Inc., 604 F. 3d 1255, 1260 (Fed. Cir. 2010)
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`(“[C]laims should always be read in light of the specification and teachings
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`in the underlying patent.”); In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
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`1359, 1364 (Fed. Cir. 2004) (even under a broadest reasonable interpretation
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`standard, claims must still be construed “in light of the specification as it
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`would be interpreted by one of ordinary skill in the art.”)
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`Petitioner, “Bernhard describes radar devices detecting the presence of
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`objects around the driver’s vehicle, processing the raw data from the radar,
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`and instructing the driver whether a lane change is possible.”32 Petitioner
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`offers no explanation as to how this activity is properly understood as
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`“producing an alert command” and its declarant’s statements to that effect
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`are of no consequence. Indeed, Petitioner’s declarant says only
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`Referring to the radar devices, Bernhard states that
`“[t]hese devices detect the presence of objects in the
`respective area covered by them, and also permit the
`distance from the object to be determined.” Bernhard,
`col. 3, ll. 40-43. The raw data from these radar devices
`are processed, including filtering out faults, and tested for
`sufficient plausibility. Bernhard, col. 4, ll. 40-44.
`Bernhard therefore detects the presence of a target
`vehicle, and produces an alert command.33
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`This conclusion offers no insight into the proper construction of “producing
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`an alert command.” At best, Petitioner’s declarant has cited some
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`unspecified “filtering” and “testing” operations (without describing what
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`they are) but has not explained why a person of ordinary skill in the art
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`32 Pet. at 19 (citing Ex. 1003 at 3:40-43; 4:40-4; 5:44 – 6:22 and Ex. 1002 at
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`¶¶ 11-12.)
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`33 Ex. 1002 at ¶ 11.
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`11!
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`would understand these operations to be equivalent to “producing an alert
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`command.”
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`
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`These examples demonstrate the importance of the requirement to
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`“identify . . . [h]ow the challenged claim is to be construed,”34 and why
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`Petitioner’s failure to do so renders its petition deficient. Accordingly, no
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`inter partes review should be instituted.
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`
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`B. Petitioner Has Failed to Demonstrate a Reasonable Likelihood
`that any of the Challenged Claims are Unpatentable.
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`An inter partes review may be instituted only if “the information
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`presented in the petition . . . and any response . . . shows that there is a
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`reasonable likelihood that the petitioner would prevail with respect to at least
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`1 of the claims challenged in the petition.”35 Here, Petitioner has not met this
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`requirement. Hence, no inter partes review should be instituted.
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`Petitioner proposes the combination of Bernhard, U.S. Patent
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`5,521,579 (Ex. 1003),36 Pakett, U.S. Patent 5,325,096 (Ex. 1005), and Fujiki,
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`!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
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`34 37 C.F.R. § 42.104(b)(3).
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`35 35 U.S.C. § 314(a); 37 C.F.R. § 42.108(c).
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`36 Petitioner also cites a foreign counterpart of Bernhard, GB 2,277,653 A,
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`however, it is unclear from the petition which reference is actually relied
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`12!
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`U.S. Patent 4,053,026) as a basis for finding claims 1, 2, and 6 of the ‘927
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`Patent obvious under 35 U.S.C. § 103.37 In doing so, however, Petitioner
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`resorts to cobbling together different disclosures of the individual references
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`and applies those disparate teachings against various elements of the
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`claims.38 Petitioner does not attempt to analyze the references against the
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`claims as a whole, evaluate the differences there between, and then explain
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`why the subject matter of the claims would have been obvious to the person
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`of ordinary skill in the art. Hence, petitioner’s analysis is fundamentally
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`flawed. 39 When one does examine the teachings of the cited references and
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`upon for purposes of the proposed ground of unpatentability. In this
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`preliminary response, Patent Owner confines its citations to Ex. 1003, which
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`is the reference that Petitioner’s declarant relied. See Ex. 1002 at ¶ 2.
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`37 Pet. at 16.
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`38 Id. at 17-23.
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`39 KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (A claim is
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`unpatentable under 35 U.S.C. § 103(a) only if the differences between the
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`subject matter sought to be patented and the prior art are such that the
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`subject matter as a whole would have been obvious at the time the invention
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`was made to a person having ordinary skill in the art to which said subject
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`matter pertains).
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`13!
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`the claims as a whole, it is apparent that substantial differences exist
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`therebetween and that the claimed invention would not have been obvious to
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`a person of ordinary skill in the art.
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`Consider, for example, what the resultant combination of Bernhard,
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`Pakett, and Fujiki would actually suggest. Bernhard describes a process for
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`providing lane change assistance to the driver of a motor vehicle using, inter
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`alia, a blind-spot radar device.40 According to Bernhard, once activated the
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`system detects distances to various objects in adjacent lanes from that in
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`which the subject vehicle is traveling,41 computes associated safety
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`distances,42 and compares the measured distances to the safety distances to
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`determine whether the driver can safely change lanes.43 If a lane change can
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`be safely executed, an indicator is displayed to the driver.44
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`Pakett also describes a radar system for detecting objects in a
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`vehicle’s blind spots.45 In this system, measurements of Doppler shift in the
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`40 Ex. 1003 at 1:8-16; 2:3-8; 3:33-40.
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`41 Id. at 4:34-39.
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`42 Id. at 4:55-63.
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`43 Id. at 5:19-32.
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`44 Id. at 5:26-32.
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`45 Ex. 1005 at Abstract.
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`14!
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`received radar signal are used to determine when an object has moved into a
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`blind spot.46 As part of this system, certain filters are employed in order to
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`prevent object of no interest (e.g., stationary objects) from generating an
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`alert indication.47 Also, once an alert indication has been activated, a check
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`is made to see whether or not the “warning has been on display for more
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`than one second without being reactivated (STEP 318)[; if so the system]
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`causes the warning to cease being displayed (STEP 319).”48 On the other
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`hand, “if an obstacle reflects the RF transmit signal back to the antenna 7,
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`causing the output of the square wave generator 29 to transition, but no
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`further reflections are detected for over two seconds, the system behaves as
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`if the next transition of the square wave generator is unrelated to the last
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`transition . . . .”49 Thus, the system ensures that an “obstacle that caused the
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`transition persists for more than the time required to travel 15 feet.”50 During
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`46 Id.
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`47 Id. at 2:5-13.
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`48 Id. at 8:2-5.
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`49 Id. at 8:17-25.
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`50 Id. at 8:23-25.
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`15!
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`this (or any other) “persistence period,” “no warnings are sent to the driver
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`indicators.”51
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`Fujiki describes an automatic braking system for a vehicle that
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`employs a forward-looking radar system.52 This system is not associated
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`with a vehicle’s blind spots, but rather involves detection of objects in front
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`of the vehicle and determinations of whether or not collisions with such
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`objects are imminent.53 In order to ensure the brakes of the vehicle are
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`applied smoothly and for an adequate time or distance, the system maintains
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`the braking action even after a “danger” signal disappears.54 Indeed, this
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`extended braking is applied in all instances, regardless of the duration of the
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`“danger” signal.55 In particular, in the “first embodiment” illustrated in Fig.
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`4 of Fujiki (reproduced below), every time a transition from a logic 1 to a
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`51 Id. at 6:40-56 (warnings are sent only after the expiration of a persistence
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`period and then then only if an object is detected within one second after the
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`end of the persistence period).
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`52 Ex. 1006 at 1:5-12, 53-62; 3:3-30; 4:32-37.
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`53 Id. at 1:20-25; and see Fig. 1.
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`54 Id. at 1:53-62.
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`55 Id. at 3:45 – 4:3; 4:56 – 5:12.
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`logic 0 appears at the output of comparator 13, monostable multivibrator 17
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`generates a logic 1 for at least a given or pre-selected time, ensuring that the
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`brake actuator driving circuit 18 remains engaged for that time).56 Similarly,
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`in the “second embodiment,” illustrated in Fig. 6 of Fujiki (shown here),
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`whenever a transition from a logic 1 to a logic 0 occurs on the output of
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`comparator 13, flip-flop 21
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`will output a logic 1 for a time
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`corresponding to a half cycle
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`of the pulse generator 24,
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`ensuring that the brake
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`actuator driving circuit 18 remains engaged for that time.57
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`56 Id. at 3:45 – 4:3
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`57 Id. at 4:56 – 5:12.
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`17!
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`Thus, the combined teachings of Bernhard, Pakett, and Fujiki would,
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`if anything, result in a system in which a radar system (perhaps, for sake of
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`argument, used to detect objects in a vehicle’s blind-spot) uses one or more
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`techniques (e.g., measurements of Doppler shift as taught by Pakett) to
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`detect objects in adjacent lanes and the like, and which employs a
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`“persistence period” (as taught by Pakett) during which no warnings are
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`provided to a driver so as to filter out stationary objects or other objects
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`deemed to be of no interest.58 After the expiration of a persistence period,
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`the system would, if an alert indication has been activated, check to see
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`whether or not the “warning has been on display for more than one second
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`without being reactivated.” 59 If so the system would cease displaying the
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`warning.60 However, in all instances when an alert was displayed, regardless
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`of how long it was displayed, the system would maintain the alert indication,
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`as taught by Fujiki.61 Such a system is manifestly different from that recited
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`in claim 1 of the ‘927 Patent.
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`!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
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`58 Ex. 1005 at 2:5-13.
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`59 Id. at 8:2-5.
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`60 Id.
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`61 Ex. 1006 at 3:45 – 4:3; 4:56 – 5:12
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`!
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`18!
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`As indicated above, claim 1 of the ‘927 Patent requires “activating an
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`alert signal in response to the alert command; at the end of the alert
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`command, determining whether the alert signal was active for a threshold
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`time; and if the alert signal was active for the threshold time, sustaining the
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`alert signal for the variable sustain time.”62 No such operations occur when
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`considering the combined teachings of Bernhard, Pakett, and Fujiki because
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`according to Fujiki, in all instances when an alert is displayed, regardless of
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`how long, the system would maintain the alert indication.63 That is, there
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`would not be any assessment of whether or not the alert was “alert signal
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`was active for a threshold time” and only “sustaining the alert signal for the
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`variable sustain time” if that condition was satisfied, as required by claim 1.
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`Instead, the “alert signal” (assuming one is present in the combined
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`teachings of Bernhard, Pakett, and Fujiki) is always sustained once it is
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`generated because of the actions of the logic elements described by Fujiki. In
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`the system described by Fujiki, there is no instance in which an alert signal
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`is activated but not sustained.
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`A similar observation may be made of Petitioner’s description of the
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`Pakett system. As alleged by Petitioner, in the Pakett system the warning
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`62 Ex. 1001 at 5:39-44 (emphasis added).
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`63 Ex. 1006 at 3:45 – 4:3; 4:56 – 5:12
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`19!
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`
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`signal is always displayed for “at least one second after its activation.”64
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`This is a further example of why the combination of the cited references
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`does not suggest sustaining an alert signal for a variable sustain time if the
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`alert signal was active for a threshold time, as required by claim 1.
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`As indicated above, an obviousness analysis measures the difference
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`between the claimed invention and the prior art to determine whether “the
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`subject matter as a whole would have been obvious at the time the invention
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`was made” to a person having ordinary skill in the art.65 In the present case,
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`Petitioner has not evaluated the claimed subject matter as a whole and has
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`not assessed or explained why the differences between the claimed invention
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`and the combined teachings of Bernhard, Pakett, and Fujiki would be
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`obvious to a person of ordinary skill in the art.66 Indeed, such an analysis
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`reveals that the subject matter of claim 1 would not be obvious at least
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`because the combined teachings of the references would suggest always
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`!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
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`64 Pet. at 18 (citing Ex. 1005 at 7:64 – 8:5).
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`65 Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1289 (Fed. Cir. 2006)
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`(citations omitted).
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`66 Notably, Petitioner’s declarant offers no opinion on what the combination
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`of Bernhard, Pakett, and Fujiki would yield and instead merely describes
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`isolated teachings of each of the references.
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`20!
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`!
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`
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`“sustaining” an alert once it is generated and not if the alert signal was active
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`for a threshold time, as required by claim 1. Accordingly, claim 1 is not
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`unpatentable under 35 U.S.C. § 103 in view of the combined teachings of
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`the cited references.
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`Claims 2 and 6 depend from claim 1 and are therefore patentable over
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`the cited references for at least the same reasons as claim 1.67 Accordingly,
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`Petitioner cannot prevail with respect to its challenges of claims 1, 2 and 6
`
`and so no inter partes review should be instituted.68
`
`
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`B. Petitioner’s Proposed Reasons for Combining the Teachings of
`the References Rely on Impermissible Hindsight, Hence
`Petitioner’s Obviousness Analysis is Defective.
`
`The petition, as well as the declaration offered by Dr. Bevly, discusses
`
`each of the elements of the claims in isolation and attempts to map various
`
`excerpts of the cited references onto those elements.69 While “[a]ny
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`judgment on obviousness is in a sense necessarily a reconstruction based on
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`!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
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`67 Hartness Int’l. Inc. v. Simplimatic Engineering Co., 819 F.2d 1100 (Fed.
`
`Cir. 1987).
`
`68 37 C.F.R. § 42.108(c).
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`!
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`21!
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`69 See, e.g., Pet. at 17-23; Ex. 1002 at ¶¶ 11, 12, 15, 17, 19, 20.
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`
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`hindsight reasoning,”70 it is nevertheless improper to disassemble the
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`invention into its constituent elements and use the patent as a blueprint to
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`reconstruct the claimed invention from isolated teachings of the prior art.71
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`Yet, this is precisely what Petitioner and its declarant have done.
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`Nowhere does the petition present the point of view of the person of
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`ordinary skill in the art and the level of skill and knowledge such an
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`individual would have. Petitioner claims, without reference to any
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`supporting evidence, that, “It would have been obvious to modify radar-
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`based object detection systems for detecting objects all around the vehicle,
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`such as described by Bernhard, with the sustained alerts of Pakett and Fujiki,
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`and more particularly, the alert sustained as a function of relative vehicle
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`speed of Fujiki, to ensure that the alert condition is only released under safe
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`conditions.”72 However, Petitioner does not explain why this is so and does
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`not even articulate what the person of ordinary skill in the art would
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`understand from the combination of references being proposed. As
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`demonstrated above, that combination leads to a very different result than
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`!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
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`70 In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
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`71 See, e.g., Grain Processing Corp. v. American Maize-Prods. Co., 840 F.2d
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`902, 907 (Fed. Cir. 1988).
`
`72 Pet. at 39.
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`!
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`22!
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`
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`what is recited in the claims of the ‘927 Patent and nowhere has Petitioner
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`described why it would be obvious to modify such a resulting system to
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`arrive at the claimed invention.
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`Instead, Petitioner and its declarant have merely cataloged the parts of
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`the claims and attempted to provide an index as to where those disparate
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`parts may be found in the cited references. Even assuming Petitioner’s
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`cataloging is correct (which it is not), it is only the ‘927 Patent that teaches
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`one of ordinary skill in the art how those elements should be combined in
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`order to arrive at the claimed system. For example, Petitioner cites nothing
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`that would suggest to the person of ordinary skill in the art how to modify a
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`system that always sustains an alert once it is generated to be one in which
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`an alert signal may be activated but not sustained if that alert does not exist
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`for a threshold period.
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`Instead, Petitioner’s bare recitation of disparate claim elements
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`scattered throughout multiple prior art references stitched together with
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`flawed logic and unsound conclusions bears all of the hallmarks of hindsight
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`reconstruction of the claim in the prior art. As such, it is forbidden.73 The
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`!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
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`73 See In re Dembiczak, 175 F.3d 994, 998 (Fed. Cir. 1999); see also Kinetic
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`Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1368 (Fed. Cir.
`
`2012).
`
`!
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`23!
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`
`
`reasons for modifying the teachings of a reference must be apparent at the
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`time of the invention and thus apparent without the use of hindsight. The
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`lack of consideration given to this requirement (indeed, the absence of any
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`discussion of the result of the proposed combination of the references) in
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`Petitioner’s analysis is a signal that Petitioner is engaging in impermissible
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`hindsight.74 Accordingly, Petitioner has not met its burden to show a
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`reasonable likelihood that any challenged claim of the ‘927 Patent is
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`unpatentable and no inter partes review should be instituted.
`
`
`
`
`
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`4. Conclusion.
`For at least the foregoing reasons, no inter partes review should be
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`instituted on the identified grounds. Further, as this is Patent Owner’s
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`Preliminary Response, it is not a comprehensive rebuttal to all arguments
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`raised by the Petition. If a trial is instituted, Patent Owner reserves the right
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`to contest the Petition on all grounds permitted under the applicable rules.
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`!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
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`74 See In re Gorman, 933 F.2d 982, 987 (Fed. Cir. 1991) (“It is
`
`impermissible, however, simply to engage in a hindsight reconstruction of
`
`the claimed invention, using the applicant's structure as a template and
`
`selecting elements from references to fill the gaps.”).
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`!
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`24!
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`
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`Moreover, nothing herein should be construed as a concession or admission
`
`by Patent Owner as to any fact or argument proffered in the Petition
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`
`
`Respectfully submitted,
`
`/Tarek N. Fahmi/
`Tarek N. Fahmi
`Reg. No. 41,402
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`Dated: July 9, 2015
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`
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`Ascenda Law Group, PC
`333 W San Carlos St., Suite 200
`San Jose, CA 95110
`Tel: 866-877-4883
`Email: tarek.fahmi@ascendalaw.com
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`
`
`
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`!
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`25!
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`
`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing
`PATENT OWNER’S PRELIMINARY RESPONSE
`was served on July 9, 2015, by filing this document though the Patent
`Review Processing Sys
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