`U.S. Patent No. 6,012,007
`Paper No. 19
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`AMERICAN HONDA MOTOR CO., INC., NISSAN NORTH AMERICA, INC.,
`and KIA MOTORS AMERICA, INC.
`Petitioners,
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`v.
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`SIGNAL IP, INC.
`Patent Owner.
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`Case IPR2015-010041
`U.S. Patent No. 6,012,007
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`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE
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`1 Nissan North America, Inc. (“Nissan”) and Kia Motors America, Inc. (“Kia”)
`were joined as parties to this proceeding via Motions for Joinder in IPR2016-
`00113 and IPR2016-00115, respectively. During the conference call with the
`PTAB held on March 29, 2016, the PTAB specifically authorized Kia to file the
`instant Reply on behalf of Kia and Nissan in IPR2015-01004. However, Lead
`Counsel for Kia and Nissan are not authorized to electronically file in IPR2015-
`01004. Counsel for Kia spoke on April 4, 2016 to the Paralegal Operations
`Manager, Maria Vignone, who informed counsel for Kia that she would file the
`instant Reply on behalf of Kia and Nissan in IPR2015-01004.
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`I.
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`II.
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`TABLE OF CONTENTS
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`Introduction .................................................................................................... 1
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`Schousek’s Disclosure of a “Minimum Weight Threshold for an
`Occupied Infant Seat” Corresponds to “Establishing a First
`Threshold of the Relative Weight Parameter” as Recited in
`Claims 1 and 17 of the ʼ007 Patent. .............................................................. 3
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`III. Schousek Discloses Establishing a Lock Threshold above the First
`Threshold. ....................................................................................................... 5
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`IV. Schousek Discloses Setting a Lock Flag When the Relative Weight
`Parameter is above the Lock Threshold and Deployment Has Been
`Allowed for a Given Time. ............................................................................ 7
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`V.
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`Schousek Discloses Clearing the Lock Flag When the Relative
`Weight Parameter is Below the Unlock Threshold for a Time. ................ 8
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`VI. Claims 18 and 19 of the ʼ007 Patent are Obvious in View of
`Schousek and Blackburn ............................................................................... 9
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`VII. Conclusion ...................................................................................................... 9
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`i
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`Cases
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`TABLE OF AUTHORITIES
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`Page(s)
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`Boesen v. Garmin Int’l., Inc.,
`455 F. App’x 974 (Fed. Cir. 2011) ....................................................................... 4
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`Richardson v. Suzuki Motor Co.,
`868 F.2d 1226 (Fed. Cir. 1989) ........................................................................ 4, 5
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`ii
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`I.
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`INTRODUCTION
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`In its Patent Owner’s Response (“POR”; Paper No. 14), Patent Owner
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`(“PO”) fails to present any new substantive arguments that would require the
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`Board to reconsider its Institution Decision. (Paper No. 11). Instead, without
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`presenting any new facts in its POR, PO relies on recycled criticisms and
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`arguments that it had presented to the Board in its Preliminary Patent Owner’s
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`Response submitted in IPR2016-00113 and IPR2016-00115. (IPR 2016-00113,
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`Paper No. 9; IPR2016-00115, Paper No. 14). The Board had already considered
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`and correctly rejected those arguments. (Paper Nos. 15 and 16, at 3-4). Having no
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`new substantive arguments in its arsenal, PO raises no new facts in its POR that
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`would compel a different result here.
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`For example, PO argues that Schousek cannot anticipate claims 1 or 17
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`because in Schousek, air bag deployment is not allowed when the seat sensors
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`detect a weight above the minimum weight of an occupied infant seat because the
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`seat sensors in Schousek must also detect a forward-facing infant seat. The Board
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`considered this and found that PO acknowledged that “in Schousek ‘if the seat
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`sensors determine that the total weight of the seat occupant is greater than the
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`minimum weight of an occupied infant seat’ and ‘the center of weight distribution
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`is determined to be not forward of a reference line – a condition indicative of a
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`forward-facing infant seat – [] airbag deployment [is] permitted.’” (Paper Nos. 15
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`1
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`and 16, at 3). Thus, Schousek allows deployment when the relative weight
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`parameter is above the first threshold.
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`Moreover, PO’s argument that the maximum weight value of an occupied
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`infant seat in Schousek is not equivalent to the ʼ007 Patent’s “first threshold”
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`ignores Petitioners’ contentions, which rely on Schousek’s minimum weight value
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`to meet the claimed “first threshold.” (See Pet. 17-18.)
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`Lastly, as the Board noted in Paper No. 16, PO’s argument concerning the
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`setting and clearing of the lock flag were addressed in detail in the ʼ1004
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`Institution Decision. Schousek teaches “setting a lock flag” by setting the previous
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`decision to allow deployment if all five enablement decisions in the decision array
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`are to allow deployment when the total weight parameter is above the maximum
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`infant seat weight threshold. Schousek discloses “clearing the flag” when the
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`previous decision is to allow airbag deployment and five consecutive subsequent
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`decisions to inhibit deployment occur due to the total weight parameter being
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`below the minimum infant weight threshold, thus setting the previous decision to
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`now inhibit airbag deployment.
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`
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`Accordingly, Petitioners respectfully request the Board deny POR and adopt
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`the facts and reasoning in Petitioners’ Petition and Reply and make final the
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`Institution Decision, finding claims 1-3, 5, 9, and 17-21 of the ʼ007 Patent
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`unpatentable.
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`2
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`II. SCHOUSEK’S DISCLOSURE OF A “MINIMUM WEIGHT
`THRESHOLD
`FOR
`AN OCCUPIED
`INFANT
`SEAT”
`CORRESPONDS TO “ESTABLISHING A FIRST THRESHOLD OF
`THE RELATIVE WEIGHT PARAMETER” AS RECITED IN
`CLAIMS 1 AND 17 OF THE ʼ007 PATENT.
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`The Board correctly observed in its Institution Decision that PO had yet to
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`dispute in its Preliminary Response Petitioners’ contentions regarding this
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`limitation and found PO’s lack of dispute in its Preliminary Response as persuasive
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`for purposes of the Board’s Institution Decision. (Paper No. 11, at 8). PO’s
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`argument in its POR regarding this limitation fares no better to persuade the Board
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`that the challenged claims are valid, as the argument is substantially the same as
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`was rejected by the Board in its Decisions granting Institution of the Nissan and
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`Kia IPRs. (Paper Nos. 15 and 16, at 3). Essentially, PO argues that Schousek does
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`not allow airbag deployment when the relative weight parameter is above the first
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`threshold, yet it admits that Schousek permits deployment “if the seat sensors
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`determine that the total weight of the seat occupant is greater than the minimum
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`weight of an occupied infant seat” and “the center of weight distribution is
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`determined to be not forward of a reference line – a condition indicative of a
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`forward facing seat.” (IPR2016-00115, Paper No. 14, at 12.)
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`Indeed, the ʼ007 Patent describes a system for detecting dynamic road
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`conditions and “off center weight distributions caused by sitting on a seat edge or
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`leaning in one direction…” HN-1001, 5:38-39. This is similar to Schousek’s
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`3
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`determining step of whether or not the center of weight distribution is forward of
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`the reference line. Schousek discloses that “[i]f the center of weight distribution is
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`not forward of the reference line, a forward facing infant seat is detected and a
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`decision is made to allow deployment of the air bag[.]” HN-1004, 5:47-50. Thus,
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`Schousek discloses that if the total weight parameter is greater than the minimum
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`infant seat weight, but less than the maximum infant seat weight, deployment of
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`the airbag is allowed according to the weight distribution detected by the sensors.
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`The Federal Circuit has found that as long as the accused product or system
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`can—and does—perform the claimed method, “it is of no consequence that it can
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`also perform other” method steps. See Boesen v. Garmin Int’l., Inc., 455 F. App’x
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`974, 977 (Fed. Cir. 2011) ("The district court correctly explained that as long as the
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`Acura navigation system can—and does—perform the claimed input method, it is
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`of no consequence that it can also perform other input methods.”). Here, it is of no
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`consequence that Schousek determines whether or not the center of weight
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`distribution is not forward of the reference line because Schousek can—and does—
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`allow deployment when the relative weight parameter is above the first threshold.
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`Moreover, PO’s reliance on Richardson v. Suzuki Motor Co., 868 F.2d 1226
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`(Fed. Cir. 1989) is misplaced. In Richardson, the Federal Circuit affirmed the
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`district court’s finding that the prior art did not anticipate the asserted claims not
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`because the prior art disclosed an additional step or requirement, but rather the
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`4
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`prior art did not disclose certain claim limitations of the asserted patent. 868 F.2d
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`at 1236. This is not the case here. As explained, Schousek discloses “allowing
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`deployment when the relative weight parameter is above the first threshold” as
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`required in claims 1 and 17.
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`Additionally, because claims 2, 3, 5, and 9 depend from claim 1, and claims
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`20 and 21 depend from claim 17, these dependent claims include the limitations of
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`claims 1 and 17 and are thus anticipated by Schousek.
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`III. SCHOUSEK DISCLOSES ESTABLISHING A LOCK THRESHOLD
`ABOVE THE FIRST THRESHOLD.
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`The Board has already correctly rejected PO’s erroneous statement that
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`Petitioners equate the recited “first threshold” with Schousek’s maximum infant
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`seat weight threshold. (Paper Nos. 15 and 16, at 3-4; Paper No. 11, at 10, n.4). The
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`“first threshold” of claims 1 and 17 is Schousek’s minimum infant seat weight
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`threshold and the “lock threshold” in claims 1 and 17 is Schousek’s maximum
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`infant seat weight threshold. In other words, Petitioners do not contend that the
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`maximum weight of an occupied infant seat in Schousek is the first threshold of
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`the relative weight parameter recited in claims 1 and 17 of the ʼ007 Patent, as PO
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`states. Rather, Petitioners contend that the maximum weight of an occupied infant
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`seat in Schousek is the “lock threshold” as recited in claims 1 and 17 of the ʼ007
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`Patent.
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`5
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`As explained in the Petition, the maximum infant seat weight is a lock
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`threshold because the air bag enablement decision locking procedure described in
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`Schousek is performed when the detected weight exceeds the maximum infant seat
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`weight. (Pet. at 18-21). Thus, because the maximum infant seat threshold (50
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`pounds) is greater than the minimum infant seat threshold (about 10 pounds),
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`Schousek discloses “establishing a lock threshold above the first threshold” as
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`recited in claims 1 and 17.
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`PO’s argument solely relies on the incorrect assumption that Petitioner
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`equates the maximum weight of an occupied infant seat to the “first threshold of
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`the relative weight parameter” as recited in claims 1 and 17. (POR, at 14-17.)
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`Based on this faulty assumption, PO argues that “[i]n Schousek, there is no
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`threshold that is greater than the maximum weight of an occupied infant seat.”
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`(POR, at 15). Because PO’s argument is entirely based on an incorrect assumption,
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`PO’s argument that claims 1 and 17 are not anticipated by Schousek necessarily
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`fails. Additionally, because claims 2, 3, 5, and 9 depend from claim 1, and claims
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`20 and 21 depend from claim 17, these dependent claims include the limitations of
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`claims 1 and 17 and are thus anticipated by Schousek.
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`6
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`IV. SCHOUSEK DISCLOSES SETTING A LOCK FLAG WHEN THE
`RELATIVE WEIGHT PARAMETER IS ABOVE THE LOCK
`THRESHOLD AND DEPLOYMENT HAS BEEN ALLOWED FOR A
`GIVEN TIME.
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`The Board correctly understood Schousek’s disclosure of “setting the
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`previous decision to allow deployment if all five enablement decisions in the
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`decision array are to allow deployment when the total weight parameter is above
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`the maximum infant seat weight threshold” as disclosing “setting a lock flag when
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`the relative weight parameter is above the lock threshold and deployment has been
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`allowed for a given time.” (Paper Nos. 15 and 16, at 4; Paper No. 11, at 9; Pet. at
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`22). As explained in the Petition, Schousek discloses that “[t]he decision made in
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`each loop execution is stored in an array…” HN-1004, 5:53-54. Specifically,
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`Schousek discloses setting the previous decision (i.e., a lock flag) if the same air
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`bag enablement decision has been stored in five consecutive cycles in the decision
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`array. One of the enablement decisions stored in the array is the decision to deploy
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`if the total weight parameter (i.e., the relative weight parameter) is above the
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`maximum infant weight threshold (i.e., the lock threshold). Thus, Schousek
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`discloses “setting a lock flag when the relative weight parameter is above the lock
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`threshold and deployment has been allowed for a given time” as required in claims
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`1 and 17.
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`7
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` Additionally, because claims 2, 3, 5, and 9 depend from claim 1, and claims
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`20 and 21 depend from claim 17, these dependent claims include the limitations of
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`claims 1 and 17 and are thus anticipated by Schousek.
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`V. SCHOUSEK DISCLOSES CLEARING THE LOCK FLAG WHEN
`THE RELATIVE WEIGHT PARAMETER IS BELOW THE
`UNLOCK THRESHOLD FOR A TIME.
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`The Board is correct to note that Petitioners’ contentions regarding Schousek
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`relative to “clearing the lock flag” do not appear to “assume[] a previous
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`determination to inhibit, rather than deploy, an air bag” as PO suggests. (Paper No.
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`11, at 10). Petitioners confirm and agree with the Board’s understanding of
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`Schousek that when the previous decision is to allow airbag deployment, and five
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`consecutive decisions to inhibit deployment occur subsequently, the “previous
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`decision” is updated to inhibit deployment and the “lock flag” is cleared. (Id. at 10-
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`11; Paper Nos. 15 and 16, at 4).
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`In its POR, PO appears to recycle the same argument that it had presented in
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`its Preliminary Response and makes the same incorrect assumption. PO argues that
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`Schousek sets the “previous decision” to inhibit deployment when the decision to
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`inhibit deployment of the airbag remains unchanged over five consecutive fault
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`monitoring loops. PO appears to argue that in this particular scenario there is no
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`lock flag to clear. As explained above, this is not the case.
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`8
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`Additionally, because claims 2, 3, 5, and 9 depend from claim 1, and claims
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`20 and 21 depend from claim 17, these dependent claims include the limitations of
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`claims 1 and 17 and are thus anticipated by Schousek.
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`VI. CLAIMS 18 AND 19 OF THE ʼ007 PATENT ARE OBVIOUS IN
`VIEW OF SCHOUSEK AND BLACKBURN
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`PO did not rebut Blackburn in its Preliminary Response and again failed to
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`rebut Blackburn in its POR. In its POR, PO does not argue Blackburn on the
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`merits, but makes the conclusory assumption that any combination of Schousek
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`and Blackburn would not render obvious claims 18 and 19 because Schousek
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`allegedly fails to anticipate claims 1 and 17. (POR, at 21-22.)
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`For the reasons stated in the Petition and this Reply, Schousek anticipates
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`claims 1 and 17 of the ʼ007 Patent. And because PO fails to provide any argument
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`as to the merits of the combination of Schousek and Blackburn, let alone as to the
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`merits of Blackburn, claims 18 and 19 of the ʼ007 Patent are obvious in view of
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`Schousek and Blackburn.
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`VII. CONCLUSION
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` For the forgoing reasons, as well as those stated in Petitioners’ prior case
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`submissions, Petitioners respectfully request that the Board make its Institution
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`Decision final, finding claims 1-3, 5, 9, and 17-21of the ʼ007 Patent unpatentable.
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`9
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`Respectfully submitted,
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`GREENBERG TRAURIG, LLP
`
`/s/ Heath J. Briggs
`Heath J. Briggs
`Registration No. 54,919
`1200 17th Street, Suite 2400
`Denver, CO 80202
`KiaGTIPR@gtlaw.com
`Phone: (303) 572-6500
`Fax: (303) 572-6540
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`Patrick J. McCarthy
`Reg. No. 62,762
`GREENBERG TRAURIG, LLP
`2101 L Street, N.W., Suite 1000
`Washington, DC 20037
`KiaGTIPR@gtlaw.com
`Phone: (202) 331-3100
`Fax: (202) 331-3101
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`Respectfully submitted,
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`SHOOK, HARDY & BACON LLP
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`/s/ Patrick A. Lujin
`Patrick A. Lujin
`Registration No. 35,260
`SHOOK, HARDY & BACON LLP
`2555 Grand Blvd.
`Kansas City, MO 64108
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`10
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`Dated: April 4, 2016
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`Dated: April 4, 2016
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`plujin@shb.com
`Phone: (816) 474-6550
`Fax: (816) 421-5547
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`Tawni L. Wilhelm
`Reg. No. 47,456
`SHOOK, HARDY & BACON LLP
`2555 Grand Blvd.
`Kansas City, MO 64108
`twilhelm@shb.com
`Phone: (816) 474-6550
`Fax: (816) 421-5547
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`11
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 4th day of April, 2016, a copy of this
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`Petitioners’ Reply to Patent Owner’s Response has been served in its entirety by
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`Federal Express Mail on the following Patent Owner of record:
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`Ascenda Law Group, PC
`333 W San Carlos St.
`Suite 200
`San Jose CA 95110
`Email: tarek.fahmi@ascendalaw.com
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` holy.atkison@ascendalaw.com
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` GREENBERG TRAURIG, LLP
`
`/s/ Heath J. Briggs
`Heath J. Briggs
`Registration No. 54,919
`1200 17th Street, Suite 2400
`Denver, CO 80202
`KiaGTIPR@gtlaw.com
`Phone: (303) 572-6500
`Fax: (303) 572-6540
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`Respectfully submitted,
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`Date: April 4, 2016
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`12