UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
`AMERICAN HONDA MOTOR CO., INC.,
`HONDA OF AMERICA MFG., INC.,
`HONDA PATENTS & TECHNOLOGIES NORTH AMERICA, LLC,
`and HONDA MOTOR CO., LTD.,
`Petitioner,
`v.
`SIGNAL IP, INC.,
`Patent Owner.
`_______________________
`Case IPR2015-01004
`Patent 6,012,007
`_______________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
`AMERICAN HONDA MOTOR CO., INC.,
`HONDA OF AMERICA MFG., INC.,
`HONDA PATENTS & TECHNOLOGIES NORTH AMERICA, LLC,
`and HONDA MOTOR CO., LTD.,
`Petitioner,
`v.
`SIGNAL IP, INC.,
`Patent Owner.
`_______________________
`Case IPR2015-01004
`Patent 6,012,007
`_______________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`. Overview of the ‘007 Patent. ...................................................................... 1
`
`. Argument. ................................................................................................... 9
`
`A. Petitioner Has Failed to Demonstrate that Any of the Challenged
`Claims Are Anticipated by Schousek. ......................................................... 9
`
`B. Petitioner Has Failed to Demonstrate that Either of Claims 18
`and 19 are Obvious in View of Schousek and Blackburn. ........................ 17
`
`C. Petitioner Has Failed to Demonstrate that Any of Claims 1-3, 5,
`and 17-21 are Obvious in View of Blackburn. .......................................... 19
`
`D. Petitioner Has Failed to Demonstrate that Any of Claims 1-3, 5, and
`17-21 are Obvious in View of the Combined teachings of Blackburn and
`Schousek. ................................................................................................... 21
`
`E. Petitioner Has Failed to Demonstrate Why Redundant Grounds of
`Institution Are Appropriate. ...................................................................... 22
`
`. Conclusion. ............................................................................................... 23
`
`
`
`!
`!
`!
`!
`!
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`! 4
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`
`
`! 2
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`! 3
`
`1. Introduction. ................................................................................................ 1
`
`!
`
`ii!
`
`
`
`TABLE OF AUTHORITIES
`
`
`
`CASES
`CFMT, Inc. v. Yieldup Int’l. Corp.,
`349 F.3d 1333 (Fed. Cir. 2003) ........................................................... 18, 20
`
`!H
`
`artness Int'l, Inc. v. Simplimatic Eng'g Co.,
`819 F.2d 1100 (Fed. Cir. 1987) ................................................................. 21
`
`!I
`
`llumina, Inc. v. Trustees of Columbia Univ.,
`IPR2012-00006 (P.T.A.B. May 10, 2013). ......................................... 22, 23
`
`!L
`
`!N
`
`!R
`
`indemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co.,
`730 F.2d 1452 (Fed. Cir. 1984) ................................................................. 15
`
`et MoneyIN, Inc. v. VeriSign, Inc.,
`545 F.3d 1359 (Fed. Cir. 2008) ................................................................. 16
`
`ichardson v. Suzuki Motor Co.,
`868 F.2d 1226 (Fed. Cir. 1989) ................................................................. 12
`
`!S
`
`! S
`
`chering Corp. v. Geneva Pharm.,
`339 F.3d 1373 (Fed. Cir. 2003) ........................................................... 12, 16
`
`!3
`
`TATUTES
`35 U.S.C. § 112(d) .................................................................................. 16, 18
`
`5 U.S.C. § 314(a) .......................................................................................... 9
`
`EGULATIONS
`37 C.F.R. § 42.108(c).......................................................................... 9, 17, 21
`
`
`
`!
`
`iii!
`
`! R
`
`
`
`1. Introduction.
`
`Petitioner challenges the patentability of claims 1-3, 5, 9, and 17-21 of
`
`U.S. Patent 6,012,007 (the “’007 Patent”). For at least the reasons explained
`
`below, the Patent Trial and Appeal Board (“PTAB” or “Board”) should not
`
`institute inter partes review of the ‘007 Patent because Petitioner has not
`
`met its burden to show a reasonable likelihood that the challenged claims of
`
`the ‘007 Patent are unpatentable.
`
`
`
`2. Overview of the ‘007 Patent.
`The ‘007 Patent discloses a method of controlling airbag deployment
`
`using pressure sensors to allow or inhibit airbag deployment based on
`
`passenger weight.1 According to the specification, air bag deployment is
`
`inhibited when a seat is empty or occupied by a small child. Deployment is
`
`allowed when the seat is occupied by a larger passenger.2
`
`Figure 1 of the ‘007 patent (below) shows a typical airbag (or
`
`supplemental inflatable restraint -- “SIR”) system:3
`
`!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
`
`1 Ex. 1001 at Abstract.
`
`2 Id. at 2:55-58.
`
`3 Id. at 1:15-16, 2:18-19.
`
`!
`
`1!
`
`
`
`
`
`An accelerometer (15) senses an impending crash and a microprocessor (16)
`
`receives signals from the accelerometer and determines whether to deploy an
`
`air bag.4 On the other side of the figure, seat occupant sensors (26, 28)
`
`communicate with a separate microprocessor (22), which determines
`
`whether airbag deployment should be inhibited.5 The occupant sensors are a
`
`series of voltage dividers made of resistors (26) in series with a pressure
`
`sensor or variable resistor(28).6 The seat occupant detector microprocessor
`
`(22) analyzes seat occupant sensor voltage in order to derive passenger
`
`!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
`
`weight information.7
`
`4 Id. at 2:46-49.
`
`5 Id. at 3:4-7.
`
`6 Id. at 2:64-3:2.
`
`7 Id. at 2:61-3:7.
`
`!
`
`2!
`
`
`
`The positions of the sensors are shown in Figures 2 and 3 of the ‘007
`
`patent, which are reproduced below (with annotations added to Fig. 2).8
`
`The seat cushion has an upper surface 38 and a lower surface 40.9 The lower
`
`
`
`surface is “seated on a rigid sheet or plastic form.”10 The form (42) “holds a
`
`dozen pressure sensors 28 on its upper surface so that the sensors are pressed
`
`against the bottom surface 40 of the seat cushion.”11!!
`
`
`
`!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
`
`8 Id. at 2:20-21.
`
`9 Id. at 3:21-22.
`
`10 Id. at 3:21-23.
`
`11 Id. at 3:24-27.
`
`!
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`3!
`
`
`
`Figure 4 of the ‘007 Patent, which is reproduced below, is a flowchart
`
`overview of the operation of the
`
`system.12 The seat occupant detector
`
`microprocessor (22) reads the sensor
`
`values (46).13 One sensor at a time is
`
`turned on and sampled once every 100
`
`msec.14 The readings are then bias
`
`corrected -- a bias calibrated for each
`
`sensor is subtracted from each sensor
`
`reading (48).15 Then, decision measures are computed (50) and decision
`
`algorithms are run (52) to produce an output, which output (54) represents a
`
`decision (with an accompanying signal) to either inhibit (56) or allow (58)
`
`air bag deployment.16
`
`The decision measure computations involve calculation of: the total
`
`force (the sum of the sensor outputs) and a total force threshold; sensor load
`
`!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
`
`12 Id. at 3:36.
`
`13 Id. at 3:37-38.
`
`14 Id. at 3:40-41.
`
`15 Id. at 3:37-41.
`
`16 Id. at 3:41-46.
`
`!
`
`4!
`
`
`
`ratings and measure; the long term average of the sensor readings and its
`
`threshold; and group sensor measures and thresholds.17 The different
`
`thresholds are variable and may increase and decrease over time.18 Inhibit
`
`times (during which no variation is permitted) are selected to control the
`
`rates of increase and decrease.19
`
`The main decision algorithm uses an “Adult Lock Flag” as shown in
`
`Figure 8 of the ‘007 Patent (at
`
`left).20 Here, the term “adult”
`
`is used to distinguish between
`
`an occupant of a certain
`
`weight and a “child.”21 A lock
`
`threshold and an unlock
`
`threshold are used to
`
`determine whether an “adult,”
`
`!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
`
`17 Id. at 3:48-55; 4:11-15.
`
`18 Id at 3:56-60.
`
`19 Id. at 3:60-61.
`
`20 Id. at 4:36-37.
`
`21 Id. at 4:37-40.
`
`!
`
`5!
`
`
`
`or occupant above a threshold mass, is in the seat.22 A lock timer measures
`
`the time after the vehicle ignition is turned on, and a lock delay on the order
`
`of one to five minutes is used.23
`
`A final decision algorithm for whether to deploy an airbag is shown in
`
`Figure 10 of the ‘007 Patent, which is reproduced below.24 A counter
`
`tabulates from zero to 255, and is incremented if an allow decision is made
`
`and decremented if an inhibit decision is made.25 Final consent to deploy is
`
`granted when the
`
`count exceeds 133.26 If
`
`consent is granted, a
`
`count over 123 is
`
`needed to maintain the state, and if the count falls below 123, the consent is
`
`revoked and deployment is inhibited.27 By averaging measures over time, the
`
`!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
`
`22 Id. at 4:36-44.
`
`23 Id. at 4:42-44.
`
`24 Id. at 5:8-9.
`
`25 Id. at 5:9-13.
`
`26 Id. at 5:13-14.
`
`27 Id. at 5:9-18.
`
`!
`
`6!
`
`
`
`system can account for occupant movement.28
`
`The challenged independent claims of the ‘007 Patent are reproduced
`
`below:
`
`1. In a vehicle restraint system having a controller for
`deploying air bags and means for selectively allowing
`deployment according to the outputs of seat sensors
`responding to the weight of an occupant, a method of
`allowing deployment according to sensor response
`including the steps of:
`determining measures represented by individual
`sensor outputs and calculating from the sensor outputs a
`relative weight parameter;
`establishing a first threshold of the relative weight
`parameter;
`allowing deployment when the relative weight
`parameter is above the first threshold;
`establishing a lock threshold above the first threshold;
`setting a lock flag when the relative weight parameter
`is above the lock threshold and deployment has been
`allowed for a given time;
`establishing an unlock threshold at a level indicative
`of an empty seat;
`clearing the flag when the relative weight parameter is
`below the unlock threshold for a time; and
`
`!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
`!
`
`28 Id. at 5:31-33.
`
`7!
`
`
`
`allowing deployment while the lock flag is set.
`
`
`17. In a vehicle restraint system having a controller for
`deploying air bags, means for inhibiting and allowing
`deployment according to whether a seat is occupied by a
`person of at least a minimum weight comprising:
`seat sensors responding to the weight of an occupant
`to produce sensor outputs;
`a microprocessor coupled to the sensor outputs and
`programmed to inhibit and allow deployment according
`to sensor response and particularly programmed to
`determine measures represented by individual
`sensor outputs and calculate from the sensor outputs a
`relative weight parameter,
`establish a first threshold of the relative weight
`parameter,
`allow deployment when the relative weight
`parameter is above the first threshold,
`establish a lock threshold above the first threshold,
`set a lock flag when the relative weight parameter
`is above the lock threshold and deployment has been
`allowed for a given time,
`establish an unlock threshold at a level indicative
`of an empty seat,
`clear the flag when the relative weight parameter is
`below the unlock threshold for a time, and
`allow deployment while the lock flag is set.
`
`8!
`
`!
`
`
`
`
`3. Argument.
`An inter partes review may be instituted only if “the information
`
`presented in the petition . . . and any response . . . shows that there is a
`
`reasonable likelihood that the petitioner would prevail with respect to at least
`
`1 of the claims challenged in the petition.”29 Here, Petitioner has not met this
`
`requirement in any of its proposed grounds of institution.
`
`
`
`A. Petitioner Has Failed to Demonstrate that Any of the
`Challenged Claims Are Anticipated by Schousek.
`
`Petitioner contends that claims 1-3, 5, 9,17, 20, and 21 are anticipated
`
`under 35 U.S.C. § 102 by Schousek, U.S. patent 5,474,327 (Ex. 1004).30
`
`This challenge should not result in institution of an inter partes review
`
`because Schousek fails to anticipate any of the challenged claims.
`
`Schousek describes a system that is, arguably, similar to that
`
`illustrated in Figure 1 of the ‘007 patent, but which employs very different
`
`algorithms for controlling deployment of an airbag.31 For example, Schousek
`
`fails to teach or suggest setting a lock flag when a relative weight parameter
`
`!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
`
`29 35 U.S.C. § 314(a); 37 C.F.R. § 42.108(c).
`
`30 Pet. at 8 et seq.
`
`31 See, e.g., Ex. 1004 at Figs. 1 and 5A-5B.
`
`9!
`
`!
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`
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`is above a lock threshold and deployment has been allowed for a given time,
`
`as recited in the challenged claims.
`
`In the Schousek system, air bag deployment is determined based on an
`
`evaluation of the weight of the seat occupant vis-à-vis three thresholds. If the
`
`total weight of the seat occupant is less
`
`than a first threshold, the seat is
`
`determined to be empty and air bag
`
`deployment is inhibited. If the total
`
`weight of the seat occupant is greater
`
`than a second threshold, the seat is
`
`determined to be occupied by an adult
`
`and air bag deployment is not
`
`inhibited. Finally, if the total weight of
`
`the seat occupant is determined to be
`
`between the first and second
`
`thresholds, the seat is deemed to be occupied by a child, and air bag
`
`deployment depends on factors such as the legal requirements of where the
`
`vehicle is operated and/or whether the center of weight distribution is
`
`!
`
`10!
`
`
`
`forward or aft of a seat reference line.32 This algorithm is illustrated in Fig.
`
`5A of Schousek.33
`
`Schousek also describes a fault detection procedure for the control
`
`system. As illustrated in Fig. 5B (below), faults are detected by comparing
`
`the inhibit/no inhibit decisions
`
`reached in five consecutive loops
`
`of the process illustrated in Fig.
`
`5A.34 If the inhibit/no inhibit
`
`decision is consistent over five
`
`consecutive loops, it is deemed
`
`correct and the decision is
`
`forwarded to the air bag
`
`deployment module.35 If,
`
`however, the five decisions are
`
`not the same, the previous
`
`decision (inhibit/no inhibit) is retained and a fault registered. If a large
`
`!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
`
`32 Id. at 2:12-46; 4:55 – 5:3; 5:23-50.
`
`33 See steps 68 – 86 of Fig. 5A.
`
`34 Id. at 5:51 – 6:1.
`
`35 Id. at 5:51-61.
`
`!
`
`11!
`
`
`
`number of consecutive faults are noted, then a fault condition is reported to
`
`the air bag deployment module.36 If this problem persists, a fault indicator is
`
`illuminated.37
`
`A patent claim is “invalid for anticipation [only] if a single prior art
`
`reference discloses each and every limitation” of the claim.38 Moreover,
`
`“The identical invention must be shown in as complete detail as is contained
`
`in the … claim.”).39 Schousek fails to meet these requirements insofar as
`
`claim 1 of the ‘007 Patent is concerned.
`
`As indicated above, claim 1 of the ‘007 Patent requires, inter alia:
`
`establishing a lock threshold above [a] first threshold;
`setting a lock flag when [a] relative weight parameter
`is above the lock threshold and deployment [of an airbag]
`has been allowed for a given time;
`establishing an unlock threshold at a level indicative
`of an empty seat;
`clearing the flag when the relative weight parameter is
`below the unlock threshold for a time; and
`
`!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
`
`36 Id. at 5:61-67.
`
`37 Id. at 6:2-6.
`
`38 Schering Corp. v. Geneva Pharm., 339 F.3d 1373, 1377 (Fed. Cir. 2003).
`
`39 Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989).
`
`!
`
`12!
`
`
`
`allowing deployment while the lock flag is set.40
`
`No such steps are taught by Schousek.
`
`Unlike the process recited in claim 1, in Schousek no “lock flag” is set
`
`when a relative weight parameter is above a lock threshold and deployment
`
`of the airbag has been allowed for a given time and then cleared when the
`
`relative weight parameter is below the unlock threshold for a time. Petitioner
`
`equates the recited “first threshold” with Schousek’s maximum infant seat
`
`weight threshold.41 That is, the threshold at which the seat occupant is
`
`determined to be an “adult.” Petitioner then equates the absence of a fault
`
`condition with the setting of a lock flag: “If all five decisions in the array
`
`‘are not the same, the previous decision is retransmitted to the’ SIR module.
`
`Accordingly, Schousek teaches setting the previous decision (a lock flag) if
`
`the same air bag enablement decision has been stored in five consecutive
`
`cycles in the decision array.”42
`
`Assuming, solely for sake of argument, that Petitioner’s
`
`characterizations of these parameters is correct, then it follows that Schousek
`
`does not teach clearing the lock flag when the relative weight parameter is
`
`!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
`
`40 Ex. 1001 at 5:55-63.
`
`41 Pet. at 16.
`
`42 Pet. at 20 (internal citations omitted).
`
`13!
`
`!
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`
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`below the unlock threshold for a time, as claimed. Schousek clearly states
`
`that the fault condition counter is cleared, not when a relative weight
`
`parameter falls below an unlock threshold for a period of time, but rather
`
`when the decision to permit deployment of the airbag remains unchanged
`
`over five consecutive fault monitoring loops. That is, once a decision to
`
`allow deployment of the airbag has been provided to the airbag deployment
`
`module (SIR module 10), that decision is retransmitted to the SIR module if
`
`five consecutive loops of the fault monitoring algorithm agree with it.43
`
`Concurrently with this action, “a faulty decision counter is cleared.”44
`
`The condition that would be required for the five consecutive loops of
`
`the fault monitoring process to agree with the decision to permit deployment
`
`of the airbag would be an indication that an “adult” is occupying the seat—
`
`i.e., that the relative weight parameter is above the lock threshold.45
`
`Therefore, in discussing the clearing of the counter (which occurs upon five
`
`consecutive loops that concur with the original decision to deploy the
`
`airbag), Schousek is describing a situation that occurs when the system
`
`determines that the relative weight parameter is above, not below, a
`
`!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
`
`43 Ex. 1004 at 5:53-61.
`
`44 Id. at 5:60-61.
`
`45 Id. at 5:42-44; Pet. at 18
`
`!
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`14!
`
`
`
`threshold indicative of an empty seat. This is precisely contrary to the
`
`condition required by claim 1.
`
`Petitioner’s analysis of this element of claim 1 assumes a previous
`
`determination to inhibit, rather than deploy, an airbag.46 However, such a
`
`determination would not satisfy the claim requirement that the lock flag be
`
`set when a relative weight parameter is above the lock threshold and
`
`deployment of the airbag has been allowed for a given time. Instead,
`
`Petitioner’s analysis carves up different constituent elements of the claim
`
`and attempts to find each element in a separately constructed scenario for its
`
`invocation. This is improper in any considerations of anticipation. The
`
`requirement that the prior art elements themselves be “arranged as in the
`
`claim” means that claims cannot be “treated . . . as mere catalogs of separate
`
`parts, in disregard of the part-to-part relationships set forth in the claims and
`
`that give the claims their meaning.”47 “[U]nless a reference discloses within
`
`the four corners of the document not only all of the limitations claimed but
`
`also all of the limitations arranged or combined in the same way as recited in
`
`!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
`
`46 Pet. at 22.
`
`47 Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730
`
`F.2d 1452, 1459 (Fed. Cir. 1984).
`
`!
`
`15!
`
`
`
`the claim, it cannot be said to prove prior invention of the thing claimed and,
`
`thus, cannot anticipate under 35 U.S.C. § 102.”48
`
`Thus, because claim 1 requires setting a lock flag when a relative
`
`weight parameter is above a lock threshold and deployment of the airbag has
`
`been allowed for a given time, and then clearing the lock flag when the
`
`relative weight parameter is below an unlock threshold for a time,49
`
`Schousek cannot anticipate claim 1.50
`
`
`
` Claims 3, 5, and 9 depend from claim 1 and therefore include all of
`
`the limitations of claim 1.51 Accordingly, claims 3, 5, and 9 are patentable
`
`over Schousek for at least the same reasons as claim 1.
`
`
`
`Claim 17, like claim 1, includes the requirement to set a lock flag
`
`when a relative weight parameter is above a lock threshold and deployment
`
`of the airbag has been allowed for a given time, and then clear the lock flag
`
`when the relative weight parameter is below an unlock threshold for a
`
`!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
`
`48 Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
`
`49 Ex. 1001 at 5:57-63.
`
`50 Schering Corp., 339 F.3d at 1377.
`
`51 35 U.S.C. § 112(d).
`
`!
`
`16!
`
`
`
`time.52 Therefore, claim 17, and its dependent claims 20 and 21, are
`
`patentable over Schousek for at least the same reasons as claim 1.
`
`Thus, Petitioner cannot prevail with respect to its challenge of claims
`
`1-3, 5, 9,17, 20, and 21 and so no inter partes review should be instituted on
`
`these grounds.53
`
`
`
`B. Petitioner Has Failed to Demonstrate that Either of Claims 18
`and 19 are Obvious in View of Schousek and Blackburn.
`
`Petitioner contends that claims 18 and 19 are obvious under 35 U.S.C.
`
`§ 103 in view of the combined teachings of Schousek and Blackburn, U.S.
`
`Patent 5,232,243 (Ex. 1005).54 In this context, Blackburn is cited for
`
`positioning sensors at certain locations in a seat cushion55 and components
`
`of that seat.56
`
`Whether or not Petitioner’s allegations concerning these teachings of
`
`Blackburn are correct or not, any such combination of Schousek and
`
`!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
`
`52 Ex. 1001 at 8:1-7.
`
`53 37 C.F.R. § 42.108(c).
`
`54 Pet. at 28 et seq.
`
`55 Id. at 30 et seq.
`
`56 Id. at 35 et seq.
`
`!
`
`17!
`
`
`
`Blackburn would still suffer from Petitioner’s flawed analysis concerning
`
`the setting of a lock flag when a relative weight parameter is above a lock
`
`threshold and deployment of the airbag has been allowed for a given time,
`
`and then clearing of the lock flag when the relative weight parameter is
`
`below an unlock threshold for a time.57 As demonstrated above, claim 17
`
`mandates such requirements, hence, the same requirements are included in
`
`both claims 18 and 19.58 Accordingly, the combination of Schousek and
`
`Blackburn would not suggest the subject matter of these claims.59
`
`
`
`For at least these reasons, claims 18 and 19 are not obvious under 35
`
`U.S.C. § 103 in view of the combined teachings of Schousek and Blackburn,
`
`and so no inter partes review should be instituted on this proposed ground.
`
` !!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
`
`57 Id. at 28 (claim chart with respect to claim 17). Petitioner does not
`
`explicitly discuss the preambles of claims 18 and 19, which incorporate the
`
`limitations of claim 17 in these dependent claims, but this seems to be
`
`implied.
`
`58 35 U.S.C. § 112(d).
`
`59 CFMT, Inc. v. Yieldup Int’l. Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003),
`
`(obviousness requires a suggestion of all limitations in a claim) citing In re
`
`Royka, 490 F.2d 981, 985 (CCPA 1974).
`
`18!
`
`!
`
`
`
`C. Petitioner Has Failed to Demonstrate that Any of Claims 1-3, 5,
`and 17-21 are Obvious in View of Blackburn.
`
`Petitioner contends that claims 1-3, 5, and 17-21 are obvious under 35
`
`U.S.C. § 103 in view of Blackburn.60 However, Blackburn does not suggest
`
`the elements specified in claim 1. Accordingly, no inter partes review
`
`should be instituted on this proposed ground.
`
`
`
`According to Petitioner, “Blackburn describes that if the seat is
`
`determined to be unoccupied, ‘a value N,’ which is initialized to zero at the
`
`beginning of the process, ‘is set equal to N + 1’ and ‘a determination is made
`
`as to whether N is equal to 10.’ If N is not equal to 10, ‘the process then
`
`loops back’ and the weight values from the sensor array are read again. Once
`
`the process has repeated 10 times and the value of N equals 10, ‘the airbag is
`
`disabled.’”61 In Petitioner’s analysis, this demonstrates “a lock threshold.”62
`
`!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
`
`60 Pet. at 37 et seq.
`
`61 Id. at 43 (internal citations omitted).
`
`62 Id. Petitioner contends this same action constitutes setting a “lock flag,”
`
`id. at 45, however, the lock flag is associated with enabling an airbag and, as
`
`discussed infra, this activity discussed by Blackburn is associated with an
`
`unoccupied seat for which airbag deployment is inhibited.
`
`!
`
`19!
`
`
`
`
`
`Petitioner is wrong. First, Petitioner’s own analysis shows that the
`
`cited portions of Blackburn concern disabling an airbag when a seat is
`
`determined to be unoccupied. Second, Petitioner’s proposed “lock
`
`threshold” would be determinative of disabling the airbag. In marked
`
`contrast, claim 1 requires that the lock threshold be above the first threshold,
`
`which is already the threshold that determines when airbag deployment is
`
`allowed.63 In other words, the “lock threshold” of claim 1 is a threshold
`
`above that for which deployment is permitted, while Petitioner’s lock
`
`threshold is one which ensures disabling the airbag. The two are simply not
`
`synonymous nor has Petitioner demonstrated why the latter should suggest
`
`the former. If anything, Petitioner’s analysis demonstrates just the opposite –
`
`that the proposed lock threshold of Blackburn is one intended for use in
`
`preventing airbag deployment (by disabling the system) and also fails to
`
`teach the use of a lock flag.
`
`For at least these reasons, claim 1 is not obvious under 35 U.S.C. §
`
`103 in view of Blackburn.64 Claims 2, 3, and 5 depend from claim 1 and are
`
`63 Ex. 1001 at 5:51-55.
`
`!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
`!
`
`64 CFMT, Inc., 349 F.3d at 1342.
`
`20!
`
`
`
`patentable over Blackburn at least by virtue of said dependency.65 Further,
`
`like claim 1, claim 17 includes the requirement to “establish a lock threshold
`
`above the first threshold.”66 Therefore, claim 17, and its dependent claims
`
`18-21, are patentable over Blackburn for at least the same reasons as claim
`
`1. Thus, Petitioner cannot prevail with respect to its challenge of claims 1-3,
`
`5, and 17-21 and so no inter partes review should be instituted on these
`
`grounds.67
`
`
`
`D. Petitioner Has Failed to Demonstrate that Any of Claims 1-3, 5,
`and 17-21 are Obvious in View of the Combined teachings of
`Blackburn and Schousek.
`
`Petitioner contends that claims 1-3, 5, and 17-21 are obvious under 35
`
`U.S.C. § 103 in view of Blackburn and Schousek.68 However, as
`
`demonstrated above, Blackburn fails to suggest “establishing a lock
`
`threshold above the first threshold,” as required by claims 1 and 17, and
`
`!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
`
`65 Hartness Int'l, Inc. v. Simplimatic Eng'g Co., 819 F.2d 1100, 1108 (Fed.
`
`Cir. 1987) (dependent claims are nonobvious under section 103 if the
`
`independent claims from which they depend are nonobvious).
`
`66 Ex. 1001 at 7:67.
`
`67 37 C.F.R. § 42.108(c).
`
`68 Pet. at 53 et seq.
`
`!
`
`21!
`
`
`
`Schousek fails to suggest setting a lock flag when a relative weight
`
`parameter is above a lock threshold and deployment of the airbag has been
`
`allowed for a given time, and then clearing the lock flag when the relative
`
`weight parameter is below an unlock threshold for a time. Accordingly, no
`
`combination of these references would suggest the subject matter of claim 1.
`
`Moreover, inasmuch as Blackburn suggests a proposed lock threshold
`
`intended for use in preventing airbag deployment (by disabling the system),
`
`it would appear that Petitioner’s proposed combination of references actually
`
`teaches the opposite of what is claimed. Accordingly, no inter partes review
`
`should be instituted on this proposed ground.
`
`
`
`E. Petitioner Has Failed to Demonstrate Why Redundant
`Grounds of Institution Are Appropriate.
`
`Nowhere in the petition does Petitioner address the redundant and
`
`overlapping grounds for institution that are proposed. That is, Petitioner has
`
`provided no “meaningful distinction between the different, redundant
`
`rejections.”69 Instead, this is a case of a petitioner citing multiple references
`
`for the same facts, and it is not be enough for a petitioner to argue that the
`
`!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
`!
`
`69 Illumina, Inc. v. Trustees of Columbia Univ., IPR2012-00006, Paper 43 at
`
`11 (P.T.A.B. May 10, 2013).
`
`22!
`
`
`
`cited references are not identical, or to “speculate[] that in certain
`
`publications an element may be more clearly set forth in one publication
`
`rather than another.”70 Rather, a petitioner must provide an adequate
`
`explanation as to the differences between the references and “how this
`
`difference would impact the unpatentability challenge.”71 Here, Petitioner
`
`has set forth no such explanation or rationale. Accordingly, there is no
`
`sufficient reason for the board to institute trial on multiple ones of
`
`Petitioner’s proposed grounds of unpatentability.
`
`
`
`
`4. Conclusion.
`For at least the foregoing reasons, no inter partes review should be
`
`instituted on the identified grounds. Further, as this is Patent Owner’s
`
`Preliminary Response, it is not a comprehensive rebuttal to all arguments
`
`raised by the Petition. If a trial is instituted, Patent Owner reserves the right
`
`to contest the Petition on all grounds permitted under the applicable rules.
`
`Moreover, nothing herein should be construed as a concession or admission
`
`by Patent Owner as to any fact or argument proffered in the Petition
`
`!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
`!
`
`70 Id.
`
`71 Id.
`
`23!
`
`
`
`
`
`
`
`
`
`
`Dated: July 14, 2015
`
`
`
`
`
`
`
`
`Ascenda Law Group, PC
`333 W San Carlos St., Suite 200
`San Jose, CA 95110
`Tel: 866-877-4883
`Email: tarek.fahmi@ascendalaw.com
`
`
`
`
`
`Respectfully submitted,
`
`/Tarek N. Fahmi/
`Tarek N. Fahmi
`Reg. No. 41,402
`
`
`
`
`
`
`
`!
`
`24!
`
`
`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing
`PATENT OWNER’S PRELIMINARY RESPONSE
`was served on July 14, 2015, by filing this document though the Patent
`Review Processing System as well as by delivering a copy via email directed
`to the attorneys of record for the Petitioner at the following address:
`Joshua A. Griswold
`Daniel Smith
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street,
`Minneapolis, MN 55402
`
`griswold@fr.com
`IPR15625-0020IP1@fr.com
`
`Dated: July 14, 2015
`
`
`
`
`
`The parties have agreed to electronic service in this proceeding.
`Respectfully submitted,
`/Tarek N. Fahmi/
`
`Tarek N. Fahmi
`Reg. No. 41,402
`
`Ascenda Law Group, PC
`333 W San Carlos St., Suite 200
`San Jose, CA 95110
`Tel: 866-877-4883
`Email: patents@ascendalaw.com
`
`!
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