IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`In re Patent of: Fortune et al.
`Case No.:
`Docket No.:
`U.S. Patent No.: 6,012,007
`
`Issue Date:
`January 4, 2000
`
`Appl. Serial No.: 08/868,338
`
`Filing Date:
`June 3, 1997
`Title:
`OCCUPANT DETECTION METHOD AND APPARATUS
`FOR AIR BAG SYSTEMS
`
`IPR2015-01004
`15625-0020IP1
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`BRIEF RESPONSIVE TO BOARD ORDER FILED SEPTEMBER 2, 2015
`RE: PARTIAL JUDGMENT OF INVALIDITY IN DISTRICT COURT
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`American Honda Motor Co., Inc. (“Petitioner” or “Honda”) files the present
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`Brief in response to Board’s Order filed September 2, 2015 (“the Order”) in the
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`present Inter Partes Review (IPR) proceeding. Petitioner respectfully submits that
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`the Board should not deny institution of the present IPR or terminate the
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`proceeding under 37 CFR § 42.72 as to the claims identified by the District Court
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`as being indefinite, because the Joint Stipulation by the Petitioner and Patent
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`Owner (“the Joint Stipulation”) in the District Court case is to the entry of the
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`judgment only, not to the indefiniteness of the claims. As a result, Patent Owner
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`may still appeal the judgment at the conclusion of trial, which leaves open the
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`possibility that these claims may yet be found valid. If the Board denies institution
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`of or terminates the present IPR as to these claims, Petitioner will be unable to
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`
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`In re Patent of: Fortune et al.
`Case No.:
`Docket No.:
`U.S. Patent No.: 6,012,007
`
`Issue Date:
`January 4, 2000
`
`Appl. Serial No.: 08/868,338
`
`Filing Date:
`June 3, 1997
`Title:
`OCCUPANT DETECTION METHOD AND APPARATUS
`FOR AIR BAG SYSTEMS
`
`IPR2015-01004
`15625-0020IP1
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`BRIEF RESPONSIVE TO BOARD ORDER FILED SEPTEMBER 2, 2015
`RE: PARTIAL JUDGMENT OF INVALIDITY IN DISTRICT COURT
`
`American Honda Motor Co., Inc. (“Petitioner” or “Honda”) files the present
`
`Brief in response to Board’s Order filed September 2, 2015 (“the Order”) in the
`
`present Inter Partes Review (IPR) proceeding. Petitioner respectfully submits that
`
`the Board should not deny institution of the present IPR or terminate the
`
`proceeding under 37 CFR § 42.72 as to the claims identified by the District Court
`
`as being indefinite, because the Joint Stipulation by the Petitioner and Patent
`
`Owner (“the Joint Stipulation”) in the District Court case is to the entry of the
`
`judgment only, not to the indefiniteness of the claims. As a result, Patent Owner
`
`may still appeal the judgment at the conclusion of trial, which leaves open the
`
`possibility that these claims may yet be found valid. If the Board denies institution
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`of or terminates the present IPR as to these claims, Petitioner will be unable to
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`pursue a later IPR due to the one-year bar imposed by 35 U.S.C. § 315(b).
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`Accordingly, the Board should afford Petitioner the opportunity to challenge the
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`claims on prior art grounds in the present IPR by allowing the proceeding to
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`continue as to all challenged claims. In addition, regardless of whether the claims
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`are definite, Applicant respectfully submits that the prior art of record in the
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`present proceeding discloses all limitations of all challenged independent and
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`dependent claims of the ’007 Patent, and requests that the Board move forward
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`with its analysis of all challenged claims based on the cited art.
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`I. Explanation of the Joint Stipulation
`On April 17, 2015, the District Court issued a claim construction order
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`holding that the term “relative weight parameter” in the claims of the ’007 Patent is
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`indefinite under 35 U.S.C. § 112 ¶ 2. Ex. 2002, p. 1. The Patent Owner and the
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`defendants (including Honda) filed the Joint Stipulation to entry of a judgment of
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`invalidity of claims 1, 8, 9, 17, 18, 19 and 20 of the ’007 Patent by the District
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`Court, which had the effect of removing the claims from consideration in the case.
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`Id. Notably, the Joint Stipulation was to “entry” of the judgment by the District
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`Court only. Id. Neither the Patent Owner nor the defendants stipulated to the
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`indefiniteness of the claims of the ’007 Patent, and all parties “reserve[d] all
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`appellate rights, including, but not limited to, the right to appeal the Court’s April
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`17, 2015 claim construction order to the United States Court of Appeals for the
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`2
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`Federal Circuit.” Id. at pp. 1-2. Accordingly, the partial judgment of invalidity
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`entered in response to the Joint Stipulation can still be appealed to the Federal
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`Circuit, and thus has no preclusive of effect on the Board in the present case. See
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`SAP v. Versata, CBM2012-00001, Paper 36, p. 19 (Holding that a judgment on
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`appeal to the Federal Circuit “is not sufficiently firm to be accorded” preclusive
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`effect by the Board).
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`II.
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`Independent claims 1 and 17 and challenged dependents 2, 9 and 18-20
`of the ’007 Patent are indefinite, but analysis is still possible
`Independent claims 1 and 17 recite “determining measures represented by
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`individual sensor outputs and calculating from the sensor outputs a relative weight
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`parameter.” The District Court found that the term “relative weight parameter” is
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`indefinite because it is not clear to what the weight parameter is “relative.” See Ex.
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`2001 (Claim Construction Order), p. 63. In the words of the court:
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`Because the patent provides no boundaries for what
`parameters could be considered a “relative weight
`parameter,” and does not describe to what it is “relative,”
`a person of ordinary skill in the art would not be able to
`discern the bounds of the claim with reasonable certainty.
`For example, an alleged infringer could argue that its
`product does not infringe, because it simply uses a weight
`measurement, but not one that is “relative.” Whether such
`a measurement would infringe cannot be determined with
`reasonable certainty from the language of the patent.
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`3
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`Id. We agree with the District Court that the claims are indefinite, because
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`the ’007 Patent does not define what constitutes a “relative weight parameter,” and
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`does not indicate what the parameter is “relative” to. In fact, the word “relative”
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`does not appear anywhere in the specification of the ’007 Patent. Accordingly,
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`because the claims, the specification, and the prosecution history of the ’007 Patent
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`do not “provide objective boundaries for those of skill in the art” to identify the
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`breadth of weight parameters that would, and would not, meet this limitation, the
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`claims are indefinite. See Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364,
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`1370–71 (Fed. Cir. 2014) (citing Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.
`
`Ct. 2120, 2124 (2014)). If the Board likewise determines claims 1 and 17 are
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`indefinite, we invite the Board to explain its reasoning on the record.
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`Challenged claims 2, 3, 5, 9, and 18-21 depend from the independent claims
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`discussed above, and thus by definition include all limitations of their respective
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`independent claims, including the indefinite claim term “relative weight
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`parameter.” 35 U.S.C. § 112(d). However, the District Court found dependent
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`claim 21, that recites “wherein the relative weight parameter is the total force
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`detected by all the sensors,” definite because it “adequately describe[s] the relative
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`weight parameter” and thus “cure[s] the indefiniteness issue” of its indefinite base
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`claim 17. Ex. 2001, p. 63, note 15. By this logic, claims 3 and 5, both of which
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`further describe the “relative weight parameter” in terms of a total weight, arguably
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`4
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`remedy their indefiniteness for the same reason as claim 21. Unlike the dependent
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`claims 3, 5 and 21, challenged claims 2, 9 and 18-20 fail to provide additional
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`description of the relative weight parameter, and thus suffer the indefiniteness of
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`their respective independent claims. Accordingly, challenged dependent claims 2,
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`9 and 18-20 are indefinite for the same reasons described above relative to
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`independent claims 1 and 17.
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`However, despite the indefiniteness, the claims do not defy interpretation.
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`Because the prior art cited in the Petition discloses all limitations of the dependent
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`claims 3 and 5 (which depend from claim 1) and claim 21 (which depends from
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`claim 17), it follows that the cited prior art also discloses all limitations of the
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`broader independent claims. See In re Slayter, 276 F.2d 408, 411, 125 USPQ 345,
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`347 (CCPA 1960) (“A generic claim cannot be allowed to an applicant if the prior
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`art discloses a species falling within the claimed genus.”); In re Gosteli, 872 F.2d
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`1008, 10 USPQ2d 1614 (Fed. Cir. 1989). For example, regarding claims 3 and
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`21, Schousek describes “summ[ing]” the forces from each of an array of sensors
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`“to obtain a total force or weight parameter,” thereby disclosing that “the relative
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`weight parameter is the total force detected by all the sensors” as recited in claims
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`3 and 21. Paper 3 (Petition), p. 25 (quoting Ex. 1004 (Schousek), 5:30-31). Thus,
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`Schousek also discloses the generic “relative weight parameter” in independent
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`claims 1 and 17, from which claims 3 and 21 depend. See In re Slayter, 276 F.2d
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`5
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`
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`at 411; In re Gosteli, 872 F.2d 1008. The analysis of the Blackburn-based grounds
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`is similar, because Blackburn, like Schousek, sums the local forces from its sensor
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`array to obtain a weight parameter. See Paper 3 (Petition), p. 50.
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`Accordingly, despite the indefiniteness of some of the claims, Petitioner
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`submits that the claims are nonetheless invalid over the prior art cited in the
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`Petitioner under any reasonable interpretation of the claims.
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`III. The Board should not deny the Petition or otherwise terminate the
`proceeding with respect to the indefinite claims because the Joint
`Stipulation does not represent a final judgment of invalidity
`As previously discussed, the Joint Stipulation is to the "entry" of the
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`judgment, and not to the indefiniteness of the claims. See Ex. 2002, p. 1. The
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`Patent Owner retains the right to appeal the finding of indefiniteness to the Federal
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`Circuit. Id. The District Court’s judgment, thus, could be overturned on appeal. If
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`the Board denies institution or terminates the present proceeding due to the non-
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`final judgment of invalidity by the District Court, and Patent Owner is successful
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`on appeal, Petitioner would be unable to later challenge claims in an IPR due to the
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`due to the one-year bar imposed by 35 U.S.C. § 315(b). Petitioner respectfully
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`urges the Board to afford Petitioner the opportunity to challenge the claims on
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`prior art grounds in IPR by allowing the present proceeding to continue.
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`Further, Petitioner notes that the present situation arose simply from the
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`existence of the co-pending litigation and the timing of the Markman order in that
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`6
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`case (i.e., being before institution), and submits that denying institution or
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`terminating the present proceeding would effectively punish Petitioner for
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`circumstances outside its control.
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`IV. Patent Owner’s stipulation is not a disclaimer of the claims because it
`retains the right to appeal the judgment
`As discussed above, the Joint Stipulation is to the "entry" of the judgment,
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`and not to the indefiniteness of claims. See Ex. 2002, p. 1. The Patent Owner,
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`thus, retains the right to appeal the finding of indefiniteness to the Federal Circuit,
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`and therefore the stipulation is not a disclaimer. See id.
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`Respectfully submitted,
`
`
`
`/Dan Smith/
`
`
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`
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`Dan Smith, Reg. No. 71,278
`Fish & Richardson P.C.
`1717 Main Street
`Suite 5000
`Dallas, TX 75201
`T: 202-783-5070
`F: 202-783-2331
`
`Attorneys for Petitioner
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`Dated: 9/10/2015
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4)(i) et seq. and 42.105(b), the undersigned
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`certifies that on September 10, 2015, a complete and entire copy Brief Responsive
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`to Board Order Filed September 2, 2015 RE: Partial Judgment of Invalidity in
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`District Court was provided by electronic service, to the Patent Owner by serving
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`the correspondence address of record as follows:
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`Tarek N. Fahmi
`Holly J. Atkinson
`Ascenda Law Group, PC
`333 W. San Carlos Street, Suite 200
`San Jose, CA 95110
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`Email: patents@ascendalaw.com
`
`/Jessica K. Detko/
`
`Jessica K. Detko
`Fish & Richardson P.C.
`60 South Sixth Street,
`Suite 3200
`Minneapolis, MN 55402
`(612) 337-2516
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`8
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