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 IPR2015-01116
`Patent 6,012,007
`________________________
`
`PATENT OWNER’S ADDITIONAL BRIEFING CONCERNING THE
`STIPULATION AND PARTIAL JUDGMENT OF INVALIDITY IN THE
`RELATED LITIGATION
`
`
`
`1
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`VOLKSWAGEN GROUP OF AMERICA, INC.,
`
`Petitioner,
`v.
`SIGNAL IP, INC.,
`Patent Owner.
`____________
`Case IPR2015-01116
`Patent 6,012,007
`________________________
`
`PATENT OWNER’S ADDITIONAL BRIEFING CONCERNING THE
`STIPULATION AND PARTIAL JUDGMENT OF INVALIDITY IN THE
`RELATED LITIGATION
`
`
`
`1
`
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`
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`Pursuant to the Board’s Order of September 2, 2015, Patent Owner submits
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`the following additional briefing to address the issues raised by the parties’
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`stipulation and the Court’s partial judgment of invalidity in the underlying
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`litigations.
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`
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`(1) Claims 1, 17, and 20 of the ‘007 patent are not indefinite.
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`Petitioner challenges the patentability of claims 1-3, 5, 9, and 17-21 of
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`U.S. Patent 6,012,007 (the “’007 Patent”). In the Court’s order of partial
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`summary judgment in the underlying litigation, claims 1, 8, 9, 17, 18, 19,
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`and 20 were found invalid as indefinite under 35 U.S.C. § 112, paragraph 2.1
`
`This determination was made pursuant to the parties’ stipulation that,
`
`In light of the Court’s claim construction order, Plaintiff
`and Defendants stipulate to entry of a partial final
`judgment that the following claims are invalid due to
`indefiniteness under 35 U.S.C. § 112, paragraph 2: . . .
`(iii) claims 1, 8, 9, 17, 18, 19, and 20 of the ’007 patent.2
`
`Notably, this stipulation related to a procedural action concerning the “entry
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`of a partial final judgment,” and not to the correctness of the Court’s
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`determination concerning validity of the subject claims. This is evidenced by
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`
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`1 Ex. 3001 at 2.
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`2 Ex. 2002 at 2.
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`2
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`
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`further provisions of the stipulation that,
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`Plaintiff and Defendants reserve all appellate rights,
`including, but not limited to, the right to appeal the
`Court’s April 17, 2015 claim construction order to the
`United States Court of Appeals for the Federal Circuit.
`Plaintiff reserves all rights as to claims not addressed by
`the Court’s claim construction order, or any new claims
`that may be issued by the United States Patent Office.3
`
`With respect to claims 1, 17, and 20 the Court deemed the term
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`“relative weight parameter” to be indefinite under 35 U.S.C. § 112,
`
`paragraph 2.4 The relative weight parameter is calculated from sensor
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`outputs and airbag deployment is allowed when the relative weight
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`parameter is above an established first threshold.5 Further, when the relative
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`weight parameter is above a lock threshold (established above the first
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`threshold), a lock flag is set provided airbag deployment has been allowed
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`for a given time. The flag is cleared when the relative weight parameter is
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`below an unlock threshold (indicative of an empty seat) for a time.6
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`
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`3 Id. at 2-3.
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`4 Ex. 2001 at 60-63.
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`5 Ex. 1001 at 5:48-54.
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`6 Id. at 5:55-63.
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`3
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`
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`The specification does not specifically define the “relative weight
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`parameter,” but does specify that the subject supplemental inflatable
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`restraint (SIR) system is intended to inhibit airbag deployment when a seat is
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`empty or occupied by a small child.7 This goal is accomplished by “tuning”
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`the system to inhibit deployment for occupants weighing less than a first
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`amount and, concurrently, always allowing deployment for occupants
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`weighing more than a second amount.8 Passenger weight is determined by a
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`seat occupant sensing system in which various sensors provide outputs
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`proportional to the pressure exerted thereon, and a microprocessor analyzes
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`these signals.9
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`In light of this explanation, a person of ordinary skill in the art would
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`readily conclude that the recited “relative weight parameter” is a measure
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`(for example, related to the weight of a passenger as determined by the
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`sensors) that permits the determination of whether or not to allow airbag
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`deployment according to (i.e., relative to) the established thresholds therefor.
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`A number of examples of a relative weight parameter are given in various
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`
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`dependent claims:
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`7 Id. at 2:55-58.
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`8 Id. at 2:58-61.
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`9 Id. at 2:61 – 3:10.
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`
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`4
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`
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`In claim 3, the relative weight parameter “is the total
`force detected by all the sensors.” In claim 4, the
`“relative weight parameter is a long term average
`obtained by the following steps: averaging all sensor
`outputs over a plurality of sample events to obtain a
`cumulative average; and long term filtering the
`cumulative average to obtain the long term average.” In
`claim 5, “the relative weight parameter is a load rating
`obtained by: calculating a load rating for each sensor as a
`function of the difference between the sensor output and
`a base value; and summing the load rating for all the
`sensors to derive a total load rating.” In claim 6, “the
`relative weight parameter is a fuzzy value obtained by:
`calculating a total load rating for all the sensors;
`determining a fuzzy load value from the total load rating;
`calculating a long term average for all the sensors;
`determining a fuzzy average value from the long term
`average; and combining the fuzzy average and the fuzzy
`load value to obtain the fuzzy value.” Claims 21-23
`depend from claim 17, and, like claims 3-6, provide
`detailed embodiments of possible relative weight
`parameters (the total force, long term average of sensor
`outputs, and total load rating, respectively). Claim 20
`depends from claim 17, but does not give an exemplary
`relative weight parameter. Rather, in claim 20, “the
`microprocessor is further programmed to inhibit
`deployment when the relative weight parameter is below
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`5
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`
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`a second threshold.”10
`The Court mistakenly concluded that claims 1, 17, and 20 do not
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`make clear what the bounds of a relative weight parameter may or may not
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`be.11 However, claim breadth is not necessarily synonymous with
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`indefiniteness.12 Indeed, a single embodiment may provide broad support for
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`the understanding of a person of ordinary skill in the art in cases involving
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`predictable factors, such as mechanical or electrical elements.13
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`Here, a person of ordinary skill in the art would readily understand the
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`boundaries of claims 1, 17, and 20, because the recited “relative weight
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`parameter” must be sufficient to permit a determination of whether or not to
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`
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`10 Ex. 2001 at 60-61 (citations omitted).
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`11 Id. at 61.
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`12 Cf. Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014) (a
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`claim, viewed in light of the specification and prosecution history, need only
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`inform with reasonable certainty, those skilled in the art about the scope of
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`the invention to satisfy § 112); Halliburton Energy Services, Inc. v. M-I
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`LLC, 514 F.3d 1244 (Fed. Cir. 2008) (indefiniteness requires that a skilled
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`artisan could not discern the boundaries of a claim).
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`13 See, e.g., In re Vickers, 141 F.2d 522, 526-27 (CCPA 1944); In re Cook,
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`439 F.2d 730, 734 (CCPA 1971).
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`
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`6
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`
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`allow airbag deployment according to the established first threshold and lock
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`threshold. In other words, by establishing these thresholds, the bounds of the
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`relative weight parameter are defined. As to what may constitute the
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`measure of the relative weight parameter, the specification is replete with
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`examples,14 all of which are dependent on the weight of the seat occupant
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`(i.e., the forces determined by the sensors that make up seat occupant
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`sensing system). As stated in the specification, the use of such measures
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`allows for a determination of whether a seat occupant is an adult-sized
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`person, in which case airbag deployment is allowed, or not, in which case
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`deployment should be prohibited.15
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`Accordingly, claims 1, 17, and 20 are not indefinite under 35 U.S.C. §
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`112, paragraph 2.
`
`
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`(2) If the Board determines the claims 1 and 17 are indefinite, that
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`determination should not extend to the challenged dependent claim.
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`If the Board determines that claims 1 and 17 are indefinite under 35
`
`U.S.C. § 112, paragraph 2 because the meaning of “relative weight
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`parameter” is not sufficiently clear, that determination should not extend to
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`
`
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`14 See, e.g., Ex. 1001 at 3:49-56; 4:12-35.
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`15 Id. at 5:25-29.
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`7
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`
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`at least claims 3, 5, and 21, because each of these respective dependent
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`claims sufficiently defines the relative weight parameter to permit a person
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`of ordinary skill in the art to discern the bounds of the claims.16
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`Claims 3 and 21, for example, each specify that the relative weight
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`parameter “is the total force detected by all the sensors.” Claim 5 specifies
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`that “the relative weight parameter is a load rating obtained by: calculating a
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`load rating for each sensor as a function of the difference between the sensor
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`output and a base value; and summing the load rating for all the sensors to
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`derive a total load rating.” These claims restrict the relative weight
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`parameter to readily determinable quantities and measures. Accordingly,
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`there are not indefinite.
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`
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`(3) If the Board determines any of the challenged claims are indefinite,
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`the Board should not institute this proceeding as to those claims.
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`As noted above, the parties have not stipulated to indefiniteness of
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`claims 1, 8, 9, 17, 18, 19, and 20. Rather, the parties stipulated to “entry of a
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`partial final judgment,” but left open their options to appeal the Court’s
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`determination of indefiniteness.17 No admissions or concessions were made
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`
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`16 Nautilus, Inc., 134 S. Ct. 2120.
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`17 Ex. 2002 at 2-3.
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`8
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`
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`concerning the validity of the challenged claims as a result of the parties’
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`stipulation.
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`Notwithstanding the above, if the Board separately determines that
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`claims 1, 8, 9, 17, 18, 19, and 20 are incapable of being construed, for
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`example because the Board determines the claims are indefinite, then the
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`Board should exercise its discretion and deny institution as to those claims.18
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`Where a claim’s meaning is indefinite under 35 U.S.C. § 112, ¶ 2, any
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`rejection based on prior art is improperly based on speculation.19
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`Accordingly, if the Board determines that claims 1, 8, 9, 17, 18, 19, and 20
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`are indefinite, then it would be improper to institute an inter partes review
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`based on any comparison of those claims to the asserted prior art.
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`
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`(4) If the Board determines the parties have stipulated that the
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`challenged claims are indefinite, the Board should deny the petition
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`with respect to those claims.
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`Although Patent Owner believes that the parties’ stipulation is not an
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`agreement that claims 1, 8, 9, 17, 18, 19, and 20 are indefinite, if the Board
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`
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`18 See, e.g., Blackberry Corp. v. MobileMedia Ideas, LLC, Case IPR2013-
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`00036, slip op. at 20 (PTAB Mar. 7, 2014) (Paper 65).
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`19 In re Steele, 305 F.2d 859, 862–63 (CCPA 1962).
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`9
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`
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`determines otherwise then the Board should exercise its discretion under 35
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`U.S.C. § 314 to deny the Petition with respect to those claims. As indicated
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`above, it would be improper to institute an inter partes review based on any
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`comparison of claims deemed to be indefinite to the asserted prior art.
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`Respectfully submitted,
`
`
`
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`Dated: September 10, 2015
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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
`
`
`
`
`
`/Tarek N. Fahmi/
`Tarek N. Fahmi
`Reg. No. 41,402
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`10
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`
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing
`PATENT OWNER’S ADDITIONAL BRIEFING CONCERNING THE
`STIPULATION AND PARTIAL JUDGMENT OF INVALIDITY IN THE
`RELATED LITIGATION
`
`was served on September 10, 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:
`Michael J. Lennon
`Clifford A. Ulrich
`Michelle Carniaux
`Kenyon & Kenyon LLP
`One Broadway
`New York NY 10004
`
`ptab@kenyon.com
`
`
`
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`The parties have agreed to electronic service in this proceeding.
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`
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`
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`Respectfully submitted,
`/Tarek N. Fahmi/
`Dated: September 10, 2015
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`
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`
`
`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
`
`
`
`
`
`11
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