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
`
`
`
`Patent No. 6,012,007
`Issue Date: January 4, 2000
`Title: OCCUPANT DETECTION METHOD AND
`APPARATUS FOR AIR BAG SYSTEM
`__________________________________________________________________
`
`PETITIONER’S RESPONSE TO THE BOARD’S
`SEPTEMBER 2, 2015 ORDER (PAPER 6)
`
`Case No. IPR2015-01116
`__________________________________________________________________
`
`
`
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`
`
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.
`
`Petitioner
`v.
`
`SIGNAL IP, INC.,
`
`Patent Owner
`
`
`
`Patent No. 6,012,007
`Issue Date: January 4, 2000
`Title: OCCUPANT DETECTION METHOD AND
`APPARATUS FOR AIR BAG SYSTEM
`__________________________________________________________________
`
`PETITIONER’S RESPONSE TO THE BOARD’S
`SEPTEMBER 2, 2015 ORDER (PAPER 6)
`
`Case No. IPR2015-01116
`__________________________________________________________________
`
`
`
`
`
`
`
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`
`
`TABLE OF CONTENTS
`
`I.
`II.
`
`PROCEDURAL HISTORY ........................................................................... 2
`RESPONSES TO THE BOARD’S SPECIFIC INQUIRIES ......................... 5
`A. Whether the party contends that the challenged claims that are
`the subject of the stipulation are indefinite under 35 U.S.C. §
`112, second paragraph, with an explanation in support of the
`party’s contention ................................................................................. 5
`For IPR2015-01004 and IPR2015-01116, if the challenged
`independent claims are indefinite, whether the party contends
`such indefiniteness does, or does not, impact the challenged
`dependent claims that are not the subject of the stipulation, with
`an explanation in support of the party’s contention and an
`explanation of the impact. .................................................................... 6
`C. Whether the party contends that if the Board determines that the
`parties stipulated that the claims are invalid for being indefinite,
`the Board should exercise its discretion, pursuant to 35 U.S.C. §
`314 to deny the Petition with respect to those claims or whether
`the Board should terminate the proceeding pursuant to 37
`C.F.R. § 42.72 ...................................................................................... 7
`For IPR2015-01003, if the Board determines that the parties
`stipulated that claims 1 and 7 are invalid for being indefinite,
`whether Patent Owner’s stipulation should be considered a
`request for adverse judgment because the stipulation is a
`“disclaimer of a claim such that the party has no remaining
`claim in the trial,” pursuant to 37 C.F.R. § 42.73 .............................. 10
`III. CONCLUSION ............................................................................................. 10
`
`B.
`
`D.
`
`-i-
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`
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`Petitioner Volkswagen Group of America, Inc. (“VWGoA”) respectfully
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`submits this filing in response to the Board’s September 2, 2015 Order, 37 C.F.R. §
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`42.5, Conduct of the Proceeding (Paper 6) requesting a submission from both
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`patent owner Signal IP, Inc. (“Signal”) and VWGoA explaining the effect, if any,
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`on this proceeding of the Joint Stipulation for Entry of Partial Final Judgment of
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`Invalidity (“the Joint Stipulation”) agreed to by Patent Owner and Petitioner in an
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`ongoing litigation in the U.S. District Court for the Central District of California.
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`Signal has submitted a copy of the Joint Stipulation as Exhibit 2002.
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`The district court, in construing the claims of U.S. Patent No. 6,012,007
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`(“the ’007 patent”), found certain claims challenged by VWGoA in this proceeding
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`to be indefinite under 35 U.S.C. § 112.1 The parties subsequently “stipulate[d] to
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`entry of a partial final judgment that the following claims are invalid due to
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`indefiniteness under 35 U.S.C. § 112, paragraph 2: … claims 1, … 17, … 19, and
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`20 of the ’007 patent.” Ex. 2002 at p. 2. As stated in the Joint Stipulation, Signal
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`and VWGoA “reserve all appellate rights, including, but not limited to, the right to
`
`
`1
`In its Petition, VWGoA challenged claims 1, 17, and 19 to 21. In its claim
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`construction order (Ex. 1007 and 2001), the district court concluded that claims 1,
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`17, and 20 are indefinite but that claim 21 is not indefinite. Ex. 1007 and 2001, at
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`pp. 60-63.
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`1
`
`
`
`
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`appeal the Court’s April 17, 2015 claim construction order [Ex. 1007 and 2001] to
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`the United States Court of Appeals for the Federal Circuit.” Ex. 2002 at pp. 2-3.
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`The Partial Final Judgment of Invalidity (Ex. 3001) is therefore not final, and the
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`Joint Stipulation should have no effect on this inter partes review proceeding.
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`I. PROCEDURAL HISTORY
`
`
`
`Signal filed suit against VWGoA in the U.S. District Court in the Central
`
`District of California on April 23, 2014, alleging, for example, infringement of the
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`’007 patent.2 See Signal litigation, D.I. 1. Signal asserted claims 1, 17, and 19 to 21
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`of the ’007 patent against VWGoA – the same claims VWGoA has challenged in
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`this proceeding – of which claims 1 and 17 are independent claims, and claims 19,
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`20, and 21 depend from claim 17.
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`During claim construction in the Signal litigation, VWGoA argued that
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`certain terms recited in claims 1, 17, and 19 to 21 are indefinite under 35 U.S.C. §
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`112. In particular, VWGoA asserted that the terms “for a given time,” “for a time,”
`
`
`2
`The litigation is captioned Signal IP, Inc. v. Volkswagen Group of America,
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`Inc., et al., Case No. 14-cv-3113-JAK (JEMx) (“the Signal litigation”). On
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`approximately the same date, Signal also filed separate lawsuits in the same district
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`court against several other defendants asserting infringement of the ’007 patent
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`(“the related cases”). See Signal litigation, D.I. 11.
`
`2
`
`
`
`
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`and “relative weight parameter” are indefinite. See Ex. 1008 (Signal litigation, D.I.
`
`75) at pp. 105-108 (concerning “for a given time” and “for a time”), 112-116
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`(concerning “relative weight parameter”). On April 17, 2015, the district court
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`issued its claim construction order finding that the terms “for a time” and “for a
`
`given time” are not indefinite and do not require construction, and that the term
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`“relative weight parameter” is indefinite. Ex. 1007 and 2001, at pp. 53-56
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`(concerning “for a time” and “for a given time”), 60-63 (concerning “relative
`
`weight parameter”). Regarding the term “relative weight parameter,” the district
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`court found that though it is indefinite in independent claim 17, dependent claim
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`21 “cure[s] the indefiniteness issue” and is therefore not invalid. Id. at n.15.
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`Signal, VWGoA, and the remaining defendants in the related cases
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`subsequently agreed to and filed the Joint Stipulation with the district court on May
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`20, 2015. The Joint Stipulation notes that the district court “issued its claim
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`construction order (Docket No. 77) holding, inter alia, that … certain terms in
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`claims 1, 17, and 20 of the ’007 patent are indefinite under 35 U.S.C. § 112,
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`paragraph 2.” Ex. 2002 at p. 2. The Joint Stipulation further states:
`
`In light of the Court’s claim construction order,
`7.
`[Signal] and [VWGoA] 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: …
`claims 1, 8, 9, 17, 18, 19, and 20 of the ’007 patent.
`
`[Signal] and [VWGoA] reserve all appellate rights,
`8.
`including, but not limited to, the right to appeal the
`
`3
`
`
`
`
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`Court’s April 17, 2015 claim construction order to the
`United States Court of Appeals for the Federal Circuit.
`[Signal] 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.
`
`Ex. 2002 at pp 2-3. A partial final judgment reflecting the parties’ stipulation was
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`submitted to the district court with the Joint Stipulation. On May 22, 2015, the
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`district court entered the partial final judgment submitted by the parties and
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`ordered that “Claims 1, … 17, … 19, and 20 of [the ’007 patent] are invalid as
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`indefinite under 35 U.S.C. § 112, paragraph 2.” Ex. 3001 at p. 2. The partial
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`judgment further states that “Upon the conclusion of the case as to all matters,
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`counsel are directed to lodge a proposed final judgment that includes the terms of
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`this partial judgment.” Id.
`
`In summary, neither Signal nor VWGoA, in the Joint Stipulation, stipulated
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`to invalidity under 35 U.S.C. § 112, paragraph 2; instead, Signal and VWGoA
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`merely stipulated to entry of a partial final judgment of invalidity under 35 U.S.C.
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`§ 112, paragraph 2. Therefore, the Joint Stipulation should have no effect on the
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`present inter partes review proceeding at this juncture.
`
`4
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`
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`II.
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` RESPONSES TO THE BOARD’S SPECIFIC INQUIRIES
`A. Whether the party contends that the challenged claims that are
`the subject of the stipulation are indefinite under 35 U.S.C. § 112,
`second paragraph, with an explanation in support of the party’s
`contention3
`As explained in the Joint Claim Construction Brief (Ex. 1008) in the Signal
`
`litigation, VWGoA contends that claims 1, 17, and 19 to 21 of the ’007 patent are
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`indefinite under 35 U.S.C. § 112, second paragraph. In particular, and as described
`
`in more detail in the Joint Claim Construction Brief, VWGoA contends that the
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`terms “for a time,” “for a given time,” and “relative weight parameter” render
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`claims 1, 17, and 19 to 21 indefinite under 35 U.S.C. § 112, second paragraph.
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`Regarding the terms “for a time” and “for a given time,” VWGoA contends
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`that these claim terms are indefinite because they are terms of degree, and neither
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`the patent specification nor the file history provides objective bounds for those
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`terms. See Ex. 1008 at pp. 105-108.
`
`Regarding the term “relative weight parameter,” VWGoA contends that this
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`term is indefinite because the ’007 patent does not define what constitutes a
`
`
`3
`As stated above, VWGoA challenged claims 1, 17, and 19 to 21 in this inter
`
`partes review proceeding. Of those claims, only claim 21 is not specifically
`
`mentioned in either the Joint Stipulation or the partial judgment.
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`5
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`
`
`
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`“relative weight parameter,” does not describe how to calculate one, and does not
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`disclose what the parameter is “relative” to. See id. at pp. 112-116.4
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`As explained above, in its claim construction order, the district court agreed
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`that the term “relative weight parameter” is indefinite but that “for a time” and “for
`
`a given time” are not indefinite. Ex. 1007 and 2001, at pp. 60-63.
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`B.
`
`if the challenged
`For IPR2015-01004 and IPR2015-01116,
`independent claims are indefinite, whether the party contends
`such indefiniteness does, or does not, impact the challenged
`dependent claims that are not the subject of the stipulation, with
`an explanation in support of the party’s contention and an
`explanation of the impact.
`For IPR2015-01116, VWGoA contends that claim 21, the only dependent
`
`claim challenged by VWGoA that is not the subject of the Joint Stipulation, is
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`indefinite.
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`Dependent claim 21, which depends from claim 17, recites:
`
`21. Means for inhibiting and allowing deployment as
`defined
`in claim 17 wherein
`the relative weight
`parameter is the total force detected by all the sensors.
`
`
`4
`Other defendants in the related cases asserted that “a second threshold,”
`
`recited in claim 20, is also indefinite under 35 U.S.C. § 112, second paragraph. See
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`Ex. 1008 at 109-111. The district court concluded that “a second threshold” is not
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`indefinite. Ex. 1007 and 2001, at pp. 56-59.
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`6
`
`
`
`
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`Because claim 21 depends from claim 17, it includes the same limitations of
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`“for a given time,” “for a time,” and “relative weight parameter” as claim 17. As
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`stated above, VWGoA contends that “for a given time” and “for a time” are
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`indefinite because they are terms of degree, and neither the specification nor the
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`file history provides objective bounds for those terms, and VWGoA contends that
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`“relative weight parameter” is indefinite because the ’007 patent does not define
`
`what constitutes a “relative weight parameter,” does not describe how to calculate
`
`one, and does not disclose what the parameter is “relative” to. See, Ex. 1008 at pp.
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`105-108 and 112-116. VWGoA contends that claim 21 is indefinite because it, by
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`virtue of its dependency from claim 17, includes the indefinite limitations “for a
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`time,” “for a given time,” and “relative weight parameter.”
`
`C. Whether the party contends that if the Board determines that the
`parties stipulated that the claims are invalid for being indefinite,
`the Board should exercise its discretion, pursuant to 35 U.S.C. §
`314 to deny the Petition with respect to those claims or whether
`the Board should terminate the proceeding pursuant to 37 C.F.R.
`§ 42.72
`As stated above, neither Signal nor VWGoA, in the Joint Stipulation,
`
`stipulated to invalidity under 35 U.S.C. § 112, paragraph 2; instead, Signal and
`
`VWGoA merely “stipulate[d] to entry of a partial final judgment that the following
`
`claims are invalid due to indefiniteness under 35 U.S.C. § 112, paragraph 2: …
`
`claims 1, … 17, … 19, and 20 of the ’007 patent.” Ex. 2002 at p. 2. Moreover,
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`according to the Joint Stipulation, Signal and VWGoA “reserve all appellate rights,
`
`7
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`
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`
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`including, but not limited to, the right to appeal the Court’s April 17, 2015 claim
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`construction order [Ex. 1007 and 2001] to the United States Court of Appeals for
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`the Federal Circuit.” Ex. 2002 at pp. 2-3. Thus, a determination by the Board that
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`the parties stipulated that the claims are invalid for being indefinite would be
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`inconsistent with the Joint Stipulation and incorrect.
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`Nevertheless, should the Board determine that the parties stipulated that the
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`claims are invalid for being indefinite, the Board should not deny the petition with
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`respect to claims 1, 17, 19, and 20 pursuant to 35 U.S.C. § 314.
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`As an initial matter, Signal has asserted, in the Signal litigation, that “the
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`terms ‘for a time’ and ‘for a given time’ are not indefinite at all,” Ex. 1008 at p.
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`109, that “[t]he claims of the ’007 Patent clearly demonstrate what a ‘relative
`
`weight parameter’ is and how it is to be used,” id. at p. 116, and that “the term
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`‘relative weight parameter’ is more than sufficient to ‘inform, with reasonable
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`certainty, those skilled in the art about the scope of the invention,’” id. at p. 117. In
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`view of Signal’s arguments that the claims of the claims 1, 17, 19 and 20 are not
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`indefinite, the Board should not deny the petition.
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`Additionally, as noted above, Signal “reserve[d] all appellate rights,
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`including, but not limited to, the right to appeal the Court’s April 17, 2015 claim
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`construction order [Ex. 1007 and 2001] to the United States Court of Appeals for
`
`the Federal Circuit.” Ex. 2002 at p. 2. It is in the claim construction order that the
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`8
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`
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`
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`district court concluded that “certain terms in claims 1, 17, and 20 of the ’007
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`patent are indefinite under 35 U.S.C. § 112, paragraph 2.” Id.; see also, Ex. 1007 at
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`p. 63 (“Because the [’007] patent provides no boundaries for what parameters
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`could be considered a ‘relative weight parameter,’ and does not describe to what it
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`is ‘relative,’ a person of ordinary skill in the art would not be able to discern the
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`bounds of the claim with reasonable certainty…. For these reasons, the term
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`[‘relative weight parameter’] is indefinite in claims 1, 17 and 20.”). Thus, it is
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`possible that (a) Signal will appeal the April 17, 2015 claim construction order and
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`(b) the conclusion that “relative weight parameter” is indefinite will be reversed on
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`appeal. A denial of the petition, followed by a subsequent reversal of the April 17,
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`2015 indefiniteness ruling, would be prejudicial to VWGoA since a decision to
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`deny institution under 35 U.S.C. § 314 is not appealable, under 35 U.S.C. § 314(d),
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`and VWGoA would be precluded, under 35 U.S.C. § 315(b), from filing any
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`subsequent petition for inter partes review of the ’007 patent. Therefore, to avoid
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`the possibility of prejudice to VWGoA, the Board should not deny the petition.
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`Regarding termination under 37 C.F.R. § 42.72, the Board “may terminate a
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`trial without rendering a final written decision, where appropriate.” However, at
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`this stage of the proceeding, a trial has not yet been instituted. Therefore, the Board
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`does not have the authority to terminate this proceeding under 37 C.F.R. § 42.72.
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`9
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`In summary, there is no reason for the Board to decide not to review claims
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`1, 17, 19, and 20 based on the Joint Stipulation and the subsequent entry of the
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`partial judgment of invalidity.
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`D.
`
`For IPR2015-01003, if the Board determines that the parties
`stipulated that claims 1 and 7 are invalid for being indefinite,
`whether Patent Owner’s stipulation should be considered a
`request for adverse judgment because the stipulation is a
`“disclaimer of a claim such that the party has no remaining claim
`in the trial,” pursuant to 37 C.F.R. § 42.73
`Since VWGoA is not a party to IPR2015-01003, a response from VWGoA is
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`
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`not believed to be required.
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`III. CONCLUSION
`For the foregoing reasons, VWGoA respectfully requests that the Board
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`should neither exercise its discretion to deny the petition in this proceeding under
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`35 U.S.C. § 314 nor terminate the proceeding pursuant to 37 C.F.R. § 42.72.
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`Dated: September 10, 2015
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`/Clifford A. Ulrich/
`Clifford A. Ulrich (Reg. No. 42,194)
`Kenyon & Kenyon LLP
`One Broadway
`New York, New York 10004
`Tel: 212.425.7200
`Fax: 212.425.5288
`Email: culrich@kenyon.com
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`10
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`CERTIFICATE OF SERVICE
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`The undersigned hereby confirms that the foregoing PETITIONER’S
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`RESPONSE TO THE BOARD’S SEPTEMBER 2, 2015 ORDER (PAPER 6) was
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`served on September 10, 2015, via e-mail upon the following:
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`Ascenda Law Group, PC
`333 W San Carlos St., Suite 200
`San Jose, CA 95110
`Email: patents@ascendalaw.com
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`/Clifford A. Ulrich/
`Clifford A. Ulrich (Reg. No. 42,194)
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004
`Tel: 212.425.7200
`Fax: 212.425.5288
`Email: culrich@kenyon.com
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