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 No. IPR2015-01116
`Patent No. 6,012,007
`__________________________________________________________________
`
`PETITIONER’S REQUEST FOR REHEARING UNDER
`37 C.F.R. §§ 42.71 (c) and (d)
`
`
`
`__________________________________________________________________
`
`
`
`
`
`
`
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.
`
`Petitioner
`v.
`
`SIGNAL IP, INC.,
`
`Patent Owner
`
`
`
`Case No. IPR2015-01116
`Patent No. 6,012,007
`__________________________________________________________________
`
`PETITIONER’S REQUEST FOR REHEARING UNDER
`37 C.F.R. §§ 42.71 (c) and (d)
`
`
`
`__________________________________________________________________
`
`
`
`
`
`
`
`
`
`
`
`I.
`
`INTRODUCTION AND STATEMENT OF RELIEF REQUESTED
`
`Under 37 C.F.R. §§ 42.71(c) and (d), Petitioner Volkswagen Group of
`
`America, Inc. (“VWGoA”) respectfully requests rehearing of the September 29,
`
`2015 Decision of the Patent Trial and Appeal Board (“the Board”) denying
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`institution of an inter partes review of U.S. Patent No. 6,012,007 (“the ’007
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`patent”), based on VWGoA’s Petition, filed on April 30, 2015 (“the Petition,”
`
`Paper No. 2).
`
`For the reasons more fully set forth below, VWGoA respectfully submits
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`that the Board misapprehended or overlooked certain matters set forth in
`
`VWGoA’s Petition and in the supporting Declaration of Dr. A. Bruce Buckman
`
`(“the Buckman Declaration,” Ex. 1002), and respectfully requests that the Board
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`institute an inter partes review of claims 1, 17, and 19 to 21 of the ’007 patent.
`
`II. LEGAL STANDARDS
`
`
`
`In reviewing a request for rehearing, the panel “will review the decision for
`
`an abuse of discretion.” 37 C.F.R. § 42.71(c). The rehearing request must
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`“specifically identify all matters the party believes the Board misapprehended or
`
`overlooked, and the place where each matter was previously addressed in a motion,
`
`an opposition, or a reply.” 37 C.F.R. § 42.71(d).
`
`1
`
`
`
`
`
`III. BASIS FOR RELIEF REQUESTED
`A. The Board’s Decision is Inconsistent with its Decision in
`IPR2015-01004
`In its Petition, VWGoA presented an obviousness ground of unpatentability
`
`
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`of claims 1, 17, and 19 to 21 under 35 U.S.C. § 103 in view of Cashler and
`
`Schousek. The Board’s Decision denied institution on this obviousness ground.
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`Yet, two days later, on October 1, 2015, the same Board instituted inter partes
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`review of claims 1, 17, 20, and 21 based on anticipation under 35 U.S.C. § 102 by
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`Schousek, the same prior art presented in VWGoA’s Petition. See IPR2015-01004
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`(“the ’004 IPR”), Paper No. 11. Thus, in the ’004 IPR, the Board found that the
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`subject matter of claims 1, 17, 20, and 21 is identically disclosed by Schousek,
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`while in this proceeding, the same Board found that the combination of Cashler
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`with Schousek fails to render these claims obvious.
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`The Board’s decision to institute inter partes review of claims 1, 17, 20, and
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`21 based on anticipation by Schousek is inconsistent with the decision to not
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`institute inter partes review of claims 1, 17, 20, and 21 based on obviousness in
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`view of Cashler and Schousek. As the Federal Circuit has articulated, “a disclosure
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`that anticipates under § 102, also renders the claim invalid under § 103, for
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`‘anticipation is the epitome of obviousness.’” Connell v. Sears, Roebuck Co., 722
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`F.2d 1542, 1548 (Fed. Cir. 1983).
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`2
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`
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`As an example of the inconsistent conclusions reached in this proceeding
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`and in the ’004 IPR, the portions of Schousek cited in VWGoA’s Petition relating
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`to “establishing a lock threshold above the first threshold” overlap the portions of
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`Schousek cited in the ’004 IPR petition. Yet, the Board, in this proceeding, found
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`that Schousek does not disclose “establishing a lock threshold above the first
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`threshold,” but found, in the ’004 IPR, that Schousek does disclose this limitation.
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`Because of the inconsistency between the decision to institute an inter partes
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`review based on anticipation under 35 U.S.C. § 102 in the ’004 IPR and the
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`decision to not institute an inter partes review based on obviousness under 35
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`U.S.C. § 103 in the present proceeding, based on the same prior art cited in the
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`’004 IPR, the Board should institute an inter partes review of the claims
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`challenged in VWGoA’s Petition.
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`B. Cashler and Schousek Render Obvious Claims 1, 17, and 19 to 21
`In its Decision, the Board denied institution of an inter partes review based
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`on its conclusion that it is unclear how the teachings of Cashler and Schousek “are
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`combined in Petitioner’s challenge to provide the ‘lock threshold above the first
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`3
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`
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`threshold’ recited in claim 1.”1 Decision at 8. In doing so, the Board opined that the
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`Petition does not “propos[e] any specific modification to Cashler,” but “even
`
`assuming that one skilled in the art would have modified Cashler’s system to
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`include Schousek’s fault detection process, Petitioner fails to provide any
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`explanation as to how, or even allege that, Cashler’s ‘high threshold’ would be
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`used in that process to meet the claim limitations.” Decision at 8.
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`In particular, the Decision states:
`
`There is no explanation in the Petition as to how
`Schousek’s “maximum infant seat weight” is above
`Cashler’s “high threshold” in the proposed combination.
`When discussing the “lock threshold [being] above the
`first threshold,” Petitioner states that “Schousek teaches a
`‘maximum infant seat weight’ threshold (i.e., a ‘lock
`threshold’)
`that
`is above
`the
`‘minimum weight
`threshold,’” but does not tie Cashler’s “high threshold”
`into the discussion of this limitation in any way.
`Decision at 9 (citing Petition at 20).
`
`
`1
`The Board noted in its Decision that independent claim 17 is similar to claim
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`1, and declined to instituted inter partes review as to claim 17 (and claims 19 to
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`21, which depend from claim 17) for the same reasons as for claim 1.
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`4
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`
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`Because, as explained below, the Board misapprehended or overlooked
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`certain matters set forth in the Petition and in the Buckman Declaration in reaching
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`the foregoing conclusions, it should institute an inter partes review of claims 1, 17,
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`and 19 to 21 of the ’007 patent.
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`The Board’s conclusion that “Petitioner fails to provide any explanation as
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`to how, or even allege that, Cashler’s ‘high threshold’ would be used in that
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`process to meet the claim limitations” is based on an incorrect premise. The stated
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`basis for the Board’s conclusion is that the Petition does not provide an explanation
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`as to how Schousek’s “maximum infant seat weight” is above Cashler’s “high
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`threshold” in the proposed combination.
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`With respect to the “establishing a first threshold of the relative weight
`
`parameter” claim element, the Petition does not merely state that Cashler teaches a
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`“high” threshold. Instead, according to the Petition, “Cashler teaches multiple
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`thresholds of the total calculated weight and using those thresholds in deployment
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`decisions,” namely, the “low” and “high” thresholds. Petition at 20 (emphasis
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`added). Thus, as an initial matter, the Board erred by either overlooking or
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`misapprehending the Petition’s discussion of the “low” threshold in Cashler.
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`In mapping the prior art to the “allowing deployment when the relative
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`weight parameter is above the first threshold” claim element, the Petition further
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`explains that Cashler teaches that if the calculated weight is above the high
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`5
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`
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`threshold then deployment is allowed. Petition at 20. Because the “high” threshold
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`is necessarily greater than the “low” threshold, and deployment is allowed when
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`the weight is above the “high” threshold, it is self-evident that deployment is also
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`allowed when the weight is above the “low” threshold. Indeed, for both
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`“establishing a first threshold of the relative weight parameter” and “allowing
`
`deployment when the relative weight parameter is above the first threshold,” the
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`Petition specifically points to paragraph 12 of the Buckman Declaration which
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`explains this. See Petition at 20 (citing Ex. 1002 ¶ 12). That paragraph states:
`
`In discussing this algorithm [Figure 8], Cashler describes
`that the microprocessor determines the total force present
`on the vehicle passenger seat, and that “the total force is
`compared to high and low thresholds <68>. If it is above
`the high threshold deployment is allowed and if below
`the low threshold the deployment is inhibited. Col. 5, ll.
`12-15. Deployment is also permitted if the force is
`determined to be above the low threshold but below the
`high threshold under certain conditions. Col. 5, ll. 15-30.
`Thus Cashler describes
`two conditions
`in which
`deployment is allowed when the weight is determined to
`be above the low threshold.
`Buckman Declaration at ¶ 12.
`
`The Petition also ties the same portions of Cashler referenced in the
`
`Buckman Declaration to the recitation of both “establishing a first threshold of the
`
`6
`
`
`
`
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`relative weight parameter” and “allowing deployment when the relative weight
`
`parameter is above the first threshold” in claim 1. Petition at 20, 35-36 (referring
`
`to Cashler, col. 5, ll. 12-15 and col. 5, ll. 15-30).
`
`The Board’s Decision makes no mention of the “low” threshold taught by
`
`Cashler in connection with the “first threshold” recited in claim 1 of the ’007
`
`patent. It also incorrectly states that “Petitioner considers Cashler’s discussion of a
`
`‘high threshold’ as teaching ‘establishing a first threshold.’” Decision at 8. While
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`the Board correctly noted that the Petition points to “Schousek’s discussion of a
`
`‘maximum infant seat weight’ as teaching ‘establishing a lock threshold’ in claim
`
`1,” the Board’s Decision on the Petition’s is based on the purported absence of a
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`comparison of Schousek’s “maximum infant seat weight” threshold to Cashler’s
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`“high threshold,” but no such comparison is necessary.
`
`The Petition explicitly explains how all claim elements are disclosed by
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`Cashler and Schousek. For example, with respect to the element of “establishing a
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`lock threshold above the first threshold,” the Petition points to Schousek’s
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`“maximum infant seat weight” threshold as being above its “minimum weight
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`threshold” and further refers to paragraph 21 of the Buckman declaration. See
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`Petition at 20‒21 (citing Ex. 1002 ¶ 21). That paragraph states:
`
`Schousek describes establishing a lock threshold above
`the normal allow threshold. For example, Schousek
`describes a “maximum infant seat weight” threshold that
`7
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`
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`is above the “minimum weight threshold.” Col. 2, ll. 31-
`37, col. 4, l. 58-col. 5, l. 3. In particular, Schousek
`describes that the minimum weight threshold may be 10
`pounds and that the maximum weight of an infant seat
`may be 50 pounds. Id. The minimum weight threshold of
`10 pounds constitutes a “first threshold,” as claimed in
`the ‘007 Patent and the threshold for the maximum
`weight of an infant seat of 50 pounds constitutes a “lock
`threshold” above the first threshold, as also claimed in
`the ‘007 Patent.
`Buckman Declaration at ¶ 21.
`
`
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`To reiterate, the Petition points to a particular threshold in Schousek as the
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`recited “lock threshold,” and explains that it is above a “first threshold,” which the
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`Petition notes can be the “minimum weight threshold” taught by Schousek. The
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`Petition thus explains how claim 1 of the ’007 patent is unpatentable under 35
`
`U.S.C. § 103 in view of Cashler and Schousek.
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`Regarding the Board’s conclusion that the Petition fails to propose “any
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`specific modification to Cashler” and merely “identifies individual teachings in the
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`references” (Decision at 8), the Petition describes several specific reasons why
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`claim 1 is obvious in view of the disclosures of Schousek and Cashler. Petition at
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`31‒33. For example, as the Petition explains on page 32:
`
`the
`to combine
`It would have been obvious
`“foundational” technique of Cashler, which, for example,
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`8
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`
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`includes a method of inhibiting or allowing vehicle
`airbag deployment using an array of pressure sensors
`arranged on a vehicle passenger seat coupled to a
`microprocessor which analyzes the sensor load forces
`and then determines whether to allow or inhibit airbag
`deployment (see, Ex. 1003, Abstract), with the system
`described by Schousek, which, for example, describes a
`system that determines whether to allow the passenger
`seat airbag to deploy based on whether the passenger seat
`is occupied, and based on the occupant’s type (i.e., adult
`or child) and position (see, Ex. 1004, Abstract, col. 1, ll.
`53-39), and which filters out “an occasional spurious
`decision, which may be due to occupant movement or
`other instability,” (Ex. 1004, col. 6, ll. 2-5). Ex. 1002, ¶
`28.
`In addition, both Cashler and Schousek are directed to addressing the same
`
`problems that the ’007 patent purports to address. See Petition at 32 (citing Ex.
`
`1002 ¶¶ 28, 29).
`
`IV. CONCLUSION
`VWGoA respectfully requests that the Board institute an inter partes review
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`of claims 1, 17, and 19 to 21 of the ’007 patent for the reasons set forth in the
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`9
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`Petition.
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`10
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`Dated: October 29, 2015
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`
`
`/Clifford A. Ulrich/
`Michael J. Lennon (Reg. No. 26,562)
`Clifford A. Ulrich (Reg. No. 42,194)
`Michelle Carniaux (Reg. No. 36,098)
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`CERTIFICATE OF SERVICE
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`The undersigned hereby confirms that the foregoing Petitioner’s Request for
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`Rehearing Under 37 C.F.R. §§ 42.71(c) and (d) was served on October 29, 2015
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`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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