Case IPR2016-0066
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________
`
`DUKANE CORPORATION,
`
`Petitioner,
`
`v.
`
`HERRMANN ULTRASCHALLTECHNIK GMBH & CO. KG
`
`Patent Owner.
`
`______________________________
`
`Case IPR2016-0066
`Patent 8,702,883
`
`Issue Date: April 22, 2014
`
`_____________________________
`
`DECLARATION OF LEO KLINSTEIN
`_____________________________
`
`
`
`
`
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`4824-5203-8714.1
`
`
`Petitioner Dukane Corp. – Exhibit 1008, p. 1
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________
`
`DUKANE CORPORATION,
`
`Petitioner,
`
`v.
`
`HERRMANN ULTRASCHALLTECHNIK GMBH & CO. KG
`
`Patent Owner.
`
`______________________________
`
`Case IPR2016-0066
`Patent 8,702,883
`
`Issue Date: April 22, 2014
`
`_____________________________
`
`DECLARATION OF LEO KLINSTEIN
`_____________________________
`
`
`
`
`
`
`4824-5203-8714.1
`
`
`Petitioner Dukane Corp. – Exhibit 1008, p. 1
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`
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`Case IPR2016-0066
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`TABLE OF CONTENTS
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`Page
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`I.
`
`INTRODUCTION ........................................................................................... 3
`A.
`Background and Qualifications ......................................................... 3
`B.
`Basis for Opinions ............................................................................... 3
`LEGAL STANDARDS FOR PATENTABILITY .......................................... 3
`II.
`III. LEVEL OF ORDINARY SKILL IN THE ART ............................................. 4
`IV. THE ‘883 PATENT (EXHIBIT 1001) ............................................................ 4
`A. Claims 1, 6 and 8 of the ‘883 Patent .................................................. 4
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`4824-5203-8714.1
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`Petitioner Dukane Corp. – Exhibit 1008, p. 2
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`Case IPR2016-0066
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`I.
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`INTRODUCTION
`A. Background and Qualifications
`1. My background and qualifications were set forth in Section 1.A of my
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`declaration (Exhibit 1007) attached to the Petition for Inter Partes Review of U.S.
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`Patent No. 8,702,883.
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`B.
`2.
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`Basis for Opinions
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`The basis for my opinions include those set forth in Section 1.B,
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`paragraphs 4-5, of my declaration (Exhibit 1007). In preparing this declaration, I
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`have further considered the Declaration of Ulrich Vogler (Exhibit 2005) and the
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`Patent Owner Herrmann Ultraschalltechnik GMBH & Co. KG’s Response to
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`Petition (Paper No. 13).
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`II. LEGAL STANDARDS FOR PATENTABILITY
`3.
`In addition to the legal standards for patentability summarized in
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`Section II, paragraphs 6-9 of my first declaration, I further understand that during
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`examination, Examiners are required to construe the words in the claims using the
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`broadest reasonable interpretation. My understanding of other legal standards and
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`rules is set forth in this declaration.
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`4824-5203-8714.1
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`Petitioner Dukane Corp. – Exhibit 1008, p. 3
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`Case IPR2016-0066
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`III. LEVEL OF ORDINARY SKILL IN THE ART
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`4.
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`I disagree with Mr. Vogler’s assertion that a person of ordinary skill
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`in the art of the invention of the ‘883 patent would understand that the first target
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`variable must be different from the fourth target variable.
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`5.
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`In my opinion, the person of ordinary skill would understand that the
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`first target variable recited in claim 6 can be the same as or different from the
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`fourth target variable. In support of his opinion, Mr. Vogler argues that unless the
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`first and fourth variables are different, the fourth variable would be rendered
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`meaningless because the first and fourth target variables are selected from the same
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`group. Therefore, Mr. Vogler argues, a construction that allows the first and fourth
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`variables to be the same would not be reasonable. That is not correct.
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`IV. THE ‘883 PATENT (EXHIBIT 1001)
`A. Claims 1, 6 and 8 of the ‘883 Patent
`Claim 1 recites that the first and second target variable “differ.” Claim 8
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`6.
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`recites that the “second and the fifth target variable differ.” However, claim 6 does
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`not specify whether the first and fourth target variables differ, as was specified in
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`claims 1 and 8. This alone would lead the skilled person to conclude, based on the
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`plain reading of the claims, that the first and fourth target variables in claim 6 do
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`not necessarily have to be different.
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`4824-5203-8714.1
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`Petitioner Dukane Corp. – Exhibit 1008, p. 4
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`Case IPR2016-0066
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`7.
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`This conclusion is supported by the language of claim 6. Claim 6 recites
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`that the first machining interval ends when the first target variable adopts the
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`predetermined value, i.e, the predetermined value first introduced in claim 1.
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`However, claim 6 goes on to recite, in the alternative, that the first machining
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`interval ends when the fourth target variable adopts a predetermined value, which
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`is not necessarily the same predetermined value recited in claim 1. Accordingly,
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`the skilled person would recognize that the predetermined value adopted by the
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`fourth target variable does not necessarily have to be the same as the
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`predetermined value adopted by the first target variable, although claim 6 does not
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`preclude a case where the first and fourth target variables both adopt the same
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`predetermined value.
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`8.
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`Therefore, in my opinion, it is entirely consistent for the first and fourth
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`variables in claim 6 to be the same, because they do not necessarily need to adopt
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`the same predetermined value as the criterion for ending the machining interval. In
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`other words, if the first and fourth variables were force, the speed (first welding
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`variable) could be held constant per claim 1 “during” the first machining interval
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`until a first target variable adopts a predetermined value, and henceforth the speed
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`could be varied during the first machining interval. The first interval can end when
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`one of two predetermined values is adopted: (1) when the fourth variable (force)
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`adopts the same predetermined value that determined when the speed is held
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`4824-5203-8714.1
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`Petitioner Dukane Corp. – Exhibit 1008, p. 5
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`Case IPR2016-0066
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`constant; or (2) when the fourth variable (force) adopts a different predetermined
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`value. In other words, the first machining interval can end at the same time when
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`the first welding variable is no longer kept constant, or the first machining interval
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`can end at a different time when the first welding variable is no longer kept
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`constant.
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`9.
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`This reasonable interpretation, in my opinion, is fully consistent with the
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`specification. In column 3, lines 27-33, the ’883 patent describes setting upper and
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`lower limits such that “when the upper limit is exceeded or the lower limit has
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`fallen below, the machining interval is ended and a transition is made into the next
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`machining interval or the welding process is discontinued.” Thus, referring back
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`to claim 6, the skilled person would understand that “the” predetermined value
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`could refer to an upper limit, and “a” predetermined value could refer to a lower
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`limit, and in such a case, the target variable (e.g., force) can be the same. Nor is
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`my interpretation inconsistent with claim 7, which explicitly introduces new terms
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`“an upper and/or lower limit” for the “first and/or second target variable.” For
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`example, claim 7 would cover an upper limit and a lower limit for the first target
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`variable.
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`10.
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`I also disagree with Mr. Vogler’s characterization of what the skilled person
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`would understand the invention of the ‘883 patent to be. On page 4 of his
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`declaration, Mr. Vogler states that “In the first interval, one of a group of variables
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`4824-5203-8714.1
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`Petitioner Dukane Corp. – Exhibit 1008, p. 6
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`Case IPR2016-0066
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`is held constant until a target variable reaches a predetermined value at which point
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`the first interval ends.” He goes on to state that “In the second interval, one of a
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`second group of variables is held constant until a second target variable reaches a
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`predetermined value at which point the second interval ends.” This is not the
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`invention recited claim 1, because claim 1 nowhere specifies when the first or
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`second interval ends. Claim 6 specifies alternative criteria for actually ending the
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`first machining interval. I understand that when a dependent claim adds a further
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`limitation, the independent claim from which it depends is presumed to be broader.
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`Because claim 6 specifies criteria for ending the first machining interval and claim
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`1 does not, I do not agree that the invention recited in claim 1 requires that the
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`interval end at the same time a target variable reaches a predetermined value for
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`keeping the welding variables constant. The adoption of a predetermined value in
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`claim 1 is the criterion for keeping the welding variable constant, not for ending
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`the machining interval. Various criteria for ending the machining interval is
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`specified in claims 6 and 7.
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`11.
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`I further disagree with Mr. Vogler’s assertion that a person of ordinary skill
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`in the art would understand claim 6 to require detection or monitoring of both a
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`first and a fourth target variable, and ending the first interval when either of those
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`variables adopts a predetermined value.
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`4824-5203-8714.1
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`Petitioner Dukane Corp. – Exhibit 1008, p. 7
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`Case IPR2016-0066
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`12. First, as I state above, Mr. Vogler’s assertion is based on the flawed premise
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`that the skilled person would understand that the first and fourth variables must be
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`the different and cannot be the same. In my opinion, the skilled person would
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`understand that the first and fourth variables recited in claim 6 can be the same or
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`different. Furthermore, I disagree with the main premise of his opinion, which is
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`that claim 6 requires that both the first and fourth target variables must be detected.
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`The skilled person, reading claim 6, would understand that the criterion to end the
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`first machining interval can be either the first target variable or the fourth target
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`variable. If the skilled person were to select the first target variable as the sole
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`criterion to end the first machining interval, then there would be no need to detect
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`or even use the fourth target variable. My understanding is that if all other
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`elements of claim 1 were practiced, using the first target variable only as the sole
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`criterion for ending the first machining interval would literally infringe claim 6. I
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`further understand that there is an old maxim of patent law --“that which infringes,
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`if later, anticipates, if earlier”-- which I understand to mean that the same criteria is
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`used to determine whether a claim is infringed or invalid, the only difference being
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`the time when the activity occurs.
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`13. Even if claim 6 were construed to require that the first and fourth variables
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`must be different, I fail to see how any skilled person reading claim 6 could arrive
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`at the conclusion that both variables must be detected. The use of the disjunctive
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`4824-5203-8714.1
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`Petitioner Dukane Corp. – Exhibit 1008, p. 8
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`Case IPR2016-0066
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`connector “or” plainly informs the skilled person that only one of those variables is
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`required to be used as the criterion for ending the first machining interval. I
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`understand that patent examiners and the Patent Trial and Appeal Board are
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`required to use the “broadest reasonable interpretation” of claim terms when
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`evaluating patent claims. In my opinion, construing the word “or” to effectively
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`mean “and” would be unreasonable, and therefore inferring into claim 6 a
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`requirement that both variables must be detected would likewise be unreasonable.
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`14. Despite the legal requirement to use the “broadest reasonable interpretation”
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`when evaluating patent claim terms, Mr. Vogler opines that claim 6 should be
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`confined to a specific embodiment in the specification. However, I do not believe
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`that the sentence on which he relies supports his opinion. On the contrary, it
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`actually provides further support for my opinion that both of the first and fourth
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`variables do not need to be detected. The paragraph beginning on column 3, lines
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`22-23 of the ‘883 patent starts with “Obviously, it is possible for two target
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`variables to be detected during a machining interval . . . .” A few lines before this
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`paragraph, a “particularly preferred embodiment” is described in which “a third
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`target variable of the group Z is detected . . . .” Thus, the ‘883 patent clearly
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`contemplated detecting one variable (e.g., a third target variable), and described the
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`possibility of detecting two target variables. In fact, in claim 4, the ‘883 explicitly
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`recites detecting a third target variable, but claim 6 omits any mention of detecting
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`4824-5203-8714.1
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`Petitioner Dukane Corp. – Exhibit 1008, p. 9
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`Case IPR2016-0066
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`the first or fourth variables. In my opinion, the skilled person would understand
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`claim 6 to refer to at least three alternate configurations. In a first configuration,
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`the first and the fourth target variables are the same, so only one variable is
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`detected, and when that variable adopts the predetermined value or some other
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`predetermined value, the first machining interval ends. In a second alternate
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`configuration, the first and fourth target variables are different, but only one of
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`them is detected (because of the disjunctive connector “or”), so when whichever
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`detected target variable (either the first or the fourth) adopts a predetermined value,
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`the first machining interval ends. The skilled person would understand in this
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`second configuration that the other of the first or fourth target variables need not be
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`detected. In a third alternate configuration, the first and the fourth target variables
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`are different and both of them are detected. This third configuration is consistent
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`with Mr. Vogler’s opinion, but his opinion is incomplete because it excludes the
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`first and second alternate configurations from the scope of claim 6.
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`15. Further, I do not agree with Mr. Vogler that the fourth target variable “is not
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`referenced anywhere else in the specification” [except in column 3, line 24], and
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`therefore it necessarily follows that the first and fourth variables must be different.
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`Exhibit 2005 at p. 5. He acknowledges on page 6 that the first and fourth target
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`variables are selected from group Z, which consists of force F, power P, time t,
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`path s or energy E. However, it does not follow that because the target variables in
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`4824-5203-8714.1
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`Petitioner Dukane Corp. – Exhibit 1008, p. 10
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`Case IPR2016-0066
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`the claims are preceded by adjectives first, second, third and so forth, the skilled
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`person would interpret these adjectives to refer to the variables in the order they
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`are listed in group Z or that the first and fourth variables must necessarily be
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`mutually distinct from one another. Otherwise, there would be no need for claim 1
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`to particularize “wherein the first and the second target variable differ.” This
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`explicit recitation plainly signals to the skilled person that the various target
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`variables of group Z can be the same. Likewise, claim 8 makes it explicit that “the
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`second and fifth target variables differ.” Significantly, with respect to the first and
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`second welding variables, claim 2 recites that these two variables are the same. I
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`do not understand the logic of why the first and fourth variables in claim 6 must
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`necessarily be different in Mr. Vogler’s view, but the first and second variables can
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`be different in claim 1 or the same in claim 2. Mr. Vogler’s opinion that
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`construing the first and fourth variables to be the same “would render the reference
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`to the fourth variable meaningless, because both the first and fourth target variables
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`are selected from the same group,” (Exhibit 2005, p. 6) would apply equally to the
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`first and second welding variables, which are also selected from the same group,
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`namely group S. If Mr. Vogler’s opinion were applied consistently to the welding
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`variables, it would mean that the second welding variable is also meaningless
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`because the first and second welding variables are selected from the same group S.
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`Yet claim 2 allows that the first and second welding variables can be the same. For
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`4824-5203-8714.1
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`Petitioner Dukane Corp. – Exhibit 1008, p. 11
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`Case IPR2016-0066
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`these reasons, Mr. Vogler’s interpretation is insolubly inconsistent and therefore
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`unreasonable. Accordingly, in my opinion, the skilled person reading all the
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`claims of the ‘883 patent in context would understand that the first target variable
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`and the fourth target variable recited in claim 6 can be any one or two variables
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`selected from group Z.
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`4824-5203-8714.1
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`Petitioner Dukane Corp. – Exhibit 1008, p. 12
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`Case IPR2O 16-0066
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`I declare under penalty of perjury under the laws of the United States of
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`America that the foregoing is true and correct.
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`EXECUTED on October /2, 2016.
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` _
`
`Leo Klinstein
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