Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 16
`Entered: June 2, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TOYOTA MOTOR CORP.,
`Petitioner,
`
`v.
`
`SIGNAL IP, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00292
`Patent 6,012,007
`_______________
`
`
`
`Before MEREDITH C. PETRAVICK, JEREMY M. PLENZLER, and
`JAMES A. TARTAL, Administrative Patent Judges.
`
`PLENZLER, Administrative Patent Judge.
`
`DECISION
`Instituting Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`Paper 16
`Entered: June 2, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TOYOTA MOTOR CORP.,
`Petitioner,
`
`v.
`
`SIGNAL IP, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00292
`Patent 6,012,007
`_______________
`
`
`
`Before MEREDITH C. PETRAVICK, JEREMY M. PLENZLER, and
`JAMES A. TARTAL, Administrative Patent Judges.
`
`PLENZLER, Administrative Patent Judge.
`
`DECISION
`Instituting Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`IPR2016-00292
`Patent 6,012,007
`
`I.
`
`INTRODUCTION
`A. Background
`Toyota Motor Corp. (“Petitioner”) filed a corrected Petition to
`institute an inter partes review of claims 17 and 21 (“the challenged
`claims”) of U.S. Patent No. 6,012,007 (Ex. 1001, “the ’007 patent”). Paper
`7 (“Pet.”). Signal IP, Inc. (“Patent Owner”) filed a Preliminary Response.
`Paper 11 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a),
`which provides that an inter partes review may not be instituted “unless . . .
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” For the reasons given
`below, we institute an inter partes review in this proceeding with respect to
`claims 17 and 21.
`B. Related Proceedings
`Petitioner and Patent Owner indicate that the ’007 patent is the subject
`of a number of co-pending federal district court cases, including: Signal IP,
`Inc. v. Toyota Motor North America, Inc., No. 2:15-cv-05162 (C.D. Cal.)
`(“the related litigation”). Pet. 1–2; Paper 3, 2–3.
`The ’007 patent is also the subject of IPR2015-01004, for which trial
`was instituted on multiple grounds, including anticipation of claims 1–3, 5,
`9, 17, 20, and 21 based on anticipation by Schousek1. American Honda
`Motor Co., Inc. v. Signal IP, Inc., Case IPR2015-01004, slip op. at 18
`(PTAB October 1, 2015) (Paper 11).
`
`
`1 U.S. Pat. No. 5,474,327; issued Dec. 12, 1995 (Ex. 1002, “Schousek”).
`
`2
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`C. Asserted Grounds of Unpatentability and Evidence of Record
`Petitioner contends that the challenged claims are unpatentable under
`35 U.S.C. §§ 102 and 103 based on the following grounds (Pet. 4–5, 12–44).
`References
`Basis
`Claims Challenged
`Schousek
`§ 102
`17 and 21
`
`Schousek and Fu2
`
`§ 103
`
`17 and 21
`
`Petitioner also provides testimony from Scott Andrews. Ex. 1007
`(“the Andrews Declaration”).
`D. The ’007 Patent
`The ’007 patent is directed to “an airbag system having seat pressure
`
`detectors [mounted] in the seat” and its method of operation. Ex. 1001,
`1:10–12. The ’007 patent explains that one “object of the invention [is] to
`discriminate in a [supplemental inflatable restraint] system between large
`and small seat occupants for a determination of whether an airbag
`deployment should be permitted” and “[a]nother object in such a system is
`to maintain reliable operation in spite of dynamic variations in sensed
`pressures.” Id. at 1:52–57.
`
`The ’007 patent describes “seat sensing system 14 to inhibit air bag
`deployment when a seat is empty or occupied by a small child, while
`allowing deployment when the occupant is large.” Id. at 2:55–58. An
`example is provided where the system is tuned to always inhibit airbag
`deployment for occupants weighing less than 66 pounds, and always allow
`deployment for occupants exceeding 105 pounds. Id. at 2:58–61. The seat
`occupant sensing system includes a microprocessor and sensors mounted in
`
`
`2 U.S. Pat. No. 5,848,661; issued Dec. 15, 1998 (Ex. 1003, “Fu”).
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`IPR2016-00292
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`a seat monitored by the microprocessor to determine whether to inhibit
`airbag deployment. Id. at 2:61–3:7.
`
`The sensors are periodically sampled and decision measures are
`computed. Id. at 3:39–43. Decision measure computations include, for
`example, “calculating total force and its threshold, sensor load ratings and
`measure, long term average of sensor readings and its threshold.” Id. at
`3:49–52. An “Adult Lock Flag” can be set to always allow airbag
`deployment. Id. at 4:40–41. When determining whether to set the “Adult
`Lock Flag,” the total force is compared to “a lock threshold[,] which is
`above the total force threshold” (i.e., the threshold used as the minimum
`allowable value for airbag deployment), and “an unlock threshold[,] which
`represents an empty seat.” Id. at 4:41–44. A lock timer is compared to a
`lock delay to determine when to set the “Adult Lock Flag.” Id. at 4:44–46,
`Fig. 8. “If . . . the total force is greater than the lock threshold, and the lock
`timer is larger than the lock delay . . . the Adult Lock Flag is set.” Id. at
`4:46–50.
`E. Illustrative Claim
`As noted above, Petitioner challenges claims 17 and 21. Claim 17 is
`independent, with claim 21 depending therefrom. Claims 17 and 21 are
`reproduced below:
`17. In a vehicle restraint system having a controller for
`deploying air bags, means for inhibiting and allowing
`deployment according to whether a seat is occupied by a person
`of at least a minimum weight comprising:
`seat sensors responding to the weight of an occupant to
`produce sensor outputs;
`a microprocessor coupled to the sensor outputs and
`programmed to inhibit and allow deployment according
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`IPR2016-00292
`Patent 6,012,007
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`
`to sensor response and particularly programmed to
`determine measures represented by individual sensor
`outputs and calculate from the sensor outputs a
`relative weight parameter,
`establish a first threshold of the relative weight
`parameter,
`allow deployment when the relative weight parameter is
`above the first threshold,
`establish a lock threshold above the first threshold,
`set a lock flag when the relative weight parameter is
`above the lock threshold and deployment has been
`allowed for a given time,
`establish an unlock threshold at a level indicative of an
`empty seat,
`clear the flag when the relative weight parameter is
`below the unlock threshold for a time, and
`allow deployment while the lock flag is set.
`
`Ex. 1001, 7:51–8:8.
`
`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.
`
`Id. at 8:30–32.
`
`II. ANALYSIS
`A. Claim Construction
`Petitioner acknowledges that the ’007 patent expired on December 1,
`2015. See Pet. 7. “[T]he Board’s review of the claims of an expired patent
`is similar to that of a district court’s review.” In re Rambus, Inc., 694 F.3d
`42, 46 (Fed. Cir. 2012). Specifically, because the expired claims of the
`patent are not subject to amendment, we apply the principle set forth in
`
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`Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc)
`(quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.
`Cir. 1996)), that “words of a claim ‘are generally given their ordinary and
`customary meaning,’” as understood by a person of ordinary skill in the art
`in question at the time of the invention. “In determining the meaning of the
`disputed claim limitation, we look principally to the intrinsic evidence of
`record, examining the claim language itself, the written description, and the
`prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic
`Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips,
`415 F.3d at 1312–17).
`For purposes of this Decision, the only term requiring specific
`discussion is the “relative weight parameter” recited in claim 17.
`On April 17, 2015, a claim construction order was issued by the
`district court in related litigation, determining the “relative weight
`parameter” recited in claim 17 to be indefinite. Ex. 1006, 60–63. Based on
`the particular circumstances of this case, however, we are able to apply the
`grounds of unpatentability asserted by Petitioner to the challenged claims in
`view of the further definition of the “relative weight parameter” provided in
`dependent claim 21 (i.e., “total force”). See Pet. 9. See Vivid Techs., Inc. v.
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those
`terms need be construed that are in controversy, and only to the extent
`necessary to resolve the controversy.”). In each of its challenges,
`Petitioner’s contentions regarding the recited “relative weight parameter” are
`based on Schousek’s total weight parameter. Pet. 20, 25–26, 40.
`For purposes of this Decision, we determine that the “relative weight
`parameter,” recited in claim 17, includes a parameter representing a total
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`IPR2016-00292
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`weight of an occupant. At this stage of the proceeding, we determine that no
`other particular term requires an express construction in order to conduct
`properly our analysis of the prior art.
`B. Anticipation by Schousek
`Petitioner contends that claims 17 and 21 are anticipated by Schousek.
`Pet. 4–5, 12–30. As indicated above, we previously instituted trial in
`IPR2015-01004 for claims 17 and 21 (as well as other claims) based on
`anticipation by Schousek. We have reviewed the arguments and evidence
`presented by both parties in this proceeding thus far, and are persuaded that
`Petitioner has demonstrated a reasonable likelihood of prevailing at trial on
`its challenge to claims 17 and 21 as being anticipated by Schousek. This
`Decision addresses specifically only those portions of Petitioner’s challenge
`that Patent Owner disputes in its Preliminary Response.
`Schousek is directed to an airbag restraint system, and describes
`sensors located beneath a seat cover used to determine a total weight
`parameter in its airbag restraint system. Ex. 1002, Abstract, 4:51–60.
`Schousek describes a “minimum threshold” corresponding to a minimum
`weight of an occupied infant seat and a “maximum . . . threshold”
`corresponding to a maximum weight of an occupied infant seat. Id. at 2:31–
`34. Schousek explains that “[i]f the total weight parameter is greater than
`the maximum infant seat weight . . . a decision is made to allow
`deployment,” and “if the total weight parameter is less than the minimum
`weight threshold for an occupied infant seat . . . a decision is made to inhibit
`deployment.” Id. at 5:32–39. Schousek further explains that if the total
`weight parameter is between the minimum and maximum weight thresholds,
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`IPR2016-00292
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`airbag deployment is still allowed if the center of weight distribution is not
`forward of a reference line. Id. at 5:42–50.
`Schousek describes monitoring the consistency of decisions regarding
`airbag deployment (i.e., a fault detection procedure), and provides an
`example where the decision to allow deployment is updated every five
`seconds. Id. at 5:51–6:5. In this example, a loop occurs where the decision
`on whether to deploy an airbag is monitored repeatedly. Id. at 5:53–55, Fig.
`5b. If the decision (deploy or no deployment) is the same for five
`consecutive iterations, that decision is used to determine airbag deployment
`status and is labelled the “previous decision.” Id. at 5:58–61, Fig. 5b. If five
`consecutive decisions are not the same, airbag deployment status is not
`changed, and the previous decision is used again for airbag deployment
`status. Id. at 5:61–63. When the “previous decision” is a decision to allow
`airbag deployment, for example, and five consecutive subsequent decisions
`to inhibit deployment occur due to the total weight parameter being below
`the minimum infant weight threshold, the “previous decision” is set to
`inhibit airbag deployment. Id. at 5:53–61.
`Petitioner cites Schousek’s discussion of the “minimum weight
`threshold” as corresponding to “establishing a first threshold” in claim 17
`and Schousek’s discussion of the “maximum weight . . . threshold[]” as
`corresponding to “establish[ing] a lock threshold” in claim 17. Pet. 21–23,
`26–27. Petitioner cites Schousek’s discussion of fault detection as
`corresponding to “set[ting] a lock flag” and “clear[ing] the lock flag” in
`claim 17. Id. at 22–24, 27–28.
`Patent Owner responds that “the minimum weight of an occupied
`infant seat, as taught by Schousek, is not equivalent to the recited ‘first
`
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`IPR2016-00292
`Patent 6,012,007
`
`threshold of the relative weight parameter’” because Schousek additionally
`requires that the center of weight distribution is not forward of a reference
`line to permit air bag deployment. Prelim. Resp. 11 (citing Ex. 1002, 5:39–
`50). Patent Owner’s argument is unpersuasive because, as Patent Owner
`appears to acknowledge (see id.), Schousek discloses instances where airbag
`deployment is permitted when the total weight parameter is above the
`minimum weight threshold (see Ex. 1002, 5:42–50 (discussing
`circumstances where airbag deployment is allowed when total weight
`parameter is between the minimum and maximum weight thresholds)).
`Patent Owner’s argument that the claim somehow prohibits further
`restrictions on airbag deployment (see Prelim. Resp. 12) is not supported by
`the claim language, and Patent Owner fails to identify anything else in the
`record that imposes such a restriction.
`Patent Owner additionally contends that “Petitioner cannot be heard to
`contend that the other threshold taught by Schousek—the maximum weight
`of an occupied infant seat—is equivalent to the ‘first threshold of the relative
`weight parameter’ recited in claim 17.” Id. at 13. This is also unpersuasive
`because, as noted above, Petitioner contends that Schousek’s maximum
`weight threshold corresponds to the “lock threshold” recited in claim 17, not
`the “first threshold.” See Pet. 21–23.
`Patent Owner’s remaining contentions in response to Petitioner’s
`anticipation challenged based on Schousek focus on the “set[ting] a lock
`flag” and “clear[ing] the lock flag” limitation in claim 17. See Prelim. Resp.
`15–19. Patent Owner explains that in Schousek’s fault detection procedure,
`“irrespective of the value of the stored ‘previous decision,’ whenever the
`seat sensors of Schousek sense a weight such that five consecutive, common
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`IPR2016-00292
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`inhibit/no inhibit decisions are reached, that determination is forwarded to
`the air bag deployment module” and “[i]n some instances, this will be a
`decision to inhibit (not allow) air bag deployment.” Id. at 16. We note that
`in other instances, however, the “previous decision” will be to allow airbag
`deployment. Patent Owner fails to explain persuasively why this does not
`disclose “set[ting] a lock flag” as recited in claim 17.
`As for “clear[ing] the lock flag,” Patent Owner’s contentions are
`unclear. See Prelim. Resp. 18. Rather than clearly addressing why
`Schousek fails to disclose clearing a lock flag, Patent Owner explains that
`Schousek states that a decision to inhibit deployment is sent to
`the air bag deployment module, and also set as a “previous
`decision,” not when a relative weight parameter falls below an
`unlock threshold for a period of time, but rather when the
`decision to inhibit deployment of the airbag remains unchanged
`over five consecutive fault monitoring loops.
`Id. Patent Owner further explains that in Schousek
`a decision to inhibit deployment is made when the total weight
`of the seat occupant is determined to be between the minimum
`weight of an occupied infant seat and the maximum weight of
`an occupied infant seat, and the center of weight distribution is
`forward of a seat reference line.
`Id. Patent Owner fails to explain persuasively, however, why “clear[ing] the
`lock flag” is not disclosed by Schousek’s fault detection procedure when the
`“previous decision” is a decision to allow airbag deployment, and five
`consecutive subsequent decisions to inhibit deployment occur, resulting in
`the “previous decision” being set to inhibit airbag deployment (i.e., clearing
`the “previous decision” setting of allow airbag deployment). Ex. 1002,
`5:53–61.
`
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`
`Based on our review of the record before us, we are persuaded that
`Petitioner has established a reasonable likelihood of succeeding on its
`challenge to claims 17 and 21 based on anticipation by Schousek.
`C. Obviousness over Schousek and Fu
`Petitioner contends that, to the extent “Schousek does not expressly or
`inherently disclose the claimed ‘lock flag’ that is capable of being ‘clear[ed]
`. . . when the relative weight parameter is below the unlock threshold for a
`time,’” claims 17 and 21 would have been obvious over the combination of
`Schousek and Fu. Pet. 30 (citing IPR2015-01004, Paper 6 (Preliminary
`Response), 13–16). We have reviewed the arguments and evidence
`presented by both parties in this proceeding thus far, and are not persuaded
`that Petitioner has demonstrated a reasonable likelihood of prevailing at trial
`on its challenge to claims 17 and 21 as having been obvious over the
`combination of Schousek and Fu.
`In response to Petitioner’s contentions regarding Schousek, Patent
`Owner reiterates arguments set forth in response to Petitioner’s challenge
`based on anticipation by Schousek, which are unpersuasive for the reasons
`indicated above. Patent Owner, however, provides additional arguments
`against Petitioner’s proposed combination of Fu with Schousek.
`Fu is directed to “[a] vehicle seat assembly comprising occupant
`sensing systems for use in . . . air bag actuation systems.” Ex. 1003,
`Abstract. Fu discusses use of a “latch flag” to maintain an airbag in an
`enabled condition. Id. at 7:23–8:33. Fu explains that the airbag latch flag is
`set when its seat cushion transducers “are both experiencing pressure as
`tested at block 66” in Figure 7b. Ex. 1003, 8:29–32, Fig. 7b. Block 66 in
`Figure 7b evaluates whether the pressure sensed by the seat transducers is
`
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`IPR2016-00292
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`
`“H.” Fu describes only two pressure levels, “L” (no pressure) and “H”
`(some unspecified level of pressure presence). Ex. 1003, 7:36, 58–60.
`In its challenge, Petitioner cites Fu as teaching setting and clearing a
`lock flag and proposes modifying Schousek accordingly. Pet. 30–43.
`Petitioner contends that
`[o]ne of ordinary skill in the art . . . would have been motivated
`to utilize Fu’s “air bag latch flag” and flag clearing procedure
`with Schousek’s occupancy determination and airbag
`enablement system to arrive, with a reasonable expectation of
`success, at the subject matter of claims 17 and 21.
`
`Id. at 36. Petitioner further contends that “[o]ne of ordinary skill in the art
`would view Schousek’s and Fu’s methods for dealing with [similar]
`circumstances to be interchangeable, and would thus have every reason to
`believe that incorporation of Fu’s ‘flag’ into Schousek would succeed.” Id.
`at 37 (citing Ex. 1007 ¶ 70). Petitioner subsequently explains that
`“Schousek will transition to a rear-facing child seat/inhibit airbag state if less
`than 50 pounds of weight centered toward the front of the seat is detected by
`the sensors for 5 cycles” and reasons that “[i]t would be nothing more than
`an obvious design choice to modify Schousek’s system to eliminate the first
`transition such that the adult / enable decision is locked in place until an
`empty seat is detected for five seconds.” Id. at 37–38.
`Patent Owner contends that in Fu “the latch flag, F, is set irrespective
`of any value of weight sensed by either of sensors 42 and 44, but instead
`depending solely on whether either sensor senses any pressure at all.”
`Prelim. Resp. 23. Patent Owner concludes that
`[a]ccordingly, even if the lock flag of Fu were incorporated in
`the system described by Schousek . . . the lock flag would be set
`upon any indication of pressure on any seat cushion, and not only
`
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`IPR2016-00292
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`
`when the relative weight parameter is above the lock threshold,
`which itself must be above a first threshold, as required by claim
`17.
`Id. at 24. Patent Owner’s contentions highlight the problem with
`Petitioner’s challenge. Rather than clearly addressing the claim limitations
`requiring certain conditions before a lock flag is set, Petitioner discusses, in
`a general manner, “utilize[ing] Fu’s ‘air bag latch flag’ and flag clearing
`procedure” in Schousek. See, e.g., Pet. 36. Petitioner fails to explain clearly
`how or why the proposed combination would “set a lock flag when the
`relative weight parameter is above the lock threshold” with the “lock
`threshold above the first threshold” as required by claim 17. Fu does not
`appear to teach this feature on its own, as it provides a determination of
`either no pressure (“L”) or some unspecified pressure presence (“H”). See
`Ex. 1003, 7:36, 58–60. Petitioner also fails to indicate, in any specific
`manner, how Fu’s teachings regarding the latch flag procedure could be
`applied to Schousek’s fault protection procedure, such that the resulting
`combination would meet the conditions required by claim 17. We decline to
`speculate and fill gaps in Petitioner’s challenge. See 35 U.S.C. § 312(a)(3);
`37 C.F.R. § 42.104(b).
`
`For these reasons, Petitioner has failed to establish a reasonable
`likelihood of succeeding at trial on its challenge to claims 17 and 21 as
`having been obvious over the combination of Schousek and Fu.
`
`III. CONCLUSION
`For the foregoing reasons, we determine that the information
`presented in the Petition establishes a reasonable likelihood that Petitioner
`
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`IPR2016-00292
`Patent 6,012,007
`
`would prevail in establishing the unpatentability of claims 17 and 21 of the
`’007 patent.
`The Board has not made a final determination on the patentability of
`any challenged claims.
`
`IV. ORDER
`For the reasons given, it is
`ORDERED that an inter partes review is instituted as to claims 17
`and 21 based on anticipation by Schousek;
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(a), inter
`partes review of the ʼ007 patent is hereby instituted commencing on the
`entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
`§ 42.4, notice is hereby given of the institution of a trial; and
`FURTHER ORDERED that the trial is limited to the grounds
`identified above. No other grounds are authorized.
`
`
`
`
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`PETITIONER:
`
`John Flock
`George Badenoch
`Kenyon & Kenyon LLP
`jflock@kenyon.com
`gbadenoch@kenyon.com
`
`PATENT OWNER:
`
`Tarek N. Fahmi
`Holly J. Atkinson
`Jason A. LaBerteaux
`Ascenda Law Group, PC
`tarek.fahmi@ascendalaw.com
`holly.atkinson@ascendalaw.com
`jason.laberteaux@ascendalaw.com
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