`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`
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`——————
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`AISIN SEIKI CO., LTD.,
`Petitioner
`
`v.
`
`SIGNAL IP, INC.,
`Patent Owner
`
`——————
`
`Case IPR2016-00366
`Patent 6,012,007
`
`——————
`
`PETITIONER'S REPLY TO PATENT OWNER’S RESPONSE TO
`PETITION
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`US Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`Case IPR2016-00366 of
`U.S. Patent No. 6,012,077
`
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`CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ...................................................................................................1
`
`SCHOUSEK DISCLOSES THE RECITED FIRST THRESHOLD, LOCK
`THRESHOLD AND UNLOCK THRESHOLD OF THE RELATIVE WEIGHT
`PARAMETER .........................................................................................................2
`
`A.
`
`Schousek Discloses Three Different Thresholds of a Relative Weight Parameter
`and Setting and Clearing a Lock Flag ..........................................................2
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`The Board's Institution Decision Found Schousek's Thresholds Disclose
`the Recited Weight Thresholds ........................................................2
`
`Signal IP, Inc.'s Contention that Schousek's Minimum Weight of an Infant
`Seat Does Not Disclose the First Threshold is Unsupported ...........4
`
`Signal IP, Inc.'s Contention that Schousek's Maximum Weight of an
`Occupied Seat is not Equivalent to the recited First Threshold is Moot
`..........................................................................................................7
`
`Signal IP, Inc.'s Contention that Schousek Fails to Disclose Setting a Lock
`Flag is Unsupported .........................................................................7
`
`Signal IP, Inc.'s Contention that Schousek Fails to Disclose Clearing a
`Lock Flag is Unsupported ................................................................9
`
`Signal IP, Inc.'s Contention that Schousek Does Not Allow Deployment of
`an Airbag When the Relative Weight Parameter is Above the First
`Threshold is Incorrect ....................................................................12
`
`III.
`
`CONCLUSION ......................................................................................................12
`
`
`
`i
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`Case IPR2016-00366 of
`U.S. Patent No. 6,012,077
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`EXHIBIT LIST
`
`Exhibit Description
`1001
`U.S. Patent No. 6,012,007
`1002
`File History of U.S. Patent No. 6,012,007 ("'007 Patent")
`1003
`U.S. Patent 5,474,327 to Schousek ("Schousek")
`1010
`Expert Declaration of Dr. Stephen W. Rouhana
`
`ii
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`
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`
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`I.
`
`INTRODUCTION
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`Case IPR2016-00366 of
`U.S. Patent No. 6,012,077
`
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`On June 13, 2016, the Board instituted trial on claims 17 and 21 of U.S.
`
`Patent 6,012,007 (“’007 Patent” or “Patent”), finding a “reasonable likelihood” that
`
`Petitioner ("Aisin Seiki" or "Petitioner" will prevail in challenging each of these
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`claims as anticipated under 35 U.S.C. § 102(b) in view of U.S. Patent No.
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`5,474,327 (“Schousek”) Ex. 1003. None of Patent Owner's ("Signal IP" or "Patent
`
`Owner") arguments to the contrary has merit for the reasons explained in the
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`Petition and herein.
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`As an initial matter, with the exception of a brief argument on claim
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`construction regarding the lock flag (Section 3. A.) and a further discussion of the
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`first threshold (Section 3. B. vi.), the Patent Owner's Response is a nearly verbatim
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`copy of the Patent Owner's Preliminary Response. As set forth below, Petitioner
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`finds no new issues based on the new claim construction issue presented by the
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`Patent Owner and relies on Schousek in the same manner as set forth in the
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`Petition to rebut these newly raised issues. Therefore, Petitioner request that the
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`Board maintain their prior position that claims 17 and 21 are anticipated by
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`Schousek.
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`1
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`
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`Case IPR2016-00366 of
`U.S. Patent No. 6,012,077
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`II.
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`SCHOUSEK DISCLOSES THE RECITED FIRST THRESHOLD,
`LOCK THRESHOLD AND UNLOCK THRESHOLD OF THE
`RELATIVE WEIGHT PARAMETER
`
`As the Board found in its Institution Decision (Paper 7), Schousek discloses
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`a first threshold, a lock threshold and unlock threshold corresponding to the
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`features recited in claim 17. Additionally, the Board also instituted on the basis
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`that Schousek discloses setting a lock flag and clearing a lock flag as recited in
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`claim 17 of the '007 Patent. The Board’s preliminary finding that claims 17 and 21
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`are anticipated by Schousek should be maintained. It is noted that the Patent
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`Owner has provided no independent arguments related to the features recited in
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`claim 21 so this claim stands or falls with the patentability of claim 17.
`
`A.
`
`Schousek Discloses Three Different Thresholds of a Relative
`Weight Parameter and Setting and Clearing a Lock Flag
`
`1.
`
`The Board's Institution Decision Found Schousek's
`Thresholds Disclose the Recited Weight Thresholds
`
`The Board noted that Schousek explains “[i]f the total weight parameter is
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`greater than the maximum infant seat weight . . . a decision is made to allow
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`deployment,” and “if the total weight parameter is less than the minimum weight
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`threshold for an occupied infant seat . . . a decision is made to inhibit
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`deployment.” Paper 7, p. 8, citing Ex. 1003 at 5:32–39 (emphasis added). The
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`Board also relied on Schousek to explain "that if the total weight parameter is
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`
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`2
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`
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`Case IPR2016-00366 of
`U.S. Patent No. 6,012,077
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`between the minimum and maximum weight thresholds, airbag deployment is
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`still allowed if the center of weight distribution is not forward of a reference line."
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`Id. at p. 8, citing Ex. 1003 at 5:42–50 (emphasis added).
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`Claim 17 requires that three weight thresholds be established:
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`(1) establish a first threshold of the relative weight parameter,
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`(2) establish a lock threshold above the first threshold, and
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`(3) establish an unlock threshold at a level indicative of an empty seat,
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`These three different thresholds are shown in the annotated figure of FIG.
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`5A of Schousek, below. As set forth in the figure, the relative weight parameter is
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`compared to: (1) a maximum weight of an infant seat; and (2) the minimum weight
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`of an infant seat. As the Board held in the Decision Instituting Inter Partes
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`Review, the level below the minimum weight of an infant seat corresponds to the
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`unlock threshold, the level between the minimum weight of an infant seat and the
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`maximum weight of an infant seat corresponds to the first threshold, and the level
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`above the maximum weight of an infant seat corresponds to the lock threshold
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`above the first threshold.
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`
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`3
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`
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`Case IPR2016-00366 of
`U.S. Patent No. 6,012,077
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`Lock Threshold - Deployment
`Allowed if Above 50 lbs.
`
`Unlock Threshold -
`Deployment Inhibited
`if below 10 lbs.
`
`1st Threshold -
`Deployment
`Allowed if Above 10
`lbs. and below 50
`lbs.
`
`
`
`
`
`2.
`
`Signal IP, Inc.'s Contention that Schousek's Minimum
`Weight of an Infant Seat Does Not Disclose the First
`Threshold is Unsupported
`
`Patent Owner in its Response contends that because Schousek discloses one
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`
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`4
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`Case IPR2016-00366 of
`U.S. Patent No. 6,012,077
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`condition in which the deployment is inhibited when the total weight of the seat
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`occupant is greater than the minimum weight of an infant seat, this necessarily
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`means Schousek fails to disclose the recited "first threshold of the relative weight
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`parameter." Paper 12, p. 14. This one condition in which deployment is inhibited
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`occurs when the center of the calculated weight is forward of a calibrated reference
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`line (rearward facing infant seat detected). Ex. 1003 at 5:44-46. Patent Owner
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`fails to note, however, that when the seat in Schousek is not determined to be
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`rearward facing (i.e., detected to be forward facing) - deployment is allowed when
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`the seat occupant's weight is greater than the minimum weight of an infant seat.
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`Thus, as described in the Petition and as found by the Board in the Institution
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`Decision, Schousek discloses the feature "allow deployment when the relative
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`weight parameter is above the first threshold." Specifically, this condition exists
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`when the center of the calculated weight is at or behind the calibrated reference
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`line, and the occupant's weight is greater than the minimum weight of an infant
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`seat. Ex. 1003 at 5:47-50. Additionally, when the center of weight is detected to
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`be behind the calibrated reference line (forward facing seat), deployment is
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`inhibited if the total occupant weight is less than the minimum infant seat
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`threshold. Ex. 1003 at 5:36-39. Consequently, Schousek teaches that unless the
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`weight of the occupant is above the minimum infant seat threshold deployment is
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`inhibited.
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`
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`5
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`Case IPR2016-00366 of
`U.S. Patent No. 6,012,077
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`The fact that Schousek teaches another condition when a rearward facing
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`seat is detected, as noted by the Patent Owner, is irrelevant to the anticipation
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`analysis. This is because anticipation exists so long as one condition described in
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`the prior art satisfies the claim. The fact that the prior art might disclose additional
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`conditions does not defeat its use as anticipatory prior art. "A prior art product that
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`sometimes, but not always, embodies a claimed method nonetheless teaches that
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`aspect of the invention." Hewlett-Packard Co. v. Mustek Systems Inc., 67
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`USPQ2d 1825, 1833 (Fed. Cir. 2003).
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`It is perhaps worthwhile to note that Signal IP, Inc. made these same
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`arguments in the Preliminary Patent Owner Response. Paper 6, pp. 12-13.
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`Because air bag deployment is not allowed if it is determined that the occupant
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`weight exceeds the minimum infant seat threshold, but that the center of weight is
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`forward of a calibrated reference line, Patent Owner alleged that Schousek failed to
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`disclose the recited "first threshold." Patent Owner noted that because claim 17
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`does not require an evaluation of whether an infant seat is forward or rearward
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`facing, Schousek somehow fails to disclose these features.
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`In the Decision Instituting Inter Partes review, the Board addressed this
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`argument and opined that "Patent Owner's argument is unpersuasive because, as
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`Patent Owner appears to acknowledge . . . Schousek discloses instances where
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`airbag deployment is permitted when the total weight parameter is above the
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`
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`6
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`Case IPR2016-00366 of
`U.S. Patent No. 6,012,077
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`minimum weight threshold." Paper 7, p. 9. The Board's decision was clear, the
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`argument that claim 17 somehow prohibits further restrictions on airbag
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`deployment is not supported by the claim language and the Patent Owner failed to
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`identify anything in the record that imposes such a restriction. Lastly, the recent
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`Patent Owner Response also fails to identify anything in the record that would
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`supports limiting claim 17 in this manner.
`
`3.
`
`Signal IP, Inc.'s Contention that Schousek's Maximum
`Weight of an Occupied Seat is not Equivalent to the recited
`First Threshold is Moot
`
`Neither the Petition nor the Institution Decision relied on the maximum
`
`weight of an occupied seat as corresponding to the recited first threshold as recited
`
`in claim 17. Rather, the Petition and the Institution Decision relied on occupant
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`weight exceeding the minimum infant seat threshold as corresponding to the
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`recited first threshold. Paper 7, p. 9 and Paper 1, p. 25-26.
`
`4.
`
`Signal IP, Inc.'s Contention that Schousek Fails to Disclose
`Setting a Lock Flag is Unsupported
`
`As an initial matter, Petitioner relies on the fault detection algorithm of FIG.
`
`5B as disclosing the feature "set a lock flag when the relative weight parameter is
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`above the lock threshold and deployment has been allowed for a given time," as
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`recited in claim 17. This algorithm seeks to avoid a spurious decision due to
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`occupant movement and also seeks to provide a fault signal when encountering
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`
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`7
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`Case IPR2016-00366 of
`U.S. Patent No. 6,012,077
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`extended instability. Ex. 1003 at 5:2-6.
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`In operation, the loop including the flowcharts of both FIGS. 5A and 5B is
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`executed. The flow chart of FIG. 5A provides either a "deploy" or "not deploy"
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`decision on each iteration based on the occupant weight determinations and
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`comparisons to certain thresholds. This decision is forwarded to the loop of FIG.
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`5B and then the process of FIGS. 5A and 5B is repeated. If the decision ("deploy"
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`or "not deployment") is the same for five consecutive iterations (5 seconds), that
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`decision is used to determine airbag deployment status and is labelled the
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`“previous decision.” Id. at 5:58–61, FIG. 5B. The result is that the deployment
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`status is either set as either "deploy" or "not deploy." This value is sent to the SIR
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`module 10 to control the airbag deployment.
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`This value when set as "deploy" is the same as the recited "lock flag"
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`("deploy" = "set a lock flag"). That is, deployment is allowed when this value is
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`set as "deploy".
`
`In the Patent Owner's Response, Signal IP, Inc. argues:
`
`Furthermore, in circumstances where the “previous
`decision” of Schousek has been to inhibit air bag
`deployment, when the next five determinations of the
`total weight are such as to permit air bag deployment,
`that decision is forwarded to the air bag deployment
`module without ever consulting the “previous decision.”
`Indeed, according to Schousek, the value of the previous
`deployment is irrelevant and is not consulted when a
`current decision to inhibit or not inhibit air bag
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`
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`8
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`Case IPR2016-00366 of
`U.S. Patent No. 6,012,077
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`deployment is sent to the air bag deployment module. Id.
`at Fig. 5B (showing els. 98 and 100 without consulting a
`“previous decision”); Ex. 2001 at 35:21 – 36: 4.
`
`Paper 12, p. 19.
`
`In response, Petitioner notes that claim 17 does not require that a "previous
`
`decision" be consulted before being replaced with a new value (i.e., "deploy" or
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`"not deploy"). Despite Signal IP, Inc.'s contention here, there is no requirement in
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`the claim that the previous decision be consulted before sending the value to the
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`SIR module. In Schousek, whether the previous decision is consulted or not, the
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`value is set as "deploy" when the occupant weight exceeds the maximum value of
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`an infant seat for five consecutive decisions (5 seconds), thereby setting a lock flag
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`as recited in claim 17. Accordingly, Schousek teaches setting a lock flag, as
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`defined in claim 17.
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`5.
`
`Signal IP, Inc.'s Contention that Schousek Fails to Disclose
`Clearing a Lock Flag is Unsupported
`
`a.
`
`Petitioner Interprets the Term "the flag" as the Same as
`the "lock flag" of Claim 17
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`Patent Owner's new claim construction argument for the terms "a lock flag"
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`and "the flag" are set forth in Section 3. A. of the Patent Owner Response. Paper
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`12, p. 10. Here, the Patent Owner proffers that one of skill in the art would
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`understand that the term "the flag" recited in claim 17 is the same "unlock flag"
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`recited in the step "set a lock flag . . .". Id. at p. 10.
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`
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`9
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`Case IPR2016-00366 of
`U.S. Patent No. 6,012,077
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`But the term "unlock flag" is not recited in claim 17 or used anywhere in the
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`specification. Thus, the Patent Owner's reference to the term "unlock flag" appears
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`to be in error. Petitioner, on the other hand, applies Schousek on the basis that the
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`term "the flag" refers back to the "lock flag" of claim 17.
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`b.
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`Schousek Discloses Clearing a Lock Flag
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`Further to Petitioner's reliance on FIGS. 5A and 5B above, after receiving
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`five consistent decisions, either a "deploy" or "not deploy" decision, is sent to the
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`SIR module. Ex. 1003 at 5:55-59. For example, when the seat is determined to be
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`forward facing, the decision value sent to the SIR module from FIG. 5B steps <98>
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`and <100> is "deploy" when the occupant weight exceeds the minimum infant seat
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`threshold for five iterations. This is the same setting a lock flag as defined in claim
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`17.
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`If the total occupant weight drops below the minimum infant seat threshold
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`for five iterations (5 seconds), the decision value is set as "not deploy", thus
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`clearing the previously saved "deploy" decision as this value is sent to the SIR
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`module 10 to control the airbag deployment.
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`In this scenario, the recited features "clear the flag when the relative weight
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`parameter is below the unlock threshold for a time," are met as the "deploy" value
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`is cleared, because the occupant weight is below the minimum infant seat threshold
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`for 5 iterations (5 seconds).
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`
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`10
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`Case IPR2016-00366 of
`U.S. Patent No. 6,012,077
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`In the Patent Owner Response, Signal IP, Inc. responds:
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`Instead, 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. Ex. 1003 at 5:58-61;
`Ex. 2001 at 35:16-20.
`
`Paper 12, p. 19-20.
`
`But Schousek's teaching on this point is clear, when the occupant weight is
`
`below the minimum infant seat threshold for a period of five iterations of the loop
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`described in FIGS. 5A and 5B, the resultant decision of "not deploy" will replace a
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`previous decision of "deploy". Thus, when an occupant weight has previously
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`exceeded the maximum infant seat threshold such that a deploy decision was
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`previously sent to the SIR module, the new "not deploy" decision is sent due to the
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`occupant weight being below the minimum infant seat threshold for a period of
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`five iterations is effectively clearing the "deploy" decision or lock flag.
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`In conclusion, Petitioner relies on the iterative loop and 5 similar decisions
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`of FIG. 5B as providing the result ("deploy" or "not deploy") after a given time (5
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`seconds) as disclosing the setting of a lock flag when the relative weight parameter
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`is above the lock threshold and deployment has been allowed for a given time.
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`
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`11
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`6.
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`Case IPR2016-00366 of
`U.S. Patent No. 6,012,077
`
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`Signal IP, Inc.'s Contention that Schousek Does Not Allow
`Deployment of an Airbag When the Relative Weight
`Parameter is Above the First Threshold is Incorrect
`
`Patent Owner newly argues that Schousek fails to disclose “allow[ing]
`
`deployment [of the air bag] when the relative weight parameter is above the first
`
`threshold.” Paper 12, p. 22. Petitioner disagrees for the following reasons.
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`As noted above and repeated here, FIG. 5A of Schousek allows deployment
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`when an infant seat or a small child is detected based on two requirements. The
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`first and primary requirement is that the occupant weight exceed the minimum
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`infant seat threshold. Ex. 1003 at 5:42-50. If the occupant weight exceeds the
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`minimum infant seat threshold and a rearward facing infant seat is not detected,
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`then deployment is allowed. Ex. 1003 at 5: 47-50. Thus, Schousek does disclose
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`allowing deployment when the occupant weight exceeds that first threshold. In
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`fact, Schousek only allows deployment when the occupant weight exceeds the
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`minimum infant seat threshold because the other deploy condition is based on
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`exceeding the maximum infant seat threshold, which is greater than the minimum
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`infant seat threshold. Thus, this feature of claim 17 is disclosed by Schousek.
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`III. CONCLUSION
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`For these reasons, Petitioner Aisin Seiki requests that the Board issue a final
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`written decision confirming the unpatentability of claims 17 and 21 of the ’007
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`Patent.
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`12
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`Case IPR2016-00366 of
`U.S. Patent No. 6,012,077
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`Respectfully submitted,
`
`/William H. Mandir/
`________________
`William H. Mandir
`Registration No. 32,156
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`Dated: December 9, 2016
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`LEAD COUNSEL
`
`BACK-UP COUNSEL
`
`
`David P. Emery (Reg. No. 55,154)
`John M. Bird (Reg. No. 46,027)
`(demery@sughrue.com)
`(jbird@sughrue.com)
`
`
`
`
`William H. Mandir (Reg. No. 32,156)
`(wmandir@sughrue.com)
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`
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`Sughrue Mion PLLC
`2100 Pennsylvania Ave, NW
`Washington, D.C. 20037
`T: 202-293-7060; F: 202-293-7068
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`13
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`Case IPR2016-00366 of
`U.S. Patent No. 6,012,077
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`CERTIFICATION UNDER 37 CFR § 42.24(d)
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`Under the provisions of 37 CFR §42.24(d), the undersigned hereby certifies
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`that the word count for the foregoing Petitioner Reply to Patent Owner Response
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`totals 2,597 which is less than the 5,600 allowed under 37 CFR §42.24(c)(2). The
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`word count was prepared using Microsoft Word 2010.
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`Dated: December 9, 2016
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`Respectfully submitted,
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`/David P. Emery/
`
`David P. Emery
`Registration No. 55,154
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`Case IPR2016-00366 of
`U.S. Patent No. 6,012,077
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`CERTIFICATE OF SERVICE
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`The undersigned certified that a copy of the attached PETITIONER’S
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`REPLY TO PATENT OWNER’S RESPONSE TO PETITION was sent via
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`electronic mail on December 9, 2016 to the following:
`
`Tarek N. Fahmi
`Holly J. Atkinson
`Jason A. LaBerteaux
`ASCENDA LAW GROUP, PC
`333 W San Carlos St.
`Suite 200
`San Jose, CA 95110
`tarek.fahmi@ascendalaw.com
`holly.atkinson@ascendalaw.com
`jason.laberteaux@ascendalaw.com
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`Counsel of Record for the Patent Owner in this proceeding
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`Respectfully submitted,
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`By: /David P. Emery/
`David P. Emery
`Registration No. 55,154
`Backup Counsel for Petitioner
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`Dated: December 9, 2016
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