REQUEST FOR INTER PARTES REVIEW
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` IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`In re application of
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`Docket No:
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`Duane Donald Fortune et al.
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`Issued: January 4, 2000
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`U.S. Patent No. 6,012,007
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`Application No. 08/8687,338
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`Filing Date: June 3, 1997
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`
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`For: OCCUPANT DETECTION METHOD AND APPARATUS FOR AIR BAG
`SYSTEM
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`REQUEST FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,012,007 UNDER 35 U.S.C. §§311-319, 37 C.F.R. § 42
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`Mail Patent Board
`US Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Pursuant to 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42, Petitioner Aisin Seiki
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`Co., Ltd. (“Aisin Seiki” or “Petitioner”) respectfully request Inter Partes Review
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`of claims 17, 21 and 22 of U.S. Patent No. 6,012,007 (Ex. 1001, “the ‘007 patent”),
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`which was filed on June 3, 1997 and issued on January 4, 2000 to Duane Donald
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`Fortune and is currently assigned to Signal IP, Inc. (“Patent Owner”) according to
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`the US Patent and Trademark Office assignment records. There is a reasonable
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`likelihood that Petitioner will prevail with respect to at least one of the claims
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`challenged in this Petition.
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`Request for Inter Partes Review
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`U.S. Patent No. 6,012,007
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`TABLE OF CONTENTS
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`I.
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`MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) ................................................ 1
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`A.
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`B.
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`C.
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`D.
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`REAL PARTY-IN-INTEREST UNDER 37 C.F.R. § 42.8(b)(1)............................1
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`RELATED MATTERS UNDER 37 C.F.R. § 42.8(b)(2) ........................................1
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`LEAD AND BACK-UP COUNSEL .......................................................................3
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`SERVICE INFORMATION ....................................................................................3
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`II.
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`III.
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`PAYMENT OF FEES — 37 C.F.R. § 42.103 ......................................................................... 3
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`REQUIREMENTS FOR IPR UNDER 37 C.F.R. §§ 42.104 ................................................. 4
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`A.
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`B.
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`C.
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`Grounds for Standing Under 37 C.F.R. § 42.104(a) ................................................4
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`Prior Art Patents and Printed Publications...............................................................4
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`Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested .................................................................................................................6
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`IV.
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`SUMMARY OF THE '007 PATENT ...................................................................................... 7
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`A.
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`B.
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`Brief Description ......................................................................................................7
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`Summary of the Prosecution History of the '007 Patent ..........................................9
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`V.
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`CLAIM CONSTRUCTION ................................................................................................... 12
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`A.
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`B.
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`Terms Not Requiring the District Court's Construction ........................................13
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`Terms Construed By the District Court .................................................................13
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`1.
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`2.
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`3.
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`Means for Inhibiting and Allowing Deployment .......................................13
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`A Level Indicative of an Empty Seat .........................................................13
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`Relative Weight Parameter .........................................................................14
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`VI.
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`THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE '007 PATENT IS UNPATENTABLE ...................................................... 16
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`A.
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`Grounds 1-3 in view of Schousek ..........................................................................16
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`1.
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`2.
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`3.
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`Ground 1: Claims 17 and 21 are anticipated by Schousek. .......................16
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`Ground 2: Claims 17 and 21 are obvious over Schousek in
`view of Fu ..................................................................................................29
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`Ground 3: Claim 22 is obvious over Schousek in view of
`Fu and Cashler. ..........................................................................................35
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`B.
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`Grounds 4-5 based on Blackburn ...........................................................................41
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`ii
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`Request for Inter Partes Review
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`U.S. Patent No. 6,012,007
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`1.
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`2.
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`Ground 4: Claims 17 and 21 are obvious from Blackburn in
`view of JP 258 and Schousek.....................................................................41
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`Ground 5: Claim 22 of the ‘007 patent is obvious under 35
`U.S.C. §103(a) by Blackburn in view of Schousek, JP 258
`and Cashler.................................................................................................57
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`VII. CONCLUSION....................................................................................................................... 60
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`iii
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`Request for Inter Partes Review
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`U.S. Patent No. 6,012,007
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`EXHIBITS
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`Descri u tion
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`U.S. Patent No. 6,012,007
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`File Histo
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`of U.S. Patent No. 6,012,007 ("'007 Patent")
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`US; Patent 5,474,327 to Schousek ("Schousek"
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`U.S. Patent 5,848,661 to Fu ("Fu")
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`U.S. Patent 5,232,243 to Blackburn ("Blackbum")
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`Jaanese Patent A o lication 09- 127258 (“JP 258”)
`Certified Translation of J aanese Patent A o lication 09-127258
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`
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`U.S. Patent 5,732,375 to Cashler (“Cashler”)
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`Order RE Claim Construction, Signal [P v. American Honda Motor
`Co., Inc., No. 2:l4—cv—02454
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`Expert Declaration of Dr. Stephen W. Rouhana
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`iv
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`I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1)
`A. REAL PARTY-IN-INTEREST UNDER 37 C.F.R. § 42.8(b)(1)
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`The Petitioner and real party-in-interest is Aisin Seiki Co., Ltd..
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`B. RELATED MATTERS UNDER 37 C.F.R. § 42.8(b)(2)
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`Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioners state that the ’007 patent is
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`the subject of a series of patent infringement lawsuits brought by the assignee,
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`Signal IP, Inc. (“Signal IP”), each of which may affect, or be affected by, a
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`decision in this proceeding: Signal IP, Inc. v. Toyota Motor North America, Inc. et
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`al., No. 2:15-cv-05162 (C.D. Cal.) (“C.D. Cal. Signal IP v. Toyota litigation”);
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`Signal IP, Inc. v. Hyundai Motor America, Case No. 8:15-cv-01085 (C.D. Cal.);
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`Signal IP, Inc. v. Fiat U.S.A., Inc. et al., Case No. 2: 14-cv-13864 (E.D. Mich.,
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`formerly C.D. Cal. Case No. 2:14-cv-03105); Signal IP, Inc. v. Ford Motor
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`Company, Case No. 2:14- cv-13729 (E.D. Mich., formerly C.D. Cal. Case No.
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`2:14-cv-03106); Signal IP, Inc. v. Porsche Cars North America, Inc., Case No.
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`2:14-cv-03114 (C.D. Cal.); Signal IP, Inc. v. Volkswagen Group of America, Inc.
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`d/b/a Audi of America, Inc. et al., Case No. 2:14-cv-03113 (C.D. Cal.); Signal IP,
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`Inc. v. Jaguar Land Rover North America, LLC, Case No. 2:14-cv-03108 (C.D.
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`Cal.); Signal IP, Inc. v. Volvo Cars of North America, LLC, Case No. 2:14-cv-
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`03107 (C.D. Cal.); Signal IP, Inc. v. BMW of North America, LLC et al., Case No.
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`Request for Inter Partes Review
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`U.S. Patent No. 6,012,007
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`2:14-cv-03111 (C.D. Cal.); Signal IP, Inc. v. Mercedes-Benz USA, LLC et al., Case
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`No. 2-14-cv- 03109 (C.D. Cal.); Signal IP, Inc. v. Nissan North America, Inc., Case
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`No. 2:14-cv-02962 (C.D. Cal.); Signal IP, Inc. v. Subaru of America, Inc., Case No.
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`2:14-cv-02963 (C.D. Cal.); Signal IP, Inc. v. Suzuki Motor of America, Inc., Case
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`No. 8:14-cv-00607 (C.D. Cal.); Signal IP, Inc. v. Kia Motors America, Inc., Case
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`No. 2:14-cv-02457 (C.D. Cal.); Signal IP, Inc. v. American Honda Motor Co., Inc.
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`et al., Case No. 2:14-cv-02454 (C.D. Cal.); Signal IP, Inc. v. Mazda Motor of
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`America, Inc., Case No. 8:14- cv-00491 (C.D. Cal.); Signal IP, Inc. v. Mazda Motor
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`of America, Inc., Case No. 2:14-cv-02459 (C.D. Cal.); Signal IP, Inc. v. Mitsubishi
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`Motors North America, Inc., Case No. 8:14-cv-00497 (C.D. Cal.); Signal IP, Inc. v.
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`Mitsubishi Motors North America, Inc., Case No. 2:14-cv-02462 (C.D. Cal.).
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`The ’007 was previously asserted in Takata Seat Belts In v. Delphi
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`Automotive Sys, et al., Case No. 5-04-cv-00464 (W.D. Tex.), which is no longer
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`pending.
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`The '007 patent is subject to at least the following IPR proceedings:
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`IPR2015-01004 (instituted), IPR2015-01116 (not instituted), IPR2016-00113
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`(awaiting institution decision), IPR2016-00115 (awaiting institution decision) and
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`IPR2016-00292 (awaiting institution decision).
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`2
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`Request for Inter Partes Review
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`U.S. Patent No. 6,012,007
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`C. LEAD AND BACK-UP COUNSEL
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`Petitioners provide the following designation of counsel.
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`LEAD COUNSEL
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`BACK-UP COUNSEL
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`William H. Mandir (Reg No 32,156) David P. Emery (Reg No 55,154)
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`(demery @ sughrue.com)
`(wmandir@ su ghrue.com)
`Sughrue Mion PLLC
`Sughrue Mion PLLC
`2100 Pennsylvania Ave, NW
`2100 Pennsylvania Ave, NW
`Washington, DC 20037
`Washington, DC 20037
`T: 202-293-7060, F: 202-775-7584
`T: 202-293-7060, F: 202-293-7068
`— BACK-UP COUNSEL
`John M. Bird (Reg No 46,027)
`(jbird@sughrue.com)
`Sughrue Mion PLLC
`2100 Pennsylvania Ave, NW
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`
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`Washington, DC 20037
`T: 202-293-7060, F: 202-775-7584
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`Pursuant to 37 C.F.R. § 42.10(b), Powers of Attorney accompany this
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`Petition.
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`D. SERVICE INFORMATION
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`Service information for lead and back—up counsel is provided in the
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`designation of lead and back-up counsel, above. Service of any documents via
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`hand—delivery may be made at the postal mailing addresses listed above.
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`Petitioners also consent to electronic service by email at AisinIPR@sughrue.com.
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`II.
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`PAYMENT OF FEES — 37 C.F.R. § 42.103
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`Petitioners authorize the Patent and Trademark Office to charge Deposit
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`Account No. 19-4880 for the fees set in 37 C.F.R. § 42. l5(a) for this Petition for
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`3
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`Request for Inter Partes Review
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`U.S. Patent No. 6,012,007
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`Inter Partes Review, and further authorize payment for any additional fees to be
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`charged to this Deposit Account.
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`III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. §§ 42.104
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
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`
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`Petitioners certify that U.S. Patent 6,012,007 ("'007 Patent") (Ex. 1001) is
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`available for Inter Partes Review and that Petitioners are not barred or estopped
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`from requesting an Inter Partes Review challenging the patent claims on the
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`grounds identified in this Petition.
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`B. Prior Art Patents and Printed Publications
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`Claims 17, 21 and 22 of the '007 Patent (Ex. 1001) have an effective filing
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`date no earlier than June 3, 1997. The '007 patent is a continuation-in-part of
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`parent U.S. Application No. 08/566,029, now issued as U.S. Patent 5,732,375 to
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`Cashler et al. ("Cashler"). The continuation-in-part application was filed on June
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`3, 1997, and the new matter added to the '007 patent, e.g., "lock flag", is present in
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`each of the independent claims, , and not described in Cashler. Therefore, the
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`earliest possible priority date of the ’007 Patent is June 3, 1997.
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`Petitioners rely upon the following patents and printed publications of
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`which, only Cashler was applied during the prosecution of the '007 Patent, and
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`Request for Inter Partes Review
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`U.S. Patent No. 6,012,007
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`each of which is prior art to the '007 Patent under 35 U.S.C. § 102(a) and/or (b)
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`and/or (e):
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`Ex. 1003 - U.S. Patent 5,474,327 to Schousek qualifies as prior art at least
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`under 35 U.S.C. § 102(b). Schousek issued on December 12, 1995, more than one
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`year before the June 3, 1997 filing date of the '007 Patent, and thus is prior art at
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`least under 35 U.S.C. § 102(b).
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`Ex. 1004 - US. Patent 5,848,661 to Fu ("Fu") qualifies as prior art at least
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`under 35 U.S.C. § 102(e). Fu issued from a U.S. application filed on October 22,
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`1996, prior to the June 3, 1997 filing date of the '007 Patent, and thus qualifies as
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`prior art under 35 U.S.C. §102(e).
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`Ex. 1005 - U.S. Patent 5,232,243 to Blackburn ("Blackburn") qualifies as
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`prior art at least under 35 U.S.C. §§ 102(a) and (b). Blackburn issued on August 3,
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`1993, more than one year before the June 3, 1997 filing date of the '007 Patent, and
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`thus is prior art at least under 35 U.S.C. § 102(b).
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`Ex. 1006 - Japanese Patent application 09-127258 (hereinafter “JP 258”)
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`titled "Seat Detecting Apparatus" was published on May 16, 1997 and is therefore
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`prior art under 35 U.S.C. §102(a) (Ex. 1007 - certified translation of JP 258).
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`5
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`Request for Inter Partes Review
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`U.S. Patent No. 6,012,007
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`Ex. 1008 - U.S. Patent 5,732,375 to Cashler (“Cashler”) issued from an
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`application filed on December 1, 1995, was published on July 30, 1996 and
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`therefore available as prior art under 35 U.S.C. § 102 (a) and (e).
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`C. Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested
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`Petitioners request Inter Partes Review of claims 17, 21 and 22 of the '007
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`Patent (Ex. 1001) on the grounds set forth in the tables below and request that each
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`of the claims be found unpatentable. An explanation of how claims 17, 21 and 22
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`are unpatentable under the statutory grounds is identified below. This explanation
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`includes detailed claim charts setting forth the identification of where each
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`element is found in the prior art references and the relevance of each of the prior
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`art references. Additional explanation and support for each ground of rejection is
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`set forth in the Declaration of Dr. Rouhana (Ex. 1010). A verification of
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`translation is also provided for the foreign language document (Ex. 1005).
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`Ground
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`'007 Patent Claims Basis for Rejection
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`Ground 1
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`17 and 21
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`Anticipated under 35 U.S.C. §102 by Schousek
`(Ex. 1003)
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`Ground 2
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`17 and 21
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`Obvious under 35 U.S.C. §103(a) over
`Schousek (Ex. 1003) in view of Fu (Ex. 1004).
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`Ground 3 Claim 22
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`Obvious under 35 U.S.C. §103(a) over
`Schousek (Ex. 1003) in view of Fu (Ex. 1004)
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`6
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`Request for Inter Partes Review
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`U.S. Patent No. 6,012,007
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`Ground 4 Claims 17 and 21
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`Ground 5 Claim 22
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`and Cashler (Ex. 1008).
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`Obvious under 35 U.S.C. §103(a) over
`Blackburn (Ex. 1005) in view of JP 258 (Ex.
`1006) and Schousek (Ex. 1003).
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`Obvious under 35 U.S.C. §103(a) over
`Blackburn (Ex. 1005) in view of JP 258 (Ex.
`1006), Schousek (Ex. 1003) and Cashler (Ex.
`1008).
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`
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`IV. SUMMARY OF THE '007 PATENT
`A. Brief Description
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`The ‘007 Patent relates to an occupant detection system for determining
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`whether to inhibit or allow the deployment of a supplemental inflatable restraint
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`(SIRs) or air bag in an automobile. It is an object of the '007 Patent to discriminate
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`between large and small occupants and to maintain reliable operation of the air bag
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`system.
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`The algorithm for processing the claimed lock flag is shown in FIG. 8
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`reproduced below.
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`7
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`Request for Inter Partes Review
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`U.S. Patent No. 6,012,007
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`The '007 Patent describes that the term "Adult" refers not to the age or
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`maturity of an occupant, but rather to a weight which is chosen to distinguish from
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`a small child. When the Adult Lock Flag is set <94>, the output decision will
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`always allow deployment. To make the determination whether to set the lock flag,
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`the algorithm uses a lock threshold which is above the total force threshold range,
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`and an unlock threshold which represents an empty seat. See col. 4, ll. 36-44. The
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`algorithm also uses a lock delay on the order of one to five minutes, and a lock
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`timer which measures the time since vehicle ignition is turned on. If the total force
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`is greater than the lock threshold, and the lock timer is larger than the lock delay
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`8
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`Request for Inter Partes Review
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`U.S. Patent No. 6,012,007
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`<76>, a flag value is increased toward a maximum value <78> and the Adult Lock
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`Flag is set <80>. Id. at col. 4, ll. 46-50. If the decision at block <76> is No, then it
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`is determined whether the total force is above the unlock threshold <82> and if not,
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`whether the total force is below the unlock threshold and the flag value is greater
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`than zero <84>. Id. at col. 4, ll. 50-54. If so, the flag value is decreased <86>, and
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`in either case the flag value is tested <88>; if the value is above zero the Flag is set
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`<80> and if the value is zero the Flag is cleared <90>. See col. 4, ll. 44-57.
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`B. Summary of the Prosecution History of the '007 Patent
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`The '007 patent was filed on June 3, 1997 and issued on Jan. 4, 2000. The
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`'007 patent identifies itself as a continuation-in-part of U.S. Patent No. 5,732,375
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`to Cashler (Ex. 1008), which was filed on Dec. 1, 1995. As explained in below,
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`however, the claims of the ’007 patent are not supported by the '375 Patent. Thus,
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`the ’007 patent is entitled only to its own June 3, 1997 filing date.
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`On April 9, 1999, the USPTO mailed a Non-Final Office Action in which
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`multiple objections and rejections were raised by the Examiner. Ex. 1002, See
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`April 9, 1999 Non-Final Office Action. The specification, drawing and claim
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`objections related to minor informalities that were corrected in the July 6, 1999
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`Amendment.
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`9
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`Request for Inter Partes Review
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`U.S. Patent No. 6,012,007
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`The claim rejections were based on the published U.S. Patent 5,732,375 to
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`Cashler (prior art under 35 U.S.C. §102(e)). Specifically, all of the claims 1-27
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`were rejected under 35 U.S.C. §103(a) as being obvious over Cashler as follows:
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`(1) Claims 1-5, 9-12 and 16-27 were rejected on the basis that Cashler
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`disclosed all of the features recited in these claims, with the exception of the
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`feature "clearing the flag when the relative weight parameter is below the unlock
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`threshold for a time (claims 1, 16 and 17). However, the Examiner deemed the
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`claims obvious because one of skill in the art would have readily understood
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`Cashler's system/method to be at least a fully functional equivalent to the claimed
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`system and method.
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`(2) Claims 6-8 and 13-15 were rejected on the basis that Cashler discloses
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`utilizing fuzzy logic and establishing a variation of the threshold over time with a
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`specified range, but the Examiner noted that Cashler failed to specifically teach a
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`fuzzy value obtained by the calculating, determining and combining steps or
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`increasing or decreasing the threshold. The Examiner deemed the claims obvious
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`because one of skill in the art would have readily understood Cashler's
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`system/method to be at least a fully functional equivalent to the claimed system
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`and method.
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`10
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`Request for Inter Partes Review
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`U.S. Patent No. 6,012,007
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`In the Amendment filed July 6, 1999, the Applicant traversed the Cashler
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`rejections by arguing that Cashler fails to disclose various claim recitations and
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`that Cashler is not prior art as is commonly assigned to the present application.
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`Regarding the merits of the prior art rejections, the Applicant conceded "the
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`Cashler patent admittedly is foundational to the present invention," but asserted
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`that the rejected claims recite non-obvious enhancements in the form of apparatus
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`and method steps which are particularly useful for discriminating between heavy
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`and light occupants under dynamic conditions due, for example, to occupant
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`shifting or bouncing. In particular, the Applicant argued:
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`Such enhancements are neither shown nor suggested in
`Cashler. Independent method Claims 1 and 16 both recite
`the steps of: (1) establishing a lock threshold above the
`normal allow threshold, (2) setting a lock flag when the
`total force or relative weight parameter is above the lock
`threshold AND deployment has been allowed for a given
`time, (3) clearing the lock flag when the total force or
`relative weight parameter is below an empty seat
`threshold for a time, and (4) allowing deployment while
`the lock flag is set. Independent apparatus Claim 17
`includes nearly identical recitations, but in the context of
`functions performed by a programmed microprocessor.
`These steps/functions are not found in Cashler; rather,
`they enhance Cashler by addressing dynamic operating
`conditions not even recognized in the Cashler patent.
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`(Ex. 1002) See April 9, 1999 Non-Final Office Action.
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`Request for Inter Partes Review
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`U.S. Patent No. 6,012,007
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`In other words, the Applicant admits that the claims of the '007 patent are not
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`disclosed or rendered obvious by Cashler. Thus, the '007 patent is not entitled to
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`the earlier filing date of the Cashler patent, but rather to a June 3, 1997 filing date.
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`Ex. 1010, Rouhana Dec. at ¶40. On August 18, 1999, the USPTO issued a Notice
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`of Allowance allowing claims 1-27 of the '007 Patent.
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`V. CLAIM CONSTRUCTION
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`A claim subject to inter partes review is given its “broadest reasonable
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`construction in light of the specification of the patent in which it appears.” (37
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`C.F.R. § 42.100(b).) But, “the Board’s review of the claims of an expired patent is
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`similar to that of a district court’s review.” In re Rambus, Inc., 694 F.3d 42, 46
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`(Fed. Cir. 2012). The ’007 patent expired December 1, 2015. Thus, Petitioner has
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`applied here the claim construction standard summarized in Phillips v. AWH Corp.,
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`415 F.3d 1303 (Fed. Cir. 2005).
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`On April 17, 2015, the U.S. District Court for the Central District of
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`California issued a Claim Construction Order that addressed, among other things,
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`the ’007 patent. (See Ex. 1009, Order RE Claim Construction from Signal IP v.
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`American Honda Motor Co., Inc., No. 2:14-cv-02454 (C.D. Cal.).). The meaning
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`of a number of terms appearing in claim 17 were disputed by the parties, and were
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`addressed by the Court.
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`12
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`Request for Inter Partes Review
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`U.S. Patent No. 6,012,007
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`A. Terms Not Requiring the District Court's Construction
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`The District Court determined that multiple terms, including “seat sensor,”
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`“lock flag,” “flag,” “for a time,” “for a given time,” “set a lock flag when,” did not
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`require the Court's construction. Id. at pp. 48-53, 63-65.
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`B. Terms Construed By the District Court
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`The District Court construed three terms relevant to claims 17, 21 and 22: (1)
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`"means for inhibiting and allowing deployment . . .; (2) "a level indicative of an
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`empty seat"; and (3) "relative weight parameter".
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`1. Means for Inhibiting and Allowing Deployment
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`The District Court considered the term “means for inhibiting and allowing
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`deployment” language in the preamble of claim 17, and held that “Section 112 ¶ 6
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`does not apply.” Id. at p. 73. The Court's reasoned that the presumption that claim
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`17 is a means plus function claim is rebutted "because Claim 17 describes in detail
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`what the means includes: seat sensors and a microprocessor programmed to inhibit
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`and allow deployment according to sensor response, specifying the algorithm." Id.
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`at p. 74. Thus, this term was given its plain and ordinary meaning.
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`2. A Level Indicative of an Empty Seat
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`The District Court construed the term “[a] level indicative of an empty seat”
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`and construed this term to mean “a force/pressure measurement of zero or
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`substantially zero weight on the seat.” Id. at pp. 65-67. Petitioner submits, however,
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`that this particular claim limitation does not require explicit construction and can
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`instead be instead afforded its plain and ordinary meaning.
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`The District Court based its construction on the support provided by the
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`parent application Cashler, which was incorporated by reference. Id. at pp. 66-67.
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`Cashler provides that an empty seat will have a total force near zero. Ex. 1008,
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`col. 3, ll. 53-54. However, Schousek, which is also incorporated by reference,
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`determines an empty seat when the total weight is below the minimum infant seat
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`threshold of 10 lbs. Ex. 1003, col. 4, ll. 62 - col. 5, ll. 3; col. 5, ll. 36-39; FIG. 5A.
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`Thus, after considering both of the publications incorporated by reference, then the
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`definition of total weight levels should be sufficiently broad in order to include
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`both levels indicative of an empty seat, that is, levels between 0 and 10 lbs.,
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`inclusive.
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`3. Relative Weight Parameter
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`In addition to the above, the District Court found claim 17 indefinite due to
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`its inclusion of the phrase “relative weight parameter.” Id. at pp. 60-63. But
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`because “claims 21 and 22 adequately describe the relative weight parameter" the
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`Court found these claims sufficiently definite. Id. at p. 63. It is worthwhile to note
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`that the Board has previously reasoned that it can consider the patentability of claim
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`17 for the purposes of an inter partes review because “the ‘relative weight
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`parameter,’ recited in claim[] . . . 17, includes a parameter representing a total
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`weight of an occupant” as set forth in claim 21, which the Board found is definite,
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`and therefore prior art that shows the parameter in claim 21 can be employed to
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`show that claims 17 and 21 are unpatentable. See IPR2015-01004, Paper 11,
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`Institution Decision at 7. Petitioner agrees, for purposes of this Petition, that the
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`“relative weight parameter” of claim 17 includes at least the “total force detected
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`by all the sensors.”
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`Petitioner also would like to point out that the '007 Patent incorporates
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`Schousek by reference. Ex. 1002, col. 1, ll. 31-44. Schousek describes:
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`While the sensors are localized and do not actually
`weight the whole person or infant seat, they can measure
`weight parameters which together represent the total
`weight and can be empirically related to the total weight.
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`Ex. 1003, col. 4, ll. 41-45.
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`Accordingly, Petitioner submits that the incorporation by reference also aids
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`in establishing a meaning that the "relative weight parameter" includes "total force
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`detected by all the sensors."
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`The District Court construction (or decision that no construction is necessary)
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`of "relative weight parameter" is consistent with the ’007 patent’s claims,
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`specification, and prosecution history and has thus been utilized when comparing
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`the prior art to the claims the ’007 patent in this Petition. However, Petitioner
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`submits that the construction of "empty seat" by the District Court based only on
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`one of two publications "incorporated by reference", is unduly narrow. Thus,
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`Petitioner relies on the construction offered above. Thus, a level indicative of an
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`empty seat is construed to include total weight levels between 0 and 10 lbs,
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`inclusive.
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`Beyond these terms, there is no indication in the ’007 patent that any other
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`terms in claims 17, 21 and 22 should be afforded something other than their plain
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`and ordinary meaning.
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`VI. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE '007 PATENT IS UNPATENTABLE
`A. Grounds 1-3 in view of Schousek
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`1. Ground 1: Claims 17 and 21 are anticipated by Schousek.
`a.
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`Overview of Schousek
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`Schousek describes “[a]n air bag restraint system is equipped with seat
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`occupant sensing apparatus for a passenger seat which detects both infant seats and
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`adults and distinguishes between rear and forward facing infant seats.” Ex. 1003,
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`Abstract. “Air bag deployment is inhibited . . . when an occupied rear facing infant
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`seat is present.” Id.
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`The '007 Patent characterizes Schousek in its Background section, noting
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`Schousek describes “incorporat[ing] pressure sensors in the passenger seat and
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`monitor[ing] the response of the sensors by a microprocessor to evaluate the
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`weight and weight distribution, and for inhibiting deployment in certain cases.” Ex.
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`1001, col. 1, ll. 35-38. Noting that Schousek is “a foundation for [its] invention,”
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`in the '007 Patent “[i]t is desirable, however to provide a system which is
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`particularly suited for discriminating between heavy and light occupants and for
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`robust operation under dynamic conditions such as occupant shifting or bouncing
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`due to rough roads,” implying that these features are absent in Schousek. Id. at
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`1:43-48 (emphasis added). As described in detail below, Schousek describes
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`techniques for discriminating between heavy and light objects (e.g., between
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`infants and adults) and for “filtering out . . . occasional spurious [air bag
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`enablement] decisions, which may be due to occupant movement or other
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`instability.” Ex. 1003, col. 6, ll. 2-5 (emphasis added).
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`b.
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`Schousek describes a control system and sensors that
`are nearly identical to the '007 Patent
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`Schousek describes an “air bag restraint system [that] is equipped with [a]
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`seat occupant sensing apparatus for a passenger seat which detects both infant seats
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`and adults and distinguishes between rear and forward facing infant seats.” Ex.
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`1003, abstract (emphasis added). Schousek states that “the sensing apparatus
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`comprises eight variable resistance pressure sensors in the seat cushion.” Id.
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`(emphasis added). A “microprocessor” monitors “the response of each sensor to
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`occupant pressure,” and calculates a “total weight and weight distribution” for an
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`occupant of the seat. Id. (emphasis added). Schousek describes that the detected
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`weight from the seat sensors “is used to discriminate between an occupied infant
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`seat, an adult and no occupant” Id. (emphasis added). Ex. 1003, ¶15.
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`FIG. 1 of '007 Patent
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`FIG. 1 of Schousek
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`As is evident above, the hardware used to detect an occupant and the system
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`configured to deploy the airbag (SIR module) is the same in Schousek as it is in the
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`'007 Patent. The sensors used to detect the weight of an occupant in both Schousek
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`and the '007 Patent (described as sensors 28 in both publications) both rely on a
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`variable resistor 28 which is configured to provide a different resistance at
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`different pressures - "the resistance between the electrodes decreases as pressure
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`increases." Ex. 1003, col. 3, ll. 40-63; and Ex. 1001, col. 3, ll. 2-20.
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`Schousek describes that "the sensors are localized and do not actually weigh
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`the whole person or infant seat, they can measure weight parameters which
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`together represent the total weight and can be empirically related to the total
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`weight." Ex. 1003, col. 4, ll. 41-45.
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`c.
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`Schousek Discloses Multiple Threshold values
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`Claim 1 of the '007 Patent recites allowing deployment of the airbag when
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`the detected relative weight parameter exceeds: (1) a first threshold; and (2) a lock
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`threshold above the first threshold. Additionally, claim 1 recites inhibiting airbag
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`deployment when below (3) an unlock threshold.
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`In FIG. 5A (see annotated below), Schousek describes the use of the three
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`thresholds. See Ex. 1010, Rouhana Dec. at ¶¶58-59. After sampling each sensor
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`<64> and calculating a total weight parameter <68>, the total weight is compared
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`to the maximum infant seat threshold of 50 lbs (lock threshold) and "[i]f the total
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`weight parameter is greater than the maximum infant seat weight <72> this
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`indicates that a larger occupant is present and a decision is made to allow
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`deployment <74>." Ex. 1003, col. 5, ll. 32-35. Next, a comparison is made to the
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`minimum infant seat threshold of 10 lbs (unlock threshold) and "if the total weight
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`parameter" is below the threshold <76> it is determined that the seat is empty and a
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`decision is made to inhibit deployment <78>." Id. at col. 5, ll. 36-38. Lastly, if the
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`total weight parameter is above the minimum infant seat threshold, "the occupant is
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`identified as an occupied infant seat or a small child <80>." Id. at col. 5, ll. 43-44.
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`A determination is then made whether the child or infant seat is properly
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`positioned, and if so, then deployment is allowed. Id. at col. 5, ll. 45-50.
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`U.S. Patent No. 6,012,007
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`INITIAUE TIMER
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`60
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`E 62
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`SECOND
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`N0
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`sauna axon senson
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`6“
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`FIG - 5A
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`FORCE=CALlBRATION.. smug
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`65
`
`Lock Threshold - Deployment
`Allowed if Above 50 lbs.
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`CALCUJTETOTALWEIGIITPARAMETER
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`58
`
`7°
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`Unlock Threshold -
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`72' Deployment Inhibited
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`below
`
`lbs.
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`TOTAL WEIGHT >
`° ADUJ 9E1"Ec1-ED
`
`W INFANT 55"
`' DEPLOY macnsuou
`
`
`
`
`
`
`MIN wrmr sm
`mRE§H0m
`
`.
`
`NOT osmov oecusnou
`
`
`
`
`
`' REARWAFID FACING
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`ll&?§u‘lT 3Ff«'T ‘DETECTED
`‘ NQTM-'FE..‘?Y DECISION
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`lsThreshold -
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`Deployment
`86 Allowed if
`
`Above 10 lbs.
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`INFANT SHT OR
`SMALL CHILD
`DTED
`
`
`
`' FORWARD FACING
`INFANT SEAT DETECTED
`
`‘