Paper No. ___
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SWAGWAY, LLC,
`Petitioner,
`
`v.
`
`DEKA PRODUCTS LIMITED PARTNERSHIP,
`Patent Owner.
`____________
`
`IPR2016-00___
`Patent 6,302,230
`____________
`
`Filed: October 14, 2016
`On behalf of Petitioner Swagway, LLC.
`
`PETITION FOR INTER PARTES REVIEW OF
`UNITED STATES PATENT NO. 6,302,230
`PURSUANT TO 35 U.S.C. §§ 311-319, 37 C.F.R. § 42
`
`
`
`
`
`
`
`
`
`

`
`
`
`I.  
`
`TABLE OF CONTENTS
`
`INTRODUCTION .................................................................................................................... 1  
`
`II.   MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ............................................................ 2  
`
`A.   Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) .............................................. 2  
`B.   Related Matters Under 37 C.F.R. § 42.8(b)(2) ....................................................... 2  
`C.   Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ................................... 2  
`D.   Service Information ................................................................................................ 2
`
`
`III.  PAYMENT OF FEES UNDER 37 C.F.R. § 42.103 ................................................................ 3  
`
`IV.  REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104 ..................................................... 3  
`
`A.   Grounds for Standing Under 37 C.F.R. § 42.104(a) ............................................... 3  
`B.   Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested .............................. 3
`
`
`V.   SUMMARY OF THE ’230 PATENT ...................................................................................... 4  
`
`A.   Overview ................................................................................................................. 4  
`B.   Summary of the Original Prosecution ..................................................................... 5
`
`
`VI   SUMMARIES OF THE RELIED-UPON REFERENCES ...................................................... 8  
`
`A.   Kamen ’478 ............................................................................................................. 8  
`B.   Nishida .................................................................................................................. 13  
`C.   Rath ....................................................................................................................... 13  
`D.   Trost ...................................................................................................................... 14
`
`
`VII.   CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(b)(3) ........................................ 14  
`
`VIII.   THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE OF THE
`
`CLAIMS OF THE ’230 PATENT IS UNPATENTABLE ................................................ 16  
`
`A.   Ground 1 Sets Forth a Reasonable Likelihood to Prevail on Claims 1, 3, and 4. . 16  
`B.   Ground 2 Sets Forth a Reasonable Likelihood to Prevail on Claims 1, 3, and 4. . 36  
`C.   Ground 3 Sets Forth a Reasonable Likelihood to Prevail on Claims 1, 3, and 4. . 43  
`D.   Ground 4 Sets Forth a Reasonable Likelihood to Prevail on Claims 1, 3, and 4. . 49
`
`
`IX. CONCLUSION ...................................................................................................................... 58  
`
`
`
` i
`
`
`
`

`
`
`
`EXHIBITS
`
`1001 U.S. Patent No. 6,302,230 (“the ’230 patent”)
`
`1002 Excerpts of the Prosecution History of the ’230 Patent
`
`
`1003 Declaration of Dr. John E. Cochran, Jr.
`
`1004 Int’l Patent App. Pub. No. WO 96/23478 to Kamen et al. (“Kamen
`
`’478”)
`
`1005 U.S. Patent No. 5,215,159 to Nishida (“Nishida”)
`
`1006 U.S. Patent No. 4,964,679 to Rath (“Rath”)
`
`1007 U.S. Patent No. 5,705,746 to Trost et al. (“Trost”)
`
`1008 U.S. Patent No. 5,971,091 to Kamen et al. (“Kamen ’091”)
`
`1009 U.S. Patent No. 5,701,965 to Kamen et al. (“Kamen ’965”)
`
`1010
`
`1011
`
`Swagway’s Proposed Claim Constructions for ITC Investigation
`
`DEKA’s Proposed Claim Constructions for ITC Investigation
`
` ii
`
`

`
`
`
`I.
`
`INTRODUCTION
`
`Swagway LLC (“Petitioner”) hereby petitions for Inter Partes Review
`
`(“IPR”) under 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42 of claims 1, 3, and 4 (“the
`
`challenged claims”) of U.S. Patent No. 6,302,230 (“the ’230 patent”). As explained
`
`below, there is a reasonable likelihood of prevailing in their challenge of at least
`
`one claim identified as not patentable in this petition.
`
`The ’230 patent primarily focuses on an automatically balancing vehicle for
`
`transporting individuals. See, e.g., Ex. 1001 at 1:5-10, Abstract. At the time of
`
`filing the ’230 patent, this arrangement and capability were already known. A
`
`strikingly similar application, Kamen ’478 (Ex. 1004), assigned to the same patent
`
`owner, includes identical language describing the critical features had been
`
`published more than one year prior to the filing of the ’230 patent. See Ex. 1004.
`
`Also, Kamen ’478 and the ’230 patent share four named inventors. Ex. 1001, Ex.
`
`1004.
`
`Kamen ’478 was submitted as a reference by the applicant for the ’230
`
`patent. The Examiner, however, did not rely on Kamen ’478 in making any
`
`rejections. Instead, the Examiner relied on another publication, Kamen ’965 (Ex.
`
`1009), which includes similar disclosures except Kamen ’965 did not describe the
`
`critical speed limiting function. Had the applicant informed the Examiner that
`
`Kamen ’478 described the critical speed limiting function absent in Kamen ’965,
`
` 1
`
`

`
`
`
`the challenged claims would not have been allowed.
`
`As discussed below, the challenged claims are anticipated by Kamen ’478
`
`and are also obvious in view of at least the following combinations: Kamen ’478
`
`and Nishida (Ex. 1005); Kamen ’478 and Rath (Ex. 1006), and Kamen ’478 and
`
`Trost (Ex. 1007). For these reasons, Petitioner respectfully requests that the Board
`
`institute inter partes review of the challenged claims on the grounds set forth
`
`below.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`
`The real party-in-interest is Swagway, LLC.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`
`Petitioner is aware of the following related matters: Certain Personal
`
`Transporters, Components Thereof, and Packaging and Manuals Thereof, Inv. No.
`
`337-TA-1007 (U.S.I.T.C. instituted June 20, 2016), which is currently pending.
`
`C.
`
`Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`
`Jeff Pearson, Reg. No. 54,657 (lead counsel) and Lei Mei, Reg. No. 56,913
`
`(back-up counsel), MEI & MARK LLP, P.O. Box 65981, Washington, DC 20035,
`
`Telephone: 888-860-5678, Facsimile: 888-706-1173.
`
`D.
`
`Service Information
`
`Please address all correspondence and service to the address of both counsel
`
` 2
`
`

`
`
`
`listed above. Petitioner also consents
`
`to service by electronic mail at
`
`jpearson@meimark.com and mei@meimark.com.
`
`III. PAYMENT OF FEES UNDER 37 C.F.R. § 42.103
`
`Petitioner authorizes the Patent and Trademark Office to charge Deposit
`
`Account No. 50-4840 for the petition fee set in 37 C.F.R. § 42.15(a) and for any
`
`other required fees.
`
`IV. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104
`
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`
`Petitioner certifies that the ’230 patent is eligible for IPR and that Petitioner
`
`is not barred or estopped from requesting IPR.
`
`B. Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested
`
`Petitioner requests IPR of claims 1, 3 and 4 of the ’230 patent on the
`
`grounds listed in the table below.1 In support, this Petition includes claim charts for
`
`each ground and a supporting evidentiary declaration of Dr. John E. Cochran, Jr.
`
`(Ex. 1003).
`
`
`
`
`
` 1
`
` Since the ’230 patent has an effective filing date before March 16, 2013, pre-AIA
`
`§§ 102 and 103 apply to this petition.
`
`
`
` 3
`
`

`
`
`
`Ground Claims
`
`Basis
`
`1
`
`2
`
`3
`
`4
`
`1, 3, and 4 Anticipated under § 102(b) by Kamen ’478.
`
`1, 3, and 4 Obvious under § 103(a) by Kamen ’478 in view of
`
`Nishida.
`
`1, 3, and 4 Obvious under § 103(a) by Kamen ’478 in view of Rath.
`
`1, 3, and 4 Obvious under § 103(a) by Kamen ’478 in view of Trost.
`
`
`Kamen ’478 was published on August 8, 1996; Nishida was published on
`
`June 1, 1993; Rath was published on October 23, 1990, and Trost was published on
`
`January 6, 1998. Therefore, they constitute prior art to the ’230 patent under pre-
`
`AIA 35 U.S.C. § 102(b).
`
`V.
`
`SUMMARY OF THE ’230 PATENT
`
`A. Overview
`
`The ’230 patent related to “vehicles and methods for transporting individuals,
`
`and more particularly to balancing vehicles and methods for transporting
`
`individuals over ground having a surface that may be irregular.” Ex. 1001 at 1:5-9.
`
`The vehicle balances itself using a control system, including sensors,
`
`microcontrollers, and motors. See, e.g., id. at 11:66-12:10, Figs. 5, 6, and 7. The
`
`vehicle uses a speed limiting function to automatically maintain balance and
`
`control. See id. at 14:63-15:36. In particular, claim 1 of the ’230 patent monitors
`
`the difference between the current velocity and maximum operating velocity,
`
` 4
`
`

`
`
`
`where the maximum operating velocity is determined by a requirement of
`
`acceleration to maintain balance. Id. at claim 1. When the vehicle reaches a
`
`threshold where it can no longer maintain balanced operation, it automatically
`
`pitches the vehicle back to maintain balance. Id. at 15:4-14.
`
`The general principle of operation of the vehicle is to counter the tipping
`
`force at the center of gravity of the vehicle and user by driving the wheels with the
`
`appropriate torque. Id. at 8:10-57. In other words, “if the vehicle starts to fall over,
`
`the wheels are sped up to bring them under the rider so the rider won’t fall.” Ex.
`
`1002 at 53.
`
`B.
`
`Summary of the Original Prosecution
`
`The ’230 patent was filed on June 4, 1999. In an office action dated October
`
`4, 2000 (“Office Action of October 4, 2000”), the Examiner rejected then pending
`
`claim 11 (issued as claim 1) as obvious in view of U.S. Patent No. 5,701,965 to
`
`Kamen et al. (“Kamen ’965”) and U.S. Patent No. 5,705,746 to Trost et al.
`
`(“Trost”). Ex. 1002 at 26-28. In response, Applicant, DEKA, argued claim 11 was
`
`patentable because Kamen ’965 and Trost did not disclose a combination “where
`
`the monitor determines the difference between the current velocity and the
`
`maximum operating velocity, defined by the point at which the balancing ability of
`
`the vehicle is compromised.” Id. at 224-25. DEKA’s reliance on this feature in its
`
`argument is striking for at least three reasons.
`
` 5
`
`

`
`
`
`First, Kamen ’478 describes this feature in its speed limiting section with
`
`almost identical language used to describe the feature in the ’230 patent, as
`
`explained further in Section VI.A below. Ex. 1001 at 14:63-15:2, 15:4-14, 15:24-
`
`36; Ex. 1004 at p. 33, l. 13-p. 34, l. 6. The shared language describing the speed
`
`limiting function does not appear in Kamen ’965. Ex. 1009.
`
`Second, DEKA’s representative knew that Kamen ’478 included the critical
`
`information absent in Kamen ’965. His firm drafted both. Ex. 1004 at 1; Ex. 1009
`
`at 1 (listing Bromberg and Sunstein LLP as the Attorney, Agent or Firm). And
`
`DEKA’s representative identified Kamen ’478 as a related reference in an
`
`Information Disclosure Statement for the ’230 patent. Ex. 1002 at 16. Furthermore,
`
`Kamen ’478 has the same specification and filing date as U.S. patent application
`
`08/384,705, which was described as a related reference in the specification of
`
`the ’230 patent. See generally Ex. 1004; Ex. 1008. Moreover, DEKA’s
`
`representative knew that Kamen ’478 was prior art because it was published more
`
`than one year prior to the filing date of the ’230 patent. Ex. 1004.
`
`Third, Kamen ’965, relied on by the Examiner, describes a vehicle similar to
`
`the vehicle described in the ’230 patent and Kamen ’478 except Kamen ’965 lacks
`
`a description of the critical speed limiting function shared by both Kamen ’478 and
`
`the ’230 patent. Ex. 1009. The speed limiting function is the core of claim 1 of
`
`the ’230 patent. Ex. 1001 at claim 1. And DEKA’s representative argued that this
`
` 6
`
`

`
`
`
`speed limiting function (that is, monitoring the difference between the current
`
`velocity and the maximum operating velocity) was the basis for patentability over
`
`Kamen ’965, without informing the Examiner that Kamen ’478 expressly described
`
`this feature in the same way that the ’230 patent describes the feature. Ex. 1002 at
`
`39.
`
`Despite the striking similarities between Kamen ’478 and the ’230 patent as
`
`to the most relevant, material features (i.e., the speed limiting function), the
`
`Examiner did not rely on Kamen ’478 in making his rejections. It is clear the
`
`Examiner was not aware of the similarities. The Examiner would not have allowed
`
`claim 1 had he known Kamen ’478 disclosed a vehicle with a monitor that
`
`“determines the difference between the current velocity and the maximum
`
`operating velocity” to maintain balance, along with other important features of the
`
`speed limiting function critical to claim 1.
`
`Also notably absent from the prosecution history is a robust debate on
`
`whether an alarm on the vehicle in the ’230 patent was unique. DEKA’s
`
`representative even conceded that “Trost teaches a velocity margin, a margin
`
`monitor and an alarm to warn the operator when the present velocity approaches a
`
`dangerous velocity . . . .” Ex. 1002 at 39. When arguing for allowance, DEKA’s
`
`representative relied on his argument that Kamen ’965 and Trost did not disclose a
`
`combination “where the monitor determines the difference between the current
`
` 7
`
`

`
`
`
`velocity and the maximum operating velocity, defined by the point at which the
`
`balancing ability of the vehicle is compromised.” Id. Accordingly, the alarm was
`
`not important enough to even warrant a debate as DEKA’s representative must
`
`have known such an alarm was both known and obvious.
`
`After an interview, the Examiner allowed pending claim 11 (issued as claim
`
`1) with amendments requiring the language “being unstable with respect to tipping
`
`when the motorized drive is not powered.” Ex. 1002 at 57. It’s noteworthy that
`
`there is almost no record of a debate on this “unstable with respect to tipping”
`
`feature. And a cursory review of the Kamen ’478 shows that the vehicle in
`
`Kamen ’478 is equally “unstable” as the vehicle in the ’230 patent. E.g., Ex. 1001
`
`at Fig. 2; Ex. 1004 at p. 5, ll. 20-25, p. 14, ll. 24-25, Fig. 21.
`
`Kamen ’478 was listed as a reference cited, but was neither mentioned in a
`
`rejection nor used in the combinations as suggested in this IPR. The challenged
`
`claims should not have been allowed over Kamen ’478.
`
`VI
`
`SUMMARIES OF THE RELIED-UPON REFERENCES
`
`
`
`A. Kamen ’478
`
`Kamen ’478 describes a speed limiting section with almost identical
`
`language used to describe the feature in the ’230 patent, as explained in the table
`
`below.
`
`
`
` 8
`
`

`
`
`
`Kamen ’478
`
`The ’230 Patent
`
`In a further embodiment, any of the
`
`In a further embodiment, any of the
`
`foregoing embodiments of a vehicle in
`
`foregoing embodiments of a vehicle in
`
`accordance with the present invention
`
`accordance with the present invention
`
`may be provided with speed limiting
`
`may be provided with speed limiting
`
`to maintain balance and control,
`
`to maintain balance and control,
`
`which may otherwise be lost if the
`
`which may otherwise be lost if the
`
`wheels
`
`(or arcuate elements) were
`
`wheels (arcuate elements, or other
`
`permitted to reach the maximum speed
`
`ground-contacting members) were
`
`of which they are currently capable of
`
`permitted to reach the maximum speed
`
`being driven.
`
`of which they are currently capable of
`
`Ex. 1004 at p. 33, ll. 13-17.
`
`being driven.
`
`Ex. 1001 at 14:63 – 15:2.
`
`Speed
`
`limiting
`
`is accomplished by
`
`Speed
`
`limiting
`
`is accomplished by
`
`pitching the vehicle back in the direction
`
`pitching the vehicle back in the direction
`
`opposite from the current direction of
`
`opposite from the current direction of
`
`travel, which causes the vehicle to slow
`
`travel, which causes the vehicle to slow
`
`down. In this embodiment, the vehicle is
`
`down. (As discussed above, the extent
`
`pitched back by adding a pitch
`
`and direction of system lean determine
`
`modification to the inclinometer pitch
`
`the vehicle's acceleration.)
`
`In
`
`this
`
` 9
`
`

`
`
`
`Kamen ’478
`
`The ’230 Patent
`
`value. Speed limiting occurs whenever
`
`embodiment, the vehicle is pitched back
`
`the vehicle velocity of the vehicle
`
`by adding a pitch modification to the
`
`exceeds a
`
`threshold
`
`that
`
`is
`
`the
`
`inclinometer
`
`pitch
`
`value.
`
`Speed
`
`determined speed limit of the vehicle.
`
`limiting occurs whenever the vehicle
`
`The pitch modification is determined
`
`velocity of the vehicle exceeds a
`
`by looking at the difference between
`
`threshold that is the determined speed
`
`the
`
`vehicle
`
`velocity
`
`and
`
`the
`
`limit of
`
`the vehicle. The pitch
`
`determined speed limit, integrated over
`
`modification is determined by looking
`
`time.
`
`at the difference between the vehicle
`
`Ex. 1004 at p. 33, ll. 18-25.
`
`velocity and the determined speed
`
`limit, integrated over time.
`
`Ex. 1001 at 15:4-14.
`
`The pitch modification sequence
`
`is
`
`The
`
`automatic pitch modification
`
`maintained until the vehicle slows to the
`
`sequence, in response to a detected
`
`desired dropout speed (some speed
`
`speed at a specified speed limit, is
`
`slightly below the speed limit), and then
`
`maintained until the vehicle slows to the
`
`the pitch angle is smoothly returned to
`
`desired dropout speed (some speed
`
`its original value.
`
`slightly below the speed limit), and then
`
`
`
`the pitch angle is smoothly returned to
`
` 10
`
`

`
`
`
`
`
`Kamen ’478
`
`The ’230 Patent
`
`its original value.
`
`One method for determining the speed
`
`One method for determining the speed
`
`limit of the vehicle is to monitor the
`
`limit of the vehicle is to monitor the
`
`battery voltage, which is then used to
`
`battery voltage, which is then used to
`
`estimate the maximum velocity the
`
`estimate the maximum velocity the
`
`vehicle
`
`is
`
`currently
`
`capable of
`
`vehicle
`
`is
`
`currently
`
`capable of
`
`maintaining. Another method is to
`
`maintaining. Another method is to
`
`measure the voltages of the battery and
`
`measure the voltages of the battery and
`
`the motor and to monitor the difference
`
`the motor and to monitor the difference
`
`between
`
`the
`
`two;
`
`the difference
`
`between
`
`the
`
`two;
`
`the difference
`
`provides an estimate of the amount of
`
`provides an estimate of the amount of
`
`velocity margin currently available to
`
`velocity margin
`
`(or
`
`‘balancing
`
`the vehicle.
`
`margin’) currently available to the
`
`Ex. 1004 at p. 33, l. 25 – p. 34, l. 6.
`
`vehicle.
`
`Ex. 1001 at 15:24-36.
`
`
`
`Moreover, some of the figures in Kamen ’478 are almost identical to figures
`
`in the ’230 patent, for example, figure 21 of Kamen ’478 and figure 2 of the ’230
`
`patent. Ex. 1001 at Fig. 2; Ex. 1004 at Fig. 21.
`
` 11
`
`

`
`
`
`Kamen ’478
`
`The ’230 Patent
`
`Ex. 1004 at Fig. 21.
`
`Ex. 1001 at Fig. 2.
`
`
`
`
`
`
`
`Although shown with three pair of wheels, Kamen ’478 also describes an
`
`arrangement with one pair of wheels—the exact arrangement in figure 1 of
`
`the ’230 patent. Ex. 1004 at p. 14, ll. 24-25 (“the vehicle may be alternatively
`
`provide with . . . a transversely disposed single pair of wheels”).
`
`To the same extent as the vehicle in the ’230 patent, the vehicle in Kamen ’478
`
`is unstable with respect to tipping when not powered, as Kamen ’478 explains:
`
`In many embodiments, the configuration in which the subject is
`suspended during locomotion lacks inherent stability at least a portion
`of the time with respect to a vertical in the fore-aft plane but is relatively
`stable with respect to a vertical in the lateral plane. Fore-aft stability is
`achieved by providing a control loop, in which the motor is included,
`for operation of the motor in connection with the ground-contacting
`members.
`
`
` 12
`
`

`
`
`
`Ex. 1004 at 5, ll. 20-25 (emphases added).
`
`
`
`B. Nishida
`
`Nishida describes a vehicle that automatically reduces the speed of a vehicle
`
`by engaging brakes to slow the vehicle to a safe operating speed. Ex. 1005 at 3:9-
`
`15. This is part of Nishida’s objective to achieve safe, controlled operation of a
`
`vehicle. E.g., Ex. 1005 at 2:19-28, 3:60-68. More specifically, Nishida monitors
`
`the current velocity of a vehicle approaching another vehicle while calculating the
`
`distance between the two vehicles. E.g., Ex. 1005 at 3:9-15, 3:59-68. When a
`
`certain threshold is reached, the vehicle warns the driver using an alarm tone and
`
`automatically engages a speed limiting function (automatic brakes). E.g., Ex. 1005
`
`at 3:9-15, 3:59-68, 9:52-57.
`
`
`
`C. Rath
`
`Rath describes a vehicle that automatically reduces the speed of a vehicle by
`
`engaging brakes to slow the vehicle to a safe operating velocity. E.g., Ex. 1006 at
`
`3:66-4:4. This is part of Rath’s objective to achieve safe, controlled operation of a
`
`vehicle. E.g., Ex. 1006 at Abstract, 3:15-18, 3:66-4:4. Rath monitors the difference
`
`between the actual vehicle velocity and the rated vehicle velocity, engaging its
`
`speed limiting system (automatic brakes) when the velocity reaches a certain
`
`threshold. E.g., 1006 at 2:4-12.
`
` 13
`
`

`
`
`
`D. Trost  
`
`Trost automatically reduces the speed of a vehicle by engaging brakes to
`
`slow the vehicle to a safe operating velocity. Ex. 1007 at 1:45-67, 2:2-8. This is
`
`part of Trost’s objective to achieve safe, controlled operation of transportation
`
`vehicles. E.g., id. at Abstract, 1:45-67, 3:34-40. The control system in Trost
`
`monitors the difference between the current velocity and a critical velocity. Id. at
`
`1:45-67, 2:2-8. The system automatically reduces the speed of the vehicle after the
`
`vehicle reaches a critical velocity, which is the velocity approaching the velocity at
`
`which the vehicle will aquaplane. Id. at 1:45-67, 2:2-8.
`
`VII. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(b)(3)
`
`Claims are to be given their “broadest reasonable construction in light of the
`
`specification.” 37 C.F.R. § 42.100(b). The constructions below are intended to aid
`
`this proceeding and shall not be understood as waivers or admissions of any issues
`
`that may be raised in any litigation, which requires different construction standards.
`
`Both Swagway and DEKA have proposed claim constructions in the
`
`pending U.S. International Trade Commission (ITC) investigation Certain
`
`Personal Transporters, Components Thereof, and Packaging and Manuals Thereof,
`
`Inv. No. 337-TA-1007. The proposed claim constructions for the ’230 patent are
`
`attached to this petition as Exhibits 1010 and 1011.
`
`For the purposes of this proceeding, Swagway states that the terms are
`
` 14
`
`

`
`
`
`construed according to their plain and ordinary meanings and further construes the
`
`two terms below. The ’230 patent is invalid under Grounds 1-4 below according
`
`both DEKA’s and Swagway’s proposed claim constructions before the ITC as well
`
`as Swagway’s proposed claim construction in this proceeding.
`
`“Maximum Operating Velocity” (claims 1, 3, and 4): “a variable
`
`maximum velocity the vehicle is currently capable of maintaining where adequate
`
`vehicle acceleration potential is available to enable balance and control of the
`
`vehicle.” During the prosecution of the ’230 patent in response to a rejection, the
`
`applicant stated, “Claim [1], as amended, now defines the maximum vehicle
`
`velocity as the maximum velocity where adequate vehicle acceleration potential is
`
`available to enable balance and control of the vehicle.” Ex. 1002 at 39. The
`
`velocity is variable because it depends on the amount of battery voltage available
`
`to maintain balance. Ex. 1001 at 15:29-32 (“One method for determining the speed
`
`limit of the vehicle is to monitor the battery voltage, which is then used to estimate
`
`the maximum velocity the vehicle is currently capable of maintaining.”)
`
`“Balancing Margin” (claims 1, 3, and 4): “the difference between the
`
`maximum operating velocity and the current velocity of the vehicle.” Ex. 1001 at
`
`claim 1, Ex. 1002 at 53. Both parties essentially agreed to this proposed claim
`
`construction in the ITC investigation, as it is supported by the specification. Ex.
`
`1010 at 2, Ex. 1011 at 2.
`
` 15
`
`

`
`
`
`VIII. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`OF THE CLAIMS OF THE ’230 PATENT IS UNPATENTABLE
`
`Petitioner explains in detail below why each of the grounds described in
`
`Section IV.B sets forth a reasonable likelihood to prevail on at least one of the
`
`challenged claims.
`
`A. Ground 1 Sets Forth a Reasonable Likelihood to Prevail on
`Claims 1, 3, and 4.
`
`Claims 1, 3, and 4 are anticipated by Kamen ’478 under 35 U.S.C. § 102(b),
`
`
`
`as described and illustrated in the claim chart below.
`
`Claims
`[Preamble] A
`vehicle for
`carrying a payload
`including a user,
`the vehicle
`comprising:
`
`Anticipated by Kamen ’478
`PCT Application Number PCT/US95/01522, published as
`WO 96/23478 on August 8, 1996, listing Dean Kamen as the
`first named inventor (“Kamen ’478”) discloses a vehicle for
`carrying a payload including a user. Kamen ’478 at Abstract
`(“There
`is provided,
`in a preferred embodiment, a
`transportation vehicle for transporting an individual . . . .”).
`
`One embodiment is shown in Figure 21 below.
`
`Id. at Fig. 21.
`
`
`
` 16
`
`

`
`
`
`Claims
`[A] a. a platform
`which supports the
`user;
`
`Anticipated by Kamen ’478
`Kamen ’478 discloses a platform (platform 211), which
`supports the user. Id. at Abstract (“This embodiment has a
`support for supporting the subjet [sic]. A ground contacting
`module, movably attached to the support, serves to suspend
`the subject in the support over the surface.”), p. 14, l. 4 (“The
`subject stands on a platform 211 . . .”).
`
`
`
`
`Id. at Fig. 21.
`Kamen ’478 discloses a ground-contacting module (G), to
`which the platform (211) is mounted, for example, as shown
`in Figure 21.
`
`[B] b. a ground-
`contacting
`module, to which
`the platform is
`mounted, which
`propels the user in
`desired motion
`over an underlying
`surface;
`
` 17
`
`

`
`
`
`Claims
`
`Anticipated by Kamen ’478
`
`
`Id. at Fig. 21 (annotated to show ground-contacting module
`G).
`
`The ground-contacting module (G) propels the user in desired
`motion over an underlying surface. Id. at Abstract (“This
`embodiment has a support for supporting the subjet [sic]. A
`ground-contacting module, movably attached to the support,
`serves to suspend the subject in the support over the
`surface . . . . A motorized drive, mounted to the assembly and
`coupled to the ground-contacting module, causes locomotion
`of the assembly and the subject therewith over the
`surface.”)
`(emphases added), p. 5,
`ll. 16–20
`(“A
`characteristic of many of these embodiments is the use of a
`pair of laterally disposed ground-contacting members to
`suspend the subject over the surface with respect to which the
`subject is being transported. The ground-contacting members
`are motor-driven”), p. 14, ll. 21-27 (“ . . . the vehicle may be
`provided with other ground-contacting members, such as with
`a transversely disposed single pair of wheels . . . .”), p. 29, ll.
`2-5 (“. . . it may desirably be operated in the balance mode . .
`. and the wheels maintaining balance and causing desired
`locomotion.”) (emphasis added).
`[C] c. a motorized Kamen ’478 discloses a motorized drive arrangement,
`
` 18
`
`

`
`Anticipated by Kamen ’478
`coupled to the ground-contacting module.
`
`
`This embodiment has a support for supporting the
`subjet [sic]. A ground-contacting module, movably
`attached to the support, serves to suspend the subject
`in the support over the surface . . . . A motorized
`drive, mounted to the assembly and coupled to
`the ground-contacting module, causes locomotion
`of the assembly and the subject therewith over the
`surface.
`
`
`Id. at Abstract (emphasis added)
`
`Id. at p. 5 ll. 19–20 (“The ground-contacting members are
`motor-driven”).
`Kamen ’478 discloses a vehicle, for example, the vehicle
`shown in Figure 21, where the drive arrangement, ground-
`contacting module and payload comprises a system being
`unstable with respect to tipping when the motorized drive is
`not powered. For example, the vehicle shown in Figure 21
`would tip when the motorized drive is not powered.
`
`
`
`Claims
`drive arrangement,
`coupled to the
`ground-contacting
`module;
`
`[D] the drive
`arrangement,
`ground-contacting
`module and
`payload
`comprising a
`system being
`unstable with
`respect to tipping
`when the
`motorized drive is
`not powered;
`
`
`Also, Kamen ’478 describes that the configuration lacks
`inherent stability and that stability is achieved when the
`system is powered (providing a control loop . . . for operation
`
` 19
`
`

`
`
`
`Claims
`
`Anticipated by Kamen ’478
`
`of the motor).
`
`
`In many embodiments, the configuration in which
`the subject is suspended during locomotion lacks
`inherent stability at least a portion of the time with
`respect to a vertical in the fore-aft plane but is
`relatively stable with respect to a vertical in the
`lateral plane. Fore-aft stability is achieved by
`providing a control loop, in which the motor is
`included,
`for operation of
`the motor
`in
`connection with the ground-contacting members.
`
`
`Id. at p. 5, ll. 20-25 (emphases added).
`
`Kamen ’478 describes modifying the embodiment in
`Figure 21 to use a single pair of wheels, which would be
`even less stable.
`
`Although this embodiment is shown with left and
`right wheel clusters 214 operated in the manner of
`the clusters of FIGS. 13-20, the vehicle may be
`alternatively provided with
`other
`ground-
`contacting members, such as with a transversely
`disposed single pair of wheels in the manner of
`Fig. 1 (but without legs) . . . .
`
`[E] the motorized
`drive arrangement
`causing, when
`powered,
`automatically
`balanced operation
`of the system
`
`
`Id. at p. 14 ll. 21–25 (emphases added).
`Kamen ’478 discloses a drive arrangement causing, when
`powered,
`automatically
`(for
`example, using
`control
`algorithms and control systems in a balance mode) balanced
`operation of the system.
`
`
`Figs. 33-35 are block diagrams showing control
`algorithms, suitable for use in conjunction with
`the control assemblies of Fig. 27, to provide
`stability for a vehicle according to the embodiment
`
` 20
`
`

`
`
`
`Claims
`
`[F] wherein the
`vehicle has a
`
`Anticipated by Kamen ’478
`of Figs. 11-21 when balanced on a pair of wheels,
`both during locomotion and in a fixed position.
`
`
`Id. at p. 23 l. 13–p. 24 l. 3 (emphases added).
`
`Kamen ’478 further describes the automatic balancing system
`in an overview of its embodiments.
`
`
`In many embodiments, the configuration in which
`the subject is suspended during locomotion lacks
`inherent stability at least a portion of the time with
`respect to a vertical in the fore-aft plane but is
`relatively stable with respect to a vertical in the
`lateral plane. Fore-aft stability is achieved by
`providing a control loop, in which the motor is
`included,
`for operation of
`the motor
`in
`connection with the ground-contacting members.
`
`
`Id. at p. 5, ll. 20-25.
`
`Kamen ’478 further describes the automatically balanced
`operation in explaining the speed limiting function.
`
`
`In a further embodiment, any of the foregoing
`embodiments of a vehicle in accordance with the
`present invention may be provided with speed
`limiting to maintain balance and control, which
`may otherwise be lost if the wheels (or arcuate
`elements) were permitted to reach the maximum
`speed of which they are currently capable of being
`driven.
`
`Id. at p. 33, ll. 13-17 (emphases added).
`The vehicle in Kamen ’478 has a present velocity (vehicle
`velocity) and a maximum operating velocity, determined by a
`
` 21
`
`

`
`
`
`Claims
`present velocity
`and a maximum
`operating velocity,
`determined by a
`requirement of
`acceleration to
`maintain balance,
`and
`
`Anticipated by Kamen ’478
`requirement of acceleration to maintain balance. As described
`in Kamen ’478 and the ’230 patent, battery voltage powers
`the necessary acceleration to maintain balance, and this
`voltage, along with t