Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 7
`Entered: April 17, 2018
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`DYNACRAFT BSC, INC.,
`Petitioner,
`
`v.
`
`MATTEL, INC.,
`Patent Owner.
`_______________
`
`Case IPR2018-00038
`Patent 7,222,684 B2
`_______________
`
`
`
`
`Before BARRY L. GROSSMAN, MITCHELL G. WEATHERLY, and
`JAMES A. WORTH, Administrative Patent Judges.
`
`GROSSMAN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Instituting Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`

`

`IPR2018-00038
`Patent 7,222,684 B2
`
`
`I. INTRODUCTION
`
`Dynacraft BSC, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`
`requesting an inter partes review of claims 1–3, 5, 6, 9, 11–13, 15, 16, 22–
`
`24, 27, 28, 32–34, 37, and 38 of U.S. Patent No. 7,222,684 B2 (Ex. 1001,
`
`“the ’684 patent”). Mattel, Inc. (“Patent Owner”) filed a Preliminary
`
`Response to the Petition. Paper 6 (“Prelim. Resp.”).
`
`Under 35 U.S.C. § 314, an inter partes review may not be instituted
`
`“unless . . . there is a reasonable likelihood that the petitioner would prevail
`
`with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.
`
`§ 314(a). The Board considers the Petition on behalf of the Director.
`
`37 C.F.R. § 42.4(a).
`
`Upon considering the Petition, Preliminary Response, and the
`
`evidence of record, we determine that Petitioner has shown a reasonable
`
`likelihood that it would prevail with respect to at least one of the challenged
`
`claims.
`
`A.
`
`Related Matters
`
`Petitioner states the following as a related matter:
`
`Mattel, Inc. (“Mattel”) and its alleged wholly-owned
`subsidiary and exclusive licensee, Fisher-Price, Inc., asserted
`the ’684 patent in the United States District Court for the
`District of Delaware in an ongoing case originally captioned
`Fisher-Price, Inc. v. Dynacraft BSC, Inc., Case No. 1:17-cv-
`00051-LPS-CJB. That case has been transferred to the United
`States District Court for the Northern District of California and
`is now captioned Fisher-Price, Inc. v. Dynacraft BSC, Inc.,
`Case No. 3:17-cv-03745-PJH.
`
`Pet. 1. Patent Owner also identifies as a related matter the district court suit
`
`identified by Petitioner. Paper 4, 1.
`
`2
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`

`

`IPR2018-00038
`Patent 7,222,684 B2
`
`
`Additionally, however, Patent Owner identifies as related matters the
`
`following three inter partes reviews, each filed by Petitioner, Dynacraft,
`
`against Patent Owner, Mattel:
`
`IPR2018-00039 (challenging patentability of claims in U.S. Patent
`
`No. 7,950,978, which is a continuation of the application that matured into
`
`the ’684 patent);
`
`IPR2018-00040 (challenging patentability of claims in U.S. Patent
`
`No. 7,487,850, which is directed to a shifter assembly for a toy ride-on
`
`vehicle, but otherwise not directly related to the ’684 patent); and
`
`IPR2018-00042 (challenging patentability of claims in U.S. Patent
`
`No. 7,621,543, which is directed to blow-molded wheels for a toy ride-on
`
`vehicle, but otherwise not directly related to the ’684 patent). Id.
`
`B.
`
`Asserted Grounds
`
`Petitioner contends that the challenged claims are unpatentable under
`
`35 U.S.C. § 103 based on the following grounds (Pet. 20–63):
`
`References
`
`Basis
`
`Claims challenged
`
`U.S. Patent No. 5,859,509 (Ex. 1003,
`“Bienz”) and U.S. Patent No. 4,634,941
`(Ex. 1004, “Klimo”)
`
`§ 1031 1–3, 5, 6, 9, 22–24, and
`28
`
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 296–07 (2011), took effect on September 16, 2012. Because the
`application for the patent at issue in this proceeding has an effective filing
`date before that date, we refer to the pre-AIA versions of the statute.
`
`3
`
`

`

`IPR2018-00038
`Patent 7,222,684 B2
`
`
`References
`
`Basis
`
`Claims challenged
`
`Bienz, Klimo, and U.S. Patent No.
`5,994,853 (Ex. 1005, “Ribbe”)
`
`§ 103 11–13, 15, 16, 27, 32–
`
`34, 37, and 38
`
`Petitioner also relies on the opinion testimony of Dr. Michael
`
`Sidman2. See Ex. 1017. Dr. Sidman opines that “each of the challenged
`
`claims would have been obvious” in view of Bienz and Klimo (“Ground 1”)
`
`and Bienz, Klimo, and Ribbe (“Ground 2”). Id. ¶ 2.
`
`Generally, Patent Owner contends that the Petition should be denied
`
`in its entirety. For the reasons described below, we institute an inter partes
`
`review of all challenged claims on all grounds asserted above.
`
`C.
`
`The ’684 Patent
`
`The ’684 patent relates generally to battery powered “toy vehicles that
`
`may be ridden by people.” Ex. 1001, 1:15–16. More specifically, the ’684
`
`patent relates to a control mechanism for a toy vehicle “for softening the
`
`initiation of motion of the toy vehicle.” Id. at 1:17–18. “Softening” the
`
`initiation of motion is intended to avoid the abrupt acceleration or “whiplash
`
`effect” (id. at 2:17–19) of the vehicle when the driver “floors” the
`
`accelerator.
`
`One of the inventors of the ’684 patent, Robert E. Mimlitch, III,
`
`submitted a declaration (Ex. 2002) that contains a clear, simple explanation
`
`
`2 Dr. Sidman earned Bachelor’s and a Master’s degree in Electrical
`Engineering from Northeastern University, and earned a Ph.D. from
`Stanford University. Ex. 1017, ¶¶ 4, 5; see also Ex. 1018 (Dr. Sidman’s
`CV). Dr. Sidman is a named inventor on eighteen U.S. patents. Ex.1017
`¶ 6.
`
`4
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`

`

`IPR2018-00038
`Patent 7,222,684 B2
`
`of the technology disclosed in the ’684 patent. The objective was to make a
`
`“speed controller” for use with battery-powered ride-on toy vehicles. Ex.
`
`2002 ¶ 11. Mr. Mimlitch states:
`
`Children drive these vehicles erratically at times by, for
`example, stomping and releasing the foot pedal forcefully when
`they jump into and out of the vehicle. As a result, these foot
`pedals tend to be basic, two-state, on-off buttons that are
`covered by a plastic cap made to look like a car's gas pedal.
`The button is spring loaded to the off position so that the motor
`is immediately disengaged when the child releases the pedal to,
`for example, jump out of the vehicle. The direction shifters
`also present a challenge because they must be easy enough to
`operate for a child, but the child can often almost immediately
`switch motor direction from forward to reverse.
`
`Id. ¶ 10. Mr. Mimlitch further explains the “basic, two-state, on-off buttons”
`
`referred to in his declaration testimony as “a throttle signal that only had two
`
`possible levels, one correlating to ‘off’ and one to ‘on.’” Id. ¶ 12.
`
`According to Mr. Mimlitch, “[a] two-state, digital signal like this is
`
`commonly referred to as a binary signal.” Id.
`
`The inventors of the device and method disclosed in the ’684 patent
`
`considered “a proportional throttle pedal that would allow the child to more
`
`gently and gradually increase the speed of the vehicle.” Id. ¶ 11. The
`
`inventors “did not feel [a proportional throttle pedal] to be a practical
`
`solution at the time.” Id. The inventors “determined that the best course
`
`would be to add soft-start circuitry to the existing on/off drive system that
`
`would be able to first detect a change in the signal created by the on/off
`
`throttle pedal, and delay the time over which that change in motor speed was
`
`implemented.” Id. ¶ 12. It is this “soft-start circuitry” that “is reflected in”
`
`the ’684 patent. Id.
`
`5
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`

`

`IPR2018-00038
`Patent 7,222,684 B2
`
`
`The ’684 patent describes the disclosed device and method in
`
`considerably more detail. According to the ’684 patent, conventional
`
`control systems for battery powered toy ride-on, or ride-in, vehicles typically
`
`have been limited to applying a direct current (DC) from a DC battery to a
`
`motor upon pressing the accelerator or activating some other throttle
`
`mechanism. Id. at 1:26–30. This type of control basically operates as an
`
`on/off switch. Id. at 1:30–31. When the accelerator is pressed, or throttle
`
`activated, the motor is applied at full power (i.e. maximum velocity). Id.
`
`at 1:31–33. The ’684 patent states that this abrupt acceleration causes
`
`several problems, including “excessive acceleration,” “jerk,” “safety (e.g.,
`
`controlling and flipping the vehicle at startup),” and “wearing of the
`
`mechanical components of the drive train.” Id. at 2:4–9. The ’684 patent
`
`states that each of these problems has existed “for a long period of time,” but
`
`have not been solved “due in large part to pricing and technical concerns of
`
`toy manufacturers.” Id. at 2:10–16. According to the ’684 patent, the toy
`
`industry, in general, and makers of ride-on, electric powered, toy vehicles, in
`
`particular, “are very cost sensitive.” Id.
`
`The ’684 patent addresses the problems identified in the patent by
`
`using “a soft-start control circuit [ ] integrated into the conventional control
`
`systems.” Id. at 2:55–58. Integrating the soft-start control circuit into the
`
`existing control systems without having to redesign the fundamentals of the
`
`control system “allows the toy to remain competitive within the consumer
`
`acceptable price range.” Id. at 2:62–67.
`
`The soft-start control circuit disclosed in the ’684 patent uses a
`
`processor that receives signals from the conventional control system and
`
`creates “a transition signal” that “causes the motor to be ramped from no
`
`6
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`

`

`IPR2018-00038
`Patent 7,222,684 B2
`
`power to full power.” Id. at 4:5–17. The transition signal may be ramped in
`
`a linear or non-linear fashion. Id. at 3:12–14. The transition signal
`
`generated by the soft-start control circuit may be a pulse width modulation
`
`signal having a duty cycle between 20 and 100 percent, linearly (e.g., ramp)
`
`or non-linearly (e.g., exponential), at startup. Id. at 4:20–25.
`
`Inventor Mimlitch acknowledges that “motor ramping in a general
`
`sense was known.” Ex. 2002 ¶ 14. According to Mr. Mimlitch, “[w]hat was
`
`not known, and what the ’684 and ’978 patents3 generally relate to, was
`
`motor ramping under the specific drive system parameters most conducive
`
`to making a child’s ride-on better performing and safer, and doing so in a
`
`cost effective manner.” Id. (emphasis added).
`
`Figure 3 of the ’684 patent is reproduced below.
`
`Figure 3 is Patent Owner’s annotated block diagram of soft-
`start control circuit 305 added to the conventional control
`system of Figure 2. PO Resp. 11; see Ex. 1001, 1:40–43.
`
`
`
`
`3 U.S. Patent No. 7,950,978 is a continuation of the application that matured
`into the ’684 patent. Claims in the ’978 patent are the subject of related
`IPR2018-00039.
`
`7
`
`

`

`IPR2018-00038
`Patent 7,222,684 B2
`
`
`As shown in annotated Figure 3, soft-start control circuit 305 is
`
`“integrated” with conventional control system 200. Ex. 1001, 4:29–31.
`
`Soft-start control circuit 305 receives inputs from positive terminal 228 of
`
`battery 205 and from forward and reverse switch 215. Id. at 4:31–33.
`
`Battery voltage VBATT provides operational power to soft-start control
`
`circuit 305. Forward and reverse signals 222 indicate that foot pedal switch
`
`210 is engaged and also indicate whether the motor operates in forward or
`
`reverse. Id. at 4:36–40.
`
`A block diagram of soft-start control circuit 305 is shown in Figure 5.
`
`As shown in Figure 5, and as described in the related disclosure, input
`
`conditioning unit 505 of circuit 305 is operable to receive forward and
`
`reverse signals 222a and 222b, “which may be analog or digital,” and
`
`condition the signals for input to the controller 510. Id. at 5:37–48
`
`(emphasis added). The Specification also discloses that the “control
`
`parameters” of soft-start control circuit 305 may be altered, either by
`
`software or hardware. Id. at 4:54–57. Controller 510 (see Figure 5) may
`
`utilize a processor that executes software to perform the logical decisions
`
`and generate transition signal 312 based on an algorithm. Id. at 5:56–58.
`
`Software, if used, may be stored in ROM or a different storage device to be
`
`read and then executed by the processor. Id. at 5:58–60.
`
`Soft-start control circuit 305 is coupled to motors 225 to allow soft-
`
`start control circuit 305 to apply a transition signal 312 to the motors.
`
`Id. at 5:27–30. Transition signal 312 operates to affect the angular velocity
`
`of the motors by altering the average voltage being applied to or drawn by
`
`the motors. Id. at 5:30–33.
`
`8
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`

`

`IPR2018-00038
`Patent 7,222,684 B2
`
`
`The transition signal may be a pulse width modulation signal having a
`
`duty cycle of approximately 20 percent and have a substantial linear increase
`
`to 100 percent. Id. at 8:38–40. Alternatively, a non-linear signal, such as an
`
`exponential signal, may be generated to account for the dynamics of the
`
`motors 225, other electro-mechanical components, and/or the toy vehicle.
`
`Id. at 8:40–44. The nonlinear signal may provide other benefits for the
`
`operator, such as a feeling of “a turbo boost or thrusters.” Id. at 8:44–46.
`
`Generation of the transition signal and application thereof may be performed
`
`simultaneously, as a single step. Id. at 8:47–50. This disclosed single step
`
`alternative, however, appears to eliminate the transitional nature of transition
`
`signal 312 and return the system to an on/off application of full power.
`
`D.
`
`Representative Claim
`
`Of the challenged claims, claims 1, 11, 22, and 32 are independent.
`
`Claim 1 is reproduced below:
`
`1. A method for controlling acceleration of a toy vehicle
`configured to be operated by a person, said method comprising:
`
`detecting a change in a throttle signal from a first level to
`a second level or from the second level to the first level, the
`throttle signal operable to induce motion via a motor operating
`as a drive mechanism of the toy vehicle in response to a throttle
`switch controlled by a person in physical contact with the toy
`vehicle, wherein the first level corresponds to the throttle signal
`produced when the person engages the throttle switch, and
`wherein the second level corresponds to the throttle signal
`produced when the person disengages the throttle switch;
`
`generating a transition signal based on the change in the
`throttle signal, the transition signal comprising at least one signal
`level intermediate to a third signal level corresponding to the first
`level and a fourth signal level corresponding to the second level,
`wherein a transition from the third signal level to the at least one
`intermediate signal level to the fourth signal level occurs over a
`
`9
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`

`IPR2018-00038
`Patent 7,222,684 B2
`
`
`significantly longer time period than a time period for the change
`in the throttle signal from the first level to the second level; and
`
`applying the transition signal to affect operation of the
`motor.
`
`Ex. 1001, 10:2–27.
`
`Claim 11 is directed to a “computer-readable medium.” Claim 22,
`
`like claim 1, is directed to a method for controlling acceleration of a toy,
`
`ride-on vehicle. Claim 32 is directed to a machine-readable medium storing
`
`instructions. Each independent claim recites in some fashion the basic steps
`
`or elements of detecting a change in a throttle signal; generating a transition
`
`signal based on the change in the throttle signal; and applying the transition
`
`signal to affect operation of a motor, all in the context of a toy, ride-on
`
`vehicle. Claims 22 and 32, unlike claims 1 and 11, recite specifically that
`
`the detected throttle signal is a “binary throttle signal.” See, e.g., id. at 12:7.
`
`II. ANALYSIS
`
`A.
`
`Claim Construction
`
`In an inter partes review, the Board gives claim terms in an unexpired
`
`patent their broadest reasonable interpretation in light of the specification of
`
`the patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed
`
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under that standard, a
`
`claim term generally is given its ordinary and customary meaning, as would
`
`be understood by one of ordinary skill in the art in the context of the entire
`
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`
`2007). The correct inquiry in giving a claim term its broadest reasonable
`
`interpretation in light of the specification is “an interpretation that
`
`corresponds with what and how the inventor describes his invention in the
`
`10
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`

`IPR2018-00038
`Patent 7,222,684 B2
`
`specification, i.e., an interpretation that is ‘consistent with the
`
`specification.’” In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir.
`
`2017) (citations omitted). The broadest reasonable interpretation differs
`
`from the “broadest possible interpretation.” Id.
`
`Proper claim construction requires interpretation of the entire claim in
`
`context, not a single element in isolation. Hockerson-Halberstadt, Inc. v.
`
`Converse Inc., 183 F.3d 1369, 1374 (Fed. Cir. 1999). While certain terms
`
`may be at the center of the claim construction debate, the context of the
`
`surrounding words of the claim also must be considered in determining the
`
`ordinary and customary meaning of those terms. ACTV, Inc. v. Walt Disney
`
`Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003).
`
`Only terms that are in controversy need to be construed expressly, and
`
`then only to the extent necessary to resolve the controversy. Vivid Techs.,
`
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`
`Petitioner asserts:
`
`To the extent that binary throttle signal does not have a readily
`apparent plain and ordinary meaning, it should be construed to
`mean “a throttle signal pertaining to a selection, choice, or
`condition that has two possible different values or states, e.g.,
`throttle in neutral position versus throttle not in neutral position;
`or throttle signal is produced versus throttle signal is not-
`produced.”
`
`Pet. 15 (citing Ex. 1011, 62, which is a dictionary definition of the word
`
`“binary”).
`
`Patent Owner asserts that a “binary throttle signal” should be
`
`construed to mean “a digital throttle signal that can have only two discreet
`
`levels.” Prelim. Resp. 20. Patent Owner states that “[t]his construction is
`
`consistent with the term’s ordinary meaning, and the ’684 patent’s
`
`11
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`

`

`IPR2018-00038
`Patent 7,222,684 B2
`
`specification.” Id. Patent Owner does not cite any evidence, however, to
`
`support its proposed claim construction. A generic reference to “the ’684
`
`patent’s specification” is not a citation of persuasive authority on this issue.4
`
`We note that our review of the ’684 patent finds that the word
`
`“binary” or the phrase “binary throttle signal” occurs only in the claims of
`
`the patent. It does not appear in the written description of the patent.
`
`We also note that the original claims, as filed, did not include any
`
`claim to a “binary throttle signal.” Thus, as filed, neither the claims nor the
`
`written description referred to a “binary throttle signal” or used the word
`
`“binary.” Based on the record before us, the first use of the word “binary” in
`
`the application was in an amendment submitted on March 18, 2005,
`
`responding to an Office Action mailed September 20, 2004. Ex. 1002, 227–
`
`235 (see, e.g., 229 (claim 9), 231 (claim 52), 232 (claim 232).
`
`We determine that we need not resolve the differences in the parties’
`
`positions regarding this phrase at this stage. This determination does not
`
`preclude the parties from arguing their proposed constructions of the claims
`
`during trial. Indeed, the parties are hereby given notice that claim
`
`construction, in general, is an issue to be addressed at trial. Claim
`
`construction will be determined at the close of all the evidence and after any
`
`hearing. The parties are expected to assert all their claim construction
`
`
`4 DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999) (“A brief
`must make all arguments accessible to the judges, rather than ask them to
`play archeologist with the record.”); see also Novartis AG v. Torrent
`Pharms., 853 F.3d 1316, 1326 n.2 (Fed. Cir. 2017) (explaining that a party
`failed to provide sufficient argument in support of its motion before the
`Board because the motion’s “superficial treatment amounts to little more
`than a request that the Board peruse the cited evidence and piece together a
`coherent argument on [the movant’s] behalf”).
`
`12
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`arguments and evidence in the Petition, Patent Owner’s Response,
`
`Petitioner’s Reply, or otherwise during trial, as permitted by our rules.
`
`Because claim terms generally are given their ordinary and customary
`
`meaning, as would be understood by one of ordinary skill in the art in the
`
`context of the entire disclosure, we consider the level of ordinary skill in the
`
`art as part of claim construction.
`
`B.
`
`Level of Skill in the Art
`
`The level of skill in the art is “a prism or lens” through which we view
`
`the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d
`
`1350, 1355 (Fed. Cir. 2001).
`
`Factors pertinent to a determination of the level of ordinary skill in the
`
`art include: (1) educational level of the inventor; (2) type of problems
`
`encountered in the art: (3) prior art solutions to those problems; (4) rapidity
`
`with which innovations are made; (5) sophistication of the technology, and
`
`(6) educational level of workers active in the field. Envtl. Designs, Ltd. v.
`
`Union Oil Co., 713 F.2d 693, 696–697 (Fed. Cir. 1983) (citing Orthopedic
`
`Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82
`
`(Fed.Cir.1983)). Not all such factors may be present in every case, and one
`
`or more of these or other factors may predominate in a particular case. Id.
`
`Moreover, these factors are not exhaustive but are merely a guide to
`
`determining the level of ordinary skill in the art. Daiichi Sankyo Co. Ltd,
`
`Inc. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007).
`
`In determining a level of ordinary skill, we also may look to the prior
`
`art, which may reflect an appropriate skill level. Okajima, 261 F.3d at 1355.
`
`Additionally, the Supreme Court informs us that “[a] person of ordinary skill
`
`13
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`

`IPR2018-00038
`Patent 7,222,684 B2
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`is also a person of ordinary creativity, not an automaton.” KSR Int’l v.
`
`Teleflex Inc., 550 U.S. 398, 421 (2007).
`
`Neither party presents a detailed evidentiary showing of factors
`
`typically considered in determining the level of ordinary skill.
`
`According to Petitioner, the relevant technology is “electric motor,
`
`battery-powered, ride-on or toy vehicles.” Pet. 24 (citing Ex. 1017 ¶ 19;
`
`Ex. 1001, 1:15–30). Patent Owner takes a different view. Patent Owner
`
`asserts that the relevant technology is “battery-powered ride-on toy
`
`vehicles.” Prelim. Resp. 45 (citing Ex. 1001, Abstract).
`
`The Specification emphasizes that the “the present invention generally
`
`relate[s] to toy vehicles that may be ridden by people.” Ex. 1001, 1:16–17.
`
`In describing related technology, the Specification refers to Figure 1,
`
`showing a “child” riding in a toy car. Id. at 1:21–23, 3:36–37. In describing
`
`the breadth of their disclosed invention, however, the inventors made clear
`
`that “[i]t should be understood that the principles of the present invention
`
`may not be limited to toy vehicles. Accordingly, the principles of the
`
`present invention could be applied to non-toy vehicles, such as golf carts or
`
`industrial vehicles.” Id. at 9:59–62 (emphasis added).
`
`Accordingly, for purposes of this decision, the relevant technology is
`
`not limited to “toy vehicles” in general, nor is it limited to “battery-powered
`
`ride-on toy vehicles.” For purposes of this Decision, the relevant technology
`
`is limited to motorized ride-on or ride-in vehicles including non-toy
`
`vehicles. For purposes of this Decision, for example, we regard Klimo
`
`(discussed below), directed to a motorized wheelchair, to be a non-toy
`
`vehicle or industrial vehicle.
`
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`
`
`Petitioner asserts that a person having ordinary skill in the art would
`
`have had at least a bachelor’s degree in electrical engineering, mechanical
`
`engineering, physics, or an equivalent degree and at least three years of
`
`experience designing and developing mechatronic systems5; or equivalent
`
`training, education, or work experience, such as an advanced degree in
`
`engineering or a related technical field. Pet. 24 (citing Ex. 1017 ¶ 21.).
`
`Dr. Sidman mentions the factors he considered (Ex. 1017 ¶ 20), but does not
`
`explain how these factors influenced his opinion on the level of ordinary
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`skill in the art (id. at ¶ 21).
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`Patent Owner disagrees with Petitioner’s proposed level of skill
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`because it includes experience with “mechatronic systems.” Prelim.
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`Resp. 45. Patent Owner also proposes that we modify slightly Petitioner’s
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`proposed level of skill to specifically include at least one year designing
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`mechanical and electrical systems for children’s battery-powered ride-on
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`vehicles. Id. at 46. In light of the statement in the Specification that the
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`disclosed invention is applicable to non-toy vehicles, such as golf carts or
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`industrial vehicles, we find Patent Owner’s modification too limiting, based
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`on the record before us.
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`We have not been directed to any evidence in the record concerning
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`the educational level of the inventors of the ’684 patent or the educational
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`level of workers active in the field.
`
`
`5 “Mechatronics” is defined as “[t]echnology combining electronics and
`mechanical engineering.” See, e.g.,
`https://en.oxforddictionaries.com/definition/mechatronics.
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`The prior art reflects a knowledge of electrical engineering,
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`mechanical engineering, physics, analog and digital signals, software, and
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`control systems.
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`Based on the evidence before us, for purposes of this Decision, we
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`find a person having ordinary skill in the art would have had a bachelor’s
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`degree in electrical engineering, mechanical engineering, physics, or an
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`equivalent degree and three years of experience designing and developing
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`mechatronic systems; or an equivalent balance of training, education, and
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`work experience.
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`Again, the parties are hereby given notice that the level of skill, in
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`general, is an issue to be addressed at trial. It will be determined at the close
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`of all the evidence and after any hearing. The parties are expected to assert
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`all their arguments and evidence on this issue in the Petition, Patent Owner’s
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`Response, Petitioner’s Reply, or otherwise during trial, as permitted by our
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`rules.
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`C.
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`Patentability of Claims 1–3, 5, 6, 9, 22–24, and 28
`in view of Bienz and Klimo
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`Section 103(a) forbids issuance of a patent when “the differences
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`between the subject matter sought to be patented and the prior art are such
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`that the subject matter as a whole would have been obvious at the time the
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`invention was made to a person having ordinary skill in the art to which said
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`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
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`(2007).
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`The question of obviousness is resolved on the basis of underlying
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`factual determinations, including: (1) the scope and content of the prior art;
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`(2) any differences between the claimed subject matter and the prior art;
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`Patent 7,222,684 B2
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`(3) the level of ordinary skill in the art; and (4) when available, evidence
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`such as commercial success, long-felt but unsolved needs, and failure of
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`others. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); see KSR, 550
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`U.S. at 407 (“While the sequence of these questions might be reordered in
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`any particular case, the [Graham] factors continue to define the inquiry that
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`controls.”). The Court in Graham explained that these factual inquiries
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`promote “uniformity and definiteness,” for “[w]hat is obvious is not a
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`question upon which there is likely to be uniformity of thought in every
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`given factual context.” Graham, 383 U.S. at 18.
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`The Supreme Court made clear that we apply “an expansive and
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`flexible approach” to the question of obviousness. KSR, 550 U.S. at 415.
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`Whether a patent claiming the combination of prior art elements would have
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`been obvious is determined by whether the improvement is more than the
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`predictable use of prior art elements according to their established functions.
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`Id. at 417. To reach this conclusion, however, it is not enough to show
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`merely that the prior art includes separate references covering each separate
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`limitation in a challenged claim. Unigene Labs., Inc. v. Apotex, Inc., 655
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`F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness additionally requires
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`that a person of ordinary skill at the time of the invention “would have
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`selected and combined those prior art elements in the normal course of
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`research and development to yield the claimed invention.” Id.
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`Moreover, in determining the differences between the prior art and the
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`claims, the question under 35 U.S.C. § 103 is not whether the differences
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`themselves would have been obvious, but whether the claimed invention as a
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`whole would have been obvious. Litton Indus. Prods., Inc. v. Solid State
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`Sys. Corp., 755 F. 2d 158, 164 (Fed. Cir. 1985) (“It is elementary that the
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`claimed invention must be considered as a whole in deciding the question of
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`obviousness.”) (citation omitted); see also Stratoflex, Inc. v. Aeroquip Corp.,
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`713 F.2d 1530, 1537 (Fed. Cir. 1983) (“[T]he question under 35 U.S.C.
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`§ 103 is not whether the differences themselves would have been obvious.
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`Consideration of differences, like each of the findings set forth in Graham,
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`is but an aid in reaching the ultimate determination of whether the claimed
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`invention as a whole would have been obvious.”) (citation omitted).
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`“A reference must be considered for everything it teaches by way of
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`technology and is not limited to the particular invention it is describing and
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`attempting to protect.” EWP Corp. v. Reliance Universal Inc., 755 F.2d 898,
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`907 (Fed. Cir. 1985).
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`As a factfinder, we also must be aware “of the distortion caused by
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`hindsight bias and must be cautious of arguments reliant upon ex post
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`reasoning.” KSR, 550 U.S. at 421. This does not deny us, however,
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`“recourse to common sense” or to that which the prior art teaches. Id.
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`Against this general background, we consider the references, other
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`evidence, and arguments on which the parties rely.
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`1. Scope and Content of the Prior Art
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`a. Overview of Bienz (Ex. 1003)
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`Bienz describes a BPRO in which the rear wheels are driven by DC
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`motors. Ex. 1003, 1:6–8. Bienz’s vehicle 10 includes body 12, wheels 14,
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`and seat 16. Id. at 3:38–39. Wheels 14 are each driven by a motor, one of
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`motors 20, 22, that are powered by a six or twelve-volt battery pack 24. Id.
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`at 3:39–42. Bienz’s vehicle also includes an adjustable speed control 30,
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`that permits the rider to select from among three speed configurations, and a
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`foot pedal switch. Id. at 3:45–50. Foot pedal switch 34 is:
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`the primary on/off control for the rider and is mounted to appear
`as a gas pedal. Switch 34 is simply an on/off switch and
`interrupts the current flow to stop the car. A direction control
`switch 36 is configured to switch the polarity of the voltage to
`the motors to provide a reverse for the vehicle.
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`Id. at 3:51–56. Petitioner recognizes, therefore, that Bienz does not describe
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`a soft-start circuit to ramp up or down the power delivery to its rear
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`wheels 14. See Pet. 41–43 (relying solely upon Klimo as describing the soft-
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`start aspects of the “control circuit” of claim 1).
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`b. Overview of Klimo (Ex. 1004)
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`Klimo is entitled “Electric Wheelchair with Improved Control
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`Circuit.” Ex. 1004, Title [54]. Klimo states that its speed control circuit has
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`“broader applications, such as controlling the speed of other motorized
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`patient care devices, electric vehicles, machine tool motors, and the like.”
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`Id. at 1:17–20. Klimo also discloses “a
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`speed control circuit for an electric
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`vehicle” that is powered by a “battery
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`pack” and “driven by . . . DC electric
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`motors.” Ex. 1004, 1:21–25, 2:37–38.
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`Figure 1 of Klimo, reproduced at right,
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`illustrates an exemplary e