UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`DYNACRAFT BSC, INC.,
`Petitioner
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`v.
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`MATTEL, INC.,
`Patent Owner.
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`Case IPR2018-00039
`Patent 7,950,978
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`Title: SYSTEM, APPARATUS AND METHOD FOR PROVIDING CONTROL
`OF A TOY VEHICLE
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`PATENT OWNER’S PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.107
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`

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`
`
`TABLE OF CONTENTS
`
`INTRODUCTION ............................................................................................... 1
`I.
`SUMMARY OF ARGUMENTS ..................................................................... 1
`II.
`III. CONTROLLING LEGAL STANDARDS ...................................................... 5
`A. STANDARDS FOR IPR INSTITUTION AND OBVIOUSNESS ................. 5
`IV. BRIEF OVERVIEW OF THE ’978 PATENT ................................................. 7
`A. ’978 Patent Specification .................................................................................. 7
`B. Prosecution History of the ’978 Patent ........................................................... 14
`C. Claim Construction ......................................................................................... 18
`1. Ordinary Meaning Support’s Mattel’s Construction .................................. 18
`V. PETITIONER’S PRIOR ART ........................................................................... 23
`A. One of Ordinary Skill Would Not Be Motivated to Combine Petitioner’s
`References ............................................................................................................. 23
`B. Bienz ................................................................................................................ 26
`C. Klimo ............................................................................................................... 29
`D. Ribbe ............................................................................................................... 41
`VI. PETITIONER’S ALLEGED GROUNDS FOR OBVIOUSNESS ................ 43
`A. Level of Ordinary Skill in the Art .................................................................. 43
`B. Motivation to Combine ................................................................................... 44
`C. Secondary Considerations of Nonobviousness .............................................. 47
`D. Petitioner’s Specific Grounds of Unpatentability .......................................... 48
`1. Ground 1: Petitioner’s Claim That Claims 1-3, 5, 8-10, 12-14, 21 and 24
`Are Obvious Based on the Combination of Bienz and Klimo Is Not Likely to
`Succeed .............................................................................................................. 48
`a. Neither Bienz Nor Klimo Disclose All of the Elements of Claim 1 ........ 49
`b. Dependent Claim 2 ................................................................................... 54
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`i
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`c. Dependent Claim 3 ................................................................................... 55
`d. Dependent Claims 5 and 8 ....................................................................... 57
`e. Dependent Claims 9-10 ............................................................................ 57
`f. Dependent Claim 12 ................................................................................. 58
`g. Dependent Claim 13 ................................................................................. 58
`h. Independent Claim 14 .............................................................................. 59
`i.
`Independent Claim 21 .............................................................................. 63
`j. Dependent Claim 24 ................................................................................. 65
`2. Ground 2: Petitioner’s Argument That Claim 6 Is Obvious Over Bienz and
`Klimo in Further View of Ribbe Is Also Not Likely to Succeed ...................... 65
`VII. CONCLUSION .............................................................................................. 68
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`ii
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Black & Decker, Inc. v. Positec USA, Inc.,
`646 Fed.Appx. 1019 (Fed. Cir. 2016) ..........................................................passim
`
`Cheese Sys. Inc. v. Tetra Pak Cheese and Powder Sys., Inc.,
`725 F.2d 1341 (Fed. Cir. 2013) .......................................................................... 24
`
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
`567 F.3d 1314 (Fed. Cir. 2009) .................................................................... 47, 48
`
`Free-Flow Packaging Int’l v Automated Packaging Sys.,
`IPR2016-00350, Paper 7 at 11-13 (June 27, 2016) .................................. 3, 25, 55
`
`Graham v. John Deere Co. of Kansas City,
`383 U.S. 1 (1966) .................................................................................................. 6
`
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) .............................................................................................. 6
`
`Nautilus Hyosung, Inc. v. Diebold, Inc.,
`IPR2016-00633, Paper 9 at 21-22 (Aug. 22, 2016) ............................................ 23
`
`In re Nuvasive, Inc.,
`842 F.3d 1376 (Fed. Cir. 2016) ...................................................................... 3, 45
`
`SAS Inst., Inc. v. ComplementSoft, LLC,
`IPR2013-00581, Paper 15 at 12 (PTAB Dec. 30, 2013) ...................................... 6
`
`Tietex Int’l, Ltd. v. Precision Fabrics Group, Inc.,
`IPR2015-01671, Paper 7 at 14 (PTAB February 11, 2016) ............................... 24
`
`Vizio, Inc. v. Int’l Trade Comm’n,
`605 F.3d 1330 (Fed. Cir. 2010) ............................................................................ 5
`
`
`
`
`
`
`
`iii
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`TABLE OF EXHIBITS
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`Exhibit #
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`Exhibit Description
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`2001
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`2002
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`2003
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`2004
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`2005
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`2006
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`2007
`
`2008
`
`2009
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`Declaration of Jeff Reynolds
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`Declaration of Robert Mimlitch
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`Declaration of Peter vom Scheidt
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`U.S. Patent No. 6,287,167 to Kondo
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`U.S. Patent No. 5,056,613 to Porter
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`U.S. Patent No. 5,349,276 to Mezzatesta
`
`The Merriam-Webster Dictionary, 1998, p. 51
`
`The American Heritage Dictionary, Second College Ed., 1985, pp.
`106, 396, 970
`
`“Difference Between Analog and Digital Signals,” available at
`https://techdifferences.com/difference-between-analog-and-digital-
`signal.html
`
`2010
`
`Declaration of Daria DeLizio
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`iv
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`I.
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`INTRODUCTION
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`Patent Owner Mattel Inc. (“Mattel”) submits this preliminary response to the
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`Petition (Paper 1) by Dynacraft BSC, Inc. (“Dynacraft” or “Petitioner”) requesting
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`inter partes review (“IPR”) and the cancelling of claims 1-3, 5, 6, 8-10, 12-14, 21
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`and 24 (“the challenged claims”) of U.S. Patent No. 7,950,978 (“’978 patent,” Ex.
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`1001). The Patent Trial and Appeal Board (“Board”) should deny the Petition and
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`decline to institute an IPR because Petitioner has failed to establish a reasonable
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`likelihood that it will prevail on its obviousness challenge for any of the challenged
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`claims.
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`II.
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`SUMMARY OF ARGUMENTS
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`As with its challenge to the parent of the ’978 patent – U.S. Patent No.
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`7,222,684 (’684 patent), IPR2018-00038 – Petitioner’s obviousness arguments are
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`based largely on its retained expert’s hindsight-heavy analysis. Petitioner’s expert
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`again simply concludes (rather than proves) that there is a motivation to combine
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`the relied-upon references, despite the references themselves teaching otherwise.
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`In addition to contradicting the teachings of the references, Petitioner also
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`misstates the scope of the challenged claims, and ultimately ends up largely
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`rehashing issues that were addressed at length during prosecution.
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`In summary, Dynacraft’s Petition should be denied for at least the following
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`reasons:
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`1
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`(1) There is no motivation to combine the Petition’s references; indeed, they
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`instruct on their face that they are not to be combined in the way that Petitioner
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`proposes. Most notably, Petitioner’s primary “new” reference, U.S. Patent No.
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`4,634,941 to Klimo (“Klimo”), explicitly teaches that its drive system must be
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`executed with a proportional, analog, joystick control – and that it should not be
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`executed with two-state, on-off (i.e., binary) switches. Yet this is precisely what
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`Petitioner does in combining it with the two-state, on-off throttle of U.S. Patent
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`No. 5,859,509 to Bienz (“Bienz”) to arrive at the claimed invention. Petitioner
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`and its expert improperly cherry-pick from the prior art, arguing without proof that
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`all “mechatronic systems” are essentially interchangeable. The references
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`themselves, however, teach just the opposite.
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`Petitioner never establishes why one of ordinary skill in the art at the time of
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`the invention would make the combinations it proposes. Instead, Petitioner and its
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`expert offer conclusory, hindsight-based statements of what a person of ordinary
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`skill “could have done” or “would have known” simply because the references are
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`allegedly “analogous” to the same general problem. Ex. 1017, at ¶ 83 (“A person
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`of skill in the art would have appreciated that the electronic speed controls taught
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`in Klimo could be used”), ¶ 84 (“[I]t was well within the skill of one of the art…to
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`apply the teachings of Klimo to…Bienz”), ¶ 85 (“[A]s a matter of design choice, a
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`person of skill in the art could in my opinion incorporate the speed control circuit
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`2
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`disclosed in Klimo into Bienz”) (emphases added). These sorts of vague
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`“motivations” have been found insufficient to make an obviousness case. Black &
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`Decker, Inc. v. Positec USA, Inc., 646 Fed.Appx. 1019, 1027 (Fed. Cir. 2016)
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`(what one of skill in the art “would have known” or “could have” done are
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`insufficient to prove motivation to combine); In re Nuvasive, Inc., 842 F.3d 1376,
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`1383 (Fed. Cir. 2016) (conclusory statements alone are insufficient); Free-Flow
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`Packaging Int’l v Automated Packaging Sys., IPR2016-00350, Paper 7 at 11-13
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`(June 27, 2016) (motivation is not shown by arguing that the references “directed
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`to the same problem” and thus one of skill would “look to both references to obtain
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`advantages of the other”).
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`Moreover, besides being legally insufficient, the argument that the Klimo
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`and Bienz references deal with an analogous problem is also factually incorrect.
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`Klimo, for example, relates to a wheelchair with an analog, proportional joystick
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`controller, and the extensive circuitry necessary to correlate the variable joystick
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`position to actual motor speed, precise turning radius and changing terrain
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`conditions. This circuitry, while critical to the Klimo wheelchair, has little to do
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`with a child’s battery-powered ride-on (“BPRO”) toy like that of the ’978 patent –
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`wheelchairs such as Klimo cost consumers several thousand dollars, while a BPRO
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`cannot exceed a few hundred. And, the portion of Klimo that Petitioner argues
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`could be excised from the wheelchair and added to Bienz is redundant to the art
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`3
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`already considered; the examiner originally determined that the challenged claims
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`were patentable over prior art that employed analog, proportional controls and a
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`technique known as signal pulse width modulation to match a variable selected
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`speed with the actual motor output. For all of these reasons the Petition fails to
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`show the references would be combined by a person of ordinary skill in the art as
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`suggested by Petitioner.
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`(2) Even if the references were readily combinable, they do not yield the
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`claimed invention. Petitioner misstates the noteworthy differences between the
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`BPRO toy claimed in the ’978 patent and references such as Klimo. For instance,
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`Petitioner fundamentally fails to recognize that the claims of the ’978 patent relate
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`to a two-level throttle system. Independent claim 1, for instance, requires a throttle
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`signal that moves between a first and second level, whereas independent claims 14
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`and 21 require a “binary throttle signal.” Petitioner misconstrues these basic
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`limitations. The claimed two-level signal or “binary throttle signal” by its ordinary
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`meaning and according to the ’978 patent specification requires a type of signal
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`that has only two discreet levels. However, Petitioner and its expert offer a
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`construction that eliminates the fundamental difference between analog and digital
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`signals, effectively making any signal potentially a “binary signal.” An analog
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`signal like that of Klimo is not a two-level signal or a binary signal, such as is
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`claimed in the ’978 patent.
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`4
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`(3) Finally, Petitioner fails to address various objective indicators of
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`nonobviousness, which in this case strongly undermine Petitioner’s hindsight-
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`based arguments. When designing the infringing BPRO that prompted this
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`Petition, Petitioner did not make any of the sorts of “design choices” that it now
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`claims “could have” been done. Instead, Petitioner simply copied an existing,
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`patented Mattel electronic speed-control circuit board. This copying created a
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`ride-on platform that has been a major commercial success. Finally, there was
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`both a long-felt need for the patented innovation, as well as prior failures even by
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`Mattel to design an acceptable speed-control system. As the ’978 patent itself
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`explains: solutions had long “been unavailable due to large part to pricing and
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`technical concerns.” Ex. 1001, at 2:10-17. Thus, even if Petitioner were likely to
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`succeed in making a prima facie case of obviousness (which it is not), any such
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`case would be effectively rebutted by these secondary factors.
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`III. CONTROLLING LEGAL STANDARDS
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`A. STANDARDS FOR IPR INSTITUTION AND OBVIOUSNESS
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`A petitioner making an obviousness challenge bears the burden to show
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`where each claimed limitation is taught in the prior art. Vizio, Inc. v. Int’l Trade
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`Comm’n, 605 F.3d 1330, 1342–43 (Fed. Cir. 2010). If a petitioner asserts that a
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`combination of prior art renders a claim unpatentable, it must also “set forth
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`sufficient articulated reasoning with rational underpinning to support its proposed
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`5
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`obviousness ground.” SAS Inst., Inc. v. ComplementSoft, LLC, IPR2013-00581,
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`Paper 15 at 12 (PTAB Dec. 30, 2013) (citing KSR Int’l Co. v. Teleflex, Inc., 550
`
`U.S. 398, 418 (2007)).
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`As Petitioner’s request is based on obviousness, its positions on the prior art
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`and ’978 patent must be considered within the context of the controlling standard
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`set forth in Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966). Under
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`Graham, the obviousness determination depends on the following considerations:
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`(1) the scope and content of the prior art; (2) the differences between the claimed
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`invention and the prior art; and (3) the level of ordinary skill in the art. Graham,
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`383 U.S. at 17. In addition to these three factors, there are additional objective
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`“secondary considerations” that can also serve as evidence of nonobviousness.
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`These “secondary considerations” include commercial success, long felt but
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`unsolved needs, copying, and failure of others. Id. at 17-18.
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`
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`Here, Petitioner has failed to make the necessary showing that it is likely to
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`succeed in its obviousness challenge.
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`6
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`IV. BRIEF OVERVIEW OF THE ’978 PATENT
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`A. ’978 Patent Specification
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`The ’978 patent, entitled “System, Apparatus, and Method for Providing
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`Control of a Toy Vehicle,” stems from a continuation of patent application U.S.
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`Ser. No. 10/079,795 (the application that became U.S. Patent No. 7,222,684). The
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`’684 patent, which is the subject of Petitioner’s co-pending IPR request Case
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`IPR2018-00038, stems from a provisional patent filed on February 21, 2001. Ex.
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`1001.
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`As stated in the Abstract, the ’978 patent aims at “providing a soft-start for a
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`toy vehicle configured to be operated by person,” specifically a child. Id. at
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`Abstract. Mattel, as a long-time leader in the BPRO space through its Fisher-Price
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`Power Wheels brand, is familiar with many of the unique considerations specific to
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`these vehicles, and the ’978 patent describes several of them:
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`Conventional control systems for the toy vehicles 100 have typically been
`limited to applying a direct current (DC) from a DC battery to a motor upon
`pressing or otherwise operating a “gas” pedal or other throttle mechanism.
`This type of control, however, basically operates as an on/off switch. In
`other words, when the pedal is pressed, the motor is applied a voltage for
`full power (i.e. maximum angular velocity). One reason for such a simplistic
`design is cost reasons.
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`Id. at 1:27-35.
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`
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`7
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`Figure 2 of the ’978 patent provides a conceptual schematic for an
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`exemplary conventional BPRO drive system:
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`
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`Id. at Fig. 2.
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`In light of the on/off nature of the foot pedal, these vehicles would also stop
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`suddenly because there was a need for a foolproof way to stop the engine in case
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`the child removed his foot from the throttle and attempted to quickly get out of the
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`vehicle before it stopped:
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`Additionally, the foot pedal switch 210 operates as a failsafe device that
`prevents power from incidentally or accidentally being applied to the motors
`225 for safety purposes. To operate as a failsafe device, the foot pedal switch
`210 is a “make or break” switch with a spring return to OFF as understood in
`the art.
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`Id. at 1:47-52.
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`These direct drive systems were all but mandated in part by cost concerns
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`because parents will only pay so much for a child’s BPRO, usually a few hundred
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`
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`8
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`dollars at most. BPROs are already considered rather expensive for a child’s toy
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`due to their size, so consumers and manufacturers are reticent to add any additional
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`cost that would render the BPRO too expensive for either manufacture or ultimate
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`purchase. Partly in light of these concerns, the only mechanism that controlled
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`speed in these systems was most commonly the inclusion of a high speed mode
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`and low speed mode switch (call-out 220 in Fig. 2 above). These switches,
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`however, just capped the top speed for each particular mode – low speed for
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`younger or learning children, high speed for older, more experienced children – but
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`the motor would still reach that selected top speed almost instantaneously upon the
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`child stepping on the throttle switch.
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`Thus, even with the inclusion of a separate, hand-operated high/low switch,
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`conventional BPRO drive systems still presented several challenges due to the
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`practically instantaneous revving and stopping of the motors that turned the
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`wheels. As the ’978 patent explains: “[t]hese problems may include (i) excessive
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`acceleration, (ii) jerk, (iii) safety (e.g., controlling and flipping the vehicle at
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`startup), and (iv) wearing of the mechanical components of the drive train for the
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`toy vehicle 100.” Id. at 2:6-10.
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`Balancing these performance and safety concerns with the need to make
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`drive systems that are both technically acceptable, durable and cost effective had
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`long challenged BPRO manufacturers like Mattel, and there was a long-felt need in
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`9
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`the industry to find an acceptable solution to this problem. Ex. 2001, at ¶ 4. As
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`the ’978 patent specifically points out:
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`“While each of these problems have existed in the toy vehicles 100 for a
`long period of time, the toy industry and makers of toy vehicles 100 are very
`cost sensitive due to consumer pricing demands and production costs.
`Solutions to these problems have been unavailable due in large part to
`pricing and technical concerns of toy manufacturers for the toy vehicles
`100.”
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`Id. at 2:10-17.
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`It was in the face of these concerns and the prior art’s limitations that the
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`’978 patent arose. After multiple failures, the sudden stop/start nature of these
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`vehicles was finally addressed in the ’978 patent with the addition of a unique soft-
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`start control circuit. Ex. 2001, at ¶ 5. This circuit allowed BPRO manufacturers to
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`address these difficult issues within the acceptable parameters of the direct drive
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`system. This development not only made that system perform better and safer, but
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`did so while balancing the difficult technical and cost challenges that doomed prior
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`efforts. Ex. 1001, at 2:55-67. In place of a costly, ground-up redesign, or the
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`addition of proportional analog controls that BPRO manufacturers had long found
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`unacceptable, the ’978 patent set forth as follows:
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`A soft-start circuit may utilize a processor for receiving signals from the
`conventional control system and applying a transition signal such that the
`motor(s) are not excessively accelerated. The transition signal is variable
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`
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`10
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`

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`such that full power is not substantially instantaneously applied to the motor.
`In other words, the transition signal causes the motor to be ramped from no
`power to full power.
`
`
`* * * *
`FIG. 3 is an exemplary block diagram 300 including the conventional
`control system 200 having a soft-start control circuit 305 integrated
`therewith.
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`
`
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`Id. at 4:4-24, and Fig. 3 (annotated).
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`As shown in Figure 3, soft-start control circuit 305 detects a change in the
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`throttle signal from the first level to the second level, and creates transition signal
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`312 to slow the time over which the corresponding motors are transitioned from
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`their first speed to the second speed. Transition signal 312 can be a pulse-width
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`modulated signal, as the ’978 patent describes. Id. at 5:19-28. Pulse width
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`modulation is a technique by which a signal change is gradually applied by
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`
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`11
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`

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`“pulsing” the signal, first in very short bursts and then over gradually increasing
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`pulses, to delay the full effect of the signal’s change.
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`The addition of this particular soft-start control circuit allowed BPRO
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`manufacturers to implement specific, computer-based algorithms that could
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`determine exactly how gradually to increase the BPRO’s motor speed to allow
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`optimal performance and ensure safety. As explained in the ’978 patent’s
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`specification:
`
`The parameters, which are exemplary, of the algorithm may be as follows:
`
`
`ramp_time =1.0 seconds
`initial_ramp =20 percent duty cycle
`shift_delay =400 msec
`off_time_max =125 msec
`on_time_max =125 msec
`
`FIG. 8A is an exemplary set of graphs 800 a that shows the response of an
`embodiment of the soft-start control circuit 305 to a change of input
`conditions provided by the operator 110 of the toy vehicle 100. Graph 8A(a)
`shows the conditioned input signal 710 transition at time T1 due to the pedal
`being depressed by the operator 110, and graph 8A(b) shows that the
`forward/reverse switch 215 is not transitioned. Graph 8A(c) shows an output
`signal 805, which is indicative of the transition signal 312 having a duty
`cycle ranging from about 20 to 100 percent, that ramps up over a one second
`time duration (i.e., T1 to T1+1.0 second) based on the depression of the pedal
`at time T1.
`
`
`
`12
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`

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`First signal level
`
`Second
`signal
`level
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`
`
`Id. at 7:24-42, and Fig. 8A (annotated).
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`As these portions of the specification show, the binary (i.e., on/off) throttle
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`signal 710 goes from a first level (off, pedal not depressed) to a distinct second
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`level (on, pedal depressed). Under conventional BPRO drive systems, the motors
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`would reach full speed almost immediately at T1 when the signal changes, causing
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`the vehicle to either jerk forward or the wheels to slip if traction was insufficient.
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`
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`13
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`However, as Figure 8A(c) shows, the addition of the claimed soft-start control
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`circuit allowed the change in the signal level to be detected by the circuit, and the
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`motor in turn to be ramped up over a longer period of time to only reach top speed
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`at T1+1.0. This allowed for a more gradual and gentle acceleration of the BPRO.
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`To accomplish this without the ’978 patent, conventional drive trains would
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`have needed to be completely redesigned, likely with a technical complexity and
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`associated cost that would not have been acceptable to manufacturers or
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`consumers. Ex. 2002, at ¶¶ 9-10, 12. Moreover, such redesign efforts would not
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`have likely succeeded. Ex. 2001, at ¶¶ 5-6. This fact is evidenced by Petitioner’s
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`decision to simply copy Mattel’s patented soft-start circuitry, rather than taking on
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`the much more costly and unpredictable challenge of redesigning its BPRO drive
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`system to incorporate, e.g., the sorts of complicated proportional control systems
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`that the Petition now relies on. Ex. 2003, at ¶¶ 4-6.
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`B. Prosecution History of the ’978 Patent
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`Petitioner’s obviousness case is based largely on its expert’s opinion that a
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`“‘soft-start control circuit’ [was] known and disclosed in the prior art,” including
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`the use of signal pulse-width modulation in such a circuit. Paper 1, at 7; see also
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`Ex. 1017, at ¶ 50. This position, however, misses the mark. As explained with
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`respect to the prosecution of the parent ’684 patent, as well as the prosecution of
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`the ’978 patent, the claims of these patents were already considered – and allowed
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`
`
`14
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`over – pulse-width-modulation-based references that were similar to (if not
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`arguably stronger than) Petitioner’s prior art.
`
`In the initial substantive non-final office action during prosecution of the
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`’978 patent, the Examiner rejected the claims in part over U.S. Patent No.
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`6,287,167 to Kondo (“Kondo”). Ex. 1002, at 126-28. Kondo was also raised in in
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`the prosecution of the ’684 patent, and relates to a remote controlled vehicle that
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`utilized a proportional, analog controller and pulse width modulation to increase
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`and decrease the motor speed. Ex. 2004, at Abstract (“The invention relates to a
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`speed controller able to change a pulse frequency and a pulse width of a pulse
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`signal to control a driving motor.”). Kondo disclosed a proportional, rotatable dial
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`on the remote control that the user could open and close even slightly to increase or
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`decrease the vehicle’s speed as needed, with pulse width modulation being used to
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`match that proportional input with the toy vehicle’s actual motor speed. As
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`explained in Kondo: “when the car speed is lowered when the car curves, a pulse
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`width PW of the pulse signal is lessened[,] …when the speed of the car is raised to
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`run the straight course, its pulse width PW…is enlarged, to raise the revolution
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`number of the driving motor time.” Id. at 1:18-25. The continuously changeable
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`motor speed allowed the remote controlled vehicle described therein to “run in
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`response to the states of the course.” Id. at 5:30-31.
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`Id. at Fig. 1.
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`Similar to the parent ’684 patent’s prosecution, Kondo was also combined
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`with U.S. Patent No. 5,056,613 to Porter (“Porter”) because that reference
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`mentioned angular velocities. Ex. 1002, at 128-29; see also Ex. 2005, at 1:22-40.
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`In response, it was noted to the Examiner that the prior art references did not
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`disclose a change in throttle signal from a first level to the second level, and a
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`transition signal that changes from a corresponding third and fourth levels over a
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`significantly longer period than the throttle signal change. Ex. 1002, at 154-56.
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`Certain claims were amended to make this distinction clear, while other new
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`claims were added that included the limitation that the claimed throttle signal was a
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`“binary throttle signal.” Ex. 1002, at 145-51.
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`Upon the allowance of the ’684 patent over pulse width modulation related
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`art such as Kondo, U.S. Patent Nos. 5,349,276 (“Mezzatesta,” Ex. 2006) and
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`5,994,853 (“Ribbe,” Ex. 1005), the Examiner issued a double-patenting rejection in
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`the ’978 case.1 Ex. 1002, at 164-67. This rejection was overcome by a terminal
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`disclaimer. Id. at 190-91.
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`A review of the prosecution history of the ’978 patent and parent ’684 patent
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`– the prosecution history of which is fully addressed in Mattel’s preliminary
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`response in IPR2018-00038 – shows that the issue of pulse width modulation being
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`used to ramp up and ramp down motor speed in response to proportional, analog
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`controllers was considered extensively with respect to the challenged claims.
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`Petitioner now makes essentially the same, previously-rejected argument by
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`relying on the analog, proportional controls in Klimo. The challenged claims were
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`patentable over these sorts of controls, and Petitioner has not shown why it is likely
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`to succeed in making this same argument again. This is particularly the case
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`because it is relying on a reference to a wheelchair, which itself would not readily
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`suggest itself to a BPRO toy designer, absent considerable and improper hindsight.
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`1 In essence, the control system of Mezzatesta sought to match actual speed with a variable
`desired speed, and again employed pulse width modulation – much like Klimo. Ex. 2006, at
`1:45-56. Ribbe, which Petitioner relies on in part for its second obviousness ground for claim 6,
`relates to a proportional remote-controlled vehicle like Kondo.
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`C. Claim Construction
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`The Petition misconstrues the term “binary” in the “binary throttle signal”
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`limitation of certain challenged claims, fundamentally failing to acknowledge the
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`two-level nature of the claimed throttle signal. As explained below, this
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`construction should be rejected, and Petitioner’s obviousness case with it. At root,
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`Petitioner’s construction ignores the basic difference between analog and
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`digital/binary signals. As explained below, it is fundamental that a binary signal is
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`a digital signal that has only two possible values. See Ex. 2007, at 51; Ex. 2008, at
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`396. Yet, Petitioner offers a construction that conveniently allows the analog
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`signals in its references to somehow qualify as “binary” signals.
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`More specifically, Petitioner states that the term should mean that the signal
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`“has two possible different values or states.” Paper 1, at 15 (emphasis added).
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`Petitioner applies this construction to allow for the argument that almost any
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`signal, analog or digital, could be “binary” because one could arbitrarily select two
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`“possible” states from within any signal’s full spectrum of possible levels, thereby
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`making it a binary signal. This result cannot be correct.
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`Rather, in this case “binary throttle signal” should be construed to mean “a
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`digital throttle signal that can have only two discreet levels.” This construction is
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`consistent with the term’s ordinary meaning, and the ’978 patent’s specification.
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`1. Ordinary Meaning Support’s Mattel’s Construction
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`The ordinary meaning of “binary” in the mathematical and electrical fields
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`specifically requires that only two possible states exist. See Ex. 2007, at 51
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`(“relating to, being, or belonging to a system of numbers having 2 at its base <the
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`~ digits 0 and 1>[,]” or “involving a choice between or condition of two
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`alternatives only (as on-off, yes-no)” (emphasis added). This is why the “binary
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`code” refers to the basic system of 0’s and 1’s that is used in digital computing.
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`Ex. 2008, at 396 (“digital computer[:] n. A computer that performs operations
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`with quantities represented as digits, usually in the binary system.”).
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`The IBM Dictionary of Computing that Petitioner relies on only further
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`supports Mattel’s proposed construction. That reference, e.g., defines “binary
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`code” as “a code that makes use of exactly two distinct characters, usually 0 and
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`1[.]” Ex. 1011, at 62 (emphasis added). It also defines “binary character” as
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`“either of the characters of a binary character set; for example, T (true) or F (false),
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`Y (yes) or N (no)[;]” and defines “binary character set” as “a character set that
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`consists of two characters.” Id. (emphases added). Petitioner seizes on word
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`“possible” in one of these several definitions to make it seem that any signal that
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`can exist at two “possible” values (among other values) is a “binary” signal,
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`including prior art analog signals that exist at variable, constantly changing levels.
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`But, it is a basic premise of signal processing that a binary signal is a digital
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`(discreet value) signal that only has two possible levels in total. Ex. 2008, at 396.
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`These binary signals differ from analog signals because analog signals do not exist
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`at discreet values, but rather continuously change over time. Id. at 106 (“analog
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`d