Paper No. 1
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`DYNACRAFT BSC, INC.,
`Petitioner,
`
`v.
`
`MATTEL, INC.,
`Patent Owner.
`
`
`Case IPR2018-00039
`Patent 7,950,978
`
`
`PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 7,950,978
`
`

`

`TABLE OF CONTENTS
`
`Page No.
`
`
`
`TABLE OF CONTENTS ........................................................................................... i 
`TABLE OF AUTHORITIES ................................................................................... iii 
`LIST OF EXHIBITS ................................................................................................ iv 
`I.
`INTRODUCTION ........................................................................................... 1 
` 
`  MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1) .......................... 1 II.
`
`A.  Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) ................................. 1 
`B.  Related Matters Under 37 C.F.R. § 42.8(b)(2) ........................................... 1 
`C.  Lead and Back-Up Counsel and Service Information Under
`37 C.F.R. § 42.8(b)(3), (4).......................................................................... 2 
`  GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(a) ..................... 2 III.
`
`  THE ’978 PATENT ......................................................................................... 2 
`IV.
`A.  Subject Matter of the ’978 Patent ............................................................... 3 
`B.  Prosecution History of the ’978 Patent ....................................................... 8 
`C.  The Challenged Claims ............................................................................ 11 
`D.  How the Challenged Claims Are to Be Construed ................................... 11 
`THE RELEVANT PRIOR ART ................................................................... 12 
`A.  Bienz (Ex. 1003) ....................................................................................... 13 
`B.  Klimo (Ex. 1004) ...................................................................................... 15 
`C.  Ribbe (Ex. 1005) ...................................................................................... 19 
`VI.
`  LEVEL OF ORDINARY SKILL IN THE ART ........................................... 20 
`
`  GROUNDS OF UNPATENTABILITY ........................................................ 20 VII.
`A.  Summary of Grounds ............................................................................... 21 
`B.  Specific Grounds of Unpatentability of the Challenged
`Claims ....................................................................................................... 21 
`1.  Ground 1: Bienz and Klimo Render Obvious Claims 1-3,
`5, 8-10, 12-14, 21, and 24. .................................................................. 21 
`a.  Independent Claim 1 ...................................................................... 21 
`b.  Dependent Claim 2 ......................................................................... 43 
`c.  Dependent Claim 3 ......................................................................... 44 
`
`V.
`
` 
`
`

`

`TABLE OF CONTENTS
`
`Page No.
`
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`d.  Dependent Claim 5 ......................................................................... 45 
`e.  Dependent Claim 8 ......................................................................... 46 
`f.  Dependent Claim 9 ......................................................................... 47 
`g.  Dependent Claim 10 ....................................................................... 48 
`h.  Dependent Claim 12 ....................................................................... 49 
`i.  Dependent Claim 13 ....................................................................... 52 
`j.  Independent Claim 14 .................................................................... 54 
`k.  Independent Claim 21 .................................................................... 56 
`l.  Dependent Claim 24 ....................................................................... 58 
`2.  Ground 2: Bienz, Klimo, and Ribbe Render Obvious
`Claim 6. ............................................................................................... 60 
`a.  Dependent Claim 6 ......................................................................... 60 
`  PAYMENT OF FEES UNDER 37 C.F.R. § 42.103 ..................................... 63 VIII.
`
`  CONCLUSION .............................................................................................. 63 
`IX.
`
`
`ii
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`

`

`TABLE OF AUTHORITIES
`
`
`CASES
`Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131 (2016) ........................................................................................ 11
`
`Page(s)
`
`In re Bigio,
`381 F.3d 1320 (Fed. Cir. 2004) .......................................................................... 13
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) .......................................................... 11
`
`STATUTES
`
`35 U.S.C. § 102(b) ....................................................................................... 13, 15, 19
`
`35 U.S.C. § 102(e) ....................................................................................... 13, 15, 19
`
`35 U.S.C. § 103 .......................................................................................................... 1
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.6(e) ..................................................................................................... 2
`
`37 C.F.R. § 42.8(a)(1) ................................................................................................ 1
`
`37 C.F.R. § 42.8(b)(1) ................................................................................................ 1
`
`37 C.F.R. § 42.8(b)(2) ................................................................................................ 1
`
`37 C.F.R. § 42.8(b)(3) ................................................................................................ 2
`
`37 C.F.R. § 42.8(b)(4) ................................................................................................ 2
`
`37 C.F.R. § 42.15(a) ................................................................................................ 63
`
`37 C.F.R. § 42.100(b) .............................................................................................. 11
`
`37 C.F.R. § 42.103 ................................................................................................... 63
`
`37 C.F.R. § 42.104(a) ................................................................................................. 2
`
`
`
`iii
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`

`

`
`
`LIST OF EXHIBITS
`
`Exhibit 1001 - U.S. Patent No. 7,950,978
`
`Exhibit 1002 - File History of U.S. Patent No. 7,950,978
`
`Exhibit 1003 - U.S. Patent No. 5,859,509 (“Bienz”)
`
`Exhibit 1004 - U.S. Patent No. 4,634,941 (“Klimo”)
`
`Exhibit 1005 - U.S. Patent No. 5,994,853 (“Ribbe”)
`
`Exhibit 1006 - Radio Engineering (excerpted), Third Edition, Terman, McGraw-
`Hill Book Company, 1947
`
`Exhibit 1007 - DC Motors, Speed Controls, Servo Systems (excerpted), Third
`Edition, Electro-Craft Corporation, 1975
`
`Exhibit 1008 - Encyclopedia of Electronic Circuits, Volume 2 (excerpted), First
`Edition, Graf, TAB Books, 1988
`
`Exhibit 1009 - Power MOSFET Transistor Data (excerpted), Third Edition,
`Motorola, Inc., 1988
`
`Exhibit 1010 - Power IC’s Databook (excerpted), 1993 Edition, National
`Semiconductor Corporation, 1993
`
`Exhibit 1011 - IBM Dictionary of Computing (excerpted), 10th Edition, August
`1993
`
`Exhibit 1012 - LinkedIn Profile of David A. Norman
`
`Exhibit 1013 - LinkedIn Profile of Robert H. Mimlitch III
`
`Exhibit 1014 - LinkedIn Profile of Richard Torrance
`
`Exhibit 1015 - U.S. Patent No. 7,222,684
`
`Exhibit 1016 - File History of U.S. Patent No. 7,222,684
`
`Exhibit 1017 - Declaration of Dr. Michael D. Sidman (“Sidman Decl.”)
`
`Exhibit 1018 - Curriculum Vitae of Dr. Michael D. Sidman
`
`iv
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`

`

`
`
`
`I.
`
`INTRODUCTION
`
`The Patent Trial and Appeal Board should cancel claims 1-3, 5, 6, 8-10, 12-
`
`14, 21, and 24 (“the challenged claims”) of U.S. Patent No. 7,950,978 (“’978
`
`patent” or “Exhibit (‘Ex.’) 1001”) because they are unpatentable as obvious under
`
`35 U.S.C. § 103. The challenged claims recite an electric ride-on vehicle for a
`
`person.
`
` MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1)
`II.
`
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`
`Petitioner Dynacraft BSC, Inc. certifies that the real party-in-interest is
`
`Dynacraft BSC, Inc.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`
`Mattel, Inc. (“Mattel”) and its alleged wholly-owned subsidiary and
`
`exclusive licensee, Fisher-Price, Inc., asserted the ’978 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. 4:17-cv-03745-PJH.
`
`1
`
`

`

`
`
`C. Lead and Back-Up Counsel and Service Information Under
`37 C.F.R. § 42.8(b)(3), (4)
`
`Lead counsel for Petitioner is Larry L. Saret, Reg. No. 27,674,
`
`llsaret@michaelbest.com. Back-up counsel for Petitioner are Arthur Gollwitzer
`
`III, agollwitzer@michaelbest.com (motion for pro hac vice admission to be filed
`
`after authorization is granted), and Rachel N. Bach, Reg. No. 76,201,
`
`rnbach@michaelbest.com.
`
`Counsel’s mailing address is Michael Best & Friedrich LLP, River Point,
`
`444 West Lake Street, Suite 3200, Chicago, Illinois 60606; their telephone is (312)
`
`222-0800; and their facsimile number is (312) 222-0818.
`
`Pursuant to 37 C.F.R. § 42.6(e), counsel for Petitioner consent to electronic
`
`service at the email addresses listed above.
`
` GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(a)
`III.
`
`Petitioner certifies that the ’978 patent is available for inter partes review
`
`and that Petitioner is not barred or estopped from requesting inter partes review
`
`challenging claims 1-3, 5, 6, 8-10, 12-14, 21, and 24 of the ’978 patent on the
`
`grounds identified here.
`
`IV.
`
` THE ’978 PATENT
`
`The ’978 patent issued from U.S. Patent Application No. 11/677,529, which
`
`was filed on February 21, 2007. Ex. 1001 at [21], [22]. The ’978 claims priority
`
`to application No. 10/076,795, filed on February 12, 2002, now U.S. Patent No.
`
`2
`
`

`

`
`
`7,222,684 (“’684 patent”). The ’684 patent claims priority to provisional
`
`application No. 60/268,447, filed on February 12, 2001 (Ex. 1001 at [60]).
`
`Therefore, the earliest priority date to which the challenged claims are entitled is
`
`February 12, 2001.
`
`A.
`
`Subject Matter of the ’978 Patent
`
`The ’978 patent is directed to the control of “toy vehicles that may be ridden
`
`by people, and more specifically . . . to a system, apparatus, and method for
`
`softening the initiation of motion of the toy vehicle.” Ex. 1001 at 1:17-21.
`
`According to the ’978 patent, vehicles “for riding on or in have become popular for
`
`operators” and typically include a “[c]onventional control system” that includes a
`
`battery, foot pedal switch, forward/reverse switch for direction control, high/low
`
`switch for fast and slow speeds, and motors. Ex. 1001 at 1:23-24, 1:36-41, Fig. 2;
`
`see also Sidman Decl., Ex. 1017 at ¶ 45. The ’978 patent characterizes such a
`
`control system as applying “a direct current (DC) from a DC battery to a motor
`
`upon pressing or otherwise operating a ‘gas’ pedal or other throttle mechanism.”
`
`Ex. 1001 at 1:27-31; Ex. 1017 at ¶ 45. This type of control is essentially an on/off
`
`switch, where “the motor is applied a voltage for full power (i.e. maximum angular
`
`velocity)” or speed, when the pedal is pressed by the operator. Ex. 1001 at 1:31-
`
`35; Ex. 1017 at ¶ 45.
`
`3
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`

`

`
`
`The claimed technology in the ’978 patent sought to overcome certain
`
`problems associated with this conventional control system, such as “(i) excessive
`
`acceleration, (ii) jerk, (iii) safety (e.g. controlling and flipping the vehicle at
`
`startup), and (iv) wearing of the mechanical components of the drive train for the
`
`toy vehicle.” Ex. 1001 at 2:4-10; Ex. 1017 at ¶ 46. Thus, the vehicle claimed in
`
`the ’978 patent includes a “soft-start control circuit . . . integrated into the
`
`conventional control system[].” Ex. 1001 at 2:56-57; Ex. 1017 at ¶ 46. As the
`
`’978 patent explains:
`
`The soft-start control circuit is operable to reduce excessive
`acceleration generated by the conventional control systems due to
`switching battery voltage directly to the motor(s) of the toy vehicles.
`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 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.
`
`Ex. 1001 at 4:1-11; Ex. 1017 at ¶ 46. The transition signal may be a “pulse width
`
`modulation signal” (“PWM”) that will “linearly” or “non-linearly” ramp up or
`
`down the output signal to the motor. Ex. 1001 at [57], 4:14-18, Figs. 7, 8a, 8b; Ex.
`
`1017 at ¶ 46. The ’978 patent discloses that the duty cycle of the pulse width
`
`modulation signal can range from about 20 to 100 percent, where the motors
`
`4
`
`

`

`
`
`deliver full power when the duty cycle is 100 percent. Ex. 1001 at [57], 5:24-29;
`
`Ex. 1017 at ¶ 46.
`
`As shown below, Figs. 3 and 4 of the ’978 patent illustrate that the soft-start
`
`control circuit 305 is electrically connected to either the series or parallel
`
`connected motors 225a and 225b and the negative or ground terminal 227 of the
`
`battery 205 (via high/low switch 220) and closes the circuit path that provides
`
`power to the motors. Ex. 1017 at ¶ 47. In this circuit topology, the motors can be
`
`electrically connected to the positive terminal of battery 205 (via foot pedal switch
`
`210, circuit breaker 405, forward/reverse switch 215 and high/low switch 220), and
`
`the soft-start control circuit 305 provides the electrical current return path 320a and
`
`320b from the motors back to the battery, allowing the motors to be energized. Ex.
`
`1017 at ¶ 47.
`
`
`
`5
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`

`

`
`
`
`
`Ex. 1001 at Figs. 3 and 4 (annotated); Ex. 1017 at ¶ 47. The amount of current
`
`passing through the motors is determined by the average “voltage being applied to
`
`or drawn by the motors 225” as controlled by the soft-start control circuit 305. Ex.
`
`1001 at 5:22-24; Ex. 1017 at ¶ 47.
`
`Figs. 3 (above) and 6 (below) illustrate that when the foot pedal switch is
`
`depressed or closed, the average voltage across each of the motors is determined
`
`6
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`

`

`
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`electrically by (1) the total battery voltage (nominally a constant twelve volts
`
`derived from two six-volt batteries connected in series), (2) whether the motors are
`
`connected in series or in parallel (by high/low switch 220), and (3) the duty cycle
`
`of conduction of the PWM drive circuit 525 of soft-start circuit 305. Ex. 1017 at ¶
`
`48. The duty cycle may range from about 20 to 100 percent and reflects the
`
`percent time duration of conduction of the parallel-connected high current field
`
`effect transistor (FET) switches Q5 and Q6 in drive circuit 525 of soft-start circuit
`
`305. Ex. 1001 at 5:19-28, 6:26-31, Figs. 3 and 6; Ex. 1017 at ¶ 48.
`
`Ex. 1001 at Fig. 6 (annotated); Ex. 1017 at ¶ 48.
`
`As demonstrated by this Petition, all of the claimed features, including those
`
`of the alleged “soft-start control circuit,” were known and disclosed in the prior art.
`
`
`
`7
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`

`

`
`
`B.
`
`Prosecution History of the ’978 Patent
`
`U.S. Patent Application No. 11/677,529 was filed on February 21, 2007, as a
`
`continuation of U.S. Patent Application No. 10/076,795, including 45 claims. Ex.
`
`1002 at 27-41, 81-82. Along with the application, the applicants submitted a
`
`Preliminary Amendment correcting the claim of priority, cancelling claims 1-45,
`
`and adding new claims 46-65. Id. at 74-82. On April 13, 2010, the examiner
`
`issued a restriction requirement, directing applicants to elect between two groups
`
`of claims. Id. at 115-120. In response, applicants elected the first group, claims
`
`46-59, drawn to a toy vehicle operable by a person. Id. at 121-23.
`
`On May 21, 2010, the examiner rejected claims 46-59. Ex. 1002 at 124-31.
`
`The examiner rejected claims 46-47, 51-55, 57 and 59 as being anticipated by U.S.
`
`Patent No. 6,287,167 (“Kondo”). Id. at 126-28. The examiner rejected claims 48-
`
`50 as obvious over Kondo in view of U.S. Patent No. 5,056,613 (“Porter”). The
`
`examiner rejected claim 56 as obvious over Kondo in view of Porter as applied to
`
`claim 46 and further in view of U.S. Patent No. 5,762,532 (“Ishizuka”).1
`
`Applicants responded by amending claims 46 and 52, cancelling claims 58,
`
`59, and 61-65, and adding new claims 66-73. Ex. 1002 at 144-51. Claim 46 was
`
`amended to add several additional limitations (including limitations from cancelled
`
`claims 58 and 59), specifying that: (i) the throttle switch is controlled by a person
`
`1 Claim 58 was apparently not examined because it was not objected to or allowed.
`
`8
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`

`

`
`
`in physical contact with the vehicle; (ii) the circuit is configured to receive an input
`
`signal from the throttle switch and to detect a change in its input signal from an
`
`ON level to an OFF level; and (iii) the circuit is configured to generate an output
`
`signal (i.e., transition signal) based on the input signal, the output signal including
`
`an ON level, an intermediate level, and an OFF level, wherein the transition in the
`
`output signal from the ON level through the intermediate level to the OFF level
`
`takes “significantly longer” than the transition in the input signal from the ON
`
`level to the OFF level. Id. at 145-46.
`
`New independent claim 67 was similar to amended independent claim 46,
`
`and recited, in relevant part, that the circuit “detect[s] a binary throttle signal” and
`
`the transition signal is generated “to cause a delay in applying to the motor a power
`
`level associated with the binary throttle signal.” Ex. 1002 at 149. New
`
`independent claim 74 was similar to new independent claim 67, and recited, in
`
`relevant part, that the circuit “detect[s] an activation level of the binary throttle
`
`signal.” Ex. 1002 at 152.
`
`Applicants then argued that the claims as amended should be allowable over
`
`the examiner’s rejections, Ex. 1002 at 154-56, and that Kondo does not disclose
`
`generating a transition signal as contemplated in amended claim 46. Specifically,
`
`applicants argued:
`
`9
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`

`

`
`
`Kondo discloses a drive circuit for a toy car to control a driving motor
`based on a throttle open degree. . . . In particular, Kondo teaches a
`pulse signal from a driving circuit for driving a motor. The driving
`circuit produces a pulse signal with an increasing pulse frequency and
`an increasing pulse width as the throttle open degree is increased. . . .
`Merely producing a pulse signal from a driving circuit based on a
`throttle open degree as disclosed in Kondo, however, is not generating
`a transition signal [as claimed in amended claim 46].
`
`Id. at 155. Applicants further argued that the cited references fail to teach or
`
`suggest the features of new claims 67 and 74. Id. at 156.
`
`On November 9, 2010, the examiner issued a final office action rejecting
`
`claims 46-57 and 66-73 under a nonstatutory obviousness-type double patenting
`
`rejection as being unpatentable over claims 1-40 of U.S. Patent No. 7,222,684. Ex.
`
`1002 at 164-65. The examiner noted that the applicants’ arguments with respect to
`
`claims 46-57 and 66-73 were considered but were moot in view of the double
`
`patenting rejection. Id. at 167. On January 10, 2011, applicants replied to the final
`
`office action, filing a terminal disclaimer and requesting allowance of pending
`
`claims 46-57 and 66-73. Id. at 176-80.
`
`On January 26, 2011, the examiner issued a notice of allowance of claims
`
`46-57 and 66-73. Ex. 1002 at 186-89. The ’978 patent issued on May 31, 2011.
`
`Ex. 1001 at [45].
`
`10
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`

`

`
`
`C. The Challenged Claims
`
`Petitioner requests cancellation of claims 1-3, 5, 6, 8-10, 12-14, 21, and 24
`
`of the ’978 patent. Claims 1, 14, and 21 are independent claims. Claims 2, 3, 6, 8,
`
`9, 12, and 13 each depend directly from claim 1. Claim 5 depends from dependent
`
`claim 3. Claims 10 and 12 depend from dependent claim 9. Claim 24 depends
`
`directly from claim 21.
`
`D. How the Challenged Claims Are to Be Construed
`
`In an inter partes review, “[a] claim in an unexpired patent that will not
`
`expire before a final written decision is issued shall be given its broadest
`
`reasonable construction in light of the specification of the patent in which it
`
`appears.” 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs., LLC v. Lee, 136 S.
`
`Ct. 2131, 2142 (2016). Claim terms should be given their ordinary and customary
`
`meanings. See Phillips v. AWH Corp., 415 F.3d 1303, 1312-14 (Fed. Cir. 2005)
`
`(en banc). Therefore, for purposes of this Petition, the broadest reasonable
`
`construction of the terms of the challenged claims should be their plain and
`
`ordinary meaning. See Ex. 1017 at ¶ 35.
`
`The term “binary throttle signal” appears in challenged independent claims
`
`14 and 21, and their respective dependent claims. 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
`
`11
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`

`

`
`
`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.” The IBM Dictionary of Computing, 10th Edition, August
`
`1993, defines “binary” to mean “pertaining to a selection, choice, or condition that
`
`has two possible different values or states,” Ex. 1011 at p. 62, and “binary throttle
`
`signal” should be construed consistent with this dictionary definition. Claim 14
`
`recites a “binary throttle signal” that is “produced when a person engages the
`
`throttle switch” and is “not produced when the person disengages the throttle
`
`switch” and is “operable to induce motion using a motor operating as a drive
`
`mechanism of the toy vehicle.” Ex. 1001 at Claim 14; see also id. at Claim 21.
`
`Claim 14 also recites “generat[ing] a transition signal based on the binary throttle
`
`signal to cause a delay in applying to the motor a power level associated with the
`
`binary throttle signal.” Id. at Claims 14 and 21.
`
`V.
`
` THE RELEVANT PRIOR ART
`
`Each of the challenged claims is unpatentable in view of the following
`
`references directed to electric motor, battery-powered, ride-on or toy vehicles: (A)
`
`Bienz, Ex. 1003; (B) Klimo, Ex. 1004; and (C) Ribbe, Ex. 1005. Each of the
`
`references is analogous prior art to the challenged claims because it is, at a
`
`minimum, either from the same field of endeavor (electric motor, battery-powered,
`
`ride-on or toy vehicles, Ex. 1001 at 1:16-31) or the reference is reasonably
`
`12
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`

`

`
`
`pertinent to the problem faced by the applicants (i.e., “(i) excessive acceleration,
`
`(ii) jerk, (iii) safety (e.g. controlling and flipping the vehicle at startup), and (iv)
`
`wearing of the mechanical components of the drive train for the toy vehicle,” Ex.
`
`1001 at 2:4-10). See Ex. 1017 at ¶¶ 56, 60; see also In re Bigio, 381 F.3d 1320,
`
`1325 (Fed. Cir. 2004) (“Two separate tests define the scope of analogous prior art:
`
`(1) whether the art is from the same field of endeavor, regardless of the problem
`
`addressed and, (2) if the reference is not within the field of the inventor's endeavor,
`
`whether the reference still is reasonably pertinent to the particular problem with
`
`which the inventor is involved.”).
`
`Ribbe was before the United States Patent and Trademark Office when the
`
`examiner allowed the challenged claims, but Bienz and Klimo were not.
`
`A. Bienz (Ex. 1003)
`
`U.S. Patent No. 5,859,509 (“Bienz”) issued on January 12, 1999. Ex. 1003
`
`at [45]. It is prior art under 35 U.S.C. § 102(e) and under 35 U.S.C. § 102(b)
`
`because the challenged claims are entitled to a priority date no earlier than
`
`February 12, 2001.
`
`Bienz discloses an electric, battery-powered, children’s ride-on vehicle
`
`driven by DC motors and is analogous art. Ex. 1003 at 1:7-9; 2:38-39; Ex. 1017 at
`
`¶ 53. Figure 1 of Bienz illustrates an example of the electric vehicle.
`
`13
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`

`
`
`
`
`Id. at Fig. 1; Ex. 1017 at ¶ 53.
`
`The electric vehicle includes, among other things, two rear wheels driven by
`
`motors 20, 22 that are “powered by a 6 or 12 volt battery pack 24” (Ex. 1003 at
`
`2:40-43); a switch assembly 32 that “is designed to switch the connection between
`
`the battery and the motor into one of three speed configurations” (id. at 2:48-50);
`
`an actuator that is “connected to the switch assembly and manipulable by a user to
`
`allow the user to operate the switch assembly to select a particular speed
`
`configuration from among the number of speed configurations” (id. at [57]); a foot
`
`pedal switch 34 that “is the primary on/off control for the rider and is mounted in
`
`the vehicle to appear as a gas pedal” (id. at 2:51-53); and a speed control circuit
`
`including “a diode 40 and a resistor 42 [that] are inserted in series between the
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`battery and the motors” “which can selectively limit the maximum speed of the
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`vehicle” by providing a “relatively current independent voltage drop between the
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`motor and the battery” (id. at [57]; 1:44-47; 3:5-7). Ex. 1017 at ¶ 54.
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`Id. at Fig. 2a (annotated); Ex. 1017 at ¶ 54.
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`Bienz describes how selectively limiting the maximum speed of the vehicle
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`addresses a safety issue: “In children’s ride-on vehicles, the suitability for a child
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`of a given age is primarily determined by the speed capability of the vehicle. With
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`young children, slower vehicles are necessary for safe operation. As children
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`mature and become more capable drivers, they are able to operate faster vehicles
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`with safety and confidence.” Ex. 1003 at 1:21-27; Ex. 1017 at ¶ 55.
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`B. Klimo (Ex. 1004)
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`U.S. Patent No. 4,634,941 (“Klimo”) issued on January 6, 1987. Ex. 1004 at
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`[45]. It too is prior art under 35 U.S.C. § 102(e) and under 35 U.S.C. § 102(b)
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`because the challenged claims are entitled to a priority date no earlier than
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`February 12, 2001. Klimo, entitled “Electric Wheelchair With Improved Control
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`Circuit,” is analogous art because it describes an electric wheelchair which is a
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`form of ride-on vehicle. Klimo also addresses the same problem addressed by the
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`claimed invention: “speed is increased or decreased gradually and smoothly . . .
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`[s]udden reversals, acceleration, and lurching are eliminated.” Ex. 1004 at 4:4-7.
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`Ex. 1017 at ¶ 56. Additionally, the Patent Office classifies control circuits for
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`children’s ride-on vehicles and electric wheelchairs in the same U.S. Classification
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`(i.e., 318/139 – Electricity: motive power systems / Battery-fed motor systems).
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`Compare Bienz, Ex. 1003 at [52] with Klimo, Ex. 1004 at [52]. In fact, the Patent
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`Office cited electric wheelchair references against the Bienz application. See, e.g.,
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`Bienz, Ex. 1003 at [56] (citing U.S. Patent Nos 5,270,624 and 5,497,056 directed
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`towards electric wheelchairs).
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`Klimo also discloses “a speed control circuit for an electric vehicle” that is
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`powered by a “battery pack” and “driven by . . . DC electric motors.” Ex. 1004 at
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`1:21-25, 2:37-38; Ex. 1017 at ¶ 56. Figure 1 of Klimo illustrates an electric
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`wheelchair as an example of an electric vehicle.
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`Ex. 1004 at Fig. 1; Ex. 1017 at ¶ 56.
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`The electric vehicle disclosed in Klimo includes, among other things, “a
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`battery pack A which supplies power to right and left DC electric motors B and C”
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`and a direction selector or joystick means D for selecting the speed and direction of
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`the vehicle. Ex. 1004 at 4:47-52; Ex. 1017 at ¶ 57. The joystick means includes a
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`control lever 22 so that “pushing the joystick straight forward or pulling it rearward
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`causes the speed control means 24 to produce a selected vehicle speed signal
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`[w]hose amplitude varies in proportion to the selected speed.” Ex. 1004 at 5:8-19;
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`Ex. 1017 at ¶ 57. The “joystick 22 has a neutral position . . . which indicates no
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`forward movement, reverse movement, or turning movement of the wheel chair
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`has been selected.” Ex. 1004 at 13:12-16; Ex. 1017 at ¶ 71. Klimo also includes
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`“[r]ight and left speed control circuits E and F [that] are physically mounted above
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`the battery pack and are operatively connected with the battery, electric motors and
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`the joystick means.” Ex. 1004 at 4:52-55; Ex. 1017 at ¶ 57.
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`
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`Ex. 1004 at Fig. 2 (annotated); Ex. 1017 at ¶ 57.
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`Klimo’s speed control circuits implement gradual and smooth transitions
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`during changes of speed and direction of the electric vehicle, eliminating sudden
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`reversals, acceleration, and lurching. Ex. 1004 at 4:3-7; Ex. 1017 at ¶ 58. This is
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`principally accomplished through a soft-start and soft-stop circuit (i.e., limiting
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`circuit 124) that “limits the rate of change of the selected motor speed signal which
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`limits the acceleration and deceleration of the wheelchair.” Ex. 1004 at 8:35-37;
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`Ex. 1017 at ¶ 58. The soft-start and soft-stop circuit produces a motor speed
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`“reference signal which approaches its input exponentially. . . . [T]he acceleration
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`and deceleration rate may be made selectable.” Ex. 1004 at 8:38-42; Ex. 1017 at ¶
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`58.
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`C. Ribbe (Ex. 1005)
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`U.S. Patent No. 5,994,853 (“Ribbe”), entitled “Speed Control System For A
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`Remote-Control Vehicle,” issued on November 30, 1999. Ex. 1005 at [45]. It is
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`also prior art under 35 U.S.C. § 102(e) and under 35 U.S.C. § 102(b) because the
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`challenged claims are entitled to a priority date no earlier than February 12, 2001.
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`Ribbe is analogous art because it is from the same field of endeavor (electric toy
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`vehicles). Ex. 1017 at ¶ 60.
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`Ribbe discloses a speed control system for an electric, battery-powered, DC
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`motor driven, remote-control vehicle. Ex. 1017 at ¶ 59. Ribbe’s “speed control
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`system 16” includes a “speed controller, illustrated as a programmable logic array
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`(PLA) 74 . . . which may include a microprocessor, hard-wired logic elements,
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`and/or any other desired or known circuitry . . . [that] produces . . . a START signal
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`. . . [and] a voltage signal on a line 82 in response to the requested speed control
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`state.” Ex. 1005 at 5:38-59, Fig. 4; Ex. 1017 at ¶ 59. Ribbe teaches that “other
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`types of analog or digital circuits may be substituted [], including microprocessor
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`circuits, standard digital PWM waveform generator circuits, etc. without departing
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`from the invention.” Ex. 1005 at 7:10-14; Ex. 1017 at ¶ 59.
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`19
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`VI.
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` LEVEL OF ORDINARY SKILL IN THE ART
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`The relevant art is electric motor, battery-powered, ride-on or toy vehicles.
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`Ex. 1017 at ¶ 19; see also, e.g., Ex. 1001 at 1:16-31. A person of ordinary skill in
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`the relevant art as of February 12, 2001, would have had at least (1) a bachelor’s
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`degree in electrical engineering, mechanical engineering, physics, or an equivalent
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`degree and at least three years of experience designing and developing mechatronic
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`systems; or (2) equivalent training, education, or work experience, such as an
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`advanced degree in engineering or a related technical field. Ex. 1017 at ¶ 21.
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` GROUNDS OF UNPATENTABILITY
`VII.
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`Battery-powered, DC motor driven, electric ride-on or toy vehicles having
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`speed control circuits were well known in the art in 2001. Ex. 1017 at ¶ 61; see
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`also, e.g., Bienz, Ex. 1003 at [54], [57]; Klimo, Ex. 1004 at [54], [57]; Ribbe, Ex.
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`1005 at [54], [57]. Many such electric vehicles include speed control circuits,
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`including circuits that control or limit vehicle speed or limit the rate of change of a
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`user originated throttle or speed command signal to provide a soft-start or soft-stop
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`feature as well as other features claimed in the ’978 patent that were developed
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`well before the priority date of the ’978 patent. Ex. 1017 at ¶ 61. For example,
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`using P