PUBLIC VERSION
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`Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 56
`Entered: October 24, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ONE WORLD TECHNOLOGIES, INC.,
`d/b/a TECHTRONIC INDUSTRIES POWER EQUIPMENT,
`Petitioner,
`
`v.
`
`THE CHAMBERLAIN GROUP, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00126
`Patent 7,161,319 B2
`____________
`
`Before JONI Y. CHANG, JUSTIN T. ARBES, and JOHN F. HORVATH,
`Administrative Patent Judges.
`
`HORVATH, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`PUBLIC VERSION
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`1
`
`Exhibit 1020
`Apple v. Qualcomm
`IPR2018-01315
`
`
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 56
`Entered: October 24, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ONE WORLD TECHNOLOGIES, INC.,
`d/b/a TECHTRONIC INDUSTRIES POWER EQUIPMENT,
`Petitioner,
`
`v.
`
`THE CHAMBERLAIN GROUP, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00126
`Patent 7,161,319 B2
`____________
`
`Before JONI Y. CHANG, JUSTIN T. ARBES, and JOHN F. HORVATH,
`Administrative Patent Judges.
`
`HORVATH, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`PUBLIC VERSION
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`1
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`Exhibit 1020
`Apple v. Qualcomm
`IPR2018-01315
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`PUBLIC VERSION
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`I.
`
`INTRODUCTION
`
`A. Background
`One World Technologies, Inc. d/b/a Techtronic Industries Power
`Equipment (“Petitioner”) filed a Petition (Paper 1, “Pet.”) to institute an
`inter partes review of claims 1–4, 7–12, 15, and 16 (“the challenged
`claims”) of U.S. Patent No. 7,161,319 B2 (Ex. 1001, “the ’319 patent”). The
`Chamberlain Group, Inc. (“Patent Owner”) filed a Preliminary Response
`(Paper 6, “Prelim. Resp.”). Upon consideration of the Petition and
`Preliminary Response, we instituted review to determine the patentability of
`all of the challenged claims but only a subset of the grounds raised in the
`Petition.1 Paper 8 (“Dec. Inst.”).
`Subsequent to institution, Patent Owner filed a Response (Paper 11,
`“PO Resp.”), and Petitioner filed a Reply (Paper 16, “Reply”). In its
`Response, Patent Owner did not present evidence or argument that the
`challenged claims were patentable due to secondary considerations of non-
`obviousness, despite having been cautioned that arguments not raised in the
`response will be deemed waived. See PO Resp.; see also Paper 9, 2–3.
`Nearly four months after filing its Response, Patent Owner sought
`additional discovery of ten documents referenced in a discussion of copying
`as a secondary consideration of non-obviousness in a public version of an
`Initial Determination made in the International Trade Commission (“ITC”)
`
`1 We discuss in section II.D infra, Patent Owner’s argument that Petitioner
`raised only a single ground in the Petition.
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`Investigation related to this proceeding.2 Paper 18. We granted Patent
`Owner’s request, as well as Patent Owner’s requested method for apprising
`the Board of the significance of the discovered evidence. See Paper 20;
`Paper 27, 2–6. To that end, Patent Owner filed its ITC pre-hearing brief,
`suitably redacted so that only the discussion of copying was discernible,
`together with the documents cited in its ITC pre-hearing brief, suitably
`redacted so that only those portions actually cited in Patent Owner’s ITC
`pre-hearing brief were discernible. See Paper 29 (“PO ITC Brief”); Exs.
`2017–2025. Petitioner similarly filed its ITC pre-hearing brief, and the
`evidence cited in that brief, subject to the same redaction requirements. See
`Ex. 1023, (“Pet. ITC Brief”); Exs. 1024–1031. An oral hearing was held on
`February 1, 2018, a portion of which was sealed, and confidential and public
`versions of the hearing transcript are included in the record.3 See Papers 32,
`36 (“Tr.”).
`Subsequent to the oral hearing, the Supreme Court issued its decision
`in SAS Institute, Inc. v. Iancu, 138 S.Ct. 1348 (2018). The Director
`interpreted the SAS decision to require inter partes reviews to be instituted
`on the basis of all claims challenged in a petition and all grounds raised in
`the petition. Accordingly, we conducted several conference calls with the
`parties, asking them to identify any previously non-instituted grounds, and
`whether they wished to include and brief any non-instituted grounds in this
`
`2 The ITC Investigation is identified in section I.B, infra.
`3 We granted the parties’ joint motion to seal and entered a protective order
`that governs the treatment of confidential information in this proceeding.
`Paper 38; Ex. 3002.
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`proceeding. See Paper 39, 3. In response to our inquiries, the parties
`identified the following as the only previously non-instituted ground they
`wished to add to the proceeding: “[w]hether claims 1–4, 7–12, 15 and 16
`are rendered obvious by Doppelt, Applicant Admitted Prior Art, Jacobs, and
`Gilbert.” Ex. 3003. We, therefore, modified our Institution Decision to
`institute trial on this additional ground. See Paper 39, 5. Patent Owner filed
`a Supplemental Response limited to addressing this ground. Paper 45 (“PO
`Supp. Resp.”). Petitioner filed a Supplemental Reply to the Supplemental
`Response. Paper 47 (“Supp. Reply”). A supplemental oral hearing was held
`on August 7, 2018, and the hearing transcript is included in the record. See
`Paper 53 (“Supp. Tr.”).
`We have jurisdiction under 35 U.S.C. § 6(b). This is a Final Written
`Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons
`set forth below, we find Petitioner has shown by a preponderance of the
`evidence that claims 1–4, 7, 9–12, and 15 of the ’319 patent are
`unpatentable, but has failed to show by a preponderance of the evidence that
`claims 8 and 16 are unpatentable over the combination of Doppelt, AAPA,
`and Jacobs or over the combination of Doppelt, AAPA, Jacobs, and Gilbert.
`B. Related Matters
`Petitioner identifies the following as matters that could affect, or be
`affected by, a decision in this proceeding: The Chamberlain Group, Inc. v.
`Techtronic Industries Co. Ltd. et al., Case No. 16-cv-06097 (N.D. Ill.); The
`Chamberlain Group, Inc. v. Techtronic Industries Co. Ltd. et al., Case No.
`16-cv-06094 (N.D. Ill.); and In the Matter of Certain Access Control
`Systems and Components Thereof, ITC Investigation No. 337-TA-1016 (the
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`“ITC Investigation”). Pet. 1. Patent Owner identifies a subset of the same
`matters. Paper 4, 2.
`
`In the related ITC Investigation, the Administrative Law Judge
`(“ALJ”) concluded in an Initial Determination that the challenged claims of
`the ’319 patent were not obvious over the combination of Doppelt and
`Jacobs or over the combination of Doppelt, Jacobs, and Gilbert. See Ex.
`2014, 171, 175. The ITC affirmed the ALJ’s conclusions in a Commission
`Opinion. See Ex. 3004, 1, 13 n.11. Although we have considered the
`findings of fact and conclusions reached by the ITC in its Initial
`Determination, we are not bound by them. See Nobel Biocare Servs. AG v.
`Instradent USA, Inc., 903 F.3d 1365, 1375 (Fed. Cir. 2018) (noting the
`Federal Circuit is not bound by its prior affirmance of an ITC decision when
`reviewing a final written decision of the Board because “[a]s the Board
`correctly observed, the evidentiary standard in its proceedings,
`preponderance of the evidence, is different from the higher standard
`applicable in ITC proceedings, clear and convincing evidence”). Here, in
`the instant Final Written Decision, we have made an independent
`determination of patentability of the challenged claims based on the parties’
`contentions, the specific evidence presented in this proceeding, and the
`standards applicable to inter partes review proceedings.
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`C. Evidence Relied Upon4
`
`Reference
`The ’319 Patent
`(“AAPA”)5
`Doppelt
`
`Jacobs
`
`Gilbert
`
`Date
`
`Exhibit
`
`US 7,161,319 B2
`
`Apr. 7, 2000
`
`Ex. 1001
`
`GB 2,312,540 A
`
`Oct. 29, 1997 Ex. 1004
`
`US 5,467,266
`
`Nov. 14, 1995 Ex. 1005
`
`US 5,530,896
`
`June 25, 1996 Ex. 1006
`
`D. The Instituted Grounds of Unpatentability
`References
`Basis
`Doppelt, AAPA, and Jacobs
`§ 103(a)
`Doppelt, AAPA, Jacobs, and Gilbert
`§ 103(a)
`
`Claims Challenged
`1–4, 7–12, 15, and 16
`1–4, 7–12, 15, and 16
`
`II. ANALYSIS
`
`A. The ’319 Patent
`The ’319 patent discloses a movable barrier operator, such as a garage
`door operator (“GDO”) or gate operator. Ex. 1001, 1:14–16. The movable
`barrier operator includes a passive infrared detector that detects the presence
`of high temperature objects (e.g., people), and controls a function (e.g.,
`
`4 Petitioner also relies upon the Declaration of Stuart Lipoff. Ex. 1003.
`5 Petitioner relies on certain disclosures in the “Background of the
`Invention” section of the ’319 patent as being applicant admitted prior art
`(“AAPA”). See Pet. 10 (citing Ex. 1001, 1:21–23, 1:41–43).
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`illumination) of the movable barrier operator. Id. at 1:14–19. Figure 1 of
`the ’319 patent is reproduced below.
`
`Figure 1 is a perspective view of a garage, including a movable barrier
`operator having a passive infrared detector in a wall control unit. Id. at
`3:12–15.
`In an embodiment depicted in Figure 1, GDO 10 includes head unit 24
`connected to wall control unit 60 via line 62. Ex. 1001, 3:41–46, 3:53–54,
`4:5–7, Fig. 1. Wall control unit 60 controls motor 70 and light 72 in head
`unit 24 via communications over line 62 between microcontroller 110 in
`wall control unit 60 and microcontroller 56 in head unit 24. Id. at 3:63–4:9,
`4:22–32, Figs. 2, 3B, 4. Wall control unit 60 further includes light switch
`120, door switch 122, vacation switch 124, and auto-manual selection switch
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`126. Id. at 4:32–34, Fig. 4. GDO 10 further includes position indicator 80
`to indicate the garage door position to microcontroller 56 of head unit 24.
`Id. at 4:16–20. As shown in Figure 1, the garage door is a “multipanel
`garage door 16.” Id. at 3:48–49.
`Claims 1 and 9 of the ’319 patent are independent. Claim 1,
`reproduced below, is illustrative. Claim 9 differs from claim 1 by requiring
`the motor drive unit and wall console to have a controller rather than a
`microcontroller as recited in claim 1. Each of the other challenged claims of
`the ’319 patent depend directly or indirectly from claims 1 or 9.
`1.
`An improved garage door opener comprising a motor
`drive unit for opening and closing a garage door, said motor drive
`unit having a microcontroller and a wall console, said wall
`console having a microcontroller, said microcontroller of said
`motor drive unit being connected to the microcontroller of the
`wall console by means of a digital data bus.
`Ex. 1001, 7:34–39.
`B. Claim Construction
`The Board interprets the claims of an unexpired patent using the
`broadest reasonable interpretation in light of the specification of the patent.
`See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
`2131, 2142–46 (2016). Under this standard, we interpret claim terms using
`“the broadest reasonable meaning of the words in their ordinary usage as
`they would be understood by one of ordinary skill in the art, taking into
`account whatever enlightenment by way of definitions or otherwise that may
`be afforded by the written description contained in the applicant’s
`specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). “Under
`a broadest reasonable interpretation, words of the claim must be given their
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`plain meaning, unless such meaning is inconsistent with the specification
`and prosecution history.” TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1062
`(Fed. Cir. 2016). Only those terms which are in controversy need to be
`construed and only to the extent necessary to resolve the controversy. See
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999).
`Petitioner requests construction of various claim terms, including the
`term wall console, which Petitioner argues should be construed to mean “a
`wall-mounted control unit including a passive infrared detector” because the
`patentee disavowed wall consoles lacking a passive infrared detector. Pet.
`21–31 (emphasis omitted). Patent Owner counters that no claim terms
`require express construction, the term wall console does not require a
`passive infrared detector, and construing wall console to require a passive
`infrared detector would improperly import limitations from the Specification
`into the claims. PO Resp. 3 n.1.
`In our Institution Decision, we did not expressly construe any claim
`term because we were able to determine whether to institute inter partes
`review without doing so.6 Dec. Inst. 5–6. Neither party contests the
`decision not to expressly construe claims. See PO Resp. 3–4; Reply. On the
`
`6 Regarding the term wall console, we found we did not need to decide
`whether the patentee had disavowed wall consoles lacking passive infrared
`detectors because Petitioner had shown a reasonable likelihood of prevailing
`with respect to the challenged claims regardless of whether the recited wall
`console is required to include an infrared detector. Dec. Inst. 5–6.
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`full record before us, we find the patentability of the challenged claims can
`be determined without expressly construing any claim term.
`C. Petitioner’s Motion to Exclude
`As an initial matter, Petitioner filed a Motion to Exclude the
`Declaration of Nathaniel J. Davis IV, Ph.D. (Ex. 2007), the dictionary
`definition of microcontroller submitted by Patent Owner (Ex. 2008), and
`U.S. Patent No. 5,969,637 (“the ’637 patent”) issued to Doppelt (Ex. 2012).
`Paper 22 (“Mot.”). Patent Owner opposed the Motion (Paper 25, “Opp.”),
`and Petitioner replied (Paper 26, “Opp. Reply”). As the movant, Petitioner
`bears the burden of establishing it is entitled to the relief requested.
`37 C.F.R. § 42.20.
`1. Admissibility of the Davis Declaration (Ex. 2007)
`Petitioner argues Dr. Davis’ Declaration should be excluded under
`Federal Rules of Evidence 701 and 702 because Patent Owner has failed to
`establish that Dr. Davis qualifies as a person of ordinary skill in the art, and
`has failed to establish that Dr. Davis’ testimony is that of an expert. Mot. 3,
`6–7. Petitioner argues Dr. Davis has offered “wildly divergent and
`inconsistent positions” regarding the qualifications of a person of ordinary
`skill in the art, arguing that he himself qualifies as a person skilled in the art
`because of his embedded control systems experience, but that a person
`skilled in the art would not have combined two references disclosing
`embedded control systems because they are in different fields of endeavor.
`Id. at 5 n.1.
`Patent Owner contends Dr. Davis’ background and qualifications
`establish his competence to provide expert testimony in this proceeding
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`because he is a person of higher than ordinary skill in the art, which
`compensates for any perceived deficit in his work experience. Opp. 2, 4
`(citing Ex. 2007 ¶¶ 5–17). Patent Owner further argues that Dr. Davis’
`testimony regarding the ’319 patent is admissible because it was both
`considered and credited in the related ITC Investigation, and because
`Petitioner relies on it to support technical arguments made in Petitioner’s
`Reply. Id. at 5–6.
`Evidentiary issues before the Board are decided based on the Federal
`Rules of Evidence. See 37 C.F.R. § 42.62(a). Federal Rule of Evidence 702
`states:
`A witness who is qualified as an expert by knowledge, skill,
`experience, training, or education may testify in the form of an
`opinion or otherwise if:
`(a) the expert’s scientific, technical, or other specialized
`knowledge will help the trier of fact to understand the evidence
`or to determine a fact in issue;
`(b) the testimony is based on sufficient facts or data;
`(c) the testimony is the product of reliable principles and
`methods; and
`(d) the expert has reliably applied the principles and methods to
`the facts of the case.
`Petitioner does not argue that Dr. Davis’ testimony should be excluded
`because it is based on insufficient facts or data, because it is the product of
`unreliable principles or methods, or because Dr. Davis has improperly
`applied otherwise reliable principles and methods to the facts of this
`proceeding. See Mot. 1–7. Rather, Petitioner argues that Dr. Davis’
`testimony should be excluded because he lacks the scientific, technical, or
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`specialized knowledge that would allow him to provide expert testimony in
`this proceeding. Id.
`Admission of expert testimony is within the sound discretion of the
`trier of fact. Acoustical Design, Inc. v. Control Elecs. Co., 932 F.2d 939,
`942 (Fed. Cir. 1991). The fact finder “enjoy[s] ‘wide latitude’ to determine
`admissibility . . . of evidentiary presentations,” including expert
`presentations, because they are “in the best place to judge that [a witness
`has] the ‘knowledge, skill, experience, training, [and] education’ of a
`‘specialized’ nature that [is] likely to ‘assist the trier of fact to understand the
`evidence.’” SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373
`(Fed. Cir. 2010) (second alteration in original) (quoting Fed. R. Evid. 702).
`Although the admission of expert testimony is within our discretion,
`there are limits to that discretion. For example, in Sundance, it was an abuse
`of discretion to allow “a witness to testify as an expert on the issues of
`noninfringement or invalidity” when the witness was not “qualified as an
`expert in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd.,
`550 F.3d 1356, 1363 (Fed. Cir. 2008). The improperly admitted Sundance
`witness was a patent attorney who was neither shown to have had work
`experience in the relevant technical field nor offered as an expert in that
`field. Id. at 1362. By contrast, in Montgomery Ward, it was not an abuse of
`discretion to allow a witness to testify as an expert once the witness had
`“established an adequate relationship between his experience and the
`claimed invention,” even though the witness lacked specific experience
`designing a consumer product embodying the invention. Montgomery Ward,
`594 F.3d at 1373.
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`Through his testimony, Dr. Davis has demonstrated that he possesses
`sufficient knowledge, skill, experience, training, or education in systems
`with embedded microprocessors to establish an adequate relationship
`between his experience and the invention claimed in the ’319 patent.
`Accordingly, Dr. Davis is qualified to provide expert testimony in this
`proceeding. See Fed. R. Evid. 702; Montgomery Ward, 594 F.3d at 1373.
`Through his uncontroverted testimony, Dr. Davis has established that
`he has earned a Ph.D. in electrical engineering, has more than 30 years of
`research experience in computer architecture, digital design, and embedded
`microprocessors, has authored numerous technical articles on these topics,
`and has previously provided “expert witness testimony in cases involving
`embedded computer systems that are similar to the ones envisioned in the
`’319 patent.” Ex. 2007 ¶¶ 6, 8, 16–17. Although Dr. Davis has no direct
`experience with garage door openers, he has experience with systems he
`considers to be related, such as “elevator controllers where you’ve got to
`worry about not just opening and closing the doors but the movement of the
`carriage or the cab that goes up and down . . . that you don’t account for in a
`garage door.” Ex. 1019, 34:23–35:6.
`In short, Dr. Davis has demonstrated that he possesses sufficient
`experience, knowledge, and training to offer expert testimony in this
`proceeding. Accordingly, Petitioner’s request to exclude his declaration in
`its entirety is denied.
`2. Admissibility of the Definition of Microcontroller (Ex. 2008)
`Petitioner argues the definition of “microcontroller” in the McGraw-
`Hill Electronics Dictionary (Ex. 2008) should be excluded as irrelevant
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`under Federal Rules of Evidence 401–402. Mot. 7–9. Petitioner contends
`the definition is irrelevant because Patent Owner argues the term
`microcontroller should be construed to have its plain and ordinary meaning
`and does not require express construction. Id. at 7–8. For the same reasons,
`Petitioner contends the definition should be excluded under Federal Rule of
`Evidence 403 because its probative value is substantially outweighed by a
`danger of unfair prejudice, confusing the issues, or wasting time. Id. at 9–
`10.
`
`Patent Owner argues the definition of microcontroller is relevant
`because it reflects how a person of ordinary skill in the art would have
`understood the meaning of this term, and corroborates Dr. Davis’ testimony
`on that meaning. Opp. 9–10. For the same reasons, Patent Owner contends
`the definition would not be unfairly prejudicial, confuse the issues, or waste
`time. Id. at 10.
`We are persuaded by Patent Owner’s argument. The term
`microcontroller is recited in independent claim 1. Ex. 1001, 7:33–39. In
`our Institution Decision, we determined there was no need to expressly
`construe this term because we were able to determine whether to institute
`trial regardless of how the term is expressly construed. We maintain that
`conclusion here. We note there is little difference between Petitioner’s
`proposed construction of microcontroller (see Pet. 34), which relies on the
`Dictionary of Computer and Internet Terms, and Dr. Davis’ testimony
`regarding how a person of skill in the art would interpret this term (Ex. 2007
`¶ 72), which relies on the McGraw-Hill Electronics Dictionary. Compare
`Ex. 1017, 317 ( “a microprocessor designed specifically for controlling
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`equipment . . . [that] usually contain[s] some memory and input-output
`circuitry on the same chip with the microprocessor”), with Ex. 2008, 288
`(“[a] monolithic integrated circuit with a complete central processing unit
`(CPU) and enough semiconductor memory . . . and input-output (I/O)
`capability to be considered as equivalent to a ‘computer on a chip’ . . . [that]
`is usually used in control rather than data-processing applications”).
`How a person of skill in the art would have understood the meaning of
`microcontroller is relevant not only to the proper understanding of claim 1,
`but to the proper understanding of the prior art used to challenge the
`patentability of claim 1. Moreover, because the McGraw-Hill Electronics
`Dictionary definition of this term comports with Petitioner’s own proposed
`definition set forth in the Dictionary of Computer and Internet Terms, we
`disagree with Petitioner that our consideration of the McGraw-Hill definition
`would result in unfair prejudice, confusion, or waste of time. Accordingly,
`Petitioner’s request to exclude Exhibit 2008 is denied.
`3. Admissibility of the ’637 Patent (Ex. 2012)
`Petitioner argues the ’637 patent (Ex. 2012) should be excluded as
`irrelevant under Federal Rules of Evidence 401 and 402. Mot. 10–11.
`Petitioner contends the patent is irrelevant because Patent Owner does not
`cite to it in any of its briefs, and it therefore has no tendency to make a fact
`of consequence in this proceeding more or less probable. Id. at 11. For the
`same reasons, Petitioner contends the ’637 patent should be excluded under
`Federal Rule of Evidence 403 because any probative value it has is
`substantially outweighed by a danger of unfair prejudice, confusing the
`issues, or wasting time. Id. at 11–12.
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`Patent Owner argues the ’637 patent is relevant because Dr. Davis
`cited to it in his declaration. Opp. 11 (citing Ex. 2007 ¶ 24). Dr. Davis
`testifies that the ’637 patent is the priority document for Doppelt, and was
`cited in an Information Disclosure Statement filed during prosecution of the
`’319 patent that the examiner initialed to indicate it had been considered.
`Ex. 2007 ¶ 24. Patent Owner further argues there is no danger that the
`Board will confuse the ’637 patent with the Doppelt reference that is relied
`on by Petitioner because they are different documents. Opp. 11.
`Petitioner counters that although Dr. Davis cited to the ’637 patent in
`his declaration, Patent Owner never cited to the ’637 patent in its
`Preliminary Response, Response, or Supplemental Response, and never
`cited to the paragraph of Dr. Davis’ declaration that cites to the ’637 patent.
`Opp. Reply 4. Petitioner argues that because Patent Owner failed to make
`any arguments involving the ’637 patent in this proceeding, the patent has no
`bearing on any fact that is of consequence in determining the outcome of the
`proceeding. Id. (citing 37 C.F.R. § 42.6; Google Inc. v. Performance
`Pricing Holdings, LLC, Case CBM2016-00050, slip op. at 50 (PTAB Sept.
`13, 2017) (Paper 33)).
`We agree with Petitioner. Patent Owner’s only argument for the
`relevance of the ’637 patent is its citation in one paragraph of Dr. Davis’
`declaration. Opp. 11. Patent Owner, however, provides no evidence that it
`cited the ’637 patent in any of its papers, made any arguments that relied
`upon the ’637 patent, or even cited the paragraph of Dr. Davis’ declaration
`that cites to the ’637 patent. Id. Moreover, Dr. Davis only states that the
`’637 patent was cited in an Information Disclosure Statement. See Ex. 2007
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`¶ 24. He does not offer any opinion regarding patentability of the
`challenged claims based on that fact. Id.
`Accordingly, Petitioner’s request to exclude Exhibit 2012 from
`evidence as irrelevant under Federal Rule of Evidence 402 is granted.
`D. Identification of Grounds Raised in the Petition
`Petitioner requests we “find claims 1–4, 7, 8, 9–12, 15, and 16
`unpatentable under § 103 as obvious over Doppelt in view of the Admitted
`Art and Jacobs and/or Gilbert.” Pet. 3. In our Institution Decision, entered
`before the SAS decision, we determined that Petitioner established a
`reasonable likelihood of showing the unpatentability of all challenged claims
`over the combination of Doppelt, AAPA, and Jacobs, and instituted inter
`partes review as to this asserted ground only. Dec. Inst. 21.
`In its initial Response, Patent Owner did not argue the Petition did not
`raise this instituted ground. See PO Resp. Subsequent to the SAS decision,
`and to bring our Institution Decision in compliance with the Director’s
`guidance regarding SAS, we asked the parties to “identify any non-instituted
`grounds raised in the Petition and the claims that pertain to such grounds.”
`Paper 39, 3. The parties agreed, via a joint email, that “the non-instituted
`ground in this proceeding is as follows: . . . Whether claims 1–4, 7–12, 15,
`and 16 are rendered obvious by Doppelt, Applicant Admitted Prior Art,
`Jacobs, and Gilbert.” Ex. 3003.7 We, therefore, modified our Institution
`
`7 The email, sent by Mr. Bregman, includes a signature line identifying Mr.
`Bregman as counsel for Petitioner and Mr. Monaldo as counsel for Patent
`Owner. Mr. Monaldo, copied on the email, did not object to the inclusion of
`his name on the signature line in a subsequent call with the parties, and did
`not allege that the email misrepresented the parties’ agreement or was in any
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`Decision to include this as the only additional ground raised in the Petition.
`Paper 39, 5.
`During the conference calls with the parties regarding compliance
`with the SAS decision, and in the joint email from the parties identifying
`additional grounds raised in the Petition, Patent Owner did not argue the
`Petition did not raise the ground on which we originally instituted inter
`partes review—obviousness over Doppelt, AAPA, and Jacobs. See Paper
`39; Ex. 3003. Nonetheless, in a footnote of its Supplemental Response—
`filed nearly ten months after its initial Response and after having conducted
`an entire trial on the patentability of the challenged claims over Doppelt,
`AAPA, and Jacobs—Patent Owner now argues that the Petition did not raise
`this originally instituted ground. PO Supp. Resp. 21 n.3. Instead, Patent
`Owner argues, the Petition raised only a single, different, ground, namely,
`the patentability of the challenged claims over Doppelt, AAPA, Jacobs, and
`Gilbert. Id.
`We are not persuaded by Patent Owner’s argument for several
`reasons. First, Patent Owner waived the argument by not raising it in its
`initial Response. See PO Resp.; Paper 9, 2–3 (“The patent owner is
`cautioned that any arguments for patentability not raised in the response will
`be deemed waived.”). Second, even if Patent Owner did not waive the
`argument, Patent Owner has not properly presented it for consideration in its
`Supplemental Response, which purports to incorporate the argument by
`reference from Patent Owner’s Preliminary Response. See PO Supp. Resp.
`
`way misleading. Paper 39, 4.
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`21 (“[Patent Owner] previously explained, at pages 14–31 of its . . .
`Preliminary Response (Pap. 6 – incorporated here), that Petitioner’s mode
`of argument is impermissible”) (emphasis added); id. at 21 n.3 (“These
`failings are fatal to the Petition, which as discussed in the Preliminary
`Response, proposed ‘only a single ground—namely obviousness over
`Doppelt in view of Jacobs, ‘Admitted Art,’ And Gilbert.’ Pap. 6, 1, 21–31
`(incorporated here).”) (emphasis added). Our rules expressly prohibit
`incorporating arguments by reference from one document into another. See
`37 C.F.R. 42.6(a)(3). Lastly, even if Patent Owner did properly raise the
`argument in its Supplemental Response, we do not find it persuasive for the
`reasons that follow.
`Our determination that the Petitioner challenged the patentability of
`the challenged claims as obvious over Doppelt, AAPA, and Jacobs is
`supported by the Petition in numerous places. First, the Petition provides
`separate rationales for combining (1) Doppelt, AAPA, and Jacobs; and
`(2) Doppelt, AAPA, Jacobs, and Gilbert. Compare Pet. 38–43 with id. at
`43–44. Second, the Petition states the combination of Doppelt, AAPA, and
`Jacobs teaches all the limitations of claim 1. Id. at 18 (stating that because
`the use of wall controls and passive infrared detectors in garage door
`operators were well known in the Admitted Art, a skilled artisan “would
`immediately recognize that the wall control with occupancy detector,
`microcontroller, and digital data bus of Jacobs could be added to the wall
`control of a conventional garage door system, such as Doppelt”); see also id.
`at 42–43 (stating a skilled artisan “would have recognized that the combined
`system (of Doppelt, Jacobs, and Admitted Art) using these well-known
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`components would benefit users with increased programmability and control
`over their garage door system”). And, finally, the Petition relies on Gilbert
`in a purely conditional manner that depends on the construction of the term
`“wall console.” Id. at 58 (“To the extent that the Board determines that the
`claimed ‘wall console’ does not require a passive infrared detector, Gilbert
`also discloses a ‘wall console having a microcontroller.’”).
`As discussed above, the Petition itself provides ample evidence that
`Petitioner’s challenge to the claims included the originally instituted ground
`based on the combination of Doppelt, AAPA, and Jacobs. Finding
`otherwise would require us to ignore the substantive analysis provided for
`this ground in the Petition, as well as the “and/or” language in Petitioner’s
`challenge. It would effectively require us to rewrite Petitioner’s “and/or”
`challenge to recite only an “and” challenge. This we cannot do. See SAS,
`138 S. Ct. at 1355 (“Congress chose to structure a process in which it’s the
`petitioner . . . who gets to define the contours of the proceeding.”).
`Accordingly, for all of the reasons discussed above, we find the
`Petition challenges the patentability of the challenged claims as obvious over
`(1) Doppelt, AAPA, and Jacobs and (2) Doppelt, AAPA, Jacobs, and
`Gilbert.
`E. Obviousness over Doppelt, AAPA, and Jacobs
`Petitioner argues claims 1–4, 7–12, 15, and 16 of the ’319 patent
`would have been obvious under 35 U.S.C. § 103(a) in view of the
`combination of Doppelt, AAPA, and Jacobs. Pet. 38–8
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