Case No. IPR2019-00500
`Patent No. 9,737,154
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`AMERICAN NATIONAL MANUFACTURING INC.,
`Petitioner,
`
`v.
`
`SLEEP NUMBER CORPORATION
`f/k/a SELECT COMFORT CORPORATION,
`Patent Owner.
`
`____________
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`Case No. IPR2019-00500
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`Patent No. 9,737,154
`____________
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`
`
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S
` ORIGINAL MOTION TO AMEND (PAPER 42)
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`
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`WA 13568750.1
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`Case No. IPR2019-00500
`Patent No. 9,737,154
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`TABLE OF CONTENTS
`INTRODUCTION ......................................................................................... 1
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`I.
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`II. ARGUMENT ................................................................................................. 2
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`A. The Proposed Amendments Fail To Meet The Statutory And Regulatory
`Requirements ..................................................................................................... 2
`
`1. PO has not demonstrated how any Proposed Amendment is responsive to
`a ground of unpatentability............................................................................. 3
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`2. PO has not demonstrated written description support for the Proposed
`Amendments or Substitute Claims as a whole ................................................ 3
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`3. The Substitute Claims are not enabled and/or lack written description ... 5
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`Independent Substitute Claims are arguably broader in light of proposed
`4.
`dependent Substitute Claims .......................................................................... 6
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`5. The Substitute Claims are indefinite ....................................................... 7
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`6. Compliance with the duty of candor is lacking ....................................... 7
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`B. The Substituted Claims Are Improper and/or Are Obvious ........................ 7
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`1. Unamended Base Claims are invalid consistent with this Board’s
`determinations in the Institution Decision ...................................................... 8
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`2.
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`3.
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`4.
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`5.
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`6.
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`7.
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`“Valve enclosure” and “air bladder” ......................................................11
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`“Additive” / “multiplicative” PAFs .......................................................13
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`“Count” and “elapsed time” ..................................................................16
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`“User” compensation .............................................................................17
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`“Plurality of air bladders” ......................................................................18
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`“simultaneously” and “independently” adjusting separate air bladders ..19
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`8. Remaining miscellaneous Proposed Amendments and Substitute Claims
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`21
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`C. Gamesmanship Should Not Be Encouraged and Any Revised MTA Should
`Be Carefully Scrutinized ...................................................................................22
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`III.
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`CONCLUSION .........................................................................................23
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`APPENDIX A.......................................................................................................26
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`Case No. IPR2019-00500
`Patent No. 9,737,154
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`TABLE OF AUTHORITIES
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` Page(s)
`
`
` Alice Corp. Pty. Ltd. v. CLS Bank Intern.,
`573 U.S. 208 (2014) .................................................................................. passim
`
`B.E. Tech., L.L.C. v. Google, Inc.,
`No. 2015-1827, 2016 WL 6803057 (Fed. Cir. Nov. 17, 2016) ..................... 4, 13
`
`Innovention Toys, LLC v. MGA Ent., Inc.,
`637 F.3d 1314 (Fed. Cir. 2011) ........................................................................ 13
`
`Intel Corp. v. Alacritech, Inc.,
`IPR2017-01391, Paper 81 ............................................................................ 4, 14
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398, 127 S.Ct. 1727 (2007) ........................................................ passim
`
`Lectrosonics, Inc., v. Zaxcom,
`IPR2018-01129, Paper 15 (PTAB Feb. 25, 2019) .......................................... 2, 3
`
`Mylan Pharma. Inc. v. Sanofi-Aventis Deutschland GmbH,
`IPR2018-01679 .................................................................................................. 9
`
`Nautilus, Inc. v. Biosig Inst., Inc.,
`572 U.S. 898 (2014) ........................................................................................... 8
`
`Nichia Corp. v. Emcore Corp.,
`IPR2012-00005, Paper 27 (PTAB June 3, 2013) .................................... 5, 14, 15
`
`Nichia Corp. v. Emcore Corp.,
`IPR2012-00005, Paper 68, 2014 WL 574596 (PTAB Feb. 11,
`2014) aff’d 599 Fed. Appx. 959 (Fed. Cir. Apr. 16, 2015) ........................ passim
`
`Ormco Corp. v. Align Tech., Inc.,
`498 F.3d 1307 (Fed. Cir. 2007) ...................................................................... 5, 6
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`Case No. IPR2019-00500
`Patent No. 9,737,154
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`Petitioner American National Manufacturing, Inc. (“ANM” or “Petitioner”)
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`files this Opposition in response to Patent Owner Sleep Number Corp.’s (f/k/a Select
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`Comfort Corp.) (“PO” or “Sleep Number”) Original Motion to Amend (Paper 42)
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`(the “MTA”).1 The appendix to the MTA provides a redline of proposed “Substitute
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`Claims” (or the “Proposed Amendment(s)”).
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`I.
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`INTRODUCTION
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`PO files a barebones MTA. It lacks any analysis or discussion of prior art or
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`how any Proposed Amendment addresses grounds of unpatentability. It lacks any
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`supporting expert declaration. These deficiencies alone are ground for denial.
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`Nonetheless, Petitioner herein analyzes the Proposed Amendments. That
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`analysis shows that the Proposed Amendments add nothing more than non-
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`distinguishing, generic limitations within the ambit of prior art and do nothing to add
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`to patentability.
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`Accordingly, the Board should deny the MTA.
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`1 On January 5, 2020, PO submitted an email to the Board that requested leave to
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`file a corrected MTA in order to correct a material misrepresentation in the MTA.
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`See MTA at 8 (falsely claiming that the application leading to the ’747 Patent
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`contains a claim of priority to the ’172 Patent). Petitioner does not oppose this
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`procedural request (although it disagrees with substance of PO’s position regarding
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`usage for support of the ’172 Patent as discussed in § II.B.2 infra). It does not appear
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`that the Board has ruled on PO’s request, and to date, PO has not filed a corrected
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`MTA.
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`Case No. IPR2019-00500
`Patent No. 9,737,154
`II. ARGUMENT2
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`A. The Proposed Amendments Fail To Meet The Statutory And
`Regulatory Requirements
`
`Before the patentability of the Proposed Amendments may be addressed, the
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`claims must be shown to meet the statutory requirements of 35 U.S.C. § 316(d) and
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`the procedural requirements of 37 C.F.R. § 42.121. That is, Patent Owner must
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`demonstrate: (1) the amendment proposes a reasonable number of substitute claims;
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`(2) the amendment does not seek to enlarge the scope of the claims of the patent or
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`introduce new subject matter; (3) the amendment responds to a ground of
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`unpatentability involved in the trial; and (4) the original disclosure sets forth written
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`description support for each proposed claim. See 35 U.S.C. § 316(d)(1)(B),(3); 37
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`C.F.R. §42.121; Lectrosonics, Inc., v. Zaxcom, IPR2018-01129, Paper 15 (PTAB
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`Feb. 25, 2019) (precedential). Additionally, there is a duty of candor:
`which includes a patent owner’s duty to disclose to the
`Board information of which the patent owner is aware that
`is material to the patentability of substitute claims, if such
`information is not already of record in the case. When
`considering the duty of candor in connection with a
`proposed amendment, a patent owner should consider
`each added limitation. Information about an added
`limitation may be material even if it does not include the
`rest of the claim limitations.
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`Lectrosonics, Paper 15 at 9–10.
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`PO has failed to demonstrate that its proposed substitute claims meet these
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`threshold requirements, so the MTA should be denied.
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`2 Pin citation to an exhibit in the record of this IPR proceeding refer to the exhibit
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`page numbers added in bottom-most footer of the exhibit if multiple page numbering
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`is present.
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`1.
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`PO has not demonstrated how any Proposed Amendment is
`responsive to a ground of unpatentability
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`PO proposes a total of 19 new Substitute Claims 23–41. Yet, the MTA
`
`provides neither any discussion or analysis of any prior art, nor how any Proposed
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`Amendment is responsive to a ground of unpatentability. Certain Proposed
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`Amendments related directly to the subject matter of existing dependent claims that
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`this Board analyzed in its Institution Decision (Paper 11) and found to be taught by
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`asserted prior art. Yet, Patent Owner does not even bother to analyze such art that
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`is in plain sight. The MTA’s omission of analysis of prior art is particularly
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`egregious, and this omission alone is grounds for denied. See, generally, Nichia
`
`Corp. v. Emcore Corp., IPR2012-00005, Paper 68, 2014 WL 574596 at *30 (PTAB
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`Feb. 11, 2014) aff’d 599 Fed. Appx. 959 (Fed. Cir. Apr. 16, 2015) (“Nichia-FRD”)
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`(“A mere conclusory statement [] that one or more added claim features are not
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`described in any prior art or would not have been suggested or rendered obvious by
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`the prior art is facially inadequate.”). Petitioner’s arguments in this section are
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`further supported by the detailed discussion in §§ II.A.3 and II.B infra.
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`2.
`
`PO has not demonstrated written description support for the
`Proposed Amendments or Substitute Claims as a whole
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`“A motion to amend claims must identify clearly the written description
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`support for each proposed substitute claim.” Nicia-FRD at *29 (citing 37 C.F.R. §
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`42.121(b)(1)). “The written description test is whether the original disclosure of the
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`application relied upon reasonably conveys to a person of ordinary skill in the art
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`that the inventor had possession of the claimed subject matter as of the filing date.”
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`Id. (citing Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir.
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`2010) (en banc)).
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`Here, without any supporting discussion or analysis, the MTA (at 8–15)
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`merely string cites a list of paragraphs that purportedly “support” the Proposed
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`Amendments. This is insufficient and is grounds for denial. See, e.g., B.E. Tech.,
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`L.L.C. v. Google, Inc., No. 2015-1827, 2016 WL 6803057, at *7 (Fed. Cir. Nov. 17,
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`2016) (agreeing with Board that a patent owner did not meet its burden to show
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`written description support for proposed substitute limitations in motion to amend
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`where the patent owner provided only a string citation without explaining how the
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`cited material supported each of the proposed substitute limitations); Intel Corp. v.
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`Alacritech, Inc., IPR2017-01391, Paper 81 at 43–44 (holding, even after Aqua
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`Products, “mere string citations without explanation are insufficient to meet even
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`this lower threshold burden of production” and “[i]t is not the responsibility of the
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`Board to search through the string citations to find sufficient written description
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`support for each element and we decline Patent Owner’s invitation to do so”); Nichia
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`Corp. v. Emcore Corp., IPR2012-00005, Paper 27 at 4, (PTAB June 3, 2013)
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`(“Nichia-CP”) (stating mere citation “without any explanation is on its face
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`inadequate”).
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`Written description support must also exist for the claims as a whole. See
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`Nichia-CP at 4. However, PO’s string citations for support are only provided for
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`individual limitations and without any explanation of how non-verbatim limitations
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`or the Substitute Claims as a whole have support. Again, this is insufficient. Id.
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`(“[S]hould the claim language [] not appear in ipsis verbis in the original disclosure,
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`a mere citation to the original disclosure without any explanation as to why a person
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`of ordinary skill in the art would have recognized that the inventor possessed the
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`claimed subject matter as a whole may be similarly inadequate.” (emphasis added)).
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`The lack of support for certain Proposed Amendments is further discussed in
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`more detail in §§ II.B.2 and II.B.6 infra.
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`3.
`
`The Substitute Claims are not enabled and/or lack written
`description
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`Pursuant to 35 U.S.C. § 112, enablement requires “the specification . . . to
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`teach one of ordinary skill in the art how to make the invention.” See, e.g., Ormco
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`Corp. v. Align Tech., Inc., 498 F.3d 1307, 1318 (Fed. Cir. 2007) (emphasis added).
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`Each of the independent Substitute Claims recite limitations of determining an
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`adjustment factor error (“AFE”) and modifying the pressure adjustment factor
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`(“PAF”) based on the AFE. See, MTA, App’x, at 19–28, ¶¶ [23.13]–[23.16], [27.6]–
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`[27.7], [30.8]–[30.9], and [32.15]–[32.18]. The AFE as claimed is determined based
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`on comparing the actual bladder pressure to the desired pressure setpoint. See, e.g.,
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`id., ¶ [32.15] (“determine [] a first adjustment factor error as a function of a
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`difference between the first desired pressure setpoint and the actual [] bladder
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`pressure within the first air [] bladder after adjusting pressure”). These limitations
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`appear to correspond to element 180 depicted in Fig. 6 of the ’409 PCT App. The
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`disclosure for 180 states: “[a]n updated adjustment factor is therefore determined
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`based upon a comparison between the sensed pressure and the desired setpoint
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`pressure, and the pressure adjustment factor is thereafter modified in step 180.” ’409
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`PCT App, ¶ [0063] (emphasis added); see also ¶¶ [0064]–[0067] (providing
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`equations for quantifying the AFE and updating the PAF).3 There is no written
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`description support or enabling disclosure for updating the PAF based on actual
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`3 This portion of the disclosure appears inoperative as Dr. Phinney explains. Ex.
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`1046, § X (updating PAF per the specification results in same PAF or accumulation
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`of small amounts of error over time (¶¶ 434–36)). Inoperability strongly evidences
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`lack of enablement. See Ormco, 498 F.3d at 1319 (failure to be able to implement
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`“an embodiment of the patent invention [] is strong evidence that the patent
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`specification lacks enablement”)
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`pressure as recited in the Substitute Claims. See Phinney Decl., Ex. 1046, § X
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`(providing a more detailed discussion). PO does not explain how the disclosure
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`related to updating based on “sensed” pressure supports claims directed to updating
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`based on “actual” pressure.
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`4.
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`Independent Substitute Claims are arguably broader in light of
`proposed dependent Substitute Claims
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`Recognizing the issues discussed in the preceding section, PO has proposed
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`certain Substitute Claims:
`“determining the first adjustment factor error further
`comprises: quantifying a value representative of a
`difference between the first actual bladder pressure and the
`first desired pressure setpoint” ([24.1])
`
`“modifying the first pressure adjustment factor based upon
`the first adjustment factor error consists of modifying the
`first pressure adjustment factor based upon the presence of
`the first adjustment factor error” ([25.1])
`
`“modifying the first pressure adjustment factor based upon
`the first adjustment factor error consists of using the first
`pressure adjustment factor and the first adjustment factor
`error to calculate a new pressure adjustment factor”
`([26.1])
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`MTA at 20–21.
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`Based on principles of claim differentiation, these proposed dependent claims
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`may imply that the relevant limitations in the base claims are broad enough to cover
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`(1) the AFE being: a quantity value ([24.1]), a binary flag ([25.1]), or something else
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`([26.1]); and (2) modifying the PAF requires merely: using the AFE quantity to
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`update the PAF ([24.1]), using the AFE to make a binary decision whether or not to
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`update the PAF ([25.1]), or any conceivable usage of the AFE ([26.1]). PO has not
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`Patent No. 9,737,154
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`proposed any claim constructions in its MTA that would limit this impact. These
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`proposed dependent claims are an impermissible attempt to broaden to the scope
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`independent claims and further lack support.4
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`5.
`As discussed in detail in §§ II.A.3 and II.A.4 supra, the steps of determining
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`The Substitute Claims are indefinite
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`an AFE and modifying the PAF based on the AFE are unsupported and subject to
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`multiple competing interpretations as evidenced by the proposed Substitute Claims
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`24–26. The Substitute Claims are thus indefinite and fail to satisfy 35 U.S.C. § 112.
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`See, e.g., Nautilus, Inc. v. Biosig Inst., Inc., 572 U.S. 898, 910 (2014) (“a patent must
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`be precise enough to afford clear notice of what is claimed, thereby apprising the
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`public of what is still open to them.” (quotations, alterations, and citations omitted;
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`emphasis added)).
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`6.
`PO has not made any attempt to comply with its duty of candor, such as
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`Compliance with the duty of candor is lacking
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`providing a list of known art. This is in contrast to what other patent owners have
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`done in IPR proceedings. See, e.g., Mylan Pharma. Inc. v. Sanofi-Aventis
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`Deutschland GmbH, IPR2018-01679, Ex. 2301 (patent owner providing 8-page list
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`of references with its motion to amend to satisfy the duty of candor pursuant to 37
`
`C.F.R. § 42.11).
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`B.
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`The Substituted Claims Are Improper and/or Are Obvious
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`The MTA provides no analysis of the patentability of any Proposed
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`4 The MTA (merely providing lengthy string cite of paragraphs) (at 12) also does
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`not explain how there is support for these limitations individually or for the claims
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`as a whole. Indeed, these proposed dependent claims appear to impermissibly
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`conflate the disclosure.
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`Amendment. Nonetheless, below Petitioner analyzes the Proposed Amendments
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`and demonstrates how they do not add to patentability. The first subsection infra
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`briefly addresses how the unamended base claim(s) (e.g., claim 1) is invalid as
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`already analyzed and determined by this Board. The following subsections infra
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`discuss how each Proposed Amendment is taught and rendered invalid by prior art
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`or otherwise.5
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`1.
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`Unamended Base Claims are invalid consistent with this Board’s
`determinations in the Institution Decision
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`This Board in its Institution Decision has already analyzed and found that the
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`unamended base claims are likely “unpatentable in view of Gifft, Mittal, and
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`Pillsbury.” Paper 11 at 27–32. Petitioner provides the below brief discussion using
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`unamended Claim 1 of the ’154 Patent as exemplary. Claim 1 generally relates to
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`the concept of compensating for the conduit effect while measuring a “sensed”
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`pressure during an inflate/deflate operation using a pressure adjustment factor
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`(“PAF”), and updating the PAF using an adjustment factor error (“AFE”) based on
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`measuring “actual” pressure during a steady state. For brevity, these limitations are
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`discussed in plain English here. A more detailed discussion is provided by Dr.
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`Phinney. See, e.g., Phinney Decl., Ex. 1007, ¶¶ 89–136 and Ex. 1046, § VII.A,
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`VII.B, and IX.A.
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`First, Gifft teaches all hardware components recited in Claim 1. For example,
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`Gifft teaches an air bed including a plurality of air chambers/bladders (122 and 124),
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`remote control (126), pump with pump housing (112) including a control device
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`5 The MTA does not provide a logical organization of the Proposed Amendment, so
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`Petitioner has grouped the Proposed Amendments in the below groupings.
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`Appendix A hereto provides a table correlating each grouping to specific proposed
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`claims and limitations using the same notations as used in the Appendix to the MTA.
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`(i.e., processor board 20), pump manifold (10 and 100), pressure sensor/transducer
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`(22 and 24), as shown:
`
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`Gifft, Ex. 1004, Fig. 2 (showing overview of an air bed), Fig. 1 (showing a pump),
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`and Fig. 3 (showing a pump manifold/valve enclosure), respectively.
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`Second, both Mittal and Pillsbury teach all relevant software limitations of
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`Claim 1. They teach the concept using a PAF and updating the PAF using an AFE.
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`For example, Pillsbury teaches measuring a sensed pressure (208) during
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`deflate that uses PAF (offset 214) to compensate for the conduit effect, as shown:
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`Phinney Decl., Ex. 1007 (annotating Pillsbury (Ex. 1006), Fig. 2B). Pillsbury further
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`teaches that the offset is updated using an AFE as explained:
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`Ex. 1006 at 7:47–58.
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`Similarly, Mittal teaches measuring “sensed” (or dynamic) pressure during
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`inflate/deflate using a PAF (or offset), adjusting sensed pressure until a desired
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`pressure is reached, and updating the PAF (or offset):
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`
`
`*
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`*
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`*
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`
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`
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`
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`
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`Mittal, Ex. 1005, Fig. 5B (color emphasis added showing deflate in red and inflate
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`in blue) and 22:12–58.
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`Third, all the above (and below) discussed references are from analogous
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`fields of endeavor—pneumatic systems. See Phinney Decl., Ex. 1046, § VII.A.2;
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`see also, Edwards Dep. Tr. (Dec. 5, 2019), Ex. 1038, at 69:2–71:5 (PO’s expert
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`suggesting, e.g., tire pressure monitoring systems and handwashing systems, are
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`relevant fields). Thus, there is a motivation to combine. See B.E. Tech., 2016 WL
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`6803057, at *6; see also Innovention Toys, LLC v. MGA Ent., Inc., 637 F.3d 1314,
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`1322 (Fed. Cir. 2011). This Board thoroughly analyzed this issue and so recognized.
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`See Inst. Dec., Paper 11 at 27–31 and 40–41.
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`For the above reasons, inter alia, this Board correctly found a reasonable
`
`likelihood that the claims of the ’154 Patent to be obvious. See, generally, Inst. Dec.,
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`Paper 11; see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417, 127 S.Ct. 1727,
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`1740 (2007) (“when a patent ‘simply arranges old elements with each performing
`
`the same function it had been known to perform and yields no more than one would
`
`expect from such an arrangement, the combination is obvious” (citations and
`
`quotations omitted)).
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`2.
`Throughout the Substitute Claims, PO has amended the original claim
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`“Valve enclosure” and “air bladder”
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`language of “pump housing” and “air chamber” to instead recite “valve enclosure”
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`and “air bladder,” respectively. E.g., MTA, App’x, p. 17, [23.P]. However, these
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`new terms are never used in the specification with any disclosed embodiment, nor
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`are they referenced in the drawings. The term “bladder” is only used in the
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`background section of the ’154 Patent. While the term “enclosure” does not appear
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`anywhere in the ’154 Patent. Simply put these new terms lack support.
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`Recognizing the lack of support, the MTA (e.g., at 9) cites a list of paragraphs
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`that purportedly “support” these amendments, but fails to provide any supporting
`
`analysis or discussion of how that list shows support for these amendments. This
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`alone is grounds for denial. See, e.g., Alacritech, IPR2017-01391, Paper 81 at 43–
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`44 (holding, even after Aqua Products, “mere string citations without explanation
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`are insufficient to meet even this lower threshold burden of production” and “[i]t is
`
`not the responsibility of the Board to search through the string citations to find
`
`sufficient written description support for each element and we decline Patent
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`Owner’s invitation to do so”).
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`The MTA’s cited “support” also expressly relies on Gifft (the ’172 Patent)
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`(MTA at 90)—which is § 102(b) prior art.6 Gifft is only incorporated by reference
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`into the background section of the ’154 Patent (and parent ’409 PCT App). Ex.
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`1001, 1:28–30; Ex. 1002 at 3, [0003]. Gifft cannot be relied on for support. 37
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`C.F.R. § 42.121(b)(1) and § 1.83(a) (“The drawing in a nonprovisional application
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`must show every feature of the invention specified in the claims.”); see also Nichia-
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`CP at 3 (“In particular, 37 C.F.R. § 42.121(b)(1) requires the patent owner to set
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`forth the support in the original disclosure of the patent for each proposed substitute
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`claim.” (emphasis in original)).7 Significantly, the valve enclosure limitation is
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`demonstrated in § 102(b) prior art Gifft, and thus, the valve enclosure limitation can
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`do nothing to distinguish the claim from the prior art. See KSR, 550 U.S. at 417 (“If
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`a person of ordinary skill can implement a predictable variation, § 103 likely bars its
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`patentability.”).
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`In sum, these amendments, inter alia, lack support in the specification and
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`drawings of the original disclosure, render claims indefinite, do nothing to
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`distinguish prior art, and at best would sow confusion regarding claim scope.8
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`6 See fn. 1 supra.
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`7 Although the MTA (at 8) relies on Nichia-CP, it unclear how Nichia-CP supports
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`PO’s position.
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`8 These amendments also raise serious concerns related to issues of inventorship and
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`claim construction. In particular, named inventor Mr. Mahoney testified that Mr.
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`WA 13568750.1
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`

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`Case No. IPR2019-00500
`Patent No. 9,737,154
`3.
`The Proposed Amendments include amending certain claims to further recite
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`“Additive” / “multiplicative” PAFs
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`that inflate and deflate PAFs are “additive” and “multiplicative,” respectively, as
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`exemplified:
`wherein, if adjusting pressure with the air bladder is an
`inflation[/deflation] of the air bladder, the pressure
`adjustment factor is an additive[/multiplicative] pressure
`adjustment factor
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`E.g., MTA, App’x, p. 24, [30.5] and [30.6].
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`These amendments appear to verbatim correspond to the subject matter of
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`original dependent claims 4–7 (for deflate) and 7–9 (for inflate) of the ’154 Patent.
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`Petitioner in this proceeding challenged claims 4–9 based on prior art references
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`Gifft (Ex. 1004), Mittal (Ex. 1005), Pillsbury (Ex. 1006), and Ebel (Ex. 1007)
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`supported by the expert declaration of Dr. Phinney (Ex. 1007). This Board reviewed
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`and vetted the challenge to claims 4–9 and supporting evidence. After careful
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`consideration, this Board found a reasonable likelihood that those claims 4–9 were
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`unpatentable and provide a detail discussion of its reasoning. See Inst. Dec., Paper
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`11 at 32–33 and 39–41.
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`Indeed, this Board correctly recognized, inter alia, that an additive, inflate
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`PAF was expressly taught by Mittal:
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`
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`Gifft was responsible for the conception and reduction to practice of the valve
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`enclosure. Mahoney Dep. Tr. (Jan. 8, 2020), Ex. 1051, at 47:9–48:4; (agreeing Mr.
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`Gifft was responsible for “all the mechanicals for the valve enclosure assembly”).
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`Mr. Gifft is not a named inventor on the patent-at-issue here. Improper inventorship
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`is grounds for rejection under pre-AIA 35 U.S.C. § 102(f). See MPEP § 2137. PO
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`has not addressed these issues.
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`Case No. IPR2019-00500
`Patent No. 9,737,154
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`For claim 7, ANM contends that Gifft and Mittal both
`disclose the claimed “inflate pressure target” where, for
`example “[Mittal’s] (Fig. 5B, steps 270, 292) include
`pressure targets which can be greater than the initial
`pressure within the pump housing.” [Pet.] at 39 (citing Ex.
`1004, 3:16–20; Ex. 1005, Fig. 5B). Considering claim 8,
`ANM argues
`that “in Mittal, during
`the pressure
`adjustment cycle 232, the desired pressure is adjusted by
`offsets, which are subtracted in the case of deflation and
`added in the case of inflation resulting in the target
`pressure.” Id. (citing Ex. 1005, 22:12–22).
`ANM argues persuasively that these and the other
`limitations recited in dependent claims 2–4 and 7–9 are
`taught, and would have been understood by one of
`ordinary skill in the art, as disclosed by one or more of the
`Gifft, Mittal, and Pillsbury references. Id. at 38–41.
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`Inst. Dec., Paper 11 at 33–34 (alteration in original; relevant portions of Mittal are
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`reproduced in § II.B.1 supra). Similarly, this Board correctly recognized, inter alia,
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`that a multiplicative, deflate PAF was expressly taught by Ebel:
`Considering Figures 1 and 2, Ebel teaches that the volume,
`conduit resistance, and mass inertia of conduit 3 (Figure
`1) are approximated by conductor 11, resistance 13, and
`inductance 14 (Figure 2). [Ex. 1007] ¶ 25. Based on such
`an electrical equivalent circuit, Ebel teaches also that the
`filling and emptying equations for determining the actual
`include,
`i.e., “bag pressure” Pi
`internal pressure,
`respectively, multiplicative factors a1, a2, and additive
`offsets b1, b2. Id. ¶¶ 30–31. Where the sensed pressure is
`PS, the filling equation is for example:
`Pi = a1 x PS + b1
`A corrected pressure Pcorr is:
`Pcorr = PS - |a1 x PS + b1|
`Id. ¶¶ 31–32.
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`Case No. IPR2019-00500
`Patent No. 9,737,154
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`Ebel therefor accounts for the discrepancy between
`a sensed pressure and an actual bag pressure, and explains
`that overall, the process utilizing these multiplicative
`factors and “arranging the pressure sensor in the hose line
`and by the capability of compensation also of the error
`additionally increased by this, the comfortable seating as
`well as the adjustment possibility of the seat is improved
`by a faster and more accurate adjustability.” Id. ¶ 12.
`. . . . Dr. Phinney testifies further, with respect to
`claim 6 as it depends from claim 5, that “multiplying the
`desired pressure set-point (PC) by the multiplicative factor
`R[V]/(R+R[V]) yields a deflate pressure target value referred
`to the sensor.” Id. ¶ 226. Multiplying by a deflate pressure
`adjustment value, R[V]/(R+RV), that is less than one,
`according to Dr. Phinney, is the same as dividing by that
`multiplicative pressure adjustment factor. Id.
`
`Id. at 38–40; see also Ebel, Ex. 1007, ¶ [0032] (disclosing deflate or emptying
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`equation “Pcorr = PS - |a2 x PS + b2|”). For a more detail analysis see Dr. Phinney’s
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`Report, Ex. 1046, §§ VII.B and IX.B.
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`Although PO requests “guidance” from this Board, its MTA fails to provide
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`any discussion of the Board’s analysis much less the Petition’s analysis. On this
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`record, it is unclear how this Board can provide any more guidance than it already
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`has. The MTA’s lack of analysis alone is grounds for denial. See, generally, Nichia-
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`FRD at *30 (“A mere conclusory statement [] that one or more added claim features
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`are not described in any prior art or would not have been suggested or rendered
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`obvious by the prior art is facially inadequate.”)
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`Thus, the Substitute Claims with these amendment are unpatentable over prior
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`art. See KSR, 550 U.S. at 417 (“If a person of ordinary skill can implement a
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`predictable variation, § 103 likely bars its patentability.”).
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`WA 13568750.1
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`Case No. IPR2019-00500
`Patent No. 9,737,154
`4.
`The Proposed Amendments include amending certain claims to further recite
`
`“Count” and “elapsed time”
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`limitations related to a “count” and an “elapsed time.” MTA, App’x, p. 19–20,
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`[30.11] and [31.1] (reciting, e.g., “determining the count comprises determining an
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`elapsed time indicative of a start of the adjusting pressure in the air bladder until a
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`pressure within the valve enclosure is substantially equal to the pressure target and
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`a stop of the adjusting pressure in the air bladder until the pressure within the valve
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`enclosure is substantially equal to the pressure target”).
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`For the count limitations, the MTA cites ¶¶ [0072]–[0073] and [0075]–[0076]
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`of the ’409 PCT App in support. A terse review of those paragraphs reveals that the
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`count limitations are nothing more than the elementary programming step of
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`incrimination, or a basic ‘for loop.’ Such is within the ambit of the prior art. See
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`Finkelstein, Ex. 1008 at 12:60–13:23 (“Repeat 1 through 5 until all zones are at
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`target without adjustme