Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 7
`Entered: April 17, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DYNACRAFTBSC,INC.,
`Petitioner,
`
`Vv.
`
`MATTEL, INC.,
`Patent Owner.
`
`Case IPR2018-00039
`Patent 7,950,978 B2
`
`Before BARRY L. GROSSMAN, MITCHELL G. WEATHERLY, and
`JAMES A. WORTH,Administrative Patent Judges.
`
`WEATHERLY, Administrative Patent Judge.
`
`DECISION
`Instituting Inter Partes Review
`35 U.S.C. § 314, 37 CER. $$ 42.4, 42.108
`
`I.
`
`INTRODUCTION
`
`A. BACKGROUND
`
`Dynacraft BSC,Inc. (“Petitioner”) filed a petition (Paper 1, “Pet.”) to
`institute an inter partes review of claims 1-3, 5, 6, 8-10, 12-14, 21, and 24
`(the “challenged claims”) of U.S. Patent No. 7,950,978 B2 (Ex. 1001, “the
`°978 patent”). 35 U.S.C. § 311. Mattel, Inc. (“Patent Owner’) timely filed a
`
`
`Tel: 571-272-7822
`
`Paper 7
`Entered: April 17, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DYNACRAFTBSC,INC.,
`Petitioner,
`
`Vv.
`
`MATTEL, INC.,
`Patent Owner.
`
`Case IPR2018-00039
`Patent 7,950,978 B2
`
`Before BARRY L. GROSSMAN, MITCHELL G. WEATHERLY, and
`JAMES A. WORTH,Administrative Patent Judges.
`
`WEATHERLY, Administrative Patent Judge.
`
`DECISION
`Instituting Inter Partes Review
`35 U.S.C. § 314, 37 CER. $$ 42.4, 42.108
`
`I.
`
`INTRODUCTION
`
`A. BACKGROUND
`
`Dynacraft BSC,Inc. (“Petitioner”) filed a petition (Paper 1, “Pet.”) to
`institute an inter partes review of claims 1-3, 5, 6, 8-10, 12-14, 21, and 24
`(the “challenged claims”) of U.S. Patent No. 7,950,978 B2 (Ex. 1001, “the
`°978 patent”). 35 U.S.C. § 311. Mattel, Inc. (“Patent Owner’) timely filed a
`
`
`
`IPR2018-00039
`Patent 7,950,978 B2
`
`Preliminary Response. Paper6 (“Prelim. Resp.”). Institution of an inter
`
`partes review is authorized by statute when “the information presented in the
`
`petition filed under section 311 and any responsefiled under section 313
`
`showsthat there is a reasonable likelihood that the petitioner would prevail
`
`with respect to at least 1 of the claims challengedin the petition.” 35 U.S.C.
`
`§ 314(a); 37 C.F.R. § 42.108. Based on our review of the record, we
`
`concludethat Petitioner is reasonably likely to prevail with respect to at least
`
`one of the challenged claims.
`Petitioner contendsthat the challenged claimsare unpatentable under
`35 U.S.C. § 103 based on the following grounds(Pet. 20-63):
`
`
`
`U.S. Patent No. 5,859,509 (Ex. 1003,
`“Bienz’) and U.S. Patent No. 4,634,941
`(Ex. 1004, “Klimo”)
`
`§ 103
`
`
`
`
`1-3, 5, 8-10, 12-14,
`21, and 24
`
`
`
`
` Bienz, Klimo, and U.S. Patent No.
`
`5,994,853 (Ex. 1005, “Ribbe”’)
`
`Generally, Patent Owner contendsthat the Petition should be denied
`
`in its entirety. For the reasons described below, we institute an inter partes
`review ofall challenged claims onall groundsalleged above.
`
`B. RELATED PROCEEDINGS
`
`Theparties identified as a related proceeding the co-pendingdistrict
`
`court proceeding ofFisher-Price, Inc. v. Dynacraft BSC, Inc., 4:17-cv-3745-
`PJH (N.D.Cal.). Pet. 1; Paper 4, 1. Patent Ownerfurtheridentified three
`
`
`
`IPR2018-00039
`Patent 7,950,978 B2
`
`- petitionsfiled in IPR2018-00038,!' -00040, and -00042 as matters that may
`
`affect this proceeding. Paper4, 1.
`
`C. THE ’978 PATENT
`
`The ’978 patentis directed to “toy vehicles that may be ridden by
`
`people, and morespecifically . .. to a system, apparatus, and methodfor
`
`softening the initiation of motion of the toy vehicle.” Ex. 1001, 1:18-21.
`
`Patent Ownerrefers to such a vehicle as a “battery-operated ride-on”
`
`(“BPRO”). Prelim. Resp. 3. Whenthe rider depresses foot pedal switch
`
`210, a forward signal 222a or reverse signal 222b is generated depending
`
`upon the position of forward/reverse switch 215. Id. at 5:19, Fig.3.
`
`Signals 222a, 222b are routed to conditioning unit 505 of soft-start control
`circuit 305, which is “operable to receive the forward and reverse signals
`
`222a and 222b, which maybe analog ordigital, and condition the signals
`
`for input to the controller 510.” Jd. at 5:37-40 (emphasis added),Fig.5.
`The inventors sought to overcomecertain problemsassociated with
`conventional control systems, such as “(i) excessive acceleration,(ii) jerk,
`(iii) safety (e.g. controlling and flipping the vehicle at startup), and(iv)
`wearing of the mechanical componentsofthe drive train for the toy vehicle.”
`
`Ex. 1001, 2:4-10. Thus, the vehicle claimed in the ’978 patent includes a
`
`“soft-start control circuit... integrated into the conventional control
`
`system[].” Jd. at 2:56-57. The ’978 patent explains:
`The soft-start control circuit
`is operable to reduce excessive
`acceleration generated by the conventional control systems due
`to switching, hattery voltage directly to motor(s) of the toy
`
`' The °978 patent is a continuation ofthe application that issued as U.S.
`Patent No. 7,222,684, which includes claimsthat are the subject of IPR2018-
`00038.
`
`
`
`IPR2018-00039
`Patent 7,950,978 B2
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`vehicles. A soft-start circuit mayutilize a processorfor 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 powerto full power.
`
`Id. at 4:1-11. Thetransition signal may be a “pulse width modulation
`
`signal” (“PWM”) that will “linearly” or “non-linearly” ramp the output
`signal to the motor up or down. Jd. at Abstract, 4: 14-18, Figs. 7, 8a, 8b.
`The duty cycle of the pulse width modulation signal may range from about
`
`20 to 100 percent, in which the motors deliver full power when the duty
`
`cycle is 100 percent. Id. at 5:24-29.
`Claims 1, 14, and 21 are the independent claims amongthe challenged
`
`claims, and are directed to a “toy vehicle operable by a person.” Jd. at 9:51—
`
`10:17 (claim 1), 11:1-28 (claim 14), 12:7-33 (claim 21). Claims2, 3, 5, 6,
`
`8-10, 12, and 13 dependdirectly or indirectly from claim 1, id. at 10:19-67,
`
`and claim 24 dependsdirectly from claim 21, id. at 12:55-61. Claim 1,
`whichis representative of the claimed toy vehicle, recites:
`1. A toy vehicle operable by a person,the toy vehicle comprising:
`
`a battery operable to provide powerto electrical components of
`the toy vehicle;
`
`a motor operating as a drive mechanism of the toy vehicle in
`response to a switch controlled by a person;
`
`a throttle switch operable to be controlled by a personin physical
`contact with the toy vehicle, the throttle switch electrically
`coupled between the battery and the motor, and operable to
`provide powerto the motorusingathrottle signal; and
`
`
`
`IPR2018-00039
`Patent 7,950,978 B2
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`a circuit having a first terminal and a second terminal, the first
`terminal being coupled to the battery and the second terminal
`being coupled to the motor, the circuit being operableto:
`
`detect a change in the throttle signal fromafirst level to a
`second level or from the second levelto thefirst level,
`
`the throttle signal operable to induce motion via the motor,
`whereinthefirst level correspondsto the throttle signal
`produced when the person engagesthe throttle switch,
`and
`
`wherein the second level correspondsto the throttle signal
`produced when the person disengages the throttle
`switch;
`
`generateatransition signal based on the changeinthethrottle
`signal
`from the throttle switch,
`the transition signal
`comprising
`
`at least one signal level intermediate to a third signal level
`corresponding to the first level and a fourth signallevel
`corresponding to the secondlevel,
`
`wherein a transition from the third signal level to the at
`least one intermediate signal level to the fourth signal
`level occurs over a significantly longer time period
`than a time period for the changein the throttle signal
`from thefirst level to the second level, and
`
`apply the transition signal to affect operation of the motor.
`
`Id. at 9:51-10:17 (with line breaks addedforclarity).
`
`Il. ANALYSIS
`
`A. CLAIM INTERPRETATION
`
`“A claim in an unexpired patent that will not expire before a final
`written decisionis issued shall be given its broadest reasonable construction
`
`in light of the specification of the patent in whichit appears.” 37 C.F.R.
`§ 42.100(b); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
`
`
`
`IPR2018-00039
`Patent 7,950,978 B2
`
`2144-46 (2016) (affirming that USPTO hasstatutory authority to construe
`
`claims according to Rule 42.100(b)). When applying that standard, we
`interpret the claim language as it would be understood by one of ordinary
`
`skill in the art in light of the specification. In re Suitco Surface, Inc., 603
`
`F.3d 1255, 1260 (Fed. Cir. 2010). Thus, we give claim terms their ordinary
`
`and customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249,
`
`1257 (Fed. Cir. 2007) (“The ordinary and customary meaning‘is the
`
`meaning that the term would have to a person ofordinary skill in the art in
`question.’”). Only terms which are in controversy need to be construed, and
`then only to the extent necessary to resolve the controversy. Vivid Techs.,
`
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`Petitioner proposes an interpretation for “binary throttle signal,”
`whichis recited in independent claims 14 and 21, but not independent
`claim 1 or any ofits dependent claims. Pet. 11-12. Patent Ownercontests
`Petitioner’s proposed interpretation. Prelim. Resp. 18-22. As explained in
`Parts II.C and D below, we determine that Petitioner has demonstrated a
`
`reasonablelikelihood of establishing that the combination of Bienz and
`
`Klimorenders claim 1 unpatentable as obvious, and we exercise discretion
`to institute inter partes review on all challenges toall challenged claims.
`
`Therefore, we need notresolve the differencesin the parties’ positions
`
`regarding this phraseat this stage. Nevertheless, the parties should further
`addressall evidence supporting their respective interpretations during the
`trial, including at least other claims, the written description, and the
`
`prosecutionhistory.
`
`
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`IPR2018-00039
`Patent 7,950,978 B2
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`B. LEGAL STANDARDS
`
`Petitioner challenges the patentability of the challenged claims on the
`
`groundsthat the claims are obvious in light of various references including:
`Bienz, Klimo, and Ribbe. The Supreme Court, in KSR International Co.v.
`Teleflex Inc., 550 U.S. 398 (2007), reaffirmed the framework for determining
`obviousnessas set forth in Graham v. John Deere Co., 383 U.S. 1 (1966).
`
`The KSR Court summarized the four factual inquiries set forth in Graham
`
`that we apply in determining whether a claim is reasonably likely to be
`
`unpatentable as obvious under 35 U.S.C. § 103(a) as follows:
`(1) determining the scope and contentofthe priorart, (2) ascertaining the
`differences betweenthe prior art and the claimsat issue, (3) resolving the
`level of ordinary skill in the pertinentart, and (4) considering objective
`evidence indicating obviousness or nonobviousness. KSR, 550 U.S. at 406.
`
`With these standards in mind, we address each challenge below.
`
`C. CLAIMS1-3, 5, 8-10, 12-14, 21, AND 24:
`OBVIOUSNESS IN VIEW OF BIENZ AND KLIMO
`
`Petitioner argues that the combination of Bienz and Klimo renders
`claims 1-3, 5, 8-10, 12-14, 21, and 24 unpatentable as obvious. Pet. 21-60.
`
`For the reasons explained below, we determine that Petitioner has
`demonstrated a reasonable likelihood of establishing that Bienz and Klimo
`
`renderat least claim 1 unpatentable, and weinstitute inter partes review on
`the challenge to each of claims 1-3, 5, 8-10, 12-14, 21, and 24 in our
`
`discretion.
`
`1. Overview ofBienz
`Bienz describes a BPRO in whichthe rear wheels are driven by DC
`motors. Ex. 1003, 1:6-8. Bienz’s vehicle 10 includes body 12, wheels 14,
`
`
`
`IPR2018-00039
`Patent 7,950,978 B2
`
`and seat 16. Jd. at 3:38-39. Wheels 14 are each driven by a motor, one of
`
`motors 20, 22, that are powered by a six or twelve-volt battery pack 24. Id.
`
`at 3:39-42. Bienz’s vehicle also includes adjustable speed control 30,that
`
`permits the rider to select from amongthree speed configurations, and foot
`
`pedal switch 34. Id. at 3:45—50. Foot pedal switch 34 is:
`the primary on/off control for the rider and is mounted in the
`vehicle to appear as a gas pedal. Switch 34 is simply an on/off
`switch andinterrupts the current flow to stop the car. A direction
`control switch 36 is configured to switch the polarity of the
`voltage to the motors to provide a reverse for the vehicle.
`
`Id. at 2:51-56. Petitioner recognizes, therefore, that Bienz does not describe
`
`a soft-start circuit to ramp up or down the powerdelivery to its rear
`
`wheels 14. See Pet. 41-43 (relying solely upon Klimoas describing the soft-
`
`start aspects of the “control circuit” of claim 1).
`
`2. Overview ofKlimo
`
`Klimois entitled “Electric Wheelchair with Improved Control
`
`Circuit.” Ex. 1004, Title [54]. Klimostates that its speed control circuit has
`
`“broader applications, such as controlling the speed of other motorized
`patient care devices, electric vehicles, machine tool motors, and thelike.”
`
`Id. at 1:17—20. Klimo also discloses “a
`
`speed control circuit for an electric
`
`vehicle” that is powered by a “battery
`
`pack” and “driven by .. . DC electric
`
`motors.” Jd. at 1:21-25, 2:37-38.
`Kigure 1 of Klimo, reproducedat right,
`
`illustrates an exemplary electric
`
`wheelchair. Battery pack A supplies power
`to right and left DC electric motors B and C and joystick D permits the rider
`
`8
`
`
`
`IPR2018-00039
`Patent 7,950,978 B2
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`to select the speed and direction of the chair. Id. at 4:47-52. Joystick D
`
`generates an analog controlsignal that is proportional to the selected speed
`
`and direction,id. at 5:8-19, and has a neutral position corresponding to no
`
`movement, id. at 13:12-16. Klimo’s speed control circuits implement
`gradual and smoothtransitions during changes of speed and direction ofthe
`electric vehicle, eliminating sudden reversals, acceleration, and lurching. Jd.
`
`at 4:3-7. This circuitry is shown schematically in Klimo’s Figure 2, which
`
`wereproduce below with Petitioner’s annotations.
`
`k |
`
`
`
`9¢'
`190°
`(40
`iva
`
`¢
`138b'; 13ee'
`.
`ret
`
`ame mete mee seaeme me re ee ee ee wee ee eee
`
`Petitioner’s annotated version of Klimo’s Figure 2 is a schematic
`diagram of the speed controls of Klimo’s wheelchair.
`
`Petitioner encloses Klimo’s right-side speed control circuit E inside a green
`
`box. Rattery pack A is shownin red, and motorB is shownin bluc.
`Joystick D is highlighted yellow. Joystick D includes speed control
`potentiometer 24, whichis activated by fore and aft movementofjoystick D,
`and direction control potentiometer 26, which is activated by side-to-side
`
`
`
`IPR2018-00039
`Patent 7,950,978 B2
`
`movementofjoystick D. Jd. at 5:8-14. Joystick D thus produces speed
`
`signal and direction signals with amplitudes that vary in proportion to the
`selected speed anddirection. /d. at 5:15-27.
`Upon detecting a changein the throttle signal from joystick D, the
`“selected motor speed signal” it produces enters reference signal means 90
`and is “amplified by a first amplifier 122.” Jd. at 8:25-35. Upon exiting
`
`amplifier 122, the selected motor speed signal enters limiting circuit 124,
`
`which producesa soft-start or soft-stop functionality in the speed control
`circuit by limiting “the rate of change of the selected motor speed signal
`whichlimits the acceleration and deceleration of the wheelchair.” Jd.
`
`at 8:35-37. Limiting circuit 124 generates an output signal that
`
`exponentially approaches the input signal from joystick D andtherateat
`
`whichthe output approachesthe input is selectable using “adjustable
`
`resistances.” Jd, at 8:37-42. Reference signal means 90 also includes a
`
`“deadbandcircuit” that “has a preselected neutral or zero output whenits
`
`input receives a voltage in a preselected range, such as from plusonevoltto
`
`minus onevolt, and has an output that varies with the input outside the
`
`preselected range.” Jd. at 8:55-59. The ‘“deadbandcircuit” thus ensuresthat
`
`small movements ofjoystick D from the neutral position do not result in
`
`movementof the wheelchair.
`
`The output of reference signal means 90, whichis regulated,in part,
`
`by limiting circuit 124, is connected to speed comparator circuit 92, whichis
`
`in turn has output connected to variable power regulator 94. Id., Fig. 2. The
`
`combination of speed comparatorcircuit 92 and variable power regulator 94
`
`generates a pulse-width modulated drive signal that drives motor B suchthat
`
`the “voltage at node 140 is a square wave whose peak amplitudeis the
`
`
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`IPR2018-00039
`Patent 7,950,978 B2
`
`battery voltage and whose minimum amplitude is ground. The amount of
`
`powersupplied to the motor by the variable power regulator 92 [sic, 94] is
`
`determined by the relative duration of the peak amplitude to the minimum
`
`amplitude.” Jd. at 10:65-11:2.
`
`3. Petitioner’s Argument and Evidence Regarding Claim 1
`
`Petitioner contends that Bienz describes “most of the elements”
`
`recited in claim 1, Pet. 21, and that Klimo discloses “all of the elements” of
`
`claim 1, including a soft-start circuit, “in the context of an electric.
`
`wheelchair,” id. at 24-25. Petitioner describes in detail the manner in which
`
`each of Bienz and Klimo describes elements of claim 1. Jd. at 33-43 (citing
`
`Ex. 1003, 1:7-9, 2:1-5, 2:40-43, 2:48-54, 3:5-7, 3:48-50, Figs. 2a, 3a, 3b,
`
`3c; Ex. 1004, 1:14-20, 3:47-54, 3:59-62, 4:47-49, 4:52-55, 5:5—-19, 5:32—
`
`34, 5:42-44, 7:6-41, 8:28-39, 9:14-15, 10:68-11:1, 11:43-46, 13:9-28,
`
`Figs. 1, 2, 3). Petitioner also relies on the testimony of Michael D. Sidman,
`
`Ph.D. to explain the operation of the circuitry in Bienz and Klimo. Jd. at 21-
`
`43 (citing Ex. 1017 JJ 64-75, 77, 79-81). Petitioner contends that Klimo
`
`expressly taught an ordinarily skilled artisan that soft-start and soft-stop
`
`control circuitry was desirable to increase or decrease speed gradually and
`
`smoothly to eliminate sudden reversals, acceleration, andlurching. Jd. at 18
`
`(citing Ex. 1004, 4:3—7). Based on this express teaching, Petitioner argues
`
`that an ordinarily skilled artisan would have found it obvious to incorporate
`
`Klimo’s soft-start and soft-stop control circuit into Bienz’s toy vehicle and
`
`could have done so with a reasonable expectation of success. Jd. at 32-33
`
`(citing Ex. 1017 § 82-86).
`
`11
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`IPR2018-00039
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`4. Patent Owner’s Counter-argument and Evidence Regarding
`Claim 1
`
`Patent Ownerarguesthat Petitioner’s challenge to claim 1 fails for
`
`three reasons, none of whichis persuasive at this stage of the proceeding.
`
`First, Patent Owner contendsthat neither Bienz nor Klimo describes
`
`detecting a changein the “throttle signal from a first level to a second level”
`
`because “forward” and “reverse” are “not distinct levels in Klimo.” Prelim.
`
`Resp. 50. Patent Owner’s argumentis unpersuasive. Petitioner contends
`
`that, in Klimo,the “first level occurs when the ‘operator has pushed the
`
`joystick forward,’” and the “second level occurs whenthe joystick 22 is in
`
`the ‘neutral position.’” Pet. 41 (citing Ex. 1004, 11:43-46, 13:13-16).
`
`Based on our current understanding of Klimo,Petitioner has thus identified
`
`signal levels within Klimo that meet the requirements of the claimed first
`
`and secondsignal levels. We also determine that Petitioner has described
`
`sufficiently how Klimo’s circuitry generates the claimedtransition signal
`
`with at least one signal level intermediate to third and fourth signallevels,
`
`which correspondto the first and second signal levels. Pet. 41-43.
`
`Second, Patent Owner contends that Klimo teaches away from
`
`Petitioner’s proposed combination because Klimostatesthat “[o]perating
`on-off switches rather than continuously variable switches, such as a
`
`potentiometer, with the joystick limits the selection of speed, handling, and
`
`performance[.]” Prelim. Resp. 45-46 (quoting Ex. 1004, 1:58-61). Patent
`
`Owner’s argumentis unpersuasiveat this stage of the proceeding. The
`
`quoted portion of Klimo describes disadvantages ofa prior art wheelchair
`described in U.S. Patent 4,157,123 that incorporates on-off switches, but
`
`Klimo does not indicate that on-off switches cannot be used in connection
`
`12
`
`
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`IPR2018-00039
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`with any portionofits circuitry for adapting joystick signals to make them
`
`smootherandless likely to result in sudden changesin speed or direction.
`
`Third, Patent Ownerargues that objective indicia of non-obviousness
`
`demand that we determinethat the challenged claims, including claim 1, are
`
`not obvious. Prelim. Resp. 47-48. Patent Owner’s argumentis
`
`unpersuasiveat this stage of the proceeding becauseit is unsupported by
`
`persuasive evidence. “The Board’s decision will take into accounta patent
`
`~ ownerpreliminary response where such a responseisfiled, including any
`testimonial evidence, but a genuine issue of material fact created by such
`
`testimonial evidence will be viewedin the light most favorable to the
`
`petitioner solely for purposes of deciding whetherto institute an inter partes
`review.” 37 C.FR. § 42.108(c). Among the evidence cited by Patent Owner
`
`are two declarations, one from Jeff Reynolds (Ex. 2001) and another from
`
`Peter vom Scheidt (Ex. 2003), neither of whichis signed. Jd. (citing
`
`Exs. 2001, 2003).
`
`5. Conclusion
`
`For the reasons expressed above, we determine that Petitioner has
`demonstrated a reasonable likelihood of establishing that the combination of
`
`Bienz and Klimo renders claim 1 unpatentable as obvious. We exercise our
`discretion under 37 C.F.R. § 42.108 and also institute inter partes review of
`
`claims 2, 3, 5, 8-10, 12-14, 21, and 24 for this challenge. By exercising our
`discretion in this regard, we seek to achieve a comprehensive resolution of
`
`the dispute between the parties presented to the Board. See Intex Recreation
`Corp. v. Bestway Inflatables & Material Corp., Case No. IPR2016-00180,
`2016 WL 8377184, at *3-5 (PTAB June6, 2016) (exercising discretion to
`institute on all challenged claims after determining reasonablelikelihood
`
`
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`IPR2018-00039
`Patent 7,950,978 B2
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`that at least one claim is unpatentable). We note, however, that the burden
`
`remains on Petitioner to demonstrate unpatentability. See Dynamic
`
`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
`
`2015). Accordingly, we institute an inter partes review to determine
`
`whether the combination of Bienz and Klimo renders claims 1-3, 5, 8-10,
`
`12-14, 21, and 24 unpatentable as obvious.
`
`D. CLAIM 6:
`OBVIOUSNESSIN VIEW OF BIENZ, KLIMO, AND RIBBE
`
`Claim 6 dependsfrom claim 1 and further recites that “said circuit
`
`includes a processor operable to execute software for producing the
`
`transition signal.” Ex. 1001, 10:32—34. Petitioner relies upon Ribbe as
`Gee
`describing the claimed processorin the form ofits “‘speed control
`
`system 16’ that includes a ‘speed controller, illustrated as a programmable
`
`logic array (PLA) 74 ... which may include a microprocessor, hard-wired
`
`logic elements, and/or any other desired or knowncircuitry.’” Pet. 60-61
`(citing Ex. 1005, 5:38-55). Petitioner contends that Ribbe expressly
`describes that analog or programmabledigital logic were knownalternatives
`
`to implement speed controls in electric vehicles. Pet. 61 (citing Ex. 1005,
`
`5:38-55, 7:10-14). Based on Ribbe’s express teachings, Dr. Sidman
`
`testifies that because claim 6 recites nothing more than the predictable use of
`
`prior art elements of Bienz, Klimo, and Ribbe accordingto their established
`functions, an ordinarily skilled artisan would consider claim 6 to have been
`
`obvious. Ex. 1017 Jf] 113-115.
`
`Patent Ownerrespondsby arguing without persuasive evidentiary
`support that an ordinarily skilled artisan would not have been motivated to
`use Ribbe’s microprocessor with the speed control circuit of Klimo. Prelim.
`
`Resp. 65-68.
`
`14
`
`
`
`IPR2018-00039
`Patent 7,950,978 B2
`
`Wealso exercise discretion and institute inter partes review of
`
`dependent claim 6, so that we may achieve a comprehensive resolution of
`
`the dispute between the parties presented to the Board in connection with
`
`this challenge. We also note that the burden of persuasion to demonstrate
`
`unpatentability remains with Petitioner throughout this proceeding. See
`
`Dynamic Drinkware, 800 F.3d at 1378.
`
`Ill. CONCLUSION
`
`For the reasons expressed above, we determinethat Petitioner has
`
`demonstrated a reasonable likelihood of showingthat at least one claim
`
`amongthe challenged claims is unpatentable, and weinstitute inter partes
`
`review ofall challenged claims on all grounds. This Decision does not
`
`reflect a final determination on the patentability of any claim.
`
`IV. ORDER
`
`For the reasonsgiven,itis:
`
`ORDEREDthatinter partes reviewis instituted of claims 1-3, 5, 6,
`
`8-10, 12-14, 21, and 24 of the ’978 patent with respect to the following
`
`grounds of unpatentability:
`
`(1)
`
`the combination of Bienz and Klimorenders claims 1-3, 5, 8-
`
`10, 12-14, 21, and 24 unpatentable under 35 U.S.C. § 103; and
`
`(2)
`
`the combination of Bienz, Klimo, and Ribbe renders claim 6
`
`unpatentable under 35 U.S.C. § 103;
`FURTHER ORDEREDthat inter partes review is not instituted with
`
`respect to any other groundsof unpatentability alleged in the Petition; and
`
`FURTHER ORDEREDthat pursuant to 35 U.S.C. § 314(a), inter
`
`partes review of the ’978 patentis instituted commencingonthe entry date
`
`15
`
`
`
`IPR2018-00039
`Patent 7,950,978 B2
`
`of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4,
`
`notice is given ofthe institutionofa trial.
`
`16
`
`
`
`IPR2018-00039
`Patent 7,950,978 B2
`
`PETITIONER:
`
`Larry L. Saret
`Rachel N. Bach
`MICHAEL BEST & FRIEDRICH LLP
`Ilsaret@michaelbest.com
`mbach@michaelbest.com
`
`PATENT OWNER:
`
`John Hutchins
`ANDREWS KURTH KENYON LLP
`jhutchins@kenyon.com
`
`17
`
`
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