Brose North America, Inc.v.Nartron Corporation

Patent Trial and Appeal Board

Jul 20, 2015

10765487 (P.T.A.B. Jul. 20, 2015)

Trials@uspto.gov Paper No. 49
571-272-7822 Date: July 20, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

BROSE NORTH AMERICA, INC. AND BROSE FAHRZEUGTEILE
GMBH & CO. KG, HALLSTADT,
Petitioner,

v.

UUSI, LLC,
Patent Owner.
_________

Case IPR2014‐00417
Patent 7,579,802 B2
____________

Before GLENN J. PERRY, HYUN J. JUNG, and JASON J. CHUNG,
Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

FINAL WRITTEN DECISION
Inter Partes Review
37 C.F.R. § 318(a) AND 37 C.F.R. § 42.73

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I. INTRODUCTION
A. Procedural Background
Brose North America, Inc. and Brose Fahrzeugteile GmbH & Co. KG,
Hallstadt (collectively “Petitioner”), filed a Corrected Petition (Paper 6,
“Pet.”) to institute an inter partes review of claims 1, 6–9, and 14 of U.S.
Patent No. 7,579,802 (Ex. 1005, “the ’802 patent”) pursuant to 35 U.S.C.
§§ 311–319.
UUSI, LLC (“Patent Owner”) filed a Preliminary Response. Paper
10. On August 1, 2014, we instituted review as to claims 1, 6–9, and 14 of
the ’802 patent and instituted trial on seven grounds of unpatentability as set
forth below. Paper 11, “Dec. on Inst.”
Claims Grounds Reference
1, 7–9, and 14 § 102(b) Itoh1
1, 6–9, and 14 § 103(a) Itoh
7, 9, and 14 § 102(b) Kinzl2
7, 9, and 14 § 103(a) Kinzl
1, 6–9, and 14 § 103(a) Itoh and Kinzl
7–9 and 14 § 103(a) Itoh and Zuckerman3
7–9 and 14 § 103(a) Itoh, Kinzl, and Zuckerman

Patent Owner filed a Patent Owner’s Response (Paper 31, “PO
Resp.”), and Petitioner filed a Reply (Paper 34, “Reply”).
In addition, Patent Owner filed a Motion to Exclude (Paper 41,
“Motion”), seeking to exclude certain of Petitioner’s evidence in Exhibits
1054, 1055, 1057, 1058, 1063, 1065, 1066, and 2004.

1 U.S. Patent No. 4,870,333 issued Sept. 26, 1989 (Ex. 1007, “Itoh”).
2 U.S. Patent No. 4,468,596 issued Aug. 28, 1984 (Ex. 1008, “Kinzl”).
3 U.S. Patent No. 5,069,000 issued Dec. 3, 1991 (Ex. 1009, “Zuckerman”).
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Petitioner opposed (Paper 44, “Opp.”) Patent Owner’s Motion to
Exclude. We heard Oral Argument on April 30, 2015. Paper 48, (“Tr.”).
B. Related Matters
Petitioner indicates that the ’802 patent is being asserted in: UUSI,
LLC v. Robert Bosch LLC, No. 2:13-cv-10444, filed in the United States
District Court for the Eastern District of Michigan, on February 4, 2013; and
UUSI, LLC v. Webasto Roof Sys., Inc., No. 2:13-cv-11704, filed in the
United States District Court for the Eastern District of Michigan, on April
15, 2013.
The ’802 patent belongs to a family of patents involved in multiple
inter partes reviews including IPR2014-00416, IPR2014-00417, IPR2014-
00648, IPR2014-00649, and IPR2014-00650.

C. Summary of Conclusions
In this Final Written Decision, issued pursuant to 35 U.S.C. § 318(a)
and 37 C.F.R. § 42.73, we deny Patent Owner’s Motion to Exclude and we
determine that Petitioner has demonstrated by a preponderance of the
evidence that all claims for which trial was instituted, claims 1, 6–9, and 14,
are unpatentable.
II. THE ’802 PATENT (Ex. 1005)
The ’802 patent describes a system and method for sensing an
obstruction in the travel path of a moveable panel, such as a window or
sunroof of a vehicle. See Ex. 1005, Abstract and Background. Figure 1 is
reproduced below:
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Figure 1 is a schematic of an exemplary actuator safety feedback control
system 1. Id. at 2:26–27; 2:65–66. Controller 2 monitors and controls
movement of a motor driven panel. Id. at 2:65–3:5. Motor drive outputs 7a
and 7b control whether the motor (not shown in Figure 1) drives the panel in
a forward or a reverse direction. Id. at 3:38–39. Controller 2 can sense
obstacles in the panel’s path in various ways, including a paired infrared
emitter and detector disposed along the panel’s path (id. at 3:63–4:53), a
motor current monitor (id. at 5:53–57; 7:26–8:3), and other motor monitors
(id. at 11:9–32).
Independent claim 7, reproduced below, is illustrative.
7. Apparatus for controlling activation of a motor for
moving an object along a travel path and de-activating
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the motor if an obstacle is encountered by the object
comprising:
a) a movement sensor for monitoring movement of
the object as the motor moves said object along a
travel path;
b) a switch for controlling energization of the
motor with an energization signal; and
c) a controller including an interface coupled to the
switch for controllably energizing the motor and
said interface additionally coupling the controller
to the movement sensor for monitoring signals
from said movement sensor; said controller
comprising a stored program that:
i) determines motor speed of movement from an
output signal from the movement sensor;
ii) calculates an obstacle detect threshold based on
motor speed of movement detected during a
present run of said motor driven element;
iii) compares a value based on currently sensed
motor speed of movement with the obstacle detect
threshold; and
iv) outputs a signal from the interface to said
switch for stopping the motor if the comparison
based on currently sensed motor movement
indicates the object has contacted an obstacle.

III. CLAIM CONSTRUCTION
As a step in our analysis, we determine the meaning of the claims for
purposes of this decision. In an inter partes review, the proper claim
construction standard in an expired4 patent is set forth in Phillips v. AWH
Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See In re Rambus, 694
F.3d 42, 46 (Fed. Cir. 2012) (“[T]he Board’s review of the claims of an

4 The ’802 patent expired in November 2014.
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expired patent is similar to that of a district court’s review.”). We construe
the terms below in accordance with that standard.
A. “a sensor for measuring a parameter of a motor. . . that
varies in response to a resistance to motion” (claim 1)
Patent Owner would have us limit the term “a sensor for measuring a
parameter of a motor that varies in response to a resistance to motion”
(claim 1) to “a sensor that measures a magnitude of motor current.” PO
Resp. 15–16. Petitioner argues the term should be construed, according to
its plain meaning, to cover “any sensor that measures any motor parameter
that varies as a result of resistance to motion.” Reply 1 (citing Ex. 1063 ¶
26).
Patent Owner argues a limiting prosecution history in which Patent
Owner argued that the sensor includes an “operational amplifier that
amplifies a voltage across a current-measuring resistor.” PO Resp. 13–14.
We do not find any clear disavowal in the prosecution history that would
limit the plain and ordinary meaning of the disputed term.
Patent Owner argues support for its narrow construction in the
Specification, which states “motor current is the primary measured
parameter of immediate importance for both hard and soft obstacle
detection” (emphasis added) and “motor current” denotes magnitude. Id. at
14 (citing Ex. 1005, 15:66–16:3, 18:35–37). The Specification of the
’802 patent states: “obstacle detection via motor current sensing or current
sensing and speed sensing means becomes the remaining reliable backup
method of detecting an obstacle” (emphasis added). Ex. 1005, 4:12–14. We
are not persuaded to import this narrowing limitation from the specification
based on the examples argued.
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Patent Owner further argues that the doctrine of claim differentiation
dictates that the sensor of claim 1 corresponds to a “current amplitude
sensor,” whereas “a movement sensor” recited in claim 7 would embrace a
“Hall effect sensor that senses movement of the motor shaft.” PO Resp. 15.
Although the doctrine of claim differentiation creates a presumption
that the limitations in claims 1 and 7 are different in scope, this presumption
can be overcome by written description or prosecution history. See
Seachange Int’l, Inc. v. C-Cor Inc., 413 F.3d 1361, 1369 (Fed. Cir. 2005).
As discussed supra, the ’802 patent Specification describes “obstacle
detection via motor current sensing or current sensing and speed sensing
means becomes the remaining reliable backup method of detecting an
obstacle” (emphasis added). Moreover, the Specification does not include a
special definition, nor a disavowal. Reply 2.
Accordingly, for purposes of this decision, we adopt Petitioner’s
construction and construe the claim term “sensor for measuring a parameter
of a motor . . . that varies in response to a resistance to motion” in
accordance with its plain meaning. Our construction embraces any sensor
that measures any motor parameter that varies as a result of resistance to
motion.
B. “a movement sensor for monitoring movement of the
object” (claim 7)
Patent Owner contends that “a movement sensor for monitoring
movement of the object” (claim 7) should construed so as to be limited to
only a separate discrete, physical hardware-based sensor (such as a position
encoder or Hall effect sensor) and exclude sensors that measure motor
current or voltage (such as a current pulse counter as used in “sensorless”
motor control).” PO Resp. 37. In support, Patent Owner notes that the ’802
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patent Specification states “[s]ensorless electronic sensing of motor current
commutation pulses is the preferred low cost method . . . [i]n certain
circumstances, it may be preferable to use . . . at least one hardware sensor
means” that includes specialized sensors such as:
Hall effect, magnetoresistive, magnetodiode, magnetotransistor,
Wiegand effect, and variable reluctance; capacitive; optical:
Reflective and blocking; generated inductive magnetic fields:
ECKO (eddy current killed oscillator), variable inductor, and
variable transformer; and film resistor.

Ex. 1005, 23:49–67; 11:26–32. PO Resp. 31–32.
Patent Owner points to prosecution argument that the “movement
sensor” of claim 7 corresponded to a “[m]ovement sensor, position encoder,
col. 4, line 16.” PO Resp. 33–34 (citing Ex. 1019, page 20, element 12C).
Moreover, Patent Owner contends the doctrine of claim differentiation
dictates that the sensor of claims 1 and 14 be interpreted as “current
measurement,” whereas claim 7 recites a “movement sensor.” PO Resp. 34–
35.
Additionally, Patent Owner notes that claim 13, which depends from
claim 7, recites “the sensor” and later in the claim recites “the current
sensor.” PO Resp. 35–36. Patent Owner argues that “current sensor” is
newly introduced and that “current sensor,” recited in claim 13 does not
contradict claim 7’s recitation of a “movement sensor” as recited in claim 7.
Thus, claim 13 should be treated as requiring both a “movement sensor” and
a “current sensor.” Id.
Petitioner argues that “a movement sensor for monitoring movement
of the object” (claim 7) should be construed as “any sensor that (directly or
indirectly) monitors movement of the object.” Reply 6–7.
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We agree with Patent Owner that claim 13’s recitation of a “current
sensor” is consistent with the claim 7 recitation of a “movement sensor.”
We disagree, however, with Patent Owner that claim 13 should be treated as
having both a “movement sensor” and a “current sensor” because claim 13
recites “the sensor” (emphasis added), which looks to claim 7’s “movement
sensor” for antecedent basis. It would make no sense for claim 13 to specify
that “the sensor” (emphasis added) of claim 7 is a “current sensor” unless the
sensor of claim 7 is sufficiently broad to include a current sensor and other
sensors. Moreover, the Specification of the ’802 patent suggests that
“movement sensor” is sufficiently broad to include a current sensor, among
a broader range of sensors. For example, the Specification of the ’802 patent
recites “obstacle detection via motor current sensing or current sensing and
speed sensing means becomes the remaining reliable backup method of
detecting an obstacle” (emphasis added). Ex. 1005, 4:12–14.
Patent Owner’s claim differentiation argument is not persuasive for
similar reasons. Claim 13 is narrower in scope than claim 7. It further limits
the sensor set forth in claim 7 to be a current sensor, thus differentiating it
from claim 7. We do not read the prosecution history as limiting the
“movement sensor” so as to exclude a “current sensor.” Id.
Accordingly, we construe “a movement sensor for monitoring
movement of the object” as “any sensor that directly or indirectly monitors
movement of the object.” Our construction embraces a speed sensor and a
current sensor that indirectly monitors movement.
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C. “travel path” (claim 7)
Claim 7 refers to a “travel path.” Patent Owner contends that this
term refers to the “entire travel path” of the object and not to a portion of the
entire travel path. PO Resp. 37–38. Patent Owner argues that although the
doctrine of claim differentiation normally applies to a claim depending on
another claim, the doctrine also requires that “all or part of a range of
motion” in independent claim 1 be differentiated from independent claim 7,
which recites “a travel path.” Id. Moreover, Patent Owner argues the
controlling activation of a motor described in claim 7 along the entire travel
path is critical to the protection of a body part that the window encounters.
Id. at 38–40.
Petitioner contends the specification and prosecution history do not
include a special definition of the “travel path” limitation, nor a clear
disavowal of the plain meaning of “travel path,” and Patent Owner does not
argue otherwise. Reply 8. We agree with Petitioner.
Although the doctrine of claim differentiation suggests claim 7 does
not require “all or part of a range of motion” because claim 1 recites “all or
part of a range of motion” and claim 7 merely recites “a travel path,” this
suggestion is not a hard and fast rule and will be overcome by a contrary
construction dictated by the written description or prosecution history.
Seachange Int’l, 413 F.3d at 1369.
The ’802 patent specification does not provide a special definition nor
provide a clear disavowal of the plain meaning of the “travel path”
limitation, and Patent Owner does not argue otherwise. Reply 8. Instead,
the Specification of the ’802 patent indicates during and immediately after
the startup phase, obstacle detection will not occur. Reply 8 (citing Ex. 1063
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¶ 96). The Specification of the ’802 patent refers to I as motor current and
PP as pulse period in discussing obstacle detection along a travel path. Ex.
1005, 15:57–67. In particular, the Specification of the ’802 patent states
“after allowing some small initial amount of time for the motor rotor to
begin rotation, I is immediately measured and compared against a fixed
maximum threshold value and PP is immediately measured and compared
against some maximum threshold number of clock cycles” (emphasis added).
Id. at 16:31–36. Thus, in this embodiment, obstacle detection is not
performed along the entire travel path.
Because the Specification of the ’802 patent indicates obstacle
detection is not performed along the entire travel path and the prosecution
history does not include a special definition nor a clear disavowal of the
plain meaning (Ex 1005, 16:31–36), we conclude from the totality of the
evidence that the “travel path” recited in claim 7 is not limited to the “entire
travel path.” Rather, it can refer to a portion of the entire travel path.
D. Means Plus Function – “decision making logic for . . .
monitoring . . . calculating . . . comparing . . . stopping” (claim
14)

Patent Owner contends that the term “decision making logic for . . .
monitoring . . . calculating . . . comparing . . . stopping” as used in claim 14
invokes 35 U.S.C. § 112, sixth paragraph5, means plus function analysis
because decision making logic is not and was not a known structure to those

5 Section 4(c) of the Leahy-Smith America Invents Act (“AIA”) re-
designated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C. § 112(f). Pub. L. No. 112-29,
125 Stat. 284, 296 (2011). Because the ’802 patent has a filing date before
September 16, 2012 (effective date of § 4(c)), we will refer to the pre-AIA
version of § 112.
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skilled in the art prior to the priority date of the ’802 patent. PO Resp. 49.
Further, Patent Owner contends because the Specification of the ’802 patent
does not explicitly recite a “decision making logic,” the term “decision
making logic” is a nonce word combined with the preposition “for” and
functional language. Id. at 49–50. We disagree.
The Federal Circuit held that “mechanism for,” “module for,” “device
for,” “unit for,” “component for,” “element for,” “member for,” “apparatus
for,” “machine for,” or “system for,” are non-structural generic placeholders
that may invoke pre-AIA 35 U.S.C. § 112, sixth paragraph. Welker Bearing
Co., v. PHD, Inc., 550 F.3d 1090, 1096 (Fed. Cir. 2008); Mass. Inst. of Tech.
v. Abacus Software, 462 F.3d 1344, 1354 (Fed. Cir. 2006); Personalized
Media Commc’ns, LLC v. ITC, 161 F.3d 696, 704 (Fed. Cir. 1998); Mas-
Hamilton Group v. LaGard, Inc., 156 F.3d 1206, 1214–15 (Fed. Cir. 1998).
Although this list is not exhaustive, and other generic placeholders may
invoke pre-AIA 35 U.S.C. § 112, sixth paragraph, “decision making logic
for” is not on the list of generic placeholders. As such, a rebuttable
presumption applies that the term is not within the purview of 35 U.S.C. §
112, sixth paragraph. See Phillips, 415 F.3d at 1310.
Furthermore, pre-AIA 35 U.S.C. § 112, sixth paragraph does not
apply if persons of ordinary skill in the art reading the specification
understand the term to be the name for the structure that performs the
function, even when the term covers a broad class of structures or identifies
the structures by their function. Apex Inc. v. Raritan Computer, Inc., 325
F.3d 1364, 1372–73 (Fed. Cir. 2003); CCS Fitness, Inc. v. Brunswick Corp.,
288 F.3d 1359, 1369 (Fed. Cir. 2002); Watts v. XL Sys. Inc., 232 F.3d 877,
880–81 (Fed. Cir. 2000); Personalized Media, 161 F.3d at 704; Greenberg v.
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Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996) (“Many
devices take their names from the functions they perform.”). The term is not
required to denote a specific structure or a precise physical structure to avoid
the application of pre-AIA 35 U.S.C. § 112, sixth paragraph. See Watts, 232
F.3d at 880. In this case, the Specification of the ’802 patent states “[t]he
circuitry of FIGS. 2A–2D includes a number of operational amplifiers which
require higher voltage than the five volt VCC logic circuitry power signal”
(emphasis added). Ex. 1005, 6:30–32. As a result, one of ordinary skill in
the art reading the Specification of the ’802 would understand the term
“logic” to be the name of a type of circuitry (e.g., structure) that performs
the function.
Moreover, “circuit” has been found to be a structural term that does
not invoke pre-AIA 35 U.S.C. § 112, sixth paragraph. Linear Tech. Corp. v.
Impala Linear Corp., 379 F.3d 1311, 1321, (Fed. Cir. 2004); Apex, 325 F.3d
at 1373; Greenberg, 91 F.3d at 1583–84; Personalized Media, 161 F.3d at
704–05; CCS Fitness, 288 F.3d at 1369–70; Cole v. Kimberly-Clark Corp.,
102 F.3d 524, 531 (Fed. Cir. 1996); Watts, 232 F.3d at 881; Al-Site Corp. v.
VSI Int’l, Inc., 174 F.3d 1308, 1318–19 (Fed. Cir. 1999).
Because one of ordinary skill in the art reading the Specification of
the ’802 patent would understand the term “logic” to be the name of a type
of circuitry and “circuit” has been found not to invoke pre-AIA 35 U.S.C.
§ 112, sixth paragraph , we conclude from the totality of the evidence that
claim 14 does not invoke pre-AIA 35 U.S.C. § 112, paragraph 6.
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IV. THE PRIOR ART
A. Challenges Based on Itoh
For reasons stated below, we conclude, based on a preponderance of
the evidence, that claims 1, 7–9, and 14 are anticipated by Itoh.
1. Independent Claim 1
The parties’ arguments focus on “a sensor for measuring a parameter
of a motor . . . that varies in response to a resistance to motion” (claim 1).
We begin with Petitioner’s contentions regarding this limitation.
Petitioner’s arguments focus on Itoh’s “Embodiment 3” as being the “most
relevant” to the patentability of the ’802 patent. Pet. 14. Embodiment 3 is
illustrated in Figures 5–7 of Itoh. Ex. 1007, 7:46–52. Figure 7 is shown
below:

Figure 7 shows a diagram of an opening and closing device for window 26.
Id. at 7:50–52. The Itoh device monitors whether obstacle 48 is present as
window 26 is closed and, in such an event, may reverse window 26 to move
in a downward direction. Id. at 8:49–52, 11:16–20.
According to Petitioner, the claim 1 limitation “a sensor for measuring
a parameter of a motor coupled to the motor driven element” embraces
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Itoh’s pulse-detecting circuit 30 that detects a ripple current corresponding
to the rotational frequency of motor 20, and outputs a motor pulse signal to
CPU 34 and counter 36 of controller 32 to calculate the rotational speed of
the motor. Pet. 15, 30; Ex. 1001, ¶ 94; Ex. 1007, 7:60–64; 8:33–61; 9:37–
62; Fig. 7.
Patent Owner argues the correct construction for “a sensor for
measuring a parameter of a motor that varies in response to a resistance to
motion” (claim 1) is “a sensor that measures a magnitude of motor current.”
See supra Part III.A. As a result, Patent Owner argues Itoh does not
disclose, teach, or suggest “a sensor for measuring a parameter of a motor
that varies in response to a resistance to motion” (claim 1) because “‘Itoh
simply measures the timing of binary motor commutation current pulses,
which is inversely proportional to speed.’” PO Resp. 16–19 (quoting Ex.
2001 ¶ 57).
We are not persuaded by Patent Owner’s argument that Itoh fails to
disclose, teach, or suggest “a sensor for measuring a parameter of a motor
that varies in response to a resistance to motion.” At the outset, we
construed the claim 1 limitation “sensor for measuring a parameter of a
motor . . . that varies in response to a resistance to motion” as “any sensor
that measures any motor parameter that varies as a result of resistance to
motion” rather than as “a sensor that measures a magnitude of motor
current.” See supra Part III.A.
The cited portions of Itoh relied upon by Petitioner disclose circuit 30
detects a ripple current corresponding to the rotational frequency of motor
20, and outputs a motor pulse signal to CPU 34 and counter 36 of controller
32, which discloses “a sensor for measuring a parameter of a motor” as
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recited in claim 1. Pet. 15, 30; Ex. 1007, 8:33–40. Moreover, the cited
portions of Itoh relied upon by Petitioner disclose CPU 34 detects if an
obstacle is stuck between the window frame and window and determines
whether to descend or interrupt the motion of the window, which discloses
“varies in response to a resistance to motion” as recited in claim 1. Pet. 15,
30; Ex. 1007, 8:49–9:62; Figs. 6–7.
Based on our claim construction discussed supra in part III.A, Itoh’s
disclosure discussed supra, and the record before us, we conclude that
Petitioner has established by a preponderance of evidence that claim 1 is
anticipated by Itoh.
2. Claims 7–9
The parties’ arguments focus on “a movement sensor for monitoring
movement of the object” (claim 7) and the “travel path” (claim 7). We begin
with Petitioner’s contentions regarding the limitation “a movement sensor
for monitoring movement of the object.”
Petitioner’s arguments concerning claims 7–9 focus on Embodiment 3
of Itoh, already discussed above. Pet. 18–21, 32–36. According to
Petitioner, claim 7’s “a movement sensor for monitoring movement of the
object” embraces Itoh’s pulse detecting circuit 30 indirectly monitoring
movement of window 26 by sensing pulses generated by motor 20 as it
drives movement of window 26. Pet. 33; Ex. 1001 ¶¶ 118–121; Ex. 1007,
7:60–8:11; 8:33–61; 9:16–62; Fig. 7.
We are not persuaded by Patent Owner’s argument that Itoh fails to
disclose, teach, or suggest “a movement sensor for monitoring movement of
the object” because we construed the claim 7 limitation “a movement sensor
for monitoring movement of the object” as “any sensor that directly or
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indirectly monitors movement of the object” rather than as “a separate
discrete, physical hardware-based sensor (such as a position encoder or Hall
effect sensor)” that is mounted. See supra Part III.B.
The cited portions of Itoh relied upon by Petitioner disclose a pulse
detecting circuit 30 indirectly monitoring movement of window 26 by
sensing pulses generated by motor 20 as it drives movement of window 26,
which discloses “a movement sensor for monitoring movement of the
object” as recited in claim 7. Pet. 33; Ex. 1001 ¶¶ 118–121; Ex. 1007, 7:60–
8:11; 9:16–62; Fig. 7.
Regarding the “travel path” limitation, Petitioner argues claim 7’s
“travel path” embraces Itoh’s pulse detecting circuit 30 indirectly monitoring
movement of window 26 along a travel path in a window frame 24. Pet. 33;
Ex. 1001 ¶¶ 118–121; Ex. 1007, 7:47–8:11; 8:33–48; 9:16–62; Fig. 7.
We are not persuaded by Patent Owner’s argument that Itoh fails to
disclose, teach, or suggest “travel path” because we construed that the claim
7 limitation “travel path” can refer to a portion of the travel path. See supra
Part III.C.
The cited portions of Itoh relied upon by Petitioner disclose a pulse
detecting circuit 30 indirectly monitoring movement of window 26 along a
travel path in window frame 24, which discloses “monitoring movement of
the object . . . along a travel path” as recited in claim 7. Pet. 33–34; Ex.
1001 ¶¶ 118–121; Ex. 1007, 7:47–8:11; 8:33–48; 9:16–62; Fig. 7.
Based on our claim construction discussed supra in part III.B and
III.C, Itoh’s disclosure discussed supra, and the record before us, we
conclude that Petitioner has established by a preponderance of evidence that
claims 7–9 are anticipated by Itoh.
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3. Independent Claim 14
Claim 14 has many limitations which are substantially similar to
limitations discussed in connection with claim 7. The parties’ arguments
focus on “decision making logic for . . . monitoring . . . calculating . . .
comparing . . . stopping” (claim 14). We begin with Petitioner’s contentions
regarding this limitation.
According to Petitioner, the claim 14 limitation “decision making
logic for . . . monitoring . . . calculating . . . comparing . . . stopping”
embraces Itoh’s controller 32 that executes an algorithm for monitoring,
calculating, comparing, and stopping. Pet. 21–23, 38–39; Ex. 1001 ¶¶ 161–
177; Ex. 1007, 7:47–64; 8:33–61; 9:16–62; 10:33–11:20; Fig. 7.
We are not persuaded by Patent Owner’s argument that Itoh fails to
disclose, teach, or suggest the limitation “decision making logic for . . .
monitoring . . . calculating . . . comparing . . . stopping” because we
construed the claim 14 limitation “decision making logic for . . . monitoring
. . . calculating . . . comparing . . . stopping” as not invoking 112 sixth
paragraph. See supra Part III.D.
The cited portions of Itoh relied upon by Petitioner disclose controller
32 executing an algorithm for monitoring, calculating, comparing, and
stopping, which discloses “decision making logic for . . . monitoring . . .
calculating . . . comparing . . . stopping” as recited in claim 14. Pet. 21–23,
38–39; Ex. 1001 ¶¶ 161–177; Ex. 1007, 7:47–64; 8:33–61; 9:16–62; 10:33–
11:20; Fig. 7.
Based on our claim construction discussed supra in part III.D, Itoh’s
disclosure discussed supra, and the record before us, we conclude that
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Petitioner has established by a preponderance of evidence that claim 14 is
anticipated by Itoh.
B. Other Asserted Grounds – Itoh as the primary reference
For reasons stated below, we conclude, based on a preponderance of
the evidence, that claims 1, 6–9, and 14 are unpatentable over Itoh and one
or more of the following: knowledge of one ordinary skill in the art, Kinzl,
and Zuckerman.
1. Claims 1, 7–9, and 14
Petitioner and Patent Owner present various alternate arguments
reliant on claim interpretations we have not adopted.
Based on our claim construction discussed supra in part III, Itoh’s
disclosure described supra in part IV.A, and the record before us, we
conclude that Petitioner has established by a preponderance of evidence that
claims 1, 7–9, and 14 are unpatentable over Itoh and one or more of the
following: knowledge of one of ordinary skill in the art, Kinzl, and
Zuckerman.
2. Claim 6
The parties’ arguments focus on “immediate past measurements are
sensed within a forty millisecond interval” (claim 6). We begin with
Petitioner’s contentions regarding this limitation.
Petitioner contends claim 6 is obvious over Itoh (see Pet. 28–39), or
over Itoh and Kinzl (see id. at 49–56). Petitioner contends the 40
millisecond timeframe would have been obvious to one of ordinary skill in
art as a discovering of the optimum or workable range of a general
condition. Pet. 17, 28, 32; Ex. 1001 ¶ 109.
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Petitioner contends a 1.2 millisecond pulse period is an example
within the scope of Itoh for more than 33 cycles of the motor pulse signal
(“Tp”) samples to elapse in 40 milliseconds. Reply 4. Moreover, Petitioner
contends 40 milliseconds would have been an obvious design choice to a
person having ordinary skill in the art because 40 milliseconds are not
“uniquely successful” and Itoh implicitly teaches the time period for
sampled data is a parameter to be selected. Id.
Patent Owner contends design choice rationale does not apply because
Petitioner fails to present: 1) evidence for why one of skill in the art would
choose a fixed time window instead or a number of samples; and 2) how 40
milliseconds might be derived. PO Resp. 23–28.
Because a 1.2 millisecond pulse period is an example within the scope
of Itoh for more than 33 Tp samples to elapse in 40 milliseconds and one of
ordinary skill in the art reading the Specification of the ’802 patent would
understand there is no unique success of 40 milliseconds, we conclude from
the totality of the evidence that claim 6 is an obvious design choice.
C. Challenges based on Kinzl
For reasons stated below, we conclude, based on a preponderance of
the evidence, that claims 7, 9, and 14 are anticipated by Kinzl and obvious
over Kinzl.
1. Claims 7 and 9
The parties’ arguments focus on “a movement sensor for monitoring
movement of the object” (claim 7) and the “travel path” (claim 7). We begin
with Petitioner’s contentions regarding the limitation “a movement sensor
for monitoring movement of the object.”

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Petitioner relies on Figures 1 and 2 of Kinzl, which are shown below:

Pet. 41. Figure 1 shows a diagram of a system for operating an electric
window of an automotive vehicle, and Figure 2 shows three zones
established for operation of the system. Ex. 1008, 1:7–13, 2:37–41.
Microcomputer 24 uses sensor 26 to monitor the opening and closing of
electric window 10, via drive motor 12. Id. at 2:44–57. Microcomputer 24
determines from sensor 26 whether window 10 has been blocked and, if a
block is detected, responds in different manners (including stopping and/or
reversing) dependent upon whether window 10 is in zone 1, 2, or 3. Id. at
3:6–26.
Petitioner argues the claim 7 limitation “a movement sensor for
monitoring movement of the object as the motor moves said object along a
travel path” embraces Kinzl’s sensor 26 monitoring opening and closing of a
window 10 in a window pane either directly via window 10 itself, or
indirectly via drive motor 12. Pet. 41; Ex. 1001 ¶¶ 197–198; Ex. 1008,
2:11–26; 2:54–56; Abstract; Fig. 1.
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We are not persuaded by Patent Owner’s contention that Kinzl fails to
disclose, teach, or suggest “travel path” because we construed that the claim
7 “travel path” can include a portion of the travel path. See supra Part III.C.
The cited portions of Kinzl relied upon by Petitioner disclose a sensor
26 monitoring opening and closing of a window 10 in a window pane either
directly via window 10 itself, or indirectly via drive motor 12, which
discloses, teaches, and suggests “a movement sensor for monitoring
movement of the object as the motor moves said object along a travel path”
as recited in claim 7. Pet. 41; Ex. 1001 ¶¶ 197–198; Ex. 1008, 2:11–26;
2:54–56; Abstract; Fig. 1.
Based on our claim construction discussed supra in part III.C, Kinzl’s
disclosure discussed supra, and the record before us, we conclude that
Petitioner has established by a preponderance of evidence that claim 7 is
anticipated by Kinzl and obvious over Kinzl.
2. Independent Claim 14
Claim 14 has many limitations which are substantially similar to
limitations discussed in connection with claim 7. The parties’ arguments
focus on “decision making logic for . . . monitoring . . . calculating . . .
comparing . . . stopping” (claim 14). We begin with Petitioner’s contentions
regarding this limitation.
According to Petitioner, the claim 14 limitation “decision making
logic for . . . monitoring . . . calculating . . . comparing . . . stopping”
embraces Kinzl’s microcomputer 24 that runs a logic algorithm for
monitoring, calculating, comparing, and stopping. Pet. 46–49; Ex. 1008,
2:19–28; 3:21–49; 4:24–41; Fig. 1; Abstract.
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We are not persuaded by Patent Owner’s argument that Kinzl fails to
disclose, teach, or suggest the limitation “decision making logic for . . .
monitoring . . . calculating . . . comparing . . . stopping” because we
construed the claim 14 limitation “decision making logic for . . . monitoring .
. . calculating . . . comparing . . . stopping” as not invoking 112 sixth
paragraph. See supra Part III.D.
The cited portions of Kinzl relied upon by Petitioner disclose a
microcomputer 24 that runs a logic algorithm for monitoring, calculating,
comparing, and stopping, which discloses, teaches, and suggests “decision
making logic for . . . monitoring . . . calculating . . . comparing . . . stopping”
as recited in claim 14. Pet. 21–23, 38–39; Ex. 1001, ¶¶ 222–232; Ex. 1008,
2:19–28; 3:21–49; 4:24–41; Fig. 1; Abstract.
Based on our claim construction discussed supra in part III.D, Kinzl’s
disclosure discussed supra, and the record before us, we conclude that
Petitioner has established by a preponderance of evidence that claim 14 is
anticipated by Kinzl and obvious over Kinzl.
V. OTHER ARGUMENTS
A. Expert not Familiar with the State of the Art
Patent Owner contends Dr. C. Arthur MacCarley did not have
personal experience with the state of the art in 1992 at the time of filing and
is not an expert in automotive vehicle window or sunroof movement
mechanisms or their control systems. PO Resp. 4–10.
We are persuaded, however, that Dr. MacCarley is an expert in the
field of electrical and computer engineering since before 1992. Ex. 1063
¶ 7. Dr. MacCarley’s specific expertise is in electro-mechanical control
systems, computer-based control systems, microprocessor-based control
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systems, and indirect sensing methods, which are all in the field of
automotive engineering. Ex. 1063 ¶ 7. Accordingly, we conclude that Dr.
MacCarley is an expert familiar with the State of the Art of automotive
engineering in 1992.
B. Enablement of References
Patent Owner contends Itoh and Kinzl are non-enabling references
that would require undue experimentation to make or use because of an
inordinate amount of false positives and false negatives that would occur
with Itoh’s and Kinzl’s respective algorithms. PO Resp. 2–4, 59–60.
Moreover, Patent Owner contends Itoh and Kinzl do not overcome many
real-world vehicle problems such as the varying loads caused by wind
buffeting or booming caused by the pressure difference between the inside
and the outside of the passenger compartment of a vehicle moving at high
speeds. PO Resp. 4.
Regarding the asserted grounds under § 102, Patent Owner, however,
does not contend Itoh and Kinzl are non-enabling as to any specific claim.
Reply 14. Instead, Patent Owner merely asserts a generalized argument that
Itoh and Kinzl are non-enabling references. Id.
Regarding the asserted grounds under § 103, we have determined that
Itoh and Kinzl provide sufficient disclosure to allow a person having
ordinary skill in the art to make and use the inventions recited in each of the
challenged claims. In re Antor Media Corp., 689 F.3d 1282, 1290 (Fed. Cir.
2012) (“Enablement of prior art requires that the reference teach a skilled
artisan to make or carry out what it discloses in relation to the claimed
invention. Even if a reference discloses an inoperative device, it is prior art
for all that it teaches.” (quotation omitted) (citations omitted)); Symbol
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Techs., Inc. v. Opticon, Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991) (“[A]
non-enabling reference may qualify as prior art for the purpose of
determining obviousness under § 103.”).
VI. MOTION TO EXCLUDE
Patent Owner argued in its Motion (see Paper 41) that: an excerpt of a
textbook by Clarence W. deSilva entitled “Control Sensors and Actuators”
(Ex. 1065), a complete color copy of the same textbook (Ex. 1066), and
pages 185–193 and lines 15–18 of page 198 of the transcript of the
deposition of Dr. MacCarley (Ex. 2004) comprise newly raised evidence;
and the dictionary definition of “logic” (Exs. 1054, 1057, 1058) and
“sensor” (Ex. 1055) and portions of the Reply Declaration of Petitioner’s
expert Dr. MacCarley (Ex. 1063) rely on dictionary definitions that are
published after the priority date of the ’802 patent. Motion 3–5.
A. Newly Raised Evidence
On November 5, 2014, Patent Owner filed the Patent Owner’s
Response. Paper 31. On February 5, 2015, Petitioner filed Petitioner’s
Reply along with Exhibits 1065 and 1066. Paper 34. On March 26, 2015,
Patent Owner filed a Motion to Exclude Evidence of Exhibits 1065, 1066,
and 2004. Paper 41. On April 9, 2015, Petitioner filed an Opposition to the
Motion to Exclude. Paper 44.
In its Motion to Exclude, Patent Owner contends that Exhibits 1065
and 1066 and certain pages of Exhibit 2004 should be excluded because
these exhibits are proffered in support of arguments Petitioner presents for
the first time in the Reply. Motion 3 and 5.
At the outset, “[m]otions to exclude are for evidentiary objections
previously made on the record,” and are “not a proper vehicle for user by a
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party to raise the issue of a reply exceeding the proper scope.” Honeywell
Int’l Inc. v. Int’l Controls & Measurements Corp., Case IPR2014-00219,
slip op. at 2 (PTAB Jan. 5, 2015) (Paper 38) (expunging improper motion to
exclude).
B. Dictionary Definition Priority Dates
In its Motion to Exclude, Patent Owner contends that Exhibits 1054,
1055, 1057, and 1058 provide evidence of dictionary definitions published
in 1994 or 1995. Motion 4. Patent Owner contends these Exhibits should be
excluded because the definitions were published after the 1992 priority date.
Id. Moreover, Patent Owner argues Petitioner’s Exhibits 1054, 1055, 1057,
and 1058 were heavily relied upon in forming Exhibit 1063; thus, certain
pages of Exhibit 1063 should be excluded. Id.
Although we cite the MacCarley Declaration (Ex. 1001) in this
Decision, we do not rely on Exhibits 1054, 1055, 1057, 1058, 1063, 1065,
1066, and 2004. Because an expert may rely upon evidence regardless of
whether the evidence is admissible and we do not rely on any of the
definitions, we dismiss the Motion as moot.
C. Conclusion
For the reasons stated above, Patent Owner’s Motion to Exclude is
dismissed as moot.
VII. CONCLUSIONS
For the reasons set forth above, we are persuaded that Petitioner has
shown by a preponderance of the evidence that:
(1) claims 1, 7–9, and 14 are unpatentable under 35 U.S.C.
§ 102(b) as anticipated by Itoh;
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(2) claims 1, 6–9, and 14 are unpatentable under 35 U.S.C.
§ 103(a) as obvious over Itoh;
(3) claims 7, 9, and 14 are unpatentable under 35 U.S.C.
§ 102(b) as anticipated by Kinzl;
(4) claims 7, 9, and 14 are unpatentable under 35 U.S.C.
§ 103(a) as obvious over Kinzl;
(5) claims 1, 6–9, and 14 are unpatentable under 35 U.S.C.
§ 103(a) as obvious over Itoh and Kinzl;
(6) claims 7–9 and 14 are unpatentable under 35 U.S.C.
§ 103(a) as obvious over Itoh and Zuckerman; and
(7) claims 7–9 and 14 are unpatentable under 35 U.S.C.
§ 103(a) as obvious over Itoh, Kinzl, and Zuckerman.
VIII. ORDER
Accordingly, it is
ORDERED that Patent Owner’s Motion to Exclude is dismissed as
moot;
FURTHER ORDERED that claims 1, 6–9, and 14 of U.S. Patent
7,579,802 have been shown to be unpatentable; and
FURTHER ORDERED that because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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FOR PETITIONER:

Craig D. Leavell
Luke L. Dauchot
Alyse Wu
KIRKLAND & ELLIS LLP
craig.leavell@kirkland.com
luke.dauchot@kirkland.com
alyse.wu@kirkland.com

FOR PATENT OWNER:

Monte L. Falcoff
Michael R. Nye
HARNESS, DICKEY & PIERCE, P.L.C.
mlfalcoff@hdp.com
mnye@hdp.com