Brose North America, Inc.v.Nartron Corporation

Patent Trial and Appeal Board

Jul 27, 2015

12360942 (P.T.A.B. Jul. 27, 2015)

Trials@uspto.gov Paper No. 40
571-272-7822 Date: July 27, 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 IPR2014‐00416
Patent 8,217,612 B2
____________

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

PERRY, 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, “Brose” or “Petitioner”), filed a Corrected Petition
(Paper 5, “Pet.”) to institute an inter partes review of claims 1, 2, and 5–8 of
U.S. Patent No. 8,217,612 B2 (Ex. 1005, “the ’612 patent”) pursuant to 35
U.S.C. §§ 311–319. UUSI, LLC (“UUSI” or “Patent Owner”) filed a
Preliminary Response on May 6, 2014. Paper 11, “Prelim. Resp.” On
August 1, 2014 we granted the Petition as to claims 1, 2, and 5–8 of the ’612
patent and instituted trial on the grounds of unpatentability as set forth in the
following table. Paper 11, “Dec. on Inst.”
Claims Grounds Reference
1, 2, and 6–8 § 102(b) Itoh
1

1, 2, and 5–8 § 103(a) Itoh
6–8 § 102(b) Kinzl
2

6–8 § 103(a) Kinzl
1, 2, and 5–8 § 103(a) Itoh and Kinzl
1, 2, and 5 § 103(a) Itoh and Zuckerman
3

1, 2, and 5 § 103(a) Itoh, Kinzl, and Zuckerman

UUSI filed a response on November 5, 2014. Paper 24, “Resp.” Brose
replied on February 5, 2015. Paper 27, “Reply”.
UUSI filed a Motion to Exclude Petitioner’s Exhibits 1062, 1063, and
pages 185–193 and 198 (lines 15–18) of the deposition transcript (Ex. 2004)
of Petitioner’s expert, C. Art MacCarley, Ph.D . Paper 32, “Motion”. Brose

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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opposed. Paper 35, “Opposition”. We heard oral argument on April 30,
2015. Paper 39, “Tr.”
B. Related Matters
Brose indicates that the ’612 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 ’612 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
The Board has jurisdiction under 35 U.S.C. § 6(c). In this Final
Written Decision, issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R.
§ 42.73, we determine Brose has demonstrated by a preponderance of the
evidence that claims 1, 2, and 5–8 (all claims for which trial was instituted)
are unpatentable.
II. THE ’612 PATENT
A. The Invention
The ’612 patent describes a system and method for sensing
obstructions to a travel path of a moveable panel, such as a window or
sunroof. See Ex. 1005, Abstract. UUSI explains that in the 1980s
automobile manufacturers began using “express up” switches with electric
motor driven window lift mechanisms so that a window would automatically
continue to close after initial activation of the switch. However, these
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mechanisms caused safety problems, e.g., fingers getting caught in a closing
window. The ’612 patent invention addresses those safety problems.
Ex. 2001, 19. Figure 1 of the ’612 patent is reproduced below:

Figure 1 is a schematic diagram of an exemplary actuator safety feedback
control system 1. Ex. 1005, 2:24–25, 2:63–65. Controller 2 monitors and
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controls movement of a motor driven panel. See id. at 2:65–3:5. Forward
and reverse motor drives 7a and 7b drive the motor (not shown in Figure 1)
in forward and reverse directions, respectively. See id. at 3:36–41.
Controller 2 senses obstacles in the panel’s path in various ways based on
input from, e.g., a paired infrared emitter and detector disposed along the
panel’s path (see id. at 3:60–4:64), a motor current monitor (see id. at 4:9–
11, 7:20–8:3, 8:33–10:5), and other devices (see id. at 11:14–20).
B. Illustrative Claim
Of the challenged claims, claims 1 and 6 are independent. Claims 2–5
depend from claim 1 and claims 7–8 depend from claim 6. Independent
claim 1, reproduced below, is illustrative of the claimed subject matter.
1. Apparatus for controlling activation of a motor coupled to a
motor vehicle window or panel for moving said window or
panel along a travel path and de-activating the motor if an
obstacle is encountered by the window or panel, said apparatus
comprising:
a) a sensor for sensing movement of the window or panel
and providing a sensor output signal related to a speed of
movement of the window or panel;
b) a switch for controllably actuating the motor by
providing an energization signal;
c) one or more switches for use by the controller to
determine window or panel position; and
d) a controller having an interface coupled to the sensor
and the switch for controllably energizing the motor; said
controller sensing a collision with an obstruction when power is
applied to the controller by:
i) monitoring movement of the window or panel by
monitoring a signal from the sensor related to the movement of
the window or panel;
ii) adjusting an obstacle detection threshold in real
time based on immediate past measurements of the signal
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sensed by the sensor to adapt to varying conditions encountered
during operation of the window or panel;
iii) identifying a collision of the window or panel
with an obstacle due to a change in the signal from the sensor
that is related to a change in movement of the window or panel
by comparing a value based on a most recent signal from the
sensor with the obstacle detection threshold; and
iv) outputting a control signal to said switch to
deactivate said motor in response to a sensing of a collision
between an obstacle and said window or panel.

Ex. 1005, 27:12–43 (disputed terms emphasized).
III. ANALYSIS
A. Claim Construction
1. Standard
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 expired
4
patent is set forth in Phillips v. AWH
Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). We construe the terms
below in accordance with that standard.

4
U.S. Application 12/360,942, from which the ’612 patent issued, is a
continuation of application No. 10/100,892, filed on Mar. 18, 2002, now
Patent No. 7,548,037, which is a continuation-in-part of application No.
09/562,986, filed on May 1, 2000, now Patent No. 6,404,158, which is a
continuation-in-part of application No. 08/736,786, filed on Oct. 25, 1996,
now Patent No. 6,064,165, which is a continuation of application No.
08/275,107, filed on July 14, 1994, now abandoned, which is a continuation-
in-part of application No. 07/872,190, filed on Apr. 22, 1992, now Patent
No. 5,334,876.
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2. “identifying a collision of the window or panel with an obstacle” and
“deactivate said motor in response to a sensing of a collision”
UUSI urges that we distinguish “identifying a collision of the window
or panel with an obstacle” and “deactivate said motor in response to a
sensing of a collision” (both appearing in claim 1) as different activities
requiring separate and distinct algorithms. Resp. 10–14, Ex. 2001, 50, 57.
UUSI argues that if we adopt such a construction, Itoh alone or in
combination with any and all of the secondary references, would fail to
render claim 1 obvious.
In support of its proposed construction, UUSI makes several
arguments. UUSI argues that each of the verbs “identifying” and “sensing”
must be given weight, urging that if “sensing” and “identifying”
corresponded to the same algorithm, claim 1 would have been written
accordingly. Resp. 11. Relying on the “antecedent basis rules,” UUSI
argues that the use of the indefinite article indicates that the “sensing” is
being newly introduced. Id. UUSI further construes claim 1 as requiring
that the “identifying” and “sensing” are concurrently performed, while
remaining logically distinct. Resp. 12. UUSI indicates that these distinct
algorithms correspond to “hard” and “soft” obstruction sensing algorithms
described in the ’612 patent specification. Resp. 12 (citing Ex. 2001, 51–
56). According to UUSI, these two features of claim 1 should be construed
as: (i) identifying a collision using a first algorithm that is based on an
obstacle detection threshold adjusted in real time, and (ii) sensing a collision
using a second algorithm distinct from the first algorithm and deactivating
the motor in response to the sensing based on the second algorithm. Resp.
13 (citing Ex. 2001, 50, 57).
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We do not subscribe to UUSI’s view. Looking at claim 1 as a whole,
we do not adopt a construction requiring separate and distinct algorithms.
Claim 1, written in outline format, includes a limitation “d” that requires a
controller to sense a collision. Limitation “d” ends with the word “by”
followed by a colon. What follows is a list of limitations that are
enumerated “i,” “ii,” and “iii” and which are written so as to be further
indented than limitations “a,” “b,” “c,” and “d.” A reading of the claim as a
whole suggests that limitation “d” is telling us that the limitations following
the colon explain how the sensing is accomplished. The “sensing a
collision” (step “d”) is accomplished by i) monitoring movement of the
window, ii) adjusting a threshold, and iii) identifying a collision by
comparing a signal value to the threshold. The final claim limitation (“iv”)
tells us that a control signal deactivates the motor in response to “a sensing
of a collision.” Even though “a sensing of a collision” is introduced by the
pronoun “a” (rather than “the”), we do not view this limitation as requiring a
separate and distinct “algorithm.” Rather, we read limitations “i” through
“iv” as explaining how limitation “d” is carried out.
The claim does not specify explicitly a temporal relation among its
various recited activities. However, a temporal sequence is implied by the
cause and effect relationships expressed by the individual actions described
in the claim. The claim says nothing about how the various described
activities are to be implemented in code.
B. Itoh
Itoh describes an automatic opening and closing device for a window.
Ex. 1007, Title. A motor, operable in forward and reverse directions, opens
and closes the window. Pulses generated with rotation of the motor are
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counted to determine window position. Id. at Abstract. The Petition focuses
on Itoh’s “Embodiment 3” as being “most relevant” to the patentability of
the ’612 patent. Pet. 12. Embodiment 3 is illustrated in Itoh Figures 5–7.
Ex. 1007, 7:46–52. Figure 7 is reproduced below:

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Figure 7 is a schematic 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, reverses window 26 to
move downward. Id. at 8:49–52, 11:16–20.
C. Kinzl
Kinzl describes operating and monitoring electric windows and
sliding roof panels. A speed sensor directly or indirectly measures the speed
of a drive motor. A first obtained measured speed value is compared with
subsequent measured values. The first measured value is used to baseline
electrical and mechanical factors which change over time during operation
of the window, such as heating of the drive motor, battery voltage change,
and the state and condition of the window. A microcomputer processes and
compares measured values. Output of the speed sensor is processed to
determine the position of the window. Ex. 1008, Abstract. Figures 1 and 2
of Kinzl are shown below:
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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
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26 to monitor the opening and closing of electric window 10, via drive
motor 12. Id. at 2:44–57. It determines whether travel of window 10 has
been blocked and, if so, responds in different manners dependent upon
which of zones 1, 2, or 3 window 10 is in. Id. at 3:6–26.
D. Zuckerman
Zukerman describes obstruction detecting and reversing for a motor
driven vehicle door or window system, wherein the device undergoes
varying loads, and consequently varying current draws, during normal
operation. Ex. 1009, Abstract. Zuckerman Figure 25 is reproduced below.

Figure 25 is a graphical representation of drive motor current versus time
during a door closing operation. Id. at 6:54–55, 20:40–43. A portion,
roughly in the center of the plot, demonstrates a rise in motor current, which
is interpreted to have been caused by an obstruction. Id. at 20:63–66. In
order to detect accurately the presence of an obstruction, in light of such
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normally varying currents, the apparatus circuit logic monitors instantaneous
motor current and compares it with a time average of motor current over a
preceding time interval. Id. at 20:67–21:6. This averaging “tracks” normal
current draw in order to allow sensing an obstruction that causes a rise in
motor current at any stage of the door closing operation. Id. Thus,
Zuckerman accommodates normal changes in current draw caused by
different gravity effects when the device is oriented in different grade-
caused orientations. Ex. 1009, Abstract.
E. Claim Challenges Based on Prior Art
1. Independent Claim 1
Brose provides a detailed read of claim 1 on Itoh. Pet. 27–31. Brose
relies primarily on Itoh’s Embodiment 3, which reverses, rather than
deactivates, a drive motor if a window’s travel has been obstructed, noting
that elsewhere (Ex. 1007, 3:44–68) Itoh describes deactivating the motor
rather than reversing it.
Brose points to Itoh’s “pulse detecting circuit 30” as corresponding to
the claimed “sensor for sensing movement of the window.” Pet. 28. Itoh’s
“pulse detecting circuit 30” indirectly senses window movement, in that it
counts pulses associated with the motor driving the window. We do not
regard the claimed “sensor” as requiring direct sensing. We conclude that
even if we did, it would be obvious to direct sense based on the teaching of
Itoh. Itoh describes a CPU 34 arrangement for controlling its associated
motor as corresponding to the claimed “switch for controllably actuating the
motor.” Pet. 28 (citing Ex. 1007, 7:67–8:9). Itoh further describes operation
of CPU 34 that corresponds to the claimed “one or more switches . . . to
determine window or panel position.” Pet. 29 (citing Ex. 1007, 7:67–7:9).
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Itoh also describes operation of CPU 34 corresponding to the claimed
“energizing the motor,” and “sensing a collision with an obstruction.” Pet.
30 (citing Ex. 1007, Figs. 5–11, and discussion beginning at 7:47). Itoh
further describes how the “pulse-detecting circuit 30” detects window
position as claimed. Pet. 30 (citing Ex. 1007, 8:10–21, 9:16–34).
Itoh describes establishing and adjusting an obstacle detection
threshold in real time based on immediate past measurements. Brose points
to Itoh’s equation Tp/Tm > α, where Tp represents a current speed value,
Tm represents an average of immediately prior (n) speed values, and α
represents a constant. Pet. 31 (citing Ex. 1007, 10:33–11:15).
We are persuaded that Itoh’s disclosure at 3:28–60 indicates Itoh’s
Embodiment 3 may operate to either reverse motor 20 or stop motor 20
under differing circumstances. Motor action is triggered based on
comparison of Tp/Tm with α and satisfies the claim limitation requiring a
control signal to “deactivate said motor in response to a sensing of a
collision.” Itoh identifies a collision based on a comparison that is
mathematically identical to comparing the most recent speed measurement
(Tp) to a threshold that is adjusted in real time based on the average of the
immediately prior speed values. Claim 1 requires that the collision be
identified by “comparing a value based on a most recent signal form the
sensor with the obstacle detection threshold” and “adjusting the obstacle
detection threshold in real time based on immediate past measurements of
the signal sensed by the sensor.” Thus, we are satisfied that Itoh discloses
what is required by claim 1. Pet. 14–15, 31 (citing Ex. 1001 ¶¶ 113–122;
Ex. 1007, 3:44–68, 10:33–11:15).
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UUSI argues that Itoh discloses using only a single algorithm. Based
on its proposed construction of claim 1 requiring two separate and distinct
algorithms, UUSI argues Itoh would not alone or in combination render
claim 1 unpatentable. Resp. 14. UUSI’s expert, Dr. Mark Ehsani, states that
Itoh’s use of two different parameters (α and β) are mutually exclusive, and
are simply used as a parameter of interest for a single algorithm. Resp. 14
(citing Ex. 2001, 39). However, based on our construction of claim 1, we do
not find UUSI’s argument regarding two algorithms to be persuasive.
Claim 1 requires (1) an obstacle detection threshold to be established
and adjusted in real time based on measurements by a sensor that senses
speed of movement of the window or panel; and (2) that a current
measurement of window speed satisfies a predetermined relationship to that
obstacle detection threshold. As described supra in section III.A.2, we see
no requirement of two separate and distinct algorithms. A reference
describing both of these claimed activities, such as Itoh, meets these
limitations of claim 1. Itoh identifies a collision based on a threshold, which
is Tp/Tm > α. Itoh adjusts the threshold by effectively taking a moving
average of n immediately prior speed values to be used for each comparison
of a current window speed. This moving average constitutes the claimed
“adjusting.”
Kinzl also describes an adjustable obstacle detect threshold calculated
in real time based on motor speed detected earlier during the present run,
and then comparing a currently sensed motor speed to the threshold in order
to detect an obstacle. Pet. 16 (citing Ex. 1008, 4:17–41).
Zuckerman explains that “the reversing apparatus of the present
invention senses such obstruction-caused current changes by circuit logic
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that effectively compares the instantaneous motor current with a time-
averaged reference current that ‘tracks’ the normally varying motor current
in order to accurately detect the presence of predetermined obstruction-
caused resistance.” Pet. 16 (citing Ex. 1009, 20:67–21:6); see also Ex. 1001
¶¶ 118, 284–292.
Based on the evidence and the record before us, we conclude that
Brose has established by a preponderance of the evidence that Itoh
anticipates claim 1. Brose has also established by a preponderance of
evidence that claim 1 is obvious based on Itoh alone, in combination with
either Kinzl or Zuckerman, and in combination with both Kinzl and
Zuckerman.
2. Claim 2
Claim 2 depends from claim 1 and further requires a memory for
storing multiple window or panel speed values based on sensor signals.
Brose points to Itoh’s flow charts in Figures 5 and 6 and to a “FIFO-like
memory” in the form of “speed data table” shown in Itoh’s Figure 9,
reproduced below.

Figure 9 is a diagram explaining an example of the data table of speed of
motor used to calculate the rate of speed change (acceleration) of motor.
Pet. 32 (citing Ex. 1007, Figs. 5, 6, 9; Ex. 1001 ¶¶ 123–125).
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We are persuaded that Itoh describes the limitation added by claim 2.
Based on the evidence and the record before us, we conclude that Brose has
established by a preponderance of the evidence that Itoh anticipates claim 2.
Brose has also established by a preponderance of evidence that claim 2 is
obvious based on Itoh alone, in combination with either Kinzl or
Zuckerman, and in combination with both Kinzl and Zuckerman.
3. Claim 5
Claim 5 depends from claim 1 and further requires that the immediate
past signal measurements are taken within a forty millisecond interval prior
to the most recent signal from the sensor. UUSI argues that claim 5 should
be construed to require that the immediate past measurements described in
claim 1 must all be taken within the preceding 40 milliseconds (40 ms).
Resp. 19. Brose argues that claim 5 requires only that one or more of the
immediate past measurements must be sensed during the 40 ms interval.
Resp. 20. Brose points to Itoh’s statement suggesting that 4 or 5 past
measurements can be used, but that the number of measurements is left as a
design choice. Pet. 32 (citing Ex. 1007, 9:63–68; Ex. 1001 ¶¶ 126–127).
We agree with UUSI. Claim 5 refers to “the immediate past
measurements” referring to the measurements in claim 1 used to determine
the “threshold.” Thus, the claim requires that a threshold be adjusted based
on measurements taken during a 40 ms interval before a current
measurement that is compared with the threshold.
Further, we agree with UUSI (Resp. 21) that Itoh does not explicitly
teach a 40 ms time window within which past measurements are taken to
adjust Itoh’s threshold.
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UUSI argues that the 40 ms time window is not merely a matter of
design choice and that Brose has not provided a basis upon which one could
conclude that the 40 ms time window is a matter of design choice. Resp. 24.
UUSI notes that a statement by Brose’s expert, Dr. MacCarley, that “such
options are routine design choices, as is the number of immediately
preceding values that would be used in Itoh’s calculation” is merely
conclusory and establishes no basis for reaching that conclusion. Resp. 24
(citing Ex. 1001 ¶ 129).
According to UUSI, the Itoh specification describes a FIFO memory
that is 20 values deep and is clocked every 2 milliseconds, thereby obtaining
40 ms. There is no explanation as to why the particular FIFO depth and
clock rate were chosen.
UUSI also argues that Kinzl does not teach the 40 ms interval recited
in claim 5. Resp. 29–30. UUSI points to the deposition of Petitioner’s
expert, Dr. MacCarley, who recognized this deficiency of Kinzl. Resp. 29.
UUSI further argues that Zuckerman does not teach the 40 ms
interval. Resp. 30–32. Given that Zuckerman uses an analog system in
which samples of speed are not taken, we agree.
However, UUSI does not point to any discussion in the ’612 patent
specification that supports the 40 ms time window as being significant.
Support for the 40 ms time window is set forth in the original 1992
specification (see footnote 4), which is incorporated by reference. Tr. 12.
Given no explanation in the ’612 specification and its priority chain as to the
significance of the 40 ms time window, we conclude that it is a matter of
design choice and would have been obvious to one of ordinary skill in the
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art. Cf. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person
of ordinary skill is also a person of ordinary creativity, not an automaton.”)
Therefore, based on the evidence and the record before us, we
conclude that Brose has established by a preponderance of the evidence that
claim 5 is obvious based on Itoh alone, in combination with either Kinzl or
Zuckerman, and in combination with both Kinzl and Zuckerman.
4. Independent Claim 6
a. Itoh as primary reference
Independent claim 6 is reproduced below.
6. Apparatus for controlling activation of a motor coupled to a
motor vehicle window or panel for moving said window or
panel along a travel path and de-activating the motor when
movement of the window or panel is stopped prior to reaching a
predetermined position, said apparatus comprising:
a) a sensor for sensing movement of the window or panel
and providing a sensor output signal related to a position of the
window or panel;
b) a switch for controllably actuating the motor by
providing an energization signal; and
c) a controller having an interface coupled to the sensor
and the switch for controllably energizing the motor; said
controller programmed with multiple position limits that define
an acceptable travel range and further programmed for
controlling movement of the window or panel when power is
applied to the controller by:
i) monitoring the sensor output signal from the
sensor related to the position of the window or panel;
ii) identifying the position of the window or panel
based on the sensor output signal from the sensor; and
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iii) outputting a control signal to said switch to
deactivate said motor in response to a sensing said window or
panel has stopped moving prior to reaching a position limit.

Ex. 1005, 25:7–30 (emphases added)

Brose provides a detailed “read” of claim 6 onto Itoh, Kinzl, and
Zuckerman. Pet. 34–37. Claim 6 differs from claim 1 at least in that
determination of when to de-activate a motor is based on the window being
stopped prior to reaching a predetermined position (rather than being based
on changing window travel speed). Claim 6, at (c)(iii), recites a controller
programmed to “deactivate said motor in response to a sensing said window
or panel has stopped moving prior to reaching a position limit.” Brose
describes how Itoh keeps track of window position using a counter and
argues that as long as the window is not fully closed, the CPU detects an
obstacle by detecting a decrease in motor speed. Pet. 36–37.
UUSI would have us construe “has stopped moving” as requiring the
controller to deactivate the motor in response to an abrupt stoppage of the
panel (e.g., window) and not simply a deceleration of the panel or the
encountering of an obstacle by the panel. Resp. 33.
We decline to read the limitation “abrupt” into the claim. The
meaning of “has stopped moving” in the context of claim 6 simply describes
the present state of window movement, namely that it is no longer moving.
“Has stopped moving” tells us that the window at some time in the past was
moving and now it is not moving. The term does not speak to how rapidly
or slowly (rate of deceleration) the window’s velocity slowed to its stopped
condition.
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Claim 6 also recites a “controller programmed with multiple position
limits that define an acceptable travel range.” UUSI would have us
construe this limitation as requiring that position limits must be stored that
define both a fully-opened position and a fully-closed position. Resp. 35.
Its reasoning is that such interpretation would be consistent with the Detailed
Description of the ’612 patent. Ex. 2001, 75.
In support, UUSI points to column 12, lines 5–11 of the ’612 patent.
We have reviewed this portion of the specification. It describes calibration
and is taken by UUSI out of context.
If the claim drafter had meant to describe “fully open” and “fully
closed,” there were a number of different ways a claim drafter could have
conveyed the desired meaning. For example, claim 6 could have simply
stated “entire travel path” instead of “acceptable travel range” or it could
have made reference to fully open and fully closed positions.
Based on its constructions, UUSI argues that Itoh does not detect a
window abruptly stopping along a range of travel as required by claim 6.
Resp. 36. According to UUSI, Itoh cannot detect the disappearance of a
pulse train, which would result from an abrupt stoppage of the motor.
Ex. 2001, 77–82. However, UUSI acknowledges that Itoh includes a
counter that keeps track of window position and that pinch detecting causes
a deactivation of the motor when the window is not in its fully open or
closed position.
UUSI’s argument is based entirely on strained constructions that
import the limitations “abrupt” in describing stopping and “entire travel
range” in describing “acceptable travel range.” We, therefore, are
unpersuaded by these arguments.
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We conclude that on this record, Brose has established by a
preponderance of the evidence that Itoh anticipates or renders obvious claim
6.
Kinzl also keeps track of window position and defines particular
zones of window travel. This is not disputed. We therefore conclude that on
this record, Brose has established by a preponderance of the evidence that
Itoh and Kinzl together render obvious claim 6.
b. Kinzl as primary reference
Brose also argues that claim 6 (and claims 7 and 8) are anticipated and
rendered obvious by Kinzl. Brose maps the Kinzl disclosure to claim 6 as
follows. Kinzl’s sensor 26 is a “sensor for sensing movement of the window
or panel and providing a sensor output signal related to a position of the
window or panel” as recited in claim 6. See Pet. 23–24, 41. As construed
above, this limitation includes both direct and indirect sensing of the object’s
movement. See supra Part III.A.2. Sensor 26 monitors movement of
window 10 either directly via the window itself, or indirectly via drive motor
12. See Ex. 1008, 2:1–2, 2:11–22, 2:53–57.
Kinzl discloses a “switch for controllably actuating the motor by
providing an energization signal” as recited in claim 6. See Pet. 23, 41. In
particular, open relay 20 and close relay 22 switch power to drive motor 12
to open and close window 10, respectively. See Ex. 1008, 2:47–53.
Kinzl’s microcomputer 24 is a “controller having an interface coupled
to the sensor and the switch for controllably energizing the motor,” as
recited in claim 6. See Pet. 41; Ex. 1008, Fig. 1, 3:66–4:16. Microcomputer
24 has an interface coupled to sensor 26 for monitoring signals from sensor
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26. See Pet. 41–42; Ex. 1008, 2:53–57. In addition, Kinzl’s microcomputer
24 performs operations (i) through (iii) of claim 6. See Pet. 24–25, 42–44.
UUSI contends that Kinzl does not disclose storing a value for an
opposite end (fully-opened position) of an acceptable range of travel, and
thus, does not meet the claim 6 requirement that the multiple position limits
“define an acceptable travel range.” Resp. 40–43. There is evidence,
however, suggesting that Kinzl does disclose providing a count for a fully
closed position. See Ex. 1008, 6:20–53. A difference between the count
obtained during a close cycle and the count obtained during an open cycle
tells where the window is positioned. There is an inherent max count when
the window begins at a fully closed position (count = 0) and travels toward
and reaches a fully open position. Pet. 22–24; Ex. 1001 ¶ 239; Ex. 1005,
28:19–20.
UUSI argues that Kinzl does not disclose storing a “fully-opened
position.” Resp. 40 (citing Ex. 2001, 85–87). Based on our construction,
Kinzl need not do so. We, therefore, are unpersuaded by this line of
argument.
We conclude that on this record, Brose has established by a
preponderance of the evidence that Kinzl anticipates or renders obvious
claim 6.
5. Claim 7
Claim 7 depends from claim 6 and further requires memory for
storing multiple window or panel positions. Brose argues that Kinzl’s
microcomputer 24 is programmable and includes a processing unit for
executing a control program and includes a memory for storing multiple
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window position values corresponding to a signal received from the sensor.
Pet. 53 (citing Ex. 1008, 2:9−11; Ex. 1001 ¶ 253).
UUSI does not separately argue claim 7, relying on its argument with
respect to claim 6.
Based on the evidence and the record before us, we conclude that
Brose has established by a preponderance of the evidence that Itoh or Kinzl
anticipates claim 7. Brose has also established by a preponderance of
evidence that claim 7 is obvious based on Itoh in combination with Kinzl.
6. Claim 8
Claim 8 depends from claim 6 and further requires that one or more
position limits be programmed for use by the controller to determine
window or panel position for use in identifying whether the window or panel
is closed or open.
Brose argues that Kinzl discloses that microcomputer 24 is
programmed with a closed position limit, which corresponds to counter
value “0,” and which the controller uses to determine whether the window is
closed. Pet. 54. Brose further argues that Kinzl also discloses that
microcomputer 24 is programmed with other position values marking limits
of Zone 2 and Zone 1, which are used to identify that the window is open
some amount. Pet. 54 (citing Ex. 1001 ¶¶ 255–257).
UUSI does not separately argue claim 8.
Based on the evidence and the record before us, we conclude that
Brose has established by a preponderance of the evidence that Itoh or Kinzl
anticipates claim 8. Brose has also established by a preponderance of
evidence that claim 8 is obvious based on Itoh in combination with Kinzl.
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V. OTHER ARGUMENTS
A. Expert not Familiar with the State of the Art
UUSI contends that Petitioner’s expert, Dr. MacCarley, is not familiar
with the state of the art in 1992 and is not an expert in automotive vehicle
window or sunroof movement mechanisms or their control systems. Resp.
4–10.
However, 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 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
UUSI 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. Resp. 44–45. Moreover, UUSI 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. Resp 45.
However, UUSI does not contend Itoh and Kinzl are non-enabling as
to any specific claim. Reply 14–15. Instead, UUSI merely argues Itoh and
Kinzl are non-enabling references. Id. We conclude, however, that Itoh and
Kinzl provide sufficient disclosure to allow a person having ordinary skill in
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the art to make and use the inventions recited in each of the challenged
claims. See In re Antor Media Corp., 689 F.3d 1282, 1290 (Fed. Cir. 2012)
(“[A] prior art reference need not enable its full disclosure; it only needs to
enable the portions of its disclosure alleged to anticipate the claimed
invention.”); Symbol 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
UUSI moved (Paper 32) to exclude Exhibits 1062, 1063, and pages
185–193 and page 198 (lines 15–18) of Exhibit 2004. Motion 2. Brose
opposed. Paper 35.
UUSI contends that Exhibits 1065 and 1066 and certain pages of
Exhibit 2004 should be excluded because these exhibits are proffered in
support of arguments Brose presents for the first time in the Reply.
Motion 3, 5.
At the outset, “[m]otions to exclude are for evidentiary objections
previously made on the record,” and are “not a proper vehicle for use by a
party to raise the issue of a reply exceeding the proper scope.” Honeywell
Int’l Inc. v. Int’l Controls and Measurements Corp., Case IPR2014-00219,
slip op. at 2 (PTAB Jan. 5, 2015) (Paper 38)
UUSI has not presented persuasive argument that there is a legal
reason that the evidence should be excluded from the record. Its arguments
go to scope and weight we attribute to the evidence. The motion is denied.
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ORDER
Accordingly, it is
ORDERED that UUSI’s Motion to Exclude is DENIED;
FURTHER ORDERED that claims 1, 2, and 5–8 of U.S. Patent
8,217,612 B2 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 Dauchot
KIRKLAND & ELLIS LLP
craig.leavell@kirkland.com
luke.dauchot@kirkland.com

FOR PATENT OWNER:

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