Edmit Industries, Inc.v.Smartdoor Holdings, Inc.

Patent Trial and Appeal Board

Mar 29, 2016

09644901 (P.T.A.B. Mar. 29, 2016)

Trials@uspto.gov Paper 31
571-272-7822 Entered: March 29, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

EDMIT INDUSTRIES, INC.,
Petitioner,

v.

SMARTDOOR HOLDINGS, INC.,
Patent Owner.
____________________

Case IPR2015-00013
Patent 6,484,784 B1
____________________

Before JOSIAH C. COCKS, MEREDITH C. PETRAVICK, and
JAMES A. WORTH, Administrative Patent Judges.

WORTH, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
IPR2015-00013
Patent 6,484,784 B1

2

INTRODUCTION
Petitioner, Edmit Industries, Inc. (“Petitioner”), filed a Corrected
Petition1 (Paper 4, “Pet.”) requesting inter partes review of claims 16–18
and 27 of U.S. Patent 6,484,784 (“the ’784 patent”). Patent Owner,
Smartdoor Holdings, Inc. (“Patent Owner”), filed no preliminary response.
We determined that the information presented in the Petition demonstrated a
reasonable likelihood that Petitioner would prevail with respect to claims
16–18 and 27. Pursuant to 35 U.S.C. § 314, we instituted trial as to those
claims. Paper 9 (“Dec. Inst.”).
After institution of trial, Patent Owner filed a Patent Owner Response
to the Petition (Paper 12, “PO Resp.”) and a Motion to Amend (Paper 13,
“Mot. Amend”). Petitioner filed a Reply to Patent Owner’s Response (Paper
14, “Pet. Reply”) and an Opposition to Patent Owner’s Motion to Amend
(Paper 15). Patent Owner filed a Reply to Petitioner’s Opposition to Patent
Owner’s Motion to Amend (Paper 16).
Petitioner filed a Motion to Exclude Evidence (Paper 26, “Mot.
Exc.”).
An oral hearing was held on December 14, 2015, a transcript of which
has been entered in the record. Paper 30 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.

1 We refer to the Corrected Petition as simply the Petition for ease of
reference henceforth. All citations to “Petition” or “Pet.” are to the
Corrected Petition (Paper 4).
IPR2015-00013
Patent 6,484,784 B1

3

For the reasons that follow, we determine that Petitioner has shown by
a preponderance of the evidence that claims 16–18 and 27 of the ’784 patent
are unpatentable. The motion to amend is denied.
A. Related Proceedings
Patent Owner has asserted the ’784 patent against Petitioner in a case
pending in the United States District Court for the District of Columbia,
Smartdoor Holdings, Inc. v. Edmit Industries, Inc., Case No. 1:14-cv-00657
(D.D.C.). Pet. 4; see Paper 8, 2.
B. The ’784 Patent (Ex. 1001)
The ’784 patent is titled “Door Controlling Device,” and is expressed
as relating to “a control device for closing and opening a door,” and in
particular, a fire door. Ex. 1001, 1:5–6, 1:10–15. Fire doors “close the
throughway automatically upon a sensed condition, such as excessive heat or
smoke.” Id. at 1:15–18. Most fire doors close with gravity or the assistance
of a spring in response to the presence of heat and are opened with an
electric motor or manually. Id. at 1:27–50. The ’784 patent characterizes
the disclosed invention as various “improve[ments] on the mechanisms of
the background art to solve one or more of the drawbacks associated with
the mechanisms of the background art.” Id. at 3:22–26. The ’784 patent
describes that one of the features of its disclosed invention is that the fire
door harnesses energy generated by the closing of the door to control the
closing speed and to power auxiliary operations. Id. at 3:37–43.
Thus, when the fire door travels from its open position to its closed
position, rotation of a rotor causes a generator function of motor/generator
68 to produce power. Id. at 8:23–25. Figure 7 of the ’784 patent depicts a
IPR2015-00013
Patent 6,484,784 B1

4

wiring diagram for an embodiment according to the invention and is
reproduced below:

Figure 7 of the ’784 patent.
As shown in the Figure above, the power produced in motor/generator
68 is used to activate visual indicators 64 and audible indicators 66. Ex.
1001, 8:29–32, 9:33–36. Further, the produced power is fed back to a motor
function of motor/generator 68, in such a manner as to cause the motor
function of motor/generator 68 to resist the rotation of rotor 130. Id. at
8:31–37; see id. at 9:33–10:11, 12:10–29. As described in the ’784 patent,
this use of power from the motor/generator is an arrangement that may be
referred to as regenerative braking. See id. at 8:23–42.

IPR2015-00013
Patent 6,484,784 B1

5

Illustrative Claim
Claims 1, 7, 14, 16, and 32 are independent claims. Claim 16,
reproduced below, is the only independent claim at issue in this proceeding
and is illustrative of the subject matter at issue.
16. A device comprising:
a door having an open, first position and a closed, second
position, with a force tending to move said door toward said
second position;
a disengageable stop connected to said door to hold said
door in said first position;
a motor connected to said door, said motor having an
ability to move said door from said second position to said first
position; and
a generator connected to said door, wherein movement of
said door from said first position to said second position causes
said generator to produce power to apply a braking force to slow
movement of said door from said first position to said second
position and to power at least one auxiliary device.

C. Grounds of Unpatentability Instituted for Trial
We instituted a trial based on the following grounds of
unpatentability:
Claims Basis References
16, 17 § 103 Shea2 and Burke3
18 § 103 Shea, Burke, and O’Brien4
27 § 103 Shea, Burke, and Leivenzon5

2 Shea, U.S. Patent No. 5,386,891, iss. Feb. 7, 1995 (Ex. 1009).
3 Burke, U.S. Patent No. 1,367,298, iss. Feb. 1, 1921 (Ex. 1003).
4 O’Brien, II et al., U.S. Patent No. 5,193,647, iss. Mar. 16, 1993 (Ex. 1008).
5 Leivenzon, U.S. Patent No. 4,533,905, iss. Aug. 6, 1985 (Ex. 1006).
IPR2015-00013
Patent 6,484,784 B1

6

ANALYSIS
A. Claim Construction
In an inter partes review, the Board interprets claim terms in an
unexpired patent according to the broadest reasonable construction in light
of the specification of the patent in which they appear. See In re Cuozzo
Speed Techs., LLC, 793 F.3d 1268, 1280 (Fed. Cir. 2015), cert. granted sub
nom. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 890 (mem.) (2016); 37
C.F.R. § 42.100(b). Under that standard, and absent any special definitions,
we give claim terms their ordinary and customary meaning, as would be
understood by one of ordinary skill in the art at the time of the invention.
See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any
special definitions for claim terms must be set forth with reasonable clarity,
deliberateness, and precision. See In re Paulsen, 30 F.3d 1475, 1480
(Fed. Cir. 1994).
Petitioner requests construction of the following terms: a
“disengageable stop”; a motor “connected” to said door; a generator
“connected” to said door; “auxiliary”; and “said generator to produce power
to apply a braking force to slow movement of the door from [said] first to
[said] second position.” See Pet. 9–10. Patent Owner does not request
construction of any terms.
We construe claim terms relevant to issues in dispute and to the extent
necessary to resolve the issues presented by the Petition. See Vivid Techs.,
Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). As with
the Decision on Institution, we determine that it is not necessary to construe
explicitly any claim terms for purposes of this inter partes proceeding.
IPR2015-00013
Patent 6,484,784 B1

7

B. Principles of Law
To prevail in its challenges to the patentability of the claims,
Petitioner must prove unpatentability by a preponderance of the evidence.
35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
differences between the claimed subject matter and the prior art are such that
the subject matter, as a whole, would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations, including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art; (3)
the level of skill in the art; and (4) objective evidence of nonobviousness.
Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966).
C. Obviousness of Claims 16 and 17 over Shea and Burke
Petitioner contends that Shea and Burke would have rendered obvious
claims 16 and 17. Pet. 20–25. We have reviewed Petitioner’s explanation
identifying where each limitation allegedly appears in Shea and Burke, along
with the testimony of Petitioner’s declarant, Brian D. Haas. Id.; Ex. 1004
¶¶ 22–28. We have also reviewed Patent Owner’s assertions and evidence
as to why Petitioner’s explanations and evidence are deficient. PO Resp. 4–
8.
1. Shea (Ex. 1009)
Shea is directed to a “mechanism for controlling the raising and
lowering of a door.” Ex. 1009, Title. The mechanism is described generally
as comprising a brake, with a speed reduction gearing, and a governor, to
IPR2015-00013
Patent 6,484,784 B1

8

control the speed of the door when it is closing under the gravitational pull
on the door. Id. at 1:31–36, 5:41–48.
The door may be opened or closed by a hand chain assembly or a
motor. Id. at 1:36–39, 4:31–40. A generator or battery may send power to a
motor through a control box. Id. at 4:26–38.
Further, the door closes, inter alia, in response to a change in
temperature or in response to an electric signal to actuate a solenoid, by the
releasing of a brake 84. See id. at Abstract, 1:35–39, 3:46–52, 4:45–59,
5:23–25. Shea discloses that actuation of the solenoid by an electric signal
is reversible such that the solenoid may re-engage brake 84. Id. at 5:28–31.
When brake 84 is engaged, brake shoes 108 are in a brake position. Id. at
5:32–38. Shea describes a preferred embodiment in which a control box
sends signals to both the motor and the solenoid based on “Up,” “Down,”
and “Stop” buttons. Id. at 7:50–62.
Shea describes that the closing of the door also may be slowed
mechanically with the use of a governor, which includes brake shoes 114
that centrifugally separate when the rotational speed of the input shaft
exceeds a threshold to apply braking friction. Id. at 5:47–62.
2. Burke (Ex. 1003)
Burke relates to alternating current motors that regenerate current
when driven by the load, i.e., the motor also serves as a generator. Ex. 1003,
1:9–12, 1:38–40. Burke is directed, in particular, to an improved
alternating-current motor and generator that will be able to serve as a
generator even when the alternating current supply to the motor is
interrupted. Id. at Title, 1:38–65, 2:55–57. Burke accomplishes this result
with a stator element having laminae of differing magnetic characteristics.
IPR2015-00013
Patent 6,484,784 B1

9

Id. at 3:71–115. Burke states that its motor/generator always maintains a
magnetic field in its magnetic element or stator. Id. at 4:16–20. Burke
describes that there are applications for a motor that also serve to regenerate
electricity “in cases where an electrical braking action is required as in
electrically operated elevators, motor vehicles, trains and the like,” and that
the electricity may also be used, inter alia, to power an electric indicator
light, or charge a storage battery. Id. at 1:18–24, 1:26–32, 3:8–16.
3. Analysis
i. Petitioner’s Assertions
In the Petition, Petitioner alleges how each limitation of claims 16 and
17 would be understood to be disclosed by Shea and Burke, and why such a
combination would have been obvious. Pet. 20–25. Patent Owner focuses
on the issues of whether a person of ordinary skill in the art would have
sought to combine Shea and Burke and the feasibility of the combination,
but Patent Owner does not generally dispute Petitioner’s contention that the
individual limitations of claims 16 and 17 would be met by the teachings of
Shea and Burke.6 PO Resp. 6–8; see 37 C.F.R. § 42.23(a).
With respect to the limitations, “a door having an open, first position
and a closed, second position, with a force tending to move said door toward
second position” and “a disengageable stop connected to said door to hold
said door in said first position,” we find that Shea discloses a fire door which

6 As addressed below, Patent Owner does argue that the modification of
Shea’s device with the teachings of Burke would require the use of an
external power source (not claimed), as an additional, concomitant
modification in order to use the motor/generator of Burke. PO Resp. 6.
However, Patent Owner does not argue that the combination of Shea and
Burke would lack any of the recited limitations.
IPR2015-00013
Patent 6,484,784 B1

10

is held open by releasing mechanism 82 and temperature sensitive means 88
(such as a fusible link), and which closes under the force of gravity when the
fusible link separates (e.g., as in a fire). Ex. 1009, 3:25–52, 4:41–58; see
Pet. 20–23.
With respect to the limitation, “a motor connected to said door, said
motor having an ability to move said door from said second position to said
first position,” we find that Shea discloses a motor which may lift the door
from the closed position to the open position. Ex. 1009, 4:16–40; see Pet.
20–21, 23.
With respect to the limitation, “a generator connected to said door,
wherein movement of said door from said first position to said second
position causes said generator to produce power to apply a braking force to
slow movement of said door from said first position to said second position
and to power at least one auxiliary device,” we find that Burke discloses the
motor/generator can be utilized, when operated as a generator, to provide
braking action through regenerative braking. Ex. 1003, 1:16–23. Burke
describes the use of a generator to produce power which can flow to
additional element 13, i.e., “a resistance for absorbing the braking energy, a
storage battery charged by the regenerated energy, a magnet for controlling
the operation of some other mechanism, an electric light or any other desired
translating device.” Ex. 1003, 3:4–16, Fig. 4; Pet. 21–24. Burke also
discloses that “it is desirable to utilize the regenerative function of electric
motors, the motor itself serving to build up and excite its own field when
operated as a generator, as in cases where an electrical braking action is
required as in electrically operated elevators, motor vehicles, trains, and the
like, . . . .” Ex. 1003, 1:18–22 (cited in Pet. 23); Ex. 1004 ¶ 25. Thus, Burke
IPR2015-00013
Patent 6,484,784 B1

11

discloses the use of the regenerated energy from the generator both to power
an additional device and at the same time to provide braking action, i.e., by
dissipating mechanical energy through the generator’s conversion of the
mechanical energy to electrical energy (which is then absorbed by the
electrical resistance, battery, or other components). See id.; Ex. 1004 (Haas
Decl.) ¶ 26 (using a generator to slow the door on descent).7 As applied to
the claim language, Burke’s generator thereby accomplishes braking and
powering at the same time through regenerative braking: “movement . . .
causes said generator to produce power to apply a braking force to slow
movement . . . and to power at least one auxiliary device.”
Petitioner asserts that a person of ordinary skill would have modified
Shea’s fire door with Burke’s motor/generator such that Burke’s
motor/generator would operate to raise the fire door or to slow the descent of
the fire door. Pet. 22. In particular, Petitioner relies on Burke for the
teaching of regenerative braking and contends that a person of ordinary skill
in the art would have substituted the governor of Shea with the

7 We conclude that the motor/generator of both Burke and O’Brien, as
applied to claim 18 infra, satisfy the terms of the claim language under the
broadest reasonable interpretation. As stated in the Claim Construction
section, supra, we determine that it is not necessary for purposes of the
current dispute to conduct an explicit claim construction, inter alia, because
Patent Owner does not dispute the meaning of the terms. Nevertheless, we
note that Burke and O’Brien work in different ways to “apply a braking
force.” Burke, as set forth herein, applies a braking force mechanically
through the action of the generator, in dissipating the mechanical energy and
converting it to electrical energy. O’Brien, as discussed infra, applies a
braking force by feeding back the generated electrical energy to cause the
motor to tend in the opposite direction. We find both of these to be the
application of a braking force despite the difference in mechanism.
IPR2015-00013
Patent 6,484,784 B1

12

motor/generator of Burke in order to slow the door on descent (for reasons
discussed below). Id.
Petitioner relies on the same structures for claim 17 as for claim 16,
and in particular, the motor/generator of Burke. Id. at 24–25 (citing Ex.
1003, Fig. 1, 2:55–57; Ex. 1004 ¶ 28). We find that the motor and generator
of Burke do share a common housing, thus satisfying the additional
recitation of claim 17. Ex. 1003, Fig. 1, 1:55–57, 2:10–19 (discussing Fig.
1); see Pet. 24–25. We, therefore, find that Petitioner’s contention that the
limitations of claims 16 and 17 are met by the combination of Shea and
Burke is supported by a preponderance of the evidence, and we adopt as
factual findings Petitioner’s assertions set forth in the respective claim charts
on pages 22–25 of the Petition.
ii. Whether a Person of Ordinary Skill Would Have Combined the
References As Asserted
Petitioner argues that a person of ordinary skill would have used
regenerative braking, as taught by Burke, as a substitute for use of the
governor of Shea in order to optimize the function of the door closer and to
power a light as described in Burke. Pet. 21–22, 24. Petitioner further
reasons that the substitution would have been desirable by one skilled in the
art so as to recover the excess energy, and as the use of a known technique to
improve the functionality. Id. at 22. Petitioner further relies on paragraphs
21 and 26 of the Haas Declaration in its contentions. Pet. 21–22; Pet. Reply
11; see also id. at 7–13 (discussing Randall Mfg. v. Rea, 733 F.3d 1355
(Fed. Cir. 2013)).
Mr. Haas provides the following rationales for a substitution of
Burke’s motor/generator for Shea’s motor/governor: (i) combining prior art
IPR2015-00013
Patent 6,484,784 B1

13

elements according to known methods to yield predictable results; (ii)
substitution of one known element for another to obtain predictable results;
(iii) use of known technique to improve similar devices in the same way;
and/or (iv) applying a known technique to a known device to yield a
predictable improvement. Ex. 1004 ¶ 21. Mr. Haas additionally states that a
person would have been motivated to recover excess energy to use for
lighting and to improve the functioning of Shea. Id. ¶ 26.
Patent Owner disagrees for three reasons. First, Patent Owner implies
that Burke is not analogous art because Burke does not disclose a door. See
PO Resp. 6. Art is analogous when it is: (1) from the same field of endeavor
as the claimed invention; or (2) reasonably pertinent to the particular
problem faced by the inventor, if the art is not from the same field of
endeavor. See In re Bigio, 381 F.3d 1320, 1325–26 (Fed. Cir. 2004). In this
case, as observed by Petitioner’s Declarant, Burke expressly describes an
application “as in cases where an electrical braking action is required.” Ex.
1004 ¶ 25 (quoting Ex. 1003, 1:18–22). Thus, even under Patent Owner’s
argument that Burke is not specific to the field of doors, we agree with
Petitioner’s Declarant that Burke is relevant to the problem of braking in
electrified devices. Burke discloses an approach to that problem by
absorbing energy from a motor, operated as a generator, for the purpose of
braking. Ex. 1003, 1:16–25, 3:11–12.
Second, Patent Owner argues that Burke’s motor/generator is not
consistent with battery operation because it is an AC motor/generator, and
that it therefore would be unable to function through all phases of the door
cycle of operation (closed, opening, open, closing), and would require an
external source of AC power. PO Resp. 5–7. Nevertheless, we regard this
IPR2015-00013
Patent 6,484,784 B1

14

to be largely an argument regarding bodily incorporation, i.e., whether an
AC component can be integrated with a DC component, which does not
directly address the issue of whether a person of ordinary skill in the art
would have been motivated to combine the components. See In re Etter, 756
F.2d 852, 859 (Fed. Cir. 1985) (en banc) (“Etter’s assertions that Azure
cannot be incorporated in Ambrosio are basically irrelevant, the criterion
being not whether the references could be physically combined but whether
the claimed inventions are rendered obvious by the teachings of the prior art
as a whole.”).
In this connection, counsel for Patent Owner acknowledged at oral
argument that Patent Owner was not attempting to argue that Burke could
not have been so incorporated. See Tr. 34:17–35:1. Indeed, Patent Owner’s
main argument regarding the use of an AC motor/generator is that an
external AC power source would be required to run the motor. PO Resp. 7.
However, Burke teaches the use of an AC power source as item 10 of its
circuit connection. Ex. 1003, Figs. 3, 4, 2:118–121. In combination with
Shea, Burke would thus allow the door to be raised with the motor/generator
of Burke if the door were plugged into a power source (id.; see also Ex.
1009, 4:27–31), or, during a power failure, to be raised with Shea’s hand
chain assembly. Ex. 1009, 8:6–14, 4:28–40.
Third, Patent Owner argues that removing the governor and replacing
it with Burke’s regenerative braking would “destroy the teachings of Shea.”
PO Resp. 7–8. Specifically, Patent Owner argues that Shea utilizes a
centrifugal governor in the high speed rotation portion of the gear, the
operation of the governor using centrifugal force is integral to the Shea
design, and Burke does not explain why a governor would be removed. Id.
IPR2015-00013
Patent 6,484,784 B1

15

at 8; Tr. 21:16–36:5. Patent Owner also argues that a governor operates only
at high rotational speeds, and specifically in Shea’s embodiment, only at
rotational speeds of the input shaft in excess of 1700 RPM. PO Resp. 7
(citing Ex. 1009, 5:59–63).
The Federal Circuit has explained that a substitution of components,
e.g., the substitution of an electrical component for an optical component,
does not destroy the principle of operation where it does not destroy the
overall principle of operation of the device. In re Mouttet, 686 F.3d 1322,
1332 (Fed. Cir. 2012).
A governor, as taught by Shea, uses frictional braking by deploying
brake shoes based on the application of centrifugal force. Ex. 1009, 5:59–
63. Petitioner’s assertion is that a person of ordinary skill would have found
it obvious to use a different braking mechanism as a substitute for a
governor to achieve the same function. In particular, Petitioner proposes
substitution of the frictional braking mechanism of Shea (i.e., a braking
mechanism that is purely mechanical), with the dissipative braking
mechanism of Burke (i.e., a braking mechanism that also converts
mechanical energy to electrical energy). In this case, the fire door of Shea,
with the motor/generator of Burke substituted for the motor/governor of
Shea, would operate to blunt or slow the movement of the door on descent
while allowing the door to close. See Ex. 1004 (Haas Decl.) ¶ 26. We
determine that the asserted combination of Shea and Burke would operate in
the same manner as the fire door of Shea—to slow the movement of the
door, while allowing the door to close under the force of gravity. Id. ¶ 24.
We agree with Petitioner’s Declarant that this would have been an obvious
IPR2015-00013
Patent 6,484,784 B1

16

substitution as the use of a known technique to improve functionality. See
id. ¶ 26.
Petitioner’s proposed combination is thus the substitution of an
electrical component for an analog component, which does not destroy the
principle of operation because it does not destroy the overall principle of
operation of the device. See Mouttet, 686 F.3d at 1332. We conclude that
this type of fitting together of teachings would have been obvious to a
person of ordinary skill in the art. KSR, 550 U.S. at 420 (“a person of
ordinary skill will be able to fit the teachings of multiple patents together
like pieces of a puzzle”).
Viewing the evidence as a whole, we conclude that a person of
ordinary skill in the art would have applied the teachings of Burke regarding
regenerative braking to the fire door of Shea in order to improve operation of
the door and to make use of excess energy from rotation. We are further
persuaded by Petitioner’s arguments that Burke teaches that the braking can
have the additional advantage of powering another device and that a person
of ordinary skill would have sought a substitution of components in order to
achieve the advantages of Burke’s motor/generator. See Pet. Reply 11–12
(quoting Randall Mfg., 733 F.3d at 1363 (“doing so would allow the
designer to achieve the other advantages of the Aquino assembly while using
a stowage strategy that was very familiar in the industry”)).
The reasoning for the combination of Shea and Burke applies equally
to claim 17 as to claim 16. We, therefore, conclude that Petitioner has
shown by a preponderance of the evidence that Shea and Burke would have
rendered obvious the subject matter of claims 16 and 17.
IPR2015-00013
Patent 6,484,784 B1

17

D. Obviousness of Claim 18 over Shea, Burke, and O’Brien
Claim 18 depends from claim 16 and adds “wherein said power is fed
to said motor, so that said motor applies a force to said door attempting to
move said door toward said first position, and thus applies the braking force
to slow movement of said door from said first position to said second
position.” Petitioner asserts that claim 18 is unpatentable over Shea, Burke,
and O’Brien. Pet. 25–29.
1. O’Brien (Ex. 1008)
O’Brien is directed to an “Easy Opening Door Control Device.” Ex.
1008, Title. The device controls a pivoted, or swinging, door by storing the
energy from manual opening of the door in a spring. Id. at Abstract, 2:41–
29. After opening, the spring causes the door to swing back to a closed
position. Id. at 2:35–43. The closing of the door causes the rotation of a
rotor in a DC motor/generator, generating electricity which feeds back to the
motor, which then retards the rotation of the rotor and causes a braking
action on the door. Id. at 2:43–52, 5:9–15. O’Brien discloses that a user can
select the desired closing speed with an adjustable resistance 80. Id. at 5:15–
17.
2. Analysis
In the Petition, Petitioner alleges how each limitation of claim 18
would be understood to be disclosed by Shea, Burke, and O’Brien, and why
such a combination would have been obvious. Pet. 25–27. Petitioner’s
ground of obviousness is based on the combination of Shea and Burke, as set
forth above, further in view of the teachings of O’Brien. Pet. 25–26.8 For

8 We understand the reference in the claim chart on page 27 of the Petition to
column 9, lines 9–15 of O’Brien to be a typographical error intended to refer
IPR2015-00013
Patent 6,484,784 B1

18

example, Petitioner asserts that a person of ordinary skill in the art would
have incorporated O’Brien’s teaching of feeding back the output of
motor/generator 62 so that the motor applies a force to the door attempting
to move the door toward the open position, thereby applying a braking force
to slow the movement of the door toward the closed position. Pet. 26.
Patent Owner does not dispute Petitioner’s contention that the
individual limitations of claim 18 would be met by the asserted combination
of Shea, Burke, and O’Brien. See 37 C.F.R. § 42.23(a). Rather, Patent
Owner disputes whether a person of ordinary skill in the art would have
combined the references. PO Resp. 5–8. We find that Petitioner’s
contention regarding the additional recitation of claim 18 is well supported
by the declaration of Mr. Haas and the other evidence of record. O’Brien
describes that the rotation of shaft 60 causes motor/generator 62 to act as a
generator, the electrical output of direct current (DC) motor/generator 62 is
fed back to motor/generator 62 to retard the rotation of shaft 60, and the
closure speed of the door is retarded and controlled by motor/generator 62.
Ex. 1008, 5:9–15.
We proceed to analyze whether a person of ordinary skill would have
combined the references as asserted. Petitioner asserts that it would have
been obvious to a person of ordinary skill to incorporate the motor/generator
construction of O’Brien into the motor/generator construction of Shea as
modified by Burke because it would have been simply a substitution of one
known motor/generator for another to obtain a predictable result, or as a

to column 5 of O’Brien, as there is no column 9 and the claim chart refers to
column 5, lines 1–9 immediately prior, i.e., Ex. 1008, col. 5, lines 9–15
rather than Ex. 1008, col. 9, lines 9–15.
IPR2015-00013
Patent 6,484,784 B1

19

design choice, or as the use of a known technique to improve the
motor/generator functionality. Pet. 26–27 (citing Ex. 1004 ¶ 31); Pet. Reply
13–14.
Patent Owner does not provide any additional arguments with respect
to the combination of Shea, Burke, and O’Brien. Patent Owner simply
argues that O’Brien does not remedy the deficiency in the prior art as a
whole. PO Resp. 5, 8.
O’Brien discloses feedback of regenerated energy from a generator to
retard rotation of the motor itself. Ex. 1008, 5:4–14. In combination with
Shea and Burke, O’Brien’s feedback of electricity would cause the motor to
tend to rotate Shea’s door towards the open position when the shaft is
rotating towards the closed position.
Viewing the evidence as a whole, we conclude that a person of
ordinary skill in the art would have applied the teachings of O’Brien
regarding regenerative braking to the fire door of Shea in order to improve
operation of the door and to make use of excess energy from rotation. The
resulting fire door would operate, using the teachings of O’Brien, to retard
the closing speed, while allowing the door to close at a desired speed. See
Ex. 1008, 5:14–17. This would have been consistent with Shea’s principle
of operation of blunting the closing speed while allowing door closure. To
the extent that the substitution would use (electro-mechanical) braking that
generates electricity and feeds it back to the motor to oppose the movement
of the door (as taught by O’Brien), rather than (mechanically-activated)
frictional braking based on centrifugal force, we agree with Petitioner’s
Declarant that this would have been an obvious substitution as the use of a
known technique to improve functionality. See Ex. 1004 ¶ 31. Indeed,
IPR2015-00013
Patent 6,484,784 B1

20

O’Brien immediately thereafter discloses certain advantages of its system,
and, in particular, an adjustable resistance can be provided so that the user
can select the appropriate desired closing speed. Ex. 1008, 5:16–18.
We conclude that Petitioner has shown by a preponderance of the
evidence that the combination of Shea, Burke, and O’Brien would have
rendered obvious the subject matter of claim 18.

E. Obviousness of Claim 27 over Shea, Burke, and Leivenzon
Claim 27 depends from claim 16 and adds “wherein said at least one
auxiliary device includes an indicator to provide a visual or audible
indication that said door is moving from said first position to said second
position.” Petitioner asserts that claim 27 is unpatentable over Shea, Burke,
and Leivenzon. Pet. 29–32.
1. Leivenzon (Ex. 1006)
Leivenzon is directed to an “Indicating Means for a Door Operator
Device.” Ex. 1006, Title. The indicating means generally is described as
indicating when the door is fully open or fully closed, and preferably also
indicating that the door is moving toward the closed position or toward the
open position. Id. at 1:38–45. Leivenzon describes that the indicating
means can be an LED which illuminates or flashes, or can be an audible
means such as a burglar alarm. Id. at 2:5–14, 3:24–29, 5:41–48, 5:52–60.
2. Analysis
In the Petition, Petitioner alleges how each limitation of claim 27
would be understood to be disclosed by Shea, Burke, and Leivenzon, and
why such a combination would have been obvious. Pet. 26–29. Petitioner
relies on Leivenzon for the additional teaching of a visual or audible alarm.
Id. Patent Owner does not dispute Petitioner’s contention that the individual
IPR2015-00013
Patent 6,484,784 B1

21

limitation of claim 27 would be met by the asserted combination of Shea,
Burke, and Leivenzon. See 37 C.F.R. § 42.23(a). Rather, Patent Owner
disputes whether a person of ordinary skill in the art would have combined
the references. PO Resp. 5–8. We find that Leivenzon describes the
illumination of an LED and/or the sounding of an audible alarm to indicate
that the door is closing, and that this meets the additional recitation of claim
27. Ex. 1006, 2:37–45, 2:5–12, 6:55–66. We adopt as our findings
Petitioner’s assertions set forth in the claim chart at page 32 of the Petition,
as supported by a preponderance of the evidence of record.
Patent Owner does not provide any additional arguments with respect
to the combination of Shea, Burke, and Leivenzon. Patent Owner simply
argues that Leivenzon does not remedy the deficiency in the prior art as a
whole. PO Resp. 5–8. We agree with Petitioner that a person of ordinary
skill in the art would have combined the teachings of Leivenzon, to provide
a warning of the door closing (as an additional safety feature), using the
energy generated by the motor/generator of Burke. See Pet. 31–32; Ex. 1004
¶ 38.

PATENT OWNER’S MOTION TO AMEND
Patent Owner’s motion to amend is contingent on a finding of
unpatentability by the Board. Mot. Amend 2. Because we conclude that
Petitioner has demonstrated that claims 16–18 and 27 are unpatentable, we
proceed to consider Patent Owner’s motion to substitute claims 40–43 for
claims 16–18 and 27. For the reasons discussed below, Patent Owner’s
motion to amend is denied.
Rule 42.40(c) places the burden on the patent owner to show a
patentable distinction of each proposed substitute claim over the prior art.
IPR2015-00013
Patent 6,484,784 B1

22

See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1308 (Fed. Cir.
2015) (affirming the Board’s denial of a motion to amend claims where the
patent owner failed to establish the patentability of the substitute claims over
the prior art of record). While not required to prove that the claims are
patentable over every item of prior art known to a person of ordinary skill,
the patent owner is required to explain why the claims are patentable over
the prior art of record. MasterImage 3D, Inc. v. RealD, Inc., Case IPR2015-
00040, slip op. at 2 (PTAB July 15, 2015) (Paper 42). Prior art of record
includes: any material art in the prosecution history of the patent; any
material art of record in the current proceeding, including art asserted in
grounds on which the Board did not institute review; and any material art of
record in any other proceeding before the Office involving the patent. Id.
A. Claims 40–42
Proposed substitute claim 40 is reproduced as follows with marking
showing the differences from original claim 16. The deletion is shown in
brackets and additions are underlined.
Claim 40 (substitute for original claim 16): A device comprising:
a door having an open, first position and a closed, second
position, with a force tending to move said door toward said
second position;
a disengageable stop connected to said door to hold said door in
said first position;
a DC powered motor/generator connected to said door, said
motor having an ability to move said door from said second
position to said first position;
a rechargeable battery; and
[[a]] said DC powered motor/generator being connected to said
door, wherein movement of said door from said first position to
said second position causes said DC powered motor/generator to
produce DC power to said rechargeable battery so as to apply
a regenerative braking force to slow movement of said door from
IPR2015-00013
Patent 6,484,784 B1

23

said first position to said second position and to power at least
one auxiliary device.

Mot. Amend 2–3.
The additional limitations that Patent Owner seeks to introduce for
proposed substitute claim 40 would be to recite that the motor is part of a
motor/generator, to specify that the motor/generator uses DC power, and to
recite the use of regenerative braking to charge a rechargeable battery. The
additional limitations for proposed substitute claims 41 and 42 are similar to
that for proposed substitute claim 40.
However, the additional limitations would not avoid unpatentability
because Burke and O’Brien both use a motor/generator system, O’Brien’s
motor/generator uses DC power (Ex. 1008, 5:15), Burke and O’Brien both
use regenerative braking, and Burke recites the charging of a storage battery
by the motor/generator which is capable of braking (Ex. 1003, 3:4–16).
Therefore, the asserted combination of Shea, Burke, and O’Brien already
contains the features recited as additional limitations in proposed substitute
claim 40 (and the similar recitations in proposed substitute claims 41 and
42). We have already concluded supra, that the combination of Shea,
Burke, and O’Brien would have been obvious to a person of ordinary skill in
the art.
Patent Owner does not explain why the additional recitations of its
proposed substitute claims would have been nonobvious over this
combination. Mot. Amend 4–14. Patent Owner argues that the combination
of Shea and Burke would not make use of a DC battery by itself to open or
close a door. Id. at 11–12. However, nothing in the additional limitations of
proposed substitute claims 40–42 requires that a DC battery provide power
IPR2015-00013
Patent 6,484,784 B1

24

to open or close a door without an additional power supply (as discussed
above with respect to claim 16). More importantly, the combination of
Shea, Burke, and O’Brien would make use of the DC-powered
components—the DC motor/generator of O’Brien. Ex. 1008, 5:4–15. Burke
discloses using the motor/generator to charge a battery with the regenerated
energy. Ex. 1003, 3:12–13. Therefore, the combination of Shea, Burke, and
O’Brien already contains the elements of the additional limitations. We
conclude that Patent Owner has not met its burden of proving that the
additional recitations of proposed substitute claims 40–42 would have been
nonobvious over this combination. See Paper 15, 4–16.9
B. Claim 43
For proposed substitute claim 43, Patent Owner proposes the
following additional limitation: “and wherein more and more braking is
applied as said door closes so that said door will close at a substantially
uniform speed.” Mot. Amend 4, 6. Petitioner argues that the term
“substantially uniform speed” is indefinite, and that in any event, the
additional limitation as a whole would have been rendered obvious by the
same combination of Shea, Burke, and O’Brien. Paper 15, 16–24 (citing Ex.
1012 ¶¶ 22–23). Petitioner points, inter alia, to the teaching of different
levels of braking in O’Brien (Ex. 1008, 2:48–55), and to Shea’s teaching of
using a governor to prevent high speeds (Ex. 1009, 6:59–63, 7:9–21). Paper
15, 19–21.

9 For purposes of this inter partes review as to patentability, we do not reach
the claim construction issue raised by Petitioner as to whether a capacitor is
a battery and vice-versa. Paper 15, 4–5; see also Pet. Reply 4.
IPR2015-00013
Patent 6,484,784 B1

25

As to Petitioner’s argument that proposed substitute claim 43 is
indefinite, we determine that the term “substantially uniform speed” is
reasonably clear to a person of ordinary skill when read in context of the
entire claim limitation and disclosure, which requires the application of
“more and more braking” to compensate for the dynamics of the door during
closing, e.g., to offset the potential for acceleration due to gravity. Ex. 1001,
12, 19–29; see In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014).
We agree with Petitioner that the combination of Shea, Burke, and
O’Brien renders obvious the additional limitation of proposed substitute
claim 43. We find that O’Brien discloses that a “different amount of braking
force” can be used. Ex. 1008, 2:48–55. O’Brien further discloses that the
rotational speed can be increased during closing (id. at 5:18–34), decreased
during closing (id. at 5:35–41), or set to a desired speed (id. at 5:16–18).
O’Brien discloses that adjustable resistor 80 can select a “desired closing
speed.” Id. at 5:16–18. We conclude that Patent Owner has not met its
burden of proving why it would have been nonobvious to a person of
ordinary skill, given the teachings of Shea, Burke, and O’Brien, to use an
adjustable resistor to increase the braking force to select a uniform speed or
substantially uniform speed. Thus, Patent Owner has not met its burden for
proposed substitute claim 43.
PETITIONER’S MOTION TO EXCLUDE
Petitioner moves to exclude a MERRIAM-WEBSTER dictionary
definition and a dailymail.co.uk website printout cited in Patent Owner’s
Reply to Petitioner’s Opposition to Patent Owner’s Motion to Amend. Mot.
Exc. 3–8. Specifically, Petitioner argues that the proffered materials are
irrelevant under FRE 401 and 402, are not authentic as required by FRE 901,
IPR2015-00013
Patent 6,484,784 B1

26

are hearsay under FRE 802, and should furthermore be excluded as
prejudicial, confusing, and misleading under FRE 403. Id. In any event,
this opinion does not rely on any of the exhibits that were the subject of the
motion. Accordingly, Petitioner’s Motion to Exclude is dismissed as moot.

CONCLUSION
We conclude that Petitioner has shown by a preponderance of the
evidence that (1) claims 16 and 17 are unpatentable over the combination of
Shea and Burke; (2) claim 18 is unpatentable over the combination of Shea,
Burke, and O’Brien; and (3) claim 27 is unpatentable over the combination
of Shea, Burke, and Leivenzon.

ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 16–18 and 27 are unpatentable;
FURTHER ORDERED that Patent Owner’s Motion to Amend (Paper
13) is denied;
FURTHER ORDERED that Petitioner’s Motion to Exclude (Paper
26) is dismissed; 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.

IPR2015-00013
Patent 6,484,784 B1

27

PETITIONER
Arthur Schaier
Jennifer Calcagni
Carmody Torrance Sandak & Hennessey LLP
patents@carmodylaw.com
jcalcagni@carmodylaw.com

PATENT OWNER
Daniel Eisenberg
dane8000@gmail.com