Johnson Controls, Inc.v.Wildcat Licensing WI, LLC

Patent Trial and Appeal Board

Jun 22, 2015

10789307 (P.T.A.B. Jun. 22, 2015)

Trials@uspto.gov Paper 45
571-272-7822 Entered: June 22, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

JOHNSON CONTROLS, INC.,
Petitioner,

v.

WILDCAT LICENSING WI, LLC,
Patent Owner.
____________

Case IPR2014-00305
Patent 7,062,831 B2

Before JAMES B. ARPIN, CARL M. DEFRANCO, and
SUSAN L. C. MITCHELL, Administrative Patent Judges.

MITCHELL, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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I. INTRODUCTION
Petitioner, Johnson Controls, Inc., filed a Petition (Paper 3, “Pet.”)
requesting an inter partes review of claims 22–28 of U.S. Patent No.
7,062,831 B2 (Ex. 1001, “the ’831 patent”). Pursuant to 35 U.S.C. § 314,
we instituted this trial on June 23, 2014, as to claims 22–28. Paper 9
(“Dec.”). After institution, Patent Owner filed a Patent Owner Response
(Paper 21, “PO Resp.”), and Petitioner filed a Reply to the Patent Owner
Response (Paper 27, “Reply”).
Oral argument was held on March 2, 2015, and a transcript (Paper 44,
“Tr.”) has been entered into the record.
This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a).
We have jurisdiction under 35 U.S.C. § 6(c).
We are persuaded that Petitioner has demonstrated by a
preponderance of the evidence that claims 22 and 24–28 are unpatentable as
anticipated under 35 U.S.C. § 102(b) by Gass, and claim 23 is unpatentable
as obvious under 35 U.S.C. § 103(a) over Gass and Sabatini.
A. Related Proceedings
The ’831 patent has been asserted in the following Federal district
court case: Wildcat Licensing WI, LLC v. Johnson Controls, Inc., Case No.
3:13-cv-00328 (W.D. Wis.). Pet. 1. Petitioner also filed, concurrently, a
petition for inter partes review of U.S. Patent No. 6,763,573 B2, the parent
for the ’831 patent, which is decided concurrently with this inter partes
review. See Johnson Controls, Inc. v. Wildcat Licensing WI, LLC, Case
IPR2014-00304 (PTAB).
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B. The ’831 Patent
The ’831 patent relates to a system for assembling an article with
multiple fastening locations that need predetermined screw torque
requirements. Ex. 1001, Abstract. To avoid possible failure of such an
assembled article, it is known that
[p]roper fastening of a screw may require a predetermined
amount of torque to be applied to one or more screws or that the
screws be fastened according to a predetermined sequence, or
possibly both requirements. It is also necessary that all of the
fastening locations be properly subject to a fastening operation
and filled with a fastener.
Id. at 1:29–34.
Large-volume assembly operations may use a continuous or
intermittent conveyor system that carries an article through multiple
assembly stations in which torque reaction arms or drivers are used to
assemble an article with fasteners, e.g., screws, according to a predetermined
torque value. Id. at 1:45–56. “To achieve high volume assembly and to
keep conveyor lines short, typically several different screws are fastened by
a single worker at a given assembly station along the line” (id. at 1:58–60),
which can result in intentional and inadvertent mistakes. “[I]f the worker of
the torque reaction arm drives the same screw twice[,] he can accidentally
provide two torque values for one screw.” Id. at 2:3–5. “Even without
mistakes, some workers have been known to intentionally bypass or trick
existing systems,” for example, by fastening and unfastening the same screw
at the same location. Id. at 2:14–19.
The ’831 patent describes a method to avoid such mistakes. Id. at
2:52–67. Figure 1 of the ’831 patent is reproduced below.
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Figure 1 depicts a preferred embodiment of such an assembly system for an
automotive seat.

As shown in Figure 1, three targets 50a–c have distinctive
characteristics that differentiate one target from another, so that machine
vision camera 54, which is a target sensor, may distinguish the targets from
each other. Id. at 5:39–42, 5:44–46. In making such distinctions, machine
vision camera 54 generates an electronic output differentiating between
targets 50a–c and communicates this electronic output to electronic
controller 58. Id. at 5:44–48.
Electronic controller 58 “can utilize the electronic output from the
machine vision camera 54 for a variety of purposes such as sounding an
alarm, stopping the conveyor 14 and/or collecting data for analysis or quality
control purposes.” Id. at 5:49–53. The electronic controller “also has a
connection to the torque reaction arm or driver 30 for activating the driver
30 when the driver 30 is in a proper fastening position and disabling the
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driver 30 when the driver 30 is not in a proper position to fasten at one of the
fastening locations 52a–c.” Id. at 6:16–20. In order to collect data for
analysis or quality control purposes, the electronic controller “also receives
feedback from the torque monitor 31 integral with the driver 30 to provide
an indication of the driven torque applied at a fastening location.” Id. at
6:21–23.
The electronic controller also may have the following feature:
[A] predetermined sequence program requiring a predetermined
sequence of fastening among the fastening locations 52a–c.
According to this feature, the electronic controller controls the
sequence of fastening based upon the target output and provides
a sequence output indicating whether the predetermined
sequence has been achieved. This may simply entail ensuring
that the driver 30 is active only when in front of the correct one
of the fastening locations 52a–c as indicated by the respective
targets 50a–c.

Id. at 7:50–59.
C. Illustrative Claim
Claim 22 is the sole independent claim of the challenged claims 22–
28. Claim 22 of the ’831 patent is illustrative of the claimed subject matter
at issue, and is set forth below.
22. A method for assembling an article of assembly,
the article of assembly having a plurality of fastening locations
including first and second fastening locations in spaced apart
relation, comprising:
holding the article of assembly in a predetermined
position;
manually fastening fasteners into the article of assembly
using a fastening tool at the first and second fastening locations
according to a predetermined fastening sequence;
sensing the position of the fastening tool;
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electronically comparing the sensed position of the
fastening tool with a predetermined sequence of fastening
among the first and second fastening locations; and
providing a sequence output indicating whether the
predetermined sequence has been achieved.

Ex. 1001, 12:13–28.
D. Grounds of Unpatentability
We instituted the instant trial based on the following grounds of
unpatentability:
References Basis Challenged Claims
Gass
1
§ 102(b) 22 and 24–28
Gass and Sabatini
2
§ 103(a) 23
II. ANALYSIS
A. Claim Interpretation
In an inter partes review, claim terms in an unexpired patent are given
their “broadest reasonable construction in light of the specification of the
patent in which it appears.” 37 C.F.R. § 42.100(b); see In re Cuozzo Speed
Tech., LLC, 778 F.3d 1271, 1278–82 (Fed. Cir. 2015). A “heavy
presumption” exists that a claim term should be construed in light of its
ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick Corp.,
288 F.3d 1359, 1366 (Fed. Cir. 2002). A claim term will not be accorded its
ordinary meaning, however, “if the patentee acted as his own lexicographer

1
Gass, PCT Pub. No. WO 00/17719, Mar. 30, 2000 (Ex. 1011). Because
this reference is in German, all citations to this reference in this decision will
be to the English translation. See Ex. 1012 (“Gass”).
2
Jeff Sabatini, Seat Time, 112 AUTOMOTIVE MANUFACTURING &
PRODUCTION 54–55 (Jan. 1, 2000) (Ex. 1013) (“Sabatini”).
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and clearly set forth a definition of the disputed claim term in either the
specification or prosecution history.” Id. “Although an inventor is indeed
free to define the specific terms used to describe his or her invention, this
must be done with reasonable clarity, deliberateness, and precision.” In re
Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Also, we are careful not to
read a particular embodiment appearing in the written description into the
claim if the claim language is broader than the embodiment. See In re Van
Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (“[L]imitations are not to be
read into the claims from the specification.”).
Patent Owner asserts that Petitioner fundamentally misunderstands the
invention of claims 22–28 of the ’831 patent in three respects regarding the
interpretation of the claims. First, the “fastening locations,” to which the
claims refer, are single openings into which a single fastener is inserted by
an operator; second, the recited “predetermined” sequence requires the
sequence to be set prior to the operator beginning work on the workpiece;
and, third, the claims require an operator to be alerted to whether a
predetermined sequence has been followed or whether a parameter has been
applied correctly. PO Resp. 1. We disagree with Patent Owner’s
interpretation of the claim terms at issue.
1. “fastening location” – (Claim 22)
Patent Owner asserts in the Patent Owner Response that “[a]t the heart
of the parties’ dispute is the question of whether a ‘fastening location’ is a
single opening or a group of openings.” PO Resp. 14. Patent Owner
construes “fastening location” as “a single opening into which a single
fastener is inserted by an operator.” Id. (quoting Ex. 2009 ¶¶ 39, 59–60)).
Patent Owner asserts that the claim language of claim 22 mandates this
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conclusion when reciting “manually fastening fasteners into the article of
assembly using a fastening tool at the first and second fastening locations
according to a predetermined fastening sequence.” Id. (quoting Ex. 1001,
12:19–22). Patent Owner also points to the Specification and drawings of
the ’831 patent that it asserts shows only single fasteners inserted into single
openings. PO Resp. 15 (defining fastening locations as 52a–c).
Petitioner asserts that such a definition improperly imports an
example from the Specification into the claims. Petitioner states that “Fig.
1’s embodiment may have ‘openings,’ but nothing in the Specification or
claims confines fastening locations to ‘single openings’ or even to
‘openings’ (e.g., a fastening location could be a bolt, with no opening,
projecting from the article).” Reply 4.
We agree with Petitioner that the broadest reasonable interpretation of
“fastening location” is not limited to a single opening, but may encompass a
position or site where fastening occurs, when assigned its ordinary meaning.
See Ex. 1041, 3. Having to make such a distinction between a single
opening and a fastening site with more than one opening is negated,
however, by the open transitional phrase in claim 22. Because claim 22 uses
the open transitional phrase “comprising,” additional fastening operations
between the first and second fastening operations are not excluded, as long
as the predetermined sequence between the first and second locations is
maintained. See CIAS, Inc. v. Alliance Gaming Corp., 504 F.3d 1356, 1360
(Fed. Cir. 2007) (“In the patent claim context, the term ‘comprising’ is well
understood to mean ‘including but not limited to.’”); Ex. 1001, 12:13–16
(contemplating a “plurality” of fastening locations, but including first and
second fastening locations).
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Patent Owner’s declarant, Dr. L. Cate Brinson, confirms that
intervening fastening operations between the first and second fastening
locations are contemplated in claim 22 of the ’831 patent. Dr. Brinson states
[i]t is important to note that the ’831 patent does not describe a
‘predetermined sequence’ with regard to fastening any one or
all of the fasteners in one set (in another predetermined
sequence). Rather, only the order within each predetermined
sequence is enforced. Therefore, in this example [with two
predetermined sequences, (a1, a2, a3) and (b1, b2, b3)], an
operator could follow the predetermined sequence of fastening
location in either of the following two orders: 1. (a1, a3, a3, b1,
b2, b3) or 2. (a1, b1, a2, b2, a3, b3).
Ex. 2009 ¶ 53.
2. “electronically comparing the sensed position of the fastening tool
with a predetermined sequence of fastening among the first and
second fastening locations” – (Claim 22)
Petitioner identifies the following two limitations of claim 22
involving “a predetermined fastening sequence” or “a predetermined
sequence of fastening”: (1) “manually fastening fasteners into the article of
assembly using a fastening tool at the first and second fastening locations
according to a predetermined fastening sequence;” and (2) “electronically
comparing the sensed position of the fastening tool with a predetermined
sequence of fastening among the first and second fastening locations.” Pet.
14–16 (emphases added). Petitioner asserts that the ’831 patent does not
include an explicit definition for “sequence,” as used in this claim limitation,
and its ordinary meaning is “a following of one thing after another.” Pet.
14–15 (citing Ex. 1010, 3 (American Heritage Dictionary definition)).
In applying this construction of “sequence,” Petitioner proposes that
the claim terms, “a predetermined fastening sequence” and “a predetermined
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sequence of fastening,” should be construed as “a requirement that a fastener
is fastened at one of the first and second fastening locations only after a
fastener is fastened at the other of the first and second fastening locations.”
Id. at 15 (emphasis omitted).
In applying this construction, Petitioner asserts, “manually fastening
fasteners into the article of assembly using a fastening tool at the first and
second fastening locations according to a predetermined fastening sequence”
should be construed as “manually fastening fasteners into the article of
assembly using a fastening tool according to a requirement that a fastener is
fastened at one of the first and second fastening locations only after a
fastener is fastened at the other of the first and second fastening locations.”
Id. (emphasis omitted). Similarly, Petitioner asserts that the step of
“electronically comparing the sensed position of the fastening tool with a
predetermined sequence of fastening among the first and second fastening
locations” should be construed as “electronically comparing the sensed
position of the fastening tool with the requirement that a fastener is fastened
at one of the first and second fastening locations only after a fastener is
fastened at the other of the first and second fastening locations.” Id. at 15–
16 (emphasis omitted).
Patent Owner addresses the construction of the second of these claim
limitations, “electronically comparing the sensed position of the fastening
tool with a predetermined sequence of fastening among the first and second
fastening locations.” PO Resp. 17–23. Patent Owner asserts that
Petitioner’s construction impermissibly reads out the term “predetermined”
from the limitation as the fastening can be initiated at either location. PO
Resp. 17, 22. Patent Owner proposes that the limitation should be construed
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to mean “a controller retrieves a preloaded order of fastening from its
memory that an operator is supposed to follow when using the fastening tool
to insert a single fastener in each fastening location, and prevents the use of
the fastening tool when the preloaded order is not followed.” Id. at 18
(citing Ex. 2009 ¶¶ 61–66). Thus, Patent Owner asserts “there must be a
sequence accessible from memory before an operator begins to use the
fastening tool,” which captures the essence of the claimed invention to
prevent operator mistakes. Id. at 19, 20. Patent Owner concludes that “[t]he
claims do not cover the insertion of fasteners in various groups of openings,
where no attention is paid to the actual sequence the operator follows in
inserting fasteners into each individual opening within the groups.” Id. at
20.
Petitioner responds that a predetermined program, which is written in
advance of use, would either require the fastening at the first location before
the second, or vice versa, which is encompassed by its construction. Reply
5–6. Petitioner also asserts that its construction is consistent with the
Specification of the ’831 patent, “which instructs that both controlling the
sequence of fastening based on target output (i.e., location of the tool) and
providing an output indicating that a predetermined sequence has been
achieved, ‘may simply entail’ ensuring that the driver is active only when in
front of the correct fastening locations.” Id. at 6. In other words, there is no
separate output that prevents the use of the fastening tool when the
preloaded order is not followed.
We are persuaded that Petitioner’s construction is the broadest
reasonable interpretation of this limitation. Although the preamble of claim
22 describes an article of assembly “having a plurality of fastening
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locations,” the limitations of claim 22 are written with reference to “the first
and second fastening locations.” See Ex. 1001, 12:19–26 (describing
manually fastening fasteners using a fastening tool “at the first and second
fastening locations” and “electronically comparing the sensed position of the
fastening tool with a predetermined sequence of fastening among the first
and second fastening locations”). Therefore, it is appropriate to define the
claim limitation set forth above in terms of the first and second fastening
locations, as Petitioner has done.
Petitioner’s interpretation does not read the term “predetermined” out
of the claim, but allows for the possibility that the predetermined program
begins with either the first or second fastening location. Petitioner’s
construction also is consistent with the description in the Specification that
provides that the output indicating whether the predetermined sequence has
been achieved “may simply entail ensuring that the driver 30 is active only
when in front of the correct one of the fastening locations 52a–c as indicated
by the respective targets 50a–c.” Ex. 1001, 7:49–59. Also, as we have
previously concluded, additional fastening operations between the first and
second fastening operations are not excluded, as Patent Owner asserts. See
supra Section I.A.1.
Having considered the parties’ proposed constructions, we conclude
that “electronically comparing the sensed position of the fastening tool with
a predetermined sequence of fastening among the first and second fastening
locations” should be construed under the broadest reasonable interpretation
standard as “electronically comparing the sensed position of the fastening
tool with the requirement that a fastener is fastened at one of the first and
second fastening locations only after a fastener is fastened at the other of the
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first and second fastening locations.” See Pet. 15–16 (emphasis omitted).
By the same token, “manually fastening fasteners into the article of
assembly using a fastening tool at the first and second fastening locations
according to a predetermined fastening sequence” should be construed under
the broadest reasonable interpretation standard as “manually fastening
fasteners into the article of assembly using a fastening tool according to a
requirement that a fastener is fastened at one of the first and second
fastening locations only after a fastener is fastened at the other of the first
and second fastening locations.” Pet. 15.
3. “providing a sequence output indicating whether the
predetermined sequence has been achieved” – (Claim 22);
“providing an electronic torque output indicating whether at least
one predetermined torque value has been reached” – (Claim 26)

Although Petitioner does not provide a definitive construction for
these terms, it does indicate what must be encompassed by the terms when
the broadest reasonable interpretation is applied in light of the Specification.
Petitioner notes that the Specification states that “the ‘output indicating
whether the predetermined sequence has been achieved’ can simply be an
output to the fastening tool that controls whether the fastening tool is
enabled.” Pet. 17 (quoting Ex. 1001, 7:47–57). Therefore, Petitioner
concludes that, although use of the past tense, “has been achieved,” in this
claim limitation may require that, “after the fastening operation has been
completed . . . , the electronic controller provides an output indicating
whether the actual sequence of fastening monitored matches the
predetermined sequence,” the construction of the term “cannot properly
exclude an ‘output’ that causes the fastening tool to be enabled only when in
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front of the correct one of the first and second fastening locations.” Pet. 17
(emphasis omitted).
Patent Owner, however, asserts that its constructions of these
limitations are the broadest reasonable interpretation in light of the
Specification (PO Resp. 24, 30–31), and are consistent with the plain and
ordinary meaning of “indicating whether the predetermined sequence has
been achieved” (id. at 28). Patent Owner asserts that “providing a sequence
output indicating whether the predetermined sequence has been achieved”
should be construed to mean “the controller alerts the operator to the
improper fastening as soon as the operator attempts to fasten a single
fastener in a single opening outside of the preloaded order.” PO Resp. 24
(citing Ex. 2009 ¶¶ 67–71). Patent Owner asserts that “providing an
electronic torque output indicating whether at least one predetermined torque
value has been reached” should be construed as “a device is used with the
fastening tool, under the control of a predetermined sequence program, that
alerts the operator whether a torque parameter, as measured by the device,
was correctly applied at each fastening location.” Id. at 30–31 (citing Ex.
2009 ¶¶ 72–74).
Patent Owner asserts that its interpretation is appropriate because the
term “indicating,” as used in the electronic torque output claim phrase,
encompasses more than simply “measuring,” but “it alerts the operator
whether the operator applied the correct torque value in accordance with the
required predetermined fastening sequence.” Id. at 31. Patent Owner
argues that the term “indicating,” which means “to show, or make known
with a fair degree of certainty,” necessitates “that the operator is alerted to
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an improper fastening . . . .” (id. at 24), or “whether a parameter was
correctly applied” (id. at 31).
Patent Owner asserts that its interpretation is correct because, if the
“sequence output” limitation is interpreted to mean only that the output of
the electronic controller causes the fastening tool to be enabled only when in
front of the correct fastening location, the “sequence output” limitation is
redundant to the “electronically comparing the sensed position of the
fastening tool with a predetermined sequence of fastening among the first
and second fastening locations” limitation. PO Resp. 25–26. Patent Owner
also asserts that requiring an alert to the operator of an attempted improper
fastening for the sequence output limitation is consistent with the disclosure
that “[t]he electronic target output can be used for electronic control or alarm
purposes.” Id. at 26 (citing Ex. 1001, 2:66–67). Dr. Brinson, credits the
claim language “whether the predetermined sequence has been achieved”
with the requirement that “the controller alerts the operator to the improper
fastening as soon as the operator attempts to fasten a single fastener in a
single opening outside of the preloaded order.” See Ex. 2009 ¶¶ 70–71
(cited in PO Resp. 26–27).
Patent Owner relies on the disclosure of the originally-filed claims to
bolster its argument that “indicating” means more than mere “measuring.”
For instance, Patent Owner makes a claim differentiation-type argument,
comparing claim 22’s allegedly broader term “indicating,” the recitation of
the original, but unissued, claim 9 that “the electronic controller [outputs] an
alarm signal when one of the fixtures has exited the assembly station without
proper fastening at the fastening locations.” PO Resp. 32. Patent Owner
concludes that “[c]onstruing the ‘torque monitor’ to require that the
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indication is given when the correct parameter is applied at the correct
location within the predetermined sequence is consistent with the disclosure
of original claim 11, which specifies that a ‘predetermined sequence
program’ requires a sequence of fastening to be followed.” Id. at 32–33.
Petitioner counters that requiring an “alert” to the operator “imports a
feature that is not even described in the ’831 specification” (Reply 7), while
ignoring the use of “indicate” in the ’831 Specification “to refer to an
electronic indication from one electronic component to another,” (id. at 7
(citing Ex. 1001, 8:14–24, 6:5–13, 8:14–24, 8:37–43)), “and specifically
does so in references to the torque monitor” (id. at 9). Patent Owner
allegedly ignores the similar use of this term in original claims 5, 10, and 22.
Id. Petitioner concludes that:
[T]he patent explicitly states that both a required predetermined
sequence . . . and the recited ‘sequence output’ ‘may simply
entail ensuring that the driver 30 is active only when in front of
the correct one of the fastening locations 52a–c as indicated by
the respective targets 50a–c. Ex. 1001, 7:49–59. Thus, the
patent contemplates that the ‘output indicating whether the
predetermined sequence has been achieved’ can simply be a
signal that enables or disables the fastening tool. [Patent
Owner’s] construction excludes the only relevant description of
the exact phrase from the claim and is improper.
Id. at 8; see also id. at 7 (noting Dr. Brinson, Patent Owner’s declarant,
acknowledges that the only description of “sequence output” is at Ex. 1001,
7:49–59 described above, and nowhere else in the Specification is there a
description of an alarm “directly in conjunction with a predetermined
sequence,” citing Ex. 1040, 181:13–183:1 and 183:3–15, respectively).
The distinction between Petitioner’s and Patent Owner’s proposed
claim constructions is the requirement for an alert to the operator of
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out-of-sequence fastening. The broadest reasonable interpretation of the
limitation in light of the Specification, however, is not so limited.
Patent Owner’s argument that the plain and ordinary meaning of
“indicating” requires an alert to the operator is unavailing. For instance,
disabling a fastening tool to prevent an out-of-sequence fastening would
show an operator that a predetermined sequence is not being followed. See
Reply 15 (also describing Gass ¶ 93 and Fig. 10 show visual display of the
process operation with time that shows movement of the process tool); Tr.
19:17–20:16; but see id. at 38:1–14. The Specification of the ’831 also does
not support the notion that “indicating” requires an alert to the operator.
An alarm is mentioned as an option in the Specification, but not in
specific reference to alerting an operator as to whether a predetermined
sequence has been achieved, or whether at least one predetermined torque
value has been reached, as Patent Owner contends. See Ex. 1001, 2:61–62
(“The electronic target output can be used for electronic control or alarm
purposes.”), 5:48–53 (describing electronic output can be used for sounding
an alarm); see also id. at 14:1–15 (describing limitation of claim 18, similar
to original claim 9, in which electronic controller outputs an alarm signal
when a fixture has left an assembly station without proper fastening of
fasteners at the fastening locations); Tr. 20:17–22:11. Dr. Brinson admits
that nowhere in the figures of the ’573 patent is an alert to the operator
illustrated. See Ex. 1040, 128:3–129:13; see also id. at 137:5–12 (stating
generalization that an output can provide an alarm), 139:1–10 (stating that,
from use of “indicate,” a signal or alarm-type information can be generalized
to inform the operator whether fastening parameters are applied correctly),
139:21–140:1, 141:8–17 (stating mere presence of an operator requires an
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alert); 144:1–17 (stating alert to operator required because “the entire
purpose of the patent is to ensure that things – that the bolts are fastened at
the right place in the right sequence to the right torque values, and in order
to accomplish that, the operator needs to know immediately upon doing
something incorrect that it’s incorrect . . .”).
We are persuaded by Petitioner that the broadest reasonable
interpretation for the claim limitation “providing a sequence output
indicating whether the predetermined sequence has been achieved,” when
read in light of the Specification, may include “an ‘output’ that causes the
fastening tool to be enabled only when in front of the correct one of the first
and second fastening locations.” See Pet. 17; Ex. 1001, 7:52–57; Ex. 1002
¶¶ 31–33; Tr. 19:17–20:16.
We also determine that the limitation of claim 26, “providing an
electronic torque output indicating whether at least one predetermined torque
value has been reached,” does not require an alert to the operator as to
whether the torque applied to a fastener is correct. As shown by Petitioner,
such a construction is supported by the Specification in the description of
fastening operations, and does not read an extraneous limitation from the
Specification into the claim, as does Patent Owner’s proposed construction.
See Van Geuns, 988 F.2d at 1184 (“[L]imitations are not to be read into the
claims from the specification.”); see also Bayer AG v. Biovail Corp., 279
F.3d 1340, 1348 (Fed. Cir. 2002) (“While a court may look to the
specification and prosecution history to interpret what a patentee meant by a
word or phrase in a claim, extraneous limitations cannot be read into the
claims from the specification or prosecution history.”).
4. Remaining Claim Terms
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Petitioner proposes a claim construction for “disabling the fastening
tool when not at a fastening location,” as recited in claim 25. Pet. 19. We
do not need to construe this claim limitation to determine whether Petitioner
has shown by a preponderance of the evidence that claim 25 is unpatentable.
Therefore, we do not construe expressly this limitation here, but give this
limitation its broadest reasonable interpretation according to its plain and
ordinary meaning.
B. The Grounds
1. Anticipation of Claims 22 and 24–28
Based on Gass
Petitioner challenges claims 22 and 24–28 as rendered unpatentable
under 35 U.S.C. § 102(b) as anticipated by Gass. Pet. 21–36. In support of
the asserted ground of unpatentability, Petitioner sets forth teachings of
Gass, provides detailed claim charts, and cites to Mr. Lawrence E.
Osentoski, Jr.’s Declarations, explaining how each claim limitation is
disclosed in Gass.
To establish anticipation, each and every element in a claim, arranged
as recited in the claim, must be found in a single prior art reference. Net
MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008);
Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
2001). Although the elements must be arranged or combined in the same
way as in the claim, “the reference need not satisfy an ipsissimis verbis test,”
i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331,
1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
“A reference anticipates a claim if it discloses the claimed invention
such that a skilled artisan could take its teachings in combination with his
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own knowledge of the particular art and be in possession of the invention.”
In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995). This means prior art
references must be “considered together with the knowledge of one of
ordinary skill in the pertinent art.” Paulsen, 30 F.3d at 1480. Moreover, “it
is proper to take into account not only specific teachings of the reference but
also the inferences which one skilled in the art would reasonably be
expected to draw therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968).
Upon review of Petitioner’s contentions and supporting evidence, as well as
the Patent Owner Response and supporting evidence, we determine that
Petitioner has demonstrated by a preponderance of the evidence that Gass
anticipates claims 22 and 24–28.
a. Gass
Gass describes a system and tool for processing a workpiece that has a
plurality of process, e.g., bolting, sites. Ex. 1012 ¶¶ 1, 5, Figs. 8a, 8b. This
system, which ensures that an operator actually undertakes processing at
programmed process sites on the workpiece, has
a recognizing means . . . which identifies the location, i.e. the
position of the process tool in the process station, the location,
i.e. position of the workpiece in the process station and
therefrom it is able to determine the location of the process tool
relative to the process site in each case. Once the location of
the process tool and the location of the workpiece ha[ve] been
recognized then – since the process sites on the workpiece are
always programmed (for example in a memory) – the system is
always able to keep track of whether the process tool has been
guided to the correct process site, also in the correct sequence,
where several process sites are concerned, so that here . . . the
system is able to assign the process tool not, for example, to
each zone, as in the prior art, but to the process site itself. In
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other words, recognizing the process site is implemented
implicitly via locationing.
Id. ¶ 15.
Further defining the system, Gass refers to Figure 6, set forth below.

Figure 6 depicts that workpiece 5 is arranged in predefined process station 1,
where processing at a plurality of process sites 4, 4ˈ takes place with
programmed process parameters by process tools 7, 7ˈ. Ex. 1012 ¶ 64. As
Gass explains,
[a] recognizing means 200 is provided to identify the location
and/or angular orientation of the process tool 7, 7ˈ in the
process station 1, the location of workpiece 7 in the process
station 1 and to recognize therefrom the location of the process
tool 7 relative to each process site 4.
Id.
With reference to Figure 5 (not reproduced), Gass further describes
the system as follows.
Once a programmed location of the workpiece (and/or a
specific process site on the workpiece) relative to the tool has
been recognized, the recognizing means 200 outputs the
identification signal ES to the process parameter programming
means 8 which . . . reads the corresponding design values from
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the memory 9 for outputting to each process tool 7, 7ˈ and to
the comparator means 10. During processing, the comparator
means 10 compares the actual values to the design values and
controls the process tool 7 . . . .

Id. (emphases added). When the actual and design values agree, comparator
means 10 stops process tool 7, “so that in processing[,] the actual parameter
is brought into agreement with the design parameter.” Id. ¶¶ 23, 43. Gass
states that process tool 7 may be a screw driver or a nut runner, and the
programmed process parameters may be bolting parameters, such as torque
or a torsion angle of the screw driver or nut runner. Id. ¶ 90; see also id.
¶ 23 (stating process tool may be a screw driver or nut runner).
b. Analysis
Petitioner provides detailed contentions demonstrating how Gass
discloses each and every element of the challenged claims. Pet. 21–36; Ex.
1002 ¶¶ 36–48. Patent Owner asserts that Gass does not teach
“electronically comparing the sensed position of the fastening tool with a
predetermined sequence of fastening among the first and second fastening
locations,” because Gass teaches that the operator selects an initial process
site on which to work, although the claim limitation requires a preloaded
order of fastening. PO Resp. 38–40. Further, Patent Owner asserts that
Gass also fails to teach a predetermined sequence of “fastening locations,”
because Gass only teaches fastening groups of bolts at a first and second
process site with no regard to the order of the fastening of the bolts or
individual fastening locations within each processing site. Id. at 42–43.
Patent Owner concludes:
In other words, at most, Gass teaches a sequence requiring that
once the operator selects an initial process site, a predetermined
number of processing operations must occur at the operator
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selected site before the operator can process the other
processing site. But within those two process sites, Gass
teaches that the operator is free to choose the order in which
individual fasteners are fastened . . . .

Id. at 42–43 (citation omitted).
Thus, Patent Owner contends that Gass fails to teach the limitation,
“providing a sequence output indicating whether the predetermined
sequence has been achieved” because Gass does not teach alerting the
operator whether a predetermined sequence has been achieved. Id. at 45–48.
Patent Owner posits:
In fact, Petitioner has not offered any evidence that the Gass
system either (1) recognizes the achievement of a sequence or
(2) alerts the operator of the achievement of a sequence.
Instead, Petitioner relies on the enabling means that enables the
process tool at a second programmed process site only after the
recognizing means has already implemented a predefined
number of process operations in the region of a previous
process site to show the “output” element is met.
Id. at 47.
Concerning the additional limitations of dependent claim 26, Patent
Owner asserts that no cited reference teaches “providing an electronic torque
output indicating whether at least one predetermined torque value has been
reached” or “monitoring torque under the control of a predetermined
sequence program” because Gass does not teach alerting the operator
whether a parameter was applied correctly at each fastening location. Id. at
50–53. Further, Patent Owner asserts that the comparator means of Gass
“measures a parameter” or that the torque monitor is under the control of a
predetermined sequence program that is followed between successive single
fasteners being inserted into single fastening locations. Id..
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Petitioner counters that Patent Owner offers no argument that the
claims at issue are patentable under the constructions set forth in the
Decision on Institution, but relies on more narrow constructions that
improperly import limitations from the Specification of the ’831 patent into
the claims. Reply 1. For instance, Patent Owner’s argument that the process
sites in Gass are not fastening locations is based on an unduly narrow
construction that locations are limited to a single opening. Id. at 9. We
agree, as discussed above, that such a construction is too narrow. See supra
Section II.A.1. Also, additional fastening operations between the first and
second fastening operations are not excluded, as Patent Owner asserts. Id.
What is recited by the claims is the sequence of manually fastening fasteners
between a first and second location. See Ex. 1001, 12:13–51 (Claims 22–
28). We are persuaded that Gass teaches this limitation.
For instance, Gass teaches that its system is always able to keep track
of whether the process tool has been guided to the correct process site and in
the correct sequence and can determine the absolute location of the bolting
sites in X, Y, Z coordinates. See Ex. 1012 ¶¶ 15, 73–76, 79; Ex. 1042 ¶ 5.
Gass also teaches that an enabling means can enable process tool 7 at
programmed process site 4”, only when the recognizing means, i.e., the
image processing means, has implemented a predefined number of process
operations in the region of previous process sites 4, 4’ to ensure that no
process site is missed. Ex. 1012 ¶ 87.
We agree with Petitioner that any “bolting site” in process site 4 has a
different, distinct location as compared to any bolting site in another process
site 4’, which bolting sites would meet the first and second fastening
locations limitation, even under Patent Owner’s construction. See Reply 7–
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8. We also are persuaded that the figures in Gass show single openings in
process sites 4, 4’, and 4”, as in the ’831 patent, and would meet Patent
Owner’s interpretation of fastening locations. See Ex. 1012, Figs. 6, 8a, 8b,
and 10.
Petitioner asserts that Gass also teaches “electronically comparing the
sensed position of the fastening tool with a predetermined sequence of
fastening among the first and second fastening locations.” Reply 10–14.
Petitioner relies on the express teaching of Gass requiring a correct sequence
among process sites, and the statement that the tool is only enabled at 4”
after the tool has already implemented a predefined number of process
operations in process sites 4, and 4’. Id. at 12 (citing Ex. 1012 ¶¶ 15, 87; Ex.
1042 ¶¶ 10–18). We agree with Petitioner that “it is evident that Gass’
‘counter’ simply serves as a memory indicating that a previous site 4,4’ has
been completed properly, from which the controller can ensure that a
predetermined sequence (i.e. site 4” only after completion of 4, 4’) is being
followed.” Id.
Patent Owner’s assertion that Gass teaches a user selected initiation
site, which is antithetical to a predetermined sequence, also is misplaced.
We are persuaded by Petitioner that paragraph 86 of Gass, on which Patent
Owner relies to show user selection, does not show user selection of the
initiation site, but describes sequential processing of process sites 4 and 4’.
See Ex. 1012 ¶ 86; Reply 14. We also agree with Petitioner that an
important aspect of the claims to our analysis is a sequence among first and
second locations. Gass’s statement that there is a correct sequence among
process sites, and that processing at a second site 4’’ can only be done after
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completion of at least one prior site, such as 4 or 4’, teaches the required
“predetermined sequence.”
We also agree that Gass teaches “providing a sequence output
indicating whether the predetermined sequence has been achieved”
according to our construction of the claim limitation. Gass states that
An enabling means can enable, for example, the process tool 7
at a programmed process site 4” only when the recognizing
means, i.e., the image processing means, has already
implemented a predefined number of process operations in the
region of a previous process site 4, 4’ to thus ensure that no
process site is missed.

Ex. 1012 ¶ 87.
We agree also with Petitioner that Gass teaches an alert to the
operator, which would meet this limitation even under Patent Owner’s
interpretation. For instance, Gass describes using bar codes or luminous
markings, so that the recognizing means could provide an on-line display of
the process operation with time, such as shown in Figure 10. Id. ¶ 93. Also,
the disabling of the process tool, when the tool is at a wrong fastening
location, would alert the operator to an improper fastening, meeting this
limitation even under Patent Owner’s claim construction. See Tr. 19:17–
20:16; see also Ex. 1002 ¶ 41 (“[T]his limitation should be construed to at
least encompass a method in which the sequence output is an output that
causes the fastening tool to be enabled only when in front of the correct one
of the first and second fastening locations ([Ex. 1001,] col. 7, lines 49–
59).”).
As set forth in Petitioner’s discussion of this ground and in its
associated claim charts, Petitioner explains how Gass discloses the
remaining limitations of claims 22 and 24-28. See Pet. 21–36. For example,
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as to independent claim 22, Gass teaches the following limitations: (1)
holding an article in a predetermined position; (2) manually fastening
fasteners into the article of assembly using a fastening tool at the first and
second fastening locations according to a predetermined fastening sequence;
and (3) sensing the position of the fastening tool. See, e.g., Ex. 1012 ¶ 64
(explaining “workpiece 5 is arranged in predefined process station 1 and is
processed at a plurality of process sites 4, 4’ with programmed process
parameters by at least one process tool 7, 7’”); id. ¶ 15 (explaining disclosed
system is able to determine the location of the process tool relative to the
workpiece and thus the process sites, which are programmed in a memory,
to be able to determine whether the process tool has been guided to the
correct process site, also in the correct sequence); id. ¶ 87 (teaching enabling
means to enable the process tool only when the recognizing means has
implemented predefined number of operations at previous process sites); id.
¶ 93 (describing on-line display of process operation with time).
Finally, Gass teaches an additional limitation in claim 26, challenged
specifically by Patent Owner, “providing an electronic torque output
indicating whether at least one predetermined torque value has been
reached.” As we have found, this limitation does not require an alert to the
operator. See supra Section II.A.3. The limitation is met by comparator 10
that compares actual values to design values stored in memory (Ex. 1012 ¶
64), and “means for sensing actual process parameters and a means for
comparing the sensed actual parameters to the design parameters for
controlling the process tool so that in processing the actual parameter is
brought into agreement with the design parameter” (id. ¶ 24).
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We are persuaded that Petitioner has shown by a preponderance of the
evidence that claims 22 and 24–28 are anticipated by Gass.
2. Obviousness of Claim 23 Based on Gass and
Sabatini
Petitioner challenges claim 23 as rendered obvious by Gass and
Sabatini. A patent claim is obvious 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, i.e., secondary considerations.
3
Graham v. John Deere Co.,
383 U.S. 1, 17–18 (1966).
A person of ordinary skill in the art is defined as “a hypothetical
person who is presumed to know the relevant prior art.” In re GPAC, 57
F.3d 1573, 1579 (Fed. Cir 1995) (citing Custom Accessories, Inc. v.Jeffrey-

3
Patent Owner asserts Petitioner’s commercial success from allegedly using
the methods recited in claims 22–28 of the ’831 patent establishes secondary
considerations against a determination of obviousness. PO Resp. 55–56.
Patent Owner, however, cites to no evidence (or admission by Petitioner)
that Petitioner uses (e.g., infringes) the recited methods in the challenged
claims and offers mere attorney argument concerning secondary
considerations, including the existence of any “nexus” between Petitioner’s
activities and the recited methods. Id. at 56. Such argument, unsupported
by sufficient evidence, is unpersuasive. In re Schulze, 346 F.2d 600, 602
(CCPA 1965).
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Allan Indus, Inc., 807 F.2d 955, 962 (Fed. Cir. 1986). Some of the factors to
consider in determining the level of ordinary skill may include: (1) type of
problems encountered in the art; (2) prior art solutions to those problems; (3)
rapidity with which innovations are made; (4) sophistication of the
technology; and (5) educational level of active workers in the field. Id. Not
every factor need be present, and one or more factors may predominate the
determination. Custom Accessories, Inc. v. Jeffrey-Allan Indus, Inc., 807
F.2d 955, 962–63 (Fed. Cir. 1986).
Mr. Osentoski states that one of skill in the art in the relevant time
period of the invention would have had either (1) a Bachelor degree in
Electrical Engineering, Industrial Engineering, Manufacturing Engineering,
or a related field, and about two years of practical experience in industry; or
(2) ten years of practical experience in industry. Mr. Osentoski further
clarifies that such experience for one of skill in the art is approximate, “and a
higher level of education or skill might make up for less experience, and
vice-versa.” Ex. 1002 ¶ 11. Similarly, Dr. Brinson, Patent Owner’s
declarant, contends that “a person having ordinary skill in the art relevant to
the ’831 patent would likely have had at least a Bachelor of Science degree
in Mechanical Engineering or a related field, and at least two (2) years of
professional or practical experience in the industry, or comparable
combination of education and experience.” Ex. 2009 ¶ 22.
We are persuaded by the parties that, based on the factors set forth
above, a person of ordinary skill in the art would have had a Bachelor of
Science degree in Mechanical Engineering or a related field, and at least two
(2) years of professional or practical experience in the industry, or
comparable combination of education and experience, such as Electrical
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Engineering, Industrial Engineering, Manufacturing Engineering, and at
least two (2) years of professional or practical experience in the industry, or
comparable combination of education and experience, such as ten years of
practical experience in industry.
Claim 23 depends from claim 22 and adds the limitation “wherein the
article of assembly comprises a vehicle seat.” Ex. 1001, 12:29–30.
Petitioner acknowledges that Gass does not teach using its method of
assembly on a vehicle seat. Pet. 36.
Sabatini teaches assembling automobile seats on an assembly line.
Ex. 1013, 54–55. Sabatini also teaches an output indicating to an operator
whether operations have been performed correctly. See id. at 55 (“Operators
use torque-sensing guns with visual indicators. If fasteners are not run to the
correct torque setting, a light above the line comes on and the line shuts
down until an operator corrects the problem.”).
Relying on testimony from its declarant, Petitioner concludes that
“[o]ne of ordinary skill in the art would have recognized that applying the
method of Gass to vehicle seats would have yielded the predictable and
improved result of facilitating the assembly of a vehicle seat and lowering
defects by allowing the sequence of fasteners to be controlled when
assembling the vehicle seat.” Pet. 37 (citing Ex. 1002 ¶ 49).
Patent Owner does not address directly the teachings of Sabatini or its
combination with Gass. Patent Owner does argue, however, that
Mr. Osentoski’s testimony is entitled to little or no weight because it
allegedly is unsupported by underlying facts and data and internally
inconsistent in the definition of “fastening location.” PO Resp. 53–55.
Mr. Osentoski supports his testimony by reference to the prior art and to his
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knowledge of the art. Also, we do not find that Mr. Osentoski’s reference to
“fastening locations” to refer to process sites is inconsistent with his
reference to fastening locations shown in the ’831 patent. See PO Resp. 54.
Therefore, we do not find Mr. Osentoski’s testimony internally inconsistent
or unsupported.
We are persuaded by Petitioner’s articulated reasoning, which is
supported by rational underpinnings. See KSR, 550 U.S. at 416 (holding that
“when a patent claims a structure already known in the prior art that is
altered by the mere substitution of one element for another known in the
field, [here, one workpiece for another,] the combination must do more than
yield a predictable result” to render the claim nonobvious). Therefore, we
conclude that Petitioner has shown by a preponderance of the evidence that
the subject matter of challenged claim 23 would have been obvious over
Gass and Sabatini.
C. Motions to Exclude Evidence
Both parties filed Motions to Exclude Evidence. Papers 32 (“PO
Mot.”) and 34 (“Pet. Mot.”). For the reasons set forth below, both
Petitioner’s and Patent Owner’s Motions to Exclude Evidence are denied.
i. Petitioner’s Motion
Petitioner moves to exclude paragraphs 18–36; 38, line 1; and 39–101
of Exhibit 2009, Dr. Brinson’s Declaration. Pet. Mot. 1. As the movant,
Petitioner has the burden to establish that it is entitled to the requested relief.
37 C.F.R. § 42.20.
Petitioner argues that Dr. Brinson has expertise in the manufacture of
engineering materials and in the mechanics, such as deformation, stress, and
strain, of materials, but she is not an expert in control systems used in
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assembling manufactured items. Pet. Mot. 3. Petitioner concludes that
“[w]ithout having practical experience in the pertinent field—control
systems for avoiding operator mistakes during manufacturing—Dr. Brinson
cannot properly provide testimony as to how the patent or the prior art would
be understood by a person of ordinary skill in the art of such systems at the
time of the invention.” Id. at 8.
Patent Owner asserts that Dr. Brinson has 25 years of training,
education, and experience in fields related to the invention such as
manufacturing, including assembly, mechanics, and stress analysis. Paper
37 (“PO Opp.”) 1; see Ex. 2009, App. A (Curriculum Vitae of Dr. Brinson);
Ex. 1105 (Supplemental Declaration of Dr. Brinson). Patent Owner also
states that Dr. Brinson has 30 years of experience in programming. Id. at 2
(citing Ex. 1105 ¶ 4). Patent Owner concludes that Dr. Brinson is qualified
to testify in the relevant field of art that involves “a system for assembling
an article of assembly.” PO Opp. 3–6 (citing claims 22–28).
Petitioner’s declarant, Mr. Osentoski, opined that the level of skill in
the art “would have had any one of the following: (i) a Bachelor degree in
Electrical Engineering, Industrial Engineering, Manufacturing Engineering,
or a related field, and about 2 years of practical experience in industry; (ii)
10 years of practical experience in industry.” Ex. 1002 ¶ 11. Mr. Osentoski
qualified this assessment, stating “[t]hese descriptions are approximate, and
a higher level of education or skill might make up for less experience, and
vice-versa.” Id. Dr. Brinson agreed with Mr. Osentoski’s assessment of one
of skill in the art stating such a person “would likely have had at least a
Bachelor of Science degree in Mechanical Engineering or a related field, and
at least two (2) years of professional or practical experience in the industry,
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or comparable combination of education and experience.” Ex. 2009 ¶ 22.
Petitioner’s requirement that a declarant have experience in the art of
“the design of control systems for avoiding operator mistakes during
manufacturing,” is inappropriately narrow in light of the level of skill in the
art proposed by the declarants. We agree with Patent Owner that
Dr. Brinson has the requisite “’knowledge, skill, experience, training, and
education’ of a ‘specialized’ nature that is likely to ‘assist the trier of fact to
understand the evidence or to determine’” patentability of claims involving
assembly systems. See SEB S.A. v. Montgomery Ward & Co., 594 F.3d
1360, 1373 (Fed. Cir. 2010) (applying Fed. R. Evid. 702); see also Ex. 1001,
12:13–51 (claims 22–28); Ex. 2009 ¶¶ 5–16, App. A (describing Dr.
Brinson’s extensive background mechanical engineering); Ex. 1105.
Therefore, Petitioner’s Motion to Exclude Evidence is denied.
ii. Patent Owner’s Motion
Patent Owner moves to exclude Petitioner’s second Declaration of
Mr. Osentoski submitted with Petitioner’s Reply and a dictionary definition
also submitted with Petitioner’s Reply. Patent Owner asserts that Mr.
Osentoski’s second Declaration improperly raises new issues, and that the
dictionary definition is improper new evidence. PO Mot. 1. As the movant
here, Patent Owner has the burden of proof to establish that it is entitled to
the requested relief. 37 C.F.R. § 42.20.
Patent Owner asserts that Petitioner’s offer of a definition for
“predetermined” to mean “beforehand,” and an offer of a dictionary
definition of the term, “location,” is relied upon “for the sole purpose of
supplementing its initial claim construction positions, not to rebut the
arguments and evidence raised in [Patent Owner’s] Response.” PO Mot. 4.
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Petitioner asserts that it addresses the phrase “predetermined sequence”
separately from the clause containing the phrase, for which it offered a
construction in its Petition, “in direct reply to [Patent Owner’s] contention
that [Petitioner’s] construction does not give effect to ‘predetermined.’”
Paper 38, 2–3. Petitioner also states that it addresses the term “fastening
location” because Patent Owner “disputes that this term should be accorded
its broadest reasonable interpretation, as understood by one of ordinary skill
in the art and consistent with the disclosure, and instead has offered an
unduly narrow construction.” Id. at 6.
Patent Owner is correct that “[a] reply may only respond to arguments
raised in the corresponding opposition or patent owner response.” 37 C.F.R.
§ 42.23(b). We are persuaded by Petitioner, however, that its proffered
evidence and arguments regarding “predetermined sequence” and “location”
properly responded to arguments made by Patent Owner in its Patent Owner
Response regarding these terms. See PO Resp. 13–23. Patent Owner’s
Motion to Exclude Evidence is denied.

III. CONCLUSION
Petitioner has shown by a preponderance of the evidence that claims
22 and 24–28 of the ’831 patent are unpatentable under 35 U.S.C. § 102(b)
over Gass, and claim 23 of the ’831 patent is unpatentable under 35 U.S.C.
§ 103(a) over Gass and Sabatini.
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 22–28 are unpatentable;
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FURTHER ORDERED that Petitioner’s Motion to Exclude Evidence
is denied;
FURTHER ORDERED that Patent Owner’s Motion to Exclude
Evidence is denied; and
FURTHER ORDERED that, because this is a final 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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PETITIONER:
George C. Beck
Chase J. Brill
FOLEY & LARDNER LLP
gbeck@foley.com
cbrill@foley.com

PATENT OWNER:
Thomas G. Pasternak
Thomas A. Rammer
STEPTOE & JOHNSON LLP
tpastern@steptoe.com
sjwildcat@steptoe.com

Jeffrey W. Salmon
JEFFREY W. SALMON LAW, LLC
jeff@jeffreysalmonlawwllc.com