Parrot S.A. and Parrot, Incv.Drone Technologies, Inc.

Patent Trial and Appeal Board

Oct 20, 2015

12051683 (P.T.A.B. Oct. 20, 2015)

Trials@uspto.gov Paper 29
571-272-7822 Date Entered: October 20, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

PARROT S.A. and PARROT, INC.,
Petitioner,

v.

DRONE TECHNOLOGIES, INC.,
Patent Owner.
____________

Case IPR2014-00732
Patent 8,106,748 B2
____________

Before HOWARD B. BLANKENSHIP, MATTHEW R. CLEMENTS, and
CHRISTOPHER M. KAISER, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

I. BACKGROUND
Parrot S.A. and Parrot, Inc. (collectively, “Petitioner”) filed a petition
requesting an inter partes review of claims 1–12 of U.S. Patent No.
8,106,748 B2 (Ex. 1001, “the ’748 patent”) under 35 U.S.C. §§ 311–319.
Paper 1 (“Petition” or “Pet.”). The Board instituted an inter partes review of
IPR2014-00732
Patent 8,106,748 B2

2

claims 1–12 on asserted grounds of unpatentability for obviousness. Paper 8
(“Dec. on Inst.”).
Subsequent to institution, Patent Owner Drone Technologies, Inc.
filed a patent owner response (Paper 15, “PO Resp.”). Petitioner filed a
reply to the Patent Owner Response (Paper 18, “Pet. Reply”).
Oral hearing was held on July 1, 2015.1
The Board has 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.
For the reasons that follow, we determine that Petitioner has not shown by a
preponderance of the evidence that claims 1–12 of the ’748 patent are
unpatentable.

A. Related Proceedings
According to Petitioner, the ’748 patent is involved in the following
lawsuit: Drone Technologies, Inc. v. Parrot S.A., No. 2:05-mc-02025 (W.D.
Pa.). Pet. 4.

B. The ’748 Patent
The ’748 patent relates to a remote control system in which a remote
control apparatus transmits a target motion signal to a remote-controlled
motion apparatus. Ex. 1001, Abstract.
Figure 5 of the ’748 patent is reproduced below.

1 The record includes a transcript of the oral hearing. Paper 26 (“Tr.”).
IPR2014-00732
Patent 8,106,748 B2

3

Figure 5 is a system diagram of a remote control system. Ex. 1001,
col. 3, ll. 7–9. Remote controller 5 comprises acceleration sensing module
51, communication module 53, and manual input module 54. In the first
operation mode, acceleration sensing module 51 detects the acceleration of
remote controller 5 and outputs acceleration sensing signal SG.
Communication module 53 connects to acceleration sensing module 51 and
transmits first target motion signal STAR1 according to the acceleration
sensing signal. First target motion signal STAR1 controls the motion of
remote-controlled device 4 to align with the acceleration sensing signal. Id.
at col. 5, ll. 54–67.
In the second operation mode, manual input module 54, which
includes direction control unit 55, outputs direction control signal SCNT.
Communication module 53 connects to manual input module 54 and
transmits second target motion signal STAR2 according to the direction control
IPR2014-00732
Patent 8,106,748 B2

4

signal to control the motion of remote-controlled device 4. Id. at col. 6,
ll. 8–15.
In the third operation mode, communication module 53 transmits third
target motion signal STAR3 according to the acceleration sensing signal and
the direction control signal to control the motion of remote-controlled device
4. Id. at col. 6, ll. 19–25.
Remote controller 5 includes configuration switch module 52. The
configuration switch module selects the mode of operation by selecting
acceleration sensing module 51 and/or manual input module 54 as the input
for communication module 53. Id. at col. 6, ll. 32–36.

C. Illustrative Claim
Claim 1, the sole independent claim, is illustrative and reproduced
below.
1. A remote control system, comprising:

a remote controller, comprising:

a first acceleration sensing module, which detects
the remote controller’s motion and outputs a motion detecting
signal;

a manual input module, which has at least one
direction control unit to generate a direction control signal;

a first communication module, which connects to
the first acceleration sensing module and the manual input
module, the first communication module receives the motion
detecting signal and the direction control signal, and transmits a
target motion signal; and

IPR2014-00732
Patent 8,106,748 B2

5

a configuration switch module to select between
the first acceleration sensing module, the manual input module
and the combination of the first acceleration sensing module
and the manual input module as the input of the first
communication module; and

a remote-controlled device, which is controlled by the
remote controller, comprising:

a second communication module, which receives
the target motion signal from the remote controller;

a second acceleration sensing module, which
detects the remote-controlled device’s acceleration and
outputs an acceleration sensing signal;

a processing module, which has a first input
connected to the second acceleration sensing module and
receives the acceleration sensing signal, and a second input
connected to the second communication module and receives
the target motion signal, and processes the acceleration sensing
signal and the target motion signal to output a driving control
signal; and

a driving module, which connects to the processing
module and receives the driving control signal, and adjusts the
remote-controlled device’s motion according to the driving
control signal.
IPR2014-00732
Patent 8,106,748 B2

6

D. Prior Art
Spirov et al. (“Spirov”) US 2006/0144994 A1 July 6, 2006
(Ex. 1005)

Barr US 7,219,861 B1 May 22, 2007
(Ex. 1007)

Fouche US 6,751,529 B1 June 15, 2004
(Ex. 1008)

Bathiche et al. (“Bathiche”) US 7,145,551 B1 Dec. 5, 2006
(Ex. 1009)

Shkolnikov US 2004/0263479 A1 Dec. 30, 2004
(Ex. 1010)

E. Asserted Grounds of Unpatentability
The Board instituted inter partes review on the following asserted
grounds of unpatentability against claims 1–12 under 35 U.S.C. § 103(a)
(Dec. on Inst. 14):

References

Claims

Spirov, Bathiche, and Shkolnikov

1–3, 5, and 10–12

Spirov, Bathiche, Shkolnikov, and
Fouche

4, 8, and 9

Spirov, Bathiche, Shkolnikov, and
Barr

6 and 7

IPR2014-00732
Patent 8,106,748 B2

7

II. ANALYSIS
Section 103(a) Instituted Grounds
A. Prior Art — Spirov, Bathiche, and Shkolnikov
Spirov describes a remotely controlled hovercraft for which the
remote controller may provide a thumb-activated throttle and yaw control 20
and one or more finger-operated trigger controls 22 and 24. Ex. 1005 ¶ 82,
Fig. 3. The remote controller also may provide one-handed operation with
pitch and roll control by mimicking the pitch and roll of controlled
hovercraft 10 by means of XY axis transducers in the controller. Id. ¶ 87,
Fig. 3.
Bathiche teaches a computer input device that may be operated in a
first mode whereby X and Y axis tilt sensors generate orientation
information. Ex. 1009, col. 8, ll. 37–44. In a second mode, input is from
switches rather than the X and Y tilt sensors. Id. at col. 8, ll. 48–55. A
mode switch selects between the different modes. Id.
Shkolnikov (Ex. 1010) teaches an active keyboard system for
handheld electronic devices, such as remote controllers (id. ¶¶ 27, 87, 94),
that may include first selector 216 and second selector 218 (id. at Fig. 2) to
select between manual input and motion (via movement sensors) as an input.
Id. ¶¶ 24–25. Shkolnikov also teaches that the motion input may be
provided as an alternative or “in addition to” the manual input. Id. ¶ 25.

B. Spirov, Bathiche, and Shkolnikov — Claims 1–3, 5, and 10–12
Petitioner asserts that the subject matter of claims 1–3, 5, and 10–12
would have been obvious over the combination of Spirov, Bathiche, and
Shkolnikov. Pet. 18–42, 49–51.
IPR2014-00732
Patent 8,106,748 B2

8

Patent Owner responds that neither Bathiche nor Shkolnikov is
analogous art. PO Resp. 11–13. 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, and (3) the level of skill in the art. Graham v. John
Deere Co., 383 U.S. 1, 17 (1966). Whether a reference is analogous art is
part of the analysis of the scope and content of the prior art. Heidelberger
Druckmaschinen AG v. Hantscho Commercial Prods., Inc., 21 F.3d 1068,
1071 (Fed. Cir. 1994). Two criteria have evolved for determining whether
prior art is analogous: (1) whether the art is from the same field of
endeavor, regardless of the problem addressed, and (2) if the reference is not
within the field of the inventor’s endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the inventor is
involved. In re Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992).
With respect to Shkolnikov, Patent Owner submits that the reference
is directed to an active keyboard system for hand-held electronic devices.
PO Resp. 12 (citing Ex. 1010 ¶ 20).2 “Shkolnikov discloses entering
alphanumeric text and data into the system using only one hand. In no way
is this technology analogous to the ‘748 Patent.” Id. (internal citation
omitted). Patent Owner asserts that Shkolnikov is not in the ’748 patent’s
field of endeavor, nor reasonably pertinent to the particular problem with

2 Our analysis is directed to Shkolnikov, but we consider Bathiche to be, at
the least, reasonably pertinent to the particular problem with which the
inventor was involved and, thus, analogous art. Counsel for Patent Owner
conceded as much at the oral hearing. See Tr. 59:22–60:2 (“I must confess
that in terms of Bathiche being non-analogous art, Professor Sturges and I
disagree on that point. He does not say that Bathiche is non-analogous art,
and I understand that’s evidence and what I’m saying is argument.”).
IPR2014-00732
Patent 8,106,748 B2

9

which the ’748 patent is concerned, which is “easier control of remotely
controlled ‘flying things.’” Id. at 12–13. Patent Owner points out that,
when questioned on cross-examination about the problem that the ’748
patent addressed, Petitioner’s expert Dr. D’Andrea responded that “[t]he
problem being addressed was to be able to control these vehicles in [an] as-
claimed easier way.” Id. at 11 (citing Ex. 2012, 96:1–13).
Patent Owner also refers to the Declaration of Dr. Robert H. Sturges
(Ex. 2013). PO Resp. 13. Dr. Sturges submits that Shkolnikov’s system is
an active keyboard system for handheld data entry, used to enter
alphanumeric text. Ex. 2013 ¶ 32 (citing Ex. 1010, Title and ¶¶ 3, 20). Dr.
Sturges acknowledges that Shkolnikov states that the system can be used
with electronic handheld devices including remote controls. Id. However,
with respect to Shkolnikov’s disclosure of using the system with a remote
control, Dr. Sturges states that:
I interpret these passages to mean that Shkolnikov’s system can
be used as a remote control for controlling such things as a
television or a computer where alphanumeric input may be
useful — just as I can use my cell phone to control my cable
box and search for programs to view.

Ex. 2013 ¶ 32.
In its Reply to the Patent Owner Response, Petitioner responds that
“[i]n its Institution Decision, the Board found that claims 1-3, 5, and 10-12
are obvious over Smith in view of Spirov, Bathiche, and Shkolnikov, and
that claims 4 and 6-9 are obvious in view of additional references.” Pet.
Reply 6. Petitioner is incorrect. In our Decision on Institution we did not
find that any claims were obvious over the references or otherwise
unpatentable. In view of the record at that time, we determined that the
IPR2014-00732
Patent 8,106,748 B2

10

Petition demonstrated a reasonable likelihood of Petitioner prevailing (at
trial) on certain asserted grounds of obviousness. Dec. on Inst. 13–14.
Petitioner further submits that Patent Owner’s argument in the Patent
Owner Response with respect to non-analogous art is, “in substance,
identical to” the argument it raised in its Preliminary Response. Pet.
Reply 6. Petitioner is, again, incorrect. In our Decision on Institution we
addressed two arguments regarding non-analogous art that Patent Owner
raised in its Preliminary Response. First, we disagreed that the Petition’s
discussion of the level of ordinary skill in the art served to “define” the field
of endeavor. Dec. on Inst. 10. Second, we were not persuaded by the
argument that the particular problem with which the ’748 patent is
concerned is “control of remotely controlled vehicles,” noting that only
dependent claim 5 limits the generic remote-controlled “device” to a remote-
controlled vehicle such as a model airplane, a model helicopter, or a model
car. Id. at 10–11.
Petitioner notes (Pet. Reply 6), correctly, that at the institution of trial
we determined that “[b]ecause Patent Owner’s arguments [in its Preliminary
Response] regarding non-analogous art are not supported by the facts in this
record, we are not persuaded that either of Bathiche and Shkolnikov
represents non-analogous art.” Dec. on Inst. 11. Notably, in that Decision
instituting trial, we did not find that any of the applied references were
analogous art with respect to the ’748 patent. Nor did we find that any of the
applied references were non-analogous art with respect to the ’748 patent.
Rather, we merely were not swayed by unsupported attorney arguments in
the Preliminary Response as to why the references should be considered
non-analogous art. Patent Owner had not yet had a full opportunity to
IPR2014-00732
Patent 8,106,748 B2

11

submit evidence supportive of its argument. Petitioner had not had the
opportunity to provide arguments and/or evidence as to why the applied
references might, to the contrary, represent analogous art, and we had not
had the opportunity to hear Petitioner’s views on the issue.
Petitioner’s only reply to the arguments and evidence in the Patent
Owner Response in support of why Shkolnikov is non-analogous art, other
than the unfounded reliance on the Decision on Institution, is the observation
that the fact Dr. D’Andrea had not heard of Bathiche or Shkolnikov prior to
this case is irrelevant to the analogous-art inquiry. Pet. Reply 6; PO Resp.
12. We agree with Petitioner to the extent that the fact Dr. D’Andrea was
not aware of the Bathiche and the Shkolnikov references prior to this case
has little relevance to the question of whether the references are analogous
art. “The issue of obviousness is determined entirely with reference to a
hypothetical ‘person having ordinary skill in the art.’ It is only that
hypothetical person who is presumed to be aware of all the pertinent prior
art.” Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 454 (Fed. Cir.
1985).
When the analogous-art issue was raised by Patent Owner in its Patent
Owner Response, it was incumbent upon Petitioner to demonstrate that
Shkolnikov is analogous art. The grounds for unpatentability in this
proceeding are asserted by Petitioner, not grounds entered by the Board as
permitted, for example, in reexamination proceedings. In an inter partes
review, the burden of persuasion is on the petitioner to prove unpatentability
by a preponderance of the evidence (35 U.S.C. § 316(e)), and that burden
never shifts to the patentee. Dynamic Drinkware, LLC v Nat’l Graphics,
Inc., No. 2015-1214, 2015 WL 5166366, at *2 (Fed. Cir. Sept. 4, 2015).
IPR2014-00732
Patent 8,106,748 B2

12

Petitioner has not met its burden in showing that Shkolnikov is analogous
art. Moreover, Petitioner cannot rely on the Board to make new findings
regarding analogous art in a final written decision.
We find no fault with Patent Owner’s position that Shkolnikov is non-
analogous art. The ’748 patent states that the field of invention “relates to a
remote-controlled motion apparatus which includes a remote-controlled
device and a remote controller.” Ex. 1001, col. 1, ll. 16–19. The related art
is said to include “conventional” remote control systems that use a remote
controller and a remote-controlled device, with the user operating the remote
controller to control the motion of the remote-controlled device. Id. at col.
1, ll. 20–24. The patent provides an example of a remote-controlled model
airplane, with a control signal sent by a remote controller for controlling the
airplane’s flight by changing the angle of a rear fin. Id. at col. 1, ll. 24–58.
Further, the ’748 patent’s claims are directed to a remote control
system that includes a remote controller that “detects the remote controller’s
motion and outputs a motion detecting signal,” and a remote-controlled
device that ultimately has its motion adjusted according to a driving control
signal derived in part from the remote controller’s motion detecting signal.
Ex. 1001, claim 1 (sole independent claim).
Consistent with Patent Owner’s arguments, Shkolnikov appears to
relate to “active” keyboard systems for handheld electronic or data entry
devices. Ex. 1010 ¶ 3. The related art is said to include electronic devices
having small or limited keyboards for data entry or for navigating the
Internet. Id. ¶¶ 5–10. The inventive “active” keyboard system is said to
dynamically present available choices on a display to facilitate entry of
alphanumeric text and data using one hand. Id. ¶ 20. The system may
IPR2014-00732
Patent 8,106,748 B2

13

include movement sensors to interpret motion of the system as an input. Id.
¶ 25. The motion input is used, however, for data-entry applications such as
aiding in the navigation of Internet web pages (id. ¶ 112) or in moving a
selection pointer in a graphical user interface (id. ¶¶ 115–116, Figs. 11–13),
as opposed to controlling the motion of a remotely controlled device. We
find little in Shkolnikov that would be reasonably pertinent to an artisan
seeking to improve upon control of the motion of a remotely controlled
device.
Shkolnikov is critical to the asserted ground of unpatentability
because that reference provides the teaching of three modes of operation,
including “the combination of the first acceleration sensing module and the
manual input module,” as recited in illustrative claim 1. Pet. 24, 31 (claim
chart); Ex. 1010 ¶¶ 24–25. Upon review of the Petition and supporting
evidence, as well as the Patent Owner Response and supporting evidence,
we conclude that Petitioner has not demonstrated, by a preponderance of the
evidence, that claim 1 and dependent claims 2–3, 5, and 10–12 are
unpatentable for obviousness over Spirov, Bathiche, and Shkolnikov.

C. Spirov, Bathiche, Shkolnikov, and Fouche — Claims 4, 8, and 9
Petitioner contends that the subject matter of claims 4, 8, and 9 would
have been obvious over the above-noted combination of Spirov, Bathiche,
and Shkolnikov, with the further teachings of Fouche. Pet. 42–43, 46–48.
Fouche teaches a remotely controlled helicopter in which the pitch attitude
error is the difference between a commanded pitch attitude and a measured
(actual) pitch attitude. Ex. 1008, col. 7, ll. 37–56, Figs. 2, 3.
IPR2014-00732
Patent 8,106,748 B2

14

Because the addition of Fouche does not remedy the deficiency in the
combination of Spirov, Bathiche, and Shkolnikov applied against base claim
1, we conclude that Petitioner has not demonstrated, by a preponderance of
the evidence, that dependent claims 4, 8, and 9 are unpatentable for
obviousness over Spirov, Bathiche, Shkolnikov, and Fouche.

D. Spirov, Bathiche, Shkolnikov, and Barr — Claims 6 and 7
Petitioner contends that the subject matter of claims 6 and 7 would
have been obvious over the combination of Spirov, Bathiche, and
Shkolnikov, with the further teachings of Barr. Pet. 43–45. Claims 6 and 7
are specific to adjusting the pitch of an airplane wing. Barr teaches a
remotely-controlled airplane in which the pitch of the airplane wing is
adjusted. Ex. 1007, col. 4, ll. 18–41; Ex. 1011 ¶¶ 95–100.
Because the addition of Barr does not remedy the deficiency in the
combination of Spirov, Bathiche, and Shkolnikov applied against base claim
1, we conclude that Petitioner has not demonstrated, by a preponderance of
the evidence, that dependent claims 6 and 7 are unpatentable for obviousness
over Spirov, Bathiche, Shkolnikov, and Barr.

E. Patent Owner’s Motion to Exclude Evidence
Patent Owner moves to exclude the Declaration of Dr. D’Andrea (Ex.
1011). Paper 19. Because consideration of Dr. D’Andrea’s Declaration
does not change the outcome in favor of Patent Owner in this final written
decision, the motion to exclude is dismissed as moot.
IPR2014-00732
Patent 8,106,748 B2

15

III. CONCLUSION
Petitioner has not demonstrated by a preponderance of the evidence
that claims 1–12 are unpatentable for obviousness.

IV. ORDER
In consideration of the foregoing, it is
ORDERED that, based on a preponderance of the evidence,
claims 1–12 of the ’748 patent have not been shown to be unpatentable; and
FURTHER ORDERED that Patent Owner’s motion to exclude
evidence 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.

For Petitioner:
James E. Hopenfeld
Tammy J. Terry
OSHA LIANG LLP
hopenfeld@oshaliang.com
terry@oshaliang.com

For Patent Owner:

Gene Tabachnick
James Dilmore
BECK & THOMAS, P.C.
gtabachnick@beckthomas.com
jdilmore@beckthomas.com