Webasto Roof Systems, Inc.v.UUSI, LLC

Patent Trial and Appeal Board

Oct 13, 2015

12360942 (P.T.A.B. Oct. 13, 2015)

Trials@uspto.gov Paper 33
571-272-7822 Entered: 13 Oct. 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

WEBASTO ROOF SYSTEMS, INC.,
Petitioner,

v.

UUSI, LLC,
Patent Owner.
____________

Case IPR2014-00648
Patent 8,217,612 B2
____________

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

PERRY, Administrative Patent Judge.

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

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I. INTRODUCTION
A. Procedural Posture
Petitioner, Webasto Roof Systems, Inc. (“Webasto”), filed a Corrected
Petition (Paper 4, “Pet.”) on April 30, 2014, requesting inter partes review
of claims 1, 2, and 5–8 of U.S. Patent No. 8,217,612 B2 (“the ’612 patent”).
Patent Owner UUSI, LLC (“UUSI”) filed a Preliminary Response (Paper 9,
“Prelim. Resp.”) to the Petition. On October 17, 2014, we instituted inter
partes review of claims 1–2 and 5–8 on the following grounds of
unpatentability alleged in the Petition:
A. claims 6–8 are unpatentable under 35 U.S.C. § 102 as anticipated
by Bernard;1
B. claims 1, 2, and 5–8 are unpatentable under 35 U.S.C. § 103 over
Lamm,2 Itoh,3 and Bernard; and
C. claims 1, 2, and 6–8 are unpatentable under 35 U.S.C. § 103 over
Duhame4 and Kinzl.5
Paper 14 (“Dec.”), 17–18.
Following institution, UUSI filed a Response (Paper 20, “PO Resp.”).
Webasto filed a Reply (Paper 24, “Reply”). Webasto moved (Paper 26,
“Mot.”) to exclude evidence. UUSI opposed (Paper 28, “Opp.”) that
motion. We heard oral argument on June 29, 2015. Paper 31 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6(c). This Final Written

1 U.K. Published Patent Application GB 2 026 723 A, published Feb. 6,
1980 (Ex. 1005, “Bernard”).
2 German Published Patent Application DE 40 00 730 A1, published Aug. 1,
1991 (Translation Ex. 1008, “Lamm”).
3 U.S. Patent No. 4,870,333, issued Sept. 26, 1989 (Exhibit 1006, “Itoh”).
4 U.S. Patent No. 5,218,282, issued June 8, 1993 (Ex. 1009, “Duhame”).
5 U.S. Patent No. 4,468,596, issued August 28, 1984 (Ex. 1007, “Kinzl”).
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Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For reasons stated below, Webasto has shown, by a preponderance of
the evidence, that claims 1, 2, and 5–8 of the ’612 patent are unpatentable.
B. Related Matters
The parties state that the ’612 patent is asserted in the following
district court proceedings:
1. UUSI, LLC v. Robert Bosch LLC, No. 2:13-cv-10444 (E.D. Mich.)
(“UUSI v. BNA”), filed February 4, 2013. See Pet. 1 and Paper 6, 2.
2. UUSI, LLC v. Webasto Roof Sys., Inc., No. 2:13-cv-11704 (E.D.
Mich.) (“UUSI v. Webasto”), filed April 15, 2013. See Pet. 1, Paper 6, 2.
The ’612 patent belongs to a family of patents involved in multiple
inter partes reviews including IPR2014-00416, IPR2014-00417, IPR2014-
00648 (this proceeding), IPR2014-00649, and IPR2014-00650. The petition
in IPR2014-00416 (“the ’416 proceeding”), like the present Petition,
challenges the ’612 Patent. We determined in a Final Decision that claims 1,
2, and 5–8 of the ’612 patent have been shown to be unpatentable. See
Brose North America, Inc. and Brose Fahrzeugteile GMBH v. UUSI, LLC,
Case IPR2014-00416 (PTAB July 27, 2015) (Paper 40).
II. THE ’612 PATENT
A. Described Invention
The ’612 patent describes protecting against pinching objects in the
travel path of a vehicle power-driven movable panel, such as a window or
sun roof. The ’612 patent further describes analyzing sensor signals to
determine panel movement directly or indirectly and determine whether a
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panel collides with an object in its travel path. See Ex. 1001 at [57] and
1:56–2:20.
Figure 1 of the ’612 patent is shown below:

Figure 1 is a schematic diagram of an exemplary actuator safety feedback
control system 1. Ex. 1001, 2:24–25, 2:63–65. Controller 2 monitors and
controls movement of a motor driven panel. See id. at 2:65–3:5. Forward
and reverse motor drive elements 7a and 7b drive the motor (not shown in
Figure 1) in forward and reverse directions, respectively. See id. at 3:36–41.
Controller 2 can sense obstacles in the panel’s path in various ways based on
sensor signals from, e.g., a paired infrared emitter and detector disposed
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along the panel’s path (see id. at 3:60–4:64), a motor current monitor (see id.
at 4:9–11, 7:20–8:3, 8:33–10:5), and other monitors (see id. at 11:14–20).
B. Illustrative Claim
Of the challenged claims, claims 1 and 6 are independent. Claim 1 is
illustrative and is reproduced below.
1. Apparatus for controlling activation of a motor coupled to a
motor vehicle window or panel for moving said window or
panel along a travel path and de-activating the motor if an
obstacle is encountered by the window or panel, said apparatus
comprising:
a) a sensor for sensing movement of the window or panel and
providing a sensor output signal related to a speed of movement
of the window or panel;
b) a switch for controllably actuating the motor by providing an
energization signal;
c) one or more switches for use by the controller to determine
window or panel position; and
d) a controller having an interface coupled to the sensor and the
switch for controllably energizing the motor; said controller
sensing a collision with an obstruction when power is applied to
the controller by:
i) monitoring movement of the window or panel by
monitoring a signal from the sensor related to the movement of
the window or panel;
ii) adjusting an obstacle detection threshold in real time
based on immediate past measurements of the signal sensed by
the sensor to adapt to varying conditions encountered during
operation of the window or panel;
iii) identifying a collision of the window or panel with an
obstacle due to a change in the signal from the sensor that is
related to a change in movement of the window or panel by
comparing a value based on a most recent signal from the
sensor with the obstacle detection threshold; and
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iv) outputting a control signal to said switch to deactivate
said motor in response to a sensing of a collision between an
obstacle and said window or panel.
III. ANALYSIS
A. Claim Construction
The ’612 patent has expired. We therefore construe its claims in a
manner similar to that of a district court, as articulated in Phillips v. AWH
Corp., 415 F.3d 1303, 1316, 1327 (Fed. Cir. 2005). Claim terms are given
their ordinary and customary meaning, as would be understood by one of
ordinary skill in the art in the context of the entire patent disclosure.
Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365-66 (Fed.
Cir. 2012). We construe the terms below in accordance with that standard.
Webasto proposes a construction for one claim term. Pet. 7–8. UUSI
proposes construction of additional terms in its response. PO Resp. 18−22.
1. “identifying a collision of the window or panel with an obstacle”
“deactivate said motor in response to a sensing of a collision”
(claim 1)
UUSI argues that the claimed controller’s “identifying” and “sensing”
features must each be given weight in that the “sensing” is a different action
from the “identifying.” PO Resp. 19. In support, UUSI points to use of the
indefinite article “a” before “sensing.” UUSI further argues that these two
separate actions require two separate algorithms operating concurrently (but
logically distinct), the first for “identifying” and second for “sensing.” Id. at
19−20.
We do not subscribe to UUSI’s view. Claim 1 itself explains how
“identifying” and “sensing” are carried out. A threshold is established and
updated as time passes. Comparisons are made between a current sensor
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signal and the threshold (whatever the threshold may be at time of
comparison). The claim says nothing about carrying out these activities by
algorithms being executed by the controller.
Reading claim 1 as a whole, we do not adopt a construction requiring
separate and distinct algorithms. Claim 1, written in outline format, includes
a limitation “d” that requires a controller to sense a collision. Limitation “d”
ends with the word “by” followed by a colon. What follows is a list of
limitations that are enumerated “i,” “ii,” “iii” and “iv,” which are further
indented than limitations “a,” “b,” “c,” and “d.” Limitation “d” tells us that
the limitations following the colon explain how the sensing is accomplished.
The “sensing a collision” (step “d”) is accomplished by i) monitoring
movement of the window, ii) adjusting a threshold, and iii) identifying a
collision by comparing a signal value to the threshold. The final claim
limitation (“iv”) tells us that a control signal deactivates the motor in
response to “a sensing of a collision.” Even though “a sensing of a
collision” is introduced by the indefinite article “a” (rather than “the”), we
do not view this as requiring a separate and distinct “algorithm.” Rather, we
read limitations “i” through “iv” as explaining how limitation “d” is carried
out.
As for UUSI’s “concurrent” argument, the claim does not explicitly or
implicitly set forth performing the “identifying” and “sensing” limitations
concurrently. Nor does the claim say anything about how the various
described activities are to be implemented in code.
2. “a control signal . . . to deactivate said motor”
(claims 1 and 6)
Claims 1 and 6 require “a control signal . . . to deactivate said
motor.” Webasto construes the term “deactivate” to mean “turn off” thereby
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excluding reversing a motor without turning it off. Pet. 7. UUSI argues that
no construction is needed for the term “deactivate” (PO Resp. 21−22), but
that if the Board construes “deactivate,” it should be construed according to
Webster’s Dictionary, which specifies “not active, unmoving, immobile,
inoperative” in any mechanical or electrical manner. Id. at 22 (citing Exs.
2001 and 2020).
We decline to adopt UUSI’s dictionary definition because the
Specification of the ’612 patent disparages immediately reversing (without
first deactivating) the motor in response to detecting an obstacle (Ex. 1001,
3:42–55), which may result in “motor plugging,” described as “unnecessary”
and “undesirable” as causing “undesired motor heating,” is “detrimental to
the life and reliability” and because it “can also cause undesirable transients,
trip breakers, and blow fuses in a power supply system.” Pet. 8. According
to Webasto, at least one of UUSI’s earlier patents includes claim language
that is broader with respect to motor control. Id. (citing Ex. 1019, Claims).
Thus, as Webasto argues, the choice of the word “deactivate” in the
challenged claims was a conscious decision that should be given effect. Id.
We construe the claim term “deactivate” to embrace any of turning
off, removing power from, and stopping the motor. Our construction
excludes immediate reversing of the motor without first turning off,
removing power from, or stopping the motor.
3. “deactivate said motor in response to a sensing said
window or panel has stopped moving” (claim 6)
Claim 6 recites a controller programmed to “deactivate said motor in
response to a sensing said window or panel has stopped moving prior to
reaching a position limit.” Ex. 1005, 28:27–30. UUSI urges that plain
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meaning requires us to construe this limitation as requiring an “abrupt”
stopping of the panel. PO Resp. 44−46.
We find nothing in the Specification of the ’612 patent that suggests
anything other than “has stopped” means that there is no motion. We read
“has stopped” as meaning that the panel has ceased motion (zero velocity).
The phrase within which “has stopped” appears says nothing about the rate
of deceleration of the panel from a velocity greater than zero to a velocity of
zero. We decline to read “abrupt” into the claim because the claim does not
explicitly state or even imply “abrupt.”
B. Challenges relying on Bernard (Ex. 1005)
Webasto presents a detailed read of Bernard on claims 6–8. Pet. 8–
16. These portions of the Petition make liberal reference to Declaration
testimony of Hamid A. Toliyat, Ph.D. (Ex. 1003).
1. Overview of Bernard (Ex. 1005)
Bernard describes control circuits for electric window winders for
operating moving windows in vehicles. Ex. 1005, 16,6 ll. 4–6. Bernard’s
Figure 4 is reproduced below.

6 Page numbers refer to the page number of the exhibit, not the page number
of an exhibit’s contained document.
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Figure 4 is a block diagram of a circuit for controlling an electric window
winder. Id. at 18, ll. 75–77. Bernard provides protection against injury by
sensing an increase in motor current resulting from a window meeting an
obstruction. It deenergizes window winder motor 10 if microprocessor 150
determines that a threshold value of motor current is exceeded. Id. at 16,
ll. 111–118; 20, ll. 110–118; 22, ll. 97–110.
2. Applying Bernard (Ex. 1005)
Webasto argues that Bernard detects stoppage of a window and
deactivates its window winder (10) in response. Tr. 23. Webasto explains
that Bernard detects when the window winder is “stalled” and reacts by de-
energizing it. Id. at 24.
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UUSI argues that Bernard does not sense “abrupt stoppage” of the
window and offers Dr. Ehsani’s explanation. PO Resp. 46 (citing Ex. 2001,
157–159). For Bernard’s Figure 5 embodiment, Dr. Ehsani’s explanation is
that it takes Bernard 0.1 seconds of delay to react to window stoppage if the
window does not move after the driver motor is energized. Furthermore, if
the window does not move due to an obstruction when the motor is
energized, the Bernard system takes at least 0.4 seconds to detect that the
window does not move and to reverse the motor. Id. (citing Ex. 2001, 157).
Similar explanation is made with regard to Bernard’s Figure 2 embodiment.
Id. at 46–47. For these reasons, UUSI argues that Bernard does not meet the
required abrupt stoppage limitation of claim 6.
As stated supra in Part III.A.3, claim 6 does not require an “abrupt”
stoppage. Thus, UUSI’s argument does not apply. Furthermore, UUSI
appears to conflate abrupt stoppage of the window panel with how rapidly
stoppage is detected. Arguments that Bernard requires an additional 0.1
second or 0.4 second miss the point. Bernard reacts (albeit with a small
delay) to stoppage of the window as claim 6 requires.
C. Challenges relying on Lamm (Ex. 1008), Itoh (Ex. 1006), and Bernard
Webasto contends that claims 1, 2 and 5–8 are rendered obvious by
Lamm, Itoh, and Bernard. Pet. 31–46. These portions of the Petition make
liberal reference to Declaration testimony of Hamid A. Toliyat, Ph.D. (Ex.
1003).
1. Overview of Lamm (Ex. 1008)
Lamm describes operating power-actuated components that pose a
clamping hazard to objects or a person’s body parts. Ex. 1008 at [57].
Lamm describes itself as being particularly suitable for operating sliding
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sunroofs, window lift motors, door closing mechanisms, and seatbelt
positioning devices in vehicles. Id. at 2.7 The system and method
continuously determine first and/or higher order derivatives with respect to
different travel paths to increase reliability of detecting an obstacle. Id. at 2–
3. The first and/or higher order derivatives are compared to multiple pre-
specified thresholds and once a single threshold value is exceeded, the
device is switched off and/or the direction of the movement is reversed. Id.
Lamm’s Figure 1 is reproduced below.

Figure 1 is a block diagram of a drive of a power-actuated component. Id. at
3, col. 3. Electric motor 10 is controlled by signal processing device 11 via
motor driver circuit 12. Id. Sensor 13 detects the rotary speed of motor 10
and provides this speed to signal-processing device 11. Id. Device 11 is
given commands for controlling motor 10 via operating device 14. Id. at 3,
col. 4. Lamm explains a relationship between rotary speed of motor 10 as
measured by sensor 13 and “rotary torque” M with reference to Lamm’s
Figure 2, reproduced below. Id.

7 Page numbers refer to the page number of the exhibit.
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Lamm’s Figure 2 graphically represents a functional correlation
between the rotary speed n and the rotary torque M of a direct current motor.
Id. Lamm explains that, for various motor voltages, relationships between
motor speed n and torque M are represented by curves 16 in Lamm Figure 2.
Id. Thus, the force on an object being pinched is related to motor speed and
voltage measured at motor 10 by a voltage meter 15 (Lamm Figure 1). Id.
At least one derivative with respect to the path traveled by the moving panel
is determined by signal processing device 11. Id. The derivative is
compared to a pre-specified threshold, which, if exceeded, indicates a pinch
condition that causes motor 10 to be switched off or reversed. Id.
2. Overview of Itoh (Ex. 1006)
Itoh’s Figure 7 is reproduced below:
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Figure 7 is a schematic diagram of a system for opening and closing window
26. Ex. 1006, 7:50–52. The Itoh system indirectly measures the speed of
window 26 by detecting (30) pulses of motor current ripple from motor
driving circuit 28. A rate of motor speed change is compared to a threshold
α (Fig. 5 decision block 108). If the threshold is exceeded, it is determined
that the window has collided with an object. The system may then reverse
the direction of travel of window 26 to move it in an opening (downward in
Fig. 7) direction. See id. at 8:49–52, 11:16–20.
Itoh’s controller 32, including CPU 34 and counter 36, controls motor
20 (id. at 7:53–8:9 and Fig. 7) via motor driving circuit 28, which switches
the motor, controlling the direction of rotation of the motor and controlling
whether the motor is on or off. Id. at 7:57–59, 7:67–8:11, 11:16–19, 1:48–
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50, Fig. 5 (pulse counter clearing and resetting). Motor switching (and the
resulting counting of the window position) responds to both the disclosed
algorithm and user control switches shown in Figure 7 as “Switch Panel” 38.
CPU 34 is programmed with known positions (memory map 46
shown in Fig. 7) along the window travel path, including (i) “window
entirely closed” (designated as the 0 count), (ii) window “full-opened” (e.g.,
a count value of 2000, Pmax), and (iii) window nearly closed (e.g., a count
value of 100, P). Id. at 8:14−21, 9:24–34, 10:48–60, 11:35−47, Figs. 10(A),
10(B), 11(A), and 11(B). CPU 34 detects a position of the window by
counting (counter 36) pulses of motor ripple current (sensor 30) and
comparing the count to memory map 46. Id. at 8:10–16, 5:6–10, 8:33–48,
9:16–34 (position), 9:37–62 (speed).
CPU 34 detects an obstacle caught between the window frame and the
window using the algorithm shown in Figure 5. Id. at 8:49−52. It does so
by storing a number of “n” immediately prior speed values in a FIFO-type
memory (Id. at 10:12–17, Fig. 9), calculating the average (Tm) of those
speed values (Id. at 10:36–44), calculating the rate-of-change of motor speed
(Tp/Tm, where Tp is the instant motor speed value), and comparing that
rate-of-change to a threshold (α). Id. at 10:61−66. If the rate-of-change of
the speed (Tp/Tm) exceeds the α threshold, the CPU issues a signal to the
driving circuit 28 to make the motor reverse and the window to
descend/open. Id. at 11:16–20.
In response to an obstacle, CPU 34 reverses the motor. Id. at 11:16–
20. Elsewhere (i.e., not Embodiment 3) Itoh discloses deactivating the
motor. See, e.g., Abstract. Itoh teaches deactivating the motor if the motor
speed exceeds a threshold and the window is “near to the closed position.”
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Id. at 3:52–60. Itoh also teaches that “it is possible to stop the opening or
closing action of the window at a halfway, or possible to convert the action
of the window in the reverse direction.” Id. at Abstract.
3. Applying Lamm, Itoh, and Bernard
This challenge relies upon Itoh’s description of storing multiple
window speed or position values. Pet. 33. It also relies upon Bernard’s
description of switches for determining window position, and end of window
travel detection. Id. at 35.
UUSI argues that neither Itoh nor Bernard can be combined with
Lamm, noting that “a prior art reference must be considered in its entirety,
i.e., as a whole, including portions that would lead away from the claimed
invention. W.L Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540 (Fed.
Cir. 1983).” PO Resp. 26−27 (emphasis omitted). UUSI argues that Itoh
uses speed for obstacle detection, but Lamm uses one or more derivatives of
speed with respect to the path traveled. Lamm compares the derivatives to
respective thresholds that are calculated using clamping tests. Id. Dr.
Ehsani opines, Lamm’s derivative-based obstacle detection scheme is
radically different than Itoh’s speed-based obstacle detection scheme. Id. at
27 (citing Ex. 2001 at 99).
Itoh neither calculates derivatives of speed nor calculates obstacle
detection thresholds using clamping tests as Lamm does. Id. Although
Lamm performs speed-based motor shutoff or motor reversal when the
motor speed drops below a minimum speed, it is only a fail-safe mechanism
when the derivatives cannot be calculated and an obstacle cannot be detected
below the minimum motor speed. Id. Dr. Ehsani opines that this minimum-
speed-based motor shutoff or reversal procedure is a self-diagnostic process
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to abort the derivative-based obstacle detection and is therefore not an
obstacle detection scheme in Lamm. Id. Itoh does not use speed-based
motor shutoff or motor reversal when the motor speed drops below a
minimum speed as Lamm does. Id. While Lamm alleges that the reliability
of obstacle detection can be increased by using higher-order derivatives, Itoh
alleges that obstacles can be reliably detected quite differently – by merely
using the thresholds α and β. UUSI argues further that Itoh, in practice,
would be prone to false positives which would be contrary to the high
reliability sought by Lamm. Id. at 28.
We do not find UUSI’s argument persuasive. Obviousness does not
require direct substitution. Both Lamm and Itoh are reasonably pertinent to
the particular problem with which the inventor is involved — preventing
pinching. They both would have commended themselves to an inventor’s
attention in considering the problem addressed by claims 1, 2 and 5–8 of the
’612 patent. See In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011).
UUSI argues that Lamm fails to teach two concurrent obstacle
detection algorithms. PO Resp. 22−25. As noted supra in Part III.A.1, the
claims do not require the use of two concurrent obstacle detection
algorithms. Such an implication from the claim wording is a bridge too far.
As stated in our claim construction section, supra in Part III.A.1, claim 1
requires that a threshold be established and updated as time passes. It also
requires comparison between a current sensor signal and the immediate
threshold, whatever it may be.
UUSI also argues that Itoh and Bernard each fail to teach two
concurrently executing algorithms. Id. at 25−26. Again, UUSI’s argument
is not founded on a proper claim construction. See supra Part III.A.1.
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UUSI argues that neither Lamm (id. at 33−36), nor Itoh (id. at 36−42),
nor Bernard (id. at 42−44) teach a 40 ms time interval (claim 5) within
which past measurements for an obstacle detection threshold are measured.
According to Webasto, the 40 ms limitation is an obvious matter of
design choice. Webasto argues (See Tr. 31−34) that a numerical range is not
patentable unless it produces a new and unexpected benefit (citing In re
Huang, 100 F.3d 135 (Fed. Cir. 1996) and In re Aller, 220 F2d 454 (CCPA
1955)). Webasto notes that the only place “40 milliseconds” appears (aside
from claim 5) is in a priority application. In that priority application, a
buffer is disclosed that has a 20 value depth. Tr. 32. No particular
advantage is pointed out. There is no discussion that 40 ms is critical. Id.
Dr. Ehsani reasons that because 40 ms appears in claim 5, it must have been
important. Ex. 1022, 86:8−22.8
Webasto extrapolated from Dr. Ehsani’s expert Declaration that when
the Itoh motor is running at a certain speed, such that TP is 1.2 milliseconds,
the 33 TP measurements would occur over the course of 39.6 milliseconds,
which is less than the 40 ms required by claim 5. Tr. 33.
The original Examiner recognized that 40 ms was an obvious design
choice. The preponderance of the evidence in this case suggests to us that
the Examiner was correct.
UUSI argues the patentability of claim 6 over Lamm, Itoh, and
Bernard by arguing that these references do not meet the “abrupt stoppage”
requirement of claim 6. Pet. 44−54. As discussed in the claim construction

8 Page numbers refer to pages as numbered in the deposition transcript
incorporated into Exhibit 1022.
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section supra in Part III.A.3, we do not read an “abruptness” requirement
into claim 6.
As to each of these three references, UUSI’s arguments focus on how
quickly the reference arrangement can react to stoppage of the window.
However, the challenged claims do not include limitations related to
swiftness of reaction to window stoppage.
We are persuaded that Webasto has established by a preponderance of
the evidence that that Lamm, Itoh, and Bernard render obvious claims 1, 2
and 5–8 of the ’612 patent.
D. Challenges relying on Duhame (Ex. 1009) and Kinzl (Ex. 1007)
Webasto presents a detailed read of Duhame and Kinzl on claims 1, 2
and 5–8 at Petition pages 46–60. These portions of the Petition make liberal
reference to Declaration testimony of Hamid A. Toliyat, Ph.D. (Ex. 1003).
1. Overview of Duhame (Ex. 1009)
Duhame describes an automatic door operator including an
obstruction detector for stopping the motor when a threshold related to the
torque of the motor is exceeded. Ex. 1009 at [57]. Duhame Figure 1 is
reproduced below.
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Duhame Figure 1
Figure 1 shows a block diagram of an automatic door opener. Id. at 4:66–
67. Based on measurements of speed from its Hall-effect sensors 95,
Duhame’s controller (processor circuit 100 including CPU 110 shown in
Duhame Figure 1) detects “[a]n obstruction . . . whenever th[e] rate of
change of speed indicates a rate of increase in torque greater than a
predetermined amount.” Id. at 3:38–41, 24:5–29. Memory 125 stores open
and close travel limits of a door being controlled. Id. at 6:59–62. A closing
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torque limits input circuit 60 (detailed in Duhame, Figure 4) and travel limits
circuit 163, among other inputs, establish limits of protection afforded to an
object pinched by the moving door. Id. at 7:63–8:3, 11:52–57. Travel
circuit 163 includes counter 510 (Duhame Fig. 6) that keeps track of door
position with respect to a fully opened position. Id. at 12:17–23.
2. Overview of Kinzl (Ex. 1007)
Figures 1 and 2 of Kinzl are reproduced below.

Figure 1 is a schematic diagram of a system for operating an electric window
of an automotive vehicle, and Figure 2 shows three zones of window
position established for operation of the system. See Ex. 1007, 1:7–13,
2:37–41. Microcomputer 24 uses sensor 26 to monitor the opening and
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closing of electric window 10, via drive motor 12. See id. at 2:44–57.
Microcomputer 24 determines from sensor 26 whether window 10 has been
blocked and, if a block is detected, responds in different manners dependent
upon whether window 10 is in zone 1, 2, or 3. See id. at 3:6–26.
3. Applying Duhame and Kinzl
UUSI also argues that Duhame and Kinzl cannot be combined,
referring only to reasons set forth with respect to claim 1. Id. at 57. The
referenced argument merely refers us to Ex. 2001 ¶¶ 120–130 without
further explanation. Given the similar problem to which Duhame and Kinzl
are directed, we find UUSI’s argument against combination to be
insufficient.
a. Independent claim 1
UUSI argues that each of Duhame and Kinzl fails to teach two
concurrent obstacle detection algorithms. PO Resp. 30−31. As stated supra
in Part III.A.1, we do not construe the claims as requiring two concurrent
obstacle detection algorithms. This argument is therefore unpersuasive.
b. Independent claim 6
UUSI further argues that Duhame does not disclose detecting an
“abrupt” stoppage of the window. Id. at 55. As discussed supra in Part
III.A.3, we do not read into the claims a limitation that the stoppage be
“abrupt.” The claims require only that the window be stopped and that in
response to the window having stopped, its driving motor is deactivated.
UUSI argues that neither Duhame nor Kinzl detects an “abrupt”
stoppage. Id. at 55–57. As discussed supra in Part III A. 3, we decline to
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read “abrupt” into the claim because the claims do not explicitly or
implicitly recite “abrupt.” We are therefore not persuaded by this argument.
c. Dependent claims 2, 7, and 8
UUSI does not separately argue claims 2, 7, and 8.
d. Dependent claim 5
Webasto argues that Duhame meets the claim 5 limitation: “wherein
the immediate past measurements of said signal are sensed within a forty
millisecond interval prior to the most recent signal from the sensor.” Pet.
56. Webasto reasons that Duhame meets this claim limitation because a “50
Hz or 60 Hz motor will complete 50 or 60 revolutions per second, or every
20 to 16 milliseconds, respectively.” Id.
UUSI preliminarily argued (but did not repeat its argument in its
Response) that claim 5 should be construed to require that immediate past
measurements used to adjust the obstacle detection threshold of claim 1 must
all be taken within the preceding 40 milliseconds (40 ms). Prelim. Resp.
7−9. We look to claim 1 for context in construing claim 5. Claim 1 requires
“adjusting an obstacle detection threshold in real time based on immediate
past measurements of the signal sensed by the sensor to adapt to varying
conditions encountered during operation of the window or panel.” A
plurality of measurements is used to establish a threshold. As time passes,
additional measurements are taken and the threshold is adjusted. Thus, the
threshold is always determined by some measurements that are older than
others (this is the nature of a moving average). The plain meaning of claim
5 is that the most recent measurement used to adjust the threshold must be
fresh (taken within 40 ms of a current measurement being compared). Using
UUSI’s construction would suggest that the threshold be determined anew
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and determined only from measurements taken within 40 ms of the current
measurement. UUSI’s construction of “all” measurements taken within 40
ms is only correct in a limited scenario when the movement of the window
or object is first activated and stopping the movement within 40 ms. We
find that to be contrary to the overall concept of establishing a threshold and
adjusting it measurement by measurement because when the window or
panel is moving for more than 40 ms, then UUSI’s construction would not
make sense. That is, UUSI’s interpretation effectively means that the
threshold is re-calculated anew, rather than being adjusted.
UUSI has not pointed us to any Specification text that discusses the
claimed 40 ms time period referred to in claim 5. The SUMMARY portion
of the Specification states that in one exemplary embodiment, stored
empirical parameter characterizations and algorithms adaptively modify
obstacle detection thresholds during an ongoing actuation for improved
obstacle detection sensitivity and thresholds resulting in quicker obstacle
detection with lower initial force, lower final pinch force and reduced
occurrences of false obstacle detection. Ex. 1001, 2:9−16. In the
DETAILED DESCRIPTION portion of the Specification, we find only
general discussions relating to adapting the threshold and the abilities of
DSPs. For example, “adaptive DSP algorithms modify the obstacle
detection thresholds in real time response to actual monitored motor
operation parameters.” Id. at 12:64−66.
UUSI correctly notes that claim 5 does not recite that one or more of
the immediate past measurements are sensed within a forty millisecond
interval. PO Resp. 32. However, claim 5 also does not recite that all of the
measurements must be taken with 40 milliseconds.
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UUSI disagrees and argues that the 60 Hz or 50 Hz power merely
indicates that the frequency of the AC line voltage that powers the motor is
50 or 60 cycles per second, and does not necessarily indicate or imply that
the speed of the motor is 50 or 60 revolutions per second as the Webasto
argues. Prelim. Resp. 8.
According to UUSI, Webasto implies that if one revolution of the
motor occurs in 20 milliseconds, then the time interval over which the
immediate past measurements of the signal are sensed would be less than 20
milliseconds. Prelim. Resp. 8. However, the length of time for each
revolution of the motor does not determine the time interval over which the
immediate past measurements of the signal are sensed. Even if Duhame
implicitly taught that one revolution of the motor occurs in 20 milliseconds,
Duhame would still be silent on the length of the time interval over which
immediate past measurements of the signal would be sensed. Id. Therefore,
according to UUSI, Duhame does not disclose that “the immediate past
measurements of said signal are sensed within a forty millisecond interval
prior to the most recent signal from the sensor” as recited in claim 5. We
agree. Webasto has not carried its burden with respect to claim 5.
UUSI correctly notes that Webasto does not rely on Kinzl as
disclosing that “the immediate past measurements of said signal are sensed
within a forty millisecond interval prior to the most recent signal from the
sensor” as recited in claim 5. Prelim. Resp. 9.
In light of the analysis presented in the Petition with respect to each of
the challenged claims under this Ground, we are persuaded that Webasto has
established by a preponderance of the evidence that Duhame and Kinzl
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render obvious claims 1–2 and 6–8 of the ’612 patent, but we are not
persuaded that Webasto has made a sufficient showing as to claim 5.
E. Additional Arguments
1. Expert not Familiar with the State of the Art
UUSI contends Dr. Hamid A. Toliyat did not have personal
experience with the state of the art in 1992 at the time of filing and is not an
expert in automotive vehicle window or sunroof movement mechanisms or
their control systems. PO Resp. 5–18.
We are persuaded, however, that Dr. Toliyat is an expert in the field
of electrical and computer engineering since before 1992. Ex. 1004. Dr.
Toliyat’s specific expertise is in industrial drives, electrical machines, power
electronics, power systems and control, which are all in the field of
automotive engineering. Ex. 1003 ¶ 7. Accordingly, we conclude that Dr.
Toliyat is an expert familiar with the State of the Art of automotive
engineering in 1992.
2. Enablement of References
UUSI contends Lamm, Itoh, and Kinzl are non-enabling references
that would require undue experimentation to make or use because of an
inordinate amount of false positives and false negatives that would occur
with Itoh’s and Kinzl’s respective algorithms. PO Resp. 2–4, 58–59.
Moreover, UUSI contends Lamm, Itoh, and Kinzl do not overcome many
real-world vehicle problems such as the varying loads caused by wind
buffeting or booming caused by the pressure difference between the inside
and the outside of the passenger compartment of a vehicle moving at high
speeds. Id. at 4.
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Webasto argues that there is no genuine dispute that a person of
ordinary skill in the art would have been able to implement them. Reply 1.
Other than alleged poor performance, UUSI has not identified any
persuasive evidence that the references cited by Webasto should not be
relied upon for their respective disclosures.
Regarding the asserted grounds under § 103, we have determined that
Lamm, Itoh, and Kinzl provide sufficient disclosure to allow a person having
ordinary skill in the art to make and use the inventions recited in each of the
challenged claims. In re Antor Media Corp., 689 F.3d 1282, 1290 (Fed. Cir.
2012) (“Enablement of prior art requires that the reference teach a skilled
artisan to make or carry out what it discloses in relation to the claimed
invention. Even if a reference discloses an inoperative device, it is prior art
for all that it teaches.” (quotation omitted) (citations omitted)); Symbol
Techs., Inc. v. Opticon, Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991) (“[A]
non-enabling reference may qualify as prior art for the purpose of
determining obviousness under § 103.”).
F. UUSI’s Motion to Exclude
Webasto moved to exclude portions9 of the opinion testimony of Mark
Ehsani, Ph.D because Dr. Ehsani applied a presumption of validity, used
erroneous methodology to interpret the challenged claims, acted as an
advocate rather than as an expert, and used inadmissible exhibits. Mot. 4–
15. Webasto also moves to exclude Exhibits 2009, 2010, 2012, 2013, 2017,

9 Webasto seeks to exclude paragraphs 6, 41, 46, 54, 66–68, 77–81, 88–89,
91–98, 100–04, 110–11, 114–16, 118–27, 129–31, 137–39, 145, 148, 150–
56, 159, 162–63, 165, and 169–83 of the Declaration of Dr. Mark Ehsani in
Support of UUSI’s Response (Ex. 2001).
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2022, and 2036 because they are not referenced in UUSI’s arguments. Id. at
1.
Although we briefly cite Dr. Ehsani’s Declaration (Ex. 2001) in this
Decision, we merely cite paragraphs 90, 91, and 110–120 as support for
explaining what UUSI is arguing. We do not find any of the paragraphs that
we cited or that Webasto seeks to exclude to be persuasive for their
substance. Moreover, we do not rely on any of the exhibits sought to be
excluded. Accordingly, we dismiss the Motion as moot.
G. Conclusion
For the reasons set forth above, we are persuaded that Webasto has
shown by a preponderance of the evidence that:
(1) claims 6–8 are unpatentable under 35 U.S.C. § 102 as
anticipated by Bernard;
(2) claims 1, 2, and 5–8 are unpatentable under 35 U.S.C. § 103
over Lamm, Itoh, and Bernard; and
(3) claims 1, 2, and 6–8 are unpatentable under 35 U.S.C. § 103
over Duhame and Kinzl.
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that Webasto’s Motion to Exclude is dismissed as moot;
FURTHER ORDERED that claims 1, 2, and 5–8 of the ’612 patent
have been shown, by a preponderance of the evidence, to be unpatentable;
and
FURTHER ORDERED that because this is a final written decision of
the Board under 35 U.S.C. § 318(a), parties to the proceeding seeking
judicial review of the decision must comply with the notice and service
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requirements of 37 C.F.R. § 90.2.

For PETITIONER:
Charles Sanders
Timothy Rousseau
Phong Dinh
GOODWIN PROCTER LLP
csanders@goodwinprocter.com
trousseau@goodwinprocter.com
pdinh@goodwinprocter.com

For PATENT OWNER:
Monte L. Falcoff
Hemant M. Keskar
Michael R. Nye
HARNESS, DICKEY & PIERCE, P.L.C.
mlfalcoff@hdp.com
hkeskar@hdp.com
mnye@hdp.com