Webasto Roof Systems, Inc.v.UUSI, LLC

Patent Trial and Appeal Board

Oct 13, 2015

10100892 (P.T.A.B. Oct. 13, 2015)

Trials@uspto.gov Paper No. 34
571-272-7822 Entered: October 13, 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 IPR2014-00649
Patent 7,548,037 B2
_______________

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

JUNG, 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
Webasto Roof Systems, Inc. (“Petitioner”) filed a corrected Petition
(Paper 4, “Pet.”) requesting an inter partes review of claims 1, 7, and 13 of
U.S. Patent No. 7,548,037 B2 (Ex. 1003, “the ’037 patent”) pursuant to 35
U.S.C. §§ 311–319. UUSI, LLC (“Patent Owner”) filed a Preliminary
Response. Paper 10. Based on these submissions, we instituted inter partes
review of claims 1, 7, and 13. Paper 13 (“Dec. on Inst.”).
After institution, Patent Owner filed a Response (Paper 18, “PO
Resp.”), and Petitioner filed a Reply (Paper 22, “Reply”). Petitioner
proffered a Declaration of Francesco Borrelli, Ph.D. (Ex. 1001, “Borelli
Declaration” or “Borrelli Decl.”) with its Petition and a Reply Declaration of
Francesco Borrelli, Ph.D. (Ex. 1023, “Reply Decl.”) with its Reply. Patent
Owner proffered the Declaration of Mark Ehsani, Ph.D. (Ex. 2003, “Ehsani
Declaration” or “Ehsani Decl.”) with its Response. Also, deposition
transcripts were filed for Dr. Ehsani (Exs. 1024–1031) and for Dr. Borrelli
(Exs. 2005–2008, 2018). Patent Owner moves to exclude the Reply
Declaration of Dr. Borrelli (Paper 23), and Petitioner moves to exclude
portions of the Ehsani Declaration and Exhibits 2011, 2012, 2019, 2021, and
2014 (Paper 25).
A combined oral hearing in this proceeding and Cases IPR2014-
00648 and IPR2014-00650 was held on June 29, 2015; a transcript of the
hearing is included in the record (Paper 32).
We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons that follow, we determine that Petitioner has shown by a
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preponderance of the evidence that claims 1, 7, and 13 of the ’037 patent are
unpatentable. We also dismiss the motions to exclude as moot.
A. Asserted Grounds of Unpatentability
We instituted the instant inter partes review on the following grounds
of unpatentability.
Reference[s] Basis Challenged Claim[s]
Bernard1 § 102(b) 7 and 13
Bernard and Chikaraishi2 § 103(a) 1
Dec. on Inst. 15.
B. Related Proceedings
The parties state that the ’037 patent is asserted in the following
district court proceedings:
1. UUSI, LLC v. Robert Bosch LLC, No. 2:13-cv-10444 (E.D. Mich.),
filed February 4, 2013. See Pet. 1; Paper 8, 2.
2. UUSI, LLC v. Webasto Roof Sys., Inc., No. 2:13-cv-11704 (E.D.
Mich.), filed April 15, 2013. See id.
The ’037 patent belongs to a family of patents involved in multiple
inter partes reviews including IPR2014-00416, IPR2014-00417, IPR2014-
00648, and IPR2014-00650.

1 U.K. Published Patent Application GB 2 026 723 A, published Feb. 6,
1980 (Ex. 1009, “Bernard”).
2 U.S. Patent No. 3,888,047, issued June 10, 1975 (Exhibit 1015,
“Chikaraishi”).
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II. THE ’037 PATENT (Ex. 1003)
The ’037 patent describes a “method for sensing both hard and soft
obstructions for a movable panel such as a sunroof.” Ex. 1003, Abstract.
Figure 1 of ’037 patent is reproduced below.

Figure 1 is a block diagram of an actuator safety feedback control
system 1. Ex. 1003, 2:24–25, 2:63–65. Controller 2 monitors and controls
movement of a motor driven panel. Id. at 2:66–3:5. Controller 2 can
determine a stalled motor condition representing an obstacle. Id. at 7:59–67.
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Obstruction detection is “based upon weighted factors of the history of the
running measurements and running calculations.” Id. at 18:10–13. Obstacle
detection can be based upon measurements of motor current, motor speed,
motor current sensing, current sensing, and speed sensing. Id. at 4:12–14,
18:32–34, 18:37–38. Motor operation parameter history can be represented
by ranges of data comprising motor current commutation pulses. Id. at
19:7–10. Weighted averages are calculated from shorter and longer ranges
of data. Id. at 19:65–67. The weighted averages can reveal trends in recent
motor operating parameter history. Id. at 21:40–42. If a most recent,
calculated running motor current IR0 is greater than a sum that includes
calculated currents as measured over different ranges, each multiplied by a
factor K and other terms, also multiplied by factors, then an obstacle has
been detected. See id. at 18:56–57, 19:9–10, 22:32–35.
Challenged claims 1, 7, and 13 are independent, and each recites a
method. Claim 1 is representative:
1. A method for detecting the presence of an object
caught between a closure and its respective frame of a power
system comprising:
providing a closure for opening and closing via a
regulator driven by an electric drive motor controlled by a
control circuit;
calculating a predicted variable parameter value utilizing
a system equation, said system equation including a number of
coefficients which are multiplied by a number of different
parameter values measured over a period of time, such that said
predicted variable parameter value for any one of a series of
different times is based upon a plurality of measured parameter
values measured over a period of time;
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sensing a variable parameter value of the power system
during closing of the closure;
comparing said sensed variable parameter value to a
previously predicted variable parameter value based upon a
presumption of how said predicted variable parameter value
would behave without the presence of an object; and
detecting an object caught between the closure and its
respective frame based on the result of the compared parameter
values.
III. ANALYSIS
A. Claim Construction
Patent Owner states that the ’037 patent has expired. PO Resp. 14.
We, thus, 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) (en banc). In re Rambus Inc., 694 F.3d 42, 46 (Fed. Cir. 2012)
(“[T]he Board’s review of the claims of an expired patent is similar to that of
a district court’s review.”).
Also, 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.
In the Decision on Institution, we interpreted various claim terms of
the ’037 patent as follows:
Term Interpretation
“regulator” “mechanism for controlling the opening and closing of a closure”
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Term Interpretation
“predicted variable parameter
value”
“threshold value for a ‘variable
parameter value’ that is sensed in a
sensing step that indicates the presence
of an object”

“system equation including a
number of coefficients which
are multiplied by
a number of different parameter
values measured over a period
of time”
“equation having two or more prior
parameter values sequentially measured
at a number of different times, each
multiplied by a coefficient”

See Dec. on Inst. 7–10. Patent Owner contends that interpretation of these
terms (1) is not necessary, (2) is irrelevant to determining patentability of the
challenged claims, (3) is not relied upon by Patent Owner in its arguments,
and (4) is sought by Petitioner for litigation-related reasons. PO Resp. 46–
49. Petitioner does not dispute these interpretations.
We do not perceive any reason or evidence that now compels any
deviation from these interpretations. Accordingly, for purposes of this
decision, we incorporate our previous analysis. See Dec. on Inst. 7–10.
1. “different parameter values” (claim 1)
Claim 1 recites a method that comprises “calculating a predicted
variable parameter value utilizing a system equation, said system equation
including a number of coefficients which are multiplied by a number of
different parameter values measured over a period of time.” Ex. 1003 at
27:37–41.
Patent Owner contends that “the correct interpretation of the phrase
‘different parameter values’ is values of two or more different kinds of
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parameters.” PO Resp. 25 (emphasis omitted). Patent Owner contends that
“‘different parameter values’ is susceptible to different interpretations.” Id.
at 23 (citing Ehsani Decl. ¶ 60). Patent Owner consequently cites the
prosecution history and the Specification of the ’037 patent to support its
construction. Id. at 25–28 (citing Ex. 1003, 15:28–30, 18:36–37, 18:39–
19:6, 22:31–35, 22:52–53; Ex. 1004 at 384, 388, 484–498, 585–779). Patent
Owner also argues that it “has essentially disclaimed the interpretation that
‘different parameter values’ means different values of a single parameter
(e.g., different values . . . of a single parameter: current (I)).” Id. at 29.
Patent Owner, thus, argues that “different parameter values” should be
construed as “values of two or more different kinds of parameters (e.g.,
current (I) and pulse period (PP)).” Id. at 30.
Petitioner replies that “the most reasonable interpretation based on the
intrinsic record” is “‘values of at least one parameter at different times.’”
Reply 5 (citing Reply Decl. ¶ 22). Petitioner argues that Patent Owner’s
proposed construction is “inconsistent with the claim language and the
relevant statements in the prosecution history.” Petitioner contends that
“‘different parameter values’ appear only in the claims,” “the claim language
itself strongly suggests that the ‘parameter values’ are ‘different in the sense
that they are obtained at different times,” and “[n]othing in the claim
language suggests that distinct parameters are required.” Id. at 6 (citing
Reply Decl. ¶ 23). Petitioner also cites prosecution history to argue that
“different parameter values measured over a period of time” can be “values
of a single parameter taken at different times.” Id. at 6–7 (citing Ex. 1004,
386–388, 598–601; Reply Decl. ¶¶ 25–27, 29). Petitioner contends that
Patent Owner cites statements from prosecution history that “merely
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establish that ‘different parameter values’ can include both current and pulse
period” but fails to cite a statement that “excludes values of current or pulse
period alone from satisfying the claim term.” Id. at 7–8 (citing Ex. 1004,
388; Reply Decl. ¶¶ 28, 30, 31–34). Petitioner further cites the patent from
which the claim language was copied to provoke an interference to argue
that “different parameter values” can be “values of at least one parameter at
different times.” Id. at 8–9 (citing Ex. 1004, 263–68, 270, 277–78; Ex.
1005, 2:59–60, 2:20–22, 2:30–36, 4:32–33; Reply Decl. ¶¶ 35–39).
The record before us does not present a clear disavowal in the
prosecution history that would limit the plain and ordinary meaning of the
disputed term. Patent Owner cites to portions of the prosecution history of
the ’037 patent that argues how the as-filed application provides support for
the claimed subject matter. PO Resp. 25–28; Ex. 1004 at 384, 388, 484–
498, 585–779. These cited portions do not discuss the scope of the claim
language and do not indicate that Applicants intended to limit the claim
language to the cited embodiments. See Ex. 1004 at 384, 388, 484–498,
585–779. Also, we decline to import into the claims a limitation based on
specific embodiments in the Specification. See, e.g., SuperGuide Corp. v.
DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“[A] particular
embodiment appearing in the written description may not be read into a
claim when the claim language is broader than the embodiment.”).
Accordingly, based on the complete record before us, we construe
“different parameter values” in accordance with its plain meaning. Our
construction includes parameter values that are either values of a parameter
measured at different times or values of two or more different kinds of
parameters. Ex. 1003, 18:29–44.
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2. “a power system” (claim 1)
Claim 1 recites “a closure and its respective frame of a power system”
and “detecting an object caught between the closure and its respective
frame.” Ex. 1003, 27:31–32, 27:53–54.
Patent Owner contends that “frame of a power system” which appears
in the preamble and the body of claim 1 “is a positive claim limitation and
not merely intended use.” PO Resp. 30. Patent Owner cites its declarant
testimony to argue that “‘power system’ must include a ‘frame’ as a
component thereof,” “the word ‘power’ must include a motor,” and “a
person of ordinary skill in the art in April of 1992 would consider such a
system to be a module or preassembled unit.” Id. at 31 (citing Ehsani Decl.
¶ 78). Patent Owner argues that “[c]laim 1 requires a power system
comprising a module or preassembled unit with a frame, closure (e.g.,
window), and a drive motor.” Id. at 31–32 (citing Ex. 1003, 1:67–2:2, 2:63–
3:3, 6:40–53, 13:24–25, 25:41–26:3, 26:46–52, Figs. 1, 2A–2D, 3C, claims
2, 19; Ehsani Decl. ¶ 80). Patent Owner, thus, argues that “power system
includes a modularized or preassembled power unit having a frame, a
closure, and a drive motor.”
Petitioner replies, and we agree, that “‘frame,’ ‘closure,’ and ‘drive
motor’ are separately recited in claims 1 and 7, so it would be redundant to
read them into the ‘power system.’” Reply 4. We also agree with Petitioner
that “the additional requirement of ‘a modularized or preassembled’ has no
basis in the intrinsic record; it is not mentioned in the ’037 patent.” Id.
(citing Reply Decl. ¶ 17). Petitioner argues that “‘power system’ only
appears in the claims,” that the “’037 patent ‘concerns motor driven actuator
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control systems” and references a standard “that ‘establishes requirements
for power window control systems,’” and that the “disclosure indicates that .
. . ‘power system’ refers to a ‘motor driven system,’ e.g., for use in a power
window.” Id. (citing Ex. 1003, 1:24–26, 1:30–33; Reply Decl. ¶ 15), 16
(citing Reply Decl. ¶¶ 14–15).
Accordingly, based on the complete record before us, we construe
“power system” in accordance with its plain meaning. Our construction
does not require that power system be a modularized or preassembled power
unit.
3. “de-activating” (claim 13)
Claim 13 recites a “method for controlling activation of a motor for
moving a window or panel along a path of travel and de-activating the motor
if an obstacle is encountered during movement of the window or panel along
its path of travel.” Ex. 1003 at 28:46–49 (emphasis added).
After contending that construction of “de-activating” is not needed,
Patent Owner asserts that “‘deactivating’ encompasses ‘not active,
unmoving, immobile, inoperative’ in any manner, mechanical or electrical”
in accordance with a dictionary definition. PO Resp. 48–49 (citing Ehsani
Decl. ¶ 90; Ex. 2018, 5, 6).
We decline to adopt Patent Owner’s dictionary definition because the
Specification of the ’037 patent disparages immediately reversing (without
first deactivating) the motor in response to detecting an obstacle (Ex. 1003,
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.” Id.
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We construe the claim term “deactivating” 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. See also Dec. on Inst. 10
(construing “de-activating” to embrace any of turning off, removing power
from, and stopping the motor).
4. “sensing a value of the parameter”(claim 13)
Claim 13 recites a “method for controlling activation of a motor for
moving a window or panel along a path of travel and deactivating the motor
if an obstacle is encountered” that comprises, inter alia, “measuring a
parameter of the motor that varies in response to the window or panel
encountering an obstacle while moving along its path of travel” and “sensing
a value of the parameter during movement of the window or panel along its
path of travel.” Ex. 1003, 28:46–53, 28:61–62 (emphasis added).
Patent Owner contends that “‘sensing a value of the parameter’ . . .
must be construed to mean calculating an average value of past
measurements of the parameter.” PO Resp. 15, 19. Patent Owner argues
that, because claim 13 recites “measuring a parameter” before “sensing a
value of the parameter,” the “term ‘sensing’ is not used . . . in the traditional
sense and therefore must not be construed using its conventional plain
meaning.” Id. at 15–16 (citing Ehsani Decl. ¶ 53). Patent Owner
consequently cites the prosecution history of the ’037 patent to argue that the
sensed parameter is IRO or “the calculated running software-filtered value of
prior sequential measured motor currents in range zero.” Id. at 18 (citing
Ex. 1003, 18:56–57; Ex. 1004, 390, 591). Patent Owner also argues that its
declarant testimony opines that “comparing the average value instead of a
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single reading of the parameter to a threshold factors out false positives and
reliably detects obstructions in the real world.” Id. (citing Ehsani Decl. ¶
54). Patent Owner also states that its Declarant opines “as the patentee
explicitly defined the term in the specification, ‘sensing a value of the
parameter’ must be construed to mean calculating an average value of past
measurements of the parameter.” Id. at 19 (citing Ehsani Decl. ¶ 54)
(emphasis omitted).
Petitioner replies that “Patent Owner has not identified any clear
attempt by the Applicants to deviate from the plain and ordinary meaning,”
which is “detecting a value of the parameter using a sensor while the
window or panel is moving along its travel path.” Reply 10 (citing Reply
Decl. ¶ 43). Petitioner also argues that Patent Owner’s proposed
construction of “sensing” for claim 13 would be different than its meaning in
claims 1 and 7. Id. Petitioner further argues that the ’037 patent uses
“sensing” to refer to sensing parameters values, not calculating an average.
Id. (citing Ex. 1003, Abstract, 2:16–20, 2:26–44, 8:36–45, 11:5–27, 24:18–
31; Reply Decl. ¶ 46). Petitioner further notes that Patent Owner’s citation
to prosecution history omits an explanation of sensing that indicates the term
is used in accordance with its ordinary meaning. Id. at 10–11 (citing Ex.
1003, 2:3–8; Ex. 1004 at 5, 591). Petitioner further contends that Patent
Owner’s proposed construction conflicts with its position in its Preliminary
Response. Id. at 11 (citing Prelim. Resp. 18). Petitioner further asserts that
Patent Owner’s Declarant conceded that the portion of the ’037 patent cited
for “sensing” in the Preliminary Response does not support Patent Owner’s
proposed construction. Id. (citing Ex. 1025, 238:4–8, 239:5–240:21).

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The record before us does not present a clear disavowal in the
prosecution history that would limit the plain and ordinary meaning of
“sensing a value of the parameter.” Patent Owner cites to portions of the
prosecution history of the ’037 patent that argues how the as-filed
application provides support for the claimed subject matter. PO Resp. 18–
19; Ex. 1004, 390, 591. These cited portions do not discuss the scope of
“sensing a value of the parameter” and do not indicate that Applicants
intended to limit the disputed claim language to the cited embodiments. See
Ex. 1004, 390, 591.
Accordingly, we construe “sensing a value of the parameter” in
accordance with its plain meaning. Our construction is not limited to an
average of past measurements of the parameter.
B. Challenges relying on Bernard (Ex. 1009)
To prevail in its challenges to claims 7 and 13 as anticipated by
Bernard, Petitioner must prove unpatentability by a preponderance of the
evidence. See 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
In finding a claim anticipated, “[t]he identical invention must be
shown in as complete detail as is contained in the patent claim.” Richardson
v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989), abrogated on
other grounds as recognized by Robert Bosch LLC v. Pylon Mfg. Corp., 659
F.3d 1142, 1148 (Fed. Cir. 2011). Moreover, “[a] claim is anticipated only
if each and every element as set forth in the claim is found, either expressly
or inherently described, in a single prior art reference.” Verdegaal Bros. v.
Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). A finding of
inherency “requires that the missing descriptive material is ‘necessarily
present,’ not merely probably or possibly present” in the anticipating
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reference. Trintec Indus., Inc. v. Top-USA Corp., 295 F.3d 1292, 1295 (Fed.
Cir. 2002) (quoting In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999)).
Petitioner argues that Bernard anticipates claims 7 and 13, referring to
Figure 4 of and disclosures in Bernard as well as claim charts and the
Borrelli Declaration. Pet. 19–27.
1. Bernard (Ex. 1009)
Bernard describes control circuits for electric window winders for
operating moving windows in vehicles. Ex. 1009, 1:4–6. Figure 4 of
Bernard is reproduced below.

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Figure 4 is a block diagram illustrating a circuit for controlling an
electric window winder. Id. at 3:75–77. Bernard provides protection against
injury by sensing an increase in motor current resulting from a window
meeting an obstruction. It de-energizes window winder motor 10 if
microprocessor 150 determines that a threshold value of motor current is
exceeded. Id. at 1:111–118.
2. Claim 7
Independent claim 7 recites a “method for detecting the presence of an
object caught between a closure and its respective frame of a power system,”
that includes, inter alia, “calculating a variable parameter value utilizing a
system equation, said system equation including a number of coefficients
which are multiplied by a number of different parameter values measured
over a period of time.” Ex. 1003, 28:5–28 (emphasis added).
Petitioner argues that Bernard discloses all the elements of claim 7.
Pet. 20–25 (citing Ex. 1009, Abstract, 1:111–118, 1:21–30, 2:105–111,
3:92–100, 3:75–77, 4:1–7, 4:67–101, 6:56–82, 7:66–104, 9:22–32, Fig. 4;
Borelli Decl. ¶¶ 55–60). Specifically, Petitioner argues that Bernard teaches
the power system and calculating step of claim 7. Id. at 20–21 (citing Ex.
1009, Abstract, 1:111–118; Borrelli Decl. ¶¶ 55, 56), 22–23 (citing Ex.
1009, 2:105–111, 7:68–88; Borrelli Decl. ¶ 110).
Patent Owner responds that Bernard does not disclose “different
parameter values,” a “power system,” and a “frame,” by referencing its
arguments for claim 1. PO Resp. 42. In the referenced arguments, Patent
Owner asserts that Bernard does not disclose detecting an obstacle based on
a threshold calculated using a system equation with “different parameter
values,” which Patent Owner proposes to interpret as values of two different
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kinds of parameters. PO Resp. 33 (citing Ehsani Decl. ¶ 67). Patent Owner
argues that Bernard, instead, discloses calculating its obstacle detection
threshold based on measured motor current and that, although Bernard
describes measuring torque, window position, and ambient temperature,
those measurements are not used in calculating its obstacle detection
threshold. Id. at 33–37 (citing Ex. 1009, 14:6–16, 17:18–19, 22:73–88,
25:15–17; Ehsani Decl. ¶¶ 66–68, 72, 73; Ex. 2005, 74:17–22, 83:10–17,
24).
Patent Owner also asserts that Bernard fails to disclose a modularized
or preassembled power unit having a frame, closure and drive motor. PO
Resp. 38. Specifically, Patent Owner argues that Bernard does not describe
a window or sunroof with a frame and frameless windows were common at
the time of filing the application for the ’037 patent. PO Resp. 38–42 (citing
Ex. 1009, 27:2–4; Ehsani Decl. ¶¶ 82, 84; Ex. 2005 at 26:5–9, 27:3–10,
84:14–22, 85:5–23).
Petitioner replies that Patent Owner’s proposed construction of
“different parameter values” and “power system” are incorrect, and that
Bernard discloses claim 7 as properly construed. Reply 12 (citing PO Resp.
30, 42). Petitioner also argues that “Patent Owner concedes that Bernard . . .
‘ . . . is applicable to motorized sunroofs of cars,’” which would necessarily
include a “frame.” Id. at 12–13 (citing Ex. 1009, 1:4–6, 1:22–28; PO Resp.
38 (citing Ex. 1009, 12:2–4)). Petitioner also contends that Bernard
necessarily discloses a “frame” because it discloses control circuits “so that a
trapped finger, for example, is unlikely to be broken” and “there must be a
frame against which the window can trap the finger.” Id. at 13 (citing Ex.
1009, Abstract, 2:27–33; Reply Decl. ¶ 56). Petitioner further argues that
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Patent Owner’s Declarant “conceded that each reference he identified as an
example of a ‘frameless’ window in fact disclosed a frame around the
window.” Id. (citing Ex. 1025, 272:5–273:3, 274:1–13, 275:9–16).
As explained above in Part III.A.1, our construction of “different
parameter values” includes values of a parameter measured at different times
and is not limited to values of two or more different kinds of parameters.
Also, as discussed in Part III.A.2, our construction of “power system” does
not require that it be a modularized or preassembled power unit or further
include frame, closure, and drive motor, which are recited separately in
claim 7.
Accordingly, based on the complete record before us, we determine
that Petitioner, by a preponderance of the evidence, has shown that claim 7
is anticipated by Bernard.
3. Claim 13
Independent claim 13 recites a method that includes, inter alia,
“sensing a value of the parameter during movement of the window or panel
along its path of travel.” Ex. 1003, 28:46–67.
Petitioner argues that Bernard discloses all the elements of claim 13.
Pet. 25 (citing Ex. 1009, 1:111–118, 4:1–7, 4:67–101, 2:105–111, 6:56–82,
7:66–104, 9:22–32; Borrelli Decl. ¶¶ 114–118). In particular, for “sensing a
value of the parameter during movement of the window or panel along its
path of travel,” Petitioner refers to its arguments for claim 7. Id. at 26–27.
Petitioner argues that Bernard discloses a “current through the motor 10 is
sensed by a low-value series resistor 36; the potential drop across the resistor
36 is monitored by a current sensor circuit 38, which provides an input
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signal . . . on a line 42 if the current is drawing an abnormally high current.”
Id. at 24 (citing Ex. 1009, 4:1–7, 4:67–101; Borrelli Decl. ¶ 111).
Patent Owner responds that Bernard “does not disclose sensing a
value of the parameter as defined in the ’037 patent.” PO Resp. 19. Patent
Owner argues that “Bernard merely detects an obstruction by comparing a
sensed value of motor current (I) to a threshold value such as IFMAX,” thus,
“Bernard merely senses an instantaneous value of the current (I) and not an
average value of past measurements.” Id. at 19–20 (citing Ex. 1009,
22:105–110; Ehsani Decl. ¶ 55; Borrelli Dep. 79:9–19). Patent Owner
asserts that the distinction was recognized by Petitioner’s Declarant (id. at
20–21 (citing Ex. 2005 at 79:9–19, 106:18–107:11)) and Patent Owner’s
Declarant (id. at 20, 22 (citing Ehsani Decl. ¶¶ 56–57)).
Petitioner replies, and we agree, that “Patent Owner’s sole argument
against anticipation rests on its improper interpretation . . . as requiring
‘calculating an average value of past measurements of the parameter’” and
“Bernard anticipates claim 13 as properly construed.” Reply 12 (citing PO
Resp. 19–22). As we determined above in Part III.A.4, our construction of
“sensing a value of the parameter” is not limited to an average of past
measurements of the parameter.
Accordingly, based on the complete record before us, we determine
that Petitioner, by a preponderance of the evidence, has shown that claim 13
is anticipated by Bernard.
C. Challenge relying on Bernard (Ex. 1009) and Chikaraishi (Ex. 1015)
To prevail in its challenge of claim 1 as rendered obvious over
Bernard and Chikaraishi, Petitioner must prove unpatentability by a
preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
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A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
between the subject matter sought to be patented 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). To establish obviousness of a claimed invention, all the claim
limitations must be taught or suggested by the prior art. See CFMT, Inc. v.
Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003); In re Royka, 490
F.2d 981, 985 (CCPA 1974).
A patent claim composed of several elements, however, is not proved
obvious merely by demonstrating that each of its elements was known,
independently, in the prior art. KSR, 550 U.S. at 418. For an obviousness
analysis it is important to identify a reason that would have prompted one of
skill in the art to combine prior art elements in the way the claimed
invention does. Id. Obviousness can be established when the prior art,
itself, would have suggested the claimed subject matter to a person of
ordinary skill in the art. In re Rinehart, 531 F.2d 1048, 1051 (CCPA 1976).
1. Chikaraishi (Ex. 1015)
Chikaraishi “relates in general to window regulators.” Ex. 1015, 1:3–
5. Figure 1 of Chikaraishi is reproduced below.
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Figure 1 is a schematic view of a window regulator of a motor
vehicle. Id. at 1:15–16. Chikaraishi describes that a “window pane 14 is
disposed within the vehicle door body 10 and is moved upwards or
downwards by means of a window regulator mechanism 16 within the
vehicle body door 10.” Id. at 1:29–32.
2. Claim 1
Petitioner argues that claim 1 would have been rendered obvious by
Bernard and Chikaraishi and states that “to the extent the Board believes a
reference expressly disclosing the claimed ‘regulator’ . . . is necessary,
Chikaraishi provides express disclosure.” Pet. 29 (citing Ex. 1015, 1:29–
2:8).
Petitioner argues that a:
person of ordinary skill in the art would have been motivated to
use a regulator such as that disclosed by Chikaraishi with the
system of Bernard because Chikaraishi discloses the standard
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use of a regulator to convert the rotary driving force from the
electric drive motor to a linear force for opening and closing the
closure.
Pet. 29 (citing Borrelli Decl. ¶ 122).
Patent Owner responds Bernard does not teach detecting an obstacle
based on a threshold calculated using a system equation with “different
parameter values,” specifically values of two different kinds of parameters.
PO Resp. 33 (citing Ehsani Decl. ¶ 67). Patent Owner argues that, instead,
Bernard teaches calculating its obstacle detection threshold based on
measured motor current and that Bernard’s teachings of other measurements
are not used in obstacle detection threshold calculation. Id. at 33–37 (citing
Ex. 1009, 14:6–16, 17:18–19, 22:73–88, 25:15–17; Ehsani Decl. ¶¶ 66–68,
72, 73; Ex. 2005 at 74:17–22, 83:10–17, 24). Patent Owner further argues
that Chikaraishi also fails to teach “different parameter values.” Id. at 37
(citing Ehsani Decl. ¶ 75).
Patent Owner also asserts that Bernard and Chikaraishi fail to teach a
modularized or preassembled power unit having a frame, closure and drive
motor. PO Resp. 38. Specifically, Patent Owner argues that Bernard does
not teach a window or sunroof with a frame, Chikaraishi’s window pane 14
is not disposed in a module with a frame, and frameless windows were
common at the time of filing the application for the ’037 patent. PO Resp.
38–42 (citing Ex. 1009, 27:2–4; Ex. 1015, 1:28–31, 2:9–13, Fig. 1; Ehsani
Decl. ¶¶ 82, 84; Ex. 2005 at 26:5–9, 27:3–10, 84:14–22, 85:5–23).
As discussed above in Parts III.A.1 and III.A.2, our construction of
“different parameter values” includes values of a parameter measured at
different times and our construction of “power system” does not require that
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it be a modularized or preassembled power unit or further include frame,
closure, and drive motor, which are recited separately in claim 1.
Accordingly, based on the complete record before us, we determine
that Petitioner, by a preponderance of the evidence, has shown that claim 1
is unpatentable over Bernard and Chikaraishi.
D. Additional Arguments
1. Declarant Not Familiar with the State of the Art
Patent Owner contends Dr. Borrelli 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. 5–13.
We are persuaded, however, that Dr. Borrelli is an expert in the field
of control systems since before 1992. Ex. 1001 ¶¶ 5–18; Ex. 1002. Dr.
Borrelli’s specific expertise is in constrained optimal control, model
predictive control, and its application to advanced automotive control. Ex.
1001 ¶ 5. Accordingly, we conclude that Dr. Borrelli is an expert familiar
with the State of the Art of automotive control in 1992.
2. Enablement of References
Patent Owner argues that “Bernard and Chikaraishi are not
enabling . . . for making or using the inventions claimed in the ’037 Patent.”
PO Resp. 43. Patent Owner contends that “the obstacle detection features of
Bernard would not only require undue experimentation to make or use an
invention, such as that of the ’037 Patent, but would also not reliably detect
obstacles in real-world scenarios” because of the “inordinate amount of false
positives or negatives that would occur with Bernard’s inaccurate
algorithms” and Bernard “does not detect soft obstacles.” Id. at 43–44
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(citing Ehsani Decl. ¶¶ 91–96; Ex. 2005, 39:21–40:12, 41:16–42:5)
(emphasis removed).
Other than alleged poor performance, Patent Owner has not identified
any persuasive evidence that the references cited by Petitioner should not be
relied upon for their respective disclosures.
Regarding the asserted ground under § 103, we have determined that
Bernard and Chikaraishi provide sufficient disclosure to allow a person
having ordinary skill in the art to make and use the invention recited in the
challenged claim. 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.”).
E. Motions to Exclude
Patent Owner seeks to exclude the entire Reply Declaration of
Francisco Borrelli, Ph.D. (Ex. 1023) and any reliance on this declaration in
the Reply. Paper 23, 1.
Petitioner seeks to exclude paragraphs 6, 48, 52–55, 58, 60–65, 74,
76, 78–81, 84–91, and 96 of the Ehsani Declaration (Ex. 2003) and Exhibits
2011, 2012, 2019, 2021, and 2014. Paper 25, 1.
We merely cite paragraphs 14, 15, 17, 23, 25–39, 43, and 46 of the
Reply Declaration and paragraphs 53–55, 60, 78, 80, 82, 84, and 90 of the
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Ehsani Declaration to indicate where the parties find support for their
arguments.
In our analysis, we do not rely on any of the paragraphs that we cited
or that the parties seek to exclude. Moreover, we do not rely on any of the
other exhibits sought to be excluded. Accordingly, we dismiss the Motions
as moot.
F. Conclusion
For the foregoing reasons, we are persuaded that Petitioner has
demonstrated, by a preponderance of the evidence, that, under 35 U.S.C.
§ 102, claims 7 and 13 of the ’037 patent are anticipated by Bernard and
that, under 35 U.S.C. § 103, claim 1 of the ’037 patent is unpatentable over
Bernard and Chikaraishi.
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1, 7, and 13 of the ’037 patent have
been shown, by a preponderance of the evidence, to be unpatentable;
FURTHER ORDERED that Patent Owner’s Motion to Exclude
is dismissed as moot;
FURTHER ORDERED that Petitioner’s Motion to Exclude is
dismissed as moot; and
FURTHER ORDERED that, because this is a Final Written
Decision, the parties to the proceeding seeking judicial review of the
decision must comply with the notice and service requirement of 37 C.F.R.
§ 90.2.

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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
HARNESS, DICKEY & PIERCE, P.L.C.
mlfalcoff@hdp.com
hkeskar@hdp.com