Webasto Roof Systems, Inc.v.UUSI, LLC

Patent Trial and Appeal Board

Oct 13, 2015

10765487 (P.T.A.B. Oct. 13, 2015)

Trials@uspto.gov Paper No. 32
571-272-7822 Date: 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 IPR2014‐00650
Patent 7,579,802 B2
____________

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

CHUNG, 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 Background
Webasto Roof Systems, Inc. (“Petitioner”), filed a Corrected Petition
(Paper 4, “Pet.”) to institute an inter partes review of claims 1, 6–9, 11, 15,
and 16 of U.S. Patent No. 7,579,802 (Ex. 1001, “the ’802 patent”) pursuant
to 35 U.S.C. §§ 311–319.
UUSI, LLC (“Patent Owner”) filed a Preliminary Response. Paper 9.
On October 17, 2014, we instituted review as to claims 1, 6–9, 11, 15, and
16 of the ’802 patent and instituted trial on five grounds of unpatentability as
set forth below. Paper 14 (“Dec. on Inst.”).

Claims Grounds Reference
1, 6–9, 15, and
16
§ 103(a) Lamm1 and Itoh2
11 § 103(a) Itoh, Kinzl3, and Jones4
1, 7–9, 11, 15,
and 16
§ 103(a) Duhame5 and Kinzl
11 § 103(a) Lamm, Itoh, and Duhame
15 and 16 § 103(a) Itoh and Kinzl

Patent Owner filed a Patent Owner’s Response (Paper 20, “PO
Resp.”), and Petitioner filed a Reply (Paper 23, “Reply”).

1 DE 40 00 730 A1 published Aug. 1, 1991 (Ex. 1008 (translation); Ex. 1017
(original); Ex. 1018 (certification), “Lamm”).
2 U.S. Patent No. 4,870,333 issued Sept. 26, 1989 (Ex. 1006, “Itoh”).
3 U.S. Patent No. 4,468,596 issued Aug. 28, 1984 (Ex. 1007, “Kinzl”).
4 U.S. Patent No. 4,831,509 issued May 16, 1989 (Ex. 1010, “Jones”).
5 U.S. Patent No. 5,218,282 issued June 8, 1993 (Ex. 1009, “Duhame”).
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In addition, Petitioner filed a Motion to Exclude (Paper 25,
“Motion”), seeking to exclude certain of Patent Owner’s evidence in
Exhibits 2001, 2004, 2005, 2007–09, 2013, 2014, 2018, 2032, and 2033.
Patent Owner opposed (Paper 27, “Opp.”) Petitioner’s Motion to
Exclude. We heard Oral Argument on June 29, 2015. Paper 30, “Tr.”

B. Related Matters
Petitioner indicates that the ’802 patent is being asserted in: UUSI,
LLC v. Robert Bosch LLC, No. 2:13-cv-10444, filed in the United States
District Court for the Eastern District of Michigan, on February 4, 2013; and
UUSI, LLC v. Webasto Roof Sys., Inc., No. 2:13-cv-11704, filed in the
United States District Court for the Eastern District of Michigan, on April
15, 2013. Pet. 1.
The ’802 patent belongs to a family of patents involved in multiple
inter partes reviews including IPR2014-00416, IPR2014-00417, IPR2014-
00648, IPR2014-00649, and IPR2014-00650.

C. Summary of Conclusions
In this Final Written Decision, issued pursuant to 35 U.S.C. § 318(a)
and 37 C.F.R. § 42.73, we deny Patent Owner’s Motion to Exclude and we
determine that Petitioner has demonstrated by a preponderance of the
evidence that all claims for which trial was instituted, claims 1, 6–9, 11, 15,
and 16, are unpatentable.

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II. THE ’802 PATENT (Ex. 1001)
The ’802 patent describes a system and method for sensing an
obstruction in the travel path of a moveable panel, such as a window or
sunroof of a vehicle. See Ex. 1001, Abstract, 1:32–57 (Background). Figure
1 is reproduced below:

Figure 1 is a schematic of an exemplary actuator safety feedback control
system 1. Id. at 2:26–27, 65–66. Controller 2 monitors and controls
movement of a motor driven panel. Id. at 2:65–3:5. Motor drive outputs 7a
and 7b control whether the motor (not shown in Figure 1) drives the panel in
a forward or a reverse direction. Id. at 3:38–39. Controller 2 can sense
obstacles in the panel’s path in various ways, including a paired infrared
emitter and detector disposed along the panel’s path (id. at 3:63–4:53), a
motor current monitor (id. at 5:53–57, 7:26–8:3), and other motor monitors
(id. at 11:9–32).
Independent claim 7, reproduced below, is illustrative.
7. Apparatus for controlling activation of a motor for
moving an object along a travel path and de-activating the
motor if an obstacle is encountered by the object comprising:
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a) a movement sensor for monitoring movement of
the object as the motor moves said object along a
travel path;
b) a switch for controlling energization of the
motor with an energization signal; and
c) a controller including an interface coupled to the
switch for controllably energizing the motor and
said interface additionally coupling the controller
to the movement sensor for monitoring signals
from said movement sensor; said controller
comprising a stored program that:
i) determines motor speed of movement from an
output signal from the movement sensor;
ii) calculates an obstacle detect threshold based on
motor speed of movement detected during a
present run of said motor driven element;
iii) compares a value based on currently sensed
motor speed of movement with the obstacle detect
threshold; and
iv) outputs a signal from the interface to said
switch for stopping the motor if the comparison
based on currently sensed motor movement
indicates the object has contacted an obstacle.

III. CLAIM CONSTRUCTION
The ’802 patent is now expired.6 In an inter partes review, the proper
claim construction standard in an expired patent is set forth in Phillips v.
AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 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.”). The
district court’s standard is to give claim terms their ordinary and customary
meaning, as would be understood by one of ordinary skill in the art in the

6 The ’802 patent expired in November 2014.
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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.
A. “a sensor for measuring a parameter of a motor . . . that varies in
response to a resistance to motion” (claim 1)
Patent Owner would have us limit the term “a sensor for measuring a
parameter of a motor . . . that varies in response to a resistance to motion”
(claim 1) to “a sensor that measures a magnitude of motor current.” PO
Resp. 12. We disagree.
Patent Owner notes a supposedly claim-limiting prosecution history in
which Applicant argued that the sensor includes an “operational amplifier
that amplifies a voltage across a current-measuring resistor.” PO Resp. 9–
10. However, we do not find any clear disavowal in the prosecution history
that would limit the plain and ordinary meaning of the disputed term.
Patent Owner also finds support for its proposed narrow construction
in the Specification, which states “motor current is the primary measured
parameter of immediate importance for both hard and soft obstacle
detection” (emphasis added) and “motor current” denotes magnitude. Id. at
11 (citing Ex. 1001, 15:66–16:3, 18:35–37). The Specification of the
’802 patent states: “obstacle detection via motor current sensing or current
sensing and speed sensing means becomes the remaining reliable backup
method of detecting an obstacle” (emphasis added). Ex. 1001, 4:12–14. We
are not persuaded to import this narrowing limitation from the Specification
based on the examples argued.
Patent Owner further argues that the doctrine of claim differentiation
limits the sensor of claim 1 to a “current amplitude sensor,” whereas “a
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movement sensor” recited in claim 7 embraces a “Hall-effect sensor that
senses movement of the motor shaft.” PO Resp. 11–12.
Although the doctrine of claim differentiation creates a presumption
that the limitations in claims 1 and 7 are different in scope, this presumption
can be overcome by written description or prosecution history. See
Seachange Int’l, Inc. v. C-COR Inc., 413 F.3d 1361, 1369 (Fed. Cir. 2005).
As discussed supra, the ’802 patent Specification describes “obstacle
detection via motor current sensing or current sensing and speed sensing
means becomes the remaining reliable backup method of detecting an
obstacle” (emphasis added). Moreover, the Specification does not include a
special definition, or a disavowal.
Accordingly, we construe the claim term “sensor for measuring a
parameter of a motor . . . that varies in response to a resistance to motion” in
accordance with its plain meaning. Our construction embraces any sensor
that measures any motor parameter that varies as a result of resistance to
motion.

B. “travel path” (claims 7 and 15)
Claims 7 and 15 refer to a “travel path.” Patent Owner contends that
this term refers to the “entire travel path” of the object and not just to a
portion of the entire travel path. PO Resp. 21–23, 44–45. Patent Owner
argues that although the doctrine of claim differentiation normally applies to
a claim depending on another claim, the doctrine also requires that “all or
part of a range of motion” in independent claim 1 be differentiated from
independent claims 7 and 15, which recite “a travel path.” Id. at 21–23.
Moreover, Patent Owner argues the controlling activation of a motor
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described in claims 7 and 15 along the entire travel path is critical to the
protection of a body part that the window encounters. Id. at 22–23. We
disagree.
Although the doctrine of claim differentiation suggests claims 7 and
15 do not require “all or part of a range of motion” because claim 1 recites
“all or part of a range of motion” and claims 7 and 15 merely recite “a travel
path,” this suggestion is not a hard and fast rule and will be overcome by a
contrary construction dictated by the written description or prosecution
history. See Seachange Int’l, 413 F.3d at 1369.
The Specification and prosecution history of the ’802 patent do not
provide a special definition nor provide a clear disavowal of the plain
meaning of the “travel path” limitation, and Patent Owner does not argue
otherwise. Rather, the Specification of the ’802 patent indicates during and
immediately after the startup phase, obstacle detection will not occur. The
Specification of the ’802 patent refers to variable I as motor current and to
variable PP as pulse period in discussing obstacle detection along a travel
path. Ex. 1001, 15:57–67. In particular, the Specification of the ’802 patent
states “after allowing some small initial amount of time for the motor rotor
to begin rotation, I is immediately measured and compared against a fixed
maximum threshold value and PP is immediately measured and compared
against some maximum threshold number of clock cycles” (emphasis added).
Id. at 16:31–36. Thus, in this embodiment, obstacle detection is not
performed along the entire travel path.
Because the Specification of the ’802 patent indicates obstacle
detection is not performed along the entire travel path and the prosecution
history does not include a special definition nor a clear disavowal of the
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plain meaning (Ex 1001, 16:31–36), we conclude from the totality of the
evidence that the “travel path” recited in claims 7 and 15 is not limited to the
“entire travel path.” Rather, it can refer to a portion of the entire travel path.

C. “in response to a specified input the controller conducts a calibration
motor energization sequence to determine parameters of object” (claim 11)
Patent Owner would have us limit the term “in response to a specified
input the controller conducts a calibration motor energization sequence to
determine parameters of object” (claim 11) to “in response to a single
specified user input, conducting a calibration motor energization sequence
by moving an object from a fully closed position to a fully open position and
back to the fully closed position to determine movement range parameters of
the object.” PO Resp. 33.
Patent Owner argues an exemplary description in the Specification
supports its narrow construction, which states:
[t]he calibration learning of the movement range and position of
the sunroof are learned and recorded as follows. The ignition is
turned OFF and within five seconds the OPEN switch is
pressed and the ignition is switched ON. The controller 2
attempts to find the HOME or PARK position then proceeds to
find the limit of the open area or the sunroof, i.e. the fully open
position. When a stall condition is sensed the size of the
sunroof open area (by count of motor encoder pulses) is
recorded and the controller reverses the direction toward the
PARK position.
Id. at 31–32 (citing Ex. 1001, 12:17–31). We disagree with Patent Owner.
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. See Thorner, 669 F.3d at 1365-66. Here, the claims
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do not recite “single specified input” and “by moving an object from fully
closed position to a fully open position and back to the fully closed position
to determine movement range parameters of [the] object” (emphasis added).
Reply 3. The ordinary and customary meaning of “a specified input” can
embrace multiple button presses such as a user entering a sequence of letters,
numbers, and/or special characters in a password. Id. In addition, “the
words ‘a’ or ‘an’ in a patent claim carry the meaning of ‘one or more.’” Id.
at 4 (citing TiVo, Inc. v. EchoStar Commc’ns Corp., 516 F.3d 1290, 1303
(Fed. Cir. 2008); Ex. 1022 ¶ 20). Lastly, Patent Owner acknowledges that it
relies on an “exemplary description” in the Specification of the ’802 patent,
which actually describes three user interactions to begin calibrating. Reply
4. Thus, we decline to adopt Patent Owner’s narrow construction. Rather,
we construe the limitation “in response to a specified input the controller
conducts a calibration motor energization sequence to determine parameters
of object” according to the ordinary and customary meaning.

D. Means Plus Function – “logic unit for” (claim 15)
Patent Owner contends that the term “logic unit for” as used in claim
15 invokes 35 U.S.C. § 112, sixth paragraph7, means plus function analysis
because logic unit is not and was not a known structure to those skilled in
the art prior to the priority date of the ’802 patent. PO Resp. 45. Further,
Patent Owner contends because the Specification of the ’802 patent does not

7 Section 4(c) of the Leahy-Smith America Invents Act (“AIA”) re-
designated 35 U.S.C. § 112, sixth paragraph, as 35 U.S.C. § 112(f). Pub. L.
No. 112-29, 125 Stat. 284, 296 (2011). Because the ’802 patent has a filing
date before September 16, 2012 (effective date of § 4(c)), we will refer to
the pre-AIA version of § 112.
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recite explicitly a “logic unit,” the term “logic unit” is a nonce word
combined with the preposition “for” and functional language. Id. at 46–47.
We disagree.
The Federal Circuit has held that “mechanism for,” “module for,”
“device for,” “unit for,” “component for,” “element for,” “member for,”
“apparatus for,” “machine for,” or “system for,” are non-structural generic
placeholders that may invoke 35 U.S.C. § 112, sixth paragraph. Welker
Bearing Co., v. PHD, Inc., 550 F.3d 1090, 1096 (Fed. Cir. 2008); Mass. Inst.
of Tech. and Elec. for Imaging Inc. v. Abacus Software, 462 F.3d 1344, 1354
(Fed. Cir. 2006); Personalized Media Commc’ns, LLC v. ITC, 161 F.3d 696,
704 (Fed. Cir. 1998); Mas-Hamilton Group v. LaGard, Inc., 156 F.3d 1206,
1214–15 (Fed. Cir. 1998).
At the same time, 35 U.S.C. § 112, sixth paragraph, does not apply if
persons of ordinary skill in the art reading the specification understand the
term to be the name for the structure that performs the function, even when
the term covers a broad class of structures or identifies the structures by their
function. Apex Inc. v. Raritan Computer, Inc., 325 F.3d 1364, 1372–73
(Fed. Cir. 2003); CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1369
(Fed. Cir. 2002); Watts v. XL Sys. Inc., 232 F.3d 877, 880–81 (Fed. Cir.
2000); Personalized Media, 161 F.3d at 704; Greenberg v. Ethicon Endo-
Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996) (“Many devices take their
names from the functions they perform.”). The term is not required to
denote a specific structure or a precise physical structure to avoid the
application of pre-AIA 35 U.S.C. § 112, sixth paragraph. See Watts, 232
F.3d at 880. In this case, the Specification of the ’802 patent states “[t]he
circuitry of FIGS. 2A–2D includes a number of operational amplifiers which
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require higher voltage than the five volt VCC logic circuitry power signal”
(emphasis added). Ex. 1001, 6:30–32. As a result, one of ordinary skill in
the art reading the Specification of the ’802 patent would understand the
term “logic” to be the name of a type of circuitry (e.g., structure) that
performs the function.
Moreover, “circuit” has been found to be a structural term that does
not invoke pre-AIA 35 U.S.C. § 112, sixth paragraph. Linear Tech. Corp. v.
Impala Linear Corp., 379 F.3d 1311, 1321, (Fed. Cir. 2004); Apex, 325 F.3d
at 1373; Greenberg, 91 F.3d at 1583–84; Personalized Media, 161 F.3d at
704–05; CCS Fitness, 288 F.3d at 1369–70; Cole v. Kimberly-Clark Corp.,
102 F.3d 524, 531 (Fed. Cir. 1996); Watts, 232 F.3d at 881; Al-Site Corp. v.
VSI Int’l, Inc., 174 F.3d 1308, 1318–19 (Fed. Cir. 1999).
Because one of ordinary skill in the art reading the Specification of
the ’802 patent would understand the term “logic” to be the name of a type
of circuitry and “circuit” has been found not to invoke pre-AIA 35 U.S.C.
§ 112, sixth paragraph, we conclude from the totality of the evidence that
claim 15 does not invoke pre-AIA 35 U.S.C. § 112, paragraph six.

IV. THE PRIOR ART
A. Lamm (Ex. 1008)
Lamm describes a method and device for operating power-actuated
components that pose a clamping hazard to objects or a person’s body parts.
Ex. 1008, Abstract. Lamm further describes the system and method are
particularly suitable for operating sliding sunroofs, window lift motors, door
closing mechanisms, and seatbelt positioning devices in vehicles. Id. at 2.
The system and method continuously determine first and/or higher order
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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.

B. Itoh (Ex. 1006)
Itoh describes an automatic opening and closing device for a window.
Ex. 1006, Abstract. Figure 7 is reproduced below.

Itoh illustrates in Figure 7 forward and reverse rotatable motor 20 that
controls opening and closing of window 26, switch 38 that instructs motor
20 to rotate, pulse-detecting circuit 30 that detects a pulse along with motor
20 rotation, counter 36 for counting the pulse number detected by pulse-
detecting circuit 30, and motor driving circuit 28 that controls the motor. Id.
at 7:48–8:48. CPU 34 detects at all times if an obstacle is caught between
window frame 24 and window 26 and stops the motor and reverses the
motor if an obstacle is detected. Id. at 3:28–60, 8:49–61.
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C. Duhame (Ex. 1009)
Duhame describes an automatic door operator that includes an
obstruction detector for stopping a motor when the detected motor speed
indicates a motor torque greater than the selected closing torque limit while
closing the door, and for stopping the motor when the detected motor speed
indicates a motor torque greater than the selected opening torque limit while
opening the door. Ex. 1009, Abstract.

D. Kinzl (Ex. 1007)
Kinzl describes a method and apparatus for operating and monitoring
an opening and closing cycle of objects such as electric windows and
electric slide roofs. Ex. 1007, Abstract. The operating and monitoring
eliminate the danger of body parts getting caught in the object and permit a
complete automatic opening and closing of the object. Id.

Kinzl illustrates in Figure 1 sensor 26 measuring the speed of drive
motor 12. Id. at 2:1–15. In addition, Kinzl illustrates microcomputer 24 that
processes and compares the measured values. Id. at Abstract. Specifically,
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microcomputer 24 uses the changes in the measured values to determine the
position of window 10. Id. at 2:53–57. In case of danger, the determination
of the position makes it possible to safely turn off drive motor 12 and
possibly open the window 10. Id. at 3:6–17, 4:3–6.

E. Jones (Ex. 1010)
Jones describes an automatic door operator including an obstruction
detector for stopping a motor when the speed of the motor exceeds a limit.
Ex. 1010, Abstract. Jones in particular indicates the door controller may
store the door’s lower limit position in memory by an operator first moving
the door to its lower limit position, and then operating a switch. Id. at 5:26–
42, 5:58–6:7. A similar operation stores the door’s upper limit position in
the controller memory. Id. at 5:43–50, 6:8–26.

V. ANALYSIS
A. Challenges Relying on Lamm and Itoh
For reasons stated below, we conclude, based on a preponderance of
the evidence, that claims 1, 6–9, 15, and 16 are obvious over Lamm and
Itoh.
1. Independent Claim 1
The parties’ first dispute is directed to whether Lamm and Itoh teach
the limitation “a sensor for measuring a parameter of a motor . . . that varies
in response to a resistance to motion” as recited in claim 1. We begin with
Petitioner’s contentions regarding this limitation.
According to Petitioner, the claim 1 limitation “a sensor for measuring
a parameter of a motor . . . that varies in response to a resistance to motion”
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embraces Lamm’s sensor 13 detecting the rotary speed of motor 10 that
measures if a threshold value is exceeded such as when clamping of an
obstacle occurs. Pet. 32–33; Ex. 1008, 2, 3, 5. Moreover, Petitioner
contends the claim 1 limitation “a sensor for measuring a parameter of a
motor . . . that varies in response to a resistance to motion” embraces Itoh’s
pulse-detecting circuit 30 that detects a ripple current corresponding to the
rotational frequency of motor 20, and outputs a motor pulse signal to CPU
34 and counter 36 of controller 32 to calculate the rotational speed of the
motor at all times to determine if an obstacle squeeze condition exists. Pet.
14–15; Ex. 1006, 7:60–64, 8:33–53, 9:37–62, Figs. 7–8.
Patent Owner argues the correct construction for “a sensor for
measuring a parameter of a motor . . . that varies in response to a resistance
to motion” (claim 1) is “a sensor that measures a magnitude of motor
current.” See supra Part III.A. As a result, Patent Owner argues Lamm and
Itoh do not teach or suggest this limitation because Lamm merely senses
speed, calculates one or more motor speed derivatives with respect to the
window’s travel path, and compares the derivatives to respective pre-
specified thresholds to detect obstacles and Itoh merely measures a time
period between current pulses that is inversely proportional to motor speed.
PO Resp. 12–13.
We are not persuaded by Patent Owner’s argument that Lamm and
Itoh fail teach or suggest “a sensor for measuring a parameter of a motor . . .
that varies in response to a resistance to motion.” At the outset, we
construed the claim 1 limitation “sensor for measuring a parameter of a
motor . . . that varies in response to a resistance to motion” as “any sensor
that measures any motor parameter that varies as a result of resistance to
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motion” rather than as “a sensor that measures a magnitude of motor
current.” See supra Part III.A.
The cited portions of Lamm relied upon by Petitioner teach a sensor
13 detecting the rotary speed of motor 10, which teaches “a sensor for
measuring a parameter of a motor” as recited in claim 1. Pet. 32–33; Ex.
1008, 2, 3, 5. Moreover, the cited portions of Lamm relied upon by
Petitioner teach if a threshold value is exceeded for the result of at least one
derivative because of clamping of an obstacle, this leads to the component
being switched off and/or reversal of the direction of movement, which
teaches “varies in response to a resistance to motion” as recited in claim 1.
Pet. 32–33; Ex. 1008, 2, 3, 5.
In addition, the cited portions of Itoh relied upon by Petitioner
disclose circuit 30 detects a ripple current corresponding to the rotational
frequency of motor 20, and outputs a motor pulse signal to CPU 34 and
counter 36 of controller 32, which teaches “a sensor for measuring a
parameter of a motor” as recited in claim 1. Pet. 15; Ex. 1008, 8:34–43.
Moreover, the cited portions of Itoh relied upon by Petitioner disclose CPU
34 detects if an obstacle is stuck between the window frame and window and
determines whether to descend or interrupt the motion of the window, which
teaches “varies in response to a resistance to motion” as recited in claim 1.
Pet. 11, 14–15; Ex. 1006, 8:49–9:62, Figs. 6–8.
The parties’ next dispute is directed to whether it was obvious to
combine Lamm and Itoh. We begin with Petitioner’s contentions.
According to Petitioner, a person of ordinary skill in the art would
have found it obvious to combine Lamm’s apparatus with a programmable
controller and Itoh’s first-in-first-out memory in order to achieve a cost-
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efficient and fast way of customizing and updating the operations of Lamm’s
controller. Pet. 30–31.
Patent Owner contends Lamm and Itoh cannot be combined. PO
Resp. 13 (citing Ex. 2001 ¶¶ 90–91). Lamm and Itoh allegedly cannot be
combined because Lamm uses a derivative-based obstacle detection scheme
that calculates derivatives and thresholds whereas Itoh’s speed-based
obstacle detection scheme does not calculate derivatives and thresholds. Ex.
2001 ¶ 90. In addition, Patent Owner contends Itoh does not use a Hall-
effect sensor and is prone to experiencing false positives, whereas Lamm’s
system uses a Hall-effect sensor and has high detection reliability. Id. at
¶ 91.
We are not persuaded by Patent Owner’s argument that Lamm and
Itoh cannot be combined. As explained supra, in the discussion of Lamm
and Itoh, Petitioner identified a teaching to combine or modify components.
Thus, Petitioner provided articulated reasoning with rational underpinnings
to support the motivation to combine the teachings of Lamm and Itoh (see In
re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
Based on our claim construction discussed supra in Part III.A, Lamm
and Itoh’s teachings discussed supra, the articulated reasoning to combine
Lamm and Itoh, and the record before us, we conclude that Petitioner has
established by a preponderance of evidence that claim 1 is unpatentable over
the combination of Lamm and Itoh.
2. Claim 6
The parties’ dispute is directed to “immediate past measurements . . .
within a forty millisecond interval” (claim 6). We begin with Petitioner’s
contentions regarding this limitation.
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Petitioner contends claim 6 is obvious over Lamm and Itoh. Pet. 36.
Petitioner contends the 40 millisecond timeframe would have been obvious
to one of ordinary skill in the art to perform speed measurements at forty
millisecond intervals or faster. Pet. 12–13, 17, 31, 36; Reply 10–11.
Petitioner contends a 1.2 millisecond pulse period is an example
within the scope of Itoh for more than 33 cycles of the motor pulse signal
(“Tp”) samples to elapse in 40 milliseconds. Pet. 12–13, 17, 31, 36; Reply
10–11. Moreover, Petitioner contends 40 milliseconds would have been an
obvious design choice to a person having ordinary skill in the art because 40
milliseconds is not critical and does not produce a new and unexpected
result that is different in kind. Reply 10–11.
Patent Owner contends that the design choice rationale does not apply
because Petitioner fails to present: 1) evidence for why one of skill in the art
would choose a fixed time window instead of a number of samples; and 2)
how 40 milliseconds might be derived. PO Resp. 16–21.
Because a 1.2 millisecond pulse period is an example within the scope
of Itoh for more than 33 Tp samples to elapse in 40 milliseconds and one of
ordinary skill in the art reading the Specification of the ’802 patent would
understand there is no new and unexpected result of 40 milliseconds that is
different in kind, Patent Owner’s arguments are not persuasive.
Lastly, we are not persuaded by Patent Owner’s argument that Lamm
and Itoh are not combinable because as stated above, we determine that
Petitioner’s contentions for combining Lamm and Itoh are reasonable and
supported by the record. See supra Part V.A.1; PO Resp. 21.
Accordingly, Petitioner has shown by a preponderance of the evidence
that claim 6 is an obvious design choice.
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3. Claims 7–9
The parties’ first dispute is directed to the limitation “an obstacle
detect threshold based on motor speed of movement detected during a
present run of said motor driven element” (claim 7). We begin with
Petitioner’s contentions regarding this limitation.
According to Petitioner, claim 7’s “an obstacle detect threshold based
on motor speed of movement detected during a present run of said motor
driven element” embraces Itoh’s collision identification when the currently
sensed speed, Tp, is greater than a threshold (e.g., the product of a constant,
, and an average of the immediate prior number of speed values detected
during a present run, Tm). Pet. 20–21; Ex. 1006, 10:33–11:15.
Patent Owner contends Lamm and Itoh fail to teach or suggest this
limitation because Lamm pre-specifies thresholds instead of calculating the
thresholds during operation. PO Resp. 26–30 (citing Ex. 1008, 4–5). In
addition, Patent Owner contends Lamm’s first derivative of speed with
respect to travel path is the gradient of speed with respect to distance, rather
than acceleration. Id. at 29. Patent Owner contends Petitioner does not rely
on Itoh for teaching this limitation, Itoh does not teach this limitation, and
Lamm and Itoh cannot be combined. PO Resp. 30.
We are not persuaded by Patent Owner’s argument. At the outset,
Petitioner sufficiently explains how Lamm and Itoh are combinable. See
supra Part V.A.1. In addition, Petitioner does rely on Itoh to teach this
feature so Patent Owner’s arguments regarding Lamm are moot. Pet. 20–21.
Specifically, the cited portions of Itoh relied upon by Petitioner teach
collision identification when the currently sensed speed, Tp, is greater than a
threshold (e.g., the product of a constant, , and an average of the immediate
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prior number of speed values detected during a present run, Tm), which
teaches the limitation “an obstacle detect threshold based on motor speed of
movement detected during a present run of said motor driven element” as
recited in claim 7. Pet. 20–21; Ex. 1006, 10:33–11:15. Patent Owner
provides no separate arguments for claims 8 and 9, which depend from claim
7. PO Resp. 57.
Accordingly, we conclude that Petitioner has established by a
preponderance of evidence that claims 7–9 are unpatentable over the
combination of Lamm and Itoh.
4. Claims 15 and 16
The parties’ first dispute is directed to the “travel path” limitation.
We begin with Petitioner’s contentions regarding this limitation.
According to Petitioner, the claim 15 limitation “a sensor for
generating speed signals representative of the window or panel speed . . .
along a travel path” embraces Lamm’s sensor 13 detecting a rotary speed of
motor 10 and relaying the detected speed to signal processing device 11.
Pet. 41–42; Ex. 1008, 2, 3.
Patent Owner contends Lamm and Itoh fail to teach or suggest
“[entire] travel path” (emphasis added). We are not persuaded by Patent
Owner’s contention that Lamm and Itoh fails to teach or suggest “travel
path” because we construed “travel path” to include a portion of the travel
path. See supra Part III.B.
Here, the cited portions of Lamm relied upon by Petitioner teach
sensor 13 detecting a rotary speed of motor 10 and relaying the detected
speed to signal processing device 11, which teaches “a sensor for generating
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speed signals representative of the window or panel speed . . . along a travel
path” as recited in claim 15. Pet. 41–42; Ex. 1008, 2, 3.
The parties’ next dispute is directed to whether the “logic unit” recited
in claim 15 invokes 35 U.S.C. § 112, sixth paragraph. We begin with
Petitioner’s contentions regarding this limitation.
According to Petitioner, the claim 15 limitation “logic unit for making
a comparison . . . and generating a control output if an obstacle is detected
based on said comparison” embraces Itoh’s CPU 34 in controller 32 that
identifies collisions when the currently sensed speed, Tp, is greater than a
threshold (e.g., the product of a constant, , and an average of the immediate
prior number of speed values detected during a present run, Tm). Pet. 19–21,
24, 37, 43; Ex. 1006, 10:33–11:15, Figs. 5–11.
We are not persuaded by Patent Owner’s argument that Itoh fails to
disclose, teach, or suggest the limitation “logic unit” because we construed
the claim 15 limitation “logic unit” as not invoking 112, sixth paragraph.
See supra Part III.D.
The cited portions of Itoh relied upon by Petitioner teach CPU 34 in
controller 32 that identifies collisions when the currently sensed speed, Tp, is
greater than a threshold (e.g., the product of a constant, , and an average of
the immediate prior number of speed values detected during a present run,
Tm), which teaches “logic unit for making a comparison . . . and generating a
control output if an obstacle is detected based on said comparison” as recited
in claim 15. Pet. 19–21, 24, 37, 43; Ex. 1006, 10:33–11:15; Figs. 5–11.
Lastly, we are not persuaded by Patent Owner’s argument that Lamm
and Itoh are not combinable because as stated above, we determine that
Petitioner’s contentions for combining Lamm and Itoh are reasonable and
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supported by the record. See supra Part V.A.1; PO Resp. 56. Patent Owner
provides no separate arguments for claim 16, which depends from claim 15.
PO Resp. 57.
Based on our claim construction discussed supra in part III.D, Itoh’s
disclosure discussed supra, and the record before us, we conclude that
Petitioner has established by a preponderance of evidence that claims 15 and
16 are unpatentable over the combination of Lamm and Itoh.

B. Challenges Relying on Duhame and Kinzl
For reasons stated below, we conclude, based on a preponderance of
the evidence, that claims 1, 7–9, 11, 15, and 16 are unpatentable over
Duhame and Kinzl.
1. Claim 1
The parties’ first dispute is directed to whether Duhame and Kinzl
teach the limitation “a sensor for measuring a parameter of a motor . . . that
varies in response to a resistance to motion” as recited in claim 1. We begin
with Petitioner’s contentions regarding this limitation.
According to Petitioner, the claim 1 limitation “a sensor for measuring
a parameter of a motor . . . that varies in response to a resistance to motion”
embraces Duhame’s motor shaft rotation pulse detection that measures the
speed of an object travelling and an obstruction detector stopping the motor
when the current torque is greater than the torque limit. Pet. 48; Ex. 1009,
Abstract, 2:3–9, 10:27–35.
Patent Owner argues the correct construction for “a sensor for
measuring a parameter of a motor . . . that varies in response to a resistance
to motion” (claim 1) is “a sensor that measures a magnitude of motor
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current.” See supra Part III.A. As a result, Patent Owner argues Duhame
and Kinzl do not teach or suggest this limitation because Duhame and Kinzl
merely sense motor speed. PO Resp. 14–15.
We are not persuaded by Patent Owner’s argument that Duhame and
Kinzl fail to teach or suggest “a sensor for measuring a parameter of a motor
. . . that varies in response to a resistance to motion.” At the outset, we
construed the claim 1 limitation “sensor for measuring a parameter of a
motor . . . that varies in response to a resistance to motion” as “any sensor
that measures any motor parameter that varies as a result of resistance to
motion” rather than as “a sensor that measures a magnitude of motor
current.” See supra Part III.A.
Also, the cited portions of Duhame relied upon by Petitioner teach
motor shaft rotation pulse detection that measures the speed of an object
travelling and an obstruction detector stopping the motor when the current
torque is greater than the torque limit, which teaches “a sensor for measuring
a parameter of a motor . . . that varies in response to a resistance to motion”
as recited in claim 1. Pet. 48; Ex. 1009, Abstract, 2:3–9, 10:27–35.
The parties’ next dispute is directed to whether it was obvious to
combine Duhame and Kinzl. We begin with Petitioner’s contentions.
According to Petitioner, a person of ordinary skill in the art would
find it obvious to combine Duhame’s obstacle detection in door closing
systems with Kinzl’s obstacle detection system to control motor vehicle
windows or panels. Pet. 46–47.
Patent Owner contends Duhame and Kinzl cannot be combined
because Duhame controls garage doors whereas Kinzl controls car windows
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with different acceptable industry standards. PO Resp. 15 (citing Ex. 2001
¶¶ 110–120).
We are not persuaded by Patent Owner’s argument that Duhame and
Kinzl cannot be combined. As explained supra, in the discussion of
Duhame and Kinzl, Petitioner identified a teaching to combine or modify
components. Thus, Petitioner provided articulated reasoning with rational
underpinnings to support the motivation to combine the teachings of
Duhame and Kinzl. See In re Kahn, 441 F.3d at 988.
Based on our claim construction discussed supra in Part III.A,
Duhame and Kinzl’s teachings discussed supra, the articulated reasoning to
combine Duhame and Kinzl, and the record before us, we conclude that
Petitioner has established by a preponderance of the evidence that claim 1 is
unpatentable over the combination of Duhame and Kinzl.
2. Claims 7–9
The parties’ first argument focuses on the “travel path” limitation.
We begin with Petitioner’s contentions regarding this limitation.
According to Petitioner, the claim 7 limitation “a movement sensor
for monitoring movement of the object . . . along a travel path” embraces
Duhame’s Hall-effect sensor 95 that measures the speed of an object
travelling and an obstruction detector stopping the motor when the current
torque is greater than the torque limit. Pet. 52; Ex. 1009, Abstract, 2:3–9,
10:27–35. In addition, Petitioner contends claim 7’s limitation “a movement
sensor for monitoring movement of the object . . . along a travel path”
embraces Kinzl’s speed sensing of a window and turning a motor off and
opening the window in response to an obstacle being stuck. Pet. 18–19; Ex.
1007, 1:53–55, 2:17–28, 3:21–26.
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Patent Owner contends Duhame and Kinzl fail to teach or suggest
“entire travel path” (emphasis added). PO Resp. 23–25. We are not
persuaded by Patent Owner’s contention that Duhame and Kinzl fail to teach
or suggest “travel path” because we construed “travel path” to include a
portion of the travel path. See supra Part III.B.
Here, the cited portions of Duhame relied upon by Petitioner teach
Hall effect sensor 95 that measures the speed of an object travelling and an
obstruction detector stopping the motor when the current torque is greater
than the torque limit, which teaches “a movement sensor for monitoring
movement of the object . . . along a travel path” as recited in claim 7. Pet.
52; Ex. 1009, Abstract, 2:3–9, 10:27–35. Moreover, the cited portions of
Kinzl relied upon by Petitioner teach speed sensing of a window and turning
a motor off and opening the window in response to an obstacle being stuck,
which teaches “a movement sensor for monitoring movement of the object .
. . along a travel path” as recited in claim 7. Pet. 18–19; Ex. 1007, 1:53–55,
2:17–28, 3:21–26.
Lastly, we are not persuaded by Patent Owner’s argument that
Duhame and Kinzl are not combinable because as stated above, we
determine Petitioner’s reasons for combining Duhame and Kinzl are
reasonable and supported by the record. See supra Part V.B.1; PO Resp. 25.
Patent Owner provides no separate arguments for claims 8 and 9, which
depend from claim 7. PO Resp. 57.
Accordingly, we conclude that Petitioner has established by a
preponderance of the evidence that claims 7–9 are unpatentable over the
combination of Duhame and Kinzl.
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3. Claim 11
The parties’ first dispute is directed to the limitation “in response to a
specified input the controller conducts a calibration motor energization
sequence to determine parameters of object.” We begin with Petitioner’s
contentions regarding this limitation.
According to Petitioner, the claim 11 limitation “in response to a
specified input the controller conducts a calibration motor energization
sequence to determine parameters of object” embraces Duhame’s
pushbutton switch 30 input that controls an object’s movements and
sets/resets opening limits. Pet. 57; Ex. 1009, 17:1–18:34, 26:3–30.
Patent Owner contends Duhame fails to teach a specified user input
that performs an open-close-open sequence or a close-open-close sequence
because Duhame merely teaches separate user inputs to adjust the open/close
positions. PO Resp. 38–39, 44.
We are not persuaded by Patent Owner’s argument that Duhame and
Kinzl fail to teach “in response to a specified input the controller conducts a
calibration motor energization sequence to determine parameters of object.”
As explained above, we construed the claim 11 limitation “in response to a
specified input the controller conducts a calibration motor energization
sequence to determine parameters of object” according to the ordinary and
customary meaning rather than as “single specified input” and “by moving
an object from fully closed position to a fully open position and back to the
fully closed position to determine movement range parameters of [the]
object” (emphasis added). See supra Part III.C.
Moreover, the cited portions of Duhame relied upon by Petitioner
teach a pushbutton switch 30 input that controls an object’s movements and
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sets/resets opening limits, which teaches the limitation “in response to a
specified input the controller conducts a calibration motor energization
sequence to determine parameters of object.” Pet. 57; Ex. 1009, 17:1–18:34,
26:3–30.
Lastly, we are not persuaded by Patent Owner’s argument that
Duhame and Kinzl are not combinable because as stated above, we
determine Petitioner’s contentions for combining Duhame and Kinzl are
reasonable and supported by the record. See supra Part V.B.1; PO Resp. 44.
Accordingly, we conclude that Petitioner has established by a
preponderance of the evidence that claim 11 is unpatentable over the
combination of Duhame and Kinzl.
4. Claims 15 and 16
The parties’ dispute is directed to the “travel path” limitation, whether
the “logic unit” recited in claim 15 invokes 35 U.S.C. § 112, sixth
paragraph, and whether Duhame and Kinzl are combinable.
At the outset, we are not persuaded by Patent Owner’s contention that
Duhame and Kinzl fails to teach or suggest “travel path” because we
construed “travel path” to include a portion of the travel path and Duhame
and Kinzl teach “travel path” as explained in the claim 7 analysis. See supra
Part III.B and Part V.B.2; PO Resp. 56–57. In addition, as stated above,
Duhame and Kinzl are combinable. See supra Part V.B.1.
Moreover, according to Petitioner, the claim 15 limitation “logic unit
for making a comparison . . . and generating a control output if an obstacle is
detected based on said comparison” embraces Duhame’s obstruction
detection using circuit 100 that continuously determines a rate of change of
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motor speed and stops the motor when the rate of change exceeds a torque
limit. Pet. 53–55, 59; Ex. 1009, 3:37–41, 30:61–68, 36:63–37:2.
We are not persuaded by Patent Owner’s argument that Duhame and
Kinzl fail to disclose, teach, or suggest the limitation “logic unit” because
we construed the claim 15 limitation “logic unit” as not invoking 112, sixth
paragraph. See supra Part III.D; PO Resp. 56–57.
The cited portions of Duhame relied upon by Petitioner teach
obstruction detection using circuit 100 that continuously determines a rate of
change of motor speed and stops the motor when the rate of change exceeds
a torque limit, which teaches “logic unit for making a comparison . . . and
generating a control output if an obstacle is detected based on said
comparison” as recited in claim 15. Pet. 53–55, 59; Ex. 1009, 3:37–41,
30:61–68, 36:63–37:2. Patent Owner provides no separate arguments for
claim 16, which depends from claim 15. PO Resp. 57.
Based on our claim construction discussed supra in Part III.D,
Duhame’s disclosure discussed supra, and the record before us, we conclude
that Petitioner has established by a preponderance of the evidence that
claims 15 and 16 are unpatentable over the combination of Duhame and
Kinzl.

C. Challenges Relying on Itoh, Kinzl, and Jones
For reasons stated below, we conclude, based on a preponderance of
the evidence, that claim 11 is unpatentable over the combination of Itoh,
Kinzl, and Jones.
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Claim 11
The parties’ first dispute is directed to the limitation “in response to a
specified input the controller conducts a calibration motor energization
sequence to determine parameters of object.” We begin with Petitioner’s
contentions regarding this limitation.
According to Petitioner, the claim 11 limitation “in response to a
specified input the controller conducts a calibration motor energization
sequence to determine parameters of object” embraces Jones’ enabling the
limits of a door’s travel to be set within the memory of a door controller.
Pet. 25–27; Ex. 1010, 5:21–36, 5:61–6:26.
Patent Owner contends Jones fails to teach a specified user input that
performs an open-close-open sequence or a close-open-close sequence
because Jones merely teaches separate user inputs to adjust the limit settings.
PO Resp. 33–35.
We are not persuaded by Patent Owner’s argument that Itoh, Kinzl,
and Jones fail to teach “in response to a specified input the controller
conducts a calibration motor energization sequence to determine parameters
of object.” As explained above, we construed the claim 11 limitation “in
response to a specified input the controller conducts a calibration motor
energization sequence to determine parameters of object” according to the
ordinary and customary meaning rather than as “single specified input” and
“by moving an object from fully closed position to a fully open position and
back to the fully closed position to determine movement range parameters of
[the] object” (emphasis added). See supra Part III.C.
Moreover, the cited portions of Jones relied upon by Petitioner teach
enabling the limits of a door’s travel to be set within the memory of a door
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controller, which teaches the limitation “in response to a specified input the
controller conducts a calibration motor energization sequence to determine
parameters of object.” Pet. 25–27; Ex. 1010, 5:21–36, 5:61–6:26.
The parties’ next dispute is directed to whether Jones can be
combined with Itoh and Kinzl. We begin with Petitioner’s contentions
regarding this issue.
According to Petitioner, a person having ordinary skill in the art
would have found it obvious to combine Itoh and Kinzl’s obstacle detection
in an automobile window with Jones’s calibrating obstacle detection in door
closing systems to enable limits of a door’s travel path to be set within the
memory of the door’s controller. Pet. 27; Ex. 1010, 5:21–36, 5:61–6:26.
Patent Owner argues it would not have been obvious to combine Itoh
and Kinzl with Jones because Jones’ roller garage door is fundamentally
different than the control requirements for automobile windows and
sunroofs.
We are not persuaded by Patent Owner’s argument against combining
Itoh, Kinzl, and Jones. As explained supra, in the discussion of Itoh, Kinzl,
and Jones, Petitioner identified a teaching to combine or modify
components. Thus, Petitioner provided articulated reasoning with rational
underpinnings to support the motivation to combine the teachings of Itoh,
Kinzl, and Jones. See In re Kahn, 441 F.3d at 988.
Accordingly, we conclude that Petitioner has established by a
preponderance of the evidence that claim 11 is unpatentable over the
combination of Itoh, Kinzl, and Jones.

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D. Challenges Relying on Lamm, Itoh, and Duhame
For reasons stated below, we conclude, based on a preponderance of
the evidence, that claim 11 is unpatentable over the combination of Lamm,
Itoh, and Duhame.
Claim 11
The parties’ dispute is directed to the limitation “in response to a
specified input the controller conducts a calibration motor energization
sequence to determine parameters of object” and whether it was obvious to
combine Duhame with Lamm and Itoh. We begin with Petitioner’s
contentions.
At the outset, we discussed above how Duhame teaches the limitation
“in response to a specified input the controller conducts a calibration motor
energization sequence to determine parameters of object.” See supra Part
V.B.3.
According to Petitioner, a person of ordinary skill in the art would
find it obvious to combine Duhame’s obstacle detection in door closing
systems with Lamm and Itoh’s obstacle detection system to control motor
vehicle windows or panels. Pet. 43–44.
Patent Owner alleges Duhame cannot be combined with Lamm and
Itoh because Duhame controls garage doors whereas Lamm and Itoh control
car windows with different acceptable industry standards. PO Resp. 39–44.
We are not persuaded by Patent Owner’s argument that Lamm, Itoh,
and Duhame cannot be combined. As explained supra, in the discussion of
Lamm, Itoh, and Duhame, Petitioner identified a teaching to combine or
modify components. Thus, Petitioner provided articulated reasoning with
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rational underpinnings to support the motivation to combine the teachings of
Lamm, Itoh, and Duhame. See In re Kahn, 441 F.3d at 988.
Accordingly, we conclude that Petitioner has established by a
preponderance of the evidence that claim 11 is unpatentable over the
combination of Lamm, Itoh, and Duhame.

E. Challenges Relying on Itoh and Kinzl
For reasons stated below, we conclude, based on a preponderance of
the evidence, that claims 15 and 16 are unpatentable over the combination of
Itoh and Kinzl.
Claims 15 and 16
The parties’ dispute is directed to the “travel path” limitation, whether
the “logic unit” recited in claim 15 invokes 35 U.S.C. § 112, sixth
paragraph, and whether Itoh and Kinzl are combinable.
We discussed above how Kinzl teaches the “travel path” limitation.
See supra Part V.B.2. In addition, we discussed how Itoh teaches the “logic
unit” limitation. See supra Part V.A.3.
According to Petitioner, a person of ordinary skill in the art would
find it obvious to combine Itoh’s obstacle detection in automobile window
systems with Kinzl’s similar obstacle detection in automobile window
systems as a matter of routine design choice. Pet. 12.
Patent Owner alleges Itoh cannot be combined with Kinzl because
Kinzl requires a Hall-effect sensor, whereas Itoh uses a commutation pulse
counter. PO Resp. 51–53.
We are not persuaded by Patent Owner’s argument that Itoh and Kinzl
cannot be combined because both Itoh and Kinzl use a form of detection to
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determine if an obstacle is present. As explained supra, in the discussion of
Itoh and Kinzl, Petitioner identified a teaching to combine or modify
components. Thus, Petitioner provided articulated reasoning with rational
underpinnings to support the motivation to combine the teachings of Itoh,
and Kinzl. See In re Kahn, 441 F.3d at 988.
Accordingly, we conclude that Petitioner has established by a
preponderance of the evidence that claims 15 and 16 are unpatentable over
the combination of Itoh and Kinzl.

V. OTHER ARGUMENTS
A. Expert not Familiar with the State of the Art
Patent Owner 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. 4–8.
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.

B. Enablement of References
Patent Owner contends Lamm, Itoh, and Kinzl are non-enabling
references that would require undue experimentation to make or use because
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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, Patent Owner 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. PO Resp. 4.
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.”).

VI. MOTION TO EXCLUDE
Petitioner seeks to exclude Patent Owner’s evidence in Exhibits 2001,
2004, 2005, 2007–09, 2013, 2014, 2018, 2032, and 2033 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. Motion 4–15. We dismiss the Motion as moot.
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Although we briefly cite Dr. Ehsani’s Declaration (Ex. 2001) in this
decision, we merely cite paragraphs 90, 91, and 110–120 to determine what
Patent Owner is arguing and we did not find paragraphs 90, 91, and 110–120
of Dr. Ehsani’s Declaration to be persuasive. Moreover, we did not rely on
Exhibits 2004, 2005, 2007–2009, 2013, 2014, 2018, 2032, and 2033 in this
decision. Accordingly, we dismiss the Motion as moot.
VII. CONCLUSIONS
For the reasons set forth above, we are persuaded that Petitioner has
shown by a preponderance of the evidence that:
(1) claims 1, 6–9, 15, and 16 are unpatentable under 35 U.S.C.
§ 103(a) as obvious over Lamm and Itoh;
(2) claims 1, 7–9, 11, 15, and 16 are unpatentable under
35 U.S.C. § 103(a) as obvious over Duhame and Kinzl;
(3) claim 11 is unpatentable under 35 U.S.C. § 103(a) as
obvious over Itoh, Kinzl, and Jones;
(4) claim 11 is unpatentable under 35 U.S.C. § 103(a) as
obvious over Lamm, Itoh, and Duhame; and
(5) claims 15 and 16 are unpatentable under 35 U.S.C. § 103(a)
as obvious over Itoh and Kinzl.

VIII. ORDER
Accordingly, it is
ORDERED that Petitioner’s Motion to Exclude is dismissed as moot;
FURTHER ORDERED that claims 1, 6–9, 11, 15, and 16 of U.S.
Patent 7,579,802 have been shown to be unpatentable; and
FURTHER ORDERED that because this is a Final Written Decision,
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parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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PETITIONER:

Charles H. Sanders
Goodwin Procter LLP
csanders@goodwinprocter.com

Timothy J. Rousseau
Goodwin Procter LLP
trousseau@ goodwinprocter.com

Phong T. Dinh
Goodwin Procter LLP
pdinh@ goodwinprocter.com

PATENT OWNER:

Monte L. Falcoff
Harness, Dickey & Pierce, P.L.C.
mlfalcoff@hdp.com