throbber
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Parrot S.A. and Parrot, Inc.
`
`Petitioners,
`
`v.
`
`Drone Technologies, Inc.
`
`Patent Owner
`
`U.S. Patent No. 7,584,071
`Filed:
`March 19, 2008
`Issued:
`September 1, 2009
`Inventor: Yu-Tuan Lee
`Assignee: Drone Technologies, Inc.
`Title: Remote-Controlled Motion Apparatus With Sensing Terrestrial Magnetism
`And Remote Control Apparatus Therefor
`
`
`
`
`Mail Stop PATENT BOARD, PTAB
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,584,071
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET SEQ.
`
`
`
`

`

`
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II. MANDATORY NOTICES ............................................................................. 3
`
`A.
`
`B.
`
`C.
`
`D.
`
`Real Party-In-Interest ............................................................................ 3
`
`Related Matters ...................................................................................... 3
`
`1.
`
`2.
`
`Related Litigation ........................................................................ 3
`
`Related Applications ................................................................... 4
`
`Lead and Back-Up Counsel ................................................................... 4
`
`Service Information ............................................................................... 4
`
`III. PAYMENT OF FEES ..................................................................................... 5
`
`IV. REQUIREMENTS FOR INTER PARTES REVIEW ...................................... 5
`
`A. Grounds for Standing ............................................................................ 5
`
`B.
`
`Identification of Challenge .................................................................... 5
`
`1.
`
`2.
`
`The Specific Art and Statutory Ground(s) on Which the
`Challenge is Based ...................................................................... 6
`
`How the Construed Claims Are Unpatentable Under the
`Statutory Grounds Identified in 37 C.F.R. § 42.204(B)(2) and
`Supporting Evidence ................................................................... 7
`
`V.
`
`FACTUAL BACKGROUND.......................................................................... 8
`
`A. Declaration Evidence ............................................................................ 8
`
`B.
`
`C.
`
`D.
`
`E.
`
`The State of the Art ............................................................................... 8
`
`The Person of Ordinary Skill in the Art ..............................................11
`
`The ’071 Patent ...................................................................................11
`
`Prosecution History of the ’071 Patent ...............................................15
`
`i
`
`

`

`
`
`VI. BROADEST REASONABLE CONSTRUCTION .......................................15
`
`A.
`
`B.
`
`“difference of motion” ........................................................................17
`
`“information of the remote controller’s motion in the 3D space” ......17
`
`VII. REPRESENTATIVE PROPOSED REJECTIONS AND SHOWING THAT
`PETITIONER IS LIKELY TO PREVAIL ....................................................18
`
`A.
`
`Claims 1-5 and 10-14 Are Anticipated Under 35 U.S.C. § 102(b) by
`Smith....................................................................................................18
`
`1.
`
`2.
`
`3.
`
`The “comparison” as required by claim 2 is inherent in Smith 26
`
`The “difference of motion” as required by claim 4 is inherent in
`Smith .........................................................................................27
`
`Conversion to “baseband” as required by claim is inherent in
`Smith .........................................................................................28
`
`B. Whether or Not Anticipated, Claims 2, 4, and 10 Are Rendered
`Obvious Under 35 U.S.C. § 103(a) by Smith Taken in View of the
`Knowledge of a Person of Ordinary Skill in the Art ...........................28
`
`C.
`
`D.
`
`E.
`
`F.
`
`Claims 6 and 7 Are Rendered Obvious Under 35 U.S.C. § 103(a) by
`Smith Taken in View of Barr ..............................................................29
`
`Claims 8 and 9 Are Rendered Obvious Under 35 U.S.C. § 103(a) by
`Smith Taken in View of Fouche .........................................................32
`
`Claim 15 is Rendered Obvious Under 35 U.S.C. § 103(a) by Smith
`Taken in View of Spirov and/or Bathiche and/or Shkolnikov ............35
`
`Claims 1-3, 5, and 10-13 Are Anticipated Under 35 U.S.C. § 102(b)
`by Potiron ............................................................................................41
`
`1.
`
`2.
`
`“comparison” as required by Claim 2 is Inherent in Potiron ....45
`
`Conversion to “baseband” as required by Claim 10 is Inherent
`in Potiron ...................................................................................46
`
`G. Whether or Not Anticipated, Claims 2 and 10 Are Rendered Obvious
`Under 35 U.S.C. § 103(a) by Potiron Taken in View of the
`Knowledge of a Person of Ordinary Skill in the Art ...........................47
`
`ii
`
`

`

`
`
`H.
`
`I.
`
`J.
`
`K.
`
`L.
`
`Claim 4 is Rendered Obvious Under 35 U.S.C. § 103(a) by Potiron, or
`Potiron in View of Fouche ..................................................................47
`
`Claims 6 and 7 Are Rendered Obvious Under 35 U.S.C. § 103(a) by
`Potiron Taken in View of Barr ............................................................49
`
`Claims 8 and 9 Are Rendered Obvious Under 35 U.S.C. § 103(a) by
`Potiron Taken in View of Fouche .......................................................51
`
`Claim 14 is Rendered Obvious Under 35 U.S.C. § 103(a) by Potiron
`Taken in View of Smith, Spirov, Bathiche, or Shkolnikov ................53
`
`Claim 15 is Rendered Obvious Under 35 U.S.C. § 103(a) by Potiron
`Taken in View of Spirov and/or Bathiche and/or Shkolnikov ............54
`
`VIII. CONCLUSION ..............................................................................................59
`
`
`
`
`
`iii
`
`

`

`
`
`EXHIBIT LIST
`
`Exhibit #
`
`Reference Name
`
`Ex. 1001
`
`U.S. Patent No. 7,584,071 (the ’071 Patent)
`
`Ex. 1002
`
`U.S. Patent No. 5,043,646 (“Smith”)
`
`Ex. 1003
`
`French Patent Publication No. 2,789,765 to Potiron
`
`Ex. 1004
`
`Certified English Translation of French Patent No.
`2,789,765 (“Potiron”)
`
`Ex. 1005
`
`U.S. Patent No. 7,219,861 (“Barr”)
`
`Ex. 1006
`
`U.S. Patent No. 6,751,529 (“Fouche”)
`
`Ex. 1007
`
`U.S. Patent Application Publication No. 2006/0144994 to
`Spirov (“Spirov”)
`
`Ex. 1008
`
`U.S. Pat. No. 7,145,551 (“Bathiche”)
`
`Ex. 1009
`
`U.S. Pat. Pub. No. 2004/0263479 (“Shkolnikov”)
`
`Ex. 1010
`
`Expert Declaration of Dr. Raffaello D’Andrea, PhD, with
`Attachments A-C
`
`Ex. 1010, Att. A U.S. Patent No. 613,809 to Tesla (“Tesla”)
`
`Ex. 1010, Att. B U.S. Patent No. 3,101,569 to Giardina (“Giardina”)
`
`Ex. 1010, Att. C U.S. Patent No. 8,072,417 to Jouanet (“Jouanet”)
`
`Ex. 1011
`
`Claim Chart Demonstrating Invalidity of the ’071 Patent
`
`
`
`
`
`iv
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,584,071
`
`I.
`
`INTRODUCTION
`
`Petitioners Parrot S.A and Parrot,
`
`Inc.
`
`(collectively, “Parrot” or
`
`“Petitioners”) respectfully request inter partes review for claims 1-15 of U.S.
`
`Patent No. 7,584,071 (“the ’071 Patent,” attached as Ex. 1001) in accordance with
`
`35 U.S.C. §§ 311–319 and 37 C.F.R. § 42.100 et seq. Each claim of the ’071
`
`Patent is anticipated under 35 U.S.C. § 102 or obvious under 35 U.S.C. § 103. The
`
`relevant prior art includes references not cited during the prosecution of the ’071
`
`Patent. Claim charts and the declaration of Prof. Raffaello D’Andrea are submitted
`
`in and with this petition, respectively.
`
`The ’071 Patent is generally directed to a remote-controlled motion
`
`apparatus with sensing terrestrial magnetism and remote control apparatus therefor.
`
`Ex. 1001, 1:18-20.1 The intent of the ’071 Patent is to allow a user to guide a
`
`remotely controlled aircraft by moving a remote control. In theory, magnetometers
`
`on the remote control would track the movement of the remote control, the remote
`
`control would send a radio signal corresponding to that movement to the remotely
`
`controlled aircraft, and the remotely controlled aircraft would use its own
`
`magnetometers to move according to the instruction.
`
`
`1 Citations to column and line references within patents in this petition use
`
`citation format “[column/page]:[line].”
`
`1
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,584,071
`
`The applicant for the ’071 Patent also filed another patent application on the
`
`same day that he filed the application for the ’071 Patent. This other application
`
`ultimately issued as U.S. Patent No. 8,106,748 (“the ’748 Patent”). The ’748
`
`Patent teaches the use of accellerometers instead of magnetometers to sense motion
`
`of the remote control and hobby airplane. Otherwise, the teachings of the ’748
`
`Patent are substantially identical to those of the ’748 Patent.
`
`In practice, the control system taught by the ’071 Patent could not work for
`
`its intended purpose. That is because magnetometers, used alone, could not track
`
`all possible movement of a remote control. When used alone, magnetometers
`
`determine only limited positional information that is susceptible to ambiguities.
`
`Without additional technology not taught by the ’071 Patent, it would not be
`
`possible to fly a remotely controlled aircraft using magnetometers alone to sense
`
`and guide movement. At best, magnetometers could be used to sense some motion
`
`in space in some circumstances, and that sensed motion could be used in
`
`combination with additional undisclosed technology to assist in the control of the
`
`aircraft.
`
`Apart from the fact that the ’071 Patent does not teach what it attempts to
`
`teach, what the ’071 Patent discloses and claims is not new. Using magnetometers
`
`both to sense movement in a remote control and to assist a remotely controlled
`
`vehicle to move in accordance with the movement of a remote control has long
`
`2
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,584,071
`
`been known and taught in the prior art. Like the ’071 Patent, U.S. Patent No.
`
`5,043,646 (“Smith,” Ex. 1002) teaches remote control of a vehicle using
`
`magnetometers to sense orientation in both the remote control and the vehicle
`
`itself. Similarly, French Patent No. 2,789,765 (“Potiron”, Ex. 1003; certified
`
`English translation at Ex. 1004) teaches the use of magnetometers to sense
`
`movement in a remote control and to guide a vehicle, such as a boat, corresponding
`
`to the movement of the remote control.
`
`To the extent Smith and Potiron do not expressly disclose certain limitations
`
`of the dependent claims, those limitations are disclosed in related prior art and
`
`would have been obvious to combine with Smith or Potiron. Indeed, these
`
`additional limitations address routine design choices and details.
`
`II. MANDATORY NOTICES
`
`Pursuant to 37 C.F.R. § 42.8(a)(1), Parrot provides the following mandatory
`
`disclosures.
`
`A. Real Party-In-Interest
`
`Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner certifies that Parrot S.A (174
`
`Quai de Jemmapes, 75010 Paris, France) and Parrot, Inc. (28446 Franklin Road,
`
`Southfield, MI 48034-5504) are the real parties-in-interest.
`
`B. Related Matters
`
`1.
`
`Related Litigation
`
`3
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,584,071
`
`Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioners state that the ’071 Patent is
`
`involved in the litigation styled Drone Technologies, Inc. v. Parrot S.A. and
`
`Parrot, Inc., No. 2:05-mc-02025 (W.D. Pa., filed Jan. 24, 2014). This litigation is
`
`pending. One of the two patents-in-suit is the ’071 Patent, attached as Ex. 1001.
`
`The other patent-in-suit is the ’748 Patent, which is the subject of a concurrently
`
`filed petition for inter partes review.
`
`2.
`
`Related Applications
`
`Petitioners are unaware of any related applications in connection with the
`
`’071 Patent.
`
`C. Lead and Back-Up Counsel
`
`Pursuant to 37 C.F.R. § 42.8(b)(3), Petitioners provide the following
`
`designation of counsel: Lead counsel is James E. Hopenfeld (Reg. No. 47,661)
`
`and back-up counsel is Tammy J. Terry (Reg. No. 69,167).
`
`Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney accompanies this
`
`Petition.
`
`D.
`
`Service Information
`
`Pursuant to 37 C.F.R. § 42.8(b)(4), papers concerning this matter should be
`
`served on the following:
`
`Address:
`
`James E. Hopenfeld
`Tammy J. Terry
`Osha Liang LLP
`909 Fannin Street, Suite 3500
`Houston, Texas 77010
`
`4
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,584,071
`
`Email:
`
`Telephone:
`Facsimile:
`III. PAYMENT OF FEES
`
`hopenfeld@oshaliang.com
`terry@oshaliang.com
`713.228.8600
`713.228.8611
`
`The undersigned authorizes the Office to charge $23,000 to the credit card
`
`designated and paid concurrently herewith as the fee required by 37 C.F.R. §
`
`42.15(a) for this Petition for inter partes review. The undersigned further
`
`authorizes payment for any additional fees that might be due in connection with
`
`this Petition to be charged to Deposit Account No. 500591.
`
`IV. REQUIREMENTS FOR INTER PARTES REVIEW
`
`As set forth below and pursuant to 37 C.F.R. § 42.104, each requirement for
`
`inter partes review of the ’071 Patent is satisfied.
`
`A. Grounds for Standing
`
`Pursuant to 37 C.F.R. § 42.104(a), Petitioners hereby certify that the ’071
`
`Patent is available for inter partes review and that the Petitioner is not barred or
`
`estopped from requesting inter partes review challenging the claims of the ’071
`
`Patent on the grounds identified herein. The ’071 Patent has not been subject to a
`
`previous estoppel based proceeding of the AIA.
`
`B.
`
`Identification of Challenge
`
`5
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,584,071
`
`Pursuant to 37 C.F.R. §§ 42.104(b) and (b)(1), Petitioner requests inter
`
`partes review of claims 1-15 of the ’071 Patent, and that the Patent Trial and
`
`Appeal Board (“PTAB”) invalidate the same.
`
`1.
`
`The Specific Art and Statutory Ground(s) on Which the
`Challenge is Based
`
`Pursuant to 37 C.F.R. § 42.204(b)(2), inter partes review of the ’071 Patent
`
`is requested in view of the following references, each of which is prior art to the
`
`’071 Patent under 35 U.S.C. § 102(a), (b), and/or (e). The ‘071 Patent claims
`
`priority to a Taiwanese patent application dated March 23, 2007. The application
`
`upon which the ‘071 Patent is based was filed in the U.S. on March 19, 2008, such
`
`that the relevant 35 U.S.C. § 102(b) bar date would be March 19, 2007. The
`
`relevant prior art includes:
`
`(1) U.S. Patent No. 5,043,646 to Jay Smith III and Daniel J. Schmieder
`
`(“Smith,” Ex. 1002) issued August 27, 1991, from an application filed May 1,
`
`1990, and is prior art to the ’071 Patent under 35 U.S.C. § 102(b).
`
`(2)
`
`French Patent No. 2,789,765 to Patrick Potiron and Jean Claude
`
`Valentino (“Potiron,” Ex. 1003; certified English translation at Ex. 1004) published
`
`August 18, 2000, from an application filed February 12, 1999, and is prior art to
`
`the ’071 Patent under 35 U.S.C. § 102(b).
`
`6
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,584,071
`
`(3) U.S. Patent No. 7,219,861 to Howard Barr (“Barr,” Ex. 1005) issued
`
`May 22, 2007 from an application filed July 6, 2000, and is prior art to the ’071
`
`Patent under 35 U.S.C. § 102 (e).
`
`(4) U.S. Patent No. 6,751,529 to J. Michael Fouche (“Fouche,” Ex. 1006)
`
`issued on June 15, 2004, from an application filed on May 30, 2003 is prior art to
`
`the ’071 Patent under 35 U.S.C. § 102(b).
`
`(5) U.S. Patent Application Publication No. 2006/0144994 to Peter
`
`Spirov and Brad Pedersen (“Spirov,” Ex. 1007) published Jul 6, 2006, and filed
`
`September 2, 2003, is prior art to the ’071 Patent under 35 U.S.C. § 102(b).
`
`(6) U.S. Patent No. 7,145,551 to Steven Bathiche et al. (“Bathiche,”
`
`Ex. 1008) issued December 5, 2006, from an application filed on February 17,
`
`1999, is prior art to the ‘071 Patent under 35 U.S.C. § 102 (b).
`
`(7) U.S. Patent Application Publication No. 2004/0263479 to Mark
`
`Shkolnikov (“Shkolnikov,” Ex. 1009) published December 30, 2004 and filed July
`
`22, 2004 is prior art to the ’071 Patent under 35 U.S.C. § 102(b).
`
`2. How the Construed Claims Are Unpatentable Under the
`Statutory Grounds Identified in 37 C.F.R. § 42.204(B)(2) and
`Supporting Evidence
`
`Pursuant to 37 C.F.R. § 42.204(b)(4), an explanation of how claims 1-15 of
`
`the ’071 Patent are unpatentable under the statutory grounds identified above,
`
`including the identification of where each element of the claim is found in the prior
`
`7
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,584,071
`
`art, is provided in claim charts within Section VII below.2 Pursuant to 37 C.F.R.
`
`§ 42.204(b)(5), the appendix numbers of the supporting evidence relied upon to
`
`support the challenges and the relevance of the evidence to the challenges raised,
`
`including identifying specific portions of the evidence that support the challenges,
`
`are also provided in the same claim charts in Section VII below.
`
`V.
`
`FACTUAL BACKGROUND
`
`A. Declaration EvidenceThis Petition is supported by the declaration of
`
`Raffaello D’Andrea, professor of dynamic systems and control of ETH Zurich (Ex.
`
`1010). Prof. D’Andrea offers his opinion with respect to the content and state of
`
`the prior art.
`
`Prof. D’Andrea is a leading figure in the fields of systems architecture; robot
`
`design, navigation, and coordination; and control algorithms. He was a co-founder
`
`and later chief technical advisor at Kiva Systems, now owned by Amazon.com,
`
`which pioneered the use of robots to move products in warehouses, distribution
`
`centers, and the like. Prof. D’Andrea has published over 180 papers in the field of
`
`engineering, mostly relating to dynamic systems and control.
`
`B.
`
`The State of the Art
`
`
`2 For the PTAB’s convenience, a copy of all claim charts are also provided in
`
`Ex. 1011 submitted with this Petition.
`
`8
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,584,071
`
`The state of the art is described in detail in paragraphs 19-22 of Prof.
`
`D’Andrea’s declaration. A summary follows.
`
`Hand-held remote controls have long been used to control remotely
`
`controlled devices such as toy cars, boats, and airplanes. Early remote controls
`
`were connected to the remotely controlled device by wire, but by the late 1990’s to
`
`early 2000’s, wireless control had become commonplace.
`
`At first, remote controls used manual input devices such as joysticks,
`
`trackballs, and the like to control the movement of a remotely controlled device.
`
`By the 1990’s, however, remote controls acquired the capability to sense the
`
`orientation of the remote control and to send a wireless instruction to a remotely
`
`controlled device to move to the same orientation. The remotely controlled device,
`
`in turn, received the instruction, sensed its own orientation, and moved
`
`accordingly.
`
`An early example of a sensed-motion controlled device is described in U.S.
`
`Patent No. 5,043,646 (“Smith”), which issued on August 27, 1991. Smith
`
`discloses a remotely controlled hobby vehicle. Both the remote control and the
`
`hobby vehicle include magnetometers (flux gate compasses) to sense the motion
`
`(changes in orientation) of both the remote and the hobby vehicle. By sensing
`
`motion in the remote control and sending a wireless signal to the hobby vehicle,
`
`which in turn senses its current orientation, the motion of the vehicle is controlled.
`
`9
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,584,071
`
`This allows the user to give absolute direction commands regardless of the
`
`orientation or position of the user. See Ex. 1002, 3:51-60.
`
`Sensed motion-control supplemented manual (e.g. joystick) control and
`
`became commonplace. See, e.g., French Patent Publication No. 2,789,765
`
`(“Potiron”, Ex. 1003; certified English translation at Ex. 1004) (sensed motion
`
`control of boat); and U.S. Patent Application Publication No. 2006/0144994
`
`(“Spirov”, Ex. 1007) (sensed motion control of flying hovercraft).
`
`By the mid-2000s, remote controllers included the ability to detect motion in
`
`three dimensions and translate that movement into instructions that could be used
`
`to control a computer or, in the case of the video game industry, a computer
`
`display. The Nintendo Wii, which included this capability, was introduced in
`
`2006. The Wii used, and still uses, accelerometers to sense motion of the remote
`
`control.
`
`By 2006, more sophisticated technology had been developed to sense motion
`
`in space. These technologies, such as that described in International Publication
`
`No. WO2006045934 (“Jouanet”; see U.S. Patent No. 8,072,417, Ex. 1010 at Att.
`
`C), use combinations of sensors to detect all possible motion in space. Jouanet
`
`teaches the use of accelerometers and magnetometers to sense motion in space.
`
`Ex. 1010 (D’Andrea Dec.) at ¶ 51; Ex. 1010, Att. C at 5:26-34 and Fig. 2. Jouanet
`
`expressly teaches that its control system could be used in conjunction with a
`
`10
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,584,071
`
`remotely controlled vehicle such as a drone. Ex. 1010 (D’Andrea Dec.) at ¶ 51;
`
`Ex. 1010, Att. C at 25:21-25 and Fig. 20.
`
`C. The Person of Ordinary Skill in the Art
`
`The person of ordinary skill in the art in the field of the ’071 Patent would
`
`be someone who was familiar with control systems. The person of ordinary skill in
`
`the art may have had an undergraduate degree in an engineering discipline such as
`
`mechanical, electrical, or chemical engineering and would have had two to three
`
`years of experience designing and implementing control systems. Ex. 1010
`
`(D’Andrea Dec.) at ¶ 19-22.
`
`D. The ’071 Patent
`
`The ’071 Patent is described in detail in paragraphs 53-67 of Prof.
`
`D’Andrea’s declaration (Ex. 1010). A summary follows.
`
`The ’071 Patent is generally directed to a “remote-controlled motion
`
`apparatus with sensing terrestrial magnetism and remote control apparatus
`
`therefor.” Ex. 1001, 1:18-20.
`
`The ’071 Patent describes a control system for a remotely controlled vehicle
`
`such as a hobby airplane. Ex. 1001, 1:18-20. The remote control and airplane
`
`include a “motion detecting module” and “terrestrial magnetism sensing module”
`
`to sense their respective movements. The remote control senses movement using
`
`its motion detecting module, which is a magnetometer, and sends a wireless signal
`
`11
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,584,071
`
`to the airplane to align its movement to that of the remote control. In turn, the
`
`airplane uses its “terrestrial magnetism sensing module,” also a magnetometer, to
`
`move according to the instruction sent by the remote control. Ex. 1010, ¶ 53.
`
`The ’071 Patent does not explain the structure or operation of the “terrestrial
`
`magnetism sensing module” (or the “motion detecting module”) in either the
`
`remote controller or remote-controlled device. The ‘071 Patent states only that the
`
`module would include a magnetic sensor for detecting magnetism in the “X, Y, and
`
`Z” axes. The patent further states that the sensed motion in these three axes can be
`
`used to generate a three-dimensional target motion signal. Ex. 1001, 4:17-19; Ex.
`
`1010 (D’Andrea Dec.) at ¶ 54.
`
`As described in the ’071 Patent, the terrestrial magnetism sensor would not
`
`be capable of detecting motion of the remote control or remotely controlled device
`
`in all three dimensions so as to be able to control a remotely controlled aircraft. A
`
`magnetic sensor would not be capable of detecting translation of the object in any
`
`dimension (i.e., along the X, Y, or Z axes). Nor would it be capable of detecting
`
`rotation around the lines of a magnetic field. Ex. 1010 (D’Andrea Dec.) at ¶ 55.
`
`A magnetometer’s utility to remotely control motion of an aircraft would be,
`
`at best, limited. According to the ’071 Patent, the roll and pitch of a remotely
`
`controlled device is “adjusted” and “synchronized” with the motion of the remote
`
`controller. Ex. 1001, 5:34-37. The ’071 Patent does not explain how such
`
`12
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`Petition for Inter Partes Review of U.S. Patent No. 7,584,071
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`“adjustment” and “synchronization” would be accomplished given that magnetic
`
`sensors would not be capable of detecting all motion in three dimensional space.
`
`Ex. 1010 (D’Andrea Dec.) at ¶ 57.
`
`The magnetic sensor of the ‘071 Patent could not be used to control the pitch
`
`of the aircraft, for example, if the aircraft were to travel perpendicular to the
`
`magnetic field lines. Similarly, roll could not be controlled if the aircraft were to
`
`travel along magnetic field lines. Synchronization of motion could not occur
`
`because the magnetic sensors could output the same sensed information even
`
`though the remote and the remotely controlled aircraft were performing different
`
`movements. Ex. 1010 (D’Andrea Dec.) at ¶ 59.
`
`Because magnetic sensors are incapable of detecting all motions of the
`
`remote in three dimensional space, a remote control deploying only magnetic
`
`sensors such as the remote control taught by the ’071 Patent could not be used to
`
`control the movement of a remote-controlled device without some other
`
`instructions, circuitry, and/or structures, either to obtain the missing position or
`
`orientation information or to operate the remotely controlled device in its absence.
`
`The ’071 Patent does not discuss or teach how to account for the position or
`
`orientation information not sensed by magnetometers. A remotely controlled
`
`device such as an aircraft including only magnetic sensors, as taught by the ’071
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`13
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`Petition for Inter Partes Review of U.S. Patent No. 7,584,071
`
`Patent, could not fly without additional instructions, circuitry, and/or structures not
`
`taught in the ’071 Patent. Ex. 1010 (D’Andrea Dec.) at ¶ 59.
`
`The ’071 Patent further teaches a mode of operation in which control of the
`
`aircraft is accomplished by a combination of control using the magnetic sensors
`
`and control using manual inputs, such as a joystick. The ’071 Patent does not
`
`teach or explain how such control would be accomplished, in particular in view of
`
`the limitations of magnetic sensors to detect motion in three-dimensional space.3
`
`Ex. 1010 (D’Andrea Dec.) at ¶ 60.
`
`
`3 The U.S. patent application leading to the ’071 Patent was filed on March
`
`19, 2008. On that same day, the applicant filed another patent application
`
`(Pat. App. No. 12/051,683), which ultimately issued as U.S. Patent No. 8,106,748
`
`(“the ’748 Patent”). The ’748 patent teaches the use of accelerometers instead of
`
`magnetometers to sense motion of the remote control and hobby airplane.
`
`Otherwise, the teachings of the ’748 patent are substantially identical to those of
`
`the ’071 Patent. Like the ’071 Patent, the ’748 patent could not work for its
`
`intended purpose because, like magnetometers, accelerometers alone cannot be
`
`used to detect all motion in three dimensional space. Additional instrumentation or
`
`technology not disclosed by the ’748 patent would be required to control the flight
`
`of an airplane. It thus appears that the inventor of the ’071 and ’748 patents did
`
`not grasp the limitations of either magnetometers or accelerometers in sensing
`
`14
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`

`Petition for Inter Partes Review of U.S. Patent No. 7,584,071
`
`E.
`
`Prosecution History of the ’071 Patent
`
`The application from which the ’071 Patent issued (U.S. Patent Application
`
`No. 12/051,662) was filed on March 19, 2008 and listed Yu-Tuan Lee as the
`
`inventor. A Notice of Allowance issued on April 28, 2009. The ’071 Patent issued
`
`on September 1, 2009.
`
`VI. BROADEST REASONABLE CONSTRUCTION
`
`Pursuant to 37 C.F.R. § 42.204(b)(3), the claims subject to inter partes
`
`review shall receive the “broadest reasonable construction in light of the
`
`specification of the patent in which [they] appear[].” See also In re Swanson,
`
`No. 07-1534, 540 F.3d 1368, 1378 (Fed. Cir. 2008); In re Trans Texas Holding
`
`Corp., 498 F.3d 1290, 1298 (Fed. Cir. 2007) (citing In re Yamamoto, 740 F.2d
`
`1569, 1571 (Fed. Cir. 1984)). As the Federal Circuit noted in Trans Texas, the
`
`Office has traditionally applied a broader standard than a Court does when
`
`interpreting claim scope. Moreover, the Office is not bound by any district court
`
`claim construction. Trans Texas, 498 F.3d at 1297- 98, 1301. Rather:
`
`the PTO applies to verbiage of the proposed claims the broadest
`
`reasonable meaning of the words in their ordinary usage as they
`
`would be understood by one of ordinary skill in the art, taking into
`
`account whatever enlightenment by way of definitions or otherwise
`
`motion and did not grasp the problems associated with using these instruments to
`
`sense movement in a way that could be used to control flight.
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`15
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`Petition for Inter Partes Review of U.S. Patent No. 7,584,071
`
`that may be afforded by the written description contained in
`
`applicant’s specification.
`
`In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
`
`Because the standards of claim interpretation used by the Courts in patent
`
`litigation are different from the claim interpretation standards used by the Office in
`
`claim examination proceedings (including inter partes review), any claim
`
`interpretations submitted herein for the purpose of demonstrating a Reasonable
`
`Likelihood of Prevailing are neither binding upon litigants in any litigation, nor do
`
`such claim interpretations correspond to the construction of claims under the legal
`
`standards that are mandated to be used by the Courts in litigation.
`
`The interpretation of the claims presented either implicitly or explicitly
`
`herein should not be viewed as constituting, in whole or in part, Petitioner’s own
`
`interpretation and/or construction of such claims for the purposes of the underlying
`
`litigation. Instead, such constructions in this proceeding should be viewed only as
`
`constituting an interpretation of the claims under the “broadest reasonable
`
`construction” standard.
`
`All claim terms not specifically addressed below have been accorded their
`
`broadest reasonable interpretation in light of the patent specification including their
`
`plain and ordinary meaning to the extent such a meaning could be determined by a
`
`skilled artisan.
`
`16
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,584,071
`
`A.
`
`“difference of motion”
`
`Under the broadest reasonable construction/interpretation (“BRI”), the term
`
`“difference of motion,” which appears only in dependent claim 4, should be
`
`interpreted as “calculations related to motion that causes a change in orientation.”
`
`The term “difference of motion” is vague and ambiguous. The patent
`
`specification refers to “velocity of motion,” but it is unclear what this means. To
`
`the extent claim 4 could be interpreted to require a calculation in which one
`
`velocity is subtracted from another based on a “terrestrial magnetism sensing
`
`signal,” it requires an impossibility. Magnetometers cannot, without some other
`
`devices or structures not specified by the ’071 Patent, be used to calculate
`
`velocities. The proposed construction is the best attempt to make sense of the
`
`“difference of motion” claim language. Ex. 1010 (D’Andrea Dec.) at ¶¶ 90, 128.
`
`B.
`
`“information of the remote controller’s motion in the 3D space”
`
`Under BRI, the term “information of the remote controller’s motion in the
`
`3D space,” which appears only in dependent claim 13, should be interpreted as any
`
`motion in three dimensional space, including motion in one or two dimensions.
`
`An alternative, narrower construction would require that the remote
`
`controller detect all possible motion in three-dimensional space. Apart from the
`
`fact that this construction departs from the plain meaning of the claim and that this
`
`claim limitation does not appear in and is not specially defined by the patent
`
`17
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`

`Petition for Inter Partes Review of U.S. Patent No. 7,584,071
`
`specification, it is untenable. As explained in the

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