Paper 8
`Trials@uspto.gov
`571-272-7822
`
`Entered: October 28, 2014
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PARROT S.A. and PARROT, INC.,
`Petitioner,
`
`v.
`
`DRONE TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-00730
`Patent 7,584,071 B2
`____________
`
`
`Before HOWARD B. BLANKENSHIP, MATTHEW R. CLEMENTS, and
`CHRISTOPHER M. KAISER, Administrative Patent Judges.
`
`
`BLANKENSHIP, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`I. BACKGROUND
`
`
`
`Parrot S.A. and Parrot, Inc. (collectively, “Petitioner”) filed a petition
`
`requesting an inter partes review of claims 1–15 of U.S. Patent No.
`
`7,584,071 B2 (Ex. 1001, “the ’071 patent”) under 35 U.S.C. §§ 311–319.
`
`Paper 1 (“Petition” or “Pet.”). Patent Owner, Drone Technologies, Inc.,
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`IPR2014-00730
`Patent 7,584,071 B2
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`filed a preliminary response as permitted by 37 C.F.R. § 42.107. Paper 7
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`
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`(“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314. Section 314
`
`provides that an inter partes review may not be instituted “unless . . . the
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`information presented in the petition . . . shows that there is a reasonable
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`likelihood that the petitioner would prevail with respect to at least 1 of the
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`claims challenged in the petition.”
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`
`
`For the reasons that follow, we institute an inter partes review of
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`claims 1–15 of the ’071 patent.
`
`
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`A. Related Proceedings
`
`According to Petitioner, the ’071 patent is involved in the following
`
`lawsuit: Drone Technologies, Inc. v. Parrot S.A., No. 2:05-mc-02025 (W.D.
`
`Pa.). Pet. 4.
`
`
`
`
`
`B. The ’071 Patent
`
`The ’071 patent relates to a remote control system in which a remote
`
`control apparatus transmits a target motion signal to a remote-controlled
`
`motion apparatus. Ex. 1001, Abstract.
`
`Figure 2 of the ’071 patent is reproduced below.
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`2
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`IPR2014-00730
`Patent 7,584,071 B2
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`Figure 2 is a system diagram of a remote control system. Ex. 1001,
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`col. 3, ll. 13–14. Remote-controlled device 4 consists of communication
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`module 41, terrestrial magnetism sensing module 42, processing module 43,
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`and driving module 44. Communication module 41 receives target motion
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`signal STAR from remote controller 3. Id. at col. 3, ll. 28–35. Remote
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`controller 3 consists of terrestrial magnetism sensing module 31 and
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`communication module 33. The terrestrial magnetism module detects the
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`terrestrial magnetism of the remote controller and outputs terrestrial
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`magnetism sensing signal SG. Communication module 33 connects to
`
`terrestrial magnetism module 31 and transmits target motion signal STAR
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`according to the terrestrial magnetism sensing signal. Target motion signal
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`STAR is used to control remote-controlled device 4 to keep its detected
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`terrestrial magnetism aligned with the target motion signal. Id. at col. 3,
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`ll. 47–58.
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`3
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`IPR2014-00730
`Patent 7,584,071 B2
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`C. Illustrative Claim
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`
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`Claim 1, the sole independent claim, is illustrative and reproduced
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`below.
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`
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`1. A remote control system, comprising:
`
`a remote controller, comprising:
`
`
`
`a motion detecting module, which detects the remote
`controller’s motion and outputs a motion detecting signal; and
`
`
`
`a first communication module, which connects to the
`motion detecting module and receives the motion detecting
`signal, and transmits a target motion signal according to the
`motion detecting signal; and
`
` a
`
` remote-controlled device, which is controlled by the remote
`controller, comprising:
`
`
`
`a second communication module, which receives the
`
`target motion signal from the remote controller;
`
`
`
`a terrestrial magnetism sensing module, which detects the
`remote-controlled device’s terrestrial magnetism and outputs a
`terrestrial magnetism sensing signal;
`
`
`
`a processing module, which has a first input connected to
`the terrestrial magnetism sensing module and receives the
`terrestrial magnetism sensing signal, and a second input
`connected to the second communication module and receives
`the target motion signal, and processes the terrestrial magnetism
`sensing signal and the target motion signal to output a driving
`control signal; and
`
`
`
`a driving module, which connects to the processing
`module and receives the driving control signal, and adjusts the
`remote-controlled device's motion according to the driving
`control signal.
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`4
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`IPR2014-00730
`Patent 7,584,071 B2
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`D. Prior Art
`
`
`
`
`
`
`
`Smith, III et al. (“Smith”)
` (Ex. 1002)
`
`Potiron et al. (“Potiron”)
` (Ex. 1004)1
`
`
`
`Barr
` (Ex. 1005)
`
`
`Fouche
` (Ex. 1006)
`
`Spirov et al. (“Spirov”)
` (Ex. 1007)
`
`Bathiche et al. (“Bathiche”)
` (Ex. 1008)
`
`Shkolnikov
` (Ex. 1009)
`
`
`
`
`
`
`
`
`
`
`
`
`
`US 5,043,646
`
`
`
`Aug. 27, 1991
`
`FR 2 789 765 A1
`
`
`
`Aug. 18, 2000
`
`US 7,219,861 B1
`
`
`
`May 22, 2007
`
`US 6,751,529 B1
`
`
`
`June 15, 2004
`
`US 2006/0144994 A1
`
`July 6, 2006
`
`US 7,145,551 B1
`
`
`
`Dec. 5, 2006
`
`US 2004/0263479 A1 Dec. 30, 2004
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`
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`E. Asserted Grounds of Unpatentability
`
`Petitioner asserts the following grounds of unpatentability against
`
`claims 1–15:
`
`
`
`
`
`
`
`Reference(s)
`
`
`
`Basis (35 U.S.C.)
`
`Claim(s)
`
`Smith
`
`Smith
`
`Smith and Barr
`
`§ 102(b)
`
`§ 103(a)
`
`§ 103(a)
`
`1–5 and 10–14
`
`2, 4, and 10
`
`6 and 7
`
`
`1 Exhibit 1004 is a certified translation of the French published patent
`application (Ex. 1003).
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`IPR2014-00730
`Patent 7,584,071 B2
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`Reference(s)
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`
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`Basis (35 U.S.C.)
`
`Claim(s)
`
`Smith and Fouche
`
`Smith and Spirov and/or
`Bathiche and/or
`Shkolnikov
`Potiron
`
`Potiron
`
`Potiron and Fouche
`
`Potiron and Barr
`
`Potiron and Smith, and
`Spirov, Bathiche, or
`Shkolnikov
`Potiron and Spirov,
`and/or Bathiche and/or
`Shkolnikov
`
`
`§ 103(a)
`
`
`§ 103(a)
`
`§ 102(b)
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`
`§ 103(a)
`
`
`§ 103(a)
`
`8 and 9
`
`
`15
`
`1–3, 5, and 10–13
`
`2, 4, and 10
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`4, 8, and 9
`
`6 and 7
`
`
`14
`
`
`15
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`II. ANALYSIS
`
`Claim Interpretation
`
`In an inter partes review, the Board construes claim terms in an
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`unexpired patent using their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
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`2012). The claim language should be read in light of the specification, as it
`
`would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
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`Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The Office must
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`apply the broadest reasonable meaning to the claim language, taking into
`
`account any definitions presented in the specification. Id. (citing In re Bass,
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`314 F.3d 575, 577 (Fed. Cir. 2002)). There is a “heavy presumption” that a
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`claim term carries its ordinary and customary meaning. CCS Fitness, Inc. v.
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`
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`Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). The “ordinary and
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`customary meaning” is that which the term would have to a person of
`
`ordinary skill in the art in question. In re Translogic Tech., Inc., 504 F.3d
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`1249, 1257 (Fed. Cir. 2007).
`
`
`
`A. Detecting the Remote Controller’s Motion
`
`Patent Owner submits that the “determinative element” appearing in
`
`claim 1 and, thus, in all the claims is the “motion detecting module, which
`
`detects the remote controller’s motion.” Prelim. Resp. 10. Therefore, we
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`must determine the meaning of “detect[] the remote controller’s motion.”
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`Patent Owner argues that Petitioner is incorrect in its view that detecting
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`“orientation” or “pointing direction” with respect to magnetic North means
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`the same thing as the claimed “detect[ing] the remote controller’s motion.”
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`Id. Patent Owner submits that Petitioner concludes “‘detecting the remote
`
`controller’s motion’ is the same as determining ‘change in orientation,’” a
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`conclusion with which Patent Owner disagrees. Id. at 11.
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`A dispositive question, however, is not whether the two phrases are
`
`necessarily the “same,” or co-extensive in scope, but whether determining a
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`change in orientation is within the scope of the claimed “detect[ing] the
`
`remote controller’s motion.”
`
`The ’071 patent provides:
`
`In the preferred embodiment of the invention, the remote
`controller 3 [Fig. 2] consists of a terrestrial magnetism sensing
`module 31 and a communication module 33, the terrestrial
`magnetism module 31 detects the terrestrial magnetism of the
`remote controller 3 and outputs [a] terrestrial magnetism
`sensing signal SG, the communication module 33 connects to
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`Patent 7,584,071 B2
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`the terrestrial magnetism module 31 and transmits a target
`motion signal STAR according to the terrestrial magnetism
`sensing signal SG, the target motion signal STAR is used to
`control the remote-controlled device 4 to keep its detected
`terrestrial magnetism to align with the target motion signal
`STAR. The terrestrial magnetism sensing signal SG is used to
`represent the terrestrial magnetism information of the remote
`controller 3.
`The terrestrial magnetism sensing module 31 consists of
`a magnetic sensor to detect the remote controller’s terrestrial
`magnetism in the X, Y and Z axes. Since the terrestrial
`magnetism of the earth directs to a fixed direction parallel to
`the horizontal ground surface, when the remote controller 3 is
`held by the user and is moved with a motion related to the
`horizontal ground surface, the terrestrial magnetism sensing
`module 31 will detect a change in the terrestrial magnetism
`since the remote controller body’s angle or position to the
`ground has been changed, so the resulting terrestrial
`magnetism sensing signal SG will be changed.
`In the user’s operation, the user holds the remote
`controller 3 and moves it or rotate[s] it, the terrestrial
`magnetism sensing module 31 in the remote controller 3 will
`detect a change in terrestrial magnetism, and accordingly
`outputs an terrestrial magnetism sensing signal SG, the
`terrestrial magnetism sensing signal SG provides the
`communication module 33 a reference to transmit the target
`motion signal STAR to control the remote-controlled device 4.
`For example, the terrestrial magnetism sensing signal SG
`contains three voltage levels to represent the terrestrial
`magnetism of X, Y and Z axes, the three voltage levels can be
`converted and transmitted by the communication module 33
`(such as using radio transmission with the PCM coding
`technique). The user can even use only one [h]and to operate
`the remote controller 3 and generate the 3-D X, Y and Z axes
`target notion signal STAR.
`
`Ex. 1001, col. 3, l. 47 – col. 4, l. 19 (emphasis removed, remaining emphasis
`
`added).
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`The ’071 patent, thus, makes clear that, in the preferred embodiment
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`
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`of the invention, “detecting” the remote controller’s motion is detecting the
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`change in terrestrial magnetism relative to the horizontal ground surface as
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`the controller is moved or rotated, with the resulting terrestrial magnetism
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`sensing signal SG changing accordingly. The “terrestrial magnetism” of the
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`Earth “directs to a fixed direction parallel to the horizontal ground surface.”
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`Id. at col. 3, ll. 63–65. On this record, we agree with Petitioner to the extent
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`that detecting the orientation of a remote controller with respect to magnetic
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`North is, at the least, within the scope of “detect[ing] the remote controller’s
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`motion” as claimed. “A claim construction that excludes the preferred
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`embodiment ‘is rarely, if ever, correct and would require highly persuasive
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`evidentiary support.’” Adams Respiratory Therapeutics, Inc. v. Perrigo Co.,
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`616 F.3d 1283, 1290 (Fed. Cir. 2010) (quoting Vitronics Corp. v.
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`Conceptronic, Inc., 90 F.3d 1576, 1583–84 (Fed. Cir. 1996)). For purposes
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`of this decision, the term “detect[ing] the remote controller’s motion” does
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`not require any construction beyond our finding that it is broad enough to
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`include detecting the orientation of a remote controller with respect to
`
`magnetic North.
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`
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`B. Difference of Motion
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`Petitioner submits that “difference of motion,” a phrase in claim 4,
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`should be interpreted as “calculations related to motion that causes a change
`
`in orientation.” Pet. 17. Patent Owner in its Preliminary Response
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`expresses no disagreement with that interpretation.
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`As Petitioner indicates (id.), the ’071 patent does not provide a
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`definition of the relevant terms different from the ordinary meaning of the
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`words. For purposes of this Decision, we interpret “difference of motion,”
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`
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`under the required broadest reasonable interpretation, simply to mean
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`relative motion. That interpretation is consistent with the language of claim
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`4. Claim 4 recites that the “calculated result” — the calculated current
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`motion of the remote-controlled device — is compared with the target
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`motion signal to get the “difference of motion” (relative motion) between the
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`remote-controlled device and the remote controller. In relation to
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`Petitioner’s proffered interpretation, because a change in orientation is a type
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`of motion, relative orientation would be a type (or species) of “difference of
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`motion.”
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`
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`C. Information of the Remote Controller’s Motion in the 3D Space
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`Petitioner submits that the phrase “information of the remote
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`controller’s motion in the 3D space,” which appears in claim 13, should be
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`interpreted as “any motion in three dimensional space, including motion in
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`one or two dimensions.” Pet. 17. Patent Owner in its Preliminary Response
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`expresses no disagreement with that interpretation.
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`Again, we find no definition in the ’071 patent that would depart from
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`the ordinary meaning of the words. Claim 13 recites “wherein the motion
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`detecting signal represents the information of the remote controller’s motion
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`in the 3D space.” Claim 13 depends from claim 1. Neither claim sets forth
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`an antecedent for “the 3D space.” Consistent with Petitioner’s position,
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`information of motion in the 3D space, under its broadest reasonable
`
`interpretation, does not require complete information of motion in each of
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`the three dimensions. Although the motion is in “the 3D space,” information
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`of the motion may be information relating to motion in one, two, or three
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`
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`dimensions.
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`Proposed Grounds of Unpatentability
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`A. Prior Art — Smith
`
`Smith relates to a remote control transmitter/receiver system in which
`
`the transmitter can generate an absolute direction command relative to
`
`magnetic North, in accordance with an internal compass signal. Ex. 1002,
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`Abstract.
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`Figure 3 of Smith is reproduced below.
`
`Figure 3 is a schematic block diagram of a remote control transmitting
`
`device. Ex. 1002, col. 3, ll. 1–3. Remote control transmitter 100 contains
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`microcontroller 24, which is provided with inputs from three momentary
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`pushbutton control switches 28, 30, and 32, eight-position joystick 26, and
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`flux gate compass 10 (via A/D converter 13). Id. at col. 3, ll. 61–66. Flux
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`gate compass 10 outputs sine and cosine voltages 14 and 12. The magnitude
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`of the voltages at the sine and cosine outputs corresponds to the sine and
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`cosine of the earth’s magnetic field. The data necessary to interpret the
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`orientation of the flux gate compass and the remote control transmitter is
`
`obtained by determining the ratio of the sine and cosine voltages. Id. at
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`col. 4, ll. 17–32.
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`
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`B. Anticipation by Smith — Claims 1–5 and 10–14
`
`Petitioner contends that Smith anticipates claims 1–5 and 10–14. The
`
`Petition maps the language of independent claim 1 to the structures in Smith
`
`that are deemed to correspond with the limitations. Pet. 19–23. Petitioner
`
`also relies on the testimony of Dr. Raffaello D’Andrea. Ex. 1010
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`(“D’Andrea Decl.”).
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`Patent Owner responds that Smith “lacks a ‘motion detecting module,
`
`which measures the motion of the remote controller’ as recited in claim 1
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`(and each claim, by reference).” Prelim. Resp. 20. According to Patent
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`Owner, Smith “only determines the ‘orientation’ of the remote control with
`
`respect to magnetic North.” Id. at 19–20. “Nowhere do Petitioners explain
`
`how Smith purportedly ‘detects the remote controller’s motion.’” Id. at 20.
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`As we noted previously, however, when the claims are interpreted in
`
`light of the specification, as they must be, detecting the orientation of a
`
`remote controller with respect to magnetic North is, at the least, within the
`
`scope of “detect[ing] the remote controller’s motion” as claimed. We are,
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`therefore, not persuaded that the claim 1 recitation with regard to detecting
`
`the remote controller’s motion distinguishes over Smith. We are persuaded
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`by Petitioner’s argument regarding all of the limitations of claim 1.
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`We also have reviewed the proposed anticipation ground against
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`
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`dependent claims 2–5 and 10–14 and we are persuaded that Petitioner has
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`met the threshold of § 314(a) in regards to those claims. See Pet. 23–28. On
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`the present record, we find that Petitioner has established a reasonable
`
`likelihood that Petitioner would prevail in its challenge of claims 1–5 and
`
`10–14 as being anticipated by Smith.
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`
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`C. Obviousness over Smith and Barr — Claims 6 and 7
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`Petitioner contends that the combination of Smith and Barr renders
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`obvious the subject matter of claims 6 and 7. The claims add further
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`limitations to claim 1 regarding a driving unit that receives the driving
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`control signal and adjusts the pitch of an airplane wing. Barr describes a
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`radio-controlled flight system that includes aircraft 30 (Ex. 1005, Fig. 1) that
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`receives signals fed through flight control circuitry in order to control set of
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`ailerons 35A, 35B, rudder 40, and elevator 45. Id. at col. 4, ll. 18–26, Fig. 2;
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`Pet. 29–30.
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`Petitioner submits there is express suggestion in Smith to combine its
`
`teachings with the wing of the aircraft disclosed in Barr. Pet. 30–31.
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`Although Smith’s preferred embodiment is directed to remote control of a
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`“small scale remotely controlled car” (Ex. 1002, col. 3, ll. 21–24), the
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`reference teaches that remote-controlled hobby vehicle systems include
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`planes, boats, and cars (id. at col. 1, ll. 18–21). Moreover, Smith teaches
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`that “the present invention is adaptable to other hobby vehicles such as
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`planes and boats.” Id. at col. 6, ll. 39–41.
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`Patent Owner’s argument (Prelim. Resp. 28) that Petitioner does not
`
`“articulate a reason why one of skill in the art would combine Smith and
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`Barr as proposed” is unfounded. Petitioner relies on the express teachings in
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`Smith with respect to remotely controlled airplanes as reflecting the
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`motivation to combine the teachings of Smith with the wing of an aircraft as
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`disclosed by Barr. Pet. 30–31; D’Andrea Decl. ¶ 101.
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`We are persuaded that Petitioner has established a reasonable
`
`likelihood that it would prevail in its challenge of claims 6 and 7 for
`
`obviousness over Smith and Barr.
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`
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`D. Obviousness over Smith and Fouche — Claims 8 and 9
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`Petitioner contends that the subject matter of claims 8 and 9 would
`
`have been obvious over the combination of Smith and Fouche. The claims
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`further limit the subject matter of claim 1 with respect to receiving the
`
`driving control signal and adjusting the rotation speed or pitch of a rotor of a
`
`helicopter. Fouche describes a remotely controlled helicopter with drivers
`
`for controlling the helicopter’s rotor. Ex. 1006, Figs. 2, 3, col. 7, ll. 53–56.
`
`Petitioner relies on Smith’s teachings with respect to hobby vehicles, in
`
`addition to its described embodiment of a car, as showing motivation to
`
`apply Smith’s control system to a remotely controlled helicopter as
`
`described by Fouche. Pet. 32–33. Smith refers to remote-controlled hobby
`
`vehicle systems “such as remote control planes, boats, cars, etc.” Ex. 1002,
`
`col. 1, ll. 19–21. Petitioner submits that a person of ordinary skill in the art
`
`“would have been motivated to combine Smith with known art teaching
`
`drivers for the rotor of a helicopter to adjust speed or pitch of the rotor
`
`blades.” D’Andrea Decl. ¶ 105.
`
`Patent Owner’s argument (Prelim. Resp. 29) that Petitioner does not
`
`“articulate a reason why one of skill in the art would modify Smith as
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`proposed, to apply to helicopters” is unfounded. Petitioner relies on the
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`
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`express teachings in Smith with respect to other remote-controlled hobby
`
`vehicles as reflecting the motivation to combine the teachings of Smith with
`
`the rotor of a helicopter as disclosed by Fouche. Pet. 32–33; D’Andrea
`
`Decl. ¶ 105.
`
`We are persuaded that Petitioner has established a reasonable
`
`likelihood that it would prevail in its challenge of claims 8 and 9 for
`
`obviousness over Smith and Fouche.
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`
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`E. Obviousness over Smith, Spirov, Bathiche, and Shkolnikov
`
`1. Prior Art – Spirov, Bathiche, and Shkolnikov
`
`Spirov describes a remotely controlled hovercraft in which the remote
`
`controller may provide a thumb-activated throttle and yaw control 20 and
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`one or more finger-operated trigger controls 22 and 24. Ex. 1007 ¶ 82,
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`Fig. 3. The remote controller also may provide one-handed operation with
`
`pitch and roll control by mimicking the pitch and roll of controlled
`
`hovercraft 10 by means of XY axis transducers in the controller. Id. ¶ 87;
`
`Fig. 3.
`
`Bathiche teaches a computer input device that may be operated in a
`
`first mode whereby X and Y axis tilt sensors generate orientation
`
`information. Ex. 1008, col. 8, ll. 37–44. In a second mode, input is from
`
`switches rather than the X and Y tilt sensors. Id. at col. 8, ll. 48–55. A
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`mode switch selects between the different modes. Id.
`
`Shkolnikov (Ex. 1009) teaches an active keyboard system for
`
`handheld electronic devices, such as remote controllers (id. ¶¶ 27, 87, 94),
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`that may include first selector 216 and second selector 218 (id. at Fig. 2) to
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`select between manual input and motion (via movement sensors) as an input.
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`Id. ¶¶ 24–25. Shkolnikov also teaches that the motion input may be
`
`provided as an alternative or “in addition to” the manual input. Id. ¶ 25.
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`2. Claim 15
`
`Claim 15 recites that the motion detecting module “further comprises
`
`a configuration switch module to select between the terrestrial magnetism
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`detecting module and/or the manual input module as the input of the
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`communication module.” Ex. 1001, col. 10, ll. 5–9. Petitioner asserts that
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`the subject matter of the claim would have been obvious over the
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`combination of Smith, Spirov, Bathiche, and Shkolnikov. Pet. 35–40.
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`Patent Owner responds that Petitioner does not “articulate a reason
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`why” one of ordinary skill in the art would combine Smith with any of
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`Spirov, Bathiche, or Shkolnikov. Prelim. Resp. 30. Patent Owner quotes a
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`sentence from page thirty-seven of the Petition as support for the argument.
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`See id. Patent Owner does not, however, address Petitioner’s assertion that
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`Shkolnikov expressly teaches the desirability of three modes of operation,
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`and Bathiche expressly teaches that switches are used to switch between
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`modes. Pet. 37; D’Andrea Decl. ¶¶ 109–110.2
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`Patent Owner also responds that neither the Petition nor the D’Andrea
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`Declaration points out where Spirov might teach that the hovercraft could be
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`operated in either of two modes. Prelim. Resp. 30–31. That failure,
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`however, is not critical to the proposed obviousness ground. Petitioner also
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`2 Although the Petition at page 37 refers to paragraph 147 of the D’Andrea
`Declaration, that paragraph is directed to the proposed obviousness ground
`that includes Potiron but not Smith.
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`Patent 7,584,071 B2
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`relies on Bathiche as teaching two switch-selectable modes. Pet. 35–36;
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`
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`Ex. 1008, col. 8, ll. 37–55.
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`Patent Owner further responds to the Petition with the allegation that
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`neither Bathiche nor Shkolnikov is analogous prior art. Prelim. Resp. 31–
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`32. Two criteria have evolved for determining whether prior art is
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`analogous: (1) whether the art is from the same field of endeavor, regardless
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`of the problem addressed, and (2) if the reference is not within the field of
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`the inventor’s endeavor, whether the reference still is reasonably pertinent to
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`the particular problem with which the inventor is involved. In re Clay, 966
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`F.2d 656, 658–59 (Fed. Cir. 1992).
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`Patent Owner argues that, “[a]s defined by the Petitioners, the field of
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`the ‘071 Patent is that of control systems. See Pet. at 11.” Prelim. Resp. 31.
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`The Petition at page eleven, however, does not “define” the field of
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`endeavor but asserts that a person of ordinary skill in the art would be
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`familiar with control systems and that the ’071 patent “describes a control
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`system for a remotely controlled vehicle such as a hobby airplane.” Pet. 11.
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`Patent Owner also argues that neither of Bathiche and Shkolnikov is
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`reasonably pertinent to the particular problem with which the ’071 patent is
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`concerned, namely “control of remotely controlled vehicles.” Prelim. Resp.
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`32. The ’071 patent, however, indicates that the problem was broader than
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`“control of remotely controlled vehicles.” The patent, for example, refers to
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`remote control of “device[s].” E.g., Ex. 1001, col. 1, l. 64–col. 2, l. 2.
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`Moreover, the claimed subject matter embraces more than remotely
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`controlled “vehicles,” as exemplified by dependent claim 5, which limits the
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`generic remote-controlled “device” incorporated from base claim 1 to a
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`remote-controlled vehicle such as a model airplane, a model helicopter, or a
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`Patent 7,584,071 B2
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`model car. Id. at col. 8, ll. 42–45. Because Patent Owner’s arguments
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`
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`regarding non-analogous art are not supported by the facts in this record, we
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`are not persuaded that either of Bathiche and Shkolnikov represents non-
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`analogous art.
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`On this record, we are persuaded that Petitioner has established a
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`reasonable likelihood that it would prevail in its challenge of claim 15 for
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`obviousness over Smith, Spirov, Bathiche, and Shkolnikov.
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`
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`F. Other Asserted Grounds of Unpatentability
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`We have discretion to institute inter partes review as to some asserted
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`grounds and not others. 37 C.F.R. § 42.108(a); see also 35 U.S.C. § 314(a)
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`(authorizing institution of inter partes review under particular
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`circumstances, but not requiring institution under any circumstances). This
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`discretion is consistent with the requirement that the regulations for inter
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`partes review proceedings take into account “the efficient administration of
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`the Office” and “the ability of the Office to timely complete [instituted]
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`proceedings,” 35 U.S.C. § 316(b), as well as with the requirement that the
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`rules for inter partes review proceedings be “construed to secure the just,
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`speedy, and inexpensive resolution of every proceeding.” 37 C.F.R.
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`§ 42.1(b). Accordingly, for reasons of administrative necessity, and to
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`ensure timely completion of the instituted proceeding, we exercise our
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`discretion and do not institute a review based on Petitioner’s other asserted
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`grounds.
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`III. CONCLUSION
`
`The Petition demonstrates a reasonable likelihood of prevailing on the
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`ground of anticipation over Smith as to claims 1–5 and 10–14, on the ground
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`of obviousness over Smith and Barr as to claims 6 and 7, on the ground of
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`
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`obviousness over Smith and Fouche as to claims 8 and 9, and on the ground
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`of obviousness over Smith, Spirov, Bathiche, and Shkolnikov as to claim 15.
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`The Board has not made a final determination on the patentability of
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`any challenged claim.
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`
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`In consideration of the foregoing, it is
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`IV. ORDER
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`ORDERED that an inter partes review is instituted as to claims 1–5
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`and 10–14 of the ’071 patent on the anticipation ground based on Smith;
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`FURTHER ORDERED that an inter partes review is instituted as to
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`claims 6 and 7 of the ’071 patent on the obviousness ground based on Smith
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`and Barr;
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`FURTHER ORDERED that an inter partes review is instituted as to
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`claims 8 and 9 of the ’071 patent on the obviousness ground based on Smith
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`and Fouche;
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`FURTHER ORDERED that an inter partes review is instituted as to
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`claim 15 of the ’071 patent on the obviousness ground based on Smith,
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`Spirov, Bathiche, and Shkolnikov;
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`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
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`partes review of the ’071 patent is instituted with trial commencing on the
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`entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
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`§ 42.4, notice is given of the institution of the trial; and
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`FURTHER ORDERED that the trial is limited to the grounds
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`identified immediately above, and no other ground is authorized for the ’071
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`patent claims.
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`IPR2014-00730
`Patent 7,584,071 B2
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`For Petitioner:
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`James Hopenfeld
`hopenfeld@oshaliang.com
`
`Tammy Terry
`terry@oshaliang.com
`
`For Patent Owner:
`
`Gene Tabachnick
`gtabachnick@beckthomas.com
`
`James Dilmore
`jdilmore@beckthomas.com
`
`20