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. 8,106,748
`Filed:
`March 19, 2008
`Issued:
`Jan. 31, 2012
`Inventor: Yu-Tuan Lee
`Assignee: Drone Technologies, Inc.
`Title: Remote-Controlled Motion Apparatus With Acceleration Self-Sense 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. 8,106,748
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET SEQ.
`
`
`
`
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,106,748
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II. MANDATORY NOTICES ............................................................................. 4
`
`A.
`
`B.
`
`C.
`
`D.
`
`Real Party-In-Interest ............................................................................ 4
`
`Related Matters ...................................................................................... 4
`
`1.
`
`2.
`
`Related Litigation ........................................................................ 4
`
`Related Applications ................................................................... 5
`
`Lead and Back-Up Counsel ................................................................... 5
`
`Service Information ............................................................................... 5
`
`III. PAYMENT OF FEES ..................................................................................... 6
`
`IV. REQUIREMENTS FOR INTER PARTES REVIEW ...................................... 6
`
`A. Grounds for Standing ............................................................................ 6
`
`B.
`
`Identification of Challenge .................................................................... 6
`
`1.
`
`3.
`
`The Specific Art and Statutory Ground(s) on Which the
`Challenge Is Based ...................................................................... 7
`
`How the Construed Claims Are Unpatentable Under the
`Statutory Grounds Identified in 37 C.F.R. § 42.204(B)(2) and
`Supporting Evidence Relied Upon to Support the Challenge .... 8
`
`V.
`
`FACTUAL BACKGROUND.......................................................................... 8
`
`A. Declaration Evidence ............................................................................ 8
`
`B.
`
`C.
`
`D.
`
`E.
`
`The State of the Art ............................................................................... 9
`
`The Person of Ordinary Skill in the Art ..............................................12
`
`The ’748 Patent ...................................................................................12
`
`Prosecution History of the ’748 Patent ...............................................15
`
`i
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`

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`Petition for Inter Partes Review of U.S. Patent No. 8,106,748
`
`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.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`Claims 1, 3, 5, 11, and 12 Are Rendered Obvious Under 35 U.S.C. §
`103(a) by Spirov Taken in View of Bathiche and/or Shkolnikov ......18
`
`Claim 2 Is Rendered Obvious Under 35 U.S.C. § 103(a) by Spirov
`Taken in View of Bathiche and/or Shkolnikov ...................................38
`
`Claim 4 Is Rendered Obvious Under 35 U.S.C. § 103(a) by Spirov
`Taken in View of Bathiche and/or Shkolnikov alone, or in
`combination with Fouche ....................................................................41
`
`Claims 6 and 7 Are Rendered Obvious Under 35 U.S.C. § 103(a) by
`Spirov Taken in View of Bathiche and/or Shkolnikov and Barr ........43
`
`Claims 8 and 9 Are Rendered Obvious Under 35 U.S.C. § 103(a) by
`Spirov Taken in View of Bathiche and/or Shkolnikov and Fouche ...46
`
`Claim 10 Is Rendered Obvious Under 35 U.S.C. § 103(a) by Spirov
`Taken in View of Bathiche and/or Shkolnikov and the Knowledge of
`a Person of Ordinary Skill in the Art ..................................................49
`
`VIII. CONCLUSION ..............................................................................................51
`
`
`
`
`
`ii
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,106,748
`
`EXHIBIT LIST
`
`Exhibit #
`
`Reference Name
`
`Ex. 1001
`
`U.S. Patent No. 8,106,748 (“the ’748 Patent”)
`
`Ex. 1002
`
`U.S. Patent No. 5,043,646 (“Smith”)
`
`Ex. 1003
`
`French Patent No. 9901683 to Potiron
`
`Ex. 1004
`
`Certified Translation of French Patent No. 9901683
`(“Potiron”)
`
`Ex. 1005
`
`U.S. Pat. Pub. No. 2006/10144994 A1 (“Spirov”)
`
`Ex. 1006
`
`EXHIBIT INTENTIONALLY LEFT BLANK
`
`Ex. 1007
`
`U.S. Pat. No. 7,219,861 (“Barr”)
`
`Ex. 1008
`
`U.S. Pat. No. 6,751,529 (“Fouche”)
`
`Ex. 1009
`
`U.S. Pat. No. 7,145,551 (“Bathiche”)
`
`Ex. 1010
`
`U.S. Pat. Pub. No. 2004/0263479 (“Shkolnikov”)
`
`Ex. 1011
`
`Expert Declaration of Dr. Raffaello D’Andrea, PhD, with
`Attachments A-C
`
`Ex. 1011, Att. A U.S. Patent No. 613,809 to Tesla (“Tesla”)
`
`Ex. 1011, Att. B U.S. Patent No. 3,101,569 to Giardina (“Giardina”)
`
`Ex. 1011, Att. C U.S. Patent No. 8,072,417 (“Jouanet”)
`
`Ex. 1012
`
`Claim Chart Demonstrating Invalidity of the ’748 Patent
`
`
`
`
`
`iii
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`

`

`I.
`
`INTRODUCTION
`
`Petitioners Parrot S.A and Parrot,
`
`Inc.
`
`(collectively, “Parrot” or
`
`“Petitioners”) respectfully request inter partes review for claims 1-12 of U.S.
`
`Patent No. 8,106,748 (“the ’748 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 ‘748
`
`Patent is obvious under 35 U.S.C. § 103. The relevant prior art includes references
`
`not cited during the prosecution of the ’748 Patent. A claim chart and the
`
`declaration of Prof. Raffaelo D’Andrea are submitted with this petition.
`
`The ’748 Patent is generally directed to a “remote-controlled motion
`
`apparatus with acceleration self-sense and remote control apparatus.” Ex. 1001,
`
`1:1-4.1 The intent of the ’748 Patent is to allow a user to guide a remotely
`
`controlled aircraft by moving a remote control. In theory, accelerometers 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
`
`accelerometers 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
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`

`

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

`

`Petition for Inter Partes Review of U.S. Patent No. 8,106,748
`
`the prior art. Like the ’748 Patent, U.S. Patent Application Publication No.
`
`2006/0144994 (“Spirov,” Ex. 1005) teaches remote control of a “hovercraft” using
`
`sensed acceleration in both the remote control and the hovercraft itself. Spirov
`
`teaches that control of the hovercraft can be accomplished by sensed movement
`
`alone, or by sensed movement in combination with manual control of movement,
`
`such as by using a joystick.
`
`To the extent Spirov does not expressly disclose certain limitations of the
`
`independent and dependent claims, they are disclosed in related prior art and would
`
`have been obvious to combine with Spirov. Indeed, these additional limitations
`
`address routine design choices and details.
`
`Independent claim 1 requires, for example, the capability to switch between
`
`control using sensed motion alone, control using manual input alone, or a
`
`combination of the two. Spirov teaches control using sensed motion alone and
`
`sensed motion in combination with manual input, but does not expressly teach
`
`control using manual input alone. The use of a switch to allow manual input as an
`
`additional mode of control as a design alternative already was known. See U.S.
`
`Patent No. 7,145,551(“Bathiche,” (Ex. 1009). Similarly, the three modes of
`
`operation, including sensed control, manual control, and the combination of the
`
`two, also was known. See U.S. Patent Application Publication No. 2004/0263479
`
`(“Shkolnikov,” Ex. 1010). As shown in the accompanying declaration of Prof.
`
`3
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,106,748
`
`Raffaello D’Andrea, modifying Spirov to include a three-mode switch would have
`
`been well within the level of ordinary skill in the art, and a skilled artisan would
`
`have been motivated to make the modification based on suggestions in each of
`
`those prior art references.
`
`Other limitations found in dependent claims are, to the extent not expressly
`
`taught by Spirov, either are inherent in Spirov or would have been obvious and
`
`well-known to a person of ordinary skill in the art.
`
`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), Petitioners certify 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
`
`Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioners state that the ’748 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 ’748 Patent, attached as Ex. 1001.
`
`4
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,106,748
`
`The other patent-in-suit is the ’071 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
`
`’748 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:
`
`Email:
`
`Telephone:
`Facsimile:
`
`James E. Hopenfeld
`Tammy J. Terry
`Osha Liang LLP
`909 Fannin Street, Suite 3500
`Houston, Texas 77010
`hopenfeld@oshaliang.com
`terry@oshaliang.com
`713.228.8600
`713.228.8611
`
`5
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,106,748
`
`III. PAYMENT OF FEES
`
`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 ’748 Patent is satisfied.
`
`A. Grounds for Standing
`
`Pursuant to 37 C.F.R. § 42.104(a), Petitioners hereby certify that the ’748
`
`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 ’748
`
`Patent on the grounds identified herein. The ’748 Patent has not been subject to a
`
`previous estoppel based proceeding of the AIA.
`
`B.
`
`Identification of Challenge
`
`Pursuant to 37 C.F.R. §§ 42.104(b) and (b)(1), Petitioner requests inter
`
`partes review of claims 1-12 of the ’748 Patent, and that the Patent Trial and
`
`Appeal Board (“PTAB”) invalidate the same.
`
`6
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,106,748
`
`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 ’748 Patent
`
`is requested in view of the following references, each of which is prior art to the
`
`’748 Patent under 35 U.S.C. § 102(a), (b), and/or (e). The ’748 Patent claims
`
`priority to a Taiwanese patent application dated March 23, 2007. The application
`
`upon which the ’748 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.
`
`(1) U.S. Patent Application Publication No. 2006/0144994 to Peter
`
`Spirov and Brad Pedersen (“Spirov,” Ex. 1005), published Jul 6, 2006 and filed
`
`September 2, 2003 is prior art to the ’748 Patent under 35 U.S.C. § 102(b).
`
`(2) U.S. Patent No. 7,219,861 to Howard Barr (“Barr,” Ex. 1007), issued
`
`May 22, 2007 from an application filed July 6, 2000, is prior art to the ’748 Patent
`
`under 35 U.S.C. § 102 (e).
`
`(3) U.S. Patent No. 6,751,529 to J. Michael Fouche (“Fouche,” Ex. 1008),
`
`issued on June 15, 2004, from an application filed on May 30, 2003 is prior art to
`
`the ’748 Patent under 35 U.S.C. § 102(b).
`
`(4) U.S. Patent No. 7,145,551 to Steven Bathiche et al. (“Bathiche,”
`
`Ex. 1009), issued December 5, 2006, from an application filed on February 17,
`
`1999, is prior art to the ‘748 Patent under 35 U.S.C. § 102 (b).
`
`7
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,106,748
`
`(5) U.S. Patent Application Publication No. 2004/0263479 to Mark
`
`Shkolnikov (“Shkolnikov,” Ex. 1010), published December 30, 2004 and filed July
`
`22, 2004 is prior art to the ’748 Patent under 35 U.S.C. § 102(b).
`
`3. How the Construed Claims Are Unpatentable Under the
`Statutory Grounds Identified in 37 C.F.R. § 42.204(B)(2)
`and Supporting Evidence Relied Upon to Support the
`Challenge
`
`Pursuant to 37 C.F.R. § 42.204(b)(4), an explanation of how claims 1-12 of
`
`the ’748 Patent are unpatentable under the statutory grounds identified above,
`
`including the identification of where each element of the claim is found in the prior
`
`art, is provided in claims 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 Evidence
`
`This Petition is supported by the declaration of Raffaello D’Andrea,
`
`professor of dynamic systems and control of ETH Zurich (attached as Ex. 1011).
`
`
`
`2 For the PTAB’s convenience, a copy of all claim charts are also provided in
`
`Ex. 1012 submitted with this Petition.
`
`8
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`

`Petition for Inter Partes Review of U.S. Patent No. 8,106,748
`
`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
`
`The state of the art is described in detail in paragraphs 37-48 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 the 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,
`
`9
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`

`Petition for Inter Partes Review of U.S. Patent No. 8,106,748
`
`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”, Ex. 1002), 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. Smith
`
`(Ex. 1002). 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. 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. 1005) (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
`
`10
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`Petition for Inter Partes Review of U.S. Patent No. 8,106,748
`
`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, Spirov had taught the use of accelerometers not only to detect
`
`motion of a remote control, but also to control the movement of a remotely
`
`controlled vehicle, in this case a hovercraft. Ex. 1005, ¶¶ 0072-78; Ex. 1011
`
`(D’Andrea Dec.) at ¶ 47. Both the remote control and hovercraft of Spirov include
`
`arrays of accelerometers and other circuitry to detect their motion in space.
`
`Movement of the remote control thereby controls movement of the hovercraft.
`
`Spirov further teaches an alternative mode of operation in which sensed motion is
`
`combined with manual input to control the movement of the hovercraft. In this
`
`alternative mode, the “roll” and “pitch” of the hovercraft is controlled by sensed
`
`motion of the remote control, while the “yaw” of the hovercraft is controlled by
`
`manual input through a joystick. Ex. 1011 (D’Andrea Dec.) at ¶ 66.
`
`At approximately the same time Spirov was published, 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. 1011, 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. 1011 (D’Andrea Dec.) at ¶ 46;
`
`Ex. 1010, Att. C at 5:26-34 and Fig. 2. Jouanet expressly teaches that its control
`
`11
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`

`Petition for Inter Partes Review of U.S. Patent No. 8,106,748
`
`system could be used in conjunction with a remotely controlled vehicle such as a
`
`drone. Ex. 1011 (D’Andrea Dec.) at ¶ 46; 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 ’748 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 ¶ 21.
`
`D. The ’748 Patent
`
`The ’748 Patent is described in detail in paragraphs 49-56 of Prof.
`
`D’Andrea’s declaration (Ex. 1011). A summary follows.
`
`The ’748 Patent describes a control system for a remotely controlled vehicle
`
`such as a hobby airplane. Ex. 1001, 8:30-33. Both the remote control and airplane
`
`include “acceleration sensing modules” to sense their respective movements. The
`
`remote control senses movement using its acceleration sensing module, sends a
`
`wireless signal to the airplane to align its movement to that of the remote control,
`
`and the airplane uses its “acceleration sensing module” to move according to the
`
`instruction sent by the remote control. Ex. 1011 (D’Andrea Dec.) at ¶ 49.
`
`12
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`

`Petition for Inter Partes Review of U.S. Patent No. 8,106,748
`
`The ’748 Patent does not explain the structure or operation of the
`
`acceleration sensing module in either the remote controller or remote-controlled
`
`device. The ’748 Patent states only that the module would include an
`
`accelerometer for detecting acceleration in the “X, Y, and Z” axes (Ex. 1001, 3:48-
`
`50), and that the accelerometer would be able to detect a change in acceleration
`
`due to the “motion” of the remote controlled device (Ex. 1001, 4:4-9). The ’748
`
`Patent does not specify what “motion” of the remote would be sensed. 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, 3:57-4:3.
`
`As demonstrated in the declaration of Prof. D’Andrea, accelerometers alone
`
`are incapable of detecting all motion in space. They cannot, for example,
`
`distinguish between acceleration due to gravity and acceleration due to changes in
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`translational velocity over time. Accordingly, accelerometers in a remote control
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`and a remotely controlled device could give identical readings while performing
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`two different motions in space. Without additional instrumentation or technology
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`not taught by the ’748 Patent, it would not be possible to control the flight of an
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`airplane using the “acceleration sensing modules” taught by the ’748 Patent.
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`Ex. 1011 (D’Andrea Dec.) at ¶ 51-55.
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`The ’748 Patent further teaches a mode of operation in which control of the
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`aircraft is accomplished by a combination of control using the accelerometers and
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`Petition for Inter Partes Review of U.S. Patent No. 8,106,748
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`control using manual inputs, such as a joystick. Ex. 1001, 6:39-51. The ’748
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`Patent does not teach or explain how such control would be accomplished, in
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`particular in view of the limitations of accelerometers to detect motion in three-
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`dimensional space.3 Ex. 1011 (D’Andrea Dec.) at ¶ 56.
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`
`
`3 The U.S. patent application leading to the ’748 Patent was filed on March
`
`19, 2008. On that same day, the applicant filed another patent application
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`(Pat. App. No. 12/051,662), which ultimately issued as U.S. Patent No. 7,584,071
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`(“the ’071 Patent”). The ’071 patent teaches the use of magnetometers instead of
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`accelerometers to sense motion of the remote control and hobby airplane.
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`Otherwise, the teachings of the ’071 patent are substantially identical to those of
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`the ’748 Patent. Like the ’748 Patent, the ’071 patent could not work for its
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`intended purpose because, like accelerometers, magnetometers alone cannot be
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`used to detect all motion in three dimensional space. Additional instrumentation or
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`technology not disclosed by the ’071 patent would be required to control the flight
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`of an airplane. It thus appears that the inventor of the ’748 and ’071 patents did
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`not grasp the limitations of either accelerometers or magnetometers in sensing
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`motion and did not grasp the problems associated with using these instruments to
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`sense movement in a way that could be used to control flight.
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`Petition for Inter Partes Review of U.S. Patent No. 8,106,748
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`E.
`
`Prosecution History of the ’748 Patent
`
`The application from which the ’748 Patent issued (U.S. Patent Application
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`No. 12/051,683) was filed on March 19, 2008 and listed Yu-Tuan Lee as the
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`inventor. A single non-final Office Action issued on April 1, 2011, with
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`nonstatutory obviousness-type double patenting rejections of claims 1-15 as being
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`unpatentable over the claims of the ’071 Patent, rejecting claim 15 under 35 U.S.C.
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`§ 112, and rejecting claims 1-7 and 10-14 under 35 U.S.C. §103(a) as being
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`unpatentable over Barr (U.S. Pat. No. 7,219,861 B1) in view of Ikeda et al. (U.S.
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`2007/0060391). The applicant amended certain claims, cancelled others, and filed
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`a terminal disclaimer in response on June 27, 2011, obviating the double patenting
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`rejections. A Notice of Allowance issued on September 29, 2011. The ’748 Patent
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`issued on January 31, 2012.
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`VI. BROADEST REASONABLE CONSTRUCTION
`
`Pursuant to 37 C.F.R. § 42.204(b)(3), the claims subject to inter partes
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`review shall receive the “broadest reasonable construction in light of the
`
`specification of the patent in which [they] appear[].” See also In re Swanson,
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`No. 07-1534, 540 F.3d 1368, 1378 (Fed. Cir. 2008); In re Trans Texas Holding
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`Corp., 498 F.3d 1290, 1298 (Fed. Cir. 2007) (citing In re Yamamoto, 740 F.2d
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`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
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`Petition for Inter Partes Review of U.S. Patent No. 8,106,748
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`interpreting claim scope. Moreover, the Office is not bound by any district court
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`claim construction. Trans Texas, 498 F.3d at 1297- 98, 1301. Rather:
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`the PTO applies to verbiage of the proposed claims the broadest
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`reasonable meaning of the words in their ordinary usage as they
`
`would be understood by one of ordinary skill in the art, taking into
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`account whatever enlightenment by way of definitions or otherwise
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`that may be afforded by the written description contained in
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`applicant’s specification.
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`In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
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`Because the standards of claim interpretation used by the Courts in patent
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`litigation are different from the claim interpretation standards used by the Office in
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`claim examination proceedings (including inter partes review), any claim
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`interpretations submitted herein for the purpose of demonstrating a Reasonable
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`Likelihood of Prevailing are neither binding upon litigants in any litigation, nor do
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`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
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`Petition for Inter Partes Review of U.S. Patent No. 8,106,748
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`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
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`skilled artisan.
`
`A.
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`“difference of motion”
`
`Under the broadest reasonable construction/interpretation (“BRI”), the term
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`“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
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`the extent claim 4 could be interpreted to require a calculation in which one
`
`velocity is subtracted from another based on an “acceleration sensing signal,” it
`
`requires an impossibility. Accelerometers cannot, without some other devices or
`
`structures not specified by the ’748 Patent, be used to calculate velocities. The
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`proposed construction is the best attempt to make sense of the “difference of
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`motion” claim language. Ex. 1011 (D’Andrea Dec.) at ¶ 91.
`
`B.
`
`“information of the remote controller’s motion in the 3D
`space”Under
`the broadest reasonable construction/interpretation
`
`(“BRI”), the term “information of the remote controller’s motion in the 3D space,”
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`Petition for Inter Partes Review of U.S. Patent No. 8,106,748
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`which appears only in dependent claim 12, should be interpreted as any motion in
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`three dimensional space, including motion in one or two dimensions.
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`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
`
`specification, it is untenable. As explained in the declaration of Prof. D’Andrea,
`
`accelerometers cannot by themselves detect all possible motion in three
`
`dimensional space. Ex. 1011 (D’Andrea Dec.) at ¶ 51. There is no teaching in the
`
`’748 Patent how accelerometers, or the claimed “acceleration sensing module,”
`
`could be so used. Adopting the narrower construction would render claim 12 to
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`claim impossibility. Ex. 1011 (D’Andrea Dec.) at ¶¶ 51-56, 85.
`
`VII. REPRESENTATIVE PROPOSED REJECTIONS AND SHOWING
`THAT PETITIONER IS LIKELY TO PREVAIL
`
`The references addressed below render obvious the claimed subject matter.
`
`It should be understood that rejections may be premised on alternative
`
`combinations of these same references.
`
`A. Claims 1, 3, 5, 11, and 12 Are Rendered Obvious Under 35 U.S.C.
`§ 103(a) by Spirov Taken in View of Bathiche and/or Shkolnikov
`
`United States Patent Application Publication No. 2006/0144994 (“Spirov,”
`
`Ex. 1005) was not considered during the original prosecution of the ’748 Patent,
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`Petition for Inter Partes Review of U.S. Patent No. 8,106,748
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`nor is it cumulative of any prior art considered by the Examiner. U.S. Patent
`
`No. 7,145,551 (“Bathiche,” Ex. 1009) and U.S. Patent Application Publication
`
`No. 2004/0263479 (“Shkolinikov,” Ex. 1010) were not considered during the
`
`original prosecution of the ’748 Patent, and are n