Paper 29
`Trials@uspto.gov
`571-272-7822
`
`Date Entered: October 20, 2015
`
`
`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 IPR2014-00732
`Patent 8,106,748 B2
`____________
`
`Before HOWARD B. BLANKENSHIP, MATTHEW R. CLEMENTS, and
`CHRISTOPHER M. KAISER, Administrative Patent Judges.
`
`BLANKENSHIP, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`I. BACKGROUND
`Parrot S.A. and Parrot, Inc. (collectively, “Petitioner”) filed a petition
`requesting an inter partes review of claims 1–12 of U.S. Patent No.
`8,106,748 B2 (Ex. 1001, “the ’748 patent”) under 35 U.S.C. §§ 311–319.
`Paper 1 (“Petition” or “Pet.”). The Board instituted an inter partes review of
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`claims 1–12 on asserted grounds of unpatentability for obviousness. Paper 8
`(“Dec. on Inst.”).
`Subsequent to institution, Patent Owner Drone Technologies, Inc.
`filed a patent owner response (Paper 15, “PO Resp.”). Petitioner filed a
`reply to the Patent Owner Response (Paper 18, “Pet. Reply”).
`Oral hearing was held on July 1, 2015.1
`The Board has jurisdiction under 35 U.S.C. § 6(c). This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons that follow, we determine that Petitioner has not shown by a
`preponderance of the evidence that claims 1–12 of the ’748 patent are
`unpatentable.
`
`
`A. Related Proceedings
`According to Petitioner, the ’748 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 ’748 Patent
`The ’748 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 5 of the ’748 patent is reproduced below.
`
`
`1 The record includes a transcript of the oral hearing. Paper 26 (“Tr.”).
`2
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`Figure 5 is a system diagram of a remote control system. Ex. 1001,
`col. 3, ll. 7–9. Remote controller 5 comprises acceleration sensing module
`51, communication module 53, and manual input module 54. In the first
`operation mode, acceleration sensing module 51 detects the acceleration of
`remote controller 5 and outputs acceleration sensing signal SG.
`Communication module 53 connects to acceleration sensing module 51 and
`transmits first target motion signal STAR1 according to the acceleration
`sensing signal. First target motion signal STAR1 controls the motion of
`remote-controlled device 4 to align with the acceleration sensing signal. Id.
`at col. 5, ll. 54–67.
`In the second operation mode, manual input module 54, which
`includes direction control unit 55, outputs direction control signal SCNT.
`Communication module 53 connects to manual input module 54 and
`transmits second target motion signal STAR2 according to the direction control
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`signal to control the motion of remote-controlled device 4. Id. at col. 6,
`ll. 8–15.
`In the third operation mode, communication module 53 transmits third
`target motion signal STAR3 according to the acceleration sensing signal and
`the direction control signal to control the motion of remote-controlled device
`4. Id. at col. 6, ll. 19–25.
`Remote controller 5 includes configuration switch module 52. The
`configuration switch module selects the mode of operation by selecting
`acceleration sensing module 51 and/or manual input module 54 as the input
`for communication module 53. Id. at col. 6, ll. 32–36.
`
`C. Illustrative Claim
`Claim 1, the sole independent claim, is illustrative and reproduced
`
`below.
`
`1. A remote control system, comprising:
`
` remote controller, comprising:
`
` a
`
`
`
`a first acceleration sensing module, which detects
`the remote controller’s motion and outputs a motion detecting
`signal;
`
`
`
`a manual input module, which has at least one
`direction control unit to generate a direction control signal;
`
`
`
`a first communication module, which connects to
`the first acceleration sensing module and the manual input
`module, the first communication module receives the motion
`detecting signal and the direction control signal, and transmits a
`target motion signal; and
`
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`a configuration switch module to select between
`
`the first acceleration sensing module, the manual input module
`and the combination of the first acceleration sensing module
`and the manual input module as the input of the first
`communication module; and
`
`
`
` remote-controlled device, which is controlled by the
`remote controller, comprising:
`
` a
`
`
`
`a second communication module, which receives
`the target motion signal from the remote controller;
`
`
`a second acceleration sensing module, which
`detects the remote-controlled device’s acceleration and
`outputs an acceleration sensing signal;
`
`
`
`a processing module, which has a first input
`connected to the second acceleration sensing module and
`receives the acceleration sensing signal, and a second input
`connected to the second communication module and receives
`the target motion signal, and processes the acceleration sensing
`signal and the target motion signal to output a driving control
`signal; and
`
`
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`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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`IPR2014-00732
`Patent 8,106,748 B2
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`D. Prior Art
`Spirov et al. (“Spirov”)
` (Ex. 1005)
`
`
`
`Barr
` (Ex. 1007)
`
`
`Fouche
` (Ex. 1008)
`
`Bathiche et al. (“Bathiche”)
` (Ex. 1009)
`
`Shkolnikov
` (Ex. 1010)
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`US 2006/0144994 A1
`
`July 6, 2006
`
`US 7,219,861 B1
`
`US 6,751,529 B1
`
`US 7,145,551 B1
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`May 22, 2007
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`June 15, 2004
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`Dec. 5, 2006
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`US 2004/0263479 A1 Dec. 30, 2004
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`E. Asserted Grounds of Unpatentability
`The Board instituted inter partes review on the following asserted
`grounds of unpatentability against claims 1–12 under 35 U.S.C. § 103(a)
`(Dec. on Inst. 14):
`
`
`
`References
`
`
`Spirov, Bathiche, and Shkolnikov
`
`
`Spirov, Bathiche, Shkolnikov, and
`Fouche
`
`
`Spirov, Bathiche, Shkolnikov, and
`Barr
`
`
`6
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`Claims
`
`
`1–3, 5, and 10–12
`
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`4, 8, and 9
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`6 and 7
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`II. ANALYSIS
`Section 103(a) Instituted Grounds
`A. Prior Art — Spirov, Bathiche, and Shkolnikov
`Spirov describes a remotely controlled hovercraft for which the
`remote controller may provide a thumb-activated throttle and yaw control 20
`and one or more finger-operated trigger controls 22 and 24. Ex. 1005 ¶ 82,
`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. 1009, 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
`mode switch selects between the different modes. Id.
`Shkolnikov (Ex. 1010) teaches an active keyboard system for
`handheld electronic devices, such as remote controllers (id. ¶¶ 27, 87, 94),
`that may include first selector 216 and second selector 218 (id. at Fig. 2) to
`select between manual input and motion (via movement sensors) as an input.
`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.
`
`B. Spirov, Bathiche, and Shkolnikov — Claims 1–3, 5, and 10–12
`Petitioner asserts that the subject matter of claims 1–3, 5, and 10–12
`would have been obvious over the combination of Spirov, Bathiche, and
`Shkolnikov. Pet. 18–42, 49–51.
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`Patent Owner responds that neither Bathiche nor Shkolnikov is
`analogous art. PO Resp. 11–13. The question of obviousness is resolved on
`the basis of underlying factual determinations including (1) the scope and
`content of the prior art, (2) any differences between the claimed subject
`matter and the prior art, and (3) the level of skill in the art. Graham v. John
`Deere Co., 383 U.S. 1, 17 (1966). Whether a reference is analogous art is
`part of the analysis of the scope and content of the prior art. Heidelberger
`Druckmaschinen AG v. Hantscho Commercial Prods., Inc., 21 F.3d 1068,
`1071 (Fed. Cir. 1994). Two criteria have evolved for determining whether
`prior art is analogous: (1) whether the art is from the same field of
`endeavor, regardless of the problem addressed, and (2) if the reference is not
`within the field of the inventor’s endeavor, whether the reference still is
`reasonably pertinent to the particular problem with which the inventor is
`involved. In re Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992).
`With respect to Shkolnikov, Patent Owner submits that the reference
`is directed to an active keyboard system for hand-held electronic devices.
`PO Resp. 12 (citing Ex. 1010 ¶ 20).2 “Shkolnikov discloses entering
`alphanumeric text and data into the system using only one hand. In no way
`is this technology analogous to the ‘748 Patent.” Id. (internal citation
`omitted). Patent Owner asserts that Shkolnikov is not in the ’748 patent’s
`field of endeavor, nor reasonably pertinent to the particular problem with
`
`2 Our analysis is directed to Shkolnikov, but we consider Bathiche to be, at
`the least, reasonably pertinent to the particular problem with which the
`inventor was involved and, thus, analogous art. Counsel for Patent Owner
`conceded as much at the oral hearing. See Tr. 59:22–60:2 (“I must confess
`that in terms of Bathiche being non-analogous art, Professor Sturges and I
`disagree on that point. He does not say that Bathiche is non-analogous art,
`and I understand that’s evidence and what I’m saying is argument.”).
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`which the ’748 patent is concerned, which is “easier control of remotely
`controlled ‘flying things.’” Id. at 12–13. Patent Owner points out that,
`when questioned on cross-examination about the problem that the ’748
`patent addressed, Petitioner’s expert Dr. D’Andrea responded that “[t]he
`problem being addressed was to be able to control these vehicles in [an] as-
`claimed easier way.” Id. at 11 (citing Ex. 2012, 96:1–13).
`Patent Owner also refers to the Declaration of Dr. Robert H. Sturges
`(Ex. 2013). PO Resp. 13. Dr. Sturges submits that Shkolnikov’s system is
`an active keyboard system for handheld data entry, used to enter
`alphanumeric text. Ex. 2013 ¶ 32 (citing Ex. 1010, Title and ¶¶ 3, 20). Dr.
`Sturges acknowledges that Shkolnikov states that the system can be used
`with electronic handheld devices including remote controls. Id. However,
`with respect to Shkolnikov’s disclosure of using the system with a remote
`control, Dr. Sturges states that:
`I interpret these passages to mean that Shkolnikov’s system can
`be used as a remote control for controlling such things as a
`television or a computer where alphanumeric input may be
`useful — just as I can use my cell phone to control my cable
`box and search for programs to view.
`
`Ex. 2013 ¶ 32.
`In its Reply to the Patent Owner Response, Petitioner responds that
`“[i]n its Institution Decision, the Board found that claims 1-3, 5, and 10-12
`are obvious over Smith in view of Spirov, Bathiche, and Shkolnikov, and
`that claims 4 and 6-9 are obvious in view of additional references.” Pet.
`Reply 6. Petitioner is incorrect. In our Decision on Institution we did not
`find that any claims were obvious over the references or otherwise
`unpatentable. In view of the record at that time, we determined that the
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`Petition demonstrated a reasonable likelihood of Petitioner prevailing (at
`trial) on certain asserted grounds of obviousness. Dec. on Inst. 13–14.
`Petitioner further submits that Patent Owner’s argument in the Patent
`Owner Response with respect to non-analogous art is, “in substance,
`identical to” the argument it raised in its Preliminary Response. Pet.
`Reply 6. Petitioner is, again, incorrect. In our Decision on Institution we
`addressed two arguments regarding non-analogous art that Patent Owner
`raised in its Preliminary Response. First, we disagreed that the Petition’s
`discussion of the level of ordinary skill in the art served to “define” the field
`of endeavor. Dec. on Inst. 10. Second, we were not persuaded by the
`argument that the particular problem with which the ’748 patent is
`concerned is “control of remotely controlled vehicles,” noting that only
`dependent claim 5 limits the generic remote-controlled “device” to a remote-
`controlled vehicle such as a model airplane, a model helicopter, or a model
`car. Id. at 10–11.
`Petitioner notes (Pet. Reply 6), correctly, that at the institution of trial
`we determined that “[b]ecause Patent Owner’s arguments [in its Preliminary
`Response] regarding non-analogous art are not supported by the facts in this
`record, we are not persuaded that either of Bathiche and Shkolnikov
`represents non-analogous art.” Dec. on Inst. 11. Notably, in that Decision
`instituting trial, we did not find that any of the applied references were
`analogous art with respect to the ’748 patent. Nor did we find that any of the
`applied references were non-analogous art with respect to the ’748 patent.
`Rather, we merely were not swayed by unsupported attorney arguments in
`the Preliminary Response as to why the references should be considered
`non-analogous art. Patent Owner had not yet had a full opportunity to
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`submit evidence supportive of its argument. Petitioner had not had the
`opportunity to provide arguments and/or evidence as to why the applied
`references might, to the contrary, represent analogous art, and we had not
`had the opportunity to hear Petitioner’s views on the issue.
`Petitioner’s only reply to the arguments and evidence in the Patent
`Owner Response in support of why Shkolnikov is non-analogous art, other
`than the unfounded reliance on the Decision on Institution, is the observation
`that the fact Dr. D’Andrea had not heard of Bathiche or Shkolnikov prior to
`this case is irrelevant to the analogous-art inquiry. Pet. Reply 6; PO Resp.
`12. We agree with Petitioner to the extent that the fact Dr. D’Andrea was
`not aware of the Bathiche and the Shkolnikov references prior to this case
`has little relevance to the question of whether the references are analogous
`art. “The issue of obviousness is determined entirely with reference to a
`hypothetical ‘person having ordinary skill in the art.’ It is only that
`hypothetical person who is presumed to be aware of all the pertinent prior
`art.” Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 454 (Fed. Cir.
`1985).
`When the analogous-art issue was raised by Patent Owner in its Patent
`Owner Response, it was incumbent upon Petitioner to demonstrate that
`Shkolnikov is analogous art. The grounds for unpatentability in this
`proceeding are asserted by Petitioner, not grounds entered by the Board as
`permitted, for example, in reexamination proceedings. In an inter partes
`review, the burden of persuasion is on the petitioner to prove unpatentability
`by a preponderance of the evidence (35 U.S.C. § 316(e)), and that burden
`never shifts to the patentee. Dynamic Drinkware, LLC v Nat’l Graphics,
`Inc., No. 2015-1214, 2015 WL 5166366, at *2 (Fed. Cir. Sept. 4, 2015).
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`Petitioner has not met its burden in showing that Shkolnikov is analogous
`art. Moreover, Petitioner cannot rely on the Board to make new findings
`regarding analogous art in a final written decision.
`We find no fault with Patent Owner’s position that Shkolnikov is non-
`analogous art. The ’748 patent states that the field of invention “relates to a
`remote-controlled motion apparatus which includes a remote-controlled
`device and a remote controller.” Ex. 1001, col. 1, ll. 16–19. The related art
`is said to include “conventional” remote control systems that use a remote
`controller and a remote-controlled device, with the user operating the remote
`controller to control the motion of the remote-controlled device. Id. at col.
`1, ll. 20–24. The patent provides an example of a remote-controlled model
`airplane, with a control signal sent by a remote controller for controlling the
`airplane’s flight by changing the angle of a rear fin. Id. at col. 1, ll. 24–58.
`Further, the ’748 patent’s claims are directed to a remote control
`system that includes a remote controller that “detects the remote controller’s
`motion and outputs a motion detecting signal,” and a remote-controlled
`device that ultimately has its motion adjusted according to a driving control
`signal derived in part from the remote controller’s motion detecting signal.
`Ex. 1001, claim 1 (sole independent claim).
`Consistent with Patent Owner’s arguments, Shkolnikov appears to
`relate to “active” keyboard systems for handheld electronic or data entry
`devices. Ex. 1010 ¶ 3. The related art is said to include electronic devices
`having small or limited keyboards for data entry or for navigating the
`Internet. Id. ¶¶ 5–10. The inventive “active” keyboard system is said to
`dynamically present available choices on a display to facilitate entry of
`alphanumeric text and data using one hand. Id. ¶ 20. The system may
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`include movement sensors to interpret motion of the system as an input. Id.
`¶ 25. The motion input is used, however, for data-entry applications such as
`aiding in the navigation of Internet web pages (id. ¶ 112) or in moving a
`selection pointer in a graphical user interface (id. ¶¶ 115–116, Figs. 11–13),
`as opposed to controlling the motion of a remotely controlled device. We
`find little in Shkolnikov that would be reasonably pertinent to an artisan
`seeking to improve upon control of the motion of a remotely controlled
`device.
`Shkolnikov is critical to the asserted ground of unpatentability
`because that reference provides the teaching of three modes of operation,
`including “the combination of the first acceleration sensing module and the
`manual input module,” as recited in illustrative claim 1. Pet. 24, 31 (claim
`chart); Ex. 1010 ¶¶ 24–25. Upon review of the Petition and supporting
`evidence, as well as the Patent Owner Response and supporting evidence,
`we conclude that Petitioner has not demonstrated, by a preponderance of the
`evidence, that claim 1 and dependent claims 2–3, 5, and 10–12 are
`unpatentable for obviousness over Spirov, Bathiche, and Shkolnikov.
`
`C. Spirov, Bathiche, Shkolnikov, and Fouche — Claims 4, 8, and 9
`Petitioner contends that the subject matter of claims 4, 8, and 9 would
`have been obvious over the above-noted combination of Spirov, Bathiche,
`and Shkolnikov, with the further teachings of Fouche. Pet. 42–43, 46–48.
`Fouche teaches a remotely controlled helicopter in which the pitch attitude
`error is the difference between a commanded pitch attitude and a measured
`(actual) pitch attitude. Ex. 1008, col. 7, ll. 37–56, Figs. 2, 3.
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`Because the addition of Fouche does not remedy the deficiency in the
`combination of Spirov, Bathiche, and Shkolnikov applied against base claim
`1, we conclude that Petitioner has not demonstrated, by a preponderance of
`the evidence, that dependent claims 4, 8, and 9 are unpatentable for
`obviousness over Spirov, Bathiche, Shkolnikov, and Fouche.
`
`D. Spirov, Bathiche, Shkolnikov, and Barr — Claims 6 and 7
`Petitioner contends that the subject matter of claims 6 and 7 would
`have been obvious over the combination of Spirov, Bathiche, and
`Shkolnikov, with the further teachings of Barr. Pet. 43–45. Claims 6 and 7
`are specific to adjusting the pitch of an airplane wing. Barr teaches a
`remotely-controlled airplane in which the pitch of the airplane wing is
`adjusted. Ex. 1007, col. 4, ll. 18–41; Ex. 1011 ¶¶ 95–100.
`Because the addition of Barr does not remedy the deficiency in the
`combination of Spirov, Bathiche, and Shkolnikov applied against base claim
`1, we conclude that Petitioner has not demonstrated, by a preponderance of
`the evidence, that dependent claims 6 and 7 are unpatentable for obviousness
`over Spirov, Bathiche, Shkolnikov, and Barr.
`
`
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`E. Patent Owner’s Motion to Exclude Evidence
`Patent Owner moves to exclude the Declaration of Dr. D’Andrea (Ex.
`1011). Paper 19. Because consideration of Dr. D’Andrea’s Declaration
`does not change the outcome in favor of Patent Owner in this final written
`decision, the motion to exclude is dismissed as moot.
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`III. CONCLUSION
`Petitioner has not demonstrated by a preponderance of the evidence
`that claims 1–12 are unpatentable for obviousness.
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`IV. ORDER
`In consideration of the foregoing, it is
`
`ORDERED that, based on a preponderance of the evidence,
`claims 1–12 of the ’748 patent have not been shown to be unpatentable; and
`
`FURTHER ORDERED that Patent Owner’s motion to exclude
`evidence is dismissed; and
`
`FURTHER ORDERED that, because this is a final written
`decision, parties to the proceeding seeking judicial review of the decision
`must comply with the notice and service requirements of 37 C.F.R. § 90.2.
`
`For Petitioner:
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`James E. Hopenfeld
`Tammy J. Terry
`OSHA LIANG LLP
`hopenfeld@oshaliang.com
`terry@oshaliang.com
`
`For Patent Owner:
`
`Gene Tabachnick
`James Dilmore
`BECK & THOMAS, P.C.
`gtabachnick@beckthomas.com
`jdilmore@beckthomas.com