throbber
Paper 8
`Trials@uspto.gov
`571-272-7822
`
`Entered: October 28, 2014
`
`
`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.
`
`
`
`
`
`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 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.”). Patent Owner, Drone Technologies, Inc., filed a
`
`
`
`
`

`

`IPR2014-00732
`Patent 8,106,748 B2
`
`
`preliminary response as permitted by 37 C.F.R. § 42.107. Paper 7 (“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 information
`
`presented in the petition . . . shows that there is a reasonable likelihood that
`
`the petitioner would prevail with respect to at least 1 of the claims
`
`challenged in the petition.”
`
`
`
`For the reasons that follow, we institute an inter partes review as to
`
`claims 1–12 of the ’748 patent.
`
`
`
`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.
`
`2
`
`
`

`

`IPR2014-00732
`Patent 8,106,748 B2
`
`
`
`
`
`
`
`
`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
`
`3
`
`
`

`

`IPR2014-00732
`Patent 8,106,748 B2
`
`
`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:
`
` a
`
` remote controller, comprising:
`
`
`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
`
`
`4
`
`
`

`

`IPR2014-00732
`Patent 8,106,748 B2
`
`
`
`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
`
`
`
` 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 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
`
`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.
`
`5
`
`
`

`

`IPR2014-00732
`Patent 8,106,748 B2
`
`
`D. Prior Art
`
`
`
`
`
`
`
`Spirov et al. (“Spirov”)
` (Ex. 1005)
`
`
`
`Barr
` (Ex. 1007)
`
`
`Fouche
` (Ex. 1008)
`
`Bathiche et al. (“Bathiche”)
` (Ex. 1009)
`
`Shkolnikov
` (Ex. 1010)
`
`
`
`
`
`
`
`
`
`
`
`
`
`US 2006/0144994 A1
`
`July 6, 2006
`
`US 7,219,861 B1
`
`
`
`May 22, 2007
`
`US 6,751,529 B1
`
`
`
`June 15, 2004
`
`US 7,145,551 B1
`
`
`
`Dec. 5, 2006
`
`US 2004/0263479 A1 Dec. 30, 2004
`
`
`
`E. Asserted Grounds of Unpatentability
`
`Petitioner asserts the following grounds of unpatentability under
`
`35 U.S.C. § 103(a) against claims 1–12:
`
`
`
`References
`
`
`Spirov, Bathiche, and/or Shkolnikov
`
`
`Spirov, Bathiche, and/or Shkolnikov
`and Fouche
`
`
`Spirov, Bathiche, and/or Shkolnikov
`and Barr
`
`
`
`
`Claims
`
`
`1–5 and 10–12
`
`
`4, 8, and 9
`
`
`
`6 and 7
`
`
`6
`
`
`

`

`IPR2014-00732
`Patent 8,106,748 B2
`
`
`
`II. ANALYSIS
`
`Claim Interpretation
`
`
`
`In an inter partes review, the Board construes claim terms in an
`
`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);
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
`
`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
`
`Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The Office must
`
`apply the broadest reasonable meaning to the claim language, taking into
`
`account any definitions presented in the specification. Id. (citing In re Bass,
`
`314 F.3d 575, 577 (Fed. Cir. 2002)). There is a “heavy presumption” that a
`
`claim term carries its ordinary and customary meaning. CCS Fitness, Inc. v.
`
`Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). The “ordinary and
`
`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
`
`1249, 1257 (Fed. Cir. 2007).
`
`
`
`A. Difference of Motion
`
`Petitioner submits that “difference of motion,” a phrase in claim 4,
`
`should be interpreted as “calculations related to motion that causes a change
`
`in orientation.” Pet. 17. Patent Owner in its Preliminary Response
`
`expresses no disagreement with that interpretation.
`
`As Petitioner indicates (id.), the ’748 patent does not provide a
`
`definition of the relevant terms different from the ordinary meaning of the
`
`words. For purposes of this Decision, we interpret “difference of motion,”
`
`7
`
`
`

`

`IPR2014-00732
`Patent 8,106,748 B2
`
`
`under the required broadest reasonable interpretation, simply to mean
`
`
`
`relative motion. That interpretation is consistent with the language of claim
`
`4. Claim 4 recites that the “calculated result” — the calculated current
`
`motion of the remote-controlled device — is compared with the target
`
`motion signal to get the “difference of motion” (relative motion) between the
`
`remote-controlled device and the remote controller. In relation to
`
`Petitioner’s proffered interpretation, because a change in orientation is a type
`
`of motion, relative orientation would be a type (or species) of “difference of
`
`motion.”
`
`
`
`B. Information of the Remote Controller’s Motion in the 3D Space
`
`Petitioner submits that the phrase “information of the remote
`
`controller’s motion in the 3D space,” which appears in claim 12, should be
`
`interpreted as “any motion in three dimensional space, including motion in
`
`one or two dimensions.” Pet. 17–18. Patent Owner in its Preliminary
`
`Response expresses no disagreement with that interpretation.
`
`Again, we find no definition in the ’748 patent that would depart from
`
`the ordinary meaning of the words. Claim 12 recites “wherein the motion
`
`detecting signal represents the information of the remote controller’s motion
`
`in the 3D space.” Claim 12 depends from claim 1. Neither claim sets forth
`
`an antecedent for “the 3D space.” Consistent with Petitioner’s position,
`
`information of motion in the 3D space, under its broadest reasonable
`
`interpretation, does not require complete information of motion in each of
`
`the three dimensions. Although the motion is in “the 3D space,” information
`
`of the motion may be information relating to motion in one, two, or three
`
`dimensions.
`
`8
`
`
`

`

`IPR2014-00732
`Patent 8,106,748 B2
`
`
`
`Section 103(a) Challenges
`
`
`
`A. 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
`
`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.
`
`9
`
`
`

`

`IPR2014-00732
`Patent 8,106,748 B2
`
`
`
`Patent Owner responds that Spirov discloses two separate and distinct
`
`
`
`embodiments, as opposed to two switch-selectable modes. Prelim. Resp.
`
`12–14. Even if true, however, Bathiche teaches two switch-selectable
`
`modes. Ex. 1009, col. 8, ll. 13–55. We, thus, do not consider the argued
`
`feature to be missing from the applied prior art.
`
`Patent Owner responds, additionally, that neither of Bathiche and
`
`Shkolnikov is analogous art. Prelim. Resp. 15–17. 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).
`
`Patent Owner argues that, “[a]s defined by Petitioners, the field of the
`
`‘748 Patent is that of control systems. See Pet. at 12.” Prelim. Resp. 15.
`
`The Petition at page twelve, however, does not “define” the field of
`
`endeavor but asserts that a person of ordinary skill in the art would be
`
`familiar with control systems and that the ’748 patent “describes a control
`
`system for a remotely controlled vehicle such as a hobby airplane.” Pet. 12.
`
`Patent Owner also argues that neither of Bathiche and Shkolnikov is
`
`reasonably pertinent to the particular problem with which the ’748 patent is
`
`concerned, namely “control of remotely controlled vehicles.” Prelim. Resp.
`
`16. The ’748 patent, however, indicates that the problem was broader than
`
`“control of remotely controlled vehicles.” The patent, for example, refers to
`
`remote control of “device[s].” E.g., Ex. 1001, col. 1, ll. 62–67. Moreover,
`
`the claimed subject matter embraces more than remotely controlled
`
`10
`
`
`

`

`IPR2014-00732
`Patent 8,106,748 B2
`
`
`“vehicles,” as exemplified by dependent claim 5, which limits the generic
`
`
`
`remote-controlled “device” incorporated from base claim 1 to a remote-
`
`controlled vehicle such as a model airplane, a model helicopter, or a model
`
`car. Id. at col. 8, ll. 30–33. Because Patent Owner’s arguments 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.
`
`We have reviewed Petitioner’s challenge of claim 1 and dependent
`
`claims 2, 3, 5, and 10–12. Based on the information presented in the
`
`Petition and the Preliminary Response, we determine that Petitioner has
`
`demonstrated a reasonable likelihood that it would prevail in showing that
`
`claims 1–3, 5, and 10–12 are rendered obvious by the combination of
`
`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.
`
`With respect to claim 4, Patent Owner responds that “Petitioners cite
`
`to Fouche only for the claim limitation of calculating the difference.”
`
`Prelim. Resp. 19. Patent Owner argues that Petitioner’s stated reason for
`
`modifying the base references in view of Fouche is that “‘Fouche explicitly
`
`describes what is standard and well known in the art.’” Id. According to
`
`11
`
`
`

`

`IPR2014-00732
`Patent 8,106,748 B2
`
`
`
`Patent Owner, that is legally insufficient to establish obviousness of claim 4.
`
`Id.
`
`However, Patent Owner identifies only one of the reasons that
`
`Petitioner offers in support of the obviousness ground. Petitioner also
`
`asserts that Fouche confirms that which is inherent in Spirov. Pet. 41;
`
`Ex. 1011 (“D’Andrea Decl.”) ¶ 92. Moreover, Fouche demonstrates that the
`
`described measurement was common knowledge to one of ordinary skill in
`
`the art. “[I]f a technique has been used to improve one device, and a person
`
`of ordinary skill in the art would recognize that it would improve similar
`
`devices in the same way, using the technique is obvious unless its actual
`
`application is beyond his or her skill.” KSR Int’l Co. v. Teleflex, Inc., 550
`
`U.S. 398, 417 (2007). A person of ordinary skill is a person of ordinary
`
`creativity, not an automaton. Id. at 421.
`
`Based on the information presented in the Petition and the Preliminary
`
`Response, we determine that Petitioner has demonstrated a reasonable
`
`likelihood that it would prevail in showing that the subject matter of claims
`
`4, 8, and 9 would have been obvious over the combination of 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; D’Andrea Decl. ¶¶ 95–100.
`
`12
`
`
`

`

`IPR2014-00732
`Patent 8,106,748 B2
`
`
`
`
`Based on the information presented in the Petition and the Preliminary
`
`Response, we determine that Petitioner has demonstrated a reasonable
`
`likelihood that it would prevail in showing that claims 6 and 7 are rendered
`
`obvious by the combination of Spirov, Bathiche, Shkolnikov, and Barr.
`
`
`
`E. Other Asserted Grounds of Unpatentability
`
`Petitioner also asserts that claim 4 is unpatentable as obvious over
`
`Spirov, Bathiche, and Shkolnikov. Pet. 41–42.
`
`We have discretion to institute inter partes review as to some asserted
`
`grounds and not others. 37 C.F.R. § 42.108(a); see also 35 U.S.C. § 314(a)
`
`(authorizing institution of inter partes review under particular
`
`circumstances, but not requiring institution under any circumstances). This
`
`discretion is consistent with the requirement that the regulations for inter
`
`partes review proceedings take into account “the efficient administration of
`
`the Office” and “the ability of the Office to timely complete [instituted]
`
`proceedings,” 35 U.S.C. § 316(b), as well as with the requirement that the
`
`rules for inter partes review proceedings be “construed to secure the just,
`
`speedy, and inexpensive resolution of every proceeding.” 37 C.F.R.
`
`§ 42.1(b). Accordingly, for reasons of administrative necessity, and to
`
`ensure timely completion of the instituted proceeding, we exercise our
`
`discretion and do not institute a review based on Petitioner’s other asserted
`
`grounds.
`
`
`
`III. CONCLUSION
`
`The Petition demonstrates a reasonable likelihood of prevailing on the
`
`grounds of obviousness over Spirov, Bathiche, and Shkolnikov as to claims
`
`13
`
`
`

`

`IPR2014-00732
`Patent 8,106,748 B2
`
`
`1–3, 5, and 10–12, over Spirov, Bathiche, Shkolnikov, and Fouche as to
`
`
`
`claims 4, 8, and 9, and over Spirov, Bathiche, Shkolnikov, and Barr as to
`
`claims 6 and 7.
`
`The Board has not made a final determination on the patentability of
`
`any challenged claim.
`
`
`
`In consideration of the foregoing, it is
`
`IV. ORDER
`
`ORDERED that an inter partes review is instituted as to claims 1–3,
`
`5, and 10–12 of the ’748 patent on the obviousness ground based on Spirov,
`
`Bathiche, and Shkolnikov;
`
`FURTHER ORDERED that an inter partes review is instituted as to
`
`claims 4, 8, and 9 of the ’748 patent on the obviousness ground based on
`
`Spirov, Bathiche, Shkolnikov, and Fouche;
`
`FURTHER ORDERED that an inter partes review is instituted as to
`
`claims 6 and 7 of the ’748 patent on the obviousness ground based on
`
`Spirov, Bathiche, Shkolnikov, and Barr;
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`
`partes review of the ’748 patent is instituted with trial commencing on the
`
`entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
`
`§ 42.4, notice is given of the institution of the trial; and
`
`FURTHER ORDERED that the trial is limited to the grounds
`
`identified immediately above, and no other ground is authorized for the ’748
`
`patent claims.
`
`
`
`
`
`14
`
`
`

`

`
`
`
`
`IPR2014-00732
`Patent 8,106,748 B2
`
`For Petitioner:
`
`James Hopenfeld
`hopenfeld@oshaliang.com
`
`Tammy Terry
`terry@oshaliang.com
`
`For Patent Owner:
`
`Gene Tabachnick
`gtabachnick@beckthomas.com
`
`James Dilmore
`jdilmore@beckthomas.com
`
`
`
`15
`
`
`

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