UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`AMERICAN HONDA MOTOR CO., INC.,
`HONDA OF AMERICA MFG., INC.,
`HONDA PATENTS & TECHNOLOGIES NORTH AMERICA, LLC,
`and HONDA MOTOR CO., LTD.,
`Petitioner,
`v.
`SIGNAL IP, INC.,
`Patent Owner.
`________________________
`Case IPR2015-01003
`Patent 5,732,375
`________________________
`
`PATENT OWNER’S ADDITIONAL BRIEFING CONCERNING THE
`STIPULATION AND PARTIAL JUDGMENT OF INVALIDITY IN THE
`RELATED LITIGATION
`
`
`
`1
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`AMERICAN HONDA MOTOR CO., INC.,
`HONDA OF AMERICA MFG., INC.,
`HONDA PATENTS & TECHNOLOGIES NORTH AMERICA, LLC,
`and HONDA MOTOR CO., LTD.,
`Petitioner,
`v.
`SIGNAL IP, INC.,
`Patent Owner.
`________________________
`Case IPR2015-01003
`Patent 5,732,375
`________________________
`
`PATENT OWNER’S ADDITIONAL BRIEFING CONCERNING THE
`STIPULATION AND PARTIAL JUDGMENT OF INVALIDITY IN THE
`RELATED LITIGATION
`
`
`
`1
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`
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`
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`
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`Pursuant to the Board’s Order of September 2, 2015, Patent Owner submits
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`the following additional briefing to address the issues raised by the parties’
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`stipulation and the Court’s partial judgment of invalidity in the underlying
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`litigations.
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`
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`(1) The challenged claims of the ‘375 patent implicated by the
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`stipulation are not indefinite.
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`Petitioner challenges the patentability of claims 1 and 7 of U.S. Patent
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`5,732,375 (the “’375 patent”). In the Court’s order of partial summary
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`judgment in the underlying litigation, claims 1 and 7 were found invalid as
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`indefinite under 35 U.S.C. § 112, paragraph 2.1 This determination was
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`made pursuant to the parties’ stipulation that,
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`In light of the Court’s claim construction order, Plaintiff
`and Defendants stipulate to entry of a partial final
`judgment that the following claims are invalid due to
`indefiniteness under 35 U.S.C. § 112, paragraph 2: . . .
`(ii) claims 1 and 7 of the ’375 patent. . . .2
`
`
`
`1 Ex. 3001 at 2.
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`2 Ex. 2002 at 2. Reexamination Certificate US 5,732,375 C1, issued July 30,
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`2015, confirms the patentability of claims 1 and 7, but directs attention to the
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`Court’s decision.
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`2
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`Notably, this stipulation related to a procedural action concerning the “entry
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`of a partial final judgment,” and not to the correctness of the Court’s
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`determination concerning validity of the subject claims. This is evidenced by
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`further provisions of the stipulation that,
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`Plaintiff and Defendants reserve all appellate rights,
`including, but not limited to, the right to appeal the
`Court’s April 17, 2015 claim construction order to the
`United States Court of Appeals for the Federal Circuit.
`Plaintiff reserves all rights as to claims not addressed by
`the Court’s claim construction order, or any new claims
`that may be issued by the United States Patent Office.3
`
`With respect to claim 1, the Court deemed the term “concentrated” to
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`be indefinite under 35 U.S.C. § 112, paragraph 2.4 In context, this term is
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`used in connection with calculations of forces in various seat areas:
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`“determining the existence of a local pressure area when the calculated total
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`force is concentrated in one of said seat areas,” and “calculating a local force
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`as a sum of forces sensed by each sensor located in the seat area in which the
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`
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`total force is concentrated.”5 The specification explains that,
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`3 Id. at 2-3.
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`4 Ex. 2001 at 41-43.
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`5 Ex. 1001 at 5:52-57.
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`
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`3
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`
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`a check is made for force concentration in a localized
`area <56>. Four overlapping localized areas are defined
`as shown in FIG. 7. The front four sensors 1, 6, 7 and 12
`are in the front group, the rear eight sensors 2, 3, 4, 5, 8,
`9, 10 and 11 are in the rear group, the left eight sensors 1,
`2, 3, 4, 5, 6, 8, and 9 are in the left group, and the eight
`sensors 4, 5, 7, 8, 9, 10, 11, and 12 are in the right group.
`The algorithm determines if the pressure is all
`concentrated in one group by summing the load ratings of
`the sensors in each group and comparing to the total load
`rating. If the rating sum of any group is equal to the total
`rating, a flag is set for that group (all right, all front etc.).6
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`Thus, force “concentration” is used consistently with the plain and ordinary
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`meaning of that term (a relative measure of the amount of force detected by
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`sensors in a given seat area) and, in this example, the total force may be
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`“concentrated” in a seat area when the sum in that area is equal to the total.
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`
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`Based on the above, a person of ordinary skill in the art reading the
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`‘375 patent would readily discern that the term “concentrated,” as used in
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`claim 1, means that the check for force concentration described in the
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`specification has determined that forces are such that “by summing the load
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`ratings of the sensors in each group and comparing to the total load rating,”
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`
`
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`6 Id. at 4:18-29.
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`4
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`
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`the sum of a group is equal to the total rating.
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`
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`The Court mistakenly determined that the claim should have recited
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`concentrations of 100% of forces and that because it did not the claim was
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`invalid.7 Such a determination, however, was inappropriate. Simply because
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`only one example of force concentration was provided in the specification is
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`not a basis for finding a claim indefinite. Indeed, a single embodiment may
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`provide broad support for the understanding of a person of ordinary skill in
`
`the art in cases involving predictable factors, such as mechanical or
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`electrical elements.8 Here, the determination of relative displacements of
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`forces over a defined sensor area involves predictable factors, hence the
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`example provided in the specification was sufficient to inform persons of
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`ordinary skill in the art of the boundaries of the claim.9 Accordingly, the
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`
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`7 Ex. 2001 at 43.
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`8 See, e.g., In re Vickers, 141 F.2d 522, 526-27 (CCPA 1944); In re Cook,
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`439 F.2d 730, 734 (CCPA 1971).
`
`9 Cf. Nautilus, Inc. v. Biosig Instruments, Inc. 134 S. Ct. 2120 (2014) (a
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`claim, viewed in light of the specification and prosecution history, need only
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`inform with reasonable certainty, those skilled in the art about the scope of
`
`the invention to satisfy § 112); Halliburton Energy Services, Inc. v. M-I
`
`
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`5
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`
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`claim is not indefinite. Claim 7 depends from claim 1 and is not indefinite
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`for at least the same reasons as claim 1.
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`
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`(2) If the Board determines the challenged claims are indefinite, the
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`Board should terminate this proceeding.
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`As noted above, the parties have not stipulated to indefiniteness of the
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`challenged claims. Rather, the parties stipulated to “entry of a partial final
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`judgment,” but left open their options to appeal the Court’s determination of
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`indefiniteness.10 No admissions or concessions were made concerning the
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`validity of the challenged claims as a result of the parties’ stipulation.
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`Notwithstanding the above, if the Board separately determines that the
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`challenged claims are incapable of being construed, for example because the
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`Board determines the claims are indefinite, then the Board should exercise
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`its discretion and terminate this proceeding.11 Where a claim’s meaning is
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`
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`indefinite under 35 U.S.C. § 112, ¶ 2, any rejection based on prior art is
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`LLC, 514 F.3d 1244 (Fed. Cir. 2008) (indefiniteness requires that a skilled
`
`artisan could not discern the boundaries of a claim).
`
`10 Ex. 2002 at 2-3.
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`11 See Blackberry Corp. v. MobileMedia Ideas, LLC, Case IPR2013-00036,
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`slip op. at 20 (PTAB Mar. 7, 2014) (Paper 65).
`
`6
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`
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`
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`improperly based on speculation.12 Accordingly, if the Board determines that
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`the challenged claims are indefinite, then it would be improper to institute an
`
`inter partes review based on any comparison of those claims to the asserted
`
`prior art and termination of the proceeding would be appropriate.
`
`
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`(3) If the Board determines the parties have stipulated that the
`
`challenged claims are indefinite, the Board should terminate this
`
`proceeding.
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`Although Patent Owner believes that the parties’ stipulation is not an
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`agreement that claims 1 and 7 are indefinite, if the Board determines
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`otherwise then the Board should exercise its discretion under 35 U.S.C. §
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`314 to deny the Petition and should proceed to terminate this proceeding
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`pursuant to 37 C.F.R. § 42.72. As indicated above, it would be improper to
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`institute an inter partes review based on any comparison of claims deemed
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`to be indefinite to the asserted prior art and termination of the proceeding
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`would be appropriate.
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`
`
`
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`12 In re Steele, 305 F.2d 859, 862–63 (CCPA 1962).
`
`7
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`
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`(4) Even if the Board determines the parties have stipulated that the
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`challenged claims are indefinite, the Board should not treat that
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`stipulation as a disclaimer.
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`As indicated above, Patent Owner believes that the parties’ stipulation
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`is not an agreement that claims 1 and 7 are indefinite. Further, even if the
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`Board determines otherwise, the Board should not treat the stipulation as a
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`disclaimer of claims 1 and 7.
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`A disclaimer is an unequivocal repudiation of a claim or a patent by
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`the owner thereof.13 The stipulation entered into by the parties reflected no
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`such repudiation. Instead,
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`Plaintiff and Defendants reserve all appellate rights,
`including, but not limited to, the right to appeal the
`Court’s April 17, 2015 claim construction order to the
`United States Court of Appeals for the Federal Circuit.
`Plaintiff reserves all rights as to claims not addressed by
`
`
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`13 See, e.g., 35 U.S.C. 253 (a) (“A patentee . . . may . . . make disclaimer of
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`any complete claim, stating therein the extent of his interest in such patent.
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`Such disclaimer shall be in writing, and recorded in the Patent and
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`Trademark Office; and it shall thereafter be considered as part of the original
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`patent to the extent of the interest possessed by the disclaimant and by those
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`claiming under him.”)
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`
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`8
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`
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`the Court’s claim construction order, or any new claims
`that may be issued by the United States Patent Office.14
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`The reservation of rights to appeal the Court’s determinations set forth in the
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`claim construction order is a clear indication that Patent Owner was not
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`unequivocally repudiating any claim of the ‘375 patent. Accordingly, the
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`Board should not treat the stipulation as a disclaimer even if it determines
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`that the parties somehow agreed that claims 1 and 7 are invalid for being
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`indefinite.
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`
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`Likewise, the Board should not treat the stipulation as a request for
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`adverse judgment by Patent Owner. A request for adverse judgment may not
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`be ambiguous and should not be subject to conditions.15 Here, the stipulation
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`expressly reserved all rights of appeal and, therefore, was not a repudiation
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`of any claim. Conditioning an adverse judgment on an appeal of an
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`underlying claim construction would provide no finality to any
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`determination in this proceeding. Accordingly, the Board should not treat the
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`stipulation as a request for adverse judgment by Patent Owner.
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`14 Ex. 2002 at 2-3 (emphasis added).
`
`15 Hyundai Motor Company v. American Vehicular Sciences LLC, Case
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`IPR2014-00629, slip op. at 2 (PTAB Feb. 6, 2015) (Paper 21).
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`9
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`Dated: September 10, 2015
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`
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`
`
`Ascenda Law Group, PC
`333 W San Carlos St., Suite 200
`San Jose, CA 95110
`Tel: 866-877-4883
`Email: tarek.fahmi@ascendalaw.com
`
`
`
`
`
`
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`Respectfully submitted,
`
`/Tarek N. Fahmi/
`Tarek N. Fahmi
`Reg. No. 41,402
`
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`10
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`
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing
`PATENT OWNER’S ADDITIONAL BRIEFING CONCERNING THE
`STIPULATION AND PARTIAL JUDGMENT OF INVALIDITY IN THE
`RELATED LITIGATION
`
`was served on September 10, 2015, by filing this document though the
`Patent Review Processing System as well as by delivering a copy via email
`directed to the attorneys of record for the Petitioner at the following address:
`Joshua A. Griswold
`Daniel Smith
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street,
`Minneapolis, MN 55402
`
`griswold@fr.com
`IPR15625-0018IP1@fr.com
`
`
`
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`The parties have agreed to electronic service in this proceeding.
`
`
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`
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`Respectfully submitted,
`/Tarek N. Fahmi/
`Dated: September 10, 2015
`
`
`
`
`
`
`
`
`Tarek N. Fahmi
`
`
`
`
`
`
`Reg. No. 41,402
`Ascenda Law Group, PC
`333 W San Carlos St., Suite 200
`San Jose, CA 95110
`Tel: 866-877-4883
`Email: patents@ascendalaw.com
`
`
`
`
`
`11
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