IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`In re Patent of: Cashler
`Case No.
`IPR2015-01003
`U.S. Patent No.: 5,732,375
`Docket No.:
`15625-0019IP1
`Issue Date:
`March 24, 1998
`
`Appl. Serial No.: 08/566,029
`
`Filing Date:
`December 1, 1995
`
`Title:
`METHOD OF INHIBITING OR ALLOWING AIRBAG
`DEPLOYMENT
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`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`BRIEF RESPONSIVE TO BOARD ORDER FILED SEPTEMBER 2, 2015
`RE: PARTIAL JUDGMENT OF INVALIDITY IN DISTRICT COURT
`
`
`In re Patent of: Cashler
`Case No.
`IPR2015-01003
`U.S. Patent No.: 5,732,375
`Docket No.:
`15625-0019IP1
`Issue Date:
`March 24, 1998
`
`Appl. Serial No.: 08/566,029
`
`Filing Date:
`December 1, 1995
`
`Title:
`METHOD OF INHIBITING OR ALLOWING AIRBAG
`DEPLOYMENT
`
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`BRIEF RESPONSIVE TO BOARD ORDER FILED SEPTEMBER 2, 2015
`RE: PARTIAL JUDGMENT OF INVALIDITY IN DISTRICT COURT
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`American Honda Motor Co., Inc. (“Petitioner” or “Honda”) files the present
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`Brief in response to Board’s Order filed September 2, 2015 (“the Order”) in the
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`present Inter Partes Review (IPR) proceeding. Petitioner respectfully submits that
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`the Board should not deny institution of the present IPR or terminate the
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`proceeding under 37 CFR § 42.72, because the Joint Stipulation by the Petitioner
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`and Patent Owner (“the Joint Stipulation”) in the District Court case is to the entry
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`of the judgment only, not to the indefiniteness of the claims. As a result, Patent
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`Owner may still appeal the judgment at the conclusion of trial, which leaves open
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`the possibility that the claims may yet be found valid. If the Board denies
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`institution of or terminates the present IPR, Petitioner will be unable to challenge
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`the claims in a later IPR due to the one-year bar imposed by 35 U.S.C. § 315(b).
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`Accordingly, the Board should afford Petitioner the opportunity to challenge the
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`claims on prior art grounds in the present IPR by allowing the proceeding to
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`continue.
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`The Order listed specific issues to be addressed in this Brief. Petitioner will
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`address each of these issues in turn.
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`I. Explanation of the Joint Stipulation
`On April 17, 2015, the District Court issued a claim construction order
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`holding that the term “concentrated” in claim 1 of the ’375 Patent is indefinite
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`1
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`under 35 U.S.C. § 112 ¶ 2. Ex. 2002, p. 1. The Patent Owner and the defendants
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`(including Honda) filed the Joint Stipulation to entry of a judgment of invalidity of
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`claims 1 and 7 of the ’375 Patent by the District Court, which had the effect of
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`removing the claims from consideration in the case. Id. Notably, the Joint
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`Stipulation was to “entry” of the judgment by the District Court only. Id. Neither
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`the Patent Owner nor the defendants stipulated to the indefiniteness of the claims
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`of the ’375 Patent, and all parties “reserve[d] all appellate rights, including, but not
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`limited to, the right to appeal the Court’s April 17, 2015 claim construction order
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`to the United States Court of Appeals for the Federal Circuit.” Id. at pp. 1-2.
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`Accordingly, the partial judgment of invalidity entered in response to the Joint
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`Stipulation can still be appealed to Federal Circuit, and thus has no preclusive of
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`effect on the Board in the present case. See SAP v. Versata, CBM2012-00001,
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`Paper 36, p. 19 (Holding that a judgment on appeal to the Federal Circuit “is not
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`sufficiently firm to be accorded” preclusive effect by the Board).
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`II. Claims 1 and 7 of the ’375 Patent are indefinite, but analysis is still
`possible
`Claims 1 and 7 recite “determining the existence of a local pressure area
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`when the calculated total force is concentrated in one of the seat areas.” The
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`District Court found that the term “concentrated” is indefinite because the claims
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`2
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`are ambiguous as to what amount of the total force must be applied to the seat area
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`for it to be “concentrated” on that seat area. See Ex. 2001, p. 43. In the words of
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`the court:
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`Nothing in the claims or specification allows a person of
`skill in the art to know the “objective boundaries” of the
`claim: whether 75%, 51%, or 33% of the force counts as
`“concentrated” in one group. “[A] patent is invalid for
`indefiniteness
`if
`its claims, read
`in
`light of
`the
`specification delineating the patent, and the prosecution
`history, fail to inform, with reasonable certainty, those
`skilled in the art about the scope of the invention.” The
`“concentrated” term here fails that standard. Accordingly,
`Claim 1 of the ‘375 Patent is invalid as indefinite.
`Ex. 2001, p. 33 (internal citations omitted). We agree with the District Court that
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`the claims are indefinite, because the term “concentrated” is “a term of degree,”
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`and none of the claims, the specification nor the prosecution history “provide[s]
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`objective boundaries for those of skill in the art” to identify the levels of
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`concentration that would, and would not, meet this limitation. See Interval
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`Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1370–71 (Fed. Cir. 2014) (citing
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`Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014)). If the
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`Board likewise determines the challenged claims are indefinite, we invite the
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`Board to explain its reasoning on the record.
`3
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`However, despite the indefiniteness, the claims do not defy interpretation.
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`The ambiguity renders the claims open to multiple interpretations. However,
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`regardless of how the ambiguity is reasonably resolved, the challenged claims are
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`anticipated and rendered obvious by the prior art asserted in the Petition. For
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`example, the Audi reference relied on in the petition “evaluates whether the front
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`sensor force F1 is greater than the rear sensor force F2, i.e., ‘F1> F2,’ to determine
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`the existence of a local pressure area.” See Paper 2 (Petition), p. 15. In other
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`words, whether the ‘375 patent were read to require at least 33%, 51% or 75% of
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`the force be concentrated in the seat area to determine a local pressure area, the
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`Audi reference discloses an overlapping range, and the Audi-based grounds would
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`thus meet this limitation. See id. The analysis of the Zeidler-based grounds is
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`similar, because Zeidler, like Audi, evaluates weight in two seat areas (V and H).
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`See id. at pp. 37-38. Accordingly, despite the indefiniteness of the claims,
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`Petitioner submits that the claims are nonetheless invalid over the prior art cited in
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`the Petitioner under any reasonable interpretation of the claims.
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`III. The Board should not deny the Petition or otherwise terminate the
`proceeding with respect to the indefinite claims because the Joint
`Stipulation does not represent a final judgment of invalidity
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`As previously discussed, the Joint Stipulation is to the "entry" of the
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`judgment, and not to the indefiniteness of claims 1 and 7. See Ex. 2002, p. 1. The
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`Patent Owner retains the right to appeal the finding of indefiniteness to the Federal
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`Circuit. Id. The District Court’s judgment, thus, could be overturned on appeal,
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`leaving claims 1 and 7 enforceable. If the Board denies institution or terminates
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`the present proceeding due to the non-final judgment of invalidity by the District
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`Court, and Patent Owner is left with enforceable claims following an appeal,
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`Petitioner would be unable to challenge claims 1 and 7 in an IPR due to the one-
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`year bar imposed by 35 U.S.C. § 315(b). Petitioner respectfully urges the Board to
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`afford Petitioner the opportunity to challenge the claims on prior art grounds in the
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`present IPR by allowing the proceeding to continue.
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`Further, Petitioner notes that the present situation arose simply from the
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`existence of the co-pending litigation and the timing of the Markman order in that
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`case (i.e., being before institution), and submits that denying institution or
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`terminating the present proceeding would effectively punish Petitioner for
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`circumstances outside its control.
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`IV. Patent Owner’s stipulation is not a disclaimer of the claims because it
`retains the right to appeal the judgment
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`As discussed above, the Joint Stipulation is to the "entry" of the judgment,
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`and not to the indefiniteness of claims 1 and 7. See Ex. 2002, p. 1. The Patent
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`Owner, thus, retains the right to appeal the finding of indefiniteness to the Federal
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`Circuit, and therefore the stipulation is not a disclaimer of claims 1 and 7 of the
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`’375 Patent. See id.
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`V. Conclusion
`In sum, Petitioner respectfully requests that the Board allow the present
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`proceeding to continue, and requests institution of an IPR with respect to the ’375
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`Patent on the prior art grounds enumerated in its earlier Petition.
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`Respectfully submitted,
`
`
`
`/Dan Smith/
`
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`
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`Dan Smith, Reg. No. 71,278
`Fish & Richardson P.C.
`1717 Main Street
`Suite 5000
`Dallas, TX 75201
`T: 202-783-5070
`F: 202-783-2331
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`Attorneys for Petitioner
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`6
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`Dated: 9/10/2015
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4)(i) et seq. and 42.105(b), the undersigned
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`certifies that on September 10, 2015, a complete and entire copy Brief Responsive
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`to Board Order Filed September 2, 2015 RE: Partial Judgment of Invalidity in
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`District Court was provided by electronic service, to the Patent Owner by serving
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`the correspondence address of record as follows:
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`Tarek N. Fahmi
`Holly J. Atkinson
`Ascenda Law Group, PC
`333 W. San Carlos Street, Suite 200
`San Jose, CA 95110
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`Email: patents@ascendalaw.com
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`/Jessica K. Detko/
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`Jessica K. Detko
`Fish & Richardson P.C.
`60 South Sixth Street,
`Suite 3200
`Minneapolis, MN 55402
`(612) 337-2516
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`7
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