Trials@uspto.gov
`571-272-7822
`
`
` Paper No. 11
` Entered: October 1, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMERICAN HONDA MOTOR CO., INC.,
`Petitioner,
`
`v.
`
`SIGNAL IP, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01003
`Patent 5,732,375
`____________
`
`
`
`Before MEREDITH C. PETRAVICK, JEREMY M. PLENZLER, and
`JAMES A. TARTAL, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`IPR2016-00291 - Ex. 1006
`Toyota Motor Corp., Petitioner
`
`1
`
`
`571-272-7822
`
`
` Paper No. 11
` Entered: October 1, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMERICAN HONDA MOTOR CO., INC.,
`Petitioner,
`
`v.
`
`SIGNAL IP, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01003
`Patent 5,732,375
`____________
`
`
`
`Before MEREDITH C. PETRAVICK, JEREMY M. PLENZLER, and
`JAMES A. TARTAL, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`IPR2016-00291 - Ex. 1006
`Toyota Motor Corp., Petitioner
`
`1
`
`
`
`IPR2015-01003
`Patent 5,732,375
`
`
`I. INTRODUCTION
`
`A. Background
`
`American Honda Motor Co., Inc. (“Petitioner”) filed a Petition
`
`requesting inter partes review of claims 1 and 7 (“the challenged claims”) of
`
`U.S. Patent No. 5,732,375 (Ex. 1001, “the ’375 patent”) pursuant to 35
`
`U.S.C. §§ 311–319. Paper 2 (“Pet.”). Signal IP, Inc. (“Patent Owner”) filed
`
`a Preliminary Response to the Petition. Paper 6 (“Prelim. Resp.”).
`
`We have jurisdiction under 35 U.S.C. § 314(a), which 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.”
`
`We determine that Petitioner fails to demonstrate a reasonable
`
`likelihood that it would prevail with respect to the challenged claims. For
`
`the reasons described below, we do not institute an inter partes review of
`
`claims 1 and 7.
`
`
`
`
`
`B. Related Proceedings
`
`Both parties stated that the ’375 patent is the subject of numerous
`
`district court proceedings, including Signal IP, Inc. v. American Honda
`
`Motor Co., Inc. et al, Case No. 2-14-cv-02454 (“Signal IP”) in the U.S.
`
`District Court for the Central District of California. Pet. 1–3; Paper 5, 2–3.
`
`In Signal IP, the parties stipulated to entry of a partial final judgment that
`
`claims 1 and 7 of the ’375 patent are indefinite under 35 U.S.C. § 112,
`
`second paragraph. Ex. 2002 ¶ 7; see Ex. 3001.
`
`
`
`2
`
`2
`
`
`
`IPR2015-01003
`Patent 5,732,375
`
`
`The ’375 patent was the subject of Ex Parte Reexamination
`
`No. 90/013,386, which resulted in the issuance of a reexamination certificate
`
`confirming the patentability of claims 1 and 7. Claims 2–6 and 8–19 were
`
`not reexamined.
`
`
`C. The ’375 patent
`
`
`
`The ’375 patent is titled “Method of Inhibiting or Allowing Airbag
`
`Deployment,” and issued on March 24, 1998. The ’375 patent discloses that
`
`vehicles may have airbags for protecting passengers in a front passenger seat
`
`and that it is desirable to inhibit the airbags from deploying if the front
`
`passenger seat is occupied by a small child or an infant in a rear facing car
`
`seat. Id. at col. 1, ll. 12–29. The ’375 patent, thus, discloses a method of
`
`detecting a type of seat passenger and determining the seating position of the
`
`passenger to allow or inhibit airbag deployment. Id. at col. 1, ll. 44–50.
`
`The ’375 patent discloses a vehicle passenger seat having an array of
`
`pressure sensors. The array of sensors is depicted in Figure 7 of the ’375
`
`patent, reproduced below.
`
`
`Figure 7 depicts the seat having 12 sensors arranged as follows: 1) a
`
`
`
`left pair of sensors 1 and 2, 2) a right pair of sensors 11 and 12, 3) a front
`
`
`
`3
`
`3
`
`
`
`IPR2015-01003
`Patent 5,732,375
`
`pair of sensors 6 and 7, 4) a rear pair of sensors 3 and 10, and 5) a center
`
`group of sensors 4, 5, 8, and 9. Id. at col. 3, ll. 21–29.
`
`Sensors 1–12 are also arranged in the overlapping localized areas as
`
`follows: 1) sensors 1, 6, 7 and 12 in a front group, 2) sensors 2, 3, 4, 5, 8, 9,
`
`10 and 11 in a rear group, 3) sensors 1, 2, 3, 4, 5, 6, 8, and 9 in a left group,
`
`and 4) sensors 4, 5, 7, 8, 9, 10, 11, and 12 in a right group. Id. at col. 4, ll.
`
`19–24.
`
`
`
`An algorithm calculates set of decision measures 40 based upon the
`
`output of the sensors. Id. at col. 3, ll. 48–49, Fig. 4. The first decision
`
`measures are a total force, which is the sum of the sensor output values, and
`
`a fuzzy contribution for the total force. Id. at col. 3, ll. 49–67. The second
`
`decision measures are a load rating for each sensor, a total load rating, and a
`
`fuzzy contribution for the total load rating. Id. at col. 4, ll. 1–17. The load
`
`rating is a measure of whether the sensor is detecting some load, and the
`
`total load rating is the sum of the load ratings for each sensor. Id. at col. 4,
`
`ll. 2–4, 9–11. The third decision measures are a force and fuzzy contribution
`
`for each pair of sensors and for the center group. Id. at col. 4, ll. 30–47.
`
`
`
`The algorithm also checks for force concentration. Id. at col. 4, l. 18.
`
`The ’375 patent states:
`
`[A] check is made for force concentration in a localized area.
`. . . 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.).
`
`Id. at col. 4, ll. 18–29.
`
`
`
`Based upon the set of decision measures, a decision algorithm
`
`determines whether airbag deployment should be allowed or inhibited. Id. at
`
`
`
`4
`
`4
`
`
`
`IPR2015-01003
`Patent 5,732,375
`
`col. 4, ll. 64–66. The decision algorithm is depicted in Figure 8, reproduced
`
`below.
`
`
`Figure 8 depicts a flow chart of the deployment decision algorithm.
`
`
`
`
`
`Whenever an inhibit or allow decision is made, that decision is controlling
`
`and all other conditions lower on the chart are bypassed. Id. at col. 5, ll. 9–
`
`11. Id. at col. 5, ll. 9–11.
`
`
`
`A decision algorithm determines if rails of an infant seat are detected
`
`and whether the infant seat is forward or rear facing. Id. at col. 4, l. 65–col.
`
`
`
`5
`
`5
`
`
`
`IPR2015-01003
`Patent 5,732,375
`
`5, l. 9. Deployment is allowed for a forward facing seat and inhibited for a
`
`rear facing seat. Id. at col. 5, ll. 1–3.
`
`If rails are not detected <60>, the total force is compared to
`high and low thresholds <68>. If it is above the high threshold
`deployment is allowed and if below the low threshold the
`deployment is inhibited. Otherwise, if the localized force for a
`sensor group is above a threshold and the flag corresponding to
`that group is set <70>, deployment is allowed. If not, the next
`step is to compare the total load rating to high and low
`thresholds <72>. Deployment is allowed if the rating is above
`the high threshold and inhibited if below the low threshold.
`Each of the sensor pairs for front, left, right, and rear are
`compared to threshold values <74–80>. If any of them are
`above its allowed. If not, the center group force is compared to
`a threshold <82> to decide upon allowance. Finally, the total
`fuzzy value is compared to a threshold <84> to allow
`deployment if it is sufficiently high, and if not the deployment
`is inhibited.
`
`Id. at col. 5, ll. 12–27.
`
`
`D. The Challenged Claims
`
`
`
` Claims 1 and 7, reproduced below, are challenged.
`
`1. A method of airbag control in a vehicle having an array of
`force sensors on the passenger seat coupled to a controller for
`determining whether to allow airbag deployment based on
`sensed force and force distribution comprising the steps of:
`measuring the force detected each sensor;
`calculating the total forced of the sensor array;
`allowing deployment if the total force is above a total
`threshold force;
`defining a plurality of seat areas, at least one sensor
`located in each seat area;
`determining the existence of a local pressure area when
`the calculated total force is concentrated in one of said seat
`areas; and
`
`
`
`6
`
`6
`
`
`
`IPR2015-01003
`Patent 5,732,375
`
`
`calculating a local force as the sum of forces sensed by
`each sensor located in the seat area in which the total force is
`concentrated; and
`allowing deployment if the local force is greater than a
`predefined seat area threshold force.
`
`7. The method of airbag control as defined in claim 1 wherein
`the defined seat areas overlap so that some sensors are included
`in more than one seat area, the seat areas including a front area,
`a rear area, a right area and a left area.
`
`
`
`
`
`E. Asserted Grounds of Unpatentability
`
`Petitioner asserts the following numerous grounds of unpatentability:
`
`Ground Claim(s)
`
`§ 102
`
`1 and 7
`
`§ 103
`
`1 and 7
`
`§ 102
`
`1 and 7
`
`§ 103
`
`1 and 7
`
`Prior Art
`
`Audi1
`
`Audi and Ohishi2
`
`Zeidler3
`
`Zeidler and Blackburn4
`
`Petitioner proffers the Declaration of Dr. Kristen M. Carr to support
`
`its analysis in the Petition. Ex. 1003.
`
`
`
`II. ANALYSIS
`
`A determination of anticipation and obviousness over prior art begins
`
`with claim construction. See In re Hiniker Co., 150 F.3d 1362, 1369 (Fed.
`
`Cir. 1998) (“[T]he name of the game is the claim.”) (quoting Giles
`
`
`1 DE 3,809,074 A1 (published Oct. 5, 1989) (Ex. 1004).
`2 JP H3-110966 (published Nov. 13, 1991)(Ex. 1005).
`3 Zeidler et al., U.S. Patent No. 5,612,876 (issued Mar. 18, 1997) (Ex. 1006).
`4 Blackburn et al., U.S. Patent No. 5,232, 243 (issued Aug. 3, 1993)(Ex.
`1007).
`
`
`
`7
`
`7
`
`
`
`IPR2015-01003
`Patent 5,732,375
`
`Sutherland Rich, Extent of Protection and Interpretation of Claims—
`
`American Perspectives, 21 INT’L REV. INDUS. PROP. & COPYRIGHT L. 497,
`
`499 (1990))). It is axiomatic that we first must know what is being claimed.
`
`Not every such patentability analysis, however, necessarily ends with a
`
`determination with respect to the prior art. The language used in a claim to
`
`define the scope of coverage, read in light of the specification, may be
`
`indefinite and thus fail to indicate the scope of the claimed invention. See,
`
`e.g., In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970); In re Steele, 305 F.2d
`
`859, 862-63 (CCPA 1962).
`
`As explained below, the scope of the claims of the ’375 patent cannot
`
`be determined without speculation. In this circumstance, the analysis begins
`
`and ends with the claims, and we do not attempt to apply the claims to the
`
`prior art. See In re Wilson, 424 F.2d at 1385; In re Steele, 305 F.2d at 862–
`
`63; accord United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 237
`
`(1942) (indefiniteness moots consideration of prior art issues).
`
`
`
`i. Concentrated
`
`Claim 1 recites “determining the existence of a local pressure area
`
`when the calculated total force is concentrated in one of said seat areas” and
`
`“calculating a local force as the sum of forces sensed by each sensor located
`
`in the seat area in which the total force is concentrated.” Claim 7 depends
`
`from claim 1.
`
`
`
`
`
`ii. Related District Court Proceeding
`
`In Signal IP, the district court determined that the claim term
`
`“concentrated” was indefinite because it was a term of degree and nothing in
`
`
`
`8
`
`8
`
`
`
`IPR2015-01003
`Patent 5,732,375
`
`the claims or Specification allows a person of ordinary skill in the art to
`
`know the objective boundaries of the claims. Ex. 2001, 41–43. Based upon
`
`this, the parties stipulated to entry of a partial final judgment that claims 1
`
`and 7 of the ’375 patent are invalid due to indefiniteness under 35 U.S.C.
`
`§ 112, second paragraph. Ex. 2002 ¶ 7; see Ex. 3001.
`
`Given that neither Petitioner5 nor Patent Owner provides any explicit
`
`construction of the claim term “concentrated,” or any other claim term in the
`
`Petition or Preliminary Response, we ordered Petitioner and Patent Owner to
`
`provide additional briefing. Paper 7, 3; see Paper 9 (“Pet. Br.”), Paper 10
`
`(“PO Br.”).
`
`
`
`iii. Petitioner’s Argument
`
`
`
`In its Brief, Petitioner states that it agrees with the district court that
`
`the terms are indefinite because “the term ‘concentrated’ is ‘a term of
`
`degree’ and none of the claims, the specification nor the prosecution history
`
`‘provide[s] object boundaries for those of skill in the art’ to identify level of
`
`concentration that would, and would not, meet this limitation.” Pet. Br. 3
`
`(quoting Interval Licensing LLC v. AOL, Inc. 766 F.3d 1364, 1370–71 (Fed.
`
`Cir. 2014)); see Ex. 1009, 75–78.
`
`
`
`
`
`iv. Patent Owner’s Argument
`
`In its Brief, Patent Owner argues that claim 1 is not indefinite because
`
`“concentrated” is used consistently with the plain and ordinary meaning of
`
`that term, “a relative measure of the amount of force detected by sensors in a
`
`
`5 Petitioner’s declarant Dr. Carr also does not provide an explicit
`construction. See Ex. 1003, ¶ 14.
`
`
`
`9
`
`9
`
`
`
`IPR2015-01003
`Patent 5,732,375
`
`given seat area.” PO Br. 4. According to Patent Owner, the Specification
`
`discloses checking for force concentration by summing the load ratings for
`
`sensors in each group and comparing to the total load rating to see if the
`
`loading rating for the group is equal to the total rating. Id. (citing Ex. 1001,
`
`col. 4, ll. 18–29). Patent Owner argues that this single disclosure is
`
`sufficient to inform a person of ordinary skill in the art of the boundaries of
`
`the claim. PO Br. 5.
`
`
`
`In Signal IP, Patent Owner argued that the plain meaning of
`
`“concentrated” is “clustered or gathered together closely” and, relying upon
`
`the same disclosure in the Specification cited in its Brief, argued that “the
`
`total force may be ‘concentrated’ in a seat area when the sum in that seat
`
`[area] is equal to the total.” Ex. 1009, 78–79.
`
`
`
`
`
`v. Claim Construction Analysis
`
`A patent must “conclude with one or more claims particularly
`
`pointing out and distinctly claiming the subject matter which the applicant
`
`regards as [the] invention.” 35 U.S.C. § 112, ¶ 2 (2006).6 “If a claim is
`
`amenable to two or more plausible claim constructions, the USPTO is
`
`justified in requiring the applicant to more precisely define the metes and
`
`bounds of the claimed invention by holding the claim unpatentable under 35
`
`U.S.C. § 112, second paragraph, as indefinite.” Ex Parte Miyazaki, 89
`
`USPQ2d 1207, 1211 (BPAI 2008) (precedential); see also Interval Licensing
`
`
`6 Paragraph 2 of 35 U.S.C. § 112 was replaced with newly designated §
`112(b) when § 4(c) of the America Invents Act (“AIA”), Pub. L. No. 112–
`29, took effect on September 16, 2012. Because the application resulting in
`the patent at issue in this case was filed before that date, we will refer to the
`pre-AIA version of § 112.
`
`
`
`10
`
`10
`
`
`
`IPR2015-01003
`Patent 5,732,375
`
`LLC, 766 F.3d at 1369–70 (quoting Nautilus, Inc. v. Biosig Instruments,
`
`Inc., 134 S. Ct. 2120, 2124 (2014)) (“A claim fails to satisfy this statutory
`
`requirement and is thus invalid for indefiniteness if its language, when read
`
`in light of the specification and the prosecution history, ‘fail[s] to inform,
`
`with reasonable certainty, those skilled in the art about the scope of the
`
`invention.’”). A claim term that does not satisfy the definiteness
`
`requirement under Nautilus likewise fails to satisfy the definiteness
`
`requirement of Miyazaki.
`
`Terms of degree, such as “concentrated” are not inherently indefinite.
`
`Interval Licensing, 766 F.3d at 1370. When a “word of degree” is used, the
`
`patent must provide “some standard for measuring that degree.” Enzo
`
`Biochem, 599 F.3d at 1332; Seattle Box Co., Inc. v. Indus. Crating &
`
`Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984). “The claims, when read
`
`in light of the specification and the prosecution history, must provide
`
`objective boundaries for those of skill in the art.” Interval Licensing, 766
`
`F.3d at 1371. When a claim term “depend[s] solely on the unrestrained,
`
`subjective opinion of a particular individual purportedly practicing the
`
`invention,” without sufficient guidance in the specification to provide
`
`objective direction to one of skill in the art, the term is indefinite. DDR
`
`Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1260 (Fed. Cir. 2014)
`
`(quoting Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350
`
`(Fed. Cir. 2005)).
`
`The claim term “concentrated” is a term of degree, and on its face, the
`
`claim term provides insufficient guidance to one of skill in the art. Even if
`
`we were to adopt Patent Owner’s proposed construction, the proposed
`
`
`
`11
`
`11
`
`
`
`IPR2015-01003
`Patent 5,732,375
`
`construction does not provide sufficient guidance because it defines
`
`“concentrated” as a relative measure.
`
`The Specification also does not provide sufficient guidance. The ’375
`
`patent states:
`
`[A] check is made for force concentration in a localized area.
`. . . 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.).
`
`Id. at col. 4, ll. 18–24. As can be seen from the above, the Specification
`
`discloses that 100% of the total load rating is concentrated in one sensor
`
`group if the total load rating is equal to the sum of the load ratings of each
`
`sensor in a group. However, this does provide objective boundaries for
`
`those of skill in the art as to what percentages, other than 100%, would or
`
`would not be considered “concentrated” as to the total force recited in claim
`
`1.
`
`
`
`Further, additional steps of claim 1 are inconsistent with the claim
`
`term “concentrated” encompassing 100% of the total force being
`
`concentrated in one seat area. Claim 1 additionally requires “calculating a
`
`local force as the sum of forces sensed by each sensor in the seat area in
`
`which the total force is concentrated.” Given that claim 1 also recites a step
`
`of calculating the total force, it does not make sense to additionally calculate
`
`a local force unless the local force differs from the total force.
`
`
`
`Petitioner has not demonstrated that the recitation of “concentrated” in
`
`the ’375 patent, viewed in light of the Specification and prosecution history,
`
`sufficiently informs those skilled in the art about the scope of the invention
`
`with reasonable certainty. Accordingly, we determine that Petitioner has not
`
`
`
`12
`
`12
`
`
`
`IPR2015-01003
`Patent 5,732,375
`
`shown a reasonable likelihood that it would prevail with respect to claims 1
`
`and 7.
`
`
`
`
`
`vi. Prior Art Grounds
`
`
`
`Petitioner argues that, although claims 1 and 7 are indefinite, it is still
`
`possible to determine whether the grounds based on Audi or the grounds
`
`based on Zeidler meet the claim, because both Audi and Zeidler disclose
`
`evaluating the weight in two seat areas. Pet Br. 4. Petitioner’s argument is
`
`insufficient because it is based upon speculation as to the scope of the
`
`invention. As discussed above, the claim term “concentrated” is a term of
`
`degree and nothing in the claims or Specification allows a person of ordinary
`
`skill in the art to know the objective boundaries of the claims. In the
`
`absence of a sufficient demonstration of the scope of the claimed invention,
`
`we do not attempt to apply claims 1 and 7 to the asserted prior art. See
`
`United Carbon Co., 317 U.S. at 236–37 (holding that “the claims must be
`
`reasonably clearcut to enable courts to determine whether novelty and
`
`invention are genuine”); In re Steele, 305 F.2d at 862–63 (holding that
`
`where a claim’s meaning is indefinite under 35 U.S.C. § 112, ¶ 2, any
`
`rejection based on prior art is improperly based on speculation); Blackberry
`
`Corp. v. MobileMedia Ideas, LLC, Case IPR2013-00036, slip op. at 20
`
`(PTAB Mar. 7, 2014) (Paper 65).
`
`
`
`III. CONCLUSION
`
`We determine that Petitioner fails to demonstrate a reasonable
`
`likelihood of prevailing on any of the asserted grounds of unpatentability.
`
`
`
`
`
`13
`
`13
`
`
`
`IPR2015-01003
`Patent 5,732,375
`
`
`IV. ORDER
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that institution of inter partes review is denied as to all
`
`challenged claims of U.S. Patent No. 5,732,375.
`
`
`
`PETITIONER:
`Joshua A. Griswold
`Daniel Smith
`griswold@fr.com
`IPR15625-0019IP1@fr.com
`
`
`
`PATENT OWNER:
`Tarek Fahmi
`tarek.fahmi@ascendalaw.com
`holy.atkinson@ascendalaw.com
`
`
`
`
`14
`
`14
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