`571-272-7822
`
`
`
`
`Paper 12
`Entered: January 5, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`TOYOTA MOTOR CORPORATION,
`Petitioner,
`
`v.
`
`SIGNAL IP, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01382
`Patent 5,732,375
`____________
`
`
`Before MEREDITH C. PETRAVICK, JEREMY M. PLENZLER, and
`JAMES A. TARTAL, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`IPR2016-01382
`Patent 5,732,375
`
`
`
`Petitioner Toyota Motor Corporation filed a Petition requesting an
`inter partes review of claim 11 of U.S. Patent No. 5,732,375 (“the ’375
`patent”) on July 8, 2016. Paper 2 (“Pet.”). Patent Owner Signal IP Inc.,
`filed a Preliminary Response. Paper 8 (“Prelim. Resp.”). With our prior
`authorization, Petitioner filed a Reply. Paper 11 (“Reply”). 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.”
`Upon consideration of the Petition, Preliminary Response, and Reply,
`for the reasons provided below based on the particular circumstances of this
`case, we exercise our discretion under 35 U.S.C. § 325(d) and deny the
`Petition. Accordingly, we do not authorize an inter partes review to be
`instituted as to claim 11 of the ’375 patent.
`I.
`BACKGROUND
`The ’375 Patent (Ex. 1001)
`A.
`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. Ex. 1001, 1:12–29. The ’375 patent, thus, discloses a method of
`
`
`
`2
`
`
`
`IPR2016-01382
`Patent 5,732,375
`
`
`
`detecting a type of seat passenger and determining the seating position of the
`passenger to allow or inhibit airbag deployment. Id. at 1:44–50.
`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, and Figure 7 is 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 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 3:21–29.
`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
`4:19–24.
`
`An algorithm calculates a set of decision measures 40 based upon the
`output of the sensors. Id. at 3:48–49; Fig. 4. The first decision measures are
`a total force, which is the sum of the sensor output values, and a fuzzy
`3
`
`
`
`
`
`IPR2016-01382
`Patent 5,732,375
`
`
`
`contribution for the total force. Id. at 3:49–67. 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 4:1–17. 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 4:2–4, 9–11. The
`third decision measures are a force and fuzzy contribution for each pair of
`sensors and for the center group. Id. at 4:30–47.
`The algorithm also checks for force concentration. Id. at 4:18. 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 4:18–24. Based upon the set of decision measures, a decision
`algorithm determines whether airbag deployment should be allowed or
`inhibited. Id. at 4:64–66.
`
`
`
`4
`
`
`
`IPR2016-01382
`Patent 5,732,375
`
`
`
`The decision algorithm is depicted in Figure 8, and Figure 8 is
`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 5:9–11.
`
`First, the decision algorithm determines if rails of an infant seat are
`detected and whether the infant seat is forward or rear facing. Id. at
`
`
`
`5
`
`
`
`IPR2016-01382
`Patent 5,732,375
`
`
`
`4:65–5:9. Deployment is allowed for a forward facing seat and inhibited for
`a rear facing seat. Id. at 5:1–3.
`
`
`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 5:12–27.
`
`B. Challenged Claim
`Claim 11 of the ’375 patent is independent and recites:
`11. 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 sensed by each sensor;
`calculating the total force of the sensor array;
`allowing deployment if the total force is above a total
`threshold force;
`assigning a load rating to each sensor based on its measured
`force, said load ratings being limited to maximum value;
`summing the assigned load ratings for all the sensors to derive
`a total load rating; and
`
`
`
`6
`
`
`
`IPR2016-01382
`Patent 5,732,375
`
`
`
`allowing deployment if the total load rating is above a
`predefined total load threshold, whereby deployment is
`allowed if the sensed forces are distributed over the
`passenger seat, even if the total force is less than the total
`threshold force.
`Ex. 1001, 7:1–20.
`
`Related Proceedings
`C.
`The ’375 patent was previously the subject of a petition for inter
`partes review filed by Petitioner in Case IPR2016-00291 in which Petitioner
`alleged claim 11 would have been obvious under 35 U.S.C. § 103(a) over:
`(1) Schousek1 and Tokuyama,2 and (2) Tokuyama and Mazur.3 IPR2016-
`00291, Paper 2. That petition was denied on June 10, 2016. IPR2016-
`00291, Paper 13. The same grounds were also asserted against claim 11 of
`the ’375 patent in Aisin Seki Co. Ltd. v. Signal IP, Inc., Case IPR2016-
`00369. That petition was denied on June 17, 2016. IPR2016-00369,
`Paper 7.
`Additionally, claims 1 and 7 of the ’375 patent were challenged in
`American Honda Motor Co., Inc. v. Signal IP, Inc., Case IPR2015-01003.
`That petition was denied on October 1, 2015. IPR2015-01003, Paper 11.
`The ’375 patent was also the subject of Ex Parte Reexamination
`No. 90/013,386, which resulted in the issuance of a reexamination certificate
`
`
`1 U.S. Patent No. 5,474,327, issued December 12, 1995 (Ex. 1002,
`“Schousek”).
`2 JP 06-022939, published March 25, 1994 (Ex. 1003 and Ex. 1004 (English
`translation) “Tokuyama”).
`3 U.S. Patent No. 5,454,591, issued October 3, 1995 (Ex. 1011, “Mazur”).
`7
`
`
`
`
`
`IPR2016-01382
`Patent 5,732,375
`
`
`
`confirming the patentability of claims 1 and 7. Claim 11 was not
`reexamined.
`Petitioner states that claim 11 of the ’375 patent is currently the
`subject of two district court cases: Signal IP, Inc. v. Toyota Motor North
`America, Inc. et al., No. 2:15-cv-05162 (C.D. Cal.) and Signal IP, Inc. v.
`Fiat U.S.A. Inc., et al., No. 2:14-cv-13864 (E.D. Mich.). Pet. 2. Petitioner
`further identifies eight additional district court proceedings involving the
`’375 patent that have been dismissed. Id. at 2–3.
`D.
`Asserted Grounds of Unpatentability
`Petitioner contends that claim 11 is unpatentable as obvious under
`35 U.S.C. § 103(a) over: (1) Schousek, Tokuyama, and Tokuyama ’1664;
`and (2) Tokuyama, Mazur, and Tokuyama ’166. Pet. 5. Thus, the grounds
`asserted in the Petition are the same grounds asserted in Case IPR2016-
`00291, but with the addition of Tokuyama ’166 to each ground.
`II. ANALYSIS
`A. Obviousness Over the Asserted References
`Section 325(d) of Title 35 of the United States Code provides:
`In determining whether to institute or order a proceeding
`under this chapter . . . the Director may take into account
`whether, and reject the petition or request because, the same or
`substantially the same prior art or arguments previously were
`presented to the Office.
`
`
`4 English translation of Japanese Unexamined Patent Application
`Publication 05-066166 to Tokuyama et al. and associated translation
`declaration (Ex. 1017, “Tokuyama ’166”).
`8
`
`
`
`
`
`IPR2016-01382
`Patent 5,732,375
`
`
`
`In light of § 325(d), we consider whether the Petition asserts the same or
`substantially the same art or arguments as presented by Petitioner previously
`in Case IPR2016-00291.
`According to Petitioner, “this petition and the supporting expert
`declaration include additional explanation and evidence about what one of
`ordinary skill in the art would have understood the prior art to disclose,
`which explanation and evidence the Board concluded was not presented in
`Toyota’s earlier petition that challenged claim 11 (in Case IPR2016-291).”
`Pet 1. Petitioner further explains that the “Board’s reasoning” in Case
`IPR2016-00291 “is addressed in detail” in the Petition “with additional
`explanation and evidence about what one of ordinary skill in the art would
`have understood Tokuyama to disclose.” Id. at 14–15. Petitioner then
`proceeds to argue that “contrary to the Board’s conclusions” in Case
`IPR2016-00291, “one of ordinary skill in the art reviewing Tokuyama would
`have understood that Tokuyama” discloses features of claim 11 the Board
`previously found Petitioner had not sufficiently shown. Pet. 34. Similarly,
`Petitioner argues that “Petitioner also respectfully disagrees with the Board’s
`conclusion in Case IPR2016-00291 that Tokuyama cannot add up the binary
`values for the sensors.” Id. at 38. Further with regard to whether Petitioner
`had sufficiently shown in Case IPR2016-00291 that Tokuyama discloses
`summing the assigned load ratings, as claimed, Petitioner states that it
`“respectfully disagrees with [the Board’s conclusion in Case IPR2016-
`00291] because it incorrectly assumes that ‘all the sensors’ are S1 to S12.”
`Id. at 39.
`
`
`
`9
`
`
`
`IPR2016-01382
`Patent 5,732,375
`
`
`
`With regard to the additional reference, Tokuyama ’166, asserted in
`the Petition in this case, Petitioner first explains that “Tokuyama ’166
`discloses a very similar system to Tokuyama, except that Tokuyama ’166
`included only sensors S1 to S9 on the seat, not sensors S10 to S12 on the
`front of the seat.” Pet. 23. Petitioner does not address Tokuyama ’166 again
`until page forty of the Petition. Id. at 23. At that point, Petitioner relies on
`Tokuyama ’166 “[t]o the extent the Board disagrees” with Petitioner’s
`contentions regarding Tokuyama, and states “it would have been just as
`obvious to use Tokuyama ’166 for this feature as it would have been to use
`Tokuyama.” Id. at 40, 43.
`Patent Owner argues that the “Board should exercise its discretion and
`deny institution of trial as this proceeding represents nothing more than
`incremental-petitioning by Toyota, without any explanation as to why the
`arguments and references now being relied upon could not have been
`presented earlier.” Prelim. Resp. 16.
`Petitioner makes no attempt to explain in the Petition why the
`references that form the bases for Petitioner’s challenge here are not the
`same or substantially similar prior art to that presented in Case IPR2016-
`00291. Petitioner requested and was authorized to file a reply to Patent
`Owner’s Preliminary Response on the issue of whether the Board should
`decline to institute an inter partes review under 35 U.S.C. §§ 314(a) and
`325(d). Paper 9. In its Reply, Petitioner argues that the Petition includes
`“additional explanation and evidence, including new prior art (Tokuyama
`’166 []), that ‘are distinguished substantively’ from the earlier petition
`
`
`
`10
`
`
`
`IPR2016-01382
`Patent 5,732,375
`
`
`
`because they squarely address the Board’s reasons for denying that petition.”
`Reply 2. According to Petitioner, “the new Tokuyama ’166 reference
`directly addresses the Board’s reasoning for the ‘all the sensors’ element.”
`Id. Petitioner further asserts that “given the material differences, and the
`resulting strength of the petition, the Board should address the merits, based
`on the more developed and focused record.” Id.
`In consideration of the Petition, Preliminary Response, and Reply, we
`determine that the prior art asserted by Petitioner in the Petition is “the same
`or substantially the same prior art” previously presented in IPR2016-00291.
`35 U.S.C. §325(d). Three of the four references asserted in the Petition were
`asserted in IPR2016-00291. By Petitioner’s own admission, the additional
`reference asserted in the Petition, Tokuyama ’166, “discloses a very similar
`system to Tokuyama” and is relevant to Petitioner’s arguments “to the extent
`the Board disagrees” with Petitioner’s contentions regarding Tokuyama.
`Pet. 23, 40, 43.
`In its Petition and Reply, the only substantive difference Petitioner
`identifies between Tokuyama ’166 and Tokuyama is that the first discloses
`nine sensors and the second twelve. Pet. 23; Reply 2. The thrust of
`Petitioner’s argument is to dispute our determination in IPR2016-00291
`based on Tokuyama, not to assert Tokuyama ’166 as a new reference that is
`not substantially the same as Tokuyama. To the extent Petitioner disagreed
`with our determination in IPR2016-00291, Petitioner had the opportunity to
`request rehearing in that proceeding and elected not to. We are not
`persuaded that Petitioner’s arguments warrant reconsideration through a
`
`
`
`11
`
`
`
`IPR2016-01382
`Patent 5,732,375
`
`
`
`second Petition. See Unilever, Inc. v. The Proctor & Gamble Company,
`Case IPR2014–00506, Paper 17, slip op. at 6–8 (PTAB Jul. 7, 2014)
`(Informative), see also Conopco, Inc. v. Proctor & Gamble Co., Case
`IPR2014-00506, Paper 25, slip op. at 3–5 (PTAB Dec. 10, 2014)
`(Informative).
`
`III. CONCLUSION
`Taking into consideration the efficient administration of the Office
`under 35 U.S.C. § 316(b), we exercise our discretion under 35 U.S.C.
`§ 325(d) and reject the Petition in this proceeding because “the same or
`substantially the same prior art or arguments previously were presented to
`the Office” in IPR2016-00291.
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that institution of inter partes review is denied as to the
`challenged claim of U.S. Patent No. 5,732,375.
`
`
`
`
`12
`
`
`
`IPR2016-01382
`Patent 5,732,375
`
`
`
`PETITIONER
`John Flock
`johnflock@andrewskurthkenyon.com
`
`George Badenoch
`georgebadenoch@andrewskurthkenyon.com
`
`Mark Chapman
`markchapman@andrewskurthkenyon.com
`
`PATENT OWNER
`
`Tarek Fahmi
`tarekfahmi@ascendalaw.com
`
`
`Holly Atkinson
`holly.atkinson@ascendalaw.com
`
`Jason LaBerteaux
`jason.laberteaux@ascendalaw.com
`
`
`
`13