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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
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`
`
`TOYOTA MOTOR CORPORATION,
`Petitioner,
`
`v.
`
`SIGNAL IP, INC.,
`Patent Owner.
`
`_________________________
`
`Case No. IPR2016-01382
`U.S. Patent No. 5,732,375
`_________________________
`
`
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`PETITIONER’S REQUEST FOR REHEARING
`PURSUANT TO 37 C.F.R. § 42.71(d)
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`
`
`
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`
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`Petitioner Toyota Motor Corporation respectfully requests rehearing of the
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`Board’s decision to deny the petition under 35 U.S.C. § 325(d).1
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`In exercising its discretion to deny the petition, the Board reasoned that the
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`Tokuyama ’166 reference presented in this petition is “substantially the same prior
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`art” as the Tokuyama ’939 reference (“Tokuyama”) presented in the earlier
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`petition. Decision at 11. This conclusion overlooks the critical difference between
`
`the two Tokuyama references—a difference which goes to the heart of the patent
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`owner’s argument for distinguishing the Tokuyama reference and which, for that
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`reason, could not be more material.
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`The Tokuyama reference asserted in the earlier petition has 12 seat sensors
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`in Figure 1, nine on the seat portion and three on the front edge of the seat. Ex.
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`1004, Fig. 1. This permitted the patent owner to argue in opposition to the earlier
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`petition—and permitted the Board to conclude in denying institution—that the
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`claim limitation requiring the algorithm to sum the load ratings for “all the
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`sensors” was not met, because the relevant portion of the Tokuyama algorithm
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`sums the readings for only the nine sensors on the seat portion, not the three
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`sensors on the front edge of the seat, and, thus, not all 12 sensors. See IPR2016-
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`00291, Patent Owner Preliminary Response, Paper 8 (March 14, 2016) at 14–15,
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`16–17; Decision Denying Institution, Paper 13 (June 10, 2016) at 14–15.
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`1 Decision Denying Institution of Inter Partes Review, Paper 12 (January 5, 2017).
`
`1
`
`
`
`
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`In contrast, the newly asserted Tokuyama ’166 reference has only the nine
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`sensors on the seat portion of the seat (in Figure 2). Ex. 1017, Fig. 2. It does not
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`have the sensors on the front edge of the seat like the Tokuyama reference.
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`Accordingly, it completely obviates the patent owner’s argument that the
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`Tokuyama algorithm does not sum load ratings for “all the sensors.” See Petition
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`(Paper 2) at 23–25, 40–43, 55; Andrews Declaration (Ex. 1009) at 25–27, 43–46,
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`57; Reply (Paper 11) at 2–3. Thus, the difference between the two Tokuyama
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`references is critically material. One permits the patent owner to make its
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`argument for distinguishing Tokuyama, and one does not.
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`The Board did not explain its basis for concluding that the two Tokuyama
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`references are substantially the same other than to state generally that Tokuyama
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`’166 “discloses a very similar system to Tokuyama.” Decision at 11. While the
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`Board acknowledged the difference in the number of sensors between the two
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`Tokuyama references, it did not address Petitioner’s argument or appear to
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`appreciate why this difference is so critical. Thus, it appears that the Board either
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`overlooked or failed to appreciate the importance of this difference between the
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`two Tokuyama references to the “all the sensors” issue.
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`Moreover, the Board’s failure to appreciate this important difference
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`between the two Tokuyama references appears to be confirmed by its suggestion
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`that Petitioner should have sought rehearing instead of filing a second petition.
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`2
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`
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`Decision at 11. While Petitioner could have sought rehearing of other arguments,2
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`it could not have relied upon the Tokuyama ’166 reference to rebut the argument
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`that Tokuyama did not sum load ratings for “all the sensors,” because Tokuyama
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`’166 was not presented in the earlier petition.3
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`2 In denying institution of Petitioner’s earlier petition, the Board also found
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`Petitioner’s evidence that Tokuyama would teach persons skilled in the art to sum
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`binary load ratings to be insufficient, because the Board found that the declaration
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`of Scott Andrews on this point was “conclusory.” See IPR 2016-00291, Decision
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`Denying Institution, Paper 13 (June 10, 2016) at 13–14. The current petition also
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`differs materially from the earlier petition because, in response to the Board’s
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`finding, the current petition includes an expanded declaration from Mr. Andrews
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`that explains his reasoning on this point in detail. See Andrews Declaration (Ex.
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`1009) at 35–42; see also Petition (Paper 2) at 32–39.
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`3 Patent Owner’s argument that Petitioner has not shown why it could not have
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`presented Tokuyama ’166 in the earlier petition is beside the point. As explained
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`in Petitioner’s Reply, there is no reason why a petitioner cannot file a second
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`petition within the one year time limit that specifically addresses the deficiencies
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`of an earlier petition and that is materially different for that reason. See Reply
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`(Paper 11) at 1–3.
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`3
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`
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`Accordingly, Petitioner respectfully requests that the Board reconsider its
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`procedural decision to deny institution under 35 U.S.C. § 325(d), and decide this
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`petition on the merits.
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`
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`Dated: February 6, 2017
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`Respectfully submitted,
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`/ George E. Badenoch /
`
`John Flock (Reg. No. 39,670)
`George E. Badenoch (Reg. No. 25,825)
`Mark A. Chapman (admitted pro hac vice)
`ANDREWS KURTH KENYON LLP
`One Broadway, New York, NY 10004-1007
`Tel.: (212) 425-7200
`Fax: (212) 425-5288
`
`Counsel for Petitioner
`
`4
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies, in accordance with 37 C.F.R. § 42.6, that a true
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`and correct copy of Petitioner’s Request for Rehearing Pursuant to 37 C.F.R. §
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`42.71(d) was served on the Patent Owner’s attorneys of record via email, on
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`February 6, 2017, at the following addresses:
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`Tarek N. Fahmi (Reg. No. 41,402)
`Holly J. Atkinson (Reg. No. 69,934)
`Jason A. LaBerteaux (Reg. No. 65,724)
`Ascenda Law Group, PC
`333 W San Carlos St., Suite 200
`San Jose, CA 95110
`Tel: 866-877-4883
`tarek.fahmi@ascendalaw.com
`holly.atkinson@ascendalaw.com
`jason.laberteaux@ascendalaw.com
`patents@ascendalaw.com
`
`Dated: February 6, 2017
`
`/ Mark A. Chapman /
`Mark A. Chapman (admitted pro hac vice)
`ANDREWS KURTH KENYON LLP
`One Broadway, New York, NY 10004-1007
`Tel.: (212) 425-7200
`Fax: (212) 425-5288
`
`Counsel for Petitioner
`
`
`
`
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