UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`ONE WORLD TECHNOLOGIES, INC.
`D/B/A TECHTRONIC INDUSTRIES POWER EQUIPMENT,
`Petitioner,
`
`v.
`
`THE CHAMBERLAIN GROUP, INC.
`Patent Owner.
`
`Case No. IPR2016-01774
`
`Patent No. 7,224,275
`
`_____________________________________________________________
`
`
`PETITION FOR INTER PARTES REVIEW OF
`
`U.S. PATENT NO. 7,224,275 (CLAIMS 24-31)
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`

`
`TABLE OF CONTENTS
`
`Contents
`
`I. 
`II. 
`III. 
`IV. 
`V. 
`VI. 
`VII. 
`
`VIII. 
`
`C. 
`
`D. 
`E. 
`
`INTRODUCTION ...................................................................................... 1 
`MANDATORY NOTICES ........................................................................ 1 
`IDENTIFICATION OF CLAIMS AND GROUNDS ................................ 2 
`CERTIFICATION AND FEES .................................................................. 3 
`BACKGROUND ........................................................................................ 4 
`LEVEL OF SKILL ..................................................................................... 8 
`CLAIM CONSTRUCTION ....................................................................... 9 
`A. 
`“controller” / “peripheral controller” ................................................... 9 
`B. 
`“controller having a plurality of potential operational status
`conditions” ............................................................................................ 9 
`“an identifier that is at least relatively unique to the movable
`barrier operator” / “the status condition signal substantially
`uniquely identifies the movable barrier operator” ............................. 12 
`“movable barrier interface” ................................................................ 13 
`“operational status condition defined, at least in part, by at least
`two operating states” .......................................................................... 14 
`“at least one of” .................................................................................. 15 
`F. 
`“reception means” .............................................................................. 16 
`G. 
`ARGUMENT ............................................................................................ 18 
`A.  GROUND #1: Claims 24-31 are rendered obvious by Menard
`and Lee ............................................................................................... 18 
`1. 
`Independent claim 24 ............................................................... 18 
`2. 
`Claim 25 ................................................................................... 41 
`3. 
`Claim 26 ................................................................................... 44 
`4. 
`Claim 27 ................................................................................... 45 
`5. 
`Claim 28 ................................................................................... 46 
`6. 
`Claim 29 ................................................................................... 49 
`7. 
`Claim 30 ................................................................................... 49 
`8. 
`Claim 31 ................................................................................... 58 
`
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`

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`TABLE OF CONTENTS
`(continued)
`
`Page
`
`B. 
`
`C. 
`
`
`
`GROUND #2: Claims 24-31 are obvious over Menard, Lee, the
`Bluetooth References, and the 802.11 Guide ..................................... 62 
`GROUND #3: Claims 24-31 are rendered obvious by Menard,
`Lee, and Tazumi ................................................................................. 66 
`SECONDARY CONSIDERATIONS ...................................................... 70 
`IX. 
`CONCLUSION ........................................................................................ 71 
`X. 
`CERTIFICATION OF COMPLIANCE WITH TYPE-VOLUME LIMITS .......... 72 
`CERTIFICATE OF SERVICE ............................................................................... 73 
`
`
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` ii
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`
`
`EXHIBIT LIST
`
`EXHIBIT LIST
`
`EXHIBITS FILED BY PETITIONER
`
`EXHIBITS FILED BY PETITIONER
`
`Ex. 1001
`
`U.S. Patent No. 7,224,275
`U.S. Patent No. 7,224,275
`
`Ex. 1002
`
`Patent Prosecution History of U.S. Patent No. 7,224,275
`Patent Prosecution History of U.S. Patent No. 7,224,275
`
`Ex. 1003
`
`U.S. Patent App. Pub. No. 2002/0183008 to Menard
`U.S. Patent App. Pub. No. 2002/0183008 to Menard
`
`Ex. 1004
`
`The Bluetooth® technical specification version 1.0 B (Dec. 1,
`The Bluetooth® technical specification Version 1.0 B (Dec. 1,
`1999)
`1999)
`
`Ex. 1005
`
`Excerpts of Chatschik Bisdikian, An Overview of the Bluetooth
`Excerpts of Chatschik Bisdikian, An Overview of the Bluetooth
`Wireless Technology, IEEE COMMUNICATIONS MAGAZINE,
`Wireless Technology, IEEE COMMUNICATIONS MAGAZINE,
`December 2001, at 88-90.
`December 2001, at 88-90.
`
`Ex. 1006
`
`Excerpts of Matthew S. Gast, 802.11 Wireless Networks: The
`Excerpts of Matthew S. Gast, 802.11 Wireless Networks: The
`Definitive Guide at 40-60, 411-417 (1st ed. April 2002)
`Definitive Guide at 40-60, 411-417 (1st ed. April 2002)
`
`Ex. 1007
`
`U.S. Patent No. 6,392,537 to Tazumi
`U.S. Patent No. 6,392,537 to Tazumi
`
`Ex. 1008
`
`Declaration of Stuart Lipoff Regarding Invalidity of U.S. Patent
`Declaration of Stuart Lipoff Regarding Invalidity of U.S. Patent
`No. 7,224,275
`No. 7,224,275
`
`Ex. 1009
`
`Curriculum Vitae of Stuart Lipoff
`Curriculum Vitae of Stuart Lipoff
`
`iii
`
`iii
`
`

`
`
`
`Ex. 1010
`Ex. 1010
`
`Excerpts of the Transcript of the August 29-31, 2016 Preliminary
`Excerpts of the Transcript of the August 29-31, 2016 Preliminary
`Injunction Hearing in The Chamberlain Group, Inc. v.
`Injunction Hearing in The Chamberlain Group, Inc. v.
`Techtronic Industries Co. Ltd. et al., No. 16-cv-06094 (N.D. Ill.)
`Techtronic Industries Co. Ltd. et al., No. 16-cV-06094 (N .D. Ill.)
`
`Ex. 1011
`
`in Support of Its Motion for Preliminary Injunction
`
`Declaration of V. Thomas Rhyne in Support of Plaintiff’s Reply
`Declaration of V. Thomas Rhyne in Support of Plaintiffs Reply
`in Support of Its Motion for Preliminary Injunction
`
`Ex. 1012
`Ex. 1012
`
`U.S. Patent No. 5,475,377 to Lee
`U.S. Patent No. 5,475,377 to Lee
`
`
`
`iv
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`iv
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`

`
`INTRODUCTION
`Petitioner requests Inter Partes Review (“IPR”) of claims 24-31 (the
`
`Case No. IPR2016-01774
`Patent No. 7,224,275
`
`
`I.
`
`“Challenged Claims”) of U.S. Patent No. 7,224,275 to James J. Fitzgibbon (“ʼ275
`
`patent,” Ex. 1001), purportedly owned by The Chamberlain Group, Inc. (“Patent
`
`Owner”).
`
`II. MANDATORY NOTICES
`Real Party-in-Interest: The real parties-in-interest are One World
`
`Technologies, Inc. d/b/a Techtronic Industries Power Equipment, and Techtronic
`
`Industries North America, Inc.
`
`Related Matters: The ʼ275 patent is asserted against Petitioner in The
`
`Chamberlain Group., Inc. v. Techtronic Industries Co. Ltd. et al., No. 16-cv-06097
`
`(N.D. Ill. filed Jun. 10, 2016).
`
`Petitioner also identifies other patents that Patent Owner is presently
`
`asserting against Petitioner in District Court and ITC proceedings: U.S. Patent
`
`7,635,966 is also involved in The Chamberlain Group., Inc. v. Techtronic
`
`Industries Co. Ltd. et al., No. 16-cv-06097 (N.D. Ill. filed Jun. 10, 2016), and U.S.
`
`Patent Nos. 7,339,336, 7,161,319, and 7,196,611 are involved in The Chamberlain
`
`Group., Inc. v. Techtronic Industries Co. Ltd. et al., No. 16-cv-06094 (N.D. Ill.
`
`filed Jun. 10, 2016) and In the Matter of Certain Access Control Systems and
`
`Components Thereof, ITC Investigation No. 337-TA-1016 (instituted Aug. 3,
`
`
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`1
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`2016).
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`Case No. IPR2016-01774
`Patent No. 7,224,275
`
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`In addition, Petitioner is concurrently filing another petition for IPR
`
`challenging other claims of the ’275 patent.
`
`Lead Counsel: Dion Bregman (Reg. No. 45,645); Back-up Counsel: Jason
`
`White (Reg. No. 42,223), Ahren Hsu-Hoffman (Reg. No. 50,862), and Athena
`
`Johns (Reg. No. 64,771).
`
`Service: Service of any documents may be made at Morgan, Lewis &
`
`Bockius LLP, 1400 Page Mill Road, Palo Alto, CA, 94304 (Telephone:
`
`650.843.4000; Fax: 650.843.4001).
`
`Petitioner consents to e-mail service at: TechtronicIPRs@morganlewis.com.
`
`III.
`
`IDENTIFICATION OF CLAIMS AND GROUNDS
`ʼ275 Patent: This patent was filed on May 29, 2003, does not claim priority
`
`to an earlier date, and is subject to the pre-AIA provisions of 35 U.S.C. § 102,
`
`referenced below.
`
`Menard: U.S. Patent Publication No. 2002/0183008 entitled “Power Door
`
`Control and Sensor Module for a Wireless System” to Raymond Menard et al.
`
`(“Menard,” Ex. 1003), filed May 29, 2001 and published December 5, 2002, is
`
`prior art under §§ 102(a) and 102(e)(1).
`
`The Bluetooth References: The Bluetooth® technical specification version
`
`1.0 B (“The Bluetooth Specification,” Ex. 1004) and An Overview of the Bluetooth
`
`
`
`2
`
`

`
`Wireless Technology (Ex. 1005) (collectively “The Bluetooth References”). The
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`Case No. IPR2016-01774
`Patent No. 7,224,275
`
`
`Bluetooth Specification, published on December 1, 1999, is prior art under §
`
`102(b). An Overview of the Bluetooth Wireless Technology, published in
`
`December 2001, is prior art under § 102(b).
`
`802.11 Guide: 802.11 Wireless Networks: The Definitive Guide (“The
`
`802.11 Guide,” Ex. 1006), published April 2002, is prior art under § 102(b).
`
`Tazumi: U.S. Patent No. 6,392,537 entitled “Remote Monitoring System
`
`for Automatic Door Systems” to Soichi Tazumi et al. (“Tazumi,” Ex. 1007), issued
`
`May 21, 2002, is prior art under § 102(b).
`
`Lee: U.S. Patent No. 5,475,377 entitled “Electronic Identification System
`
`Having Remote Automatic Response Capability and Automatic Identification
`
`Method Thereof” to Kwang-sil Lee (“Lee,” Ex. 1012), issued December 12, 1995,
`
`and is prior art under § 102(b).
`
`
`
`Petitioner asks the Board to find the Challenged Claims: (1) unpatentable
`
`under § 103 as obvious over Menard and Lee; (2) unpatentable under § 103 as
`
`obvious over Menard, Lee, the Bluetooth References, and the 802.11 Guide; and
`
`(3) unpatentable under § 103 as obvious over Menard, Lee, and Tazumi.
`
`IV. CERTIFICATION AND FEES
`Petitioner certifies the ’275 patent is available for IPR and that Petitioner is
`
`not barred or estopped from requesting this IPR on the grounds identified herein.
`
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`3
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`Any additional fees for this IPR may be charged to Deposit Account No. 50-
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`Case No. IPR2016-01774
`Patent No. 7,224,275
`
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`0310 (Order No. 011721-5003).
`
`V. BACKGROUND
`The ʼ275 patent describes a movable barrier operator, such as a garage door
`
`opener. Ex. 1001 Abstract, 2:55-3:5. The movable barrier operator comprises a
`
`controller (yellow), movable barrier interface (red), and transmitter (orange):
`
`
`
`Id. Fig. 1 (highlighting, annotations, and emphasis added throughout unless
`
`otherwise noted). The movable barrier operator transmits a “status condition
`
`signal” that indicates an operational status condition of the movable barrier
`
`operator, e.g., whether the movable barrier (e.g., garage door) is open or closed.
`
`During prosecution, the ’275 patent application was rejected over prior art
`
`that utilized sensors to identify operational status conditions of a garage door
`
`opener. Ex. 1002 pp. 159-162, 167-169. Patent Owner did not dispute that the
`
`sensor-based prior art taught transmitting operational status conditions of a garage
`
`
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`4
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`door opener, and instead amended the claims to require “an identifier that is at
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`Case No. IPR2016-01774
`Patent No. 7,224,275
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`least relatively unique to the movable barrier operator, such that the status
`
`condition signal substantially uniquely identifies the movable barrier operator.”
`
`Ex. 1002 p. 36. In other words, the “status condition signal” identifies the specific
`
`movable barrier operator that is transmitting the signal. Ex. 1001 2:55-3:5. Patent
`
`Owner also argued that the presence of the identifier distinguished the claims over
`
`the prior art. See Ex. 1002 p. 47. Patent Owner explained that the substantially
`
`“unique identifier” allows “a receiver [of the status condition signal] to
`
`differentiate this information [from] other similar information as might be received
`
`[from] another such movable barrier operator (as when, for example, a given
`
`garage has two garage doors controlled by separate movable barrier operators).”
`
`Id. pp. 47-48. The application was subsequently allowed without further arguments
`
`or amendments. Id. p. 8.
`
`Menard (Ex. 1003) was not considered by the Patent Office during
`
`prosecution. Menard discloses a system that transmits (e.g., to a user’s cellphone)
`
`status conditions of a garage door opener, e.g., whether the door is open or closed,
`
`the light is on or off, and/or if the temperature of the opener is too hot. See Ex.
`
`1003 [0009]-[0011], [0054]. Menard discloses a movable barrier operator that
`
`includes the same basic elements, arranged in the same basic way, as the movable
`
`barrier operator claimed in the ʼ275 patent:
`
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`5
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`

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`The ʼ275 Patent
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`Menard (Prior Art)
`
`
`Ex. 1001 Fig. 1; Ex. 1003 Fig. 2; see also id. Fig. 6 (showing garage door opener
`
`10 as part of the system); Ex. 1008[¶34]. Just like the ʼ275 patent, Menard’s
`
`system includes a controller, a movable barrier interface, and a transmitter.
`
`Menard discloses that information about any present operational status
`
`condition (e.g., open door, door closed, or open door and obstruction present) can
`
`be transmitted wirelessly to a user device (e.g., a cellphone or pager) using, e.g.,
`
`cellular, Bluetooth, or WiFi (802.11) communication. See id. [0010]-[0011].
`
`Moreover, just like the ʼ275 patent, Menard discloses transmission of a status
`
`condition signal that includes an identifier that uniquely identifies the garage door
`
`opener providing the status information. Ex. 1003 [0072]. Just like Patent Owner,
`
`Menard contemplated use of its system in homes and buildings having multiple
`
`garage door openers. Ex. 1003 [0072]. As such, status condition signals
`
`transmitted by Menard’s system must necessarily include an identifier that
`
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`6
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`uniquely identifies the door for which information is being provided. Ex.
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`Case No. IPR2016-01774
`Patent No. 7,224,275
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`1008[¶35].
`
`Additionally, Menard’s teaching of BLUETOOTH (a short-range
`
`communication mechanism governed by a standard) to transmit the status
`
`condition signal confirms use of a unique door identifier. All Bluetooth devices
`
`are assigned an identifier or “Bluetooth Device address” (abbreviated
`
`“BD_ADDR”) that uniquely identifies the device, and use a second identifier
`
`called an “Active Member address” (abbreviated “AM_ADDR”) to distinguish
`
`between different Bluetooth units communicating on the same ad hoc network.
`
`Ex. 1003 [0041]; Ex. 1004 pp. 51, 898; Ex. 1008[¶37]. A Bluetooth-enabled
`
`device transmits both identifiers when communicating data to another device. A
`
`person of ordinary skill in the art (“PHOSITA”) would understand that Bluetooth
`
`utilizes an “identifier that is at least relatively unique” to the device transmitting
`
`the signal, such that the signal “substantially uniquely identifies” the transmitting
`
`moveable barrier operator and, additionally “to control and monitor each of several
`
`door openers,” as disclosed by Menard. Ex. 1001 8:17-21; Ex. 1003 [0041],
`
`[0072]; Ex. 1008[¶37].
`
`Further, Menard’s teaching of using the 802.11 wireless network protocol
`
`(otherwise known as “WiFi”) to transmit the status condition signal necessitates
`
`use of a unique identifier that identifies the door’s operating unit, as 802.11 data
`
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`7
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`frames include a source address field containing a unique 48-bit IEEE MAC
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`identifier to identify the transmission source. Ex. 1006 pp. 5, 18-21. A PHOSITA
`
`would understand that the 802.11 protocol utilizes an “identifier that is at least
`
`relatively unique” to the device transmitting the signal, such that the signal
`
`“substantially uniquely identifies” the transmitting moveable barrier operator and,
`
`additionally, enables a user “to control and monitor each of several door openers,”
`
`as disclosed by Menard. Ex. 1001 8:17-21; Ex. 1003 [0041], [0072]; Ex.
`
`1008[¶38].
`
`Like Menard, Lee discloses a wireless portable device (which could be
`
`connected to a cellphone or pager) comprising a controller, wireless transmitter,
`
`memory, and display and that communicates with, controls, and displays operating
`
`states of movable barriers, e.g., movable doors and traffic gates.
`
`VI. LEVEL OF SKILL
`A person of ordinary skill in the art (“PHOSITA”) at the time of the alleged
`
`invention would have had at least an undergraduate degree in electrical
`
`engineering, or equivalent education, and one to two years of work experience in
`
`the fields of:
`
`- wireless communication systems,
`
`- sensors for security systems or appliance monitoring, and
`
`- systems for access control or automated door systems,
`
`
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`8
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`
`or equivalent work experience or training. Ex. 1008[¶30].
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`Case No. IPR2016-01774
`Patent No. 7,224,275
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`VII. CLAIM CONSTRUCTION
`Claims are given their broadest reasonable interpretation (“BRI”) in light of
`
`the specification. Petitioner proposes the following constructions for this IPR and
`
`reserves the right to argue alternative constructions in other forums.
`
`“controller” / “peripheral controller”
`
`A.
`Claim 24 recites a movable barrier operator having a “controller” and remote
`
`peripheral having a “peripheral controller.” A PHOSITA would understand that
`
`the term “peripheral” simply qualifies the location of the “controller”—i.e., that it
`
`is located in the peripheral device recited in claim 24. The patent teaches that the
`
`controller could be any programmable platform such as a “microprocessor, a
`
`microcontroller, a programmable logic or gate array, or the like.” Ex. 1001 3:30-
`
`36. Thus, a “controller” is any programmable platform, such as a
`
`microprocessor, microcontroller, programmable logic or gate array, or the
`
`like, and “peripheral controller” is simply the same located in the remote
`
`peripheral. Ex. 1008[¶43].
`
`B.
`
`“controller having a plurality of potential operational status
`conditions”
`Claim 24 recites this limitation, which means a controller that knows a
`
`plurality of potential operational status conditions, e.g., where the plurality of
`
`operational status conditions can be self-generated by the controller or
`
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`received from a sensor, user input, or from another device communicatively
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`coupled to the controller. The patent explains that the controller can “have”
`
`potential operational status conditions, e.g., “moving the movable barrier,”
`
`“detecting a likely presence of an obstacle,” “receiving a wireless remote control
`
`signal,” a “lighting” or “vacation mode” status change, and “receiving an operating
`
`parameter alteration signal.” Ex. 1001 4:9-45. In District Court, Patent Owner’s
`
`expert explained that the term “having” means the controller “knows” the garage
`
`door opener’s present operational status conditions “in and of itself.” Ex. 1010
`
`533:2-6. Put another way, according to Patent Owner, the controller is capable of
`
`determining at least two present operational status conditions without the use an
`
`external sensor. Id. at 140:10-16 (“If it has operational status conditions that are
`
`determined based on external sensors, then it is not self-aware. It’s not so much
`
`having the conditions, the status conditions, as where did it determine what the
`
`states were of those conditions.”), 531:10-532:2 (“Claim 1 ... operate[s] without
`
`having access to operational status conditions that are defined by external sensors.
`
`... It doesn’t say that it receives it from externally. It says it has it.”), 538:19-23
`
`(same).
`
`The ’275 patent, however, teaches that the controller has (i.e., knows)
`
`conditions because of information from sensors (e.g., an obstruction or proximity
`
`sensor), user input (e.g., flipping a switch for a vacation mode or sending a remote
`
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`control signal), or the controller self-generating the condition (e.g., the controller
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`switches a light on or off). Ex. 1001 4:5-44. As such, the controller may be
`
`“provided with externally developed information regarding the condition” (e.g.,
`
`from a sensor) or “self-aware of such operational status conditions.” Ex. 1001
`
`4:52-63.
`
`Contrary to arguments Patent Owner raised in District Court, none of the
`
`claims dictate that the controller must be “self-aware” of operational status
`
`conditions. The claims do not say the controller is “self-aware,” and the term
`
`“having,” as Patent Owner’s expert has acknowledged, simply means “knowing.”
`
`See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (“Absent claim language
`
`carrying a narrow meaning, the PTO should only limit the claim based on the
`
`specification or prosecution history when those sources expressly disclaim the
`
`broader definition.”). Moreover, claim 25 (which is dependent on claim 14) recites
`
`that the movable barrier operator additionally includes a particular type of sensor
`
`(a “condition status sensor”), thus confirming that the operational status conditions
`
`of claim 24 could come from a sensor. In addition, dependent claim 25 confirms
`
`that the controller of claim 1 may “have” operating status conditions that are
`
`defined by “operating states” determined from an external sensor, user input, or
`
`other device, as claim 25 recites operating states that require a sensor or user input
`
`to provide information about the condition. See Ex. 1001 4:5-45. For example, a
`
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`controller cannot know of an obstacle in the path of the garage door or detect the
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`presence of a human or vehicle without a sensor, and it cannot know of a vacation
`
`mode status change without detecting a user input. See Ex. 1010 147:4-6 (Patent
`
`Owner’s expert agreeing “the only way to detect the likely proximal presence of a
`
`vehicle is to use a sensor”). Stated differently, the principle of claim
`
`differentiation dictates that the independent claims must be at least broad enough
`
`to encompass what is recited in their dependent claims—i.e., a controller that
`
`knows of conditions that are received from a sensor or user-input device. See, e.g.,
`
`AK Steel Corp. v. Sollac and Ugine, 344 F.3d 1234, 1242 (Fed. Cir. 2003 (“If the
`
`dependent claims expressly recite ‘up to about 10%’ silicon, then the independent
`
`claims, which must be at least as broad as the claims that depend from them, must
`
`include aluminum coatings with ‘up to about 10%’ silicon.”). Thus, the broad
`
`language of the claims themselves, the specification, and the dependent claims
`
`support the proposed construction. Ex. 1008[¶¶44-49].
`
`C.
`
`“an identifier that is at least relatively unique to the movable
`barrier operator” / “the status condition signal substantially
`uniquely identifies the movable barrier operator”
`
`The patent does not explain the phrases “at least relatively unique” or
`
`“substantially uniquely.”1 The specification describes an identifier that “correlates
`
`
`1 Petitioner reserves the right to challenge these terms’ definiteness.
`
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`12
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`(uniquely or relatively uniquely) to the controller and/or the movable barrier
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`Case No. IPR2016-01774
`Patent No. 7,224,275
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`operator” and “can serve to permit a receiving device to process as appropriate the
`
`status condition information.” Ex. 1001 3:1-5. During prosecution, Patent Owner
`
`indicated, “a substantially unique identifier” is an identifier “that the movable
`
`barrier operator provides in conjunction with its status information to permit a
`
`receiver to differentiate this information for other similar information as might be
`
`received by another such movable barrier operator (as when, e.g., a given garage
`
`has two garage doors controlled by separate movable barrier operators).” Ex. 1002
`
`pp. 47-48. Thus, a PHOSITA would understand that (1) “an identifier that is at
`
`least relatively unique to the movable barrier operator” means an identifier that is
`
`sufficiently unique to identify a movable barrier operator from another
`
`movable barrier operator and (2) “the status condition signal substantially
`
`uniquely identifies the movable barrier operator” means the status condition
`
`signal includes an identifier that is sufficiently unique to identify a movable
`
`barrier operator from another movable barrier operator. See Ex. 1008[¶50].
`
`“movable barrier interface”
`
`D.
`The patent explains a “movable barrier interface 12 serves to selectively
`
`impart motion to the movable barrier 13 ... and/or to restrict or prohibit such
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`motion” and that “in many cases, a motor or other motion-imparting mechanism is
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`utilized.” Ex. 1001 3:41-50, 1:21-23. Thus, a “movable barrier interface” is a
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`motion-imparting mechanism (e.g., a motor) that causes a movable barrier to
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`move to a desired position and/or restricts or inhibits such motion.
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`E.
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`“operational status condition defined, at least in part, by at least
`two operating states”
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`Claim 24 recites an “operational status condition defined, at least in part, by
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`at least two operating states.”
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`A PHOSITA would understand that the broadest reasonable interpretation of
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`“operational status condition defined, at least in part, by at least two operating
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`states” is a status of any operation that has two or more potential operating
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`states. The patent teaches that “operational status conditions” can include, e.g.,
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`“moving the movable barrier,” “detecting a likely presence of an obstacle,” or “a
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`lighting status change.” Id. 4:9-45. A PHOSITA would understand that such an
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`“operational status condition” simply provides the status of an operation that has
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`two or more potential operating states. For example, “moving a movable barrier”
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`is simply the status of a door moving operation that has the operating states of (1)
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`moving the barrier in a first direction or (2) moving the barrier in a second
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`direction. Likewise, “a lighting status change” is a condition that has the operating
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`states of (1) light on and (2) light off. This is consistent with an interpretation that
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`Patent Owner has espoused in District Court. See Ex. 1011[¶40] (Patent Owner’s
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`expert opining that one status condition could be the position of the door, which is
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`defined by the operating states of “door OPEN or CLOSED,” and another status
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`condition could be the status of the light, which is defined by the operating states
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`of “LED ON or OFF”); Ex. 1010 113:3-12, 118:18-22.
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`Thus, under BRI, a PHOSITA would understand “operational status
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`[condition] defined, at least in part, by at least two operating states” means a status
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`of any operation that has two or more potential operating states.2 Ex.
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`1008[¶¶52-53].
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` “at least one of”
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`F.
`Claims 25 and 26 recite “at least one of: [a list of operating states].” The
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`Board has held that claim terms in the form “at least one of: A, B, and C” are
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`properly construed to require one or more of A, B, or C when a patent’s
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`2 The district court has been asked to reject the notion that a status condition signal
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`including a single operating state (e.g., door open) constitutes a signal “defined ...
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`by at least two operating states” in view of arguments made by Patent Owner
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`during prosecution. See Ex. 1002 p. 162. If the Board finds the BRI of this
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`element requires a signal “defined ... by at least two operating states” to have at
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`least two different operating states (e.g., door open and light on), then, as discussed
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`subsequently, the prior art still discloses this narrower interpretation of this claim
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`element.
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`specification lacks specific disclosure urging a contrary interpretation. See, e.g.,
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`Hewlett-Packard Co. v. MPHJ Tech. Invs., LLC, Case No. IPR2013-00309,
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`Decision at 8-9 (PTAB Nov. 21, 2013) (Paper 9).
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`Here, the ’275 patent treats the options listed in claims in the disjunctive.
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`For example, the patent explains that the controller may have “two or more”
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`operational status conditions without grouping or specifying which conditions it
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`must have. Ex. 1001 4:5-8. Thus, “at least one of” means “one or more” of the
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`choices listed in the claims.
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`“reception means”
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`G.
`The “reception means” recited in claims 30-31 should be construed under 35
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`U.S.C. § 112(6)/(f). When construing a means-plus-function limitation, one must
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`first identify the claimed function, and then look to the specification to identify the
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`corresponding structure that performs the claimed function. Med. Instrumentation
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`& Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003).
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`The recited function for “reception means” is “determining when a wireless
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`signal as received from the movable barrier operator includes an identifier that
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`corresponds to the movable barrier operator” in claim 30 and “further provides a
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`first control signal when the wireless signal does include the identifier and does not
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`provide the first control signal when the wireless signal does not include the
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`identifier” in claim 31. Ex. 1001 at 12:6-15. A PHOSITA would understand that
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`this is a function that is performed by computer software. Ex. 1008[¶¶57-58]. “It
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`is well-established that the corresponding structure for a function performed by a
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`software algorithm is the algorithm itself.” EON Corp. IP Holdings LLC v. AT&T
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`Mobility LLC, 785 F.3d 616, 621 (Fed. Cir. 2015). Thus, the corresponding
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`structure from the specification must be “more than simply a general purpose
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`computer or microprocessor,” and indeed, the specification must “disclose an
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`algorithm for performing the claimed function.” Noah Sys., Inc. v. Intuit Inc., 675
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`F.3d 1302, 1312 (Fed. Cir. 2012).
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`Here, the ’275 patent does not disclose any algorithms for performing the
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`recited functions of “reception means.” The only structure disclosed is antenna,
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`wireless receiver 21, and peripheral controller 22 of remote peripheral 20, shown
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`in Figure 2. This is not sufficient. The “reception means” cannot be performed by
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`a general-purpose computer or microprocessor without special programming; in
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`other words, the recited function requires more than just plugging in a general-
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`purpose computer or microprocessor. Ex. 1008[¶59]. Thus, the failure to disclose
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`an algorithm (whether in terms of a mathematical formula, prose, or flowchart) for
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`performing the recited function renders claims 30 and 31 indefinite. See EON
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`Corp. at 623 (“[T]he disclosure of a general purpose computer or microprocessor
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`as corresponding structure for a software function does nothing to limit the scope
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`of the claim and ‘avoid pure functional claiming.’”); RPX Corp. v. Applications in
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`Internet Time, LLC, IPR2015-01752, Decision at 17-19 (PTAB May 12, 2016)
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`(Paper 60) (finding means-plus-function claims were unable to be construed
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`because the specification failed to disclose an algorithm for performing the
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`computer-implemented function).
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`The Rules, however, specifically require that a petition identify the
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`corresponding structure in proposing a construction for a means-plus-function
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`claim limitation. 37 C.F.R. § 42.104(b)(3). As such, and despite the patent’s
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`failure to disclose an algorithm describing how the claimed functions are
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`performed, the only structures that Petitioner was able to find that could arguably
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`perform the function are the antenna, wireless receiver 21, and peripheral
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`controller 22 of remote peripheral 20, shown in Figure 2. Accordingly, solely for
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`the purposes of this IPR, pursuant to the Rules, and under the PTAB’s BRI
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`standard, the claimed limitation is: the antenna, wireless receiver 21, and
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`peripheral controller 22 of remote peripheral 20, and equivalents thereof.
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`Petitioner reserves its rights to argue indefiniteness in District Court an