Trials@uspto.gov
`571-272-7822
`
`
`
`
` Paper 32
`Entered: April 24, 2018
`
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`
`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 IPR2017-00073
`Patent 7,196,611 B2
`____________
`
`
`
`Before JONI Y. CHANG, JUSTIN T. ARBES, and JOHN F. HORVATH,
`Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a)
`
`
`

`

`IPR2017-00073
`Patent 7,196,611 B2
`
`
`I. BACKGROUND
`Petitioner One World Technologies, Inc. d/b/a Techtronic Industries
`Power Equipment filed a Petition (Paper 2, “Pet.”) requesting inter partes
`review of claims 1–8 and 10–14 of U.S. Patent No. 7,196,611 B2 (Ex. 1001,
`“the ’611 patent”) pursuant to 35 U.S.C. § 311(a). On April 25, 2017, we
`instituted an inter partes review of claims 1–8 and 10–14 on two grounds of
`unpatentability. Paper 8 (“Dec. on Inst.”). Patent Owner The Chamberlain
`Group, Inc. subsequently filed a Patent Owner Response (Paper 13,
`“PO Resp.”) and Petitioner filed a Reply (Paper 17, “Reply”). Pursuant to
`our authorization (Paper 19), Patent Owner filed a list of allegedly improper
`arguments in Petitioner’s Reply (Paper 20) and Petitioner filed a response
`(Paper 25). Petitioner also filed a Motion to Exclude (Paper 23, “Mot.”)
`certain evidence submitted by Patent Owner, to which Patent Owner filed an
`Opposition (Paper 26, “Opp.”) and Petitioner filed a Reply (Paper 27). An
`oral hearing was held on January 18, 2018, and a transcript of the hearing is
`included in the record (Paper 31, “Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a). For the reasons that
`follow, we determine that Petitioner has shown by a preponderance of the
`evidence that claims 1–8 and 10–13 are unpatentable, but Petitioner has not
`shown by a preponderance of the evidence that claim 14 is unpatentable.
`
`
`
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`IPR2017-00073
`Patent 7,196,611 B2
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`
`A. The ’611 Patent1
`The ’611 patent pertains to “human interface methods” for “barrier
`movement operators.” Ex. 1001, col. 1, ll. 6–8. Barrier movement operators
`(e.g., gate operators and garage door operators), including “a motor for
`moving a barrier between open and closed positions and a controller for
`selectively energizing the motor to move the barrier,” were known in the art.
`Id. at col. 1, ll. 9–14. According to the ’611 patent, as new features were
`added to such systems, installation and maintenance became more
`complicated, resulting in a need for “improved human interaction with
`barrier movement operators to simplify their installation and maintenance.”
`Id. at col. 1, ll. 20–28.
`
`
`
`1 Petitioner also challenges claims 18–25 of the ’611 patent in
`Case IPR2017-00214. Case IPR2017-00214 involves different claims,
`different asserted prior art, and different patentability issues and arguments.
`Further, the parties never requested consolidation of the two proceedings.
`Accordingly, we did not consolidate them for purposes of trial under
`35 U.S.C. § 315(d).
`
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`IPR2017-00073
`Patent 7,196,611 B2
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`
`Figure 1 of the ’611 patent is reproduced below.
`
`
`Figure 1 depicts a barrier movement operator comprising panel door 112,
`head end 102, motor 150, controller 208 (not shown), RF transmitter 118,
`and wall control 124 with light-emitting diode (LED) 137, close push button
`134, open push button 135, and stop push button 136. Id. at col. 1, l. 47–col.
`2, l. 22. When the user presses one of the buttons, wall control unit 124
`signals controller 208, which energizes motor 150 to move or stop
`movement of panel door 112. Id. at col. 2, ll. 18–29, Fig. 2. Controller 208
`also is connected to input/output device 147 (not shown), typically located in
`head end 102, which is “useful to installers and maintainers of the barrier
`movement operator.” Id. at col. 2, ll. 41–45, Fig. 2.
`
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`IPR2017-00073
`Patent 7,196,611 B2
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`
`Figure 3 of the ’611 patent is reproduced below.
`
`
`Figure 3 depicts input/output device 147 including switches (open switch
`215, close switch 214, and stop switch 213) with corresponding LEDs 217,
`218, and 219 to “allow maintenance personnel to control the barrier from the
`head end 102”; “indicator LEDs” to “advise a user of the status of particular
`controller functions” (24V status 192, 5V status 193, IR present 194, radio
`present 195, and edge obstruction 196); and LEDs that indicate the “status of
`the barrier” (LED 200 for the barrier’s open limit, LED 201 for the
`mid-travel limit, and LED 202 for the closed limit).2 Id. at col. 2, ll. 41–60,
`col. 3, ll. 7–12. Controller 208 monitors the conditions represented by the
`“status” LEDs and causes the LEDs to be activated as necessary. Id. at
`col. 2, ll. 55–57. Controller 208 also detects errors and stores
`representations of the errors in memory. Id. at col. 3, ll. 23–27.
`
`
`2 The barrier status LEDs appear to be numbered incorrectly in the
`Specification of the ’611 patent. See Ex. 1001, col. 2, ll. 57–60 (“LEDs 197,
`198 and 199”).
`
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`IPR2017-00073
`Patent 7,196,611 B2
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`
`The ’611 patent describes a “diagnostic mode of operation” of
`controller 208, entered when the user sets switch 199 shown in Figure 3
`above to diagnostic position 9. Id. at col. 3, ll. 36–38. The diagnostic mode
`allows the user to access the error codes stored in the memory of controller
`208 from wall control 124. Id. at col. 3, ll. 38–42, Fig. 4. Specifically, when
`the user presses open push button 135, controller 208 communicates with
`wall control 124 to cause LED 137 to “pulse once for each stored error
`code,” allowing the user to determine “the number of error codes” stored in
`the memory of controller 208. Id. at col. 3, ll. 49–54. Similarly, when the
`user presses close push button 134, controller 208 causes LED 137 to “pulse
`. . . a number of times corresponding” to each error code stored in its
`memory in sequence. Id. at col. 3, ll. 60–67, Fig. 5 (showing each error code
`and its corresponding number of LED blinks).
`The ’611 patent further describes a “learn mode operation” to “guide a
`user through installation and learn mode actions.” Id. at col. 4, ll. 13–19,
`Fig. 6. Controller 208 “determines the user activities or steps needed during
`the learn process,” identifies the beginning status (e.g., open or closed) of
`the barrier movement operator, and checks to determine whether the user has
`taken each determined action in sequence. Id. at col. 4, ll. 15–42. The
`’611 patent provides an example of learning “a time value for the max run
`timer,” which is used to “determine whether the movement of the barrier has
`been going on for too long without reaching the destination limit.” Id. at
`col. 4, ll. 43–47. The user presses MRT set button 205 (shown in Figure 3
`above), LED 202 flashes to inform the user that the barrier should be moved
`to the closed limit, and after the barrier is closed, LED 217 flashes to direct
`the user to open the barrier by pressing open switch 215. Id. at col. 4,
`
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`IPR2017-00073
`Patent 7,196,611 B2
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`ll. 50–63. Controller 208 then “counts the time of travel and adds five
`seconds to the counted value and stores the result for use” as the max run
`timer limit. Id. at col. 4, l. 66–col. 5, l. 3.
`
`
`B. Illustrative Claim
`Claim 1 of the ’611 patent recites:
`1. A barrier movement operator comprising:
`a controller, responsive to user input signals and
`operational signals for selectively energizing a motor to open and
`close a barrier;
`a remote input/output unit connected to the controller and
`remote therefrom for receiving user inputs and for displaying
`status of portions of the barrier movement operator;
`the controller for identifying faults in the operation of the
`barrier movement operator; and
`apparatus for communicating the identities of faults in the
`operation of the barrier movement operator to the remote
`input/output unit and for displaying the identified faults at the
`remote input/output unit.
`
`
`C. Prior Art
`The pending grounds of unpatentability in the instant inter partes
`review are based on the following prior art:
`U.S. Patent No. 6,184,641 B1, issued Feb. 6, 2001
`(Ex. 1004, “Crimmins”); and
`U.S. Patent Application Publication No. 2002/0170685
`A1, published Nov. 21, 2002 (Ex. 1007, “Weik”).
`
`
`
`
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`IPR2017-00073
`Patent 7,196,611 B2
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`
`D. Pending Grounds of Unpatentability
`The instant inter partes review involves the following grounds of
`unpatentability:
`Reference(s)
`Crimmins
`
`Claims
`Basis
`35 U.S.C. § 102(b)3 1–3, 10, 11, and 14
`
`Crimmins and Weik
`
`35 U.S.C. § 103(a) 4–8, 12, and 13
`
`
`II. ANALYSIS
`A. Claim Interpretation
`The Board interprets claims in an unexpired patent using the “broadest
`reasonable construction in light of the specification of the patent in which
`[they] appear[].” 37 C.F.R. § 42.100(b). Under this standard, we interpret
`claim terms using “the broadest reasonable meaning of the words in their
`ordinary usage as they would be understood by one of ordinary skill in the
`art, taking into account whatever enlightenment by way of definitions or
`otherwise that may be afforded by the written description contained in the
`applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
`1997); see In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017)
`(“[The] broadest reasonable interpretation . . . is an interpretation that
`corresponds with what and how the inventor describes his invention in the
`specification.”). “Under a broadest reasonable interpretation, words of the
`
`
`3 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102, 103, and 112. Because the
`challenged claims of the ’611 patent have an effective filing date before the
`effective date of the applicable AIA amendments, we refer to the pre-AIA
`versions of 35 U.S.C. §§ 102, 103, and 112.
`8
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`IPR2017-00073
`Patent 7,196,611 B2
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`claim must be given their plain meaning, unless such meaning is inconsistent
`with the specification and prosecution history.” Trivascular, Inc. v.
`Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016). Our interpretation “‘cannot
`be divorced from the specification and the record evidence,’ and ‘must be
`consistent with the one that those skilled in the art would reach.’ A
`construction that is ‘unreasonably broad’ and which does not ‘reasonably
`reflect the plain language and disclosure’ will not pass muster.” Microsoft
`Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (citations
`omitted), overruled on other grounds by Aqua Prods., Inc. v. Matal, 872
`F.3d 1290 (Fed. Cir. 2017).
`In the Decision on Institution, based on the parties’ arguments, see
`Pet. 13–32; Paper 6, 5–16, and record at the time, we preliminarily
`interpreted the following limitations of claim 1:
`Limitation
`Interpretation
`
`“controller”
`
`“remote input/output unit”
`
`“remote input/output unit
`connected to the controller and
`remote therefrom”
`
`“faults in the operation of the
`barrier movement operator”
`
`a microprocessor, processor, or other
`programmable logic that controls the
`operation of the barrier movement
`operator
`a remote piece of hardware that can
`be used both for providing data and
`receiving data
`(does not require a “wired electrical
`connection or path” between the
`remote input/output unit and
`controller, and no further
`interpretation is necessary)
`operating characteristics of the barrier
`movement operator that require
`correction or maintenance
`
`
`
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`IPR2017-00073
`Patent 7,196,611 B2
`
`Dec. on Inst. 10–13, 17–19. We also preliminarily interpreted the following
`limitations as means-plus-function limitations under 35 U.S.C. § 112, sixth
`paragraph:
`Limitation
`
`Interpretation
`
`“apparatus for communicating
`the identities of faults in the
`operation of the barrier
`movement operator to the
`remote input/output unit and
`for displaying the identified
`faults at the remote
`input/output unit”
`(claim 1)
`“apparatus for selecting one of
`an operating mode or a
`diagnostic mode”
`(claim 2)
`
`“display apparatus for
`displaying the error codes”
`(claim 10)
`“apparatus for storing error
`messages generated during the
`operation of the barrier
`movement operator”
`(claim 11)
`“apparatus for requesting
`stored error messages from the
`controller”
`(claim 12)
`
`Functions: communicating the
`identities of faults in the operation of
`the barrier movement operator to the
`remote input/output unit and
`displaying the identified faults at the
`remote input/output unit
`Corresponding structure: controller
`208, path 126 from controller 208 to
`wall control 124, and LED 137
`Function: selecting one of an
`operating mode or a diagnostic mode
`Corresponding structure: switch 199
`
`Function: displaying the error codes
`Corresponding structure: LED 137
`on wall control 124
`Function: storing error messages
`generated during the operation of the
`barrier movement operator
`Corresponding structure: memory of
`controller 208
`Function: requesting stored error
`messages from the controller
`Corresponding structure: a button on
`wall control 124
`
`
`
`10
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`IPR2017-00073
`Patent 7,196,611 B2
`
`Id. at 13–17. We specifically “encouraged [the parties] to address the
`interpretation of all limitations in the claims potentially subject to
`means-plus-function treatment in their papers during trial.” Id. at 16–17.
`In its Response, Patent Owner states that Petitioner’s proposed
`interpretations “introduce concepts that have no basis in the claim’s plain
`language.” PO Resp. 3–4. Patent Owner, however, does not offer any
`alternative interpretations or take a position as to whether any of the
`limitations identified above are means-plus-function limitations under
`35 U.S.C. § 112, sixth paragraph. Instead, Patent Owner argues that the
`claims should be interpreted according to their “plain language” and that “no
`construction is necessary for any claim term.” Id. at 4. Petitioner adopts our
`preliminary interpretations. Reply 3.
`Upon review of the full record from trial, we do not perceive any
`reason or evidence that compels any deviation from our earlier
`interpretations. See Dec. on Inst. 7–19. We adopt the previous analysis and
`conclude that no other terms require interpretation.
`
`
`B. Principles of Law
`To prevail in challenging claims 1–8 and 10–14 of the ’611 patent,
`Petitioner must demonstrate by a preponderance of the evidence that the
`claims are unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
`“Anticipation requires that every limitation of the claim in issue be
`disclosed, either expressly or under principles of inherency, in a single prior
`art reference,” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868
`F.2d 1251, 1255–56 (Fed. Cir. 1989), and that the claim limitations be
`“arranged or combined in the same way as recited in the claim[],” Net
`
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`IPR2017-00073
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`MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
`However, “the reference need not satisfy an ipsissimis verbis test.” In re
`Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009).
`A claim is unpatentable for obviousness if, to one of ordinary skill in
`the pertinent art, “the differences between the subject matter sought to be
`patented and the prior art are such that the subject matter as a whole would
`have been obvious at the time the invention was made.” KSR Int’l Co. v.
`Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)). The
`question of obviousness is resolved on the basis of underlying factual
`determinations, including “the scope and content of the prior art”;
`“differences between the prior art and the claims at issue”; and “the level of
`ordinary skill in the pertinent art.”4 Graham v. John Deere Co., 383 U.S. 1,
`17–18 (1966).
`A patent claim “is not proved obvious merely by demonstrating that
`each of its elements was, independently, known in the prior art.” KSR,
`550 U.S. at 418. An obviousness determination requires finding “both ‘that
`a skilled artisan would have been motivated to combine the teachings of the
`prior art references to achieve the claimed invention, and that the skilled
`artisan would have had a reasonable expectation of success in doing so.’”
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359,
`1367–68 (Fed. Cir. 2016) (citation omitted); see KSR, 550 U.S. at 418
`
`
`4 Additionally, secondary considerations, such as “commercial success, long
`felt but unsolved needs, failure of others, etc., might be utilized to give light
`to the circumstances surrounding the origin of the subject matter sought to
`be patented. As indicia of obviousness or nonobviousness, these inquiries
`may have relevancy.” Graham, 383 U.S. at 17–18. Patent Owner, however,
`has not presented any such evidence.
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`(for an obviousness analysis, “it can be important to identify a reason that
`would have prompted a person of ordinary skill in the relevant field to
`combine the elements in the way the claimed new invention does”).
`A motivation to combine the teachings of two references can be “found
`explicitly or implicitly in market forces; design incentives; the ‘interrelated
`teachings of multiple patents’; ‘any need or problem known in the field of
`endeavor at the time of invention and addressed by the patent’; and the
`background knowledge, creativity, and common sense of the person of
`ordinary skill.” Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed.
`Cir. 2013) (citation omitted). Further, an assertion of obviousness “cannot
`be sustained by mere conclusory statements; instead, there must be some
`articulated reasoning with some rational underpinning to support the legal
`conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441
`F.3d 977, 988 (Fed. Cir. 2006)); In re Nuvasive, Inc., 842 F.3d 1376, 1383
`(Fed. Cir. 2016) (a finding of a motivation to combine “must be supported
`by a ‘reasoned explanation’” (citation omitted)).
`
`
`C. Level of Ordinary Skill in the Art
`Petitioner argues that a person of ordinary skill in the art at the time of
`the ’611 patent would have had “at least an undergraduate degree in
`electrical or computer engineering, or equivalent education, and two years of
`work experience in the fields of access control or automated door control
`systems, or equivalent work experience or training in the field of such
`technologies,” citing the testimony of its declarant, Stuart Lipoff. Pet. 13
`(citing Ex. 1003 ¶¶ 27–30). Patent Owner does not propose a different level
`of ordinary skill in the art in its Response. Patent Owner’s declarant,
`
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`Nathaniel J. Davis IV, Ph.D., however, opines that a person of ordinary skill
`in the art would have had “at least an undergraduate degree in computer or
`electrical engineering (or equivalent education) along with at least two years
`of industry experience working with embedded computer systems or related
`technologies involving microcontrollers.” Ex. 2006 ¶ 18.
`Neither party explains in detail why the respective proposed level of
`ordinary skill in the art should be adopted nor how the different levels affect
`the parties’ analyses. The parties’ declarants agree that an ordinarily skilled
`artisan would have had an undergraduate degree in electrical or computer
`engineering (or the equivalent) and two years of work experience. The
`difference between the two is the substance of that work experience.
`Mr. Lipoff opines that it would be in “the fields of access control or
`automated door control systems,” whereas Dr. Davis opines that it would be
`in “embedded computer systems or related technologies involving
`microcontrollers.” See Ex. 1003 ¶ 29; Ex. 2006 ¶ 18.
`Mr. Lipoff’s proposed definition is consistent with the technology at
`issue in this proceeding. The ’611 patent is directed to “barrier movement
`operators,” such as “[g]ate operators and garage door operators,” and
`“human interface methods and apparatus for such systems.” Ex. 1001,
`col. 1, ll. 6–14. The ’611 patent does not mention specifically “embedded”
`computer systems, but does disclose that barrier movement operators were
`known to include a “motor” and “controller” that “selectively energiz[es] the
`motor to move the barrier” and is “responsive to stimulus signals to perform
`various barrier movements.” Id. at col. 1, ll. 9–19; see also Ex. 1004, col. 1,
`ll. 9–13 (Crimmins similarly disclosing that it is directed to “a controller for
`controlling the motor, interface, safety systems and other functions of a
`
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`commercial door or barrier operator”); Ex. 1007 ¶¶ 2–5 (Weik similarly
`disclosing that it is directed to “[a]utomated, motor-driven barriers”). Thus,
`an individual having experience working with barrier movement operators
`would have been familiar with their constituent parts, including motors and
`controllers for the devices. Based on the record developed during trial,
`including our review of the ’611 patent and the types of problems and
`solutions described in the ’611 patent and cited prior art, we agree with
`Mr. Lipoff’s assessment of the level of ordinary skill in the art and apply it
`for purposes of this Decision.
`
`
`D. Anticipation Ground Based on Crimmins
`(Claims 1–3, 10, 11, and 14)
`1. Crimmins
`Crimmins discloses a “controller for controlling the motor, interface,
`safety systems and other functions of a commercial door or barrier
`operator.” Ex. 1004, col. 1, ll. 9–13.
`
`
`
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`
`Figure 2A of Crimmins is reproduced below.
`
`
`Figure 2A depicts commercial door operator 100, motor 14, logic control
`device (controller) 20, door 104, and door housing 106. Id. at col. 5,
`ll. 27–36. Figure 4 of Crimmins is reproduced below.
`
`
`
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`Figure 4 depicts the components of logic control device 20, including
`indicator panel 33 and microprocessor 32, which “controls operation of all
`the electronic functions on the control device” and may be a “Zilog brand
`microprocessor with 8K of onboard ROM.” Id. at col. 5, ll. 40–60. Logic
`control device 20 communicates with motor 14 to cause the door to open,
`close, and stop in response to a user pressing a corresponding button on a
`wall unit or at logic control device 20 itself. Id. at col. 6, ll. 48–51, col. 7,
`ll. 32–34, col. 10, ll. 19–55.
`Crimmins’s system includes an “onboard cycle counter,” which
`“increments a mechanical odometer type counter every time the commercial
`door cycles open or closed” and activates a warning light when the counter
`reaches a “predetermined amount,” indicating that “service should be
`provided.” Id. at col. 3, ll. 14–17, col. 4, ll. 37–47, col. 9, ll. 4–19.
`Specifically, a “diagnostic LED may be located both on the logic control
`device and the wall unit, next to the three button controls (open/close/stop).”
`Id. at col. 9, ll. 4–6. Crimmins’s system also allows the user to “program
`various features of the unit” and to operate the unit in different modes, such
`as “diagnostic mode,” “memory clear mode,” and “cycle timer learn mode,”
`using switches 40 of logic control device 20. Id. at col. 6, ll. 23–28, col. 10,
`l. 56–col. 12, l. 24. For example, “[w]hen the diagnostic mode is selected in
`the DIP [dual in-line package] switch, the diagnostic light will flash two
`times every second and the door will not function while in this mode.” Id. at
`col. 12, ll. 4–6.
`
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`
`2. Whether Crimmins Includes Exhibit A
`As an initial matter, we address Patent Owner’s argument that
`Petitioner’s asserted ground fails because anticipation requires that a single
`prior art document disclose every limitation of a claim, but Petitioner relies
`on “two different documents”—U.S. Patent No. 6,184,641 B1 (“the ’641
`patent”) and Exhibit A referenced therein—in its arguments. See PO Resp.
`4–8. Patent Owner contends that the ’641 patent as issued does not include
`Exhibit A and “does not include any language that could be considered an
`‘incorporation by reference’ of Exhibit A, which would have the effect of
`including the text of the document in the patent itself.” Id. at 7–8.
`The ’641 patent issued from U.S. Patent Application No. 09/526,969
`(“the ’969 application”), filed on March 16, 2000, which is a continuation of
`U.S. Patent Application No. 09/063,832 (“the ’832 application”), filed on
`April 21, 1998, and subsequently abandoned. The written description of the
`’969 application as filed included the following disclosure:
`Exhibit A is a copy of a source listing for computer
`software to operate a commercial door operator having the
`functions described above and including the following modules:
`switches.srs, main_cdo.srs, main_cdo.inc, interrupt.src and
`tasker.src.
`Ex. 1009, 56. The ’969 application was filed with the source code listing
`labeled “Exhibit A.” Id. at 67–126. As issued, the ’641 patent includes the
`paragraph quoted above, but Exhibit A was not printed in the issued patent.5
`See Ex. 1004, col. 12, ll. 25–29; Ex. 2001, col. 12, ll. 25–29.
`
`
`5 The transmittal form submitted with the ’969 application indicates that the
`application contains “94 pages of the specification,” which includes the
`portion labeled as “Exhibit A.” See Ex. 1009, 33–126 (application as filed),
`18
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`IPR2017-00073
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`Petitioner filed a copy of the ’641 patent and Exhibit A together as
`Exhibit 1004 in this proceeding, and we instituted a trial to determine
`whether claims 1–3, 10, 11, and 14 are anticipated by the ’641 patent. See
`Dec. on Inst. 6 (referring to “U.S. Patent No. 6,184,641 B1,” as provided in
`Exhibit 1004, as “Crimmins”), 31; Pet. 3 (referring to “Crimmins” as
`“U.S. Patent No. 6,184,641 to Crimmins issued on February 6, 2001”). The
`parties agree that the ’641 patent, by virtue of its issue date, is prior art to the
`challenged claims under 35 U.S.C. § 102(b). See Pet. 3; Tr. 40:4–9. Thus,
`we must determine whether the ’641 patent includes Exhibit A. We
`conclude that the ’641 patent incorporates Exhibit A by reference and,
`therefore, need not address any of the parties’ remaining arguments on the
`issue. See PO Resp. 4–8; Reply 3–12.
`The U.S. Court of Appeals for the Federal Circuit has held that
`anticipation requires that the four corners of a single, prior art
`document describe every element of the claimed invention, either
`expressly or inherently, such that a person of ordinary skill in the
`art could practice the invention without undue experimentation.
`Material not explicitly contained in the single, prior art document
`may still be considered for purposes of anticipation if that
`material is incorporated by reference into the document.
`Incorporation by reference provides a method for integrating
`material from various documents into a host document—a patent
`or printed publication in an anticipation determination—by
`citing such material in a manner that makes clear that the material
`is effectively part of the host document as if it were explicitly
`contained therein. To incorporate material by reference, the host
`document must identify with detailed particularity what specific
`
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`153. When asked at the oral hearing, however, neither party could explain
`why Exhibit A was not printed in the issued patent. Tr. 16:23–17:11,
`39:20–40:3.
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`material it incorporates and clearly indicate where that material
`is found in the various documents.
`Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed.
`Cir. 2000) (citations omitted). Whether a patent describes material to be
`incorporated by reference with sufficient particularity is assessed from the
`perspective of a person of ordinary skill in the art. Id. at 1283.
`The ’641 patent states that it is “a continuation, of prior application
`number U.S. Ser. No. 09/063,832, filed Apr. 21, 1998, now abandoned
`which is hereby incorporated herein by reference in its entirety.” Ex. 1004,
`col. 1, ll. 3–6; see also Ex. 1009, 153 (the transmittal form of the ’969
`application, which issued as the ’641 patent, citing the ’832 application and
`stating that “[t]he entire disclosure of the prior application . . . is considered
`as being part of the disclosure of the accompanying application, and is
`hereby incorporated by reference therein”). The written description of the
`’832 application is substantively the same as that of the ’969 application
`(and the issued ’611 patent), including the paragraph quoted above
`referencing “Exhibit A” and Exhibit A itself. Compare Ex. 1012, 7–100,
`with Ex. 1009, 33–126, and Ex. 1004, col. 1, l. 7–col. 12, l. 35. Thus, the
`’641 patent includes both an express statement that the ’832 application is
`incorporated by reference “in its entirety” as well as a specific reference to
`“Exhibit A” (and particular named source code modules therein), which is
`part of the disclosure of the ’832 application. See Ex. 1004, col. 1, ll. 3–6,
`col. 12, ll. 25–29.
`We are persuaded that the ’641 patent thus identifies with sufficient
`particularity what material it incorporates (the entire ’832 application,
`including Exhibit A) and where that material may be found (the
`’832 application as filed), such that a person of ordinary skill in the art
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`readily would have understood what is incorporated and been able to locate
`it. See, e.g., Paice LLC v. Ford Motor Co., 881 F.3d 894, 907 (Fed. Cir.
`2018) (determining that a statement that an earlier patent “is incorporated
`herein by this reference” was “plainly sufficient to incorporate [the patent] in
`its entirety” (emphasis omitted)); Harari v. Lee, 656 F.3d 1331, 1335–36
`(Fed. Cir. 2011) (determining that a statement with “broad and unequivocal
`language” that the disclosure of a prior application is “hereby incorporate[d]
`by reference” was sufficient to incorporate the application in its entirety).
`Indeed, Patent Owner agrees that the ’641 patent incorporates the
`’832 application by reference in its entirety. Tr. 39:3–6. Exhibit A is part of
`the ’832 application. Ex. 1012, 41–100. Thus, Exhibit A is incorporated by
`reference in the ’641 patent, and we refer to both herein as “Crimmins” for
`purposes of assessing Petitioner’s asserted grounds.
`
`3. Claim 1
`Petitioner explains in detail how Crimmins6 discloses every limitation
`of claim 1, relying on the testimony of Mr. Lipoff as support. See Pet.
`32–49; Ex. 1003 ¶¶ 97–124. Petitioner asserts that Crimmins discloses a
`“barrier movement operator” (i.e., commercial door operator 100)
`comprising a “controller” (i.e., logic control device (controller) 20 with
`microprocessor 32) that selectively energizes a motor to open and close a
`“barrier” (i.e., door 104) and identifies “faults” in the operation of
`commercial door operator 100; and a “remote input/output unit” (i.e., wall
`unit with three button controls (open/close/stop) and a diagnostic LED) that
`
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`6 Crimmins was not of record during prosecution of the ’611 patent. See
`Ex. 1001, (56); Pet. 3. Crimmins is assigned to Patent Owner.
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`receives user inputs and displays the “status” of portions of commercial door
`operator 100. Pet. 32–46; see also id. at 34 n.9, 40 n.10 (arguing that
`Crimmins discloses the “controller” and “remote input/output unit”
`limitations even if not interpreted under 35 U.S.C. § 112, sixth paragraph).
`Petitioner contends that the “status” displayed at the wall unit may be, for
`example, the diagnostic LED being turned on or flashing depending on the
`current “mode” or reset status of the controller. Id. at 40–41.
`Petitioner contends that the “faults” identified by the logic control
`device