UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ONE WORLD TECHNOLOGIES, INC.
`D/B/A TECHTRONIC INDUSTRIES POWER EQUIPMENT,
`Petitioner
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`v.
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`THE CHAMBERLAIN GROUP, INC.
`Patent Owner
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`Case No. IPR2017-00214
`Patent No. 7,196,611
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ONE WORLD TECHNOLOGIES, INC.
`D/B/A TECHTRONIC INDUSTRIES POWER EQUIPMENT,
`Petitioner
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`v.
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`THE CHAMBERLAIN GROUP, INC.
`Patent Owner
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`Case No. IPR2017-00214
`Patent No. 7,196,611
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`Case IPR2017-00214
`Attorney Docket No: 39907-0011IP2
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`TABLE OF CONTENTS
`I.
`INTRODUCTION ............................................................................................ 1
`II. STATEMENT OF RELIEF REQUESTED .................................................. 1
`III. BACKGROUND .............................................................................................. 3
`IV. CLAIM CONSTRUCTION ............................................................................ 4
`V. PETITIONER’S PROPOSED GROUNDS 1 AND 2 ARE LEGALLY
`UNSUSTAINABLE .................................................................................................. 7
`A. Petitioner’s improper reliance on the Baer Declaration is fatal to
`Grounds 1 and 2 ................................................................................................... 7
`B. Petitioner fails to sufficiently address the specific language of Claim 21
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`16
`C. Petitioner’s Ground 2 combination of Schindler with LiftMaster fails
`to address the Graham Factors ........................................................................ 19
`1. Graham framework analysis at the PTAB .......................................... 19
`2. Petitioner fails to sufficiently address the Graham factors ................ 21
`3. Petitioner fails to support, with reasoned explanation, its proposed
`motivation for the Ground 2 combination of Schindler and LiftMaster . 27
`D. The Board should decline consideration of Petitioner’s improper
`indefiniteness arguments on claims 19 and 20 ................................................ 32
`VI. CONCLUSION .............................................................................................. 33
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`LIST OF EXHIBITS
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`None.
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`iii
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`INTRODUCTION
`Pursuant to 37 C.F.R. § 42.107(a), Patent Owner, The Chamberlain Group,
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`I.
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`Inc. (“Chamberlain”), hereby submits the following Preliminary Response to the
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`Petition for Inter Partes Review (“IPR”) of U.S. Patent No. 7,196,611 (“the ’611
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`patent”).
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`The ’611 patent, entitled “Barrier Movement Operator Human Interface
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`Method and Apparatus,” contains 25 claims, of which claims 1, 17, 18, and 21 are
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`independent. The Petition proposes two grounds of unpatentability, together
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`challenging claims 18-25 of the ’611 patent (hereinafter the “Challenged Claims”).
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`Specifically, the Petition proposes, as Ground 1, that claims 18-25 are anticipated
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`by Schindler, and, as Ground 2, that claims 23 and 24 are obvious over Schindler
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`in view of LiftMaster.
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`The Petition is deficient, and should be denied in whole.
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`II.
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`STATEMENT OF RELIEF REQUESTED
`Chamberlain respectfully requests the Board to deny the Petition because
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`Petitioner’s Grounds 1 and 2 are legally deficient, for at least the following
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`reasons.
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`First, Petitioner’s Grounds 1 and 2 fail to establish that a person having
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`ordinary skill in the art (hereinafter a “PHOSITA”) would have interpreted
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`Schindler in the manner alleged. Instead, Petitioner’s arguments rely on a
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`1
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`declaration offered by Petitioner’s first declarant, Nikolaus Baer, who improperly
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`provided testimony from his own vantage, NOT the vantage of a PHOSITA.
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`Unlike Petitioner’s second declarant, Stuart Lipoff, Mr. Baer never discusses the
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`definition of a PHOSITA or explains how his testimony is offered from a
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`PHOSITA’s perspective. Compare Ex-1006 (“Baer Declaration”) at 3-4 with Ex-
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`1005 (“Lipoff Declaration”) at 8-9. In fact, Mr. Baer has never possessed the
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`experience needed to qualify as a PHOSITA under the very definition offered by
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`Petitioner. Id. Petitioner’s reliance on the Baer Declaration is therefore improper,
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`and fatal to Grounds 1 and 2.
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`Second, Petitioner’s treatment of claim 21 in Ground 1 improperly relies on
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`analysis of claim 18, failing to sufficiently explain how the Schindler reference
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`addresses the distinct claim language present in claim 21.
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`Third, Petitioner’s Ground 2 fails to (a) sufficiently address the Graham
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`framework and to explain with specificity how the proposed combination of
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`Schindler with LiftMaster addresses the challenged claim elements, and fails to (b)
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`establish that a PHOSITA would have been led to combine Schindler with
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`LiftMaster.
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`Fourth, the Petition improperly argues indefiniteness of claims 19 and 20,
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`but 35 U.S.C. § 311 clearly prohibits such challenges.
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`Accordingly, for at least these reasons, the Petition is deficient and should be
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`denied.
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`III. BACKGROUND
`The ’611 patent describes a novel barrier movement operator (e.g., garage
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`door opener) having a controller that “is capable of a number of learning modes” in
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`which the controller, “to learn operating parameters,” “guides and corrects …
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`necessary actions by the user.” ’611 patent at Abstract; see also 2:6-3:6, 4:13-5:3,
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`FIGS. 3, 4, and 6.
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`For example, “[w]hen the barrier movement operator is installed, the
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`controller … is taught the open and closed positions of the door so that the motor
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`… is energized only long enough to move the door between those limit positions.
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`Id. at 2:6-9. The barrier movement operator “automatically learns the open and
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`closed limits of door travel, with installer assistance and stores representations of
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`the learned limits in the memory of the controller….” Id. at 2:9-12. In another
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`example, “the interactive learn mode … [is] performed to learn a time value for the
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`max run timer,” which is used by the controller “to determine whether the
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`movement of the barrier has been going on for too long without reaching the
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`destination limit.” Id. at 4:43-5:3.
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`The ’611 patent issued on March 27, 2007 from U.S. Application No.
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`10/417,596. During prosecution, the Office considered prior art concerning garage
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`3
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`door openers. See, e.g., Ex. 1002 at 145-178. Indeed, garage door openers, like
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`those described in Schindler and LiftMaster that Petitioner relies upon, were well-
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`known in the prior art and already considered by the Office in granting the ’611
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`patent. For example, the ’611 patent itself recognized that “[b]arrier movement
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`operators are known which include a motor for moving a barrier between open and
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`closed positions and a controller for selectively energizing the motor to move the
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`barrier.” ’611 patent at 1:9-12. The background of the ’611 patent further
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`explained that “[b]arrier movement systems have proven to be safe and efficient in
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`their operation and as the technology evolves more and more safety and
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`convenience features” – similar to the safety and convenience features described in
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`Schindler and LiftMaster – “have been added.” ’611 patent at 1:20-26.
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`Accordingly, prior art teachings similar to those relied upon by Petitioner
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`were acknowledged by the ’611 patent itself, and yet, the Examiner rightly
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`appreciated novelty and non-obviousness in the unique advancements offered by
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`the ’611 patent over this very same type of art.
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`IV. CLAIM CONSTRUCTION
`The Petition proposes constructions of a multitude of terms from the
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`Challenged Claims of the ’611 patent. Petition at 16-24. However, because the
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`claim terms Petitioner proposes to construe are unambiguous and understandable
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`under their ordinary meaning, Patent Owner asks the Board to apply the ordinary
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`meaning to all claim terms that Petitioner proposes construing.
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`For example, the Petition attempts to read description from the ’611 patent’s
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`abstract, which states that “[a] controller … is capable of a number of learning
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`modes in which the controller cooperates with a user to learn operating
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`parameters” into the terms “activating a learn mode activity of the controller of the
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`barrier movement operator which learning mode requires pre-determined activities
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`by a user” (claim 18) and “receiving indications of activities performed by a user
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`during the learn mode” (claim 19). See Petition at 18.
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`In more detail, Petitioner suggests that claim 18’s recitation of “‘which
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`learning mode’ and ‘identifying … the activities to be completed by a user,’ …
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`indicat[es] that a learn mode is activated in which activities to be completed by a
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`user are determined.” Id. Based on this, “Petitioner treats the terms ‘learn mode
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`activity,’ ‘which learning mode,’ and ‘the learn mode’ as simply referring to a
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`‘learn mode.’” Petitioner states that “[t]he specification explains that a ‘learn
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`mode’ or ‘learning mode’ is a mode ‘in which the controller cooperates with a user
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`to learn operating parameters’,” (citing ’611 patent at Abstract) and concludes that,
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`“[t]herefore, for purposes of these proceedings the BRI of ‘learn mode activity,’
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`‘which learning mode,’ and ‘the learn mode’ is a mode in which the controller
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`cooperates with a user to learn operating parameters” (emphasis removed). Id.
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`5
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`Similarly, Petitioner attempts to read description from the ’611 patent’s
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`abstract into the terms “identifying a user interactive mode of operation” (claim
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`21), “determining the operator statuses and the user actions to complete the
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`interactive mode” (claim 21), “signaling the user to perform a first action in
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`furtherance of the interactive mode operation” (claim 21), “signaling the user of a
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`next action in the interactive mode operation” (claim 21), and “the user interacts
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`with the barrier movement operator to initiate the interactive mode” (claim 25). Id.
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`at 22. With respect to all of these terms, Petitioner asserts that “interactive mode
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`of operation” should, like the “learn mode” discussed with respect to claims 18 and
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`19, also be construed as “a mode in which the controller cooperates with a user to
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`learn operating parameters.” Id. at 22-23.
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`These constructions are improper, as there is simply no basis for importing
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`limitations into the ’611 patent claims that are deliberately absent from the plain
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`claim language. Indeed, these terms are unambiguous and understandable under
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`their ordinary meaning, and Petitioner fails to allege, much less prove, the
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`contrary. See Petition at 18-23. Accordingly Chamberlain respectfully requests
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`that the Board apply the ordinary meaning to these and all other claim terms that
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`Petitioner proposes construing.
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`While we disagree with Petitioner on the need for construction of these
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`terms, we note that the Board does not need to resolve these terms in favor of
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`Patent Owner to decline institution. In fact, denial of institution is appropriate
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`regardless of whether the Board favors Patent Owner’s position on any of the terms
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`for which Petitioner advanced construction since, as explained below, Patent
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`Owner’s arguments in the Preliminary Response are not reliant on claim
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`construction. Rather, Petitioner’s Grounds 1 and 2 are legally deficient for a
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`variety of reasons, regardless of how the claims of the ’611 patent are construed,
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`and they should be denied institution for reasons explained below.
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`V.
`PETITIONER’S PROPOSED GROUNDS 1 AND 2 ARE LEGALLY
`UNSUSTAINABLE
`A.
`Petitioner’s improper reliance on the Baer Declaration is fatal to
`Grounds 1 and 2
`As a threshold for institution, a petition for inter partes review must show
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`that there is a reasonable likelihood that the petitioner would prevail with respect to
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`at least one of the challenged claims. 35 U.S.C. § 314(a). To ultimately prevail in
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`an instituted proceeding, a petitioner must establish facts supporting its challenges
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`by a preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
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`Here, Petitioner has failed to show that there is a reasonable likelihood that it
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`would prevail because its challenges rely on testimony in the Baer declaration and
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`Mr. Baer did not provide testimony from the perspective of a PHOSITA. Because
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`Petitioner’s challenges rely on improper testimony, Petitioner has not met its
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`burden of demonstrating a reasonable likelihood of prevailing.
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`Specifically, petitioners in inter partes review proceedings are required to
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`provide evidence that establishes the vantage of a PHOSITA at the time of
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`invention. See Life Technologies, Inc. v. Clontech, 224 F.3d 1320, 1325 (Fed. Cir.
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`2000) ("patentability is assessed from the perspective of the hypothetical person of
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`ordinary skill in the art"); see also, e.g., Marvell Semiconductor, Inc. v. Intellectual
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`Ventures I LLC, IPR2014-00547 Paper No. 17 at 13 (PTAB Dec. 3, 2014);
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`SCHOTT Gemtron Corporation v. SSW Holding Company, Inc., IPR2014-00367
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`Paper No. 62 at 11-13 (PTAB May 26, 2015). To this end, the Board has found
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`petitions deficient for failing to support challenges when reliant on expert
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`testimony that is presented from a purported expert’s personal vantage rather than
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`from a PHOSITA’s point of view, and, for similar reasons, has ultimately affirmed
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`the patentability of claims that were challenged without such support. See Marvell
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`at 12-17; SCHOTT Gemtron at 33-34.
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`In Marvell, for example, the Board determined that a petitioner had not
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`“provided sufficient record support” for its proposed obviousness grounds and,
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`consequently, rejected those grounds and denied institution. Id. In that regard, the
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`Board discounted testimony provided by petitioner’s declarant, “on which
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`Petitioner relie[d] in support of its obviousness argument.” Id. In particular, the
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`Board emphasized that the witness had referred in his declaration to what would
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`have been clear “to me”:
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` find Choi’s technique for temporarily pausing WLAN traffic
`perfectly applicable and relevant to Chen’s need to temporarily pause
`WLAN traffic. Upon reading Choi’s disclosure of a self-addressed
`CTS frame to pause WLAN traffic . . . , it is clear to me that the
`technique can be readily extended to Chen’s system to use the address
`of the sender in Chen’s CTS frame.
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`Id. at 12 (emphasis in original)(quoting expert testimony).
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`Cognizant of this language, the Board found that the petitioner’s witness had
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`not adequately “taken into account what would have been obvious to a person of
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`ordinary skill in the time the invention … was made” and had instead “used his
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`own present skill and knowledge as a reference point.” Id. at 13. Accordingly, the
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`Board gave the witness’s testimony “little weight,” and determined that petitioner
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`had not provided “sufficient record support” for the ground, which the Board
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`denied. Id.
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`With respect to another ground, the Board again emphasized that the witness
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`had indicated, by use of the language “I” and “to me,” that the testimony was
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`provided with the frame of reference of a present day expert, not a PHOSITA at
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`the time of invention:
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`Upon reading Choi’s disclosure of a self-addressed CTS frame to
`pause WLAN traffic . . . it is clear to me that the technique can be
`readily extended to Sugar’s system to use the address of the sender in
`the CTS frames described by Sugar. I find that to be a suitable option
`for the needed address, which involves a simple application of a
`known technique and would yield a predictable result. It is also clear
`to me that using Choi’s address of the sender in Sugar’s CTS frames
`would offer the same advantages noted above with respect to the
`combination of Chen and Choi.
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`Id. at 15-16 (emphasis in original).
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`As a consequence of the witness having presented testimony from his own
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`perspective, rather than from the perspective of a PHOSITA at the time of
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`invention, the Board denied institution. Id. at 12-13, 16-17.
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`The Board has reached similar results in other cases. See SCHOTT Gemtron
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`Corporation v. SSW Holding Company, Inc., IPR2014-00367 Paper No. 62 at 11-
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`13 (PTAB May 26, 2015).
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`In SCHOTT Gemtron, for example, the Board determined in a final written
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`decision that a witness who had submitted a declaration in support of a petition did
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`not qualify as a PHOSITA under the standard set forth in that declaration. Id.
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`(“[the witness] was not a person of ordinary skill in the art at the time of the
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`invention”). As a consequence of the witness lacking the experience necessary to
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`understand a PHOSITA’s perspective, the Board accorded the testimony little
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`weight. Id. (“we [therefore] accord the testimony … less weight”). Ultimately, in
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`consideration of that record, the Board determined that the petitioner had failed to
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`establish facts supporting its challenges by a preponderance of the evidence, and
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`therefore affirmed the patentability of the challenged claims. Id. at 33-34.
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`In the instant case, the Petition proposes, as Ground 1, that claims 18-25 are
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`anticipated by Schindler, and, as Ground 2, that claims 23 and 24 are obvious over
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`Schindler in view of LiftMaster. Grounds 1 and 2 therefore both rely on
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`application of Schindler to the Challenged Claims, yet Petitioner fails to establish a
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`reasonable likelihood of prevailing on these challenges because Petitioner, like the
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`petitioner in Marvell, relies upon testimony presented from the personal
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`perspective of Petitioner’s expert, and thus, provides no evidence on critical facts
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`of the perspective of a PHOSITA at the time of invention. Indeed, Petitioner’s
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`witness, Mr. Baer, testified from his own perspective as a software expert, not a
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`PHOSITA. And, like the witness in SCHOTT Gemtron, according to the standard
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`advanced by Petitioner in its Petition, Mr. Baer lacks the experience necessary to
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`understand a PHOSITA’s perspective, making Mr. Baer unable to present
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`testimony that Petitioner can rely upon to establish a reasonable likelihood of
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`success.
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`11
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`Specifically, Petitioner’s arguments require a specific interpretation of
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`assembly source code that is included in the Schindler reference, which is said by
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`Petitioner to relate to “at least some of the of the software” “running on
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`[Schindler’s] microprocessor,” including software for Schindler’s “program
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`mode.” Petition at 30. In an attempt to support its required interpretation,
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`Petitioner relies on testimony from Mr. Baer, who is said to have “analyzed the
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`assembly source code” and to have “produced a high-level process flow for the
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`program mode.” Id.
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`Without question, this process flow, which is cited throughout the Petition,
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`is not from Schindler – it was generated by Mr. Baer. In fact, the process flow is
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`said by Petitioner to be based on Mr. Baer’s “analysis of the assembly source
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`code.” Id. (citing Baer Declaration at ¶¶ 9-14).
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`Mr. Baer’s process flow is alleged to “confirm that Schindler discloses”
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`various limitations of the Challenged Claims, and, throughout its argument,
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`Petitioner reproduces and cites to Mr. Baer’s process flow as if it were part of the
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`Schindler reference itself. See, e.g., Petition at 30, 34, 36, 52, 54, 55. Indeed, Mr.
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`Baer’s flow-chart and/or accompanying testimony is reproduced and/or explicitly
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`referenced in 18 of the pages that Petitioner devotes to its argument on claims 18-
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`20 (See Petition at 30-40, 49-57), and Mr. Baer’s analysis forms the basis of
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`Petitioner’s challenge with respect to the remaining claims as well, insofar as
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`Petitioner, in its attempt to address these claims, incorporates its earlier arguments
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`by reference. See Petition at 57-77.
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`Yet, like the petitioner in Marvell, Petitioner here is relying upon testimony
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`that its witness presents from his own personal perspective, rather than from the
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`perspective of a PHOSITA. Indeed, and similar to the declaration that the Board
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`found “unhelpful” in Marvell, Mr. Baer’s declaration is littered with language
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`indicating that the witness’s frame of reference is himself, and not a PHOSITA at
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`the time of invention. See Marvell at 12, 15-16 (emphasizing that the witness
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`referred in his declaration to what the references made clear “to me”, rather than to
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`a PHOSITA).
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`Consider, for example, Mr. Baer’s statements that “[i]n forming my
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`opinions, I have reviewed the entire Schindler reference in detail,” and that “[t]o
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`help inform my understanding of how certain instructions operate in Schindler’s
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`assembly source code, I also reviewed an Intel User’s Manual …” (emphases
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`added). Baer Declaration at ¶¶ 9, 11. “Based on the material I reviewed,” Mr.
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`Baer explains, “I prepared the high-level flow diagram … to illustrate how the
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`assembly source code in Schindler is executed to allow a user to set door travel
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`limit positions.” Id. at ¶ 14. In this way, Mr. Baer confirms that the “high-level
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`flow diagram” that Petitioner relies upon to support its Schindler-based arguments
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`represents Mr. Baer’s understanding of Schindler, rather than the understanding of
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`Schindler that a PHOSITA would have possessed at the time of invention.
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`Indeed, Mr. Baer never discusses the definition of a PHOSITA, and never
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`attempts to explain how his testimony is offered from a PHOSITA’s perspective.
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`This is unsurprising, since, under the very definition offered by Petitioner, Mr.
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`Baer has never possessed the minimum of experience necessary to understand a
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`PHOSITA’s perspective. In more detail, the Petition proposes, at page 16, that:
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`[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 or computer engineering, or equivalent education, and one
`to 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.
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`Petition at 16 (emphasis added)(citing Lipoff Declaration at ¶ 29). Mr. Baer,
`in contrast, summarizes his career history as follows:
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`During my professional engineering career, I have worked on a
`number of projects that involved analyzing and writing assembly
`source code for microprocessors that (i) instruct and manage a
`controller and (ii) control timing and intensity of LEDs in marine
`research equipment. I also have worked on engineering projects
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`involving numerous other object-oriented, scripting, and database
`programming languages, including C, C++, Java, Python, and VB.
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`Notably absent from Mr. Baer’s summary is any evidence of work
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`experience by Mr. Baer in the fields of access control or automated door
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`control systems. Yet, Petitioner and Petitioner’s second declarant, Mr.
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`Lipoff, both assert that a PHOSITA would have had at least one to two years
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`of experience in either of those fields. Thus, by Petitioner’s own standard,
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`Mr. Baer has never possessed the minimum of experience needed to
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`understand the art from the perspective a PHOSITA. Indeed, neither
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`Petitioner nor Mr. Baer even attempt to relate Mr. Baer’s experience writing
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`code to the standard expressed by Petitioner. In fact, contrary to establishing
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`Mr. Baer as a PHOSITA capable of providing testimony from the
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`perspective of a PHOSITA in the fields of access control or automated door
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`control systems, Petitioner introduces Mr. Baer as “Petitioner’s software
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`expert” (emphasis added). Petition at 10.
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`The inescapable conclusion is that Mr. Baer’s testimony, which
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`Petitioner relies upon heavily as vital support for its Petition, fails to take
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`into account what would have been understood by a PHOSITA at the time of
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`invention, because Mr. Baer lacks the experience necessary to understand a
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`PHOSITA’s perspective. Consequently, Petitioner is attempting to establish
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`facts based on testimony presented from the incorrect perspective. This is
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`improper, and fatal to Grounds 1 and 2. See SCHOTT Gemtron Corporation
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`v. SSW Holding Company, Inc., IPR2014-00367 Paper No. 62 at 33-34
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`(PTAB May 26, 2015); Marvell Semiconductor, Inc. v. Intellectual Ventures
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`I LLC, IPR2014-00547 Paper No. 17 at 12-17 (PTAB Dec. 3, 2014).
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`For at least this reason, Chamberlain respectfully submits that Grounds 1
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`and 2 should be denied.
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`B.
`Petitioner fails to sufficiently address the specific language of
`Claim 21
`The petitioner in an inter partes review proceeding bears the burden of
`
`explaining how the challenged claims read on prior art. Jiawei Technology (HK)
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`Ltd. et al. v. Simon Nicholas Richmond, IPR2014-00937 Paper No. 22 at 8 (citing
`
`37 C.F.R. § 42.104(b)(3)–(5)). To this end, the Board has found petitions deficient
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`for failing to address specific claim limitations in their arguments. See, e.g.,
`
`Jiawei, IPR2014-00937 Paper No. 22 at 7-8 (“In its claim chart, Petitioner provides
`
`citations to various portions of [a prior art reference] that allegedly disclose this
`
`limitation … Petitioner does not explain … [however,] how it believes that term
`
`reads on what [the prior art reference] discloses … [a]ccordingly, Petitioner has not
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`demonstrated a reasonable likelihood of success”).
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`16
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`
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`In the instant case, Petitioner’s arguments with respect to claim 21 rely on
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`Case IPR2017-00214
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`incorporation by reference of arguments made earlier in the Petition with respect to
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`claim 18, but Petitioner fails to provide sufficient explanation that addresses
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`differences between the language of these claims. See Petition at 57-
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`62. Accordingly, even assuming, for the sake of argument alone, that Petitioner’s
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`claim 18 arguments adequately address the limitations of that claim, Petitioner has
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`failed to meet its burden of explaining how claim 21 and its dependent claims read
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`on the Schindler reference. Thus, claims 21-25 in Ground 1 should be denied
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`institution.
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`For example, with respect to claim 21’s step of “identifying a user
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`interactive mode of operation,” Petitioner first references its contention that the
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`claimed “user interactive mode of operation” should be construed as “a mode in
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`which the controller cooperates with a user to learn operating parameters.”
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`Petition at 58 (citing Petition Section VII.F). Petitioner then suggests that, “as
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`discussed in Section VIII.A.1.a” (i.e., as discussed with respect to claim 18’s step
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`of “activating a learn mode activity of the controller of the barrier movement
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`operator, which learning mode requires pre-determined activities by a user”),
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`“Schindler teaches such a mode by disclosing the program mode that allows a user
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`to set door travel limits, and teaches that, while in the program mode, the
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`microprocessor cooperates with a user to learn operating parameters (i.e., up and
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`17
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`
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`down door travel limits).” Petition at 58. From this, Petitioner concludes that
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`“Schindler discloses ‘identifying a user interactive mode of operation.” Id.
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`Notably absent in Petitioner’s treatment of this limitation of claim 21 is an
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`explanation of how Schindler is thought to map to the plain language of the claim
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`itself. Instead, Petitioner relies on its erroneous claim construction, which equates
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`claim 18’s “learn mode” and claim 21’s “user interactive mode” with “a mode in
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`which the controller cooperates with a user to learn operating parameters,” to
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`suggest that its discussion of Schindler with respect to claim 18 demonstrates a
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`reasonable likelihood of prevailing on its Schindler-based challenge to claim 21.
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`Moreover, even assuming for the sake of argument alone that Petitioner’s
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`constructions are proper, Petitioner ignores that claim 18 recites “activating a learn
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`mode activity of the controller of the barrier movement operator, which learning
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`mode requires pre-determined activities by a user” (emphasis added), while claim
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`21 instead recites “identifying a user interactive mode of operation” (emphasis
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`added). See Petition at 58. Indeed, Petitioner fails to even attempt to offer an
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`explanation as how Schindler is thought to disclose identifying a user interactive
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`mode of operation. See id. Thus, Petitioner fails to prove that Schindler discloses
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`identifying a user interactive mode of operation.
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`For at least this reason, Petitioner has failed to meet its burden of explaining
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`how claim 21 and its dependent claims read on the Schindler reference. Without
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`18
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`
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`analysis of features of claim 21, Petitioner cannot show a reasonable likelihood of
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`success on claim and, thus, claims 21-25 of should be denied institution.
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`C.
`Petitioner’s Ground 2 combination of Schindler with LiftMaster
`fails to address the Graham Factors
`Petitioner’s Ground 2 attempts to apply a combination of Schindler with
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`LiftMaster to claims 23 and 24. Petition at 69-77. Yet, the Petition’s limited and
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`conclusory analysis ignores the well-established test for obviousness, namely the
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`four-step Graham framework. See Graham v. John Deere Co. of Kansas City, 383
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`U.S. 1, 17-18 (1966). For example, as detailed further below, Petitioner fails to
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`state with particularity the differences between the asserted prior art and the
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`subject matter of the claims challenged. See KSR Int'l Co. v. Teleflex Inc., 550 U.S.
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`398, 406 (2007) (citing with approval the Graham factors, including determining
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`the differences between the prior art and the claims at issue).
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`1.
`Graham framework analysis at the PTAB
`The Board has consistently found that failure to address the Graham factors
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`is fatal to invalidity challenges at the PTAB. For example, in EBay v. Paid, the
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`petitioner proposed an obviousness argument based on a prior art reference without
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`identifying any differences between the claims and the prior art reference. EBay
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`Inc. v. Paid, Inc., CBM2014-00125, Paper 15 (Institution Decision), p. 21 (PTAB
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`2014). The Board held that such “an obviousness analysis is deficient” because it
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`19
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`
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`fails to address the Graham factors. Id. In particular, the Board noted that the
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`petition failed to “identify any differences between [the prior art reference] and the
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`claims, as required by Graham.” Id.
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`In another case, Microsoft v. Secure Web Conference, the petitioner
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`contended that certain claimed features were disclosed in a secondary reference “to
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`the extent” that they were “not expressly disclosed” in the primary reference.
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`Microsoft Corporation v. Secure Web Conference Corporation, IPR2014-00745,
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`Paper 12 (Decision Denying Institution), p. 13 (PTAB 2014). The Board denied
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`institution in Microsoft, explaining that the above-noted assertion by petitioner
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`“does not state with particularity the differences between the reference . . . and the
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`subject matter of the claims challenged” as required by the four-part test of
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`Graham. Id. Further, the Board determined that a “general contention” that
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`anything missing from the primary reference may be found in the secondary
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`references “leaves [the Board] to speculate how the references are combined, and
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`does not explain sufficiently how the claimed subject matter is unpatentable.” Id.
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`at 13-14.
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`Similarly, in Travelocity v. Cronos Technologies, the Board found that,
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`“because Petitioner failed to identify the differences between each of the applied
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`reference
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