Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 31
`Entered: May 15, 2018
`
`
`
`
`
`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 IPR2017-00214
`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)
`
`
`

`

`IPR2017-00214
`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 18–25 of U.S. Patent No. 7,196,611 B2 (Ex. 1001, “the
`
`’611 patent”) pursuant to 35 U.S.C. § 311(a). On May 16, 2017, we
`
`instituted an inter partes review of all challenges raised in the Petition,
`
`namely, claims 18–25 on two grounds of unpatentability. Paper 8 (“Dec. on
`
`Inst.”); see Pet. 5. 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 18), Patent
`
`Owner filed a list of allegedly improper arguments in Petitioner’s Reply
`
`(Paper 19) and Petitioner filed a response (Paper 24). Petitioner also filed a
`
`Motion to Exclude (Paper 22, “Mot.”) certain evidence submitted by Patent
`
`Owner, to which Patent Owner filed an Opposition (Paper 25, “Opp.”) and
`
`Petitioner filed a Reply (Paper 26). An oral hearing was held on January 18,
`
`2018, and a transcript of the hearing is included in the record (Paper 30,
`
`“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 18–25 are unpatentable.
`
`
`
`
`
`
`
`
`2
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`

`

`IPR2017-00214
`Patent 7,196,611 B2
`
`
`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 challenged claims 1–8 and 10–14 of the ’611 patent in
`Case IPR2017-00073. Case IPR2017-00073 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). We issued a final written decision in Case
`IPR2017-00073 on April 24, 2018.
`
`
`
`3
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`

`

`IPR2017-00214
`Patent 7,196,611 B2
`
`
`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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`
`4
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`IPR2017-00214
`Patent 7,196,611 B2
`
`
`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”).
`
`
`
`5
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`

`

`IPR2017-00214
`Patent 7,196,611 B2
`
`
`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,
`
`
`
`6
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`

`

`IPR2017-00214
`Patent 7,196,611 B2
`
`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 Claims
`
`Claims 18 and 21 of the ’611 patent recite:
`
`18. A method of assisting in the installation and
`maintenance of a barrier movement operator including a
`controller, comprising:
`
`activating a learn mode activity of the controller of the
`barrier movement operator which learning mode requires
`pre-determined activities by a user;
`
`first identifying by the controller the present status of the
`barrier movement operator;
`
`second identifying by the controller, the activities to be
`completed by a user of the barrier movement operator; and
`
`responsive to the first and second identifying steps
`transmitting guidance signals to an annunciating unit for
`guidance of the user.
`
`21. A method of controlling a barrier movement operator
`comprising:
`
`identifying a user interactive mode of operation;
`
`determining the operator statuses and the user actions to
`complete the interactive mode;
`
`signaling the user to perform a first action in furtherance
`of the interactive mode operation;
`
`determining that the first action has been correctly
`performed and signaling the user of a next action in the
`interactive mode operation.
`
`
`
`
`
`
`
`
`
`7
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`

`

`IPR2017-00214
`Patent 7,196,611 B2
`
`
`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. 4,638,433, issued Jan. 20, 1987 (Ex. 1004,
`“Schindler”); and
`
`The Chamberlain Group, Inc., OWNER’S MANUAL,
`MODELS: J + H + HJ, LOGIC CONTROL (VER. 2.0) INDUSTRIAL
`DUTY DOOR OPERATOR (2000) (Ex. 1009, “LiftMaster”).
`
`
`
`D. Pending Grounds of Unpatentability
`
`The instant inter partes review involves the following grounds of
`
`unpatentability:
`
`Reference(s)
`
`Basis
`
`Claims
`
`Schindler
`
`35 U.S.C. § 102(b)3
`
`18–25
`
`Schindler and
`LiftMaster
`
`35 U.S.C. § 103(a)
`
`23 and 24
`
`
`
`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
`
`
`3 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. 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 and 103.
`
`
`
`8
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`

`IPR2017-00214
`Patent 7,196,611 B2
`
`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
`
`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 and
`
`record at the time, we preliminarily interpreted claims 19 and 20 to each
`
`recite a method, rather than an apparatus, and concluded that no other claim
`
`terms required interpretation. Dec. on Inst. 8–9. The parties do not dispute
`
`our preliminary interpretation of claims 19 and 20, and we do not perceive
`
`any reason or evidence that compels any deviation from that interpretation.
`
`We adopt the previous analysis for purposes of this Decision.
`
`
`
`9
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`

`IPR2017-00214
`Patent 7,196,611 B2
`
`
`In its Response, Patent Owner argues that “no construction is
`
`necessary for any claim term” and “the plain language of the claims should
`
`be given its broadest reasonable interpretation.” PO Resp. 2–3. Patent
`
`Owner does not propose any of its own interpretations, but disputes
`
`Petitioner’s proposed interpretations of two phrases. See id. at 2–4.
`
`Specifically, Petitioner argues that “second identifying by the controller, the
`
`activities to be completed by a user of the barrier movement operator” in
`
`claim 18 means “the controller establishing which of the pre-determined
`
`activities a user must complete,”4 and “determining . . . the user actions to
`
`complete the interactive mode” in claim 21 means “establishing which
`
`actions are required for the user to complete the interactive mode.” Pet.
`
`20–21, 23–24 (emphases omitted). Patent Owner contends that Petitioner’s
`
`proposed interpretations5 “conflict[] with the plain language of claims 18
`
`and 21,” as they permit “identification of a single activity to meet the claim,
`
`despite the claim language clearly reciting an identification of activities
`
`(plural).” PO Resp. 4 (emphases omitted).
`
`Petitioner agrees that each claim requires multiple things—identifying
`
`“activities” for claim 18 and determining “actions” for claim 21. See Reply
`
`
`4 Petitioner proposes a slightly different interpretation in its Reply: “second
`identifying by the controller, which of the pre-determined activities
`[required by the learning mode] to be completed by a user of the barrier
`movement operator.” Reply 4. At the oral hearing, however, Petitioner
`stated that the minor differences between the two interpretations do not
`impact its analysis. Tr. 8:7–20.
`
`5 Patent Owner incorrectly states that Petitioner’s proposed interpretation of
`the “second identifying” step in claim 18 applies to both claims. See
`PO Resp. 4. Petitioner proposed two different interpretations. Pet. 20–21,
`23–24.
`
`
`
`10
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`

`

`IPR2017-00214
`Patent 7,196,611 B2
`
`3–5; Tr. 7:15–18. Thus, there is no dispute between the parties as to whether
`
`the claims permit identification of only a single activity. By using the plural
`
`terms “activities” and “actions,” they plainly do not. This is consistent with
`
`how the “learn mode operation” is described in the Specification of the
`
`’611 patent as well. See, e.g., Ex. 1001, col. 4, ll. 13–19 (“controller 208
`
`determines the user activities or steps needed during the learn process”),
`
`51–52 (“Controller responds by identifying the proper beginning status and
`
`steps for the user to perform.”), Fig. 6 (block 253). We also agree with
`
`Petitioner that “the activities” in claim 18 finds antecedent basis in the
`
`“pre-determined activities” recited earlier in the claim (the only other use of
`
`the plural term “activities” in the claim), which Patent Owner does not
`
`dispute in its Response. See Pet. 20–21; Reply 4–5; Ex. 1012, 6–7 (U.S.
`
`International Trade Commission decision in a related investigation involving
`
`the ’611 patent, concluding that “the activities” refers to the earlier-recited
`
`“pre-determined activities”).
`
`Thus, applying the broadest reasonable interpretation of the claims in
`
`light of the Specification, we conclude that claim 18 requires identifying at
`
`least two “pre-determined activities” and claim 21 requires determining at
`
`least two “actions.” No further interpretation is necessary to resolve the
`
`parties’ disputes over the asserted grounds of unpatentability in this
`
`proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.
`
`Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe
`
`terms ‘that are in controversy, and only to the extent necessary to resolve the
`
`controversy,’ we need not construe [a particular claim limitation] where the
`
`construction is not ‘material to the . . . dispute.’” (citations omitted)).
`
`No other terms require interpretation for purposes of this Decision.
`
`
`
`11
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`

`IPR2017-00214
`Patent 7,196,611 B2
`
`
`B. Principles of Law
`
`To prevail in challenging claims 18–25 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
`
`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.”6 Graham v. John Deere Co., 383 U.S. 1,
`
`17–18 (1966).
`
`
`6 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
`
`
`
`12
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`

`IPR2017-00214
`Patent 7,196,611 B2
`
`
`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
`
`(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)).
`
`
`may have relevancy.” Graham, 383 U.S. at 17–18. Patent Owner, however,
`has not presented any such evidence.
`
`
`
`13
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`IPR2017-00214
`Patent 7,196,611 B2
`
`
`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 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,” citing the testimony of its declarant, Stuart Lipoff. Pet.
`
`16 (citing Ex. 1003 ¶ 29). Patent Owner does not propose a different level
`
`of ordinary skill in the art in its Response. Patent Owner’s declarant,
`
`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. 2001 ¶ 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 some amount 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. 2001 ¶ 18.
`
`Mr. Lipoff’s proposed definition is consistent with the technology at
`
`issue in this proceeding. The ’611 patent is directed to “barrier movement
`
`
`
`14
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`IPR2017-00214
`Patent 7,196,611 B2
`
`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,
`
`l. 7–col. 2, l. 28 (Schindler similarly disclosing that it is directed to “a
`
`microprocessor controlled garage door operator,” and describing prior art
`
`systems with a microprocessor unit that controls a motor to move the garage
`
`door); Ex. 1009, 1 (LiftMaster describing a “Logic Control (Ver. 2.0)
`
`Industrial Duty Door Operator”). 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 conclude 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 years7 of work experience in the fields of access control
`
`or automated door control systems, or equivalent work experience or
`
`
`7 Mr. Lipoff proposes “one to two years” of work experience in this
`proceeding, but “two years” in related Case IPR2017-00073. See Ex. 1003
`¶ 29; IPR2017-00073, Paper 32, 13–15. We conclude that two years is the
`appropriate amount, given the disclosure in the ’611 patent and level of
`complexity of the technology.
`
`
`
`15
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`IPR2017-00214
`Patent 7,196,611 B2
`
`training in the field of such technologies, and apply that level of ordinary
`
`skill in the art definition for purposes of this Decision.
`
`
`
`D. Anticipation Ground Based on Schindler
`(Claims 18–25)
`
`1. Schindler
`
`Schindler discloses a “microprocessor controlled garage door operator
`
`which eliminates lower and upper limit switches on the garage door in that
`
`the upper and lower limits are set in a program mode of the microprocessor
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`with up and down control switches by the operator.” Ex. 1004, Abstract.
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`Figure 1 of Schindler is reproduced below.
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`Figure 1 depicts garage door operator 10, which includes head unit 11 with a
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`motor for moving garage door 14, and control unit 19 “mounted on the
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`inside wall of the garage and . . . connected by an electrical cable 22 to the
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`microprocessor mounted in the head unit” of garage door operator 10. Id. at
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`col. 2, ll. 53–66.
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`Figure 1B of Schindler is reproduced below.
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`Figure 1B depicts control unit 19, which includes control push button 25
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`“for operating the door up and down”; control indicator light 26 that
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`“indicates when the garage door operator is being actuated”; vacation/down
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`switch 27 and corresponding light 28; and work light/up switch 29 and
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`corresponding light 31. Id. at col. 3, ll. 7–15. The control unit is connected
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`to a microprocessor, which is used to control various functions of the garage
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`door operator. Id. at col. 1, ll. 45–47, col. 4, ll. 22–39, Fig. 4B
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`(microprocessor 101).
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`A user can put the control unit and microprocessor into a “program
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`mode” or “operate mode” using switch 38 on head unit 11. Id. at col. 3,
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`ll. 24–27, col. 6, ll. 62–65, col. 24, ll. 1–3. The program mode allows the
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`user to set the upper and lower limits of the garage door using switches 27
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`and 29 on control unit 19. Id. at col. 11, l. 30–col. 13, l. 58. Schindler
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`discloses that
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`[t]he control unit and microprocessor may be put into a program
`mode in which condition the door may be moved downwardly
`with a down switch mounted on the control unit to the desired
`down position of the door and this position will be automatically
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`set into the microprocessor memory. Then the door may be
`moved to the full up position with [an] up switch which will set
`the up limit of the garage door in the microprocessor memory.
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`After the up and down limits have been set, the unit is
`placed out of the program mode and into the operate mode and
`the garage door is operated through a complete cycle which will
`automatically set the up and down force limits for the door.
`Subsequently, the door may be operated up and down with the
`up and down set limits and with the set force.
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`Id. at col. 1, ll. 47–62. The microprocessor communicates with the control
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`unit to “flash the proper LED [on the control unit] to indicate which limit is
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`being programmed. The work light LED indicates the up limit and the
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`vacation LED indicates the down limit.” Id. at col. 12, ll. 59–67, col. 24,
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`ll. 1–8.
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`In the context of Figure 1B shown above, Schindler discloses
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`performing the following steps to set the up and down limits:
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`After the garage door opener has been installed, it is placed
`in the program mode by moving the switch 38 to the program
`position. By checking the control unit 19 and determining which
`of the lights 28 or 31 are on, it can be determined whether the
`system is set for setting [the] up or down limit. If the light 28 is
`flashing, the switch 27 can be closed to cause the door to move
`down until the desired down limit of travel has been reached.
`When the door has been moved by the motor 135 to the desired
`down position the switch 27 is opened. Switch 25 is pressed to
`allow the up limit to be adjusted. Then the up limit can be set by
`closing the work light switch 29 which will cause the motor 135
`to drive the door in the up position and it will continue to drive
`the door until the full up position is reached at which time the
`switch 29 should be released and the up limit will have been set.
`In the event the door moves past the desired up limit, it can be
`moved backward by closing switch 27 to the proper position.
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`When the up and down limits have been set, press
`momentarily switch 38 to place the machine in the operate mode.
`. . .
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`Id. at col. 24, ll. 1–23. Finally, Schindler includes a lengthy program of
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`“SOFTWARE FOR MICROPROCESSOR” written in assembly code. Id. at
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`col. 24, l. 60–col. 142, l. 30.
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`2. Independent Claim 18
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`Petitioner explains in detail how Schindler8 discloses every limitation
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`of claim 18, relying on the testimony of Mr. Lipoff and Nikolaus Baer as
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`support. See Pet. 8–16, 25–41; Ex. 1003 ¶¶ 39–54, 84–108; Ex. 1006
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`¶¶ 14–52. Petitioner argues that Schindler discloses a method of assisting in
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`the installation and maintenance of a “barrier movement operator” (i.e.,
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`garage door operator 10) including a “controller” (i.e., microprocessor 101),
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`comprising activating a “learn mode activity” (i.e., activating the program
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`mode for learning the upper and lower limits of the garage door when the
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`user moves switch 38 to the program position), identifying the “present
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`status” of the barrier movement operator (i.e., “the position [e.g., up or
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`down] in which the barrier movement operator is holding the barrier”),
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`identifying “activities to be completed by a user of the barrier movement
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`operator” (i.e., setting the up and down travel limit positions using the
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`switches on control unit 19), and transmitting guidance signals to an
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`“annunciating unit” (i.e., control unit 19) for guidance of the user. Pet.
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`26–41. In addition to the written description of Schindler, Petitioner relies
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`on portions of Schindler’s assembly source code, as well as the testimony of
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`8 Schindler was not of record during prosecution of the ’611 patent. See
`Ex. 1001, (56); Pet. 3–4. Schindler is assigned to Patent Owner.
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`Mr. Baer, who “analyzed the assembly source code relating to [the]
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`routines” for Schindler’s limit-setting process. Id. at 10–16, 28–38 (citing
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`Ex. 1006).
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`Mr. Baer provides the following process flow chart on page 7 of his
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`declaration (Ex. 1006).
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`The chart “illustrate[s] how the assembly source code in Schindler is
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`executed to allow a user to set door travel limit positions” according to
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`Mr. Baer. Ex. 1006 ¶ 14; see Pet. 11. The chart is not part of Schindler
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`itself, but rather is a visual depiction of how the assembly source code
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`functions according to Mr. Baer. See Ex. 1006 ¶ 14. For each step in the
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`chart, Mr. Baer cites and explains the relevant portion of Schindler’s
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`assembly source code. See id. ¶¶ 15–52.
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`With respect to the first step recited in method claim 18, Petitioner
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`contends that the microprocessor in Schindler “activat[es] a learn mode
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`activity” in step 100 above when the program checks to see whether the
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`program mode has been activated (i.e., whether switch 38 was moved to the
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`program position). Pet. 30–31 (citing Ex. 1006 ¶¶ 15–17). This is similar to
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`the embodiment described in the Specification of the ’611 patent, where the
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`user presses a “learn enable switch[],” causing the controller to enter a
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`particular learn mode. See Ex. 1001, col. 2, l. 60–col. 3, l. 6, col. 4,
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`ll. 50–51.
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`Next, Petitioner argues that Schindler “identif[ies] . . . the present
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`status of the barrier movement operator” in step 102 when the program
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`checks the “PUP/-PDWN” flag, which indicates the last direction of door
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`travel and, correspondingly, the current position of the door. Pet. 31–35
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`(citing Ex. 1006 ¶¶ 19–22); see Ex. 1004, col. 22, ll. 7–9 (stating that the
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`“PUP/-PDWN” flag “[r]emembers [the] direction of door travel”). Again,
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`this is similar to the disclosed embodiment in the ’611 patent, where the
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`controller “identifies the proper beginning status (such as barrier position) of
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`the barrier movement operator.” See Ex. 1001, col. 4, ll. 19–23, 51–54.
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`Next, Petitioner argues that Schindler “identif[ies] . . . activities to be
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`completed by a user of the barrier movement operator” in steps 104, 106,
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`and 110 when the program determines whether the u