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 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 .............................................................................................. 2 
`IV.  CLAIM CONSTRUCTION ............................................................................ 2 
`A. 
`“identifying by the controller, the activities to be completed by a user of
`the barrier movement operator” (claim 18) / “determining … the user actions to
`complete the interactive mode” (Claim 21) .......................................................... 3 
`V.  PETITIONER HAS FAILED TO DEMONSTRATE THAT ANY OF
`THE CHALLENGED CLAIMS OF THE ’611 PATENT ARE
`UNPATENTABLE ................................................................................................... 5 
`A. 
`Ground 1 is deficient with respect to claim 18 because the Petition has
`not shown that Schindler anticipates “identifying by the controller, the activities
`to be completed by a user of the barrier movement operator” ............................. 5 
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`Ground 1 is deficient with respect to dependent claim 19 because the
`B. 
`Petition has not shown that Schindler anticipates “annunciating the next activity
`to the user” ............................................................................................................ 6 
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`1.  Petitioner’s expert testified that Baer Figure 1 is a “translation” of the
`source code from Schindler ............................................................................. 7 
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`2.  Petitioner’s expert fails to identify any code from Schindler that was
`translated into the “loop” in Baer Figure 1 ...................................................... 9 
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`3.  The Petition explicitly relies on these features from Baer Figure 1 that
`have not been shown to be present in Schindler ............................................ 14 
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`4.  The Petition does not show that Schindler anticipates “annunciating the
`next activity to the user” even if the “loop” in Baer Figure 1 is supported by
`Schindler ........................................................................................................ 17 
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`Case IPR2017-00214
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`C. 
`Ground 1 is deficient with respect to claim 21 because the Petition has
`not shown that Schindler anticipates “determining ... the user actions to
`complete the interactive mode” .......................................................................... 18 
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`Ground 1 is deficient with respect to claim 21 for at least the same
`D. 
`reasons as claims 19 ............................................................................................ 19 
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`Grounds 1 and 2 are deficient with respect to dependent claims 19, 20,
`E. 
`and 22-25 ............................................................................................................ 19 
`VI.  CONCLUSION .............................................................................................. 20 
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`iii
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`Case IPR2017-00214
`Attorney Docket No: 39907-0011IP2
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`LIST OF EXHIBITS
`Description
`Exhibit No.
`CG-2001 Declaration of Declaration of Dr. Nathaniel J. Davis, IV (“Dec.”)
`CG-2002 Deposition Transcript of Stuart Lipoff (“Lipoff Transcript”)
`CG-2003 Exhibits to Deposition Transcript of Stuart Lipoff
`CG-2004 Deposition Transcript of Nikolaus Baer (“Baer Transcript”)
`CG-2005 Curriculum Vitae of Dr. Nathaniel J. Davis, IV
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`iv
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`Case IPR2017-00214
`Attorney Docket No: 39907-0011IP2
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`INTRODUCTION
`Pursuant to 37 C.F.R. § 42.120(a), The Chamberlain Group, Inc. (“Patent
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`I.
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`Owner”), hereby submits the following Response to the Petition for Inter Partes
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`Review (“IPR”) of U.S. Patent No. 7,196,611 (“the ’611 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. On May 16, 2017, the Board instituted the present IPR as to claims
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`18-25 of the ’611 patent (the “Challenged Claims”). See Decision, p. 26. This
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`proceeding is limited to the following two grounds presented in the Petition:
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` Ground 1: Anticipation of claims 18-25 over Schindler; and
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` Ground 2: Obviousness of claims 23-34 over Schindler and LiftMaster.
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`As described herein, Petitioner fails to show that any claim of the ’611
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`patent is rendered unpatentable by the Schindler alone or in combination with
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`LiftMaster. In light of this failure by Petitioner, Patent Owner respectfully
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`requests that the Board find Challenged Claims patentable.
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`II.
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`STATEMENT OF RELIEF REQUESTED
`Patent Owner respectfully requests the Board to deny the Petition for the
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`following reasons:
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`1
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`(1) Ground 1 is deficient because the Petition fails to show that Schindler
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`discloses “identifying by the controller, the activities to be completed by a user of
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`the barrier movement operator.”
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`(2) Ground 1 is also deficient Petitioner relies on opinions rendered by
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`Petitioner’s expert (Nikolaus Baer) in applying the Schindler reference to the
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`Challenged Claims, but Petitioner has failed to demonstrate any basis for Baer’s
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`opinions in the assembly source code or the disclosure of Schindler.
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`(3) Ground 2 relies on and incorporates the flawed analysis of Ground 1, and
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`is thus deficient for at least the same reasons as Ground 1.
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` Accordingly, for at least reasons, Petitioner has failed to show that the
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`Challenged Claims are unpatentable.
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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. Among other features, the barrier movement
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`operator is configured to identify multiple activities to be performed by the user,
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`and to “transmit guidance signals” to guide the user in performing the multiple
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`activities.
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`IV. CLAIM CONSTRUCTION
`The Petition proposes constructions for several claim terms of the ’611
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`patent. These proposed constructions introduce concepts that have no basis in the
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`2
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`claim’s plain language, and are not consistent with the broadest reasonable
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`interpretation standard (BRI). Rather, they reflect self-serving interpretations of
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`the claim language tailored to Petitioner’s cited prior art references, and, in some
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`cases, altogether rewrite the plain language of the claim to suit Petitioner’s various
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`theories of unpatentability.
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`The claims are appropriately interpreted according to their plain language
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`when applying BRI, not as rewritten in the manner suggested by Petitioner. Patent
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`Owner submits that, under BRI, no construction is necessary for any claim term,
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`and that the plain language of the claims should be given its broadest reasonable
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`interpretation. The Institution Decision endorsed this position by finding that no
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`claim terms required construction. See Decision, pp. 8-9.1
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`The sections below address arguments presented by Petitioner with respect
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`to a particular claim term at issue in the present Response.
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`A.
`“identifying by the controller, the activities to be completed by a
`user of the barrier movement operator” (claim 18) / “determining … the
`user actions to complete the interactive mode” (Claim 21)
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`1 The Institution Decision did address the language of claims 19 and 20 in
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`finding that these claims were not indefinite, but did not adopt any explicit
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`construction for any language in either claim. See Decision, pp. 8-9.
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`3
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`The Petition proposes the following construction of both terms: “the
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`controller establishing which of the pre-determined activities a user must
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`complete.” See Petition, p. 21. In the Institution Decision, the Board correctly
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`determined that neither term required construction. See Decision, p. 8.
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`Accordingly, these terms are to be interpreted under BRI according to their plain
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`and unambiguous language for the purposes of the present proceeding.
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`Petitioner’s proposed construction conflicts with the plain language of
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`claims 18 and 21. As rendered through its attempted application of Schindler,
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`Petitioner leverages the proposed construction in its attempt to cover Schindler’s
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`identification of a single activity to meet the claim, despite the claim language
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`clearly reciting an identification of activities (plural). See Petition, p. 21; see also
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`Section V.A, infra. Impermissibly changing the claim scope in this manner is the
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`only way Petitioner even attempts to apply the teachings of Schindler to these
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`features of claims 18 and 21. As described in greater detail below in Sections V.A
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`and V.B.4, Schindler, at most, teaches identifying a single activity a user must
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`complete, rather than multiple “activities,” as expressly recited in the claims.
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`When the claims are properly interpreted under BRI according to their plain
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`language, Petitioner’s arguments unravel.
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`V.
`PETITIONER HAS FAILED TO DEMONSTRATE THAT ANY OF
`THE CHALLENGED CLAIMS OF THE ’611 PATENT ARE
`UNPATENTABLE
`Under 35 U.S.C. § 316(e), a petitioner in an IPR proceeding has “the burden
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`of proving a proposition of unpatentability by a preponderance of the evidence.”
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`As discussed below, Petitioner fails to meet this burden with respect to any of the
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`instituted Grounds. Accordingly, the Board’s final written decision in this matter
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`should confirm the patentability of the Challenged Claims over Petitioner’s
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`proposed Grounds.
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`A. Ground 1 is deficient with respect to claim 18 because the Petition
`has not shown that Schindler anticipates “identifying by the controller,
`the activities to be completed by a user of the barrier movement
`operator”
`As described above in Section IV.A, Petitioner attempts to expand this claim
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`limitation to sweep identification of a single activity into the claim. See Section
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`IV.A, supra. The Institution Decision apparently declined to apply Petitioner’s
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`construction of this term, and thus the plain language controls. See Decision, p. 8.
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`Claim 18 recites “identifying by the controller, the activities to be
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`completed by a user of the barrier movement operator.” ’611 patent, claim 18
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`(emphasis added). Claim 18 thus makes clear that multiple activities must be
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`identified. See id. In contrast, the Petition relies on Schindler’s identification of a
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`single activity to anticipate this claim feature. In particular, the Petition states that
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`“Schindler discloses a microprocessor ... that establishes, based on the position of
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`the door, which of the pre-determined activities of setting the ‘up’ limit or setting
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`the ‘down’ limit that a user must complete.” Petition, p. 38 (emphasis added). In
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`the relied-upon text, Schindler clearly establishes that its controller identifies a
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`single activity; it either sets the “up” limit, or it sets the “down” limit. See id.2
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`Accordingly, the Petition has not shown that Schindler teaches “identifying
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`by the controller, the activities to be completed by a user of the barrier movement
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`operator,” as recited in claim 18. Thus, because Schindler has not been shown to
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`disclose every element of the claim, Ground 1 fails with respect to independent
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`claim 18 and its dependent claims.
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`B. Ground 1 is deficient with respect to dependent claim 19 because
`the Petition has not shown that Schindler anticipates “annunciating the
`next activity to the user”
`The Petition relies on Figure 1 from the Baer Declaration (hereinafter “Baer
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`Figure 1”) to address this element. See Baer Dec., p. 7. However, as described
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`below, Petitioner’s expert has failed to identify a basis in Schindler’s specification
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`2 The cited portions of the Lipoff Declaration are almost textually identical
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`to the Petition on these points, and offer no additional explanation. Compare
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`Lipoff Dec., ¶¶ 99-104 to Petition, pp. 35-38.
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`or its source code for portions of Baer Figure 1. Indeed, Petitioner conjures and
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`relies on these portions of Baer Figure 1 to address this element, revealing its
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`failure to establish that Schindler alone discloses “annunciating the next activity to
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`the user,” as recited in claim 19, and as required to establish anticipation by
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`Schindler, as contended.
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`1.
`Petitioner’s expert testified that Baer Figure 1 is a “translation”
`of the source code from Schindler
`Baer Figure 1 is a flow chart created by Petitioner’s expert, Nikolaus Baer.
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`The figure, captioned in Baer’s Declaration as “Process Flow for Schindler’s
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`Assembly Source Code,” is reproduced below:
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`Baer Dec., p. 7.
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`This figure was created in 2016 by Baer; it does not appear in Schindler.
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`Baer Transcript, 18:21-22, 28:12-14. Yet, during his deposition, Baer testified
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`that Baer Figure 1 “is a translation of the code that's in the Schindler patent.” Id. at
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`18:12-13. Baer described this “translation” as follows:
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`Id. at 8:2-7. Baer thus asserts that he relied on the assembly code instructions in
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`Schindler to create Baer Figure 1. See id. Indeed, in his declaration, Baer
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`attempted to justify various features of the flow chart by referencing various
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`portions of the assembly code from Schindler. See, e.g., Baer Dec., Figure 2 and ¶
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`15; Baer Transcript, 31:2-5 (“step 100 of [Baer Figure 1] is a translation of the
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`assembly source code from the Schindler reference that includes the source code
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`shown in Figure 2 [of the declaration]”); see also, e.g., Baer Dec., Figure 3 and ¶
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`20, Figures 3A-3B and ¶ 21, Figure 4 and ¶¶ 23-24, Figure 5 and ¶¶ 26-27, Figure
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`6 and ¶¶ 28-29, Figure 7 and ¶¶ 30-31, Figure 8 and ¶¶ 32-33 (examples from the
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`Baer Declaration of figures showing source code from Schindler and paragraphs
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`attempting to justify features of the flow chart of Baer Figure 1 by analyzing the
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`source code).
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`2.
`Petitioner’s expert fails to identify any code from Schindler that
`was translated into the “loop” in Baer Figure 1
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`However, even though Baer asserts that Baer Figure 1 is a “translation” of
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`the assembly source code from Schindler, and identifies assembly source code that
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`he supposedly “translated” into features of Baer Figure 1 throughout his
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`declaration, the Baer Declaration conspicuously fails to identify any assembly code
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`that was translated into the “loop” in the process flow of Baer Figure 1. The
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`following annotated version of Baer Figure 1 shows this “loop:”
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`Baer Figure 1 (annotated)
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`Paragraph 52 of the Baer Declaration describes this loop, stating that the
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`“process for setting the limits loops back to Step 100, as represented by the arrow
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`from both Steps 120 and 122 to Step 100.” Baer Dec., ¶ 52 (emphasis added).
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`However, paragraph 52 fails to identify any assembly code from Schindler
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`allegedly corresponding to this loop, nor does it otherwise cite to Schindler for
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`disclosure of such a loop. See id. In fact, paragraph 52, which is the only portion
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`of the Baer Declaration that discusses the loop, include no citations to any
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`evidence. See id.
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`Further, the Baer Declaration fails to identify a mechanism that would allow
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`such a loop to occur during execution of the identified source code. During his
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`deposition, Baer testified that “step 100 of [Baer Figure 1] is a translation of the
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`assembly source code from the Schindler reference that includes the source code
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`shown in Figure 2 [of the declaration].” Baer Transcript, 31:2-5; see Baer Dec.,
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`Figure 2, ¶ 15. Baer indicated that the first source code line in Figure 2 is the first
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`source code line executed in the process shown in Baer Figure 1. See Baer
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`Transcript, 39:23-24:
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`Baer Dec., Figure 2, p. 8 (annotations in original)
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`According to Patent Owner’s expert, Dr. Nathaniel Davis, “the Baer
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`Declaration does not explain how execution of the program would jump to the first
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`source code line in Figure 2 to implement the loop shown in Baer Figure 1.” Dec.,
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`¶ 32. Dr. Davis states continues:
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`A “loop” in a software program involves executing a set
`of source code instructions, redirecting execution of the
`software program (i.e., “jumping”) back to the first line in
`the set of source code instructions, and executing the set
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`of source code instructions again. The Baer Declaration
`does not explain how any of the identified source code
`from Schindler would cause execution of the program to
`jump to the first source code line in Figure 2 (“MOV R1,
`#SW”), which would be necessary in order to implement
`the “loop” shown in Baer Figure 1.
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`Dec., ¶ 32.
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`Accordingly, at least this portion of Baer Figure 1 has not been shown to
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`have any basis in either the assembly code or disclosure of Schindler. Indeed, any
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`analysis in the Petition relying on this portion of Baer Figure 1 relies exclusively
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`on features that have not been shown to be present in Schindler to address the
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`claims of the ’611 patent.
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`3.
`The Petition explicitly relies on these features from Baer Figure
`1 that have not been shown to be present in Schindler
`As described above (see Section V.B.2, supra), neither Petitioner nor its
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`expert have identified any source code or disclosure from Schindler that discloses
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`the “loop” shown in Baer Figure 1. The Petition explicitly relies on this
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`undisclosed “loop” to address the feature “annunciating the next activity to the user
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`after the performance of a prior activity by the user, when the prior activity meets
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`predetermined parameters” recited in claim 19. See Petition, p. 53. The Petition
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`states that:
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`The process flow diagram prepared by Mr. Baer, and
`annotated by Mr. Lipoff,
`illustrates checking
`that
`performance of a prior activity (process flow for the prior
`activity is indicated in blue) meets pre-determined
`parameters (these checks are highlighted in yellow) before
`providing an indication of a next activity (process flow for
`the next activity is indicated in red) to a user.
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`Id. As shown in the following annotated version of Baer Figure 1 included
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`in the Petition, the analysis of claim 19 specifically relies on this “loop” in the
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`process flow to teach this claim feature:
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`Loop for which
`Baer fails to
`identify
`corresponding
`disclosure in
`Schindler
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`Petition, p. 53
`(green annotations added, remaining annotations in original)
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`As shown, the Petition relies on the process looping back to step 100 to
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`teach “annunciating the next activity to the user.” See id. However, as described
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`above, Petitioner and its experts have identified no evidence from Schindler’s
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`disclosure or from the assembly code to support the existence of this loop in the
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`process. See Baer Dec., ¶ 52.
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`As demonstrated, Petitioner and its experts have merely created the
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`conveniently crafted process flow in Baer Figure 1 to attempt to bridge the gap
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`between Schindler’s disclosure and the language of claim 19. But, because
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`Petitioner has not shown that either Schindler or its assembly code describe this
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`“loop” that is crucial to Petitioner’s analysis, the Petition has not shown that
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`Schindler anticipates “annunciating the next activity to the user,” as recited in
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`claim 19.
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`4.
`The Petition does not show that Schindler anticipates
`“annunciating the next activity to the user” even if the “loop” in Baer
`Figure 1 is supported by Schindler
`As discussed above (see Section V.A, supra), the Petition relies upon
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`Schindler’s controller identifying a single activity (either setting the “up” limit, or
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`setting the “down” limit) to address “identifying by the controller, the activities to
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`be completed by a user of the barrier movement operator,” as recited in claim 18.
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`Claim 19 depends from 18, and therefore includes this feature.
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`Petitioner alleges that each time through the process shown in Baer Figure 1,
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`Schindler’s controller identifies a single activity (either setting the “up” limit, or
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`setting the “down” limit) at step 100. See Petition, p. 38. An additional activity is
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`not identified until “at Step 100, the microprocessor determines whether the user
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`has activated a program mode by pressing a program/operate mode button 38.”
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`See Petition, p. 12 (citing Baer, ¶¶ 15-17); Dec., ¶ 32. Thus, during each iteration
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`of the loop, only a single activity, and no “next activity,” is identified. Dec., ¶ 32.
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`See id. Indeed, if the user does not enter the “program mode by pressing a
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`program/operate mode button 38” after performing the first activity, no “next
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`activity” will ever be identified. See Petition, p. 12 (citing Baer, ¶¶ 15-17); Dec., ¶
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`32.
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`Thus, because only a single activity is identified for any iteration of the
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`process of Baer Figure 1, the Petition has not shown that Schindler anticipates
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`“annunciating the next activity to the user,” as recited in claim 19.
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`C. Ground 1 is deficient with respect to claim 21 because the Petition
`has not shown that Schindler anticipates “determining ... the user
`actions to complete the interactive mode”
`As described above in Section IV.A, Petitioner attempts to expand this claim
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`limitation to sweep identification of a single action into the claim. See Section
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`IV.A, supra. The Institution Decision apparently declined to apply Petitioner’s
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`construction of this term, and thus the plain language controls. See Decision, p. 8.
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`Claim 21 recites “determining ... the user actions to complete the interactive
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`mode.” ’611 patent, claim 21 (emphasis added). Claim 21 thus makes clear that
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`multiple actions must be identified. See id. In contrast, the Petition relies on
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`Schindler’s identification of a single action to anticipate this claim feature. The
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`18
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`Petition explicitly incorporates its flawed analysis of the “identifying by the
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`controller, the activities to be completed by a user of the barrier movement
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`operator” feature claim 18 with respect to this feature of claim 21. See Petition, p.
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`60. As previously discussed (see Section V.A, supra), this analysis relies upon
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`disclosure from Schindler that clearly establishes that its controller identifies a
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`single action; it either sets the “up” limit, or it sets the “down” limit. See Petition,
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`p. 38.
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`Accordingly, the Petition has not shown that Schindler teaches “determining
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`... the user actions to complete the interactive mode,” as recited in claim 21. Thus,
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`because Schindler has not been shown to disclose every element of the claim,
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`Ground 1 fails with respect to independent claim 21 and its dependent claims.
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`D. Ground 1 is deficient with respect to claim 21 for at least the same
`reasons as claims 19
`Claim 21 also recites “determining that the first action has been correctly
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`performed and signaling the user of a next action in the interactive mode [of]
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`operation.” The Petition incorporates its flawed analysis of “annunciating the next
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`activity to the user” from claim 19 to address this feature of claim 21. See Petition,
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`p. 62. Accordingly, for at least the same reasons discussed above with respect to
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`claim 19, Ground 1 is deficient with respect to claim 21.
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`E. Grounds 1 and 2 are deficient with respect to dependent claims
`19, 20, and 22-25
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`19
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`Claims 19 and 20 depend from independent claim 18, and claims 22-25
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`depend from independent claim 21. By definition, dependent claims 19-20
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`necessarily include all features of claim 18, and claims 22-25 necessarily include
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`all features of claim 21. Because the Petition fails to show that Schindler discloses
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`every feature of either claim 18 or claim 21 (see Sections V.A-V.D, supra), it also
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`fails to show that Schindler discloses every feature of dependent claims 19, 20, and
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`22-25.
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`VI. CONCLUSION
`Accordingly, based on the deficiencies identified above, Petitioner has not
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`shown that it has a reasonable likelihood of prevailing on any of its proposed
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`grounds. Thus, the Board should decline to institute an inter partes review
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`proceeding based on the Petition.
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`Dated: August 7, 2017
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` (Trial No. IPR2017-00214)
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`Respectfully submitted,
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`/W. Karl Renner/
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`W. Karl Renner, Reg. No. 41,265
`Lead Counsel
`Joshua Griswold, Reg. No. 46,310
`Back-up Counsel
`Dan Smith, Reg. No. 71,278
`Back-up Counsel
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`Fish & Richardson P.C.
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`Attorneys for Patent Owner
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`Case IPR2017-00214
`Attorney Docket No: 39907-0011IP2
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`CERTIFICATION UNDER 37 CFR § 42.24(d)
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`Under the provisions of 37 CFR § 42.24(d), the undersigned hereby certifies
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`that the word count for the foregoing Patent Owner Preliminary Response to
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`Petition totals 3,223, which is less than the 14,000 allowed under 37 CFR
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`§ 42.24(b)(2).
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`Date: August 7, 2017
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`Respectfully submitted,
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`/W. Karl Renner/
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`W. Karl Renner, Reg. No. 41,265
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 202-783-5070
`Email: wkr@fr.com
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`21
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`Case IPR2017-00214
`Attorney Docket No: 39907-0011IP2
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6(e), the undersigned certifies that on August 7,
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`2017, a complete and entire copy of this Patent Owner Response to Petition and its
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`exhibits were provided via email to the Petitioner by serving the email
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`correspondence address of record as follows:
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`Dion Bregman
`Jason C. White
`Michael J. Lyons
`Ahren C. Hsu-Hoffman
`Jason E. Gettleman
`Morgan, Lewis & Bokius LLP
`1400 Page Mill Road
`Palo Alto, CA 94304
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`Email: TechtronicIPRs@morganlewis.com
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`/Edward G. Faeth/
`Edward G. Faeth
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(202) 626-6420
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`22
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