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. IPR2017-00432
`Patent No. 7,339,336
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`Case IPR2017-00432
`Attorney Docket No: 39907-0014IP1
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`TABLE OF CONTENTS
`I. 
`INTRODUCTION ............................................................................................ 1 
`II.  STATEMENT OF RELIEF REQUESTED .................................................. 1 
`III.  BACKGROUND OF THE ’336 PATENT .................................................... 3 
`IV.  TAKING A PREDETERMINED ACTION WHEN EXCESS FORCE IS
`BEING APPLIED TO THE MOVABLE BARRIER VIA THE MOVABLE
`BARRIER OPERATOR. CLAIM CONSTRUCTION ........................................ 4 
`A.  “a movable barrier operator that has no user-initiable dedicated
`learning mode of operation” (Claim 1 preamble) ............................................. 5 
`V.  PETITIONER FAILS TO DEMONSTRATE AT LEAST ONE CLAIM
`OF THE ’336 PATENT IS UNPATENTABLE .................................................... 9 
`A.  Ground 1 – The Petition fails to establish that any challenged claim is
`anticipated by Mullet ......................................................................................... 10 
`1.  Overview of Mullet .................................................................................. 10 
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`2.  Claims 1, 12, 13, 15 – Petitioner impermissibly combines two different
`embodiments in anticipation ............................................................................ 12 
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`3.  Claim 1 – Mullet does not disclose “a movable barrier operator that has
`no user-initiable dedicated learning mode of operation” (Claim 1) ................ 15 
`B.  Ground 2 - The Petition fails to establish that any challenged claim is
`obvious over Mullet ............................................................................................ 16 
`1.  Claim 1 – Obviousness requires a “reason why” a POSITA would have
`been motivated to combine the references ....................................................... 16 
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`2.  Claim 1 – Petitioner provides no valid “reason why” a POSITA would
`modify Mullet .................................................................................................. 17 
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`3.  Claim 1 –Mullet would be inoperable without a user-initiable learning
`mode ................................................................................................................. 20 
`ii
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`Case IPR2017-00432
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`C.  Ground 3 - The Petition fails to establish that any challenged claim is
`obvious over Mullet in view of Murray ........................................................... 21 
`1.  Overview of Murray ................................................................................. 22 
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`2.  The Petition does not establish that a POSITA would have been
`motivated to combine Mullet and Murray in the manner proposed ................ 22 
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`3.  Petitioner’s proposed combination would render Mullet’s method
`inoperable ......................................................................................................... 25 
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`4.  The Petition mischaracterizes the teachings of Murray ........................... 26 
`VI.  CONCLUSION .............................................................................................. 28 
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`iii
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`Case IPR2017-00432
`Attorney Docket No: 39907-0014IP1
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`INTRODUCTION
`Pursuant to 37 C.F.R. § 42.107(a), the patent owner, The Chamberlain
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`I.
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`Group, Inc. (“Patent Owner”), hereby submits the following Preliminary Response
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`in response to the Petition for Inter Partes Review (“IPR”) of U.S. Patent No.
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`7,339,336 (“the ’336 patent”).
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`The ’336 patent, entitled “Movable Barrier Operator Auto-Force Setting
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`Method and Apparatus,” contains 40 claims, of which claims 1, 7, 12, 15, 27, 34,
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`37, and 39 are independent. The Petition proposes the following three grounds of
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`unpatentability with respect to claims 1, 7, 11-13, and 15 of the ’336 patent
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`(hereinafter the “Challenged Claims”):
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` Ground 1: Claims 1, 12, 13, and 15 as allegedly anticipated by Mullet;
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` Ground 2: Claim 1 as allegedly obvious over Mullet; and
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` Ground 3: Claims 7 and 11 allegedly obvious over Mullet in view of
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`Murray.
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`For at least the reasons described herein, the Petition is deficient, and should be
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`denied in whole.
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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 as to all challenged claims, because Petitioner
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`Case IPR2017-00432
`Attorney Docket No: 39907-0014IP1
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`impermissibly combines two distinct embodiments from the Mullet reference.
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`Such a showing is legally improper in supporting a finding of anticipation by
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`Mullet. See, e.g., Symantec Corp. v. RPost Comunications Ltd., IPR2014-00357,
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`Paper 14 at 20 (citing In re Arkley, 455 F.2d 586, 587-88 (CCPA 1972); Net
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`MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008)). In
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`addition, Ground 1 is deficient with respect to claim 1 of the ’336 patent because
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`Mullet does not teach the preamble limitation reciting “a movable barrier operator
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`that has no user-initiable dedicated learning mode of operation.”
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`(2) Ground 2 is deficient with respect to claim 1 (the only claim challenged
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`in the ground) because Petitioner impermissibly dismisses the preamble limitation
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`reciting “a movable barrier operator that has no user-initiable dedicated learning
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`mode of operation.” Petitioner states that modifying Mullet to meet this limitation
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`would have been “a trivial change,” and thus would have been obvious to a
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`POSITA. Petitioner cites no authority for the proposition that prior art references
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`can be freely modified to teach patent claims merely because the change is
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`allegedly “trivial,” and in fact no such authority exists. Further, Petitioner’s
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`conclusory analysis fails to identify a “reason why” a POSITA would have been
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`motivated to make such a change. Accordingly, Petitioner has not shown that
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`claim 1 is obvious as alleged in Ground 2.
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`2
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`(3) Ground 3 is deficient because Petitioner again fails to provide sufficient
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`Case IPR2017-00432
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`reasons why a POSITA would have combined Mullet with Murray in the manner
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`proposed with respect to the various Challenged Claims. Further, the proposed
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`combination of Mullet and Murray would render both references inoperable by
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`removing a learning mode that is necessary for both systems to function. In
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`addition, the proposed combination of Mullet and Murray fails to teach various
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`elements of the Challenged Claims.
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`Accordingly, for at least reasons, the Petition is deficient and should be
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`denied.
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`III. BACKGROUND OF THE ’336 PATENT
`The ’336 patent describes a movable barrier operator (e.g., garage door
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`opener) that monitors force applied to a movable barrier (e.g., a garage door) to
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`open and close it. See ’337 patent, Abstract. The monitored force is compared to
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`an “excess force threshold” to identify situations in which excess force is exerted
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`on the barrier, such as when the barrier is blocked by an obstacle. Id. at 5:27-40.
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`During operation of the movable barrier, the excess force threshold is updated
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`based on the force applied to the barrier in cases where the applied force does not
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`exceed the excess force threshold. Id. at 7:19-31. The patent further describes that
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`these capabilities “exist[] compatibly with, or without, concurrent availability of an
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`automatic force-setting learning mode of operation and/or user-manipulable force
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`3
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`setting controls.” Id. at 3:17-20.
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`Claim 1 of the ’336 patent recites:
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`1. A method for use with a movable barrier operator
`that has no user-initiable dedicated learning mode of
`operation, comprising:
`monitoring at least one parameter that corresponds
`to force as applied to a movable barrier to selectively cause
`the movable barrier to move between at least a first
`position and a second position;
`automatically changing an excess force threshold
`value in response to the monitored at least one parameter
`to provide an updated excess force threshold value;
`using the updated excess force threshold value and
`the monitored at least one parameter to determine when
`excess force is being applied to the movable barrier via the
`movable barrier operator;
`IV. TAKING A PREDETERMINED ACTION WHEN EXCESS FORCE
`IS BEING APPLIED TO THE MOVABLE BARRIER VIA THE
`MOVABLE BARRIER OPERATOR. CLAIM CONSTRUCTION
`For the purposes of IPR, each claim of the ’336 patent is to be “given its
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`broadest reasonable construction in light of the specification of the patent in which
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`it appears.” 37 CFR § 42.100(b). “While the Board must give the terms their
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`broadest reasonable construction, the construction cannot be divorced from the
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`specification and the record evidence.” In re NTP, Inc., 654 F.3d 1279, 1288 (Fed.
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`4
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`Cir. 2011). “This court’s cases on BRI make clear that the proper BRI
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`construction is not just the broadest construction, but rather the broadest reasonable
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`construction in light of the specification.” In re Man Mach. Interface Techs. LLC,
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`822 F.3d 1282, 1287 (Fed. Cir. 2016).
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`Patent Owner does not dispute Petitioner’s proposed constructions of terms
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`“characteristic force value” and “excess force value,” which match constructions
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`agreed-upon in the corresponding ITC investigation. See Petition, pp. 16-17.
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`Patent Owner contends that, for the purposes of the present proceeding, no
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`construction is necessary for the remaining terms, outside of the single term
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`discussed below.
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`A.
`“a movable barrier operator that has no user-initiable dedicated
`learning mode of operation” (Claim 1 preamble)
`The preamble of claim 1 of the ’336 patent recites “a movable barrier
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`operator that has no user-initiable dedicated learning mode of operation.” This
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`preamble should be construed as a claim limitation at least because it “give[s] life,
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`meaning, and vitality” to claim 1 by providing antecedent basis for the term
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`“movable barrier operator” recited in the body of claim 1, and by distinguishing
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`claim 1 from other independent claims directed to moveable barrier operators that
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`have a “user-initiable dedicated learning mode.”
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`“In general, a preamble limits the claimed invention if it recites essential
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`structure or steps, or if it is necessary to give life, meaning, and vitality to the
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`claim.” Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808
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`(Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d
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`1298, 1305 (Fed. Cir. 1999)) (internal quotes omitted). “A claim preamble has the
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`import that the claim as a whole suggests for it. In other words, when the claim
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`drafter chooses to use both the preamble and the body to define the subject matter
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`of the claimed invention, the invention so defined, and not some other, is the one
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`the patent protects.” Eaton Corp. v. Rockwell Intern. Corp., 323 F. 3d 1332, 1339
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`(Fed. Cir. 2003) (quoting Bell Communications Research, Inc. v. Vitalink
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`Communications Corp., 55 F.3d 615, 620 (Fed. Cir. 1995)). Further, the Federal
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`Circuit has repeatedly held that “[w]hen limitations in the body of the claim rely
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`upon and derive antecedent basis from the preamble, then the preamble may act as
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`a necessary component of the claimed invention.” Eaton, 323 F. 3d at 1339; see,
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`e.g., Pacing Tech. v. Garmin, 778 F. 3d 1021, 1024 (Fed. Cir. 2015); Electro Sci.
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`Indus. v. Dynamic Details, Inc., 307 F.3d 1343, 1348 (Fed. Cir. 2002); Rapoport v.
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`Dement, 254 F.3d 1053, 1059 (Fed. Cir. 2001); Pitney Bowes, 182 F.3d at 1306.
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`For example, in Eaton v. Rockwell, the Federal Circuit found that a preamble
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`that recited a “vehicle master clutch” in a vehicle drive train was limiting because
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`the method recited “retaining said vehicle master clutch (8) engaged during the
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`gear ratio shift in said drive train.” See Eaton, 323 F. 3d at 1339. The court found
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`that the recitations of the vehicle master clutch and drive train in the preamble
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`were limitations because “the plain language of the claim require[d] the operation
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`of” those structures. Id. The court also reasoned that “the claim language [made]
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`clear that not any vehicle clutch or drive train will do” and that when “the body of
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`the claim refers to ‘said vehicle master clutch (8),’ and "said drive train,’ it is
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`referring back to the particular clutch and the particular drive train previously
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`described in the preamble.” Id.
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`In the present case, claim 1 of the ’336 patent is similar to the claim in
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`Eaton. The preamble of claim 1 recites, in relevant part, “a movable barrier
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`operator that has no user-initiable dedicated learning mode of operation.” The
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`body of claim 1 “rel[ies] upon and derive[s] antecedent basis from” this claim
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`language, reciting:
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`using the updated excess force threshold value and
`the monitored at least one parameter to determine when
`excess force is being applied to the movable barrier via the
`movable barrier operator;
`taking a predetermined action when excess force is
`being applied to the movable barrier via the movable
`barrier operator.
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`(Emphasis added); See Eaton, 323 F. 3d at 1339. The term “movable barrier
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`operator” is not introduced in claim 1 outside of the preamble, and thus absent the
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`preamble, the emphasized recitations of the term shown above would lack
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`antecedent basis. Further, the plain language of claim 1 requires the quoted steps
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`above to be performed not when excess force is being applied to the movable
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`barrier via any source, but “when excess force is being applied to the movable
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`barrier via the movable barrier operator” introduced in the preamble. ’336 patent,
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`claim 1 (emphasis added); see Eaton, 323 F. 3d at 1339. Thus, because the
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`elements in the body of the claim rely upon and derive antecedent basis from the
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`recitation of “a movable barrier operator” in the preamble, this term should be
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`construed as a limitation of claim 1.
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`Further, the drafter of the ’336 patent used the preamble of claim 1
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`differentiate its scope from other independent claims. For example, as the Petition
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`notes, claim 12 differs from claim 1 in its recitation of “a movable barrier operator
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`having both a user-initiable dedicated learning mode of operation and a normal
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`mode of operation” and “during the normal mode of operation.” See Petition, p.
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`29. The method steps of claim 1 and claim 12 are otherwise identical. The
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`preambles of the two claims, thus, serve to direct these two claims to methods
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`involving two different types of movable barrier operators: one that has “no user-
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`initiable learning mode” (claim 1); and one that has “both a user-initiable
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`dedicated learning mode of operation and a normal mode of operation” (claim 12).
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`Thus, in the ’336 patent, “the claim drafter [has chosen] to use both the preamble
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`and the body to define the subject matter” of at least claims 1 and 12, and therefore
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`the preamble of claim 1 should be construed as a limitation. See Eaton, 323 F. 3d
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`at 1339 (quoting Bell Communications Research, 55 F.3d at 620).
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`Accordingly, for at least the reasons discussed above, the recitation in the
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`preamble of claim 1 of the ’336 patent of “a movable barrier operator that has no
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`user-initiable dedicated learning mode of operation” should be construed as
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`limiting.
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`V.
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`PETITIONER FAILS TO DEMONSTRATE AT LEAST ONE CLAIM
`OF THE ’336 PATENT IS UNPATENTABLE
`Under 35 U.S.C. § 314(a), in order for an IPR to be instituted, the Petition
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`must establish that there is a reasonable likelihood that at least one of the
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`Challenged Claims is unpatentable. As discussed below, with respect to Ground 1,
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`Petitioner fails to show that Mullet anticipates each and every element of the
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`Challenged Claims. Ground 2 also fails because Petitioner has not shown that a
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`POSITA would have been motivated to modify the Mullet reference in the manner
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`proposed, and because the proposed modification would render Mullet’s described
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`method inoperable. In addition, Ground 3 fails the proposed modification of
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`Mullet in view of Murray would render Mullet’s described method inoperable.
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`Ground 3 further fails to make the requisite showing of a motivation to combine
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`with respect to proposed combination.
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`The Petition thus fails to show a reasonable likelihood of prevailing on at
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`least one claim with respect to any of its grounds of unpatentability. Accordingly,
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`the Board should decline to institute the IPR proceeding requested by the Petition.
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`A. Ground 1 – The Petition fails to establish that any challenged
`claim is anticipated by Mullet 
`1.
`Overview of Mullet
`Mullet describes an “internal entrapment system for a garage door operator”
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`that “detect[s] and measure[es] the motion, speed and position of a garage door as
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`it travels between open and closed positions.” Mullet, Abstract, 1:8-10. Mullet
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`describes that an “object of [its] invention is to provide a setup button connected to
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`the processor control system to allow for an initial generation of door profile
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`data[.]” Id. at 6:56-58. The system uses the “door profile data acquired during
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`[the] set-up or installation routine to determine the appropriate force limits for
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`when the door is opening and for when the door is closing.” Id. at 9:62-65.
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`Mullet describes multiple distinct embodiments of its system, including one
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`described in columns 8-11 of the disclosure (the Column 11 Embodiment), and a
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`separate embodiment described in column 12 (the Column 12 Embodiment). As
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`described in greater detail below, Petitioner advances features from both of these
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`embodiments in addressing claims 1, 12, 13, and 15 in Ground 1 – an anticipation
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`ground. As described below, mixing disclosure of multiple embodiments from a
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`reference in this manner in anticipation is legally improper.
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`Each of these embodiments from Mullet is discussed briefly below.
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`The Column 11 Embodiment of Mullet
`a)
`The Column 11 Embodiment of Mullet describes a system including a
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`“potentiometer generally indicated by the numeral 56 … connected to the drive
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`gear 42 for the purpose of determining positional location of the door 12,” and a
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`“pulse counter 62.” Id. at 9:6-7, 9:19-20. The potentiometer and the pulse counter
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`are connected to a control “circuit 50” including a “processor 66.” Id. at 9:22-24,
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`29-30. When the garage door is in motion, the processor 66 uses the
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`“potentiometer 56” and the “pulse counter 62” in monitoring operation of the door.
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`Id. at 10:2-5, 20-62, 11:2-3.
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`The Column 12 Embodiment of Mullet
`b)
`Mullet further describes an alternative embodiment in which the processor
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`uses only readings from the potentiometer, as opposed to using the readings from
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`the potentiometer and pulse counter as described in the Column 11 Embodiment.
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`See Mullet, 12:7-13:16. Mullet introduces the Column 12 Embodiment explaining
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`“In another embodiment of the present invention. . .” Mullet, 12:7-9. Mullet
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`likewise explained advantages of the Column 12 Embodiment over the Column 11
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`11
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`Embodiment. See Mullet, 13:6-17. Thus, Mullet’s disclosure makes clear that the
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`Column 12 Embodiment is an alternative to the Column 11 Embodiment.
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`2.
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`Claims 1, 12, 13, 15 – Petitioner impermissibly combines two
`different embodiments in anticipation
`Petitioner advances disclosure of two distinct embodiments in arguing
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`anticipation of independent claims 1, 12 and 15 and dependent claim 13, which is
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`legally impermissible in an anticipation ground. Accordingly, Ground 1 should be
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`denied.
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`In order to anticipate a claim, a “reference must clearly and unequivocally
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`disclose the claimed invention or direct those skilled in the art to the invention
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`without any need for picking, choosing, and combining various disclosures not
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`directly related to each other by the teachings of the cited reference.” Net
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`MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (emphasis
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`added) (internal brackets omitted) (“Net MoneyIN”) (quoting In re Arkley, 455
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`F.2d 586, 587-88 (CCPA 1972)); see also Enfish v. Microsoft, 822 F.3d 1327, 1343
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`(Fed. Cir. 2016) (“Enfish I”). Accordingly, for an anticipation ground, “it is not
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`enough that the prior art reference discloses multiple, distinct teachings that the
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`ordinary artisan might somehow combine to achieve the claimed invention.”
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`Symantec Corp. v. RPost Comunications Ltd., IPR2014-00357, Paper 14 at 20
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`(PTAB July 15, 2014) (“Symantec”) (citing In re Arkley, 455 F.2d at 587). For
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`12
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`example, in the Symantec case, the Board, applying Federal Circuit precedent,
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`found that a petitioner had not shown that a reference anticipated a particular claim
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`by applying disclosure related to a particular embodiment and disclosure related to
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`a different embodiment from the reference. See Symantec at 14.
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`As previously discussed above, Mullet describes two alternative
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`embodiments: the Column 11 Embodiment and the Column 12 Embodiment. See
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`Section V.A.1, supra. In Ground 1, Petitioner impermissibly advances disclosure
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`related to both the Column 11 Embodiment and the Column 12 Embodiment to
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`reach the elements of the claims. See Net MoneyIN, 545 F.3d at 1371; see, e.g.,
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`Symantec at 14.
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`The Petition begins Ground 1 by discussing independent claim 12. In its
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`analysis, the Petition relies on disclosure from the Column 11 Embodiment of
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`Mullet for most limitations. The initial discussion of “Limitation [D]” in claim 12
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`continues that reliance, quoting from Mullet column 11 of Mullet. See, Petition, p.
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`25.
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`In its analysis of this same “Limitation D” of claim 12, however, the Petition
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`then shifts to advancing disclosure from the Column 12 Embodiment of Mullet.
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`See Petition, p. 25 (citing Mullet, 12:53-13:5). The Petition falls short of
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`explaining how the Column 11 Embodiment meets “Limitation D,” or how the
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`Column 12 Embodiment reaches the remaining limitations of the claim. Instead,
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`13
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`Petitioner advances disclosure from both the Column 11 Embodiment and the
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`Column 12 Embodiment to argue that “Limitation D” is met. See Petition, p. 25.
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`“Picking and choosing” disclosure from separate embodiments, as Petitioner has
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`done in making its case here, is legally impermissible in an anticipation ground.
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`See Net MoneyIN, 545 F.3d at 1371; In re Arkley, 455 F.2d at 587-88; Enfish I, 822
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`F.3d at 1343; Symantec at 14.
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`Even if one were to ignore Petitioner’s citations to the Column 12
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`Embodiment, the Petition fails to explain how the Column 11 Embodiment maps to
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`elements of “Limitation D.” The Petition is legally deficient.
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`Accordingly, Ground 1 of the Petition fails with respect to independent
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`claim 12, as well as its dependent claim 13.
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`Further still, Petitioner repeatedly advances features from both the Column
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`11 and Column 12 Embodiments of Mullet in arguing the specific limitations of
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`claim 13. See Petition, p. 30-31 (quoting and citing both 11:17-22 and 12:53-57 of
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`Mullet). Again, Petitioner’s “picking and choosing” disclosure from separate
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`embodiments in this manner is legally impermissible in an anticipation ground.
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`See Net MoneyIN, 545 F.3d at 1371; In re Arkley, 455 F.2d at 587-88; Enfish I, 822
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`F.3d at 1343; Symantec at 14. Accordingly, Ground 1 of the Petition fails with
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`respect to dependent claim 13.
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`In addition, Petitioner’s analysis of independent claim 15 incorporates its
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`flawed analysis of claim 13 described above. See Petition, p. 34 (“These claim
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`elements taken together are identical to the limitation in Claim 13. Thus, as
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`discussed in Section VIII.A.3, and incorporated here, Mullet discloses this
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`limitation.”). Thus, Ground 1 fails with respect to independent claim 15 for the
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`same reasons as dependent claim 13.
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`Further, The Petition’s analysis of independent claim 1 with respect to
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`Ground 1 merely states that claim 1 includes “the same identical method steps” as
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`claim 12, and references its earlier analysis of claim 12. See Petition, p. 29. Thus,
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`Ground 1 fails with respect to independent claim 1 for the same reasons discussed
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`above relative to claim 12.
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`Thus, Ground 1 fails with respect to all claims because the Petition
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`impermissibly relies on disclosure of distinct embodiments from the Mullet
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`reference as anticipating each claim.
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`3.
`Claim 1 – Mullet does not disclose “a movable barrier operator
`that has no user-initiable dedicated learning mode of operation”
`(Claim 1)
`As previously discussed, the recitation of “a movable barrier operator that
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`has no user-initiable dedicated learning mode of operation” in the preamble of
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`claim 1 is properly construed as a limitation because it provides antecedent basis
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`for terms used in the body of the claim, and because the drafter clearly intended the
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`preamble to be a limitation that imparted different claim scope to the various claim
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`sets of the ’336 patent. See Section IV.A, supra. With respect to Ground 1,
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`Petitioner does not even allege that Mullet teaches this limitation, and instead
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`argues only that “the preamble of Claim 1 is not a limitation.” Petition, p. 29.
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`Accordingly, Petitioner fails to identify any disclosure from Mullet that discloses
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`“a movable barrier operator that has no user-initiable dedicated learning mode of
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`operation” as recited in claim 1. Petitioner therefore has not shown that Mullet
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`discloses each and every element of claim 1. Thus, Ground 1 fails with respect to
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`independent claim 1 and its dependent claims.
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`B. Ground 2 - The Petition fails to establish that any challenged
`claim is obvious over Mullet
`1.
`Claim 1 – Obviousness requires a “reason why” a POSITA
`would have been motivated to combine the references
`For obviousness grounds, the Board “consider[s] whether a PHOSITA
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`would have been motivated to combine the prior art to achieve the claimed
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`invention.” In re Warsaw Orthopedic, Inc., 832 F.3d 1327, 1333 (Fed. Cir. 2016)
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`(internal quotation marks, brackets, and citation omitted); see KSR Int’l Co. v.
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`Teleflex Inc., 550 U.S. 398, 418 (2007). A proper obviousness combination
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`requires an explanation of “the reason why a PHOSITA would have been
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`motivated to” perform the combination. In re Nuvasive, 842 F.3d 1376, 1382 (Fed.
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`Cir. 2016). The Federal Circuit recently emphasized that such reasons to combine
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`may not consist of mere “conclusory statements,” and instead “must be supported
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`Case IPR2017-00432
`Attorney Docket No: 39907-0014IP1
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`by a reasoned explanation.” Nuvasive, 842 F.3d at 1383; see also Microsoft v.
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`Enfish, 662 Fed. Appx. 981, 989-90 (Fed. Cir. 2016) (non-precedential); Cutsforth
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`v. Motivepower, 636 Fed. Appx. 575, 577-8 (Fed. Cir. 2016) (non-precedential).
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`Simply stating a general reason to combine the references, such as the asserted
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`general reason in Nuvasive - “to obtain more information,” is insufficient because
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`it “addresses neither the benefits that could have been obtained by combining the
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`prior art references nor the PHOSITA’s motivation to combine at the time of the
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`invention.” Nuvasive, 842 F.3d at 1384. The court has also emphasized the
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`criticality of a reason to combine to a proposed obviousness combination,
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`observing that even where the references to be combined “arguably disclose every
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`limitation of the claim,” the claim is not rendered obvious without “a sufficient
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`motivation to combine” the references. Enfish, 662 Fed. Appx. at 990.
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`2.
`Claim 1 – Petitioner provides no valid “reason why” a POSITA
`would modify Mullet
`As previously discussed, the recitation of “a movable barrier operator that
`
`has no user-initiable dedicated learning mode of operation” in the preamble of
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`claim 1 is properly construed as a limitation because it provides antecedent basis
`
`for terms used in the body of the claim, and because the drafter clearly intended the
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`preamble to be a limitation that imparted different claim scope to the various claim
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`sets of the ’336 patent. See Section IV.A, supra. As also previously discussed,
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`Case IPR2017-00432
`Attorney Docket No: 39907-0014IP1
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`Mullet fails to disclose this limitation. See Section V.A.3, supra.
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`Petitioner acknowledges that “Mullet discloses a movable barrier operator
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`with a user-initiable learning mode,” but argues that “claim 1 would have been
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`obvious to a POSITA because implementing Mullet’s method without a user-
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`initiable dedicated learning mode is a trivial change.” Petition, p. 35 (emphasis
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`added). Petitioner fails to establish a factual basis for proclaiming this feature
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`trivial, other than its need to disregard the same for the prior art to meet the claim.
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`The only supporting evidence cited by Petitioner for this position is a single,
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`conclusory paragraph of testimony from its expert Mr. Lipoff. See id. (citing Ex.
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`1003, ¶ 88). This portion of Mr. Lipoff’s testimony does not cite any corroborating
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`evidence, and merely parrots the argument in the Petition almost word-for-word
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`without further explanation. Compare Petition, paragraph spanning pages 35 and
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`36, to Ex. 1003, ¶ 88. Further, Mr. Lipoff’s testimony does not explain what
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`advantages one would seek to achieve by omitting the learning mode, nor does it
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`address how Mullet’s system would operate without the required initial variables
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`set by the user-initiable dedicated learning mode. The testimony amounts to
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`nothing more than a restatement of the naked conclusions in the Petition, and thus
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`fails to establish how “implementing Mullet’s method without a user-initiable
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`dedicated learning mode” would be “a trivial change.” Thus, Petitioner’s
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`characterization of this limitation of claim 1 and its corresponding proposed
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`Case IPR2017-00432
`Attorney Docket No: 39907-0014IP1
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`change to Mullet as “trivial” is merely a conclusory statement unsupported by any
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`evidence.
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`Moreover, Petitioner cites no case law for the proposition that prior art
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`references can be freely modified if the proposed modifications are “trivial.” In
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`fact, obviousness jurisprudence indicates quite the contrary.
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`As discussed above, a proper obviousness inquiry requires an explanation of
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`“the reason why a PHOSITA would have been motivated to” perform a proposed
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`modification to the art.” See Nuvasive, 842 F.3d at 1383; Enfish, 662 Fed. Appx.
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`at 989-90. The Board has previously found that a showing that “it would have
`
`been trivial to” modify a reference was insufficient to justify the proposed
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`modification. TRW Automotive v. Magna Electronics, Case IPR2014-01355, Paper
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`21 at 15-16 (PTAB November 19, 2015). The Board, citing to KSR v. Teleflex,
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`stated that, when making an obviousness determination, “[t]he issue is not whether
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`a skilled artisan could” modify a reference “or whether it would have been trivial
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`to do so,” but instead “whether a skilled artisan would have been motivated to do
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`so based on teachings of the references; the effects of demands known to the
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`design community or present in the marketplace; and the background knowledge
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`possessed by a person having ordinary skill in.” Id. (citing KSR Int’l Co. v.
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`Teleflex Inc., 550 U.S. 398, 418 (2007)). Accordingly, aside from wh