Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
` Paper 8
` Entered: May 23, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ONE WORLD TECHNOLOGIES, INC.,
`d/b/a TECHTRONIC INDUSTRIES POWER EQUIPMENT,
`Petitioner,
`
`v.
`
`THE CHAMBERLAIN GROUP, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00432
`Patent 7,339,336 B2
`____________
`
`Before JONI Y. CHANG, JUSTIN T. ARBES, and JOHN F. HORVATH,
`Administrative Patent Judges.
`
`HORVATH, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
` Paper 8
` Entered: May 23, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ONE WORLD TECHNOLOGIES, INC.,
`d/b/a TECHTRONIC INDUSTRIES POWER EQUIPMENT,
`Petitioner,
`
`v.
`
`THE CHAMBERLAIN GROUP, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00432
`Patent 7,339,336 B2
`____________
`
`Before JONI Y. CHANG, JUSTIN T. ARBES, and JOHN F. HORVATH,
`Administrative Patent Judges.
`
`HORVATH, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`IPR2017-00432
`Patent 7,339,336 B2
`
`
`I. INTRODUCTION
`
`A. Background
`One World Technologies, Inc. d/b/a Techtronic Industries Power
`Equipment ( “Petitioner”) filed a Petition (Paper 1, “Pet.”) to institute an
`inter partes review of claims 1, 7, 11–13, and 15 (“the challenged claims”)
`of U.S. Patent No. 7,339,336 B2 (Ex. 1001, “the ’336 patent”). The
`Chamberlain Group, Inc., (“Patent Owner”) filed a Corrected Preliminary
`Response (Paper 7, “Prelim. Resp.”).1
`Upon consideration of the Petition and Corrected Preliminary
`Response, we are not persuaded, under 35 U.S.C. § 314(a), that Petitioner
`has demonstrated a reasonable likelihood that it would prevail in showing
`the unpatentability of the challenged claims of the ’336 patent. Accordingly,
`we do not institute an inter partes review of these claims.
`
`B. Related Matters
`Petitioner identifies the following as matters that could affect, or be
`affected by, a decision in this proceeding: The Chamberlain Group, Inc. v.
`Techtronic Industries Co. Ltd. et al., Case No. 16-cv-06094 (N.D. Ill.); and
`In the Matter of Certain Access Control Systems and Components Thereof,
`ITC Investigation No. 337-TA-1016. Pet. 3. Patent Owner identifies the
`same matters. Paper 3, 2.
`
`
`1 Patent Owner notified the Board that it filed a Corrected Preliminary
`Response to correct typographical errors in its original Preliminary Response
`(Paper 6) filed on the same day, and requested that the original version be
`expunged. Petitioner stated that it did not oppose Patent Owner’s request.
`On April 7, 2017, we granted Patent Owner’s request via email and
`expunged the originally filed version.
`
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`Patent 7,339,336 B2
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`C. Evidence Relied Upon2
`
`Reference
`
`Mullet
`
`Murray
`
`Date
`
`Exhibit
`
`US 6,326,751 B1
`
`Dec. 4, 2001
`
`Ex. 1004
`
`US 5,278,480
`
`Jan. 11, 1994 Ex. 1005
`
`D. The Asserted Grounds of Unpatentability
`Claims Challenged
`References
`Basis
`§ 102(b) 1, 12, 13, and 15
`§ 103(a) 1
`§ 103(a) 7 and 11
`
`Mullet
`Mullet
`Mullet and Murray
`
`
`
`
`
`II. ANALYSIS
`
`A. The ’336 Patent
`The ’336 patent discloses a movable barrier operator (MBO) with
`automatic force setting, which allows the MBO to regularly update one or
`more thresholds that are used to determine when the MBO exerts excess
`force. Ex. 1001, 1:15–16, 3:12–17. This can occur, for example, when the
`movable barrier encounters an obstacle. Id. at 3:12–17. The MBO can
`determine it is using excess force when a measured parameter, such as the
`current applied to the motor that drives the movable barrier, exceeds a
`threshold current. Id. at 1:20–25, 1:27–30, 3:21–24. When the MBO
`determines it is using excess force, it undertakes one or more predetermined
`actions, which can include stopping or reversing the movement of the
`movable barrier, setting an alarm, or logging the excess force incident. Id. at
`1:25–27, 6:1–5.
`
`2 Petitioner also relies on the Declaration of Stuart Lipoff. Ex. 1003.
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`The thresholds the MBO uses to determine when excess force is
`applied are typically obtained during a learning mode of operation. Id. at
`1:60–65. During the learning mode, the MBO “monitor[s] force conditions
`during movement of the barrier and use[s] such information to automatically
`establish an excess-force threshold to be used during subsequent normal
`operations.” Id. However, the ’336 patent explains that the excess force
`thresholds obtained during the learning mode can become outdated due to
`changes in MBO operating conditions, such as changes in the MBO’s
`physical condition (aging) or changes in the MBO’s environment (e.g.,
`temperature). Id. at 1:65–67, 3:27–32. Therefore, the MBO continually
`updates its excess force thresholds during the normal mode of operation.
`Id. at 3:12–16, 3:28–33. This is shown, for example, in Figure 2 of the ’336
`patent, which is reproduced below:
`
`
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`Figure 2 is a flow diagram depicting the normal mode of operation of the
`MBO. During the normal mode, the MBO measures a force parameter, such
`as the current supplied to the motor to drive the movable barrier. Id. at
`3:21–28, 5:27–32, Fig. 2. The measured parameter is used to automatically
`update the excess force thresholds. Id. at 3:28–33, 5:48–53, Fig. 2. The
`MBO then determines whether excess force was used to drive the movable
`barrier by comparing the measured parameter to the updated excess force
`threshold. Id. at 5:65–67. If excess force was used, the MBO takes a
`predetermined action, such as stopping or reversing the direction of motion
`of the movable barrier. Id. at 1:25–27, 6:1–5, Fig. 2. The foregoing actions
`can be performed during the normal mode of operation regardless of whether
`the MBO has a learning mode of operation, and regardless of whether the
`MBO sets the initial excess force thresholds during the learning mode of
`operation. Id. at 3:12–20, 5:48–53.
`Claims 1, 7, 12, and 15 of the ’336 patent are independent. Claim 12,
`reproduced below, is illustrative.
`12. A method for use with a movable barrier operator having
`both a user-initiable dedicated learning mode of operation and a
`normal mode of operation, comprising:
`during the normal mode of operation:
`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;
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`taking a predetermined action when excess force is being applied
`to the movable barrier via the movable barrier operator.
`Ex. 1001, 17:52–8:3.
`
`Claims 1, 7, and 15 are similar in scope to claim 12. Claim 1 differs
`from claim 12 by not requiring the steps of claim 12 to be performed during
`the normal mode of operation, and by purportedly limiting (via the
`preamble) the steps of claim 12 to being performed by an MBO having no
`learning mode. Compare Ex. 1001, 16:22–39 with id. at 17:52–8:3. Claim 7
`differs from claim 12 by requiring the steps of claim 12 to be performed
`during the normal mode of operation regardless of whether initiation has
`occurred during the learning mode of operation. Compare Ex. 1001, 17:1–
`19 with id. at 17:52–8:3. Claim 15 differs from claim 12 by not requiring
`the steps of claim 12 to be performed during the normal mode of operation,
`and by replacing the single-step process of automatically changing the
`excess force threshold in response to the monitored parameter recited in
`claim 12 with the two-step process of automatically changing a
`characteristic force value in response to the monitored parameter as a
`function of a difference between the characteristic force value and the
`monitored parameter, and using the updated characteristic force value to
`determine an excess force threshold value. Compare Ex. 1001, 18:22–37
`with id. at 17:52–8:3.
`B. Claim Construction
`The Board interprets the claims of an unexpired patent using the
`broadest reasonable interpretation in light of the specification of the patent.
`See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
`2131, 2142–46 (2016). Consistent with the rule of broadest reasonable
`interpretation, claim terms are generally given their ordinary and customary
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`meaning, as would be understood by one of ordinary skill in the art in the
`context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d
`1249, 1257 (Fed. Cir. 2007). Only those terms which are in controversy
`need to be construed and only to the extent necessary to resolve the
`controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999).
`Petitioner requests and provides proposed constructions for the claim
`terms “characteristic force value,” “excess force threshold value,” and
`“automatically changing a characteristic force value . . . .” Pet. 16–19.
`Patent Owner does not dispute Petitioner’s proposed constructions for
`“characteristic force value” and “excess force threshold value,” but argues
`there is no need to expressly construe “automatically changing a
`characteristic force value . . . .” Prelim. Resp. 5. Patent Owner requests we
`construe claim 1 so that the preamble limits the steps to being performed on
`an MBO having no learning mode. Id. at 5–9.
`For the reasons discussed below, we find Petitioner has failed to
`demonstrate a reasonable likelihood that any of the challenged claims of the
`’336 patent are anticipated by Mullet or unpatentable as obvious over Mullet
`alone or in combination with Murray, regardless of how we construe any of
`the claim terms proposed by Petitioner or Patent Owner. Accordingly, we
`decline to expressly construe the proposed claim terms. See U.S. Surgical
`Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (“Although
`claim construction may occasionally be necessary in obviousness
`determinations . . . none of these rejected [constructions] was directed to, or
`has been shown reasonably to affect, the determination of obviousness.”).
`
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`C. Alleged Anticipation of Claims 1, 12, 13, and 15 by Mullet
`Petitioner argues claims 1, 12, 13, and 15 of the ’336 patent are
`anticipated under 35 U.S.C. § 102(b) by Mullet. Pet. 20–34. We are not
`persuaded by Petitioner’s arguments for the reasons discussed below.
`1. Overview of Mullet (Ex. 1004)
`Mullet discloses a garage door opener (GDO) that includes an
`entrapment system for “measuring the motion, speed, and position of a
`garage door as it travels between open and closed positions.” Ex. 1004, 1:9–
`20. The entrapment system determines whether the garage door “encounters
`an obstacle during opening and closing,” and takes a predetermined action
`when it does. Id. at 6:35–40. In particular, the entrapment system “stop[s]
`and reverse[s] or just stop[s] travel of the door if predetermined thresholds in
`door speed and applied force are not met.” Id. at 6:40–42. The entrapment
`system stores the predetermined thresholds in a door profile that is obtained
`“during an initial door open and close cycle,” and that is subsequently
`“updated after each cycle.” Id. at 6:42–46, 9:65–67. The door profile
`contains “door position and force applied to the door 12 for a plurality of
`points during the operation cycle,” where the force applied is calculated
`from the torque of the motor driving the door, which is in turn calculated
`from the measured speed of the motor. Id. at 9:67–10:8. The force applied
`or threshold force stored in the door profile is updated during normal
`operations to allow the entrapment system to “compensate[] for changes in
`ambient temperature and wear of the mechanical components of[] the garage
`door.” Id. at 1:10–16, 11:20–39.
`During each cycle of operation (e.g., opening and closing of the
`garage door), the entrapment system “reads and processes the speed, the
`temperature and the position [of the door] in the same manner as it did
`
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`during the profile acquisition [learning] mode.” Ex. 1004, 11:2–4. The
`system then compares the newly acquired profile data point (position/
`measured force) with the stored profile data point (position/threshold force),
`and, depending on whether the measured force exceeds the threshold force
`by more than 15 pounds, either (1) takes corrective action (e.g., stopping or
`reversing the motion of the door), or (2) replaces the data point stored in the
`door profile (position/force threshold) with the newly acquired data point
`(position/measured force). Id. at 11:5–20, 12:53–13:5.
`2. Comparison of Claims 1, 12, 13, and 15 to Mullet
`Claim 12 requires monitoring at least one parameter corresponding to
`a force applied to cause a movable barrier to move. Ex. 1001, 17:57–60.
`Petitioner argues Mullet meets this limitation by disclosing a garage door
`operator (GDO) that monitors the speed of a motor used to open and close a
`garage door, where the speed of the motor is proportional to the force
`applied to the door. Pet. 21–23; Ex. 1004, 10:66–11:4, 12:60–61.
`Claim 12 further requires automatically changing an excess force
`threshold in response to the monitored at least one parameter to provide an
`updated excess force threshold. Ex. 1001, 17:61–63. Petitioner argues
`Mullet meets this limitation by disclosing replacing the force threshold
`stored in the door profile when the measured force (derived from the
`measured speed) does not differ from the stored threshold force by more
`than 15 pounds. Pet. 23–24; Ex. 1004, 6:42–46, 11:16–20.
`Claim 12 further requires using the updated excess force threshold and
`the monitored at least one parameter to determine when excess force is being
`applied. Ex. 1001, 17:64–67. Petitioner argues Mullet discloses continually
`replacing the threshold force stored in the door profile as discussed above,
`and taking corrective action (e.g., stopping the door) when the measured
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`force differs from the stored threshold force by more than 15 pounds. Pet.
`24–26; Ex. 1004, 6:42–46, 11:16–20, 12:53–13:5. Petitioner, relying on the
`testimony of Mr. Lipoff, therefore argues that Mullet discloses “comparing a
`continuously monitored speed parameter against an excess force threshold to
`determine if excess force is being applied.” Pet.at 26 (citing Ex. 1003 ¶ 68).
`In particular, Petitioner argues:
` [A person having ordinary skill in the art] would understand that
`Mullet discloses “using the updated excess force threshold value
`[Mullet’s newly acquired torque value] and the monitored at least
`one parameter [the measured speed/torque/force] to determine
`when excess force is being applied to the movable barrier via the
`movable barrier operator.”
`
`Id. (quoting Ex. 1003 ¶ 69) (emphasis omitted).
`We are not persuaded by Petitioner’s arguments that Mullet discloses
`“using the updated excess force threshold value and the monitored at least
`one parameter to determine when excess force is being applied,” as required
`by claim 12. Ex. 1001, 17:64–67. Claim 12 requires determining when
`excess force is being applied using both the updated excess force threshold
`value and the monitored at least one parameter. Moreover, claim 12 requires
`obtaining the updated excess force threshold value by “changing an excess
`force threshold value in response to the monitored at least one parameter.”
`Id. at 17:61–63. Thus, claim 12 requires using the monitored at least one
`parameter to both (1) update the excess force threshold, and (2) determine
`when excess force is being applied in conjunction with the updated excess
`force threshold.
`Petitioner fails to demonstrate that Mullet discloses using the GDO’s
`measured force (i.e., the monitored at least one parameter) in conjunction
`with the updated threshold force to determine when excess force is being
`
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`applied. Rather, Mullet discloses using the GDO’s measured force in
`conjunction with the previously stored threshold force to determine when
`excess force is being applied. See Ex. 1004, 11:2–20. That is, in any given
`cycle, Mullet compares the GDO’s measured force to the previously stored
`threshold force, and, depending on whether the two forces differ by more
`than 15 pounds, either (1) updates the previously stored threshold force
`based on the measured force, or (2) determines excess force is being applied
`by comparing the measured force to the previously stored threshold force.
`Id.
`
`To the extent Petitioner contends that Mullet meets the determining
`excess force limitation by disclosing comparing the GDO’s measured force
`in the current cycle to a threshold force that was updated and stored in a
`previous cycle, claim 12 requires using the monitored at least one parameter
`to both (1) update the excess force threshold, and (2) determine when excess
`force is applied in conjunction with the updated excess force threshold.
`Although Mullet’s currently measured force can be compared to a threshold
`force that was updated and stored in a previous cycle, the threshold force
`would have been updated based on a previously measured force rather than
`on the currently measured force. Thus, the currently measured force would
`not have been used to update the excess force threshold value as also
`required by claim 12. See Ex. 1001, 17:61–63 (requiring “changing an
`excess force threshold value in response to the monitored at least one
`parameter to provide an updated excess force threshold value” (emphases
`added)).
`Claim 13 depends from claim 12. Ex. 1001, 18:4–14. Petitioner,
`therefore, incorporates its analysis of claim 12 into its analysis of claim 13,
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`and argues the limitations of claim 13 that are required due to its dependence
`from claim 12 are disclosed by Mullet because Mullet anticipates claim 12.
`See Pet. 29. For the reasons discussed above, Petitioner has failed to
`demonstrate a reasonable likelihood of prevailing on its assertion that Mullet
`anticipates claim 12. Accordingly, Petitioner has failed to demonstrate a
`reasonable likelihood of prevailing on its assertion that Mullet anticipates
`claim 13 for the same reasons.
`Claim 1, like claim 12, requires monitoring at least one parameter
`corresponding to a force applied to cause a movable barrier to move,
`automatically changing an excess force threshold value in response to the
`monitored at least one parameter to provide an updated excess force
`threshold value, and using the updated excess force threshold value and the
`monitored at least one parameter to determine when excess force is being
`applied. Ex. 1001, 16:22–38. Petitioner argues “[e]very process step recited
`in claim 1 after the preamble also appears verbatim in claim 12.” Pet. 28.
`Therefore, Petitioner incorporates its analysis for claim 12 into its analysis
`for claim 1, and argues that because “Mullet anticipates every limitation of
`claim 12 . . . Mullet also anticipates every limitation of claim 1.” Id. For the
`reasons discussed above, Petitioner has failed to demonstrate a reasonable
`likelihood of prevailing on its assertion that Mullet anticipates claim 12.
`Accordingly, Petitioner has failed to demonstrate a reasonable likelihood of
`prevailing on its assertion that Mullet anticipates claim 1 for the same
`reasons.
`Claim 15, like claim 12, requires monitoring at least one parameter
`corresponding to a force applied to cause a movable barrier to move.
`Ex. 1001, 18:24–26. Claim 15 differs from claim 12 by replacing the single-
`
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`step process of automatically changing the excess force threshold value in
`response to the monitored at least one parameter to provide an updated
`excess force threshold value recited in claim 12, with the two-step process of
`automatically changing a characteristic force value in response to the
`monitored at least one parameter, and using the updated characteristic force
`value to determine a corresponding excess force threshold value. Compare
`id. at 18:22–37 with id. at 17:52–8:3. Thus, although claims 12 and 15 are
`worded differently, the excess force threshold value recited in claim 15 is
`also updated based on the monitored at least one parameter as it is in claim
`12.3 Claim 15 further requires determining when force in excess of the
`excess force threshold value is being applied. Id. at 18:34–35. Thus, like
`claim 12, claim 15 also requires determining when the measured force
`exceeds an excess force threshold value that has been updated based on the
`measured force.
`Petitioner argues the “monitoring at least one parameter” limitation of
`claim 15 is identical to claim 12, and is therefore disclosed by Mullet for the
`same reasons as claim 12. Pet. 33. Petitioner argues the “automatically
`changing a characteristic force value in response to the monitored at least
`one parameter” and “using an updated characteristic force value to
`determine a corresponding excess force threshold value” limitations of claim
`15 are identical to the limitations of claim 13, and are therefore met by
`
`3 See Ex. 1001, 18:4–14 (claim 13 requires the claim 12 limitation of
`automatically changing an excess force threshold value in response to the
`monitored at least one parameter to provide an updated excess force
`threshold value to include automatically changing a characteristic force
`value in response to the monitored at least one parameter and using the
`updated characteristic force value to provide the updated excess force
`threshold value).
`
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`Mullet for the same reasons as claim 13. Id. at 33–34. Petitioner further
`argues the “determining when force in excess of the excess force threshold
`value is being applied” limitation of claim 15 is met by Mullet disclosing
`continuously monitoring the door speed (which is proportional to the applied
`force), and detecting when “the door 12 is applying any force greater than
`the upper force limit (high speed value) plus 15 pounds.” Id. at 34
`(emphasis omitted) (quoting Ex. 1004, 12:53–13:5).
`We are not persuaded by Petitioner’s arguments that Mullet discloses
`“determining when force in excess of the excess force threshold value is
`being applied,” as required by claim 15. Ex. 1001, 18:34–35. As discussed
`above, claim 15 requires determining the excess force threshold value from a
`characteristic force value that has been updated in response to the monitored
`at least one parameter. See 18:27–33. The excess force threshold value is
`therefore also updated in response to the monitored at least one parameter.
`Claim 15 further requires determining when the force (i.e., the measured
`force) exceeds this excess force threshold value, which has been updated in
`response to the measured force. Id. at 18:34–35. Petitioner has failed to
`demonstrate that Mullet discloses determining when the door’s measured
`force exceeds the door’s updated threshold force.
`Mullet discloses:
`The speed of the door 12 during normal opening and
`closing cycles is continuously monitored by the processor 66.
`Readings from the potentiometer 56 are compared with the high
`and low speed values stored in the nonvolatile memory 74. . . .
`Since the speed of the motor 48 is directly proportional to the
`force applied to the door 12, the processor calculates the speed
`which is equivalent to 15 pounds of force. If the new speed
`readings are above the pre-programmed thresholds, but lower
`than 15 pounds of force, then the new readings replace the old
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`readings in the nonvolatile memory 74. However, if the
`processor 66 detects that the door 12 is applying any force greater
`than the upper force limit (high speed value) plus 15 pounds, then
`the door stops if moving up or reverses if moving down. If the
`processor detects the door applying force less than the lower
`force limit (low speed value) minus 15 pounds, then the door
`stops if moving up or reverses if moving down.
`
`Ex. 1004, 12:53–13:5. Thus, Mullet discloses measuring the speed/force of
`the door, comparing the measured force to previously stored force
`thresholds (threshold forces stored in memory 74), and based on the
`comparison, either (1) replacing the threshold forces stored in memory 74, or
`(2) taking a corrective action (e.g., stopping or reversing the door’s motion).
`Mullet fails to disclose comparing the measured force to an excess force
`threshold value that has been updated based on the measured force as
`required by claim 15.
`
`Moreover, for reasons similar to those discussed above with respect to
`claim 12, to the extent Petitioner contends that Mullet meets the determining
`excess force limitation by disclosing comparing the GDO’s measured force
`in the current cycle to a threshold force that was updated based on a
`measured force in a previous cycle, Mullet’s currently measured force
`would not have been used to automatically change a characteristic force
`value to provide an updated characteristic force value, where the updated
`characteristic force value is used to determine the excess force threshold
`value as also required by claim 15. See Ex. 1004, 18:27–33.
`On this record, and for the reasons discussed above, Petitioner has
`failed to demonstrate a reasonable likelihood of prevailing on its assertion
`that Mullet discloses each of the limitations required by claims 1, 12, 13, and
`15.
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`D. Alleged Obviousness of Claim 1 over Mullet
`In arguing that claim 1 is anticipated by Mullet, Petitioner argues the
`preamble of claim 1 is not a limitation, and does not require the steps of
`claim 1 to be performed by an MBO having no user-initiable dedicated
`learning mode. Pet. 29. Petitioner alternatively argues that, should the
`preamble of claim 1 be a limitation that requires the steps of claim 1 to be
`performed by an MBO having no user-initiable dedicated learning mode,
`claim 1 would have been obvious over Mullet. Id. at 35. In particular,
`relying on the declaration of Mr. Lipoff, Petitioner argues that a person of
`ordinary skill in the art would have understood that because Mullet’s
`“dynamic adjustments to the force thresholds set in the profile data may be
`made during the normal mode of operation . . . an initialization sequence to
`set the profile data in a ‘user-initiable dedicated learning mode’ is not
`necessary.” Id. at 36; Ex. 1003 ¶ 88. For all other limitations recited in
`claim 1, Petitioner relies upon the same arguments presented above with
`regard to the alleged anticipation of claims 1 and 12. Pet. 35.
`We are not persuaded that Petitioner has demonstrated a reasonable
`likelihood of prevailing on its assertion that claim 1 would have been
`obvious over Mullet. For the reasons discussed in § II.C.2, supra, Petitioner
`has failed to demonstrate that Mullet discloses “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,” as required by
`claim 1. Petitioner’s analysis of claim 1 as obvious over Mullet does not
`proffer any additional argument or evidence that would remedy this
`deficiency in Petitioner’s analysis of claim 1 as anticipated by Mullet. See
`Pet. 35–36.
`
`16
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`IPR2017-00432
`Patent 7,339,336 B2
`
`
`E. Alleged Obviousness of Claims 7 and 11 over Mullet and Murray
`Claim 7 differs from claim 12 by requiring the steps performed during
`the normal mode of operation in claim 12 to be performed during the normal
`mode regardless of whether initiation has occurred during the learning mode
`of operation. Compare Ex. 1001, 17:1–19 with id. at 17:52–8:3. The
`remaining limitations of claims 7 and 12, however, including “using the
`updated excess force threshold value and the monitored at least one
`parameter to determine when excess force is being applied,” are either
`identically or nearly identically recited. Compare id. at 17:13–16 with id. at
`17:64–67; see also Pet. 36–37. In arguing that the combination of Mullet
`and Murray meets these identically or nearly identically recited limitations,
`Petitioner incorporates its analysis of claim 12 into its analysis of claim 7,
`and argues that “Mullet discloses that all of the elements of claim 12 are
`performed during a normal mode of operation.” Pet. 38.
`We are not persuaded that Petitioner has demonstrated a reasonable
`likelihood of prevailing on its assertion that claim 7 would have been
`obvious over Mullet and Murray. As discussed above with respect to claim
`12, Petitioner has failed to demonstrate that Mullet teaches “using the
`updated excess force threshold value and the monitored at least one
`parameter to determine when excess force is being applied,” which is
`identically recited in claims 7 and 12. Moreover, Petitioner does not argue
`that Murray teaches this limitation. Instead, Petitioner argues “if Mullet
`alone did not render obvious executing the method steps of claim 7 . . . when
`a user-initiable learning mode has not been previously entered, then this
`would have been obvious to a [person of ordinary skill in the art] in further
`
`17
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`IPR2017-00432
`Patent 7,339,336 B2
`
`view of Murray.” Pet. 38–39. Relying on the declaration of Mr. Lipoff,
`Petitioner further argues:
`a [person of ordinary skill in the art] would recognize that
`Murray’s teachings regarding force adjustment without having to
`enter an initialization mode is compatible with and could be
`readily
`incorporated with Mullet’s
`teachings
`regarding
`dynamically adjusting force profile data during normal operation
`because Murray’s system is able to dynamically adjust force
`thresholds to account for variations in force requirements even
`without prior actuation of a user-initiable learning mode.
`
`Id. at 44; Ex. 1003 ¶ 100.
`Petitioner’s arguments neither address nor remedy the deficiency
`noted above with respect to Petitioner’s analysis of claim 12. Thus, for the
`reasons discussed in § II.C.2, supra, Petitioner has failed to demonstrate that
`the combination of Mullet and Murray teaches or suggests “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,” as required by claim 7.
`
`Claim 11 depends from claim 7. Ex. 1001, 17:41–51. Petitioner,
`therefore, incorporates its analysis of claim 7 into its analysis of claim 11,
`and argues the limitations of claim 11 that are required due to its dependence
`from claim 7 are taught or suggested by the combination of Mullet and
`Murray for the same reasons argued for claim 7. See Pet. 44.4 For the
`reasons discussed above, Petitioner has failed to demonstrate a reasonable
`
`
`4 Petitioner actually argues “[c]laim 11 depends from claim 7 (which is
`anticipated for the reasons provided in Section VIII.C.1, and incorporated
`here).” Pet. 44. However, in Section VIII.C.1 of the Petition, Petitioner
`does not argue that claim 7 is anticipated. Rather, Petitioner argues that
`claim 7 would have been obvious over Mullet and Murray. Id. at 36–44.
`
`18
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`IPR2017-00432
`Patent 7,339,336 B2
`
`likelihood of prevailing on its assertion that claim 7 would have been
`obvious over Mullet and Murray. Accordingly, Petitioner has failed to
`demonstrate a reasonable likelihood of prevailing on its assertion that claim
`11 would have been obvious over Mullet and Murray for the same reasons.
`III. CONCLUSION
`Upon reviewing the Petition and Patent Owner’s Corrected
`Preliminary Response, and for the reasons discussed above, Petitioner has
`failed to establish a reasonable likelihood that it would prevail in showing
`the unpatentability of claims 1, 7, 11–13, and 15 of the ’336 patent.
`IV. ORDER
`It is ORDERED that, pursuant to 35 U.S.C. § 314, the Petition is
`denied and no inter partes review is instituted on any grounds.
`
`
`
`19
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`IPR2017-00432
`Patent 7,339,336 B2
`
`For PETITIONER:
`Dion M. Bregman
`Jason C. White
`Michael J. Lyons
`Ahren C. Hsu-Hoffman
`Archis V. Ozark
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