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 No. IPR2017-00432
`
`Patent No. 7,339,336
`
`_____________________________________________________________
`
`
`PETITION FOR INTER PARTES REVIEW OF
`
`U.S. PATENT NO. 7,339,336
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`

`
`TABLE OF CONTENTS
`
`
`
`INTRODUCTION .......................................................................................... 1
`I.
`II. MANDATORY NOTICES ............................................................................ 3
`III.
`IDENTIFICATION OF CLAIMS AND GROUNDS .................................... 5
`IV. CERTIFICATION AND FEES ...................................................................... 5
`V.
`RELEVANT BACKGROUND ...................................................................... 6
`A.
`The ’336 Patent .................................................................................... 6
`B. Mullet ................................................................................................. 14
`C. Murray ................................................................................................ 15
`VI. LEVEL OF ORDINARY SKILL ................................................................. 16
`VII. CLAIM CONSTRUCTION ......................................................................... 16
`A.
`“characteristic force value” ................................................................ 16
`B.
`“excess force threshold value” ........................................................... 17
`C.
`“automatically changing a characteristic force value in response
`to the monitored at least one parameter to provide an updated
`characteristic force value as a function of a difference between
`the characteristic force value and the at least one parameter” ........... 18
`VIII. ARGUMENT ................................................................................................ 19
`A. Ground 1: Claims 1, 12, 13, and 15 are Anticipated under
`§ 102(b) by Mullet .............................................................................. 20
`1.
`Independent claim 12 ............................................................... 20
`2.
`Independent claim 1 ................................................................. 27
`3.
`Claim 13 ................................................................................... 29
`4.
`Independent claim 15 ............................................................... 32
`B. Ground 2: Claim 1 is Rendered Obvious under § 103 by Mullet ...... 35
`1.
`Independent claim 1 ................................................................. 35
`C. Ground 3: Claims 7 and 11 are Rendered Obvious under § 103
`by Mullet and Murray ........................................................................ 36
`1.
`Independent claim 7 ................................................................. 36
`2.
`Claim 11 ................................................................................... 44
`
`
`
`
`
`-i-
`
`
`
`

`
`TABLE OF CONTENTS
`(continued)
`
`
`IX. CONCLUSION ............................................................................................. 45
`CERTIFICATION OF COMPLIANCE WITH TYPE-VOLUME LIMITS .......... 47
`CERTIFICATE OF SERVICE ............................................................................... 48
`
`
`
`
`
`-ii-
`
`
`
`

`
`
`
`EXHIBIT LIST
`
`EXHIBIT LIST
`
`EXHIBITS FILED BY PETITIONER
`
`EXHIBITS FILED BY PETITIONER
`
`Ex. 1001
`EX. 1001
`
`U.S. Patent No. 7,339,336 (“the ’336 patent”)
`U.S. Patent No. 7,339,336 (“the ’336 patent”)
`
`Ex. 1002
`Ex. 1002
`
`File History for U.S. Patent No. 7,339,336
`File History for U.S. Patent No. 7,339,336
`
`Ex. 1003
`x. 1003
`
`E
`
`Declaration of Stuart Lipoff Regarding U.S. Patent No. 7,339,336
`Declaration of Stuart Lipoff Regarding U.S. Patent No. 7,339,336
`
`Ex. 1004
`x. 1004
`
`E
`
`U.S. Patent No. 6,326,751 to Mullet et al. (“Mullet”)
`U.S. Patent No. 6,326,751 to Mullet et al. (“Mullet”)
`
`Ex. 1005
`E . 10
`
`05
`
`U.S. Patent No. 5,278,480 to Murray (“Murray”)
`U.S. Patent No. 5,278,480 to Murray (“Murray”)
`
`Ex. 1006
`Ex. 1006
`
`Revised Joint Claim Construction Chart filed November 11, 2016 in
`Revised Joint Claim Construction Chart filed November 11, 2016 in
`
`In the Matter of Certain Access Control Systems and Components
`In the Matter of Certain Access Control Systems and Components
`
`Thereof, ITC Investigation No. 337-TA-1016.
`Thereof, ITC Investigation No. 337-TA-1016.
`
`Ex. 1007
`
`Curriculum Vitae of Stuart Lipoff
`Curriculum Vitae of Stuart Lipoff
`
`i
`
`
`
`
`(
`
`

`
`Petition for Inter Partes Review
`Patent No. 7,339,336
`
`
`INTRODUCTION
`Petitioner One World Technologies, Inc. requests Inter Partes Review
`
`I.
`
`(“IPR”) of claims 1, 7, 11-13, and 15 (the “Challenged Claims”) of U.S. Patent No.
`
`7,339,336 to Eric M. Gregori et al. (“the ’336 patent,” Ex. 1001), purportedly
`
`owned by The Chamberlain Group, Inc. (“Patent Owner”).
`
`The ’336 patent relates to monitoring and adjusting the force used by
`
`movable barrier operators, like automated garage door openers, during operation.
`
`The ’336 patent discloses methods for automatically and continuously calculating
`
`and adjusting an excess force threshold value, which is a value used to identify
`
`when too much force is being applied by a movable barrier operator. The constant
`
`adjustment of the force threshold allows the operator to accommodate for changing
`
`environmental conditions over time, such as for the wear and tear of the movable
`
`barrier system. For example, more force may be required to open the garage door
`
`when the system is old as compared to when it was new.
`
`The ’336 patent, however, admits that manually setting an excess force
`
`threshold value and calculating such a value during a learning mode were well
`
`known. Ex. 1001 at 1:54-65 (“[M]any movable barrier operators have a user-
`
`adjustment interface … that a user or installer can manipulate to adjust allowed
`
`applied force during one or more directions of barrier travel. … Another solution
`
`has been to provide a learning mode during which a movable barrier operator can
`
`
`
`1
`
`

`
`monitor force conditions during movement of the barrier and use such information
`
`Petition for Inter Partes Review
`Patent No. 7,339,336
`
`
`to automatically establish an excess-force threshold to be used during subsequent
`
`normal operations.”); 5:20-23 (“[I]t should be noted that such a system could be
`
`provided with a user-accessible excess force threshold value adjustment interface
`
`(not shown) as well understood in the art.”). Moreover, as shown below, there is
`
`nothing new about automatically calculating and updating this excess force value
`
`during operation.
`
`Just like the ’336 patent, the prior art recognizes the performance fluctuation
`
`issues for movable barrier operators that may result from wear, tear, and
`
`environmental and temperature variances. Ex. 1003 ¶ 34. The prior art also
`
`recognizes that continual adjustment of force values and force thresholds allows
`
`for operation without requiring user intervention. For example, U.S. Patent No.
`
`6,326,751 to “Mullet” (Ex. 1004) teaches “compensat[ing] for changes in ambient
`
`temperature and wear of the mechanical components [of] the garage door.” Ex.
`
`1004 at 1:14-16. Mullet additionally teaches that “[t]hose skilled in the art will
`
`appreciate that as the door ages, the springs … become weaker and the door
`
`develops more drag.” Id. at 11:22-25. “By updating the profile every time the
`
`door cycles, the internal entrapment system ensures that the operator will not
`
`falsely trigger due to a normal change in the door weight characteristics.” Id. at
`
`27-30. As shown below, Mullet anticipates many of the independent claims
`
`
`
`2
`
`

`
`because it teaches a method of using a measured parameter that corresponds to
`
`Petition for Inter Partes Review
`Patent No. 7,339,336
`
`
`force applied to move the door (in this case speed) to continuously adjust a force
`
`threshold value. Therefore, as shown in detail below, Mullet anticipates or renders
`
`obvious the Challenged Claims of the ’336 patent. Similarly, U.S. Patent No.
`
`5,278,480 to “Murray” (Ex. 1005) teaches adjusting sensitivity limits for garage
`
`door openers where “updating of the sensitivity adaptively adjusts for changes in
`
`door opening force due to temperature change, wear, or other reasons.” To the
`
`extent that Mullet does not anticipate or render obvious some of the dependent
`
`claims, the combination of Mullet and Murray clearly does, as shown below.
`
`Therefore, based on the grounds presented herein, the Board should institute
`
`an IPR and find all challenged claims of the ’336 patent unpatentable.
`
`II. MANDATORY NOTICES
`Real Party-in-Interest: The real parties-in-interest are One World
`
`Technologies, Inc. d/b/a Techtronic Industries Power Equipment, and Techtronic
`
`Industries North America, Inc.
`
`Related Matters: The ’336 patent is asserted against Petitioner in The
`
`Chamberlain Group., Inc. v. Techtronic Industries Co. Ltd. et al., No. 16-cv-06094
`
`(N.D. Ill. filed Jun. 10, 2016) and In the Matter of Certain Access Control Systems
`
`and Components Thereof, ITC Investigation No. 337-TA-1016 (instituted Aug. 3,
`
`2016) (“ITC Action”).
`
`
`
`3
`
`

`
`Petitioner also identifies other patents that Patent Owner is presently
`
`Petition for Inter Partes Review
`Patent No. 7,339,336
`
`
`asserting against Petitioner in district court and ITC proceedings: U.S. Patent Nos.
`
`7,161,319, and 7,196,611 are also involved in The Chamberlain Group., Inc. v.
`
`Techtronic Industries Co. Ltd. et al., No. 16-cv-06094 (N.D. Ill. filed Jun. 10,
`
`2016) and In the Matter of Certain Access Control Systems and Components
`
`Thereof, ITC Investigation No. 337-TA-1016 (instituted Aug. 3, 2016), and U.S.
`
`Patents 7,224,275 and 7,635,966 are involved in The Chamberlain Group., Inc. v.
`
`Techtronic Industries Co. Ltd. et al., No. 16-cv-06097 (N.D. Ill. filed Jun. 10,
`
`2016).
`
`Petitioner has filed IPRs challenging claims of U.S. Patent 7,224,275 (Case
`
`Nos. IPR2016-01172 and -01174), U.S. Patent 7,635,966 (Case No. IPR2016-
`
`01846), and U.S. Patent 7,196,611 (Case Nos. IPR2017-00073 and -00214).
`
`Lead Counsel: Dion Bregman (Reg. No. 45,645); Back-up Counsel: Michael
`
`J. Lyons (Reg. No. 37,386), Jason C. White (Reg. No. 42,223), Ahren C. Hsu-
`
`Hoffman (Reg. No. 50,862), and Archis (Neil) V. Ozarkar (Reg. No. 71,265).
`
`Service: Service of any documents to lead or backup counsel may be made
`
`at Morgan, Lewis & Bockius LLP, 1400 Page Mill Road, Palo Alto, CA, 94304
`
`(Telephone: 650.843.4000; Fax: 650.843.4001).
`
`Petitioners consent to e-mail service at: TechtronicIPRs@morganlewis.com.
`
`
`
`4
`
`

`
`Petition for Inter Partes Review
`Patent No. 7,339,336
`
`
`IDENTIFICATION OF CLAIMS AND GROUNDS
`ʼ336 Patent: This patent was filed on October 22, 2004, claims priority to
`
`III.
`
`an application filed December 31, 2002, and is subject to the pre-AIA provisions
`
`of 35 U.S.C. § 102, referenced below. Exs. 1001, 1005.
`
`Mullet: U.S. Patent No. 6,326,751 titled “System and Related Methods for
`
`Detecting and Measuring the Operational Parameters of a Garage Door Utilizing a
`
`Lift Cable System” to Mullet et al. (“Mullet,” Ex. 1004), filed August 25, 1999
`
`and issued December 4, 2001, is prior art under § 102(b).
`
`Murray: U.S. Patent No. 5,278,480 titled “Door Opener Control with
`
`Adaptive Limits and Method Therefor” to Murray (“Murray,” Ex. 1005), filed
`
`October 26, 1992 and issued January 11, 1994, is prior art under § 102(b).
`
`Petitioner asks the Board to find: (1) claims 1, 12, 13, and 15 unpatentable as
`
`anticipated by Mullet; (2) claim 1 unpatentable as obvious over Mullet; and (3)
`
`claims 7 and 11 unpatentable as obvious over Mullet in view of Murray.
`
`IV. CERTIFICATION AND FEES
`Petitioner certifies the ’336 patent is available for IPR and that Petitioner is
`
`not barred or estopped from requesting this IPR on the grounds identified herein.
`
`Any additional fees for this IPR may be charged to Deposit Account No. 50-
`
`0310 (Order No. 011721-5005).
`
`
`
`5
`
`

`
`Petition for Inter Partes Review
`Patent No. 7,339,336
`
`
`V. RELEVANT BACKGROUND
`A. The ’336 Patent
`The ’336 patent, titled “Movable Barrier Operator Auto-Force Setting
`
`Method and Apparatus,” issued on March 4, 2008 and claims priority to an
`
`application filed on December 31, 2002. The claimed invention generally relates
`
`to a movable barrier operator (“MBO”), such as an automated garage door opener,
`
`and more specifically, to a MBO that automatically and continuously updates a
`
`value corresponding to the force exerted by the MBO to move a movable barrier
`
`(e.g., a garage door) during normal operation. Ex. 1003 ¶ 32. Exceeding this
`
`threshold value, referred to by the ’336 patent as an “updated excess force
`
`threshold value,” indicates that the force exerted by the present operation of the
`
`MBO exceeds the force applied during normal operation. As one example, the
`
`’336 patent teaches that a MBO may exert excess force when it “has encountered
`
`an obstacle (such as a person or item of personal property).” Ex. 1001 at 1:21-
`
`26. Upon detecting an excess application of force, the MBO “initiate[s] a
`
`predetermined action, such as reversing the movement of the barrier.” Id. at 1:26-
`
`28.
`
`To calculate an updated excess force threshold value, the ’336 patent
`
`discloses a method of monitoring the actual force exerted by the MBO (using data
`
`captured by unclaimed and preexisting force sensors) and then computing an
`
`
`
`6
`
`

`
`updated excess force threshold value based on the monitored force data (using an
`
`Petition for Inter Partes Review
`Patent No. 7,339,336
`
`
`unclaimed and preexisting computing device). See Ex. 1001 at 3:21-28 (“In
`
`general, actual exerted force (typically as ascertained via monitoring of a
`
`corresponding parameter, such as motor current) informs the automatic
`
`updating/changing of the force-setting(s) value(s)”). This newly-updated excess
`
`force threshold value is then compared to the monitored force data to determine
`
`whether the monitored force data exceeds the updated excess force threshold value,
`
`which would indicate that the MBO is exerting an excess amount of force to move
`
`the barrier. See id. at 6:67-7:3 (“This updated value can then be used to determine
`
`when excess force is seemingly being exerted as related above either for this
`
`operation or for future operations.”). If the monitored force data exceeds the
`
`updated excess force threshold value, the MBO then takes a predetermined action,
`
`such as stopping or reversing the barrier’s movement. See id. at 6:1-5 (“When the
`
`operator detects 24 the application of apparent excess force, one or more
`
`predetermined actions 25 are initiated (for example, movement of the movable
`
`barrier can be halted or reversed, alarms can be activated, an incident log can be
`
`updated, and so forth.”).
`
`The claimed invention is summarized by the four steps shown in Figure 2 of
`
`the ’336 patent: (1) monitoring a force parameter—e.g., the speed of a MBO’s
`
`motor—that corresponds to the force exerted by the MBO to move a barrier; (2)
`
`
`
`7
`
`

`
`calculating an updated excess force threshold value based on the measured force
`
`Petition for Inter Partes Review
`Patent No. 7,339,336
`
`
`parameter; (3) using the updated excess force threshold value to detect an excess
`
`application of force by the MBO; and (4) taking a predetermined action—e.g.,
`
`stopping the barrier’s movement—after detecting an excess application of force by
`
`the MBO. Ex. 1003 ¶ 35.
`
`Ex. 1001 at Fig. 2. As indicated by determination process 22 highlighted above,
`
`the operative step in the claimed invention is “automatically” calculating an
`
`updated excess force threshold value.
`
`Indeed, as the ’336 patent itself acknowledges, this four-step method is not
`
`
`
`8
`
`

`
`in and of itself unique. See Ex. 1001 at 1:60-65 (describing prior art MBOs with a
`
`Petition for Inter Partes Review
`Patent No. 7,339,336
`
`
`“learning mode” that allows them to “monitor force conditions during movement
`
`of the barrier and use such information to automatically establish an excess-force
`
`threshold to be used during subsequent normal operations.”1). Rather, the alleged
`
`novelty of the claimed invention rests in using preexisting technologies to
`
`automatically—rather than manually—calculate an updated excess force threshold
`
`value. See id. at 1:54-58 (“[M]any movable barrier operators have a user-
`
`adjustment interface (usually one or two potentiometer-style knobs) that a user or
`
`installer can manipulate to adjust allowed applied force during one or more
`
`directions of barrier travel.”).
`
`Notably, during the prosecution of the ’336 patent, the Examiner recognized
`
`that the claims recite many prior art elements, such as “methods for controlling [a]
`
`garage door operator, wherein the speed of a motor or current of the motor is being
`
`monitored and wherein a force value is being updated in response to the speed or
`
`the current,” but nonetheless allowed the claims because:
`
`there is no teaching or suggestion to combine the reference to
`automatically change an excess force threshold value in response to
`
`
`1 All emphasis within quotes in this petition has been added by Petitioner unless
`
`otherwise noted.
`
`
`
`9
`
`

`
`Petition for Inter Partes Review
`Patent No. 7,339,336
`
`
`a parameter being monitor[ed] and to use the updated excess force
`threshold value together with the parameter being monitored (i.e.
`current, speed, voltage, torque, etc.) to determine[] when an excess
`force is being applied to a movable barrier.
`
`Ex. 1002 at 70. In other words, the claimed invention amounts to nothing more
`
`than a set of instructions or an algorithm that “permit[s] a force threshold value to
`
`be automatically calculated on a regular (or continuous) basis … in a fashion that
`
`tends to encourage relatively constant availability of a relevant and suitable
`
`threshold value.” See Id. at 4:22-27.
`
`
`
`To accomplish this objective, the ’336 patent discloses algorithms that
`
`automatically calculate an updated excess force threshold value by solving a
`
`simple equation. In fact, the ’336 patent teaches that an “updated excess force
`
`threshold value” is derived from three different values: (i) the “force peak value”
`
`or the highest value from the monitored force data (“FP”) measured during an open
`
`or close cycle of the barrier; (ii) the “characteristic force value”2 of the MBO
`
`
`2 Both Petitioner and Patent Owner agree that the correct construction for a
`
`“characteristic force value” under the Philips standard is a “value used to identify
`
`when excess force is being applied by the moveable barrier operator.” Ex. 1006,
`
`
`
`
`
`10
`
`

`
`representing the force exerted by the MBO during normal operation (“THC”); and
`
`Petition for Inter Partes Review
`Patent No. 7,339,336
`
`
`(iii) a “predetermined measure” of the characteristic force value representing the
`
`prior excess force threshold value. Ex. 1001 at 5:30-35 (“The excess force
`
`threshold value can then be determined by as a function of, at least in part, of the
`
`characteristic force value. For example, the characteristic force value is summed
`
`with a predetermined offset in a preferred approach to thereby determine the
`
`excess force threshold value.”); Ex. 1003 ¶ 39.
`
`
`
`According to the specification, these values need only be “combined” to
`
`determine an updated excess force threshold value. Id. at 5:44-47 (“The
`
`predetermined measure is then readily combined with the frequently updated
`
`characteristic force value to yield a corresponding updated excess force threshold
`
`value.”). Indeed, the ’336 patent explains that the MBO determines an updated
`
`excess force threshold value by merely monitoring the force parameter
`
`corresponding to the actual force exerted by the MBO and inputting the peak of the
`
`monitored force data into the equation. See id. at 5:48-53 (“during a normal mode
`
`of operation … the operator will monitor a force parameter (as detected by the
`
`force sensor) and automatically update the excess force threshold value.”).
`
`Revised Joint Claim Construction Chart, filed November 11, 2016, ITC Action, p.
`
`15.
`
`
`
`11
`
`

`
`Although the ’336 patent discloses only one equation for calculating an
`
`Petition for Inter Partes Review
`Patent No. 7,339,336
`
`
`
`
`updated excess force threshold, it teaches different algorithms for when and how
`
`this equation is solved. By way of example, Figure 4 sets forth the following
`
`algorithm for calculating an updated excess force threshold value for a MBO:
`
`Ex. 1001 at Fig. 4. As shown above by determination processes 43 and 44, the
`
`algorithm mandates that the excess force threshold value remains unchanged when
`
`the peak of the monitored force data (“FP”) falls within a range indicated by the
`
`predetermined measure and characteristic force value (“THC ± X”). Id. at 7:4-9
`
`(“So configured, a movable barrier operator will effectively yield an updated
`
`
`
`12
`
`

`
`characteristic force value THC that is substantially identical to the original
`
`Petition for Inter Partes Review
`Patent No. 7,339,336
`
`
`characteristic force value THC when a difference as between the original
`
`characteristic force value THC and the force measurement parameter is within a
`
`predetermined minimum range.”); Ex. 1003 ¶ 40. As shown above by
`
`determination processes 43 and 45, the initial excess force threshold value is only
`
`“updated” when FP falls outside the range indicated by THC ± X. Ex. 1001 at 7:19-
`
`23 (“When the actual force response includes a peak that exceeds the minimum
`
`range noted above, in a preferred embodiment the operator will use that
`
`information to automatically adjust the characteristic force value THC (to thereby
`
`effect a change of the excess force threshold value).”); Ex. 1003 ¶ 40.
`
`
`
`The challenged independent claims of the ’336 patent recite only a
`
`simplified version of the algorithm depicted in Figure 4, requiring only the process
`
`steps 42, 45, and 46. As a result, calculating an updated excess force threshold
`
`merely requires changing the characteristic force value based on the peak value of
`
`the monitored force data. In other words, the updated excess force threshold value
`
`is automatically set based on the peak value of the force exerted by the MBO.
`
`
`
`At bottom, the ’336 patent is drawn to nothing more than an algorithm,
`
`based on simple mathematics, for calculating an updated excess force threshold
`
`value. Nowhere in the patent is there any disclosure of new and improved sensors,
`
`computing hardware, or any other equipment for performing this calculation. To
`
`
`
`13
`
`

`
`the contrary, the patent acknowledges that the claimed invention can be practiced
`
`Petition for Inter Partes Review
`Patent No. 7,339,336
`
`
`by executing simple algorithms on existing equipment to solve a well-known
`
`equation. It is therefore no surprise that the cited prior art references disclose the
`
`very subject matter claimed in the ’336 patent.
`
`B. Mullet
`Mullet discloses automatically updating an excess force threshold value
`
`every time a garage door opens and closes. Ex. 1003 ¶ 42. Mullet relates to “an
`
`internal entrapment system which … detect[s] a position … and … speed of the
`
`garage door … [and] compensates for changes in ambient temperature and wear of
`
`the mechanical components [of] the garage door.” Ex. 1004 at 1:11-17. Mullet
`
`teaches generating “door profile data” that is used “to determine the appropriate
`
`force limits for when the door is opening and for when the door is closing.” Ex.
`
`1004 at 11:62-65. The door profile data, which includes information related to the
`
`“door position and force applied to the door,” is updated “every time the door
`
`cycles” to “ensure[] that the [door] operator will not falsely trigger due to a
`
`normal change in the door weight characteristics.” Ex. 1004 at 11:27-30.
`
`Mullet further explains that:
`
`[t]hose skilled in the art will appreciate that as the door ages, the
`springs contained within the counterbalancing system 30 become
`weaker and the door develops more drag. As the frictional drag
`increases, the operator encounters a greater amount of imbalance in
`
`
`
`14
`
`

`
`Petition for Inter Partes Review
`Patent No. 7,339,336
`
`
`the system. By updating the profile every time the door cycles, the
`internal entrapment system ensures that the operator will not falsely
`trigger due to a normal change in the door weight characteristics.
`
`Ex. 1004 at 11:22-30. Mullet also discloses that, “if the new force profile varies
`
`from the stored force profile [by] a predetermined amount”—thereby signaling that
`
`excess force is being applied—a predetermined action may be taken, such as
`
`stopping or reversing the travel of the door. Ex. 1004 at 7:1-7; 1:8-20, 6:35-7:7.
`
`C. Murray
`Murray discloses a garage door opener that “learns the open and closed
`
`position limits as well as force sensitivity limits for up and down operation.” Ex.
`
`1005 at Abstract. “During normal door operation the closed limit and the
`
`sensitivity limits are adaptively adjusted to accommodate changes in conditions.”
`
`Id. Murray notes that “a method of accommodating changes in door opening and
`
`closing force is required” to avoid problems in prior art garage door opener
`
`systems of the time. Ex. 1005, 1:57-58. Murray further notes that “an object of
`
`the invention [is] to set or reset sensitivity limits in accordance with forces
`
`operating on the door not only in conjunction with a learn mode but throughout
`
`the operating mode as well, thereby maintaining a current basis for the sensitivity
`
`limits and permitting small offsets which are indicative of excess force caused by
`
`an obstruction.” Ex. 1005 at 2:5-11. Obstructions can be detected based on
`
`
`
`15
`
`

`
`comparing the motor speed with respect to the sensitivity limit, and a corrective
`
`Petition for Inter Partes Review
`Patent No. 7,339,336
`
`
`action like stopping the door can be taken. Ex. 1005 at 2:31-36; Ex. 1003 ¶ 43.
`
`VI. LEVEL OF ORDINARY SKILL
`A person of ordinary skill in the art (“PHOSITA”) at the time of the ’336
`
`patent’s priority date (December 31, 2002) would have had at least a Bachelor’s
`
`degree in mechanical engineering, physics, or mathematics, or equivalent
`
`education, and one to two years of experience with movable barrier operators or
`
`automated door systems, or equivalent work experience or training. Ex. 1003
`
`¶¶ 27-30.
`
`VII. CLAIM CONSTRUCTION
`Claims are given their broadest reasonable interpretation (“BRI”) in light of
`
`the specification. Petitioner proposes the following constructions for this IPR and
`
`reserves the right to argue alternative constructions in other forums.
`
`“characteristic force value”
`
`A.
`Claims 11, 13, 15-19, and 34-36 recite a “characteristic force value.” Under
`
`BRI, a PHOSITA would understand that “characteristic force value” means “a
`
`
`
`16
`
`

`
`Petition for Inter Partes Review
`Patent No. 7,339,336
`
`value that corresponds to the force applied to move a barrier.”3 Ex. 1003 ¶ 48.
`
`The specification teaches that the “characteristic force value” corresponds to
`
`the force applied to move a movable barrier during normal operation. See Ex.
`
`1001 5:41-44 (“[I]t is the characteristic force value that the operator
`
`automatically adjusts to reflect changing conditions regarding the application of
`
`force during normal operation.”), 5:27-30 (“[T]he excess force threshold value
`
`indicator 15 automatically determines a characteristic force value (in response,
`
`at least in part, to the force sensor) that corresponds to this given installation.”)
`
`5:60-65 (explaining the characteristic force value is updated in response to the
`
`monitored force parameter). The specification explains that the “characteristic
`
`force value” corresponds to the actual measured force via the monitored force
`
`parameter, but it may also be higher or lower than the actual measured forced. See
`
`id. at 5:60-65, 6:17-30, Fig. 3, 5, 7, and 8.
`
`“excess force threshold value”
`
`B.
`Claims 1, 7, 12-13, 15, 19, and 34 recite an “excess force threshold value.”
`
`Under BRI, a PHOSITA would understand that “excess force threshold value”
`
`
`3 Petitioner and Patent Owner agree that this is the correct construction under the
`
`Philips claim construction standard. Ex. 1006, Revised Joint Claim Construction
`
`Chart, filed November 11, 2016, ITC Action, p. 15.
`
`
`
`17
`
`

`
`means “a value used to identify when excess force is being applied by the
`
`Petition for Inter Partes Review
`Patent No. 7,339,336
`
`
`movable barrier operator.”4 Ex. 1003 ¶ 49. The specification explicitly states
`
`that the “excess force threshold value” is a value “used to determine when excess
`
`force is being applied to the movable barrier via the movable barrier operator.”
`
`Ex. 1001 Abstract.
`
`C.
`
`“automatically changing a characteristic force value in response
`to the monitored at least one parameter to provide an updated
`characteristic force value as a function of a difference between
`the characteristic force value and the at least one parameter”
`
`For the purposes of these proceedings only, and under the broadest
`
`reasonable interpretation standard, Petitioner adopts Patent Owner's proposed
`
`definition of this term from the corresponding ITC Action. The construction
`
`proffered by the Patent Owner in the ITC Action is “automatically changing a
`
`characteristic force value in response to the monitored at least one parameter to
`
`provide an updated characteristic force value based on a comparison of values
`
`
`4 Petitioner and Patent Owner agree that this is the correct construction under the
`
`Philips claim construction standard. Ex. 1006, Revised Joint Claim Construction
`
`Chart, filed November 11, 2016, ITC Action, p. 15.
`
`
`
`18
`
`

`
`associated with the characteristic force value and the at least one parameter.”5
`
`Petition for Inter Partes Review
`Patent No. 7,339,336
`
`
`VIII. ARGUMENT
`Petitioner submits that the Challenged Claims are anticipated under 35
`
`U.S.C. § 102(b) by Mullet. Ex. 1003 ¶ 44. However, to the extent one or more
`
`limitations of the claims are not deemed anticipated by Mullet, the claims would
`
`still be obvious to a PHOSITA in light of Mullet alone or in view of Murray. Ex.
`
`1003 ¶ 44.
`
`
`5 Under the Phillips claim construction standard in the ITC Action, Petitioner has
`
`proposed that the construction for this element is “automatically replacing a
`
`previous characteristic force value with an updated characteristic force value,
`
`where the updated characteristic force value differs from the previous characteristic
`
`force value by the amount of the difference between the previous characteristic
`
`force value and the monitored at least one parameter,” which is narrower than
`
`Patent Owner’s proposed construction. In any event, and as shown below, the
`
`cited references anticipate or render obvious all of the Challenged Claims under
`
`either definition.
`
`
`
`19
`
`

`
`Petition for Inter Partes Review
`Patent No. 7,339,336
`
`
`A. Ground 1: Claims 1, 12, 13, and 15 are Anticipated under
`§ 102(b) by Mullet
`Independent claim 126
`1.
`a.
`Preamble
`
`The preamble of claim 12 recites: “A method for use with a movable barrier
`
`operator having both a normal mode of operation and a user-initiable dedicated
`
`learning mode of operation.” To the extent that the preamble is limiting, Mullet
`
`discloses a method for use with a “movable barrier operator” having “a normal
`
`mode of operation” and “a user-initiable dedicated learning mode of
`
`operation.”
`
`Mullet is directed to “detecting and measuring the operational parameters of
`
`a garage door using a lift cable system.” Ex. 1004 at Title. Mullet’s garage door
`
`operator has a “setup” mode which allows for the “initial generation of door profile
`
`data.” Ex. 1004 at 6:55-61. It is a dedica