`
`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.
`__________
`
`Cases IPR2017-01132 and IPR2017-01137
`Patent 6,998,977 B2
`__________
`
`Record of Oral Hearing
`Held: June 14, 2018
`__________
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`
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`Before JONI Y. CHANG, JUSTIN T. ARBES, and JON M. JURGOVAN,
`Administrative Patent Judges.
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`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`DION M. BREGMAN, ESQUIRE
`W. SCOTT TESTER, ESQUIRE
`Morgan Lewis
`1400 Page Mill Road
`Palo Alto, CA 93404
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`W. KARL RENNER, ESQUIRE
`Fish & Richardson, P.C.
`1000 Main Avenue, S.W.
`Suite 1000
`Washington, D.C. 20024
`
`JOSHUA A. GRISWOLD, ESQUIRE
`DAN SMITH, ESQUIRE
`Fish & Richardson, P.C.
`1717 Main Street
`Suite 5000
`Dallas, TX 75201
`
`
`
`
`
`The above-entitled matter came on for hearing on Thursday, June 14,
`2018, commencing at 1 p.m., at the U.S. Patent and Trademark Office, 600
`Dulany Street, Alexandria, Virginia.
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`P R O C E E D I N G S
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`JUDGE CHANG: Please be seated. We may take a few minutes to
`boot up our computers.
`MR. BREGMAN: Your Honor, may I pass these up?
`JUDGE CHANG: Sure. Okay, thank you. Thank you very much.
`MR. RENNER: Your Honors, may I pass these up?
`JUDGE CHANG: Yes, that would be great. Is that a copy for the
`court reporter?
`MR. BREGMAN: He has a copy already. Thank you.
`THE REPORTER: They took care of me early.
`JUDGE CHANG: Okay. Thank you very much. Good afternoon.
`Welcome. I am Administrative Patent Judge Joni Chang and here with me is
`Judge Justin Arbes on my right, and Judge Jon Jurgovan is joining us
`remotely from Dallas and I just wanted to check whether he can hear us and
`also if the mike is working or not. Judge Jurgovan, good afternoon.
`JUDGE JURGOVAN: I can hear you Joni.
`JUDGE CHANG: Okay, great. Thank you. And make sure that the
`mike on the podium is on when you speak. Judge Jurgovan, can you hear us
`at the podium, the counsel?
`JUDGE JURGOVAN: Yes.
`JUDGE CHANG: Okay. Thank you. One time I found out that one
`of the remote judges couldn't hear, and also one more check is, do you see
`us, Judge Jurgovan, or the counsel at the podium?
`JUDGE JURGOVAN: I see the counsel.
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`JUDGE CHANG: Okay, good, good. Because also there was another
`hearing where they were at us and not the counsel, so I just want to make
`sure all that is correct. So at this time I would like counsel to introduce
`yourselves and your colleagues.
`MR. BREGMAN: Your Honor, Dion Bregman and Scott Tester for
`Petitioners.
`JUDGE CHANG: Okay. Welcome.
`MR. RENNER: And, Your Honor, this is Karl Renner and Josh
`Griswold, and Dan Smith, for Patent Owner.
`JUDGE CHANG: Welcome. Thank you so much. This is a
`consolidated oral hearing for IPR 2017-01132 and 01137. Both cases are
`involved with the same patent, U.S. patent 6,998,977. This oral hearing is
`open to the public and a transcript will be entered in both cases usable in
`both cases. Please note that the demonstratives are neither evidence nor
`substantive weight, rather they are merely visual aids to assist the parties'
`presentation, and because Judge Jurgovan is remotely joining us please
`speak closely to the mike and only at the mike and also please make sure
`that you clearly speak and explicit by the slide number so that way he can
`follow us because he can't see the board. So we do have access to all the
`files in both cases on our computers so if you're referring to any specific
`exhibits in the file or paper in the file, you can let us know also and
`consistent with our Prior Order each party has a total of 60 minutes to
`present each argument for both cases. If there is a specific argument for one
`particular case, please identify the case number so that way we can follow
`the transcript later. If it's applied to both, we assume applied to both, okay,
`and Petitioner will proceed first with its presentation of the case as to the
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`challenged claims and thereafter the Patent Owner will respond to the
`Petitioner's case. Petitioner may reserve a small portion of your time for
`rebuttal. Is there any other questions before we begin? No? Okay, any
`time.
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`MR. BREGMAN: Actually one question before we begin, Your
`Honor. There were two competing lists of -- Patent Owner's had requested a
`Motion to Strike. Your Honors had permitted us to submit competing lists
`of support for the arguments and for whether it was in rebuttal. I don't know
`if you want do discuss that first or if we should just set that aside.
`JUDGE CHANG: It wasn't a Motion to Strike, it was more of a
`listing, right?
`MR. BREGMAN: Right. Two competing lists.
`JUDGE CHANG: Yes. We will consider the list and we will respond
`to that list when we draft our final written decision. There was not argument
`on the list so we did not permit any argument so actually we would like to
`not hear any argument.
`MR. BREGMAN: Okay. Fair enough.
`JUDGE CHANG: Okay.
`MR. BREGMAN: Good. Okay, Your Honor. So I'd like to reserve
`20 minutes at the end for rebuttal. So why don't I jump right in. So let's just
`jump to the '977 patent that we're here to discuss today. You can see here,
`I'm on slide 4, that the filing date was June 2003 and that has not been
`challenged as the priority date.
`If we jump to slide No. 8, this is figure 3 from the'977 patent. As you
`can see everything yellow with the reference numeral 36 is the network
`interface. The network interface in the'977 patent connects to the barrier
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`movement controller. It's a controller for controlling the barrier which is the
`garage door opener in the preferred embodiment and then that network
`interface on the other side connects to a network shown in blue.
`There are three independent claims, claim 1, claim 12, and claim 22. I
`think I'll start with claim 12 and just walk through that if Your Honors don't
`mind. So this is the method claim. The other two claims are apparatus
`claims.
`JUDGE CHANG: What number? I'm sorry to interrupt. What slide
`number?
`MR. BREGMAN: Sorry, slide No. 10. So you can see slide No. 10
`shows claim 12, a method for checking the status of a movable barrier
`comprising the steps of, receiving from a network client over a network, a
`status request for the movable barrier. So that's receiving from some
`network clients over a network, a request asking what the status is, the status
`as Your Honors has said, for example, could be whether the door is opened
`or closed.
`The next step is determining a status of the movable barrier, is it open
`or is it closed, but then sends the status of the movable barrier over the
`network to the network clients in response to the status request and it's got a
`wherein clause wherein the movable barrier comprises a barrier movement
`operator for controlling the movement of the barrier, and the method
`comprises -- and this part was added at the end to get allowance during
`prosecution -- and the method comprises receiving a status change request
`from a network client. So the network client now says I'd like to change the
`status, I'd like to either open or close the door and then finally it says in
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`controlling movement of the barrier in response to the status request, and
`then it opens or closes the door. Pretty simple thing.
`If we go back to claim 1, which is the apparatus claim. It's got a
`number of apparatus components, a movable barrier operator, a network
`interface and then it basically jumps into the method in some wherein
`clauses, and likewise in claim 22 it's got a number of components, a barrier
`status monitor, a network interface, a controller, and then likewise it jumps
`into some wherein clauses which basically recites the method.
`One thing to point out. Both claims 1 and 22 refer to a network.
`There's no mention of a network client. Claim 12 is the only independent
`claim that mentions as well as the network and network client.
`Looking at the grounds of unpatentability, I'm on slide 13. For the
`1132 IPR, this is the one with the method claims, claims 12 and its
`dependent claims. There were two instituted grounds, one on anticipation
`based on Menard and the second one based on obviousness for Menard and
`Lee. Patent Owner's haven't challenged the second grounds at all so we
`won't be discussing those at all today.
`Likewise for the 1137 IPR, this is the apparatus claims. There is an
`anticipation ground for most of the claims, and then there are a number of
`obviousness grounds. Again, the Patent Owner hasn't challenged any of
`those obviousness grounds so we won't be discussing those today either.
`Turning to slide 15 which is claim construction. I'm actually going to
`jump ahead a little bit to slide No. 20. Just want to point out that neither
`party has argued that any of the Board's construction should be changed
`since the Institution decision and the Patent Owner in their response
`submitted that there was no construction that's necessary for any claim. That
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`is, I will say, a caveat that because although not officially construed by the
`Patent Owner they do discuss the meaning of computer when it comes to one
`of the dependent claims, and we can deal with that a little bit later.
`I'd like to just jump now to slide 26 and start talking about the
`anticipatory reference of Menard. So Menard describes the exact same
`system but in more detail than the'977 patent. It also relates to a system for
`controlling a garage door. We jump to slide 29. I think this is a nice
`summary. This is in the Summary section of the patent, paragraph No. 9,
`just before the yellow highlighted section you'll see it starts off by saying a
`system and method is described. That's the system and methods described in
`this patent application which allows remote control and management of
`single and multiple door openers using a wired or wireless communication
`device and then it goes on to list what those devices can be. It says a device
`may be a cellular telephone, a pager, personal digital system, a computer or
`other device that communicates using a network. So it talks about the
`methods of the patent application, it never turned into a patent, being for
`remote control and management of garage door openers using any type of
`wired or wireless device and then it lists what those devices are.
`If we jump to slide 31. This is figure 2 of Menard. Very similar to
`the figure that we just looked at for the'977 patent. It's got a garage door
`opener in pink at the bottom, No. 10. It's got a position thing, so 155 to the
`bottom left there. It's got a processor which corresponds to the controller in
`the'977 patent shown in yellow, and it's got a transceiver shown in blue
`there, No. 130, with both long range and short range capabilities. Long
`range, for example, being able to communicate on a pager or a cellular
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`telephone network and short range, for example, being able to communicate
`using Bluetooth.
`Slide 32. This is our expert, Mr. Lipoff, and he has stated here that
`the majority of the claims in his opinion are anticipated by Menard.
`Let me jump now into the issues that are really in dispute here. So if
`we look at slide No. 34, for the 1132 IPR -- actually for both IPRs -- the
`Patent Owner raises two fundamental arguments with respect to the
`independent claims. No. 1, they say Menard doesn't disclose receiving a
`request from a network or network client, and No. 2, they say the petition is
`improperly combining embodiments for anticipation. That boils down to
`really an argument that the steps in the claim to be performed sending and
`receiving data from a single network client or single network, and we'll
`discuss that in a little bit of detail, and then they jump into some arguments.
`So those are all arguments for the independent claim and then they have
`some arguments with respect to the dependent claims as well.
`Same thing for the 1137. These are the apparatus claims. Same
`arguments with respect to the independent claim. The apparatus claims
`however do not have the network clients, and then the independent claims so
`slightly a little bit different argument but basically along the same lines, and
`then they have one argument for a dependent claim.
`So let me jump into the first argument that Patent Owner makes, and
`this is regarding whether or not Menard teaches receiving a request over a
`network. This is their argument on slide 37. They say Menard though does
`not indicate the source of the inquiry or even if the inquiry was on a
`network.
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`Well let's look at the claims to see what we're talking about, and I'll
`start with slide 40. That's the method claim, I think it's the easiest one to
`look at and actually not a great highlighting here, sorry. Receiving from a
`network client over a network a status request for the movable barrier, and
`that's the element that Patent Owner's say is missing, that Menard doesn't
`teach receiving from a network client over a network the status request.
`With respect to the other independent claims, there is no network client
`there's only a network in the claims so the argument there is slightly
`different saying that Menard doesn't teach receiving from a network.
`So let's look at Menard and what Menard says about receiving
`something, receiving a request for the door status, the door position. So this
`is what we rely on. This is paragraph 50 from Menard and you can see there
`on slide 41 now, and as you can see in the highlighted section it says the
`following.
`The outbound signal, e.g., indicating the door position, so that's the
`status of the door and there's no dispute about that, may be transmitted to the
`pager, and then it lists three different ways that it's transmitted to the pager.
`On a predetermined schedule or upon inquiry or upon a change in position of
`the door at any time.
`And I'd like to break down on what we rely on here is that the
`outbound signal in the door position is transmitted to the pager upon inquiry.
`We believe that the only common sense reading of that is that the door
`position is transmitted to the pager upon inquiry from the pager. And how
`do we get to that conclusion?
`So let's look at paragraph 50 and read the whole of the paragraph in
`context. Starting with slide 43, paragraph 50 starts off by saying introducing
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`a pager system. So in one embodiment we've got a pager system, the system
`provides a pager signal to indicate the position of the door or any other
`information relative to the garage or the door opener. So it says the pager
`can get the door position.
`Then it introduces a one way pager and as Your Honors may know, a
`one way pager if you can think back in time a little bit a one way pager
`could only receive data. It couldn't send data. So it says if you've got this
`one way pager, what happens? It says the user may operate the door opener
`or operate an actuator using another communication channel including, for
`example, a cellular telephone or personal communication device. So if you
`wanted to send a signal back to the garage door and you only had a one way
`pager, what would you do? You would have to use another communication
`channel, for example, from a cellular telephone or a personal communication
`device.
`Then the paragraph introduces the next concept which is a two way
`pager. Now on slide 45, and it says using a two way pager the user may
`operate the door opener or operate an actuator using the reply
`communication channel of the pager. Of course that makes sense. A two
`way pager can both send data and receive data. It's two way, the very
`definition of the word two way pager. So it introduces two way pagers. It
`introduces this reply communication channel and then what does it do? It
`jumps into the next sentence which we rely on. The outbound signal
`indicating the door position may be transmitted to the pager upon inquiry. It
`introduces that you've got this two way direction and then it says, hey, I can
`send to the pager the door position upon inquiry, and what do we think that
`means and what does our expert think that means?
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`Well, if we jump to slide 48 our expert believes that it means the
`following, and I'm reading the blue part of the expert's declaration, our
`expert's declaration. He said,
`"In my opinion the natural and only reasonable reading that a person
`of skill in the art could give to the sentence is that Menard's outbound signal
`which Menard teaches indicates the door position may be transmitted to the
`pager upon inquiry from the two way pager. Indeed, in my opinion, it's the
`only possible logical reading of the sentence and as a reading a person of
`skill in the art would have given it. No different from I'm in the airport and I
`go up to the information booth and the person tells me that they will give me
`information about the bus schedule upon inquiry. What do they mean by
`upon inquiry? If I ask them for the bus schedule, they'll give it to me. So to
`and from the party that receives the signal."
`JUDGE ARBES: Counsel, just to make sure I understand your
`position. You're not saying that it necessarily operates this way that the
`inquiry comes from the two way pager, just it’s how a person of ordinary
`skill in the art reading those two words in the context of the whole
`paragraph, that's how such a person would read that.
`MR. BREGMAN: That's absolutely right. That's the reasonable
`reading that you're given. We'll look at how Patent Owner tries to read it in
`a minute and let's contrast those two and see which one is the reasonable
`reading that a person of skill in the art will get.
`JUDGE ARBES: But you acknowledge that there are other potential
`ways to make an inquiry that would cause that signal to be sent back, right?
`MR. BREGMAN: Not when the sentence is read in context, Your
`Honor. We believe it's walking through a pager, it introduces a one way
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`pager, then introduces a two way pager and says that that channel and what
`does the very next sentence say after it says you've got the that channel, it
`says we can send the pager the door position information upon inquiry and
`we believe that that is what a reasonable person of skill in the art would read
`that sentence to mean.
`JUDGE ARBES: The paragraph does though disclose a one way
`pager and it discloses other communication channels, right? So theoretically
`there are other possible ways that it could operate, right?
`MR. BREGMAN: So reading that paragraph, let's go back to that
`paragraph. So the only other channels that are described in that paragraph
`are 1) it's the two way pager which is the sentence that precedes this
`outbound signal. The only other way that it could go back, according to this
`paragraph, is the other communication channel using a cellular telephone or
`personal communication device. Both of those are over a network, they're
`both over a network. What the Patent Owner's are trying to say, oh, no, this
`request doesn't come from a network at all. There's some internal request
`that happens and that could come from pushing the button that you normally
`use to open and close the door, using a voice command, those are there
`examples that they give in their briefing of where the inquiry could come
`from and we just don't think that that's a reasonable reading that any person
`of skill in the art would give to this paragraph.
`JUDGE ARBES: Okay. So this all comes down to what is meant in
`the context of this disclosure of “upon inquiry”?
`MR. BREGMAN: That's correct, and in their response Patent Owner
`said well it's also not inherent. We didn't raise inherency, we believe that it's
`in there, but we responded to inherency as we are permitted to do in our
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`Reply Brief and we pointed out how their other options where it comes from
`just don't make any sense and there is no other place that it comes from that
`makes logical sense that they put forward and we believe the record's clear
`on that.
`So let's look at their response. So this is what they say about it. They
`say, in fact beyond this one mention -- this is on slide 49 -- Menard does not
`further reference an inquiry or any other status request. It doesn't make any
`difference if it's one mention or ten mentions, as long as it mentions
`something and anticipates that element, which we believe it does.
`What else do they say? They say the petition presented -- this is on
`slide 51 -- presented no explanation of how the term “inquiry” could
`expressly disclose receipt of a request over a network and the term “inquiry”
`in fact carries no such connotation to a person of skill in the art. They're
`plucking the word “inquiry” out. They're not reading it in the context of the
`paragraph and in fact the petition did lay this out in detail, so to say that the
`petition presented no explanation is simply not true.
`What are their other arguments? So they say because “upon inquiry”
`shows up in a list of other things like other triggers that will send the door
`position like on a predetermined schedule or upon a change in position of the
`door, neither of those they say comes from a pager, why should “upon
`inquiry” come from a pager too? That doesn't make any sense in light of
`what the law says. The law says, and this is on slide 55, this is the Hewlett
`Packard case, the Federal Circuit said,
`"The anticipation analyses are solely whether the prior reference
`discloses and enables a claimed invention," they're not how the prior art
`characterizes that disclosure, or "whether alternatives are disclosed."
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`Federal Circuit further says in the Perricone case.
`"This Court rejects the notion that one of these ingredients cannot
`anticipate because it appears without special emphasis in a longer list."
`And that's exactly what happens here. Just because it is listed “upon
`inquiry” and part of other examples doesn't make its disclosure any less
`relevant.
`So what are these alternative theories they come up with of where the
`“upon inquiry” could come from, and this is what they say. They say, and
`this is the only examples that they give in their response brief and you can
`find the citations here on slide 56 of ours. They say that it could come from
`a physical interface, that's a wired button in Menard's system or it could
`come from a voice control. Those are their theories of where else the “upon
`inquiry” could come from.
`So let's look at those two examples. On slide 57, well this is figure 1
`from the patent and you can see this is the button they're talking about, the
`wired button. It's the same button I'm sure Your Honors have used many
`times to open and close your garage door. There's no description in Menard
`whatsoever about using that button to request the status of the garage door,
`and I asked Dr. Davis, Patent Owner's expert this very question. I said,
`"So he," talking about Menard, "doesn't describe using a wired button
`to get an inquiry about the status of the door at all, right?"
`"No, no he doesn't."
` So he admits that it doesn't. It's something he has just made up
`without any support whatsoever, and I asked him because I was a bit
`confused,
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`"If you're in the garage and you can see the door, why would you use
`the button to find out whether the door is open or closed? You could just
`look at the door to see if it's open or closed, and I said that to him. In fact if
`you're standing in the garage and you push the button to open the garage,
`you can see the garage door opening. You don't need the status to be sent to
`your pager, right?
`The answer, "Not necessarily. Again you might be in the garage and
`your wife might be out and about some place and might find it useful to
`know the garage door opened."
`Completely made up, no support whatsoever in Menard for this
`hypothetical, and that's exactly what Mr. Lipoff, our expert, has said. He
`said a person of skill in the art -- on slide 60 -- would understand that
`sending the request could not be done using the wired button in Menard.
`What about the voice control?
`This is the other example of where the inquiry could come from, on
`slide 61. This is what our expert said. He said neither Patent Owner nor its
`expert point to any disclosure in Menard for using voice control to send the
`request because there isn't any. And I asked him again --
`JUDGE ARBES: If you can go back to slide 60 for just a moment?
`MR. BREGMAN: Yes, sure.
`JUDGE ARBES: I want to make sure I'm clear on this testimony. Is
`the declarant saying it could not be using the wired button?
`MR. BREGMAN: Yes.
`JUDGE ARBES: It's physically not possible to do that?
`MR. BREGMAN: He's saying that based on the reading of Menard as
`a person of skill in the art, it can't be done. There's nothing described in
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`Menard that says you could use that button to request the status of the door.
`Nothing, no support given whatsoever for that proposition by Patent Owner.
`JUDGE ARBES: Okay. But I think there's a difference between how
`a person of ordinary skill in the art would have read this disclosure, what it
`means to a person of ordinary skill in the art --
`MR. BREGMAN: Yes.
`JUDGE ARBES: -- versus saying that it just physically cannot
`operate?
`MR. BREGMAN: I don't think that's what was meant here, Your
`Honor. It says a person of skill would understand. I think on reading
`Menard that it couldn't be used by using the wired button in Menard. He's
`not saying that it couldn't ever happen anywhere in the universe that
`someone could create a button to do this. He's just saying a person of skill
`in the art, based on the reading of Menard, would not come to that
`conclusion.
`And I asked Dr. Davis here on slide 62, so I said it's saying here, we're
`talking about Menard, that the user can use their voice to open the door.
`That's all that's described in Menard. You can use your voice to open the
`door. And he says it doesn't in my mind limit what you can do with voice
`recognition programming to only operating the door rather than requesting a
`status. So he says well I know it basically doesn't say that, but in my mind it
`could do other things. Well of course Menard doesn't teach that and a
`person of skill in the art wouldn't have come to that conclusion.
`Now jumping ahead to slide 64, I had the same problem that I raised
`with the button. If someone's in the garage and the voice control is also in
`the garage you can see the door. You don't need to ask the system whether
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`the door is open and closed to get the status. You just look at the door. And
`he said I know some people have oversized garages, this is his justification.
`You could call out to the audio transducer if you didn't know the door was
`open or shut, you know what the status of the door. And I said and how
`would it then tell you? It would then send the status to your pager? And he
`said, it might. So just completely making this up that there has to be some
`huge garage, you're in the back of the garage, you can't see whether the door
`is open but somehow your voice can still carry to the audio equipment, it
`could hear you and then it would send the result back to your pager. Just a
`very hokey explanation for how the inquiry could possibly even come from
`voice control.
`And our expert -- this is on slide 65 -- said no person of skill in the art
`would read Menard as teaching that an undisclosed function of the audio
`transducer was to support requesting the door status from a location in the
`garage where the door could easily be seen and then sending the status to the
`user's device.
`Now during the deposition Dr. Davis, Patent Owner's expert, made up
`two new theories that are not in any of the briefing from Patent Owner.
`Perhaps after I had asked these questions about why you would want to
`know the status if you're in the garage and could just see the door, he came
`up with two new things. He said well, it could be an HVAC system from
`Menard that makes this request, or it could be a Bolden security system that
`makes this request. Firstly, it's not in the briefing and when I asked him if
`it's discussed anywhere in their paragraph he said it isn't and in fact it's not
`discussed anywhere in Menard at all about requesting a status from either of
`those systems. So that addresses Patent Owner's argument about where else
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`this inquiry could come from. The only other examples they give, and
`there's nothing else in the record, are just not credible.
`What are their next arguments about why the inquiry cannot come
`from the pager? This is what they say and this is on slide 69. They say
`figure 8 from Menard further supports the interpretation that this inquiry is
`not a request over the network. So they're saying well, if you look at figure
`8 it supports their position that it's not from a network, and why is that?
`Because figure 8 does not show the network device transmitting any type of
`inquiry over the network.
`Well, let's look at figure 8. So this is on slide 71. This is figure 8, and
`I'll walk through what figure 8 does on the left. Got start, you then establish
`a communication channel in yellow. That's the pager establishing a
`communication channel with the garage door system. You then receive the
`position. It goes and grabs the position. It then notifies the user in blue of
`the door position. It then presents the user with some control options in
`green. It receives a user selection to open or close the door in purple, but
`then encodes the command in red and transmits the comma
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