`
`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. IPR2017-01546
`
`Patent No. 7,224,275
`
`_____________________________________________________________
`
`
`PETITION FOR INTER PARTES REVIEW OF
`
`U.S. PATENT NO. 7,224,275
`
`(CLAIMS 1, 4-6, 9-11, 14-15, 21-22, and 24-28)
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`

`

`
`
`I. 
`II. 
`III. 
`IV. 
`V. 
`
`VI. 
`VII. 
`VIII. 
`
`IX. 
`
`Case No. IPR2017-01546
`Patent No. 7,224,275
`
`Contents
`
`INTRODUCTION ...................................................................................... 1 
`MANDATORY NOTICES ........................................................................ 1 
`IDENTIFICATION OF CLAIMS AND GROUNDS ................................ 2 
`CERTIFICATION AND FEES .................................................................. 3 
`THE BOARD SHOULD NOT DENY THIS PETITION UNDER
`35 U.S.C. §325(D) ...................................................................................... 5 
`BACKGROUND ...................................................................................... 13 
`LEVEL OF SKILL ................................................................................... 18 
`CLAIM CONSTRUCTION ..................................................................... 18 
`A. 
`“movable barrier interface” ................................................................ 19 
`B. 
`“a controller having a plurality of potential operational status
`conditions defined, at least in part, by a plurality of operating
`states” ................................................................................................. 19 
`“operating states” ............................................................................... 21 
`“at least relatively unique” ................................................................. 22 
`“at least one of” .................................................................................. 23 
`“transmitter control means” ............................................................... 24 
`ARGUMENT ............................................................................................ 27 
`A.  GROUND #1: Claims 1, 4-6, 9-11, 14-15, 21-22, and 24-28
`are anticipated by Kikuya ................................................................... 27 
`1. 
`Claim 1 .................................................................................... 27 
`2. 
`Claim 4 .................................................................................... 47 
`3. 
`Claim 5 .................................................................................... 48 
`4. 
`Claim 6 .................................................................................... 49 
`5. 
`Claim 9 .................................................................................... 50 
`6. 
`Claim 10 .................................................................................. 52 
`7. 
`Claim 11 .................................................................................. 53 
`8. 
`Independent claim 14 ............................................................. 54 
`
`C. 
`D. 
`E. 
`F. 
`
`
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`ii
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`Case No. IPR2017-01546
`Patent No. 7,224,275
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`
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`9. 
`Claim 15 .................................................................................. 61 
`10.  Claim 21 .................................................................................. 62 
`11.  Claim 22 .................................................................................. 65 
`12.  Claim 24 .................................................................................. 65 
`13.  Claim 25 .................................................................................. 74 
`14.  Claim 26 .................................................................................. 74 
`15.  Claim 27 .................................................................................. 76 
`16.  Claim 28 .................................................................................. 77 
`CONCLUSION ........................................................................................ 80 
`X. 
`CERTIFICATION OF COMPLIANCE WITH TYPE-VOLUME
`LIMITS .................................................................................................... 81 
`CERTIFICATE OF SERVICE ........................................................................... 82 
`
`
`
`
`iii
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`

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`Case No. IPR2017-01546
`Patent No. 7,224,275
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`EXHIBIT LIST
`
`EXHIBITS FILED BY PETITIONER
`
`Ex.1001
`
`U.S. Patent No. 7,224,275
`
`Ex.1002
`
`Patent Prosecution History of U.S. Patent No. 7,224,275
`
`Ex.1003
`
`Japanese Application Disclosure No. P2001-349141A to Kikuya
`(Japanese)
`
`Ex.1004
`
`Japanese Application Disclosure No. P2001-349141A to Kikuya
`(English translation with certification)
`
`Ex.1005
`
`PTAB Order re Institution for IPR2016-01772
`
`Ex.1006
`
`PTAB Order re Institution for IPR2016-01774
`
`Ex.1007
`
`Claim Construction Order in Chamberlain Group, Inc. v.
`Techtronic Industries Co., Ltd. et al, N. D. Il., 1-16-cv-06097
`(D.I. 339)
`
`Ex.1008
`
`Declaration of Stuart Lipoff Regarding Invalidity of U.S. Patent
`No. 7,224,275
`
`Ex.1009
`
`Curriculum Vitae of Stuart Lipoff
`
`iv
`
`
`
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`

`

`Case No. IPR2017-01546
`Patent No. 7,224,275
`
`Ex.1010
`
`Patent Prosecution History of U.S. Patent No. 7,071,813 to
`Fitzgibbon
`
`Ex.1011
`
`Japanese Application Disclosure No. P2001-349141A to Kikuya
`(English translation)
`
`Ex.1012
`
`Patent Owner’s Responsive Brief, Chamberlain Group, Inc. v.
`Techtronic Industries Co., Ltd. et al, CAFC-16-2713
`
`Ex.1013
`
`Ex.1014
`
`Ex.1015
`
`Ex.1016
`
`Patent Owner’s Supplemental Claim Construction Brief,
`Chamberlain Group, Inc. v. Techtronic Industries Co., Ltd. et al,
`ILND-1-16-cv-06097 D.I. #285
`
`June 10, 2016 Decl. of T. Rhyne, Chamberlain Group, Inc. v.
`Techtronic Industries Co., Ltd. et al, ILND-1-16-cv-06097 D.I.
`#17
`
`August 25, 2016 Decl. of T. Rhyne, Chamberlain Group, Inc. v.
`Techtronic Industries Co., Ltd. et al, ILND-1-16-cv-06097 D.I.
`#76
`
`August 29, 2016 Transcript of Proceedings - Preliminary
`Injunction Hearing Before The Honorable Harry D.
`Leinenweber, Chamberlain Group, Inc. v. Techtronic Industries
`Co., Ltd. et al, ILND-1-16-cv-06097
`
`Ex.1017
`
`Patent Owner’s Responsive Claim Construction Brief,
`Chamberlain Group, Inc. v. Techtronic Industries Co., Ltd. et al,
`ILND-1-16-cv-06097 D.I. #172
`
`Ex.1018
`
`Complaint, Chamberlain Group, Inc. v. Techtronic Industries
`Co., Ltd. et al, ILND-1-16-cv-06097 D.I. #1
`
`v
`
`
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`

`

`Case No. IPR2017-01546
`Patent No. 7,224,275
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`Ex.1019
`
`Patent Owner’s Preliminary Response, IPR2016-01772, Paper 18
`
`Ex.1020
`
`U.S. Patent No. 7,071,813
`
`Ex.1021
`
`Patent Owner’s Notice of Voluntary Dismissal before
`Petitioner’s Appearance, Chamberlain Group, Inc. v. Techtronic
`Industries Co. Ltd. et al, ILND-1-16-cv-05544 D.I. #18.
`
`
`
`vi
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`Case No. IPR2017-01546
`Patent No. 7,224,275
`
`
`
`I.
`
`INTRODUCTION
`
`Petitioner requests Inter Partes Review (“IPR”) of claims 1, 4-6, 9-11, 14-
`
`15, 21-22, and 24-28 (the “Challenged Claims”) of U.S. Patent No. 7,224,275 to
`
`James J. Fitzgibbon (“ʼ275 patent,” Ex.1001), purportedly owned by The
`
`Chamberlain Group, Inc. (“Patent Owner”).
`
`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 ʼ275 patent is asserted against Petitioner in The
`
`Chamberlain Group., Inc. v. Techtronic Industries Co. Ltd. et al., No. 16-cv-06097
`
`(N.D. Ill. filed Jun. 10, 2016). Petitioner also identifies other patents that Patent
`
`Owner is presently asserting against Petitioner in District Court and ITC
`
`proceedings: U.S. Patent 7,635,966 is also involved in The Chamberlain Group.,
`
`Inc. v. Techtronic Industries Co. Ltd. et al., No. 16-cv-06097 (N.D. Ill. filed Jun.
`
`10, 2016), and U.S. Patent Nos. 7,339,336, 7,161,319, and 7,196,611 are 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
`
`
`
`1
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`

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`Case No. IPR2017-01546
`Patent No. 7,224,275
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`
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`(instituted Aug. 3, 2016).
`
`In addition, Petitioner has filed two previous Petitions for IPR challenging
`
`these and/or other claims of the ’275 patent, IPR2016-01772 (claims 1-6, 9-12, and
`
`14-23) and IPR2016-01774 (claims 24-31). The references used in those petitions
`
`are different from the subsequently-located references used herein.
`
`Additionally, Petitioner has filed IPR petitions on the following
`
`Chamberlain Group patents: U.S. Patent 6,998,977 (IPR2017-01132 & IPR2017-
`
`01137), U.S. Patent 7,635,966 (IPR2016-01846, IPR2017-01040, & IPR2017-
`
`01042), U.S. Patent 7,171,319 (IPR2017-00126), U.S. Patent 7,196,611 (IPR2017-
`
`00073 & IPR2017-00214), and U.S. Patent 7,339,336 (IPR2017-00432).
`
`Lead Counsel: Dion Bregman (Reg. No. 45,645); Back-up Counsel: Jason
`
`White (Reg. No. 42,223), and Michael J. Lyons (Reg. No. 37,386).
`
`Service: Service of any documents may be made at Morgan, Lewis &
`
`Bockius LLP, 1400 Page Mill Road, Palo Alto, CA, 94304 (Telephone:
`
`650.843.4000; Fax: 650.843.4001).
`
`Petitioner consents to e-mail service at: TechtronicIPRs@morganlewis.com.
`
`III.
`
`IDENTIFICATION OF CLAIMS AND GROUNDS
`ʼ275 Patent: The challenged patent was filed on May 29, 2003, does not
`
`claim priority to an earlier date, and is subject to the pre-AIA provisions of 35
`
`
`
`2
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`

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`Case No. IPR2017-01546
`Patent No. 7,224,275
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`
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`U.S.C. § 102, referenced below.
`
`Kikuya: Japanese Patent Application Disclosure No. P2001-349141A titled
`
`“COMMUNICATION SYSTEM AND TRANSMISSION APPARATUS OF
`
`SWITCHGEAR” to Kazuo Kikuya et al. (“Kikuya,” Ex.1003) was published
`
`December 21, 2001, and is prior art under §102(b). A certified English translation
`
`of Ex.1003 is provided as Ex.1004. An additional English translation of Ex.1003
`
`is provided as Ex.1011.1
`
`
`
`Petitioner asks the Board to find the Challenged Claims: (1) unpatentable as
`
`anticipated by Kikuya.
`
`IV. CERTIFICATION AND FEES
`Petitioner certifies the ’275 patent is available for IPR and that Petitioner is
`
`not barred or estopped from requesting this IPR on the grounds identified herein.
`
`Patent Owner filed suit in the District of Illinois on May 24, 2016 and served
`
`
`1 An English translation of Kikuya was obtained for the District Court action. A
`
`second English translation was obtained and certified as per the PTO’s
`
`requirements. Unless otherwise noted, all Kikuya citations are to the certified
`
`English translation, but both translations are being provided to the Board and
`
`Patent Owner.
`
`
`
`3
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`Petitioner with the Complaint on May 25th. After a judge was assigned, on June
`
`10th, Patent Owner sua sponte moved to dismiss that Complaint without Prejudice
`
`and filed a second Complaint, serving Petitioner on June 13, 2016.2 Patent
`
`Owner’s second action is not a continuation of its first action. As Patent Owner
`
`admitted when noticing its dismissal, “no defendant has served an answer or
`
`motion for summary judgment.” Notice of Dismissal, Ex.1021. Indeed, Petitioner
`
`never even appeared in the first case. As the Board has explained, “Federal courts
`
`treat a civil action that is dismissed without prejudice as ‘something that de jure
`
`never existed.’” Callidus v. Versata, CBM2013-00054 Paper 25 (PTAB April 9,
`
`2014) (quoting Holloway v. U.S., 60 Fed. Cl. 254, 261 (2004), aff’d 143 F. App’x
`
`313 (Fed. Cir. 2005)); see also Graves v. Principi, 294 F.3d 1350, 1356 (Fed. Cir.
`
`2002) (“The dismissal of an action without prejudice leaves the parties as though
`
`the action had never been brought.”). Accordingly, the filing of the May 24, 2016
`
`Complaint does not trigger the 1-year bar under 35 U.S.C. § 315(b). See Macuto
`
`U.S.A. v. BOS GmbH & KG, IPR2012-00004, Paper 18 at 14-16 (PTAB, Jan. 14,
`
`2013) (dismissal without prejudice nullified the effect of service for purposes of 35
`
`U.S.C. § 315(b)).
`
`Any additional fees for this IPR may be charged to Deposit Account No. 50-
`
`2 This date triggers the one-year bar under §315(b).
`
`
`
`4
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`0310 (Order No. 011721-0033).
`
`V. THE BOARD SHOULD NOT DENY THIS PETITION UNDER 35
`U.S.C. §325(d)
`
`Although Petitioner previously filed IPR petitions challenging the ’275
`
`patent (IPR2016-01772 and IPR2016-01774)3, the Petitioner first learned of the
`
`prior art relied upon herein after the Federal Circuit interpreted an important claim
`
`term, after the Board denied institution based on those earlier petitions, and after
`
`the district court provided a subsequent construction of this term. In other words,
`
`the asserted prior art came to light only after the interpretation of the claims at
`
`issue had been repeatedly modified by the courts, spurring a search for new and
`
`different prior art references.
`
`In June 2016, Patent Owner filed a motion for preliminary injunction in the
`
`related district court proceedings based on two patents, including the ’275 Patent.
`
`Petitioner reviewed the ’275 Patent and its file history, and in June 2016, engaged
`
`
`3 The two IPR Petitions, IPR2016-01772 and IPR2016-01774, are not serial
`
`petitions. Rather, due to the number of claims in the ’275 Patent, two petitions
`
`were necessary in order to address all of the challenged claims. For example,
`
`IPR2016-01772 addressed claims 1-6, 9-12, & 14-23; IPR2016-01774 addressed
`
`claims 24-31. These Petitions were filed on the same day.
`
`
`
`5
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`Case No. IPR2017-01546
`Patent No. 7,224,275
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`
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`a highly-regarded search firm to perform a prior art search. Based on the prior art
`
`located by this search, Petitioner filed two prior IPR petitions, each directed to
`
`different claims of the ’275 Patent. In August 2016, Patent Owner argued for the
`
`first time on in a reply brief in the district court that the ’275 Patent was directed to
`
`a “self-aware” controller and that status conditions were “of the controller itself.”
`
`These arguments had not been previously raised in Patent Owner’s opening
`
`preliminary injunction motion.
`
`In September 2016, rather than strike Patent Owner’s new argument, the
`
`District Court embraced it and held that the ’275 Patent recited a “controller” that
`
`was “self-aware, i.e., that it did not rely upon any external sensors to obtain the
`
`status conditions of the GDO, and which it was able to transmit upon request.”
`
`Chamberlain Group v. Techtronic Indus., 2016 U.S.Dist. LEXIS 129809 *9 (N.D.
`
`Ill. Sept. 15, 2016). Petitioner appealed.
`
`On January 25, 2017, the Federal Circuit vacated the District Court’s claim
`
`construction and specifically held that the “controller [may] rely[] upon any
`
`external sensors to obtain status conditions.” The Chamberlain Grp., Inc. v.
`
`Techtronic Indus. Co., No. 2016-2713, 2017 WL 360561, at *4 (Fed. Cir. 2017)
`
`(emphasis added). Based on this broader interpretation, the Federal Circuit held
`
`
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`6
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`Case No. IPR2017-01546
`Patent No. 7,224,275
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`that “TTI has raised a substantial question of invalidity.” Id. at *6. Petitioner
`
`provided a copy of this Order to the PTAB in connection with the earlier petitions.
`
`On February 21, 2017, the Board denied institution of Petitioner’s earlier
`
`IPR petitions. See Ex.1005 and Ex.1006. In doing so, the Board adopted a new
`
`construction, determining that the BRI of transmitted conditions are “present status
`
`condition[s] of the controller’s operation” which include “actions of the controller”
`
`or “conditions being experienced by the controller.” See Ex. 1005 p14.
`
`On February 23, 2017, Petitioner commissioned a new search firm to look
`
`for references disclosing features consistent with the new construction adopted by
`
`the Federal Circuit. This new search located the Kikuya reference and, on April
`
`12, 2017, Petitioners received this reference from the searcher. Upon review,
`
`Petitioner discovered that Kikuya was §102(b) anticipatory art to each of the
`
`relevant claims of the ’275 patent.
`
`In the interim, on April 7, 2017, the District Court issued its Order
`
`construing the claims. The District Court acknowledged the Board’s construction,
`
`but disagreed and adopted a broader construction, finding that:
`
`[T]he prosecution history reveals that ‘operating states’ defining status
`conditions ‘of the controller’ can refer to states of or actions taken by non-
`controller components of the system, so long as the controller assimilates
`them by self-awareness or is provided them by, for example, external
`
`
`
`7
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`Patent No. 7,224,275
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`
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`sensors. Thus, the Court rejects Defendants’ attempt to construe ‘operating
`states’ as ‘actions that can be performed by the controller at a particular
`time.’
`Ex.1007 at p37.4
`
`As shown above, the construction of the ’275 Patent has shifted at least four
`
`times.
`
`As the Kikuya reference was found by searching based on the court’s
`
`constructions first articulated after Petitioner’s initial IPRs, and was not received
`
`April 12, 2017, Petitioner could not have asserted this reference in the IPR
`
`petitions filed in September 2016. Further, Petitioner was unable to find Kikuya
`
`earlier despite having made a more than reasonably diligent prior art search in
`
`2016 using a top prior art search firm. Petitioner could not have conducted a
`
`search in 2016 based on the Federal Circuit’s broader claim construction or the
`
`District Court’s subsequent construction because these construction orders only
`
`issued in 2017. The Federal Circuit’s construction necessitated a new prior art
`
`search which only returned results after the Board had issued its decision in
`
`
`4 The District Court’s construction is broader than the Board’s construction, an
`
`outcome that the Federal Circuit has held is improper. Facebook, Inc. v.
`
`Pragmatus AV, LLC, 582 F. App'x 864, 869 (Fed. Cir. 2014).
`
`
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`8
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`Case No. IPR2017-01546
`Patent No. 7,224,275
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`
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`the earlier IPRs. As a result of that search, Kikuya was identified and determined
`
`to be §102(b) anticipatory art to each of the relevant claims of the ’275 patent. As
`
`such, it is respectfully submitted that Petitioner could not reasonably have been
`
`expected to raise Kikuya in connection with the earlier IPRs.5
`
`Moreover, “none of the grounds of unpatentability in the current Petition
`
`rely upon exactly the same combination of prior art as the grounds of
`
`unpatentability asserted against the same claims in the [previous petition].” Valeo
`
`N. Am., Inc. v. Magna Elecs., Inc., IPR2014-01203, Paper 13 at 11 (PTAB Jan. 28,
`
`2015). In Valeo, the PTAB went forward with the new petitions even though it
`
`relied on some of the same prior art as earlier petitions, because the combination
`
`was new. Here, none of the references relied on in the earlier petitions are used in
`
`this Petition. Rather, this Petition relies on only one ground, asserting Kikuya
`
`(Ex.1003) as anticipating all challenged claims. See Baker Hughes Inc. v. Packers
`
`Plus Energy Services, Inc., IPR2016-01452, 2017 WL 506461, at *3 (P.T.A.B.
`
`Feb. 6, 2017) (allowing subsequent petition where grounds were different).
`
`
`5 The “reasonably could have raised” standard only applies in the case of estoppel
`
`after a Final Written Decision. See §315(e)(1). Here, the Board never reached a
`
`Final Written Decision.
`
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`Further, any policy or equity concerns regarding the filing of a subsequent
`
`Petition are not implicated here. See Butamax Advanced Biofuels LLC v. Gevo
`
`Inc., IPR2014-00581, Paper 8 at 12-13 (P.T.A.B. Oct. 24, 2014) (“Allowing
`
`similar, serial challenges to the same patent, by the same petitioner, risks
`
`harassment of patent owners and frustration of Congress’s intent in enacting the
`
`[AIA].”). The sole ground asserted in this Petition is not similar to any of the prior
`
`art relied upon in the earlier petitions, and the new art was not located despite a
`
`diligent search. See Valeo, Paper 13 at 11 (instituting subsequent IPR based on
`
`different combinations of art); Oxford Nanopore Tech., Ltd. v. Univ. of Wash.,
`
`IPR2015-00057, Paper 10 at 21 (P.T.A.B. Apr. 27, 2015) (same).
`
`Patent Owner cannot reasonably claim prejudice given that its positions have
`
`continued to shift. Petitioner’s earlier IPR Petitions adopted the same argument
`
`Patent Owner’s expert made in the district court case. For example, Patent Owner
`
`argued that the controller “knowing whether the door is open or the door is closed”
`
`is required. Aug. 25, 2016 Decl. of Patent Owner’s expert T. Rhyne, Ex.1015,
`
`¶54; see also Aug. 29, 2016 Transcript, Ex.1016 at 532:19-21 (“[A]n operational
`
`status condition would be knowing the status o[f] the door or, alternatively,
`
`
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`10
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`Case No. IPR2017-01546
`Patent No. 7,224,275
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`
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`knowing the status of the lamp.”)6 Additionally as explained above, the claim
`
`construction has shifted four times, owing at least partially to Patent Owner’s
`
`inconsistent positions taken in separate forums.
`
`For example, in early June 2016, Patent Owner asserted that door position
`
`discloses “the status condition defined, at least in part, by at least two operating
`
`states.” See June 10, 2016 Decl. of T. Rhyne, Ex.1014¶103 (“[T]he Accused…
`
`Product includes a controller… ha[ving] at least two operational status conditions
`
`in the form of the condition when the controller has raised the associated garage
`
`door (‘OPEN’) and the condition where the controller has lowered the associated
`
`garage door (‘CLOSED’).”); see also CGI District Court Complaint, Ex.1018 at
`
`p22-23.
`
`
`6 Petitioner proposed that the patent requires “a controller that knows a plurality of
`
`potential operational status conditions,” in the first IPRs. See Ex.1005 p8. Despite
`
`Patent Owner’s expert arguing for “knowing” in August 2016, see Ex.1016 at
`
`532:19-21, in its Preliminary Response to the IPRs, “Patent Owner disagree[d]
`
`with [Petitioner’s] proposed claim construction because it essentially replaces the
`
`claim term ‘having’ with ‘knowing.’” Ex.1005 p9. The Board rejected
`
`Petitioner’s construction. Id. at pp9-10.
`
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`Case No. IPR2017-01546
`Patent No. 7,224,275
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`On November 8, 2016, Patent Owner stated that “[T]he plain claim language
`
`shows that the term is referring to a controller that itself has multiple possible
`
`operational status conditions that are defined by multiple operating states”
`
`otherwise “[n]o construction [is] necessary.” Patent Owner Responsive Claim
`
`Construction Brief, Ex.1017 at 12 (emphasis Patent Owner’s).
`
`One week later, Patent Owner asserted to the Federal Circuit that the District
`
`Court’s requirement that this limitation required a “self-aware” controller was
`
`correct. Chamberlain’s Federal Circuit Responsive Brief, Ex.1012 at p32; see id.
`
`p28 (“The plain language of claim 1 of the ’275 patent requires a ‘controller
`
`having potential operational status conditions,’ not a controller that can
`
`determine actual conditions of external sensors”) (emphasis added). As
`
`discussed above, in late January 2017, the Federal Circuit disagreed with Patent
`
`Owner and vacated the District Court’s earlier construction.
`
`On December 23, 2016, to distinguish the prior art from the earlier IPRs,
`
`Patent Owner then asserted that “a controller knowing a plurality of potential
`
`operational status conditions” did not meet the limitation. Patent Owner’s
`
`Preliminary Response, IPR2016-01772 (Ex.1019), p24 (emphasis Patent Owner’s).
`
`On February 27, 2017, Patent Owner argued that “‘a controller having a
`
`plurality of potential operational status conditions defined, at least in part, by a
`
`
`
`12
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`plurality of operating states’ should be construed as ‘a controller having two or
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`more potential operational status conditions defined, at least in part, by two or
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`more operating states, where the controller can be self-aware of such operational
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`status conditions or the controller can be provided with externally developed
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`information regarding the condition’” Patent Owner’s Supplemental Claim
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`Construction Briefing, Ex.1013 (underlining Patent Owner’s).
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`Accordingly, as the Patent Owner has shifted proposed constructions with
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`every ruling, Patent Owner should expect that Petitioner would search for different
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`prior art based upon these shifting constructions and challenge the patent as most-
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`recently construed by Patent Owner. Accordingly, this Petition neither harasses
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`Patent Owner nor frustrates Congressional intent and the Board should not exercise
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`its authority to preclude this Petition under §325(d). See, e.g., Amendments to the
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`Rules of Practice, 81 Fed.Reg. 18750, 18759 (Apr. 1, 2016).
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`VI. BACKGROUND
`The ʼ275 patent describes a movable barrier operator, such as a garage door
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`opener. Ex.1001 Abstract, 2:55-3:5. The movable barrier operator comprises a
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`controller (yellow), movable barrier interface (red), and transmitter (orange), and
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`optionally receives information from one or more sensors (blue) to notify it of the
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`statuses (states) of, inter alia, movable barriers:
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`Id. Fig.
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`1 (highlighhting and aannotationns added thrroughout uunless otheerwise noteed).
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`The moovable barrier operatoor transmits a “status
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`condition
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`operatioonal status condition of the movvable barriier operatoor, such as wwhether thhe
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`movable barrier (ee.g., a garaage shutter)) is open oor closed.
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`DDuring prossecution, thhe ’275 paatent appliccation was
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`rejected ovver prior aart
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`that utillized sensoors to identtify operatiional statuss conditionns of a garaage door
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`. Patent OOwner did nnot disputee that the
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`opener. Ex.1002 ppp159-1622, 167-169
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`sensor-bbased priorr art taughtt transmittiing operatiional statuss conditionns of a garaage
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`door oppener, and iinstead ammended the claims to rrequire “ann identifierr that is at
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`least rellatively unique to thee movable bbarrier opeerator, suchh that the sstatus
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`conditioon signal suubstantially uniquelyy identifiess the movaable barrierr operator.””
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`Ex.10022 p36 (empphasis addeed throughhout unlesss otherwisee noted). Inn other woords,
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`the “status condition signal” identifies the specific movable barrier operator that is
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`transmitting the signal so that a receiving device can distinguish the movable
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`barrier operator from nearby movable barrier operators. Id. 2:55-3:5. Patent
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`Owner also argued that the presence of the identifier distinguished the claims over
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`the prior art: “[t]he applicant teaches and discloses something quite different [from
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`the cited prior art]. First, the applicant provides teachings with respect to a new
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`movable barrier...[and] provision of a substantially unique identifier that the
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`movable barrier operator provides in conjunction with its status information ….”
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`Ex.1002 p47. Patent Owner explained that the substantially “unique identifier”
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`allows “a receiver [of the status condition signal] to differentiate this information
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`[from] other similar information as might be received [from] another such movable
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`barrier operator (as when, for example, a given garage has two garage doors
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`controlled by separate movable barrier operators).”7 Id. pp47-48. The application
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`was subsequently allowed without further arguments or amendments. Id. p8.
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`7 In a separate patent application filed by the same inventor on the same day as
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`’275, the inventor stated that the use of such identifiers were “well understood in
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`the art.” See Ex.1020 4:47-53. Petitions reserve the right to assert inequitable
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`conduct allegations in other fora.
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`Kikuya (Ex.1003) was not considered by the Patent Office during
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`prosecution. Kikuya discloses a system that transmits (e.g., to a wireless remote
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`control device) position states of a shutter, such as a shutter barrier for a garage.
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`See Kikuya Fig. 11 below depicting a garage shutter. Kikuya transmits position
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`states of the shutter including whether the shutter is fully open, fully closed, or
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`partially open, and transmits status conditions of the controller for the shutter-
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`moving apparatus, such as whether the controller is currently moving the shutter,
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`and/or is experiencing an abnormal condition in performing its shutter-moving
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`operations. See Ex.1003 ¶¶0247-49. Just like the ʼ275 patent, the system disclosed
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`in Kikuya includes a controller, sensors, a movable barrier interface (i.e., a motor
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`to move the shutter), and a transmitter transmitting the status to a remote device.
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`See Kikuya Figure 11, below, showing the remote device (blue), the transmitter
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`(orange), and the movable barrier/interface for an (open) garage shutter (yellow).
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`Ex.10033 Figure 111 (coloringg added unless otherwwise noted)).
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`KKikuya disccloses that informatioon that corrrresponds tto any operrating
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`conditioon existingg “at that timme” (e.g., opening thhe shutter,
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`“abnormmal occurreence”) willl be wireleessly sent too the remoote device.
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`closing thee shutter, oor an
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`¶¶0247--48.
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`MMoreover, jjust like thhe ʼ275 pateent, Kikuyya disclosess transmisssion of a sttatus
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`conditioon signal thhat includees an identiifier that unniquely ideentifies thee movable
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`barrier oopener (i.ee., a storefrront or garaage shutterr operationn apparatuss) providin
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`the statuus informaation. Ex.1
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`003¶0092. For exammple, Kikuuya describbes a 3-bit
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`“shutterr apparatuss number…… to unambiguouslyy designatee seven shuutter
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`apparatus[es].” Id.; Ex.1008¶40.
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`VII. LEVEL OF SKILL
`A person of ordinary skill in the art (“PHOSITA”) at the time of the alleged
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`invention would have had at least an undergraduate degree in electrical
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`engineering, or equivalent education, and one to two years of work experience in
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`the fields of:
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`- wireless communication systems, and
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`- systems for access control or automated door systems,
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`or equivalent work experience or training. Ex.1008¶30.
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`VIII. CLAIM CONSTRUCTION
`In this forum, claims are given their broadest reasonable interpretation
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`(“BRI”) in light of the specification. On April 7, 2017, the District Court issued its
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`Markman order, construing seven of the patent’s terms under the narrower Phillips
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`standard.8 See Chamberlain Grp., Inc. v. Techtronic Indus. Co., 2017 WL
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`8 The Federal Circuit has explained that the Broadest Reasonable Interpretation of
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`a claim term can never be narrower than the Phillips standard used in District
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`Court Markman hearings. Facebook, Inc. v. Pragmatus AV, LLC, 582 F. App'x
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`864, 869 (Fed. Cir. 2014) (“The broadest reasonable interpretation of a claim term
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`1304559 (N.D. Ill. Apr. 7, 2017).
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` “movable barrier interface”
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`A.
`The patent explains that a “movable barrier interface 12 serves to selectively
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`impart motion to the movable barrier 13...and/or to restrict or prohibit such
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`motion” and that “in many cases, a motor or other motion-imparting mechanism is
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`utilized.” Ex.1001 3:41-50; see id. 1:21-2