UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ONE WORLD TECHNOLOGIES, INC.
`D/B/A TECHTRONIC INDUSTRIES POWER EQUIPMENT,
`Petitioner
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`v.
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`THE CHAMBERLAIN GROUP, INC.
`Patent Owner
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`Case IPR2017-01546
`Patent 7,224,275
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`Case IPR2017-01546
`Attorney Docket No: 39907-0006IP3
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`TABLE OF CONTENTS
`I. 
`INTRODUCTION ............................................................................................ 1 
`II.  STATEMENT OF RELIEF REQUESTED .................................................. 1 
`III.  THE PETITION IS TIME-BARRED UNDER 315(B) ................................ 2 
`A.  Complaints dismissed without prejudice nonetheless trigger the § 315(b)
`one-year bar if a continuous chain of assertion of the patent exists ...................... 4 
`B.  A continuous chain of assertion of the ’275 patent against Petitioner exists
`from the date the First Complaint was filed .......................................................... 5 
`C.  Because the Petition is time-barred, the Board need not reach the merits of
`the case ................................................................................................................... 7 
`IV.  THE BOARD SHOULD EXERCISE ITS DISCRETION UNDER 35
`U.S.C. § 314(A) AND DENY THE PETITION ..................................................... 8 
`A.  Petitioner’s previous IPR petitions are directed to the same claims of the
`’275 patent as the present Petition ....................................................................... 10 
`B.  Petitioner should have known of the Kikuya reference when it filed the
`previous IPR petitions .......................................................................................... 10 
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`1.  Petitioner’s initial IPR petitions were based on effectively the same claim
`construction that supposedly necessitated the new prior art search that
`uncovered Kikuya ............................................................................................ 11 
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`2.  Petitioner’s remaining justifications for not finding Kikuya in its initial
`search are conclusory and unsupported by evidence ....................................... 12 
`C.  Petitioner had already received Patent Owner’s preliminary responses and
`the Board’s decisions on whether to institute review for its previous IPR
`petitions when it filed the present Petition ........................................................... 14 
`D.  The Board should not expend its finite resources on serial challenges to the
`same claims of the same patent ............................................................................ 15 
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`Case IPR2017-01546
`Attorney Docket No: 39907-0006IP3
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`V.  THE ’275 PATENT ....................................................................................... 15 
`VI.  CLAIM CONSTRUCTION .......................................................................... 19 
`A.  Petitioner incorrectly concludes that the Board “must” modify its previous
`claim constructions based on those adopted by the district court ........................ 20 
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`1.  The Board is not bound by the district court’s claim construction .......... 21 
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`In seeking to restrict the Board’s authority, Petitioner mischaracterizes
`2. 
`Federal Circuit case law ................................................................................... 22 
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`3.  The Board’s constructions were adopted based on the Federal Circuit’s
`claim construction decision on the ’275 patent ............................................... 24 
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`4.  Petitioner provides no explanation or evidence of why its proposed
`constructions are proper under BRI ................................................................. 24 
`VII. PETITIONER HAS FAILED TO DEMONSTRATE THAT IT IS
`REASONABLY LIKELY THAT AT LEAST ONE CLAIM OF THE ’275
`PATENT IS UNPATENTABLE ........................................................................... 25 
`A.  Ground 1 - The Petition fails to establish a reasonable likelihood that at
`least one claim is anticipated by Kikuya ............................................................. 25 
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`1.  Ground 1 is deficient because Kikuya does not disclose the claimed
`“status condition signal” .................................................................................. 25 
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`2.  Ground 1, an anticipation ground, improperly mixes disclosure from
`distinct embodiments described in Kikuya ...................................................... 29 
`VIII.  CONCLUSION .......................................................................................... 34 
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`Case IPR2017-01546
`Attorney Docket No: 39907-0006IP3
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`LIST OF EXHIBITS
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`Description
`Exhibit No.
`CG-2001 Complaint, The Chamberlain Group v. One World Technologies
`Inc., et al., Case No.:1:16-cv-05544 (N.D. Ill.) (filed May 24, 2016)
`CG-2002 Proof of Service, Case No.: 1:16-cv-05544 (N.D. Ill.), Doc. No. 12
`(filed June 6, 2016)
`CG-2003 Notice of Dismissal, Case No.: 1:16-cv-05544 (N.D. Ill.), Doc. No.
`18 (filed June 10, 2016)
`CG-2004 Complaint, The Chamberlain Group v. One World Technologies
`Inc., et al., Case No.: 1:16-cv-06097 (filed June 10, 2016)
`CG-2005 Proof of Service, Case No.: 1:16-cv-06097 (N.D. Ill.), Doc. No. 22
`(filed June 13, 2016)
`CG-2006 Dismissal Order, Case No.: 1:16-cv-05544 (N.D. Ill.), Doc. No. 19
`(entered June 13, 2016)
`CG-2007 Chamberlain v. One World Tech. et al., Cases 2016-2713, 2017-
`1220 (Fed. Cir. 2017)
`CG-2008 Email exchange between Mark Rowe and Michael Rueckheim, May
`26, 2016
`CG-2009 Email exchange between Michael Rueckheim, Kathi Vidal, and
`Jason White, June 8, 2016 through June 11, 2016
`CG-2010 Attachment to email sent by Jason White to Michael Rueckheim and
`Kathi Vidal, June 8, 2016
`CG-2011 Email exchange between Michael Rueckheim, Kathi Vidal, and
`Jason White, June 10, 2016 through June 11, 2016
`CG-2012 Declaration of Michael Rueckheim
`CG-2013 Electronic Filing Receipt for Notice of Dismissal in Case 1:16-cv-
`5544
`CG-2014 Electronic Filing Receipt for Complaint in Case 1:16-cv-06097
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`Case IPR2017-01546
`Attorney Docket No: 39907-0006IP3
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`INTRODUCTION
`Pursuant to 37 C.F.R. § 42.107(a), the patent owner, The Chamberlain
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`I.
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`Group, Inc. (“Patent Owner”), hereby submits the following Preliminary Response
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`in response to the Petition for Inter Partes Review (“IPR”) of U.S. Patent No.
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`7,224,275 (“the ’275 patent”).
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`The ’275 patent, entitled “Movable Barrier Operators Status Condition
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`Transception Apparatus And Method,” contains 31 claims, of which claims 1, 14,
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`and 24 are independent. The Petition proposes one ground of unpatentability
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`(anticipation by Kikuya, hereinafter “Ground 1”) with respect to claims 1, 4-6, 9-
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`11, 14-15, 21-22, and 24-28 of the ’275 patent (hereinafter the “Challenged
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`Claims”).
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`The Petition is deficient, and should be denied in whole.
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`II.
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`STATEMENT OF RELIEF REQUESTED
`Patent Owner respectfully requests the Board to deny the Petition for the
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`following reasons:
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`(1) The Petition is time-barred under 35 U.S.C. § 315(b), because a
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`continuous chain of assertion of the ’275 patent against Petitioner exists going
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`back more than one year from the filing date of the Petition.
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`(2) The Board should exercise its discretion under 35 U.S.C. § 314(a) and
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`deny the Petition because Petitioner has failed to show that the present Petition
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`1
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`deserves consideration in light of its previous IPR challenges directed to the same
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`Case IPR2017-01546
`Attorney Docket No: 39907-0006IP3
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`claims of the ’275 patent.
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` (3) Ground 1 is deficient because it fails to teach each and every element of
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`the Challenged Claims, and because it improperly mixes disclosure of multiple
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`embodiments from the Kikuya reference in an anticipation context.
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`Accordingly, for at least these reasons, the Petition is deficient and should be
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`denied.
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`III. THE PETITION IS TIME-BARRED UNDER 315(B)
`Under 35 U.S.C. § 315(b), “[a]n inter partes review may not be instituted if
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`the petition requesting the proceeding is filed more than 1 year after the date on
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`which the petitioner, real party in interest, or privy of the petitioner is served with a
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`complaint alleging infringement of the patent.” (Emphasis added).
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`In the present case, Petitioner admits that it was served with a complaint
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`alleging infringement of the ’275 patent (the “First Complaint”) on May 25, 2016.
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`Petition, pp. 3-4; see Ex. 2001 (complaint filed May 24, 2016); Ex. 2002, p. 1
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`(proof of service showing Petitioner was served May 25, 2016). The present
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`Petition was filed on June 12, 2017, more than one year after service of this First
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`Complaint. Thus, based solely on the statutory language of 35 U.S.C § 315(b), the
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`Petition is time-barred.
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`Petitioner argues that the Petition should be considered because the case
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`Case IPR2017-01546
`Attorney Docket No: 39907-0006IP3
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`arising from the First Complaint was dismissed without prejudice. See Petition,
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`pp. 3-4.1 Petitioner concludes that the First Complaint should be treated as if it
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`“never existed,” and that the June 13, 2016 service date for Patent Owner’s
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`subsequent complaint instead “triggers the one-year bar under §315(b).” See id. at
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`4. However, as described in greater detail below, in circumstances where, because
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`“there was a continuous chain of assertion of the involved patent going back more
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`than one year,” the date of the First Complaint controls for the purposes of the §
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`315(b) one-year bar regardless of its dismissal without prejudice. See Ford v.
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`Versata, IPR2017-00150, Paper 7 at 11 (PTAB May 1, 2017) (hereinafter “Ford”)
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`(emphasis added); Histologics, LLC v. CDx Diagnostics, Inc., IPR2014-00779, slip
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`op. at 5-6 (PTAB Sept. 12, 2014) (Paper 6)) (hereinafter “Histologics”). Thus, as
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`explained below, the Petition is time-barred under 35 U.S.C. § 315(b).
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`1 In the Notice of Dismissal, Patent Owner states its intention to “dismiss
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`and refile” the case “as two separate actions...in order to avoid burdening this
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`Court with any dispute over standing.” See Ex. 2003, p. 1. Patent Owner thus
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`refiled two new cases (each including two patents) to replace the original case
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`(which included four patents).
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`3
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`A. Complaints dismissed without prejudice nonetheless trigger the §
`315(b) one-year bar if a continuous chain of assertion of the patent
`exists
`In determining whether service of a complaint triggers the § 315(b) one-year
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`bar where the underlying case is dismissed without prejudice, the relevant inquiry
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`is whether “there was a continuous chain of assertion of the involved patent” from
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`the service of the initial complaint. See Ford at 11; Histologics at 5; eBay, Inc. v.
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`Adv. Auctions LLC, Case IPR2014-00806, slip op. at 6–8 (PTAB Sept. 25, 2014)
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`(Paper 14) (hereinafter “eBay”); Apple, Inc. v. Rensselaer Polytechnic Inst., Case
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`IPR2014-00319 (PTAB June 12, 2014) (Paper 12), reh’g denied (Paper 14)). For
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`example, in Ford v. Versata, a complaint alleging infringement of a particular
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`patent was filed in the Eastern District of Texas, followed by a counterclaim
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`alleging infringement of the same patent in an existing case in the Eastern District
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`of Michigan a five months later. See Ford at 3. The earlier Texas case was
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`dismissed without prejudice in favor of the later-filed Michigan case. See id. Ford
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`filed its IPR petition more than one year after it was served with the initial
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`complaint in the Texas case, but less than one year after service of the infringement
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`counterclaim in the Michigan case. See id. Ford argued the earlier Texas case was
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`“irrelevant for purposes of § 315(b),” because “[t]he dismissal of an action without
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`prejudice leaves the parties as though the action had never been brought.” See id.
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`at 5. The Board disagreed, stating that “the relevant factor in determining whether
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`the earlier complaint ... is operative for purposes of § 315(b) is the continuous
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`Attorney Docket No: 39907-0006IP3
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`assertion of the patent against Ford.” Id. at 13. The Board cited several examples
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`of previous panels holding that “the § 315(b) bar applied to an earlier ... action”
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`that was dismissed without prejudice where “the parties remain engaged in a
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`dispute first raised in the [dismissed] complaint...that has been pending
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`continuously since [the dismissed] complaint was filed.” Id. at 12 (quoting
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`Histologics at 5) (citing eBay at 6–8; Apple, Inc. v. Rensselaer Polytechnic Inst.,
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`Case IPR2014-00319 (PTAB June 12, 2014) (Paper 12), reh’g denied (Paper 14)).
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`As described in greater detail below, such a “continuous chain of assertion”
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`of the ’275 patent exists in the present case going back to the service of the First
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`Complaint on May 25, 2016. Because this date is more than one year before its
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`filing date, the present Petition is thus time-barred under the § 315(b) one-year bar.
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`B. A continuous chain of assertion of the ’275 patent against
`Petitioner exists from the date the First Complaint was filed
`As noted above, Petitioner admits that it was served with the First Complaint
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`on May 25, 2016, more than one year before the present Petition was filed on June
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`12, 2017. Petition, pp. 3-4; see Ex. 2001 (complaint filed May 24, 2016); Ex.
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`2002, p. 1 (proof of service showing Petitioner was served May 25, 2016).
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`Because Patent Owner and Petitioner “parties remain engaged in a dispute first
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`raised in” the First Complaint “that has been pending continuously since” the First
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`Complaint “was filed,” the First Complaint “cannot be treated as if it never existed
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`for purposes of § 315(b).” Ford at 11-12 (citing Histologics at 5-6). Thus, the §
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`Attorney Docket No: 39907-0006IP3
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`315(b) one-year bar applies from the service date of the First Complaint and bars
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`the present Petition.
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`Seemingly recognizing this issue, Petitioner states that “Patent Owner’s
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`second action,” filed on June 10, 2016, “is not a continuation of its first action.”
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`Petition, p. 4. However, email exchanges between litigation counsel for Petitioner
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`and litigation counsel for Patent Owner in the district court case show that
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`substantive discussions between counsel for both parties continued uninterrupted
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`through the dismissal and immediate refiling of the case. See Ex. 2012, ¶ 2; Ex.
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`Ex. 2008-2011.
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`In addition, Petitioner conveniently ignores facts that show that a
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`“continuous chain of assertion” of the ’275 patent exists from the original service
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`date of May 25, 2016. For example, in the Notice of Dismissal of the First
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`Complaint, Patent Owner made clear its intention to “dismiss and refile” the case
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`“as two separate actions...in order to avoid burdening this Court with any dispute
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`over standing.” See Ex. 2003, p. 1; see also Ex. 2011, p. 1. Patent Owner, in fact,
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`did file the Second Complaint concurrently with its Notice of Dismissal of the First
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`Complaint on June 10, 2016. Ex. 2004, p. 1; see Ex. 2013 and Ex. 2014 (electronic
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`filing receipts showing that the Second Complaint was filed at “3:42pm CDT,” 31
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`minutes after the Notice of Dismissal, which was filed at “3:11pm CDT”). This
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`6
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`Second Complaint included infringement allegations identical to those in the First
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`Attorney Docket No: 39907-0006IP3
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`Complaint. Compare Ex. 2003, pp. 16-27 to Ex. 2001, pp. 26-37.
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`Accordingly, since May 25, 2016 when Petitioner was served with the First
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`Complaint, there has not been a single day during which Petitioner and Patent
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`Owner have not been engaged in the infringement dispute originally raised in the
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`First Complaint. Thus, the infringement dispute that originated in the First
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`Complaint, like the disputes in the previous Board decisions discussed above, “has
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`been pending continuously since” it was filed. Ford at 12 (citing Histologics at 5).
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`A “continuous chain of assertion” of the ’275 patent therefore exists from May 25,
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`2016 forward. And because the Petition was filed more than one-year after this
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`date, it is time-barred under 35 U.S.C. § 315(b).
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`C. Because the Petition is time-barred, the Board need not reach the
`merits of the case
`Because the Petition is time-barred as described above, the Board need not
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`even consider the merits of the challenges therein. However, to the extent the
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`Board finds that the Petition does not violate 35 U.S.C. § 315(b), the analysis
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`below identifies additional deficiencies in the Petition that should compel the
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`Board to deny the Petition in full.
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`Case IPR2017-01546
`Attorney Docket No: 39907-0006IP3
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`IV. THE BOARD SHOULD EXERCISE ITS DISCRETION UNDER 35
`U.S.C. § 314(A) AND DENY THE PETITION
`Petitioner has filed two previous IPR petitions challenging the ’275 patent
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`(IPR2016-01772 and IPR2016-01774). The Board correctly declined to institute
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`an IPR proceeding in both cases. By filing the present Petition, Petitioner seeks
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`“another bite at the apple” armed with knowledge of Patent Owner’s arguments
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`and the Board’s reasoning gained from its previous unsuccessful challenges.
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`Petitioner fails to sufficiently explain why an additional IPR petition is
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`warranted in this case. In addition, the factors used by the Board to determine
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`whether a “follow on” petition should be permitted weigh heavily against
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`institution of the present Petition. Accordingly, the Board should exercise its
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`broad discretion under 35 U.S.C. § 314(a) and deny the present Petition.
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`“Institution of inter partes review is discretionary.” Kingston v. Polaris,
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`IPR2017-00974, slip op. at 7 (PTAB August 17, 2017) (Paper 10) (citing 35 U.S.C.
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`§ 314(a); Harmonic Inc. v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016);
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`37 C.F.R. § 42.108(a)). When exercising that discretion, the Board may take into
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`account several factors (hereinafter the “NVIDIA factors”), including:
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`1. whether the same petitioner previously filed a
`petition directed to the same claims of the same patent;
`2. whether at the time of filing of the first petition
`the petitioner knew of the prior art asserted in the second
`petition or should have known of it;
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`Case IPR2017-01546
`Attorney Docket No: 39907-0006IP3
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`3. whether at the time of filing of the second petition
`the petitioner already received
`the patent owner’s
`preliminary response to the first petition or received the
`Board’s decision on whether to institute review in the first
`petition;
`4. the length of time that elapsed between the time
`the petitioner learned of the prior art asserted in the second
`petition and the filing of the second petition;
`5. whether
`the petitioner provides adequate
`explanation for the time elapsed between the filings of
`multiple petitions directed to the same claims of the same
`patent;
`6. the finite resources of the Board; and
`7. the requirement under 35 U.S.C. § 316(a)(11) to
`issue a final determination not later than 1 year after the
`date on which the Director notices institution of review.
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`
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`General Plastic v. Canon, IPR2016-01357, slip op. at 9-10 (PTAB September 6,
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`2017) (Paper 19) (expanded panel) (hereinafter “General Plastic”) (citing NVIDIA
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`Corp. v. Samsung Elec. Co., Case IPR2016-00134 (PTAB May 4, 2016) (Paper 9)
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`(first setting forth the factors above). With respect to the present Petition, several
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`of the NVIDIA factors weigh against institution.
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`A.
`Petitioner’s previous IPR petitions are directed to the same claims
`of the ’275 patent as the present Petition
`Collectively, Petitioner’s previous two petitions challenged claims 1-6, 9-12,
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`and 14-31 of the ’275 patent. See Petition, p. 5, note 3. The present Petition
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`challenges claims 1, 4-6, 9-11, 14-15, 21-22, and 24-28 of the ’275 patent, which is
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`a subset of the claims challenged in the previous two petitions. See id. at 1.
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`Accordingly, every claim challenged in the present Petition was also challenged in
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`Petitioner’s previous IPRs. Thus, the first NVIDIA factor2 weighs against
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`institution of the present Petition.
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`B.
`Petitioner should have known of the Kikuya reference when it
`filed the previous IPR petitions
`The Board has defined the scope of art that a petitioner “should have known
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`of” to be as including “prior art which a skilled searcher conducting a diligent
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`search reasonably could have been expected to discover.” General Plastic at 20
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`(citing Apotex Inc. v. Wyeth LLC, IPR2015-00873, slip op. at 6 (Sept. 16, 2015)
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`(Paper 8)). Petitioner does not provide a sufficient explanation of why its prior
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`searches did not uncover the Kikuya reference.
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`2 First NVIDIA factor: “whether the same petitioner previously filed a
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`petition directed to the same claims of the same patent.” General Plastic at 9.
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`Case IPR2017-01546
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`1.
`Petitioner’s initial IPR petitions were based on effectively the
`same claim construction that supposedly necessitated the new prior art
`search that uncovered Kikuya
`Petitioner first attempts to justify its failure to find Kikuya earlier by
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`claiming that the intervening Federal Circuit claim construction order caused it to
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`change its search strategy. See Petition, p. 7. In its order, the Federal Circuit
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`stated that the claim language “a controller having a plurality of potential
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`operational status conditions” should be construed as a “controller [that] can obtain
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`the operational status conditions through self-awareness or through externally-
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`developed information, e.g., sensors.” See Ex. 2007, p. 9 (emphasis added). The
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`Federal Circuit did not address any other claim term. It is unclear how this Federal
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`Circuit guidance represented a change in circumstances that would necessitate a
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`new prior art search, because Petitioner’s proposed construction of this term in its
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`first set of IPR petitions are similar to the constructions from the Federal Circuit.
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`In both IPR petitions, Petitioner proposed that “a controller having a plurality of
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`potential operational status conditions” be construed to mean “a controller that
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`knows a plurality of potential operational status conditions, e.g., where the
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`plurality of operational status conditions can be self-generated by the controller
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`or received from a sensor, user input, or from another device communicatively
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`coupled to the controller.” See IPR2016-01772, Paper 2 at 9-12 (PTAB Sept. 9,
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`2016).
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`Accordingly, Petitioner’s proposed construction from its first IPRs includes
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`the key concepts from the Federal Circuit’s construction – that the controller can
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`obtain operational status conditions either through “self-awareness” (by “self-
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`generating”) or from external sensors. Petitioner thus performed its initial prior art
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`search based on a proposed construction that mirrored the construction adopted by
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`the Federal Circuit that supposedly caused it to commission a new prior art search.
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`Petitioner’s explanation that it did not find Kikuya earlier because it fundamentally
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`changed its search strategy in response to the Federal Circuit constructions is not
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`credible, and thus fails to explain why Petitioner was unable to uncover the Kikuya
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`reference in its earlier prior art searches. Thus, Petitioner should have known of
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`the Kikuya reference when it filed the previous IPR petitions.
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`2.
`Petitioner’s remaining justifications for not finding Kikuya in
`its initial search are conclusory and unsupported by evidence
`Petitioner states that it “was unable to find Kikuya earlier despite having
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`made a more than reasonably diligent prior art search in 2016 using a top prior art
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`search firm.” Petition, p. 8. This statement is conclusory, and relies on
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`Petitioner’s own evaluation of its prior art search as “more than reasonably
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`diligent.” See id. The Petition includes no explanation or evidence of how this
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`initial prior art search was conducted, or of why this “more than reasonably
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`diligent” search failed to uncover a reference that Petitioner believes to be
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`anticipatory in Kikuya. Petitioner also fails to specifically explain how its second
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`prior art search strategy differed from its first, and why this second search was
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`successful in finding Kikuya where the first one did not. See General Plastic at 20
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`(weighing this factor against a petitioner that failed to provide “any explanation
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`why [it] could not have found the newly asserted prior art in any earlier search(es)
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`through the exercise of reasonable diligence.”).
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`Without such explanation evidence, the Board is left to speculate on whether
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`Petitioner’s initial prior art search was “more than reasonably diligent.” As
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`discussed above, the only circumstance Petitioner alleges changed between the first
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`and second searches was the construction of “a controller having a plurality of
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`potential operational status conditions” based on the Federal Circuit’s guidance.
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`See Petition, p. 8. As the proposed construction of this term from the original IPR
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`petitions is similar to that offered by the Federal Circuit, it is unclear why the
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`strategy of the first search would be different than the strategy for the second. If
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`the strategy for both searches was in fact the same and the first search failed to
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`uncover Kikuya, the only reasonable explanation is a lack of diligence during the
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`first search.
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`Thus, because Petitioner fails to provide any credible reason why it was
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`unable to find Kikuya in its prior art searches related to its original IPR petitions,
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`the Board should find that Petitioner should have known of the Kikuya reference
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`when it filed the original petitions and weigh the second NVIDIA factor3 against
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`institution of the present Petition.
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`C.
`Petitioner had already received Patent Owner’s preliminary
`responses and the Board’s decisions on whether to institute review for
`its previous IPR petitions when it filed the present Petition
`Petitioner filed the present Petition on June 12, 2017, nearly four months
`
`after the Board denied institution of its previous IPR petitions on February 21,
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`2017, and nearly six months after Patent Owner filed its preliminary response to
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`those petitions on December 23, 2016. Petitioner provides no meaningful
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`explanation for the delay in filing the present Petition. Thus, the Board should
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`weigh the third NVIDIA factor4 against institution of the present Petition. See
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`General Plastics at 10.
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`3 Second NVIDIA factor: “whether at the time of filing of the first petition
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`the petitioner knew of the prior art asserted in the second petition or should have
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`known of it.” General Plastic at 9.
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`4 Third NVIDIA factor: “whether at the time of filing of the second petition
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`the petitioner already received the patent owner’s preliminary response to the first
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`petition or received the Board’s decision on whether to institute review in the first
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`petition.” General Plastic at 9.
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`14
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`Case IPR2017-01546
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`D. The Board should not expend its finite resources on serial
`challenges to the same claims of the same patent
`In General Plastics, the Board stated that its “resources would be more fairly
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`expended on initial petitions, rather than follow-on petitions.” General Plastics at
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`10. Patent Owner respectfully requests that the Board adopt this stance from
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`General Plastics and weigh the sixth NVIDIA factor5 against institution of the
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`present Petition.
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`In summary, at least four of the seven NVIDIA factors weigh heavily against
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`institution of the present Petition. Previous panels have held that not all factors
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`need weigh against institution to justify the Board’s exercise of its discretion under
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`35 U.S.C. § 314(a). Thus, Patent Owner respectfully requests that the Board deny
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`Petitioner an additional and unjustified “bite at the apple” by denying institution of
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`the present Petition.
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`V. THE ’275 PATENT
`The ’275 patent describes a movable barrier operator (e.g., garage door
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`opener) having a controller that has a plurality of potential operational status
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`conditions. The moveable barrier operator transmits a present operational status
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`
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`5 Sixth NVIDIA factor: “the finite resources of the Board.” General Plastic
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`at 9.
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`15
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`condition of the controller (i.e., one of the potential operational status conditions)
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`Case IPR2017-01546
`Attorney Docket No: 39907-0006IP3
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`to other external devices.
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`Claim 1 of the ’275 patent recites:
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`1. A movable barrier operator comprising:
`a controller having a plurality of potential
`operational status conditions defined, at least in part, by a
`plurality of operating states;
`a movable barrier interface that is operably coupled
`to the controller;
`a wireless status condition data transmitter that is
`operably coupled to the controller, wherein the wireless
`status condition data transmitter transmits a status
`condition signal that:
`corresponds
`to a present operational status
`condition defined, at least in part, by at least two operating
`states from the plurality of operating states; and
`comprises an identifier that is at least relatively
`unique to the movable barrier operator, such that the status
`condition signal substantially uniquely identifies the
`movable barrier operator.
`The ’275 patent issued on May 29, 2007 from U.S. Application No.
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`10/447,663. During prosecution, Petitioner alleges that “Patent Owner did not
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`dispute that the sensor-based prior art taught transmitting operational status
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`conditions of a garage door opener.” Petition, p. 14. This characterization is
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`inaccurate.
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`In fact, when two such sensor-based references (U.S. Patent No. 6,184,787
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`(Morris) and U.S. Patent No. 5,798,681 (Chang)) were applied by the examiner,
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`Patent Owner distinguished the references on the basis of each failing to teach
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`“transmitting a present operational status condition of the controller.” See Ex.
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`1002, pp. 45-47. With respect to Morris, Patent Owner argued that the reference
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`included “no teachings of any kind regarding any communication of any kind”
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`regarding the garage door opener. Id. at 46. Patent Owner distinguished Morris as
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`being “a garage door position monitoring system 10 having a controller 18 that
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`receives a signal from various sensors … (which monitor such things a carbon
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`monoxide, temperature, and a position of the garage door) and that sends that
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`signal” to other devices. Id. at 45. Patent Owner further argued that Chang
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`included no suggestion or teaching of any operational status condition of the
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`controller “being transmitted by [] any garage door opener that might otherwise be
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`associated with the garage door.” Id. at 47.
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`Petitioner further states that, rather than disputing such sensor-based
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`references, Patent Owner “instead amended the claims to require ‘an identifier that
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`is at least relatively unique to the movable barrier operator, such that the status
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`condition signal substantially uniquely identifies the movable barrier operator.’”
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`17
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`Petition, p. 14 (emphasis in original, citing to 1002 p. 36). Yet, the amendment
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`Attorney Docket No: 39907-0006IP3
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`Petitioner references already included an identifier and did not introduce a
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`completely new limitation. See Ex. 1002, pp. 36 (limitation at issue prior to
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`amendment read: “corresponds to a present operational status condition defined, at
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`least in part, by at least two operating states from the plurality of operating states
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`such that at least one, but not all, of the at least two operating states substantially
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`uniquely identifies the movable barrier operator”) (emphasis added). The
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`amendment referenced by Petitioner was for clarity. See id.
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`In addition to Morris and Chang, the Office cons