`Trials@uspto.gov
`571-272-7822
`
`
`
`Paper No. 13
`Entered: April 30, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`APPLE INC. and AUGUST HOME, INC.,
`Petitioner,
`
`v.
`
`MARK W. KILBOURNE,
`Patent Owner.
`____________
`
`Case IPR2019-00233
`Patent 7,373,795 B2
`
`____________
`
`
`
`Before GEORGE R. HOSKINS, RICHARD H. MARSCHALL, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`HOSKINS, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
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`IPR2019-00233
`Patent 7,373,795 B2
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`INTRODUCTION
`I.
`Apple Inc. and August Home, Inc. (collectively, “Petitioner”) have
`filed a Petition (Paper 3, “Pet.”) pursuant to 35 U.S.C. §§ 311–319 to
`institute an inter partes review of claims 11–20 of U.S. Patent
`No. 7,373,795 B2 (“the ’795 patent”).
`Mark W. Kilbourne (“Patent Owner”), the solely named inventor and
`the owner of the ’795 patent, has filed a Preliminary Response (Paper 8,
`“Prelim. Resp.”). Pater Owner later, as authorized by the Board (Paper 9),
`supplemented the Preliminary Response (Paper 10, “Supp. Prelim. Resp.”).
`Applying the standard set forth in 35 U.S.C. § 314(a), which requires
`demonstration of a reasonable likelihood that Petitioner would prevail with
`respect to at least one challenged claim, we institute, on behalf of the
`Director (37 C.F.R. § 42.4(a)), an inter partes review to determine whether
`Petitioner demonstrates by a preponderance of the evidence that claims 11–
`17 are unpatentable. We do not institute review as to claims 18–20, which
`have been disclaimed by Patent Owner. See 37 C.F.R. § 42.107(e).
`
`BACKGROUND
`II.
`Real Parties in Interest and Related Proceedings
`A.
`Petitioner identifies Apple Inc.; August Home, Inc.; ASSA ABLOY
`Inc.; and ASSA ABLOY AB as the real parties-in-interest. Pet. 1, 4–5, 7.
`Patent Owner identifies himself as the real party-in-interest. Paper 6, 1. The
`parties identify one U.S. District Court litigation as related to this
`proceeding: Mark W. Kilbourne v. Apple Inc., Case No. 4:18-cv-04619
`(N.D. Cal.) (hereafter “the District Court Litigation”). Pet. 6; Paper 6, 1.
`
`2
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`Patent 7,373,795 B2
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`
`The ’795 Patent
`B.
`The ’795 patent discloses systems and methods for electronically
`extending or retracting the deadbolt of an internal door locking apparatus.
`Ex. 1001, Abstract, 6:47–51, 6:65–7:19. Figure 5 of the ’795 patent is
`reproduced below:
`
`
`
`Figure 5 of the ’795 Patent
`(partially exploded view of door and lock apparatus).
`Id. at 1:54–56. Figure 5 illustrates door 24 and standard internal deadbolt
`apparatus 28, wherein apparatus 28 includes deadbolt 27 and two bolts 25
`(only one of which is shown). Id. at 4:41–43, 6:18–20, 6:24–31. Template
`unit 13 is secured to door 24, using bolts 25 and two brackets 21 (only one
`of which is shown), on the side of door 24 facing the area to be secured. Id.
`at 6:24–38, 7:19–26. Motor and battery housing unit 7, with casing 3, is
`then attached to template unit 13. Id. at 7:52–57. Deadbolt 27 may be
`extended or retracted either manually by turning knob 2, or electronically by
`controlling a motor within unit 7. Id. at 5:4–11, 6:4–17.
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`Figure 3 of the ’795 patent is reproduced below:
`
`
`
`Figure 3 of the ’795 Patent
`(fully exploded view of lock apparatus).
`Id. at 1:50–51. Figure 3 illustrates the internal components of unit 7. Knob
`gear 10 is attached to knob 2 (partially hidden in Figure 3 behind
`carriage 17) and receives one end of splined stem 4, such that rotation of
`knob 2 also rotates stem 4. Id. at 3:23–35, 3:47–61, 7:58–64. Motor 15 is
`powered by battery bank 8 and controlled by card 5 to rotate rotary gear 9,
`which in turn rotates knob gear 10 to rotate stem 4. Id. at 3:18–22, 4:17–28,
`5:12–17, 5:60–6:4. The motorized operation of unit 7 may be implemented
`using a separate transmitter 40 (not shown in Figure 3) that communicates
`wirelessly with motor card 5. Id. at Fig. 7, 8:3–14, 10:21–60.
`The end of splined stem 4 opposite to the end received in knob
`gear 10 interacts with a “tailpiece” component of standard internal deadbolt
`apparatus 28, wherein rotation of stem 4 extends or retracts deadbolt 27. Id.
`at 4:43–45, 5:4–11, 7:67–8:3, 8:64–9:14. The ’795 patent indicates it is
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`beneficial for unit 7 to work with different kinds of standard apparatuses 28,
`which have different tailpiece structures. Id. at 7:12–19, 7:29–37, 7:67–8:3.
`Figure 6C of the ’795 patent is reproduced below:
`
`
`
`Figure 6C of the ’795 Patent
`(perspective view of splined stem 4,
`showing three alternative front face formations 34, 34ʹ, 34ʹʹ).
`Id. at 7:29–37. Figure 6C illustrates that “the user has the option of pulling
`out the splined stem 4 from its attachment to the manual turn knob 2 and
`rotate it such that either the front [or rear] face can be utilized.” Id. at 7:29–
`32. The two faces of splined stem 4 may have different “formations,” such
`as standard slot 34, half oval 34ʹ, or cross-slot 34ʹʹ. Id. at 7:32–34. In this
`way, unit 7 “can be used with [a] plurality of standard deadbolt locks
`including ones found in most standard configurations.” Id. at 7:35–37.
`Motor card 5 tracks the position of deadbolt 27, particularly whether it
`is in the extended and locked position, or in the retracted and unlocked
`position. Id. at 5:26–48. Motor card 5 does this by measuring the rotational
`position of knob gear 10, using sensors 32, 32ʹ. Id. at Fig. 4, 5:37–48, 7:40–
`48, 9:35–53. Motor card 5 may use a sound emission diode to inform the
`user of the deadbolt position, via coded beeps for example. Id. at 5:26–36.
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`The Challenged Claims
`C.
`The ’795 patent contains twenty claims. Ex. 1001, 12:27–16:20.
`Petitioner challenges claims 11–20, including two independent claims, 11
`and 18. See id. at 14:3–16:20; Pet. 1, 7–8. Claim 11 illustratively recites:
`11. A method of moving a deadbolt comprising the steps of:
`determining the cross-sectional shape of a tailpiece member
`of a pre-existing deadbolt system;
`attaching a deadbolt activating system to said pre-existing
`deadbolt system with internal mechanisms and a deadbolt,
`wherein attaching further comprises selecting the end of a
`reversible elongated member which matches the determined
`cross-sectional shape of said tailpiece member of said
`pre-existing deadbolt system and attaching said matching
`components;
`sending a signal via a transmitter;
`electronically activating an electronic input card housed in
`the deadbolt activating system via reception of the signal;
`signaling a motor with the electronic card via electronic and
`mechanical communication;
`activating a gear, via the motor, housed in the deadbolt
`activating system to rotate;
`housing said reversible elongated member, in mechanical
`communication with the gear, in the deadbolt activating
`system, whereby the rotation of the gear causes the rotation
`of the reversible elongated member which is releasably and
`directly attached to said tailpiece member of internal
`mechanisms of said pre-existing deadbolt system causing
`the deadbolt to extend; and
`providing a tracking system comprising a sensor and a
`sensor recognition point;
`tracking said sensor recognition point, said sensor
`recognition point configured to indicate a specific position
`of said pre-existing deadbolt lock;
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`indicating if said recognition point has been detected by said
`sensor; transmitting said indication to a sound emitting
`module; and
`emitting a sound from said sound emitting module to
`indicate when the deadbolt is in the locked position and/or
`in the unlocked position, wherein said locked and/or
`unlocked position is based on said indication.
`Id. at 14:3–40.
`
`Asserted Grounds of Unpatentability
`D.
`Petitioner presents the following challenges to the ’795 patent, all
`based on unpatentability under 35 U.S.C. § 103(a). See Pet. 7–8.
`
`References
`
`Claim(s) Challenged
`
`Padiak1 and Anderson2
`
`11–15 and 17
`
`Padiak, Anderson, and
`Admitted Prior Art3 and/or
`2000 International Building Code4
`
`Padiak, Anderson, and Bates5
`
`16
`
`18–20
`
`
`1 Ex. 1004, U.S. Patent No. 6,282,931 B1, iss. Sept. 4, 2001.
`2 Ex. 1005, U.S. Patent No. 6,318,218 B1, iss. Nov. 20, 2001.
`3 Petitioner cites the ’795 patent disclosure at column 2, lines 34–36, as
`admitted prior art. See Pet. 56.
`4 Ex. 1023, Int’l Code Council, Inc., Int’l Building Code (2000).
`5 Ex. 1006, U.S. Patent App. Pub. No. 2002/0095958 A1, pub. July 25,
`2002.
`
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`III. ANALYSIS
`Claim Construction
`A.
`In this proceeding, we interpret the claims of the ’795 patent using the
`broadest reasonable construction in light of the ’795 patent specification.
`See 37 C.F.R. § 42.100(b) (2018)6; Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest
`reasonable construction standard); Patent Office Trial Practice Guide,
`77 Fed. Reg. 48,756, 48,764 (Aug. 14, 2012).
`
`“reversible elongated member” (Claim 11)
`1.
`Petitioner contends the term “reversible elongated member,” which
`appears in claim 11, “refers to an elongated member having a different
`shaped opening on each end to accept the different cross-sectional shapes of
`different tailpieces.” Pet. 20–22. Patent Owner contends in opposition that
`the term “means ‘a member longer than it is [wide, and] that can be
`reversed.’” Prelim Resp. 11; see id. at 10–18 (discussion in support).
`Based on the present record, we conclude we need not reach an
`opinion on this disputed issue to decide whether to institute review of the
`patentability of the challenged ’795 patent claims. See, e.g., Pet. 20–21
`(Petitioner’s proposed unpatentability grounds “apply equally” regardless of
`whether Petitioner’s or Patent Owner’s claim construction is applied, so “the
`Board need not construe this term to grant this petition”), 42 n.3. In
`
`6 A recent amendment to this rule does not apply here, because the Petition
`was filed before November 13, 2018. See “Changes to the Claim
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`the Patent Trial and Appeal Board,” 83 Fed. Reg. 51,340, 51,340 (Oct. 11,
`2018).
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`particular, the combination of Padiak and Anderson, as set forth in
`Petitioner’s case for obviousness (discussed below in Section III.B.5), would
`lead to an adaptor member that: (a) has a differently shaped opening on each
`end to accept different cross-sectional shapes of different tailpieces; and
`(b) is longer than it is wide and can be reversed. In other words, Petitioner’s
`proposed combination would embody the method recited in claim 11,
`regardless of which of the two proposed constructions of “reversible
`elongated member” is applied. Therefore, there is no need for us to resolve
`this particular claim construction dispute at the present time. See Nidec
`Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013,
`1017 (Fed. Cir. 2017) (per curiam) (claim terms need to be construed “only
`to the extent necessary to resolve the controversy”) (quoting Vivid Techs.,
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
`
`“housing said reversible elongated member, in mechanical
`2.
`communication with the gear, in the deadbolt activating system” (Claim 11)
`Claim 11 recites “housing said reversible elongated member, in
`mechanical communication with the gear, in the deadbolt activating system.”
`Ex. 1001, 14:22–24. The record presently before us presents two claim
`construction issues concerning this verbiage, which we address in turn.
`
`“housing”
`a)
`Neither party offers an express claim construction of the term
`“housing” at this time. However, the parties rely on different implicit claim
`constructions of the entire housing limitation when addressing the Padiak
`disclosure. Petitioner implicitly contends claim 11 requires the reversible
`elongated member to be housed in the deadbolt activating system. Pet. 45
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`(“Padiak discloses that the adaptor 880 (i.e., the reversible elongated
`member) is housed in mechanical communication with the gear 804 within
`the housing 884 of the deadbolt activating system.” (emphasis added)).
`Patent Owner implicitly contends claim 11 requires the reversible elongated
`member to be housed in the gear. Prelim. Resp. 20–21 (arguing that, in the
`’795 patent, “the reversible elongated member is clearly housed in
`communication with the gear recited in claim 11 because the member is
`contained within, and positioned within, the gear” (emphases added)).
`Based on the present record, we determine claim 11 requires housing
`the reversible elongated member in the deadbolt activating system, and does
`not require housing the member in the gear. The claim language at issue is
`“housing said reversible elongated member, in mechanical communication
`with the gear, in the deadbolt activating system.” Ex. 1001, 14:22–24. Two
`commas separate the phrase “in mechanical communication with the gear”
`from the surrounding verbiage “housing said reversible elongated
`member . . . in the deadbolt activating system.” Id. This indicates the term
`“housing” refers to the overall system, not to the gear. Also, other
`limitations in claim 11 refer to various components being “housed in the
`deadbolt activating system.” See id. at 14:15–16 (electronic input card)
`14:20–21 (gear). Thus, the claim language supports Petitioner’s implicit
`claim construction, not Patent Owner’s implicit claim construction.
`Our review of the ’795 patent specification — which neither party
`presently addresses in relation to this issue — indicates that it is consistent
`with both constructions. In the illustrated embodiment of the ’795 patent,
`one end of splined stem 4 is received (or housed) in gear 10. See, e.g.,
`Ex. 1001, Figs. 2 & 6A (showing recess within gear 10 with splined
`
`10
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`engagement face 35 to receive splined stem 4), 5:4–11, 7:58–64. At the
`same time, splined stem 4 and gear 10 are both housed in housing unit 7 of
`the deadbolt activating system. See id. at Figs. 1B & 3.
`Patent Owner testifies, via Declaration, that housing splined stem 4 in
`gear 10 beneficially provides a compact, robust, rugged, and strong locking
`assembly. Ex. 2001 ¶¶ 11–14, 18, 20. However, the only intrinsic evidence
`cited by Patent Owner in support of this testimony is Figure 3 of the
`’795 patent, and Patent Owner does not explain exactly how Figure 3
`supports the testimony. See id.; Tempo Lighting, Inc. v. Tivoli, LLC,
`742 F.3d 973, 977–78 (Fed. Cir. 2014) (in claim construction, primacy is
`given to intrinsic evidence consisting of the claim language, specification,
`and prosecution history). Based on the present record, we conclude
`Figure 3, without further explanation, is not particularly helpful support for
`Patent Owner’s assertion that housing splined stem 4 within gear 10
`provides the benefits identified by Patent Owner. More generally, Patent
`Owner’s testimony is too conclusory to provide a basis for narrowing the
`construction of this limitation. In short, we conclude, based on the present
`preliminary record, that adopting Patent Owner’s implicit claim construction
`would impermissibly incorporate a limitation from the specification into the
`claims. See RF Delaware, Inc. v. Pacific Keystone Techs., Inc., 326 F.3d
`1255, 1263–64 (Fed. Cir. 2003).
`For the foregoing reasons, we construe claim 11 to require housing the
`reversible elongated member in the deadbolt activating system, and not to
`require (although it permits) housing the member in the gear.
`
`11
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`“in mechanical communication”
`b)
`Next, Petitioner contends the term “in mechanical communication”
`“means that two elements are directly or indirectly connected such that
`movement of one causes movement of the other.” Pet. 17–18 (emphasis
`added) (citing Ex. 1001, 3:47–61, 14:22–27); Ex. 1003 ¶ 52.
`Patent Owner does not offer an express claim construction of the term
`“in mechanical communication” at this time. However, Patent Owner relies
`on an implicit claim construction when addressing the Padiak disclosure.
`According to Patent Owner, Padiak’s adaptor 880 is not in mechanical
`communication with Padiak’s gear(s) 804, because adaptor 880 “is separate
`and apart from all of the gears within gear assembly 804,” and adaptor 880
`“can move completely independently of the gear assembly 804.” Prelim.
`Resp. 18–20 (emphases added) (citing Ex. 1004, Fig. 13, 10:20–32). Thus,
`Patent Owner inferentially construes the term “in mechanical
`communication” to: (i) require a direct connection without intervening
`components; and (ii) preclude independent movement of the communicating
`elements. Patent Owner additionally asserts Petitioner’s proposed
`construction of “in mechanical communication” is not met by Padiak,
`because movement of adaptor 880 will not cause movement of gear(s) 804,
`and movement of gear(s) 804 will not cause movement of adaptor 880. Id.
`at 19–20.
`First, we determine two elements may be “in mechanical
`communication” by being directly or indirectly connected to each other.
`The ’795 patent specification cited by Petitioner describes how knob gear 10
`may be “in mechanical communication with” manual turning knob 2.
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`Ex. 1001, 3:47–61.7 As described, knob gear 10 is in mechanical
`communication with knob 2 in “a plurality of . . . embodiments.” Id. at
`3:47–54. The embodiments “include, but are not limited to, a direct
`attachment of” knob gear 10 to knob 2, such as an adhesive, snap, or
`screw-on. Id. at 3:54–57 (emphasis added). The embodiments also include
`a “plurality of knob gears 10 utilized in a variety of mechanical
`communications such that a series of rotations and counter rotations is
`established.” Id. at 3:57–61 (emphases added). Thus, the ’795 patent
`specification indicates two elements may be “in mechanical communication”
`by being directly or indirectly connected to each other. Moreover, claim 11
`demonstrates that Patent Owner knew how to limit the claim to a direct
`connection and exclude indirect connections, in that claim 11 recites “the
`reversible elongated member . . . is releasably and directly attached to said
`tailpiece member.” Id. at 14:25–27 (emphasis added).
`Patent Owner’s contentions (Prelim. Resp. 18–19) and testimony
`(Ex. 2001 ¶¶ 11–14, 18, 20) to the contrary are not, on the present record,
`persuasive to rebut Petitioner’s showing. They do not explain sufficiently
`why we should construe claim 11 to be limited to a direct connection
`between the reversible elongated member and the gear, when the ’795 patent
`specification indicates the operative term “in mechanical communication”
`encompasses both direct and indirect connections.
`
`
`7 This discussion concerns the interaction between two elements (knob
`gear 10 and knob 2) that are not the two elements recited in the claim
`limitation at issue (knob gear 10 and splined stem 4), but the operative term
`“in mechanical communication” is the same. Compare Ex. 1001, 3:47–61,
`with id. at 14:22–24.
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`Second, we determine two elements may be “in mechanical
`communication” and still allow some amount of independent movement
`between them. The operative term “in mechanical communication” does not
`preclude independent movement under some conditions, so long as under
`other conditions “the rotation of the gear causes the rotation of the reversible
`elongated member.” Ex. 1001, 14:22–28. Patent Owner’s contentions
`suggesting that claim 11 precludes independent movement (Prelim.
`Resp. 18–19) are not persuasively supported on the present record. They do
`not address the intrinsic evidence in this regard, or demonstrate persuasively
`why the broad claim language should be construed in the narrow way
`proposed by Patent Owner.
`Moreover, we disagree with Patent Owner’s reading of Petitioner’s
`proposed construction of “in mechanical communication” to require both
`(1) movement of the reversible elongated member causes movement of the
`gear, and (2) movement of the gear causes movement of the reversible
`elongated member. See Prelim. Resp. 19–20. Instead, Petitioner’s proposed
`construction specifies pertinently that “movement of one causes movement
`of the other.” Pet. 17 (emphases added). Petitioner’s application of that
`construction to the Padiak disclosure (1) does not attempt to demonstrate
`that movement of adaptor 880 causes movement of gear(s) 804, and instead
`(2) relies solely on the movement of gear(s) 804 causing movement of
`adaptor 880. Id. at 45–46. Thus, as we understand Petitioner’s proposed
`construction based on the present record, it is sufficient for movement of the
`gear to cause movement of the reversible elongated member, and it is not
`required for the reversible elongated member to cause movement of the gear.
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`For the foregoing reasons, we determine a reversible elongated
`member and a gear are “in mechanical communication” by being directly or
`indirectly connected to each other. They are further “in mechanical
`communication,” even if independent movement between them is permitted
`under some conditions, so long as under other conditions rotation of the gear
`causes rotation of the reversible elongated member.
`
`Remaining Claim Terms
`3.
`No further explicit constructions of any claim terms are needed to
`resolve the issues presented by the arguments and evidence of record. See
`Nidec, 868 F.3d 1013 at 1017. This includes, for example, the term “sensor
`recognition point” in claim 11. See Pet. 18–20 (proposing this term should
`be construed as “a movable element configured to be detected by a sensor”).
`
`B. Obviousness over Padiak and Anderson
`Petitioner asserts claims 11–15 and 17 of the ’795 patent are
`unpatentable under 35 U.S.C. § 103(a) as having been obvious over Padiak
`and Anderson. Pet. 8, 28–56. Patent Owner opposes. Prelim. Resp. 18–25.
`We have reviewed Petitioner’s and Patent Owner’s arguments and the
`evidence of record. Based on the evidence of record, Petitioner has
`demonstrated a reasonable likelihood of prevailing on its assertions as to
`claims 11–15 and 17. We begin our analysis with a brief summary of the
`law of obviousness, then we address the level of ordinary skill in the art,
`next we summarize the Padiak and Anderson disclosures, and finally we
`address the parties’ contentions.
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`Law of Obviousness
`1.
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness, if made available in the record. See Graham v. John Deere
`Co., 383 U.S. 1, 17–18 (1966).
`
`Level of Ordinary Skill in the Art
`2.
`Petitioner contends a person having ordinary skill in the art pertaining
`to the ’795 patent:
`would have had (i) a bachelor’s degree in mechanical
`engineering or a related field, and at least 2–3 years of practical
`experience in mechanical design; (ii) a masters or Ph.D. degree
`in mechanical engineering or a related field; or (iii) at least 4–5
`years of practical experience in mechanical design, including
`involvement in or exposure to the technological issues in the
`field.
`Pet. 16; Ex. 1003 ¶ 28. Further according to Petitioner, “a higher level of
`education or skill might make up for less experience, and vice-versa.”
`Pet. 16; Ex. 1003 ¶ 28.
`The Preliminary Response does not take a position as to the level of
`ordinary skill in the art.
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`We determine on the current record that the level of ordinary skill
`proposed by Petitioner is consistent with the ’795 patent and the asserted
`prior art. We, therefore, adopt that level in deciding whether to institute
`trial.
`
`Padiak Disclosure
`3.
`Padiak discloses a method of retrofitting an existing deadbolt
`assembly with an electrically operated actuator. See Ex. 1004, Abstract.
`One such actuator 800 is illustrated in Figure 13, which is reproduced below:
`
`Figure 13 of Padiak
`(perspective view of electrically operated actuator 800).
`Id. at Abstract, 5:40–42, 9:62–64. When activated, motor 802 rotates gear
`reduction assembly 804, which in turn rotates threaded rod 806, which in
`turn causes actuating arm 808 to travel along the length of rod 806. Id. at
`9:64–10:5. In this way, angled protrusions 814, 816 on arm 808 engage and
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`rotate lever 818, which in turn rotates drive bar 820 of a conventional
`deadbolt assembly. Id. at 10:5–8, 2:32–46.
`In normal operation of actuator 800:
`As with actuator assembly 312[8], motor 802 rotates in one
`direction to lock or unlock, then automatically reverses at the end
`of the desired operation to place the actuating arm [808] in a
`neutral position to facilitate manual operation or subsequent
`electrical operation . . . allow[ing] lever 818 to rotate within its
`range of movement without interference from [protrusions 814,
`816 of] actuating arm 808.
`Id. at 10:19–25 (emphases added). Actuator 800 also has a fail-safe
`operation, as follows:
`Angled protrusions 814, 816 provide additional
`advantages for fail-safe operation of actuator 800 by allowing
`manual locking and unlocking operation even when the actuating
`arm [808] is not in a neutral position. For example, if actuator
`800 fails with actuating arm [808] in the position shown in
`FIG. 13, lever 818 may be forced counterclockwise, pushing the
`cantilevered angled protrusion [816] out of its path to effect a
`[manual] lock or unlock operation.
`Id. at 10:26–33.
`
`
`8 Actuator assembly 312 is shown in Figures 4 and 4A. Figure 4 shows
`drive bar 18 of dead-bolt assembly 10 in a locked position. Ex. 1004, 6:6–
`10, 9:6–7. “To effect an unlocking operation, motor 320 is activated to drive
`actuating arm 324 in an upward direction . . . until bolt 14 [of assembly 10]
`. . . is fully retracted (see actuator arm [324] in phantom in FIG. 4A).” Id. at
`9:7–12. At that point, “motor 320 automatically reverses its direction
`causing actuating arm 324 to move downward until it reaches the [solid line]
`position shown in FIG. 4A.” Id. at 9:12–15. In that position, which is akin
`to the “neutral” position of assembly 800, “dead-bolt assembly 10 is in
`position to be manually operated.” Id. at 9:15–18.
`
`18
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`IPR2019-00233
`Patent 7,373,795 B2
`
`
`As shown in Figure 13, actuator 800 interfaces with a conventional
`deadbolt assembly where lever 818 of actuator 800 engages drive bar 820 of
`the conventional deadbolt assembly. Id. at 10:17–18, 2:32–46. Figure 22,
`reproduced below, illustrates an alternate embodiment, in which adaptor 880
`is used to interface with the drive bar. Id. at 17:16–20.
`
`
`
`Figure 22 of Padiak
`(exploded perspective view of actuator 800 with adaptor 880).
`Id. at 5:66–67. Adaptor 880 is placed in between lever assembly 886 and
`the drive bar (not shown in Figure 22). Id. at 17:33–45. Drive bar
`extension 892 of adaptor 880 is received in a correspondingly shaped
`bore 894 of lever assembly 886. Id. at 17:39–45. Aperture 881 of
`adaptor 880 is “sized and configured to fit a drive bar.” Id. at 17:33–34.
`Further, “[a]perture 881 may be varied in size and configuration to fit drive
`
`19
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`IPR2019-00233
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`
`bars from different lock manufacturers,” such that “the appropriate adaptor,
`i.e., one that fits the drive bar, is placed over the drive bar of the existing
`lock.” Id. at 17:34–39; see also id. at 8:58–65, Figs. 4C–4E (illustrating
`different drive bar interaction arrangements 331a, 331b, and 331c).
`Printed circuit board 876 (shown in Figure 23) controls the operation
`of motor 802 in actuator 800. Id. at 17:26–28. Board 876 is in turn
`controlled via wireless communication with a remote control transmitter. Id.
`at 10:43–67 (describing Fig. 7). Further, board 876 senses the locked /
`unlocked status of actuator 800 using sensors 618, 620, and notifies the
`remote control transmitter of such status “to generate a visual or audible
`indication of status to the user.” Id. at Fig. 8, 10:67–11:13, 11:29–52.
`
`Anderson Disclosure
`4.
`Anderson discloses a hand tool, such as a Swiss army knife, having a
`screwdriver. Ex. 1005, Abstract, 1:10–17. Figure 12 is reproduced below:
`
`
`
`Figure 12 of Anderson
`(perspective view of folding knife with interchangeable bit screwdriver).
`Id. at 2:40–42. Figure 12 illustrates folding knife and interchangeable bit
`screwdriver 10, including hollow tube 22 which receives reversible
`screwdriver bit 30. Id. at 4:24–26, 4:39–46. “Each end of reversible bit 30
`
`20
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`IPR2019-00233
`Patent 7,373,795 B2
`
`has a screwdriver drive,” such as “a Phillips drive end 34 and a crosscut
`drive end 36” as shown in Figure 12. Id. at 4:46–50.
`
`Claim 11
`5.
`Petitioner provides arguments and evidence in support of contending
`claim 11 is unpatentable as having been obvious over Padiak and Anderson,
`including the Declaration of Dr. John D. Pratt (Ex. 1003). Pet. 28–51;
`Ex. 1003 ¶¶ 79–139. Patent Owner provides arguments and evidence in
`opposition, including the Declaration of Patent Owner (Ex. 2001).
`Prelim. Resp. 18–25; Ex. 2001 ¶¶ 15–23.
`
`a)
`
`Petitioner’s Contentions Concerning the Padiak Disclosure
`that are Disputed by Patent Owner
`Petitioner contends Padiak discloses each and every limitation of
`claim 11, including an elongated member (i.e., adaptor 880), except that
`adaptor 880 is not “reversible” as claimed. See Pet. 28. In particular,
`Petitioner asserts Padiak discloses a deadbolt activating system comprising a
`motor (i.e., motor 802) that activates rotation of a gear (i.e., gear
`assembly 804). See id. at 44–45 (citing Ex. 1004, Abstract, 3:54–57, 9:62–
`66, 15:55–58, 20:50–61); Ex. 1003 ¶¶ 126–127. Further according to
`Petitioner, Padiak discloses housing adaptor 880, in mechanical
`communication with gear assembly 804, in the deadbolt activating system.
`See Pet. 45–46 (citing Ex. 1004, Figs. 22–23, 9:62–10:23, 17:15–52);
`Ex. 1003 ¶¶ 128–130. Petitioner also contends rotation of the gears in gear
`assembly 804 causes rotation of adaptor 880. See Pet. 46–47; Ex. 1003
`¶¶ 131–133.
`
`21
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`
`At the present preliminary stage of this proceeding, Patent Owner
`raises three arguments in opposition to Petitioner’s foregoing reliance on the
`Padiak disclosure. See Prelim. Resp. 18–25. We discuss each in turn.
`Patent Owner first asserts the Petition fails to establish Padiak
`discloses, as required by claim 11, that adaptor 880 is “in mechanical
`communication with” a gear within gear assembly 804. Prelim. Resp. 18–
`20. According to Patent Owner, the lack of such a mechanical connection is
`demonstrated by the fact that adaptor 880 “is separate and apart from all of
`the gears within gear assembly 804 and can move completely independently
`of the gear assembly 804.” Id. at 19. In particular, Patent Owner contends
`“there is a range over which the lever 818 [and therefore adaptor 880] can
`rotate without interference from the carriage 808 [which is controlled via
`gear assembly 804],” and lever 818 can push protrusion 814 or 816 out of its
`path to effect a manual locking or unlocking operation. Id. (citing Ex. 1004,
`10:20–32).
`Patent Owner asserts Padiak does not even sati
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