UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`CIRRUS DESIGN CORPORATION
`
`Petitioner,
`
`v.
`
`HOYT AUGUSTUS FLEMING
`
`Patent Owner.
`
`____________
`
`Case IPR2019-01566
`
`Patent RE47,474
`
`____________
`
`PATENT OWNER’S REPLY TO PETITIONER’S OPPOSITION TO
`REVISED MOTION TO AMEND
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`CIRRUS DESIGN CORPORATION
`
`Petitioner,
`
`v.
`
`HOYT AUGUSTUS FLEMING
`
`Patent Owner.
`
`____________
`
`Case IPR2019-01566
`
`Patent RE47,474
`
`____________
`
`PATENT OWNER’S REPLY TO PETITIONER’S OPPOSITION TO
`REVISED MOTION TO AMEND
`
`
`
`TABLE OF CONTENTS
`
`TABLE OF EXHIBITS ............................................................................................ ii
`
`I.
`
`II.
`
`III.
`
`IV.
`
`V.
`
`INTRODUCTION ........................................................................................... 1
`
`THE RMTA RESPONDS TO THE PANEL’S PRELIMINARY
`GUIDANCE AND PETITIONER’S OPPOSITION TO THE MTA ............. 2
`
`THE SUBSTITUTE CLAIMS HAVE WRITTEN DESCRIPTION
`SUPPORT ........................................................................................................ 4
`
`THE CLAIMS ARE DEFINITE ..................................................................... 8
`
`THE SUBSTITUTE CLAIMS ARE NOT OBVIOUS ................................... 9
`
`A. The rMTA Was Not Required to Identify Evidence Demonstrating that
`the Claims Are Nonobvious ....................................................................... 9
`B. The Proposed Amendments Limit the Method Claims .............................. 9
`C. Petitioner’s Obviousness Argument Fails to Address the Procedure
`Selection Limitations, which Distinguish over the Prior Art ...................10
`VI. CONCLUSION ..............................................................................................12
`
`i
`
`
`
`TABLE OF EXHIBITS
`
`TABLE OF EXHIBITS
`
`EX
`
`. 2033
`
`EX
`
`. 2034
`
`Ex. 2033 Declaration and Curriculum Vitae of Dr. Chris Gregory Bartone in
`Declaration and Curriculum Vitae of Dr. Chris Gregory Bartone in
`support of Patent Owner’s Reply to Petitioner’s Opposition to Revised
`support of Patent Owner’s Reply to Petitioner’s Opposition to Revised
`Motion to Amend
`Motion to Amend
`Intentionally Left Blank
`Ex. 2034
`Intentionally Left Blank
`Intentionally Left Blank
`Ex. 2035
`Intentionally Left Blank
`Ex. 2036 Webster’s New Collegiate Dictionary, Definition of “Procedure”
`Webster’s New Collegiate Dictionary, Definition of “Procedure”
`Ex. 2037 Notice Regarding a New Pilot Program Concerning Motion To
`Notice Regarding a New Pilot Program Concerning Motion To
`Amend Practice and Procedures in Trial Proceedings Under the
`Amend Practice and Procedures in Trial Proceedings Under the
`America Invents Act Before the Patent Trial and Appeal Board
`America Invents Act Before the Patent Trial and Appeal Board
`(March 15, 2019)
`(March 15, 2019)
`
`EX
`
`. 2035
`
`EX
`
`. 2036
`
`EX
`
`. 2037
`
`ii
`
`ii
`
`
`
`I.
`
`INTRODUCTION
`
`Petitioner raises two main arguments, the first of which is that the revised
`
`Motion to Amend (rMTA) is impermissible because it allegedly “advances entirely
`
`new claim limitations and accompanying arguments ‘unrelated to issues raised in
`
`the preliminary guidance [PG] and/or petitioner’s opposition to the MTA.’” Opp. at
`
`6. However, the rMTA is responsive to the opposition and PG because it i) removes
`
`limitations argued by Petitioner and observed by the PG to constitute new matter,
`
`and ii) adds limitations which narrow the claims to exclude subject matter that
`
`Petitioner’s expert argued as being the “safest and most logical” application of auto-
`
`pilot principles to prior art parachute deployment systems. PG at 5; Ex. 1045 ¶89.
`
`Further, the Notice regarding the rMTA program specifically addressed the concern
`
`raised by Petitioner and concluded that “to the extent that a revised motion to amend
`
`is deemed to be a second motion to amend . . . the filing of an opposition to an initial
`
`MTA by a petitioner, or the issuance of preliminary guidance by the Board, provides
`
`‘a good cause showing’ for purposes of the filing of a revised MTA under 37 CFR
`
`42.121(c) and 42.221(c).” Ex. 2037 at 9504. The rMTA is thus proper.
`
`Petitioner’s second argument (at 8-13), that the original disclosure does not
`
`disclose “processor-based selection between the two recited ‘procedures’” ignores
`
`the ’911 Application’s teachings concerning the determinations made by the
`
`processor. The specification teaches that the processor selects one of the following
`
`1
`
`
`
`two procedures based, for instance, on the handle pull-count: i) increase altitude and
`
`then deploy the parachute (when pull-count equals one) or ii) the override procedure
`
`(when pull-count equals two). The application thus supports the substitute claims.
`
`II.
`
`THE RMTA RESPONDS TO THE PANEL’S PRELIMINARY
`GUIDANCE AND PETITIONER’S OPPOSITION TO THE MTA
`
`Petitioner argues (at 1-6) that the rMTA is improper because it is not
`
`“responsive” to the opposition or PG. Underlying the Petitioner’s argument is the
`
`notion that the original MTA somehow constrains the rMTA like an original brief
`
`and opposition constrain a reply or sur-reply. An rMTA is not so constrained.
`
`This same concern was raised by commenters opposing the rMTA program
`
`and the concern was rejected by the Director. Some commenters argued that “patent
`
`owners would not file their most substantive claim amendments until filing a revised
`
`MTA.” Ex. 2037 at 9504. The Director responded by explaining that, to the extent
`
`the rMTA is considered a new MTA, that is justified by the PG and the opposition.
`
`In addition, the revised motion to amend is not a second motion to
`amend per se, but rather a revised version of the initially-filed motion
`to amend. For purposes of the pilot program, to the extent that a revised
`motion to amend is deemed to be a second motion to amend, however,
`the filing of an opposition to an initial MTA by a petitioner, or the
`issuance of preliminary guidance by the Board, provides “a good
`cause showing’’ for purposes of the filing of a revised MTA under 37
`CFR 42.121(c) and 42.221(c). The Office determines that each of
`those papers provides “good cause’’ because they present information
`relevant to whether an MTA meets statutory and regulatory
`requirements and/or whether proposed substitute claims meet the
`patentability requirements under the Patent Act in light of prior art of
`record.
`
`2
`
`
`
`Id. (all emphasis herein is added unless otherwise stated). Accordingly, it is of no
`
`moment that the rMTA is alleged to be a “complete departure from the amendments
`
`PO previously made in its original Motion To Amend (“MTA”).” Opp. at 1.
`
`What matters is whether the rMTA responds to the opposition and PG, and
`
`this the rMTA certainly does. Petitioner argued and the PG observed that the phrase
`
`“aircraft device” in claims 140 and 142-147 in the MTA was not sufficiently
`
`supported under 35 U.S.C. § 112, and Petitioner further argued the phrase was
`
`indefinite. Paper 42 at 3-9; PG at 4-7. New substitute claims 140 and 142-147 in
`
`the rMTA directly respond by removing any reference to an “aircraft device”.
`
`Petitioner argued and the PG observed that the recitation “communicating, via
`
`at least a portion of the electrical interface, an activation command not issued by the
`
`autopilot that activates the deployment of the whole-aircraft ballistic parachute” and
`
`similar recitations were not sufficiently supported. Paper 42 at 21-25; PG at 5-6.
`
`The rMTA directly responded to these positions by eliminating all reference in the
`
`substitute claims of the rMTA to an “electrical interface,” a “communication
`
`interface,” and “communicating a command from an aircraft device…”.
`
`Petitioner’s expert Mr. Hoffmann argued in support of the opposition that “the
`
`safest and most logical option for incorporating the teachings of the two references”
`
`was a combination that included both the flight-function mode switch of James for
`
`automated parachute deployment and the separate CAPS Activation T-handle of
`
`3
`
`
`
`POH for manual parachute deployment. Ex. 1045 ¶89. Patent Owner directly
`
`responded by adding claim language directed to selecting and activating one of two
`
`distinct procedures based upon a pull of the same pull-handle.
`
`Petitioner alleged that substitute claims 140-148 in the MTA were invalid
`
`under 35 U.S.C. § 101. Paper 42 at 12-21. New substitute claims 141-148 eliminate
`
`the § 101 issue by positively reciting that the aircraft is configured to “selectively
`
`activate” (claims 146, 148) or “select” and “activate” (other substitute claims) one
`
`of two specific procedures with a specific device (pull-handle).
`
`Because the rMTA presents new amendments which directly respond to and,
`
`it is submitted, overcome the arguments and issues raised in the opposition and PG,
`
`the rMTA is proper.
`
`III. THE SUBSTITUTE CLAIMS HAVE WRITTEN DESCRIPTION
`SUPPORT
`
`Petitioner’s unsupported attorney argument (8-13) is not sufficient to meet
`
`Petitioner’s burden. Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1246 (Fed. Cir.
`
`2018) (“[W]e have some concern that the Board may have relied on attorney
`
`argument as evidence.… the Board merely cited attorney argument….”).
`
`Petitioner’s argument is that “[n]owhere does the original disclosure describe
`
`a processor selecting an intelligence override procedure based upon a single input.”
`
`Opp. at 9. As an initial point, none of the claims are so limited. Claims 140-145 and
`
`147 require selecting, “using at least a portion of the distributed processing system,
`
`4
`
`
`
`from two procedures”; claims 146 and 148 do not even require selecting. The
`
`recitation of “based upon a pull of the pull-handle” – to which Petitioner is
`
`presumably referring – modifies the clause “configured to activate” not the clause
`
`“capable of selecting/configured to select.”
`
`Even if the recitation “based on a pull of the pull-handle” did modify the
`
`clause “capable of selecting/configured to select,” the recitation of “a pull” includes
`
`one or more pulls. In claim construction, the indefinite article “a” typically means
`
`“one or more.” See Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342–
`
`43 (Fed. Cir. 2008) (“That ‘a’ or ‘an’ can mean ‘one or more’ is best described as a
`
`rule, rather than merely as a presumption or even a convention.”). Because
`
`Petitioner’s argument is logically premised on the notion that the substitute claims
`
`are limited to a single pull, the argument fails.
`
`More generally, as explained by Dr. Bartone, the specification teaches that the
`
`processor selects between the two recited procedures. The specification teaches that
`
`the activation interface may cause the processor to perform an analysis such as
`
`evaluating the airspeed of the aircraft to determine if any actions need to be
`
`performed before activation of the deployment of the ballistic parachute. Ex. 2027
`
`at 15:1-2, 16:23-25. The specification further teaches that the second pull of the pull-
`
`handle may activate the intelligence override feature. Id. at 13:1-2. According to the
`
`preferred embodiment, the system thereby selects one of the following two
`
`5
`
`
`
`procedures based on the number of times the handle is pulled: i) perform an action
`
`and then deploy the parachute, or ii) immediately deploy the parachute. Id.
`
`Dr. Bartone explains that the ’911 Application discloses that the processor
`
`performs an analysis to determine if any pre-deployment actions are to be performed:
`
`In addition, the activation interface 530 could generate data that is sent
`to the processor 405 so that the processor can perform an analysis, as
`discussed below, to determine if any actions need to be performed
`before and/or after the activation of the deployment of the ballistic
`parachute 510.
`
`Ex. 2027 at 12:21-25. Thus, the ’911 Application discloses an activation interface
`
`with a pull-handle (id. at 12:20) generating data that is sent to a processor so that the
`
`processor can perform an “analysis” to “determine” if any actions need to be
`
`performed before and/or after parachute activation. Ex. 2033 ¶57.
`
`The processor 405 performs an analysis “to determine if the airspeed needs to
`
`be decreased for a safe deployment of the ballistic parachute”. Id. at ¶58 (quoting
`
`Ex. 2027 at 15:1-2). “[I]f the airspeed of the aircraft exceeds the maximum parachute
`
`deployment airspeed, then the processor 405 could instruct the autopilot 445 to
`
`initiate a steep climb to rapidly decrease the airspeed of the aircraft.” Ex. 2027 at
`
`16:23-25. Thus, one of skill in the art would understand that the ’911 Application
`
`described an aircraft that performed a first procedure that included using the
`
`aircraft’s autopilot to increase aircraft altitude if the airspeed exceeded the maximum
`
`parachute deployment airspeed, i.e., a reference airspeed. Ex. 2033 ¶58.
`
`6
`
`
`
`The ’911 Application also discloses an intelligence override interface that
`
`immediately activates parachute deployment “regardless of whether the processor
`
`405 determines” that actions need to be performed before parachute deployment.
`
`The ballistic parachute system’s intelligence override interface 540
`immediately activates the deployment of the ballistic parachute 510
`regardless of whether the processor 405 determines that one or more
`actions need to be performed before the activation of the deployment
`of the ballistic parachute 510. … This intelligence override interface
`540 could be a second pull of the above-discussed pull-handle…
`
`
`Ex. 2027 at 12:25-13:2. In other words, the intelligence override procedure, a second
`
`procedure, does not use the autopilot to increase aircraft altitude if aircraft airspeed
`
`is greater than the reference airspeed, as claimed. Instead, it immediately deploys
`
`the parachute. Ex. 2033 ¶59.
`
`One of skill in the art would understand that the ’911 Application discloses
`
`performing the first procedure when the pull-handle is pulled a first time and the
`
`second procedure when the handle is pulled a second time. Id. at ¶¶60-61. In the
`
`preferred embodiment, the processor selects the first procedure (increase altitude and
`
`deploy parachute) if the pull-count equals 1 and selects the second (override)
`
`procedure if pull-count equals 2. Id. at ¶¶62-63.
`
`Thus, the ’911 Application provides written description support for an aircraft
`
`that is [configured to select / capable of selecting / configured to selectively activate
`
`/ capable of selectively activating] a procedure from two procedures and to activate
`
`the selected procedure but not the unselected procedure. Id. at ¶¶56-65.
`
`7
`
`
`
`IV. THE CLAIMS ARE DEFINITE
`
`On definiteness, Petitioner first argues (at 14), again without supporting
`
`declaration evidence of a POSA, that the substitute claims are indefinite because
`
`they do not claim actions that occur “where the aircraft airspeed is not greater than
`
`a reference airspeed.”
`
`There is no § 112, ¶2 requirement that a claim specify every possible scenario
`
`or permutation that its subject matter might encounter, nor does Petitioner cite a case
`
`– much less the testimony of a POSA – to the contrary. In addition, Dr. Bartone
`
`testifies that one of skill in the art would not find the claim amendments ambiguous
`
`just because they do not specify the steps to be performed by the aircraft when the
`
`airspeed is less than the reference airspeed. Ex. 2033 ¶¶80-83.
`
`Petitioner next argues that the claims “do not provide any indication of how
`
`or based on what criteria, if any, the recited ‘selection’ is made”. Opp. at 14. There
`
`is no § 112, ¶2 requirement that a claim specify every possible criterion upon which
`
`a selection is made and Petitioner fails to identify any precedent or declaration
`
`evidence suggesting that the failure to do so in this instance renders the claim
`
`indefinite to a POSA. See also Ex. 2033 ¶¶84-85.
`
`Petitioner lastly argues that “the ‘second procedure’ is ambiguous and unclear
`
`as to whether it actually comprises any action at all”. Opp. at 15. One of skill in the
`
`art would understand that a “procedure” is “a particular way of accomplishing
`
`8
`
`
`
`something.” Ex. 2036, Webster’s Dictionary, p. 910. Dr. Bartone testifies that one
`
`of skill in the art would understand that the second procedure would accomplish
`
`something, such as deploying the parachute. See Ex. 2033 ¶¶86-89.
`
`V.
`
`THE SUBSTITUTE CLAIMS ARE NOT OBVIOUS
`
`A. The rMTA Was Not Required to Identify Evidence Demonstrating
`that the Claims Are Nonobvious
`
`Petitioner argues (at 15-16) that the rMTA should have identified evidence
`
`affirmatively demonstrating that the claims are patentable over the prior art. It is
`
`well-established that the burden of proof on the issues of novelty and obviousness
`
`rest solely on Petitioner. Consol. Tr. Pract. Guide at 67-69. It is not for Patent
`
`Owner to guess what obviousness arguments Petitioner might make as to the
`
`amended claims of an rMTA. An rMTA need not address such issues. Id. Rather,
`
`it is Petitioner’s burden to identify that evidence in its opposition. Id. at 71-72.
`
`B. The Proposed Amendments Limit the Method Claims
`
`Petitioner argues, citing no precedent or supporting declaration evidence, that
`
`substitute claims 140-144 have not been narrowed/limited because most of the
`
`proposed amendments are not to the claimed method steps, but rather to the
`
`structural components of those claims. Opp. at 16-17. Petitioner’s argument errs as
`
`a matter of binding precedent. “All words in a claim must be considered in judging
`
`the patentability of that claim against the prior art.” In re Wilson, 424 F.2d 1382,
`
`1385, 165 USPQ 494, 496 (CCPA 1970). Moreover, in a case involving claims
`
`9
`
`
`
`identical in form to the substitute claims, the Federal Circuit held structural portions
`
`of a method claim clearly limit its scope for purposes of infringement and validity.
`
`Microprocessor Enhancement Corp. v. Texas Instruments Inc, 520 F. 3d 1367, 1375
`
`(Fed. Cir. 2008) (method claims are “clearly limited to practicing the claimed
`
`method in [an apparatus] possessing the requisite structure.”).
`
`C. Petitioner’s Obviousness Argument Fails to Address the Procedure
`Selection Limitations, which Distinguish over the Prior Art
`
`Petitioner’s argument fails to even mention, much less address, the
`
`“Procedure Selection Limitations” that it argues are not supported by the
`
`specification as filed. Opp. at 20-22. Petitioner merely argues – and only in general
`
`terms – that a variety of buttons and switches were known and that “common
`
`interfaces for performing a pre-deployment action and also deploying a parachute
`
`were well-known.” Id. Yet Petitioner never once mentions how the art teaches,
`
`suggests or meets the selection limitations that it so strenuously urges to be
`
`unsupported. Id. Having failed to address all of the claim limitations, Petitioner
`
`cannot be deemed to have established a prima facie case of obviousness. In re
`
`Wilson, 424 F.2d at 1385.
`
`As Dr. Bartone explains, the recited subject matter was counterintuitive at the
`
`time of filing and would not have been obvious to one of skill in the art. Ex. 2033
`
`¶¶110-118. In an effort to avoid accidental parachute deployment, in 2009 aircraft
`
`parachute deployment pull-handles were intentionally designed to be difficult to
`
`10
`
`
`
`activate. Id. at ¶¶111-112; Ex 1007 at 280. For instance, POH’s handle was covered
`
`with a “placarded cover” to prevent “tampering” and activation of the handle
`
`required a 45-pound “chin-up type pull”. Id. at ¶111; Ex. 1007 at 281.
`
`A skilled artisan would thus not consider a pull-handle to be a suitable choice
`
`or substitute for a multi-function user input device. Id. at ¶113; Ex. 2027 at 12:21-
`
`13:2. One of skill in the art would have known that it would be difficult for an
`
`aircraft occupant to accurately control the number of pulls of a pull-handle due to
`
`the large force required to activate the handle. Ex. 2033 ¶113. Requiring an aircraft
`
`occupant to perform multiple chin-ups to select a desired parachute activation
`
`procedure as taught by the ’911 Application would increase the difficulty of the
`
`occupant using the pull-handle to activate a desired parachute deployment
`
`procedure. Id.
`
`Moreover, at the time of filing, aircraft pull-handles for activating a parachute
`
`deployment were known by those of skill in the art to be single-use devices. Id. at
`
`¶114; Ex. 1016 at 2305. For this additional reason, pull-handles would not have
`
`been considered an appropriate design choice for a multiple-function input. Ex. 2033
`
`¶114.
`
`At the time of filing, those of skill in the art further understood that aircraft
`
`parachute deployment handles performed one and only one parachute deployment
`
`procedure. Id. at ¶115; Ex 1007 at 280; Ex. 1016 at 2305-06. POH and James each
`
`11
`
`
`
`teach that the deployment procedure was always the same – immediately deploy the
`
`parachute. Ex 2033 ¶115.
`
`Because parachute deployment handles were at the time of filing (1) difficult
`
`to activate, (2) single-use devices, and (3) single-parachute-deployment-procedure
`
`devices, it would have been counterintuitive to use a parachute deployment pull-
`
`handle to select a procedure and/or activate the selected procedure based upon a pull
`
`of the pull-handle. Id. at ¶116. Thus, one of skill in the art would not have utilized
`
`an aircraft parachute-deployment pull-handle as recited in the substitute claims. Id.
`
`In fact, Dr. Bartone and Petitioner’s expert, Mr. Hoffmann, both agree that, in
`
`a combination of POH and James:
`
`No modification of the CAPS Activation T-handle would be required,
`and this handle would be used only for its existing purpose—immediate
`parachute deployment.
`
`
`Id. at ¶117 (quoting Ex. 1045 ¶89). Thus, both experts agree that Petitioner’s
`
`combination of POH and James would not meet the recitations of the substitute
`
`claims. In light of the above, the recitations of the substitute claims would not have
`
`been obvious over a combination of POH and James. Id. at ¶118.
`
`VI. CONCLUSION
`
`For the reasons stated above Patent Owner respectfully requests that the Board
`
`find the substitute claims not unpatentable.
`
`12
`
`
`
`Respectfully submitted,
`GARDELLA GRACE P.A.
`
`/Greg H. Gardella/
`Greg H. Gardella, Reg. No. 46,045
`Counsel for Patent Owner
`HOYT AUGUSTUS FLEMING
`
`Date: October 7, 2020
`
`
`
`GARDELLA GRACE P.A.
`80 M Street SE, 1st Floor
`Washington, DC 20003
`Telephone: (703) 556-9600
`Facsimile: (703) 740-4541
`
`13
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies service of this
`
`PATENT OWNER’S REPLY TO PETITIONER’S OPPOSITION TO REVISED
`
`MOTION TO AMEND and EXHIBITS 2033, 2036 and 2037 on the counsel of
`
`record for the Cirrus by filing this document through the PTAB E2E System as
`
`well as delivering a copy via electronic mail to the following address(es):
`
`Victor P. Jonas, Victor.Jonas.ptab@faegredrinker.com
`Kevin P. Wagner, Kevin.Wagner@faegredrinker.com
`Joel D. Sayres, Joel.Sayres@faegredrinker.com
`
`Respectfully submitted,
`GARDELLA GRACE P.A.
`
`/Esther Carner/
`Esther Carner
`On behalf of Patent Owner
`HOYT AUGUSTUS FLEMING
`
`Date: October 7, 2020
`
`
`
`GARDELLA GRACE P.A.
`80 M Street SE, 1st Floor
`Washington, DC 20003
`Telephone: (703) 556-9600
`Facsimile: (703) 740-4541
`
`
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