Takeaway: A reference is prior art for all that it teaches, even if the reference discloses an inoperative device; thus, a non-enabling reference may qualify as prior art for the purpose of determining obviousness under § 103.

In its Final Written Decision, the Board found that Petitioner had shown by a preponderance of the evidence that claims 1, 2, and 5-8 of the ‘612 patent are unpatentable. In particular, the Board found that Petitioner had adequately shown that claims 6-8 are unpatentable as anticipated under 35 U.S.C. § 102 and that claims 1, 2, and 5-8 are unpatentable as having been obvious under 35 U.S.C. § 103.

The claims of the ‘612 patent relate to, for example, an “[a]pparatus for controlling activation of a motor coupled to a motor vehicle window or panel for moving said window or panel along a travel path and de-activating the motor if an obstacle is encountered by the window or panel, said apparatus[.]” The Board had instituted inter partes review of claims 1, 2, and 5-8 on the following unpatentability grounds: (1) anticipation of claims 6–8 by Bernard under 35 U.S.C. § 102; (2) obviousness of claims 1, 2, and 5-8 in view of Lamm, Itoh, and Bernard under 35 U.S.C. § 103; and (3) obviousness of claims 1, 2, and 6-8 in view of Duhame and Kinzl under 35 U.S.C. § 103.

The Board construed a number of claim limitations in performing its analysis. These included: “identifying a collision of the window or panel with an obstacle” (claim 1); “deactivate said motor in response to a sensing of a collision” (claim 1); “a control signal . . . to deactivate said motor” (claims 1 and 6); and “deactivate said motor in response to a sensing said window or panel has stopped moving” (claim 6).

As for the assertion of anticipation based on Bernard, the Board was not convinced by Patent Owner’s argument with respect to claim 6 that Bernard does not sense “abrupt stoppage” of the window. Instead, it was the Board’s view that claim 6 does not require “abrupt” stoppage.

The Board was not convinced by Patent Owner’s non-obviousness arguments. As stated by the Board, “[o]bviousness does not require direct substitution.” As for Patent Owner’s argument that “Itoh and Bernard each fail to teach two concurrently executing algorithms[,]” the Board found that this assertion was “not founded on a proper claim construction.” The Board was not convinced by Patent Owner’s other patentability arguments either. For example, the Board did not find convincing the argument that Duhame and Kinzl cannot be combined.

Patent Owner had challenged that “Lamm, Itoh, and Kinzl are non-enabling references that would require undue experimentation to make or use because of an inordinate amount of false positives and false negatives that would occur with Itoh’s and Kinzl’s respective algorithms.” The Board disagreed, citing case law for the propositions that “[e]ven if a reference discloses an inoperative device, it is prior art for all that it teaches[,]” and that “a non-enabling reference may qualify as prior art for the purpose of determining obviousness under § 103.”

Petitioner had filed a Motion to Exclude portions of the opinion testimony of Dr. Mark Ehsani. But since the Board had not relied on any of the exhibits sought to be excluded, it dismissed the Motion to Exclude as being moot.

Webasto Roof Systems, Inc. v. UUSI, LLC, IPR2014-00648

Paper 33: Final Written Decision

Dated: October 13, 2015

Patent: 8,217,612 B2

Before: Glenn J. Perry, Hyun J. Jung, and Jason J. Chung

Written by: Perry

Related Proceedings: UUSI, LLC v. Robert Bosch LLC, No. 2:13-cv-10444 (E.D. Mich.) (“UUSI v. BNA”); UUSI, LLC v. Webasto Roof Sys., Inc., No. 2:13-cv-11704 (E.D. Mich.) (“UUSI v. Webasto”); IPR2014-00416; IPR2014-00417; IPR2014-00649; and IPR2014-00650