Trials@uspto.gov Paper 9 Tel: 571-272-7822 Entered: August 17, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD HOPKINS MANUFACTURING CORPORATION and THE COAST DISTRIBUTION SYSTEM, INC., Petitioners, v. CEQUENT PERFORMANCE PRODUCTS, INC., Patent Owner. Case IPR2015-00616 Before WILLIAM V. SAINDON, BARRY L. GROSSMAN, and JEREMY M. PLENZLER, Administrative Patent Judges. GROSSMAN, Administrative Patent Judge. DECISION Denying Institution of Inter Partes Review 37 C.F.R. 42.108
I. INTRODUCTION Hopkins Manufacturing Corporation and The Coast Distribution System, Inc. ( Petitioners ) filed a Petition requesting an inter partes review of claims 1, 7, 8, 10, 11, 19, 20, 64, 65, 66, 67, 70, 71, 72, 74, 75, and 76 of U.S. Patent No. 6,068,352 ( the 352 patent ). Paper 1 ( Pet. ). Cequent Performance Products, Inc. ( Patent Owner ) filed a Preliminary Response. Paper 8 ( Prelim. Resp. ). We review the Petition under 35 U.S.C. 314, which provides that an inter partes review may not be instituted unless... there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition. Based on the record before us, we are not persuaded that the information presented in the Petition demonstrates a reasonable likelihood that Petitioners would prevail in proving that at least one challenged claim is unpatentable based on the cited references. Accordingly, we deny the Petition and do not institute an inter partes review. A. The 352 Patent The 352 patent discloses a brake controller for electrically actuated braking systems. Ex. 1001, col. 1, ll. 5 6. These braking systems apply the brakes of towed vehicles, such as a trailer, in response to commands from the towing vehicle. Id. at col. 1, ll. 6 7. Figure 1 from the 352 patent is shown below. 2
Figure 1 is a block circuit diagram showing a brake controller in accordance with the disclosed invention. As shown in Figure 1, connected to microcontroller 10 are a variety of circuits, which include voltage supply circuit 12, brake light circuit 14, sensor input circuit 16, manual input circuit 18, gain adjustment circuit 20, display circuit 22, power switching circuit 24, current sense circuit 26, and power control circuit 28. Id. at col. 5, ll. 27 36. In general operation, as described at column 5, lines 37 62, signals are supplied to gain adjustment circuit 20 from either sensor input circuit 16 or manual input circuit 18 when braking of the towed vehicle is demanded. Gain adjustment circuit 20 generates a signal output that represents the magnitude of the desired braking. Microcontroller 10 receives the signal output of gain adjustment circuit 20, and, in response thereto, generates a pulse width modulated (PWM) drive signal. This PWM drive signal is supplied to power switching circuit 24, which, in conjunction with power control circuit 28, applies current to the towed vehicle s brakes according to the PWM drive signal. Current sense circuit 26 senses the current draw of the towed vehicle s brakes and in 3
cooperation with microcontroller 10 monitors for a short circuit condition in the brakes. C. Representative Claim Claims 1, 19, and 64 are independent claims. Claim 1 is representative and is reproduced below. 1. A brake controller for controlling the brakes of a towed vehicle, said brake controller comprising: an input circuit for generating a brake level signal representing the braking force to be applied by the towed vehicle's brakes; a display circuit including a plurality of indicator lights; a power switching circuit and adapted for coupling to the brakes of the towed vehicle and to the power supply of the towing vehicle, for selectively supplying power from the towing vehicle power supply to the brakes of the towed vehicle in response to a switching control signal supplied to a control input terminal; a current sensing circuit for sensing a level of braking current supplied to the brakes of the towed vehicle through said power switching circuit, and for generating a current level signal representing the sensed level of braking current; and a microcontroller coupled to said input circuit, said display circuit, said current circuit, and to said power switching circuit, said microcontroller generating and supplying a switching control signal to said control input terminal of said power switching circuit thereby causing said power switching circuit to deliver a braking current to the brakes of the towed vehicle that is related to the brake level signal supplied to said microcontroller by said input circuit, said microcontroller illuminating one or more of said indicator lights of said display circuit to indicate a relative level of braking of the towed vehicle brakes and controlling one or more of said indicator lights to indicate that the towed vehicle brakes are or are not properly connected to said power switching circuit. 4
D. References Relied Upon Petitioners rely upon the following prior art references: Reference Date Exhibit Number Eccleston Iss. Sep. 22, 1992 Ex. 1003 U.S. Pat. No. 5,149,176 McGrath Iss. Apr. 15, 1997 Ex. 1004 U.S. Pat. No. 5,620,236 Tomecek Iss. Sep. 21, 1976 Ex. 1006 U.S. Pat. No. 3,981,544 Frait Iss. Feb. 23, 1988 Ex. 1007 U.S. Pat. No. 4,726,627 Domanico Iss. Jul. 16, 1991 Ex. 1008 U.S. Pat. No. 5,032,821 Williams U.S. Pat. No. 5,471,635 Iss. Nov. 28, 1995 Ex. 1009 E. The Asserted Grounds Petitioners assert the following five grounds of unpatentability, all of which are based on 35 U.S.C. 103(a) (Pet. 3): Claims Challenged References 1, 10, 64, 65, 66, 67, Eccleston and McGrath 70, and 74 7, 8, 11, 71, and 75 Eccleston, McGrath, and Tomecek 5
1, 10, 64, 65, 66, 67, 70, 72, 74, and 76 McGrath, Eccleston, and Williams 1 7, 8, and 11 McGrath, Eccleston, and Frait 19 and 20 McGrath, Eccleston, and Domanico II. ANALYSIS A. Claim Construction In an inter partes review, claim terms in an unexpired patent are interpreted according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. 42.100(b); In re Cuozzo Speed Technologies LLC, _ F.3d _, No. 2014-1301, 2015 WL 4097949, at *7 8 (Fed. Cir. July 8, 2015) ( Congress implicitly approved the broadest reasonable interpretation standard in enacting the AIA, and the standard was properly adopted by PTO regulation ). Claim terms also are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). We determine, for purposes of this Decision, that specific construction of the claims is not required. 1 In stating this ground of asserted unpatentability (Pet. 3, 41), Petitioners assert that all three identified references are applied against all the identified claims. In fact, however, Petitioners assert Williams only against claim 72, not against any of the other identified claims. Id. at 27, 51. 6
B. Asserted Grounds of Unpatentability 1. Independent Claims 1 and 64 Ground 1 In what Petitioners have identified as Ground 1, Petitioners assert independent claims 1 and 64 would have been obvious based on Eccleston and McGrath. Pet. 3, 13 20, 24. Under the statute, any petition for inter partes review must identif[y]... with particularity... the grounds on which the challenge to each claim is based. 35 U.S.C. 312(a)(3). Petitioners have the burden of proof to establish that it is entitled to the requested relief. 37 C.F.R. 42.20(c). We address only the basis, rationale, and reasoning put forth by the Petitioners in the Petition, and resolve all vagueness and ambiguity in Petitioners arguments against Petitioners. See Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., Case CBM-2012-00003, slip op. at 10 (PTAB Oct. 25, 2012) (Paper 8). The petition must include a detailed explanation of the significance of the evidence. Id. 42.22(a)(2). The petition also must specify where each element of the claim is found in the prior art patents or printed publications relied upon. Id. at 42.104(b)(4)). Additionally, the petition must identify the relevance of the evidence to the challenge raised, including identifying specific portions of the evidence that support the challenge. Id. at 42.104(b)(5) (emphasis added). The Board may exclude or give no weight to the evidence where a party has failed to state its relevance or to identify specific portions of the evidence that support the challenge. Id. As explained below, we determine that the Petition does not comply with these requirements and thus does not meet Petitioners burden of proof. In discussing independent claim 1, Petitioners state generally that Eccleston discloses an input circuit, a display circuit, a power switching circuit, a 7
current sensing circuit, and a microprocessor control. Pet. 13 14 (citations omitted). These broad circuit labels, however, do not correspond with the detailed recitation in claim 1 of the specific elements claimed. For example, the power switching circuit in claim 1 recites: a power switching circuit and adapted for coupling to the brakes of the towed vehicle and to the power supply of the towing vehicle, for selectively supplying power from the towing vehicle power supply to the brakes of the towed vehicle in response to a switching control signal supplied to a control input terminal. Regarding the power switching circuit of claim 1, Petitioners state Eccleston specifically discloses a MOSFET output stage shown in Fig. 1, comprising MOSFETs Q2 and Q3, making the connection, when turned on, between a 12-V source (battery) and load L1 (brake electromagnets). Pet. 15 (citing Ex. 1003, 4:18-43, 10:65 11:19 and Ex. 1010, 45 ). Petitioners do not provide any explanation of the significance of the cited evidence to the specific power switching circuit limitations in claim 1. Petitioners also do not specify where each element of the power switching circuit limitations in claim 1 is found in the Eccleston passage quoted above or in the cited portions from Eccleston. For example, to establish that Eccleston discloses the power switching circuit recited in claim 1 of the 352 patent, Petitioners cite to column 4, lines 18 43 of Eccleston. Id. The cited passage is reproduced below. Referring now to drawings, and the illustrative embodiments depicted therein, a first controller circuit is shown in FIG. 1, the upper portion of the circuit, designated generally by the numeral 10, comprises the braking current control portion of the circuit, while the lower portion, generally designated by the numeral 12, comprises the novel braking current display-generation means. Referring first to the braking current control portion of the circuit 10, the control circuit generally includes a detection and control portion 14 shown at the left and, proceeding toward the right, 8
includes a dual-slope integrator section 16, a variable-pulsewidth modulator 18 which includes an integrated circuit 20 and logic switch means 22 (both described in more detail hereinafter), and an output stage 24 comprising the aforementioned MOSFET elements, which may be single or double in form as described hereinafter. As shown, the output stage 24 has an output conductor 26 which comprises the connection to the towed vehicle (trailer) brake actuators, here symbolized by the large inductive winding labeled "L1," it being understood that in actual practice there will be a number of individual such inductances in parallel, each comprising the electromagnet which actuates one set of brakes at one wheel, all wheels usually being controlled simultaneously and in a substantially identical fashion. Ex. 1003, col. 4, ll. 18 43. Petitioners provide no persuasive explanation or analysis in the Petition of what in this extensive, generic passage corresponds to, or suggests, the power switching circuit recited in claim 1. It is Petitioners responsibility to explain specific evidence that support its arguments, not the Board s responsibility to search the record and piece together what may support Petitioner s arguments. Dominion Dealer Solutions, LLC v. Autoalert, Inc., Case IPR2013-00225, slip op. at 4 (PTAB Oct. 10, 2013) (Paper 15). Petitioners claim charts do not clarify Petitioners analysis and fail to compensate for the deficiencies identified above. Continuing with the example of the power switching circuit limitations in claim 1, the claim chart (Pet. 29 30) merely quotes extensive portions from the Eccleston disclosure without any corresponding discussion or analysis in the text of the Petition of the significance or relevance of the extensive claim chart quotations to the claim limitations. Claim 9
charts are not a substitute for analysis of the evidence and argument to support Petitioners position. 2 As stated in the Office Patent Trial Practice Guide, While not required, a petitioner may file a claim chart to explain clearly and succinctly what the petitioner believes a claim means in comparison to something else, such as another claim, a reference, or a specification. Where appropriate, claim charts can streamline the process of identifying key features of a claim and comparing those features with specific evidence. 77 Fed. Reg. 48756, 48764 (Aug. 14, 2012). Merely quoting extensive passages from the references in a claim chart without any supporting analysis in the Petition does not identify specific portions of the evidence that support Petitioners challenge of claim 1, as required by our rules. For example, for the power switching circuit, Petitioners state the following in the claim chart: 3 1. Eccleston discloses the present invention provides a new form of electronic controller for electric braking systems which interacts with the vehicle braking system through an N-channel power MOSFET, which is the control element for the braking current supplied to the electromagnets that actuate the brakes. (Eccleston, Col. 3, ll. 31-38). 2. the control circuit generally includes logic switch means 22 and an output stage 24 comprising MOSFET elements the output stage 24 has an output conductor 26 which comprises the connection to the towed vehicle (trailer) brake actuators (Eccleston, Fig. 1 & Col. 4, ll. 18-43, and Col. 10, ll. 65 Col. 11, ll. 19) 3. Basically, this compound switch operates in conjunction with the output from the pulse-width modulator to control conduction of the MOSFET output transistor Q2 (Eccleston, Fig. 1 & Col. 5, ll. 67-68; Col. 6, ll. 1-8) 2 Petitioners claim charts begin on page 28 of the Petition and conclude on page 58, thus constituting about 30 pages of the 59 page Petition. 3 We have added italicized numbers to the paragraphs in the claim chart for ease of reference to these paragraphs in later discussion in this Decision. 10
4. As illustrated, these components are connected across output stages Q2 and Q3, and between twelve volt supply conductor 28 and the floating ground conductor 30, the latter in fact providing the excitation appearing on output conductor 26... (Eccleston, Fig. 1 & Col. 6, ll. 25-31) 5. the output from the PWM (IC U1), appearing on pin 7, constitutes a repetitive pulse whose width is a function of the control signal from circuit portion 14, as a function of the internal comparison with the aforementioned sawtooth wave. This output from pin 7 is inverted through the analog switch stage 22 and applied to the gate of output MOSFET Q2 to provide brake actuating excitation on output conductor 26. (Eccleston, Fig. 1 & Col. 6, ll. 62-68; Col. 7, ll. 1-2) 6. The duty cycle of the brake actuation current pulses is a function of the magnitude of the control signal. (Eccleston, Fig. 1 & Col. 9, ll. 46-48). (Ex. 1010, 45). Pet. 29 30. The only quoted passage from the claim chart analyzed or discussed in the Petition is paragraph 2. Id. at 15. Petitioners do not provide any discussion in the text of the Petition as to how the remaining five quoted passages in the claim chart relate to the power switching circuit limitation in claim 1. We repeat what we stated above, it is Petitioners responsibility to explain specific evidence that support its arguments, not the Board s responsibility to search the record and piece together what may support Petitioner s arguments. The discussion of the current sensing circuit clause in claim 1 provides another example of where the Petition does not provide a detailed explanation of the significance of the evidence. This clause recites a current sensing circuit for sensing a level of braking current supplied to the brakes of the towed vehicle through said power switching circuit, and for generating a current level signal representing the sensed level of braking current. Petitioners assert [r]egarding the current sensing circuit of claim 1, Eccleston discloses braking current detection and display and explains how the resistance of the MOSFET in its ON state can be 11
used to detect current. Pet. 15. Petitioners provide no citation to support this statement, nor do they relate this statement to the specific recitations in claim 1. Petitioners do not persuasively address how Eccleston discloses or suggests that the current sensing circuit senses current supplied through the power switching circuit, as recited in claim 1. Again, Petitioners claim chart for the current sensing circuit (Pet. 30) does not clarify the analysis in the Petition with its extensive quotes from Eccleston without discussion or analysis in the Petition of the significance or relevance of the quotations to the claim limitations. Regarding independent claim 64, Petitioners entire argument is as shown in Grounds 1 and 3, many of the arguments for claim 1 above also apply to identical elements recited in this claim which merely eliminates one of the limitations of claim 1. Id. at 24 (emphasis added). Petitioners do not identify which of the arguments from claim 1 apply, and which do not. a. Rationale The Supreme Court has made clear that we apply an expansive and flexible approach to the question of obviousness. KSR Int l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007). Whether a patent claiming the combination of prior art elements would have been obvious is determined by whether the improvement is more than the predictable use of prior art elements according to their established functions. Id. at 417. To reach this conclusion, however, requires more than a mere showing that the prior art includes separate references covering each separate limitation in a claim under examination. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness requires the additional showing that a person of ordinary skill at the time of the invention would have selected and combined those prior art elements in the normal course of research and development to yield the claimed invention. Id. 12
For independent claim 1, Petitioners assert that given Eccleston s express suggestion to substitute a microprocessor controller into the disclosed circuit, and McGrath s disclosure of a microprocessor, [i]t is a matter of simple design choice to use the current sensing circuit with the microprocessor of McGrath to display the sensed current. Pet. 16. We find two problems with this statement. First, it merely applies the conclusory label simple design choice to the proposed modification without a fact-based analysis as to why it would have been a simple design choice and how the proposed modification would have met the specific limitations of claims 1 and 64. We may not find a patent invalid for obviousness based on mere conclusory statements. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) ( However, rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. ) (cited with approval in KSR, 550 U.S. at 418). Second, it violates our rules against incorporation by reference. To explain the asserted simple design choice, Petitioners cite to five paragraphs of the Expert Report of Mark Horenstein, Ph.D. Pet. 16 (citing Ex. 1010 47 51). The cited paragraphs from Dr. Horenstein begin on page 34 of his report and end on page 38. On these five pages, Dr. Horenstein provides an extensive, detailed, technical analysis to reach the opinion he states in paragraph 51 of his Declaration that a skilled person would again be motivated to combine McGrath with Eccleston, because the advantages of using a microcontroller or microprocessor to drive the display would be appealing to that person. Ex. 1010 51. Dr. Horenstein opines that the proposed combination of references would eliminate the need for extraneous integrated circuits. Id. Dr. Horenstein s detailed analysis, 13
however, does not address how the proposed modification would meet the specific requirements of the microcontroller recited in claim 1, which is: a microcontroller coupled to said input circuit, said display circuit, said current circuit, and to said power switching circuit, said microcontroller generating and supplying a switching control signal to said control input terminal of said power switching circuit thereby causing said power switching circuit to deliver a braking current to the brakes of the towed vehicle that is related to the brake level signal supplied to said microcontroller by said input circuit, said microcontroller illuminating one or more of said indicator lights of said display circuit to indicate a relative level of braking of the towed vehicle brakes and controlling one or more of said indicator lights to indicate that the towed vehicle brakes are or are not properly connected to said power switching circuit. Petitioners also assert that the proposed combination of Eccleston and McGrath would have been obvious because using a microprocessor enhances functionality by permitting the replacement of circuitry with programmed functionality on the microprocessor. Pet. 18 (citing Ex. 1010 42-51). Here, Petitioners cite ten paragraphs from Dr. Horenstein s Declaration, covering nine pages of text. The additional cited paragraphs from Dr. Horenstein s Declaration also do not specifically address the limitations in claim 1. Our rules preclude incorporation by reference. 37 C.F.R. 42.6(a)(3) ( Arguments must not be incorporated by reference from one document into another document. ). Incorporation by reference occurs, for example, when one document cites large portions of another document, without sufficient explanation of those portions. Cisco Sys., Inc. v. C-Cation Techs., LLC, Case IPR2014-00454, slip op. at 8 (PTAB Aug. 29, 2014) (Paper 12) (citing large portions of another document, without sufficient explanation of those portions, amounts to incorporation by reference ). Incorporation by reference serves to circumvent the 14
60-page limit imposed on petitions for inter partes review, while also obscuring the arguments and evidence by requiring the Patent Owner and the Board to sift through the Declaration to locate specific, relevant arguments. Arguments and information that are not presented and developed in the Petition, but are incorporated by reference to Dr. Horenstein s Declaration, are not entitled to consideration. Accordingly, based on the record before us, and for purposes of this Decision, we are not persuaded that that there is a reasonable likelihood that Petitioners would prevail in establishing that claims 1 and 64 would have been obvious in view of Eccleston and McGrath. 2. Independent Claims 1 and 64 Ground 3 In what Petitioners have identified as Ground 3, Petitioners assert independent claims 1 and 64 would have been obvious based on McGrath and Eccleston, the same references applied against these claims in Ground 1. Pet. 3, 19 20, 24. As discussed above, Petitioners do not assert Williams, mentioned in Ground 3, against independent claims 1 and 64. Based on the claim charts, in Ground 3, Petitioners assert Williams only against claim 72. Pet. 51. Although McGrath and Eccleston in Ground 3 are the identical references applied against the identical independent claims as in Ground 1, Petitioners analysis and citation of the references in Ground 3 is slightly different from Ground 1. Petitioners analysis of McGrath in Ground 3 is cursory. Petitioners state only that McGrath discloses a microprocessor and also discloses each element of claim 1 except for the current sensing circuit, which is clearly shown in Eccleston. (See Ground 3, below). Id. at 18 (citing Ex. 1010 70 77). The cited eight paragraphs from Dr. Horenstein s Declaration (Ex. 1010) extend for eleven pages, 15
from page 64 to page 75. As discussed above, arguments and information that are not presented and developed in the Petition, but are incorporated by reference to Dr. Horenstein s Declaration, are not entitled to consideration under our rules. The entire discussion of the references and rationale for combining them in the context of Ground 3 is thirteen lines of text. Id. at 19 20. In Ground 3, Petitioners acknowledge that McGrath does not expressly disclose controlling one or more of said indicator lights to indicate that the towed vehicle brakes are or are not properly connected to said power switching circuit, as recited in claim 1. Id. at 19. Petitioners assert, however, that this missing claim limitation is taught and/or suggested in Eccleston. Id. Petitioners assert it would have been obvious to combine McGrath with Eccleston given Eccleston s express suggestion to substitute a microprocessor controller into the disclosed circuit. Id. at 19 20. The rationale for the proposed combination is that [i]t is a matter of simple design choice to use the current sensing circuit of Eccleston with the microprocessor of McGrath to display the sensed current. Id. at 20 (citing Ex. 1010 48, 70-77). For the same reasons as discussed above for the rationale asserted in Ground 1, we also find unpersuasive the rationale asserted in Ground 3. 3. Independent Claim 19 Ground 5 Petitioners assert that independent claim 19 would have been obvious based on McGrath, Eccleston, and Domanico. Pet. 22. An element recited in claim 19 is malfunction monitoring means for monitoring the functioning of said microcontroller and resetting said microcontroller when a malfunction is detected. Ex. 1001, col. 42, ll. 52 54. Petitioners treat this as means plus function clause under 35 U.S.C. 112 6. Pet. 23. Section 112 6 provides that 16
[a]n element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. 35 U.S.C. 112 6 (1994) (emphasis added). Thus, 112 6 operates to restrict claim limitations drafted in such functional language to those structures, materials, or acts disclosed in the specification (and their equivalents) that perform the claimed function. Personalized Media Commc ns, LLC v. Int l Trade Comm n, 161 F.3d 696, 703 (Fed. Cir. 1998). [U]se of the word means' creates a presumption that 112, 6 applies. Williamson v. Citrix Online, LLC, No. 2013-1130, 2015 WL 3687459, at *7 (Fed. Cir. June 16, 2015) (citing Personalized Media 161 F.3d at 703). Here, the claim 19 clause uses the word means. Thus, the presumption is that 112 6 applies. Petitioners assert that the structure recited in the 352 patent for malfunction monitoring, as recited in claim 19, and 20, is a watchdog control circuit. Pet. 23 (citing Ex. 1001, col. 6, ll. 16 30). The cited disclosure states that the watchdog control circuit consists of resistor R35, diode D3, and capacitor Cll. Ex. 1001, col. 6, ll. 19 20. If the microcontroller malfunctions, the watchdog control circuit resets the microcontroller. Ex. 1001, col. 6, ll. 16 24. The Specification also states that the watchdog control circuit also provides a power on reset which, during power up, keeps the microcontroller in a reset state until it has received its full operating voltage, thus preventing the microcontroller from operating until it is in proper sequence and is internally set. Id. at 24 30. Patent Owner asserts that Petitioners failed to identify the specific portions of the Specification that describe the structure, material, or acts corresponding to 17
each claimed function in the means plus function clause, as required by 37 C.F.R. 42.104(b)(3). Prelim. Res. 20 22. For purposes of this Decision, we determine that Petitioners identification of structure, as discussed above, complies with Rule 42.104(b)(3). Petitioners assert [a] power interruption, as disclosed in McGrath, is considered a malfunction. Pet. 22. Petitioners do not cite or otherwise direct us to evidentiary support for this statement, nor do Petitioners explain persuasively how McGrath discloses or suggests this claim limitation. As a rationale for the proposed combination of references, Petitioners assert: (1) [a] person skilled in the art building a controller for electric brakes would be aware of watchdog timers and would likely incorporate one into any design that required robustness (id. at 23 (citing Ex. 1010 95 100)); (2) these systems [McGrath and Domanico] are associated with resetting a microcontroller when a malfunction is detected (id.); and (3) a person of ordinary skill would have understood the watchdog circuit disclosed in Domanico was either identical to or at least an equivalent structure to the disclosed structure in the 352 Patent for monitoring the functioning of the microcontroller and resetting the microcontroller if a malfunction is found (id. at 24 (citing Ex. 1010 95-100). We determine that Petitioners rationale is not supported by evidence establishing or persuasive argument why a person or ordinary skill would have made the proposed modifications. Moreover, the six paragraphs from Dr. Horenstein s Declaration (Ex. 1010) cited to support Petitioners rationale extend for about ten pages. As discussed above, arguments and information that are not 18
presented and developed in the Petition, and instead are incorporated by reference, are not entitled to consideration. Accordingly, we are not persuaded that Petitioners have met their burden of establishing a reasonable likelihood that claim 19 would have been obvious based on McGrath, Eccleston, and Domanico. 3. Dependent Claims We have reviewed the evidence and arguments presented by the parties and determine that the additional arguments and evidence presented by Petitioners, identified as Ground 2 and Ground 4, do not compensate for the deficiencies in the evidence and arguments discussed above. III. CONCLUSION For the foregoing reasons, based on the information presented in the Petition, we determine that Petitioners have not demonstrated a reasonable likelihood that it would prevail in establishing that any of claims 1, 7, 8, 10, 11, 19, 20, 64, 65, 66, 67, 70, 71, 72, 74, 75, and 76 of the 352 patent are unpatentable. Accordingly, we deny the Petition and do not institute an inter partes review. For the reasons given, it is IV. ORDER ORDERED that the Petition challenging the patentability of claims 1, 7, 8, 10, 11, 19, 20, 64, 65, 66, 67, 70, 71, 72, 74, 75, and 76 of the 352 patent is denied. 19
FOR PETITIONERS: Scott Brown jcrawford@hoveywilliams.com Matthew Walters mwalters@hoveywilliams.com FOR PATENT OWNER: David Cupar dcupar@mcdonaldhopkins.com Matthew Cavanagh mcavanagh@mcdonaldhopkins.com 20