Gatekeeper Systems, Inc.v.Dane Technologies, Inc.Download PDFPatent Trial and Appeal BoardNov 21, 201310947831 (P.T.A.B. Nov. 21, 2013) Copy Citation Trials@uspto.gov Paper 15 571-272-7822 Date: November 21, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ GATEKEEPER SYSTEMS, INC. Petitioner v. DANE TECHNOLOGIES, INC. Patent Owner ____________ Case IPR2013-00305 Patent 7,389,836 ____________ Before JAMESON LEE, BIBHU R. MOHANTY, and JOSIAH C. COCKS, Administrative Patent Judges. COCKS, Administrative Patent Judge. DECISION Denying Institution of Inter Partes Review 37 C.F.R. § 42.108 IPR2013-00305 Patent 7,389,836 2 I. INTRODUCTION Petitioner, Gatekeeper Systems, Inc. (“Gatekeeper”), requests inter partes review of claims 1-12 of U.S. Patent No. 7,389,836 (“the ’836 patent”) pursuant to 35 U.S.C. § 311 et seq. 1 Patent Owner, Dane Technologies, Inc. (“Dane”), has filed a preliminary response under 37 C.F.R. § 42.107(b). 2 We have jurisdiction under 35 U.S.C. § 314. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides as follows: THRESHOLD -- The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition. For the reasons set forth below, the Board has determined not to authorize institution of an inter partes review. A. The ’836 Patent (Ex. 1006) The ’836 patent is directed to a power-assisted cart retriever with attenuated power output. Ex. 1006, Abstract. The ’836 patent summarizes its disclosed invention as “a motorized shopping cart retriever that includes an electronic controller configured to attenuate the power output of the retriever’s drive system” so as to reduce the risk that the retriever will be subjected to overload conditions. Id. at col. 2, ll. 28-34. The ’836 patent explains that power attenuation is 1 See “Petition for Inter Partes Review of U.S. Patent No. 7,389,836 Pursuant to 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42.100 et seq.,” filed May 23, 2013 (“Pet.”) (Paper 1). 2 See “Preliminary Response of Patent Owner,” filed August 29, 2013 (“Prelim. Resp.”) (Paper 14). IPR2013-00305 Patent 7,389,836 3 accomplished through first and second power limits associated with the controller. Id. at col. 2, ll. 55-61. In particular, the ’836 patent describes those power limits as follows: The first power limit is the controller’s normal power limit that results when the controller self-limits its maximum power output through a current or temperature sensing feature of the controller that exists to prevent damage to the controller. The second power limit is selectable and limits the control[ler]’s maximum power output to a level that is less than that of the first power limit. Id. Thus, the first power limit serves to limit maximum power output based on a sensed condition, such as temperature, whereas the second power limit is selected so as to limit the controller’s maximum power output to a level “less than” that of the first power limit. Figure 2 of the ’836 patent is reproduced to the left and illustrates a sectional side elevation of a cart retriever disclosed in the ’836 patent. Ex. 1006, col. 4, ll. 9-11 (describing Figure 2). As shown in Figure 2, shopping cart retriever 2 includes seat 4, steering wheel 6, electric motor 8, drive system 10, controller 12, and speed throttle control 14 in communication with the controller. Id. at col. 4, ll. 27-34. Figure 3 is reproduced below and is a graphical representation of the “performance characteristics” of an electric motor of the retriever that operates in various modes by the controller, id. at col. 4, ll. 12-14: IPR2013-00305 Patent 7,389,836 4 As illustrated in Figure 3 above, the controller includes a first power limit, “internal limit” 20, which self-limits the maximum power output based on temperature or current level sensing of the controller and is represented as a horizontal dashed line extending from the y-axis, i.e. the axis labeled “Power Level.” See Ex. 1006, col. 4, ll. 52-58. The controller also has a second power limit, “selected limit” 24, which is in addition to, and less than, the internal limit 20, and is selected based on power levels that are optimal for the operating life of the cart retriever. Id. at col. 4, ll. 59-66. Selected limit 24 also is represented as a horizontal dashed line extending from the y-axis. Independent claim 1 is reproduced below: 1. A shopping cart retriever comprising: an electric motor; IPR2013-00305 Patent 7,389,836 5 a drive system powered by the electric motor; a controller that controls power to the electric motor and includes a first power limit and a second power limit; and a throttle control in communication with the controller, wherein the first power limit is the controller’s normal power limit that results when the controller self-limits its maximum power output through a sensing feature of the controller that exists to prevent damage to the controller, wherein the second power limit is selectable and limits the controller’s maximum power output to a level that is less than that of the first power limit, and wherein the sensing feature is a temperature sensing feature that senses a temperature of the controller. Ex. 1006, col. 8, ll. 22-36. Thus, according to claim 1, the sensing feature that serves to limit the controller’s maximum power output as a part of the first power limit is specifically a “temperature sensing feature.” B. The Prior Art Gatekeeper relies on the following prior art: Konrad US 4,423,362 Dec. 27, 1983 Ex. 1012 Schugt US 6,220,379 B1 Apr. 24, 2001 Ex. 1015 Manual for Curtis PMC 1223/33, 1225/35, 1227/37 MultiMode™ Motor Controllers, p/n 16879, Rev. B: September 2000 (the “Curtis 1237 Manual”) (Ex. 1016); Handbook of Electric Motors (Richard H. Engelmann & William H. Middendorf eds., Marcel Dekker, Inc., 1 st ed. 1995), (the “Electric Motors Handbook”) (Ex. 1018); “[A]pplicant-admitted prior art” appearing in the ’836 patent at column 6, lines 33-41 (the “Admitted Prior Art”). Pet. 9, 34-35. IPR2013-00305 Patent 7,389,836 6 C. The Alleged Grounds of Unpatentability Gatekeeper contends that claims 1-12 of the ’836 patent are unpatentable under 35 U.S.C. § 103(a) on the following grounds (Pet. 9): References Claims challenged Schugt and the Curtis 1237 Manual 1-4, 6, and 7 Schugt, the Curtis 1237 Manual, and the Admitted Prior Art 5 Schugt, the Curtis 1237 Manual, and the Electric Motors Handbook 8-12 Schugt and Konrad 1-4, 6, 7, 10, and 12 Schugt, Konrad, and the Admitted Prior Art 5 Schugt, Konrad, and the Electric Motors Handbook 8, 9, and 11 II. ANALYSIS A. Claim Construction The Board construes a claim in an inter partes review using the “broadest reasonable construction in light of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b); see Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012). That construction must be consistent with the specification, and “the claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010). In other words, claim terms 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). IPR2013-00305 Patent 7,389,836 7 Here, both Gatekeeper and Dane contend that all claims of the ’836 patent should be given their broadest reasonable interpretation in light of the specification. Pet. 16-17; Prelim. Resp. 5. In reviewing the record, we determine that the patentee has not attempted to be its own lexicographer by defining special meanings for certain terms. Accordingly, all terms of the involved claims of the ’836 patent take on their ordinary and customary meaning. We also determine that, on this record, no particular term needs to be construed expressly. The parties have no apparent dispute as to the meaning of any claim term. B. Discussion Gatekeeper proposes six grounds of unpatentability with respect to the claims of the ’836 patent. All of those grounds are based on Schugt. Like the ’836 patent, Schugt is directed to a “vehicle for retrieving wheeled shopping carts in parking lots.” Ex. 1015, Abstract. Schugt’s Figure 3 is reproduced on the left and illustrates a cross- sectional view of a cart retriever of Schugt’s invention. As shown in the figure, the cart retriever includes motor assembly 56, drive assembly 52, controller 184, and control console 22. Id. at col. 4, ll. 22-52. Controller 184 is described as operating generally to process signals and execute control functions to control the cart retriever. Id. at col. 8, ll. 27-30. Schugt, however, provides little detail as to what those processing and control operations entail. IPR2013-00305 Patent 7,389,836 8 Gatekeeper contends that Schugt discloses all the limitations of claim 1 of the ’836 patent with the exception of the first and second power limits that are associated with the controller. As discussed above, the first power limit is the limit that “results when the controller self-limits its maximum power output through a sensing feature of the controller,” where the sensing feature is a “temperature sensing feature that senses a temperature of the controller.” The second power limit “is selectable and limits the controller’s maximum power output to a level that is less than that of the first power limit.” To account for the power limits, and their interrelationship, Gatekeeper relies on the teachings of the Curtis 1237 Manual and, alternatively, on Konrad. 1. The Curtis 1237 Manual The Curtis 1237 Manual describes a series of “MultiMode™ controllers” designed for use in small electric vehicles. Ex. 1016, 1. Those controllers are configured with a “thermal protection” feature. Id. at A-12. The nature of that thermal protection feature is explained as follows: Thermal protection Because of their efficiency and thermal design, Curtis PMC controllers should barely get warm in normal operation. Overheating can occur, however, if the controller is undersized for its application or otherwise overloaded. If the internal temperature of the controller exceeds 90°C (194°F), the main current limit decreases steadily until it is reduced to zero at 105°C (221°F). At the reduced performance level, the vehicle can be maneuvered out of the way and parked. NOTE: To prevent loss of braking effort, regenerative current limit is not cut back in overtemperature conditions. Full current limit and performance return automatically after the controller cools down. Although this action is usually not damaging to the controller[footnote omitted], it does suggest a mismatch. If thermal cutback occurs often in normal vehicle operation, the IPR2013-00305 Patent 7,389,836 9 controller is probably undersized for the application and a higher current model should be used. The controller is similarly protected from undertemperature. Should its internal temperature fall below -25°C (-13°F), the current limit decreases to approximately one-half of the set current. When the controller warms up, full current limit and performance return automatically. Id. Thus, the Curtis 1237 Manual describes that, in response to specific temperature conditions of the controller, the main current limit is decreased to prevent “overheating” and “undertemperature.” According to Gatekeeper, the thermal protection aspect of the Curtis 1237 Manual meets the first power limit feature of claim 1 of the ’836 patent. Pet. 23-25. Gatekeeper also points to the declaration testimony of its expert witness, Dr. Kevin Craig (Ex. 1001), who testifies that the particular above-noted limit imposed by thermal protection constitutes the required first power limit of the claims. See Ex. 1001 ¶¶ 53-54. In accounting for the second power limit of the claims, Gatekeeper relies on a portion of the Curtis 1237 Manual setting forth a “main current limit.” Pet. 25- 26. The Curtis 1237 Manual describes the “main current limit” as a “parameter [that] allows adjustment of the maximum current the controller will supply to the motor during both drive and regen operation,” and that is “adjustable from 50% to 100% of the rated maximum controller current.” Ex. 1016, 40. In connection with that “main current limit,” Dr. Craig gives the following testimony: Claim 1 of the ’836 patent recites that the second power limit “limits the controller’s maximum power output to a level that is less than that of the first power limit.” Ex. 1006 at Claim 1. The Curtis 1237 motor controller’s main current limit can be adjusted “from 50% to 100% of the rated maximum controller current.” Ex. 1016 at 40. Therefore, when adjusted to be less than 100% of the rated maximum current (e.g., from 50% to 99%), the main current limit of the Curtis 1237 IPR2013-00305 Patent 7,389,836 10 controller provides the functionality of the second power limit recited in Claim 1. Ex. 1001 ¶ 63. Thus, according to Dr. Craig, the “main current limit” “provides the functionality of the second power limit” of claim 1 because the “maximum controller current” may be reduced to less than 100% of the “rated maximum controller current.” Dane challenges the position of Gatekeeper and Dr. Craig’s testimony that the Curtis 1237 Manual discloses the power limit features required by claim 1. Prelim. Resp. 14-18. For the reasons that follow, Dane’s arguments are persuasive. As stated above in the quoted portion of Dr. Craig’s testimony, the “main current limit” of the Curtis 1237 may be adjusted to less than 100% of the “rated maximum current.” Dr. Craig does not explain adequately why the main current limit satisfies the second power limit requirement of the claims. As set forth in claim 1, the second power limit must limit the controller’s maximum power output to a level less than the first power limit. As discussed above, the first power limit was urged by both Gatekeeper and Dr. Craig as the limit imposed by the Curtis 1237 Manual’s thermal protection feature. The claimed first power limit must be based on a sensed temperature of the controller. Neither Gatekeeper nor Dr. Craig, however, adequately articulates why the Curtis 1237 Manual’s “rated maximum controller current” equates to the current limit presented by the thermal protection feature. We are not persuaded that they are the same. Petitioner has not established that the “rated maximum controller current” is derived from any sensed condition of the controller, much less one based on temperature. Indeed, it appears from the above-quoted description of the Curtis 1237 manual that the main current limit is, itself, the only power limit, albeit it can vary over time, and that the “rated maximum controller current” is not an actual IPR2013-00305 Patent 7,389,836 11 operational limit, but a rating for informational purposes only in setting the initial value of the main current limit. Assuming Gatekeeper’s position is that the main current limit, itself, serves as both first and second power limits, i.e., when initially it is set to 100% of the maximum rated current, it serves as the first power limit, and when it is later reduced to between 50% and 99% of the maximum rated current, it serves as the second power limit, the contention does not meet the requirements of the claims. First, even when the main current limit is set to 100% of the maximum rated current, it is not a temperature based limit, because it is set to a value regardless of the temperature. The main current limit in that circumstance cannot be the claimed first power limit because it does not limit power as a result of a temperature sensing feature. Secondly, the claims require two distinct power limits, a first and a second, which are co-existing. The second power limit must restrict power output to a level that is less than that of the first power limit. A single adjustable power limit, such as the main current limit, which is varied on different conditions, does not meet that requirement. Dane explains how thermal protection is described in the Curtis 1237 Manual. Prelim. Resp. 14-16. To that end, Dane explains how the thermal protection operates such that below temperatures of -25ºC, the main current limit is approximately halved, and above 90ºC, the main current limit decreases steadily until it is reduced to zero at 105ºC. Dane provides a graphical representation (reproduced below) of the disclosure of the Curtis 1237 Manual in connection with IPR2013-00305 Patent 7,389,836 12 its thermal protection and its main current limit. As illustrated in the graphical depiction above, and in accord with the disclosure of the Curtis 1237 Manual, a main current limit may be selected as desired between 50% and 100% of the maximum rated current (arbitrarily selected as 45 Amps in the depiction above). See Ex. 1016, p. A-12. Once selected, the thermal protection aspect of the Curtis 1237 Manual functions such that the main current limit maintains its set level between -25ºC and 90ºC. When the controller temperature drops below -25ºC, the main current limit drops in half (22.5 Amps in the graphical depiction above). Above 90ºC, the main current limit steadily decreases from its selected level to zero. Dane submits that the main current limit, i.e., the alleged second power limit, does not serve to limit a maximum power output to a level that is less than any limit provided by thermal protection, i.e., the alleged second power limit. Prelim. Resp. 15. IPR2013-00305 Patent 7,389,836 13 In reviewing the pertinent disclosure of the Curtis 1237 Manual, we are persuaded by Dane’s assessment. Gatekeeper does not offer an explanation tending to show that Dane’s assessment is incorrect. Gatekeeper has not established that the Curtis 1237 Manual’s “main current limit” forms the second power limit required by claim 1 of the ’836 patent. Accordingly, on the record before us, and for the foregoing reasons, we are not persuaded that Gatekeeper has shown a reasonable likelihood that it will prevail in its assertion that claim 1 is unpatentable over Schugt and the Curtis 1237 Manual. We also are not persuaded in connection with that ground of unpatentability as applied to claims 2-4, 6, and 7, which ultimately depend from claim 1. The grounds of unpatentability that Gatekeeper proposes for claims 5 and 8-12 involve either the teachings of the Admitted Prior Art or the teachings of the Electric Motors Handbook. Neither of those teachings is offered to make up for the above-discussed deficiencies of the Curtis 1237 Manual with respect to the first and second power limits. Accordingly, we also are not persuaded that Gatekeeper has demonstrated a reasonable likelihood that it will prevail in its assertion that claims 5 and 8-12 are unpatentable over Schugt and the Curtis 1237 Manual, combined with either the Admitted Prior Art or the Electric Motors Handbook. 2. Konrad As an alternative to the Curtis 1237 Manual, Gatekeeper proposes grounds of unpatentability relying on Konrad as disclosing the first and second power limits that are absent from the disclosure of Schugt. Konrad’s teachings are similar to those of the Curtis 1237 Manual. In that regard, Konrad is directed to an electric vehicle current regulating system. Ex. 1012, Title. As a part of the regulating system, Konrad implements various current limit functions. Id. at Abstract. IPR2013-00305 Patent 7,389,836 14 Gatekeeper contends that Konrad’s disclosure satisfies the first and second power limits of claim 1 of the ’836 patent. Pet. 30-33. Dane challenges that contention. Prelim. Resp. 23-26. For the reasons that follow, we are not persuaded that Gatekeeper’s Petition adequately accounts for the required power limits. Konrad describes the following in connection with its system: The system in one form also includes thermal sensors responsive to the temperature of the power regulator main switch semiconductor for forcing a reduction in the current limit value. If the temperature exceeds a predetermined value, a thermal cutback circuit is activated to force the current limit value to decrease towards zero at a rate proportional to the increase in temperature above the predetermined value. Id. at col. 2, ll. 37-44. Thus, in Konrad, a “thermal cutback circuit” provides a reduction in a current limit value in response to sensed temperature of a “power regulator main switch semiconductor” of the controller. Gatekeeper contends that the current limit imposed by Konrad’s thermal cutback circuit constitutes the required “first power limit.” Pet. 48-49. In support of that contention, Gatekeeper points to the declaration testimony of Dr. Craig, explaining that a person of ordinary skill in the art would have understood Konrad’s thermal cutback circuit as providing the first power limit of claim 1 of the ’836 patent. Ex. 1001 ¶¶ 65-66. Konrad also discloses that, in connection with the functioning of its control system, “under normal operation the peak current is limited to a maximum of 750 amps.” Ex. 1012, col. 5, ll. 53-54. Konrad further conveys that its control system may incorporate a “manually adjustable current limit” that allows for adjustment of the current limit to a range between 750 amps and 450 amps. Ex. 1012, col. 5, ll. 50-59. Gatekeeper equates that “manually adjustable current limit” to the selectable, second power limit required by claim 1. Pet. 49-50. In support of that IPR2013-00305 Patent 7,389,836 15 position, Gatekeeper also points to the testimony of Dr. Craig. Based on Konrad’s disclosure, Dr. Craig reaches the following conclusion: Therefore, as in the ’836 patent, Konrad discloses a current limit that is selectable and can [be] selected to be below the first power limit (i.e., the maximum normal peak current). Thus, the manually adjustable current limit described in Konrad teaches the second power limit as claimed in the ’836 patent. Ex. 1001 ¶ 68. Thus, in concluding that Konrad accounts for the required second power limit of claim 1 of the ’836 patent, Dr. Craig characterizes Konrad’s disclosure of a “maximum normal peak current” as forming the required first power limit. Previously, and as noted above, Dr. Craig explained that a person of ordinary skill in the art would have understood Konrad’s thermal cutback circuit as providing the first power limit of claim 1 of the ’836 patent. Ex. 1001 ¶¶ 65-66. Lacking in Dr. Craig’s testimony, however, is an explanation on why Konrad’s “maximum normal peak current” is the current limit derived from Konrad’s thermal cutback circuit, or has any connection with a sensed temperature of a controller. And it is not apparent from the record why that is so. In conjunction with the above-noted inconsistency, Dane urges that Konrad’s maximum “normal peak current” is not based on temperature sensing and thus does not form the first power limit. Prelim. Resp. 26-27. Accordingly, Dane contends that Konrad’s disclosure in connection with the adjustment of the peak current does not convey a second power limit operating to limit power output of Konrad’s controller to a level “less than that of the first power limit.” Id. at 27. Based on the record before us, we are persuaded by Dane’s contention. Konrad explains the temperature associated current limit in connection with its Figure 3D. That explanation and figure are reproduced below: IPR2013-00305 Patent 7,389,836 16 FIG. 3D represents the current limit as a function of temperature. As can be seen this function is basically a multiplier, i.e., for temperature less than a predetermined value, such as 85 degrees Centigrade, the multiplier is unity and the current limit does not affect the other current limit functions until the temperature exceeds the 85 degree mark. Above 85 degrees the multiplier drops toward zero by an amount proportional to the value by which the temperature exceeds 85 degrees, for example, the value of the multiplier may reach zero at 100 degrees C. Ex. 1012, col. 6, ll. 14-25. Thus, in Konrad, the temperature associated current limit acts as a “multiplier” that is “unity” and “does not affect the other current limit functions until the temperature exceeds the 85 degree mark.” Thereafter, the “multiplier drops toward zero.” At 85ºC and below, once the manually adjustable current limit has been adjusted to a desired value, the temperature associated “multiplier” has no impact on the manually adjusted current limit. At temperatures above 85ºC, the multiplier drops toward zero thereby causing the manually adjustable current limit also to drop toward zero along with the multiplier. In light of Konrad’s disclosure, Dane contends that the adjustment of the current limit does not form the required second power limit because the adjusted current limit is at no time “less than any limit imposed by the temperature multiplier.” Prelim. Resp. 25. The contention is persuasive, for reasons already discussed above. Moreover, as in the case of Curtis 1237 Manual, the multiplier of Konrad does not provide a second limit that coexists with the first limit, as is IPR2013-00305 Patent 7,389,836 17 required by the claims. The multiplier merely adjusts or modifies the first limit by lowering it on certain conditions. Accordingly, on the record before us, and for the foregoing reasons, we are not persuaded that Gatekeeper has shown a reasonable likelihood that it will prevail in its assertion that claim 1 is unpatentable over Schugt and Konrad. We also are not persuaded in connection with that ground of unpatentability as applied to claims 2-4, 6, 7, 10, and 12, which depend directly or indirectly from claim 1. The grounds of unpatentability that Gatekeeper proposes for claims 5, 8, 9, and 11 involve either the teachings of the Admitted Prior Art or the teachings of the Electric Motors Handbook. Those disclosures, as presented by Gatekeeper, do not make up for the above-discussed deficiencies of Konrad with respect to the required first and second power limits. Accordingly, we are not persuaded that Gatekeeper has demonstrated a reasonable likelihood that it would prevail in showing that claims 5, 8, 9, or 11 are unpatentable over Schugt and Konrad taken with either the Admitted Prior Art or the Electric Motors Handbook. III. CONCLUSION For the foregoing reasons, we determine that Gatekeeper’s Petition does not establish that there is a reasonable likelihood that Gatekeeper would prevail with regard to any one of its unpatentability contentions as applied to claims 1-12 of the ’836 patent. IV. ORDER After due consideration of the record before us, it is: ORDERED that Gatekeeper’s petition is denied as to all challenged claims, and no trial based on Gatekeeper’s petition is instituted. IPR2013-00305 Patent 7,389,836 18 For PETITIONER: Brenton R. Babcock Nicholas M. Zovko Steven P. Ruden KNOBBE, MARTENS, OLSON & BEAR, LLP 2040 Main Street, 14th Floor Irvine, CA 92614 Tel.: (949) 760-0404 Fax: (949) 760-9502 Email: BoxGatekeeper@knobbe.com For PATENT OWNER: Brett A. Klein WINTHROP & WEINSTINE, P .A. 225 South Sixth Street, Suite 3500 Minneapolis, MN 55402 Tel. (612) 604-6400 e-mail: patent@winthrop.com bklein@winthrop.com Copy with citationCopy as parenthetical citation