Johnson Controls Inc v. Wildcat Licensing Wi LLC

1. Case Identification

• Case #: IPR2014-00305
• Patent #: 7,062,831
• Filed: December 27, 2013
• Petitioner(s): Johnson Controls, Inc.
• Patent Owner(s): Wildcat Licensing WI, LLC
• Challenged Claims: 22-28

2. Patent Overview

• Title: Method for Monitoring Proper Fastening of an Article of Assembly at More Than One Location
• Brief Description: The ’831 patent discloses a “mistake-proofing” method for manufacturing processes that involve fastening components at multiple locations. The invention focuses on ensuring an operator performs fastening operations in a predetermined sequence by sensing the position of a fastening tool, electronically comparing that position to the required sequence, and providing an output indicating whether the sequence has been achieved.

3. Grounds for Unpatentability

Ground 1: Claims 22 and 24-28 are anticipated under 35 U.S.C. §102(b) over Gass.

• Prior Art Relied Upon: Gass (International Publication No. WO 00/17719).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Gass discloses a method for processing a workpiece that teaches all limitations of independent claim 22. Gass describes a system that uses an imaging means to sense the position of a process tool and an electronic controller to ensure the tool is guided to the correct "process site" in the "correct sequence." Petitioner contended that Gass’s "enabling means"—which activates the tool only when it is at the correct location in the programmed sequence—directly meets the claim limitation of "providing a sequence output indicating whether the predetermined sequence has been achieved." Gass also discloses an alternative output in the form of an on-screen display that shows the tool's movement over time, which Petitioner argued also meets this limitation. Dependent claims 24-28 were argued to be taught by Gass’s disclosure of monitoring torque parameters and disabling the tool when not at a correct process site.

Ground 2: Claims 22 and 24-28 are anticipated under 35 U.S.C. §102(b) over Wilhelm.

• Prior Art Relied Upon: Wilhelm (German Patent Publication No. 19609511).
• Core Argument for this Ground:
  • Prior Art Mapping: As a non-cumulative alternative to Gass, Petitioner asserted that Wilhelm independently anticipates the challenged claims. Wilhelm describes an auxiliary device for manually guided tools that explicitly ensures "processing occurs in the correct predetermined sequence." The system uses path detection sensors to determine tool position and a processing device to compare the tool's coordinates to a stored sequence. Petitioner mapped Wilhelm’s "release control," which makes tool operation "only possible in a predetermined sequence of tool positionings," directly to the sequence monitoring and output limitations of claim 22. The teachings in Wilhelm regarding monitoring parameters like torque and controlling tool operation at specific locations were argued to anticipate the dependent claims.

Ground 3: Claim 23 is obvious under 35 U.S.C. §103 over Gass in view of Sabatini.

• Prior Art Relied Upon: Gass (WO 00/17719) and Sabatini ("Seat Time," Automotive Manufacturing & Production, Jan. 2000).

• Core Argument for this Ground:

  • Prior Art Mapping: Claim 23 adds the limitation that the "article of assembly comprises a vehicle seat." While Gass discloses a general manufacturing method, Sabatini specifically describes assembly methods for the automotive seat industry, including the use of mistake-proofing fixtures and torque-sensing guns with visual indicators to ensure proper assembly.
  • Motivation to Combine: Petitioner argued that the ’831 patent itself identifies the automotive industry as one where fastening sequence is critical. A person of ordinary skill in the art (POSITA), aware of the general sequence-control method taught by Gass, would have been motivated to apply it to the specific, known problem of vehicle seat assembly described in Sabatini.
  • Expectation of Success: A POSITA would have reasonably expected success in this combination to achieve the predictable result of improving assembly quality and reducing defects in vehicle seats.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including that claims 22 and 25-28 are obvious over Gass in view of Ri (Japanese Patent Publication No. H9-155753) for adding an alarm function, and that claim 23 is obvious over Wilhelm in view of Sabatini to apply Wilhelm's method specifically to vehicle seats.

4. Key Claim Construction Positions

• "a predetermined fastening sequence": Petitioner argued this term should be construed as "a requirement that a fastener is fastened at one of the first and second fastening locations only after a fastener is fastened at the other of the first and second fastening locations." This construction emphasizes a required order rather than just a set of locations.
• "providing a sequence output indicating whether the predetermined sequence has been achieved": Petitioner argued this limitation should be interpreted broadly to include outputs that control the fastening process in real-time, not just a confirmation signal after the fact. Specifically, Petitioner contended it encompasses an output that enables the fastening tool for operation only when it is positioned at the correct location for the current step in the sequence. This construction was critical to mapping the "enabling means" of Gass and the "release control" of Wilhelm to the claims.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 22-28 of Patent 7,062,831 as unpatentable.