IPR2016-00364

US Patent No. 9,043,093

DOCKET NO.: 2211726-00123
Filed on behalf of Unified Patents Inc.
By: David L. Cavanaugh, Reg. No. 36,476
Thomas Anderson, Reg. No. 37,063
Daniel V. Williams 45,221
Wilmer Cutler Pickering Hale and Dorr LLP
1875 Pennsylvania Ave., NW
Washington, DC 20006
Tel: (202) 663-6000
Email: David.Cavanaugh@wilmerhale.com
Jonathan Stroud, Reg. No. 72,518
Unified Patents Inc.
1875 Connecticut Ave. NW, Floor 10
Washington, DC, 20009
Tel: (202) 805-8931
Email: jonathan@unifiedpatents.com
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________________________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________________________________________

UNIFIED PATENTS INC.

Petitioner
v.
American Vehicular Sciences, LLC
Patent Owner
IPR2016-00364
Patent 9,043,093
PETITION FOR INTER PARTES REVIEW OF
US PATENT NO. 9,043,093
CHALLENGING CLAIMS 1, 8, 10, 12, 17, 18, 19, 26, 27 and 36
UNDER 35 U.S.C. 312 AND 37 C.F.R. 42.104

IPR2016-00364
US Patent No. 9,043,093
TABLE OF CONTENTS
Page
I.

MANDATORY NOTICES ............................................................................. 1

A.
B.
C.
D.

Real Party-in-Interest ............................................................................ 1

Related Matters...................................................................................... 1
Counsel .................................................................................................. 1
Service Information, Email, Hand Delivery and Postal ........................ 2

II.

CERTIFICATION OF GROUNDS FOR STANDING .................................. 2

III.

OVERVIEW OF CHALLENGE AND RELIEF REQUESTED .................... 2

A.

Prior Art Patents and Printed Publications ............................................ 2

1.
2.
3.

B.
IV.

General Overview.................................................................................. 3
History of Airbag Development ............................................................ 4

OVERVIEW OF THE 093 PATENT ............................................................ 5

A.
B.
C.

VI.

Grounds for Challenge .......................................................................... 3

TECHNOLOGY BACKGROUND................................................................. 3
A.
B.

V.

US Pat. 3,897,961 (filed on May 2, 1973; published on August

5, 1975) (Leising (EX1002)), which is prior art under 35
U.S.C. 102(b) ........................................................................... 3
US Pat. 5,273,309 (filed on June 19, 1992; published on
December 28, 1993) (Lau (EX1003)), which is prior art under
35 U.S.C. 102(b) ...................................................................... 3
US Pat. 5,588,672 (filed on October 20, 1995; published on
December 31, 1996) (Karlow (EX1004)), which is prior art
under 35 U.S.C. 102(e) ............................................................ 3

Summary of the Alleged Invention ....................................................... 5

Level of Ordinary Skill in the Art ....................................................... 13
Prosecution History ............................................................................. 13

CLAIM CONSTRUCTION .......................................................................... 18

A.

single airbag ..................................................................................... 19

i

B.
C.

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US Patent No. 9,043,093
conduit ............................................................................................. 20
compartments ................................................................................... 20

VII. SPECIFIC GROUNDS FOR PETITION ...................................................... 21

A.

Ground I: Claims 1, 8, 10, 12, 17, 18, 19, 26, 27 and 36 are rendered
obvious by Leising in view of Lau ...................................................... 21
1.
2.
3.
4.
5.
6.
7.
8.
9.
10.
11.
12.

B.

Overview of Leising .................................................................. 21

Overview of Lau ....................................................................... 23
Claim 1 is obvious in view of Leising and Lau ........................ 26
Claim 8 is obvious in view of Leising and Lau ........................ 34
Claim 10 obvious in view of Leising and Lau .......................... 34
Claim 12 is obvious in view of Leising and Lau ...................... 34
Claim 17 is obvious in view of Leising and Lau ...................... 35
Claim 18 is obvious in view of Leising and Lau ...................... 36
Claim 19 is obvious in view of Leising and Lau ...................... 37
Claim 26 is obvious in view of Leising and Lau ...................... 37
Claim 27 is obvious in view of Leising and Lau. ..................... 40
Claim 36 is obvious in view of Leising and Lau. ..................... 40

Ground II: Claims 1, 17, 18, 19, 26, 27 and 36 are rendered obvious
by Karlow in view of Lau ................................................................... 44
1.
2.
3.
4.
5.
6.
7.
8.
9.

Overview of Karlow ................................................................. 44

Claim 1 is obvious in view of Karlow and Lau ........................ 46
Claim 10 is obvious in view of Karlow and Lau ...................... 52
Claim 17 is obvious in view of Karlow and Lau ...................... 52
Claim 18 is obvious in view of Karlow and Lau ...................... 53
Claim 19 is obvious in view of Karlow and Lau ...................... 54
Claim 26 is obvious in view of Karlow and Lau ...................... 54
Claim 27 is obvious in view of Karlow and Lau ...................... 57
Claim 36 is obvious in view of Karlow and Lau ...................... 57

VIII. CONCLUSION.............................................................................................. 60

ii

IPR2016-00364
US Patent No. 9,043,093
I.

MANDATORY NOTICES
A.

Real Party-in-Interest

Pursuant to 37 C.F.R. 42.8(b)(1), Unified Patents Inc. (Unified or

Petitioner) certifies that Unified is the real party-in-interest, and further certifies
that no other party exercised control or could exercise control over Unifieds
participation in this proceeding, the filing of this petition, or the conduct of any
ensuing trial. In this regard, Unified has submitted voluntary discovery. See
EX1015 (Petitioners Voluntary Interrogatory Responses).
B.

Related Matters

US Pat. No. 9,043,093 (093 Patent (EX1001)) is owned by American

Vehicular Sciences, LLC (AVS or Patent Owner). On September 1, 2015,
AVS filed lawsuits against Nissan Motor Company, American Honda Motor
Company, Hyundai Motor Company and Toyota Motor Corporation, claiming that
certain of these companies products and/or services infringe the 093 Patent. The
cases are in their early stages and no schedule or trial date has been set.
C.

Counsel

David L. Cavanaugh (Reg. No. 36,476) will act as lead counsel; Jonathan
Stroud (Reg. No. 72,518), Thomas Anderson (Reg. No. 37,063) and Daniel
Williams (Reg. No. 45,221) will act as back-up counsel.

D.

IPR2016-00364
US Patent No. 9,043,093
Service Information, Email, Hand Delivery and Postal

Unified consents to electronic service at david.cavanaugh@wilmerhale.com

and jonathan@unifiedpatents.com. Petitioner can be reached at Wilmer Cutler
Pickering Hale and Dorr, LLP, 1875 Pennsylvania Ave., NW, Washington, DC
20006, Tel: (202) 663-6000, Fax: (202) 663-6363, and Unified Patents Inc., 1875
Connecticut Ave. NW, Floor 10, Washington, DC 20009, (650) 999-0899.
II.

CERTIFICATION OF GROUNDS FOR STANDING

Petitioner certifies pursuant to Rule 42.104(a) that the patent for which

review is sought is available for inter partes review and that Petitioner is not
barred or estopped from requesting an inter partes review challenging the patent
claims on the grounds identified in this Petition.
III.

OVERVIEW OF CHALLENGE AND RELIEF REQUESTED

Pursuant to Rules 42.22(a)(1) and 42.104(b)(1)(2), Petitioner challenges

claims 1, 8, 10, 12, 1719, 26, 27 and 36 of the 093 Patent.

A.

Prior Art Patents and Printed Publications

The following references are pertinent to the grounds of unpatentability

explained below:1

The 093 Patent issued from a patent application filed prior to enactment of the

America Invents Act (AIA). Accordingly, pre-AIA statutory framework applies.

1.

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US Patent No. 9,043,093
US Pat. 3,897,961 (filed on May 2, 1973; published on August
5, 1975) (Leising (EX1002)), which is prior art under 35
U.S.C. 102(b)

2.

US Pat. 5,273,309 (filed on June 19, 1992; published on

December 28, 1993) (Lau (EX1003)), which is prior art under
35 U.S.C. 102(b)

3.

US Pat. 5,588,672 (filed on October 20, 1995; published on

December 31, 1996) (Karlow (EX1004)), which is prior art
under 35 U.S.C. 102(e)

B.

Grounds for Challenge

This Petition, supported by the declaration of Priyaranjan Prasad (Prasad

Declaration or Prasad (EX1005)), requests cancellation of challenged claims 1,
8, 10, 12, 1719, 26, 27 and 36 as unpatentable under 35 U.S.C. 103. See 35
U.S.C. 314(a).
IV.

TECHNOLOGY BACKGROUND
A.

General Overview

An airbag is a vehicle safety feature that typically is made from a flexible

fabric. (Prasad 13 (EX1005)). Airbags are designed to inflate quickly inflate
during a collision or impact with an object. (Id. at 13 (EX1005)). Airbags serve
the purpose of providing occupant protection and restraint during an accident. (Id.
at 13 (EX1005)). Airbags will cushion the impact between an occupant and
inside components of a vehicle, including the steering wheel, roof, doors,
windows, and other structures. (Id. at 13 (EX1005)). Side airbags and / or
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IPR2016-00364
US Patent No. 9,043,093
curtains are also designed to cushion the impact between the occupant and external
intruding structures that are a result of the impact. (Id. at 13 (EX1005)). In use,
a crash sensor triggers deployment of the airbag. (Id. at 13 (EX1005)). The
sensors may determine an angle of collision and severity of impact. (Id. at 13
(EX1005)). A computing device is typically used to determine if the collision
warrants deploying the airbag. (Id. at 13 (EX1005)). If the airbag needs to be
deployed, a gas generator produces propellant that rapidly inflates the airbag. (Id.
at 13 (EX1005)). As an occupant collides with the airbag, energy is absorbed to
help reduce the chance of injury. (Id. at 13 (EX1005)). Airbags may be vented
so that gas escapes in a manner that provides sufficient cushioning without
bouncing the occupant away from the airbag. (Id. at 13 (EX1005)).
B.

History of Airbag Development

Well before the alleged December 1995 effective filing date of the 093
Patent, multiple types of airbag modules were developed. (Id. at 14 (EX1005)).
These modules included, for example, driver side airbags, passenger side airbags,
side curtain airbags, and airbags that provide knee protection. (Id. at 14
(EX1005)). For example, US Pat. 2,834,606, published in 1958, disclosed airbags
to protect front and rear seat occupants. (Id. at 14 (EX1005)). Even earlier, in
1927, U.S. Pat. 1,624,418 disclosed to shield front and rear seat occupants during
an accident using electronically controlled window curtains.

(Id. at 14

IPR2016-00364
US Patent No. 9,043,093
(EX1005)). While the curtains in the 418 Patent are not disclosed as being
inflatable, there was clearly a desire to shield front and rear passengers during an
accident. (Id. at 14 (EX1005)). More recently in 1972, U.S. Pat. No. 3,687,485
discloses to shield front and rear occupants using a module with an inflatable
portion, which when deployed, covers front and rear windows.

(Id. at 14

(EX1005)). In 1973, Japanese Patent Application No. 47-20397, published as

number S48-88627, disclosed a single inflatable module that is deployed from a
vehicles ceiling to provide protection from side and front impacts. (Id. at 14
(EX1005)).
V.

OVERVIEW OF THE 093 PATENT

A.

Summary of the Alleged Invention

Independent claims 1 and 26 were allowed based on the false premise that an
airbag system having a single gas-providing system with only one inflator is
novel. (Prasad 15 (EX1005)). The Patent Trial and Appeals Board (Board)
has identified multiple components of claims 1 and 26 that are non-obvious,
including the claimed single airbag extending across at least two seating
positions, as discussed below in Section V.C. To obtain allowance, the Patent
Owner acquiesced to the Boards position by amending claim 1 to include the
only one inflator limitation. Similarly, claim 26 was amended to require a
single inflator. Although the Patent Owner continued to argue that the prior art

IPR2016-00364
US Patent No. 9,043,093
does not teach the claimed single airbag that extends across two seating positions,
such an argument is futile in view of (1) the Boards decision and (2) the Patent
Owners conceding claim amendments directed to the one inflator and single
inflator that were made immediately after the Boards decision.
Claims 1 and 26 were ultimately allowed because of a misarticulation of the
prior art. (Id. at 16 (EX1005)). The Examiner unfortunately failed to clearly
articulate his position, resulting in a three reference combination that could have
been applied more effectively, as discussed below in Section V.C. (Id. at 16
(EX1005)). Nevertheless, the currently applied pieces of prior art require only a
two reference combination and make up for any alleged deficiencies in the prior
art. (Id. at 16 (EX1005)).
The 093 Patent claims priority to a number of applications, the earliest of
which is US Application No. 08/571,247, filed on December 12, 1995, which is
now US Pat. 5,772,238 (the 238 Patent) (Ex. 1006). A majority of the priority
applications are continuation-in-part applications. The Patent Owner alleges that
each of the 093 Patent claims are afforded the December 12, 1995 filing date and
submitted a claim chart during prosecution mapping out the alleged support in the
238 Patent. To summarize the purported invention of claim 1, the cited portions
of the 238 Patent specification are reproduced below with their associated claim

IPR2016-00364
US Patent No. 9,043,093
limitations. A majority of features in claim 1 overlap with challenged independent
claims 26 and 36. Letters are added next to the limitations for ease of reference.
[a] a single airbag extending across at least two seating
positions of a passenger compartment, the single airbag
arranged to deploy into the passenger compartment along
a lateral side of the vehicle and adjacent each of the at
least two seating positions
The Patent Owner cited to the following portions of the 238 Patent for
allegedly supporting Limitation [a]: Figure 5; 7:5759; 9:4144; 10:5360; 22:29
46. (File History, Response at 94 (11/23/2014) (EX1007)). Figure 5 is reproduced
below showing airbag module 300 that includes airbag 310. (238 Patent at 22:29
31 (EX1006)).

The airbag 310 is retrained by a B-pillar 320. (Id. at 22:3840 (EX1006)).

The 238 Patent does not provide any side view of the airbag 310 to illustrate how
it allegedly protects passengers in the rear seat. (Prasad 19 (EX1005)).
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IPR2016-00364
US Patent No. 9,043,093
[b] a cover interposed between the single airbag and the
passenger compartment
The following portions of the 238 Patent were cited to allegedly support
Limitation [b]: Figure 2A; 9:2144; 12:3851. (File History, Response at 94
(11/23/2014) (EX1007)).

Figure 2A, reproduced below, depicts a protective

cover 150 that partially defines a housing of the airbag module 100 and as such,
encloses the airbag 110 and an interior portion of the airbag module 100 and
prevents contaminated particles from entering the interior of the airbag module
100. (238 Patent at 12:3944 (EX1006)).

Notably, Figure 2A is directed to an embodiment different than Figure 5.

(Prasad 21 (EX1005)).

Figure 2A is directed to an airbag that extends

horizontally across the rear seat only and not along the lateral side of a vehicle, as
is allegedly shown in Figure 5. (238 Patent at 12:40 (EX1006); Prasad 21
(EX1005)). Thus, the Patent Owner engaged in mixing aspects from different

IPR2016-00364
US Patent No. 9,043,093
embodiments to provide the alleged support from the 238 Patent during
prosecution of the 093 Patent. (Prasad 21 (EX1005)). If the 238 Patent is
found to not support the 093 Patent claims, the next possible effective filing date
for the 093 Patent is almost 29 months after the December 1995 filing date of the
238 Patent. (238 Patent at 1:1519 (EX1006)).
[c] a single gas-providing system that has only one
inflator that provides gas to inflate the single airbag and
which is arranged apart from the single airbag
The following portions of the 238 Patent were cited to allegedly support
Limitation [c]: Figure 2A; 8:2528; 9:2144; 12:3851. (File History, Response
at 94 (11/23/2014) (EX1007)). The 238 indicates that element 120 in Figure 2A is
an inflator module. (238 Patent at 12:4451 (EX1006)).
Figure 2C of the 238 Patent is reproduced below to show the airbag 110 of
Figure 2A in a deployed condition. (Id. at 11:3536 (EX1006)). Based on Figure
2A, it appears that the limitation of arranged apart from the single airbag would
be disclosed by an arrangement where an inflator, such as 120, is within a common
enclosed space shared by the inside of the airbag. (Prasad 23 (EX1005)).

IPR2016-00364
US Patent No. 9,043,093

[d] a conduit leading from the single gas-providing

system to provide gas to inflate the single airbag, the
conduit being arranged to deliver the gas from the single
gas-providing system into the single airbag
The following portions of the 238 Patent were cited to allegedly support
Limitation [d]:

Figure 2B; 13:915:54.

(File History, Response at 94

(11/23/2014) (EX1007)).

The 238 Patent provides the following explicit definition for the term
inflator: [t]he term inflator as used herein means the gas generator plus all

10

IPR2016-00364
US Patent No. 9,043,093
other parts required to deliver gas to the airbag including the aspiration system if
present. (238 Patent at 12:5760 (EX1006)).
Claim 1 requires a conduit and a single gas-providing system that has
only one inflator. Since the inflator needs to be the gas generator plus all other
parts required to deliver gas to the airbag, it is not clear how cited Figure 2B,
shown above, supports the existence of the claimed conduit.
(EX1005)).

(Prasad 26

Further, the cited portion of the 238 Patent description, i.e., 13:9

15:54, also fails to disclose a conduit in addition to the inflator, when the Patent
Owners definition of inflator is considered.

(Id. at 26 (EX1005)).

Nevertheless, the term conduit is interpreted to generally mean a channel for

conveying a fluid or liquid.
[e] the at least two seating positions comprising a first
seating position in a first seat row of seats of the vehicle
and a second seating position in a second seat row of
seats of the vehicle longitudinally displaced from the first
seat row of seats, along the lateral side of the vehicle
The following portions of the 238 Patent were cited to allegedly support
Limitation [e]: Figure 5; 22:2946; 9:4144; 7:5759; 10:5360. (File History,
Response at 94 (11/23/2014) (EX1007)). The description at 7:5759 states where
a single module can be used to protect both a front and a rear passenger of the
vehicle in side impacts. (238 Patent at 7:5759 (EX1006)).

11

IPR2016-00364
US Patent No. 9,043,093
[f] wherein the single airbag has a plurality of
compartments for receiving the gas, and wherein the
plurality of compartments are in flow communication
with each other.
The following portions of the 238 Patent were cited to allegedly support
Limitation [f]: Figure 4; 12:5557. (File History, Response at 94 (11/23/2014)
(EX1007)). As shown below, Figure 4 depicts airbag module 200 and airbag 210
designed to interact with the drivers knees and a child lying on the front seat,
for example. (238 Patent at 22:1216 (EX1006)). Again, the Patent Owner
appears to be mixing embodiments for the alleged support in the 238 Patent
because claim 1 is directed to a side airbag that extends across a first row of seats
and a second row of seats, not an airbag that protects a drivers knees. (Prasad 28
(EX1005)).

The Patent Owner also cited to the descriptions at 12:5557, which state that
the airbag module 100 contains a plurality of airbags, or where the airbag module
100 contains a single airbag having a plurality of compartments which deploy in

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IPR2016-00364
US Patent No. 9,043,093
concert to protect an occupant. (238 Patent at 12:5557 (EX1006)). However,
again, the Patent Owner is mixing embodiments because, as discussed above with
respect to Limitation [a], the airbag 310 in Figure 5 is relied upon for support, not
airbag 100, which is directed to a different embodiment. (Prasad 29 (EX1005)).
B.

Level of Ordinary Skill in the Art

A person of ordinary skill in the art (POSA) for the 093 Patent would
have been a mechanical engineer having the equivalent of a post-graduate
education, such as a masters degree or equivalent knowledge obtained through
work experience, and several years of experience in the design of vehicle occupant
protection systems. (Prasad 36 (EX1005)).
C.

Prosecution History

The 093 Patent issued from US Pat. Appl. No. 11/930,330, which was filed
on October 31, 2007 (File History, Application (10/31/2007) (EX1008)), and
allegedly claims priority to December 12, 1995 through a chain of six applications,
five of which are continuation-in-part applications.

(093 Patent at 1:721

(EX1001)). Ten Office Actions were issued during prosecution of the 093 Patent.
The Patent Owner filed an Appeal Brief after the seventh Office Action.

Decision on Appeal was issued on November 20, 2013. (File History, Decision on
Appeal (11/20/2013) (EX1011)). The Patent Trial and Appeal Board asserted that
the Examiner misapplied the combination of US Patent 5,366,241 (Kithil

13

IPR2016-00364
US Patent No. 9,043,093
(EX1009)) and US Patent No. 3,510,150 (Wilfret (EX1010)) by relying on
Wilfert for disclosing flow communication between each of individual airbag
elements 20. (File History, Decision on Appeal at 7 (11/20/2013) (EX1011)).
The Board clarified that Examiner did not need to rely on Wilfert for this feature
because it was disclosed in Kithil. (Id. at 9 (EX1011)).
The Board agreed with the Examiner that it would have been obvious to
extend the front seat airbag of Kithil to protect rear seat occupants, based on
Wilfert, and set forth a new ground of rejection using the same two references:
We accept the Examiners reasoning and rationale for
the underlying combination of references as our own,
specifically that it would have been obvious to a person
of ordinary skill in the art at the time of Applicants
invention to include the protective elements extending as
a safety wall along the length of the passenger space as in
Wilfert with the airbag system of Kithil in order to
protect the passengers in both rows of the vehicle. See
Ans. 5.
(Id. at 9 (11/20/2013) (EX1011)) (emphasis added). Below is Figure 2 of Kithil
showing the airbag module 14 that the Board asserted is obvious to extend along
the rear seat.

(Kithil at Figure 2 (EX1009)).

Figure 2b of Wilfert is also

reproduced below showing protective elements 20 that provide motivation to

extend Kithils airbag module 14. (Wilfert at Figure 2b (EX1010)).

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IPR2016-00364
US Patent No. 9,043,093

32.

The Patent Owner conceded to the Boards rejection by amending claim 1 to

require only one inflator and claim 26 (application claim 10) to require a single
inflator. The Patent Owner then made the following arguments to support the
amendments:
Applicant has amended independent claims 1 and
10 to further clarify the recited subject matter. Thus,
claim 1 recites, in part, a single gas-providing system
that has only one inflator that provides gas to inflate the
single airbag and which is arranged apart from the single
airbag.Claim 10 recites, in part, directing gas from a
single

inflator

of

single

gas

providing

system.Accordingly, Kithil does not teach at least

these elements as set forth in claims 1 and 10 and Wilfert
does not overcome the teaching deficiencies of Kithil.
(File History, Request to Reopen Prosecution at 2, 4 and 13 (1/21/2014) (EX1012))
(underlining in original)). Application claims 1 and 10 were not amended further

15

before allowance.

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US Patent No. 9,043,093
Application claims 1 and 10 issued as claims 1 and 26,

respectively.
An Office Action was issued on March 28, 2014 rejecting claims 1 and 10 in
view of Kithil, Wilfert and US Patent 3,747,952 (Graebe (EX1013)).

The

Examiner did not need to rely on Graebe for disclosing anything more than a single
inflator because the Board already established that Kithil and Wilfret teach the
claimed features before the only one inflator limitation was added. (File History,
Decision on Appeal at 9 (11/20/2013) (EX1011); Prasad 33 (EX1005)).
However, the Examiner relied on Graebe for disclosing not only a single inflator,
but also an airbag that has a plurality of compartments for receiving the gas, and
wherein the plurality of compartments are in flow communication with each
other. (File History, Office Action at 4 (3/28/2014) (EX1014); Prasad 33
(EX1005)).
Patent Owner responded by arguing that Graebe teaches away from a
combination with Wilfret and Kithil. (File History, Response to Office Action at
27 (08/06/2014) (EX1015)). The Patent Owner attempted to capitalize on the
Examiners misarticulation by setting forth multiple alleged reasons why Graebe is
not applicable as a side airbag configuration. (Id. at 2027 (EX1015)). It is
respectfully submitted that the Examiner should have relied on Graebe solely for
teaching a single inflator, regardless of where the airbag of Graebe is positioned.

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US Patent No. 9,043,093
Patent Owner also submitted a declaration and argued that the airbag of Kithil is
not suitable or safe for use as a side airbag and therefore one would not use
Kithils airbag system with Wilferts features. (Id. at 1718 (EX1015)).

As

discussed below in more detail, each of the currently applied pieces of prior art are
directed to side airbags, thereby underscoring the strength of the proposed grounds
of rejection.
In the next Office Action, the Examiner maintained the rejection based on
Kithil, Wilfret and Graebe.
(EX1016)).

(File History, Office Action at 3 (09/11/2014)

The Patent Owner responded with arguments similar to those

previously presented.

(File History, Response to Office Action (10/15/2014)

(EX1017)). The Examiner then issued a Requirement for Information under 37

CFR 1.105 asking the Patent Owner to indicate how the pending claims are
supported by each of the continuation and continuation-in-part applications that
form the chain of priority. (File History, Requirement for Information at 23
(10/23/2014) (EX1018)). Patent Owner responded by submitting claim charts
allegedly showing that the pending claims are entitled an effective filing date of
December 12, 1995. (File History, Response (11/23/2014) (EX1007)). A Notice
of Allowance was mailed on March 10, 2015 allowing all pending claims. (File
History, Notice of Allowance (03/10/2015) (EX1019)).

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US Patent No. 9,043,093
VI.

CLAIM CONSTRUCTION
Claim terms of an unexpired patent in inter partes review are given the

broadest reasonable construction in light of the specification.

37 C.F.R.

42.100(b); In re Cuozzo Speed Techs., LLC 778 F.3d 1271, 127981 (Fed. Cir.
2015). Any claim term that lacks a definition in the specification is therefore given
a broad interpretation.2 In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007). Under the broadest reasonable interpretation standard, claim
terms are given their ordinary and customary meaning, as they would be
understood by one of ordinary skill in the art, in the context of the disclosure. In re
Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).

Any special

definition for a claim term must be set forth in the specification with reasonable
clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed.
Cir. 1994).
The following proposes constructions and offers support for those
constructions.

Any claim terms not included should be given their broadest

reasonable interpretation in light of the specification, as commonly understood by

2

Petitioner applies the broadest reasonable construction standard as required by

the governing regulations. 37 C.F.R. 42.100(b). Petitioner reserves the right to

pursue different constructions in a district court, where a different standard is
applicable.

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US Patent No. 9,043,093
those of ordinary skill in the art. Should the Patent Owner, to avoid the prior art,
contend that a claim term has a construction different from its broadest reasonable
interpretation, the appropriate course is for the Patent Owner to seek to amend the
claim to expressly correspond to its contentions in this proceeding. See 77 Fed.
Reg. 48764 (Aug. 14, 2012).
A.

single airbag

The term single airbag should be interpreted to mean an airbag that

encloses an internal area, including a combination of front and rear airbags that are
in flow communication with each other. (Prasad 45 (EX1005)). The 238
Patent 3 does not define the term single airbag. However, the Patent Owner
alleges that support for the term can be found in Figure 5 and at 22:2946 of the
238 Patent, which states:
FIG. 5 illustrates another possible mounting location for
the airbag module.This implementation is significant
since the airbags for the front and rear seats are
combined.
(File History, Response at 94 (11/23/2014) (EX1007); (Prasad 45 (EX1005)).

Since the 238 Patent is relied upon for allegedly supporting an effective filing

date of December 12, 1995, the 238 Patent specification is used as guidance for
the proposed constructions.

19

IPR2016-00364
US Patent No. 9,043,093
Thus, the proposed construction is consistent with the specification of the 238
Patent, and with the ordinary use of the term single airbag.

(Prasad 45

(EX1005)).
B.

conduit

The term conduit should be interpreted to mean a channel for conveying a

fluid or liquid. (Id. at 46 (EX1005)). The 862 Patent does not define the term
conduit.

The 238 Patent uses the term conduit once at 19:2327 with

reference to Fig. 2H. (238 Patent at 19:2327; (EX1006) (Such an embodiment

is illustrated schematically in FIG. 2H where an inflator 280 is illustrated in a
position connected to tube 121 by a conduit through which gas generated in
inflator 280 would be conducted into the tube 121.); Prasad 46 (EX1005)).
Thus, the proposed construction is consistent with the specification of the 238
Patent, and with the ordinary use of the term conduit. (Prasad 46 (EX1005)).
C.

compartments

The term compartments should be interpreted to mean individually

defined spaces within the airbag. (Id. at 47 (EX1005)). The 862 Patent does not
define the term compartments. (Id. at 47 (EX1005)). However, the Patent
Owner alleges that support for the term compartments is found in Figure 4 of the
238 Patent, as discussed above in Section V.A. (File History, Response at 94
(11/23/2014) (EX1007); (Prasad 47 (EX1005)). Figure 4 shows what appear to

20

IPR2016-00364
US Patent No. 9,043,093
be internal spaces that are individually defined by recesses formed in the airbags
surface. (Prasad XX (EX1005)).
VII. SPECIFIC GROUNDS FOR PETITION
Pursuant to Rule 42.104(b)(4)(5), the following sections (as confirmed in
the Prasad Declaration 48235 (EX1005)) detail the grounds of unpatentability,
the limitations of the challenged claims of the 093 Patent, and how these claims
were therefore obvious in view of the prior art.
A.

Ground I: Claims 1, 8, 10, 12, 17, 18, 19, 26, 27 and 36 are
rendered obvious by Leising in view of Lau

Neither Leising nor Lau was applied by the Examiner during prosecution,
nor is there any analysis in the 093 Patent file history of these references.
1.

Overview of Leising

Leising discloses a vehicle safety system that includes side curtain and torso
airbag portions. The side curtain protects occupants from the vehicles roof rails
and helps prevent occupants from passing through the vehicles door or side
window during an accident. (Leising at 1:3338; 3:3848 (EX1002); see also
Leising at 5:5860 (Protection is provided to the occupants heads against
engagement thereof with the A-pillar and with the side roof rails.)). Figures 2 and
3, reproduced below with annotations, show the side curtain 41 and torso portion
43 in a deployed state.

21

IPR2016-00364
US Patent No. 9,043,093

A single inflator 33 supplies gas to the side curtain 41 and torso portion 43.
(Id. at 3:2331 (EX1002)). Leising explicitly discloses that the side curtain 41 and
torso portion 43 may be integrally formed as a single airbag so that gas flows from
the side curtain 41 into the torso portion 43:
For example, the side curtain and torso bag could
be formed integrally with one or more openings at the
forward end of the curtain providing the gas passages
and the bags could be integrally sewn or formed together
adjacent the bottom of the curtain.
22

IPR2016-00364
US Patent No. 9,043,093
(Id. at 4:1923 (EX1002) (emphasis added); Prasad 50 (EX1005)). As
shown in Figures 2 and 3, the side curtain 41 and torso portion 43 extend across
multiple occupants. (Leising at 3:2122; Figures 2, 3 (EX1002); Prasad 50
(EX1005)). Thus, Leising teaches a single airbag that protects multiple occupants
and is supplied with gas from only one inflator. (Prasad 50 (EX1005)). Before
deployment, the side curtain 41 and torso portion 43 are conveniently and
aesthetically stowed in the vehicular roof structure, thus avoiding the necessity of
tearing up the instrument panel to provide storage space for the bag apparatus.
(Leising at 5:3641 (EX1002)).

Leising does not disclose that its airbag

configuration is limited to only the front seat area. (Prasad 50 (EX1005)).

2.

Overview of Lau

Lau discloses an airbag assembly mounted on a center pillar of a vehicle

between the front and rear seats (Lau at 1:48; 2:1214; 2:6568; Figure 1
(EX1003)). The airbag assembly includes integrally formed front and rear bags 40
and 42, as shown below in Figure 1. (Id. at 2:1214 (EX1003)).

23

IPR2016-00364
US Patent No. 9,043,093

The airbag assembly is not limited to the position or shape shown in Figure
1 and may be mounted higher or lower as desired, as shown in annotated Figure
1 by the arrows:
In the preferred embodiment of FIG. 1 the airbag
assembly is mounted on the pillar at an elevation just
vertically below the side windows. However, it is
understood that the airbag assembly may be mounted
higher or lower as desired.
(Id.at 2:6065 (EX1003) (emphasis added); Prasad 52 (EX1005)). Further, the
airbags may be larger and shaped differently to provide the necessary protection.
(Lau at 2:4650 (EX1003) (although FIG. 1 shows an airbag of relatively long
narrow shape, other airbag shapes may be employed within the ordinary skill of
the art in order to obtain the desired results.) (emphasis added); Prasad 53
(EX1005)). Thus, Lau discloses that the airbag assembly can be moved vertically

24

IPR2016-00364
US Patent No. 9,043,093
and made larger, and therefore at least makes obvious that Laus airbag assembly
can be used to protect against windows and roof rail areas. (Lau at 2:4650; 2:60
65; Figure 1 (EX1003); Prasad 53 (EX1005)).
A single inflator 38 generates gas to cause the airbag assembly to unfurl into
its deployed position. (Id. at 2:2834, Figure 3 (EX1003)). Before deployment,
the airbag assembly is concealed from view behind break away doors 43 and 45.
(Id. at 2:1418 (EX1003). The doors 43 and 45 are defined by a series of
weakening indentations 47 to promote tearing to allow the bags to expand. (Id. at
2:1822 (EX1003).

Lau therefore discloses a cover for the airbag assembly.

(Prasad 54 (EX1005)).
Lau discloses that a single airbag can be used. (Lau at 2:5561 (EX1003)
(It will also be appreciated that although the airbag shown in the drawings
includes both a front occupant airbag and a rear occupant airbag, the pillar
mounted airbag assembly can include only one airbag); Prasad 55 (EX1005)).
Its possible that one of ordinary skill in the art would interpret this disclosure as
meaning that only a single airbag is used for providing front and rear side
protection. (Prasad 55 (EX1005)). Nevertheless, Lau clearly discloses a single
airbag module that uses a single inflator for providing side airbag protection for
front and rear occupants. (Id. at XX (EX1005)).

25

3.

IPR2016-00364
US Patent No. 9,043,093
Claim 1 is obvious in view of Leising and Lau

a)

[a]n airbag system of a vehicle, the airbag system

comprising: a single airbag extending across at least
two seating positions of a passenger compartment of a
vehicle

Leising does not explicitly disclose that its airbag extends across two seating
positions that are longitudinally displaced along a lateral side of the vehicle, as
more specifically required by limitation [f] of claim 1. In December 1995, it
would have been obvious to a person of skill in the art to extend the side curtain 41
of Leising to protect occupants in the back seat based on Lau. (Id. at 58
(EX1005)). Leising and Lau are in the same field (use of airbags in vehicles) and
both address the same problem (how to effectively provide side airbag protection
during an accident). (Id. at 58 (EX1005)). Indeed, Lau itself discloses to protect
occupants in front and rear seats using (1) a single airbag module and (2) a single
inflator. (Id. at 58 (EX1005)). One of skill in the art would have known that
there were a finite number of options to protect rear seat occupants, among them
the single airbag module of Lau. (Id. at 58 (EX1005)). One of skill in the art
would have also been apprised of Leisings explicit disclosure of integrating
multiple airbag portions that extend across multiple occupants to form a single
airbag. (Leising at 4:1923 (EX1002) (emphasis added); (Prasad 58 (EX1005)).
As such, it would have been obvious to extend the side curtain 41 of Leising to

26

IPR2016-00364
US Patent No. 9,043,093
extend across the rear seating position to protect occupants in the back seat, based
on Lau. (Prasad 58 (EX1005)). The motivation being the personal safety of back
seat occupants. (Id. at 58 (EX1005)). The extension could be made by merely
elongating the side curtain 41 and roof storage area of Leising. (Id. at 58
(EX1005)). Alternatively, an airbag section could be stored adjacent the rear seat
to deploy downwardly in the same manner as the side curtain section 41. The
added airbag section would communicate with the existing side curtain section 41
through gas passages, as taught by Leising.

(Leising at 4:1923 (EX1002)

(teaching that adjacent airbag sections can be connected using gas passages);
(Prasad 58 (EX1005)).
One skilled in the art would realize that a completely separate airbag with its
own inflator is not needed for the rear seat. This is because Leising and Lau both
disclose to use a single inflator for multiple airbag portions. A modification of
Leising based on the teachings of Lau would have produced the expected result of
providing rear seat occupants with protection during a side impact. (Prasad 59
(EX1005)).
As noted above in Section V.C., the Patent Owner conceded that the novelty
of claim 1 is based on using only one inflator. (File History, Request to Reopen
Prosecution at 2, 13 (1/21/2014) (EX1012)). The Board already established that it
would have been obvious to modify a front airbag, as in Kithil, to extend to along

27

IPR2016-00364
US Patent No. 9,043,093
the lateral side of the vehicle to the rear seat area. (File History, Decision on
Appeal at 9 (11/20/2013) (EX1011); Prasad 60 (EX1005)).

Moreover, the

alleged deficiencies argued by Patent Owner with respect to the prior art, i.e.,
Kithil, Wilfret and Graebe, are explicitly disclosed in Leising and Lau. (Prasad
60 (EX1005)). For example, Leising and Lau respectively disclose (1) a single
inflator and (2) a side airbag. (Id. at 60 (EX1005)). Further, Lau explicitly
discloses a side airbag module that extends along the lateral side of the vehicle
from the front to rear seat areas. (Lau at 2:2834; Figure 1 (EX1003); Prasad 60
(EX1005)). Leising discloses that the side curtain 41 and the torso portion 43 can
be formed integrally to provide a single airbag that extends across multiple
people in the front seat row and also provides protection from a side impact.
(Leising at 4:1223; Figures 2, 3 (EX1002); Prasad 60 (EX1005)).

b)

the single airbag arranged to deploy into the passenger

compartment along a lateral side of the vehicle and
adjacent each of the at least two seating positions

Leising discloses that the side curtain 41 deploys into the passenger
compartment across the side window 19.

(Leising at 3:3848; Figures 13

(EX1002); Prasad 62 (EX1005)). As noted above, it would have been obvious to

modify the single curtain 41 of Leising to extend to the rear seat area. (Prasad 62
(EX1005)). Thus, the side curtain 41 of Leising, when modified in view of Lau,

28

IPR2016-00364
US Patent No. 9,043,093
would deploy into the passenger compartment along a lateral side of the vehicle
and adjacent each of the at least two seating positions. (Id. at 62 (EX1005)).

c)

a cover interposed between the single airbag and the

passenger compartment to cover the single airbag prior
to deployment

Leising discloses that the side curtain 41 is normally maintained in a folded

condition in the housing area 39, but when filled with gas is adapted to extend
across the side window 19, but Leising does not explicitly describe a cover.
(Leising at 3:3841; Figure 5 (EX1002); Prasad 64 (EX1005)). Leising does
disclose, however, that the side curtain 41 is conveniently and aesthetically
stowed in the vehicular roof structure. (Leising at 5:3639 (EX1002); Prasad 64
(EX1005)). Lau discloses to conceal the airbag from view by using break away
doors 43 and 45. (Lau at 2:1417; Figure 1 (EX1003); Prasad 64 (EX1005)). It
would have been obvious for Leising to obtain its goal of storing the airbag in an
aesthetic manner by using break away doors, as taught by Lau. (Prasad 64
(EX1005)). The break away doors would be placed in the roof area and would
provide the expected result of allowing the side curtain of Leising to deploy when
needed, while keeping the side curtain concealed from view before use. (Id. at
64 (EX1005)).

29

d)

IPR2016-00364
US Patent No. 9,043,093
a single gas-providing system that has only one
inflator that provides gas to inflate the single airbag
and which is arranged apart from the single airbag

Leising discloses a single gas source 33 for supplying gas to the side curtain
41. (Leising at 3:2325; Figures 2, 3 (EX1002); Prasad 66 (EX1005)). The gas
source has only one inflator 35, which is arranged behind the passenger
compartment. (Leising at 3:2728, Figures 2, 3 (EX1002); Prasad 66 (EX1005)).

e)

a conduit leading from the single gas-providing system

to provide gas to inflate the single airbag, the conduit
being arranged to deliver the gas from the single gasproviding system into the single airbag

Leising discloses a conduit in the form of a tube 37 that extends from the
single gas reservoir 35 of the single gas source 33 to the side curtain 41. (Leising
at 3:2831; Figures 2, 3 (EX1002); Prasad 68 (EX1005)). The tube 37 delivers
gas from the gas source 33 to inflate the side curtain 41. (Leising at 3:3233
(EX1002)).

30

f)

IPR2016-00364
US Patent No. 9,043,093
the at least two seating positions comprising a first
seating position in a first seat row of seats of the vehicle
and a second seating position in a second seat row of
seats of the vehicle longitudinally displaced from the
first seat row of seats, along the lateral side of the
vehicle

Leising discloses that the vehicle has a front seat 21 that provides a first
seating position for occupants 27, 28 and 31 in a first row of seats. (Leising at
3:1921; Figure 2 (EX1002); Prasad 70 (EX1005)). Leising further discloses that
the vehicle has a rear seat, as shown by the rear seat in Figure 3 (Leising at Figure
3 (EX1002); Prasad 70 (EX1005)). One skilled in the art would appreciate that
the rear seat of Leising provides multiple seats for rear occupants, so as to teach a
second seating position in a second row of seats. (Prasad 70 (EX1005)). The
second row of seats, i.e., the back seats, are longitudinally displaced from the first
seat row of seats, i.e., the front seats. (Leising at Figure 3 (EX1002); Prasad 70
(EX1005)).

g)

wherein the single airbag has a plurality of

compartments for receiving the gas

Leising discloses to use restraining webs to form compartments for

receiving gas from the single gas-providing system. (Leising at 3:4349; Figures
8, 10, 11 (EX1002); Prasad 72 (EX1005)). The areas between the restraining
webs 53 form a plurality of compartments in the vertical direction. (Prasad 72

31

IPR2016-00364
US Patent No. 9,043,093
(EX1005)). Annotated Figure 8, reproduced below, is a side view showing at least
four compartments (14) of the side curtain 41 extending from the left to the right.
(Leising at 2:6263 (EX1002); Prasad 72 (EX1005)). Figure 11, also reproduced
below, is a sectional view showing the compartments of the side curtain 41.
(Leising at 3:12 (EX1002); Prasad 72 (EX1005)).

Leising discloses that the gas delivery tube 37 of Figure 8 includes a

plurality of openings. (Leising at 3:3537 (EX1002); Prasad 73 (EX1005)). Gas
travels through the tube 37 and into openings 51 to the compartments 14 of the
side curtain 41. (Leising at 3:3742 (EX1002); Prasad 73 (EX1005)). Thus, the
compartments 14 of the airbag 41, shown above in annotated Figured 8, receive
the gas. (Prasad 73 (EX1005)).

32

h)

IPR2016-00364
US Patent No. 9,043,093
wherein the plurality of compartments are in flow
communication with each other.

Leising discloses that the compartments between the restraining webs 53 of

the side curtain 41 are in flow communication with each other. (Prasad 75
(EX1005)). As shown below in annotated Figure 8, the restraining webs 53 do not
extend completely to the bottom of the side curtain 41. (Id. at 75 (EX1005)).
Therefore, the compartments 14 are in flow communication around the lower
portions of the restraining webs 53 because the gas that enters the side curtain 41
through the openings 51 can flow from one compartment to another compartment
(Leising at 3:3742 (EX1002); Prasad 75 (EX1005)). One skilled in the art
would appreciate that the compartments are also in flow communication with each
other around top portions of the restraining webs 53, as shown in Figure 10 of
Leising. (Prasad 75 (EX1005)).

33

4.

IPR2016-00364
US Patent No. 9,043,093
Claim 8 is obvious in view of Leising and Lau

a)

The system of claim 1, wherein the single gasproviding system includes stored gas which is directed
into the single airbag via said conduit to inflate the
single airbag.

The single gas source 33 of Leising includes stored gas. (Leising at 3:2327
(EX1002) (The apparatus of this invention includes at least one gas source 33 for
supplying gas to the inflatable restraints. The gas source may be of various types,
such as the gas generating types, or the gas storage or reservoir type.) (emphasis
added); Prasad 78 (EX1005)). The side curtain 41 is inflated by the gas that is
directed through the conduit 37. (Leising at 3:2833; Figures 2, 3 (EX1002);
Prasad 78 (EX1005)).
5.

Claim 10 obvious in view of Leising and Lau

a)

The system of claim 1, wherein the conduit is a single

conduit leading from the single gas-providing system to
provide gas for inflating the single airbag.

Leising discloses that the conduit 37 is a single conduit. (Leising at 3:2833;

Figures 2, 3 (EX1002); Prasad 81 (EX1005)). The conduit 37 extends from the
gas source 33 to the side curtain 41. (Leising at 3:2833. Figures 2, 3 (EX1002);
Prasad 81 (EX1005)).
6.

Claim 12 is obvious in view of Leising and Lau

34

a)

IPR2016-00364
US Patent No. 9,043,093
The system of claim 1, wherein the single airbag is
housed in the ceiling of the vehicle.

Leising discloses that the side curtain 41 is housed in the ceiling of the
vehicle. (Leising at 5:3641 (EX1002) (the inflatable restraint apparatus of this
invention is adapted to be conveniently and aesthetically stowed in the vehicular
roof structure, thus avoiding the necessity of tearing up the instrument panel to
provide storage space for the bag apparatus.) (emphasis added); see also 3:3842;
3:6264; Prasad 84 (EX1005)). As noted above, it would have been obvious to
modify the side curtain 41 and storage area of Leising to extend to the rear seat
area. (Prasad 84 (EX1005)). Thus, it would have been likewise obvious for the
extended side curtain of Leising to be stored in the roof structure, as disclosed for
side curtain 41.
7.

Claim 17 is obvious in view of Leising and Lau

a)

The system of claim 1, wherein at least two of the

plurality of compartments of the single airbag are in
direct flow communication with each other.

Leising discloses that the compartments between the restraining webs 53 of

the side curtain 41 are in direct flow communication with each other. (Id. at 87
(EX1005)). As shown below in annotated Figure 8, the restraining webs 53 do not
extend completely to the bottom of the side curtain 41. (Id. at 87 (EX1005)).
Therefore, the compartments 14 are in direct flow communication around the

35

IPR2016-00364
US Patent No. 9,043,093
lower portions of the restraining webs 53 because the gas that enters the side
curtain 41 through the openings 51 can flow from one compartment to another
compartment (Leising at 3:3742 (EX1002); Prasad 87 (EX1005)). One skilled
in the art would appreciate that the compartments are also in directed flow
communication with each other around top portions of the restraining webs 53, as
shown in Figure 10 of Leising. (Prasad 87 (EX1005)).

8.

Claim 18 is obvious in view of Leising and Lau

a)

The system of claim 1, wherein at least two of the

plurality of compartments of the single airbag are
directly attached to each other and are in direct flow
communication with each other.

Leising shows that adjacent compartments between the restraining webs 53

are directly attached to each other and are in direct flow communication with each
other. (Leising at Figure 8 (EX1002); Prasad 90 (EX1005)). For example, as
36

IPR2016-00364
US Patent No. 9,043,093
shown above in annotated Figure 8, the compartments 1 and 2 are directly attached
to each other by the intervening restraining web 53 and are in direct flow
communication with each other at least at the bottoms of the compartments. One
skilled in the art would appreciate that the compartments are also in direct flow
communication with each other around top portions of the restraining webs 53, as
shown in Figure 10 of Leising. (Prasad 90 (EX1005)).
9.

Claim 19 is obvious in view of Leising and Lau

a)

The system of claim 1, wherein the plurality of

compartments are configured in a row or a column.

The compartments 14, shown above in annotated Figure 8 of Leising, are

configured in a row, extending from the left to the right of the figure. (Leising at
Figure 8 (EX1002); Prasad 93 (EX1005)).
10.

Claim 26 is obvious in view of Leising and Lau

a)

A method for inflating a single airbag of a vehicle, the

method comprising:

arranging the single airbag to

extend across at least two seating positions of a

passenger compartment of the vehicle and
As noted above in Section VII.A.3.a, Leising in view of Lau teaches a
method for inflating a single airbag of a vehicle, the method comprising:
arranging the single airbag to extend across at least two seating positions of a
passenger compartment of the vehicle. (Prasad 9599 (EX1005)).

37

b)

IPR2016-00364
US Patent No. 9,043,093
arranged to deploy into the passenger compartment
along a lateral side of the vehicle and adjacent each of
the at least two seating positions

As noted above in Section VII.A.3.b, Leising in view of Lau teaches an

airbag that is arranged to deploy into the passenger compartment along a lateral
side of the vehicle and adjacent each of the at least two seating positions. (Id. at
100102 (EX1005)).

c)

directing gas from a single inflator of a single gasproviding system situated at a location apart from the
single airbag through a conduit into the single airbag
such that the single airbag, when inflated with the gas,
extends across the at least two seating positions of the
vehicle

As noted above in Sections VII.A.3.d and VII.A.3.e, Leising in view of Lau

teaches directing gas from a single inflator of a single gas-providing system
situated at a location apart from the single airbag through a conduit into the single
airbag such that the single airbag, when inflated with the gas, extends across the at
least two seating positions of the vehicle. (Id. at 103105 (EX1005)). The
modified side curtain 41 of Leising, when inflated, would extend across the at least
two seating positions of the vehicle. (Id. at 103105 (EX1005)).

38

d)

IPR2016-00364
US Patent No. 9,043,093
wherein the single airbag only receives directed gas
from the single inflator

Leising discloses a single gas source 33 for supplying gas to the side curtain
41. (Leising at 2325; Figures 2, 3 (EX1002); Prasad 107 (EX1005)). The gas
source has only one inflator 35. (Leising at 3:2728, Figures 2, 3 (EX1002);
Prasad 107 (EX1005)). Lau also discloses to use a single inflator. (Lau at 2:28
34, Figure 3 (EX1003); (Prasad 107 (EX1005)). As noted above, it would have
been obvious to modify the side curtain 41 of Leising to extend to the rear seat area
based on Lau. (Prasad 106107 (EX1005)). Thus, it would have been obvious
for the modified side curtain 41 of Leising to only receive gas from the single
inflator 35 of Leising.

e)

the at least two seating positions comprising a first

seating position in a first row of seats of the vehicle and
a second seating position in a second row of seats of the
vehicle longitudinally displaced from the first row of
seats, along the lateral side of the vehicle

As noted above in Section VII.A.3.f, Leising in view of Lau teaches that the
at least two seating positions comprising a first seating position in a first row of
seats of the vehicle and a second seating position in a second row of seats of the
vehicle longitudinally displaced from the first row of seats, along the lateral side of
the vehicle. (Id. at 108110 (EX1005)).

39

f)

IPR2016-00364
US Patent No. 9,043,093
wherein the single airbag has a plurality of
compartments for receiving the gas

As noted above in Section VII.A.3.g, Leising in view of Lau teaches

wherein the single airbag has a plurality of compartments for receiving the gas.
(Id. at 111114 (EX1005)).

g)

wherein the plurality of compartments are in flow

communication with each other.

As noted above in Section VII.A.3.h, Leising in view of Lau teaches

wherein the plurality of compartments are in flow communication with each
other. (Id. at 115117 (EX1005)).
11.

Claim 27 is obvious in view of Leising and Lau.

a)

wherein the conduit is a single conduit leading from

the single gas-providing system to provide gas for
inflating the single airbag.

As noted above in Section VII.A.3.a, Leising in view of Lau teaches

wherein the conduit is a single conduit leading from the single gas-providing
system to provide gas for inflating the single airbag.

(Id. at 119120

(EX1005)).
12.

Claim 36 is obvious in view of Leising and Lau.

40

a)

IPR2016-00364
US Patent No. 9,043,093
An airbag system of a vehicle, the airbag system
comprising: a single airbag extending across at least
two seating positions of a passenger compartment of a
vehicle

As noted above in Section VII.A.3.a, Leising in view of Lau teaches an

airbag system of a vehicle, the airbag system comprising: a single airbag
extending across at least two seating positions of a passenger compartment of a
vehicle. (Id. at 122-125 (EX1005)).

b)

the single airbag arranged to deploy into the passenger

compartment along a lateral side of the vehicle and
adjacent each of the at least two seating positions

As noted above in Section VII.A.3.b, Leising in view of Lau teaches an

airbag that is the single airbag arranged to deploy into the passenger compartment
along a lateral side of the vehicle and adjacent each of the at least two seating
positions. (Id. at 126128 (EX1005)).

c)

wherein the at least two seating positions include a

first seating position in a first seat row of seats of the
vehicle and a second seating position in a second seat
row of seats of the vehicle longitudinally displaced from
the first seat row of seats, along the lateral side of the
vehicle,

As noted above in Sections VII.A.3.f, Leising in view of Lau teaches

wherein the at least two seating positions include a first seating position in a first

41

IPR2016-00364
US Patent No. 9,043,093
seat row of seats of the vehicle and a second seating position in a second seat row
of seats of the vehicle longitudinally displaced from the first seat row of seats,
along the lateral side of the vehicle. (Id. at 129131 (EX1005)).

d)

wherein the single airbag has a plurality of

compartments configured to receive gas, wherein the
plurality of compartments are in flow communication
with each other

As noted above in Sections VII.A.3.g and VII.A.3.h, Leising in view of Lau

teaches wherein the single airbag has a plurality of compartments configured to
receive gas, wherein the plurality of compartments are in flow communication with
each other. (Id. at 132136 (EX1005)).

e)

a cover interposed between the single airbag and the

passenger compartment to cover the single airbag prior
to deployment

As noted above in Section VII.A.3.c, Leising in view of Lau teaches that a

cover interposed between the single airbag and the passenger compartment to
cover the single airbag prior to deployment. (Id. at 137139 (EX1005)).

f)

a single gas-providing system that provides the gas to

inflate the single airbag and which is arranged apart
from the single airbag; and

As noted above in Section VII.A.3.d, Leising in view of Lau teaches a

single gas-providing system that provides the gas to inflate the single airbag and
which is arranged apart from the single airbag. (Id. at 140142 (EX1005)).
42

g)

IPR2016-00364
US Patent No. 9,043,093
a conduit leading from the single gas-providing system
to provide gas to inflate the single airbag, the conduit
being arranged to deliver the gas from the single gasproviding system into the single airbag.

As noted above in Section VII.A.3.e, Leising in view of Lau teaches a

conduit leading from the single gas-providing system to provide gas to inflate the
single airbag, the conduit being arranged to deliver the gas from the single gasproviding system into the single airbag. (Id. at 143145 (EX1005)).

h)

wherein the single airbag is arranged to deploy

downward into the passenger compartment and the
conduit is arranged at or adjacent to a top edge of the
single airbag.

Leising discloses that the side curtain 41 deploys downward into the
passenger. (Leising at 3:3848; Figures 13 (EX1002); Prasad 147 (EX1005)).
As noted above, it would have been obvious to modify the single curtain 41 of
Leising to extend to the rear seat area. (Prasad 146147 (EX1005)). Thus, the
side curtain 41 of Leising, when modified in view of Lau, would deploy downward
into the passenger compartment. (Id. at 146147 (EX1005)). Leising discloses
that the tube 37 is arranged at or adjacent to a top edge of the single airbag.
(Leising at 3:2831; Figures 2, 3, 8 (EX1002)).

43

B.

IPR2016-00364
US Patent No. 9,043,093
Ground II: Claims 1, 17, 18, 19, 26, 27 and 36 are rendered
obvious by Karlow in view of Lau
1.

Overview of Karlow

Neither Karlow nor Lau was applied by the Examiner during prosecution,
nor is there any analysis in the 093 Patent file history of these references.
Karlow discloses an inflatable head restraint 10, i.e., a single airbag, that
deploys to protect an occupant during a side impact collision. (Karlow at 2:1519;
3:3641 (EX1004); Prasad 148 (EX1005)). The airbag of Figure 5 has inflatable
fingers 42 and a cloth manifold 44. (Karlow at 4:5261 (EX1004)). A single gas
generator 12 provides gas to the inflatable fingers 42 through the manifold 44, as
shown below in Figure 5. (Karlow at 3:4143; Figure 5 (EX1004); Prasad 148
(EX1005)).

The inflatable fingers 42 and manifold 44 act to absorb head impact

energy. (Karlow at 4:6062; (EX1004); Prasad 149 (EX1005)). One skilled in

44

IPR2016-00364
US Patent No. 9,043,093
the art understands that a manifold is, for example, a chamber that branches into
several openings. (Prasad 149 (EX1005)). Accordingly, Figure 5 discloses a
single gas generator 12, which is an inflator that discharges gas to the inflatable
fingers 42 through the manifold 44. (Id. at 149 (EX1005)). Karlow does not
disclose that its airbag is limited to only the front seat area.

(Id. at 149

(EX1005)).
Figure 5 shows first and second securing points 24, 26 that anchor the airbag
10 on the vehicle body (Karlow at 3:6265 (EX1004); Prasad 150 (EX1005)). A
third securing point 28 is movably mounted in a track 30 (Karlow at 3:6566
(EX1004); Prasad 150 (EX1005)). In use, gas travels through the manifold 44 to
the inflatable fingers 42 causing the securing point 28 to move from a first
position, as shown in Figure 1, to the second position shown in Figure 5. (Karlow
at 4:513; (EX1004); Prasad 150 (EX1005)). Karlow describes the movement of
the securing point 28 with respect to the embodiment of Figure 1, although one
skilled in the art would understand that it is also applicable to the alternative
embodiments of Figures 4 and 5. (Karlow at 3:2129; (EX1004); Prasad 150
(EX1005)). Figure 4 of Karlow is similar to Figure 5 except for (a) using a
different arrangement of inflatable fingers 32, 34 and 26 and (b) providing fabric
panels 38 and 40 between the fingers. (Karlow at 4:3551; Figure 4 (EX1004);
Prasad XX (EX1005)).

45

IPR2016-00364
US Patent No. 9,043,093
An overview of Lau is provided in Section VII.A.2.
2.

Claim 1 is obvious in view of Karlow and Lau

a)

[a]n airbag system of a vehicle, the airbag system

comprising: a single airbag extending across at least
two seating positions of a passenger compartment of a
vehicle

Karlow respectively discloses single airbags in Figures 1, 2, 3a, 4 and 5.

(Karlow at Figures 1, 2, 3a, 4 and 5 (EX1004); Prasad 154 (EX1005)). Karlow
does not explicitly disclose that an airbag extends across two seating positions that
are longitudinally displaced along a lateral side of the vehicle. It would have been
obvious to a person of skill in the art to extend the airbag system 10 of Karlow to
protect occupants in the back seat based on Lau. (Prasad 154 (EX1005)). The
motivation being the personal safety of back seat occupants.

(Prasad 154

(EX1005)). Karlow and Lau are in the same field (use of airbags in vehicles) and
both address the same problem (how to effectively provide side airbag protection
during an accident). (Id. at 154 (EX1005)). Lau discloses to protect occupants in
front and rear seats using (1) a single airbag module and (2) a single inflator. (Id.
at 154 (EX1005)). It would have been obvious to extend the airbag system 10 of
Karlow to protect occupants in the back seats based on Lau.

(Id. at 154

(EX1005)). The extension could be made by elongating the airbag system 10 of

46

IPR2016-00364
US Patent No. 9,043,093
Karlow and placing the track 30 behind the rear seat window. (Id. at 154X
(EX1005)).
One skilled in the art would realize that a completely separate airbag with its
own inflator is not needed for the rear seat. This is because both Karlow and Lau
use a single inflator, and Lau discloses to use a single inflator for front seat and
rear seat airbag portions. A modification of Karlow based on the teachings of Lau
would have produced the expected result of providing rear seat occupants with
protection during a side impact. (Id. at 155 (EX1005)).

b)

the single airbag arranged to deploy into the passenger

compartment along a lateral side of the vehicle and
adjacent each of the at least two seating positions

The single airbag of Karlow deploys into the passenger compartment along a
lateral side of the vehicle. (Karlow at 3:4959; 4:3962; Figure 1, 2, 3a, 4 and 5
(EX1004); Prasad 157 (EX1005)). The airbag configuration of Lau deploys into
the passenger compartment along a lateral side of the vehicle and adjacent the front
and rear seating positions. (Lau at 1:2831; 2:1214; Figure 1 (EX1003); Prasad
157 (EX1005)). As noted above, it would have been obvious to modify the single
airbag of Karlow by extending it to protect rear seat occupants as disclosed by Lau.
(Prasad 157 (EX1005)). Thus, the modified airbag of Karlow would deploy into
the passenger compartment along a lateral side of the vehicle and adjacent the front
and rear seating positions. (Prasad 157 (EX1005)).
47

c)

IPR2016-00364
US Patent No. 9,043,093
a cover interposed between the single airbag and the
passenger compartment to cover the single airbag prior
to deployment

Karlow discloses that the inflatable member 14 and restraint curtain 20 of

Figure 1 when undeployed are folded and secured behind the trim close-out
panel. (Karlow at 3:4345 (EX1004); Prasad 159 (EX1005)). Karlow further
discloses that a trim tear seam can be provided to obscure the device and to
enhance the aesthetic quality.

(Karlow at 3:4953 (EX1004); Prasad 159

(EX1005)). The trim close-out panel of Karlow with the tear seam provides a
cover between the inflatable member 14 and the passenger compartment. (Prasad
159 (EX1005)). Karlow describes the trim close-out panel and tear seam with
respect to Figures 13, although one skilled in the art would understand that these
features are equally applicable for covering the inflatable fingers 32, 34 and 36 of
Figure 4, and the inflatable fingers 42 and manifold 44 of Figure 5. (Id. at 159
(EX1005)). This is because Figures 4 and 5 are second and third embodiments of
the first embodiment in Figures 13. (Karlow at 3:729; (EX1004); Prasad 159
(EX1005)).

d)

a single gas-providing system that has only one

inflator that provides gas to inflate the single airbag
and which is arranged apart from the single airbag

Karlow discloses a single gas-providing system that has only one inflator 12.
(Karlow at 3:4143; 5:2024; 8:1423; Figures 1, 2, 3a, 4 and 5 (EX1004); Prasad
48

IPR2016-00364
US Patent No. 9,043,093
161 (EX1005)). As shown in Figures 1, 2, 3a, 4 and 5 of Karlow, the gasproviding system, including the inflator 12, is arranged apart from the single
airbag, e.g., apart from the inflatable fingers 42 and manifold 44 of Figure 5.
(Prasad 161 (EX1005)). Similar to Karlow, Lau uses a single inflator 38 to
inflate the airbag portions that extend across the front and rear seats. (Lau at 1:31
32, 2:1213; Figures 1, 3 and 4 (EX1003); Prasad 161 (EX1005)). One of
ordinary skill in the art, after modifying the single airbag of Karlow to extend to
the rear seat area, would have continued to use the single gas-providing system at
least based on the teachings in Lau. (Prasad 161 (EX1005)).

e)

a conduit leading from the single gas-providing system

to provide gas to inflate the single airbag, the conduit
being arranged to deliver the gas from the single gasproviding system into the single airbag

Using hidden lines, Karlow discloses a conduit that leads from the inflator
12 to inflate the airbag. (Karlow at 3:4143; 5:2024; 8:1423; Figures 1, 2, 3a, 4
and 5 (EX1004); Prasad 163 (EX1005)). The conduit of Karlow is used to
deliver gas to the airbag and is shown below, for example, in annotated Figure 5.
(Karlow at Figure 5 (EX1004); (Prasad 163 (EX1005)).

49

IPR2016-00364
US Patent No. 9,043,093

f)

the at least two seating positions comprising a first

seating position in a first seat row of seats of the vehicle
and a second seating position in a second seat row of
seats of the vehicle longitudinally displaced from the
first seat row of seats, along the lateral side of the
vehicle

Karlow shows that the vehicle has a front seat that provides a first seating
position in a first seat row of seats. (Karlow at Figures 1, 2, 3a, 4 and 5 (EX1004);
Prasad 165 (EX1005)). Karlow also shows that the vehicle has a rear side
window, which at least makes obvious the existence of a second seating position in
a second seat row of seats, e.g., the back seats. (Karlow at Figures 1, 2, 3a, 4 and 5
(EX1004); Prasad 165 (EX1005)).

Similarly, Lau discloses a first seating

position in a first seat row of seats 12 and a second seating position in a second
seat row of seats 16.

(Lau at 1:5861; Figure 1 (EX1003); Prasad 165

50

IPR2016-00364
US Patent No. 9,043,093
(EX1005)). The second seat row of seats is longitudinally displaced from the first
seat row of seats in Lau and is at least obvious in Karlow based on Karlows rear
window. (Prasad 165 (EX1005)).

g)

wherein the single airbag has a plurality of

compartments for receiving the gas

Figure 4 of Karlow discloses inflatable fingers 32, 34 and 36 that receive gas
from the single inflator 12. (Karlow at 4:3541; Figure 4 (EX1004); Prasad 167
(EX1005)).

In another embodiment, Figure 5 of Karlow discloses that the

inflatable fingers 42 and manifold 44 receive the gas. (Karlow at 4:5261; Figure
5 (EX1004); Prasad 167 (EX1005)). The inflatable fingers of Figures 4 and 5, in
addition to the manifold of Figure 5, provide protection during a side impact
collision. (Karlow 4:4657 (EX1004); Prasad 167 (EX1005)). Thus, when
either of the embodiments in Figures 4 and 5 are modified to extend to the rear seat
area, as discussed above, it would have been obvious to utilize the inflatable
fingers because of the protection that they offer. (Prasad 167 (EX1005)).

h)

wherein the plurality of compartments are in flow

communication with each other.

The inflatable fingers 32, 34 and 36 of Figure 4 are in flow communication

with each other at least around the narrow portions that join the respective fingers.
(Karlow at Figure 4 (EX1004); Prasad 169 (EX1005)). The inflatable fingers 42

51

IPR2016-00364
US Patent No. 9,043,093
of Figure 5 are in flow communication with each other because they are disclosed
as being sewn subsections of an inflatable cushion:
The plurality of fingers 42 can be individual
inflatable members or, more likely, sewn subsections of
an inflatable cushion.
Karlow at 4:5761; Figure 5 (EX1004); Prasad 169 (EX1005)). The manifold 44
of Figure 5 is also a compartment that is in flow communication with the
compartments provided by the inflatable fingers 42. (Prasad 170 (EX1005)).
3.

Claim 10 is obvious in view of Karlow and Lau

a)

The system of claim 1, wherein the conduit is a single

conduit leading from the single gas-providing system to
provide gas for inflating the single airbag.

As noted above, for example, in annotated Figure 5 of Karlow, the conduit is

a single conduit that leads from the single gas generator or inflator 12 to inflate the
single airbag. (Karlow at 3:4143; 5:2024; 8:1423; Figures 1, 2, 3a, 4 and 5
(EX1004); Prasad 173 (EX1005)).
4.

Claim 17 is obvious in view of Karlow and Lau

a)

The system of claim 1, wherein at least two of the

plurality of compartments of the single airbag are in
direct flow communication with each other.

At least two of the inflatable fingers 32, 34 and 36 of Figure 4 are in direct
flow communication with each other around the narrow portions that join the
52

IPR2016-00364
US Patent No. 9,043,093
respective fingers. (Karlow at Figure 4 (EX1004); Prasad 176 (EX1005)). At
least two of the inflatable fingers 42 of Figure 5 are in direct flow communication
with each other because they are disclosed as being sewn subsections of an
inflatable cushion, as opposed to being individual inflatable members. (Karlow
at 4:5761; Figure 5 (EX1004); Prasad 176 (EX1005)). The manifold 44 of
Figure 5 is also a compartment that is in direct flow communication with the
compartments provided by the fingers 42. (Prasad 176 (EX1005)).
5.

Claim 18 is obvious in view of Karlow and Lau

a)

The system of claim 1, wherein at least two of the

plurality of compartments of the single airbag are
directly attached to each other and are in direct flow
communication with each other.

The inflatable fingers 34 and 36, for example, of Figure 4 are directly
attached to each other and are in direct flow communication with each other at
least around the narrow portions that join the fingers.

(Karlow at Figure 4

(EX1004); Prasad 179 (EX1005)). At least two of the inflatable fingers 42, such
as the two fingers 42 to the far right of Figure 5, are directly attached to each other
and are in direct flow communication with each other because they are disclosed as
being sewn subsections of an inflatable cushion, as opposed to being individual
inflatable members.

(Karlow at 4:5761; Figure 5 (EX1004); Prasad 179

(EX1005)). The manifold 44 of Figure 5 is also a compartment that is directly

53

IPR2016-00364
US Patent No. 9,043,093
attached to and is in flow communication with the compartments provided by the
fingers 42. (Prasad 179 (EX1005)).
6.

Claim 19 is obvious in view of Karlow and Lau

a)

The system of claim 1, wherein the plurality of

compartments are configured in a row or a column.

The inflatable fingers 32, 34 and 36 of Figure 4, as well as the inflatable

fingers 42 of Figure 5, are configured in rows extending from the left to the right of
the respective figures.

(Karlow at Figures 4 and 5 (EX1004); Prasad 182

(EX1005)).
7.

Claim 26 is obvious in view of Karlow and Lau

a)

A method for inflating a single airbag of a vehicle, the

method comprising:

arranging the single airbag to

extend across at least two seating positions of a

passenger compartment of the vehicle and
As noted above in Section VII.B.2.a, Karlow in view of Lau teaches a
method for inflating a single airbag of a vehicle, the method comprising:
arranging the single airbag to extend across at least two seating positions of a
passenger compartment of the vehicle. (Prasad 184187 (EX1005)).

b)

arranged to deploy into the passenger compartment

along a lateral side of the vehicle and adjacent each of
the at least two seating positions

As noted above in Section VII.B.2.b, Karlow in view of Lau teaches an

airbag that is arranged to deploy into the passenger compartment along a lateral
54

IPR2016-00364
US Patent No. 9,043,093
side of the vehicle and adjacent each of the at least two seating positions. (Id. at
188190 (EX1005)).

c)

directing gas from a single inflator of a single gasproviding system situated at a location apart from the
single airbag through a conduit into the single airbag
such that the single airbag, when inflated with the gas,
extends across the at least two seating positions of the
vehicle

As noted above in Sections VII.B.2.d and VII.B.2.e, Karlow in view of Lau

teaches directing gas from a single inflator of a single gas-providing system
situated at a location apart from the single airbag through a conduit into the single
airbag such that the single airbag, when inflated with the gas, extends across the at
least two seating positions of the vehicle. (Id. at 191194 (EX1005)). The
modified airbag of Karlow, when inflated, would extend across the at least two
seating positions of the vehicle. (Id. at 192 (EX1005)).

d)

wherein the single airbag only receives directed gas

from the single inflator

Karlow discloses to use only a single inflator 12. (Karlow at 3:4143; Figure
5 (EX1004); Prasad XX (EX1005)). Lau also discloses to use a single inflator
38. (Lau at 2:2834, Figure 3 (EX1003); (Prasad XX (EX1005)). As noted
above, it would have been obvious to modify the single airbag 10 in either Figures
4 or 5 of Karlow to extend to the rear seat area based on Lau. (Prasad 195196
55

IPR2016-00364
US Patent No. 9,043,093
(EX1005)). Thus, it would have been obvious for the single airbag 10 of Karlow
to only receive gas from the single inflator 12.

e)

the at least two seating positions comprising a first

seating position in a first row of seats of the vehicle and
a second seating position in a second row of seats of the
vehicle longitudinally displaced from the first row of
seats, along the lateral side of the vehicle

As noted above in Section VII.B.2.f, Karlow in view of Lau teaches that the
at least two seating positions comprising a first seating position in a first row of
seats of the vehicle and a second seating position in a second row of seats of the
vehicle longitudinally displaced from the first row of seats, along the lateral side of
the vehicle. (Id. at 197199 (EX1005)).

f)

wherein the single airbag has a plurality of

compartments for receiving the gas

As noted above in Section VII.B.2.g, Karlow in view of Lau teaches

wherein the single airbag has a plurality of compartments for receiving the gas.
(Id. at 200202 (EX1005)).

g)

wherein the plurality of compartments are in flow

communication with each other.

As noted above in Section VII.B.2.h, Karlow in view of Lau teaches

wherein the plurality of compartments are in flow communication with each
other. (Id. at 203204 (EX1005)).

56

8.

IPR2016-00364
US Patent No. 9,043,093
Claim 27 is obvious in view of Karlow and Lau

a)

wherein the conduit is a single conduit leading from

the single gas-providing system to provide gas for
inflating the single airbag.

As noted above in Section VII.B.3.a, Karlow in view of Lau teaches

wherein the conduit is a single conduit leading from the single gas-providing
system to provide gas for inflating the single airbag.

(Id. at 206207

(EX1005)).
9.

Claim 36 is obvious in view of Karlow and Lau

a)

An airbag system of a vehicle, the airbag system

comprising: a single airbag extending across at least two

seating positions of a passenger compartment of a vehicle
As noted above in Section VII.B.2.a, Karlow in view of Lau teaches an
airbag system of a vehicle, the airbag system comprising: a single airbag
extending across at least two seating positions of a passenger compartment of a
vehicle. (Id. at 209212 (EX1005)).

b)

the single airbag arranged to deploy into the passenger

compartment along a lateral side of the vehicle and adjacent

each of the at least two seating positions
As noted above in Section VII.B.2.b, Karlow in view of Lau teaches an
airbag that is the single airbag arranged to deploy into the passenger compartment
along a lateral side of the vehicle and adjacent each of the at least two seating
positions. (Id. at 213215 (EX1005)).
57

c)

IPR2016-00364
US Patent No. 9,043,093
wherein the at least two seating positions include a

first seating position in a first seat row of seats of the vehicle

and a second seating position in a second seat row of seats of
the vehicle longitudinally displaced from the first seat row of
seats, along the lateral side of the vehicle,
As noted above in Sections VII.B.2.f, Karlow in view of Lau teaches
wherein the at least two seating positions include a first seating position in a first
seat row of seats of the vehicle and a second seating position in a second seat row
of seats of the vehicle longitudinally displaced from the first seat row of seats,
along the lateral side of the vehicle. (Id. at 216218 (EX1005)).

d)

wherein the single airbag has a plurality of

compartments configured to receive gas, wherein the plurality

of compartments are in flow communication with each other
As noted above in Sections VII.B.2.g and VII.B.2.h, Karlow in view of Lau
teaches wherein the single airbag has a plurality of compartments configured to
receive gas, wherein the plurality of compartments are in flow communication with
each other. (Id. at 219223 (EX1005)).

e)

a cover interposed between the single airbag and the

passenger compartment to cover the single airbag prior to

deployment
As noted above in Section VII.B.2.c, Karlow in view of Lau teaches that a
cover interposed between the single airbag and the passenger compartment to
cover the single airbag prior to deployment. (Id. at 224226 (EX1005)).
58

f)

IPR2016-00364
US Patent No. 9,043,093
a single gas-providing system that provides the gas to

inflate the single airbag and which is arranged apart from the
single airbag; and
As noted above in Section VII.B.2.d, Karlow in view of Lau teaches a
single gas-providing system that provides the gas to inflate the single airbag and
which is arranged apart from the single airbag. (Id. at 227229 (EX1005)).

g)

a conduit leading from the single gas-providing system

to provide gas to inflate the single airbag, the conduit being

arranged to deliver the gas from the single gas-providing
system into the single airbag.
As noted above in Section VII.B.2.e, Karlow in view of Lau teaches a
conduit leading from the single gas-providing system to provide gas to inflate the
single airbag, the conduit being arranged to deliver the gas from the single gasproviding system into the single airbag. (Id. at 230232 (EX1005)).

h)

wherein the single airbag is arranged to deploy

downward into the passenger compartment and the conduit is

arranged at or adjacent to a top edge of the single airbag.
The single airbag of Karlow deploys downward into the passenger
compartment along a lateral side of the vehicle. (Karlow at 3:4959; 4:3962;
Figure 1, 2, 3a, 4 and 5 (EX1004); Prasad 233234 (EX1005)). As noted above,
it would have been obvious to modify the single airbag of Karlow by extending it
to protect rear seat occupants as disclosed by Lau. (Prasad 234 (EX1005)).

59

IPR2016-00364
US Patent No. 9,043,093
Thus, the modified airbag of Karlow would deploy downward into the passenger
compartment. (Id. at 234 (EX1005)).
Using hidden lines, Karlow discloses a conduit, arranged at or adjacent to a
top edge of the single airbag, which leads from the single gas generator 12 to
inflate the airbag. (Karlow at 3:4143; 5:2024; 8:1423; Figures 1, 2, 3a, 4 and 5
(EX1004); Prasad 235 (EX1005)).
VIII. CONCLUSION
Based on the foregoing, the challenged claims of the 093 Patent recite
subject matter that is unpatentable. The Petitioner requests institution of an inter
partes review to cancel these claims.

Respectfully Submitted,
/David L. Cavanaugh/
David L. Cavanaugh
Registration No. 36,476
Jonathan Stroud
Registration No. 72,518
Thomas E. Anderson
Registration No. 37,063
Daniel V. Williams
Registration No. 45,221

60

IPR2016-00364
US Patent No. 9,043,093
Table of Exhibits for U.S. Patent 9,043,093 Petition for Inter Partes Review

Exhibit
1001

1004

Description
US Patent 9,043,093
US Patent 3,897,961 (Leising) (filed on May 2, 1973,
published on Aug. 5, 1975)
US Patent 5,273,309 (Lau) (filed on June 19, 1992,
published on December 28, 1993)
US Patent 5,588,672 (Karlow) (filed on October 20, 1995,
published on December 31, 1996)

1005
1006
1007
1008
1009
1010
1011
1012
1013
1014
1015
1016
1017
1018
1019
1020

Declaration of Professor Priyaranjan Prasad

US Patent 5,772,238
File History, Response (11/23/2014)
File History, Application (10/31/2007)
US Patent 5,366,241 (Kithil)
US Patent 3,510,150 (Wilfret)
File History, Decision on Appeal (11/20/2013)
File History, Request to Reopen Prosecution (1/21/2014)
US Patent 3,747,952 (Graebe)
File History, Office Action (3/28/2014)
File History, Response to Office Action (08/06/2014)
File History, Office Action (09/11/2014)
File History, Response to Office Action (10/15/2014)
File History, Requirement for Information (10/23/2014)
File History, Notice of Allowance (03/10/2015)
Petitioners Voluntary Interrogatory Responses

1002
1003

IPR2016-00364
US Patent No. 9,043,093
CERTIFICATE OF SERVICE
I hereby certify that on December 17th, I caused a true and correct copy of
the foregoing materials:
Petition for Inter Partes Review of U.S. Patent No. 9,043,093 Under 35
U.S.C. 312 and 37 C.F.R. 42.104
Exhibit List
Exhibits for Petition for Inter Partes Review of U.S. Patent No. 9,043,093
(EX10011020)
Power of Attorney
to be served via Federal Express on the following correspondent of record as listed
on PAIR:

MICHAEL T. CRUZ
MCANDREWS HELD & MALLOY, LTD
500 WEST MADISON STREET
SUITE 3400
CHICAGO IL 60661
/Daniel V. Williams/
Daniel V. Williams