Privileged & Confidential / Attorney Work Product
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________________________
`
`TERREMARK NORTH AMERICA LLC, VERIZON COMMUNICATIONS,
`INC., VERIZON SERVICES CORP., TIME WARNER CABLE INC.,
`ICONTROL NETWORKS, INC. AND COXCOM, LLC,
`Petitioners
`
`v.
`
`JOAO CONTROL & MONITORING SYSTEMS, LLC,
`Patent Owner
`
`____________________
`
`CASE IPR: Unassigned
`____________________
`
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,397,363
`UNDER 35 U.S.C. §§311-319 AND 37 C.F.R. §§ 42.1-.80 & 42.100-.123
`
`
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`US2008 6649426 3
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`
`
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,397,363
`
`
`TABLE OF CONTENTS
`
`V.
`
`INTRODUCTION ........................................................................................... 1
`I.
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1) .......................... 1
`A.
`Real party-in-interest under 37 C.F.R. § 42.8(b)(1) .............................. 1
`B.
`Related matters under 37 C.F.R. § 42.8(b)(2) ....................................... 2
`C.
`Lead and back-up counsel under 37 C.F.R. § 42.8(b)(3)&(4) .............. 4
`PAYMENT OF FEES ..................................................................................... 5
`III.
`IV. REQUIREMENTS FOR INTER PARTES REVIEW ...................................... 5
`A. Grounds for standing under 37 C.F.R. § 42.104(a) ............................... 5
`B.
`Identification of challenge and relief requested - 37 C.F.R. §
`42.104(b) ............................................................................................... 5
`BACKGROUND OF THE TECHNOLOGY AND PURPORTED
`INVENTION OF THE ‘363 PATENT ............................................................ 6
`A.
`Background of the technology .............................................................. 6
`B.
`Summary of the prosecution history of the ‘363 Patent ........................ 6
`C.
`Summary of the Challenged Claims ..................................................... 7
`VI. CLAIM CONSTRUCTION - 37 C.F.R. § 42.104(b)(3) ................................ 9
`A.
`“First Signal,” “Second Signal,” and “Third Signal” .......................... 10
`B.
`“Automatically Received” ................................................................... 11
`C.
`“At least one of activate, de-activate, disable, re-enable, and
`control” ................................................................................................ 13
`VII. PERSON HAVING ORDINARY SKILL IN THE ART (POSITA) ............ 14
`VIII. THE CHALLENGED CLAIMS ARE NOT ENTITLED TO A PRIORITY
`DATE BEFORE JULY 18, 1996. ................................................................. 14
`IX. HOW THE CHALLENGED CLAIMS ARE UNPATENTABLE UNDER
`37 C.F.R. § 42.104(b) .................................................................................... 15
`A. Ground 1 – Claims 1, 8 and 20 are obvious under 35 U.S.C. §
`103(a) over Goldberg (Ex. 1008). ....................................................... 16
`1.
`Claim 1 - Goldberg discloses the elements of claim 1: ............ 17
`2.
`Claim 8 - Goldberg discloses the elements of claim 8: ............ 26
`
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`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,397,363
`
`Claim 20 - Goldberg discloses the elements of claim 20: ........ 28
`3.
`Ground 2 – Claims 3 – 4 are obvious under 35 U.S.C. § 103(a)
`over Goldberg in view of Sheng. ........................................................ 29
`1.
`Claim 3 - Goldberg in view of Sheng discloses the
`elements of claim 3: .................................................................. 29
`Claim 4 - Goldberg in view of Sheng discloses the
`elements of claim 4: .................................................................. 31
`Ground 3 – Claims 5 and 13 – 17 are obvious under 35 U.S.C. §
`103(a) over Goldberg in view of Busak. ............................................. 32
`1.
`Claim 5 - Goldberg in view of Busak discloses the
`elements of claim 5: .................................................................. 33
`Claim 13 - Goldberg in view of Busak discloses the
`elements of claim 13: ................................................................ 35
`Claim 14 - Goldberg in view of Busak discloses the
`elements of claim 14: ................................................................ 36
`Claim 15 - Goldberg in view of Busak discloses the
`elements of claim 15: ................................................................ 37
`Claim 16 - Goldberg in view of Busak discloses the
`elements of claim 16: ................................................................ 38
`Claim 17 - Goldberg in view of Busak discloses the
`elements of claim 17: ................................................................ 40
`CONCLUSION .............................................................................................. 41
`
`
`2.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`B.
`
`C.
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`X.
`
`
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`ii
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`

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`Petition for Inter Partes Review of
`U.S. Patent No. 7,397,363
`
`
`LIST OF EXHIBITS
`
`The following is a list of exhibits in support of this petition:
`
`EX-1001
`
`EX-1002
`
`EX-1003
`
`EX-1004
`
`U.S. Patent No. 7,397,363 (“the ‘363 Patent”)
`
`Declaration of Richard Bennett for the ‘363 Patent
`
`Curriculum Vitae of Richard Bennett
`
`U.S. Patent Application No. 08/622,749 filed on
`
`March 27, 1996 (“Mar 1996 application”)
`
`EX-1005
`
`Excerpts from the Prosecution History of the ‘363
`
`Patent
`
`EX-1006
`
`Excerpts from the Prosecution History of the ‘130
`
`Patent
`
`EX-1007
`
`Excerpt from Merriam-Webster Dictionary (10th ed.
`
`1995)
`
`EX-1008
`
`Goldberg, K., et. al., “Beyond the Web: manipulating
`
`the real world,” published by NH Elsevier in
`
`Computer Networks and ISDN Systems, 28 (1995) at
`
`209-219 (“Goldberg”)
`
`iii
`
`
`
`
`
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`

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`Petition for Inter Partes Review of
`U.S. Patent No. 7,397,363
`
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`U.S. Patent No. 5,061,916 to French et al., (“French”),
`
`issued on October 29, 1991
`
`EX-1009
`
`
`
`EX-1010
`
`U.S. Patent No. 5,461,372 to Busak et al., (“Busak”),
`
`issued on October 24, 1995
`
`Ex-1011
`
`Peter Fuhr et. al., “Remote Monitoring of
`
`Instrumented Structures Using the INTERNET
`
`Information Superhighway” published in Second
`
`European Conference on Smart Structures and
`
`Materials, (1994) at 148-151 (“Fuhr”)
`
`EX-1012
`
`Sheng, Samuel, et al., “A Portable Multimedia
`
`Terminal: Successful personal communications
`
`terminals will depend upon the smooth integration of
`
`computation and communications facilities in a
`
`lightweight unit,” published in IEEE Communications
`
`Magazine (December 1992) at 64-75 (“Sheng”)
`
`EX-1013
`
`Zuech, Nello, “The EDC-1000 Electric Imaging
`
`System,” published in I.A.P.P.P. Communications No.
`
`39 (March 1990) at 1-2.
`
`iv
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`EX-1014
`
`Petition for Inter Partes Review of
`U.S. Patent No. 7,397,363
`
`
`Excerpt from Concise Dictionary of Engineering: A
`
`Guide to the Language of Engineering (2014)
`
`EX-1015
`
`Excerpt from Communications Standard Dictionary
`
`(3d ed. 1996)
`
`EX-1016
`
`Excerpt from Modern Dictionary of Electronics
`(1999)
`
`EX-1017
`
`U.S. Patent No. 3,866,164 to Peterson (“Peterson”),
`
`issued on February 11, 1975
`
`EX-1018
`
`Goldberg et al., “Desktop Teleoperation via the World
`
`Wide Web,” published in IEEE International
`
`Conference on Robotics and Automation (1995) at
`
`654
`
`EX-1019
`
`PCT Application WO 88/04082 to Atila Aknar and
`
`Andre Soussa, published on June 2, 1988 (“Aknar”)
`
`
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`v
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`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,397,363
`
`
`INTRODUCTION
`Petitioners identified below, respectfully request inter partes review under
`
`I.
`
`35 U.S.C. § 311 and 37 C.F.R. § 42.100 of claims 1, 3-4, 5, 8, 13-17, and 20 (“the
`
`Challenged Claims”) of U.S. Patent No. 7,397,363 (“the ‘363 Patent”), titled
`
`“Control and/or Monitoring Apparatus and Method” (Ex. 1001). The ‘363 Patent
`
`is believed to be owned by Joao Control & Monitoring Systems, LLC (“Joao” or
`
`“Patent Owner”).
`
`According to the ‘363 Patent, the inventor sought to meet a need for an
`
`improved premise security system that “conveniently and effectively enable[s] one
`
`to exercise and/or to perform control, monitoring and/or security functions . . . [by]
`
`owners, occupants and/or other authorized individuals to exercise and/or to provide
`
`control, monitoring and/or security functions over these premises, from a remote
`
`location and at any time.” Ex. 1001 at 2:67-3:6. Contrary to the ‘363 Patent’s
`
`representations, remotely controlled premises control systems were previously
`
`disclosed in numerous prior art references.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1)
`
`A. Real party-in-interest under 37 C.F.R. § 42.8(b)(1)
`The Petitioners are: Terremark North America LLC; Verizon Business
`
`Network Services Inc.; and Verizon Services Corp. Additionally, Petitioners, out
`
`
`
`
`
`
`1
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`

`

`of an abundance of caution in light of prior challenges to the named real parties-in-
`
`Petition for Inter Partes Review of
`U.S. Patent No. 7,397,363
`
`
`interest in separate and unrelated IPR petitions, identify each of Verizon
`
`Communications Inc., Verizon Corporate Resources Group LLC and Verizon Data
`
`Services LLC as a real party-in-interest for the IPR requested by this Petition
`
`solely to the extent that Patent Owner contends that these separate legal entities
`
`should be named a real party-in-interest in the requested IPR, and Petitioners do so
`
`to avoid the potential expenditure of resources to resolve such a challenge. No
`
`unnamed entity is funding, controlling, or otherwise has an opportunity to control
`
`or direct this Petition or any of the Petitioners’ participation in any resulting IPR.
`
`Also, Petitioners note that Verizon Communications Inc. has over 500 affiliated
`
`entities and each of these entities agrees to be estopped under the provisions of 35
`
`U.S.C. §§ 315 and/or 325 as a result of any final written decision in the requested
`
`IPR to the same extent that the Petitioners are estopped.
`
`B. Related matters under 37 C.F.R. § 42.8(b)(2)
`
`Below is a chart listing the proceedings brought by the assignee, Joao that
`
`may affect, or be affected, by a decision in the proceeding.
`
`CASES
`Joao v. LifeShield, Inc.
`
`Joao v. Telular Corporation
`
`NUMBER DISTRICT
`2-15-cv-
`PAED
`02772
`1-14-cv-
`09852
`
`ILND
`
`
`
`
`
`
`2
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,397,363
`
`
`AZD
`
`GAND
`
`NYED
`
`DED
`
`DED
`
`DED
`
`DED
`
`DED
`
`DED
`
`DED
`
`TXWD
`
`DED
`
`MIED
`
`MIED
`
`NCWD
`
`DED
`
`NYSD
`
`DED
`NYSD
`
`Joao v. Mobile Integrated Solutions, LLC
`
`Joao v. Comverge, Inc.
`
`Joao v. Slomin’s, Inc.
`
`Joao v. Cox Communications, Inc.
`
`Joao v. Nissan North America, Inc.
`
`Joao v. Verizon Communications, Inc.
`
`Joao v. Time Warner Cable, Inc.
`
`Joao v. Consolidated Edison, Inc.
`
`Joao v. Volksvagen Group of America, Inc., et al.
`
`Alarm.com Incorporated v. Joao
`
`Joao v. Protect America, Inc.
`
`Joao v. FrontPoint Security Solutions LLC
`
`Joao v. Chrysler Corporation
`
`Joao v. Ford Motor Company
`
`Joao v. Lowe’s Companies, Inc.
`
`Joao v. Vivint Inc.
`
`Joao v. Chrysler Corporation
`
`Joao v. Ford Motor Company
`Joao v. City of Yonkers
`
`
`
`
`
`
`3
`
`2-14-cv-
`02643
`1-14-cv-
`03862
`2-14-cv-
`02598
`1-14-cv-
`00520
`1-14-cv-
`00523
`1-14-cv-
`00525
`1-14-cv-
`00524
`1-14-cv-
`00519
`1-14-cv-
`00517
`1-14-cv-
`00284
`1-14-cv-
`00134
`1-13-cv-
`01760
`4-13-cv-
`13957
`4-13-cv-
`13615
`5-13-cv-
`00056
`1-13-cv-
`00508
`1-13-cv-
`00053
`1-12-cv-
`01479
`1-12-cv-
`
`

`

`Joao v. Ford Motor Company
`
`Joao v. Xanboo, Inc., et al.
`
`Joao of California, LLC v. Sling Media, Inc., et al.
`Joao of California, LLC v. ACTI Corporation Inc.,
`et al.
`
`07734
`4-12-cv-
`14004
`2-12-cv-
`03698
`3-11-cv-
`06277
`8-10-cv-
`01909
`C. Lead and back-up counsel under 37 C.F.R. § 42.8(b)(3)&(4)
`
`Petition for Inter Partes Review of
`U.S. Patent No. 7,397,363
`
`
`MIED
`
`CACD
`
`CACD
`
`CACD
`
`Petitioners designate the following counsel and provide service information
`
`in accordance with 37 C.F.R. § 42.8(b)(3)&(4). Pursuant to 37 C.F.R. § 42.10(b),
`
`Powers of Attorney accompany this Petition.
`
`For CoxCom, LLC
`
`Back-Up Counsel
`D. Clay Holloway (Reg. No. 58,011)
`cholloway@kilpatricktownsend.com
`
`Lead Counsel
`Vaibhav P. Kadaba (Reg. No. 45,865)
`wkadaba@kilpatricktownsend.com
`Kilpatrick Townsend & Stockton LLP
`1100 Peachtree Street NE, Suite 2800 Atlanta, GA 30309-4528
`Phone: (404) 532-6959 Fax: (404) 541-3258
`For Terremark North America LLC and Verizon Communications, Inc.
`Back-Up Counsel
`Back-Up Counsel
`Frank C. Cimino, Jr. (Reg. No. 39,945)
`Megan S. Woodworth (Reg. No.
`FCCimino@Venable.com
`53,655)
`MSWoodworth@Venable.com
`Venable LLP 575 7th Street, N.W. Washington, DC 20004
`Phone: (202)-344-4000 Fax: (202)-344-8300
`
`
`
`
`
`
`4
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`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,397,363
`
`
`For Time Warner Cable, Inc. and iControl Networks, Inc.
`Back-Up Counsel
`
`Jackson Ho (Reg. No. 72,360)
`jackson.ho@klgates.com
`K&L Gates LLP
`630 Hansen Way Palo Alto, CA 94304
`Phone: (650) 798-6719 Fax: (650) 798-6701
`
`III. PAYMENT OF FEES
`Petitioners authorize the Director to charge the required $23,000 fee for this
`
`Petition, as well as any additional fees to Deposit Acct. No. 22-0261.
`
`IV. REQUIREMENTS FOR INTER PARTES REVIEW
`A. Grounds for standing under 37 C.F.R. § 42.104(a)
`Petitioners certify that (1) the ‘363 Patent is available for inter partes review
`
`and (2) Petitioners are not barred or estopped from requesting inter partes review
`
`of the claims of the ‘363 Patent on the grounds identified in this Petition.
`
`B.
`
`Identification of challenge and relief requested - 37 C.F.R. §
`42.104(b)
`
`Petitioners request cancellation of claims 1, 3-4, 5, 8, 13-17, and 20 of the
`
`‘363 Patent in view of the following grounds: Ground 1 – 1, 8, 20 are obvious
`
`under 35 U.S.C. § 103(a) over Goldberg; Ground 2 – Claims 3 – 4 are obvious
`
`under 35 U.S.C. § 103(a) over Goldberg in view of Sheng; and Ground 3 – Claims
`
`13 – 17 are obvious under 35 U.S.C. § 103(a) over Goldberg in view of Busak.
`
`
`
`
`
`
`5
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`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,397,363
`
`
`V. BACKGROUND OF THE TECHNOLOGY AND PURPORTED
`INVENTION OF THE ‘363 PATENT
`A. Background of the technology
`The ‘363 Patent acknowledges that home security systems were well known,
`
`explaining that “[a]nti-theft devices for vehicles and premises are known in the
`
`prior art for preventing and/or thwarting the theft of a vehicles and/or of a
`
`premises.” (Ex. 1001, 1:34-36.) Indeed, as early as June 21, 1853, a patent for a
`
`“Burglar Alarm” was granted as U.S. Patent No. 9,802 to Augustus Pope.
`
`Over the years, improvements were made to alarm systems as evidenced, in
`
`part, by U.S. Patent No. 3,449,738 to Chesnul et al. (issued: June 10, 1969)
`
`entitled “Electronic Security System” and directed to a home electronic security
`
`system that “us[es] modern digital, solid-state circuitry [to] is easily put into
`
`individual modules thereby facilitating installation, maintenance, and expansion of
`
`the system.” Chesnul, 1:25-29.
`
`Summary of the prosecution history of the ‘363 Patent
`
`B.
`The ‘363 Patent was filed on September 16, 2002 and issued on July 8,
`
`2008. The Examiner made several double patenting rejections in view of U.S.
`
`Patent No. 6,549,130 (the “‘130 Patent”). For example, the Patent Owner
`
`distinguished the ‘363 Patent from U.S. Patent No. 6,549,130 (the “‘130 Patent”)
`
`
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`6
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`by contending the independent claim elements were not claimed and because
`
`Petition for Inter Partes Review of
`U.S. Patent No. 7,397,363
`
`
`claims 1, 8-10 and 13 of the ‘130 Patent did not disclose or suggest the following:
`
`• “recited apparatus wherein the recited first processing device is
`associated with a web site,”
`• “the recited first processing device which at least one of generates and
`transmits the recited first signal in response to the recited second
`signal and which determines whether the recited operation associated
`with information contained in the recited second signal is an
`authorized operation,”
`• “the recited second signal which is transmitted to the recited first
`processing device on or over at least one of the Internet and the World
`Wide Web,” and/or
`• “the recited information regarding the recited event is transmitted to
`the recited second processing device or to the recited communication
`device on or over a wireless communication network or on or over at
`least one of the Internet and the World Wide Web, and further
`wherein the recited second processing device or the recited
`communication device provides information regarding the recited
`event.”
`Ex. 1005 at JCCOX-005143-005144.
`
`Summary of the Challenged Claims
`
`C.
`The Challenged Claims contain several common elements relating to the
`
`functionality and the physical location of the various control devices described in
`
`
`
`
`
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`7
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`

`

`the Notice of Allowance. For claims 1, 3-4, 8, 13-17, and 20, a summary of these
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`Petition for Inter Partes Review of
`U.S. Patent No. 7,397,363
`
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`common elements is presented in the table below:
`
`• A first processing device: (i) located remote from the premises, (ii)
`
`generates a first signal to activate and control an operation of the
`
`premise device, (iii) generates and transmits the first signal in
`
`response to the second signal that is automatically received, (iv)
`
`determines if the action/operation of the second signal is
`
`authorized/allowed; and (v) transmits the first signal to the third
`
`processing device.
`
`• A second processing device: (i) located remote from the first
`
`processing device and premises and (ii) generates and transmits a
`
`second signal to the first processing device via the Internet.
`
`• A third processing device: (i) located at the premise, (ii) generates
`
`and transmits a third signal to activate and control the premise device
`
`in response to the first signal, and (iii) automatically receives the first
`
`signal from the first processing device.
`
`•
`
`
`
`First
`processing
`device
`
`
`
`
`
`
`
`
`
`
`Second
`signal
`
`First signal
`
`Second
`processing
`device
`
`8
`
`Third
`signal
`
`Third
`processing
`device
`
`

`

`As demonstrated herein, however, each of these common elements and the
`
`Petition for Inter Partes Review of
`U.S. Patent No. 7,397,363
`
`
`additional limitations of the Challenged Claims) was disclosed in prior art not
`
`considered by the U.S. Patent and Trademark Office in allowing the claims.
`
`VI. CLAIM CONSTRUCTION - 37 C.F.R. § 42.104(b)(3)
`A claim subject to inter partes review is given its “broadest reasonable
`
`construction in light of the specification of the patent in which it appears.” 37
`
`C.F.R. § 42.100(b). This means the words of the claim are given their plain
`
`meaning from the perspective of one of ordinary skill in the art unless that meaning
`
`is inconsistent with the specification. In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
`
`1989). Petitioners further submit, for the purposes of inter partes review only, that
`
`the claim terms are presumed to take on their plain and ordinary meaning from the
`
`perspective of one of ordinary skill in the art in light of the specification of the
`
`‘363 Patent. The terms of the Challenged Claims have a well-understood meaning.
`
`Therefore, Petitioner submits that the plain and ordinary meaning of the terms of
`
`the Challenged Claims applies. Petitioners are aware that, in its ongoing litigation,
`
`Joao has provided constructions for certain terms of the ‘363 Patent which are
`
`inconsistent with the plain and ordinary meaning of the terms or the intrinsic
`
`record of the ‘363 Patent. Many of these constructions are based on litigation-
`
`driven, unsolicited statements submitted to the PTO during the prosecution of
`
`
`
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`related patents. Because Petitioner expects that the Patent Owner may address
`
`Petition for Inter Partes Review of
`U.S. Patent No. 7,397,363
`
`
`certain claim terms in response to this Petition, Petitioner has discussed the claim
`
`construction of some terms of the Challenged Claims below. Petitioners do not
`
`raise any written description or indefiniteness issues with the Challenged Claim,
`
`because IPR petitioners are not authorized to challenge claims under 35 U.S.C. §
`
`112. However, Petitioners explicitly reserve the right to raise Section 112 issues in
`
`this or any other proceeding.
`
` “First Signal,” “Second Signal,” and “Third Signal”
`
`A.
`The plain and ordinary meaning of “first signal,” “second signal,” and “third
`
`signal” is well understood. No construction of these terms is necessary. “The use
`
`of the terms ‘first’ and ‘second’ is a common patent-law convention to distinguish
`
`between repeated instances of an element or limitation.” 3M Innovative
`
`Properties, Co. v. Avery Dennison Corp., 350 F.3d 1365, 1371 (Fed. Cir. 2003).
`
`Alternatively, Petitioners propose that a proper construction is that a “first signal”
`
`is a “signal sent by a first control device,” a “second signal” is a “signal sent by a
`
`second control device,” and a “third signal” is a “signal sent by a third control
`
`device.” This construction reflects the plain and ordinary meaning of the terms as
`
`recited in the claims.
`
`
`
`
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`10
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`

`In litigation, Joao argued that “first signal,” “second signal,” and “third
`
`Petition for Inter Partes Review of
`U.S. Patent No. 7,397,363
`
`
`signal” should be construed as “each different signals with content that is not
`
`identical to the content of the other signals.” That is, Joao contended that the
`
`modifiers “first,” “second” and “third” reflect unique content of the signals, rather
`
`than simply an enumeration of one signal from another. This position is incorrect
`
`because it seeks to ascribe specific content to each signal, where no content is
`
`required by the plain meaning of the terms, and the specification and the
`
`prosecution history of the ‘363 Patent do not suggest that the limitations should be
`
`redefined in this manner. The terms “first,” “second,” and “third” simply
`
`enumerate each signal, and do not indicate unique content for each signal.
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`Particularly, during prosecution of the ‘363 Patent, Joao did not rely on this
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`position and instead solely asserted that “signal” means “an indication, or an
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`indication having or conveying data, information, or a message, or a conveyor of
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`data, information, or a message, or an indication representing data or information.”
`
`Ex. 1005 at JCCOX-004818-JCCOX-004819.
`
`“Automatically Received”
`
`B.
`The plain and ordinary meaning of “automatically” is “functioning without
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`human intervention.” Ex. 1014 at 26. The proper construction for “automatically
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`received” is therefore “received without human intervention.”
`
`
`
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`
`
`11
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`

`

`The claims of the ‘363 Patent describe a signal received automatically by a
`
`Petition for Inter Partes Review of
`U.S. Patent No. 7,397,363
`
`
`control device. The ‘363 Patent does not specifically discuss how signals are
`
`automatically received. The specification simply explains that apparatuses may be
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`activated automatically based on pre-programmed conditions, such that no operator
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`intervention is necessary. Ex. 1001 at 51:45-48 (“the apparatus will be
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`programmed to become activated, or de-activated, automatically, such as upon the
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`occurrence, or lack thereof, of a pre-defined event or occurrence and/or at any
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`desired time”); 55:62-64 (“apparatus 950 may be designed to operate and/or
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`perform any and all of the described functions automatically and without operator
`
`intervention”).
`
`The ‘363 Patent was rejected on the ground of double patenting over certain
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`claims of the ‘130 Patent and this claim language was identified in particular. Ex.
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`1005 at JCCOX-005157-JCCOX005160. The prosecution history of the ‘130
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`Patent is in accord with Petitioner’s construction. In a number of preliminary
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`amendments submitted when prosecution was reopened after allowance, the
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`patentee stated “the term ‘automatically’ means ‘without human intervention’.”
`
`Ex. 1006 at.
`
`
`
`
`
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`12
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`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,397,363
`
`
`“At least one of activate, de-activate, disable, re-enable, and
`control”
`
`C.
`
`While the claim term “activate” is part of a larger phrase “at least one of
`
`activate, de-activate, disable, re-enable, and control,” this phrase is disjointed and
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`only requires that one of the actions be met to satisfy the claims. The Prosecution
`
`History of the ‘363 Patent supports this position since the Patent Owner asserted
`
`that the term “at least one of . . . and . . . ” means “only one item from the list, or
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`any combination of items in the list.” Ex. 1005 at JCCOX-005278- JCCOX-
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`005280. As such, Petitioner proposes a construction for the term “activate.” The
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`plain and ordinary meaning of “activate” is “to make active or more active.” Ex.
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`1007 at 3. The claims of the ‘363 Patent describe a signal and processing device
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`that is capable of, among other things, activating at least one of a premises system,
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`device, equipment, equipment system, or an appliance. The ‘363 Patent does not
`
`specifically discuss how any of these components are activated. The specification
`
`simply explains that premises components may be disabled or re-enabled so as to
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`maintain desired conditions in the premises. See, e.g., Ex. 1001 at 66:31-42. Thus,
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`there is no indication in the claims or the specification that the term “activate”
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`should be construed in any way other than the term’s plain and ordinary meaning
`
`which is “making active or more active.”
`
`
`
`
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`13
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`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,397,363
`
`
`VII. PERSON HAVING ORDINARY SKILL IN THE ART (POSITA)
`For purposes of this proceeding, Petitioners assert that a person of ordinary
`
`skill in the art of remote-controlled premise systems at the time of the alleged
`
`invention would have had a bachelor’s degree in engineering or equivalent
`
`coursework and at least two years of experience in networked systems.
`
`VIII. THE CHALLENGED CLAIMS ARE NOT ENTITLED TO A
`PRIORITY DATE BEFORE JULY 18, 1996.
`A patent’s date of invention is presumed to be its filing date. Bausch &
`
`Lomb, Inc. v. Barnes-Hind/Hydrocurve, Inc., 796 F.2d 443, 449 (Fed. Cir. 1986).
`
`A patentee may enjoy the benefit of a priority date only by “demonstrat[ing] that
`
`the claims meet the requirements of 35 U.S.C. § 120.” In re NTP, Inc., 654 F.3d
`
`1268, 1276 (Fed. Cir. 2011).
`
`For Challenged Claims to be entitled to an earlier date of priority “[t]he test
`
`is whether the [earlier] disclosure conveys to those skilled in the art that the
`
`inventor had possession of the claimed subject matter as of the filing date.” Streck,
`
`Inc. v. Research & Diagnostic Sys., Inc., 665 F.3d 1269, 1285 (Fed. Cir. 2012)
`
`(internal citations omitted). This test requires an “objective inquiry into the four
`
`corners of the specification from the perspective of a person of ordinary skill in the
`
`art.” Id.
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`
`
`
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`14
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`On its face, the ‘363 Patent claims priority as a continuation of U.S. Patent
`
`Petition for Inter Partes Review of
`U.S. Patent No. 7,397,363
`
`
`Application No. 08/683,828, filed on July 18, 1996 (“the July 1996 application”),
`
`which is a continuation-in-part to U.S. Patent Application No. 08/622,749 filed on
`
`March 27, 1996 (“March 1996 application”). The ‘363 Patent is not entitled to the
`
`benefit of the March 27, 1996 application date.
`
`Each of the Challenged Claims requires some processing device located at a
`
`premises. In contrast, the March 1996 application only discloses a vehicle theft
`
`deterrent system, and does not disclose a processing device located at a premises.
`
`See Ex. 1004. For example, the March 1996 application does not contain Figures
`
`15 and 16 of the ‘363 Patent which discloses a premises and premise equipment.
`
`Id. Indeed, the March 1996 application never mentions a premise and is solely
`
`focused on vehicles. Id. Because a premises is not a vehicle and a vehicle is not a
`
`premises, the March 1996 application does not disclose a premises system.
`
`Therefore, the Challenged Claims which recites a premises system are not entitled
`
`to the benefit of the March 1996 application filing date.
`
`IX. HOW THE CHALLENGED CLAIMS ARE UNPATENTABLE
`UNDER 37 C.F.R. § 42.104(b)1
`
`
`1 Petitioners have enumerated each element of the Challenged Claims
`
`providing them with a unique identifier set forth before the element in brackets.
`
`
`
`
`
`
`15
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`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,397,363
`
`
`A. Ground 1 – Claims 1, 8 and 20 are obvious under 35 U.S.C. §
`103(a) over Goldberg (Ex. 1008).
`
`Goldberg (Ex. 1008) was published in December 1995 and constitutes prior
`
`art to the Challenged Claims under 35 U.S.C. § 102(a) and renders obvious the
`
`above identified claims under 35 U.S.C. § 103(a). Goldberg was not disclosed or
`
`considered during the prosecution of the ‘363 Patent. The following provides
`
`disclosure from Goldberg and an explanation of how the reference applies to each
`
`limitation of the claim. Petitioners do not assert the preambles of the Challenged
`
`Claims are limiting or non-limiting. Regardless, Goldberg discloses the features
`
`recited in each preamble.
`
`Goldberg describes a control apparatus in the form of a robotic arm (or
`
`robot) that can be controlled by clients all over the world. In Goldberg, clients use
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`a workstation (e.g., computer) and WWW interface to interact with the robot.
`
`Server A (first processing device) located on campus at the University of Southern
`
`California can be accessed by the WWW clients, for example a workstation or
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`computer and WWW interface (second processing device), through a website via
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`the Internet. Server A issues a command (first signal) to Server C (third processing
`
`(continued…)
`Thus, for claim “X” the first element would be listed as [X.0], the next as [X.1],
`
`
`
`etc. These elements are cross-referenced throughout this Petition.
`
`
`
`
`
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`16
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`device), located in another part of campus where the robot resided, in response to
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`Petition for Inter Partes Review of
`U.S. Patent No. 7,397,363
`
`
`the robotic movements identified by a client (second signal) after determining the
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`client is an authorized user. Upon receiving the command, Server C converts the
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`command into a robot command (third signal) and sends it the robot to execute the
`
`desired movements. A more detailed explanation of Goldberg’s applicability to
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`the Challenged Claims is described below.
`
`1.
`
`Claim 1 - Goldberg discloses the elements of claim 1:
`
`Claim Language
`[1.0] “An apparatus, comprising:”
`[1.1] “a first processing device, wherein
`the first processing device at least one
`of generates a first signal and transmits
`a first signal for at least one of
`activating, deactivating, disabling, re-
`enabling, and controlling an operation
`of, at least one of a premises system, a
`premises device, a premises equipment,
`a premises equipment system, a
`premises component, and a premises
`appliance, of or located at a premises,
`wherein the first processing device is,
`associated with a website and”
`[1.2] “further wherein the first
`processing device is located at a
`location remote from the premises,”
`[1.3] “wherein the first processing
`device at least one of generates the first
`signal and transmits the first signal in
`response to a second signal,”
`[1.4] “wherein the second signal is at
`least one of generated by a second
`
`
`
`
`
`
`Goldberg (Ex. 1008)
`See, e.g., Ex. 1008, Abstract; §§ 2-4.
`See, e.g., Ex. 1008 at Fig. 2 (“Server
`A”); §§ 4, 5 (“Server A decodes the
`ISMAP X and Y mouse coordinates, and
`sends them to server C.”), 6.1, 6.3, 6.4.
`See, e.g., Ex. 1008 at Fig. 2 (“Server
`A”); §§ 4, 5, 6.1, 6.3, 6.4 (“Currently
`server A is located across campus from
`server C.
` These servers are connected via
`Ethernet.”).
`See, e.g., Ex. 1008 at Fig. 2 (“Server
`A”); §§ 4, 5 (“When a client request
`comes in, server A communicates with
`server B. If that client is an operator,
`server A must then communicate with a
`third server, call it C, that controls the
`robot.”), 6.1, 6.3, 6.4.
`
`See, e.g., Ex. 1008 at Fig. 2 (“Server
`A”); §