Privileged & Confidential / Attorney Work Product
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________________________
`
`TERREMARK NORTH AMERICA LLC, VERIZON BUSINESS NETWORK
`SERVICES 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. 6,549,130
`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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`
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`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 6,549,130
`
`
`TABLE OF CONTENTS
`
`V.
`
`LIST OF EXHIBITS ............................................................................................. iv
`I.
`INTRODUCTION ........................................................................................... 1
`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) ............................................................................................... 6
`BACKGROUND OF THE TECHNOLOGY AND PURPORTED
`INVENTION OF THE ‘130 PATENT ............................................................ 6
`A.
`The ‘130 Patent ..................................................................................... 6
`B.
`Summary of the Challenged Claims ..................................................... 9
`C.
`Summary of the Prior Art Not Previously Considered ....................... 10
`1.
`U.S. Patent No. 5,461,372 to Busak (Ex. 1006) ....................... 11
`2.
`Goldberg Article (Ex. 1007) ..................................................... 12
`VI. CLAIM CONSTRUCTION - 37 C.F.R. § 42.104(b)(3) .............................. 13
`A.
`“First Signal,” “Second Signal,” and “Third Signal” .......................... 14
`B.
`“Automatically Received” ................................................................... 15
`C.
`“At least one of activating, de-activating, disabling, and re-
`enabling” ............................................................................................. 16
`VII. PERSON HAVING ORDINARY SKILL IN THE ART (PHOSITA) ......... 17
`VIII. THE CHALLENGED CLAIMS ARE NOT ENTITLED TO A PRIORITY
`DATE BEFORE JULY 18, 1996. ................................................................. 17
`IX. HOW THE CHALLENGED CLAIMS ARE UNPATENTABLE UNDER
`37 C.F.R. § 42.104(b) .................................................................................... 20
`A. Ground 1 – Claims 1, 8, 12, 15, 17, 98, 145, and 149 are
`obvious under § 103 by Busak (Ex. 1006). ......................................... 22
`1
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`1.
`2.
`3.
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`4.
`5.
`6.
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`2.
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`3.
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`B.
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`C.
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,549,130
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`Claim 1 – Busak discloses the elements of claim 1. ................. 23
`Claim 8 - Busak discloses the elements of claim 8: ................. 28
`Claims 12 and 149 - Busak discloses the elements of
`claims 12 and 149: .................................................................... 30
`Claim 15 - Busak discloses the elements of claim 15: ............. 31
`Claim 17 - Busak discloses the elements of claim 17: ............. 33
`Claims 98 and 145 – Busak discloses the elements of
`claims 98 and 145: .................................................................... 33
`A. Ground 2 – Claims 10, 119 and 124 are obvious under § 103(a)
`over Busak in view of Aknar (Ex. 1009) ............................................ 34
`1.
`Claims 10 and 119 - Busak in view of Aknar renders
`obvious claims 10 and 119: ....................................................... 35
`Claim 124 - Busak in view of Aknar renders obvious
`claim 124: .................................................................................. 36
`Ground 3 – Claims 1, 10, 17, 98, 119, and 145 are obvious
`under § 103 by Goldberg (Ex. 1007). ................................................. 37
`1.
`Claim 1 - Goldberg discloses the elements of claim 1: ............ 38
`2.
`Claims 98 and 145 – Goldberg discloses the elements of
`claims 98 and 145: .................................................................... 43
`Claims 10 and 119 - Goldberg discloses the elements of
`claims 10 and 119: .................................................................... 43
`Claim 17 - Goldberg discloses the elements of claim 17: ........ 44
`4.
`Ground 4 – Claim 8 is obvious under § 103 by Goldberg (Ex.
`1007) in view of Dole (Ex. 1010). ...................................................... 45
`1.
`Claim 8 – Goldberg in view of Dole renders obvious
`claim 8: ...................................................................................... 46
`D. Ground 5 – Claims 12, 15, and 149 are obvious under § 103 by
`Goldberg (Ex. 1007) in view of French (Ex. 1008). ........................... 47
`1.
`Claims 12 and 149 - Goldberg in view of French renders
`obvious claims 12 and 149: ....................................................... 48
`Claim 15 - Goldberg in view of French renders obvious
`claim 15: .................................................................................... 52
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`2.
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`2
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,549,130
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`E.
`
`Ground 6 – Claim 124 is obvious under § 103 by Goldberg (Ex.
`1007) in view of Aknar (Ex. 1009). .................................................... 54
`1.
`Claim 124 - Goldberg in view of Aknar renders obvious
`claim 124: .................................................................................. 55
`Chart Showing Correlation of Claims 98 and 145 to Claim 1 ............ 57
`F.
`CONCLUSION .............................................................................................. 59
`
`
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`3
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`X.
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,549,130
`
`
`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. 6,549,130 (“the ‘130 Patent”)
`
`Declaration of Richard Bennett for the ‘130 Patent
`
`Curriculum Vitae of Richard Bennett
`
`U.S. Patent Application No. 08/622,749 filed on
`
`March 27, 1996 (“March 1996 application”)
`
`EX-1005
`
`Excerpts from the Prosecution History of the ‘130
`
`Patent
`
`EX-1006
`
`U.S. Patent No. 5,461,372 to Busak et al., (“Busak”),
`
`issued on October 24, 1995
`
`EX-1007
`
`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”)
`
`EX-1008
`
`U.S. Patent No. 5,061,916 to French et al., (“French”),
`
`issued on October 29, 1991
`
`EX-1009
`
`PCT Application WO 88/04082 to Atila Aknar and
`
`Andre Soussa, published on June 2, 1988 (“Aknar”)
`4
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`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 6,549,130
`
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`U.S. Patent No. 5,555,019 to Dole et al., (“Dole”),
`
`EX-1010
`
`filed on March 9, 1995.
`
`EX-1011
`
`Goldberg et al., “Desktop Teleoperation via the World
`
`Wide Web,” published in IEEE International
`
`Conference on Robotics and Automation (1995) at
`
`654.
`
`EX-1012
`
`Zuech, Nello, “The EDC-1000 Electric Imaging
`
`System,” published in I.A.P.P.P. Communications No.
`
`39 (March 1990) at 1-2.
`
`EX-1013
`
`Excerpt from Concise Dictionary of Engineering: A
`
`Guide to the Language of Engineering (2014)
`
`EX-1014
`
`Excerpt from Modern Dictionary of Electronics
`
`(1999)
`
`EX-1015
`
`Excerpt from Communications Standard Dictionary
`
`(3d ed. 1996)
`
`EX-1016
`
`Excerpt from Merriam-Webster Dictionary (10th ed.
`
`1995)
`
`EX-1017
`
`U.S. Patent No. 3,866,164 to Peterson (“Peterson”),
`
`issued on February 11, 1975
`
`5
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`EX-1018
`
`Petition for Inter Partes Review of
`U.S. Patent No. 6,549,130
`
`
`Goldberg et al., “Desktop Teleoperation via the World
`
`Wide Web,” published in IEEE International
`
`Conference on Robotics and Automation (1995) at
`
`654.
`
`EX-1019
`
`Excerpts from the Reexamination History of the ‘130
`
`Patent, no. 6,549,130
`
`
`
`
`
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`6
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,549,130
`
`
`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, 8, 10, 12, 15, 17, 98, 119,
`
`124, 145 and 149 (“the Challenged Claims”) of U.S. Patent No. 6,549,130 (“the
`
`‘130 Patent”), titled “Control Apparatus and Method for Vehicles and/or for
`
`Premises.” Ex. 1001. The ‘130 Patent is believed to be owned by Joao Control &
`
`Monitoring Systems, LLC (“Joao” or “Patent Owner”).
`
`According to the ‘130 Patent, the inventor sought to meet a need for an
`
`improved premise security system that offers the “ability to conveniently and
`
`effectively enable … 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 ‘130 Patent’s representations, remotely controlled premises 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.; Verizon Services Corp.; Time Warner Cable Inc.; iControl
`
`Networks, Inc., and CoxCom, LLC. Additionally, Petitioners, out of an abundance
`
`of caution in light of prior challenges to the named real parties-in-interest in
`1
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`separate and unrelated IPR petitions, identify each of Verizon Communications
`
`Petition for Inter Partes Review of
`U.S. Patent No. 6,549,130
`
`
`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 related 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
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`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 Joao that may affect, or
`
`be affected, by a decision in the proceeding.
`
`CASES
`
`NUMBER DISTRICT
`
`Joao v. LifeShield, Inc.
`
`Joao v. Slomin’s, Inc.
`
`Joao v. Cox Communications, Inc.
`
`2-15-cv-02772 PAED
`
`2-14-cv-02598 NYED
`
`1-14-cv-00520 DED
`
`Joao v. Volkswagen Group of America, Inc. et al.
`
`1-14-cv-00517 DED
`
`
`
`
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`2
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`

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`Joao v. DISH Network Corporation
`
`Petition for Inter Partes Review of
`U.S. Patent No. 6,549,130
`
`
`1-14-cv-00522 DED
`
`Joao v. Cablevision Systems Corporation
`
`1-14-cv-00518 DED
`
`Joao v. Consolidated Edison, Inc.
`
`Joao v. Verizon Communications, Inc.
`
`Joao v. Time Warner Cable, Inc.
`
`Joao v. DirecTV
`
`Joao v. Nissan North America, Inc.
`
`Alarm.com Incorporated v. Joao
`
`1-14-cv-00519 DED
`
`1-14-cv-00525 DED
`
`1-14-cv-00524 DED
`
`1-14-cv-00521 DED
`
`1-14-cv-00523 DED
`
`1-14-cv-00284 DED
`
`Joao v. Protect America, Inc.
`
`1-14-cv-00134 TXWD
`
`Joao v. FrontPoint Security Solutions LLC
`
`1-13-cv-01760 DED
`
`Joao v. Chrysler Corporation
`
`Joao v. Ford Motor Company
`
`Joao v. Mazda Motor of America Inc.
`
`4-13-cv-13957 MIED
`
`4-13-cv-13615 MIED
`
`1-13-cv-00728 DED
`
`Joao v. Mitsubishi Motors North America Inc.
`
`1-13-cv-00614 DED
`
`Joao v. Lowe’s Companies, Inc.
`
`5-13-cv-00056 NCWD
`
`Joao v. Jaguar Land Rover North America LLC
`
`1-13-cv-00507 DED
`
`Joao v. Vivint Inc.
`
`Joao v. Chrysler Corporation
`
`Joao v. City of Yonkers
`
`Joao v. Ford Motor Company
`
`Joao v. Hyundai Motor America
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`1-13-cv-00508 DED
`
`1-13-cv-00053 NYSD
`
`1-12-cv-07734 NYSD
`
`4-12-cv-14004 MIED
`
`8-12-cv-00007 CACD
`
`
`
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`3
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`

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`Joao v. Ford Motor Company
`
`Petition for Inter Partes Review of
`U.S. Patent No. 6,549,130
`
`
`2-12-cv-00033 CACD
`
`Joao of California, LLC v. Sling Media, Inc., et al. 3-11-cv-06277 CACD
`
`Xanboo Inc. v. Joao of California
`
`8-11-cv-00604 CACD
`
`Joao of California, LLC v. ACTI Corporation Inc.,
`et al.
`
`Joao v. Cenuco, Inc.
`
`8-10-cv-01909 CACD
`
`7-05-cv-01037 NYSD
`
`Joao filed Complaints against some of the Petitioners in the United States District
`
`Court for the District of Delaware alleging infringement of the ‘130 Patent and
`
`other related patents. Those actions remain pending. On July 21, 2014, an ex
`
`parte Reexamination No. 90/013,301 was filed with respect to the ‘130 patent.
`
`Several claims stand under rejection in that proceeding.
`
`C. Lead and back-up counsel under 37 C.F.R. § 42.8(b)(3)&(4)
`
`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
`4
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`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 6,549,130
`
`
`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
`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 ‘130 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 ‘130 Patent on the grounds identified in this Petition.
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`5
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`

`Petition for Inter Partes Review of
`U.S. Patent No. 6,549,130
`
`
`Identification of challenge and relief requested - 37 C.F.R. §
`42.104(b)
`
`B.
`
`Petitioners request cancellation of claims 1, 8, 10, 12, 15, 17, 98, 119, 124,
`
`145 and 149 of the ‘130 Patent in view of the following grounds:
`
`Claims
`
`Basis for Rejection
`
`1, 8, 12, 15, 17, 98,
`
`Anticipated by Busak under 35 U.S.C. § 102(a)
`
`145, and 149
`
`10, 119 and 124
`
`Obvious under 35 U.S.C. § 103(a) over Busak and Aknar
`
`1, 10, 15, 17, 98,
`
`Anticipated by Goldberg under 35 U.S.C. § 102(a)
`
`119, 124, and 145
`
`8
`
`Obvious under 35 U.S.C. § 103(a) over Goldberg and Dole
`
`12, 15, and 149
`
`Obvious under 35 U.S.C. § 103(a) over Goldberg and French
`
`124
`
`Obvious under 35 U.S.C. § 103(a) over Goldberg and Aknar
`
`
`V. BACKGROUND OF THE TECHNOLOGY AND PURPORTED
`INVENTION OF THE ‘130 PATENT
`A. The ‘130 Patent
`The ‘130 Patent acknowledges security systems were well known,
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`explaining that “[a]nti-theft devices for vehicles and premises are known in the
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`prior art for preventing and/or thwarting the theft of a vehicles and/or of a
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`premises.” Ex. 1001, 1:34-36. According to the ‘130 Patent, the problem with
`6
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`these known systems, however, is they do not allow the “owners, occupants and/or
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,549,130
`
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`other authorized individuals to exercise and/or to provide control, monitoring
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`and/or security functions… from a remote location and at any time.” Id. at 3:1-6.
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`During prosecution, the claims were rejected under 35 U.S.C. 102(e) as
`
`being anticipated and 35 U.S.C. 103(a) as obvious over U.S. Patent No. 6,028,537
`
`to Suman et al (“Suman”), which disclosed a remotely controlled vehicle systems.
`
`Ex. 1005 at JCCOX-003963-003975.
`
`In relevant part, the Examiner stated Suman teaches “a vehicle
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`communications and remote control system can be used on a premise” having
`
`“RKE receiver 1855 (first control device) responsive to the received RF signal
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`from a system controller 1810 (second control device) having a micro-controller
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`1830 for to
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`open/close garage
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`door, gates, to
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`activate/deactivate
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`house light
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`modules, house
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`appliances and to
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`actuate/deactivate
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`door locks[, and the] micro-controller 1830 is response to a remote RF
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`transmitter/receiver 1825 (third control device).” Id. Joao was able to overcome
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,549,130
`
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`this rejection by improperly arguing Suman was not prior art, simply because the
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`application “is a continuation-in-part application of U.S. Patent Application Serial
`
`No. 08/622,749, filed March 27, 1996,” Ex. 1005 at JCCOX-003896 without
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`providing any showing the March 1996 application provided written description
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`support for the then-pending claims of the application. As shown below, the
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`current claims should not be entitled to a date of priority before July 1996.
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`The Application underwent several amendments to the claims, specification
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`and figures, the Examiner allowed the claims because they recited a three control
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`device system and the prior art only taught two devices:
`
`[T]here are no references teaching of a control apparatus for
`controlling of at least one activating, deactivating, enabling and
`disabling of at least one of a premises having at least one of system,
`subsystem, component, equipment and appliance. Wherein the first
`control device is responsive to a second signal and the second signal is
`at least generated by a a [sic] second control device which is located
`remote from the premises. And further wherein the second control
`device is responsive to a third control signal which is generated by a
`third control device which is located at a location remote from the
`premises and remote from the second control device.
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`Ex. 1005 at JCCOX-004079, JCCOX 004074-004076.1 The Examiner, however,
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,549,130
`
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`was unaware of the prior art cited herein which discloses such systems.
`
`Summary of the Challenged Claims
`
`B.
`The Challenged Claims contain several common elements. Each claim
`
`requires a series of three control devices, as shown below:
`
`• A first control device is located at a premises: this device sends a
`
`first signal to a premises system for activation (deactivation, disabling
`
`or re-enabling), and receives a second signal from a second control
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`device.
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`• A second control device is located remote from the premises: this
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`device sends the second signal to the first control device, and receives
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`a third signal from a third control device.
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`• A third control device is located remote from the premises and
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`second control device: this device sends the third signal to the second
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`control device.2
`
`
`1 In response, Joao submitted Comments on the Reasons for Allowance that
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`largely copied the words of the claim. Ex. 1005 at JCCOX-004520-004542.
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`2 The “first control device” of claim 145 correlates to the “third control
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`device” of claim 1; the “second control device” of claim 145 correlates to the
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,549,130
`
`
`An annotated version of Figure 11A of the ‘130 Patent showing these
`
`common elements in a vehicle system is presented below.
`
`
`
`
`
`As demonstrated below, however, prior art not considered by the U.S. Patent
`
`and Trademark Office disclosed each of these common elements of, and arranged
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`in the same way as, the Challenged Claims (as well as all of the additional
`
`dependent limitations).
`
`Summary of the Prior Art Not Previously Considered
`
`C.
`
`(continued…)
`“second control device” of claim 1; and the “third control device” of claim 145
`
`
`
`correlates to the “first control device” of claim 1.
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`10
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`

`Petition for Inter Partes Review of
`U.S. Patent No. 6,549,130
`
`
`1.
`U.S. Patent No.
`5,461,372 to Busak (Ex. 1006)
`
`Like the claimed invention in
`
`the ‘130 Patent, Busak discloses
`
`three control devices that
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`communicate through a series of
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`signals to activate, de-activate,
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`disable, or re-enable a premises
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`system. For example, as shown in
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`the annotated figures, Busak
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`discloses an access code (third
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`signal) transmitted from a
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`telecommunications device 34 (third
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`control device) to the principal
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`control system 16 (second control
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`device) containing a processor 50.
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`An encoded data stream utilizing a code (second signal) can be transmitted to one
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`of several control systems, such as the lighting system 18 (first control device)
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`which is located at the premises and generates an on/off signal (first signal) for
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`lights and other electrical appliances/devices (premises device). Each control
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`device generates or transmits a distinct signal. Additionally, human interaction is
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`Petition for Inter Partes Review of
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`necessary only for the user to input the access code via the third control device; all
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`actions thereafter occur without human interaction.
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`
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`2. Goldberg Article (Ex. 1007)
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`Goldberg discloses a remotely operated robot system for work in various
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`environments, such as an excavation site. The goal of the Goldberg system is to
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`provide “teleoperation to the masses” by allowing remote users the ability to
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`control a robot “by positioning the arm, delivering a burst of air, and viewing the
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`image of the newly cleared region,” from their own computer. Ex. 1007 at
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`Abstract & § 2.
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`Like Busak, this system utilizes three control devices communicating
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`through a series of signals to remotely activate, de-activate, disable, or re-enable a
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`premises system. Specifically, Goldberg discloses “WWW clients from around the
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`world” (third control devices) are able so send a signal (third signal) to an
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`intermediate UNIX Server A (second control device) for ultimately controlling a
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`robot at a premise. Ex. 1007 at § 5. Server A decodes and reformats the control
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`signal, which it then sends (second signal) to Robot Server C (first control device).
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`Server C, in turn, sends a command signal (first signal) via a serial connection to
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`activate movement of a robotic arm and camera at an excavation area, for example.
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`Id. at § 6.5. After initial input, no human interaction is needed to make the robot
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`Petition for Inter Partes Review of
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`arm and camera active at the premises.
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`VI. CLAIM CONSTRUCTION - 37 C.F.R. § 42.104(b)(3)
`The ‘130 Patent expired on June 8, 2013, and is therefore not subject to
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`amendment. The claims are thus construed pursuant to Phillips v. AWH Corp., 415
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`F.3d 1303, 1327 (Fed. Cir. 2005) (holding words of a claim “are generally given
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`their ordinary and customary meaning” as understood by a person of ordinary skill
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`in the art in question at the time of the invention). See IPR2013-00065, Paper 11 at
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`10; MPEP 2258(I)(G).
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`The terms of the Challenged Claims have a well-understood meaning.
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`Therefore, Petitioner submits the plain and ordinary meaning of the terms of the
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`Challenged Claims applies. Petitioners are aware, in its ongoing litigation, Joao has
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`provided constructions for certain terms of the ‘130 Patent which are inconsistent
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`with the plain and ordinary meaning of the terms or the intrinsic record of the ‘130
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`Patent, as discussed in relevant part below. Many of these constructions are based
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`on litigation-driven, unsolicited statements submitted to the PTO during the
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`prosecution of related patents. Because Petitioner expects the Patent Owner may
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`Petition for Inter Partes Review of
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`address certain claim terms in response to this Petition, Petitioner has discussed the
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`claim construction of some terms of the Challenged Claims below.3
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` “First Signal,” “Second Signal,” and “Third Signal”
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`A.
`The plain and ordinary meaning of “first signal,” “second signal,” and “third
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`signal” is well understood. No construction of these terms is necessary. “The use
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`of the terms ‘first’ and ‘second’ is a common patent-law convention to distinguish
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`between repeated instances of an element or limitation.” 3M Innovative
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`Properties, Co. v. Avery Dennison Corp., 350 F.3d 1365, 1371 (Fed. Cir. 2003).
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`Alternatively, Petitioners propose a proper construction is that a “first signal” is a
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`“signal sent by a first control device,” a “second signal” is a “signal sent by a
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`second control device,” and a “third signal” is a “signal sent by a third control
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`device.” This construction reflects the plain and ordinary meaning of the terms as
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`recited in the claims.
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`In litigation, Joao argued the “first signal,” “second signal,” and “third
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`signal” should be construed as “each different signals with content that is not
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`3 Petitioners do not raise any written description or indefiniteness issues with the
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`Challenged Claims, because IPR petitioners are not authorized to challenge claims
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`under 35 U.S.C. § 112. However, Petitioners explicitly reserve the right to raise
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`Section 112 issues in this or any other proceeding.
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`Petition for Inter Partes Review of
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`identical to the content of the other signals.” That is, Joao contended the modifiers
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`“first,” “second” and “third” reflect unique content of the signals, rather than
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`simply an enumeration of one signal from another. This position is incorrect
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`because it seeks to ascribe specific content to each signal, where no content is
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`required by the plain meaning of the terms, and the specification and the
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`prosecution history of the ‘130 Patent do not suggest the limitations should be
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`redefined in this manner. The terms “first,” “second,” and “third” simply
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`enumerate each signal, and do not indicate unique content for each signal.
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`“Automatically Received”
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`B.
`The plain and ordinary meaning of “automatically” is “functioning without
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`human intervention.” Ex. 1013 at 26; Ex. 1014 at 45; Ex. 1015 at 53. The proper
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`construction for “automatically received” is therefore “received without human
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`intervention.”
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`The claims of the ‘130 Patent describe a signal as being received
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`automatically by a control device. The ‘130 Patent does not specifically discuss
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`how signals are automatically received. The specification simply explains
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`apparatuses may be activated automatically based on pre-programmed conditions,
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`such that no operator intervention is necessary. Ex. 1001 at 44:13-18 (“the
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`apparatus will be programmed to become activated, or de-activated, automatically,
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`such as upon the occurrence, or lack thereof, of a pre-defined event or occurrence
`15
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`and/or at any desired time”); 48:37-39 (“apparatus 950 may be designed to operate
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`Petition for Inter Partes Review of
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`and/or perform any and all of the described functions automatically and without
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`operator intervention”).
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`The prosecution history of the ‘130 Patent is in accord with this
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`construction. In a number of preliminary amendments submitted when prosecution
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`was reopened after allowance, the patentee stated “the term ‘automatically’ means
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`‘without human intervention’.” Ex. 1005 at JCCOX-004186-004218.
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`C.
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`“At least one of activating, de-activating, disabling, and re-
`enabling”
`While the claim term “activating” is part of a larger phrase, i.e., “at least one
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`of activating, de-activating, disabling, and re-enabling,” this phrase is disjointed
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`and only requires one of the actions be met to satisfy the claims. As such,
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`Petitioner proposes a construction for the term “activating.” The plain and
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`ordinary meaning of “activating” is “to make active or more active.” Ex. 1016 at
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`3. The claims of the ‘130 Patent describe a signal and processing device capable
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`of, among other things, activating at least one of a premises system, device,
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`equipment, equipment system, or an appliance. The ‘130 Patent does not
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`specifically discuss how any of these components are activated. The specification
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`simply explains 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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`
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`there is no indication in the claims or the specification that the term “activating”
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`Petition for Inter Partes Review of
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`should be construed in any way other than the term’s plain and ordinary meaning
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`which is “making active or more active.”
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`VII. PERSON HAVING ORDINARY SKILL IN THE ART (PHOSITA)
`For purposes of this proceeding, Petitioners assert that a person of ordinary
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`skill in the art of remote-controlled premise systems at the time of the alleged
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`invention would have had a bachelor’s degree in engineering or equivalent
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`coursework and at least two years of experience in computerized systems.
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`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 &
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`Lomb, Inc. v. Barnes-Hind/Hydrocurve, Inc., 796 F.2d 443, 449 (Fed. Cir. 1986).
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`A patentee may enjoy the benefit of a priority date only by “demonstrat[ing] that
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`the claims meet the requirements of 35 U.S.C. § 120.” In re NTP, Inc., 654 F.3d
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`1268, 1276 (Fed. Cir. 2011).
`
`Under § 120, a patent is entitled to the priority date of an earlier filed
`application if (1) the written description of the earlier filed application
`discloses the invention claimed in the later filed application sufficient
`to satisfy the requirements of § 112…. In addition, if the later filed
`application claims priority through the heredity of a chain of
`applications, each application in the chain must satisfy § 112.
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`Id. at 1277; see also 35 U.S.C. § 120.
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,549,130
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`For the Challenged Claims to be entitled to an earlier date of priority “[t]he
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`test is whether the [earlier] disclosure conveys to those skilled in the art that the
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`inventor had possession of the claimed subject matter as of the filing date.” Streck,
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`Inc. v. Research & Diagnostic Sys., Inc., 665 F.3d 1269, 1285 (Fed. Cir. 2012)
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`(internal citations omitted). This test requires an “objective inquiry into the four
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`corners of the specification from the perspective of a person of ordinary skill in the
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`art.” Id.
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`On its face, the ‘130 Patent claims priority as a continuation of U.S. Patent
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`Application No. 08/683,828, filed on July 18, 1996 (“the July 1996 application”).
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`The July 1996 application claims priority as a continuation-in-part to a chain of
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`applications: U.S. Patent Application No. 08/622,749, filed on March 27, 1996
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`(“March 1996 application”); U.S. Pat