Trials@uspto.gov
`571-272-7822
`
`
`
`
` Paper 31
`Entered: January 25, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`NISSAN NORTH AMERICA, INC.,
`Petitioner,
`
`v.
`
`JOAO CONTROL & MONITORING SYSTEMS, LLC,
`Patent Owner.
`_______________
`
`Case IPR2015-01508
`Patent 6,542,076 B1
`_______________
`
`
`
`Before STACEY G. WHITE, JASON J. CHUNG, BETH Z. SHAW,
`Administrative patent Judges.
`
`WHITE, Administrative patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`

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`IPR2015-01508
`Patent 6,542,076 B1
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`
`I. INTRODUCTION
`
`Nissan North America, Inc. (“Petitioner”) filed a Petition (Paper 1,
`“Pet.”) requesting inter partes review of claims 3, 20, 65, 73, 93, 103, 104,
`108, and 205 of U.S. patent No. 6,542,076 B1 (Ex. 1001, “the ‘076 patent”)
`pursuant to 35 U.S.C. §§ 311–319. Joao Control & Monitoring Systems,
`LLC, (“Patent Owner”) filed a Preliminary Response. (Paper 9, “Prelim.
`Resp.”). Based on our review of these submissions, we instituted inter
`partes review of claims 3, 20, 65, 73, 93, 103, 104, 108 and 205 of the ‘076
`patent on the proposed grounds of unpatentability under 35 U.S.C. §§ 102,
`103. Paper 10 (“Dec.”). Specifically, we authorized this inter partes review
`to proceed as to the following grounds:
`Reference(s)
`Basis
`Frossard1
`§ 102
`Frossard and Pagliaroli2
`§ 103
`Frossard and Drori3
`§ 103
`Frossard and LeBlanc4
`§ 103
`Frossard and Simms5
`§ 103
`Pagliaroli6
`§ 102
`Pagliaroli and Frossard
`§ 103
`
`Claim(s) Instituted
`3, 20, 73, 103, and 205
`65
`93
`104
`108
`3, 20, 65, 73, 93, and 205
`103
`
`
`1 EP 0505266 A1 (Ex. 1004); English translation (Ex. 1005) (“Frossard”).
`2 U.S. patent No. 5,276,728 (Ex. 1006) (“Pagliaroli”).
`3 U.S. patent No. 5,081,667 (Ex. 1008) (“Drori”).
`4 U.S. patent No. 6,236,365 B1 (Ex. 1009) (“LeBlanc”).
`5 U.S. patent No. 5,334,974 (Ex. 1007) (“Simms”).
`6 The Institution Decision included claim 103 in the list of claims asserted to
`be anticipated by Pagliaroli. Dec. 26. This was a typographical error. The
`Petition did not allege that claim 103 was anticipated by Pagliaroli. See
`generally Pet. 10–22
`
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`Basis
`§ 103
`§ 103
`
`Claim(s) Instituted
`104
`108
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`Patent 6,542,076 B1
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`Reference(s)
`Pagliaroli and LeBlanc
`Pagliaroli and Simms
`
`Id. at 25–26.
`Patent Owner filed a Patent Owner’s Response (Paper 21, “PO
`Resp.”), and Petitioner filed a Reply (Paper 25, “Reply”). An oral hearing
`was conducted on October 20, 2016. A transcript of the oral hearing is
`included in the record. Paper 30 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons discussed below, Petitioner has demonstrated by a
`preponderance of the evidence that claims 3, 20, 65, 73, 93, 103, 104, 108,
`and 205 of the ‘076 patent are unpatentable.
`
`A. Related Proceedings
`
`The parties inform us that the ʼ076 patent is at issue in approximately
`one dozen lawsuits pending in courts around the country. Paper 20, Pet. 1,
`Ex. 1019. In addition, ex parte reexamination No. 90/013,302 was filed with
`respect to the ’076 patent and has been stayed in light of this proceeding.
`Paper 24. The ’076 patent also is the subject of a co-pending petition for
`inter partes review (IPR2015-01610).
`
`B. The ʼ076 patent
`The ’076 patent describes a control, monitoring, and/or security
`apparatus and method for vehicles. Ex. 1001, 1:25–32. The apparatus
`described in the ’076 patent allows an owner, occupant, or other authorized
`individual to control or to perform various monitoring and security tasks in
`regards to a vehicle from a remote location and at any time. Id. at 3:5–11.
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`An embodiment of the apparatus of the ’076 patent includes a
`transmitter system which is “a remote system, which may or may not be
`physically connected to the remainder of the apparatus. Further, the
`transmitter system is not located in the [vehicle] . . . , but rather, is located
`external from, and/or separate and apart from, the vehicle.” Id. at 3:50–56.
`The apparatus also includes a CPU that is connected electrically and/or
`linked to one or more vehicle equipment systems (e.g., vehicle ignition or
`anti-theft systems). Id. at 4:35–37; 4:61–5:14. The vehicle equipment
`systems may be activated, de-activated, reset, or controlled by the apparatus.
`Id. at 5:15–18. This activation or control may be achieved by a user entering
`a code on the transceiver of the transmitter system. Id. at 6:30–36. The
`code is transmitted to the CPU and then the CPU communicates with the
`appropriate vehicle equipment system. Id. at 7:16–21.
`
`C. Illustrative Claim
`As noted above, we instituted inter partes review of claims 3, 20, 65,
`73, 93, 103, 104, 108, and 205 of the ʼ076 patent, of which claims 3, 73, and
`205 are independent. Claim 3 is illustrative of the instituted claims and is
`reproduced below:
`3.
`A control apparatus, comprising:
`
`a first control device, wherein the first control device at least
`one of generates a first signal and transmits a first signal for
`at least one of activating, de-activating, disabling, and re-
`enabling, at least one of a vehicle system, a vehicle
`equipment system, a vehicle component, a vehicle device, a
`vehicle equipment, and a vehicle appliance, of a vehicle,
`wherein the first control device is located at the vehicle,
`
`wherein the first control device at least one of generates the first
`signal and transmits the first signal in response to a second
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`
`signal, wherein the second signal is at least one of generated
`by a second control device and transmitted from a second
`control device, wherein the second control device is located
`at a location which is remote from the vehicle, wherein the
`second signal is transmitted from the second control device
`to the first control device, wherein the second signal is
`automatically received by the first control device, and
`further wherein the second control device at least one of
`generates the second signal and transmits the second signal
`in response to a third signal,
`
`wherein the third signal is at least one of generated by a third
`control device and transmitted from a third control device,
`wherein the third control device is located at a location
`which is remote from the vehicle and remote from the
`second control device, wherein the third signal is transmitted
`from the third control device to the second control device,
`and further wherein the third signal is automatically received
`by the second control device.
`
`II. CLAIM CONSTRUCTION
`As acknowledged by the parties, the ’076 patent has expired. See
`Pet. 9; PO Resp. 8. We construe expired patent claims according to the
`principles set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)
`(en banc). See In re Rambus, 694 F.3d 42, 46 (Fed. Cir. 2012). “In
`determining the meaning of the disputed claim limitation, we look
`principally to the intrinsic evidence of record, examining the claim language
`itself, the written description, and the prosecution history, if in evidence.”
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014
`(Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). A patentee may act
`as a lexicographer by giving a term a particular meaning in the specification
`with “reasonable clarity, deliberateness, and precision.” In re Paulsen, 30
`F.3d 1475, 1480 (Fed. Cir. 1994).
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`A. Term Preliminarily Construed in the Decision to Institute
`
`For purposes of the Decision to Institute, we construed the term
`“control device.” Dec. 10–11. Neither party raised any concerns regarding
`this construction during trial. See PO Resp. 10–11; Reply 1. Based on our
`review of the full record, we discern no reason to modify or further discuss
`in this Final Written Decision our construction for this claim term. For
`convenience, the claim construction is reproduced in the table below.
`Term
`Citations
`Construction
`Control
`Ex. 2002, 6 A device or a computer, or that part of a device or
`Device
`a computer, which performs an operation, an
`action, or a function, or which performs a number
`of operations, actions, or functions.
`B. First, Second, and Third Signal Terms
`
`Patent Owner provides proposed constructions for the first, second,
`and third signal terms. PO Resp. 11–12. Specifically, Patent Owner asserts
`that the “first signal” is “a signal sent by a first device;” the “second signal”
`is “a signal sent by a second device;” and the “third signal” is “a signal sent
`by a third device.” Id. at 12.
`We agree that a first signal is sent by a first device. For example,
`claim 3 recites, in relevant part, that the “first control device” generates and
`transmits the first signal. The parties’ dispute, however, is directed to
`whether there may be an intermediate device between the transmitting
`device (e.g., second device) and the signal’s destination (e.g., first device).
`In Patent Owner’s view, there may not be an intermediate device. See PO
`Resp. 19–20.
`As part of our analysis, we note that the Applicant provided an
`express definition of the term “signal” in the First Remarks filed on
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`November 23, 2007, during prosecution of the patent application that issued
`as the U.S. patent No. 7,397,363 (“the ’363 patent”) (Ex. 2002). The ’076
`patent and the ’363 patent each descend from U.S. patent Application No.
`08/622,749. See Ex. 1001, at [63]7. Patent Owner relied upon this same
`filing in support of its arguments regarding the construction of “remote,”
`“control device,” and “located at.” See Dec. 6–7. The Applicant provided
`this definition several years after the issuance of the ’076 patent. See
`Ex. 1001, at [45] (Apr. 1, 2003 issuance date). As the Federal Circuit has
`noted, however, “[a] statement made during prosecution of related patents
`may be properly considered in construing a term common to those patents,
`regardless of whether the statement pre- or post-dates the issuance of the
`particular patent at issue.” Teva Pharm. USA, Inc. v. Sandoz, Inc., 789 F.3d
`1335, 1343 (Fed. Cir. 2015) (citing Microsoft Corp. v. Multi–Tech Sys., Inc.,
`357 F.3d 1340, 1350 (Fed. Cir. 2004)).
`In that 2007 filing, the term “signal” was defined as “an indication, or
`an indication having or conveying data, information, or a message, or a
`conveyor of data, information, or a message, or an indication representing
`data or information.” Ex. 2002, 11. We are persuaded that this definition is
`instructive to understanding the proper scope of these claim terms. Thus, a
`first signal, for example, is an “an indication, or an indication having or
`conveying data, information, or a message, or a conveyor of data,
`information, or a message, or an indication representing data or information
`that is sent by a first device.”
`
`
`7 This information was modified by a Certificate of Correction issued July 1,
`2003. See Ex. 1001, 95.
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`IPR2015-01508
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`We have not been directed to evidence in the specification sufficient
`to show that the Applicant desired to narrow this very broad definition of
`signal in a manner that would exclude signals that pass through
`intermediaries. As defined by the Applicant, a signal may be an indication,
`information, or a message and we are not persuaded that it is impermissible
`for an intermediary to pass this information on and to add further data to the
`information that it received.
`For the foregoing reasons, we construe the term “first signal” to be “a
`signal sent by a first device;” “second signal” to be “a signal sent by a
`second device;” and “third signal” to be “a signal sent by a third device.”
`The recited signals all are construed to be “an indication, or an indication
`having or conveying data, information, or a message, or a conveyor of data,
`information, or a message, or an indication representing data or
`information.” Finally, we are not persuaded that these terms exclude signals
`that may pass through an intermediary.
`III. ANALYSIS
`A. Qualifications of Mr. David McNamara
`
`Patent Owner asserts that we should accord little or no weight to the
`testimony of Mr. David McNamara.8 PO Resp. 15. Patent Owner’s
`
`
`8 Mr. McNamara acknowledged the highest level of education that he
`completed was “a “Master of Engineering degree in Solid State Physics from
`the University of Florida in 1976.” Ex. 1003 ¶ 2; see also Pet. 7. Although
`Patent Owner refers to Mr. McNamara as Dr. McNamara, because Petitioner
`and Mr. McNamara do not proffer evidence of Mr. McNamara achieving a
`PhD or equivalent and it is not clear from the record that Mr. McNamara
`attained a PhD or equivalent, we, therefore, refer to Petitioner’s declarant as
`“Mr. McNamara.”
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`objections are twofold. First, Patent Owner argues that Mr. McNamara did
`not review the prosecution history of the ’076 patent. Id. at 12–13. Second,
`Patent Owner contends that Mr. McNamara has an erroneous understanding
`of the standards of claim construction. Id. at 13–15.
`
`1.
`
`Prosecution History
`
`Patent Owner argues Mr. McNamara’s testimony is flawed fatally
`because during cross-examination, Mr. McNamara testified that he had not
`reviewed the prosecution history of the ’076 patent. PO Resp. 16–17 (citing
`Ex. 2005, 153:11–22 (In response to Patent Owner’s questions “you did not
`review the prosecution histories for the four JCMS patents [including the
`’076 patent] at issue correct” and “you did not apply the, any definitions that
`may have been provided by Mr. Joao during prosecution of those patents,
`correct,” Mr. McNamara answers “[t]hat’s correct.”)).
`In reply, Petitioner argues that Mr. McNamara states in his declaration
`that he read the ’076 patent and its prosecution history. Reply 2 (citing Ex.
`1003 ¶ 14). According to Petitioner, Patent Owner improperly focuses Mr.
`McNamara’s testimony that he did not read the prosecution history while
`ignoring other statements to the contrary. Id. Petitioner argues Mr.
`McNamara’s testimony, however, was approximately nine months after Mr.
`McNamara signed his declaration. Reply 2 (citing Ex. 2005, 153:11–15).
`According to Petitioner, Mr. McNamara’s inconsistent testimony, at best,
`illustrates a lapse in memory during a lengthy deposition. Reply 3.
`Petitioner argues that Mr. McNamara reviewed and considered
`relevant portions of the prosecution history such as the definitions identified
`in Exhibit 1012. Id. at 4. Exhibit 1012 includes prosecution history
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`definitions of the ’363 patent and the ’010 patent. Id. (citing Ex. 1003 ¶¶ 14
`and 23). During the cross-examination, Mr. McNamara re-affirmed that he
`reviewed these definitions. Id. In response to the question “‘with respect to
`Paragraphs 14 through 25, through 24, other than the information that is
`referenced in 25, is that a complete list of the information that you
`considered in reaching the opinions or conclusions expressed in Exhibit
`1?,’” Mr. McNamara answered “‘[t]hat is correct.’” Id. (quoting Ex. 2005,
`154:11–20).
`We are not persuaded that Mr. McNamara’s statements on cross
`examination are sufficient to accord his testimony little or no weight. The
`prosecution history is an important element in understanding the claims of a
`patent. We, however, are persuaded that the statements made during cross
`examination appear to be misstatements as to Mr. McNamara’s review of the
`patent and its underlying prosecution history. Mr. McNamara signed his
`declaration under penalty of perjury and he has made other statements
`consistent with his testimony under oath stating that he reviewed the
`prosecution history. See Ex. 1003 ¶ 14; Ex. 2005, 154:11–20. In addition,
`we have reviewed the relevant prosecution history and we are in the position
`to evaluate whether Mr. McNamara’s testimony is at odds with the evidence
`in this case, which include the relevant prosecution history.
`Accordingly, we are not persuaded Mr. McNamara’s testimony should
`be accorded little or no weight due to the statements he made during cross-
`examination regarding his review of the prosecution history.
`
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`2.
`
`Correct Claim Construction Standards
`
`Mr. McNamara stated that he applied the ordinary and customary
`meaning as understood by a person having ordinary skill in the art. Ex. 1003
`¶ 10. During cross-examination, Mr. McNamara re-affirmed his position by
`stating “I used the same standard through all of the four patents [including
`the ’076 patent]. I used the one of ordinary and customary understanding.”
`Ex. 2005, 152:15–18.
`In response, Patent Owner argues Mr. McNamara acknowledged
`during cross-examination that he used the wrong claim construction standard
`when construing the claims in a related inter partes review brought by the
`same Petitioner. PO Resp. 13–14 (citing Ex. 2005, 151:14–152:18 (Mr.
`McNamara acknowledged that he used “the broadest reasonable construction
`in light of the specification of the [’076] patent.” However, in response to
`Patent Owner’s questions “[a]re you aware that the PTAB has indicated or
`stated that that is, in fact, the wrong standard for the 363’ patent” and “[h]ow
`does the use of the wrong claim construction standard affect your opinions
`in this case,” Mr. McNamara answers “I don’t think I used the wrong
`standard because I used the same standard through all of the four patents
`[including the ’076 patent]. I used the one of ordinary and customary
`understanding.”)). Patent Owner further argues that Mr. McNamara
`acknowledged that he cannot discern the difference between claims in an
`expired patent and claims in an unexpired patent and uses the same claim
`construction standard (i.e., plain and ordinary meaning) for both expired and
`unexpired patents. PO Resp. 14–15 (citing Ex. 2005, 152:19–25).
`In reply, Petitioner argues Mr. McNamara stated that he applied the
`plain and ordinary meaning as understood by a person having ordinary skill
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`in the art. Reply 5 (citing Ex. 1003 ¶ 10; Ex. 2003, 152:15–18). Petitioner
`further argues Patent Owner’s reliance on Mr. McNamara being unable to
`differentiate between the “broadest reasonable construction” and the
`“ordinary and customary understanding” is misplaced because the difference
`between the two standards is a legal question. Reply 5. Petitioner also
`argues Patent Owner fails to demonstrate how Mr. McNamara’s claim
`construction is incorrect, why Mr. McNamara’s claim construction is
`different from the plain and ordinary meaning, or that his opinion and
`conclusion are based on an incorrect standard. Id. According to Petitioner,
`at best, Patent Owner illustrates that Mr. McNamara failed to explain the
`difference between the “broadest reasonable construction” and the “plain
`and ordinary meaning.” Id.
`Petitioner also argues Mr. McNamara’s declaration is consistent with
`the Board’s construction of “control device” and the remaining claim terms,
`which were given their plain and ordinary meaning. Id. at 5–6 (citing Dec.
`5–11; Ex. 1003 ¶ 10). Regarding the claim term “control device,” as an
`example, Petitioner refers to Mr. McNamara’s statement that “Frossard
`further states that the receiver-decoder means ‘decodes this message’ that it
`received and ‘addresses the corresponding commands to equipment 3 itself,
`causing an immediate or deferred shutdown depending on the application
`under consideration.’” Id. at 6 (quoting Ex. 1003 ¶ 42). Petitioner argues
`Frossard performing numerous operations such as decoding and addressing
`is consistent with the Board’s construction of “control device” that includes
`performing “a number of operations.” Id. Petitioner also argues another
`example of Mr. McNamara’s consistency with the Board is disclosed in Mr.
`McNamara’s statement that “‘the CPU 4 is acting as a control device as it is
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`performing actions and operations on the ignition system and fuel pump.’”
`Id. (quoting Ex. 2005, 164:16–18). Petitioner further argues Mr. McNamara
`also states “‘I agree with the PTAB’s construction that control device is
`generally something that performs an operation or function or action; the
`transmitter is, yes, the transmitter is performing an operation.’” Id. (quoting
`Ex. 2005, 166:11–15).
`We are not persuaded that Mr. McNamara’s statements regarding the
`appropriate claim construction standard merit according his testimony little
`or no weight. Mr. McNamara stated that he applied the plain and ordinary
`meaning as understood by a person having ordinary skill in the art. Ex. 1003
`¶ 10; Ex. 2003, 152:14–18. We agree with Petitioner that Patent Owner’s
`reliance on Mr. McNamara being unable to differentiate between the
`“broadest reasonable construction” and the “ordinary and customary
`understanding” is misplaced because the difference between the two
`standards is a legal question. Mr. McNamara’s testimony is presented for
`the purpose of providing “scientific, technical, or other specialized
`knowledge will help the trier of fact to understand the evidence or to
`determine a fact in issue.” Fed. R. Evid. 702. We do not look to Mr.
`McNamara as an expert or even as a purported expert on legal issues.
`Moreover, we agree with Petitioner that Patent Owner’s argument fails to
`demonstrate how Mr. McNamara’s claim construction is incorrect or why
`Mr. McNamara’s claim construction is different from the plain and ordinary
`meaning.
`Accordingly, we deny Patent Owner’s request that we accord Mr.
`McNamara’s testimony little or no weight. We will analyze Mr.
`McNamara’s testimony as part of our analysis of all of the evidence
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`presented in this proceeding and we will accord his statements the
`appropriate weight.
`
`B. Analysis of Asserted Grounds Based on Frossard (Ex. 1005)
`
` Overview of Frossard
`Frossard describes a system for controlling shutdown of movable or
`mobile equipment and locating the movable or mobile equipment. Ex. 1005,
`2. Figure 1 is reproduced below.
`
`
`Figure 1 illustrates movable or mobile equipment 3 containing
`receiver-decoder circuits 4 for an order message to shutdown movable or
`mobile equipment 3. Id. at 5. The specification describes a scenario in
`which equipment 3 is stolen and the owner or authorized person calls server
`1 to communicate a shutdown order of equipment 3. Id. at 9. After server 1
`validates the shutdown order, the shutdown order is transmitted to receiver-
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`decoder circuits of equipment 3. Id. at 3, 9. Figure 2, which is reproduced
`below, depicts the details of receiver-decoder 4, which is used to shutdown
`equipment 3.
`
`
`Figure 2 illustrates receiver-decoder circuits 4 and equipment interface 5
`from Figure 1. Id. at 3, 7. Shutdown circuit 423 controls immediate or
`deferred shutdown of equipment 3. Id. at 9–10. When shutdown of
`equipment 3 occurs, an electrical contact that activates the starter is broken.
`Id. at 10, 14.
` Analysis of Asserted Ground of Anticipation by Frossard
`Petitioner asserts that claims 3, 20, 73, 103, and 205 of the ’076 patent
`are unpatentable under 35 U.S.C. § 102 as anticipated by Frossard. Pet. 10–
`22. Petitioner relies on claim charts showing how this reference allegedly
`discloses the claimed subject matter. Id. Petitioner further relies on a
`declaration from David McNamara. Ex. 1003. For the reasons discussed
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`below, we conclude that Petitioner has established by a preponderance of the
`evidence that claims 3, 20, 73, 103, and 205 of the ’076 patent are
`anticipated by Frossard.
`a. Independent Claims 3, 73, and 205
`Each of the challenged independent claims (3, 73, and 205) recites a
`first, second, and third control device. In claims 3 and 73, the “first control
`device is located at the vehicle.” Ex. 1001, 106:49–50; 122:8–9. Similarly,
`in claim 205, the “third control device is located at the vehicle.” Id. at
`141:37–38. All three independent claims recite that “the second control
`device is located at a location which is remote from the vehicle.” Id. at
`106:56–57; 122:14–15; 141:32–33. In addition, claims 3 and 73 recite that
`“the third control device is located at a location which is remote from the
`vehicle and remote from the second control device.” Id. at 106:66–107:1;
`122:24–26. Similarly, claim 205 recites that the “first control device is
`located at a location remote from the second control device and remote from
`a vehicle.” Id. at 141:17–19. Thus, all of the independent claims require
`three control devices, one of which is located at the vehicle and two other
`control devices that are located at two other places that are remote from the
`vehicle.
`Petitioner argues that Frossard discloses these control devices9 and
`their associated signals through its discussion and depiction of receiver-
`
`
`9 Petitioner’s arguments regarding the first control device of claims 3 and 73
`correlates to the arguments espoused for the third control device of claim
`205; similarly Petitioner’s arguments as to the second control device of
`claim 205 correlates to the second control device of claims 3 and 73; and
`Petitioner’s arguments in regards to the third control device of claim 205
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`decoder 4 (first control device) (Pet. 11), resource 2 and server center 1
`(collectively the second control device) (id. at 15), and a phone or Minitel
`(third control device) (id.). Frossard’s receiver-decoder 4 sends an “order
`message to shut down the equipment.” Id. at 11 (citing Ex. 1005, 3);
`Ex. 1005, 5. The receiver-decoder circuit is installed within the vehicle
`itself. Ex. 1005, Abstract. Frossard’s receiver-decoder “addresses the
`corresponding commands to equipment 3 itself, causing immediate or
`deferred shutdown depending on the application under consideration.” Pet.
`11 (citing Ex. 1005, 9). Resource 2 is argued to be “the network that the
`server center uses to transmit the second signal to the first control device.”
`Id. at 15 (citing Ex. 1003 ¶ 52). Petitioner contends that a telephone or
`Minitel may be used to transmit the “access code and the corresponding
`intervention order.” Id. at 14 (citing Ex. 1005, 4). Petitioner asserts that
`“Frossard discloses that the server center and network (collectively the
`second control device) generates and transmits the second signal (message
`M) in response to the third signal (access code and corresponding
`intervention order).” Id. at 15 (citing Ex. 1003 ¶ 53.)
`Patent Owner argues that the claimed second control device is not met
`by Frossard’s resource 2 and server center 1 because they “are actually at
`least two separate devices.” PO Resp. 17. In Patent Owner’s view
`
`correlates to those for the first control device of claims 3 and 73. Petitioner
`relies on the same disclosures in Frossard for each of the corresponding
`devices in claims 3, 73, and 205. Compare Pet. 10–16 (combined arguments
`for claims 3 and 73) wtih Pet. 17–22 (argument for claim 205). Thus, our
`analysis of Frossard’s disclosures applies to each of the independent claims.
`For convenience, unless otherwise indicated, we shall use the terms first,
`second, and third control device to refer to the control devices as described
`in claim 3.
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`Frossard’s system is not one with three control devices; instead Frossard has
`at least four control devices and thus, the devices and signals in Frossard do
`not disclose the claimed three signal/three device system. Id. at 16–21; see
`also Tr. 36:1–38:19.
`In Frossard, server center 1 may be accessed by a subscriber upon
`presentation of an access code. Ex. 1005, 4. Codes are sent to server center
`1 by a subscriber in order to generate a request to shutdown equipment 3.
`Id. at 5. Resource 2 transmits the shutdown message to equipment 3. Id. at
`4. According to Mr. McNamara “person of ordinary skill in the art would
`understand that Frossard discloses that the server center and its network
`(second control device) generates and transmits the second signal (message
`M) in response to the third signal (i.e. access code and corresponding
`intervention order).” Ex. 1003 ¶ 52.
`Patent Owner’s dispute with Petitioner’s characterization of Frossard
`is based, in part, upon a disagreement as to whether there may be an
`intermediate device located between Frossard’s server 1, which generates
`the shutdown signal and receiver-decoder circuits 4 that receive the
`shutdown signal. PO Resp. 19. According to Patent Owner, resource 2 is an
`intermediate device that receives the second signal (the shutdown message)
`from server 1 and then generates a third signal, which is transmitted to the
`receiver-decoder circuits 4. Id. at 19–20. Patent Owner’s arguments,
`however, depend on its proposed construction of “second signal” as limited
`to a signal received directly from a first device, a construction which we
`have not adopted.
`Petitioner responds by directing us to the construction of control
`device that is found in the prosecution history and has been adopted for this
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`proceeding. Reply 8. Pursuant to that construction, which is not contested,
`a control device is “[a] device or a computer, or that part of a device or a
`computer, which performs an operation, an action, or a function, or which
`performs a number of operations, actions, or functions.” See supra § II.B.
`According to Petitioner, because the “control device” can comprise “part of
`a device,” it follows that a device can comprise multiple parts. Reply 8.
`Petitioner also explains because a “control device” is a type of device, a
`“control device” can include necessarily multiple parts. Id.
`Petitioner is correct in arguing that Patent Owner improperly attempts
`to limit “control device” in a way that contradicts the construction of the
`term. We agree with Petitioner that Frossard’s server center 1 and resource
`2 may disclose the claimed “second control device” because by definition a
`“control device” can comprise “part of a device”; therefore, it follows that if
`something may be “part of a device” then it is permissible for that device to
`have multiple parts. Thus, a “control device,” which necessarily is a type of
`device, can include multiple parts. Therefore, the question is whether the
`cited elements of Frossard (server center 1 and resource 2) reasonably can be
`interpreted to be the parts of the second control device.
`To that end, Petitioner compares the combination of Frossard’s server
`center 1 and resource 2 with the ’076 patent’s combination of server 952 and
`transmitter 957. Id. at 9. It is Petitioner’s contention that “Frossard’s server
`1 corresponds to server 952 of the ’076 patent because both generate a signal
`for remote control. Frossard’s resource 2 corresponds to transmitter 957 of
`the ’076 patent because both transmit the signal.” Id. at 12. According to
`Petitioner, “[t]he specification describes that, in response to a command
`received by the server receiver 953, the server 952 sends a control signal via
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`the transmitter 957.” Id. at 9 (citing Ex. 1001, 58:41–48, 5:55–58). Further,
`Petitioner asserts that “[a]ll of the described second devices use transmitters
`(e.g., server 952 uses transmitter 957 in Fig. 11B).” Id. at 10. Thus, in
`Petitioner’s view, Patent Owner’s argument that the control device may not
`be the combination of a server and transmitter is not supported by the
`specification. Id. We agree and find that Frossard discloses the claimed
`second control device.
`We also determine that because Patent Owner acknowledged, in its
`own definition, that “control device” means “a device or a computer, or that
`part of a device or a computer,