Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 10
`Filed: January 28, 2016
`
`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 HOWARD B. BLANKENSHIP, STACEY G. WHITE, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`571.272.7822
`
`
`Paper No. 10
`Filed: January 28, 2016
`
`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 HOWARD B. BLANKENSHIP, STACEY G. WHITE, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
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`IPR2015-01508
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`I. INTRODUCTION
`
`A. Background
`Nissan North America, Inc. (“Petitioner”) filed a Petition (Paper 1,
`“Pet.”) seeking to institute an 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.”). We have jurisdiction under 35 U.S.C. § 314(a),
`which provides that an inter partes review may not be instituted “unless . . .
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.”
`Petitioner contends the challenged claims are unpatentable under
`35 U.S.C. §§ 102 and 103 on the following specific grounds (Pet. 10–60):
`Reference(s)
`Basis
`Claim(s) Challenged
`Frossard1
`§ 102
`3, 20, 73, 103, and 205
`Frossard and Pagliaroli2
`§ 103
`65
`Frossard and Drori3
`§ 103
`93
`Frossard and LeBlanc4
`§ 103
`104
`Frossard and Simms5
`§ 103
`108
`Pagliaroli
`§ 102
`3, 20, 65, 73, 93, and 205
`Pagliaroli and Frossard
`§ 103
`103
`Pagliaroli and LeBlanc
`§ 103
`104
`
`1 EP 0505266 A1 (Ex. 1004); English translation of EP 0505266 A1 (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”).
`
`2
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`Reference(s)
`Pagliaroli and Simms
`
`Basis
`§ 103
`
`Claim(s) Challenged
`108
`
`Our factual findings and conclusions at this stage of the proceeding
`are based on the evidentiary record developed thus far (prior to Patent
`Owner’s Response). This is not a final decision as to patentability of claims
`for which inter partes review is instituted. Our final decision will be based
`on the record as fully developed during trial. For reasons discussed below,
`we institute inter partes review of the ʼ076 patent as to claims 3, 20, 65, 73,
`93, 103, 104, 108, and 205.
`
`B. Related Proceedings
`Petitioner informs us that the ʼ076 patent is at issue in thirty-two
`lawsuits pending in courts around the country. Pet. 1; Ex. 1019. In addition,
`ex parte reexamination No. 90/013,302 was filed with respect to the ’076
`patent and is pending. Pet. 1; Ex. 1019. The ’076 patent also is the subject
`of a co-pending petition for inter partes review (IPR2015-01610).
`
`C. The ʼ076 Patent
`The ’076 patent describes a control, monitoring, and/or security
`apparatus and method for vehicles or premises. 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.
`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
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`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.
`
`D. Illustrative Claim
`As noted above, Petitioner challenges 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 challenged 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
`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
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`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; Prelim. Resp. 9. 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).
`Petitioner seeks construction of “intelligent agent” and “software
`agent.” Pet. 9–10. Petitioner argues that these terms both should be
`construed to mean “a computing entity that performs user delegated tasks
`autonomously.” Id. at 9. Patent Owner does not speak to this proposed
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`construction. Patent Owner seeks construction of the term “interface
`device” and also argues that the terms “control device,” “remote,” and
`“located at” are defined expressly in the prosecution history of at least two
`related applications. Prelim. Resp. 12–40. Petitioner does not provide
`explicit arguments regarding these terms.6 We are not persuaded that
`express construction of “intelligent agent,” “software agent,” “interface
`device,” “remote,” or “located at” is necessary in order to resolve the issues
`currently before us. Thus, we discern no need to provide express
`constructions for these terms at this time. Vivid Techs., Inc. v. Am. Sci. &
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be
`construed that are in controversy, and only to the extent necessary to resolve
`the controversy.”).
`We, however, discern a need to provide an express construction for
`“control device.” Patent Owner asserts that “control device” is defined
`expressly in remarks filed November 23, 2007, during prosecution of the
`patent application that issued as U.S. Patent No. 7,397,363 (“the ’363
`patent”) (Ex. 2002). Prelim. Resp. 18. This statement was made several
`years after the issuance of the ’076 patent. See Ex. 1001, at [45] (April 15,
`2003 issuance date). The ’076 patent and the ’363 patent each descend from
`U.S. Patent Application No. 08/622,749. See Ex. 1001, at [63]7.
`
`
`6 As to the term “interface device,” Patent Owner purports to agree with
`Petitioner’s proposed construction for this term. Id. at 17. Petitioner,
`however, has not provided a construction for this term in this proceeding.
`7 This information was modified by a Certificate of Correction issued July 1,
`2003. See Ex. 1001, 95.
`
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`As the Federal Circuit has noted, “[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)). An
`explicit definition for “control device” was provided in the related
`application. See Ex. 2002, 6. We have reviewed this definition and, on this
`record, we find it to be reasonable and instructive to understanding the
`proper scope of this claim term. See Paulsen, 30 F.3d at 1480.
`Patent Owner seeks to further narrow this term by also construing this
`term to mean that the control device must be “separate and distinct” from the
`vehicle system, the communications system, and the interface device.
`Prelim. Resp. 18–38. For reasons stated below, we do not find these
`arguments to be persuasive.
`First, Patent Owner argues that the control devices must be separate
`and distinct from the vehicle system being controlled. Prelim. Resp. 18–21.
`Claim 3 recites, in relevant part, “wherein the first control device is located
`at the vehicle” and that the first control device generates and transmits a first
`signal that directs a vehicle system to perform certain specified activities.
`Ex. 1001, 106:43–50; see also id. at 121:63–122:9 (similar limitations in
`claim 73); 141:23–37 (reciting similar limitations in claim 205 in reference
`to the third control device and third signal). Patent Owner relies on the
`description of preferred embodiments in which CPU 4 (which Patent Owner
`characterizes as the first control device of claim 3) is “electrically connected
`and/or linked to at least one or more of a vehicle equipment system or
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`systems 11.” Id. at 20 (quoting Ex. 1001, 25:15–23). Patent Owner also
`relies upon a passage from the specification that describes the vehicle
`equipment system as being “utilized in conjunction with the apparatus.” Id.
`(quoting Ex. 1001, 5:15–18).
`We are not persuaded that these passages require such a narrow
`interpretation of the claim language. “[A]lthough the specification often
`describes very specific embodiments of the invention,” Phillips v. AWH
`Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005), the U.S. Court of Appeals for
`the Federal Circuit “ha[s] repeatedly warned against confining the claims to
`those embodiments.” Id. On this record, this claim language does not
`require the control device to be separate and distinct from the vehicle
`systems; instead it speaks to the location of the control device and the
`transmission of signals between these elements of the claimed apparatus. In
`addition, we note that the specification states that “CPU 4 can be the
`dedicated control device for, and/or can be an integrated control device
`and/or component of, any of the respective systems, subsystems, equipment
`systems, devices, and/or components, of any of the herein described
`vehicles.” Ex. 1001, 104:26–30 (emphasis added); see also id. at 104:45–48
`(similar language). We are not persuaded that the existence of preferred
`embodiments where the control device is utilized by or electrically
`connected to the vehicle system narrows this term so as to exclude a control
`system that is not “separate and distinct” from the vehicle system.
`Second, Patent Owner argues that the control devices are separate and
`distinct from the communication system or the communication network, or
`any component of same, on, over, via, or in conjunction with, which they
`operate. Prelim. Resp. 21. According to Patent Owner, the specification
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`repeatedly describes the recited control devices as “operat[ing] on, over, via
`or in conjunction with, a communication system or network” and as such the
`control devices and communication network must be distinct. Id. at 23.
`Patent Owner quotes several passages from the specification that describe
`the claimed apparatus as operating “in a network environment” or sending
`signals “over a communication system.” Id. at 24 (quoting Ex. 1001:25–32);
`id. at 24–25 (quoting Ex. 1001, 3:31–39). Here again, we are not persuaded
`that these passages narrow the claim language so as to exclude control
`devices that are not distinct from the communication system. A network
`environment or a communication system could include any number of
`network devices or communications equipment. We are not persuaded that
`these disclosures from the specification exclude all network devices and
`equipment from being part of the claimed control device. In addition, we
`note that the specification states that “[t]elephone signals and telephone
`communication devices can be utilized in the present invention.” Ex. 1001,
`4:7–9 (emphasis added); see also id. at 104:3–11 (noting that “[i]n any
`and/or all of the embodiment described herein any of the systems” of a
`vehicle can be controlled via any “communication device”). Thus, we are
`not persuaded that control device must be separate and distinct from the
`communication system or the communication network.
`Finally, Patent Owner argues that the control devices must be separate
`and distinct from an interface device. Prelim. Resp. 33–38. Patent Owner
`supports this argument by citing claims 18 and 111 and several passages
`from the specification. As to the cited claims, claim 18 depends from claim
`3 and claim 111 depends from claim 73. Claims 18 and 111, which are not
`challenged in this proceeding, further recite an interface device. Patent
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`Owner argues that the doctrine of claim differentiation creates a presumption
`that the interface device in claims 18 and 111 is distinct from the claimed
`control devices. Although the doctrine of claim differentiation creates a
`presumption that the “interface device” limitations in the dependent claims
`is different in scope than the “control device” limitations, this presumption
`can be overcome by written description or prosecution history. See
`Seachange Int’l, Inc. v. C-COR Inc., 413 F.3d 1361, 1369 (Fed. Cir. 2005).
`Here, we are not persuaded that the specification supports Patent
`Owner’s argument. The specification repeatedly describes the interface
`device as optional. For example, Patent Owner relies on the specification
`describing “systems 11 are located externally from apparatus 1 and may or
`may not be connected and/or linked to the CPU 4 via . . . interface 12 which
`may or may not be required.” Prelim. Resp. 35 (quoting Ex. 1001, 25:15–
`23) (emphasis added); see also id. at 36 (quoting Ex. 1001, 31:26–35)
`(“systems 11, and their associated interface devices 12, may be optional and
`may further include any other systems and/or devices which may, or are,
`utilized in and/or in conjunction with any of the above noted or envisioned
`vehicles”) (emphasis added).
`Each of the cited portions of the Specification relied upon by Patent
`Owner does not include a special definition or a disavowal that requires the
`“interface device” to be separate and distinct from the “control device[s].”
`The cited portions instead describe an optional interface device that may or
`may not present in a claimed system. Thus, we are not persuaded that the
`challenged claims require control devices to be distinct from any interface
`device.
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`Thus, for all of the foregoing reasons, we adopt the following
`construction for purposes of this decision.
`
`Term
`Control
`Device
`
`Construction
`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.
`
`Citations
`Prelim. Resp.
`17–18; Ex.
`2002, 6
`
`
`
`III. ANALYSIS
`
`We turn to Petitioner’s asserted grounds of unpatentability to
`determine whether Petitioner has met the threshold of 35 U.S.C. § 314(a).
`
`A. 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,
`2:1–2. Figure 1 is reproduced below.
`
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`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 5:7–12. 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 9:14–17. After
`server 1 validates the shutdown order, the shutdown order is transmitted to
`equipment 3. Id. at 9:23–24. 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 3:26–27, 7:21–23. Shutdown circuit 423 controls
`immediate or deferred shutdown of equipment 3. Id. at 9:28–10:3. When
`shutdown of equipment 3 occurs, an electrical contact that activates the
`starter is broken. Id. at 10:13–21, 14:9–12.
` 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–
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`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.
`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.” Id. at 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 devices8
`through its discussion and depiction of receiver-decoder 4 (first control
`
`
`8 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
`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
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`device) (Pet. 11), resource 2 and server center (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 ¶ 3); Ex. 1005, 5 ¶ 2. 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 ¶ 3.). 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 argues 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 ¶ 3).
`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 Frossard fails to teach the first control
`device.9 Prelim. Resp. 41. According to Patent Owner, Frossard’s receiver-
`decoder 4 is an interface device and not a control device. Id. at 42. Patent
`
`
`devices in claims 3, 73, and 205. Compare Pet. 10–16 (combined arguments
`for claims 3 and 73) and 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.
`9 Similar to Petitioner, Patent Owner is applying the same analysis to the
`first control device of claims 3 and 73 and the third control device of claim
`205. For convenience, we shall refer to these devices as the first control
`device.
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`Owner reasons that Frossard’s receiver-decoder 4 merely functions as an
`“interface device” because it decodes a message sent by server 1. Id. at 43.
`As noted above, however, we are not persuaded that the optional interface
`device described in the specification is necessarily separate and distinct from
`the first control device. See § II (construction of “control device”).
`Contained within Frossard’s receiver-decoder 4 (first control device) is “an
`interface circuit, which is interconnected, as shown in Fig. 2, with paging
`message processing module 421.” Ex. 1005, 8 ¶ 3. Put another way,
`Frossard’s interface circuit is a subcomponent of a control device. Id. On
`this record, Patent Owner has not persuaded us that to the extent that an
`interface device may be required such a device must be separate and distinct
`from the control device. Thus, we are not persuaded that Frossard’s
`disclosures fail to disclose the claimed first control device.
`Accordingly, we are persuaded, based on the current record, that
`Petitioner has established a reasonable likelihood it would prevail in
`showing that independent claims 3, 73, and 205 are unpatentable under
`35 U.S.C. § 102 over Frossard.
`b. Dependent Claims 20 and 103
`Claims 20 and 103 respectively depend from claims 3 and 73. We
`have reviewed Petitioner’s assertions regarding these claims and we are
`persuaded that these claims also are anticipated by Frossard. See Pet. 16–17.
`For example, claim 20 depends from claim 3 and further recites “wherein the
`apparatus provides at least one of an immediate control of and a deferred
`control of the at least one of a vehicle system, a vehicle component, a
`vehicle device, a vehicle equipment, a vehicle equipment system, and a
`vehicle appliance.” In its arguments directed to this claim, Petitioner relies
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`upon Frossard’s disclosure that the receiver-decoder “addresses the
`corresponding commands to equipment 3 itself, causing immediate or
`deferred shutdown depending on the application under consideration.” Pet.
`16 (citing Ex. 1005, 9 ¶ 3). Patent Owner has not spoken in regards to the
`specific allegations directed to the dependent claims and at this time has
`only put forth arguments addressing the patentability of the independent
`claims. Prelim. Resp. 40. On this record, we find Petitioner’s arguments to
`be persuasive. Therefore, we are persuaded, based on the current record,
`that Petitioner has established a reasonable likelihood it would prevail in
`showing that dependent claims 20 and 103 are unpatentable under 35 U.S.C.
`§ 102 over Frossard.
` Analysis of Asserted Grounds of Obviousness over Frossard
`Petitioner asserts that claims 65, 93, 104, and 108 of the ’076 Patent
`are unpatentable under 35 U.S.C. § 103 as obvious over Frossard as
`combined respectively with Pagliaroli, Drori, LeBlanc, and Simms. Pet. 22–
`36. Petitioner relies on claim charts showing how these references allegedly
`teach the claimed subject matter. Id. Petitioner further relies on a
`declaration from David McNamara. Ex. 1003.
`a. Overview of Pagliaroli
`Pagliaroli describes enabling or disabling remotely an automobile.
`Ex. 1006, Abstract. When an automobile owner realizes their vehicle has
`been stolen, the owner dials a telephone number to disable the automobile.
`Id. Figure 1 is reproduced below.
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`Figure 1 illustrates a user connecting to receiver 14 when dialing from
`telephone 48. Id. at 4:53–5:1. In addition, Figure 1 shows telephone 48
`connects to receiver 14 via transmitter 46. Id. Receiver 14 receives signal
`code 40 and forwards code 40 to control unit 16. Id. at 5:30–33. When a
`disabling signal is sent, control unit 16 disables starter 20 and ignition
`system 22 stops the operation of the automobile and sends a signal activating
`emergency lights 24 of the automobile. Id. at 5:44–55. License plate lights
`26 may change colors or flash to identify to police that the automobile is
`stolen. Id. at 5:55–58.
`b. Analysis of Asserted Ground of Obviousness over Frossard and
`Pagliaroli
`Claim 65 depends from claim 205. We have reviewed Petitioner’s
`assertions regarding this claim and we are persuaded that it would have been
`obvious over Frossard and Pagliaroli. See Pet. 22–25. Claim 65 further
`recites “providing information regarding at least one of apparatus status,
`vehicle operation status, and status of the at least one of a vehicle system, a
`vehicle component, a vehicle device, a vehicle equipment, a vehicle
`equipment system, and a vehicle appliance.” In its arguments directed to
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`this claim, Petitioner relies upon Pagliaroli’s description of “theft sensors 12
`monitor[ing] the condition of the automobile. If triggered by theft or
`tampering, the theft sensor 12 enables the receiver 14.” Prelim. Resp. 22
`(citing Ex. 1006, 4:22–24). In addition, Petitioner notes that Pagliaroli
`describes theft sensors 12 as transmitting a signal that generates an
`audio/visual signal that will inform the vehicle owner of tampering or theft.
`Id. at 23 (citing Ex. 1006, 4:46–52). On this record, we find Petitioner’s
`arguments to be persuasive. Therefore, we are persuaded, based on the
`current record, that Petitioner has established a reasonable likelihood it
`would prevail in showing that dependent claim 65 would have been obvious
`over Frossard and Pagliaroli.
`c. Analysis of Asserted Ground of Obviousness over Frossard and Drori
`Claim 93 depends from claim 73. We have reviewed Petitioner’s
`assertions regarding this claim and we are persuaded that it would have been
`obvious over Frossard and Drori. See Pet. 25–27. Claim 93 further recites
`“wherein the first control device determines an operating status of the at
`least one of a vehicle system, a vehicle equipment system, a vehicle
`component, a vehicle device, a vehicle equipment, and a vehicle appliance.”
`In its arguments directed to this claim, Petitioner relies upon Drori’s
`discussion of “means for starting the vehicle engine and verifying the
`engine’s status from any direct dial telephone anywhere in the world.” Pet.
`25 (citing Ex. 1008, 2:25–28). In addition, Petitioner notes that Drori’s
`system allows users to “output an external signal to an accessory of the
`user’s choice, receive engine (off/running) status, request tracking data to
`identify the location of the vehicle, issue a command to disable the engine
`and communicate directly with any occupant of the vehicle (e.g., an
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`intruder).” Id. at 26 (citing Ex. 1008, 16:57–65.). On this record, we find
`Petitioner’s arguments to be persuasive. Therefore, we are persuaded, based
`on the current record, that Petitioner has established a reasonable likelihood
`it would prevail in showing that dependent claim 93 would have been
`obvious over Frossard and Drori.
`d. Prior art status of LeBlanc
`Petitioner argues that claim 104 would have been obvious over
`Frossard and LeBlanc. Pet. 28–31. LeBlanc, is based on a September 8,
`1997 PCT Application. Pet. 4; Ex. 1009 at [22]. The earliest application
`listed on the face of the ’076 patent was filed on June 8, 1993. Ex. 1001 at
`[63]10. Thus, as a threshold matter, we must address Petitioner’s argument
`that claim 104 is entitled to a priority date of no earlier than April 17, 2000.
`Pet. 4.
`Petitioner asserts that support for claim 104 was added to the
`specification as part of a continuation-in-part application filed on April 17,
`2000. Pet. 4. Claim 104 depends from claim 103 and further recites
`“wherein the apparatus utilizes at least one of an intelligent agent, a software
`agent, and a mobile agent.” Petitioner asserts that the specification’s sole
`discussion of such agents was introduced on pages 313–314 of the April 17,
`2000 application. Patent Owner has not spoken on this issue. On the record
`currently before us, we are persuaded that LeBlanc is 102(e) prior art to
`claim 104 of the ’076 patent.
`
`
`10 The Related U.S. Applications Data for the ’076 patent was modified by a
`Certificate of Correction issued July 1, 2003. Ex. 1001, 95
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`e. Analysis of Asserted Ground of Obviousness over Frossard and
`LeBlanc
`Claim 104 depends from claim 103. We have reviewed Petitioner’s
`assertions regarding this claim and we are persuaded that it would have been
`obvious over Frossard and LeBlanc. See Pet. 28–31. Claim 104 further
`recites “wherein the apparatus utilizes at least one of an intelligent agent, a
`software agent, and a mobile agent.” In its arguments directed to this claim,
`Petitioner relies upon LeBlanc’s discussion of “a system and method for
`Parametric-driven, intelligent agent-based location services,” in which
`“[p]arameters may include time, location, and user-specific and/or group
`specific criteria.” Id. at 28 (citing Ex. 1009, 8:21–24. On this record, we
`find Petitioner’s arguments to be persuasive. Therefore, we are persuaded,
`based on the current record, that Petitioner h
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