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 No. 6,542,076
`
`
`
`
`PETITIONER NISSAN NORTH AMERICA, INC.’S
`REPLY TO PATENT OWNER’S RESPONSE TO PETITION
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`NISSAN NORTH AMERICA, INC.,
`Petitioner
`
`v.
`
`JOAO CONTROL & MONITORING SYSTEMS, LLC
`Patent Owner
`
`
`
`
`Case IPR2015-01508
`Patent No. 6,542,076
`
`
`
`
`PETITIONER NISSAN NORTH AMERICA, INC.’S
`REPLY TO PATENT OWNER’S RESPONSE TO PETITION
`
`
`
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`
`CLAIM CONSTRUCTION ............................................................................ 1
`
`
`
`I.
`
`II.
`
`III. RESPONSE TO ARGUMENTS ..................................................................... 2
`
`A.
`
`B.
`
`C.
`
`Full weight should be given to the Declaration. ................................... 2
`
`Ground 1- Petition properly applies Frossard as a base
`reference. ............................................................................................... 7
`
`Ground 6- Petition properly applies Pagliaroli as a base
`reference. ............................................................................................. 15
`
`D. Ground 3- Drori cures the deficiencies of Frossard. ........................... 24
`
`E.
`
`F.
`
`Grounds 5 and 9 are proper. ................................................................ 25
`
`Ground 8 is proper. .............................................................................. 27
`
`IV. CONCLUSION .............................................................................................. 27
`
`
`
`
`
`
`
`i
`
`
`
`LIST OF EXHIBITS
`
`Opinion and Order of Mark A. Goldsmith, No. 13-cv-13957,
`(E.D. Mich. 2016) (1) Granting in Part and Denying in Part
`Defendant FCA US LLC’S Motion for Summary Judgment on
`Invalidity and Noninfringement (Dkt. 59) and (2) Denying as
`Moot Plaintiff JOAO Control & Monitoring Systems, LLC’S
`Motion for Summary Judgment of Infringement of U.S. Patent
`No. 7,397,363 by Uconnect Access (Dkt. 57), signed on June
`10, 2016.
`October 26, 2001 Preliminary Amendment for Patent
`Application No. 09/551,365.
`
`
`
`
`
`
`Exhibit 1022
`
`Exhibit 1023
`
`ii
`
`
`
`INTRODUCTION
`
`
`
`I.
`
`Petitioner Nissan North America, Inc. (“Petitioner”) submits this Reply to
`
`Patent Owner’s Response (the “Response,” Paper 21) to the Petition (the
`
`“Petition,” Paper 1) for Inter Partes Review (“IPR”) of U.S. Patent No. 6,542,076
`
`(the “’076 Patent,” Exhibit 1001).
`
`Patent Owner’s attempt to construe additional claim terms is not needed.
`
`Patent Owner’s arguments are without merit and consist entirely of attorney
`
`argument with no expert testimony offered in support. All grounds presented in the
`
`Petition and instituted by the Board demonstrate that the challenged claims are
`
`unpatentable and should be canceled.
`
`II. CLAIM CONSTRUCTION
`
`For the purpose of this IPR proceeding, Petitioner does not contest the
`
`Board’s claim construction.1 (Paper 10, pp. 5-11).
`
`Patent Owner requests to adopt the claim construction of the U.S. District
`
`Court for the Eastern District of Michigan for additional claim terms: the first,
`
`second, and third “signals” recited in the independent claims. (Paper 21, pp. 11-
`
`12). Petitioner recognizes that the District Court invalidated all of the asserted
`
`
`1 Petitioner reserves all rights to propose constructions for additional terms in
`
`litigation or other proceedings.
`
`1
`
`
`
`
`
`claims and found that Frossard discloses the three control device system recited in
`
`independent claims 3 and 205. (Exhibit 1022, pp. 14-23, 28-29, 31-32, and 35).
`
`Petitioner maintains that these terms should be given their plain and ordinary
`
`meaning. (Paper 1, p. 9). Nonetheless, as discussed below, each ground of
`
`rejection is properly maintained even under Patent Owner’s proposed
`
`constructions.
`
`III. RESPONSE TO ARGUMENTS
`
`As a preliminary matter, it is noteworthy that Patent Owner does not provide
`
`any expert testimony in support of its positions. Instead, it relies entirely on bare
`
`attorney argument.
`
`Full weight should be given to the Declaration.
`
`A.
`Patent Owner’s request to give Mr. McNamara’s declaration little or no
`
`weight is baseless for at least the following three reasons. (Paper 21, pp. 12-15).
`
`(1) Petitioner’s Expert reviewed all required materials.
`
`At paragraph 14 of his Declaration, Mr. McNamara states that “I have read
`
`the ‘076 Patent and its prosecution history.” (Exhibit 1003, p. 6, ¶14). Nearly nine
`
`months after Mr. McNamara signed his Declaration, he was cross-examined for
`
`two days. In response to “You have testified previously, I think, that you did not
`
`review the prosecution histories for the four JCMS patents at issue, correct?” he
`
`answered “That’s correct.” (Exhibit 2005, p. 153, lines 11-15).
`
`2
`
`
`
`
`
`Patent Owner misconstrues that statement as proof that Mr. McNamara did
`
`not review the prosecution history. But Patent Owner ignores other statements of
`
`Mr. McNamara showing that he had indeed reviewed the prosecution history. For
`
`example, Mr. McNamara confirmed the statement in his Declaration that he had
`
`reviewed the prosecution history. (Id. p. 154, lines 11-20). Thus, at best the
`
`Response demonstrates a memory lapse during a lengthy deposition. But it does
`
`not demonstrate that Mr. McNamara failed to review the prosecution history.
`
`(2) The alleged failure to review the prosecution history has no weight.
`
`The Response alleges that “Mr. McNamara had not reviewed the materials
`
`[the ’076 Patent prosecution history] required for him to properly reach his
`
`conclusions and opinions.” (Paper 21, p. 12). This allegation echoes Patent
`
`Owner’s question during the Cross-Examination: “in reaching the conclusions or
`
`opinions expressed in Exhibits 1 through 4, you did not apply the, any definitions
`
`that may have been provided by Mr. Joao during prosecution of those patents,
`
`correct?” (Exhibit 2005, p. 153, lines 16-22).
`
`Even if the prosecution history was not reviewed, this would have no weight
`
`on the claim construction in this case. Patent Owner’s above statement about the
`
`definitions is irrelevant because Mr. Joao did not define any claim terms at issue
`
`during the prosecution of the ’076 Patent.
`
`3
`
`
`
`
`
`The only definitions he provided were for the term “automatically” meaning
`
`“without human intervention” and the term “automatically received” meaning
`
`“received without human intervention.” (Exhibit 1023, p. 25). Neither party
`
`proposed constructions for these terms. Their definitions merely reflect their plain
`
`and ordinary meaning. In his Declaration, Mr. McNamara gave these claim terms
`
`“their ordinary meaning as understood by a person of ordinary skill in the art.”
`
`(Exhibit 1003, p. 5, ¶ 10). Thus, Mr. McNamara gave them the plain meaning that
`
`Mr. Joao presented during prosecution.
`
`The only attempts to define claim terms at issue are found in the prosecution
`
`history of two other patents: U.S. Pat. No. 7,397,363 (the ’363 Patent) and
`
`7,277,010 (the ’010 Patent). If weight should be given to the definitions of claim
`
`terms at issue, Mr. McNamara reviewed and considered these definitions.
`
`Specifically, paragraph 23 of the Declaration identifies Exhibit 1012 that includes
`
`the sections of the prosecution histories of the ’363 Patent and ’010 Patent
`
`containing the definitions. (Exhibit 1003, pp. 6-7, ¶¶ 14 and 23). During the Cross-
`
`Examination, Mr. McNamara affirmed that he has reviewed these definitions.
`
`Exhibit 2005, p. 154, lines 11-20.
`
`Thus, any alleged failure to review the prosecution history of ’076 patent has
`
`no bearing on the claim construction. Mr. McNamara confirmed that he considered
`
`the relevant portions of the prosecution history of the ’363 and ’010 Patents.
`
`4
`
`
`
`
`
`(3) The claims were properly construed.
`
`As stated in paragraph 10 of his Declaration, Mr. McNamara applied the
`
`plain ordinary meaning as understood by a person of ordinary skill in the art. In the
`
`Cross-Examination, he confirmed this, stating that “I used the same standard
`
`through all of the four patents [including the ’076 Patent]. I used the one of
`
`ordinary and customary understanding.” (Exhibit 2005, p. 152, lines 15-18). Thus,
`
`Mr. McNamara used the proper standard.
`
`The Response relies on the statement that “I can’t personally differentiate
`
`between broadest and ordinary and customary” (id. p. 152, lines 22-25), to
`
`incorrectly conclude that “it is not clear that he even knows what this standard is or
`
`should be.” (Paper 21, p. 15).
`
`Patent Owner’s reliance on this statement is misplaced. The difference
`
`between the two standards is a legal question that is not at issue in this case. It is
`
`undisputed that Phillips applies here. More importantly, the Patent Owner does not
`
`show how Mr. McNamara’s claim construction is incorrect, why his claim
`
`construction is different from the plain and ordinary meaning, or that his
`
`conclusion and opinion are allegedly based on an incorrect standard. Also, Patent
`
`Owner provides no expert testimony whatsoever in support of its claim
`
`construction arguments. At best, Patent Owner demonstrates that Mr. McNamara
`
`did not explain the difference between two legal standards.
`
`5
`
`
`
`
`
`The Board has provided an express construction of “control device” and
`
`gave the remaining claim terms their plain and ordinary meaning. (See Paper 10,
`
`pp. 5-11). Mr. McNamara’s declaration is consistent with the constructions of
`
`“control device” and of the remaining claim terms, which were given their plain
`
`and ordinary meaning. (Exhibit 1003, p. 5, ¶ 10). As to “control device,” Mr.
`
`McNamara states in the declaration, for example, “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. p. 16, ¶ 42).
`
`This prior art application is consistent with the Board’s express construction of
`
`“control device” because decoding and addressing a command to equipment is
`
`consistent with a device that performs a number of operations (e.g., decoding and
`
`addressing).
`
`The Cross-Examination confirms that Mr. McNamara’s construction of a
`
`control device is consistent with Board’s express construction. (Exhibit 2005, pp.
`
`161-170). Mr. McNamara states “I agree with the PTAB’s construction that control
`
`device is generally something that performs an operation or function or action.”
`
`(Id. p. 166, lines 11-13). In an example, he states that “the CPU 4 is acting as a
`
`control device as it is performing actions and operations on the ignition system and
`
`fuel pump.” (Id. p. 164, lines 16-18).
`
`6
`
`
`
`
`
`Thus, Mr. McNamara construed the claim terms consistently with the
`
`Board’s claim construction under the plain and ordinary meaning standard.
`
`B. Ground 1- Petition properly applies Frossard as a base reference.2
`Patent Owner’s argument in the Response is summarized in the below
`
`illustration, and is incorrect as shown below.
`
`Claims 3 and 733
`
`Patent Owner’s application of Frossard
`
`
`
`
`
`
`
`
`2 The District Court found that Frossard discloses the three control device system
`
`recited in independent claims 3 and 205. (Exhibit 1022, pp. 14-23, 28-29, 31-32,
`
`and 35).
`
`3 Claim 205 is similar, except that the nomenclature of “third” and “first” is
`
`reversed.
`
`7
`
`
`
`
`
`(1) Patent Owner’s argument fails under its proposed claim construction.
`
`Patent Owner improperly attempts to limit “control device” in a way that
`
`contradicts its own proposed claim construction. But even under its proposed
`
`construction, Frossard discloses the recited control device.
`
`Patent Owner proposes to construe the term “control device” as “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.” (Paper 21, p. 11). Because the “control device” can include a “part of a
`
`device,” it follows that a device can include multiple parts. Because a “control
`
`device” is a type of device, a “control device” can necessarily include multiple
`
`parts.
`
`In contrast, Patent Owner argues that because Frossard has two parts (server
`
`1 and resource 2), then one part can be a control device, but the other part must be
`
`a separate, intermediate device. (Paper 21, pp. 19-21). But as explained above, a
`
`device can have multiple parts. Thus, Petitioner is correct that Frossard’s server 1
`
`and resource 2 meet the “control device” limitation.
`
`(2) Patent Owner’s argument contradicts the specification of the ’076 Patent.
`
`The specification of the ’076 Patent confirms that a server and a transmitter
`
`can form a control device.
`
`8
`
`
`
`
`
`The specification never uses the term “control device.” Instead, FIG. 11B of
`
`the ’076 Patent illustrates a three device architecture for controlling vehicle
`
`systems. The claimed “second control device” includes two illustrated parts: a
`
`server 952 and a transmitter 957. The specification describes that, in response to a
`
`command received by the server receiver 953, the server 952 sends a control signal
`
`via the transmitter 957. (Exhibit 1001, 58:41-48 and 55-58).
`
`Specifically, the “server 952 can perform complete control, monitoring
`
`and/or security functions on, or over, the apparatus 1, the apparatus 950, the
`
`vehicle, and/or each of the vehicle systems.” (Id. 58:45-48). Also, “[t]he server
`
`transmitter 957 can transmit control signals and/or other data, including
`
`information to the authorized user or operator and to the apparatus 1 and/or to the
`
`apparatus 950.” (Id. 58:55-58).
`
`Accordingly, the specification describes that a control device includes a
`
`server (952) and a transmitter (957), where the server exercises remote controls by
`
`transmitting control signals via the transmitter.
`
`In contrast, by arguing that the two parts in Frossard (server 1 and resource
`
`2) cannot be the claimed “second control device,” Patent Owner ignores that the
`
`specification undercuts his argument by disclosing a control device that includes
`
`two separate parts, just like Frossard’s two parts.
`
`9
`
`
`
`
`
`Further, everywhere the specification describes a second device that is
`
`remote from a vehicle and that performs control-related operations over the
`
`vehicle, this second device uses a transmitter for the remote control. All of the
`
`described second devices use transmitters (e.g., server 952 uses transmitter 957 in
`
`FIG. 11B). Accordingly, the ’076 Patent does not enable a second control device
`
`remote from the vehicle that does not include a transmitter. Thus, Patent Owner’s
`
`argument for excluding a transmitter from the second control device lacks support
`
`in the ’076 Patent and, in fact, contradicts the ’076 Patent. Instead, Patent Owner’s
`
`argument is simply an attempt to capture claim scope for an invention that he did
`
`not invent.
`
`(3) Frossard discloses the “second control device” and “second signal.”
`
`Patent Owner’s argument that Frossard’s resource 2 is an intermediate
`
`device is incorrect because Frossard’s server 1 and resource 2 collectively form a
`
`control device that generates and transmits a signal.
`
`As explained above, Frossard’s server 1 and resource 2 meet Patent Owner’s
`
`claim construction of “control device.” Frossard’s server 1 is a part of the claimed
`
`“second control device,” where this part performs an operation, an action, or a
`
`function of generating the message order M (the claimed second signal). Frossard’s
`
`resource 2 is also a part of the claimed “second control device,” where this part
`
`10
`
`
`
`
`
`performs an operation, an action, or a function of transmitting the order
`
`message M.
`
`Specifically, Frossard discloses that an intervention code is “transmitted to
`
`server center 1 by the subscriber or an authorized person in order to generate… a
`
`request to shut down the aforesaid equipment 3.” (Exhibit 1005, p. 5, ¶¶ 4-5). Also,
`
`Frossard’s “system contains a resource 2 for selective transmission to the aforesaid
`
`equipment of an order message M to shut down this equipment 3…. [T]he
`
`aforesaid transmission resource advantageously contains an analog radio frequency
`
`transmitter provided with a subcarrier.” (Id. p. 4, ¶ 5, and p. 5, ¶ 1).
`
`Additionally, in FIG. 1 of Frossard, comparing the order message M
`
`generated by server 1 to the order message M transmitted by resource 2 transmits
`
`confirms that resource 2 transmits order message M unchanged. Thus, Frossard’s
`
`server 1 and resource 2, as a whole, send the same signal to a vehicle. While server
`
`1 generates order Message M, resource 2 transmits it to the vehicle.
`
`Frossard’s server 1 and resource 2 collectively form the claimed “second
`
`control device,” where server 1 and resource 2 collectively generate and transmit
`
`the order message M (the claimed second signal). That is exactly what the
`
`independent claims recite (e.g., “wherein the second signal is at least one of
`
`generated by a second control device and transmitted from a second control
`
`device” (emphasis added) as in claim 3, and similarly in claims 73 and 205).
`
`11
`
`
`
`
`
`Further, Frossard’s server 1-resource 2 (e.g., server-transmitter) architecture
`
`mirrors the server 952-transmitter 957 architecture of FIG. 11B of the ’076 Patent.
`
`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. Because the
`
`independent claims cover the server computer 952-transmitter 957 architecture, as
`
`explained above, then Frossard’s server 1-resource 2 architecture necessarily
`
`discloses the features of the independent claims. This conclusion is illustrated
`
`below.
`
`Claims 3 and 73
`wherein the second signal is at least one of generated by a second control device
`and transmitted from a second control device.
`Claim 205
`transmitting a second signal from the second control device to a third control
`device.
`FIG. 11B of the ’076 Patent
`
`FIG. 1 of Frossard
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`12
`
`
`
`
`
`
`
`(4) Patent Owner’s misapplies Petitioner’s analysis of Pagliaroli.
`
`The Response asserts that if Pagliaroli’s mobile telephone signal transmitter
`
`46 is a control device, then Frossard’s resource 2 must also be a control device.
`
`(Paper 21, p. 20). This assertion is incorrect because the two are different.
`
`As explained above, Frossard’s resource 2 transmits—unchanged—order
`
`message M generated by server 1. To the contrary, Pagliaroli’s transmitter 46
`
`generates and transmits a signal code that is different from the dialed phone
`
`number it receives.
`
`Specifically, in response to a dialed phone number, Pagliaroli’s mobile
`
`telephone signal transmitter 46 generates and transmits a signal code 40 that
`
`“encompass[es] the actual phone number of the mobile telephone plus an
`
`additional signal code that distinguishes an automobile disabling code from a
`
`common mobile telephone incoming call signal.” (Exhibit 1006, 5:9-14; see also
`
`id. 4:65-5:4) (emphasis added). Thus, Pagliaroli’s mobile telephone signal
`
`transmitter 46 does not simply transmit the dialed phone number that it receives.
`
`The Petition consistently and properly applies these technical teachings of
`
`Frossard and Pagliaroli. It demonstrates that Frossard’s resource 2 transmits,
`
`without changing, an order message M generated by server 1. (Paper 1, pp. 13-14).
`
`It also demonstrates that Pagliaroli’s mobile telephone signal transmitter 46
`
`13
`
`
`
`
`
`generates and transmits a signal code by changing a received dialed phone number.
`
`(Id. pp. 39-41).
`
`The Response mischaracterizes the Petition’s reliance on Frossard and
`
`Pagliaroli by attempting to equate Frossard’s resource 2 to Pagliaroli’s mobile
`
`telephone signal transmitter 46, whereas the Petition makes a clear distinction
`
`between the two.
`
`The Response also inconsistently applies Pagliaroli. When analyzing
`
`Frossard, it argues Pagliaroli’s mobile telephone signal transmitter 46 must be a
`
`control device. (Paper 21, p. 20). But, when analyzing Pagliaroli, Patent Owner
`
`contradicts itself, asserting that Pagliaroli’s mobile telephone signal transmitter 46
`
`cannot be a control device. (Id. p. 27). Patent Owner cannot have it both ways.
`
`(5) Frossard’s receiver/decoder circuits 4 are not an interface.
`
`The Response maintains the previous position of the preliminary response
`
`that “the receiver/decoder circuits 4 of Frossard is merely an interface….” (Paper
`
`21, p. 16). The Board properly rejected this position in its decision to institute trial.
`
`(Paper 10, pp. 14-15).
`
`In addition to the reasons in the Board’s institution decision and in the
`
`Petition (Paper 1, pp. 10-12), Petitioner points to Frossard’s equipment interface 5
`
`of FIG. 2, described in the first and second paragraphs of page 8. Equipment
`
`interface 5 is an interface between the receiver/decoder circuits 4 and the vehicle
`
`14
`
`
`
`
`
`systems. Thus, this interface is an additional reason why Frossard’s
`
`receiver/decoder circuits 4 are not merely an interface. Instead, Frossard’s
`
`receiver/decoder circuits 4 are a control device that utilizes equipment interface 5
`
`to interface with the vehicle systems.
`
`
`
`(Exhibit 1005, FIG. 2) (annotation added).
`
`C. Ground 6- Petition properly applies Pagliaroli as a base reference.
`Claims 3 and 73 recite a third control device located at a vehicle. Claim 205
`
`recites a first control device located at a vehicle. Petitioner refers herein to such
`
`15
`
`
`
`
`
`control devices as a “vehicle control device” and the outputted signals as a “vehicle
`
`signal.”
`
`The Response argues that Pagliaroli does not disclose the claimed “vehicle
`
`control device” that transmits a “vehicle signal.” (Paper 21, pp. 27-35). Patent
`
`Owner’s argument can be summarized in the below illustration, and is incorrect as
`
`shown below.
`
`Claims 3, 73, and 205
`
`Patent Owner’s application of Pagliaroli
`
`
`
`
`
`(1) Patent Owner’s argument fails under its proposed claim construction.
`
`Patent Owner improperly attempts to limit “vehicle control device” in a way
`
`that contradicts its own proposed claim construction. Even under the proposed
`
`construction, Pagliaroli discloses the recited vehicle control device.
`
`Patent Owner’s proposed claim construction of “control device” includes a
`
`control device having multiple parts. In contrast, Patent Owner argues that because
`
`Pagliaroli has two parts (receiver 14 and control unit 16), then one part can be a
`
`vehicle control device, but the other part must be a separate, intermediate device.
`
`16
`
`
`
`
`
`(Paper 21, pp. 29-31 and 33-34). But as explained above in Part III.B.1, a device
`
`can have multiple parts. Thus, Petitioner is correct that Pagliaroli’s receiver 14 and
`
`unit 16 meet the “vehicle control device” limitation.
`
`(2) Patent Owner’s argument contradicts the specification of the ’076 Patent.
`
`The specification of the ’076 Patent does not support Patent Owner’s
`
`argument that a receiver and a control unit cannot form a vehicle control device.
`
`The specification never uses the term “control device.” Instead, FIG. 11B of
`
`the ’076 Patent illustrates a three device architecture for controlling vehicle
`
`systems. The claimed “vehicle control device” includes two illustrated parts: a
`
`receiver 3 and a central processing unit (CPU) 4. Detailed descriptions of the
`
`receiver 3 and CPU 4 are found under FIG. 1. Specifically, “[i]t is also envisioned
`
`that the apparatus 1 may be installed in the motor vehicle….” (Exhibit 1001, 24:9-
`
`11). The “apparatus 1 also comprises a receiver 3, for receiving the signals….” (Id.
`
`22:45-46). “The apparatus 1 also comprises a controller or a central processing unit
`
`CPU 4 (CPU 4), which is electrically connected with the receiver 3… and which
`
`receives, or reads, whichever the case may be, the digital signal or signals, or
`
`portions thereof, which are received by the receiver 3 and/or generated by the
`
`receiver 3 in response to the received signal.” (Id. 23:48-53). FIGS. 6A and 6B
`
`further describe the interaction between the receiver 3 and CPU 4. “Upon receipt
`
`of the command code by the receiver 3, the command code is then transmitted to,
`
`17
`
`
`
`
`
`or read by, the CPU 4….. The CPU 4 will then…. perform a processing routine in
`
`order to identify the command code which has been entered.” (Id. 39:2-6).
`
`Subsequently, the CPU 4 “issue[s] a disabling signal to the vehicle fuel pump
`
`system 9….” (Id. 41:10-11).
`
`Accordingly, the ’076 Patent describes that, in response to a command code
`
`received by the receiver 3, the CPU 4 reads the command code, performs a
`
`processing routine, and issues a disabling signal.
`
`In contrast, Patent Owner’s argument contradicts the specification of the
`
`’076 Patent. By arguing that Pagliaroli’s receiver 14 and central unit 16 cannot be
`
`the claimed “vehicle control device,” Patent Owner ignores that the specification
`
`undercuts its argument by disclosing a vehicle control device that includes two
`
`separate parts, just like Pagliaroli’s two parts.
`
`In addition, nowhere does the ’076 Patent describe a vehicle control device
`
`that does not use receiver 3 and CPU 4. Accordingly, the ’076 Patent does not
`
`enable any vehicle control device that has only one of these two parts. Thus, Patent
`
`Owner’s argument that attempts to distinguish over Pagliaroli is simply an attempt
`
`to capture claim scope for an invention that he did not invent.
`
`(3) Patent Owner’s misapplies Mr. McNamara’s testimony.
`
`The Cross-Examination does not support Patent Owner’s argument about
`
`Mr. McNamara opining that Pagliaroli’s receiver 14 must be a complex receiver.
`
`18
`
`
`
`
`
`Patent Owner misapplies a single statement of Mr. McNamara to advance
`
`the argument that Pagliaroli’s receiver 14 is complex and, thus, sends a third signal
`
`to the control unit 16, as opposed to forwarding the received second signal to the
`
`control unit 16. (Paper 21, p. 29).
`
`However, Mr. McNamara never said that Pagliaroli’s receiver 14 is only a
`
`complex receiver. In the Cross-Examination, Mr. McNamara’s opined multiple
`
`times that Pagliaroli’s receiver can also be a “dumb” passive device. Specifically,
`
`in response to the question “[i]sn’t it true that the comparison that we have
`
`discussed with respect to the code that is received and the code that is used is
`
`actually done in Control Unit 16 and not in Receiver 14,” he answered “It could be
`
`done both ways….” (Exhibit 2006, p. 255, lines 4-9). Mr. McNamara also
`
`explained “it could be just enabling the control unit, the receiver could send the
`
`data to the control unit, let the control unit make the decision.” (Id. p. 255, lines
`
`13-17). Similarly, Mr. McNamara explained that “if you have a more simpler [sic]
`
`receiver design, you might want to have that functionality [of code comparison] in
`
`the control unit and have it do the comparison.” (Id. p. 258, lines 5-13).
`
`(4) Pagliaroli discloses the “vehicle control device” and “vehicle signal.”
`
`Patent Owner’s argument that Pagliaroli’s receiver and control unit are two
`
`separate devices is incorrect because Pagliaroli’s receiver and control unit
`
`19
`
`
`
`
`
`collectively form a vehicle control device that generates and transmits a vehicle
`
`signal.
`
`As explained above, Pagliaroli’s receiver 14 and control unit 16 meet Patent
`
`Owner’s claim construction. Further, Pagliaroli describes that “a receiver 14,
`
`control unit 16… are added to the automobile” (Exhibit 1006, 3:50-52) and that
`
`“[i]t should be obvious to a person skilled in the art that these components may…
`
`be integrally formed.” (Id. 6:9-11). Thus, even under a narrow claim construction
`
`where a vehicle control device can include only one part, Pagliaroli’s receiver 14
`
`and control unit 16 meet this construction by integrally forming a single device
`
`located at a vehicle.
`
`As also demonstrated in the Petition, Pagliaroli’s receiver 14 receives and
`
`forwards a signal code to control unit 16 that, in turn, generates and transmits
`
`disabling and control signals to vehicle systems. (Id. 4:44-45; 4:66-5:7; 5:44-55).
`
`Accordingly, when viewed as a whole (e.g., when integrated as a single
`
`device as disclosed at 6:9-11), Pagliaroli’s receiver 14 and control unit 16 fit this
`
`proposed claim construction. Like any other device, these two parts interact such
`
`that the control device, as a whole, receives a signal code 40, and generates and
`
`transmits disabling and control signals to vehicle systems/devices (e.g., starter,
`
`emergency lights). Pagliaroli’s receiver 14 is a part of the claimed “vehicle control
`
`device,” where this part performs an operation, an action, or a function of receiving
`
`20
`
`
`
`
`
`a signal code 40 (the claimed second signal) from telephone signal transmitters 46
`
`(the claimed second control device). Pagliaroli’s control unit 16 is also a part of the
`
`claimed “vehicle control device,” where this part performs an operation, an action,
`
`or a function of generating and transmitting the vehicle signal in response to the
`
`signal code 40.
`
`Therefore, Pagliaroli’s receiver 14 and control unit 16 collectively form the
`
`claimed “vehicle control device,” where receiver 14 and control unit 16
`
`collectively receive the signal code 40 (the claimed second signal) and generate
`
`and transmit the vehicle signal. That is exactly what the independent claims recite
`
`(e.g., “wherein the first control device is responsive to a second signal” and
`
`“wherein the first control device at least one of generates and transmits a first
`
`signal…” as in claim 3, and similarly in claims 73 and 205).
`
`The above receiver-control unit architecture is the same as or equivalent to
`
`the server receiver 3-CPU 4 architecture of FIG. 11B of the ’076 Patent. Pagliaroli
`
`explains that “a receiver 14, control unit 16… are added to the automobile.”
`
`(Exhibit 1006, 3:50-52). “The signal codes 40 received by the receiver 14 are
`
`forwarded to the control unit 16.” (Id. 4:44-45). Thus, Pagliaroli’s receiver 14
`
`corresponds to the receiver 3 the ’076 Patent because both parts are located at a
`
`vehicle and receive signals from a remote control device (e.g., the claimed second
`
`control device).
`
`21
`
`
`
`
`
`Pagliaroli also describes that its “control unit 16 recalls the enabling and
`
`disabling code from the memory source 58 and compares the recalled codes with
`
`input code read from the receiver 14… . If the input code matches the disabling
`
`code, disabling signals 60, 62 are sent to the starter 20 and ignition system 22….”
`
`(Id. 5:44-49). Thus, Pagliaroli’s control unit 16 corresponds to the CPU 4 of the
`
`’076 Patent because both parts are located at a vehicle transmit the claimed vehicle
`
`signal.
`
` Because the independent claims cover the receiver 3-CPU 4 architecture,
`
`Pagliaroli’s receiver-control unit architecture discloses the claimed features. This
`
`conclusion is illustrated below.
`
`Claims 3 and 73
`wherein the first control device at least one of generates the first signal and
`transmits the first signal in response to a second signal.
`Claim 205
`at least one generating a third signal with the third control device and transmitting
`a third signal from the third control device… in response to the second signal.
`FIG. 11B of the ’076 Patent
`FIG. 1 of Pagliaroli
`
`22
`
`
`
`
`
`
`
`
`
`
`
`(5) Patent Owner improperly applies Petitioner’s analysis of Pagliaroli.
`
`The Response incorrectly asserts that if Pagliaroli’s mobile telephone signal
`
`transmitter 46 is a control device, then control unit 16 must also be a control
`
`device. (Paper 21, p. 32).
`
`Here, Patent Owner simply equates the mobile telephone signal transmitter
`
`46 to the control unit 16, but provides no technical or legal basis for doing so. In
`
`contrast, the Petition demonstrates that each of the mobile telephone signal
`
`transmitters 46 and the control unit 16 (along with the receiver 14) is a control
`
`device, where both control devices perform different operations. (Paper 1, pp. 36-
`
`42).
`
`(6) Pagliaroli’s mobile telephone signal transmitter 46 is not a relay.
`
`The Response maintains the previous position of the preliminary response
`
`that “the mobile telephone signal transmitter 46 of Pagliaroli is merely a relay in a
`
`communication network….” (
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
