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` Paper 10
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` Date: January 6, 2016
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`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 IPR2015-01509
`Patent 6,549,130 B1
`____________
`
`
`Before HOWARD B. BLANKENSHIP, STACEY G. WHITE, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`I.
`
`INTRODUCTION
`
`Petitioner, Nissan North America, Inc., filed a Petition to institute an
`inter partes review of claims 26, 29, 30, 33, 42, 43, 48, 60, and 68 (“the
`challenged claims”) of U.S. Patent No. 6,549,130 B1 (“the ’130 patent”).
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`Paper 1 (“Pet.”). Patent Owner, Joao Control & Monitoring Systems, LLC,
`filed a Preliminary Response pursuant to 35 U.S.C. § 313. Paper 9 (“Prelim.
`Resp.”).
`We have authority to determine whether to institute an inter partes
`review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Upon consideration of the
`Petition and the Preliminary Response, and for the reasons explained below,
`we determine that the information presented shows a reasonable likelihood
`that Petitioner would prevail with respect to claims 26, 29, 30, 33, 42, 43,
`48, 60, and 68. See 35 U.S.C. § 314(a). Accordingly, we institute an inter
`partes review of these claims.
`
`A.
`
`Related Matters
`
`Petitioner and Patent Owner indicate that the ’130 patent or related
`patents have been asserted in the following proceedings: (1) Joao v. Nissan
`North America, Inc., No. 1-14-cv-00523 (D. Del.); (2) Joao v. City of
`Yonkers, No. 1-12-cv-07734 (S.D.N.Y.); (3) Joao v. Chrysler Corp., No. 4-
`13-cv-13957 (E.D. Mich.); (4) Joao v. Volkswagen Group of America, Inc.,
`No. 1-14-cv-00517 (D. Del.); (5) Joao v. Protect America, Inc., No. 1-14-cv-
`00134 (W.D. Tex.); (6) Joao v. Cox Communications, Inc., No. 1-14-cv-
`00520 (D. Del.); (7) Joao v. Time Warner Cable, Inc., No. 1-14-cv-00524
`(D. Del.); (8) Joao v. Verizon Communications, Inc., No. 1-14-cv-00525 (D.
`Del.); (9) Joao v. Slomin’s Inc., No. 2-14-cv-02598 (E.D.N.Y.); (10) Joao v.
`LifeShield, Inc., No. 2-15-cv-02772 (E.D. Pa.); (11) Icontrol Networks, Inc.
`v. Joao, No. 1-15-cv-00755 (W.D. Tex.); (12) Joao v. Telular Corp., No. 14-
`cv-09852 (N.D. Ill.); (13) Joao v. Comverge, Inc., No. 14-cv-03862;
`(14) Joao of California, LLC v. ACTI Corp., No. 8-10-cv-01909 (C.D. Cal.);
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`(15) Joao of California, LLC v. Sling Media, Inc., No. 3-11-cv-06277 (C.D.
`Cal.); (16) Joao v. Ford Motor Co., No. 4-12-cv-14004 (E.D. Mich.);
`(17) Joao v. Chrysler Corp., No. 1-13-cv-00053 (S.D.N.Y.); (18) Joao v.
`Ford Motor Co., No. 4-13-cv-13615 (E.D. Mich.); (19) Joao v. Jaguar Land
`Rover North America LLC, No. 1-13-cv-00507 (D. Del.); (20) Joao v.
`Mitsubishi Motors North America Inc., No. 1-13-cv-00614 (D. Del.);
`(21) Joao v. Mazda Motor of America Inc., No. 1-13-cv-00728 (D. Del.);
`(22) Joao v. Vivint Inc., No. 1-13-cv-00508 (D. Del.); (23) Joao v. Lowe’s
`Cos., Inc., No. 5-13-cv-00056 (W.D.N.C.); (24) Joao v. FrontPoint Security
`Solutions LLC, No. 1-13-cv-01760 (D. Del.); (25) Alarm.com Inc. v. Joao,
`No. 1-14-cv-00284 (D. Del.); (26) Joao v. Cenuco, Inc., No. 7-05-cv-01037
`(S.D.N.Y.); (27) Joao v. Xanboo, Inc., No. 2-12-cv-3698 (C.D. Cal.);
`(28) Joao v. Ford Motor Co., No. 1-12-cv-01479 (D. Del.); (29) Joao v.
`Ford Motor Co., No. 2-12-cv-00033 (C.D. Cal.); (30) Joao v. Hyundai
`Motor America, No. 8-12-cv-00007 (C.D. Cal.); (31) Joao v. Consolidated
`Edison, Inc., No. 1-14-cv-00519 (D. Del.); (32) Joao v. Honda Motor Co.,
`Inc., No 2-12-cv-04013 (C.D. Cal.); (33) Xanboo Inc. v. Joao of California,
`No. 8-11-cv-00604 (C.D. Cal.); (34) Joao v. Cablevision Systems Corp., No
`1-14-cv-00518 (D. Del.); (35) Joao v. DirecTV, No. 1-14-cv-00521 (D.
`Del.); (36) Joao v. DISH Network Corp., No. 1-14-cv-00522 (D. Del.); and
`(37) Joao v. Mobile Integrated Solutions LLC, No. 14-cv-2643 (D. Ariz.).
`Exs. 1016–1018; Paper 5.
`According to Petitioner and Patent Owner, the ’130 patent and several
`related patents are the subject of four ex parte reexaminations,
`Reexamination Control Nos.: (1) 90/013,303; (2) 90/013,301; (3)
`90/013,302; and (4) 90/013,300. Exs. 1016–1018; Paper 5. Petitions have
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`been filed in regards to the ’130 patent and several related patents requesting
`inter partes review of U.S. Patent Nos.: (1) 6,542,076 (Case IPR2015-
`01478); (2) 7,397,363 (Case IPR2015-01482); (3) 7,397,363 (Case
`IPR2015-01485); (4) 6,549,130 (Case IPR2015-01486); (5) 6,542,076 (Case
`IPR2015-01508); (6) 6,549,130 (Case IPR2015-01509); (7) 5,917,405 (Case
`IPR2015-01585); (8) 6,542,076 (Case IPR2015-01610); (9) 6,549,130 (Case
`IPR2015-01611); (10) 7,397,363 (Case IPR2015-01612); (11) 5,917,405
`(Case IPR2015-01613); (12) 7,397,363 (Case IPR2015-01645);
`(13) 6,549,130 (Case IPR2015-01760); (14) 7,397,363 (IPR2015-01762);
`(15) 6,542,077 (Case IPR2015-01466); (16) 6,587,046 (Case IPR2015-
`01477); and (17) 7,277,010 (Case IPR2015-01484). Exs. 1016–1018; Paper
`5.
`
`B.
`
`The Asserted Grounds
`
`Petitioner identifies the following as asserted grounds of
`unpatentability:
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`Reference(s)
`
`Basis
`
`Frossard (Ex. 1005)1
`
`§ 102(a)2
`
`Challenged Claim(s)
`26, 29, 33, 42, 48,
`and 68
`
`Frossard and
`Pagliaroli (Ex. 1006)3
`Frossard and Simms
`(Ex. 1007)4
`
`§ 103(a)
`
`30 and 43
`
`§ 103(a)
`
`60
`
`Pagliaroli
`
`Pagliaroli and
`Frossard
`
`§ 102(e)
`
`26, 29, 30, 42, 43,
`and 48
`
`§ 103(a)
`
`33 and 68
`
`Pagliaroli and Simms
`
`§ 103(a)
`
`60
`
`
`
`C.
`
`The ’130 Patent
`
`The ’130 patent is directed to controlling a vehicle or premises. Ex.
`1001, Abs. The ’130 patent describes three control devices; a first control
`device is located at a vehicle or premises, a second control device is located
`remote from the vehicle or premises, and a third control device is located
`remote from the vehicle or premises and remote from the second control
`device. Id. The first control device generates a first signal in response to a
`second signal from the second control device. Id. The first control device
`
`1 European Patent Application Publication No. 0 505 266 A1, published
`March 17, 1992.
`2 The relevant sections of the Leahy-Smith America Invents Act (“AIA”),
`Pub. L. No. 112–29, took effect on March 16, 2013. Because the application
`from which the ’130 patent issued was filed before that date, our citations to
`Title 35 are to its pre-AIA version.
`3 U.S. Patent No. 5,276,728, filed Nov. 6, 1991.
`4 U.S. Patent No. 5,334,974, filed Feb. 6, 1992.
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`can activate, de-activate, disable or re-enable, one or more of “a respective
`system, component, device, equipment, equipment system, and/or appliance,
`of a respective vehicle or premises with the first signal.” Id. The second
`control device generates the second signal in response to a third signal from
`the third control device. Id. The “second control device is at least one of a
`server computer, a computer, and a network computer.” Id. at 81:19–21. In
`addition,
`
`the third control device is at least one of a
`stationary device, a portable device, a hand-held
`device, a mobile device, a telephone, a cordless
`telephone, a cellular telephone, a home computer,
`a personal computer, a personal digital assistant, a
`television, an
`interactive
`television, a digital
`television, a personal communications device, a
`personal communications services device, a
`display telephone, a video telephone, a watch, and
`a two-way pager.
`Id. at 81:21–29.
`
`D.
`
`The Challenged Claims
`
`Petitioner challenges claims 26, 29, 30, 33, 42, 43, 48, 60, and 68.
`Pet. 2–3. Claims 26, 42, and 48 are independent. Claim 26 is illustrative
`and reproduced below:
`26. A control apparatus, comprising:
`a first control device, wherein the first control device at least
`one of generates 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 component, a vehicle device, a
`vehicle equipment, a vehicle equipment system, and a vehicle
`appliance, of a vehicle, wherein the first control device is
`located at the vehicle, wherein the first control device is
`responsive to a second signal, wherein the second signal is at
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`least one of generated by 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, and further wherein the second signal is
`automatically received by the first control device,
`wherein the second control device is responsive to a third
`signal, wherein the third signal is at least one of generated by
`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,
`wherein 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, is at least one of a
`vehicle ignition system, a vehicle fuel pump system, a vehicle
`alarm system, a vehicle door locking device, a vehicle hood
`locking device, a vehicle trunk locking device, a wheel locking
`device, a brake locking device, a horn, a vehicle light, a vehicle
`lighting system, a refrigerator, an air conditioner, an oven, a
`vehicle window locking device, a video recording device, an
`audio recording device, a camera, an intercom device, a
`microphone, a locking device, a monitoring device for
`monitoring at least one of fuel supply, water or coolant supply,
`generator operation, alternator operation, battery charge level,
`and engine temperature, fire extinguishing equipment, radar
`equipment, hydraulic equipment, pneumatic equipment, a
`winch, a self-defense system, a weapon system, a gun, an
`electronic warfare system, a pumping device, sonar equipment,
`a locking device for preventing unauthorized access to a vehicle
`compartment, and landing gear.
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`
`II. ANALYSIS
`
`A.
`
`Claim Construction
`
`As acknowledged by the parties, the ’130 patent has expired. See Pet.
`8; Prelim. Resp. 10. We construe expired patent claims according to the
`standard applied by the district courts. See In re Rambus Inc., 694 F.3d 42,
`46 (Fed. Cir. 2012). Specifically, we apply the principles set forth in
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). “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 and Patent Owner agree on the construction of “interface
`device.” Pet. 8–9; Prelim. Resp. 18. Patent Owner, however, also argues
`that the terms “remote” and “located at” are defined expressly in the
`prosecution history of at least two related applications; however, we are not
`persuaded that express construction of “interface device,” “remote,”, and
`“located at” are necessary in order to resolve the disputes currently before
`us. See Prelim. Resp. 18, 39. 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
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`construed that are in controversy, and only to the extent necessary to resolve
`the controversy.”).
`We recognize, however, a need to provide an express construction for
`“control device.” Petitioner and Patent Owner agree that the term “control
`device” is defined expressly in the prosecution history of a related
`application. Pet. 36 n.1; Prelim. Resp. 18. Patent Owner seeks to rely upon
`a statement made in the remarks filed on 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 ’130 patent. See Ex. 1001,
`at [45] (April 15, 2003 issuance date). The ’130 patent and the ’363 patent
`each descend from U.S. Patent Application Nos. 08/683,828 and 08/622,749.
`See Ex. 1001, 73.
`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. Thus, we
`adopt the following construction for purposes of this decision.
`
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`Term
`Control
`Device
`
`Citations
`Pet. 36 n.1;
`Prelim.
`Resp. 18;
`Ex. 2002, 6
`
`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.
`
`B.
`
`Alleged Anticipation of Claims 26, 29, 33, 42, 48, and 68 by Frossard
`
`1.
`
`Frossard (Ex. 1005)
`
`Frossard describes a system for controlling shut down of movable or
`mobile equipment and locating the movable or mobile equipment. Ex. 1005,
`2:1–2. Figure 1 is reproduced below.
`
`
`Figure 1 illustrates movable or mobile equipment 3 containing
`receiver-decoder circuits 4 for an order message to shut down movable or
`mobile equipment 3. Id. at 5:7–12. In addition, Figure 1 shows a scenario in
`which equipment 3 is stolen, the owner or authorized person calls server 1 to
`communicate a shut down order of equipment 3. Id. at 9:14–17. After
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`server 1 validates the shut down order, the shut down order is transmitted to
`equipment 3. Id. at 9:23–24. Figure 2, which is reproduced below, provides
`a more detailed explanation of how equipment 3 is shut down.
`
`
`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 shut down of equipment 3. Id. at 9:28–10:3.
`When shut down of equipment 3 occurs, an electrical contact that activates
`the starter is broken. Id. at 10:13–21.
`
`2.
`
`The Parties’ Contentions for Claims 26, 29, 33, 42, 48, and 68
`
`Petitioner asserts that the subject matter of claims 26, 29, 33, 42, 48,
`and 68 is anticipated by Frossard under 35 U.S.C. § 102(a). Pet. 9–24.
`Petitioner provides a limitation-by-limitation analysis of where each
`limitation of claims 26, 29, 33, 42, 48, and 68 allegedly is disclosed in
`Frossard. Id.
`We are persuaded that the present record supports the contention that
`Frossard discloses a system for controlling shut down of a motor vehicle and
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`locating the motor vehicle, which discloses the limitations in claims 26, 42,
`and 48. See Pet. 9–23 (citing Ex. 1005) (pinpoint citations omitted). The
`present record also sufficiently supports the contention that Frossard
`discloses the motor vehicle containing receiver-decoder circuits 4 for an
`order message to shut down the motor vehicle, which discloses the
`limitations in claims 26, 42, and 48. Pet. 9–24 (citing Ex. 1005, 5:7–12). In
`addition, the present record supports the contention that Frossard discloses
`that when motor vehicle is stolen, the owner or authorized person calls
`server 1 to communicate a shut down or restart order of motor vehicle and
`after server 1 validates the shut down or restart order; the shut down order is
`transmitted to equipment 3, which causes an electrical contact that activates
`the starter to be broken, which discloses the limitations in claims 26, 42, and
`48. Pet. 9–24 (citing Ex. 1005) (pinpoint citations omitted).
`Petitioner relies on Frossard’s addressing the corresponding
`commands to motor vehicle 3, which causes immediate or deferred shut
`down of motor vehicle 3 to disclose the limitations of claim 29. Pet. 16
`(citing Ex. 1005, 4:28–31, 9:23–27).
`Petitioner relies on Frossard’s user utilizing a telephone or Minitel to
`communicate an access code to server 1, in which server 1 transmits an
`order message to shut down motor vehicle 3 to disclose the limitations of
`claim 33. Pet. 16–17 (citing Ex. 1005, 4:18–31, Fig. 1).
`Petitioner relies on Frossard’s interface circuit between the receiver-
`decoder circuits 4 and motor vehicle components, devices, and/or equipment
`to disclose the limitations of claim 68. Pet. 23–24 (citing Ex. 1005, 8:4–13).
`Patent Owner, however, argues because “interface device” is recited
`in dependent claims 32 and 68 and “control device[s]” is recited in
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`independent claims 26, 42, and 48, the doctrine of claim differentiation
`creates a presumption that “interface device” is separate and distinct from
`“control device[s].” Prelim. Resp. 33–38. Patent Owner, thus, contends that
`Frossard’s receiver-decoder circuits 4 merely functions as an “interface
`device” because it decodes a message sent by server 1. Id. at 40–43.
`Moreover, Patent Owner contends that Frossard’s receiver-decoder circuits 4
`are interface devices rather than control devices because dependent claims
`32 and 68 recite “interface device” and claims 26, 42, and 48 recite “second
`control device.” Id. at 33–35, 43.
`Although the doctrine of claim differentiation creates a presumption
`that the “interface device” limitations in dependent claims 32 and 68 are
`different in scope than the “control device” limitations in claims 26, 42, and
`48, 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). In this case, 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” (emphasis added). Prelim. Resp. 35 (quoting Ex. 1001,
`22:30–36).
`In addition, Patent Owner relies on the Specification stating
`[a]s noted above, the use of any one or more of the
`vehicle equipment system or 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). Prelim. Resp. (quoting Ex. 1001, 24:55–61).
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`Patent Owner also relies on the Specification disclosing “interface
`devices 8, 10 and 12 may include any of the requisite interfacing circuitry
`which may be necessary to facilitate CPU 4 control over the respective
`systems which may be utilized” (emphasis added). Prelim. Resp. 36
`(quoting Ex. 1001, 25:8–11). Patent Owner additionally relies on the
`Specification disclosing “[t]he interface devices utilized . . . may be wireless
`devices or modules which need not be directly connected to the CPU [and] .
`. . hard-wired electrical connections may be unnecessary” (emphasis added).
`Prelim. Resp. 37 (quoting Ex. 1001, 15:36–41). Moreover, Patent Owner
`relies on the Specification describing “CPU 4 . . . , and/or the respective
`interface devices . . . may also be programmable by the user operator”
`(emphasis added). Prelim. Resp. 37–38 (quoting 41:67–42:3).
`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].”
`Moreover, Patent Owner acknowledges on pages 20 through 21 of the
`Preliminary Response that CPU 4, which is described in the Specification, is
`the claimed “first control device” recited in claims 26 and 48 and the
`claimed “third control device” recited in claim 42. The cited portions of the
`Specification relied upon by Patent Owner do not preclude interface device
`12 from being housed within CPU 4. Petitioner similarly contends
`Frossard’s interface device housed within receiver-decoder circuits 4
`discloses the “interface device” and the first/third “control device,” as
`recited in the challenged claims. Pet. 23–24 (citing Ex. 1005, 8:9–13, Fig.
`2).
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`Accordingly, we have reviewed the proposed ground of anticipation
`by Frossard against claims 26, 29, 33, 42, 48, and 68, and we are persuaded,
`at this juncture of the proceeding, that Petitioner has established a reasonable
`likelihood of prevailing in its challenge to claims 26, 29, 33, 42, 48, and 68
`on this ground.
`
`C.
`
`Alleged Obviousness of Claims 30 and 43 in View of Frossard and
`Pagliaroli
`
`1.
`
`Pagliaroli (Ex. 1006)
`
`Pagliaroli describes enabling or disabling remotely an automobile.
`Ex. 1006, Abs. When an automobile owner realizes their vehicle is stolen,
`the owner dials a telephone number to disable the automobile. Id. Figure 1
`is reproduced below.
`
`
`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
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`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.
`
`2.
`
`The Parties’ Contentions for Claims 30 and 43
`
`Petitioner asserts that the subject matter of claims 30 and 43 would
`have been obvious in view of Frossard and Pagliaroli under 35 U.S.C.
`§ 103(a). Pet. 24–27. Petitioner provides a limitation-by-limitation analysis
`of where each limitation of claims 30 and 43 allegedly is taught in Frossard
`and Pagliaroli. Id.
`We are persuaded that the present record supports Petitioner’s
`contention that Pagliaroli teaches monitoring the condition of an automobile
`and if theft sensor 12 on the automobile is activated, transmitter 28 transmits
`signal 42 that can notify a person of the theft, which teaches the limitations
`of claims 30 and 43. Pet. 24–25 (citing Ex. 1006, 2:39–57, 4:22–52).
`Petitioner concludes that one of ordinary skill in the art would have
`combined Frossard’s system for protecting motor vehicles using a shut down
`mechanism and Pagliaroli’s similar vehicle theft detection and vehicle
`disabling system in order to add theft sensors to provide notifications when
`the vehicle is tampered with, broken into, or stolen. Pet. 25–27.
`Patent Owner argues that Pagliaroli fails to remedy Frossard’s alleged
`deficiencies. Prelim. Resp. 43–44. On the present record, we disagree with
`Patent Owner for the same reasons discussed supra in Part II.B.2.
`We have reviewed the proposed ground challenging claims 30 and 43
`as obvious over Frossard and Pagliaroli, and we are persuaded, at this
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`juncture of the proceeding, that Petitioner has established a reasonable
`likelihood of prevailing in its challenge to claims 30 and 43 on this ground.
`
`D.
`
`Alleged Obviousness of Claim 60 in View of Frossard and Simms
`
`1.
`
`Simms (Ex. 1007)
`
`Simms describes a security system utilizing Global Position Satellite
`(“GPS”). Ex. 1007, Abs. The security system comprises a mobile unit. Id.
`The mobile unit communicates emergency data including position
`coordinates to a central dispatch station that receives the emergency data and
`displays emergency information on a digitized map at a position
`corresponding to the location of the mobile unit. Id. Central dispatch station
`40 is a database that processes the code to display the position of the mobile
`entity on the digitized map. Id. at 5:49–51, 5:62–68, 12:37–41, 12:51–13:9.
`
`2.
`
`The Parties’ Contentions for Claim 60
`
`Petitioner asserts that the subject matter of claim 60 would have been
`obvious in view of Frossard and Simms under 35 U.S.C. § 103(a). Pet. 27–
`32. Petitioner provides a limitation-by-limitation analysis of where each
`limitation of claim 60 allegedly is taught in Frossard and Simms. Id.
`We are persuaded that the present record supports Petitioner’s
`contention that Simms’s mobile unit 32 using GPS that communicates
`position coordinates to a central dispatch database station 40 that receives
`and displays the information on a digitized map at a position corresponding
`to the location of the mobile unit teaches or suggest the limitations of claim
`60. Pet. 27–32 (citing Ex. 1007) (pinpoint citations omitted).
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`Petitioner concludes that one of ordinary skill in the art would have
`combined Frossard’s system for protecting motor vehicles using a shut down
`mechanism and Simms’s mobile unit using GPS communicating position
`coordinates to a database station that displays the position on a digitized map
`in order to provide more accurate location information on a digital map. Pet.
`30–32.
`Patent Owner argues that Simms fails to remedy Frossard’s alleged
`deficiencies. Prelim. Resp. 44. On the present record, we disagree with
`Patent Owner for the same reasons discussed supra in Part II.B.2.
`We have reviewed the proposed ground challenging claim 60 as
`obvious over Frossard and Simms, and we are persuaded, at this juncture of
`the proceeding, that Petitioner has established a reasonable likelihood of
`prevailing in its challenge to claim 60 on this ground.
`
`E.
`
`Alleged Anticipation of Claims 26, 29, 30, 42, 43, and 48 by
`Pagliaroli
`
`Petitioner asserts that the subject matter of claims 26, 29, 30, 42, 43,
`and 48 is anticipated by Pagliaroli under 35 U.S.C. § 102(e). Pet. 32–50.
`Petitioner provides a limitation-by-limitation analysis of where each
`limitation of claims 26, 29, 30, 42, 43, and 48 allegedly is disclosed in
`Pagliaroli. Id.
`The present record supports the contention that Pagliaroli discloses
`enabling or disabling remotely an automobile, which discloses the
`limitations in claims 26, 42, and 48. Pet. 32–50 (citing Ex. 1006) (pinpoint
`citations omitted). The present record also supports the contention that
`Pagliaroli discloses a user dialing telephone 48 to connect to receiver 14 via
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`transmitter 46 to disable the automobile, which discloses the limitations in
`claims 26, 42, and 48. Pet. 32–50 (citing Ex. 1006, 5:7–12). In addition, the
`present record supports the contention that Pagliaroli discloses that control
`unit 16 receives signal code 40 from receiver 14 to disable starter 20,
`ignition system 22, the operation of the automobile, and sends a signal
`activating emergency lights 24 or license plate lights 26 to identify to police
`that the automobile is stolen, which discloses the limitations in claims 26,
`42, and 48. Pet. 32–50 (citing Ex. 1005) (pinpoint citations omitted).
`Petitioner relies on Pagliaroli’s disabling starter 20, ignition system
`22, the operation of the automobile, and sending a signal activating
`emergency lights 24 or license plate lights 26 to identify to police that the
`automobile is stolen to disclose the limitations of claim 29. Pet. 41–42
`(citing Ex. 1006, 2:40–42, 4:44–45, 4:66–5:7, 5:44–58).
`Petitioner relies on Pagliaroli’s monitoring the condition of an
`automobile and if theft sensor 12 on the automobile is activated, transmitter
`28 transmits signal 42 that can notify a person of the theft to disclose the
`limitations of claims 30 and 43. Pet. 24–25, 49–50 (citing Ex. 1006, 3:27–
`32, 3:40–52, 4:22–52, and 5:44–57).
`Patent Owner, however, argues that Pagliaroli’s transmitter 46 cannot
`serve as and cannot function as a “second control device” because the
`Specification of the ’130 patent makes it clear and unequivocal that
`Pagliaroli’s transmitter 46 is actually part of a communication system or
`network. Prelim. Resp. 21–33, 44–46.
`As discussed supra in Part II.A., Patent Owner, however,
`acknowledged that “control device” should be construed as “a device or a
`computer, or that part of a device or a computer, which performs an
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`operation, an action, or a function, or which performs a number of
`operations, actions, or functions.” Petitioner similarly contends Pagliaroli’s
`user using telephone 48 generates and transmits the signal code 40 by
`dialing a phone number causing transmitter 46 to transmit signal code 40;
`Pagliaroli’s transmitter 46 transmitting signal code 40 is “a device . . . ,
`which performs an operation, an action, or a function,” which discloses
`Patent Owner’s definition of “second control device.” Pet. 32–50 (citing Ex.
`1006, 4:53–5:7, Fig. 1).
`Accordingly, we have reviewed the proposed ground of anticipation
`by Pagliaroli against claims 26, 29, 30, 42, 43, and 48, and we are
`persuaded, at this juncture of the proceeding, that Petitioner has established a
`reasonable likelihood of prevailing in its challenge to claims 26, 29, 30, 42,
`43, and 48 on this ground.
`
`F.
`
`Alleged Obviousness of Claims 33 and 68 in View of Pagliaroli and
`Frossard
`
`Petitioner asserts that the subject matter of claims 33 and 68 would
`have been obvious in view of Pagliaroli and Frossard under 35 U.S.C.
`§ 103(a). Pet. 51–53, 56–58. Petitioner provides a limitation-by-limitation
`analysis of where each limitation of claims 33 and 68 allegedly is taught in
`Pagliaroli and Frossard. Id.
`The present record supports Petitioner’s contention that Pagliaroli
`teaches transmitting signal code 40 to disable an automobile and Frossard
`teaches a user utilizing a telephone or Minitel to communicate an access
`code to server 1, in which server 1 transmits an order message to shut down
`motor vehicle 3; Petitioner contends these cited portions teach the
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`limitations of claim 33. Pet. 51–53 (citing Exs. 1005–1006) (pinpoint
`citations omitted).
`We are persuaded that the present record supports Petitioner’s
`contention that Frossard teaches interface circuit between the receiver-
`decoder circuits 4 and motor vehicle components, devices, and/or
`equipment, which teaches the limitations of claim 68. Pet. 56–58 (citing Ex.
`1005, 8:4–13).
`Petitioner concludes that one of ordinary skill in the art would have
`combined Pagliaroli’s vehicle theft detection and vehicle disabling system
`and Frossard’s similar system for protecting motor vehicles using a shut
`down mechanism in order to enable automatic activation when the vehicle is
`stolen. Pet. 51–53, 57–58.
`Patent Owner argues that Frossard fails to remedy Pagliaroli’s alleged
`deficiencies. Prelim. Resp. 46. On the present record, we disagree with
`Patent Owner for the same reasons discussed supra in Part II.E.
`We have reviewed the proposed ground challenging claims 33 and 68
`as obvious over Pagliaroli and Frossard, and we are pers