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 No. 6,549,130
`
`
`
`
`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 IPR2015-01509
`Patent No. 6,549,130
`
`
`
`
`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 PATENT OWNER’S ARGUMENTS ................................. 2
`
`A.
`
`B.
`
`C.
`
`Full weight should be given to the declaration of
`Petitioner’s Expert. ................................................................................ 2
`
`Ground 1- Petition properly applies Frossard as a base
`reference. ............................................................................................... 7
`
`Ground 2- Frossard in view of Pagliaroli discloses claim
`30. ........................................................................................................ 14
`
`D. Ground 3- Frossard in view of Simms discloses claim 60. ................. 15
`
`E.
`
`F.
`
`Ground 4- Petition properly applies Pagliaroli as a base
`reference. ............................................................................................. 16
`
`Ground 5- Pagliaroli in view of Frossard discloses claims
`33 and 68. ............................................................................................ 24
`
`G. Ground 6- Pagliaroli in view of Simms discloses claim
`60. ........................................................................................................ 24
`
`IV. CONCLUSION .............................................................................................. 24
`
`
`
`
`
`i
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`Cases
`Ball Aerosol v. Ltd. Brands, 555 F.3d 984, 89 USPQ2d 1870 (Fed. Cir. 2009). ................ 15
`
`Google Inc. and Twitter, Inc. v. EveryMD.com LLC, IPR2014-00347 (May 22, 2014)
` ................................................................................................................................................ 10
`
`KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
` ................................................................................................................................................ 15
`
`
`
`
`
`
`ii
`
`
`
`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. 09/277,935
`
`
`
`Exhibit 1019
`
`Exhibit 1020
`
`iii
`
`
`
`INTRODUCTION
`
`
`
`I.
`
`Petitioner Nissan North America, Inc. (“Petitioner”) submits this Reply to
`
`Patent Owner’s Response (the “Response,” Paper 20) to the Petition (the “Petition,”
`
`Paper 1) for Inter Partes Review (“IPR”) of U.S. Patent No. 6,549,130 (the “’130
`
`Patent,” Exhibit 1001).
`
`Patent Owner’s proposed claim construction of additional claim terms is not
`
`needed. Patent Owner’s arguments are also without merit. All grounds presented in
`
`the Petition and instituted by the Board properly demonstrate that the challenged
`
`claims are not novel and/or are obvious.
`
`II. CLAIM CONSTRUCTION
`
`For the purpose of this IPR proceeding, Petitioner does not contest the
`
`Board’s construction of “control device,” and its application of the plain and ordinary
`
`meaning to the remaining terms.1 (See Paper 10, pp. 8-10).
`
`Patent Owner requests to adopt the claim construction of the U.S. District
`
`Court for the Eastern District of Michigan for additional claim terms. (See Paper 20, p.
`
`15). Petitioner recognizes that the District Court invalidated all of the asserted claims
`
`of the ’130 Patent and found that Frossard discloses the three control device system
`
`recited in independent claim 48. (See Exhibit 1019, pp. 14-16, 19-23, and 35).
`
`1 Petitioner reserves all rights to propose constructions for additional terms in
`
`litigation or other proceedings.
`
`1
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`
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`
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`III. RESPONSE TO PATENT OWNER’S ARGUMENTS
`
`A.
`
`Full weight should be given to the declaration of Petitioner’s
`Expert.
`The Response asks the Board to give Mr. McNamara’s declaration little or no
`
`weight. (See Paper 20, pp. 16-19). Patent Owner’s allegations are baseless. Mr.
`
`McNamara reviewed all the required materials and properly interpreted the claims.
`
`(1) Petitioner’s Expert reviewed all required materials.
`
`Mr. McNamara signed his declaration on June 24, 2015. At paragraph 14 of the
`
`Declaration, Mr. McNamara states that “I have read the ’130 Patent and its prosecution
`
`history.” (Exhibit 1003, p. 6, ¶14). Nearly nine months later, Patent Owner cross-
`
`examined Mr. McNamara. During the lengthy cross-examination, 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?” Mr. McNamara answered “That’s correct.”
`
`(Id. p. 153, lines 11-15).
`
`Patent Owner improperly latches onto that statement as an admission that Mr.
`
`McNamara did not review the prosecution history. However, Patent Owner ignores
`
`other statements of Mr. McNamara, including statements showing that he had indeed
`
`reviewed the prosecution history. For example, in response to “with respect to
`
`Paragraphs 14 through 25, through 24, other than the information that is referenced
`
`in 25, is that a complete list of the information that you considered in reaching the
`
`opinions or conclusions expressed in Exhibit 1?,” Mr. McNamara answered “That is
`
`2
`
`
`
`
`
`correct.” (Id. p. 154, lines 11-20). Paragraph 14 of the Declaration states that Mr.
`
`McNamara read the prosecution history.
`
`At best, Patent Owner’s reliance on the cross-examination shows a memory
`
`lapse during a lengthy deposition. But it does not show 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 “Dr. McNamara had not reviewed the materials [the
`
`prosecution history of the ’130 Patent] required for him to properly reach his
`
`conclusions and opinions.” (Paper 20, p. 16). 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 2003, 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. Particularly, Patent Owner’s above statement
`
`about the definitions in the ’130 Patent prosecution history is irrelevant because Mr.
`
`Joao did not define any claim terms at issue during the prosecution of the ’130 Patent.
`
`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 1020, p. 26). Neither party proposed
`
`constructions for these terms. Their definitions merely reflect their plain and ordinary
`
`3
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`
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`
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`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 has actually reviewed and considered these definitions. Specifically,
`
`paragraph 20 of the declaration identifies Exhibit 1009 that includes the sections of
`
`the prosecution histories of the ’363 Patent and ’010 Patent containing the definitions.
`
`(See Exhibit 1003, pp. 6-7, ¶¶ 14 and 20). During the cross-examination, Mr.
`
`McNamara affirmed that he has reviewed these definitions. In response to “with
`
`respect to Paragraphs 14 through 25, through 24, other than the information that is
`
`referenced in 25, is that a complete list of the information that you considered in
`
`reaching the opinions or conclusions expressed in Exhibit 1?,” he answered “[t]hat is
`
`correct.” (Id. p. 154, lines 11-20).
`
`Thus, any alleged failure to review the prosecution history of ’130 patent has no
`
`weight on the claim construction. Mr. McNamara confirmed that he considered the
`
`potentially relevant portions of the prosecution history of the ’363 and ’010 Patents.
`
`(3) The claims were properly construed.
`
`4
`
`
`
`
`
`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 affirmed this application. Specifically, Mr. McNamara states that “I
`
`used the same standard through all of the four patents [including the ’130 Patent]. I
`
`used the one of ordinary and customary understanding.” (Exhibit 2003, 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. I guess that is the simple answer” (Id.
`
`p. 152, lines 22-25), to conclude that “it is not clear that he even knows what this
`
`standard is given his testimony.” (Paper 20, p. 19).
`
`Patent Owner’s reliance on this statement is misplaced. The difference between
`
`the two standards is a legal question. 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. At best, Patent Owner
`
`demonstrates that Mr. McNamara did not explain the difference between two legal
`
`standards during deposition.
`
`The Board has provided an express construction of “control device” and gave
`
`the remaining claim terms their plain and ordinary meaning. (See Paper 10, p. 10). 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. (See
`
`5
`
`
`
`
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`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, ¶ 41). 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).
`
`Further, during the cross-examination, Mr. McNamara explains his
`
`understanding of a control device. (See id. pp. 161-170). His understanding is
`
`consistent with the Board’s express construction of “control device.” For example,
`
`Mr. McNamara 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).
`
`Mr. McNamara also states that “I agree with the PTAB’s construction that control
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`device is generally something that performs an operation or function or action; the
`
`transmitter is, yes, the transmitter is performing an operation.” (Id. p. 166, lines 11-
`
`15).
`
`Thus, Mr. McNamara construed all the claim terms in a manner consistent with
`
`the Board’s claim construction under the plain and ordinary meaning standard.
`
`6
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`
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`B. Ground 1- Petition properly applies Frossard as a base reference.2
`The Petition demonstrates that Frossard discloses the control devices and signals
`
`recited in independent claims 26, 42, and 48. (Paper 1, pp. 10-15 and 18-20).
`
`Patent Owner’s argument in the Response can be summarized in the below
`
`illustration, and is incorrect as shown below.
`
`Claims 26 and 483
`
`Patent Owner’s application of Frossard
`
`
`
`
`
`(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. Even under Patent Owner’s
`
`proposed construction, Frossard discloses the recited control device.
`
`
`2 The District Court found that Frossard discloses the three control device system
`
`recited in independent claim 48. (See Exhibit 1019, pp. 14-16, 19-23, and 35).
`
`3 Claim 42 is similar, except that the nomenclature of “third” and “first” is reversed.
`
`7
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`
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`
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`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 20, pp. 14-15). 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. 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 ’130 Patent.
`
`The specification of the ’130 Patent does not support Patent Owner’s argument
`
`that a server and a transmitter cannot form a control device.
`
`The specification never uses the term “control device.” Instead, FIG. 11B of
`
`the ’130 Patent illustrates a three device architecture for controlling vehicle systems.
`
`As illustrated, the claimed “second control device” includes two 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, 50:31-38 and 45-48).
`
`8
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`
`
`
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`Specifically, the specification describes that 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. 50:35-38).
`
`“Data access and command code data… may also be transmitted by the authorized
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`user or operator, via the respective apparatus transmitters to the receiver 953 of the
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`server 952….” (Id. 50:31-34). “The server transmitter 957 can transmit control signals
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`and/or other data, including information to the authorized user or operator and to the
`
`apparatus 1 and/or to the apparatus 950.” (Id. 50:45-48).
`
`Accordingly, the specification describes that a control device includes a server
`
`and a transmitter, where the server exercises remote controls by transmitting control
`
`signals via the transmitter.
`
`In contrast, Patent Owner’s argument contradicts the specification of the ’130
`
`Patent. 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.
`
`Further, nowhere does the specification of the ’130 Patent describes a second
`
`device that is remote from a vehicle and that performs control-related operations over
`
`the vehicle, where this second device does not use 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 ’130 Patent does not enable a second
`
`9
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`
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`control device remote from the vehicle that does not include a transmitter. Thus,
`
`Patent Owner’s argument that attempts to distinguish over Frossard by alleging that
`
`the second control device excludes a transmitter has no support in the ’130 Patent.
`
`Instead, Patent Owner’s argument is simply an attempt to capture claim scope for an
`
`invention that he did not invent.
`
`(3) No weight should be given to Patent Owner’s argument.
`
`Patent Owner’s argument that Frossard’s server 1 and resource 2 cannot
`
`disclose a control device is not supported by any expert testimony. Further, Patent
`
`Owner does not provide any rationale for such a conclusion. Particularly, Patent
`
`Owner does not explain how or why Forssard’s resource 2 would transmit a third
`
`signal that is different from the second signal generated by Frossard’s server 1.
`
`Accordingly, Patent Owner’s argument is conclusory. The Board has held that
`
`conclusory assertions of lawyers are entitled to no weight. See IPR2015-00028;
`
`IPR2014-00347.
`
` (4) Frossard in fact discloses the “second control device” and “second signal.”
`
`Patent Owner’s argument that Frossard’s resource 2 is an intermediate device
`
`that generates a third signal is incorrect because Frossard’s server 1 and resource 2, as
`
`a whole, 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
`
`10
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`
`
`
`
`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
`
`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).
`
`Frossard also describes that its “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, it suffices to compare the order message
`
`M that the server generates to the order message M that the network (resource 2)
`
`transmits to conclude that the network (resource 2) transmits, without changing, the
`
`order message M to the equipment in the vehicle.
`
`When viewed as a whole, 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 message order 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 and transmitted from a second control device” (emphasis added) as in
`
`claim 26, and similarly in claims 42 and 48).
`
`11
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`
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`Further, Frossard’s server 1-resource 2 (e.g., server-transmitter) architecture is
`
`the same as or equivalent to the server 952-transmitter 957 architecture of FIG. 11B
`
`of the ’130 Patent. Frossard’s server 1 is equivalent to server 952 of the ’130 Patent
`
`because both generate a signal for remote control. Frossard’s resource 2 is equivalent
`
`to transmitter 957 of the ’130 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 herein next.
`
`Claims 26 and 48
`wherein the second signal is at least one of generated by and transmitted from a
`second control device.
`Claim 42
`transmitting a second signal from the second control device to a third control device.
`FIG. 11B of the ’130 Patent
`FIG. 1 of Frossard
`
`
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`
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`(5) Even under Patent Owner’s improperly narrow interpretation , Frossard teaches
`
`
`
`
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`the “second control device” and “second signal.”
`
`Patent Owner asserts Frossard’s server 1 and resource 2 are two separate
`
`control devices. (See Paper 20, p. 23). Even under this incorrect application of
`
`12
`
`
`
`
`
`Frossard, Frossard teaches the second control device and second signal. Specifically,
`
`under Patent Owner’s application of Frossard, Petitioner maps Frossard’s server 1
`
`(that the Patent Owner asserts to be a control device) to the claimed third control
`
`device (claims 26 and 48) and to the first control device (claim 42) and maps the order
`
`message M from server 1 to the claimed third signal (claims 26 and 48) and to the first
`
`signal (claim 42). In addition, Petitioner maps Frossard’s resource 2 (that Patent
`
`Owner asserts to be a control device) to the claimed second control device and maps
`
`the order message M from resource 2 to the claimed second signal. Further, Petitioner
`
`maps Frossard’s receiver-decoder 4 to the claimed first control device (claims 26 and
`
`48) and to third control device (claim 42). This mapping is shown in the illustration
`
`herein below.
`
`Claims 26 and 484
`
`Mapping of Frossard
`
`
`
`
`
`
`4 Claim 42 is similar, except that the nomenclature of “third” and “first” is reversed.
`
`13
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`
`
`
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`Accordingly, even under Patent Owner’s incorrect argument, Frossard still
`
`discloses the features of the independent claims.
`
`C. Ground 2- Frossard in view of Pagliaroli discloses claim 30.
`The Petition demonstrates that the combination of Frossard and Pagliaroli
`
`renders obvious dependent claim 30. (See Paper 1, pp. 24-27).
`
`The Response alleges that combination of Frossard and Pagliaroli is improper
`
`because (1) Pagliaroli’s theft sensor 12 is not a control device and (2) the combination
`
`would destroy the functionality of the Frossard system and there is no teaching or
`
`suggestion in Pagliaroli that its theft sensor can function as Frossard’s receiver-
`
`decoder circuit. (See Paper 20, pp. 24-25).
`
`Patent Owner’s argument mischaracterizes the Petitioner’s application of
`
`Pagliaroli. The Petition never asserts that Pagliaroli’s theft sensor 12 is a control device
`
`and never calls for replacing Frossard’s receiver-decoder with Pagliaroli’s theft sensor.
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`Instead, the Petition demonstrates that Pagliaroli’s theft sensor 12 provides the claimed
`
`functionalities recited in claim 30 and explains why and how Pagliaroli’s theft sensor is
`
`combinable with Frossard’s receiver-decoder. (See Paper 1, pp. 24-27).
`
`Further, Patent Owner does not present any rationale or evidence for why the
`
`combination would destroy the functionality of the Frossard system. Patent Owner
`
`also fails to present its own expert testimony refuting the arguments in the Petition and
`
`Declaration. Thus, Patent Owner’s argument is conclusory. The Board has held that
`
`14
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`
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`
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`conclusory assertions of lawyers are entitled to no weight. See IPR2015-00028;
`
`IPR2014-00347.
`
`Patent Owner’s assertion that “there is no teaching or suggestion in Pagliaroli
`
`that its theft sensor can function as the receiver-decoder circuit described in Frossard”
`
`(Paper 20, p. 25) is improper for two reasons. Patent Owner is factually incorrect
`
`because the Petition argues for combining, as opposed to replacing, Pagliaroli’s theft
`
`sensor with Frossard’s receiver-decoder. Patent Owner is legally incorrect because any
`
`teaching or suggestion need not be found in the reference itself. See KSR Int'l Co. v.
`
`Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007); Ball Aerosol v.
`
`Ltd. Brands, 555 F.3d 984, 89 USPQ2d 1870 (Fed. Cir. 2009).
`
`D. Ground 3- Frossard in view of Simms discloses claim 60.
`The Petition demonstrates that the combination of Frossard and Simms renders
`
`obvious dependent claim 60. (See Paper 1, pp. 27-32).
`
`The Response alleges that (1) Simms does no remedy the alleged deficiencies of
`
`Frossard and (2) the combination would appear to require a substantial redesign. (See
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`Paper 20, pp. 25-26).
`
`The Petition does not apply Simms as disclosing any of the features of
`
`independent claim 48, from which claim 60 depends. Instead, the Petition
`
`demonstrates that Simms discloses the positioning device of claim 60 and explains
`
`why and how Simms’s positioning device is combinable in Frossard’s system. (See
`
`Paper 1, pp. 27-32).
`
`15
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`
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`Patent Owner does not present any rationale or evidence for why the
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`combination is improper. Patent Owner asserts only that a substantial redesign would
`
`appear to be required. But Patent Owner fails to explain what the alleged redesign
`
`would involve and its significance. Patent Owner also fails to present its own expert
`
`testimony refuting arguments in the Petition and Declaration. Instead, Patent Owner
`
`relies on page 324, lines 5-25 and page 329, lines 7-14 of the Cross-Examination. These
`
`and other statements of Mr. McNamara do not support Patent Owner’s conclusion.
`
`These statements actually explain a simple implementation for combining Simms’
`
`positioning device with Frossard’s system. Mr. McNamara further explains other
`
`implementations at page 335, line 13-page 336, line 6 of the Cross-Examination. Thus,
`
`Patent Owner’s argument against combining the two references is conclusory.
`
`E. Ground 4- Petition properly applies Pagliaroli as a base reference.
`Claims 26 and 48 recite a third control device located at a vehicle. Claim 42
`
`recites a first control device located at a vehicle. In the interest of brevity and clarity
`
`of explanation, Petitioner refers herein to such control devices as a “vehicle control
`
`device” and the outputted signals as a “vehicle signal.”
`
`The Petition demonstrates that Pagliaroli discloses the control devices and
`
`signals recited in independent claims 26, 42, and 48. (Paper 1, pp. 32-41 and 42-49).
`
`The Response argues that Pagliaroli fails to anticipate independent claims 26, 42,
`
`and 48 because Pagliaroli does not disclose the claimed “vehicle control device” that
`
`transmits a “vehicle signal.” (Paper 20, pp. 20-24).
`
`16
`
`
`
`Patent Owner’s argument can be summarized in the below illustration, and is
`
`
`
`incorrect as shown below.
`
`Claims 26, 42, and 48
`
`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 Patent Owner’s
`
`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 1), then one part can be a vehicle
`
`control device, but the other part must be a separate, intermediate device. But as
`
`explained above, 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 ’130 Patent.
`
`17
`
`
`
`
`
`The specification of the ’130 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 ’130 Patent illustrates a three device architecture for controlling vehicle systems.
`
`As illustrated, the claimed “vehicle control device” includes two parts: a receiver 3 and
`
`a central processing unit (CPU) 4. Detailed descriptions of the receiver 3 and CPU 4
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`are found under FIG. 1, and more specifically, at column 19, line 56 to column 25,
`
`line 45 of the specification.
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`Specifically, the specification describes that “[i]t is also envisioned that the
`
`apparatus 1 may be installed in the motor vehicle….” (Exhibit 1001, 21:23-24). The
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`“apparatus 1 also comprises a receiver 3, for receiving the signals which are
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`transmitted by the transmitter system 2.” (Id. 19:56-58). “The apparatus 1 also
`
`comprises a controller or a central processing unit 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. 20: 60-
`
`21:2). The specification further describes the interaction between the receiver 3 and
`
`CPU 4 in FIGS. 6A and 6B. Particularly, the ’130 Patent explains that “[u]pon receipt
`
`of the command code by the receiver 3, the command code is then transmitted to, or
`
`read by, the CPU 4….. The CPU 4 will then…. perform a processing routine in order
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`to identify the command code which has been entered.” (Id. 32:17-22). Subsequently,
`
`18
`
`
`
`
`
`the CPU 4 “issue[s] a disabling signal to the vehicle fuel pump system 9 thereby de-
`
`activating the vehicle fuel pump system 9…..” (Id. 34:25-28).
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`Accordingly, the ’130 Patent describes that, in response to a command code
`
`received by the receiver 3, the CPU 4 reads the command code, performs a processing
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`routine, and issues a disabling signal.
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`In contrast, Patent Owner’s argument contradicts the specification of the ’130
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`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 his argument by disclosing a vehicle control device that includes two
`
`separate parts, just like Pagliaroli’s two parts
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`In addition, nowhere does the ’130 Patent describe a vehicle control device that
`
`does not use receiver 3 and CPU 4. Accordingly, the ’130 Patent does not enable any
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`vehicle control device that has only one of these two parts. Thus, Patent Owner’s
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`argument that attempts to distinguish over Pagliaroli is simply an attempt to capture
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`claim scope for an invention that he did not invent.
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`(3) Patent Owner’s reliance on Mr. McNamara’s statement in the deposition is out of
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`context and does not support Patent Owner’s argument.
`
`The Cross-Examination does not support Patent Owner’s argument about Mr.
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`McNamara opining that Pagliaroli’s receiver 14 must be a complex receiver.
`
`Patent Owner quotes a single statement of Mr. McNamara as proof that Mr.
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`McNamara finds Pagliaroli’s receiver 14 to be a complex receiver. (See Paper 20, p. 27).
`
`19
`
`
`
`
`
`Patent Owner deceitfully applies this quote to advance his 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.
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`However, Mr. McNamara never said that Pagliaroli’s receiver 14 is only a
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`complex receiver. In the Cross-Examination, Mr. McNamara’s opined multiple times
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`that Pagliaroli’s receiver can also be a “dumb” passive device. Specifically, in response
`
`to, “Isn’t true that the comparison that we have discussed with respect to the code
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`that is received and the code that is used is actually done in Control Unit 16 and not
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`in Receiver 14,” he answered “It could be done both ways….” (Exhibit 2004, p. 255,
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`lines 4-9). Mr. McNamara also explained “it could be just enabling the control unit,
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`the receiver could send the data to the control unit, let the control unit make the
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`decision.” (Id. p. 255, lines 13-17). Similarly, Mr. McNamara explained that “if you are
`
`using a mobile phone which has significant intelligence, you can do that comparison,
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`to, and just
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