trials@uspto.gov
`571-272-7822
`
`IPR2015-01509, Paper No. 28
`October 19, 2016
`
`
`
`RECORD OF ORAL HEARING
`UNITED STATES PATENT AND TRADEMARK OFFICE
`- - - - - -
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`- - - - - -
`NISSAN NORTH AMERICA, INC.,
`Petitioner,
`vs.
`JOAO CONTROL & MONITORING SYSTEMS, LLC,
`Patent Owner.
`- - - - - -
`Case IPR2015-01509 (Patent No. 6,549,130 B1)
`Technology Center 2600
`Oral Hearing Held: Friday, September 9, 2016
`
`BEFORE: HOWARD B. BLANKENSHIP; JASON CHUNG;
`and STACEY G. WHITE (via video link), Administrative Patent Judges.
`
`
`
`The above-entitled matter came on for hearing on Friday,
`September 9, 2016, at 2:00 p.m., Hearing Room A, taken at the U.S. Patent
`and Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
`REPORTED BY: RAYMOND G. BRYNTESON, RMR,
`
`CRR, RDR
`
`
`571-272-7822
`
`IPR2015-01509, Paper No. 28
`October 19, 2016
`
`
`
`RECORD OF ORAL HEARING
`UNITED STATES PATENT AND TRADEMARK OFFICE
`- - - - - -
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`- - - - - -
`NISSAN NORTH AMERICA, INC.,
`Petitioner,
`vs.
`JOAO CONTROL & MONITORING SYSTEMS, LLC,
`Patent Owner.
`- - - - - -
`Case IPR2015-01509 (Patent No. 6,549,130 B1)
`Technology Center 2600
`Oral Hearing Held: Friday, September 9, 2016
`
`BEFORE: HOWARD B. BLANKENSHIP; JASON CHUNG;
`and STACEY G. WHITE (via video link), Administrative Patent Judges.
`
`
`
`The above-entitled matter came on for hearing on Friday,
`September 9, 2016, at 2:00 p.m., Hearing Room A, taken at the U.S. Patent
`and Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
`REPORTED BY: RAYMOND G. BRYNTESON, RMR,
`
`CRR, RDR
`
`
`
`APPEARANCES:
`
`
`
`ON BEHALF OF PETITIONER:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`ALTON ABSHER, III, ESQ.
`Kilpatrick Townsend & Stockton LLP
`1001 West Fourth Street
`Winston-Salem, North Carolina 27101
`336-607-7307
`
`D. CLAY HOLLOWAY, ESQ.
`Kilpatrick Townsend & Stockton LLP
`Suite 2800
`1100 Peachtree Street NE
`Atlanta, Georgia 30309-4528
`404-815-6537
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`2
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`RENE A. VAZQUEZ, ESQ.
`Sinergia Technology Law Group, PLLC
`18296 St. Georges Court
`Leesburg, Virginia 20176
`703-989-2244
`
`RAYMOND A. JOAO, ESQ.
`122 Bellevue Place
`Yonkers, New York 10703
`914-969-2992
`
`
`
`
`
`
`
`
`3
`
`
`
`P R O C E E D I N G S
`
`Case IPR2015-01509
` Patent 6,549,130)
`
`
`
` (2:00 p.m.)
`JUDGE BLANKENSHIP: Good afternoon. Please
`be seated. This is the oral hearing for case IPR2015-01509,
`Nissan North America against Joao Control & Monitoring
`Systems.
`
`Who do we have here for Petitioner?
`MR. ABSHER: Alton Absher and Clay Holloway.
`JUDGE BLANKENSHIP: All right. And for
`Patent Owner?
`MR. JOAO: Raymond Joao and Rene Vazquez.
`JUDGE BLANKENSHIP: All right. Thank you.
`Petitioner, you have 30 minutes. Whenever you are ready you
`may begin.
`MR. ABSHER: Thank you, Your Honor.
`(Pause)
`MR. ABSHER: Your Honors, Alton Absher on
`behalf of Petitioner, Nissan North America. I expect our
`opening will run approximately 20 minutes and I would like to
`reserve 10 minutes or whatever is remaining for my rebuttal,
`please.
`
`JUDGE BLANKENSHIP: All right.
`MR. ABSHER: Slide 2, please. This trial
`concerns U.S. Patent 6,549,130. Given that we the Petitioner
`have the burden to prove the challenged claims unpatentable
`
`4
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case IPR2015-01509
` Patent 6,549,130)
`
`
`
`by a preponderance of the evidence, I would like to start with
`a very brief overview of the record.
`So we brought a petition with a supporting expert
`declaration challenging nine claims of the '130 patent. The
`declaration explained how a person of skill in the art -- what a
`person of skill in the art would understand from the disclosure
`and compare it to the claims.
`The Patent Owner subsequently opted to file a
`preliminary response, but in doing so introduced no evidence
`regarding how a person of ordinary skill would understand the
`claim and the prior art.
`Slide 3, please. The Board subsequently instituted
`trial on all nine challenged claims under all grounds identified
`in the petition, finding a reasonable likelihood of success that
`we would prevail in proving each of the challenged claims
`unpatentable.
`After that the Patent Owner deposed their expert
`and filed its response. Again, the Patent Owner provided no
`evidence regarding how a person of skill in the art would
`understand the claim in the prior art.
`Instead they critiqued our expert, but notably did
`not challenge the admissibility of his testimony, only its
`weight. And, again, they provided no evidence of secondary
`considerations and merely provided attorney argument.
`
`
`
`5
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`Case IPR2015-01509
` Patent 6,549,130)
`
`
`
`So when the record closed the Patent Owner had
`introduced no evidence at all to rebut our showing which the
`Board had already found showed a reasonable likelihood of
`success in invalidating the claims in the Institution Decision.
`Thus, nothing has changed since the Board instituted trial and,
`thus, Petitioner respectfully requests that the Board find each
`of the challenged claims unpatentable.
`JUDGE BLANKENSHIP: Well, that's not true
`because the standard on patentability has changed. We were
`looking for reasonable likelihood first, and now it is
`preponderance of the evidence.
`MR. ABSHER: Thank you, Your Honor. Yes,
`absolutely, and we believe that we showed and can certainly
`demonstrate how we have proven by a preponderance of the
`evidence that the challenged claims are unpatentable.
`But in terms of the evidence in the record
`regarding whether the claims are patentable or not, there has
`been no evidence added besides our expert's declaration and
`deposition that address how one of skill in the art would
`interpret the claims and the prior art.
`And if we could move to slide 4, please. There
`has been one development in the interim, and that is that in
`June the District Court for the Eastern District of Michigan
`granted summary judgment over several claims over the
`Frossard reference that we included in our petition. Those are
`
`6
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case IPR2015-01509
` Patent 6,549,130)
`
`
`
`claims 64 and 85, which depend directly from challenged
`claim 48.
`
`And in so doing the District Court noted that the
`asserted patents in Frossard have essentially the same overall
`structure. And I will also note that the court invalidated those
`claims under the higher clear and convincing evidence
`standard.
`
`And so because Frossard and the asserted '130
`patent, or the challenged claims of the '130 patent do have
`essentially the same structure, let's move, please, to slide
`number 9, Ms. Gray, and discuss how Frossard lines up with
`the independent claims.
`Slide 9 is an annotated version of figure 1 from
`the Frossard patent, and working from top to bottom we see
`that it discloses a control device represented by the telephone
`or Minitel, then the second control device represented by the
`server and its resource, and then a final control device located
`at the vehicle which is the receiver decoder unit, element 4.
`Moving to slide 10, which is also an annotated
`version of figure 1 of the Frossard patent, this is annotated to
`show the signals. And so here we see that Frossard again
`chose the three signals.
`Starting from top to bottom, the access code and
`intervention order, and the second signal being the message
`delineated by the letter M, and then finally the signal at the
`
`7
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case IPR2015-01509
` Patent 6,549,130)
`
`
`
`vehicle between -- being sent from the receiver decoder
`circuits 4 to the control inhibition unit -- the control
`inhibition circuit number 5.
`Slide 11, please. So there is really only one
`disputed issue when it comes to Frossard and the independent
`claims, and, that is, is the server and its resource a second
`control device? Patent Owner contends that it cannot be a
`second control device because a second control device cannot
`include multiple components.
`Well, this is incorrect and I can discuss three
`reasons why.
`Slide 12, please. First of all, even under the
`Patent Owner's proposed claim construction that was adopted
`by the Board, a -- the claim construction shows that a control
`device can include multiple components and can be a
`component.
`If we see the portion highlighted in red, the claim
`construction plainly says that a control device can be part of a
`device. Well, if a control device is a device and a control
`device can also be part of a device, then a control device can
`include multiple parts. And an example of that would be
`Frossard's server 1 in resource 2.
`Slide 13, please. A second reason that Patent
`Owner's argument is incorrect is that Patent Owner is
`contradicting its own specification of the '130 patent. What I
`
`8
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case IPR2015-01509
` Patent 6,549,130)
`
`
`
`have on slide 13 is a piece -- is a portion of figure 11-B, and
`then on the left of that is an excerpt from the specification,
`specifically column 50, lines 35 through 49.
`Ms. Gray, if you could pull up, please, Paper 9,
`Patent Owner's preliminary response, page 20, I would like to
`highlight the top of that first full paragraph. This is from
`Patent Owner's preliminary response at page 20.
`And we see he is describing figure B as clearly
`depicting an illustrative embodiment of claim 48 showing the
`first control device being the CPU 4 and then, importantly,
`showing the second control device as being either server
`computer 952 or the computer 970. So here we see Patent
`Owner saying, alleging, that server computer 952 in figure
`11-B is an example of the second control device recited in the
`claims.
`
`Ms. Gray, let's please go back to slide 13. So here
`is that piece of figure 11-B on the right where you see a
`server computer outlined in red, number 952, and then below
`it to our right a transmitter highlighted in green which is
`numbered 957. As we see in the corresponding specification
`on the left, the first highlighted sentence explains that the
`server 952 can perform complete control.
`Then going down to the second highlighted portion
`it says the server transmitter, 957, can transmit control
`signals. So here we have in the specification the purportedly
`
`9
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case IPR2015-01509
` Patent 6,549,130)
`
`
`
`enabling disclosure for this limitation, the second control
`device, is a server and a transmitter together. They work
`together.
`
`And if we could move to slide 14, please, that --
`yes, Your Honor?
`JUDGE WHITE: Wouldn't it be reasonable to take
`from that drawing that the transmitter is a part of the server?
`MR. ABSHER: Your Honor, if you look at -- the
`way the drawing is done, it appears to me that the transmitter
`is external from the server. You see a line being drawn from
`952 to 957. They certainly all are a part of the online service
`and/or Internet processing site, but the transmitter is
`connected via some sort of connection to the server.
`JUDGE WHITE: Is that the physical layout or is
`that just a logical layout?
`MR. ABSHER: So, Your Honor, it appears to me
`to be a physical layout because we are talking about, you
`know, a server computer, which is a physical component, and
`a transmitter which is also a physical component, so it appears
`to be, at least that portion to be a physical description.
`JUDGE CHUNG: That resides externally from the
`server, is what you are saying?
`MR. ABSHER: It certainly appears that it does
`just based on the disclosure here that it, you know, it is
`connected via a line to the server computer. So it is not
`
`10
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case IPR2015-01509
` Patent 6,549,130)
`
`
`
`inside the server computer. It is connected to it. I don't, you
`know, as to whether it could conceivably be inside or outside,
`the specification doesn't specify, but it certainly could be. It
`certainly could be.
`And then also there is case law, in fact, I think it
`is the Seapack Devices case, that it doesn't always -- it doesn't
`necessarily matter, that really you look at, I mean, I'm sorry,
`so going back to, you know, whether it is logical or physical
`or whether it resides outside or inside, I think the Patent
`Owner made his own statement that this is an enabling
`disclosure, that server computer 952 is the second control
`device.
`
`Well, he didn't say but the second control device,
`it must use this transmitter in order to actually transmit the
`signal, and so those two devices must work together in order
`for there to be a second control device that performs that step
`of sending the signal.
`So, thus, this is clearly an example of the Patent
`Owner's current argument contradicting what the specification
`has to say.
`Let me move on to slide 14, please. So slide 14
`shows how the figure 1 of Frossard lines up really well with
`this disclosure of the '130 patent. We see Frossard discloses a
`server computer, you know, and as does the '130 patent. Then
`they also both disclose a transmitter that is used to transmit a
`
`11
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case IPR2015-01509
` Patent 6,549,130)
`
`
`
`signal. So we see that Frossard and the independent claims of
`the '130 patent each teach using multiple components to form
`a second control device.
`Move to slide 15, please. So moving on to some
`of the dependent claims, claims 23, 29, 33 and 68.
`Slide 16, please. Patent Owner does not dispute
`and doesn't provide any evidence or argument for the
`patentability of either claim 29, 33 or 68 other than their
`dependency from the independent claim.
`Thus, these claims -- thus, claim 29 rises and falls
`with its independent claim. Slide 17, please. Same with
`claim 33. Slide 18, please. Same with claim 68.
`Moving to slide 19, please. For claims 30 and 43
`the combination of Frossard and Pagliaroli render obvious
`these dependent claims.
`Slide 20, please. Each of these claims teaches
`monitoring an operating status of a vehicle component.
`Slide 21, please. So the Pagliaroli reference
`teaches theft sensors which monitor the condition of the
`vehicle. Two examples are shown on slide 21, column 4, 22
`to 24, and column 4, 46 to 52.
`Slide 22. Patent Owner doesn't dispute that
`Pagliaroli discloses the limitations added in these two
`dependent claims. Instead, Patent Owner really
`mischaracterizes our argument saying that we -- claiming that
`
`12
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case IPR2015-01509
` Patent 6,549,130)
`
`
`
`we would replace the sensor of Pagliaroli, replace the circuit
`of Frossard with the sensor of Pagliaroli. Well, that is simply
`incorrect.
`Slide 23, please, is an example from -- of
`unrebutted expert testimony from paragraph 84 of
`Mr. McNamara's declaration where he explains that one of
`skill in the art would combine those two references by, for
`example, adding the theft sensor and transmitter disclosed in
`Pagliaroli to the vehicle disclosed in Frossard.
`So we have unrebutted testimony that a person of
`skill would not replace but would add those to the Frossard
`system.
`
`Slide 24, please. Claim 60 is obvious in view of
`Frossard and Simms.
`Slide 25, please. Patent Owner, again, does not
`dispute that Frossard and Simms disclose the limitations
`added in this dependent claim, but -- slide 26, please -- Patent
`Owner's only rebuttal is a conclusory statement that a
`substantial redesign would appear to be required. This is
`incorrect.
`Slide 27. This is an example of unrebutted expert
`testimony from the deposition at page 324, lines 5 through 25,
`where Mr. McNamara testified regarding the relative
`simplicity of integrating Simms and that is the kind of thing
`that people were doing at that time. It is also, again, telling
`
`13
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case IPR2015-01509
` Patent 6,549,130)
`
`
`
`that Patent Owner has provided no evidence that a substantial
`redesign would be required, just mere -- not even really
`attorney argument, just a bare statement.
`Moving to slide 28, please. I would like to move
`on to the second set of grounds of rejection and those are the
`ones using Pagliaroli as a primary reference. And, in
`particular, we will start with the independent claims.
`Slide 29, please. As with the Frossard reference in
`the context of the independent claims, there is only one
`disputed issue: Is the receiver and control unit disclosed in
`Frossard -- excuse me, disclosed in Pagliaroli a single control
`device? As we've argued and presented through our experts,
`they are a single control device.
`Slide 30, please. This is an annotated diagram of
`figure 1 from Pagliaroli. And we see how it discloses the
`three control unit architecture that is recited in the
`independent claims of the '130 patent. From top to bottom,
`the telephone 48, as a first control device sending a first
`signal to the transmitter 46, serving a second control device
`sending a second signal to the receiver and control unit
`located at the vehicle.
`Now, up until that point there is really not a
`dispute between the parties. The dispute is what the
`consequence is of any communication that takes place between
`receiver 14 and control unit 16. Patent Owner says that
`
`14
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case IPR2015-01509
` Patent 6,549,130)
`
`
`
`communication between the receiver and the control unit
`constitutes a signal as recited in the claim. But, again, as
`with Frossard, this contradicts the enabling disclosure of the
`'130 patent.
`Ms. Gray, if you could bring up Paper 9, page 20,
`again, please. And this is, again, from Patent Owner's
`preliminary response. I just want to show you the bottom
`portion of the page there.
`So if you look at the sentence that starts "it is
`clear throughout the specification and the intrinsic evidence
`of the '130 patent that the CPU 4 (the first control device of
`claims 26 and 48, and the third control device of claim 42),"
`and we can stop reading there, but Patent Owner again is
`claiming that the CPU 4 in figure 11-B is that control device.
`Well, let's go back to our presentation and let's
`look at slide 32, please.
`So here this is, again, a representation on the right
`of a portion of figure 11-B and on the left a portion of the
`corresponding disclosure. So if we look on the right, figure
`11-B, we see the green arrow pointing to a receiver which is
`element 3-A, a line between the receiver and CPU, which is --
`it's a little bit blocked by the blue outline, but that's CPU
`number 4.
`And then below the CPU we can see the red arrow
`where it is sending a signal. And then on the right we have
`
`15
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case IPR2015-01509
` Patent 6,549,130)
`
`
`
`examples of the disclosure teaching that, you know, a
`controller or central processing unit CPU 4 electrically
`connected with the receiver and transmitter 3-A. That's from
`column 20, starting on line 60 of the '130 patent.
`And then if we go to column 32, starting at line
`17, explains, again, that upon receipt of the command code by
`the receiver 3, the command code is then transmitted to or
`read by the CPU 4.
`Okay. Then next we'll look at column 34, starting
`at line 25, with reference again to figure 6-A and 6-B, the
`CPU 4 at step 69 will then issue a disabling signal. So here
`we see that the CPU has a component which is the receiver.
`Well, let's flip back to the previous slide, slide 31.
`We haven't addressed it yet. Slide 31, again, here we see on
`the left figure 11- B, on the right figure 1 of Pagliaroli. We
`see how they have the same architecture.
`They both have a signal going into a receiver, then
`communication between the receiver and a CPU or control
`unit, and then a signal coming out from the control unit that
`can send, for example, a disabling signal to the ignition
`system.
`
`Slide 33, please. We can actually skip slide 33
`and move to slide 34. The expert confirmed, Mr. McNamara
`confirmed at his deposition that the control unit and the
`receiver work together. Patent Owner claims that the expert
`
`16
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case IPR2015-01509
` Patent 6,549,130)
`
`
`
`said that the receiver must be complex. Well, that argument
`fails for two reasons.
`First of all, it is not relevant. There is nothing in
`the claim that has any requirement with regards to the
`complexity of a receiver. And, second, it is simply factually
`incorrect. The expert never said that the receiver is only a
`complex receiver. In fact, in some instances he said that it
`could be quite simple.
`For example, here we have an excerpt, page 255,
`lines 4 through 19 of his deposition, and in particular starting
`around line 14 he says that it could just be enabling the
`control unit. The receiver could send the data to the control
`unit and let the control unit make the decision. So here we
`have clear testimony on the record that it could be a simple
`device.
`
`Let's move to slide 35. Claim 29. Slide 36.
`Again, no dispute with regards to this limitation. It rises or
`falls with its independent claim. Slide 37, please. Pagliaroli
`anticipates claims 30 and 43.
`Slide 38. This is the same evidence that we
`showed earlier. The theft sensors of Pagliaroli monitor the
`condition of the vehicle and perform this step. The only
`dispute, slide 39, is that Patent Owner claims that the theft
`sensors are separate and distinct from the components that we
`assert correspond to the control device.
`
`17
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case IPR2015-01509
` Patent 6,549,130)
`
`
`
`Let's flip back to slide 38. First of all, claim 43
`does not require any particular control device to perform this
`step. It's a method claim. It just says the step has to be
`performed. But even with regard to claim 30, which does
`recite that the first control device must perform this step, let's
`move to slide 40 to address that, that the theft sensor can be a
`part, is a part of the control device.
`Slide 41. We have, again, unrebutted expert
`testimony. This is from paragraphs 136 and 137 of
`Mr. McNamara's declaration. And he explains that one of
`skill in the art would understand this. And so we have
`evidence, unrebutted evidence against conclusory attorney
`argument.
`
`Let's move to slide 42, please. Again, claims 33
`and 68 rise or fall with their independent claims. There is no
`additional arguments from Patent Owner about the
`patentability of these other than they are dependents from the
`independent claims.
`Let's move to slide 45, please. Pagliaroli in
`combination with Simms.
`Slide 46. So, again, as with the combination of
`Frossard and Simms, Patent Owner doesn't dispute that each
`of these elements added in claim 60 is disclosed.
`Slide 47. Patent Owner's only argument, again, is
`a conclusory statement that a substantial redesign would be
`
`18
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case IPR2015-01509
` Patent 6,549,130)
`
`
`
`required. Again, this is basically the same argument they
`made in the context of Frossard.
`I would just like to hit slide 48 really quick, where
`we have unrebutted testimony that it would have been obvious
`to one of skill in the art to combine these teachings.
`And slide 49, Patent Owner tries to cite some
`testimony from Mr. McNamara's deposition saying -- to
`purportedly support this argument that a substantial redesign
`would be required. Well, if you look at the context of the
`testimony, he is talking about the Frossard plus Simms
`combination, not the Pagliaroli plus Simms combination.
`So despite being factually incorrect, besides the
`Patent Owner being factually incorrect, he is also referring to
`irrelevant, irrelevant testimony.
`So if there are no further questions at this time,
`Your Honors, I would like to reserve the remainder of my time
`for rebuttal.
`JUDGE BLANKENSHIP: All right.
`JUDGE WHITE: Just one quick question to make
`sure that I have your argument straight. When it comes to
`Pagliaroli's receiver, are you saying that it is just a simple
`receiver or it doesn't matter whether it's a more complex
`device?
`
`MR. ABSHER: Your Honor, my argument is that
`it doesn't matter what the capabilities -- if it has additional
`
`19
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case IPR2015-01509
` Patent 6,549,130)
`
`
`
`capabilities that's not relevant. I think it is a simple receiver,
`as the expert testified, but it doesn't matter either way in
`terms of analyzing it in the context of the claims.
`Thank you, Your Honors.
`(Pause)
`MR. JOAO: May it please the Board. Raymond
`Joao for the Patent Owner Joao Control & Monitoring
`Systems, LLC. May I approach to give you two copies of
`the --
`
`JUDGE BLANKENSHIP: Sure.
`MR. JOAO: I'm sorry, Judge White.
`The invention of independent claims 26, 42 and 48
`deal with a distributed control system with three control
`devices, one at the vehicle, one remote from the vehicle and
`one remote from both, that is used by a user to perform a
`control function.
`It is a distributed control system, and we ask that
`we get the -- that the Board adopt the claim construction here,
`which is I think but for -- the Chrysler court sending a signal
`sent by a third device, is basically what the Chrysler court
`adopted.
`
`The construction of first signal, second signal and
`third signal is important because in a distributed control
`system when you have three control devices each one is doing
`something unique.
`
`
`20
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case IPR2015-01509
` Patent 6,549,130)
`
`
`
`Now, the one thing that I would like to address is
`the Petitioner's reliance on the 3M case. The 3M case
`actually supports the Patent Owner.
`At jump cite page 371, 350 F.3d 1365 at 371, the
`court basically says that when you are referring to a first
`pattern and a second pattern, it's pattern A and pattern B, and
`that any type of -- now, any type of temporal or serial
`limitation shouldn't be read into it, and it shouldn't be read
`into these claim terms either because the claim itself defines
`the relationship of these signals to one another.
`Now, Petitioner has -- I will just mention the
`District Court case in Michigan. Right now there is a pending
`motion for reconsideration and a Notice of Appeal has been
`filed.
`
`Okay. Now, the Board adopted this definition of
`control device: 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. Nowhere does it say that a control
`device could be part of another control device.
`Now, I would like to talk about Frossard. First
`off, in the claims we have, the control devices, by virtue of
`the functionality that is defined in the claims, they inherently
`have to have a transmitter and a receiver or some kind of
`functionality in that regard. That's how they send signals
`
`21
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case IPR2015-01509
` Patent 6,549,130)
`
`
`
`from one to the other and receive signals from one to the
`other.
`
`Now, Petitioners rely on -- now, in Frossard, I just
`wanted to say how it works. Frossard has a Minitel which
`basically transmits a signal to a server. The server then
`transmits to a special purpose resource, that is defined as
`selectively providing transmission to the vehicle. And at the
`vehicle there is a receiver decoder.
`Now, I would like to just point out for a second
`here Petitioners maintain that the receiver decoder at the
`vehicle is a control device in Frossard, but it is not a control
`device in Pagliaroli.
`Petitioners in Pagliaroli maintained that the
`mobile telephone signal transmitter, 46, which is connected to
`a telephone, is a commonplace transmitter, is a control device,
`but yet they say here that that resource which Frossard
`describes as being a special type of resource that is used for
`selectively sending certain types of RSD reception signals,
`that that is not a control device.
`So there is a major inconsistency in the
`interpretation and application of the definition of control
`device that is going on here.
`JUDGE CHUNG: Counselor, would that possibly
`suggest that your claim is broad enough for it to be
`interpreted in multiple ways?
`
`22
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case IPR2015-01509
` Patent 6,549,130)
`
`
`
`MR. JOAO: No, I think that the claim is clear that
`it is a control device. It has to be something that -- well, the
`definition is it performs an operation or a function. But also
`the definition has to be -- the definition of control device has
`to also be gleaned from the claim itself.
`JUDGE CHUNG: Well, I believe in the
`prosecution history you defined control device as "a device or
`a computer or that part of a device or a computer, which
`performs an operation, or a function, or which performs a
`number of operations, actions, or functions."
`MR. JOAO: Well, but in the claim I use three
`different types of control devices, the first control device, the
`second control device, and the third control device, and I say
`what they're doing, where they are receiving signals from,
`what they are generating and transmitting signals in response
`to.
`
`JUDGE CHUNG: So are you saying that your --
`help me understand this. Are you saying that your definition
`in the prosecution history no longer applies?
`MR. JOAO: No, it does apply. It does apply.
`JUDGE CHUNG: Then this definition from your
`prosecution history, plug that in the first control device, so
`just take this definition here and just insert the word "first" in
`front of it, and then, likewise, with second control device and
`likewise with third control device?
`
`23
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case IPR2015-01509
` Patent 6,549,130)
`
`
`
`MR. JOAO: Right. Right. Now, if we see how
`Pagliaroli maps up, compares to the claims of the '130 patent,
`you have a control device at the vehicle, which is listed as C
`for simplicity. You have control device B remote from it, and
`control device A remote from that further.
`In Frossard they have a Minitel that they
`identify as the first control device.
`JUDGE CHUNG: Judge White, he is referring to
`slide number 6.
`MR. JOAO: I'm sorry, number 6. In Frossard the
`first control device is identified as a Minitel phone. The
`server is identified as a second control device.
`They maintain that the server and its resource,
`which has a receiver for receiving signals from the server, and
`an RDS coder and a separate FM transmitter, and is basically
`performing a selective transmission to the vehicle, they
`maintain that that is not a separate control device, and it fits
`the definition of control device.
`JUDGE CHUNG: The definition of control device
`is part of a device or a computer?
`MR. JOAO: A device or a computer or a part of a
`device or a computer.
`JUDGE CHUNG: Right, so it can include multiple
`
`parts?
`
`
`
`24
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`Case IPR2015-01509
` Patent 6,549,130)
`
`
`
`MR. JOAO: A control device can include multiple
`parts but it is inherent in the claims that that control device
`already can receive signals and transmit signals.
`JUDGE CHUNG: So by what you just said then,
`then Frossard server 1 receives signals and then resource 2
`transmits the signals, so that would be one control device?
`MR. JOAO: In Frossard server 1 is a control
`device. It performs a signal. And it transmits a signal, the
`second signal to the resource.
`JUDGE CHUNG: You just said that a control
`device can receive and transmit.
`MR. JOAO: Inherently, inherently, inherently in
`the claims, the way the claims are drafted, a control device
`has inherent functionalities of being able to receive and
`transmit signals.
`JUDGE CHUNG: Okay.
`MR. JOAO: Okay? So the Minitel phone has
`probably a di
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
