Trials@uspto.gov
`571-272-7822
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` Paper 29
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`Date: December 30, 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.
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. §318(a) and 37 C.F.R. § 42.73
`
`
`
`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 of U.S.
`Patent No. 6,549,130 B1 (“the ’130 patent”). Paper 1 (“Pet.”). Patent
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`IPR2015-01509
`Patent 6,549,130 B1
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`Owner, Joao Control & Monitoring Systems, LLC, filed a Preliminary
`Response pursuant to 35 U.S.C. § 313. Paper 9 (“Prelim. Resp.”).
`Upon consideration of the Petition and the Preliminary Response, on
`January 7, 2016, we instituted inter partes review of claims 26, 29, 30, 33,
`42, 43, 48, 60, and 68 (“instituted claims”), pursuant to 35 U.S.C. § 314.
`Paper 10 (“Dec.”).
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response. Paper 20 (“PO Resp.”). Petitioner filed a Reply to Patent
`Owner’s Response. Paper 24 (“Reply”). An oral hearing was held on
`September 9, 2016, and a transcript of the hearing is included in the record.
`Paper 28 (“Tr.”).
`We issue this Final Written Decision pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73. For the reasons discussed herein, Petitioner has
`shown by a preponderance of the evidence that claims 26, 29, 30, 33, 42, 43,
`48, 60, and 68 of the ’130 patent are unpatentable. See 35 U.S.C. § 316(e).
`
`Related Matters
`
`A.
`Both Petitioner and Patent Owner indicate that the ’130 patent or
`related patents have been asserted in numerous proceedings. Exs. 1016–
`1018; Paper 5.
`
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`Patent 6,549,130 B1
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`
`B.
`Petitioner identifies the following as asserted grounds of
`unpatentability:
`
`The Asserted Grounds
`
`Reference(s)
`
`Basis
`
`Frossard (Ex. 1005)1
`
`§ 102(a)2
`
`Instituted 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
`
`
`
`The ’130 Patent
`
`C.
`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
`
`
`1 European Patent Application Publication No. 0 505 266 A1, published
`March 17, 1992.
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29,
`revised 35 U.S.C. § 103 and the relevant sections 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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`IPR2015-01509
`Patent 6,549,130 B1
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`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
`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 a 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.
`
`The Instituted Claims
`
`D.
`Of the instituted claims 26, 29, 30, 33, 42, 43, 48, 60, and 68, 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
`
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`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
`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,
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`a locking device for preventing unauthorized access to a vehicle
`compartment, and landing gear.
`
`II. ANALYSIS
`
`Claim Construction
`
`A.
`In the Decision to Institute, we noted that the ’130 patent was expired.
`Dec. 8. For claims of an expired patent, the Board’s claim interpretation is
`similar to that of a district court. See In re Rambus, Inc., 694 F.3d 42, 46
`(Fed. Cir. 2012). “In determining the meaning of the disputed claim
`limitation, we look principally to the intrinsic evidence of record, examining
`the claim language itself, the written description, and the prosecution
`history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek,
`Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips v. AWH Corp.,
`415 F. 3d 1303, 1312–17 (Fed. Cir. 2005) (en banc)).
`
`Terms Preliminarily Construed in the Decision to Institute
`
`1.
`For purposes of the Decision to Institute, we construed the term
`“control device.” Dec. 8–10. Based on our review of the full record, we
`discern no reason to modify or further discuss in this Final Written Decision
`our constructions for this claim term. For convenience, this claim
`construction is reproduced in the table below.
`Term
`Citations
`Construction
`Control
`Pet. 36 n.1;
`A device or a computer, or that part of a
`Device
`PO Resp.
`device or a computer, which performs an
`14–15;
`operation, an action, or a function, or which
`Ex. 2002, 6
`performs a number of operations, actions, or
`functions.
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`
`First Signal, Second Signal, and Third Signal Terms
`
`2.
`Patent Owner provides proposed constructions for the first, second,
`and third signal terms. PO Resp. 15–16. Specifically, Patent Owner asserts
`that the “first signal” is “a signal sent by a first device;” the “second signal”
`is “a signal sent by a second device;” and the “third signal” is “a signal
`generated by a third device.” Id. at 16.
`We agree, for example, that a first signal is sent by a first device. The
`parties’ dispute, however, is directed to whether there may be an
`intermediate device between the transmitting device (e.g, first device) and
`the signal’s destination (e.g,. second device). Claim 42 recites, in relevant
`part, that the “first signal” must be transmitted to and “automatically
`received” by the “second control device.” In Patent Owner’s view, there
`may not be an intermediate device, between the first and second devices,
`that modifies or changes the signal. See PO Resp. 20–24, 26–31.
`As part of our analysis, we note that the Applicant provided an
`express definition of the term “signal” in the First Remarks filed on
`November 23, 2007, during prosecution of the patent application that issued
`as the U.S. Patent No. 7,397,363 (“the ’363 patent”) (Ex. 2002). The ’130
`patent and ’363 patents all descend from U.S. Patent Application Nos.
`09/551,365, 08/622,749, 09/277,935, and 08/683,828. See Ex. 1001, at [63].
`Patent Owner relied upon this same filing in support of its arguments
`regarding the construction of “control device.” See Dec. 8. The Applicant
`provided this definition several years after the issuance of the ’130 patent.
`See Ex. 1001, at [45] (April 15, 2003 issuance date). As the Federal Circuit
`has noted, however, “[a] statement made during prosecution of related
`patents may be properly considered in construing a term common to those
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`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)).
`In that 2007 filing, the term “signal” was defined as “an indication, or
`an indication having or conveying data, information, or a message, or a
`conveyor of data, information, or a message, or an indication representing
`data or information.” Ex. 2002, 11. We are persuaded that this definition is
`instructive to understanding the proper scope of these claim terms. Thus, a
`first signal, for example, is an “an indication, or an indication having or
`conveying data, information, or a message, or a conveyor of data,
`information, or a message, or an indication representing data or information
`that is sent by a first device.”
`We have not been directed to evidence in the specification sufficient
`to show that the Applicant desired to narrow this very broad definition of
`signal in a manner that would exclude signals that pass through
`intermediaries. As defined by the Applicant, a signal may be an indication,
`information, or a message and we are not persuaded that it is impermissible
`for an intermediary to pass this information on and to add further data to the
`information that it received.
`For the foregoing reasons, we construe the term “first signal” to be “a
`signal sent by a first device;” “second signal” to be “a signal sent by a
`second device;” and “third signal” to be “a signal sent by a third device.”
`For convenience, this claim construction is reproduced in the table below.
`
`8
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`
`A signal sent by a second device
`
`A signal sent by a third device
`
`Construction
`A signal sent by a first device
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`Patent 6,549,130 B1
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`Citations
`Term
`PO Resp.
`First
`15–16
`Signal
`PO Resp.
`Second
`15–16
`Signal
`PO Resp.
`Third
`15–16
`Signal
`The recited signals all are construed to be “an indication, or an
`indication having or conveying data, information, or a message, or a
`conveyor of data, information, or a message, or an indication representing
`data or information.” Finally, we are not persuaded that these terms exclude
`signals that may pass through an intermediary and any such intermediary
`may append additional information to the received signals for the reasons
`discussed infra in §§ II.C.2. and II.F.1.
`
`Interface Device
`
`3.
`Patent Owner proposes a new definition of the term “interface
`device.” PO Resp. 12–14. In reply, Petitioner does not contest the
`definition for “interface device” at this juncture. Reply 1. We are not
`persuaded that express construction of “interface device” is necessary in
`order to resolve the disputes currently before us. Thus, we discern no need
`to provide an express construction for this term at this time. Vivid Techs.,
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly
`those terms need be construed that are in controversy, and only to the extent
`necessary to resolve the controversy.”).
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`
`B. Mr. David McNamara’s Testimony
`1. Mr. McNamara Reviewed the Prosecution History
`Petitioner argues the “petition is supported by the declaration of Mr.
`David McNamara.” Pet. 7. Mr. McNamara5 signed his declaration on June
`24, 2015. Ex. 1003 ¶ 14. Paragraph 14 of his declaration states that “I have
`read the ’130 Patent and its prosecution history.” Id.
`Patent Owner asserts that we should accord little or no weight to the
`testimony of Mr. David McNamara.6 PO Resp. 19. Patent Owner’s
`objections are twofold. First, Patent Owner argues that Mr. McNamara did
`not review the proper materials such as the prosecution history of the ’130
`patent. Id. at 16–17. Second, Patent Owner contends that Mr. McNamara
`has an erroneous understanding of the standards of claim construction. Id. at
`17–19.
`
`
`5 According to Petitioner, Mr. McNamara earned a “M.S. in Engineering in
`Solid State Physics from the University of Florida in 1976.” Pet. 7.
`According to Mr. McNamara, he achieved a “Master of Engineering degree
`in Solid State Physics from the University of Florida in 1976” rather than a
`“M.S.” degree. Ex. 1003 ¶ 2. Although we determine this distinction to be
`minor and this distinction does not alter our decision, we credit Mr.
`McNamara as achieving a “Master of Engineering degree in Solid State
`Physics from the University of Florida in 1976.”
`6 Mr. McNamara acknowledged the highest level of education that he
`completed was “a “Master of Engineering degree in Solid State Physics from
`the University of Florida in 1976.” Ex. 1003 ¶ 2; see also Pet. 7. Although
`Patent Owner refers to Mr. McNamara as Dr. McNamara, because Petitioner
`and Mr. McNamara do not proffer evidence of Mr. McNamara achieving a
`PhD or equivalent and it is not clear from the record that Mr. McNamara
`attained a PhD or equivalent, we, therefore, refer to Petitioner’s declarant as
`“Mr. McNamara.”
`
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`Patent Owner argues Mr. McNamara’s testimony is fatally flawed
`because during cross-examination, Mr. McNamara testified that he had not
`reviewed the prosecution history of the ’130 patent. PO Resp. 16–17 (citing
`Ex. 2003, 153:11–22 (In response to Patent Owner’s questions “you did not
`review the prosecution histories for the four JCMS patents [including the
`’130 patent] at issue correct” and “you did not apply the, any definitions that
`may have been provided by Mr. Joao during prosecution of those patents,
`correct,” Mr. McNamara answers “[t]hat’s correct.”)).
`In reply, Petitioner argues Mr. McNamara signed his declaration on
`June 24, 2015 and in the declaration he states that he read the ’130 patent
`and its prosecution history. Reply 2 (citing Ex. 1003 ¶ 14). According to
`Petitioner, Patent Owner improperly tries to latch onto Mr. McNamara’s
`testimony that he did not read the prosecution history while ignoring other
`statements to the contrary. Reply 2 (citing Ex. 2003, 153:11–15). Petitioner
`argues Mr. McNamara’s testimony was, however, approximately nine
`months after Mr. McNamara signed his declaration. Reply 2 (citing
`Ex. 2003, 153:11–15). Petitioner further argues Patent Owner ignores Mr.
`McNamara’s other statements that demonstrate that he reviewed the
`prosecution history. Reply 2–3 (citing Ex. 2003, 154:11–20). According to
`Petitioner, Mr. McNamara’s inconsistent testimony, at best, illustrates a
`lapse in memory during a lengthy deposition. Reply 3.
`Petitioner also argues Patent Owner’s argument (i.e., Mr. McNamara
`did not review the prosecution history of the ’130 patent) would have no
`bearing on the claim construction in this proceeding. Reply 3. Specifically,
`Petitioner argues Patent Owner’s argument that Mr. McNamara did not
`review the prosecution history of the ’130 patent is irrelevant because Patent
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`Owner did not define any claim terms at issue during the prosecution of the
`’130 patent. Id. at 3. Petitioner argues the only terms Mr. McNamara
`defined were “automatically” and “automatically received,” which neither
`party contests. Id. (citing Ex. 1020, 26). According to Petitioner and Mr.
`McNamara, Mr. McNamara’s definitions for the terms “automatically” and
`“automatically received” are their plain and ordinary meaning. Id. at 3–4
`(citing Ex. 1003 ¶ 10).
`According to Petitioner, the only attempts to define claim terms are
`found in the prosecution history of U.S. Patent Nos. 7,397,363 B2 (the ’363
`patent) and 7,277,010 B2 (the ’010 patent). Petitioner further argues to the
`extent that weight should be given to the claim term definitions at issue, Mr.
`McNamara reviewed and considered the definitions identified in Exhibit
`1009. Id. at 4. Exhibit 1009 includes prosecution history definitions of the
`’363 patent and the ’010 patent. Id. (citing Ex. 1003 ¶¶ 14 and 20). During
`the cross-examination, Mr. McNamara re-affirmed that he reviewed these
`definitions. Id. In response to the question “‘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
`“‘[t]hat is correct.’” Id. (quoting Ex. 2003, 154:11–20).
`We are not persuaded that Mr. McNamara’s statements on cross
`examination are sufficient reason to accord his testimony little or no weight.
`The prosecution history is an important element in understanding the claims
`of a patent. We are persuaded that the statements made during cross
`examination appear to misstatements as to Mr. McNamara’s review of the
`patent and its underlying prosecution history. Mr. McNamara signed his
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`declaration under penalty of perjury and he has made other statements
`consistent with his testimony under oath stating that he reviewed the
`prosecution history. See Ex. 1003 ¶ 14; Ex. 2003, 154:11–20.
`Mr. McNamara signed his declaration on June 24, 2015, which states
`that he read the ’130 patent and its prosecution history. Ex. 1003 ¶ 14.
`Although Mr. McNamara testified that he did not read the prosecution
`history (Ex. 2003, 153:11–15), Patent Owner ignores Mr. McNamara’s other
`statements that demonstrate that he reviewed the prosecution history (id. at
`154:11–20). In addition, Mr. McNamara’s statement was during a lengthy
`deposition approximately nine months after Mr. McNamara signed his
`declaration. Mr. McNamara’s inconsistent testimony appears to illustrate a
`momentary lapse in memory. Compare e.g., id. at 153:11–15, with id. at
`154:11–20.
`Moreover, the only claim terms Mr. McNamara defined in view of the
`prosecution history of the ’130 patent were “automatically” and
`“automatically received,” which neither party contests. Compare PO Resp.
`10–16; Reply 1; Pet. 8–9, with Ex. 1020, 26. In addition, we are not
`persuaded that Mr. McNamara’s statement that he did not review the
`prosecution history of the ’130 patent displays a lack of understanding of the
`prosecution history because Patent Owner did not define any claim terms at
`issue in this proceeding that overlap with claim terms defined during the
`prosecution of the ’130 patent. Compare PO Resp. 10–16, with Ex. 1020,
`26.
`
`The only attempts at defining claim terms in this proceeding that
`overlap with claim terms found in the prosecution history occur in two other
`patents, which are U.S. Patent Nos. 7,397,363 B2 (the ’363 patent) and
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`7,277,010 B2 (the ’010 patent). For the claim terms found in the
`prosecution history of the ’363 patent and the ’010 patent, Mr. McNamara
`reviewed and considered these definitions. Ex. 1003 ¶¶ 14 and 20; see also
`Ex. 1009. During the cross-examination, Mr. McNamara re-affirmed that he
`reviewed these definitions. Ex. 2003, 154:11–20 (In response to the
`question “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 teaching the opinions or conclusions
`expressed,” Mr. McNamara answered “[t]hat is correct.”).
`Accordingly, we are not persuaded Mr. McNamara’s testimony
`displays a lack of understanding of the prosecution history.
`
`2. Mr. McNamara Applied the Correct Claim Construction Standard
`Mr. McNamara stated that he applied the plain and ordinary meaning
`as understood by a person having ordinary skill in the art. Ex. 1003 ¶ 10.
`During cross-examination, Mr. McNamara re-affirmed his position by
`stating “I used the same standard through all of the four patents [including
`the ’130 patent]. I used the one of ordinary and customary understanding.”
`Ex. 2003, 152:15–18.
`In response, Patent Owner argues Mr. McNamara acknowledged
`during cross-examination that he used the wrong claim construction standard
`when construing the claims in a related inter partes review brought by the
`same Petitioner. PO Resp. (citing Ex. 2003, 151:14–152:18 (Mr. McNamara
`acknowledged that he used “the broadest reasonable construction in light of
`the specification of the [’363] patent.” However, in response to Patent
`Owner’s questions “[a]re you aware that the PTAB has indicated or stated
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`that this is, in fact, the wrong standard for the 363’ patent” and “[h]ow does
`the use of the wrong claim construction standard affect your opinions in this
`case,” Mr. McNamara answers “I don’t think I used the wrong standard
`because I used the same standard through all of the four patents [including
`the ’130 patent]. I used the one of ordinary and customary
`understanding.”)). Patent Owner further argues that Mr. McNamara
`acknowledged that he cannot discern the difference between claims in an
`expired patent and claims in an unexpired patent and uses the same claim
`construction standard (i.e., plain and ordinary meaning) for both expired and
`unexpired patents. PO Resp. 17–19 (citing Ex. 2003, 152:19–25).
`In reply, Petitioner argues Mr. McNamara stated that he applied the
`plain and ordinary meaning as understood by a person having ordinary skill
`in the art. Reply 5 (citing Ex. 1003 ¶ 10; Ex. 2003, 152:15–18). Petitioner
`further argues Patent Owner’s reliance on Mr. McNamara being unable to
`differentiate between the “broadest reasonable construction” and the
`“ordinary and customary understanding” is misplaced because the difference
`between the two standards is a legal question. Reply 5. Petitioner also
`argues Patent Owner fails to demonstrate how Mr. McNamara’s claim
`construction is incorrect, why Mr. McNamara’s claim construction is
`different from the plain and ordinary meaning, or that his opinion and
`conclusion allegedly are based on an incorrect standard. Id. According to
`Petitioner, at best, Patent Owner illustrates that Mr. McNamara failed to
`explain the difference between the “broadest reasonable construction” and
`the “plain and ordinary meaning.” Id.
`Petitioner also argues Mr. McNamara’s declaration is consistent with
`the Board’s construction of “control device” and the remaining claim terms,
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`which were given their plain and ordinary meaning. Id. at 5–6 (citing Dec.
`10; Ex. 1003 ¶ 10). Regarding the claim term “control device,” as an
`example, Petitioner refers to Mr. McNamara’s statement that “‘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. at 6 (quoting Ex. 1003 ¶ 41). Petitioner argues
`Frossard performing numerous operations such as decoding and addressing
`is consistent with the Board’s construction of “control device” that includes
`performing “a number of operations.” Id. Petitioner also argues another
`example of Mr. McNamara’s consistency with the Board is disclosed in Mr.
`McNamara’s statement 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. (quoting Ex. 2003, 164:16–18). Petitioner further argues Mr. McNamara
`also states “‘I agree with the PTAB’s construction that control device is
`generally something that performs an operation or function or action; the
`transmitter is, yes, the transmitter is performing an operation.’” Id. (quoting
`Ex. 2003, 166:11–15).
`We agree with Petitioner. Mr. McNamara stated that he applied the
`plain and ordinary meaning as understood by a person having ordinary skill
`in the art. Ex. 1003 ¶ 10; Ex. 2003, 152:14–18. We also agree with
`Petitioner that Patent Owner’s reliance on Mr. McNamara being unable to
`differentiate between the “broadest reasonable construction” and the
`“ordinary and customary understanding” is misplaced because the difference
`between the two standards is a legal question. Moreover, we agree with
`Petitioner that Patent Owner’s argument fails to demonstrate how Mr.
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`McNamara’s claim construction is incorrect, why Mr. McNamara’s claim
`construction is different from the plain and ordinary meaning, or that Mr.
`McNamara’s opinion and conclusion allegedly are based on an incorrect
`standard.
`Mr. McNamara’s declaration is consistent with the Board’s
`construction of “control device” and the remaining claim terms, which were
`given their plain and ordinary meaning. Dec. 10; Ex. 1003 ¶ 10. For
`instance, Mr. McNamara states “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.”
`Ex. 1003 ¶ 41. Frossard’s performance of numerous operations such as
`decoding and addressing is consistent with the Board’s construction of
`“control device” that includes performing “a number of operations.”
`Compare e.g., Dec. 10, with Ex. 1003 ¶ 41. Another example of Mr.
`McNamara’s consistency with the Board is disclosed in Mr. McNamara’s
`statement that “the CPU 4 is acting as a control device as it is performing
`actions and operations on the ignition system and fuel pump.” Compare
`Dec. 10, with Ex. 2003, 164:16–18. Moreover, Mr. McNamara also states,
`“I agree with the PTAB’s construction that control device is generally
`something that performs an operation or function or action; the transmitter
`is, yes, the transmitter is performing an operation.” Ex. 2003, 166:11–15.
`Accordingly, we determine Mr. McNamara’s testimony is reliable and
`we will accord it appropriate weight in our analysis that follows.
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`C.
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`Alleged Anticipation of Claims 26, 29, 33, 42, 48, and 68 by Frossard
`1.
`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.
`
`Frossard (Ex. 1005)
`
`
`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
`server 1 validates the shut down order, the shut down order is transmitted to
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`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.
`Frossard Discloses the “A to B to C” System/Method of Independent
`Claims 26, 42, and 48
`
`Discussion
`
`a.
`
`The parties argue whether Frossard discloses the “A to B to C”
`system/method of independent claims 26, 42, and 48.7 PO Resp. 21–24;
`
`
`7 Each of the three instituted independent claims 26, 42, and 48 recite three
`control devices, with one control device located at the vehicle, and the other
`two control devices located remote from the vehicle. In claims 26 and 48,
`the “first control device” is located at the vehicle and the “second control
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`Reply 7–14. Because Petitioner has the burden of proof (see 35 U.S.C.
`§ 315(e), 37 C.F.R. § 42.20(c)), we begin with Petitioner’s arguments.
`Petitioner argues Frossard’s telephone and Minitel are two examples
`of disclosures of a “first control device” as recited in claim 42 and similarly
`recited in claims 26 and 48. Pet. 13, 18 (citing Ex. 1005, 4). Moreover,
`Petitioner argues the access code and corresponding intervention order is an
`example of the first signal, which is transmitted from the first control device
`as recited in claim 42 and similarly recited in claims 26 and 48. Pet. 18; see
`also Pet. 13 (quoting Ex. 1005, 4). Petitioner refers to the combination of
`Frossard’s server 1 and network 2 as disclosing a “second control device” as
`recited in claims 26, 42, and 48. Pet. 12, 21 (citing Ex. 1005, 4, Figs. 1, 4;
`Ex. 1003 ¶¶ 46, 70). In addition, Petitioner argues Frossard’s receiver
`decoder circuits 4 receiving “‘an order message to shut down the
`
`
`device” and “third control device” are located remote from the vehicle. In
`claim 42, the “third control device” is located at the vehicle, and “first
`control device” and “second control device” are located remote from the
`vehicle. In all three challenged independent claims, the “second control
`device” is the intermediate control device between the “first control device”
`and the “third control device.” Patent Owner refers to the “third control
`device” as being the control device within the vehicle that receives a signal
`from the intermediate “second control device,” and refers to the “first
`control device” as being remote from the vehicle that sends a signal to the
`intermediate “second control device.” PO Resp. 19–20.