Trials@uspto.gov
`571-272-7822
`
`
`
`
` Paper 32
`Entered: January 25, 2017
`
`
`
`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 IPR2015-01585
`Patent 6,542,405 B1
`_______________
`
`
`
`Before STACEY G. WHITE, JASON J. CHUNG, and BETH Z. SHAW,
`Administrative patent Judges.
`
`WHITE, Administrative patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`

`

`IPR2015-01585
`Patent 5,917,405 B1
`
`I. INTRODUCTION
`Nissan North America, Inc. (“Petitioner”) filed a Corrected Petition
`(Paper 6, “Pet.”) requesting inter partes review of claims 1–3, 11, 16, and 17
`of U.S. patent No. 5,917,405 (Ex. 1001, “the ‘405 patent”) pursuant to 35
`U.S.C. §§ 311–319. Joao Control & Monitoring Systems, LLC, (“Patent
`Owner”) filed a Preliminary Response. (Paper 10, “Prelim. Resp.”). Based
`on our review of these submissions, we instituted inter partes review of
`claims 1–3, 11, 16, and 17 of the ‘405 patent on the proposed grounds of
`unpatentability under 35 U.S.C. §§ 102, 103. Paper 11 (“Dec.”).
`Specifically, we authorized this inter partes review to proceed as to the
`following grounds:
`Reference(s)
`Frossard1
`Frossard and Pagliaroli2
`Frossard and Simms3
`Frossard and Shimizu4
`Pagliaroli
`Pagliaroli and Simms
`Pagliaroli and Shimizu
`
`Claim(s) Instituted
`1 and 16
`2 and 17
`3
`11
`1, 2, 16, and 17
`3
`11
`
`Basis
`§ 102
`§ 103
`§ 103
`§ 103
`§ 102
`§ 103
`§ 103
`
`
`Id. at 25.
`Patent Owner filed a Patent Owner’s Response (Paper 22, “PO
`Resp.”), and Petitioner filed a Reply (Paper 26, “Reply”). An oral hearing
`
`
`1 EP 0505266 A1 (Ex. 1004); English translation (Ex. 1005) (“Frossard”).
`2 U.S. patent No. 5,276,728 (Ex. 1006) (“Pagliaroli”).
`3 U.S. patent No. 5,334,974 (Ex. 1007) (“Simms”).
`4 U.S. Patent No. 4,373,116 (Ex. 1008) (“Shimizu”).
`
`2
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`IPR2015-01585
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`
`was conducted on October 20, 2016. A transcript of the oral hearing is
`included in the record. Paper 31 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons discussed below, Petitioner has demonstrated by a
`preponderance of the evidence that claims 1–3, 11, 16, and 17 of the ‘405
`patent are unpatentable.
`
` Related Proceedings
`The parties inform us that the ʼ405 patent is at issue in approximately
`one dozen lawsuits pending in courts around the country. Paper 21, Pet. 1,
`Ex. 1020. In addition, ex parte reexamination No. 90/013,300 was filed with
`respect to the ’405 patent and has been stayed in light of this proceeding.
`Paper 25. The ’405 patent also is the subject of a co-pending petition for
`inter partes review (IPR2015-01613).
`
` The ʼ405 patent
`The ’405 patent describes a remote-controlled control, monitoring,
`and/or security apparatus and method for vehicles. Ex. 1001, 1:18–22. The
`apparatus described in the ’405 patent allows an owner, occupant, or other
`authorized individual to control or to perform various monitoring and
`security tasks in regards to a vehicle from a remote location and at any time.
`Id. at 2:64–3:3.
`An embodiment of the apparatus of the ’405 patent includes a
`transmitter system which is “a remote system, which may or may not be
`physically connected to the remainder of the apparatus. Further, the
`transmitter system is not located in the [vehicle] . . . , but rather, is located
`external from, and/or separate and apart from, the vehicle.” Id. at 3:29–35.
`The apparatus also includes a CPU that is connected electrically and/or
`
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`IPR2015-01585
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`linked to one or more vehicle equipment systems (e.g., vehicle ignition or
`anti-theft systems). Id. at 4:12–17; 4:41–62. The vehicle equipment
`systems may be activated, de-activated, reset, or controlled by the apparatus.
`Id. at 4:63–67. This activation or control may be achieved by a user entering
`a code on the transceiver of the transmitter system. Id. at 6:9–15. The code
`is transmitted to the CPU and then the CPU communicates with the
`appropriate vehicle equipment system. Id. at 6:64–7:2.
`
` Illustrative Claim
`As noted above, we instituted inter partes review as to claims 1, 2, 3,
`11, 16, and 17 of the ʼ405 patent, of which claims 1 and 16 are independent.
`Claim 1 is illustrative of the instituted claims and is reproduced below:
`1.
`A control apparatus for a vehicle, which comprises:
`
`a first control device, wherein said first control device one of
`generates and transmits a first signal for one of
`activating, deactivating, enabling, and disabling, one of a
`vehicle component, a vehicle device, a vehicle system,
`and a vehicle subsystem, wherein said first control device
`is located at the vehicle;
`
`wherein said first control device is responsive to a second
`signal, wherein the second signal is 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, and further wherein the second
`control device is responsive to a third signal, wherein the
`third signal is 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.
`
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`IPR2015-01585
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`II. CLAIM CONSTRUCTION
`As acknowledged by the parties, the ’405 patent has expired. See
`Pet. 8; PO Resp. 5. We construe expired patent claims according to the
`principles set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)
`(en banc). See In re Rambus, 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, 415 F.3d at 1312–17). A patentee may act
`as a lexicographer by giving a term a particular meaning in the specification
`with “reasonable clarity, deliberateness, and precision.” In re Paulsen, 30
`F.3d 1475, 1480 (Fed. Cir. 1994).
`
` Terms Preliminarily Construed in the Decision to Institute
`For purposes of the Decision to Institute, we construed the terms
`“monitoring device,” “positioning device,” “voice synthesizing device,” and
`“control device.” Dec. 5–14. Neither party raised any concerns regarding
`the construction of “control device,” “monitoring device,” and “voice
`synthesizing device.” See PO Resp. 8, 12–13; Reply 1. Based on our
`review of the full record, we discern no reason to modify or further discuss
`in this Final Written Decision our construction for these claim terms. For
`convenience, the claim construction is reproduced in the table below.
`
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`IPR2015-01585
`Patent 5,917,405 B1
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`
`Term
`Control
`Device
`
`Citations
`Ex. 2002, 6
`
`Ex. 1001, 21:32–34,
`Figs. 5A, 5B, 9, 11A,
`11B, 12, 13, 14, 15,
`16 Ex. 3001, 822
`
`voice
`synthesizing
`device
`
`
`
`Term
`Monitoring
`Device
`
`Construction
`A device or a computer, or that part of a
`device or a computer, which performs an
`operation, an action, or a function, or
`which performs a number of operations,
`actions, or functions.
`an electronic device that generates
`speech
`
`Function
`monitoring
`at least one
`of the
`vehicle,
`vehicle
`operational
`status, or
`vehicle
`operation
`
`Citations
`Pet. 9–11; Ex. 1001,
`Figs. 1, 6, 24:5–15,
`73:66–74:8; 11:63–
`12:4, 12:20–30,
`12:37–42, 12:48–56,
`13:34–49, 14:4–11,
`14:18–23, 14:32–41,
`15:23–33, 28:52–59,
`33:10–16, 53:37:11–
`29, 49–56, 57:48–56,
`60:28–36, 63:49–57,
`65:11–17, 69:4–10;
`Ex. 1003 ¶¶ 40–46.
`
`Structure
`Hardware such as home fire
`detectors, video recording
`devices, cameras, audio
`recording devices, gas meters,
`electricity meters, personal
`communication devices,
`personal digital assistants,
`cellular telephones,
`electronically equipped
`watches, computer servers, and
`CPU 4 or software that
`monitors an occurrence and/or
`a situation associated with a
`vehicle and which may
`warrant providing notice, that
`is located at the vehicle
`
`
` Positioning Device
`Claim 3 recites, in relevant part, “a positioning device for determining
`location of the vehicle, wherein said positioning device is located at the
`
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`IPR2015-01585
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`vehicle.” In the Institution Decision, we preliminarily construed the term
`“positioning device” to be governed by 35 U.S.C. § 112 ¶ 65. Dec. 6. Patent
`Owner disagrees and asserts that one of ordinary skill in the art would
`understand ‘“positioning device’ to be the name for the structure that
`performs the corresponding functions, even though the term covers a broad
`class of structures and/or identifies the structures by their function.” PO.
`Resp. 10–11. Petitioner maintains that the preliminary construction should
`govern this Final Written Decision. Reply 1–2. In Patent Owner’s view,
`“positioning device” is similar to terms such as filters, brakes, and clamps
`that have functional names, but still provide sufficient structure to remove
`the term from the reach of § 112 ¶ 6. PO Resp. 10–11. Patent Owner argues
`that Petitioner’s position is inconsistent because Petitioner argues that
`“positioning device” is not sufficient structure while arguing for a
`construction that includes the same term. Id. at 11 (noting that the proposed
`structure is a “satellite-based global positioning device.”). We are persuaded
`by Patent Owner’s arguments. Thus, we find that “positioning device” is not
`governed by 35 U.S.C. § 112 ¶ 6. For the purposes of this decision, we
`adopt Patent Owner’s proposed construction of “positioning device” which
`is “a device that determines the location of the vehicle.” PO Resp. 12.
`
`
`5 Section 4(c) of the Leahy-Smith America Invents Act (“AIA”) re-
`designated 35 U.S.C. § 112 ¶ 6, as 35 U.S.C. § 112(f). Pub. L. No. 112-29,
`125 Stat. 284, 296 (2011). Because the ’405 patent has a filing date before
`September 16, 2012 (effective date of § 4(c)), we will refer to the pre-AIA
`version of § 112.
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` First, Second, and Third Signal Terms
`Patent Owner provides proposed constructions for the first, second,
`and third signal terms. PO Resp. 8–9. 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 sent
`by a third device.” Id. at 9.
`We agree that a first signal is sent by a first device. For example,
`claim 1 recites, in relevant part, that the “first control device” generates and
`transmits the first signal. The parties’ dispute, however, is directed to
`whether there may be an intermediate device between the transmitting
`device (e.g., second device) and the signal’s destination (e.g., first device).
`In Patent Owner’s view, there may not be an intermediate device between
`the first and second devices. See PO Resp. 18.
`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 ’405
`patent and the ’363 patent each descend from U.S. patent Application Nos.
`08/587,628, 08/622,749, 08/489,238 (Patent No. 5,513,244) and 08/073,755.
`See Ex. 1001, at [63]. Patent Owner relied upon this same filing in support
`of its arguments regarding the construction of “remote,” “control device,”
`and “located at.” See Dec. 9–10. The Applicant provided this definition
`several years after the issuance of the ’405 patent. See Ex. 1001, at [45]
`(June 29, 1999 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 patents, regardless of
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`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. 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.”
`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
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`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.
`
`III. ANALYSIS
` Qualifications of Mr. David McNamara
`Patent Owner asserts that we should accord little or no weight to the
`testimony of Mr. David McNamara.6 PO Resp. 13–17. Patent Owner’s
`objections are twofold. First, Patent Owner argues that Mr. McNamara did
`not review the prosecution history of the ’405 patent. Id. at 14. Second,
`Patent Owner contends that Mr. McNamara has an erroneous understanding
`of the standards of claim construction. Id. at 15–16.
`
`Prosecution History
`
`1.
`Patent Owner argues Mr. McNamara’s testimony is flawed fatally
`because during cross-examination, Mr. McNamara testified that he had not
`reviewed the prosecution history of the ’405 patent. PO Resp. 14–15 (citing
`Ex. 2005, 153:11–22 (In response to Patent Owner’s questions “you did not
`review the prosecution histories for the four JCMS patents [including the
`’405 patent] at issue correct” and “you did not apply the, any definitions that
`
`
`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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`may have been provided by Mr. Joao during prosecution of those patents,
`correct,” Mr. McNamara answers “[t]hat’s correct.”)).
`In reply, Petitioner argues that Mr. McNamara states in his declaration
`that he read the ’405 patent and its prosecution history. Reply 3 (citing Ex.
`1003 ¶ 16). According to Petitioner, Patent Owner improperly focuses Mr.
`McNamara’s testimony that he did not read the prosecution history while
`ignoring other statements to the contrary. Id. Petitioner argues Mr.
`McNamara’s testimony, however, was approximately nine months after Mr.
`McNamara signed his declaration. Reply 3 (citing Ex. 2005, 153:11–15).
`According to Petitioner, Mr. McNamara’s inconsistent testimony, at best,
`illustrates a lapse in memory during a lengthy deposition. Reply 3.
`Petitioner argues that Mr. McNamara reviewed and considered
`relevant portions of the prosecution history such as the definitions identified
`in Exhibit 1012. Id. at 4. Exhibit 1010 includes prosecution history
`definitions of the ’363 patent and the ’010 patent. Id. (citing Ex. 1003 ¶¶ 16,
`23). 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. 2005,
`154:11–20).
`We are not persuaded that Mr. McNamara’s statements on cross
`examination are sufficient to accord his testimony little or no weight. The
`prosecution history is an important element in understanding the claims of a
`patent. We, however, are persuaded that the statements made during cross
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`examination appear to be misstatements as to Mr. McNamara’s review of the
`patent and its underlying prosecution history. Mr. McNamara signed his
`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. 2005, 154:11–20. In addition,
`we have reviewed the relevant prosecution history and we are in the position
`to evaluate whether Mr. McNamara’s testimony is at odds with the evidence
`in this case, which include the relevant prosecution history.
`Accordingly, we are not persuaded Mr. McNamara’s testimony should
`be accorded little or no weight due to the statements he made during cross-
`examination regarding his review of the prosecution history.
`
`Correct Claim Construction Standards
`
`2.
`Mr. McNamara stated that he applied the ordinary and customary
`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 ’405 patent]. I used the one of ordinary and customary understanding.”
`Ex. 2005, 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. 14–15 (citing Ex. 2005, 151:14–152:18 (Mr.
`McNamara acknowledged that he used “the broadest reasonable construction
`in light of the specification of the [’405] patent.” However, in response to
`Patent Owner’s questions “[a]re you aware that the PTAB has indicated or
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`stated that that 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 ’405 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. 14–15 (citing Ex. 2005, 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 3–4 (citing Ex. 1003 ¶ 10; Ex. 2005, 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 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.
`5–14; Ex. 1003 ¶ 10–12). 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 ¶ 60). 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. 2005, 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. 2005, 166:11–15).
`We are not persuaded that Mr. McNamara’s statements regarding the
`appropriate claim construction standard merit according his testimony little
`or no weight. 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 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
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`standards is a legal question. Mr. McNamara’s testimony is presented for
`the purpose of providing “scientific, technical, or other specialized
`knowledge will help the trier of fact to understand the evidence or to
`determine a fact in issue.” FED. R. EVID. 702. We do not look to Mr.
`McNamara as an expert or even as a purported expert on legal issues.
`Moreover, we agree with Petitioner that Patent Owner’s argument fails to
`demonstrate how Mr. McNamara’s claim construction is incorrect or why
`Mr. McNamara’s claim construction is different from the plain and ordinary
`meaning.
`Accordingly, we deny Patent Owner’s request that we accord Mr.
`McNamara’s testimony little or no weight. We will analyze Mr.
`McNamara’s testimony as part of our analysis of all of the evidence
`presented in this proceeding and we accord his statements the appropriate
`weight.
`
` Analysis of Asserted Grounds Based on Frossard (Ex. 1005)
` Overview of Frossard
`Frossard describes a system for controlling shutdown of movable or
`mobile equipment and locating the movable or mobile equipment. Ex. 1005,
`2. Figure 1 is reproduced below.
`
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`
`
`Figure 1 illustrates movable or mobile equipment 3 containing
`receiver-decoder circuits 4 for an order message to shutdown movable or
`mobile equipment 3. Id. at 5. The specification describes a scenario in
`which equipment 3 is stolen and the owner or authorized person calls server
`1 to communicate a shutdown order of equipment 3. Id. at 9. After server 1
`validates the shutdown order, the shutdown order is transmitted to receiver-
`decoder circuits of equipment 3. Id. at 3, 9. Figure 2, which is reproduced
`below, depicts the details of receiver-decoder 4, which is used to shutdown
`equipment 3.
`
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`
`
`Figure 2 illustrates receiver-decoder circuits 4 and equipment interface 5
`from Figure 1. Id. at 3, 7. Shutdown circuit 423 controls immediate or
`deferred shutdown of equipment 3. Id. at 9–10. When shutdown of
`equipment 3 occurs, an electrical contact that activates the starter is broken.
`Id. at 10, 14.
` Analysis of Asserted Ground of Anticipation by Frossard
`Petitioner asserts that claims 1 and 6 of the ’405 patent are
`unpatentable under 35 U.S.C. § 102 as anticipated by Frossard. Pet. 16–26.
`Petitioner relies on claim charts showing how this reference allegedly
`discloses the claimed subject matter. Id. Petitioner further relies on a
`declaration from David McNamara. Ex. 1003. For the reasons discussed
`below, we conclude that Petitioner has established by a preponderance of the
`evidence that claims 1 and 6 of the ’405 patent are anticipated by Frossard.
`Both of the challenged independent claims (1 and 16) recite a first,
`second, and third control device. In claim 1, the “first control device is
`
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`located at the vehicle.” Id. at 74:64–65. Similarly, in claim 16, the “third
`control device is located at the vehicle.” Id. at 76:53–52. Both independent
`claims recite that “the second control device is located at a location which is
`remote from the vehicle.” Id. at 75:2–3; 76:55–56. In addition, claim 1
`recites that “the third control device is located at a location which is remote
`from the vehicle and remote from the second control device.” Id. at 75:6–8.
`Similarly, claim 16 recites that the “first control device is located at a
`location remote from the second control device and remote from a vehicle.”
`Id. at 76:49–50. Thus, all of the independent claims require three control
`devices, one of which is located at the vehicle and two other control devices
`that are located at two other places that are remote from the vehicle.
`Petitioner argues that Frossard discloses these control devices7
`through its discussion and depiction of receiver-decoder 4 (first control
`device) (Pet. 17), resource 2 and server center (second control device) (id. at
`19), and a phone or Minitel (third control device) (id. at 20). Frossard’s
`receiver-decoder 4 sends an “order message to shut down the equipment.”
`Id. at 17 (citing Ex. 1005, 3 ¶ 3); Ex. 1005, 5 ¶ 2. The receiver-decoder
`
`
`7 Petitioner’s arguments regarding the first control device of claim 1
`correlates to the arguments espoused for the third control device of claim 16;
`similarly Petitioner’s arguments as to the second control device of claim 1
`correlates to the second control device of claim 16; and Petitioner’s
`arguments in regards to the third control device of claim 1 correlates to those
`for the first control device of claim 16. Petitioner relies on the same
`disclosures in Frossard for each of the corresponding devices in claims 1 and
`16. Compare Pet. 16–21 (arguments for claim 1) with Pet. 21–26 (argument
`for claim 16). Thus, our analysis of Frossard’s disclosures applies to each of
`the independent claims. For convenience, unless otherwise indicated, we
`shall use the terms first, second, and third control device to refer to the
`control devices as described in claim 1.
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`circuit is installed within the vehicle itself. Ex. 1005, Abstract. Frossard’s
`receiver-decoder “addresses the corresponding commands to equipment 3
`itself, causing immediate or deferred shutdown depending on the application
`under consideration.” Pet. 17 (citing Ex. 1005, 9.). Resource 2 allows for
`the selective transmission of order message M to shutdown equipment 3. Id.
`at 19 (citing Ex. 1005, 4). According to Petitioner the server and resource 2
`generate and transmit the second signal to the first control device. Id. (citing
`Ex. 1003 ¶ 67). Petitioner argues that a telephone or Minitel may be used to
`transmit the “access code and the corresponding intervention order.” Id. at
`20 (citing Ex. 1005, 4). Petitioner asserts that “Frossard discloses that the
`server center and network (second control device) generate and transmit the
`second signal (message M) in response to the third signal (access code and
`corresponding intervention order).” Id. at 21 (citing Ex. 1003 ¶ 71).
`Patent Owner argues that the claimed second control device is not
`meet by Frossard’s resource 2 and server center 1 because they “are actually
`at least two separate devices.” PO Resp. 18. In Patent Owner’s view
`Frossard’s system is not one with three control devices; instead Frossard has
`at least four control devices and thus, the devices and signals in Frossard do
`not disclose the claimed three signal/three device system. Id. at 17–22.
`In Frossard, server center 1 may be accessed by a subscriber upon
`presentation of an access code. Ex. 1005, 4. Codes are sent to server center
`1 by a subscriber in order to generate a request to shutdown equipment 3.
`Id. at 5. Resource 2 transmits the shutdown message to equipment 3. Id. at
`4. According to Mr. McNamara, “Frossard discloses that the second control
`device (the server and network) generate and transmit the second signal.”
`Ex. 1003 ¶ 67.
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`Patent Owner’s dispute with Petitioner’s characterization of Frossard
`is based, in part, upon a disagreement as to whether there may be an
`intermediate device located between Frossard’s server 1, which generates
`the shutdown signal and receiver-decoder circuits 4 that receive the
`shutdown signal. PO Resp. 20. According to Patent Owner, resource 2 is an
`intermediate device that receives the second signal (the shutdown message)
`from server 1 and then generates a third signal, which is transmitted to the
`receiver-decoder circuits 4. Id. at 20–21. Patent Owner’s argument is based
`in part upon a construction of the claim to exclude intermediate devices, a
`construction which we have not adopted.
`Moreover, Petitioner responds by directing us to the construction of
`control device that is found in the prosecution history and has been adopted
`for this proceeding. Reply 7–8. Pursuant to that construction, which is not
`contested, a control device is “[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.” See supra
`§ II.A. According to Petitioner, because the “control device” can comprise
`“part of a device,” it follows that a device can comprise multiple parts.
`Reply 8. Petitioner also explains because a “control device” is a type of
`device, a “control device” can include necessarily multiple parts. Id.
`Petitioner is correct in arguing that Patent Owner improperly attempts
`to limit “control device” in a way that contradicts the construction of the
`term. We agree with Petitioner that Frossard’s server center 1 and resource
`2 may disclose the claimed “second control device” because by definition a
`“control device” can comprise “part of a device”; therefore, it follows that if
`something may be “part of a device” then it is permissible for that device to
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