Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 11
`Filed: January 29, 2016
`
`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 5,917,405
`_______________
`
`
`
`Before HOWARD B. BLANKENSHIP, STACEY G. WHITE, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
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`IPR2015-01585
`Patent 5,917,405
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`
`I. INTRODUCTION
`
`A. Background
`Nissan North America, Inc. (“Petitioner”) filed a Corrected Petition
`(Paper 6, “Pet.”) seeking to institute an inter partes review of claims 1, 2, 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.”). We have jurisdiction under 35 U.S.C. § 314(a), which provides that
`an inter partes review may not be instituted “unless . . . there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.”
`Petitioner contends the challenged claims are unpatentable under
`35 U.S.C. §§ 102 and 103 on the following specific grounds (Pet. 16–60):
`Reference(s)
`Basis
`Claim(s) Challenged
`Frossard1
`§ 102
`1 and 16
`Frossard and Pagliaroli2
`§ 103
`2 and 17
`Frossard and Simms3
`§ 103
`3
`Frossard and Shimizu4
`§ 103
`11
`Pagliaroli
`§ 102
`1, 2, 16, and 17
`Pagliaroli and Simms
`§ 103
`3
`Pagliaroli and Shimizu
`§ 103
`11
`
`
`1 EP 0505266 A1 (Ex. 1004); English translation of EP 0505266 A1 (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”).
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`Our factual findings and conclusions at this stage of the proceeding
`are based on the evidentiary record developed thus far (prior to Patent
`Owner’s Response). This is not a final decision as to patentability of claims
`for which inter partes review is instituted. Our final decision will be based
`on the record as fully developed during trial. For reasons discussed below,
`we institute inter partes review of the ʼ405 patent as to claims 1, 2, 3, 11, 16,
`and 17.
`
`B. Related Proceedings
`Petitioner informs us that the ʼ405 patent is at issue in Joao Control &
`Monitoring Systems LLC v. City of Yonkers, No. 1:12-cv-7734 (S.D.N.Y.);
`Joao Control & Monitoring Systems, LLC v. Chrysler Corp., No. 4:13-cv-
`13957 (E.D. Mich.). Pet. 1; Ex. 1020. In addition, ex parte reexamination
`No. 90/013,300 was filed with respect to the ’405 patent and is pending.
`Pet. 1; Ex. 1020. The ’405 patent also is the subject of a co-pending petition
`for inter partes review (IPR2015-01613).
`
`C. The ʼ405 Patent
`The ’405 patent describes a remote-controlled control, monitoring,
`and/or security apparatus and method for vehicles or premises. 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
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`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
`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.
`
`D. Illustrative Claim
`As noted above, Petitioner challenges 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 challenged 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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`
`II. CLAIM CONSTRUCTION
`As acknowledged by the parties, the ’405 patent has expired. See Pet.
`8; Prelim. Resp. 7. 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).
`
`A. Asserted Means Plus Function Terms
`
`Petitioner seeks construction of “monitoring device,” “positioning
`device,” and “voice synthesizing device.” Pet. 9–16. Patent Owner
`disagrees with Petitioner’s proposed constructions for these terms, but
`declines to provide a construction or “substantive argument” at this time.
`Prelim. Resp. 36–37. Petitioner asserts that each of these terms is governed
`by 35 U.S.C. § 112 ¶ 65. Based on the record currently before us, we are
`persuaded by Petitioner’s arguments that the terms “monitoring device” and
`
`
`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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`“positioning device” are governed by § 112 ¶ 6. See Williamson v. Citrix
`Online, LLC, 792 F.3d 1339, 1350 (Fed. Cir. 2015) (“Generic terms such as
`‘mechanism,’ ‘element,’ ‘device,’ and other nonce words that reflect nothing
`more than verbal constructs may be used in a claim in a manner that is
`tantamount to using the word ‘means’ because they ‘typically do not connote
`sufficiently definite structure’ and therefore may invoke § 112, para. 6”)
`(internal citation omitted)).
`As to the term “positioning device,” we are persuaded by Petitioner’s
`arguments (Pet. 11–14) and for the purposes of this decision, we adopt the
`following construction:
`
`Term
`Positioning
`Device
`
`Citations
`Pet. 11–14; Ex.
`1001, Figs. 1, 2, 10,
`5:15–21; 7:48–49;
`25:9–32; 25:46–49;
`25:67–26:9; Ex.
`1003 ¶¶ 47–51.
`
`Function
`determining location
`of the vehicle,
`wherein said
`positioning device is
`located at the vehicle
`
`Structure
`Satellite-based
`global
`positioning
`device
`
`
`As to the term “monitoring device,” we are not persuaded that
`Petitioner’s construction accounts for all of the structure provided in the
`specification. Petitioner proposes that the structure for this term should be
`construed as “[h]ardware 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.” Pet. 11. This construction is derived from a
`discussion of monitoring devices that is found in the specification. See id. at
`10–11 (citing Ex. 1001, 73:66–74:8). The specification, however, provides
`additional discussion of structure for this term. For example, the
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`specification lists a number of monitoring devices including: 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. See Ex. 1001, 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,
`37:11–29, 53:49–56, 57:48–56, 60:28–36, 63:49–57, 65:11–17, 69:4–10,
`Fig. 6.
`One example discussed in the specification describes utilizing the
`claimed invention in conjunction with a motor home, mobile home, or
`camper. Id. at 61:38–43. The specification notes that mobile home would
`utilize monitoring and security functions applicable to motor vehicle
`equipment, home systems, equipment, and appliances. Id. This example
`illustrates that monitoring structures described in context of other
`embodiments, such as a home fire detector for a residential premises, also
`would be relevant as to the structure applicable in the context of motor
`vehicles. Thus, on this record, we are persuaded that all of the monitoring
`circuits, sensors, and devices described in the specification are structure for
`this means plus function term. Therefore, for the purposes of this decision,
`we adopt the following construction:
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`Term
`Monitoring
`Device
`
`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.
`
`Function
`monitoring at
`least one of
`the vehicle,
`vehicle
`operational
`status,
`vehicle
`operation
`
`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
`
`
`As to the term “voice synthesizing device,” we are not persuaded that
`this is recited in functional language. One of skill in the art would have
`understood a synthesizer to be “[a]n electronic instrument that combines
`simple wave forms to produce more complex sounds, such as those of
`various other instruments.” Ex. 3001, 822 (synthesizer, The American
`Heritage Dictionary (3d ed. 1994)). On this record and for the purposes of
`this decision, we are persuaded that one of ordinary skill in the art would
`have understood a voice synthesizing device to be an electronic device that
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`generates speech. This is consistent with the specification’s description of
`“electronically synthesized voice data which is generated by a voice
`synthesizer 4B.” Ex. 1001, 21:32–34, Figs. 5A, 5B, 9, 11A, 11B, 12, 13, 14,
`15, 16.
`
`B. Terms Contended to Have Been Defined in Prosecution History of
`Other Patent Applications
`
`Patent Owner argues that the terms “control device,” “remote,” and
`“located at” are defined expressly in the prosecution history of at least two
`related applications. Prelim. Resp. 10–14. Petitioner does not provide
`explicit arguments regarding these terms. We are not persuaded that express
`construction of “remote,” or “located at” is necessary in order to resolve the
`issues currently before us. Thus, we discern no need to provide express
`constructions for these terms at this time. Vivid Techs., Inc. v. Am. Sci. &
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be
`construed that are in controversy, and only to the extent necessary to resolve
`the controversy.”).
`We, however, discern a need to provide an express construction for
`“control device.” Patent Owner asserts that “control device” is defined
`expressly in remarks filed November 23, 2007, during prosecution of the
`patent application that issued as U.S. Patent No. 7,397,363 (“the ‘363
`patent”) (Ex. 2002). Prelim. Resp. 14. This statement was made several
`years after the issuance of the ’405 patent. See Ex. 1001, at [45] (June 29,
`1999 issuance date). 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].
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`As the Federal Circuit has noted, “[a] statement made during
`prosecution of related patents may be properly considered in construing a
`term common to those patents, regardless of whether the statement pre- or
`post-dates the issuance of the particular patent at issue.” Teva Pharm. USA,
`Inc. v. Sandoz, Inc., 789 F.3d 1335, 1343 (Fed. Cir. 2015) (citing Microsoft
`Corp. v. Multi–Tech Sys., Inc., 357 F.3d 1340, 1350 (Fed. Cir. 2004)). An
`explicit definition for “control device” was provided in the related
`application. See Ex. 2002, 6. We have reviewed this definition and, on this
`record, we find it to be reasonable and instructive to understanding the
`proper scope of this claim term. See Paulsen, 30 F.3d at 1480.
`Patent Owner seeks to further narrow this term by also construing this
`term to mean that the control device must be “separate and distinct” from the
`vehicle system, the communications system, and the interface device.
`Prelim. Resp. 15–35. For reasons stated below, we do not find these
`arguments to be persuasive.
`First, Patent Owner argues that the control devices must be separate
`and distinct from the vehicle system being controlled. Prelim. Resp. 15–18.
`Claim 1 recites, in relevant part, “wherein the first control device is located
`at the vehicle” and that the first control device generates and transmits a first
`signal that directs a vehicle system to perform certain specified activities.
`Ex. 1001, 74:60–64; see also id. at 76:52–62 (reciting similar limitations in
`claim 16 in reference to the third control device and third signal). Patent
`Owner relies on the description of embodiments in which CPU 4 (which
`Patent Owner characterizes as the first control device of claim 3) is
`“electrically connected and/or linked to at least one or more of a vehicle
`equipment system or systems 11.” Id. at 17–18 (quoting Ex. 1001, 22:24–
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`32). Patent Owner also relies upon a passage from the specification that
`describes the vehicle equipment system as being “utilized in conjunction
`with the apparatus.” Id. at 17 (quoting Ex. 1001, 4:62–65).
`We are not persuaded that these passages require such a narrow
`interpretation of the claim language. “[A]lthough the specification often
`describes very specific embodiments of the invention,” Phillips v. AWH
`Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005), the U.S. Court of Appeals for
`the Federal Circuit “ha[s] repeatedly warned against confining the claims to
`those embodiments.” Id. On this record, this claim language does not
`require the control device to be separate and distinct from the vehicle
`systems; instead it speaks to the location of the control device and the
`transmission of signals between these elements of the claimed apparatus.
`We are not persuaded that the existence of embodiments where the control
`device is utilized by or electrically connected to the vehicle system narrows
`this term so as to exclude a control system that is not “separate and distinct”
`from the vehicle system.
`Second, Patent Owner argues that the control devices are separate and
`distinct from the communication system or the communication network, or
`any component of same, on, over, via, or in conjunction with, which they
`operate. Prelim. Resp. 18–29. According to Patent Owner, the specification
`repeatedly describes the recited control devices as “operat[ing] on, over, via
`or in conjunction with, a communication system or a communication
`network” and as such the control devices and communication network must
`be distinct. Id. at 20. Patent Owner quotes several passages from the
`specification that describe the claimed apparatus as operating “in a mobile
`and/or a wireless communications environment” and sending signals “over a
`
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`communication system.” Id. at 21–22 (quoting Ex. 1001, 3:48–56), 21
`(quoting Ex. 1001, 3:12–20). Here again, we are not persuaded that these
`passages narrow the claim language so as to exclude control devices that are
`not distinct from the communication system. A network environment or a
`communication system could include any number of network devices or
`pieces of communications equipment. We are not persuaded that these
`disclosures from the specification exclude all network devices and
`equipment from being part of the claimed control device. In addition, we
`note that the specification states that “[t]elephone signals and telephone
`communication devices can be utilized in the present invention.” Ex. 1001,
`3:54–56 (emphasis added). Thus, we are not persuaded that control device
`must be separate and distinct from the communication system or the
`communication network.
`Finally, Patent Owner argues that the control devices must be separate
`and distinct from an interface device. Prelim. Resp. 30–35. Patent Owner
`supports this argument by citing claims 32 and 68 of U.S. Patent No.
`6,549,130 (Ex. 2003, “the ’130 patent) and several passages from the
`specification of the ’405 patent. The ’405 patent is a continuation of the
`’130 patent and as such, Patent Owner argues that the terms common to both
`patents should be construed the same. Id. at 34. Claims 32 and 68 of the
`’130 patent respectively depend from claims 26 and 48 of the ’130 patent.
`Id. at 34; Ex. 2003. Claims 32 and 68 each recite an interface device and
`claims 26 and 48 each recite control devices. Id. at 34–35; Ex. 2003. Patent
`Owner argues that the doctrine of claim differentiation creates a presumption
`that the interface device in claims 32 and 68 of the ’130 patent is distinct
`from the control devices in claims 26 and 48 of the ’130 patent and, by
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`extension, the interface device also is distinct from the control devices of the
`’405 patent. Prelim. Resp. 34–35. Although the doctrine of claim
`differentiation creates a presumption that the “interface device” limitations
`in the dependent claims is different in scope than the “control device”
`limitations, this presumption can be overcome by written description or
`prosecution history. See Seachange Int’l, Inc. v. C-COR Inc., 413 F.3d
`1361, 1369 (Fed. Cir. 2005).
`Here, we are not persuaded that the specification of the ’405 patent
`supports Patent Owner’s argument. The specification repeatedly describes
`the interface device as optional. For example, Patent Owner relies on the
`specification describing “systems 11 are located externally from apparatus 1
`and may or may not be connected and/or linked to the CPU 4 via . . .
`interface 12 which may or may not be required.” Prelim. Resp. 30 (quoting
`Ex. 1001, 22:24–32) (emphasis added); see also id at 31 (quoting Ex. 1001,
`24:52–61) (“systems 11, and their associated interface devices 12, may be
`optional and may further include any other systems and/or devices which
`may, or are, utilized in and/or in conjunction with any of the above noted or
`envisioned vehicles”) (emphasis added).
`Each of the cited portions of the Specification relied upon by Patent
`Owner does not include a special definition or a disavowal that requires the
`“interface device” to be separate and distinct from the “control device[s].”
`The cited portions instead describe an optional interface device that may or
`may not be present in a claimed system. Thus, we are not persuaded that the
`challenged claims require control devices to be distinct from any interface
`device.
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`Thus, for all of the foregoing reasons, we adopt the following
`construction for purposes of this decision.
`
`Term
`Control
`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.
`
`Citations
`Prelim. Resp.
`17–18; Ex.
`2002, 6
`
`
`
`III. ANALYSIS
`
`We turn to Petitioner’s asserted grounds of unpatentability to
`determine whether Petitioner has met the threshold of 35 U.S.C. § 314(a).
`
`A. 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,
`2:1–2. 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 5:7–12. The specification describes a scenario in
`which equipment 3 is stolen, the owner or authorized person calls server 1 to
`communicate a shutdown order of equipment 3. Id. at 9:14–17. After server
`1 validates the shutdown order, the shutdown order is transmitted to
`equipment 3. Id. at 9:23–24. Figure 2, which is reproduced below, depicts
`the details of receiver-decoder 4, which is used to shutdown equipment 3.
`
`
`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 shutdown of equipment 3. Id. at 9:28–10:3. When
`shutdown of equipment 3 occurs, an electrical contact that activates the
`starter is broken. Id. at 10:13–21.
` Analysis of Asserted Ground of Anticipation by Frossard
`Petitioner asserts that claims 1 and 16 of the ’405 Patent are
`unpatentable under 35 U.S.C. § 102 as anticipated by Frossard. Pet. 16–26.
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`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.
`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
`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 devices6
`through its discussion and depiction of receiver-decoder 4 (first control
`
`
`6 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) and 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
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`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. 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 ¶ 3.). Resource 2 allows for the
`selective transmission of order message M to shutdown equipment 3. Id. at
`19 (citing Ex. 1005, 4 ¶ 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 ¶ 3). 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 Frossard fails to teach the first control
`device.7 Prelim. Resp. 38. According to Patent Owner, Frossard’s receiver-
`decoder 4 is an interface device and not a control device. Id. at 39. Patent
`Owner reasons that Frossard’s receiver-decoder 4 merely functions as an
`
`
`shall use the terms first, second, and third control device to refer to the
`control devices as described in claim 1.
`7 Similar to Petitioner, Patent Owner is applying the same analysis to the
`first control device of claim 1 and the third control device of claim 16. For
`convenience, we shall refer to these devices as the first control device.
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`“interface device” because it decodes a message sent by server 1. Id. As
`noted above, however, we are not persuaded that the optional interface
`device described in the specification is necessarily separate and distinct from
`the first control device. See § II (construction of “control device”).
`Contained within Frossard’s receiver-decoder 4 (first control device) is “an
`interface circuit, which is interconnected, as shown in Fig. 2, with paging
`message processing module 421.” Ex. 1005, 8 ¶ 3. Put another way,
`Frossard’s interface circuit is a subcomponent of a control device. Id. On
`this record, Patent Owner has not persuaded us that to the extent that an
`interface device may be required such a device must be separate and distinct
`from the control device. Thus, we are not persuaded that Frossard’s
`disclosures fail to disclose the claimed first control device.
`Accordingly, we are persuaded, based on the current record, that
`Petitioner has established a reasonable likelihood it would prevail in
`showing that independent claims 1 and 16 are unpatentable under 35 U.S.C.
`§ 102 over Frossard.
` Analysis of Asserted Grounds of Obviousness over Frossard
`Petitioner asserts that claims 2, 3, 11, and 17 of the ’405 Patent are
`unpatentable under 35 U.S.C. § 103 as obvious over Frossard as combined
`respectively with Pagliaroli, Simms, and Shimizu. Pet. 27–38. Petitioner
`relies on claim charts showing how these references allegedly teach the
`claimed subject matter. Id. Petitioner further relies on a declaration from
`David McNamara. Ex. 1003.
`a. Overview of Pagliaroli
`Pagliaroli describes enabling or disabling remotely an automobile.
`Ex. 1006, Abstract. When an automobile owner realizes their vehicle has
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`been stolen, the owner dials a telephone number to disable the automobile.
`Id. Figure 1 is reproduced below.
`
`
`Figure 1 illustrates a user connecting to receiver 14 when dialing from
`telephone 48. Id. at 4:53–5:1. In addition, Figure 1 shows telephone 48
`connects to receiver 14 via transmitter 46. Id. Receiver 14 receives signal
`code 40 and forwards code 40 to control unit 16. Id. at 5:30–33. When a
`disabling signal is sent, control unit 16 disables starter 20 and ignition
`system 22 stops the operation of the automobile and sends a signal activating
`emergency lights 24 of the automobile. Id. at 5:44–55. License plate lights
`26 may change colors or flash to identify to police that the automobile is
`stolen. Id. at 5:55–58.
`b. Analysis of Asserted Ground of Obviousness over Frossard and
`Pagliaroli
`Claim 2 depends from claim 1 and claim 17 depends from claim 16.
`We have reviewed Petitioner’s assertions regarding these claims and we are
`persuaded that Petitioner has made a sufficient showing that they would
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`have been obvious over Frossard and Pagliaroli. See Pet. 27–32. Claim 2,
`in relevant part, further recites “a monitoring device for monitoring at least
`one of the vehicle, vehicle operational status, vehicle operation, said one of a
`vehicle component, a vehicle device.” Claim 17, in relevant part, further
`recites the “step of determining an operational status of at least one of the
`vehicle component, vehicle device, vehicle system, and vehicle subsystem.”
`In its arguments directed to these claims, Petitioner relies upon Pagliaroli’s
`description of “theft sensors 12 monitor[ing] the condition of the
`automobile. If triggered by theft or tampering, the theft sensor 12 enables
`the receiver 14.” Pet. 27, 31 (citing Ex. 1006, 4:22–24). Pagliaroli describes
`that “most passenger automobiles do have certain circuits that can act as
`theft sensors. For example, most automobiles have courtesy lights that light
`whenever a door of the automobile is opened, or a trunk lamp that lights
`when the trunk is opened.” Ex. 1006, 3:26–29. In addition, Petitioner notes
`that Pagliaroli describes theft sensors 12 as transmitting a signal that
`generates audio/visual signal that will inform the vehicle owner of tampering
`or theft. Id. at 27 (citing Ex. 1006, 4:46–52). On this record, we find
`Petitioner’s arguments to be persuasive. Therefore, we are persuaded, based
`on the current record, that Petitioner has established a reasonable likelihood
`it would prevail in showing that dependent claims 2 and 17 would have been
`obvious over Frossard and Pagliaroli.
`c. Analysis of Asserted Ground of Obviousness over Frossard and
`Simms
`Claim 3 depends from claim 1. We have reviewed Petitioner’s
`assertions regarding this claim and we are persuaded that it Petitioner has
`made a sufficient showing that would have been obvious over Frossard and
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`Simms. See Pet. 32–35. Claim 3 recites, in relevant part, additional
`limitations directed to a positioning device. In its arguments directed to this
`claim, Petitioner relies upon Simms’s discussion of a position locator which
`“