throbber
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 No. 5,917,405
`
`
`
`
`PETITIONER NISSAN NORTH AMERICA, INC.’S
`REPLY TO PATENT OWNER’S RESPONSE TO PETITION
`
`
`
`
`
`
`
`
`
`
`

`
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`
`CLAIM CONSTRUCTION ............................................................................ 1
`
`
`
`I.
`
`II.
`
`III. RESPONSE TO ARGUMENTS ..................................................................... 2
`
`A.
`
`B.
`
`C.
`
`Full weight should be given to the Declaration. ................................... 2
`
`Ground 1- Petition properly applies Frossard as a base
`reference. ............................................................................................... 7
`
`Ground 5- Petition properly applies Pagliaroli as a base
`reference. ............................................................................................. 14
`
`D. Grounds 3 and 6 are proper. ................................................................ 22
`
`E.
`
`F.
`
`Grounds 4 and 7 are proper. ................................................................ 25
`
`Ground 2 is proper. .............................................................................. 27
`
`IV. CONCLUSION .............................................................................................. 27
`
`
`
`
`
`
`
`i
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`

`
`TABLE OF AUTHORITIES
`
`
`
`Statutes
`
`35 U.S.C. § 112(f) ...................................................................................................................... 1
`
`
`
`
`
`ii
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`

`
`LIST OF EXHIBITS
`
`Opinion and Order of Mark A. Goldsmith, No. 13-cv-13957,
`(E.D. Mich. 2016) (1) Granting in Part and Denying in Part
`Defendant FCA US LLC’S Motion for Summary Judgment on
`Invalidity and Noninfringement (Dkt. 59) and (2) Denying as
`Moot Plaintiff Joao Control & Monitoring Systems, LLC’S
`Motion for Summary Judgment of Infringement of U.S. Patent
`No. 7,397,363 by Uconnect Access (Dkt. 57), signed on June
`10, 2016.
`
`
`
`
`Exhibit 1021
`
`iii
`
`

`
`INTRODUCTION
`
`
`
`I.
`
`Petitioner Nissan North America, Inc. (“Petitioner”) submits this Reply to
`
`Patent Owner’s Response (the “Response,” Paper 22) to the Corrected Petition (the
`
`“Petition,” Paper 6) for Inter Partes Review (“IPR”) of U.S. Patent No. 5,917,405
`
`(the “’405 Patent,” Exhibit 1001).
`
`Patent Owner’s proposal to construe additional claim terms is not needed.
`
`Patent Owner’s arguments against the instituted invalidity counts are without merit
`
`and consist entirely of attorney argument with no expert testimony offered in
`
`support. All grounds presented in the Petition and instituted by the Board
`
`demonstrate the challenged claims are unpatentable and should be canceled.
`
`II. CLAIM CONSTRUCTION
`
`For the purpose of this IPR proceeding, Petitioner does not contest the
`
`Board’s claim constructions.1 (Paper 11, pp. 5-14). Contrary to Patent Owner’s
`
`assertion (Paper 22, pp. 10-12), the Board properly construed “positioning
`
`
`1 Petitioner reserves all rights to propose different constructions as well as
`
`constructions for additional terms in litigation or other proceedings. Specifically,
`
`Petitioner may contest the applicability of 35 U.S.C. § 112(f) and the scope of
`
`disclosed structures in litigation or other proceedings.
`
`1
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`

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`
`
`device.” For the reasons set forth in the Petition (pp. 11-14) and the Institution
`
`Decision (pp. 5-6), this construction should be maintained.
`
`Patent Owner seeks to use the claim construction of the U.S. District Court
`
`for the Eastern District of Michigan for additional claim terms: the first, second,
`
`and third “signals” recited in the independent claims. (Paper 22, pp. 8-9).
`
`Petitioner recognizes the District Court invalidated all of the asserted claims,
`
`including dependent claim 17, and found that Frossard discloses the three control
`
`device system recited in independent claims 1 and 16. (Exhibit 1021, pp. 14-23 and
`
`34-35). Petitioner maintains these terms should be given their plain and ordinary
`
`meaning. (Petition, p. 8). Nonetheless, as discussed below, each ground of
`
`rejection is properly maintained even under Patent Owner’s proposed
`
`constructions.
`
`III. RESPONSE TO ARGUMENTS
`
`As a preliminary matter, it is noteworthy that Patent Owner does not provide
`
`any expert testimony in support of its positions. Instead, it relies entirely on bare
`
`attorney argument.
`
`Full weight should be given to the Declaration.
`
`A.
`Patent Owner’s argument that Mr. McNamara’s declaration be afforded little
`
`or no weight is baseless for at least the following three reasons. (Paper 22, pp. 13-
`
`17).
`
`2
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`

`
`
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`(1) Petitioner’s Expert reviewed all required materials. At paragraph 16 of his
`
`Declaration, Mr. McNamara states that “I have read the ’405 Patent and its
`
`prosecution history.” (Exhibit 1003, p. 7, ¶16). Nearly nine months after Mr.
`
`McNamara signed his Declaration, he was cross-examined for two days. In
`
`response to “You have testified previously, I think, that you did not review the
`
`prosecution histories for the four JCMS patents at issue, correct?” he answered
`
`“That’s correct.” (Exhibit 2005, p. 153, lines 11-15).
`
`Patent Owner misconstrues that statement as proof that Mr. McNamara did
`
`not review the prosecution history. But Patent Owner ignores other testimony of
`
`Mr. McNamara showing that he did review the prosecution history. Id. p. 154,
`
`lines 11-20. Thus, at best the Response demonstrates a memory lapse during a
`
`lengthy deposition. But it does not demonstrate that Mr. McNamara failed to
`
`review the prosecution history.
`
`(2) The alleged failure to review the prosecution history has no weight. The
`
`Response alleges that “Mr. McNamara had not reviewed the materials [the ’405
`
`Patent prosecution history] required for him to properly reach his conclusions and
`
`opinions.” (Paper 22, p. 13). This allegation echoes Patent Owner’s question
`
`during the Cross-Examination: “in reaching the conclusions or opinions expressed
`
`in Exhibits 1 through 4, you did not apply the, any definitions that may have been
`
`3
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`

`
`
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`provided by Mr. Joao during prosecution of those patents, correct?” (Exhibit 2005,
`
`p. 153, lines 16-22).
`
`Even if the prosecution history was not reviewed, this would have no weight
`
`on the claim construction in this case. Patent Owner’s above statement about the
`
`definitions is irrelevant because Mr. Joao did not define any claim terms at issue
`
`during the prosecution of the ’405 Patent.
`
`The only attempts to define claim terms at issue are found in the prosecution
`
`history of two other patents: U.S. Pat. No. 7,397,363 and 7,277,010. If weight
`
`should be given to the definitions of claim terms at issue, Mr. McNamara has
`
`actually reviewed and considered these definitions. Specifically, paragraph 23 of
`
`the Declaration identifies Exhibit 1010 that includes the sections of the
`
`prosecution histories of the ’363 Patent and ’010 Patent containing the definitions.
`
`(Exhibit 1003, p.7, ¶¶ 16, 23). During the Cross-Examination, Mr. McNamara
`
`affirmed that he has reviewed these definitions. (Exhibit 2005, p. 154, lines 11-20).
`
`Thus, any alleged failure to review the prosecution history of ’405 patent has
`
`no weight on the claim construction. Mr. McNamara confirmed that he considered
`
`the relevant portions of the prosecution history of the ’363 and ’010 Patents.
`
`(3) The claims were properly construed. As stated in paragraph 10 of his
`
`Declaration, Mr. McNamara applied the plain ordinary meaning as understood by
`
`a person of ordinary skill in the art. In the Cross-Examination, he affirmed this
`
`4
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`

`
`
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`application by stating that “I used the same standard through all of the four patents
`
`[including the ’405 Patent]. I used the one of ordinary and customary
`
`understanding.” (Exhibit 2005, p. 152, lines 15-18). Thus, Mr. McNamara used the
`
`proper standard.
`
`The Response relies on the statement that “I can’t personally differentiate
`
`between broadest and ordinary and customary” (id. p. 152, lines 22-25), to
`
`incorrectly conclude that “it is not clear that he even knows what this standard is or
`
`should be.” (Paper 22, p. 16).
`
`Patent Owner’s reliance on this statement is misplaced. The difference
`
`between the two standards is a legal question that is not at issue here. More
`
`importantly, the Patent Owner does not show how Mr. McNamara’s claim
`
`construction is incorrect, why his claim construction is different from the plain and
`
`ordinary meaning, or that his conclusion and opinion are allegedly based on an
`
`incorrect standard. Also, Patent Owner provides no expert testimony whatsoever in
`
`support of its claim construction arguments. At best, Patent Owner demonstrates
`
`that Mr. McNamara did not explain the difference between two legal standards.
`
`The Board has provided an express construction of particular claim terms,
`
`including a “control device,” and gave the remaining claim terms their plain and
`
`ordinary meaning. (See Paper 11, pp. 5-14). Though different from the Board’s
`
`constructions of the means for claim terms, Mr. McNamara’s declaration is
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`5
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`

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`
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`consistent with and satisfies the Board’s constructions of all of the claim terms,
`
`including the “control device” claim term. (Exhibit 1003, p. 5, ¶¶ 10-12).
`
`Specifically as to “control device,” Mr. McNamara states in the declaration, for
`
`example, “Frossard further states that the receiver-decoder means ‘decodes this
`
`message’ that it received and ‘addresses the corresponding commands to
`
`equipment 3 itself, causing an immediate or deferred shutdown depending on the
`
`application under consideration’.” (Id. p. 23, ¶ 60). This prior art application is
`
`consistent with the Board’s express construction of “control device” because
`
`decoding and addressing a command to equipment is consistent with a device that
`
`performs a number of operations (e.g., decoding and addressing).
`
`The Cross-Examination confirms that Mr. McNamara’s construction of a
`
`control device is consistent with Board’s constructions of the “control device”
`
`claim term. (Exhibit 2005, pp. 161-170). Mr. McNamara states “I agree with the
`
`PTAB’s construction that control device is generally something that performs an
`
`operation or function or action.” (Id. p. 166, lines 11-13). In an example, he states
`
`that “the CPU 4 is acting as a control device as it is performing actions and
`
`operations on the ignition system and fuel pump.” (Id. p. 164, lines 16-18).
`
`Thus, Mr. McNamara construed all the claim terms consistently with the
`
`Board’s claim construction under the plain and ordinary meaning standard.
`
`6
`
`

`
`B. Ground 1- Petition properly applies Frossard as a base reference.2
`Patent Owner’s argument in the Response is summarized in the below
`
`
`
`illustration, and is incorrect as shown below.
`
`Claim 13
`
`Patent Owner’s application of Frossard
`
`
`
`
`
`(1) Patent Owner’s argument fails under its proposed claim construction.
`
`Patent Owner improperly attempts to limit “control device” in a way that
`
`contradicts its own proposed claim construction. Even under its proposed
`
`construction, Frossard discloses the recited control device.
`
`
`2 The District Court found that Frossard discloses the three control device system
`
`recited in independent claims 1 and 16 and dependent claim 17. (Exhibit 1021, pp.
`
`14-23, 34-35).
`
`3 Claim 16 is similar, except that the nomenclature of “third” and “first” is
`
`reversed.
`
`7
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`

`
`
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`Patent Owner proposes to construe the term “control device” as “a device or
`
`a computer, or that part of a device or a computer, which performs an operation, an
`
`action, or a function, or which performs a number of operations, actions, or
`
`functions.” (Paper 22, p. 8). Because the “control device” can include a “part of a
`
`device,” it follows that a device can include multiple parts. Because a “control
`
`device” is a type of device, a “control device” can necessarily include multiple
`
`parts.
`
`Despite this, Patent Owner argues that because Frossard has two parts
`
`(server 1 and resource 2), then one part can be a control device, but the other part
`
`must be a separate, intermediate device. (Paper 22, pp. 18-22). But that argument
`
`fails because a device can have multiple parts. Thus, Frossard’s server 1 and
`
`resource 2 meet the “control device” limitation.
`
`(2) Patent Owner’s argument contradicts the specification of the ’405 Patent.
`
`The specification of the ’405 Patent confirms that a server and a transmitter
`
`can form a control device.
`
`The specification never uses the term “control device.” Instead, FIG. 11B of
`
`the ’405 Patent illustrates a three device architecture for controlling vehicle
`
`systems. The claimed “second control device” includes two illustrated parts: a
`
`server 952 and a transmitter 957. The specification describes that, in response to a
`
`8
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`

`
`
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`command received by the server receiver 953, the server 952 sends a control signal
`
`via the transmitter 957. (Exhibit 1001, 50:35-38, 45-48).
`
`Specifically, the “server 952 can perform complete control, monitoring
`
`and/or security functions on, or over, the apparatus 1, the apparatus 950, the
`
`vehicle, and/or each of the vehicle systems.” (Id. 50:35-38). “The server
`
`transmitter 957 can transmit control signals and/or other data, including
`
`information to the authorized user or operator and to the apparatus 1 and/or to the
`
`apparatus 950.” (Id. 50:45-48).
`
`Accordingly, the specification describes that a control device includes a
`
`server (952) and a transmitter (957), where the server exercises remote controls by
`
`transmitting control signals via the transmitter.
`
`In contrast, by arguing that the two parts in Frossard (server 1 and resource
`
`2) cannot be the claimed “second control device,” Patent Owner ignores that the
`
`specification undercuts his argument by disclosing a control device that includes
`
`two separate parts, just like Frossard’s two parts.
`
`Further, everywhere the specification describes a second device that is
`
`remote from a vehicle and that performs control-related operations over the
`
`vehicle, this second device uses a transmitter for the remote control. All of the
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`described second devices use transmitters (e.g., server 952 uses transmitter 957 in
`
`FIG. 11B). Accordingly, the ’405 Patent does not enable a second control device
`
`9
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`

`
`
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`remote from the vehicle that does not include a transmitter. Thus, Patent Owner’s
`
`argument for excluding a transmitter from the second control device has no support
`
`in the ’405 Patent and, in fact, contradicts the ’405 Patent. Instead, Patent Owner’s
`
`argument is simply an attempt to capture claim scope for an invention that he did
`
`not invent.
`
`(3) No weight should be given to Patent Owner’s argument.
`
`Patent Owner provides no evidence or expert testimony to support its
`
`argument that Frossard’s server 1 and resource 2 cannot disclose a control device.
`
`Particularly, Patent Owner does not explain how or why Forssard’s resource 2
`
`would transmit a third signal that is different from the second signal generated by
`
`Frossard’s server 1. Accordingly, Patent Owner’s argument is conclusory and
`
`entitled to no weight. See, e.g., IPR2015-00028 (Paper 12); IPR2014-00347 (Paper
`
`9).
`
`(4) Frossard discloses the “second control device” and “second signal.”
`
`Patent Owner’s argument that Frossard’s resource 2 is an intermediate
`
`device is incorrect because Frossard’s server 1 and resource 2 collectively form a
`
`control device that generates and transmits a signal.
`
`As explained above, Frossard’s server 1 and resource 2 meet Patent Owner’s
`
`claim construction of “control device.” Frossard’s server 1 is a part of the claimed
`
`“second control device,” where this part performs an operation, an action, or a
`
`10
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`

`
`
`
`function of generating the message order M (the claimed second signal). Frossard’s
`
`resource 2 is also a part of the claimed “second control device,” where this part
`
`performs an operation, an action, or a function of transmitting the order
`
`message M.
`
`Specifically, Frossard discloses that an intervention code is “transmitted to
`
`server center 1 by the subscriber or an authorized person in order to generate… a
`
`request to shut down the aforesaid equipment 3.” (Exhibit 1005, p. 5, ¶¶ 4-5).
`
`Frossard also describes that its “system contains a resource 2 for selective
`
`transmission to the aforesaid equipment of an order message M to shut down this
`
`equipment 3…. [T]he aforesaid transmission resource advantageously contains an
`
`analog radio frequency transmitter provided with a subcarrier.” (Id. p. 4, ¶ 5, and
`
`p. 5, ¶ 1).
`
`Additionally, in FIG. 1 of Frossard, comparing the order message M
`
`generated by server 1 to the order message M transmitted by resource 2 transmits
`
`confirms that resource 2 transmits order message M unchanged. Thus, Frossard’s
`
`server 1 and resource 2, as a whole, send the same signal to a vehicle. While server
`
`1 generates order Message M, resource 2 transmits it to the vehicle.
`
`Frossard’s server 1 and resource 2 collectively form the claimed “second
`
`control device,” where server 1 and resource 2 collectively generate and transmit
`
`the order message M (the claimed second signal). That is exactly what the
`
`11
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`

`
`
`
`independent claims recite (e.g., “wherein the second signal is one of generated by
`
`and transmitted from a second control device” (emphasis added) as in claim 1,
`
`and similarly in claim 16).
`
`Further, Frossard’s server 1-resource 2 (e.g., server-transmitter) architecture
`
`corresponds to the server 952-transmitter 957 architecture of FIG. 11B of the ’405
`
`Patent. Frossard’s server 1 corresponds to server 952 of the ’405 Patent because
`
`both generate a signal for remote control. Frossard’s resource 2 corresponds to
`
`transmitter 957 of the ’405 Patent because both transmit the signal. Because the
`
`independent claims cover the server computer 952-transmitter 957 architecture, as
`
`explained above, then Frossard’s server 1-resource 2 architecture necessarily
`
`discloses the features of the independent claims. This conclusion is illustrated
`
`12
`
`below.
`
`
`
`

`
`
`
`Claim 1
`wherein the second signal is one of generated by and transmitted from a second
`control device.
`Claim 16
`transmitting a second signal from the second control device to a third control
`device.
`FIG. 11B of the ’405 Patent
`
`FIG. 1 of Frossard
`
`
`
`
`
`
`
`
`
`
`
`
`(5) Even under Patent Owner’s improperly narrow interpretation, Frossard teaches
`
`
`
`
`
`the “second control device” and “second signal.”
`
`Patent Owner asserts Frossard’s server 1 and resource 2 are two separate
`
`control devices. (Paper 22, pp. 8-21). Even under this incorrect application of
`
`Frossard, Frossard teaches the second control device and second signal. The
`
`following alternative mapping of Frossard to the claim elements illustrates this:
`
`First, Frossard’s server 1 can correspond to the claimed third control device (claim
`
`1) and to the first control device (claim 16), and the order message M from server 1
`
`can correspond to the claimed third signal (claim 1) and to the first signal (claim
`
`16). In addition, Frossard’s resource 2 can correspond to the claimed second
`
`control device, and the order message M from resource 2 can correspond to the
`
`13
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`

`
`
`
`claimed second signal. Further, Frossard’s receiver-decoder 4 can correspond to
`
`the claimed first control device (claim 1) and to third control device (claim 16).
`
`This mapping is shown in the illustration herein below.
`
`Claim 14
`
`Mapping of Frossard
`
`
`
`
`
`Accordingly, even under Patent Owner’s incorrect argument, Frossard still
`
`discloses the features of the independent claims.
`
`C. Ground 5- Petition properly applies Pagliaroli as a base reference.
`Claim 1 recites a third control device located at a vehicle. Claim 16 recites a
`
`first control device located at a vehicle. Petitioner refers herein to such control
`
`devices as a “vehicle control device” and the outputted signals as a “vehicle
`
`signal.”
`
`
`4 Claim 16 is similar, except that the nomenclature of “third” and “first” is reversed.
`
`14
`
`

`
`
`
`The Response argues that Pagliaroli does not disclose the claimed “vehicle
`
`control device” that transmits a “vehicle signal.” (Paper 22, pp. 27-32). Patent
`
`Owner’s argument can be summarized in the below illustration, and is incorrect as
`
`shown below.
`
`Claims 1 and 16
`
`Patent Owner’s application of Pagliaroli
`
`
`
`
`
`(1) Patent Owner’s argument fails under its proposed claim construction.
`
`Patent Owner improperly attempts to limit “vehicle control device” in a way
`
`that contradicts its own proposed claim construction. Even under the proposed
`
`construction, Pagliaroli discloses the recited vehicle control device.
`
`Patent Owner’s proposed claim construction of “control device” includes a
`
`control device having multiple parts. Despite that, Patent Owner argues that
`
`because Pagliaroli has two parts (receiver 14 and control unit 16), then one part can
`
`be a vehicle control device, but the other part must be a separate, intermediate
`
`device. (Paper 22, pp. 30-31). But as explained above in Part III.B.1, a device can
`
`15
`
`

`
`
`
`have multiple parts. Thus, Petitioner is correct that Pagliaroli’s receiver 14 and unit
`
`16 meet the “vehicle control device” limitation.
`
`(2) Patent Owner’s argument contradicts the specification of the ’405 Patent.
`
`The specification of the ’405 Patent does not support Patent Owner’s
`
`argument that a receiver and a control unit cannot form a vehicle control device.
`
`The specification never uses the term “control device.” Instead, FIG. 11B of
`
`the ’405 Patent illustrates a three device architecture for controlling vehicle
`
`systems. The claimed “vehicle control device” includes two illustrated parts: a
`
`receiver 3 and a central processing unit (CPU) 4. Detailed descriptions of the
`
`receiver 3 and CPU 4 are found under FIG. 1. Specifically, “[i]t is also envisioned
`
`that the apparatus 1 may be installed in the motor vehicle….” (Exhibit 1001, 21:23-
`
`25). The “apparatus 1 also comprises a receiver 3, for receiving the signals….” (Id.
`
`19:56-57). “The apparatus 1 also comprises a controller or a central processing unit
`
`CPU 4 (CPU 4), which is electrically connected with the receiver 3… and which
`
`receives, or reads, whichever the case may be, the digital signal or signals, or
`
`portions thereof, which are received by the receiver 3 and/or generated by the
`
`receiver 3 in response to the received signal.” (Id. 20:61-67). FIGS. 6A and 6B
`
`further describe the interaction between the receiver 3 and CPU 4. “Upon receipt
`
`of the command code by the receiver 3, the command code is then transmitted to,
`
`or read by, the CPU 4….. The CPU 4 will then…. perform a processing routine in
`
`16
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`

`
`
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`order to identify the command code which has been entered.” (Id. 32:18-22).
`
`Subsequently, the CPU 4 “issue[s] a disabling signal to the vehicle fuel pump
`
`system 9….” (Id. 34:25-27).
`
`Accordingly, the ’405 Patent describes that, in response to a command code
`
`received by the receiver 3, the CPU 4 reads the command code, performs a
`
`processing routine, and issues a disabling signal.
`
`In contrast, Patent Owner’s argument contradicts the specification of the
`
`’405 Patent. By arguing that Pagliaroli’s receiver 14 and central unit 16 cannot be
`
`the claimed “vehicle control device,” Patent Owner ignores that the specification
`
`undercuts its argument by disclosing a vehicle control device that includes two
`
`separate parts, just like Pagliaroli’s two parts
`
`In addition, nowhere does the ’405 Patent describe a vehicle control device
`
`that does not use receiver 3 and CPU 4. Accordingly, the ’405 Patent does not
`
`enable any vehicle control device that has only one of these two parts. Thus, Patent
`
`Owner’s argument that attempts to distinguish over Pagliaroli is simply an attempt
`
`to capture claim scope for an invention that he did not invent.
`
`(3) Patent Owner’s misapplies Mr. McNamara’s testimony.
`
`The Cross-Examination does not support Patent Owner’s argument about
`
`Mr. McNamara opining that Pagliaroli’s receiver 14 must be a complex receiver.
`
`17
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`

`
`
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`Patent Owner misapplies a single statement of Mr. McNamara to advance
`
`the argument that Pagliaroli’s receiver 14 is complex and, thus, sends a third signal
`
`to the control unit 16, as opposed to forwarding the received second signal to the
`
`control unit 16. (Paper 22, p. 28-29).
`
`However, Mr. McNamara never said that Pagliaroli’s receiver 14 is only a
`
`complex receiver. In the Cross-Examination, Mr. McNamara’s opined multiple
`
`times that Pagliaroli’s receiver can also be a “dumb” passive device. Specifically,
`
`in response to, “Isn’t true that the comparison that we have discussed with respect
`
`to the code that is received and the code that is used is actually done in Control
`
`Unit 16 and not in Receiver 14,” he answered “It could be done both ways….”
`
`(Exhibit 2006, p. 255, lines 4-9). Mr. McNamara also explained “it could be just
`
`enabling the control unit, the receiver could send the data to the control unit, let the
`
`control unit make the decision.” (Id. p. 255, lines 13-17). Similarly, Mr.
`
`McNamara explained that “if you have a more simpler [sic] receiver design, you
`
`might want to have that functionality [of code comparison] in the control unit and
`
`have it do the comparison.” (Id. p. 258, lines 5-13).
`
`(4) No weight should be given to Patent Owner’s argument.
`
`Patent Owner’s argument that Pagliaroli’s receiver 14 and control unit 16
`
`cannot disclose a vehicle control device is unsubstantiated. As demonstrated
`
`above, Mr. McNamara never took the position that receiver 14 can only be a
`
`18
`
`

`
`
`
`complex receiver. Instead, in his Declaration and during the Cross-Examination,
`
`Mr. McNamara consistently opined that receiver 14 and control unit 16 disclose a
`
`vehicle control device. In contrast, Patent Owner provides no evidence or expert
`
`testimony to support its conclusion. Patent Owner also fails to explain how or why
`
`receiver 14 would not pass the signal it receives to control unit 16 and how or why
`
`control unit 16 would not generate and transmit the claimed vehicle signal in
`
`response to the signal passed from receiver 14.
`
`Accordingly, Patent Owner’s argument is conclusory, and is entitled to no
`
`weight. See IPR2015-00028 (Paper 12); IPR2014-00347 (Paper 9).
`
`(5) Pagliaroli discloses the “vehicle control device” and “vehicle signal.”
`
`Patent Owner’s argument that Pagliaroli’s receiver 14 and control unit 16 are
`
`two separate devices is incorrect because Pagliaroli’s receiver 14 and control unit
`
`16 collectively form a vehicle control device that generates and transmits a vehicle
`
`signal.
`
`As explained above, Pagliaroli’s receiver 14 and control unit 16 meet Patent
`
`Owner’s claim construction. Further, Pagliaroli describes that “a receiver 14,
`
`control unit 16… are added to the automobile” (Exhibit 1006, 3:50-52) and that
`
`“[i]t should be obvious to a person skilled in the art that these components may…
`
`be integrally formed.” (Id. 6:9-11). Thus, even under a narrow claim construction
`
`where a vehicle control device can include only one part, Pagliaroli’s receiver 14
`
`19
`
`

`
`
`
`and control unit 16 meet this construction by integrally forming a single device
`
`located at a vehicle.
`
`As also demonstrated in the Petition, Pagliaroli’s receiver 14 receives and
`
`forwards a signal code to control unit 16 that, in turn, generates and transmits
`
`disabling and control signals to vehicle systems. (Id. 4:44-45; 4:66-5:7; 5:44-55).
`
`Accordingly, when viewed as a whole (e.g., when integrated as a single
`
`device as disclosed at 6:9-11), Pagliaroli’s receiver 14 and control unit 16 fit this
`
`proposed claim construction. Like any other device, these two parts interact such
`
`that the control device, as a whole, receives a signal code 40, and generates and
`
`transmits disabling and control signals to vehicle systems/devices (e.g., starter,
`
`emergency lights). Pagliaroli’s receiver 14 is a part of the claimed “vehicle control
`
`device,” where this part performs an operation, an action, or a function of receiving
`
`a signal code 40 (the claimed second signal) from telephone signal transmitters 46
`
`(the claimed second control device). Pagliaroli’s control unit 16 is also a part of the
`
`claimed “vehicle control device,” where this part performs an operation, an action,
`
`or a function of generating and transmitting the vehicle signal in response to the
`
`signal code 40.
`
`Therefore, Pagliaroli’s receiver 14 and control unit 16 collectively form the
`
`claimed “vehicle control device,” where receiver 14 and control unit 16
`
`collectively receive the signal code 40 (the claimed second signal) and generate
`
`20
`
`

`
`
`
`and transmit the vehicle signal. That is exactly what the independent claims recite
`
`(e.g., “wherein said first control device is responsive to a second signal” and
`
`“wherein said first control device one of generates and transmits a first signal…”
`
`as in claim 1, and similarly in claim 16).
`
`The above receiver-control unit architecture corresponds to the server
`
`receiver 3-CPU 4 architecture of FIG. 11B of the ’405 Patent. Pagliaroli explains
`
`that “a receiver 14, control unit 16… are added to the automobile.” (Exhibit 1006,
`
`3:50-52). “The signal codes 40 received by the receiver 14 are forwarded to the
`
`control unit 16.” (Id. 4:44-45). Thus, Pagliaroli’s receiver 14 is equivalent to the
`
`receiver 3 the ’405 Patent because both parts are located at a vehicle and receive
`
`signals from a remote control device (e.g., the claimed second control device).
`
`Pagliaroli also describes that its “control unit 16 recalls the enabling and
`
`disabling code from the memory source 58 and compares the recalled codes with
`
`input code read from the receiver 14… . If the input code matches the disabling
`
`code, disabling signals 60, 62 are sent to the starter 20 and ignition system 22….”
`
`(Id. 5:44-49). Thus, Pagliaroli’s control unit 16 is equivalent to the CPU 4 of the
`
`’405 Patent because both parts are located at a vehicle transmit the claimed vehicle
`
`signal.
`
`21
`
`

`
`
`
` Because the independent claims cover the receiver 3-CPU 4 architecture,
`
`Pagliaroli’s receiver-control unit architecture necessarily discloses the claimed
`
`features. This conclusion is illustrated below.
`
`Claim 1
`wherein said first control device one of generates and transmits the first signal…
`wherein said first control device is responsive to a second signal.
`Claim 16
`generating a third signal at the third control device in response to said second
`signal.
`FIG. 11B of the ’405 Patent
`
`FIG. 1 of Pagliaroli
`
`
`
`
`
`D. Grounds 3 and 6 are proper.
`The Response does not dispute that Simms discloses the elements added in
`
`claim 3, but instead claims that Simms should not be combined with the base
`
`reference (Frossard or Pagliaroli) because this allegedly “would appear to require a
`
`substantial redesign.” (Paper 22, pp. 23-25 and 32-35). Patent Owner argues
`
`against the Frossard references and concludes that the same applies to the
`
`Pagliaroli reference. (Id.). Patent Owner’s allegation is incorrect because it is not
`
`supported by any evidence, mischaracterizes Mr. McNamara’s position, and is
`
`contradicted by the teachings of the references.
`
`22
`
`

`
`
`
`First and foremost, Patent Owner does not present any expert testimony to
`
`support its conclusion of a substantial redesign. Instead, Patent Owner selectively
`
`plucks disparate portions of Mr. McNamara’s deposition out of context to
`
`incorrectly contend that Mr. McNamara supports its conclusion.
`
`Rather than supporting Patent Owner’s conclusion, Mr. McNamara’s
`
`statements actually explain a simple implementation for combining Simms’
`
`positioning device with Frossard’s system. Mr. McNamara further explained other
`
`implementations during his Cross-Examination. (Exhibit 2006, page 335, line 13-
`
`page 336, line 6). For example, in response to a question in which Patent Owner
`
`attempts to limit the map of claim 3 to being located at the vehicle, Mr.
`
`McNamara explains that “a map database, from a des

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