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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`NISSAN NORTH AMERICA, INC.,
`Petitioner
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`v.
`
`JOAO CONTROL & MONITORING SYSTEMS, LLC
`Patent Owner
`
`
`
`
`Case IPR2015-01585
`Patent No. 5,917,405
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`
`
`PETITIONER NISSAN NORTH AMERICA, INC.’S
`REPLY TO PATENT OWNER’S RESPONSE TO PETITION
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`TABLE OF CONTENTS
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`INTRODUCTION ........................................................................................... 1
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`CLAIM CONSTRUCTION ............................................................................ 1
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`
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`I.
`
`II.
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`III. RESPONSE TO ARGUMENTS ..................................................................... 2
`
`A.
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`B.
`
`C.
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`Full weight should be given to the Declaration. ................................... 2
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`Ground 1- Petition properly applies Frossard as a base
`reference. ............................................................................................... 7
`
`Ground 5- Petition properly applies Pagliaroli as a base
`reference. ............................................................................................. 14
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`D. Grounds 3 and 6 are proper. ................................................................ 22
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`E.
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`F.
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`Grounds 4 and 7 are proper. ................................................................ 25
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`Ground 2 is proper. .............................................................................. 27
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`IV. CONCLUSION .............................................................................................. 27
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`i
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`TABLE OF AUTHORITIES
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`
`
`Statutes
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`35 U.S.C. § 112(f) ...................................................................................................................... 1
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`
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`
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`ii
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`LIST OF EXHIBITS
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`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
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`
`
`INTRODUCTION
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`
`
`I.
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`Petitioner Nissan North America, Inc. (“Petitioner”) submits this Reply to
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`Patent Owner’s Response (the “Response,” Paper 22) to the Corrected Petition (the
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`“Petition,” Paper 6) for Inter Partes Review (“IPR”) of U.S. Patent No. 5,917,405
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`(the “’405 Patent,” Exhibit 1001).
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`Patent Owner’s proposal to construe additional claim terms is not needed.
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`Patent Owner’s arguments against the instituted invalidity counts are without merit
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`and consist entirely of attorney argument with no expert testimony offered in
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`support. All grounds presented in the Petition and instituted by the Board
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`demonstrate the challenged claims are unpatentable and should be canceled.
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`II. CLAIM CONSTRUCTION
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`For the purpose of this IPR proceeding, Petitioner does not contest the
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`Board’s claim constructions.1 (Paper 11, pp. 5-14). Contrary to Patent Owner’s
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`assertion (Paper 22, pp. 10-12), the Board properly construed “positioning
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`1 Petitioner reserves all rights to propose different constructions as well as
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`constructions for additional terms in litigation or other proceedings. Specifically,
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`Petitioner may contest the applicability of 35 U.S.C. § 112(f) and the scope of
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`disclosed structures in litigation or other proceedings.
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`1
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`device.” For the reasons set forth in the Petition (pp. 11-14) and the Institution
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`Decision (pp. 5-6), this construction should be maintained.
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`Patent Owner seeks to use the claim construction of the U.S. District Court
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`for the Eastern District of Michigan for additional claim terms: the first, second,
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`and third “signals” recited in the independent claims. (Paper 22, pp. 8-9).
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`Petitioner recognizes the District Court invalidated all of the asserted claims,
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`including dependent claim 17, and found that Frossard discloses the three control
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`device system recited in independent claims 1 and 16. (Exhibit 1021, pp. 14-23 and
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`34-35). Petitioner maintains these terms should be given their plain and ordinary
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`meaning. (Petition, p. 8). Nonetheless, as discussed below, each ground of
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`rejection is properly maintained even under Patent Owner’s proposed
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`constructions.
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`III. RESPONSE TO ARGUMENTS
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`As a preliminary matter, it is noteworthy that Patent Owner does not provide
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`any expert testimony in support of its positions. Instead, it relies entirely on bare
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`attorney argument.
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`Full weight should be given to the Declaration.
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`A.
`Patent Owner’s argument that Mr. McNamara’s declaration be afforded little
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`or no weight is baseless for at least the following three reasons. (Paper 22, pp. 13-
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`17).
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`2
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`(1) Petitioner’s Expert reviewed all required materials. At paragraph 16 of his
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`Declaration, Mr. McNamara states that “I have read the ’405 Patent and its
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`prosecution history.” (Exhibit 1003, p. 7, ¶16). Nearly nine months after Mr.
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`McNamara signed his Declaration, he was cross-examined for two days. In
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`response to “You have testified previously, I think, that you did not review the
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`prosecution histories for the four JCMS patents at issue, correct?” he answered
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`“That’s correct.” (Exhibit 2005, p. 153, lines 11-15).
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`Patent Owner misconstrues that statement as proof that Mr. McNamara did
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`not review the prosecution history. But Patent Owner ignores other testimony of
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`Mr. McNamara showing that he did review the prosecution history. Id. p. 154,
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`lines 11-20. Thus, at best the Response demonstrates a memory lapse during a
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`lengthy deposition. But it does not demonstrate that Mr. McNamara failed to
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`review the prosecution history.
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`(2) The alleged failure to review the prosecution history has no weight. The
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`Response alleges that “Mr. McNamara had not reviewed the materials [the ’405
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`Patent prosecution history] required for him to properly reach his conclusions and
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`opinions.” (Paper 22, p. 13). This allegation echoes Patent Owner’s question
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`during the Cross-Examination: “in reaching the conclusions or opinions expressed
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`in Exhibits 1 through 4, you did not apply the, any definitions that may have been
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`3
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`
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`provided by Mr. Joao during prosecution of those patents, correct?” (Exhibit 2005,
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`p. 153, lines 16-22).
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`Even if the prosecution history was not reviewed, this would have no weight
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`on the claim construction in this case. Patent Owner’s above statement about the
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`definitions is irrelevant because Mr. Joao did not define any claim terms at issue
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`during the prosecution of the ’405 Patent.
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`The only attempts to define claim terms at issue are found in the prosecution
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`history of two other patents: U.S. Pat. No. 7,397,363 and 7,277,010. If weight
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`should be given to the definitions of claim terms at issue, Mr. McNamara has
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`actually reviewed and considered these definitions. Specifically, paragraph 23 of
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`the Declaration identifies Exhibit 1010 that includes the sections of the
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`prosecution histories of the ’363 Patent and ’010 Patent containing the definitions.
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`(Exhibit 1003, p.7, ¶¶ 16, 23). During the Cross-Examination, Mr. McNamara
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`affirmed that he has reviewed these definitions. (Exhibit 2005, p. 154, lines 11-20).
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`Thus, any alleged failure to review the prosecution history of ’405 patent has
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`no weight on the claim construction. Mr. McNamara confirmed that he considered
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`the relevant portions of the prosecution history of the ’363 and ’010 Patents.
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`(3) The claims were properly construed. As stated in paragraph 10 of his
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`Declaration, Mr. McNamara applied the plain ordinary meaning as understood by
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`a person of ordinary skill in the art. In the Cross-Examination, he affirmed this
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`4
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`
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`application by stating that “I used the same standard through all of the four patents
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`[including the ’405 Patent]. I used the one of ordinary and customary
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`understanding.” (Exhibit 2005, p. 152, lines 15-18). Thus, Mr. McNamara used the
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`proper standard.
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`The Response relies on the statement that “I can’t personally differentiate
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`between broadest and ordinary and customary” (id. p. 152, lines 22-25), to
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`incorrectly conclude that “it is not clear that he even knows what this standard is or
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`should be.” (Paper 22, p. 16).
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`Patent Owner’s reliance on this statement is misplaced. The difference
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`between the two standards is a legal question that is not at issue here. More
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`importantly, the Patent Owner does not show how Mr. McNamara’s claim
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`construction is incorrect, why his claim construction is different from the plain and
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`ordinary meaning, or that his conclusion and opinion are allegedly based on an
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`incorrect standard. Also, Patent Owner provides no expert testimony whatsoever in
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`support of its claim construction arguments. At best, Patent Owner demonstrates
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`that Mr. McNamara did not explain the difference between two legal standards.
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`The Board has provided an express construction of particular claim terms,
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`including a “control device,” and gave the remaining claim terms their plain and
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`ordinary meaning. (See Paper 11, pp. 5-14). Though different from the Board’s
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`constructions of the means for claim terms, Mr. McNamara’s declaration is
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`5
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`consistent with and satisfies the Board’s constructions of all of the claim terms,
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`including the “control device” claim term. (Exhibit 1003, p. 5, ¶¶ 10-12).
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`Specifically as to “control device,” Mr. McNamara states in the declaration, for
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`example, “Frossard further states that the receiver-decoder means ‘decodes this
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`message’ that it received and ‘addresses the corresponding commands to
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`equipment 3 itself, causing an immediate or deferred shutdown depending on the
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`application under consideration’.” (Id. p. 23, ¶ 60). This prior art application is
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`consistent with the Board’s express construction of “control device” because
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`decoding and addressing a command to equipment is consistent with a device that
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`performs a number of operations (e.g., decoding and addressing).
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`The Cross-Examination confirms that Mr. McNamara’s construction of a
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`control device is consistent with Board’s constructions of the “control device”
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`claim term. (Exhibit 2005, pp. 161-170). Mr. McNamara states “I agree with the
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`PTAB’s construction that control device is generally something that performs an
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`operation or function or action.” (Id. p. 166, lines 11-13). In an example, he states
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`that “the CPU 4 is acting as a control device as it is performing actions and
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`operations on the ignition system and fuel pump.” (Id. p. 164, lines 16-18).
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`Thus, Mr. McNamara construed all the claim terms consistently with the
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`Board’s claim construction under the plain and ordinary meaning standard.
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`6
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`B. Ground 1- Petition properly applies Frossard as a base reference.2
`Patent Owner’s argument in the Response is summarized in the below
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`
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`illustration, and is incorrect as shown below.
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`Claim 13
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`Patent Owner’s application of Frossard
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`(1) Patent Owner’s argument fails under its proposed claim construction.
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`Patent Owner improperly attempts to limit “control device” in a way that
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`contradicts its own proposed claim construction. Even under its proposed
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`construction, Frossard discloses the recited control device.
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`2 The District Court found that Frossard discloses the three control device system
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`recited in independent claims 1 and 16 and dependent claim 17. (Exhibit 1021, pp.
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`14-23, 34-35).
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`3 Claim 16 is similar, except that the nomenclature of “third” and “first” is
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`reversed.
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`7
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`Patent Owner proposes to construe the term “control device” as “a device or
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`a computer, or that part of a device or a computer, which performs an operation, an
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`action, or a function, or which performs a number of operations, actions, or
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`functions.” (Paper 22, p. 8). Because the “control device” can include a “part of a
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`device,” it follows that a device can include multiple parts. Because a “control
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`device” is a type of device, a “control device” can necessarily include multiple
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`parts.
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`Despite this, Patent Owner argues that because Frossard has two parts
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`(server 1 and resource 2), then one part can be a control device, but the other part
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`must be a separate, intermediate device. (Paper 22, pp. 18-22). But that argument
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`fails because a device can have multiple parts. Thus, Frossard’s server 1 and
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`resource 2 meet the “control device” limitation.
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`(2) Patent Owner’s argument contradicts the specification of the ’405 Patent.
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`The specification of the ’405 Patent confirms that a server and a transmitter
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`can form a control device.
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`The specification never uses the term “control device.” Instead, FIG. 11B of
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`the ’405 Patent illustrates a three device architecture for controlling vehicle
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`systems. The claimed “second control device” includes two illustrated parts: a
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`server 952 and a transmitter 957. The specification describes that, in response to a
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`8
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`command received by the server receiver 953, the server 952 sends a control signal
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`via the transmitter 957. (Exhibit 1001, 50:35-38, 45-48).
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`Specifically, the “server 952 can perform complete control, monitoring
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`and/or security functions on, or over, the apparatus 1, the apparatus 950, the
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`vehicle, and/or each of the vehicle systems.” (Id. 50:35-38). “The server
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`transmitter 957 can transmit control signals and/or other data, including
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`information to the authorized user or operator and to the apparatus 1 and/or to the
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`apparatus 950.” (Id. 50:45-48).
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`Accordingly, the specification describes that a control device includes a
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`server (952) and a transmitter (957), where the server exercises remote controls by
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`transmitting control signals via the transmitter.
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`In contrast, by arguing that the two parts in Frossard (server 1 and resource
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`2) cannot be the claimed “second control device,” Patent Owner ignores that the
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`specification undercuts his argument by disclosing a control device that includes
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`two separate parts, just like Frossard’s two parts.
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`Further, everywhere the specification describes a second device that is
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`remote from a vehicle and that performs control-related operations over the
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`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
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`FIG. 11B). Accordingly, the ’405 Patent does not enable a second control device
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`9
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`remote from the vehicle that does not include a transmitter. Thus, Patent Owner’s
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`argument for excluding a transmitter from the second control device has no support
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`in the ’405 Patent and, in fact, contradicts the ’405 Patent. Instead, Patent Owner’s
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`argument is simply an attempt to capture claim scope for an invention that he did
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`not invent.
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`(3) No weight should be given to Patent Owner’s argument.
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`Patent Owner provides no evidence or expert testimony to support its
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`argument that Frossard’s server 1 and resource 2 cannot disclose a control device.
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`Particularly, Patent Owner does not explain how or why Forssard’s resource 2
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`would transmit a third signal that is different from the second signal generated by
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`Frossard’s server 1. Accordingly, Patent Owner’s argument is conclusory and
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`entitled to no weight. See, e.g., IPR2015-00028 (Paper 12); IPR2014-00347 (Paper
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`9).
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`(4) Frossard discloses the “second control device” and “second signal.”
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`Patent Owner’s argument that Frossard’s resource 2 is an intermediate
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`device is incorrect because Frossard’s server 1 and resource 2 collectively form a
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`control device that generates and transmits a signal.
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`As explained above, Frossard’s server 1 and resource 2 meet Patent Owner’s
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`claim construction of “control device.” Frossard’s server 1 is a part of the claimed
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`“second control device,” where this part performs an operation, an action, or a
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`10
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`function of generating the message order M (the claimed second signal). Frossard’s
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`resource 2 is also a part of the claimed “second control device,” where this part
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`performs an operation, an action, or a function of transmitting the order
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`message M.
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`Specifically, Frossard discloses that an intervention code is “transmitted to
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`server center 1 by the subscriber or an authorized person in order to generate… a
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`request to shut down the aforesaid equipment 3.” (Exhibit 1005, p. 5, ¶¶ 4-5).
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`Frossard also describes that its “system contains a resource 2 for selective
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`transmission to the aforesaid equipment of an order message M to shut down this
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`equipment 3…. [T]he aforesaid transmission resource advantageously contains an
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`analog radio frequency transmitter provided with a subcarrier.” (Id. p. 4, ¶ 5, and
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`p. 5, ¶ 1).
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`Additionally, in FIG. 1 of Frossard, comparing the order message M
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`generated by server 1 to the order message M transmitted by resource 2 transmits
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`confirms that resource 2 transmits order message M unchanged. Thus, Frossard’s
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`server 1 and resource 2, as a whole, send the same signal to a vehicle. While server
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`1 generates order Message M, resource 2 transmits it to the vehicle.
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`Frossard’s server 1 and resource 2 collectively form the claimed “second
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`control device,” where server 1 and resource 2 collectively generate and transmit
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`the order message M (the claimed second signal). That is exactly what the
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`11
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`
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`independent claims recite (e.g., “wherein the second signal is one of generated by
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`and transmitted from a second control device” (emphasis added) as in claim 1,
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`and similarly in claim 16).
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`Further, Frossard’s server 1-resource 2 (e.g., server-transmitter) architecture
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`corresponds to the server 952-transmitter 957 architecture of FIG. 11B of the ’405
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`Patent. Frossard’s server 1 corresponds to server 952 of the ’405 Patent because
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`both generate a signal for remote control. Frossard’s resource 2 corresponds to
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`transmitter 957 of the ’405 Patent because both transmit the signal. Because the
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`independent claims cover the server computer 952-transmitter 957 architecture, as
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`explained above, then Frossard’s server 1-resource 2 architecture necessarily
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`discloses the features of the independent claims. This conclusion is illustrated
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`12
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`below.
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`
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`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
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`FIG. 1 of Frossard
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`(5) Even under Patent Owner’s improperly narrow interpretation, Frossard teaches
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`the “second control device” and “second signal.”
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`Patent Owner asserts Frossard’s server 1 and resource 2 are two separate
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`control devices. (Paper 22, pp. 8-21). Even under this incorrect application of
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`Frossard, Frossard teaches the second control device and second signal. The
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`following alternative mapping of Frossard to the claim elements illustrates this:
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`First, Frossard’s server 1 can correspond to the claimed third control device (claim
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`1) and to the first control device (claim 16), and the order message M from server 1
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`can correspond to the claimed third signal (claim 1) and to the first signal (claim
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`16). In addition, Frossard’s resource 2 can correspond to the claimed second
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`control device, and the order message M from resource 2 can correspond to the
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`13
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`claimed second signal. Further, Frossard’s receiver-decoder 4 can correspond to
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`the claimed first control device (claim 1) and to third control device (claim 16).
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`This mapping is shown in the illustration herein below.
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`Claim 14
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`Mapping of Frossard
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`
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`Accordingly, even under Patent Owner’s incorrect argument, Frossard still
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`discloses the features of the independent claims.
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`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
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`first control device located at a vehicle. Petitioner refers herein to such control
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`devices as a “vehicle control device” and the outputted signals as a “vehicle
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`signal.”
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`4 Claim 16 is similar, except that the nomenclature of “third” and “first” is reversed.
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`14
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`
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`The Response argues that Pagliaroli does not disclose the claimed “vehicle
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`control device” that transmits a “vehicle signal.” (Paper 22, pp. 27-32). Patent
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`Owner’s argument can be summarized in the below illustration, and is incorrect as
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`shown below.
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`Claims 1 and 16
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`Patent Owner’s application of Pagliaroli
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`
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`(1) Patent Owner’s argument fails under its proposed claim construction.
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`Patent Owner improperly attempts to limit “vehicle control device” in a way
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`that contradicts its own proposed claim construction. Even under the proposed
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`construction, Pagliaroli discloses the recited vehicle control device.
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`Patent Owner’s proposed claim construction of “control device” includes a
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`control device having multiple parts. Despite that, Patent Owner argues that
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`because Pagliaroli has two parts (receiver 14 and control unit 16), then one part can
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`be a vehicle control device, but the other part must be a separate, intermediate
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`device. (Paper 22, pp. 30-31). But as explained above in Part III.B.1, a device can
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`15
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`
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`have multiple parts. Thus, Petitioner is correct that Pagliaroli’s receiver 14 and unit
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`16 meet the “vehicle control device” limitation.
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`(2) Patent Owner’s argument contradicts the specification of the ’405 Patent.
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`The specification of the ’405 Patent does not support Patent Owner’s
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`argument that a receiver and a control unit cannot form a vehicle control device.
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`The specification never uses the term “control device.” Instead, FIG. 11B of
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`the ’405 Patent illustrates a three device architecture for controlling vehicle
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`systems. The claimed “vehicle control device” includes two illustrated parts: a
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`receiver 3 and a central processing unit (CPU) 4. Detailed descriptions of the
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`receiver 3 and CPU 4 are found under FIG. 1. Specifically, “[i]t is also envisioned
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`that the apparatus 1 may be installed in the motor vehicle….” (Exhibit 1001, 21:23-
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`25). The “apparatus 1 also comprises a receiver 3, for receiving the signals….” (Id.
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`19:56-57). “The apparatus 1 also comprises a controller or a central processing unit
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`CPU 4 (CPU 4), which is electrically connected with the receiver 3… and which
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`receives, or reads, whichever the case may be, the digital signal or signals, or
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`portions thereof, which are received by the receiver 3 and/or generated by the
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`receiver 3 in response to the received signal.” (Id. 20:61-67). FIGS. 6A and 6B
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`further describe the interaction between the receiver 3 and CPU 4. “Upon receipt
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`of the command code by the receiver 3, the command code is then transmitted to,
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`or read by, the CPU 4….. The CPU 4 will then…. perform a processing routine in
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`16
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`
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`order to identify the command code which has been entered.” (Id. 32:18-22).
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`Subsequently, the CPU 4 “issue[s] a disabling signal to the vehicle fuel pump
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`system 9….” (Id. 34:25-27).
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`Accordingly, the ’405 Patent describes that, in response to a command code
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`received by the receiver 3, the CPU 4 reads the command code, performs a
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`processing routine, and issues a disabling signal.
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`In contrast, Patent Owner’s argument contradicts the specification of the
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`’405 Patent. By arguing that Pagliaroli’s receiver 14 and central unit 16 cannot be
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`the claimed “vehicle control device,” Patent Owner ignores that the specification
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`undercuts its argument by disclosing a vehicle control device that includes two
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`separate parts, just like Pagliaroli’s two parts
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`In addition, nowhere does the ’405 Patent describe a vehicle control device
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`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
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`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.
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`(3) Patent Owner’s misapplies Mr. McNamara’s testimony.
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`The Cross-Examination does not support Patent Owner’s argument about
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`Mr. McNamara opining that Pagliaroli’s receiver 14 must be a complex receiver.
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`17
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`Patent Owner misapplies a single statement of Mr. McNamara to advance
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`the argument that Pagliaroli’s receiver 14 is complex and, thus, sends a third signal
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`to the control unit 16, as opposed to forwarding the received second signal to the
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`control unit 16. (Paper 22, p. 28-29).
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`However, Mr. McNamara never said that Pagliaroli’s receiver 14 is only a
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`complex receiver. In the Cross-Examination, Mr. McNamara’s opined multiple
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`times that Pagliaroli’s receiver can also be a “dumb” passive device. Specifically,
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`in response to, “Isn’t true that the comparison that we have discussed with respect
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`to the code that is received and the code that is used is actually done in Control
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`Unit 16 and not in Receiver 14,” he answered “It could be done both ways….”
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`(Exhibit 2006, p. 255, lines 4-9). Mr. McNamara also explained “it could be just
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`enabling the control unit, the receiver could send the data to the control unit, let the
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`control unit make the decision.” (Id. p. 255, lines 13-17). Similarly, Mr.
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`McNamara explained that “if you have a more simpler [sic] receiver design, you
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`might want to have that functionality [of code comparison] in the control unit and
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`have it do the comparison.” (Id. p. 258, lines 5-13).
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`(4) No weight should be given to Patent Owner’s argument.
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`Patent Owner’s argument that Pagliaroli’s receiver 14 and control unit 16
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`cannot disclose a vehicle control device is unsubstantiated. As demonstrated
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`above, Mr. McNamara never took the position that receiver 14 can only be a
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`complex receiver. Instead, in his Declaration and during the Cross-Examination,
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`Mr. McNamara consistently opined that receiver 14 and control unit 16 disclose a
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`vehicle control device. In contrast, Patent Owner provides no evidence or expert
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`testimony to support its conclusion. Patent Owner also fails to explain how or why
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`receiver 14 would not pass the signal it receives to control unit 16 and how or why
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`control unit 16 would not generate and transmit the claimed vehicle signal in
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`response to the signal passed from receiver 14.
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`Accordingly, Patent Owner’s argument is conclusory, and is entitled to no
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`weight. See IPR2015-00028 (Paper 12); IPR2014-00347 (Paper 9).
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`(5) Pagliaroli discloses the “vehicle control device” and “vehicle signal.”
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`Patent Owner’s argument that Pagliaroli’s receiver 14 and control unit 16 are
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`two separate devices is incorrect because Pagliaroli’s receiver 14 and control unit
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`16 collectively form a vehicle control device that generates and transmits a vehicle
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`signal.
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`As explained above, Pagliaroli’s receiver 14 and control unit 16 meet Patent
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`Owner’s claim construction. Further, Pagliaroli describes that “a receiver 14,
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`control unit 16… are added to the automobile” (Exhibit 1006, 3:50-52) and that
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`“[i]t should be obvious to a person skilled in the art that these components may…
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`be integrally formed.” (Id. 6:9-11). Thus, even under a narrow claim construction
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`where a vehicle control device can include only one part, Pagliaroli’s receiver 14
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`19
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`and control unit 16 meet this construction by integrally forming a single device
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`located at a vehicle.
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`As also demonstrated in the Petition, Pagliaroli’s receiver 14 receives and
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`forwards a signal code to control unit 16 that, in turn, generates and transmits
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`disabling and control signals to vehicle systems. (Id. 4:44-45; 4:66-5:7; 5:44-55).
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`Accordingly, when viewed as a whole (e.g., when integrated as a single
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`device as disclosed at 6:9-11), Pagliaroli’s receiver 14 and control unit 16 fit this
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`proposed claim construction. Like any other device, these two parts interact such
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`that the control device, as a whole, receives a signal code 40, and generates and
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`transmits disabling and control signals to vehicle systems/devices (e.g., starter,
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`emergency lights). Pagliaroli’s receiver 14 is a part of the claimed “vehicle control
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`device,” where this part performs an operation, an action, or a function of receiving
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`a signal code 40 (the claimed second signal) from telephone signal transmitters 46
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`(the claimed second control device). Pagliaroli’s control unit 16 is also a part of the
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`claimed “vehicle control device,” where this part performs an operation, an action,
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`or a function of generating and transmitting the vehicle signal in response to the
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`signal code 40.
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`Therefore, Pagliaroli’s receiver 14 and control unit 16 collectively form the
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`claimed “vehicle control device,” where receiver 14 and control unit 16
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`collectively receive the signal code 40 (the claimed second signal) and generate
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`20
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`and transmit the vehicle signal. That is exactly what the independent claims recite
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`(e.g., “wherein said first control device is responsive to a second signal” and
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`“wherein said first control device one of generates and transmits a first signal…”
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`as in claim 1, and similarly in claim 16).
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`The above receiver-control unit architecture corresponds to the server
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`receiver 3-CPU 4 architecture of FIG. 11B of the ’405 Patent. Pagliaroli explains
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`that “a receiver 14, control unit 16… are added to the automobile.” (Exhibit 1006,
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`3:50-52). “The signal codes 40 received by the receiver 14 are forwarded to the
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`control unit 16.” (Id. 4:44-45). Thus, Pagliaroli’s receiver 14 is equivalent to the
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`receiver 3 the ’405 Patent because both parts are located at a vehicle and receive
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`signals from a remote control device (e.g., the claimed second control device).
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`Pagliaroli also describes that its “control unit 16 recalls the enabling and
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`disabling code from the memory source 58 and compares the recalled codes with
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`input code read from the receiver 14… . If the input code matches the disabling
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`code, disabling signals 60, 62 are sent to the starter 20 and ignition system 22….”
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`(Id. 5:44-49). Thus, Pagliaroli’s control unit 16 is equivalent to the CPU 4 of the
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`’405 Patent because both parts are located at a vehicle transmit the claimed vehicle
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`signal.
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`21
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` Because the independent claims cover the receiver 3-CPU 4 architecture,
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`Pagliaroli’s receiver-control unit architecture necessarily discloses the claimed
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`features. This conclusion is illustrated below.
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`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
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`FIG. 1 of Pagliaroli
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`D. Grounds 3 and 6 are proper.
`The Response does not dispute that Simms discloses the elements added in
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`claim 3, but instead claims that Simms should not be combined with the base
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`reference (Frossard or Pagliaroli) because this allegedly “would appear to require a
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`substantial redesign.” (Paper 22, pp. 23-25 and 32-35). Patent Owner argues
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`against the Frossard references and concludes that the same applies to the
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`Pagliaroli reference. (Id.). Patent Owner’s allegation is incorrect because it is not
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`supported by any evidence, mischaracterizes Mr. McNamara’s position, and is
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`contradicted by the teachings of the references.
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`22
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`First and foremost, Patent Owner does not present any expert testimony to
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`support its conclusion of a substantial redesign. Instead, Patent Owner selectively
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`plucks disparate portions of Mr. McNamara’s deposition out of context to
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`incorrectly contend that Mr. McNamara supports its conclusion.
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`Rather than supporting Patent Owner’s conclusion, Mr. McNamara’s
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`statements actually explain a simple implementation for combining Simms’
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`positioning device with Frossard’s system. Mr. McNamara further explained other
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`implementations during his Cross-Examination. (Exhibit 2006, page 335, line 13-
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`page 336, line 6). For example, in response to a question in which Patent Owner
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`attempts to limit the map of claim 3 to being located at the vehicle, Mr.
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`McNamara explains that “a map database, from a des