Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 7
`Filed: February 1, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.,
`Petitioner,
`
`v.
`
`JOAO CONTROL & MONITORING SYSTEMS, LLC,
`Patent Owner.
`_______________
`
`Case IPR2015-01610
`Patent 6,542,076 B1
`_______________
`
`
`
`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
`
`
`
`
`
`
`
`
`571.272.7822
`
`
`Paper No. 7
`Filed: February 1, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.,
`Petitioner,
`
`v.
`
`JOAO CONTROL & MONITORING SYSTEMS, LLC,
`Patent Owner.
`_______________
`
`Case IPR2015-01610
`Patent 6,542,076 B1
`_______________
`
`
`
`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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`IPR2015-01610
`Patent 6,542,076 B1
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`I. INTRODUCTION
`
`Kniffin1
`
`§ 102
`
`§ 103
`§ 103
`
`§ 102
`
`§ 103
`§ 103
`
`A. Background
`Volkswagen Group of America, Inc. (“Petitioner”) filed a Petition
`(Paper 1, “Pet.”) seeking to institute an inter partes review of claims 3, 18,
`65, 67, 68, 70, 73, 91, 103, 116, 119, 120, and 205 of U.S. Patent No.
`6,542,076 B1 (Ex. 1001, “the ’076 patent”) pursuant to 35 U.S.C. §§ 311–
`319. Joao Control & Monitoring Systems, LLC, (“Patent Owner”) filed a
`Preliminary Response. (Paper 6, “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. 12–59):
`Reference(s)
`Basis Claim(s) Challenged
`3, 18, 65, 67, 68, 70, 73, 91,
`103, 116, 119, 120, and 205
`94 and 110
`96
`3, 18, 65, 67, 70, 73, 91,
`103, 116, 119, and 205
`94 and 110
`68, 96, and 120
`
`Kniffin
`Kniffin and Neely2
`
`Ryoichi3
`
`Ryoichi
`Ryoichi and Neely
`
`
`1 U.S. Patent No. 6,072,402 (Ex. 1010) (“Kniffin”).
`2 U.S. Patent No. 4,602,127 (Ex. 1018) (“Neely”).
`3 U.S. Patent No. 5,113,427 (Ex. 1011) (“Ryoichi”).
`
`2
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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 ʼ076 patent as to claims 3, 18, 65, 67,
`68, 70, 73, 91, 103, 116, 119, 120, and 205.
`
`B. Related Proceedings
`Petitioner informs us that the ʼ076 patent may be implicated in
`approximately fifty lawsuits pending in courts around the country. Pet. 1–2.
`In addition, ex parte reexamination No. 90/013,302 was filed with respect to
`the ’076 patent and is pending. Pet. 1; Ex. 1019. The ’076 patent also is the
`subject of a co-pending petition for inter partes review (IPR2015-01508).
`
`C. The ʼ076 Patent
`The ’076 patent describes a control, monitoring, and/or security
`apparatus and method for vehicles or premises. Ex. 1001, 1:25–32. The
`apparatus described in the ’076 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 3:5–11.
`An embodiment of the apparatus of the ’076 patent includes a
`transmitter system which is “a remote system, which may or may not be
`physically connected to the remainder of the apparatus. Further, the
`transmitter system is not located in the [vehicle] . . . , but rather, is located
`external from, and/or separate and apart from, the vehicle.” Id. at 3:50–56.
`The apparatus also includes a CPU that is connected electrically and/or
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`linked to one or more vehicle equipment systems (e.g., vehicle ignition or
`anti-theft systems). Id. at 4:35–37; 4:61–5:14. The vehicle equipment
`systems may be activated, de-activated, reset, or controlled by the apparatus.
`Id. at 5:15–18. This activation or control may be achieved by a user entering
`a code on the transceiver of the transmitter system. Id. at 6:30–36. The
`code is transmitted to the CPU and then the CPU communicates with the
`appropriate vehicle equipment system. Id. at 7:16–21.
`
`D. Illustrative Claim
`As noted above, Petitioner challenges claims 3, 18, 65, 67, 68, 70, 73,
`91, 103, 116, 119, 120, and 205 of the ʼ076 patent, of which claims 3, 73,
`and 205 are independent. Claim 3 is illustrative of the challenged claims
`and is reproduced below:
`3.
`A control apparatus, comprising:
`
`a first control device, wherein the first control device at least
`one of generates a first signal and transmits a first signal for
`at least one of activating, de-activating, disabling, and re-
`enabling, at least one of a vehicle system, a vehicle
`equipment system, a vehicle component, a vehicle device, a
`vehicle equipment, and a vehicle appliance, of a vehicle,
`wherein the first control device is located at the vehicle,
`
`wherein the first control device at least one of generates the first
`signal and transmits the first signal in response to a second
`signal, wherein the second signal is at least one of generated
`by a second control device and transmitted from a second
`control device, wherein the second control device is located
`at a location which is remote from the vehicle, wherein the
`second signal is transmitted from the second control device
`to the first control device, wherein the second signal is
`automatically received by the first control device, and
`further wherein the second control device at least one of
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`generates the second signal and transmits the second signal
`in response to a third signal,
`
`wherein the third signal is at least one of generated by a third
`control device and transmitted from a third control device,
`wherein the third control device is located at a location
`which is remote from the vehicle and remote from the
`second control device, wherein the third signal is transmitted
`from the third control device to the second control device,
`and further wherein the third signal is automatically received
`by the second control device.
`
`Id. at 106:42–107:5.
`
`II. CLAIM CONSTRUCTION
`As acknowledged by the parties, the ’076 patent has expired. See Pet.
`11; Prelim. Resp. 9. 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).
`Petitioner does not seek explicit construction of any term of the ’076
`patent. Pet. 11–12. 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. 12–40. Petitioner does not
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`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. 17. This statement was made several
`years after the issuance of the ’076 patent. See Ex. 1001, at [45] (April 15,
`2003 issuance date). The ’076 patent and the ’363 patent each descend from
`U.S. Patent Application No. 08/622,749. See Ex. 1001, at [63]4.
`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
`
`
`4 This information was modified by a Certificate of Correction issued July 1,
`2003. See Ex. 1001, 95.
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`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 and the communications system. Prelim. Resp. 18–33. 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. 18–21.
`Claim 3 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, 106:43–50; see also id. at 121:63–122:9 (similar limitations in
`claim 73); 141:23–37 (reciting similar limitations in claim 205 in reference
`to the third control device and third signal). Patent Owner relies on the
`description of preferred 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 20 (quoting Ex. 1001, 25:15–23). 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.
`(quoting Ex. 1001, 5:15–18).
`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
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`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. In
`addition, we note that the specification states that “CPU 4 can be the
`dedicated control device for, and/or can be an integrated control device
`and/or component of, any of the respective systems, subsystems, equipment
`systems, devices, and/or components, of any of the herein described
`vehicles.” Ex. 1001, 104:26–30 (emphasis added); see also id. at 104:45–48
`(similar language). 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. 21. 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 network” and as such the
`control devices and communication network must be distinct. Id. at 23.
`Patent Owner quotes several passages from the specification that describe
`the claimed apparatus as operating “in a network environment” or sending
`signals “over a communication system.” Id. at 24 (quoting Ex. 1001, 3:25–
`32); id at 24–25 (quoting Ex. 1001, 3:31–39). 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
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`network environment or a communication system could include any number
`of network devices or 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,
`4:7–9 (emphasis added); see also id. at 104:3–11 (noting that “[i]n any
`and/or all of the embodiment described herein any of the systems” of a
`vehicle can be controlled via any “communication device”). Thus, we are
`not persuaded that control device must be separate and distinct from the
`communication system or the communication network.
`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).
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`A. Analysis of Asserted Grounds Based on Kniffin (Ex. 1010)
`
` Overview of Kniffin
`Kniffin describes a secure entry system that uses radio transmissions
`to communicate with locks, keys, and related components. Ex. 1010,
`Abstract. Figure 1 is reproduced below.
`
`
`Figure 1 depicts the first embodiment of Kniffin. Id. at 2:25–26. In
`this embodiment, a secure entry system includes a lock (or other access
`control device) 12 that has an integrated cellular, paging, or other RF
`receiver 14. Users establish communication with the lock via “a cellular
`telephone, by a conventional telephone, or by some other communications
`link 16” that is in communication with clearinghouse 18. Id. at 2:32–34. In
`order to identify the lock that the user wishes to access, computer 20 of
`clearinghouse 18 synthesizes a series of voice prompts that are relayed to the
`user over communications link 16 that prompt the user to provide the
`appropriate identifying information. Id. at 2:35–43. If the clearinghouse
`determines that the user is authorized to access the lock then the
`clearinghouse will send a signal to lock 12. Id. at 2:44–47.
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`Figure 4 is reproduced below.
`
`
`Figure 4 depicts the fourth embodiment of Kniffin. Id. at 8:5–6. This
`embodiment is described in the context of an access control device for a
`delivery truck. Id. at 8:6–8. As described in Kniffin’s specification “the
`access control device 64 is not particularly detailed in FIG. 4, [but] it can
`take the same form as lock 12 of FIG. 1 (but with a lock mechanism adapted
`to secure the doors of a delivery truck).” Id. at 8:46–48. Here, a delivery
`company calls clearinghouse 66 and identifies the sequence of deliveries to
`be made by a truck. When truck 62 arrives at a delivery location access
`control device 64 will sense whether this location is the expected location
`based on the delivery sequence provided to clearinghouse 66 by the delivery
`company. Id. at 8:25–30. If it is the expected location access control device
`64 will unlock and allow access to the truck’s contents. Id. at 8:30–33. At
`any time, the delivery company can call clearinghouse 66 and modify the
`route. Id. at 8:61–67.
`
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` Analysis of Asserted Ground of Anticipation by Kniffin
`Petitioner asserts that claims 3, 18, 65, 67, 68, 70, 73, 91, 103, 116,
`119, 120, and 205 of the ’076 Patent are unpatentable under 35 U.S.C. § 102
`as anticipated by Kniffin. Pet. 12–32. Petitioner relies on claim charts
`showing how this reference allegedly discloses the claimed subject matter.
`Id. at 24–32. Petitioner further relies on a declaration from Scott Andrews.
`Ex. 1002.
`a. Independent Claims 3, 73, and 205
`Each of the challenged independent claims (3, 73, and 205) recites a
`first, second, and third control device. In claims 3 and 73, the “first control
`device is located at the vehicle.” Id. at 106:49–50; 122:8–9. Similarly, in
`claim 205, the “third control device is located at the vehicle.” Id. at 141:37–
`38. All three independent claims recite that “the second control device is
`located at a location which is remote from the vehicle.” Id. at 106:56–57;
`122:14–15; 141:32–33. In addition, claims 3 and 73 recite 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 106:66–107:1; 122:24–26.
`Similarly, claim 205 recites that the “first control device is located at a
`location remote from the second control device and remote from a vehicle.”
`Id. at 141:17–19. 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.
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`Petitioner argues that Kniffin discloses these control devices5 through
`its discussion and depiction of access control device 64 (first control device)
`(Pet. 12), clearinghouse 18 or 66 (second control device) (id.), and
`communications link 16 (third control device) (id.). Petitioner asserts that
`“access control device 64 is adapted to secure the doors of the truck and
`guard against unauthorized opening.” Id. at 14 (citing Ex. 1010, 8:11–14,
`8:46–48). Petitioner argues that “[c]learinghouse 66 receives signals from a
`telephone 22 and communications link 16, and includes an RF transmission
`system for transmitting the schedule of stops. Moreover, truck access
`control device 64 is responsive to signals from clearinghouse 66, as Kniffin
`discloses that truck access control device 64 may be reprogrammed by
`clearinghouse 66.” Pet. 15–16 (citing Ex. 1010, 8:61–67; Ex. 1002 ¶¶ 11–
`13). In the first embodiment, users communicate with the clearinghouse via
`“a cellular telephone, by a conventional telephone, or by some other
`communications link 16” and Petitioner argues that the communications link
`of the fourth embodiment is depicted as having similar communications. Id.
`at 16 (citing Ex. 1010, 2:31–43, 8:61–67; Ex. 1002 ¶¶ 11–13).
`
`
`5 Petitioner states that “[c]laims 3, 73, and 205 identify these same control
`devices in different orders . . . [and that] the challenged claims claim the
`same chain of command among [these] three control devices.” Pet. 8.
`Petitioner relies upon substantially similar evidence and arguments for these
`three devices. Thus, our analysis of Kniffin’s disclosures applies to each of
`the independent claims. For convenience, unless otherwise indicated, we
`shall use the terms first, second, and third control device to refer to the
`control devices as described in claim 3.
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`Patent Owner argues that Kniffin fails to teach the first control
`device.6 Prelim. Resp. 41. According to Patent Owner, a device such as
`Kniffin’s access control device 64, that contains a lock, key, access control
`device, or any portion or component of same, cannot be the claimed first
`control device because that would be contrary to the ’076 patent
`specification. Id. at 36–37. Stated differently, Patent Owner contends that
`the vehicle component includes a lock system, as recited in the specification
`of the ’076 patent and dependent claim 5. Id. at 40–45. As noted above,
`however, we are not persuaded that the first control device described in the
`specification is necessarily separate and distinct from the vehicle
`system/vehicle component. See § II (construction of “control device”). In
`addition, we note that “CPU 4 (that Patent Owner characterizes as an
`embodiment of the first control device) can be the dedicated control device
`for, and/or can be an integrated control device and/or component of, any of
`the respective systems, subsystems, equipment systems, devices, and/or
`components, of any of the herein described vehicles.” Ex. 1001, 104:26–30
`(emphasis added); id. at 104:45–48 (similar language); see also Prelim.
`Resp. 37 (noting that CPU 4 is an exemplary embodiment of the first control
`device). Contained within Kniffin’s lock 12 is lock mechanism 32 and CPU
`30. Ex. 1010, Fig. 1. Kniffin’s lock mechanism 32, thus, corresponds to the
`vehicle component described in claims 3, 73, and 205 because there is
`nothing precluding the claimed “vehicle component” from being a
`
`
`6 Similar to Petitioner, Patent Owner is applying the same analysis to the
`first control device of claims 3 and 73 and the third control device of claim
`205. For convenience, we shall refer to these devices as the first control
`device.
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`subcomponent of a “control device.” Id. On this record, we are persuaded
`that this configuration is within the scope of 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 3, 73, and 205 are unpatentable under
`35 U.S.C. § 102 over Kniffin.
`b. Dependent Claims 18, 65, 67, 68, 70, 91, 103, 116, 119, and 120
`Claim 18 depends from claim 3; claims 91, 103, 116, 119, and 120
`depend from 73; and claims 65, 67, 68, and 70 depend from claim 205. We
`have reviewed Petitioner’s assertions regarding these claims and we are
`persuaded that these claims also are anticipated by Kniffin. See Pet. 16, 18–
`21, 22–24. For example, claim 18 depends from claim 3 and further recites,
`in relevant part, an interface device that provides an interface between the
`first control device and a vehicle system. In its arguments directed to this
`claim, Petitioner relies upon Kniffin’s disclosure of identification means 28.
`Prelim. Resp. 26 (citing Ex. 1010, 3:50–4:3). The user enters identifying
`information into the identification means and if that individual is identified
`as an authorized user lock microprocessor CPU 30 will instruct lock
`mechanism 32 to unlock. Ex. 1010, 3:64–66. Patent Owner has not spoken
`in regards to the specific allegations directed to the dependent claims and at
`this time has only put forth arguments addressing the patentability of the
`independent claims. Prelim. Resp. 45. 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 18, 65, 67, 68, 70, 91, 103,
`116, 119, and 120 are unpatentable under 35 U.S.C. § 102 over Kniffin.
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` Analysis of Asserted Grounds of Obviousness Based on Kniffin
`Petitioner asserts that claims 94 and 110 of the ’076 Patent are
`unpatentable under 35 U.S.C. § 103 as obvious over Kniffin and claim 96 is
`unpatentable over the combined teachings of Kniffin and Neely. Pet. 32–42.
`Petitioner relies on claim charts showing how these references allegedly
`teach the claimed subject matter. Id. at 38–39, 41. Petitioner further relies
`on a declaration from David McNamara. Ex. 1003.
`a. Analysis of Asserted Ground of Obviousness over Kniffin
`Claims 94 and 110 depends from claim 73. Petitioner contends that
`these claims would have been obvious over Kniffin. See Pet. 32–39. Claims
`94 and 110, in relevant part, add limitations regarding the Internet and
`World Wide Web. For example, claim 94 further recites “wherein the
`apparatus is utilized on or over at least one of the Internet and the World
`Wide Web.” In its arguments directed to this claim, Petitioner states that
`“[t]he only difference between the system described by Kniffin and claim 94
`is the utilization of the system on or over the Internet and/or World Wide
`Web. However, the use of the Internet or World Wide Web in vehicle
`control systems was well-known [at the relevant time].” Pet. 32–33. As
`evidence that one of skill in the art would have been aware of the use of
`internet technology in such vehicle systems Petitioner cites three patents,
`Spaur7, Behr8, and Kubler9. Id. at 33. We are persuaded that claims 94 and
`110 would have been obvious over the combined teachings of Kniffin and
`
`
`7 U.S. Patent No. 5,732,074, filed Jan. 16, 1996 (Ex. 1020) (“Spaur).
`8 U.S. Patent No. 5,808,566, filed June 23, 1995 (Ex. 1021) (“Behr”).
`9 U.S. Patent No. 5,726,984, filed Oct. 5, 1995 (Ex. 1022) (“Kubler”).
`
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`one of Spaur, Behr, or Kubler. Thus, we exercise our discretion to recognize
`Petitioner’s implicit argument that these claims would have been obvious
`over the teachings of Kniffin and one of Spaur, Behr, or Kubler. See
`Garmin Int’l, Inc. et al. v. Cuozzo Speed Techs., Case IPR2012-00001, 2013
`WL 5947691, at *10 (Jan. 9, 2013); aff’d sub nom, In re Cuozzo Speed
`Techs., LLC, 793 F.3d 1297, 1301 (Fed. Cir. 2015), cert. granted, 72016 WL
`205946 (U.S. Jan. 15, 2016) (No. 15-446).
`(1) Priority Date of Claims 94 and 110
`The earliest application listed on the face of the ’076 patent was filed
`on June 8, 1993. Ex. 1001, at [63]. Spaur, Behr, and Kubler spawn from
`applications filed June 23, 1995 (Behr), October 5, 1995 (Kubler) and
`January 16, 1996 (Spaur). Thus, we need to examine the appropriate priority
`date for claims 94 and 110 so that we may ascertain whether these references
`may be prior art to claims 94 and 110. Petitioner contends claims 94 and
`110, which recite “at least one of the Internet and the World Wide Web,”
`cannot be entitled to a filing date earlier than March 27, 1996 because the
`March 27, 1996 application is the first application in the priority chain that
`includes a mention of the Internet or World Wide Web. Pet. 33–34 n.7.
`Patent Owner has not spoken on this issue. On this record, we are persuaded
`that claims 94 and 110 are entitled to a filing date no earlier than March 27,
`1996. Thus, Spaur, Behr, and Kubler, are prior art to claims 94 and 110 of
`the ’076 patent.
`(2) Spaur (Ex. 1020)
`Spaur teaches wirelessly linking with a vehicle using an Internet
`communications link to control a vehicle component. Ex. 1020, 2:42–48,
`3:13–20, 7:40–47, 12:51–54.
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`(3) Behr (Ex. 1021)
`Behr teaches an electronic navigation system providing route
`guidance, tracking information, and other information from a base unit to a
`remote unit over wireless, wireline, or optical devices, including cellular or
`Internet Protocol networks. Ex. 1021, Abstract, 1:19–26, 9:38–42.
`(4) Kubler (Ex. 1022)
`Kubler teaches a communication system using wired and wireless
`networks, including the Internet, to communicate between stationary and
`roaming devices, such as a vehicle-mounted computer terminal. Ex. 1022,
`Abstract, 8:25–29.
`(5) Asserted Obviousness of Claims 94 and 110
`We are persuaded that the present record supports Petitioner’s
`contention that Kniffin teaches the apparatus claimed in 94 and 110. We
`also are persuaded that the present record supports Petitioner’s contention
`that at least one of Spaur, Behr, or Kubler teaches controlling a device over
`the Internet. Thus, we are persuaded that the combination of Kniffin and
`Spaur; Kniffin and Behr; or Kniffin and Kubler teaches the limitations of
`claims 94 and 110. See Pet. 32–39. On this record, we are persuaded that
`this combination would be an application of a known technique to a known
`device. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417–18 (2007).
`Thus, for the foregoing reasons, we are persuaded that claims 94 and 110
`would have been obvious over Kniffin and one of Spaur, Behr, or Kubler.
`b. Analysis of Asserted Ground of Obviousness over Kniffin and Neely
`Claim 96 depends from claim 73. We have reviewed Petitioner’s
`assertions regarding this claim and we are persuaded that it would have been
`obvious over Kniffin and Neely. See Pet. 39–42. Claim 96, in relevant part,
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`further recites detecting a state of wear or disrepair and generating a fourth
`signal containing information regarding the state of wear or disrepair. In its
`arguments directed to this claim, Petitioner relies upon Neely’s discussion of
`“sensors which are used to monitor various vehicle operating parameters. In
`several of these vehicle computer systems, as many as twenty or more
`sensors are employed for control purposes and to assist on-board diagnosis
`by the vehicle computer so that an immediate warning may be displayed to
`the vehicle operator.” Pet. 41 (citing Ex. 1018, 1:18–26). In addition,
`Petitioner notes that Neely transmits data signals between a control station
`and a data processing station via a telephone system. Id. (citing Ex. 1018,
`4:42–5:10). 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 claim 96 would have been obvious over Kniffin and Neely.
`
`B. Analysis of Asserted Grounds Based on Ryoichi
`
` Analysis of Asserted Ground of Anticipation by Ryoichi
`Petitioner asserts that claims 3, 18, 65, 67, 70, 73, 91, 103, 116, 119,
`and 205 of the ’076 Patent are unpatentable under 35 U.S.C. § 102 as
`anticipated by Ryoichi. Pet. 42–56. Petitioner relies on claim charts
`showing how this reference allegedly discloses the claimed subject matter.
`Id. at 50–55. Petitioner further relies on a declaration from Scott Andrews.
`Ex. 1002.
` Overview of Ryoichi
`Ryoichi describes “a radio-signal-responsive control system for
`controlling various devices on a motor vehicle.” Ex. 1011, 1:9–11. Figure 1
`of Ryoichi is reproduced below.
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`Figure 1 is a block diagram of the first embodiment of Ryoichi’s radio-
`signal-responsive vehicle device control system. Id. at 3:24–26. Personal
`radio paging unit 9 is inserted into the door of the vehicle. Id. at Fig. 3,
`7:52–55. A calling number is dialed on telephone unit TEL and that number
`represents a code number corresponding to a desired message signal. Id. at
`7:60–64. A radio wave indicating the message is radiated automatically
`from fixed radio station ST and that wave is received by personal radio
`paging unit 9. Id. at 7:64–67. In response, personal radio paging unit 9
`generates a sound which is detected by sensors 10 and these sensors turn on
`code converter 11 and control unit S. Id. at 8:1–5. Code converter 11
`converts the received electric signal into the format for the control unit S.
`Id. at 8:5–15. Then the converted code signal is sent to control unit S, which
`selects and executes a program correspondi
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