UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.
`
`Petitioner
`
`
`Patent No. 6,542,076
`Issue Date: April 1, 2003
`Title: CONTROL, MONITORING AND/OR
`SECURITY APPARATUS AND METHOD
`__________________________________________________________________
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,549,076
`PURSUANT TO 35 U.S.C. § 312 and 37 C.F.R. § 42.104
`
`Case No. IPR2015-01610
`__________________________________________________________________
`
`
`
`
`
`

`
`
`
`I. 
`II. 
`III. 
`
`TABLE OF CONTENTS
`Mandatory Notices (37 C.F.R. § 42.8) ........................................................... 1 
`Grounds for Standing (37 C.F.R. § 42.104(a)) ............................................... 3 
`Identification of Challenge (37 C.F.R. § 42.104(b)(1)-(3)) and Relief
`Requested (37 C.F.R. § 42.22(a)(1)) .............................................................. 3 
`A. 
`Background of the ’076 Patent ............................................................. 3 
`1. 
`The ’076 Patent .......................................................................... 3 
`2. 
`Prosecution History of the ’076 Patent ...................................... 6 
`3. 
`Reexamination History of the ’076 Patent ................................. 9 
`Patents and Printed Publications Relied On ....................................... 10 
`B. 
`Statutory Grounds for Challenge (37 C.F.R. § 42.104(b)(1)–(2)) ..... 10 
`C. 
`Claim Construction (37 C.F.R. § 42.104(b)(3)) ................................. 11 
`D. 
`IV.  How Challenged Claims Are Unpatentable (37 C.F.R. § 42.104(b)(4)–
`(5)) ................................................................................................................ 12 
`A. 
`Claims 3, 18, 65, 67, 68, 70, 73, 91, 103, 116, 119, 120, and
`205 are Anticipated by Kniffin ........................................................... 12 
`1. 
`Claims 3 and 18 ........................................................................ 13 
`2. 
`Claims 73, 91, 103, 116, 119, and 120 .................................... 17 
`3. 
`Claims 65, 67, 68, 70, and 205 ................................................ 21 
`Claims 94 and 110 are Obvious in View of Kniffin .......................... 32 
`Claim 96 is Obvious in View of Kniffin and Neely .......................... 39 
`Claims 3, 18, 65, 67, 70, 73, 91, 103, 116, 119, and 205 are
`Anticipated by Ryoichi ....................................................................... 42 
`1. 
`Claims 3 and 18 ........................................................................ 44 
`2. 
`Claims 73, 91, 103, 116, and 119 ............................................ 46 
`3. 
`Claims 65, 67, and 70, and 205 ................................................ 48 
`Claims 94 and 110 are Obvious in View of Ryoichi ......................... 56 
`Claims 68, 96, and 120 are Obvious in View of Ryoichi and
`Neely ................................................................................................... 57 
`The Proposed Grounds of Unpatentability Are Not Redundant .................. 60 
`
`B. 
`C. 
`D. 
`
`E. 
`F. 
`
`V. 
`
`i
`
`

`
`
`
`VI.  Conclusion .................................................................................................... 60 
`
`Conclusion .................................................................................................. ..6O
`
`VI.
`
`ii
`
`
`
`
`
`

`
`
`
`Exhibit 1001
`
`Exhibit 1002
`
`Exhibit 1003
`
`Exhibit 1004
`
`
`Exhibit 1005
`
`
`Exhibit 1006
`
`Exhibit 1007
`
`
`Exhibit 1008
`
`Exhibit 1009
`
`
`Exhibit 1010
`
`Exhibit 1011
`
`Exhibit 1012
`
`
`Exhibit 1013
`
`
`Exhibit 1014
`
`
`Exhibit 1015
`
`
`
`LISTING OF EXHIBITS
`
`U.S. Patent No. 6,542,076 to Joao
`
`Declaration of Scott Andrews
`
`U.S. Patent No. 5,086,385 to Launey
`
`November 29, 2000 Non-Final Office Action in U.S.
`Patent App. Serial No. 09/551,365
`
`March 26, 2001 Amendment and Response to Office
`Action in U.S. Patent App. Serial No. 09/551,365
`
`U.S. Patent No. U.S. 5,917,405 to Joao
`
`May 30, 2001 Notice of Allowability in U.S. Patent App.
`Serial No. 09/551,365
`
`U.S. Patent No. 5,081,667 to Drori
`
`October 29, 1998 Notice of Allowability in U.S. Patent
`App. Serial No. 08/683,828
`
`U.S. Patent No. 6,072,402 to Kniffin
`
`U.S. Patent No. 5,113,427 to Ryoichi
`
`Sept. 8, 2014 Decision Granting Ex Parte Reexamination
`Control No. 90/013,302
`
`Feb. 12, 2015 Non-Final Office Action in Reexamination
`Control No. 90/013,302
`
`April 10, 2015 Response to Non-Final Office Action in
`Reexamination Control No. 90/013,302
`
`May 15, 2015 Supplemental Response to Non-Final
`Office Action in Reexamination Control No. 90/013,302
`
`iii
`
`

`
`May 22, 2015 Final Office Action in Reexamination
`Control No. 90/013,302
`
`July 31, 2015 Advisory Action, Reexamination Control
`No. 90/013,302
`
`U.S. Patent No. 4,602,127 to Neely
`
`May 22, 2015 Final Office Action in Reexamination
`Control No. 90/013,300
`
`U.S. Patent No. 5,732,074 to Spaur
`
`U.S. Patent No. 5,808,566 to Behr
`
`U.S. Patent No. 5,726,984 to Kubler
`
`July 29, 2015 Notice of Intent to Issue Ex Parte
`Reexamination Certificate, Reexamination Control No.
`90/013,303
`
`June 1, 2015 Response to Office Action, Reexamination
`Control No. 90/013,303
`
`
`
`Exhibit 1016
`
`
`Exhibit 1017
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`
`Exhibit 1018
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`Exhibit 1019
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`
`Exhibit 1020
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`Exhibit 1021
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`Exhibit 1022
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`Exhibit 1023
`
`
`Exhibit 1024
`
`
`
`iv
`
`

`
`
`
`I. Mandatory Notices (37 C.F.R. § 42.8)
`
`Real Party-in-Interest: Volkswagen Group of America, Inc. (“VWGoA”), which is
`
`a subsidiary of Volkswagen AG.
`
`Related Matters: The following judicial matter may affect, or may be affected by, a
`
`decision in this inter partes review: Joao Control & Monitoring Systems, LLC v.
`
`Volkswagen Group of America, Inc., et al., No. 1:14-cv-517 (D. Del.), in which
`
`VWGoA and its subsidiary Bentley Motors, Inc. are defendants. Judicial matters in
`
`the following districts, against the following parties, may affect, or may be affected
`
`by, a decision in this inter partes review: in the District of Delaware, Nissan (1:14-
`
`cv-523), Mazda (1:13-cv-728), Mitsubishi (1:13-cv-00614), Jaguar Land Rover
`
`(1:13-cv-507), Verizon (1:14-cv-525), Cox (1:14-cv-520), Consolidated Edison
`
`(1:14-cv-519), Time Warner Cable (1:14-cv-524), Cablevision (1:14-cv-518),
`
`DirecTV
`
`(1:14-cv-521), DISH
`
`(1:14-cv-522), Alarm.com
`
`(1:14-cv-284),
`
`FrontPoint Security Solutions (1:13-cv-1760), Vivint (1:13-cv-508), American
`
`Traffic Solutions (1:13-cv-243), and Ford (1:12-cv-1479); in the Eastern District of
`
`Michigan, Chrysler (4:13-cv-13957) and Ford (4:13-cv-13615 and 4:12-cv-14004);
`
`in the Southern District of New York, Chrysler (1:13-cv-53), City of Yonkers
`
`(1:12-cv-7734), Digital Playground (1:12-cv-6781), Liquid Cash (1:12-cv-6315),
`
`and Cenuco (7:05-cv-01037); in the Eastern District of New York, Slomin’s (2:14-
`
`cv-2598); in the Central District of California, Ford (2:12-cv-33), Hyundai (8:12-
`
`1
`
`

`
`
`
`cv-7), ACTI (8:10-cv-1909), Honda (2:12-cv-4013), Xanboo (2:12-cv-3698 and
`
`8:11-cv-604), Smartvue (2:12-cv-3641), Digital Playground (2:12-cv-417), GSMC
`
`(2:11-cv-9636 and 2:11-cv-8697), Game Link (2:11-cv-9633 and 2:11-cv-8695),
`
`Ahava (2:11-cv-9638), and Webcamnow.com (2:11-cv-8257); in the Northern
`
`District of California, Sling Media (3:11-cv-6277); in the Eastern District of
`
`Pennsylvania, LifeShield (2:15-cv-2772); in the Northern District of Illinois,
`
`Telular Corp. (1:14-cv-9852); in the District of Arizona, Mobile Integrated
`
`Solutions, LLC (2:14-cv-2643); in the Northern District of Georgia, Comverge
`
`(1:14-cv-3862); in the Western District of North Carolina, CPI Security Systems
`
`(3:14-cv-202) and Lowe’s (5:13-cv-56); in the Western District of Texas, Protect
`
`America (1:14-cv-134); and in the Eastern District of Texas, Playboy (6:09-cv-
`
`499).
`
` The following administrative matters may affect, or may be affected by, a
`
`decision in this inter partes review: U.S. Pat. App. Ser. Nos.: 08/883,467;
`
`10/781,751; 11/180,822; and 12/150,363; U.S. Pat. Nos. 5,917,405; 6,549,130;
`
`6,542,077; 7,397,363; 7,277,010; and 6,587,046; Reexamination Control Nos.
`
`90/013,300; 90/013,301; 90/013,302; and 90/013,303; and Inter Partes Review
`
`Nos. IPR2015 01466, -01477, -01478, -01482, -01484, -01485, -01486, -01508, -
`
`01509, -01585, -01611, -01612, -01613, and -01645.
`
`Lead Counsel: Michael J. Lennon (Reg. No. 26,562).
`
`2
`
`

`
`
`
`Backup Counsel: Clifford A. Ulrich (Reg. No. 42,194).
`
`Service: VWGoA agrees to electronic service at the following email addresses:
`
`mlennon@kenyon.com and culrich@kenyon.com. Service may be made at the
`
`following address: Kenyon & Kenyon LLP, One Broadway, New York, NY 10004
`
`(Telephone: 212-425-7200; Facsimile: 212-425-5288).
`
`II. Grounds for Standing (37 C.F.R. § 42.104(a))
` VWGoA certifies that U.S. Patent No. 6,542,076 (“the ’076 patent,” Ex. 1001)
`
`is available for inter partes review and that VWGoA is not barred or estopped
`
`from requesting an inter partes review challenging the patent claims on the
`
`grounds identified in this petition.
`
`III. Identification of Challenge (37 C.F.R. § 42.104(b)(1)-(3)) and Relief
`Requested (37 C.F.R. § 42.22(a)(1))
` VWGoA challenges claims 3, 18, 65, 67, 68, 70, 73, 91, 103, 116, 119, 120, and
`
`205 of the ’076 patent (the “challenged claims”) under 35 U.S.C. §§ 102 and 103,
`
`and cancelation of these claims is requested.
`
`A. Background of the ’076 Patent
`1. The ’076 Patent
`The ’076 patent issued on April 1, 2003, from U.S. App. Ser. No. 09/551,365
`
`(“the ’365 application”), filed on April 17, 2000. The ’076 patent claims the
`
`benefit of a number of prior applications, the earliest of which was filed June 8,
`
`3
`
`

`
`
`
`1993.1
`
` The ’076 patent generally describes a control, monitoring, and/or security
`
`apparatus for vehicles that may be operated remotely, and may be linked to “a
`
`variety of vehicle equipment systems,” such as alarms, horns, power door locks,
`
`video recording devices, cellular or mobile phones, or vehicle recovery systems.
`
`4:61–5:14. Importantly, the ’076 patent claims three control devices: one control
`
`device at the vehicle, a second control device remote from the vehicle, and a third
`
`control device remote from the second control device and the vehicle. Claim 3, for
`
`example, describes signals sent by the third control device, via the second control
`
`device, to the control device in the vehicle, such that the control device in the
`
`vehicle activates or deactivates a vehicle component pursuant to a received signal.
`
`106:42-107:5; Ex. 1002, ¶ 3.
`
` The ’076 patent describes a remote transmitter system 2 (shown in pink in Fig.
`
`1 below), remote from both the apparatus 1 and the motor vehicle. 21:52–57. The
`
`transmitter system may be “a touch tone telephone which may be a line-connected
`
`telephone, a cordless telephone and/or a cellular or mobile telephone.” 22:1–4; Ex.
`
`1002, ¶ 3.
`
`
`1 VWGoA does not concede that any claim of the ’076 patent is entitled to a filing
`
`date earlier than the April 17, 2003 filing date of the ’365 application.
`
`4
`
`

`
`
`
` Responsive to the remote transmitter
`
`system 2 is a receiver 3 (in orange), “for
`
`receiving the signals which are transmitted
`
`by the transmitter system 2.” 21:46–47. “The
`
`receiver 3 may be any receiver which is
`
`capable of receiving the remote electrical, electronic, electromagnetic, and/or other
`
`signals, which may be transmitted by the transmitter system 2.” 21:47–50. In a
`
`preferred embodiment, the receiver 3 is a beeper or pager system. 21:57; Ex. 1002,
`
`¶ 3.
`
` The system also contains a controller or CPU 4 (in green above), “which is
`
`electrically connected with the receiver 3 and the transmitter 3A 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.” 23:48–53. The CPU is connected to
`
`various vehicle systems in order to control them. 24:32–64. “The vehicle
`
`equipment system or systems 11 receives signals from the CPU 4, which signals
`
`serve to activate or de-activate, or vice versa, whichever the case may be, the
`
`respective vehicle equipment system(s) 11 which are utilized in conjunction with
`
`the apparatus 1.” 31:35–39; Ex. 1002, ¶ 3.
`
`5
`
`

`
`
`
`2. Prosecution History of the ’076 Patent
` As described in more detail below, the claims of the ’076 patent were allowed
`
`based on the claimed three control devices and a particular chain of command
`
`among the three control devices.
`
`
`
`In an Office Action dated November 29, 2000, the Examiner rejected the
`
`pending claims as anticipated by U.S. Patent No. 5,086,385 to Launey (Ex. 1003),
`
`finding that Launey disclosed a hand-held remote (first control device), a central
`
`processor (second control device), and wireless control of multiple systems (third
`
`control device) through a plurality of secondary processors. Ex. 1004 at 2.
`
` Following an interview on February 27, 2001, Applicant filed an amendment on
`
`March 26, 2001, canceling all claims and adding new claims 21 to 46. In arguing
`
`that the new claims were patentable over Launey, the Applicant merely listed each
`
`of the elements of claim 21, and asserted, without supporting facts or argument,
`
`that Launey does not disclose those elements. Ex. 1005 at 19-20.
`
` On April 16, 2001, Applicant filed a supplemental amendment, adding new
`
`claims 47 to 68. Application claim 47, below, eventually issued as patent claim 3:
`
`47. A control apparatus, which comprises:
`
`a first control device, wherein said first control device at least one of
`
`generates a first signal and transmits a first signal for at least one of
`activating, deactivating, enabling, and disabling, at least one of a vehicle at
`least one of system, equipment system, subsystem, device, component, and
`appliance, and a vehicle, wherein said first control device is located at the
`6
`
`

`
`
`
`vehicle,
` wherein said first control device at least one of generates the first signal
`and transmits said 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, and further wherein
`the second control device at least one of 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.
` After supplemental amendments canceling several claims and adding new
`
`claims 69-114, and after Applicant filed Terminal Disclaimers over U.S. Patent
`
`Nos. 5,917,405 (“the ’405 patent,” Ex. 1006) and U.S. Patent No. 6,549,130 (“the
`
`’130 patent”), a Notice of Allowance issued on May 30, 2001. The Examiner
`
`identified the chain of three control devices as the reasons for allowance:
`
`[T]here are no references teaching of a control apparatus for controlling of at
`least one of activating, deactivating, enabling and disabling of at least one of
`a vehicle and a premises having at least one of system, subsystem,
`component, equipment and appliance, wherein the first control device is
`responsive to a second signal and the second signal is at least generated by a
`second control device which is located remote from the vehicle and the
`premises. And further wherein the second control device is responsive to a
`third signal which is generated by a third control device which is located at a
`
`7
`
`

`
`
`
`location remote from the vehicle and the premises and remote from the
`second control device.
`Ex. 1007, at 2. During the prosecution following this notice, Applicant made
`
`several amendments to claim 47, but maintained this chain of three control devices.
`
`Application claim 47, eventually issued as patent claim 3.2
`
`
`
`In summary, the Examiner identified the chain of three control devices as the
`
`reasons for allowance. See Ex. 1007 at 2.
`
`
`
`In addition, during prosecution of the parent ’405 patent, independent claim 1
`
`was allowed only after it was amended to describe a chain of three control devices.
`
`The Examiner of the ’405 patent had rejected the pending claims over U.S. Patent
`
`No. 5,081,667 to Drori (Ex. 1008). In allowing the claims of the ’405 patent over,
`
`Drori, the Examiner expressly referred to this chain of three control devices in the
`
`statement of reasons for allowance. See Ex. 1009 at 2.
`
` Claims 3, 73, and 205 identify these same control devices in different orders, as
`
`shown in the table below; despite the differences in semantics and ordering, the
`
`challenged claims claim the same chain of command among three control devices.
`
`The originating, middle, and in-vehicle control devices are the same across all
`
`claims of the ’076 patent, and so are identified in this Petition accordingly, to
`
`2 Prosecution continued with several Requests for Continued Examination and
`
`preliminary amendments. Notices of Allowances promptly followed.
`
`8
`
`

`
`
`
`prevent confusion.
`
`
`
`Middle
`Originating
`Device
`Device
`Second Control
`Claim 3 Third Control
`Device
`Device
`Second Control
`Claim 73 Third Control
`Device
`Device
`Second Control
`Claim 205 First Control
`Device
`Device
`3. Reexamination History of the ’076 Patent
`Claim 3 of the ’076 patent is currently subject to an ex parte reexamination,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`First Control
`Device
`First Control
`Device
`Third Control
`Device
`
`
`
`
`
`
`
`
`
`
`
`Vehicle
`Device
`Vehicle
`Device
`Vehicle
`Device
`
`Control No. 90/013,302 (“the ’302 reexamination”). VWGoA requested
`
`reexamination of claim 3 on July 21, 2014 and reexamination was ordered on
`
`September 8, 2014. In ordering reexamination, the Examiner determined that
`
`substantial new questions of patentability are raised by, e.g., U.S. Patent No.
`
`6,072,402 (“Kniffin,” Ex. 1010) and U.S. Patent No. 5,113,427 (“Ryoichi,” Ex.
`
`1011), cited herein. See, Ex. 1012 at 31-32. On February 12, 2015, the Examiner
`
`issued an Office Action rejecting claim 3 as anticipated by, e.g., Ryoichi. Ex. 1013
`
`at 19-23.3
`
`
`
`Joao submitted a response to the Office Action on April 10, 2015, Ex. 1014,
`
`conducted an interview with the Examiner on May 5, 2015, and filed a
`
`
`3 Kniffin is not relied upon in this Office Action, despite the Examiner’s finding
`
`Kniffin raised a substantial new question of patentability.
`
`9
`
`

`
`
`
`supplemental response to the Office Action on May 15, 2015, Ex. 1015.
`
`Nevertheless, the Examiner issued a Final Office Action on May 22, 2015 rejecting
`
`claim 3 as anticipated by, e.g., Ryoichi. See Ex. 1016 at 3-35. Joao submitted a
`
`response to the Final Office Action on July 20, 2105, but the Examiner found that
`
`Joao’s “arguments are not persuasive.” See July 31, 2015 Advisory Action, Ex.
`
`1017. Thus, as of the filing date of this petition, claim 3 stands rejected as
`
`anticipated by, e.g., Ryoichi.
`
`B. Patents and Printed Publications Relied On
`1. U.S. Patent No. 6,072,402 (“Kniffin,” Ex. 1010), issued June 6, 2000, from U.S.
`
`Patent Application Serial No. 07/819,345, filed January 9, 1992, constitutes
`
`prior art against the ’076 patent at least under 35 U.S.C. § 102(e).
`
`2. U.S. Patent No. 5,113,427 (“Ryoichi,” Ex. 1011), issued May 12, 1992,
`
`constitutes prior art against the ’076 patent under 35 U.S.C. § 102(b).
`
`3. U.S. Patent No. 4,602,127 (“Neely,” Ex. 1018), issued July 22, 1986,
`
`constitutes prior art against the ’076 patent under 35 U.S.C. § 102(b).
`
`C. Statutory Grounds for Challenge (37 C.F.R. § 42.104(b)(1)–(2))
`1. Claims 3, 18, 65, 67, 68, 70, 73, 91, 103, 116, 119, 120, and 205 are invalid
`
`under 35 U.S.C. § 102(e) as anticipated by Kniffin.
`
`2. Claims 94 and 110 are invalid under 35 U.S.C. § 103(a) as obvious in view of
`
`Kniffin.
`
`3. Claim 96 is invalid under 35 U.S.C. § 103(a) as obvious in view of the
`
`10
`
`

`
`
`
`combination of Kniffin and Neely.
`
`4. Claims 3, 18, 65, 67, 70, 73, 91, 103, 116, 119, and 205 are invalid under 35
`
`U.S.C. § 102(b) as anticipated Ryoichi.
`
`5. Claims 94 and 110 are invalid under 35 U.S.C. § 103(a) as obvious in view of
`
`Ryoichi.
`
`6. Claims 68, 96, and 120 are invalid under 35 U.S.C. § 103(a) as obvious in view
`
`of the combination of Ryoichi and Neely.
`
`D. Claim Construction (37 C.F.R. § 42.104(b)(3))
` The claim terms in an unexpired patent should be given their broadest
`
`reasonable construction in view of the specification. 37 C.F.R. § 42.100(b). Claims
`
`terms in an expired patent are construed according to the principles of Phillips v.
`
`AWH Corp., 415 F.3d 1303, 1312, 1327 (Fed. Cir. 2005). See, e.g., Square, Inc. v.
`
`J. Carl Cooper, IPR2014-00157 (Paper No. 17) (PTAB Jun. 23, 2014) (citing In re
`
`Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012)). Under the Phillips standard, the
`
`claim terms are generally presumed to take on their ordinary and customary
`
`meaning, as would be understood by a person of ordinary skill in the art, at the
`
`time of the invention, considering the claim language, the specification, and the
`
`prosecution history. The ’076 patent, on its face, claims the benefit of the June 8,
`
`1993 filing date of U.S. Pat. App. Ser. No. 08/073,755 (“the ’755 application”) and
`
`has therefore expired. The specification of the ’130 patent does not present any
`
`11
`
`

`
`
`
`special definition for any claim term, and the original prosecution history of the
`
`’130 patent does not include any claim construction arguments.
`
` Therefore the claim terms of the ’076 patent should be given their ordinary and
`
`customary meaning.4
`
`IV. How Challenged Claims Are Unpatentable (37 C.F.R. § 42.104(b)(4)–(5))
`A. Claims 3, 18, 65, 67, 68, 70, 73, 91, 103, 116, 119, 120, and 205 are
`Anticipated by Kniffin
` Claims 3, 18, 65, 67, 68, 70, 73, 91, 103, 116, 119, 120, and 205 are anticipated
`
`under 35 U.S.C. § 102(e) by Kniffin. Kniffin, which was not cited during the
`
`prosecution of the ’076 patent, describes the claimed chain of three control
`
`devices, which was the basis for the allowance of the ’076 patent.
`
` Kniffin describes the claimed chain of three control devices, e.g., access control
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`device 64 (a control device located at a vehicle, i.e., an in-vehicle control device),
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`clearinghouse 18 or 66 (a control device located remote from the vehicle, i.e., a
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`middle device), and communications link 16 (a control device located remote from
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`the other remote control device and remote from the vehicle, i.e., an originating
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`device), sending control signals from one device to the next, culminating in the
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`4 During reexamination, Joao presented no constructions for any claim term but
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`agreed that the terms of the ’076 patent should be given their ordinary and
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`customary meaning. See Ex. 1015 at 1-2.
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`12
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`activation (or deactivation) of a vehicle system, e.g., storing an authorized schedule
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`of deliveries in a memory. In Figure 1, Kniffin describes a secure entry system 10,
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`including telephone touch pad 22, communications link 16 (shown in pink),
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`clearinghouse 18 connected to RF transmission system 26 (shown in orange), and
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`access control device 12 having a cellular, paging, or other RF receiver 14. 2:25-
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`53. A user establishes communication over telephone 22 and communications link
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`16 to clearinghouse 18, which determines if the user may access the access control
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`device 12. If so, clearinghouse 18 uses RF transmission system 26 to send a signal
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`to access control device 12, via RF receiver 14. Id.; Ex. 1002, ¶¶ 11-12.
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`In a vehicle embodiment, access control device 64 is used to control the door
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`locks on a truck 62. 8: 11-14. Truck access control device 64 “can take the same
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`form as lock 12 of FIG. 1 (but with a lock mechanism adapted to secure the doors
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`of a delivery truck).” 8:46-48; Ex. 1002, ¶ 13; see Fig. 4 above.
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`1. Claims 3 and 18
` Claim 3 recites a first control device, located at a vehicle, which sends a first
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`signal for activating or de-activating a vehicle component. According to Kniffin, a
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`delivery company may contact clearinghouse 66, and provide a schedule of
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`13
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`deliveries for the truck. Once clearinghouse 66 has verified the schedule of
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`deliveries, clearinghouse 66 transmits the schedule to the truck access control
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`device 64 (the in-vehicle control device), where the schedule is stored in memory
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`68 (activating a vehicle component). 8:15-24. The access control device 64 is
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`adapted to secure the doors of the truck and guard against unauthorized opening.
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`8:11-14 and 46-48. Kniffin states that the access control device 64 includes a lock
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`mechanism adapted to secure the doors of the truck and that the lock 12 includes a
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`lock microprocessor CPU 30 that instructs (the first signal) a lock mechanism 32 to
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`unlock (again activating a vehicle component). 8:46-48; 3:64-4:3; Ex. 1002, ¶¶ 11-
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`13.
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` As noted previously, the claims of the ’076 patent were rejected for obviousness
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`type double patenting over the claims of the ’405 patent. Like claim 3 of the ’076
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`patent, claim 1 of the ’405 patent recites “a first control device, wherein said first
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`control device one of generates and transmits a first signal for one of activating,
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`deactivating, enabling, and disabling” a vehicle component. Ex. 1006, 74:60-65.
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`During the reexamination of the ’405 patent, Control No. 90/013,300 (requested by
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`VWGoA), Joao argued that Kniffin does not disclose an intermediate device,
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`because the access control device 64 is located at the vehicle. However, the lock
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`mechanism 12 instructs the lock mechanism 32 to allow access to the truck, and
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`thus the lock mechanism 32 corresponds to the vehicle component described in
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`14
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`claim 26. Further, in rejecting the same argument in the reexamination of the ’405
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`patent, the Examiner found there was no limitation precluding the recited vehicle
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`component from being a subcomponent of a larger system. See Ex. 1019 at 8-10.5
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` Claim 3 recites that the first control device sends the first signal in response to a
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`second signal from a second control device located at a location remote from the
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`vehicle. Kniffin’s truck access control device 64 (the in-vehicle control device),
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`located in the vehicle, is responsive to signals from clearinghouse 66 (the middle
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`device), located remote from the vehicle. Clearinghouse 18 includes computer 20
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`and database 24 that communicates with the access control device 12 via a radio
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`transmission, i.e., by a paging or cellular telephone system, or other RF carrier. 2:
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`44-49. Similarly, in the vehicle embodiment, clearinghouse 66 transmits a signal to
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`truck access control device 64. 8:21-24. Clearinghouse 66 receives signals from a
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`telephone 22 and communications link 16, and includes an RF transmission system
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`for transmitting the schedule of stops. Moreover, truck access control device 64 is
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`5 Claim 3 of the ’076 patent recites “at least one of a vehicle system, a vehicle
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`equipment system, a vehicle component, a vehicle device, a vehicle equipment,
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`and a vehicle appliance.” Ex. 1001, 106:46-49 (emphasis added). Reciting both a
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`system and component, and an equipment system and equipment, underscores the
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`Examiner’s finding.
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`15
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`responsive to signals from clearinghouse 66, as Kniffin discloses that truck access
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`control device 64 may be reprogrammed by clearinghouse 66. 8:61-67; Ex. 1002,
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`¶¶ 11-13.
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` Claim 3 recites that the second control device is responsive to a third signal
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`from a third control device located remote from the vehicle and from the second
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`control device. Kniffin describes a “user who seeks access to the lock establishes
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`communication (by a cellular telephone, by a conventional telephone, or by some
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`other communications link 16) to a clearinghouse 18”; the user identifies the lock
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`12 to which access is desired, using, for example, a telephone touch tone pad 22
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`(the originating device). 2:31-43. In the vehicle embodiment of Figure 4, the
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`communications link is similarly illustrated in connection with clearinghouse 66.
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`Communication link 16 and telephone 22 are remote from clearinghouse 18 or 66
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`and delivery truck 62. 8:61-67; Ex. 1002, ¶¶ 11-13.
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` Thus, Kniffin directly addresses the Examiner’s reason for granting the ’076
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`patent, i.e., a chain of three control devices. See Sect. III(A)(2); Ex. 1002, ¶ 14.
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` Claim 18, which depends from claim 3, recites an interface device between the
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`first control device and the vehicle component. Kniffin describes an identification
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`means 28 that allows a user to identify himself to the lock. For example, Kniffin
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`describes a keypad (an interface device) associated with the lock through which the
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`user can enter a PIN number or other identifying data, and also describes entering
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`16
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`this information into a key and coupling the key to the lock. 3:50-56. Once this
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`identification is made, the lock microprocessor CPU 30 (another interface device)
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`instructs the lock mechanism 32 to unlock. 3:64-66; Ex. 1002, ¶¶ 16.
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`2. Claims 73, 91, 103, 116, 119, and 120
` Claims 91, 103, 116, 119, and 120 depend from claim 73 and, like claim 3,
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`claim 73 describes a chain of three control devices. Claim 73 recites a first control
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`device, located at a vehicle, capable of activating de-activating, disabling, or re-
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`enabling, a vehicle component and sending a first signal. This control device is
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`substantially the same as the first control device of claim 3, and as noted above,
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`Kniffin describes the clearinghouse 66 transmitting schedule information to the
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`truck. Once clearinghouse 66 transmits the schedule to the truck access control
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`device 64 (the in-vehicle control device of claim 73), the truck access control
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`device 64 stores the schedule in memory 68 (activating a vehicle component).
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`8:15-24. Kniffin states the access control device 64 includes a lock mechanism
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`adapted to secure the doors of the truck, and the lock 12 includes a lock
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`microprocessor CPU 30 that instructs a lock mechanism 32 to unlock (again
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`activating a vehicle component). 8:46-48; 3:64-4:3; Ex. 1002, ¶¶ 11-13.
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` Claim 73 recites that the first control device generates the first signal in
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`response to a second signal sent by a second control device located remote from
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`the vehicle. The second control device is substantially the same as the second
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`17
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`control device of claim 3, and Kniffin’s truck access control device 64, located in
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`the vehicle, is responsive to signals from clearinghouse 66 (the middle device),
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`located remote from the vehicle. 2:44-49; 8:21-24; Ex. 1002, ¶¶ 11-13.
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` Claim 73 further recites that the second control device sends the second signal
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`in response to a third signal, sent by a third control device located remote from
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`both the second control device and the vehicle. The third control device is
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`substantially the same as the third control device of claim 3. Kniffin describes the
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`use of a communications link 16 and a cellular or conventional telephone 22 (the
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`originating device), to a clearinghouse 18 (the middle device) to identify the lock
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`12 to which access is desired. As shown in Fig. 4, the communications link is
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`illustrated in connection with clearinghouse 66. Communication link 16 and
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`telephone 22 are remote from clearinghouse 18 or 66 and delivery truck 62. 8:61-
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`67; Ex. 1002, ¶¶ 11-13.
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` Claim 91 recites that the first control device controls the operation of the
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`vehicle component. As described above, Kniffin’s access control device 64 (the
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`first control device) is adapted to secure the doors of the truck and guard against
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`unauthorized opening. 8:11-14, 46-48. The access control device 64 includes a
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`lock mechanism adapted to secure the doors of the truck as in Figure 1, and as
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`shown in this figure, the lock 12 includes a lock microprocessor CPU 30 that
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`instructs (the first signal) a lock mechanism 32 to unlock (activating a vehicle
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`18
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`component). 8:46-48; 3:64-4:3; Ex. 1002, ¶ 17.
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` Claim 103 recites that the control apparatus is