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
`
`Patent No. 6,542,076
`Issue Date: April 1, 2003
`Title: CONTROL, MONITORING AND/OR
`SECURITY APPARATUS AND METHOD
`
`__________________________________________________________________
`
`PETITIONER’S REPLY
`
`Case No. IPR2015-01610
`__________________________________________________________________
`
`
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.
`
`Petitioner
`
`v.
`
`JOAO CONTROL & MONITORING SYSTEMS, LLC
`
`Patent Owner
`
`Patent No. 6,542,076
`Issue Date: April 1, 2003
`Title: CONTROL, MONITORING AND/OR
`SECURITY APPARATUS AND METHOD
`
`__________________________________________________________________
`
`PETITIONER’S REPLY
`
`Case No. IPR2015-01610
`__________________________________________________________________
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ......................................................................................... 1
`
`II. CLAIM CONSTRUCTION .......................................................................... 2
`
`A.
`
`“First Signal,” “Second Signal,” and “Third Signal” Need Not Be
`Construed ............................................................................................. 2
`
`III. CLAIMS 3, 18, 65, 67, 68, 70, 73, 91, 94, 96, 103, 110, 116, 119, 120,
`AND 205 ARE INVALID .............................................................................. 4
`
`A. Claims 3, 18, 65, 67, 68, 70, 73, 91, 103, 116, 119, 120, and 205 are
`Anticipated by Kniffin ........................................................................ 4
`
`1.
`
`2.
`
`Kniffin describes a chain of three control devices for
`controlling a vehicle system/component ................................. 5
`
`Kniffin describes dependent claims 18, 65, 67, 68, 70, 91,
`103, 116, 119, and 120 ............................................................... 7
`
`B.
`
`Claims 94 and 110 are Obvious in View of Kniffin .......................... 9
`
`1.
`
`Operation on or over the Internet or the World Wide Web
`would have been obvious .......................................................... 9
`
`C. Claim 96 is Obvious in View of Kniffin and Neeley .......................13
`
`D. Claims 3, 18, 65, 67, 70, 73, 91, 103, 116, 119, and 205 are
`Anticipated by Ryoichi ......................................................................13
`
`1.
`
`2.
`
`Ryoichi describes a chain of three control devices for
`controlling a vehicle system/component ...............................14
`
`Ryoichi describes dependent claims 18, 65, 67, 70, 91, 103,
`116, and 119 .............................................................................16
`
`E.
`
`Claims 94 and 110 are Obvious in View of Ryoichi .......................17
`
`
`
`i
`
`
`
`1.
`
`Operation on or over the Internet or the World Wide Web
`would have been obvious ........................................................17
`
`F.
`
`Claims 68, 96, and 120 are Obvious in View of Ryoichi and Neeley
` .............................................................................................................17
`
`IV. CONCLUSION ............................................................................................17
`
`
`
`ii
`
`
`
`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
`
`iii
`
`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
`
`
`Exhibit 1016
`
`
`Exhibit 1017
`
`
`Exhibit 1018
`
`Exhibit 1019
`
`
`Exhibit 1020
`
`Exhibit 1021
`
`Exhibit 1022
`
`Exhibit 1023
`
`
`Exhibit 1024
`
`
`Exhibit 1025
`
`
`Exhibit 1026
`
`
`Exhibit 1027
`
`
`
`May 15, 2015 Supplemental Response to Non-Final
`Office Action in Reexamination Control No. 90/013,302
`
`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
`
`August 18, 2015 Memorandum Opinion and Order
`Regarding Claim Construction in Joao Control &
`Monitoring Systems, LLC v. Protect America, Inc., Case
`No. 1:14-cv-134 (W.D. Tex.)
`
`March 23, 2016 Memorandum Opinion and Order in
`Joao Control & Monitoring Systems, LLC v. Telular
`Corp., Case No. 1:14-cv-09852 (N.D. Ill.)
`
`June 10, 2016 Opinion and Order (1) Granting In Part
`and Denying In Part Defendant FCA US LLC’S Motion
`iv
`
`
`
`and
`Invalidity
`on
`Judgment
`Summary
`for
`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) in
`Joao Control & Monitoring Systems, LLC v. Chrysler
`Group LLC, Case No. 4:13-cv-13957
`
`v
`
`
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`This Petitioner’s Reply is responsive to the Patent Owner’s Response to
`
`Petition for Inter Partes Review Under 37 C.F.R. § 42.107 (the “Response”).
`
`As set forth in the Petition, the claims of U.S. Patent No. 6,542,076 (the
`
`“’076 patent”) are invalid in view of the prior art cited therein, including U.S.
`
`Patent No. 6,072,402 (Exhibit 1010, “Kniffin”), U.S. Patent No. 5,113,427
`
`(Exhibit 1011, “Ryoichi”), and U.S. Patent No. 4,602,127 (Exhibit 1018,
`
`“Neeley”). Despite the Patent Owner’s (“Joao”) assertions that the ’076 patent
`
`describes a “novel and unconventional system,” and claims a “specially assembled
`
`and programmed distributed control system for vehicles” (Response at 2), the ’076
`
`patent merely claims a conventional chain of three control devices, passing along
`
`signals to allow for remote operation of vehicle systems. As set forth in the
`
`Petition, the claimed systems and methods are disclosed by the cited prior art and
`
`were well known before the earliest effective filing date of the ’076 patent, such
`
`that the challenged claims are invalid and should be canceled.
`
`In its Response, Joao argues that Kniffin fails to describe a chain of three
`
`control devices for controlling a vehicle component, device, system, or subsystem,
`
`even
`
`though Kniffin describes communicating
`
`from a
`
`telephone and
`
`communications link, to a clearinghouse, to an in-vehicle control device for storing
`
`data in an in-vehicle memory. Joao also argues that Ryoichi fails to describe a
`
`1
`
`
`
`chain of three control devices for controlling a vehicle component, device, system,
`
`or subsystem, even though Ryoichi expressly describes signaling unlocking doors,
`
`turning on headlights, or starting an engine. For the reasons set forth below, and in
`
`the Petition, Joao’s arguments do not address the express disclosure of the prior art,
`
`so that the challenged claims are unpatentable, and should be canceled.
`
`II. CLAIM CONSTRUCTION
`
`A.
`
`“First Signal,” “Second Signal,” and “Third Signal” Need Not Be
`Construed
`
`The terms “first signal,” “second signal,” and “third signal” should be given
`
`their ordinary and customary meaning, as would be understood by a person of
`
`ordinary skill in the art, at the time of the alleged invention, considering the claim
`
`language, the specification, and the prosecution history. Phillips v. AWH Corp.,
`
`415 F.3d 1303, 1312, 1327 (Fed. Cir. 2005). In this case, the specification and
`
`prosecution history do not provide any special definition of the terms “first signal,”
`
`“second signal,” and “third signal.” Nor does Joao assert otherwise.
`
`Instead, Joao asserts that the claim terms “first signal,” “second signal,” and
`
`“third signal” require construction, that “first signal” is “a signal sent by a first
`
`device,” that “second signal” is “a signal sent by a second device,” and that “third
`
`signal” is “a signal sent by a third device.” Response, at 11–12. Joao does not
`
`explain why these terms are not entitled to their ordinary and customary meaning
`
`2
`
`
`
`according to Phillips, nor does Joao refer to any intrinsic evidence to support its
`
`proposed constructions. Joao relies only on a claim construction decision from
`
`Joao Control & Monitoring Systems, LLC v Chrysler Group LLC, Case No. 13-cv-
`
`13957 (E.D. Mich.). Response at 11–12.
`
`Joao’s reliance on this district court decision is misplaced. First, Joao
`
`incorrectly states that the Michigan court “construed the terms ‘first signal,’
`
`‘second signal,’ and ‘third signal.’” The Michigan court expressly did not construe
`
`these terms. Ex. 2004, at 23 (“After considering the claim term and the claims as a
`
`whole, the Court finds that the terms ‘first signal,’ second signal,’ and ‘third
`
`signal’ do not need to be construed, at least at this time, because the claim
`
`language is clear.”), and at 25 (“Accordingly, the Court will not rewrite or redefine
`
`claim terms which are otherwise clear to preserve the validity of the claims or
`
`defeat an anticipated invalidity argument.”). Second, the portion of that court’s
`
`opinion on which Joao relies only notes that the parties in that case agreed on the
`
`meaning of the terms; the court did not construe the terms accordingly. Id.
`
`The claim language is clear on its face, so that no construction is necessary.
`
`Joao’s narrow proposed constructions are both contradictory and redundant of the
`
`remaining claim language. Claim 3, for example, recites “said first control device
`
`at least one of generates a first signal and transmits a first signal,” “the second
`
`signal is at least one of generated by a second control device and transmitted from
`
`3
`
`
`
`a second control device,” and “the third signal is at least one of generated by a
`
`third control device and transmitted from a third control device.” That is, claim 3
`
`requires that the first control device perform one of three functions:
`
`(i)
`
`generate a first signal;
`
`(ii)
`
`transmit the first signal; or
`
`(iii) generate and transmit the first signal.
`
`Yet, Joao’s proposed construction would contradict this claim language, because it
`
`would eliminate function (i), in which the first processing device generates, but is
`
`not necessarily required to transmit, the first signal. Joao’s proposed construction is
`
`also redundant of this claim language, because the claim already describes
`
`functions (ii) and (iii) in which the first processing device transmits the first signal.
`
`These claim terms are unambiguous, so that no construction of these terms is
`
`necessary. As the Michigan court noted, the Board should not “rewrite or redefine
`
`claim terms which are otherwise clear to preserve the validity of the claims or
`
`defeat an anticipated invalidity argument.” Ex. 2004, at 23.
`
`III. CLAIMS 3, 18, 65, 67, 68, 70, 73, 91, 94, 96, 103, 110, 116, 119, 120,
`AND 205 ARE INVALID
`A. Claims 3, 18, 65, 67, 68, 70, 73, 91, 103, 116, 119, 120, and 205 are
`Anticipated by Kniffin
`
`Joao states that it “disagrees with the Petitioner’s interpretation of ‘control
`
`device’ that would allow the ‘access control device 64’ of Kniffin to serve as the
`
`4
`
`
`
`‘first control device’ of claims 3 and 73 and the ‘third control device’ of claim
`
`205.” Joao further states that “the ‘access control device 64’ is the vehicle system
`
`being controlled and is not, and does not contain the ‘first control device’ of claims
`
`3 and 73 and the ‘third control device’ of claim 205.” Response at 12–13. Joao’s
`
`own proposed construction of “control device” belies this general statement.
`
`Joao contends that a “control device” is “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.” Response at 11–12.
`
`This construction of “control device” does not exclude Kniffin’s access control
`
`device 64, which is, for example, a device, or a part of a device, which performs an
`
`operation, action, or function (e.g., storing data in memory). Kniffin, 8:21–24.
`
`1. Kniffin describes a chain of three control devices for
`controlling a vehicle system/component
`
`Joao’s Response contends that “Kniffin fails to disclose an ‘A to B to C’
`
`system for controlling a vehicle system/component in response to a signal from a
`
`control device located remote from the vehicle.” Response at 13-24. However, as
`
`explained in the Petition (see pp. 12–14), Kniffin describes the claimed chain of
`
`three control devices: access control device 64 (in-vehicle control device),
`
`clearinghouse 18 or 66 (middle device, located remote from the vehicle), and
`
`telephone 22 and communications link 16 (originating device, located remote from
`
`the other control device and remote from the vehicle). Kniffin describes sending
`
`5
`
`
`
`control signals from one device to the next, culminating in the activation (or
`
`deactivation) of a vehicle system: storing schedule data in a memory. More
`
`specifically, Kniffin describes that a delivery company uses telephone 22 and
`
`communication link 16 to contact clearinghouse 66, and provide a schedule of
`
`deliveries for the truck. Once clearinghouse 66 verifies the schedule of deliveries,
`
`clearinghouse 66 transmits the schedule to the truck access control device 64 (the
`
`in-vehicle control device, i.e., at the truck 62 shown in Fig. 4), and the truck access
`
`control device 64 stores the schedule in memory 68 (storing of the schedule in the
`
`memory 68 constitutes activating a vehicle component, device, system, or
`
`subsystem). Kniffin, 8:15-24; Ex. 1002, ¶ 14.
`
`Joao states that Kniffin describes the lock mechanism as the controlled
`
`vehicle component, and that the lock mechanism is controlled by access control
`
`device 64 in response to a signal from sensor 36, and not from clearinghouse 66.
`
`Response, at 16–23. While Kniffin describes controlling the in-vehicle lock
`
`mechanism, Kniffin also describes storing data in an in-vehicle memory, in
`
`response to data received by the access control device from a clearinghouse. See
`
`Petition at 12–13 (“Kniffin describes . . . sending control signals from one device
`
`to the next, culminating in the activation (or deactivation) of a vehicle system, e.g.,
`
`storing an authorized schedule of deliveries in a memory.”), and 13–14 (“Once
`
`clearinghouse 66 has verified the schedule of deliveries, clearinghouse 66 transmits
`
`6
`
`
`
`the schedule to the truck access control device 64 (the in-vehicle control device),
`
`where the schedule is stored in memory 68 (activating a vehicle component).”).
`
`The memory 68 is a device, located in the vehicle, that is controlled by a signal
`
`received from the in-vehicle access control device 64, which receives a signal from
`
`the remote clearinghouse 66, which in turn receives a signal from the telephone
`
`and communication link. Kniffin, 8:15-24. Thus, while Kniffin describes
`
`controlling a lock mechanism, Kniffin also expressly describes controlling a
`
`memory. The disclosure of one concept does not preclude the disclosure of the
`
`other. Joao’s arguments relating to the control of lock mechanism 32 do not
`
`address the arguments presented in the Petition.
`
`2. Kniffin describes dependent claims 18, 65, 67, 68, 70, 91,
`103, 116, 119, and 120
`
`As to claim 18, Kniffin describes an identification means 28 that allows a
`
`user to identify himself to the lock, by entering a PIN number in a keypad. Kniffin,
`
`3:50–56. Once this identification is made, the lock microprocessor CPU 30 (the
`
`interface device) instructs the lock mechanism 32 to unlock. Kniffin, 3:64–66; Ex.
`
`1002, ¶ 16. Kniffin therefore discloses the additional limitations of, and,
`
`consequently anticipates, claim 18. Joao argues that Kniffin’s identification means
`
`28 is not located between CPU 30 and lock mechanism 32. However, claim 18
`
`merely requires an interface device between the first control device and the vehicle
`
`component; in this case, between the access control device 64 (which may take the
`
`7
`
`
`
`form of lock 12 (8:46–49)), and the in-vehicle memory (not show in Fig. 4;
`
`represented by memory 34 in Fig. 1). Figure 1 indicates that CPU 30, and any
`
`electrical connection between CPU 30 and memory 34, is the interface device
`
`between the first control device and the vehicle component.
`
`As to claims 67 and 119, Kniffin describes that the clearinghouse 18 reports
`
`back to the user regarding the action taken on the user’s request and on the status
`
`of the lock or the lock system, and that the access control device 64 reports
`
`identification devices 70 encountered by the truck in real-time or when a certain
`
`number of accesses have occurred. Kniffin, 2:54–3:12, 4:52–65, 8:25–27, 8:40–43,
`
`9:5–8; Ex. 1002, ¶¶ 19–20. Kniffin therefore discloses the additional limitations of,
`
`and, consequently anticipates, claims 67 and 119. Joao argues that monitoring for
`
`identification devices 70 does not meet the limitations of claims 67 and 119,
`
`because the identification devices are not part of the vehicle. Response, at 25. First,
`
`Joao does not address Kniffin’s express description of the monitoring of lock 12
`
`(of which access control device 64 may take the form (8:46–49)) for reporting
`
`whether access permission has been granted. Moreover, Kniffin describes
`
`monitoring for the presence or absence of identification devices 70, so that the
`
`access control device 64 is monitoring its sensors, which are part of the vehicle, to
`
`determine whether the sensors have detected an identification device. Monitoring
`
`8
`
`
`
`the sensed identification devices is a systematic check of a state of a vehicle
`
`component, as required by claims 67 and 119.
`
`The only argument made by Joao relating to claims 65, 68, 70, 91, 103, 116,
`
`and 120 is that claims 65, 68, and 70 are patentable based on their dependency
`
`from claim 205, and that claims 91, 103, 116, and 120 are patentable based on their
`
`dependency from claim 73. As set forth in the Petition (see pp. 17–23), the
`
`additional limitations of claims 65, 68, 70, 91, 103, 116, and 120 are disclosed by
`
`Kniffin, so that claims 65, 68, 70, 91, 103, 116, and 120 are anticipated by Kniffin.
`
`B. Claims 94 and 110 are Obvious in View of Kniffin
`
`1. Operation on or over the Internet or the World Wide Web
`would have been obvious
`
`Joao’s Response contends that “[t]here is absolutely no disclosure, teaching
`
`or suggestion, nor any motivation given in Kniffin to use the Internet or the World
`
`Wide Web,” and that “conventional wisdom at the time of the invention of the
`
`subject matter of the ’076 Patent would have actually taught away from the use of
`
`the Internet or World Wide Web.” Response at 25-29. However, as explained in
`
`the Petition (see pp. 32–39), operating Kniffin’s system over the Internet would
`
`have been obvious to a person of ordinary skill in the art at the time of the effective
`
`9
`
`
`
`filing date of the ’076 patent.1 Use of the Internet or World Wide Web in vehicle
`
`control systems was well-known when the ’365 application was filed on April 17,
`
`2000. See, e.g., Ex. 1019, 2:42-48, 3:13-20, 7:40-47, 11:27-57, 12:51-54; Ex. 1021,
`
`Abstract, 1:19-26; Ex. 1022, Abstract, 8:25-59; Ex. 1002, ¶¶ 26–28. Further, Joao
`
`admitted that, in March of 1996, a person of ordinary skill in the art as would have
`
`appreciated the Internet as an improved transmission system as compared to the
`
`radio frequency system described by Kniffin. Petition, at 35–36 (“One having
`
`ordinary skill in the art at the time of the invention of Claim 21 [of U.S. Patent No.
`
`7,397,363, which is a continuation-in-part of, for example, the ’076 patent] would
`
`appreciate the infrastructure of the Internet and its improved signal transmission
`
`capabilities, as compared to the rf system used in Kniffin, as being a superior
`
`system for transmitting a signal or message from one location to another.”); Ex.
`
`1024, at 11. Further still, the Federal Circuit has repeatedly held that adapting
`
`existing processes to incorporate Internet technology would have been obvious.
`
`1
`As explained in the Petition (at 33–34, n.7), it is Joao’s burden to establish
`
`that it is entitled to an earlier filing date, on a claim-by-claim basis, and that the
`
`claims of the ’076 patent cannot be entitled to any filing date earlier than March
`
`27, 1996, under 35 U.S.C. § 120. Joao’s Response does not establish that any
`
`challenged claim of the ’076 patent is entitled to a filing date earlier than its April
`
`17, 2000 filing date.
`
`10
`
`
`
`See Soverain Software LLC v. Newegg Inc., 705 F.3d 1333, 1342-44 (Fed. Cir.
`
`2013) (finding “the use of hypertext to communicate … was a routine
`
`incorporation of Internet technology into existing processes”), amended on reh’g
`
`on other grounds, 728 F.3d 1332, 1335-36 (Fed. Cir. 2013); Muniauction, Inc. v.
`
`Thomson Corp., 532 F.3d 1318, 1326-27 (Fed. Cir. 2008) (finding it obvious to
`
`“adapt[] existing electronic processes to incorporate modern internet and web
`
`browser technology”); Western Union Co. v. MoneyGram Payment Systems, Inc.,
`
`626 F.3d 1361, 1369–71 (Fed. Cir. 2010); In re Mettke, 570 F.3d 1356, 1360–61
`
`(Fed. Cir. 2009).
`
`Despite this evidence that use of the Internet would have been obvious, Joao
`
`asserts that, at the time of the effective filing date of the ’076 patent,2
`
`“conventional wisdom” was that the Internet was not secure, and that there were
`
`too many impediments to use, so that conventional wisdom would teach away from
`
`using the Internet or World Wide Web. Response, at 26–29. Joao relies on the
`
`“The Internet Report” from Morgan Stanley (Ex. 2007) as evidence of the
`
`“conventional wisdom” regarding the Internet, and does not address any of the
`
`evidence presented in the Petition, including Joao’s admission during the
`
`reexamination of related U.S. Patent No. 7,397,363.
`
`
`2
`Joao does not identify an effective filing date of the ’076 patent.
`
`11
`
`
`
`Joao does not explain why Morgan Stanley’s report should be considered by
`
`the Board to represent conventional wisdom relating to the obviousness of using
`
`the Internet to transmit information. The report was prepared to help investors
`
`“identify risks, rewards, market opportunities, investment ideas, company
`
`competitive strategies, products, and how the Internet works.” Ex. 2007, at 4. The
`
`report does not address whether a person of ordinary skill in the art would have
`
`considered the report, or the information therein, when looking for technical
`
`solutions for transmitting information. To show teaching away, Joao only cites to
`
`security concerns, and limits on the growth of the number of Internet users
`
`(Response, at 26–27), neither of which addresses the technical question of how to
`
`transmit information, so that the report has little, if any, relevance to the
`
`obviousness analysis. If the report is relevant to the obviousness analysis, it is to
`
`show that using the Internet to transmit information was a well-known technical
`
`solution at that time, even if Morgan Stanley felt that certain risks exist in Internet-
`
`related stocks. See, e.g., Ex. 2007, at 33–35 (detailing the history of the Internet
`
`since 1968), 40 (estimating 9 million World Wide Web users in 1995, including
`
`3% of the U.S. population, and concluding that “we believe that the Internet
`
`market growth has just begun, and that it will prove to be big.”).
`
`12
`
`
`
`C. Claim 96 is Obvious in View of Kniffin and Neeley
`
`The only argument made by Joao relating to claim 96 is that claim 96 is
`
`patentable based on its dependency from claim 73. Response, at 29. As set forth in
`
`the Petition (see pp. 39–42), claim 96 is obvious in view of Kniffin and Neeley.
`
`D. Claims 3, 18, 65, 67, 70, 73, 91, 103, 116, 119, and 205 are
`Anticipated by Ryoichi
`
`Joao states that it “disagrees with the Petitioner’s interpretation of ‘control
`
`device’ that would allow the ‘fixed radio station ST’ of Ryoichi to serve as the
`
`‘second control device’ of claims 3, 73, and claim 205.” Joao further states that
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`“the ‘fixed radio station ST’ of Ryoichi is merely a part of, or a component of, a
`
`communication system or network, and not a ‘control device.’” Response at 30.
`
`Again, Joao’s own proposed construction of “control device” belies these
`
`allegations.
`
`Joao contends that a “control device” is “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.” Response at 9. This
`
`construction of “control device” does not exclude Ryoichi’s fixed radio station ST,
`
`which is, for example, a device, or a part of a device, which performs an operation,
`
`action, or function (e.g., transmitting a message to paging unit 9). Ryoichi, 7:64–
`
`67.
`
`13
`
`
`
`1.
`
`Ryoichi describes a chain of three control devices for
`controlling a vehicle system/component
`
`Joao’s Response contends that “Ryoichi fails to disclose the ‘A to B to C’
`
`control system/method of claims 1, 12 and 16.” Response, at 30-36. However, as
`
`explained in the Petition (see pp. 42–46), Ryoichi describes the claimed chain of
`
`three control devices: a personal radio paging unit 9 (in-vehicle control device), a
`
`fixed radio station St (middle device located remote from the vehicle), and a
`
`telephone unit TEL (originating device remote from the middle device and remote
`
`from the vehicle). Ryoichi describes sending control signals from one device to the
`
`next, culminating in the activation (or deactivation) of a vehicle system: unlocking
`
`the doors, turning on the headlights, or starting the engine. More specifically,
`
`Ryoichi’s personal radio paging unit 9, located in the vehicle, generates sounds
`
`representing message signals, and the sounds are converted into code readable by
`
`the control unit S to execute a control program, e.g., controlling the handbrake,
`
`unlocking the doors, turning on the headlights, or starting the engine. Ryoichi,
`
`4:57-5:15, 8:1-22; Ex. 1002, ¶¶ 35-36. Ryoichi’s personal radio paging unit 9 (in-
`
`vehicle control device), located in the vehicle, is responsive to signals radiated by
`
`the fixed radio station St (middle device), located remote from the vehicle.
`
`Personal radio paging unit 9 (in-vehicle control device) generates calling sounds in
`
`response to the radiated signals, for sensor 10 to detect. Ryoichi, 7:64-8:3; Ex.
`
`1002, ¶¶ 35-37. Ryoichi’s radio station St (middle device) is responsive to signals
`
`14
`
`
`
`from telephone TEL (originating device), located remote from the personal radio
`
`paging unit 9 (in-vehicle control device) and the radio station St (middle device).
`
`As shown in Figure 1, a user enters a message into a touchpad of telephone TEL,
`
`and the signal representing the entered message is sent to the radio station St for
`
`radio transmission. Ryoichi, 7:60-8:1; Ex. 1002, ¶¶ 35-37.
`
`Joao, in its Response, argues that Ryoichi does not describe a chain of three
`
`control devices, but instead describes a chain of six device. Joao refers to the three
`
`devices identified in the Petition (telephone TEL, radio station St, and personal
`
`radio paging unit 9), and then identifies three additional devices—sensor 10, code
`
`converter 11, and control unit S—as generating signals for controlling the vehicle
`
`components. Joao refers to the system of Ryoichi as an “A to B to C to D to E to
`
`F” system, contrasting it with its characterization of an “A to B to C” system of the
`
`challenged claims. Response, at 32–36.
`
`The claims of the ’076 patent, however, do not exclude the Ryoichi system
`
`as described by Joao. Claim 3, for example, requires that “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.” The calling sound generated by
`
`Ryoichi’s personal radio paging unit 9 is generated and transmitted for the
`
`15
`
`
`
`activation (or deactivation) of a vehicle system, including unlocking the doors,
`
`turning on the headlights, or starting the engine. The existence of sensor devices or
`
`code converters to convey the instruction carried by the paging unit’s signal does
`
`not negate that the signal generated by paging unit 9 is generated and transmitted
`
`for controlling the vehicle system. The claims of the ’076 patent do not require the
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`first signal to be transmitted directly, excluding all conduits or electrical
`
`components between the first control device and the vehicle component.
`
`2.
`
`Ryoichi describes dependent claims 18, 65, 67, 70, 91, 103,
`116, and 119
`
`The only argument made by Joao relating to claims 18, 65, 67, 70, 91, 103,
`
`116, and 119 is that claim 18 is patentable based on its dependency from claim 3,
`
`that claims 65, 67, and 70 are patentable based on their dependency from claim
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`205, and that claims 91, 103, 116, and 119 are patentable based on their
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`dependency from claim 73. Response, at 36-37. As set forth in the Petition (see pp.
`
`46–50), the additional limitations of claims 18, 65, 67, 70, 91, 103, 116, and 119
`
`are disclosed by Ryoichi, so that Ryoichi anticipates claims 18, 65, 67, 70, 91, 103,
`
`116, and 119.
`
`16
`
`
`
`E. Claims 94 and 110 are Obvious in View of Ryoichi
`
`1. Operation on or over the Internet or the World Wide Web
`would have been obvious
`
`As to claims 94 and 110, Joao’s Response makes similar arguments relating
`
`to Ryoichi as discussed above relating to Kniffin. Like Kniffin, operating
`
`Ryoichi’s system over the Internet would have been obvious to a person of
`
`ordinary skill in the art at the time of the ’076 patent was filed. Petition, at 56–57.
`
`See, e.g., Ex. 1019, 2:42-48, 3:13-20, 7:40-47, 11:27-57, 12:51-54; Ex. 1021,
`
`Abstract, 1:19-26; Ex. 1022, Abstract, 8:25-59; Ex. 1002, ¶¶ 26–28; Ex. 1024, at
`
`11; see Soverain Software, 705 F.3d at 1342-44; Muniauction, 532 F.3d at 1326-
`
`27; Western Union, 626 F.3d at 1369-71.
`
`F. Claims 68, 96, and 120 are Obvious in View of Ryoichi and Neeley
`
`The only argument made by Joao relating to claims 68, 96, and 120 is that
`
`claim 68 is patentable based on its dependency from claim 205, and claims 96 and
`
`120 are patentable based on their dependency from claim 73. Response, at 38. As
`
`set forth in the Petition (see pp. 57–59), claims 68, 96, and 120 are obvious in view
`
`of Ryoichi and Neeley.
`
`IV. CONCLUSION
`
`As set forth in the Petition, claims 3, 18, 65, 67, 68, 70, 73, 91, 94, 96, 103,
`
`110, 116, 119, 120, and 205 of the ’076 patent are invalid in view of the prior art.
`
`17
`
`
`
`For the reasons set forth in the Petition, and herein, Petitioner, Volkswagen Group
`
`of America, Inc., respectfully requests the cancellation of claims 3, 18, 65, 67, 68,
`
`70, 73, 91, 94, 96, 103, 110, 116, 119, 120, and 205 of the ’076 patent.
`
`
`
`
`
`
`/Clifford A. Ulrich/
`Clifford A. Ulrich (Reg. No. 42,194)
`
`Dated: August 4, 2016
`
`
`
`
`
`
`Michael J. Lennon (Reg. No. 26,562) Lead Counsel
`Clifford A. Ulrich (Reg. No. 42,194) Backup Counsel
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004
`
`
`
`
`18
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`
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`CERTIFICATE OF WORD COUNT
`
`The foregoing Petitioner’s Reply complies with the type-volume limitations
`
`of 37 C.F.R. § 42.24(c)(1). Excluding the items listed in 37 C.F.R. § 42.24(c) as
`
`not included in the word count, and using the word count of the word-processing
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`system used to prepare the paper (Microsoft Word), the petition contains 4,314
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`words.
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`
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`
`
`Michael J. Lennon (Reg. No. 26,562) Lead Counsel
`Clifford A. Ulric
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