Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 21
`Entered: January 26, 2017
`
`
`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 IPR2015-01611
`Patent 6,549,130 B1
`____________
`
`
`Before DAVID C. MCKONE, STACEY G. WHITE, and JASON J.
`CHUNG, Administrative Patent Judges.
`
`
`Opinion for the Board filed by Administrative Patent Judge WHITE.
`
`Opinion Dissenting-in-part filed by Administrative Patent Judge, CHUNG.
`
`WHITE, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. §318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`Paper 21
`Entered: January 26, 2017
`
`
`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 IPR2015-01611
`Patent 6,549,130 B1
`____________
`
`
`Before DAVID C. MCKONE, STACEY G. WHITE, and JASON J.
`CHUNG, Administrative Patent Judges.
`
`
`Opinion for the Board filed by Administrative Patent Judge WHITE.
`
`Opinion Dissenting-in-part filed by Administrative Patent Judge, CHUNG.
`
`WHITE, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. §318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`IPR2015-01611
`Patent 6,549,130 B1
`
`
`I.
`
`INTRODUCTION
`
`Petitioner, Volkswagen Group of America, Inc., filed a Petition to
`
`institute an inter partes review of claims 26, 31, 38, 42, 43, 48, 60, 63, 64,
`
`73, 74, 85, 91, 92, 138, 139, and 143 of U.S. Patent No. 6,549,130 B1 (“the
`
`’130 patent”). Paper 2 (“Pet.”). Patent Owner, Joao Control & Monitoring
`
`Systems, LLC, filed a Preliminary Response pursuant to 35 U.S.C. § 313.
`
`Paper 6 (“Prelim. Resp.”).
`
`Upon consideration of the Petition and the Preliminary Response, on
`
`January 28, 2016, we instituted inter partes review of claims 26, 31, 38, 42,
`
`43, 48, 60, 63, 64, 73, 74, 85, 91, 92, 138, 139, and 143 (“instituted claims”),
`
`pursuant to 35 U.S.C. § 314. Paper 7 (“Dec.”).
`
`Subsequent to institution, Patent Owner filed a Patent Owner
`
`Response. Paper 13 (“PO Resp.”). Petitioner filed a Reply to Patent
`
`Owner’s Response. Paper 19 (“Reply”). An oral hearing was not held.
`
`Paper 20.
`
`We issue this Final Written Decision pursuant to 35 U.S.C. § 318(a)
`
`and 37 C.F.R. § 42.73. For the reasons discussed herein, Petitioner has
`
`shown by a preponderance of the evidence that claims 91 and 92 are
`
`unpatentable and has not shown by a preponderance of the evidence that
`
`claims 26, 31, 38, 42, 43, 48, 60, 63, 64, 73, 74, 85, 138, 139, and 143 of the
`
`’130 patent are unpatentable. See 35 U.S.C. § 316(e).
`
`A.
`
`Related Matters
`
`Petitioner and Patent Owner indicate that the ’130 patent or related
`
`patents may be implicated in a number of lawsuits pending in courts around
`
`the country. Pet. 1–2; Paper 5, 2–7. In addition, ex parte reexamination No.
`
`2
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`IPR2015-01611
`Patent 6,549,130 B1
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`90/013,301 was filed with respect to the ’130 patent and has been stayed in
`
`light of this proceeding. Paper 16. The ’076 patent also is the subject of a
`
`co-pending petitions for inter partes review (IPR2015-01509 and IPR2015-
`
`01760).
`
`B.
`
`The Instituted Grounds
`
`We instituted inter partes review on the following grounds of
`
`unpatentability:
`
`Reference(s)
`
`Basis
`
`Instituted Claim(s)
`
`Kniffin1
`
`§ 1022
`
`26, 38, 42, 43, 48, 63,
`73, 74, 91, and 138
`
`Kniffin and one of Spaur3, Behr4,
`or Kubler5
`
`§ 103
`
`64, 85, and 92
`
`Kniffin and Ryoichi6
`
`§ 103
`
`31
`
`Kniffin and Drori7
`
`§ 102
`
`60 and 139
`
`Kniffin and Neely8
`
`§ 103
`
`143
`
`
`1 U.S. Patent No. 6,072,402, filed Jan. 9, 1992 (Ex. 1006) (“Kniffin”).
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29,
`revised 35 U.S.C. §§ 102, 103 and the relevant sections took effect on March
`16, 2013. Because the application from which the ’130 patent issued was
`filed before that date, our citations to Title 35 are to its pre-AIA version.
`3 U.S. Patent No. 5,732,074, filed Jan. 16, 1996 (Ex. 1016) (“Spaur).
`4 U.S. Patent No. 5,808,566, filed June 23, 1995 (Ex. 1017) (“Behr”).
`5 U.S. Patent No. 5,726,984, filed Oct. 5, 1995 (Ex. 1018) (“Kubler”).
`6 U.S. Patent No. 5,113,427, issued May 12, 1992 (Ex. 1007) (“Ryoichi”).
`7 U.S. Patent No. 5,081,667, issued Jan. 14, 1992 (Ex. 1008) (“Drori”).
`8 U.S. Patent No. 4,602,127, issued July 22, 1986 (Ex. 1015) (“Neely”).
`
`3
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`
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`IPR2015-01611
`Patent 6,549,130 B1
`
`
`C.
`
`The ’130 Patent
`
`The ’130 patent is directed to controlling a vehicle or premises.
`
`Ex. 1001, Abstract The ’130 patent describes three control devices; a first
`
`control device is located at a vehicle or premises, a second control device is
`
`located remote from the vehicle or premises, and a third control device is
`
`located remote from the vehicle or premises and remote from the second
`
`control device. Id. The first control device generates a first signal in
`
`response to a second signal from the second control device. Id. The first
`
`control device can activate, de-activate, disable, or re-enable, one or more of
`
`“a respective system, component, device, equipment, equipment system,
`
`and/or appliance, of a respective vehicle or premises with the first signal.”
`
`Id. The second control device generates the second signal in response to a
`
`third signal from the third control device. Id. The “second control device is
`
`at least one of a server computer, a computer, and a network computer.”
`
`Id. at 81:19–21. In addition,
`
`the third control device is at least one of a stationary
`device, a portable device, a hand-held device, a
`mobile device, a telephone, a cordless telephone, a
`cellular telephone, a home computer, a personal
`computer, a personal digital assistant, a television,
`an interactive television, a digital television, a
`personal communications device, a personal
`communications
`services device, a display
`telephone, a video telephone, a watch, and a two-
`way pager.
`
`Id. at 81:21–29.
`
`4
`
`
`
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`IPR2015-01611
`Patent 6,549,130 B1
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`
`D.
`
`The Instituted Claims
`
`Of the instituted claims, claims 26, 42, 48, 91, and 138 are
`
`independent. Claims 26 and 91 are illustrative and reproduced below:
`
`26. A control apparatus, comprising:
`
`a first control device, wherein the first control device at least
`one of generates 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
`component, a vehicle device, a vehicle equipment, a
`vehicle equipment system, and a vehicle appliance, of a
`vehicle, wherein the first control device is located at the
`vehicle, wherein the first control device is responsive to a
`second signal, wherein the second signal is at least one of
`generated by 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, and further wherein the
`second signal is automatically received by the first
`control device,
`
`wherein the second control device is responsive to a third
`signal, wherein the third signal is at least one of
`generated by 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,
`
`wherein the at least one of a vehicle system, a vehicle
`component, a vehicle device, a vehicle equipment, a
`vehicle equipment system, and a vehicle appliance, is at
`least one of a vehicle ignition system, a vehicle fuel
`pump system, a vehicle alarm system, a vehicle door
`locking device, a vehicle hood locking device, a vehicle
`trunk locking device, a wheel locking device, a brake
`
`5
`
`
`
`
`IPR2015-01611
`Patent 6,549,130 B1
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`locking device, a horn, a vehicle light, a vehicle lighting
`system, a refrigerator, an air conditioner, an oven, a
`vehicle window locking device, a video recording device,
`an audio recording device, a camera, an intercom device,
`a microphone, a locking device, a monitoring device for
`monitoring at least one of fuel supply, water or coolant
`supply, generator operation, alternator operation, battery
`charge level, and engine temperature, fire extinguishing
`equipment, radar equipment, hydraulic equipment,
`pneumatic equipment, a winch, a self-defense system, a
`weapon system, a gun, an electronic warfare system, a
`pumping device, sonar equipment, a locking device for
`preventing unauthorized access to a vehicle
`compartment, and landing gear.
`
`
`
`91. A control apparatus, comprising:
`
`a first control device, wherein the first control device at least
`one of generates 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
`component, a vehicle device, a vehicle equipment, a
`vehicle equipment system, and a vehicle appliance, of a
`vehicle, wherein the first control device is located at a
`location remote from the vehicle, and further wherein the
`first control device is responsive to a second signal,
`
`wherein the second signal is at least one of generated by and
`transmitted from a second control device, wherein the
`second control device is located at a location which is
`remote from the first control device and remote from the
`vehicle, wherein the second signal is transmitted from the
`second control device to the first control device, and
`further wherein the second signal is automatically
`received by the first control device,
`
`wherein the first signal is transmitted from the first control
`device to a third control device, wherein the third control
`device is capable of at least one of activating, de-
`activating, disabling, and re-enabling, one or more of a
`
`6
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`IPR2015-01611
`Patent 6,549,130 B1
`
`
`plurality of the at least one of a vehicle system, a vehicle
`component, a vehicle device, a vehicle equipment, a
`vehicle equipment system, and a vehicle appliance, and
`wherein the third control device is located at the vehicle,
`and further wherein the first signal is automatically
`received by the third control device, wherein the third
`control device at least one of generates and transmits a
`third signal for at least one of activating, de-activating,
`disabling, and re-enabling, the at least one of a vehicle
`system, a vehicle component, a vehicle device, a vehicle
`equipment, a vehicle equipment system, and a vehicle
`appliance.
`
`
`
`II. ANALYSIS
`
`A.
`
`Claim Construction
`
`In the Decision to Institute, we noted that the ’130 patent was expired.
`
`Dec. 5. For claims of an expired patent, the Board’s claim interpretation is
`
`similar to that of a district court. See In re Rambus, Inc., 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 v. AWH Corp.,
`
`415 F. 3d 1303, 1312–17 (Fed. Cir. 2005) (en banc)).
`
`For purposes of the Decision to Institute, we construed the term
`
`“control device.” Dec. 5–7. Neither party raised any concerns regarding
`
`this construction during trial. See PO Resp. 14; Reply 2. Based on our
`
`review of the full record, we discern no reason to modify or further discuss
`
`7
`
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`
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`IPR2015-01611
`Patent 6,549,130 B1
`
`
`in this Final Written Decision our constructions for this claim term. For
`
`convenience, this claim construction is reproduced in the table below.
`
`Term
`Control
`Device
`
`Citations
`Ex. 2002, 6;
`PO Resp. 14
`
`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.
`
`B.
`
`Analysis of Asserted Ground of Anticipation by Kniffin
`
`Petitioner asserts that claims 26, 38, 42, 43, 48, 63, 73, 74, 91, and
`
`138 of the ’130 patent are unpatentable under 35 U.S.C. § 102 as anticipated
`
`by Kniffin. Pet. 13–40. Petitioner relies on claim charts showing how this
`
`reference allegedly discloses the claimed subject matter. Id. Petitioner
`
`further relies on a declaration from Scott Andrews. Ex. 1002.
`
`i. Overview of Kniffin
`
`Kniffin describes a secure entry system that uses radio transmissions
`
`to communicate with locks, keys, and related components. Ex. 1006,
`
`Abstract. Figure 1 is reproduced below.
`
`8
`
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`
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`IPR2015-01611
`Patent 6,549,130 B1
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`
`
`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.
`
`Figure 4 is reproduced below.
`
`9
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`IPR2015-01611
`Patent 6,549,130 B1
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`
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`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 by
`
`detecting an identification device 70. Id. at 8:25–27. Identification device
`
`70 may be a proximity card mounted at the loading dock or an electronic key
`
`carried by an authorized employee. Id. at 8:27–30. “If the detected
`
`identification device corresponds to the first expected stop that had earlier
`
`been programmed, the truck access control device unlocks, permitting 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.
`
`10
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`IPR2015-01611
`Patent 6,549,130 B1
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`ii. Discussion
`
`Each of the challenged independent claims (26, 42, 48, 91, and 138)
`
`recites a first, second, and third control device. Petitioner asserts that
`
`“[c]laims 26, 42, 48, 91, and 138 identify these same control devices but in
`
`different orders.” Pet. 9. Petitioner includes the following chart on page 9
`
`of its Petition.
`
`
`
`
`The preceding chart illustrates Petitioner’s allegation that the independent
`
`claims recite the same control devices in different orders. Id. Patent
`
`Owner’s arguments regarding the challenged claims are in accord with
`
`Petitioner’s grouping of the control devices. See e.g., PO Resp. 20
`
`(discussing the first control device of claims 26 and 48 and the third control
`
`device of claims 42 and 138 as part of an argument directed to the “first
`
`control device” of claim 26), 29–31 (discussing claim 91). Petitioner and
`
`Patent Owner rely 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
`
`11
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`IPR2015-01611
`Patent 6,549,130 B1
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`indicated, we shall use the terms first, second, and third control device to
`
`refer to the control devices as described in claim 26.
`
`Petitioner argues that Kniffin discloses these control devices through
`
`its discussion and depiction of access control device 64 (first control device)
`
`(Pet. 13–14), clearinghouse 18 or 66 (second control device) (id. at 14), and
`
`communications link 16 (third control device) (id.). Petitioner asserts that
`
`a delivery company may contact clearinghouse 66, and provide
`a schedule of deliveries for the truck. . . . [C]learinghouse 66
`transmits the schedule to the truck access control device 64 (the
`in-vehicle control device, i.e., at the truck 62), where the
`schedule is stored in memory 68.
`
`Id. at 15 (citing Ex. 1006, 8:15–24). 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 verified schedule of
`
`stops. Moreover, truck access control device 64 (the in-vehicle control
`
`device) is responsive to signals from clearinghouse 66 (the middle device).”
`
`Pet. 17 (citing Ex. 1006, 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 17–18
`
`(citing Ex. 1006, 2:31–43, 8:61–67; Ex. 1002 ¶ 11–13).
`
`a)
`Patent Owner’s Arguments as to Independent
`Claims 26, 42, 48, and 138
`
`Patent Owner asserts that Kniffin does not disclose all of the elements
`
`of the independent claims. PO Resp. 14–31. Specifically, Patent Owner
`
`contends that “Kniffin does not generate a signal (the claimed ‘first signal’
`
`12
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`IPR2015-01611
`Patent 6,549,130 B1
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`. . . ) for instructing the lock mechanism 32 to unlock the doors in response
`
`to a signal from the clearinghouse 66 (which Petitioner asserts corresponds
`
`to the claims ‘second control device’).” Id. at 20–21. Patent Owner asserts
`
`that information received from clearinghouse 66 is merely stored in memory.
`
`Id. at 21. “In fact, the signal that triggers the access control device 64 of
`
`Kniffin to generate a signal for instructing the lock mechanism 32 to unlock
`
`the doors is a signal from an ‘identification device 70’ that is present at one
`
`of the authorized locations stored in memory 68.” Id.
`
`Claim 26 recites “wherein the first control device is responsive to a
`
`second signal, wherein the second signal is at least one of generated by and
`
`transmitted from a second control device.” Ex. 1001, 80:9–10; see also id.
`
`83:25–26 (similar language in claim 42), 85:15–18 (claim 48), 99:13–14
`
`(claim 138). Thus, in each of independent claims 26, 42, 48, and 138, the
`
`first control device must respond to a signal from the second control device.
`
`Petitioner asserts that access control device 64 is the first control device and
`
`that clearinghouse 18 or 66 is the second control device. Pet. 13–14.
`
`Therefore, Petitioner must establish that Kniffin discloses that access control
`
`device 64 responds to a signal from the clearinghouse. We are not
`
`persuaded that Petitioner has a made a sufficient showing on this point.
`
`Petitioner alleges that “clearinghouse 66 transmits the schedule to the
`
`truck access control device 64 . . . where the schedule is stored in memory
`
`68.” Id. at 15. Petitioner then makes the bare assertion that “Kniffin’s truck
`
`access control device 64 (the in-vehicle control device), located in the
`
`vehicle, is responsive to signals from clearinghouse 18 or 66 (the middle
`
`device), located remote from the vehicle 62.” Id. at 16. Petitioner also
`
`contends that “truck access control device 64 (the in-vehicle control device)
`
`13
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`is responsive to signals from clearinghouse 66 (the middle device), as
`
`Kniffin discloses that truck access control device 64 may be reprogrammed
`
`by clearinghouse 66.” Id. at 17 (citing Ex. 1006, 8:61–67, Ex. 1002 ¶¶ 11–
`
`13). Petitioner, however, does not explain why storing a schedule in
`
`memory or reprogramming a device discloses the recited device responsive
`
`to a second signal. Nor does Petitioner explain the import or impact of the
`
`signal sent from identification device 70. This is key because Kniffin states
`
`that “[i]n response to identification of the authorized user at the lock within
`
`the prescribed time period, a lock microprocessor CPU 30 instructs a lock
`
`mechanism 32 to unlock.” Ex. 1006, 3:64–66. In the fourth embodiment,
`
`access is based on the identity of a location and not that of an individual.
`
`See id. at 8:17–18 (“Each possible destination is assigned an identification
`
`number.”). Access is granted “[i]f the detected identification device
`
`corresponds to the first expected stop.” Id. at 8:30–31. Access is blocked if
`
`“the access control device . . . sense[s] either the absence of an identification
`
`device, or will sense an identification device that does not correspond to an
`
`authorized stop.” Id. at 8:39–45.
`
`Petitioner responds to Patent Owner’s arguments by stating that
`
`“[w]hile Kniffin describes controlling the in-vehicle lock mechanism, as set
`
`forth in the Petition, Kniffin also describes storing data in an in-vehicle
`
`memory, in response to data received by the access control device from a
`
`clearinghouse.” Reply 4 (citing Pet. 13–15). Petitioner asserts that Patent
`
`Owner’s arguments regarding Kniffin’s disclosures as related to the lock do
`
`not address Kniffin’s disclosures as related to activating memory. Id. We,
`
`however, are not persuaded that Petitioner has put forth sufficient evidence
`
`14
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`IPR2015-01611
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`to establish that the mere act of storing information in memory discloses the
`
`disputed limitation.
`
`The specification of the ’130 patent describes the “operational steps
`
`and/or sequence of operation of the apparatus and method of the present
`
`invention.” Ex. 1001, 32:10–14. In order “to prevent an unauthorized
`
`access” the system compares the received program command with “data
`
`which may be stored in apparatus program memory.” Id. at 32:39–50.
`
`Kniffin’s stored schedule of stops appears to be similar to the stored data
`
`described in the ’130 patent. The control device of the ’130 patent,
`
`however, is not responsive to the stored data, but rather it responds to the
`
`program code. See id. at 32:51–67. Thus, we are not persuaded that
`
`Kniffin’s disclosure of storing the schedule is sufficient to disclose the
`
`disputed limitation. Therefore, we are not persuaded that Petitioner has
`
`demonstrated that Kniffin discloses a first control device that is responsive
`
`to a second control signal as recited by claims 26, 42, 48, and 138.
`
`For the foregoing reasons we determine that Petitioner has not carried
`
`its burden to demonstrate by a preponderance of the evidence that
`
`independent claims 26, 42, 48, and 138 are anticipated by Kniffin. By that
`
`same regard, we also are not persuaded that Petitioner has established the
`
`unpatentability of dependent claims 38, 43, 63, 73, 74, 139, and 143. The
`
`various anticipation and obviousness grounds asserted for each of those
`
`claims relies upon the assertions and arguments discussed above in relation
`
`to the independent claims. Petitioner has not argued that the above
`
`discussed deficiency is remedied by arguments or evidence put forth in any
`
`of the other grounds. Therefore, Petitioner has not satisfied its burden in
`
`15
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`IPR2015-01611
`Patent 6,549,130 B1
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`relation to its assertions of unpatentability directed to claims 26, 31, 38, 42,
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`43, 48, 60, 63, 64, 73, 74, 85, 138, 139, and 143 of the ’130 patent.
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`b)
`Patent Owner’s Arguments as to Independent
`Claim 91
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`As compared to the other independent claims, claim 91 recites
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`different language in that it does not recite that the in-vehicle device (claim
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`91’s third control device) is responsive to the intermediate device (claim
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`91’s first control device). As to this claim, Patent Owner contends that the
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`information sent from the clearinghouse “regarding an authorized schedule
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`of stops is not a signal ‘for at least one of activating, de-activating, disabling,
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`and re-enabling’ a vehicle system/component, but rather it is simply a
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`schedule that is transmitted from the clearinghouse 66 to the access control
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`device 64 and stored in memory 68.” PO Resp. 30–31 (citing Ex. 1006,
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`8:21–24).
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`Claim 91 recites “a first signal for at least one of activating, de-
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`activating, disabling, and re-enabling . . . a vehicle component . . . wherein
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`the first control device is located at a location remote from the vehicle . . .
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`[and] wherein the first signal is transmitted from the first control device to a
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`third control device . . . [that] is located at the vehicle . . . [and] wherein the
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`first control signal is automatically received by the third control device,
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`wherein the third control device at least one of generates and transmits a
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`third signal for at least one of activating, de-activating, disabling, and re-
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`enabling . . . a vehicle component.”
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`Petitioner asserts that the first signal is disclosed by Kniffin’s
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`communication sent from the clearinghouse to the access control device.
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`Pet. 25. According to Petitioner, this communication includes a schedule
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`IPR2015-01611
`Patent 6,549,130 B1
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`that is used to manage access to the doors of a delivery truck 62. Id. (citing
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`Ex. 1006, 8:15–21; 2:31–43). We find that the schedule is stored in
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`Kniffin’s access control device and later used in the processing to determine
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`whether the lock should unlock. Thus, we are persuaded that Kniffin’s
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`description of the clearinghouse sending a sequence of deliveries to the
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`access control device discloses the claimed first signal “for . . . activating,
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`de-activating, disabling, and re-enabling . . . a vehicle component.” In the
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`previously discussed independent claims we were not persuaded that
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`Petitioner has established that the in-vehicle device was “responsive” to the
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`signal from the clearinghouse. We, however, are persuaded that Petitioner
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`has established that the in-vehicle device uses the information from the
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`clearinghouse in deciding whether to unlock the access control device and as
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`such the schedule is transmitted for activating or de-activating the lock. See
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`Pet. 25 (citing Ex. 1006, 8:46–48, 3:64–4:3, Ex. 1002 ¶¶ 11–13).
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`Based on our review of the full record, we find persuasive Petitioner’s
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`arguments and evidence and we adopt them as the basis for our
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`determination that Kniffin discloses the limitations of claim 91. See Pet. 25–
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`26, 37–39. Accordingly, we determine that Petitioner has demonstrated by a
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`preponderance of the evidence the unpatentability of claim 91 as anticipated
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`by Kniffin.
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`C.
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`Asserted Obviousness of Claim 92
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`iii. Overview of Spaur
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`Spaur teaches wirelessly linking with a vehicle using an Internet
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`communications link to control a vehicle component. Ex. 1016, 2:42–48,
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`3:13–20, 7:40–47, 12:51–54.
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`iv. Overview of Behr
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`Behr teaches an electronic navigation system providing route
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`guidance, tracking information, and other information from a base unit to a
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`remote unit over wireless, wireline, or optical devices, including cellular or
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`Internet Protocol networks. Ex. 1017, Abstract, 1:19–26, 9:38–42.
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`v. Overview of Kubler
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`Kubler teaches a communication system using wired and wireless
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`networks, including the Internet, to communicate between stationary and
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`roaming devices, such as a vehicle-mounted computer terminal. Ex. 1018,
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`Abstract, 8:25–29.
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`vi. Analysis
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`Claim 92 depends from claim 91. As we have found that claim 91 is
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`unpatentable over Kniffin, we now examine whether Petitioner has put forth
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`a sufficient case as to claim 92. Claim 92 further recites, in relevant part, the
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`usage of the apparatus of the claim 91 over the Internet and World Wide
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`Web.
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`Petitioner asserts that claim 92 is unpatentable under 35 U.S.C. § 103
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`as obvious over Kniffin. Pet. 45–46. Petitioner relies on claim charts
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`showing how Kniffin allegedly teaches the claimed subject matter. Id. at
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`47–49. Petitioner further relies on the declaration from Scott Andrews.
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`Ex. 1002. Mr. Andrews asserts that “[t]he use of the Internet or World Wide
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`Web in vehicle control systems was well-known at the time of the ’130
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`patent as evidenced, for example, by Spaur, Behr, and Kubler.” Ex. 1002
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`¶ 24. As noted in the Institution Decision, we exercised our discretion to
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`recognize Petitioner’s implicit argument that these claims would have been
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`obvious over the teachings of Kniffin and the knowledge of one of ordinary
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`skill in the art as evidenced by Spaur, Behr, and Kubler. Dec. 13; See In re
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`Cuozzo Speed Techs., LLC, 793 F.3d 1297, 1301 (Fed. Cir. 2015), aff’d sub
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`nom, Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016); SightSound
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`Techs., LLC v. Apple Inc., 809 F.3d 1307, 1313 (Fed. Cir. 2015), cert.
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`denied, No. 16-483, 2017 WL 160459 (U.S. Jan. 17, 2017).
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`Patent Owner contends that one of ordinary skill in the art would not
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`have modified Kniffin to use the Internet because “conventional wisdom at
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`the time of the effective filing date of the ’130 Patent was that the Internet
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`was not secure and there were also many impediments on the use of the
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`Internet.” PO Resp. 32. In support of this position, Patent Owner cites a
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`1996 Morgan Stanley “Internet Report” that noted concerns about security
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`and potential limits to Internet access. Id. at 32–34 (citing Ex. 2005, 24).
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`Petitioner responds by asserted that Patent Owner “admitted that, in
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`March of 1996, a person of ordinary skill in the art as would have
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`appreciated the Internet as an improved transmission system.” Reply 10–11
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`(citing Pet. 35–36). Specifically, Petitioner directs us to Patent Owner’s
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`Response to an Office Action in the reexamination of U.S. Patent No.
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`7,397,363 (“the ’363 patent”). The ’130 patent and the ’363 patent each
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`descend from U.S. Patent Application Nos. 08/683,828 and 08/622,749.
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`See Ex. 1001, at [63]. In that Response to an Office Action, Patent Owner
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`asserted that one of ordinary skill in the art “would appreciate the
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`infrastructure of the Internet and its improved signal transmission
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`capabilities, as compared to the [RF] system used in Kniffin, as being a
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`superior system for transmitting a signal or message from one location to
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`another.” Ex. 1020, 11. Petitioner also asserts that the cited Morgan Stanley
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`Internet Report does not represent the conventional wisdom of one of
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`ordinary skill in the art because it was prepared to help investors ascertain
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`risks and rewards related to the Internet and Patent Owner does not show
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`that one of ordinary skill would have looked to such a document. Reply. 12
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`(citing Ex. 2005, 4).
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`We are persuaded by Petitioner’s arguments. Patent Owner’s
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`statements as to the knowledge of one of ordinary skill are more directly
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`related to the issues at hand than an investment report. We agree with
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`Petitioner’s analysis of Kniffin and the teachings of Spaur, Behr, or Kubler.
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`Thus, we find that one of ordinary skill in the art would have been motivated
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`to improve Kniffin’s system with the known methods of transmitting
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`information over the Internet. See Muniauction, Inc. v. Thomson Corp., 532
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`F.3d 1318, 1326–27 (Fed. Cir. 2008).
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`Based on our review of the full record, we find persuasive Petitioner’s
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`arguments and evidence and we adopt them as the basis for our
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`determination that Kniffin and the knowledge of one of ordinary skill in the
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`art as evidenced by Spaur, Behr, and Kubler renders obvious claim 92. See
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`Pet. 56–57. Accordingly, we determine that Petitioner has demonstrated by
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`a preponderance of the evidence the unpatentability of claim 92 over the
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`teachings of Kniffin and the knowledge of one of ordinary skill in the art as
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`evidenced by Spaur, Behr, and Kubler.
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`D. Conclusion
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`Petitioner has shown by a preponderance of the evidence that claim 91
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`of the ’130 patent is anticipated under 35 U.S.C. § 102 by Kniffin and that
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`claim 92 is unpatentable under 35 U.S.C. § 103 over the teachings of Kniffin
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`and the knowledge of one of ordinary skill in the art as evidenced by
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