Trials@uspto.gov
`571-272-7822
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` Paper 7
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` Date: January 28, 2016
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`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 HOWARD B. BLANKENSHIP, STACEY G. WHITE, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`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 (“the challenged claims”) of U.S.
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`IPR2015-01611
`Patent 6,549,130 B1
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`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.”).
`We have authority to determine whether to institute an inter partes
`review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Upon consideration of the
`Petition and the Preliminary Response, and for the reasons explained below,
`we determine that the information presented shows a reasonable likelihood
`that Petitioner would prevail with respect to claims 26, 31, 38, 42, 43, 48,
`60, 63, 64, 73, 74, 85, 91, 92, 138, 139, and 143. See 35 U.S.C. § 314(a).
`Accordingly, we institute an inter partes review of these claims.
`
`A.
`
`Related Matters
`
`Petitioner and Patent Owner indicate that the ’130 patent or related
`patents may be implicated in approximately seventy lawsuits pending in
`courts around the country. Pet. 1–2; Paper 5, 2–7.
`
`B.
`
`The Asserted Grounds
`
`Petitioner identifies the following as asserted grounds of
`unpatentability:
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`
`Reference(s)
`
`Basis
`
`Kniffin (Ex. 1006)1
`
`§ 102(e)2
`
`Kniffin
`
`§ 103(a)
`
`Challenged Claim(s)
`26, 38, 42, 43, 48,
`63, 73, 74, 91, and
`138
`64, 85, and 92
`
`Kniffin and Ryoichi
`(Ex. 1007)3
`Kniffin and Drori (Ex.
`1008)4
`Kniffin and Neely (Ex.
`1015)5
`
`§ 103(a)
`
`31
`
`§ 102(e)
`
`60 and 139
`
`§ 103(a)
`
`143
`
`
`
`C.
`
`The ’130 Patent
`
`The ’130 patent is directed to controlling a vehicle or premises. Ex.
`1001, Abs. 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
`
`1 U.S. Patent No. 6,072,402, filed Jan. 9, 1992.
`2 The relevant sections of the Leahy-Smith America Invents Act (“AIA”),
`Pub. L. No. 112–29, 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. 5,113,427, issued May 12, 1992.
`4 U.S. Patent No. 5,081,667, issued Jan. 14, 1992.
`5 U.S. Patent No. 4,602,127, issued July 22, 1986.
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`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.
`
`D.
`
`The Challenged Claims
`
`Petitioner challenges claims 26, 31, 38, 42, 43, 48, 60, 63, 64, 73, 74,
`85, 91, 92, 138, 139, and 143. Pet. 3. Claims 26, 42, 48, 91, and 138 are
`independent. Claim 26 is 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
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`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 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.
`
`II. ANALYSIS
`
`A.
`
`Claim Construction
`
`As acknowledged by the parties, the ’130 patent has expired. See Pet.
`12; Prelim. Resp. 13. We construe expired patent claims according to the
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`standard applied by the district courts. See In re Rambus Inc., 694 F.3d 42,
`46 (Fed. Cir. 2012). Specifically, we apply the principles set forth in
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). “In
`determining the meaning of the disputed claim limitation, we look
`principally to the intrinsic evidence of record, examining the claim language
`itself, the written description, and the prosecution history, if in evidence.”
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014
`(Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). A patentee may act
`as a lexicographer by giving a term a particular meaning in the specification
`with “reasonable clarity, deliberateness, and precision.” In re Paulsen, 30
`F.3d 1475, 1480 (Fed. Cir. 1994).
`Patent Owner argues that the terms “remote” and “located at” are
`defined expressly in the prosecution history of at least two related
`applications; however, we are not persuaded that express constructions of
`“remote” and “located at” are necessary in order to resolve the disputes
`currently before us. See Prelim. Resp. 23–25. Thus, we discern no need to
`provide express constructions for these terms at this time. Vivid Techs., Inc.
`v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those
`terms need be construed that are in controversy, and only to the extent
`necessary to resolve the controversy.”).
`We recognize, however, a need to provide an express construction for
`“control device.” Patent Owner acknowledges that the term “control device”
`is defined expressly in the prosecution history of a related application.
`Prelim. Resp. 20–21. Patent Owner seeks to rely upon a statement made in
`the remarks filed on November 23, 2007, during prosecution of the patent
`application that issued as U.S. Patent No. 7,397,363 (“the ‘363 patent”) (Ex.
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`2002). Id. This statement was made several years after the issuance of the
`’130 patent. See Ex. 1001, at [45] (April 15, 2003 issuance date). The ’130
`patent and the ’363 patent each descend from U.S. Patent Application Nos.
`08/683,828 and 08/622,749. See Ex. 1001, 73.
`As the Federal Circuit has noted, “[a] statement made during
`prosecution of related patents may be properly considered in construing a
`term common to those patents, regardless of whether the statement pre- or
`post-dates the issuance of the particular patent at issue.” Teva Pharm. USA,
`Inc. v. Sandoz, Inc., 789 F.3d 1335, 1343 (Fed. Cir. 2015) (citing Microsoft
`Corp. v. Multi–Tech Sys., Inc., 357 F.3d 1340, 1350 (Fed. Cir. 2004)). An
`explicit definition for “control device” was provided in the related
`application. See Ex. 2002, 6. We have reviewed this definition and, on this
`record, we find it to be reasonable and instructive to understanding the
`proper scope of this claim term. See Paulsen, 30 F.3d at 1480. Thus, we
`adopt the following construction for purposes of this decision.
`
`Term
`Control
`Device
`
`Citations
`Prelim.
`Resp. 20–21;
`Ex. 2002, 6
`
`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.
`
`Alleged Anticipation of Claims 26, 38, 42, 43, 48, 63, 73, 74, 91, and
`138 by Kniffin
`
`1.
`
`Kniffin (Ex. 1006)
`
`Kniffin describes a secure entry system using radio frequencies to
`communicate with components throughout the system. Ex. 1006, Abs.
`Figure 4 is reproduced below.
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`
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`Figure 4 illustrates delivery truck 62 with electronic access control
`device 64 guarding against unauthorized opening. Id. at 8:5–14. A delivery
`company calls clearinghouse 66 and identifies a sequence of deliveries for
`delivery truck 62. Id. at 8:15–17. The delivery company calls clearinghouse
`66 and clearinghouse 66 transmits the authorized schedule of stops to access
`control device 64. Id. at 8:17–24. If truck 62 visits an unauthorized
`location, access control device 64 senses either the absence of an
`identification device, or senses an identification device, which does not
`correspond to an authorized stop; in both cases, access control device 64
`restricts access to the contents of truck 62. Id. at 8:40–44. Access control
`device 64 can take the same form as lock 12 as in Figure 1. Id. at 8:45–49.
`Figure 1 is reproduced below.
`
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`Figure 1 illustrates a user using telephone Touch Tone pad 22
`communicating with clearinghouse 18 to access lock 12 that controls lock
`mechanism 32. Id. at 2:25–43. In addition, lock 12 receiver 14 receives a
`radio transmission such as a cellular telephone system. Id. at 2:25–30, 2:44–
`51.
`
`2.
`
`The Parties’ Contentions for Claims 26, 38, 42, 43, 48, 63, 73, 74, 91,
`and 138
`
`Petitioner asserts that the subject matter of claims 26, 38, 42, 43, 48,
`63, 73, 74, 91, and 138 is anticipated by Kniffin under 35 U.S.C. § 102(e).
`Pet. 13–40. Petitioner provides a limitation-by-limitation analysis of where
`each limitation of claims 26, 38, 42, 43, 48, 63, 73, 74, 91, and 138 allegedly
`is disclosed in Kniffin. Id.
`We are persuaded that the present record supports the contention that
`Kniffin discloses accessing or denying access to delivery truck 62 with
`electronic access control device 64, which discloses the limitations in claims
`26, 42, 48, 63, 91, and 138. See Pet. 13–40 (citing Ex. 1006, 8:5–14). The
`present record also sufficiently supports the contention that Kniffin discloses
`a delivery company calls clearinghouse 66 and identifies a sequence of
`deliveries for delivery truck 62, which discloses the limitations in claims 26,
`42, 48, 63, 91, and 138. Pet. 13–40 (citing Ex. 1006, 8:15–17). In addition,
`the present record supports the contention that Kniffin discloses the
`sequence is programmed using a Touch Tone telephone pad and
`clearinghouse 66 transmits the authorized schedule of stops to access control
`device 64, which discloses the limitations in claims 26, 42, 48, 63, 91, and
`138. Pet. 13–40 (citing Ex. 1006, 8:17–24). The present record supports the
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`contention that Kniffin discloses if truck 62 visits an unauthorized location,
`access control device 64 senses either the absence of an identification
`device, or senses an identification device, which does not correspond to an
`authorized stop; in both cases, access control device 64 restricts access to the
`contents of truck 62, which discloses the limitations in claims 26, 42, 48, 63,
`91, and 138. Pet. 13–40 (citing Ex. 1006, 8:40–44).
`Petitioner relies on Kniffin’s making a phone call and establishing
`cellular telephone link 16; then providing status information to the user via
`cellular telephone link 16, which discloses the limitations of claim 38.
`Pet. 32–33 (citing Ex. 1006, 2:25–43, 2:62–3:6).
`Petitioner relies on Kniffin’s providing status information to the user
`via cellular telephone link 16 to disclose the limitations of claim 43. Pet.
`34–35 (citing Ex. 1006) (pinpoint citations omitted).
`Petitioner relies on Kniffin’s cellular telephone or conventional
`telephone to disclose the limitations of claim 73. Pet. 37 (citing Ex. 1006,
`2:31–43).
`Petitioner relies on Kniffin’s voice synthesizer reporting to the user
`whether access is granted and the window period to disclose the limitations
`of claim 74. Pet. 37 (citing Ex. 1006, 2:54–61).
`Patent Owner, however, argues that according to the Specification of
`the ’130 patent, each “control device” is separate and distinct from the
`“vehicle component” being controlled. Prelim. Resp. 21–23. Patent Owner,
`thus, contends that the vehicle component includes a lock system, as recited
`in the Specification of the ’130 patent and dependent claim 49; put another
`way, Patent Owner alleges Kniffin’s access control device 64 cannot be both
`a “control device” and a “vehicle component” because each “control device”
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`is separate and distinct from the “vehicle component.” Id. at 25–35. We
`disagree with Patent Owner that the claimed “vehicle component” cannot be
`a subcomponent of a “control device.”
`At the outset, Kniffin’s access control device 64 senses either the
`absence of an identification device, or senses an identification device, which
`does not correspond to an authorized stop; in both cases, access control
`device 64 restricts access to the contents of truck 62 (Ex. 1006, 8:40–44),
`which is the same as a “control device” defined supra in Part II.A. as “a
`device . . . which performs an operation, an action, or a function.” Kniffin
`discloses that access control device 64 of Figure 4 includes a lock
`mechanism as in Figure 1. Pet. 15 (citing Ex. 1006, 8:46–48). Kniffin also
`discloses that lock 12 instructs lock mechanism 32 to unlock and allow
`access. Pet. 15 (citing Ex. 1006, 3:64–4:3). Kniffin’s lock mechanism 32,
`thus, corresponds to the vehicle component described in claims 26, 42, 48,
`91, and 138 because there is nothing precluding the claimed “vehicle
`component” from being a subcomponent of a “control device.” Pet. 16.
`We have considered Patent Owner’s argument that the Petition should
`be denied because claim 48 was previously rejected by the Patent Office
`based on Kniffin and the Examiner dropped the rejection of claim 48 based
`on Kniffin. Prelim. Resp. 36. Although 35 U.S.C. § 325(d) permits the
`Board to reject a petition merely for the reason that the same or substantially
`the same prior art or arguments were considered previously in another
`proceeding before the Office, it does not require the Board to do so. In this
`case, we decline to exercise our discretion to reject the Petition under
`35 U.S.C. § 325(d).
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`Accordingly, we have reviewed the proposed ground of anticipation
`by Kniffin against claims 26, 38, 42, 43, 48, 63, 73, 74, 91, and 138, and we
`are persuaded, at this juncture of the proceeding, that Petitioner has
`established a reasonable likelihood of prevailing in its challenge to claims
`26, 38, 42, 43, 48, 63, 73, 74, 91, and 138 on this ground.
`
`Alleged Obviousness of Claims 64, 85, and 92 in View of: Kniffin and
`C.
`Spaur (Ex. 1016)6; Kniffin and Behr (Ex. 1017)7; Kniffin and Kubler (Ex.
`1018)8
`
`1.
`
`Priority Date
`
`Petitioner contends claims 64, 85, and 92, which recite “at least one of
`the Internet and the World Wide Web,” cannot be entitled to a filing date
`earlier than March 27, 1996. Pet. 42 n.5. On this record, we agree with
`Petitioner that the subject matter of claims 64, 85, and 92 cannot be entitled
`to a filing date earlier than March 27, 1996 because that is the filing date of
`the earliest priority application that describes the Internet or the World Wide
`Web. Spaur, Behr, and Kubler, consequently, have an earlier priority date
`than the subject matter of claims 64, 85, and 92.
`
`2.
`
`Spaur (Ex. 1016)
`
`Spaur teaches wirelessly linking with a vehicle using an Internet
`communications link to control a vehicle component. Ex. 1016, 2:42–48,
`3:13–20, 7:40–47, 12:51–54.
`
`
`6 U.S. Patent No. 5,732,074, filed Jan. 16, 1996.
`7 U.S. Patent No. 5,808,566, filed June 23, 1995.
`8 U.S. Patent No. 5,726,984, filed Oct. 5, 1995.
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`3.
`
`Behr (Ex. 1017)
`
`Behr teaches an electronic navigation system providing route
`guidance, tracking information, and other information from a base unit to a
`remote unit over wireless, wireline, or optical devices, including cellular or
`Internet Protocol networks. Ex. 1017, Abs., 1:19–26, 9:38–42.
`
`4.
`
`Kubler (Ex. 1018)
`
`Kubler teaches a communication system using wired and wireless
`networks, including the Internet, to communicate between stationary and
`roaming devices, such as a vehicle-mounted computer terminal. Ex. 1018,
`Abs., 8:25–29.
`
`5.
`
`The Parties’ Contentions for Claims 64, 85, and 92
`
`As evidence that one of ordinary skill in the art would have been
`aware of the use of internet technology in such vehicle systems, Petitioner
`cites three patents, Spaur, Behr, and Kubler. Pet. 40–48. We are persuaded
`that claims 64, 85, and 92 would have been obvious over the combined
`teachings of Kniffin and one of Spaur, Behr, or Kubler. Thus, we exercise
`our discretion to recognize Petitioner’s implicit argument that these claims
`would have been obvious over the teachings of Kniffin and one of Spaur,
`Behr, or Kubler. See Garmin Int’l, Inc. et al. v. Cuozzo Speed Techs., Case
`IPR2012-00001, 2013 WL 5947691, at *10 (Jan. 9, 2013); aff’d sub nom, In
`re Cuozzo Speed Techs., LLC, 793 F.3d 1297, 1301 (Fed. Cir. 2015), cert.
`granted, 72016 WL 205946 (U.S. Jan. 15, 2016) (No. 15-446).
`Specifically, we are persuaded that the present record supports
`Petitioner’s contention that Kniffin teaches a paging system, a cellular
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`telephone system, or other RF carrier. We are persuaded that the present
`record supports Petitioner’s contention that at least one of Spaur, Behr, or
`Kubler teaches a controlling a device over Internet communications; the
`combination of Kniffin and Spaur; Kniffin and Behr; or Kniffin and Kubler
`teaches the limitations of claims 64, 85, and 92. Pet. 40–46.
`Petitioner concludes that one of ordinary skill in the art would have
`combined Kniffin’s system for accessing or denying access to a truck and
`Spaur, Behr, or Kubler’s controlling a device over Internet communications
`to have “the infrastructure of the Internet and its improved signal
`transmission capabilities.” Id.
`Patent Owner argues that claims 64, 85, and 92 are patentable over
`Kniffin and Spaur; Kniffin and Behr; or Kniffin and Kubler for at least the
`reasons discussed supra in Part II.B.2. Prelim. Resp. 37. On the present
`record, we disagree with Patent Owner for the same reasons discussed supra
`in Part II.B.2.
`We have reviewed the proposed ground challenging claims 64, 85,
`and 92 as obvious over Kniffin and Spaur; Kniffin and Behr; or Kniffin and
`Kubler, and we are persuaded, at this juncture of the proceeding, that
`Petitioner has established a reasonable likelihood of prevailing in its
`challenge to claims 64, 85, and 92 on this ground.
`
`D.
`
`Alleged Obviousness of Claim 31 in View of Kniffin and Ryoichi
`
`1.
`
`Ryoichi (Ex. 1007)
`
`Ryoichi teaches personal radio paging unit 9, fixed radio station ST,
`and telephone unit TEL sending control signals from one device to the next
`device that culminates in the activation or deactivation of a vehicle system,
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`such as unlocking the doors, turning on the headlights, or starting the engine.
`Ex. 1007, 5:16–6:9, 8:1–22, 9:1–10:27, Figs. 1, 5–7.
`
`2.
`
`The Parties’ Contentions for Claim 31
`
`Petitioner asserts that the subject matter of claim 31 would have been
`obvious in view of Kniffin and Ryoichi under 35 U.S.C. § 103(a). Pet. 48–
`51. Petitioner provides a limitation-by-limitation analysis of where each
`limitation of claim 31 allegedly is taught in Kniffin and Ryoichi. Id.
`We are persuaded that the present record supports Petitioner’s
`contention that Ryoichi’s personal radio paging unit 9 generates a calling
`sound that is detected by sensor 10 to control a handbrake teaches or
`suggests the limitations of claim 31. Pet. 50 (citing Ex. 1007, 8:1–22).
`Petitioner concludes that one of ordinary skill in the art would have
`combined Kniffin’s wireless system for accessing or denying access to a
`truck and Ryoichi’s wireless vehicle control system in order to provide a
`system with easy installation that is cost-effective for equipping delivery
`trucks. Pet. 50–51.
`Patent Owner argues that claim 31 is patentable over Kniffin and
`Ryoichi for at least the reasons discussed supra in Part II.B.2. Prelim. Resp.
`37. On the present record, we disagree with Patent Owner for the same
`reasons discussed supra in Part II.B.2.
`We have reviewed the proposed ground challenging claim 31 as
`obvious over Kniffin and Ryoichi, and we are persuaded, at this juncture of
`the proceeding, that Petitioner has established a reasonable likelihood of
`prevailing in its challenge to claim 31 on this ground.
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`
`E.
`
`Alleged Obviousness of Claims 60 and 139 in View of Kniffin and
`Drori
`
`1.
`
`Drori (Ex. 1008)
`
`Drori teaches cellular telephone and automobile security systems that
`include a system that permits installing of a cellular phone and a controller
`in an automobile. Ex. 1008, 1:12–14, 1:67–2:5. In addition, Drori teaches
`communications system 10, used with telephone system 12, interposed
`between handset unit 14 and transceiver 16 of cellular telephone system 12.
`Id. at 3:58–64. Drori also teaches that system controller 20 receives inputs
`from a global positioning tracker via level conversion and filtering circuits
`36. Id. at 4:44–48. Drori teaches that communications system 10 translates
`the tracking data input from the global positioning system into a location on
`a map. Id. at 5:9–17.
`
`2.
`
`The Parties’ Contentions for Claims 60 and 139
`
`Petitioner asserts that the subject matter of claims 60 and 139 would
`have been obvious in view of Kniffin and Drori under 35 U.S.C. § 103(a).
`Pet. 51–56. Petitioner provides a limitation-by-limitation analysis of where
`each limitation of claims 60 and 139 allegedly is taught in Kniffin and Drori.
`Id.
`
`The present record supports the contention that Drori teaches that
`system controller 20 receives inputs from a global positioning; subsequently,
`communications system 10 translates the tracking data input from the global
`positioning system into a location on a map, which teaches the limitations in
`claims 60 and 139. Pet. 51–56 (citing Ex. 1008) (pinpoint citations omitted).
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`Petitioner concludes that one of ordinary skill in the art would have
`combined Kniffin’s wireless system for accessing or denying access to a
`truck and Drori’s global positioning system in order to provide “a versatile
`cellular security system which is compatible with a wide variety of cellular
`telephones. Pet. 55–56 (citing 1008, 1:62–64).
`Patent Owner argues that claims 60 and 139 are patentable over
`Kniffin and Drori for at least the reasons discussed supra in Part II.B.2.
`Prelim. Resp. 37–38. On the present record, we disagree with Patent Owner
`for the same reasons discussed supra in Part II.B.2.
`We have reviewed the proposed ground challenging claims 60 and
`139 as obvious over Kniffin and Drori, and we are persuaded, at this
`juncture of the proceeding, that Petitioner has established a reasonable
`likelihood of prevailing in its challenge to claims 60 and 139 on this ground.
`
`F.
`
`Alleged Obviousness of Claim 143 in View of Kniffin and Neely
`
`1.
`
`Neely (Ex. 1015)
`
`Neely teaches a vehicular diagnostic system that helps repair
`malfunctions and employs a portable communications control station. Ex.
`1015 (pinpoint citations omitted).
`
`2.
`
`The Parties’ Contentions for Claim 143
`
`Petitioner asserts that the subject matter of claim 143 would have been
`obvious in view of Kniffin and Neely under 35 U.S.C. § 103(a). Pet. 56–60.
`Petitioner provides a limitation-by-limitation analysis of where each
`limitation of claim 143 allegedly is taught in Kniffin and Neely. Id.
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`The present record supports the contention that Neely teaches a
`vehicular diagnostic system that helps repair malfunctions and employs a
`portable communications control station, which teaches the limitations in
`claim 143. Pet. 51–56 (citing Ex. 1008) (pinpoint citations omitted).
`Petitioner concludes that one of ordinary skill in the art would have
`combined Kniffin’s wireless system for accessing or denying access to a
`truck and Neely’s vehicular diagnostic system in order to retrofit access
`control devices into existing applications and service a variety of vehicle
`models over a number of model years. Pet. 59–60.
`Patent Owner argues that claim 143 is patentable over Kniffin and
`Neely for at least the reasons discussed supra in Part II.B.2. Prelim. Resp.
`38. On the present record, we disagree with Patent Owner for the same
`reasons discussed supra in Part II.B.2.
`We have reviewed the proposed ground challenging claim 143 as
`obvious over Kniffin and Neely, and we are persuaded, at this juncture of the
`proceeding, that Petitioner has established a reasonable likelihood of
`prevailing in its challenge to claim 143 on this ground.
`
`III. CONCLUSION
`
`For the foregoing reasons, based on the information presented in the
`Petition and the Preliminary Response, we are persuaded that there is a
`reasonable likelihood that Petitioner would prevail in showing the
`unpatentability of claims 26, 31, 38, 42, 43, 48, 60, 63, 64, 73, 74, 85, 91,
`92, 138, 139, and 143 of the ʼ130 patent.
`At this stage of the proceeding, we have not made a final
`determination on the patentability of the challenged claims.
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`IV. ORDER
`
`Accordingly, it is
`ORDERED that, pursuant to 35 U.S.C. § 314, an inter partes review
`of U.S. Patent No. 6,549,130 B1 is hereby instituted on the grounds that
`claims 26, 38, 42, 43, 48, 63, 73, 74, 91, and 138 are asserted to be
`anticipated under 35 U.S.C. § 102(e) by Kniffin; claims 64, 85, and 92 are
`asserted to be unpatentable under 35 U.S.C. § 103(a) in view of Kniffin and
`Spaur; Kniffin and Behr; or Kniffin and Kubler; claim 31 is asserted to be
`unpatentable under 35 U.S.C. § 103(a) in view of Kniffin and Ryoichi;
`claims 60 and 139 are asserted to be unpatentable under 35 U.S.C. § 103(a)
`in view of Kniffin and Drori; and claim 143 is asserted to be unpatentable
`under 35 U.S.C. § 103(a) in view of Kniffin and Neely; and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; the trial
`commences on the entry date of this decision.
`
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`PETITIONER:
`Michael J. Lennon
`mlennon@kenyon.com
`
`Clifford A. Ulrich
`culrich@kenyon.com
`
`PATENT OWNER:
`Raymond A. Joao
`rayjoao@optonline.net
`
`René A. Vazquez
`rvazquez@hgdlawfirm.com
`
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