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 No. 6,549,130 B1
`____________________
`
`PETITIONER’S REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71(d)
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`1
`
`
`
`____________________
`
`
`
`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 No. 6,549,130 B1
`____________________
`
`PETITIONER’S REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71(d)
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`1
`
`
`
`I.
`
`
`
`INTRODUCTION
`
`Petitioner Volkswagen Group of America, Inc. (“VWGoA”) requests
`
`rehearing under 37 C.F.R. § 42.71(d) of the Board’s Final Written Decision
`
`(“Decision,” Paper 21) finding, inter alia, that VWGoA’s did not carry its burden
`
`to establish that U.S. Patent No. 6,072,402 (“Kniffin”) anticipates independent
`
`claims 26, 42, 48, 91, and 138 of U.S. Patent No. 6,549,130 (“the ’130 Patent”),
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`and therefore did not establish that claims 26, 31, 38, 42, 48, 60, 63, 64, 73, 74, 85,
`
`138, 139, and 143 are unpatentable.
`
`In its decision, the Board misapprehended VWGoA’s showing that Kniffin’s
`
`storing of data in memory in the truck access control device (and the
`
`reprogramming of the truck access control device) is responsive to the
`
`clearinghouse. As a consequence, the Board found that VWGoA did not
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`adequately explain how Kniffin anticipates independent claims 26, 42, 48, and 138.
`
`For the same reason, the Board also found that VWGoA did not establish the
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`unpatentability of dependent claims 31, 38, 43, 60, 63, 64, 73, 74, 85, 139, and
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`143. VWGoA requests a rehearing seeking reconsideration on this point.
`
`The challenged independent claims all merely require a conventional chain
`
`of three control devices: an originating, intermediate, and in-vehicle control device,
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`passing along signals to allow for remote operation of vehicle systems. In
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`particular, claims 26, 31, 38, 42, 43, 48, 60, 63, 64, 73, 74, 85, 138, 139, and 143
`
`2
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`
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`all require that the in-vehicle control device is responsive to a signal from the
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`intermediary control device, to activate a vehicle component. Decision, p. 13. In
`
`its petition, VWGoA showed that Kniffin describes an in-vehicle device (access
`
`control device 64) that is responsive to the signal from an intermediate device
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`(clearinghouse 66), to activate a vehicle component. See e.g. Petition, pp. 14-17.
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`The Petition described that the claimed vehicle component is described by each of
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`(i) the access lock 12 and (ii) the memory 68. In the case of the memory 64, the
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`Petition explained that Kniffin’s memory 68 is coded or reprogrammed in response
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`to the transmission from the clearinghouse to the access control device. Id. It is
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`this showing, regarding the memory 68 and the related discussion of programming
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`that memory, that is the subject of this request for rehearing.
`
`
`
`II.
`
`LEGAL STANDARD
`
`Under 37 C.F.R. § 42.71(d), a petitioner may request rehearing on a Final
`
`Written Decision. A request for rehearing “must specifically identify all matters
`
`the party believes the Board misapprehended or overlooked, and the place where
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`each matter was previously addressed in a motion, an opposition, or a reply.” 37
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`C.F.R. § 42.71(d). When evaluating a request for rehearing on a decision, the
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`Board will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).
`
`An abuse of discretion occurs when a decision is based on an “erroneous
`
`3
`
`
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`conclusion of law or clearly erroneous factual findings, or . . . a clear error of
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`judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565,
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`1567 (Fed. Cir. 1988); see, e.g., Facebook, Inc. v. Software Rights Archive, LLC,
`
`IPR2013-00478, Paper No. 31 (Apr. 14, 2014).
`
`III.
`
`ARGUMENT
`
`A. The Board overlooked the evidence expressly relied upon in
`the Petition
`
`Although the Board cited to portions of VWGoA’s Petition discussing
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`Kniffin’s storing of data in memory in the truck access control device, responsive
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`to the clearinghouse (i.e., Decision, pp. 13-14) the Board’s Decision demonstrates
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`that it overlooked the evidence expressly relied upon in the Petition, and therefore
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`misapprehended and failed to appreciate VWGoA’s showing in this regard.
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`First, the Board remarked that “Petitioner . . . makes the bare assertion that
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`‘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.’” Decision, p. 13. However, this was
`
`not a bare assertion: The Petition, for example, pointed to relevant portions of
`
`Kniffin showing a causal link between the clearinghouse and the storing of data in
`
`the in-vehicle memory, which the Board did not address. For example, the Petition
`
`stated:
`
`4
`
`
`
`Once clearinghouse 66 has verified the schedule of deliveries,
`clearinghouse 66 transmits the schedule to the truck access control
`device 64 (the in-vehicle control device located at truck 62), where the
`schedule is stored in memory 68. Col. 8, 11. 15-24.
`(Petition, p. 15 (emphasis to the citation added)).
`
`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. Clearinghouse 18 (the middle device) of Figure 1 includes
`computer 20 and database 24 that communicates with the access
`control device 12 via a radio transmission, e.g., by a paging or cellular
`telephone system, or other RF carrier. Col. 2, ll. 44-49. Similarly, in
`the vehicle embodiment, clearinghouse 66 (the middle device)
`transmits a signal to truck access control device 64 (the in-vehicle
`control device). Col. 8, ll. 21-24. Clearinghouse 66 receives signals
`from the 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), as Kniffin discloses that truck access control device 64 may
`be reprogrammed by clearinghouse 66. Col. 8, ll. 61-67; Ex. 1002,
`¶¶ 11-13.
`(Petition, p. 16-17 (emphasis to the citation added)).
`
`
`5
`
`
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`The Petition therefore identified express support for its assertions. The cited
`
`portions of Kniffin describe a data transmission from the clearinghouse to the truck
`
`access control device, and then expressly describes that the transmitted data is
`
`“received and stored in a memory 68,” and that signals from the clearinghouse
`
`cause the access control device to be “reprogrammed”:
`
`
`After suitable verification checks, the clearinghouse transmits to the
`targeted truck access control device 64 the authorized schedule of
`stops, which data is received and stored in a memory 68.
`(Kniffin, 8:21-24).
`
`The route sequence can be modified at any time by new transmissions
`from the clearinghouse. Thus, if circumstances make it impossible to
`complete the deliveries in the order scheduled, the driver can call the
`delivery company and ask that the schedule be suitably revised. The
`company can then call the clearinghouse and cause the access control
`device to be reprogrammed accordingly.
`(Kniffin, 8:61-67).
`
`
`
`And, relying on the foregoing disclosure by Kniffin, the cited portion of the
`
`Declaration of Scott Andrews (“Andrews Declaration,” Ex. 1002) describes that
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`the truck access control device is responsive to signals from the clearinghouse:
`
`In describing its system in the context of delivery truck 62, Kniffin
`describes that a delivery company sends a schedule of deliveries to
`
`6
`
`
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`clearinghouse 66. Clearinghouse verifies the schedule, and transmits
`the schedule to truck access control device 64. The schedule is then
`stored in memory 68. Col. 8, ll. 15-24. That is, the truck access
`control device, i.e., the first control device located at the vehicle, is
`responsive to signals from clearinghouse 66, i.e., the second control
`device located remote from the vehicle. See also, col. 8, ll. 61-67.
`
`The Petition
`
`therefore
`
`identified a direct causal
`
`link between
`
`the
`
`
`
`transmission from the clearinghouse and the storing or reprogramming of the
`
`memory located in the vehicle, such that the truck control access control device is
`
`responsive to the clearinghouse transmission by virtue of the transmitted signal
`
`from the clearinghouse to the access control device, causing the reprogramming of
`
`the access control device or storing data into memory. VWGoA’s assertions were
`
`thus supported with citations to Kniffin and to the Andrews Declaration showing
`
`how the recited device was responsive to transmissions from the clearinghouse.
`
`Second, the Board stated that “Petitioner . . . does not explain why storing a
`
`schedule in memory or reprogramming a device discloses the recited device
`
`responsive to a second signal.” Decision, p. 14. However, VWGoA explained this
`
`in the Petition. VWGoA, described that “once clearinghouse 66 has verified the
`
`schedule of deliveries, clearinghouse 66 transmits the schedule to the truck access
`
`control device 64 (the in-vehicle control device located at truck 62), where the
`
`schedule is stored in memory 68 [activating a vehicle component].” Petition, p. 15
`
`7
`
`
`
`(citing Kniffin, 8:15-24) and pp. 13-15 (“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.”); see also, Andrews Declaration, ¶¶ 13-14. VWGoA further described
`
`that “truck access control device 64 (the in-vehicle control device) 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.” Petition, p.
`
`17 (citing Kniffin 8:61-67 and the Andrews Declaration, ¶¶ 11-13.) Thus, the
`
`Petition explained, citing support in Kniffin and the Andrews Declaration, that
`
`both storing data into memory and reprogramming the truck access device are
`
`responsive to signals from the clearinghouse.
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`Further, in its Reply, VWGoA explained (with evidentiary support) that it
`
`was “common in the computer field to refer to storing data as, e.g. ‘activating’
`
`memory.” See Paper 19 (“Reply”), pp. 8-9, fn. 1 (citing U.S. Patent No. 5,404,361
`
`(Ex. 1024), at 12:38–42 (“Concurrently, memory control circuit 442 generates
`
`read/write control signals that are applied to the control leads 423 of cache memory
`
`bus 420 to select and activate memory device 411.”) and 14:53–58 (“A read
`
`control signal is concurrently applied by memory control circuit 442 to the control
`
`leads 423 of the cache memory bus 420 to activate the selected memory device 411
`
`to retrieve the requested data record and apply this data record to the data leads 421
`
`8
`
`
`
`of the cache memory bus 420.”); U.S. Patent No. 5,875,486 (Ex. 1025), at Abstract
`
`(“a specification circuit for specifying sequentially memory cells … and for
`
`entering them in an active state.”), 5:64–65 (“A signal CE is a signal which
`
`indicates the active period of the memory device 1.”), and 6:14–17 (“When the CE
`
`signal is switched to the ‘H’ level, … the memory enters the inactive state.”)
`
`(emphasis added in the Reply.). Thus, VWGoA demonstrated that Kniffin’s
`
`memory is activated by the truck access control device as a result of the truck
`
`access control device receiving signals from the clearinghouse.
`
`B. The Board misapprehended the relevance of Kniffin’s
`description of storing and reprogramming memory
`
`
`
`In addition, the Board misapplied Petitioner’s analysis of Kniffin’s storing
`
`and reprogramming of memory 68, by referring to Kniffin’s identification device
`
`70, and by referring to apparatus program memory described by the ’130 patent.
`
`Neither discussion addresses the invalidity analysis that was presented in the
`
`Petition.
`
`
`
`First, the Board stated that, “[n]or does Petitioner explain the import or
`
`impact of the signal sent from identification device 70.” Decision, 14. VWGoA
`
`did not address the identification device 70 (i.e. the identification device at the
`
`delivery locations) because the identification device 70 is immaterial to the access
`
`controller 64 storing or reprogramming data in memory in response to the
`
`transmission from the clearinghouse. Before Kniffin’s truck 62 ever interacts with
`
`9
`
`
`
`identification device 70, the schedule of deliveries is stored or reprogrammed in
`
`the memory in response to a signal from the clearinghouse. The Board’s remarks
`
`suggest that it conflated VWGoA’s separate positions in the Petition that either the
`
`access lock 12 or the memory 64 could properly be considered to constitute the
`
`vehicle component being activated
`
`in response
`
`to
`
`the signal from
`
`the
`
`clearinghouse.
`
`Second, the Board’s reliance on the specification of the ’130 patent was
`
`improper, and does not address VWGoA’s invalidity analysis presented in the
`
`Petition. In finding that Petitioner had not shown that “the mere act of storing
`
`information in memory discloses the disputed limitation,” the Board only referred
`
`to the specification of the ’130 patent. See Decision, pp, 14-15. Yet, the invalidity
`
`analysis must focus on the claims; it is improper to conduct an invalidity analysis
`
`by comparing the prior art to the specification, and to conclude that the claims are
`
`patentable based on such an improper analysis, rather than to compare the claims
`
`to the prior art.
`
`Moreover, the Board compared Kniffin’s storing of data in memory to the
`
`’130 patent’s data used for authorization, further indicating that it was not
`
`addressing VWGoA’s invalidity analysis. Instead of focusing on the storing or
`
`reprogramming of Kniffin’s memory 68, the Board focused on how the Kniffin
`
`uses the data after it has already been stored. The Board stated that, “Kniffin’s
`
`10
`
`
`
`stored schedule of stops appears to be similar to the stored data described in the
`
`’130 patent” and that the “[t]he control device of the ’130 patent, however, is not
`
`responsive to the stored data, but rather it responds to the program code.” Id.
`
`(citing the ’130 patent, 32:51-57). The’130 patent compares received program
`
`commands with “data that may be stored in apparatus program memory” to prevent
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`unauthorized access. Id., p. 15 (citing the ’130 patent, 32:39-50).
`
`VWGoA’s analysis, however, is entirely unrelated to how the data is used
`
`once it is stored. The Petition instead relies on Kniffin’s storing or reprogramming
`
`of data in memory to show that an in-vehicle component (memory) is activated
`
`(data is stored or reprogrammed) in response to signals from the intermediate
`
`device (the clearinghouse). VWGoA’s analysis does not rely on the specific type
`
`of data described by Kniffin, or what the data does after it is stored or
`
`reprogrammed in the memory. VWGoA’s analysis only relies on the fact that
`
`Kniffin describes storing or reprogramming memory
`
`in response
`
`to
`
`the
`
`clearinghouse. Therefore, when the Board distinguished the ’130 patent from
`
`Kniffin because the ’130 patent’s control device is not responsive to the stored data
`
`(Decision, p. 15), the Board did not address the analysis presented in the Petition—
`
`the Petition does not argue that any control device is responsive to Kniffin’s stored
`
`data. The Board’s comparison of Kniffin’s actively storing data in response to
`
`signals from the clearinghouse, to the ’130 patent’s “stored data” for authorization
`
`11
`
`
`
`checks,
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`is clearly erroneous, and
`
`further demonstrates
`
`that
`
`the Board
`
`misapprehended VWGoA’s showing.
`
`IV.
`
`CONCLUSION
`
`
`
`For the reasons set forth above, Petitioner respectfully requests that the
`
`Board grant this request for rehearing and find that Petitioner has made an
`
`adequate showing that claims 26, 31, 38, 42, 43, 48, 60, 63, 64, 73, 74, 85, 138,
`
`139, and 143 are invalid in view of the prior art cited in the Petition
`
`
`
`Dated: February 27, 2017
`
`
`
`/Clifford A. Ulrich/
`Michael J. Lennon, Lead Counsel
`Reg. No. 26,562
`mlennon@kenyon.com
`Clifford A. Ulrich, Backup Counsel
`Reg. No. 42,194
`culrich@kenyon.com
`Andrews Kurth Kenyon LLP
`One Broadway
`New York, NY 10004
`Tel: 212.425.7200
`Fax: 212.425.5288
`
`
`
`
`12
`
`
`
`CERTIFICATE OF SERVICE
`
`The foregoing PETITIONER’S REQUEST FOR REHEARING
`
`
`
`UNDER 37 C.F.R. § 42.71(d) was served on February 27, 2017, via email upon
`
`the following:
`
`Raymond A. Joao, Reg. No. 35,907
`rayjoao@optonline.net
`René A. Vazquez, Reg. No. 38,647
`rvazquez@sinergialaw.com
`
`/Clifford A. Ulrich/
`Michael J. Lennon, Lead Counsel
`Reg. No. 26,562
`mlennon@kenyon.com
`Clifford A. Ulrich, Backup Counsel
`Reg. No. 42,194
`culrich@kenyon.com
`Andrews Kurth Kenyon LLP
`One Broadway
`New York, NY 10004
`Tel: 212.425.7200
`Fax: 212.425.5288
`
`
`
`1
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`
`
`
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