UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.
`
`Petitioner
`
`
`Patent No. 6,549,130
`Issue Date: April 15, 2003
`Title: CONTROL APPARATUS AND METHOD FOR
`VEHICLES AND/OR FOR PREMISES
`__________________________________________________________________
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,549,130
`PURSUANT TO 35 U.S.C. § 312 and 37 C.F.R. § 42.104
`
`Case No. IPR2015-01611
`__________________________________________________________________
`
`
`
`
`
`

`
`
`
`I. 
`II. 
`III. 
`
`TABLE OF CONTENTS
`Mandatory Notices (37 C.F.R. § 42.8) ........................................................... 1 
`Grounds for Standing (37 C.F.R. § 42.104(a)) ............................................... 3 
`Identification of Challenge (37 C.F.R. § 42.104(b)(1)-(3)) and Relief
`Requested (37 C.F.R. § 42.22(a)(1)) .............................................................. 3 
`A. 
`Background of the ’130 Patent ............................................................. 3 
`1. 
`The ’130 Patent .......................................................................... 3 
`2. 
`Prosecution History of the ’130 Patent ...................................... 6 
`3. 
`Reexamination History of the ’130 Patent ................................. 9 
`Patents and Printed Publications Relied On ....................................... 11 
`B. 
`Statutory Grounds for Challenge (37 C.F.R. § 42.104(b)(1)–(2)) ..... 11 
`C. 
`Claim Construction (37 C.F.R. § 42.104(b)(3)) ................................. 12 
`D. 
`IV.  How Challenged Claims Are Unpatentable (37 C.F.R. § 42.104(b)(4)–
`(5)) ................................................................................................................ 13 
`A. 
`Claims 26, 38, 42, 43, 48, 63, 73, 74, 91, and 138 are
`Anticipated by Kniffin Under 35 U.S.C. § 102(e) ............................. 13 
`1. 
`Claims 26 and 38...................................................................... 15 
`2. 
`Claims 42 and 43...................................................................... 20 
`3. 
`Claims 48, 63, 73, and 74 ........................................................ 22 
`4. 
`Claim 91 ................................................................................... 25 
`5. 
`Claim 138 ................................................................................. 27 
`Claims 64, 85, and 92 are Obvious in View of Kniffin ..................... 40 
`1. 
`Claims 64 and 85...................................................................... 40 
`2. 
`Claim 92 ................................................................................... 45 
`Claim 31 is Obvious in View of the Combination of Kniffin and
`Ryoichi ............................................................................................... 48 
`Claims 60 and 139 Are Obvious in View of Kniffin and Drori ......... 51 
`Claim 143 is Obvious in View of the Combination of Kniffin
`and Neely ............................................................................................ 56 
`Conclusion .................................................................................................... 60
`
`V. 
`
`i
`
`A. 
`
`B. 
`
`C. 
`D. 
`
`

`
`
`
`Exhibit 1001
`
`Exhibit 1002
`
`Exhibit 1003
`
`Exhibit 1004
`
`
`Exhibit 1005
`
`
`Exhibit 1006
`
`Exhibit 1007
`
`Exhibit 1008
`
`Exhibit 1009
`
`
`Exhibit 1010
`
`
`Exhibit 1011
`
`
`Exhibit 1012
`
`
`Exhibit 1013
`
`
`Exhibit 1014
`
`
`Exhibit 1015
`
`
`LISTING OF EXHIBITS
`
`U.S. Patent No. 6,549,130 to Joao
`
`Declaration of Scott Andrews
`
`U.S. Patent No. 6,028,537 to Suman
`
`June 4, 2001 Notice of Allowability for U.S. Patent App.
`Ser. No. 09/277,935
`
`October 29, 1998 Notice of Allowability for U.S. Patent
`App. Ser. No. 08/683,828
`
`U.S. Patent No. 6,072,402 to Kniffin
`
`U.S. Patent No. 5,113,427 to Ryoichi
`
`U.S. Patent No. 5,081,667 to Drori
`
`September 17, 2014 Order Granting Ex Parte
`Reexamination, Control No. 90/013,301
`
`2015 Non-Final Office Action,
`20,
`January
`Reexamination Control No. 90/013,301
`
`March 18, 2015 Response to Non-Final Office Action,
`Reexamination Control No. 90/013,301
`
`May 12, 2015 Supplemental Response to Non-Final
`Office Action, Reexamination Control No. 90/013,301
`
`May 22, 2015 Final Office Action, Reexamination
`Control No. 90/013,301
`
`May 22, 2015 Final Office Action, Reexamination
`Control No. 90/013,300
`
`U.S. Patent No. 4,602,127 to Neely
`
`ii
`
`

`
`U.S. Patent No. 5,732,074 to Spaur
`
`U.S. Patent No. 5,808,566 to Behr
`
`U.S. Patent No. 5,726,984 to Kubler
`
`July 29, 2015 Notice of Intent to Issue Ex Parte
`Reexamination Certificate, Reexamination Control No.
`90/013,303
`
`June 1, 2015 Response to Office Action, Reexamination
`Control No. 90/013,303
`
`
`
`Exhibit 1016
`
`Exhibit 1017
`
`Exhibit 1018
`
`Exhibit 1019
`
`
`Exhibit 1020
`
`
`
`iii
`
`

`
`
`
`I. Mandatory Notices (37 C.F.R. § 42.8)
`
`Real-Party-in Interest: Volkswagen Group of America, Inc. (“VWGoA”), which is
`
`a subsidiary of Volkswagen AG.
`
`Related Matters: The following judicial matter may affect, or may be affected by, a
`
`decision in this inter partes review: Joao Control & Monitoring Systems, LLC v.
`
`Volkswagen Group of America, Inc., et al., No. 1:14-cv-517 (D. Del.), in which
`
`VWGoA and its subsidiary Bentley Motors, Inc. are defendants. Judicial matters in
`
`the following districts, against the following parties, may affect, or may be affected
`
`by, a decision in this inter partes review: in the District of Delaware, Nissan (1:14-
`
`cv-523), Mazda (1:13-cv-728), Mitsubishi (1:13-cv-00614), Jaguar Land Rover
`
`(1:13-cv-507), Verizon (1:14-cv-525), Cox (1:14-cv-520), Consolidated Edison
`
`(1:14-cv-519), Time Warner Cable (1:14-cv-524), Cablevision (1:14-cv-518),
`
`DirecTV
`
`(1:14-cv-521), DISH
`
`(1:14-cv-522), Alarm.com
`
`(1:14-cv-284),
`
`FrontPoint Security Solutions (1:13-cv-1760), Vivint (1:13-cv-508), American
`
`Traffic Solutions (1:13-cv243), and Ford (1:12-cv-1479); in the Eastern District of
`
`Michigan, Chrysler (4:13-cv-13957) and Ford (4:13-cv-13615 and 4:12-cv-14004);
`
`in the Southern District of New York, Chrysler (1:13-cv-53), City of Yonkers
`
`(1:12-cv-7734), Digital Playground (1:12-cv-6781), Liquid Cash (1:12-cv-6315),
`
`and Cenuco (7:05-cv-01037); in the Eastern District of New York, Slomin’s (2:14-
`
`cv-2598); in the Central District of California, Ford (2:12-cv-33), Hyundai (8:12-
`
`1
`
`

`
`
`
`cv-7), ACTI (8:10-cv-1909), Honda (2:12-cv-4013), Xanboo (2:12-cv-3698 and
`
`8:11-cv-604), Smartvue. (2:12-cv-3641), Digital Playground (2:12-cv-417), GSMC
`
`(2:11-cv-9636 and 2:11-cv-8697), Game Link (2:11-cv-9633 and 2:11-cv-8695),
`
`Ahava (2:11-cv-9638), and Webcamnow.com (2:11-cv-8257); in the Northern
`
`District of California, Sling Media, Inc. (3:11-cv-6277); in the Eastern District of
`
`Pennsylvania, LifeShield (2:15-cv-2772); in the Northern District of Illinois,
`
`Telular (1:14-cv-9852); in the District of Arizona, Mobile Integrated Solutions
`
`(2:14-cv-2643); in the Northern District of Georgia, Comverge, (1:14-cv-3862); in
`
`the Western District of North Carolina, CPI Security Systems (3:14-cv-202) and
`
`Lowe’s (5:13-cv-56); in the Western District of Texas, Protect America (1:14-cv-
`
`134); and in the Eastern District of Texas, Playboy (6:09-cv-499).
`
` The following administrative matters may affect, or may be affected by, a
`
`decision in this inter partes review: U.S. Pat. App. Ser. Nos.: 08/883,467;
`
`10/781,751; 11/180,822; and 12/150,363; U.S. Pat. Nos. 5,917,405; 6,542,076;
`
`6,542,077; 7,397,363; 7,277,010; 6,587,046; and 5,513,244; Reexamination
`
`Control Nos. 90/013,300; 90/013,301; 90/013,302; and 90/013,303; and Inter
`
`Partes Review Nos. IPR2015-01466, -01477, -01478, -01482, -01484, -01485, -
`
`01486, -01508, -01509, -01585, -01610, -01612, -01613, and -01645.
`
`Lead Counsel: Michael J. Lennon (Reg. No. 26,562).
`
`Backup Counsel: Clifford A. Ulrich (Reg. No. 42,194).
`
`2
`
`

`
`
`
`Service: VWGoA agrees to electronic service at the following email addresses:
`
`mlennon@kenyon.com and culrich@kenyon.com. Service may be made at the
`
`following address: Kenyon & Kenyon LLP, One Broadway, New York, NY 10004
`
`(Telephone: 212-425-7200; Facsimile: 212-425-5288).
`
`II. Grounds for Standing (37 C.F.R. § 42.104(a))
` VWGoA certifies that U.S. Patent No. 6,549,130 (“the ’130 patent,” Ex. 1001)
`
`is available for inter partes review and that VWGoA is not barred or estopped
`
`from requesting an inter partes review challenging the patent claims on the
`
`grounds identified in this petition.
`
`III. Identification of Challenge (37 C.F.R. § 42.104(b)(1)-(3)) and Relief
`Requested (37 C.F.R. § 42.22(a)(1))
` VWGoA challenges claims 26, 31, 38, 42, 43, 48, 60, 63, 64, 73, 74, 85, 91, 92,
`
`138, 139, and 143 of the ’130 patent under 35 U.S.C. §§ 102 and 103, and
`
`cancelation of these claims is requested.
`
`A. Background of the ’130 Patent
`1. The ’130 Patent
` The ’130 patent issued on April 15, 2003, from U.S. Application Serial No.
`
`09/277,935 (“the ’935 application”), filed on March 29, 1999. The ’130 patent
`
`claims the benefit of a number of earlier prior applications, the earliest of which
`
`was filed June 8, 1993.1
`
`
`1 VWGoA does not concede that any claim of the ’130 patent is entitled to a filing
`
`
`
`3
`
`

`
`
`
`The ’130 patent generally describes a control, monitoring, and/or security
`
`apparatus for vehicles that may be operated remotely, and may be linked to “a
`
`variety of vehicle equipment systems.” Col. 4, ll. 43–45. Such vehicle systems may
`
`include alarms, horns, power door locks, video recording devices, cellular or
`
`mobile phones, or vehicle recovery systems. Col. 4, ll. 49–63. Ex. 1002, ¶ 3.
`
`
`
`Importantly, independent claims 26, 42, 48, 91, and 138 recite three control
`
`devices: one control device at the vehicle, a second control device remote from the
`
`vehicle, and a third control device remote from the second control device and
`
`remote from the vehicle. These claims describe signals that are sent by the third
`
`control device, via the second control device, to the control device in the vehicle,
`
`such that the control device in the vehicle activates or deactivates a vehicle
`
`component in response to a received signal. Ex. 1002, ¶ 4.
`
` Figure 1 of the ’130 patent is illustrative of the system:
`
`
`
`date earlier than the March 29, 1999 filing date of the ’935 application.
`
`4
`
`

`
`
`
` The ’130 patent describes the use of a remote transmitter system 2 (shown in
`
`pink in Fig. 1 above), remote from both the apparatus 1 and the motor vehicle. Col.
`
`18, l. 64-col. 19, l. 2. The transmitter system may be “a touch tone telephone which
`
`may be a line-connected telephone, a cordless telephone and/or a cellular or mobile
`
`telephone.” Col. 19, ll. 12–16. Ex. 1002, ¶ 3.
`
` Responsive to the remote transmitter system 2 is a receiver 3, “for receiving the
`
`signals which are transmitted by the transmitter system 2.” Col. 19, lines 57–58.
`
`The receiver 3 (shown in orange above) “may be any receiver which is capable of
`
`receiving the remote electrical, electronic, electromagnetic, and/or other signals,
`
`which may be transmitted by the transmitter system 2.” Col. 19, ll. 58-61. In a
`
`preferred embodiment, the receiver 3 is a beeper or pager system. Col. 19, l. 66–
`
`col. 20, l. 1. Ex. 1002, ¶ 3.
`
` The system also includes a controller or CPU 4, “which is electrically
`
`connected with the receiver 3 and the transmitter 3A and which receives, or reads,
`
`whichever the case may be, the digital signal or signals, or portions thereof, which
`
`are received by the receiver 3 and/or generated by the receiver 3 in response to the
`
`received signal.” Col. 20, ll. 62–67. The CPU (shown in green above) is connected
`
`to various vehicle systems in order to control them. See col. 21, l. 44–col. 22, l. 37.
`
`“The vehicle equipment system or systems 11 receives signals from the CPU 4,
`
`which signals serve to activate or de-activate, or vice versa, whichever the case
`
`5
`
`

`
`
`
`may be, the respective vehicle equipment system(s) 11 which are utilized in
`
`conjunction with the apparatus 1.” Col. 24, l. 66–col. 25, l. 3. Ex. 1002, ¶ 3.
`
` Of the challenged claims, claims 26, 42, 48, 91, and 138 are independent;
`
`claims 31 and 38 depend from claim 26, claim 43 depends from claim 42, claims
`
`60, 63, 64, 73, 74, and 85 depend from claim 48, claim 92 depends from claim 91,
`
`and claims 139 and 143 depend from claim 138. The challenged claims describe
`
`monitoring and controlling features of vehicle systems, positioning devices, the
`
`transmission of signals, and vehicle diagnosis, and specify certain types of devices
`
`for the control devices.
`
`2. Prosecution History of the ’130 Patent
` As described in more detail below, the claims of the ’130 patent were allowed
`
`based on the claimed three control devices and a particular chain of command
`
`among the three control devices.
`
` During prosecution of the ’130 patent, Joao presented claims that include the
`
`three control devices, including application claim 21 which is reproduced below.
`
` 21. A control apparatus, comprising:
` a first control device, wherein said first control device one of generates
`and transmits a first signal for one of activating, de-activating, enabling,
`and disabling, one of a premises and the premises one of system,
`subsystem, component, device, equipment, and appliance, wherein said
`first control device is located at the premises;
` wherein said first control device is responsive to a second signal,
`
`6
`
`

`
`
`
`
`
`wherein the second signal is 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 premises, and further wherein the
`second control device is responsive to a third signal, wherein the third
`signal is 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 premises and remote from the second control device.
`In an Office Action dated December 4, 2000, the Examiner rejected claim 21,
`
`for example, under 35 U.S.C. § 102(e) as anticipated by U.S. Patent No. 6,028,537
`
`(“Suman,” Ex. 1003).
`
`
`
`In response, Joao only presented arguments that Suman is not prior art to the
`
`’935 application. Mar. 21, 2001 Amendment at 4.
`
` The Examiner then issued another Office Action, on April 16, 2001, in which
`
`all of the claims were rejected for obviousness-type double patenting in view of
`
`claims 1 to 20 of the parent patent, i.e., U.S. Patent No. 5,917,405 (“the ’405
`
`patent”). Joao thereafter submitted a Terminal Disclaimer over the ’405 patent.
`
`(copy included in Ex. 1001).
`
` A Notice of Allowance issued on June 4, 2001, Ex. 1004, in which the
`
`Examiner provided the following reasons for allowance, identifying the chain of
`
`three control devices:
`
`[T]here are no references teaching of a control apparatus for controlling
`of at least one activating, deactivating, enabling and disabling of at least
`
`7
`
`

`
`
`
`one of a premises having at least one of system, subsystem, component,
`equipment and appliance. Wherein the first control device is responsive
`to a second signal and the second signal is at least generated by a a [sic]
`second control device which is located remote from the premises. And
`further wherein the second control device is responsive to a third control
`signal which is generated by a third control device which is located at a
`location remote from the premises and remote from the second control
`device.
`The fact that the claims of the ’130 patent were allowed based on the claimed
`
`three control devices and a particular chain of command among the three control
`
`devices is consistent with the reasons for allowance of the parent ’405 patent,
`
`which also claims three control devices and a similar chain of command among the
`
`three control devices. As described above, the ’130 patent states on its face that it
`
`is a continuation of the ’405 patent. Moreover, as further described above, the
`
`claims of the ’130 patent were rejected for double patenting over the claims of the
`
`’405 patent, and Joao filed a terminal disclaimer over the ’405 patent. During its
`
`prosecution, independent claim 1 of the ’405 patent was allowed only after it was
`
`amended to describe the chain of three control devices. In allowing the claims of
`
`the ’405 patent, the Examiner expressly referred to this chain of three control
`
`devices in the statement of reasons for allowance:
`
`Examiner’s primary reason for allowance is in the environment of a
`control apparatus for a vehicle comprising, ‘a first control device,
`located at a vehicle, for generating and transmitting a control signal, first
`8
`
`

`
`
`
`control device is responsive to a second signal, second signal is
`generated and transmitted by a second control device remote from first
`control device and second control device is responsive to a third signal,
`third signal is generated and transmitted by a third control device, third
`control device is at a location remote from vehicle and second control
`device, in that signals are sequentially relayed from outside control
`devices to a control device within the vehicle’.
`Ex. 1005 (emphasis in original).
`
` Claims 26, 42, 48, 91, and 138 identify these same control devices in different
`
`orders, as shown in the table below; despite the differences in semantics and
`
`ordering, the challenged claims claim the same chain of command among the three
`
`control devices. The originating, middle, and in-vehicle control devices are the
`
`same across all claims of the ’130 patent, and so are identified in this Petition
`
`accordingly, to prevent confusion.
`
`
`
`
`
`
`First Control
`Device
`Third Control
`Device
`First Control
`Device
`Third Control
`Device
`Third Control
`Device
`
`Middle
`Originating
`Device
`Device
`Second Control
`Claim 26 Third Control
`Device
`Device
`Second Control
`Claim 42 First Control
`Device
`Device
`Second Control
`Claim 48 Third Control
`Device
`Device
`First Control
`Claim 91 Second Control
`Device
`Device
`Second Control
`Claim 138 First Control
`Device
`Device
`3. Reexamination History of the ’130 Patent
` Claim 48 of the ’130 patent is currently subject to an ex parte reexamination,
`9
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Vehicle
`Device
`Vehicle
`Device
`Vehicle
`Device
`Vehicle
`Device
`Vehicle
`Device
`
`

`
`
`
`Control No. 90/013,301 (the “’301 reexamination”). VWGoA requested
`
`reexamination of claim 48 on July 21, 2014, and reexamination was ordered on
`
`September 17, 2014. In the reexamination order, the Examiner determined that
`
`substantial new questions of patentability are raised by the prior art cited in the
`
`reexamination request, including U.S. Patent No. 6,072,402 (“Kniffin,” Ex. 1006),
`
`U.S. Patent No. 5,113,427 (“Ryoichi,” Ex. 1007), and U.S. Patent No. 5,081,667
`
`(“Drori,” Ex. 1008), cited herein. See Ex. 1009 at 7-19. On January 20, 2015, the
`
`Examiner issued an Office Action rejecting claim 48 as anticipated by, e.g.,
`
`Kniffin and Ryoichi. See Ex. 1010 at 7-13.
`
`
`
`Joao submitted a response to the Office Action on March 18, 2015, Ex. 1011,
`
`conducted an interview with the Examiner on May 5, 2015, and filed a
`
`supplemental response to the Office Action on May 12, 2015, Ex. 1012.
`
`Nevertheless, the Examiner issued a Final Office Action on May 22, 2015, again
`
`rejecting claim 48 as anticipated by, e.g., Ryoichi. See Ex. 1013 at 8-12. 2
`
` VWGoA notes that the Examiner, in the Final Office Action, did not repeat the
`
`anticipation rejection based on Kniffin; however, the Examiner stated that Joao’s
`
`arguments in its response and supplemental response were unpersuasive. See Ex.
`
`
`2 According to Public PAIR, an Advisory Action issued on July 31, 2015.
`
`However, this document was not available at the time of this Petition’s filing.
`
`10
`
`

`
`
`
`1013 at 17-23. Thus, there is no finding in the record that the Examiner determined
`
`that claim 48 is patentable over Kniffin. In addition, substantially the same claims
`
`as claim 48 in related patents are currently rejected in view of Kniffin in the ’405
`
`patent reexamination. See Control No. 90/013,300 (the “’300 reexamination”), July
`
`21, 2014 Final Office Action, Ex. 1014 at 4 and 9-10 (claim 1 rejected as
`
`anticipated by Kniffin).
`
`B. Patents and Printed Publications Relied On
`1. U.S. Patent No. 6,072,402 (“Kniffin,” Ex. 1004), issued June 6, 2000, from
`
`U.S. Patent Application Serial No. 07/819,345, filed January 9, 1992,
`
`constitutes prior art against the ’130 patent at least under 35 U.S.C. § 102(e).
`
`2. U.S. Patent No. 5,113,427 (“Ryoichi,” Ex. 1005), issued May 12, 1992,
`
`constitutes prior art against the ’130 patent under 35 U.S.C. § 102(b).
`
`3. U.S. Patent No. 5,081,667 (“Drori,” Ex. 1006), issued January 14, 1992,
`
`constitutes prior art against the ’130 patent under 35 U.S.C. § 102(b).
`
`4. U.S. Patent No. 4,602,127 (“Neely,” Ex. 1015), issued July 22, 1986,
`
`constitutes prior art against the ’130 patent under 35 U.S.C. § 102(b).
`
`C. Statutory Grounds for Challenge (37 C.F.R. § 42.104(b)(1)–(2))
`1. Claims 26, 38, 42, 43, 48, 63, 73, 74, 91, and 138 are invalid under 35 U.S.C. §
`
`102(e) as anticipated by Kniffin.
`
`2. Claims 64, 85, and 92 are invalid under 35 U.S.C. § 103(a) as obvious in view
`
`of Kniffin.
`
`11
`
`

`
`
`
`3. Claim 31 is invalid under 35 U.S.C. § 103(a) as obvious in view of the
`
`combination of Kniffin and Ryoichi.
`
`4. Claims 60 and 139 are invalid under 35 U.S.C. § 103(a) as obvious in view of
`
`the combination of Kniffin and Drori.
`
`5. Claim 143 is invalid under 35 U.S.C. § 103(a) as obvious in view of the
`
`combination of Kniffin and Neely.
`
`D. Claim Construction (37 C.F.R. § 42.104(b)(3))
` The claim terms in an unexpired patent should be given their broadest
`
`reasonable construction in view of the specification. 37 C.F.R. § 42.100(b). Claims
`
`terms in an expired patent are construed according to the principles of Phillips v.
`
`AWH Corp., 415 F.3d 1303, 1312, 1327 (Fed. Cir. 2005). See, e.g., Square, Inc. v.
`
`J. Carl Cooper, IPR2014-00157 (Paper No. 17) (PTAB Jun. 23, 2014) (citing In re
`
`Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012)). Under the Phillips standard, the
`
`claim terms are generally presumed to take on their ordinary and customary
`
`meaning, as would be understood by a person of ordinary skill in the art, at the
`
`time of the invention, considering the claim language, the specification, and the
`
`prosecution history. The ’130 patent, on its face, claims the benefit of the June 8,
`
`1993 filing date of U.S. Patent Application Serial No. 08/073,755, and therefore
`
`has expired. The specification of the ’130 patent does not present any special
`
`definition for any claim term, and the original prosecution history of the ’130
`
`12
`
`

`
`
`
`patent does not include any claim construction arguments.
`
` Therefore, these terms, as well as all other terms, should be given their ordinary
`
`and customary meaning.3
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`IV. How Challenged Claims Are Unpatentable (37 C.F.R. § 42.104(b)(4)–(5))
` As described above, the claims of the ’130 patent were allowed during
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`prosecution only after they were amended to describe three control devices and a
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`particular chain of command among the three control devices. As discussed below,
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`the prior art discussed herein describes the claimed chain of command among three
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`control devices, so that the claims of the ’130 patent are unpatentable.
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`A. Claims 26, 38, 42, 43, 48, 63, 73, 74, 91, and 138 are Anticipated by
`Kniffin Under 35 U.S.C. § 102(e)
` Claims 26, 38, 42, 43, 48, 63, 73, 74 and 138 are anticipated by Kniffin under
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`35 U.S.C. § 102(e). Kniffin, which was not cited during the prosecution of the ’130
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`patent, describes the claimed chain of three control devices, which was the basis
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`for the allowance of the ’130 patent and is the basis for the final rejection of claim
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`48 of the ’130 patent in the pending ’301 reexamination.
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` Kniffin describes the claimed chain of three control devices, e.g., access control
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`3 During reexamination, Joao presented no constructions for any claim term but
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`agreed that the terms of the ’130 patent should be given their ordinary and
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`customary meaning. See Ex. 1012 at 1-2.
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`13
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`device 64 (a control device located at a vehicle, i.e., an in-vehicle control device),
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`clearinghouse 18 or 66 (a control device located remote from the vehicle, i.e., a
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`middle device), and communications link 16 (a control device located remote from
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`the other remote control device and remote from the vehicle, i.e., an originating
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`device), sending control signals from one device to the next, culminating in the
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`activation (or deactivation) of a vehicle system, e.g., storing an authorized schedule
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`of deliveries in a memory. Referring to Figure 1, Kniffin discloses a secure entry
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`system 10, which includes telephone touch pad 22, communications link 16
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`(shown in pink), clearinghouse 18 connected to RF transmission system 26 (shown
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`in orange), and access control device 12 having a cellular, paging, or other RF
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`receiver 14. Col. 2,
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`ll. 25-53. In
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`this embodiment, a user establishes
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`communication over telephone 22 and communications link 16 to clearinghouse
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`18, which determines if the user is authorized to access the access control device
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`12. If so, clearinghouse 18 uses RF transmission system 26 to transmit a signal to
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`access control device 12, via RF receiver 14. Id; Ex. 1002, ¶¶ 11-12.
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`14
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`In a vehicle embodiment, access control device 64 is used to control the door
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`locks on a truck 62. Col. 8, ll. 11-14. Truck access control device 64 “can take the
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`same form as lock 12 of FIG. 1 (but with a lock mechanism adapted to secure the
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`doors of a delivery truck).” Col. 8, ll. 46-48; see Fig. 4 above. Ex. 1002, ¶ 13.
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`1. Claims 26 and 38
` Claim 26 is an independent claim, and claim 38 depends from claim 26. Claim
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`26 recites a first control device, located in a vehicle, sending a first signal for
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`activating, de-activating, disabling, and/or re-enabling a vehicle system,
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`component, device, equipment, equipment system, and/or appliance. According to
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`Kniffin, a delivery company may contact clearinghouse 66, and provide a schedule
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`of deliveries for the truck. Once clearinghouse 66 has verified the schedule of
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`deliveries, clearinghouse 66 transmits the schedule to the truck access control
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`device 64 (the in-vehicle control device located at truck 62), where the schedule is
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`stored in memory 68. Col. 8, ll. 15-24. The access control device 64 is adapted to
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`secure the doors of the truck 62 and guard against unauthorized opening. Col. 8, ll.
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`11-14 and 46-48. Kniffin states that the access control device 64 includes a lock
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`mechanism adapted to secure the doors of the truck as in Figure 1, and as shown in
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`Figure 1, the lock 12 includes a lock microprocessor CPU 30 that instructs (the
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`first signal) a lock mechanism 32 to unlock (activating a vehicle component). Col.
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`8, ll. 46-48; col. 3, l. 64-col. 4, l. 3; Ex. 1002, ¶¶ 11-13.
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`15
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` During the ’301 reexamination, Joao argued that Kniffin does not disclose an
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`intermediate device sending a signal to the vehicle system or component, because
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`the access control device 64 is located at the vehicle. However, as explained above,
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`Kniffin discloses that lock 12 (the access control device) instructs the lock
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`mechanism 32 to unlock and allow access, and thus the lock mechanism 32
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`corresponds to the activated vehicle component described in claim 26. Further, in
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`expressly rejecting the same argument in the reexamination of the ’405 patent, the
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`Examiner found there was no limitation precluding the recited vehicle component
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`from being a subcomponent of a larger system. Ex. 1014 at 8-10.4
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` Claim 26 recites that the first control device is responsive to a second signal
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`from a second control device located at a location remote from the vehicle.
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`Kniffin’s truck access control device 64 (the in-vehicle control device), located in
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`the vehicle, is responsive to signals from clearinghouse 18 or 66 (the middle
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`device), located remote from the vehicle 62. Clearinghouse 18 (the middle device)
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`of Figure 1 includes computer 20 and database 24 that communicates with the
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`4 Claim 26 of the ’130 patent recites “at least one of a vehicle system, a vehicle
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`component, a vehicle device, a vehicle equipment, a vehicle equipment system,
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`and a vehicle appliance,” underscoring the Examiner’s finding. Ex. 1001, col. 80,
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`ll. 5-7 (emphasis added).
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`16
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`access control device 12 via a radio transmission, e.g., by a paging or cellular
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`telephone system, or other RF carrier. Col. 2, ll. 44-49. Similarly, in the vehicle
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`embodiment, clearinghouse 66 (the middle device) transmits a signal to truck
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`access control device 64 (the in-vehicle control device). Col. 8, ll. 21-24.
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`Clearinghouse 66 receives signals from the telephone 22 and communications link
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`16, and includes an RF transmission system for transmitting the verified schedule
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`of stops. Moreover, truck access control device 64 (the in-vehicle control device) is
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`responsive to signals from clearinghouse 66 (the middle device), as Kniffin
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`discloses that truck access control device 64 may be reprogrammed by
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`clearinghouse 66. Col. 8, ll. 61-67; Ex. 1002, ¶¶ 11-13.
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` Claim 26 further recites that the second control device is responsive to a third
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`signal from a third control device located remote from the vehicle and from the
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`second control device. Kniffin describes a “user who seeks access to the lock
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`establishes communication (by a cellular telephone, by a conventional telephone,
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`or by some other communications link 16) to a clearinghouse 18;” the user
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`identifies the lock 12 to which access is desired, using, for example, a telephone’s
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`touch tone pad 22 (the originating device). Col. 2, ll. 31-43. In the vehicle
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`embodiment of Figure 4, the communications link 16 (the originating device) is
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`similarly illustrated in connection with clearinghouse 66 (the middle device).
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`Communication link 16 and telephone pad 22 (originating device) are remote from
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`17
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`clearinghouse 18 or 66 (middle devices) and delivery truck 62. Col. 8, ll. 61-67;
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`Ex. 1002, ¶¶ 11-13.
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`In view of the foregoing, Kniffin directly addresses the Examiner’s reasons for
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`allowing the claims of the ’130 patent, i.e., “a control apparatus for controlling of
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`at least one activating, deactivating, enabling and disabling of at least one of a
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`premises having at least one of system, subsystem, component, equipment and
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`appliance. Wherein the first control device is responsive to a second signal and the
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`second signal is at least generated by a a [sic] second control device which is
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`located remote from the premises. And further wherein the second control device is
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`responsive to a third control signal which is generated by a third control device
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`which is located at a location remote from the premises and remote from the
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`second control device.” Ex. 1002, ¶ 14.
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`In addition, claim 26 specifies that the vehicle system, component, device,
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`equipment, equipment system, or appliance may be, for example, a vehicle door,
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`hood, or trunk locking device. Kniffin describes that the access control device 64 is
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`used to secure the doors of the truck 62 and guard against unauthorized opening.
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`Col. 8, ll. 11-14 and 46-48. Kniffin states that the access control device 64 can
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`include a lock mechanism adapted to secure the doors of the truck as in Figure 1,
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`and as shown in this Figure, Kniffin states that the lock 12 includes a lock
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`microprocessor CPU 30 that instructs a lock mechanism 32 to unlock. Col. 8, ll.
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`18
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`46-48; col. 3, l. 64-col. 4, l. 3; Ex. 1002, ¶ 13.
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`In view of the foregoing, VWGoA submits that Kniffin discloses all of the
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`limitations of claim 26 and therefore anticipates claim 26.
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` Claim 38, which depends from claim 26, recites that the apparatus includes a
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`monitoring device for detecting “an occurrence” and providing information
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`regarding that occurrence by a telephone call, a voice message, a pager message,
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`an electronic mail message, and/or a fax tran