Trials@uspto.gov
`571.272.7822
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`
`
`
`Paper 23
`Filed: September 20, 2017
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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 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 filed by Administrative Patent Judge, CHUNG.
`
`WHITE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`
`

`

`IPR2015-01611
`Patent 6,549,130 B1
`
`
`I.
`
`INTRODUCTION
`
`Volkswagen Group of America, Inc., (“Petitioner”) requests rehearing
`of our Final Written Decision (Paper 21, “Final Dec.”), in which we held
`that Petitioner had shown by a preponderance of the evidence the
`unpatentability of claims 911 and 92 of U.S. Patent No. 6,549,130 B1 (“the
`’130 patent”) and failed to show by a preponderance of the evidence the
`unpatentability of claims 26, 31, 38, 42, 43, 48, 60, 63, 64, 73, 74, 85, 138,
`139, and 143 of the ’130 patent. Final Dec. 21. Specifically, Petitioner
`seeks rehearing as to the claims that had not been shown to be unpatentable
`by arguing that it had provided sufficient evidence and argument to show
`that Kniffin2 disclosed the claimed first control device which is responsive
`to a second signal. Reh’g Req. 1.
`
`II.
`
`STANDARD OF REVIEW
`
`A party dissatisfied with a decision of the Board may file a request for
`rehearing. 37 C.F.R. § 42.71(d). The party requesting rehearing has the
`burden of showing the decision should be modified, and “[t]he request must
`specifically identify all matters the party believes the Board misapprehended
`or overlooked, and the place where each matter was previously addressed in
`a motion, an opposition, or a reply.” Id.
`
`
`1 Petitioner states that we found that it “did not carry its burden to establish
`that . . . [Kniffin] anticipates independent claims 26, 42, 48, 91, and 138.”
`Paper 22 (“Reh’g Req.”), 2. In our Final Written Decision, however, we did
`find that claims 91 and 92 (claim 92 depends from claim 91) were
`unpatentable. See Final Dec. 21.
`
`2 U.S. Patent No. 6,072,402, filed Jan. 9, 1992 (Ex. 1006) (“Kniffin”).
`
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`IPR2015-01611
`Patent 6,549,130 B1
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`III. ANALYSIS
`
`Petitioner asserts that we overlooked and misapprehended its evidence
`and arguments. Reh’g Req. 4. Petitioner contends that it had shown
`sufficiently “that Kniffin describes an in-vehicle device (access control
`device 64) that is responsive to the signal from an intermediate device
`(clearinghouse 66), to activate a vehicle component.” Id. at 3 (citing Paper 2
`(“Pet.”), 14–17). For the reasons stated below, we are not persuaded by
`Petitioner’s arguments.
`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 device3 must respond to a signal from the second control device.
`Petitioner asserts that Kniffin discloses this limitation through its discussion
`of access control device 64 and clearinghouse 18 or 66. Pet. 13–14. We
`refer to claim 26 in this discussion, but the issues addressed here also apply
`to claims 42, 48, and 138. In our Final Written Decision, we held that
`Petitioner had not met its burden to show that Kniffin discloses this
`limitation and therefore, Petitioner had not met its burden to establish the
`
`
`3 As explained in the Final Written Decision, each of the independent claims
`recites three control devices and three signals. Final Dec. 11–12. The same
`three devices and related signals are recited in these claims, but the labels
`differ from claim to claim. Id. For example, the first control device of claim
`26 is the same as the third control device of claim 91. Id. For ease of
`reference, unless otherwise stated we will use the nomenclature set out in
`claim 26 to refer to the three control devices and their respective signals.
`2
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`IPR2015-01611
`Patent 6,549,130 B1
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`unpatentability of independent claims 26, 42, 48, and 138 and their
`dependent claims 31, 38, 43, 60, 63, 64, 73, 74, 85, 139, and 143. Final Dec.
`12–16.
`First, Petitioner argues that we overlooked evidence sufficient to
`establish that Kniffin discloses “a causal link between the clearinghouse and
`the storing of data in the in-vehicle memory.” Reh’g Req. 4. Petitioner then
`directs us to evidence cited in the Petition that describes the clearinghouse
`sending a verified schedule of deliveries to the access control device. Id. at
`5 (citing Pet. 15–17). Petitioner emphasizes that the schedule is received by
`the access control device and stored in memory. Id. at 6. Based on this,
`Petitioner asserts “that the truck . . . 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.” Id. at 7.
`We do not agree. In the Final Written Decision, we explained that in
`Kniffin, decisions as to whether to allow access were made “[i]n response to
`identification of the authorized user at the lock within the prescribed time
`period.” Final Dec. 14 (quoting Ex. 1006, 3:64–66). Thus, we found that
`Kniffin discloses an access control device responsive to a signal from
`identification device 70. Id. We were not persuaded that the access control
`device also was “responsive to” the signal from the clearinghouse. We
`acknowledged that Kniffin discloses a communication between the
`clearinghouse and the vehicle that is used by the in-vehicle component, but
`we were not persuaded that the proffered evidence was sufficient to establish
`the required responsiveness to that signal. This is discussed in our analysis
`of Petitioner’s challenge to claim 91.
`
`3
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`IPR2015-01611
`Patent 6,549,130 B1
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`We find that the schedule is stored in Kniffin’s access control
`device and later used in the processing to determine whether the
`lock should unlock. Thus, we are persuaded that Kniffin’s
`description of the clearinghouse sending a sequence of
`deliveries to the access control device discloses the claimed
`first signal “for . . . activating, de-activating, disabling, and re-
`enabling . . . a vehicle component.” In the previously discussed
`independent claims we were not persuaded that Petitioner has
`established that the in-vehicle device was “responsive” to the
`signal from the clearinghouse. We, however, are persuaded that
`Petitioner has established that the in-vehicle device uses the
`information from the clearinghouse in deciding whether to
`unlock the access control device and as such the schedule is
`transmitted for activating or de-activating the lock.
`
`Final Dec. 17.
`As noted in the Final Written Decision, claim 91 does not require that
`the first control device4 be “responsive to” the signal from the second
`control device. Final Dec. 11–12, 16. Claim 91 instead recites, in relevant
`part,
`
`a [second] signal for at least one of activating, deactivating,
`disabling, and re-enabling . . . a vehicle component . . . wherein
`the [second] signal is transmitted from the [second] control
`device to a [first] control device . . . [and] wherein the [second]
`control signal is automatically received by the [first] control
`device, wherein the [first] control device at least one of
`generates and transmits a [first] signal for at least one of
`
`
`4 As noted above, the claims recite the same three control devices in
`different orders. The third control device of claim 91 is the same as the
`second control device of claim 26. Final Dec. 11 (noting that claim 26’s
`third control device is equivalent to claim 91’s second control device; claim
`26’s second control device is equivalent to claim 91’s first control device;
`and claim 26’s first control device is equivalent to claim 91’s third control
`device). For ease of reference, we maintain the nomenclature used in claim
`26 when discussing the devices in claim 91.
`4
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`IPR2015-01611
`Patent 6,549,130 B1
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`activating, de-activating, disabling, and re-enabling . . . a
`vehicle component.
`
`Ex. 1001, 90:27–30, 90:43–57. Thus, in claim 91, the second signal must be
`“automatically received” and it must be “for at least one of activating,
`deactivating, disabling, and re-enabling” a vehicle component, but there is
`no requirement that the first control device be responsive to the second
`signal. We found Petitioner’s evidence to be persuasive as to this limitation,
`but we found that it was not sufficient for the “responsive to” limitation
`found in the other independent claims.
`Similar to claim 91, claim 26 also requires the second signal to be
`“automatically received” and to be generated and transmitted “for at least
`one of activating, de-activating, disabling, and re-enabling.” Claim 26,
`however, recites the additional limitation requiring the first control device to
`be “responsive to” the second signal. Thus, the language of claim 26
`indicates that the “responsive to” limitation requires something in addition to
`the receipt and use of the signal that we found to be sufficient for claim 91.
`We reviewed and considered the evidence that Petitioner revisits in its
`Request for Rehearing at the time we rendered our Final Written Decision,
`but we were not persuaded that this evidence was sufficient to show this
`additional requirement.
`Second, Petitioner asserts that we misapprehended the relevance of
`Kniffin’s description of storing and reprogramming memory. Reh’g Req. 9.
`Petitioner argues that the signal from Kniffin’s identification device 70 is
`“immaterial” because the schedule from Kniffin’s clearinghouse is stored or
`reprogrammed in memory before an interaction occurs between the truck
`and the identification device. Id. at 9–10. Further, Petitioner contends that it
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`IPR2015-01611
`Patent 6,549,130 B1
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`“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).” Id. at 11. Petitioner asserts that our “reliance on the
`specification of the ’130 patent was improper” and did not address the
`unpatentability analysis presented in the Petition. Id. at 10. Petitioner
`asserts that the act of storing/reprogramming the schedule in the memory of
`the access control device is sufficient evidence to show the recited control
`device “responsive to” a second signal. Id. at 9–10. In addition, Petitioner
`asserts that we misapprehended its argument because “the Petition does not
`argue that any control device is responsive to Kniffin’s stored data,” instead
`Petitioner’s argument is that by storing the data the memory is activated and
`that is sufficient. Id. at 11.
`Here, we also disagree with Petitioner. As noted in the Final Written
`Decision, we found that Petitioner did not provide a sufficient explanation as
`to “why storing a schedule in memory or reprogramming a device discloses
`the recited device responsive to a second signal.” Final Dec. 14. We
`explained that the specification of the ’130 patent differentiated between
`information stored in the device and signals to which the device was
`“responsive.” Id. at 15. Petitioner contends that we improperly relied on the
`specification of the ’130 patent as part of our analysis of the asserted
`grounds. Reh’g Req. 10. We do not agree. The claims are to be analyzed in
`light of the disclosures in the specification. We are tasked with performing
`this analysis without importing limitations from the specification into the
`claim. Our review of the disclosures of the specification aided us in
`determining whether the cited art provided a disclosure that was sufficient to
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`IPR2015-01611
`Patent 6,549,130 B1
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`meet the “responsive to” requirement at issue and we are not persuaded that
`this analysis was in error. We compared the stored data discussed in the
`specification with Kniffin’s stored schedule and contrasted those disclosures
`with the program code, which is described in the specification as the signal
`to which the control device is responsive. Final Dec. 15. Petitioner did not
`persuade us that storing a schedule in memory was sufficient to meet this
`“responsive to” limitation, in part, because we determined that the storage of
`the schedule was analogous to the storage described in the specification and
`as such, Kniffin’s storage of the schedule in the access control device was
`not sufficient to disclose the required “responsive to” limitation.
`We also are not persuaded that Kniffin’s reprogramming would meet
`this limitation. Kniffin allows the clearinghouse to send an updated
`schedule to the access control device and, upon the receipt of this new
`schedule, the access control device stores the new schedule in memory. See
`Ex. 1006, 8:61–67. This storage of the updated schedule is the
`“reprogramming” on which Petitioner relies. Reh’g Req. 9–11. For reasons
`described above, we determined that storing/reprogramming of a schedule is
`not sufficient to disclose the recited first control device which is responsive
`to a second signal because storing data was contemplated in the specification
`and it was not the same as the recited limitation. Final Dec. 14.
`
`IV. CONCLUSION
`
`The Request for Rehearing does not demonstrate that we
`misapprehended or overlooked any arguments or evidence in finding that
`Petitioner did not carry its burden to establish the unpatentability of 26, 31,
`38, 42, 43, 48, 60, 63, 64, 73, 74, 85, 138, 139, and 143 of the ’130 patent.
`
`7
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`IPR2015-01611
`Patent 6,549,130 B1
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`V.
`
` ORDER
`
`In consideration of the foregoing, it is hereby:
`ORDERED that the Request for Rehearing is denied.
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`IPR2015-01611
`Patent 6,549,130 B1
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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 DAVID C. MCKONE, STACEY G. WHITE, and JASON J.
`CHUNG, Administrative Patent Judges.
`
`
`
`CHUNG, Administrative Patent Judge, dissenting.
`
`
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`IPR2015-01611
`Patent 6,549,130 B1
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`I respectfully dissent from my esteemed colleagues’ decision for the
`same reasons I described in the Final Written Decision. Paper 21, 1–15
`(Chung, J., dissenting-in-part).
`
`
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`2
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`IPR2015-01611
`Patent 6,549,130 B1
`
`PETITIONER:
`
`Michael J. Lennon
`Clifford A. Ulrich
`KENYON & KENYON LLP
`mlennon@kenyon.com
`culrich@kenyon.com
`
`
`PATENT OWNER:
`
`Raymond A. Joao
`rayjoao@optonline.net
`
`René A. Vazquez
`SINERGIA TECHNOLOGY LAW GROUP, PLLC
`rvazquez@hgdlawfirm.com
`
`3
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