Trials@uspto.gov
`571-272-7822
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` Paper 7
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` Date: January 26, 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 IPR2015-01612
`Patent 7,397,363 B2
`____________
`
`
`Before HOWARD B. BLANKENSHIP, STACEY G. WHITE, and
`BETH Z. SHAW, Administrative Patent Judges.
`
`SHAW, 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 21, 24, 27, 29, 30, 31, 33, 68, 69,
`72, 74, 77, and 80 (“the challenged claims”) of U.S. Patent No. 7,397,363
`B2 (“the ’363 patent”). Paper 1 (“Pet.”). Patent Owner, Joao Control &
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`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 68, 69, 72, 74, 77, and
`80. See 35 U.S.C. § 314(a). Accordingly, we institute an inter partes
`review of claims 68, 69, 72, 74, 77, and 80.
`Based on the record before us, and exercising our discretion under
`35 U.S.C. § 325(d), we decline to institute review of independent claim 21,
`or of claims 24, 27, 29, 30, 31, and 33, which depend from claim 21.
`Petitioner’s challenge of claim 21 is based upon substantially the same prior
`art and arguments that were before the Office in the ex parte reexamination
`of the ’363 patent—Control No. 90/013,303— that resulted in a Notice of
`Intent to Issue Ex Parte Reexamination Certificate dated July 29, 2015 (Ex.
`2001). Accordingly, we decline to institute review of claims 21, 24, 27, 29,
`30, 31, and 33.
`
`A. Related Matters
`Petitioner and Patent Owner indicate that the ’363 patent or related
`patents have been asserted in a significant number of related cases. See Pet.
`1–2; Paper 5, 2–7.
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`B. The Asserted Grounds of Unpatentability
`Petitioner identifies the following as asserted grounds of
`unpatentability:
`
`
`Reference(s)
`Kniffin (Ex. 1002)1
`and Spaur (Ex. 1004)2
`Kniffin, Spaur, and
`Drori (Ex. 1005)3
`
`Basis
`
`§ 103(a)
`
`Challenged Claim(s)
`21, 24, 27, 30, 31,
`and 33
`
`§ 103(a)
`
`29
`
`Spaur
`
`Spaur
`
`
`
`§ 102(e)
`
`68, 69, 74, 77, and 80
`
`§ 103(a)
`
`72
`
`C. The ’363 Patent
`The ’363 patent is directed to controlling a vehicle or premises. Ex.
`1001, Abs. The ’363 patent describes a first control device which generates
`a first signal and is associated with a web site and located remote from a
`premises or vehicle. Id. The first control device generates the first signal in
`response to a second signal that is transmitted via the Internet from a second
`control device located remote from the first device and remote from the
`premises or vehicle. Id. The first device determines whether an action
`associated with the second signal is allowed, and if so, transmits the first
`signal to a third device located at the premises. Id. The third device
`
`
`1 U.S. Patent No. 6,072,402, filed Jan. 9, 1992.
`2 U.S. Patent No. 5,732,074, filed Jan. 16, 1996.
`3 U.S. Patent No. 5,081,667, filed Mar. 20, 1990.
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`generates a third signal for activating, de-activating, disabling, re-enabling,
`or controlling an operation of a system, device, or component of the
`premises or vehicle. See id.
`
`D. The Challenged Claims
`Petitioner challenges claims 21, 24, 27, 29, 30, 31, 33, 68, 69, 72, 74,
`77, and 80, of which claims 21 and 68 are the only independent claims.
`Claims 21 and 68 are illustrative and are reproduced below:
`21. An apparatus, comprising:
`a first processing device, wherein the first
`processing device at least one of generates a first signal and
`transmits a first signal for at least one of activating, de-
`activating, disabling, re-enabling, and controlling an operation
`of, at least one of a vehicle system, a vehicle equipment system,
`a vehicle component, a vehicle device, a vehicle equipment, and
`a vehicle appliance, of or located at a vehicle, wherein the first
`processing device is associated with a web site, and further
`wherein the first processing device is located at a location
`remote from the vehicle,
`wherein the first processing device at least one of
`generates the first signal and transmits the first signal in
`response to a second signal, wherein the second signal is a at
`least one of generated by a second processing device and
`transmitted from a second processing device, wherein the
`second processing device is located at a location which is
`remote from the first processing device and remote from the
`vehicle, wherein the first processing device determines whether
`an action or an operation associated with information contained
`in the second signal, to at least one of activate, de-activate,
`disable re-enable, and control an operation of, the at least one of
`a vehicle system, a vehicle equipment system, a vehicle
`component, a vehicle device, a vehicle equipment, and a vehicle
`appliance, is an authorized or an allowed action or an
`authorized or an allowed operation, and further wherein the first
`processing device at least one of generates the first signal and
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`transmits the first signal to a third processing device if the
`action or the operation is determined to be an authorized or an
`allowed action or an authorized or an allowed operation,
`wherein the third processing device is located at the vehicle,
`wherein the second signal is transmitted to the first
`processing device via, on, or over, at least one of the Internet
`and the World Wide Web, and further wherein the second
`signal is automatically received by the first processing device,
`wherein the first signal is transmitted to and automatically
`received by the third processing device, wherein the third
`processing device at least one of generates a third signal and
`transmits a third signal for at least one of activating, de-
`activating, disabling, re-enabling, and controlling an operation
`of, the at least one of a vehicle system, a vehicle equipment
`system, a vehicle component, a vehicle device, a vehicle
`equipment, and a vehicle appliance, in response to the first
`signal.
`
`68. An apparatus, comprising:
`a first processing device, wherein the first processing
`device at least one of monitors and detects an event regarding at
`least one of a vehicle system, a vehicle equipment system, a
`vehicle component, a vehicle device, a vehicle equipment, and a
`vehicle appliance, of a vehicle, wherein the first processing
`device is located at the vehicle, and further wherein the event is
`a detection of a state of disrepair of the at least one of a vehicle
`system, a vehicle equipment system, a vehicle component, a
`vehicle device, a vehicle equipment, and a vehicle appliance,
`wherein the first processing device at least one of generates a
`first signal and transmits a first signal to a second processing
`device, wherein the first signal contains information regarding
`the event, and further wherein the second processing device is
`located at a location which is remote from the vehicle, wherein
`the second processing device automatically receives the first
`signal, and further wherein the second processing device at least
`one of generates a second signal and transmits a second signal
`to a communication device, wherein the second signal is
`transmitted to the communication device via, on, or over, at
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`least one of the Internet and the World Wide Web, wherein the
`communication device is located remote from the second
`processing device, and wherein the communication device
`automatically receives the second signal, and further wherein
`the communication device provides information regarding the
`event.
`
`
`E. The Ex Parte Reexamination
`Ex Parte Reexamination Control No. 90/013,303 was requested by
`Petitioner on July 21, 2014, challenging claim 21 of the ’363 patent. Prelim.
`Resp. 4; Pet. 13. Reexamination was ordered on September 17, 2014.
`Prelim. Resp. 4. In a first Office Action dated December 19, 2014, the
`Examiner rejected claim 21 under the doctrine of obviousness-type double
`patenting, in view of claim 13 of U.S. Patent No. 6,542,076, and as being
`obvious over Spaur. Prelim. Resp. 4; Pet. 13–14. Patent Owner submitted a
`response to the First Office action on January 20, 2015, and also conducted
`an interview with the Examiner on February 3, 2015. Prelim. Resp. 4. In
`response, the Examiner issued an Office Action dated March 31, 2015, in
`which he vacated the double patenting rejection and the obviousness
`rejection based on Spaur. Prelim. Resp. 4; Pet. 14. The Examiner rejected
`claim 21 again as being obvious over Spaur in view of Kniffin. Prelim.
`Resp. 4; Pet. 14. Patent Owner submitted a response on June 1, 2015.
`Prelim. Resp. 5. The Examiner issued a Notice of Intent to Issue Ex Parte
`Reexamination Certificate on July 29, 2015. Ex. 2001. In the Notice, the
`Examiner stated “[u]pon further analysis of Patent Owner’s arguments of
`June 1, 2015, and reconsideration of the facts and evidence, it has been
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`found that this rejection would result in a system unsatisfactory for its
`intended purpose, and thus would not have been obvious.” Id. at 4.
`
`ANALYSIS
`A. Claim Construction
`Before proceeding with claim construction, we must determine the
`proper standard to apply. Petitioner and Patent Owner contend that the
`claims of the ʼ363 patent should be given their broadest reasonable
`construction. Prelim. Resp. 10–12. However, that standard is applicable
`only to unexpired patents. See 37 C.F.R. § 42.100(b) (“A claim in an
`unexpired patent shall be given its broadest reasonable construction in light
`of the specification of the patent in which it appears.”). In this case, if a trial
`proceeds, the patent will expire during the trial. For expired patents, we
`apply the Phillips standard used in district court patent litigation. Phillips v.
`AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
`The term of a patent grant begins on the date on which the patent
`issues and ends 20 years from the date on which the application for the
`patent was filed in the United States “or, if the application contains a
`specific reference to an earlier filed application or applications under section
`120, 121, or 365(c) of this title, from the date on which the earliest such
`application was filed.” 35 U.S.C. § 154(a)(2) (2002). The ’363 patent is
`subject to a terminal disclaimer with respect to U.S. Patent No. 6,542,077 B2
`(“’077 patent”). Ex. 1001 (76). The earliest patent application referenced
`for the benefit of priority under 35 U.S.C. § 120, for the ’077 patent, was
`filed on March 27, 1996, and the patent has a term extension of 40 days.
`The term of the ’363 patent, thus, will expire no later than May 6, 2016.
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`Because, on this record, we conclude that the term of the ’363 patent
`will expire prior to the end of the one-year period allotted for an inter partes
`review, for purposes of this Decision we treat the patent as expired. For
`claims of an expired patent, the Board’s claim interpretation is similar to that
`of a district court. See In re Rambus Inc., 694 F.3d 42, 46 (Fed. Cir. 2012).
`“In determining the meaning of the disputed claim limitation, we look
`principally to the intrinsic evidence of record, examining the claim language
`itself, the written description, and the prosecution history, if in evidence. . .
`.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005,
`1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). There is,
`however, a “heavy presumption” that a claim term carries its ordinary and
`customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359,
`1366 (Fed. Cir. 2002).
`
`B. Claim Terms
`Patent Owner argues that Petitioner has failed to propose claim
`constructions for certain terms, which “renders an evaluation of the merits of
`Petitioner’s invalidity arguments impossible.” Prelim. Resp. 13. Patent
`Owner proposes constructions for the terms “processing device,” “remote,”
`and “located at.” Id. We are not persuaded that express constructions of
`“processing device,” “remote,”, and “located at” are necessary in order to
`resolve the disputes currently before us. 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 turn now to Petitioner’s asserted
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`grounds of unpatentability to determine whether Petitioner has met the
`threshold standard of 35 U.S.C. § 314(a).
`
`C. Claim 21
`Patent Owner argues that we should decline to institute inter partes
`review under 35 U.S.C. § 325(d) because this Petition raises substantially
`the same issues, based on the same prior art that the Office already
`considered and rejected in the ex parte reexamination of the ’363 patent.
`Prelim. Resp. 34–35. Patent Owner also argues that Petitioner has not
`shown a reasonable likelihood of prevailing on the merits with respect to
`claim 21. See id. at 22–35.
`Petitioner acknowledges the ex parte reexamination, but asserts that
`“there is no indication the Examiner considered the disclosure of Spaur
`relating to the control of, e.g., the in-vehicle CD-ROM unit, by the remote
`terminal 60 via the Internet.” Pet. 27.
`Under 35 U.S.C. § 325(d),
`In determining whether to institute or order a proceeding
`under . . . chapter 31, the Director may take into account
`whether, and reject the petition or request because, the same or
`substantially the same prior art or arguments previously were
`presented to the Office.
`
`The only challenge to claim 21 presented by Petitioner is that claim 21
`would have been obvious over the combination of the Spaur and Kniffin.
`Pet. 18–43. As noted above, during the ex parte reexamination of the ’363
`patent, the Examiner explicitly considered the same argument that
`claim 21 would have been obvious over that same combination of prior art.
`Petitioner disagrees with the Examiner’s conclusion regarding that argument
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`and that prior art,4 but does not present any persuasive evidence to
`supplement the record that was in front of the Office during the
`reexamination.
`In sum, we agree with Patent Owner that the Petition does not present
`any persuasive evidence to supplement the record that was before the Office
`during the reexamination. Based on these facts, we conclude that the same
`prior art and substantially the same arguments were presented to the Office
`previously. We exercise our discretion and decline to institute an inter
`partes review of claim 21 under 35 U.S.C. § 325(d). Because we decline to
`institute an inter partes review of claim 21, we also decline to review claims
`24, 27, 29,5 30, 31, and 33, each of which depend from independent claim
`21.
`
`D. Anticipation of Claims 68, 69, 74, 77, and 80 by Spaur
`Petitioner asserts that claims 68, 69, 74, 77, and 80 are anticipated by
`Spaur. Pet. 47–58. As support, Petitioner provides detailed explanations as
`to how the combination of prior art meets each claim limitation. Id.
`Petitioner also relies upon the Declaration of Mr. Scott Andrews (Ex. 1006).
`
`
`4 Petitioner argues, in part, that the Examiner never considered Kniffin as
`modified by Spaur, but rather that the Examiner only considered Spaur as
`modified by Kniffin. See Pet. 18–19. Generally, it is “of no significance,
`but merely a matter of exposition, that the [unpatentability assertion] is
`stated to be on A in view of B instead of on B in view of A.” In re Bush,
`296 F.2d 491, 496 (CCPA 1961).
`
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` Petitioner alleges that claim 29 is obvious over the combination of Kniffin,
`Spaur, and Drori.
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`Upon consideration of Petitioner’s explanations and supporting
`evidence, we are persuaded by Petitioner’s contentions. For example, with
`respect to claim 68, Petitioner directs our attention to Spaur, which describes
`that data is transmitted from controller 30 via cellular phone 80 to the
`cellular digitized packet data (CDPD) network modem, and then transmitted
`over Internet 68 to computer terminal 60. Pet. 49 (citing Ex. 1004, 4:14–16,
`4:26–29, 7:13–47, Figs. 1, 2; Ex. 1006 ¶¶ 34–35). As another example, with
`respect to claim 69, which requires that the apparatus uses at least one of “an
`intelligent agent, a software agent, and a mobile agent, or the apparatus is
`programmed for at least one of automatic activation and automatic
`operation,” Petitioner directs our attention to Spaur’s disclosure of the web
`server 102 being programmed to provide a notification when a particular
`event occurs, such as when a vehicle reaches a location, or when a sensor
`measures a particular value. Id. at 50 (citing Ex. 1004,12:18–30).
`Patent Owner argues that the “second processing device” of claim 68
`is not taught by the CDPD network modem of Spaur. Prelim. Resp. 36–37.
`In particular, Patent Owner argues that “the Specification and the intrinsic
`evidence of the ’363 Patent is clear and unequivocal that a component of a
`communication system or communication network, such as, for example, the
`CDPD network modem of Spaur, cannot serve as and cannot function as the
`‘second processing device’ of claim 68.” Id. at 37, 17–20. On this record,
`we are not persuaded by this argument. Although Patent Owner argues that
`each processing device is not merely a relay device or modem (id. at 17–18),
`Patent Owner does not direct us to any persuasive evidence that the “second
`processing device” of claim 68 is not encompassed by Spaur’s teaching of a
`CDPD network modem.
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`Given the evidence in this record, we determine that Petitioner has
`demonstrated a reasonable likelihood of prevailing on its assertions that
`claims 68, 69, 74, 77, and 80 are anticipated by Spaur.
`
`E. Obviousness of Claim 72 over Spaur
`Claim 72 requires that “the communication device is at least one of a
`wireless device, a cellular telephone, and a personal digital assistant.” Ex.
`1001, 120:18–20. Petitioner argues that while Spaur does not explicitly
`describe the computer terminal 60 as a wireless device, Spaur describes a
`“wireless device” contained in the vehicle for transmitting and receiving
`information over an air link (Ex. 1004, 6:3–5), and further describes that
`such devices may be among vehicle devices 50 (id. at 10:1–9). Pet. 59.
`Therefore, according to Petitioner, using a wireless device, a cellular
`telephone, or a personal digital assistant as the communication device in the
`system described by Spaur would have been well within the understanding
`of a person of ordinary skill in the art at the time the alleged invention of
`claim 72 was made, and it would have been obvious to do so. Id. at 59–60
`(citing Ex. 1006 ¶ 40).
`Upon consideration of Petitioner’s explanations and supporting
`evidence, we are persuaded by Petitioner’s contentions. On this record, we
`are persuaded that Petitioner has established a reasonable likelihood of
`prevailing on its assertion that claim 72 is unpatentable over Spaur.
`
`III. CONCLUSION
`
`Upon consideration of the Petition and Preliminary Response, we
`determine that the information presented in the Petition establishes that there
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`is a reasonable likelihood that Petitioner would prevail in challenging claims
`68, 69, 72, 74, 77, and 80 of the ’363 patent as unpatentable.
`We exercise our discretion and decline to institute inter partes review
`on any of the asserted grounds as to claims 21, 24, 27, 29, 30, 31, and 33. 37
`C.F.R. § 42.108.
`At this juncture, we have not made a final determination with respect
`to the patentability of the challenged claims, nor with respect to claim
`construction.
`
`IV. ORDER
`
`Accordingly, it is
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`review is hereby instituted for the following grounds of unpatentability:
`
`Claims 68, 69, 74, 77, and 80 under 35 U.S.C. § 102(e) as anticipated
`by Spaur;
`
`Claim 72 under 35 U.S.C. § 103(a) as obvious over Spaur;
`
`FURTHER ORDERED that no other ground of unpatentability
`asserted in the Petition is authorized for this inter partes review; 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
`will commence 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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