UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.
`Petitioner
`
`Patent No. 7,397,363
`Issue Date: July 8, 2008
`Title: CONTROL AND/OR MONITORING APPARATUS AND METHOD
`__________________________________________________________________
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,397,363
`PURSUANT TO 35 U.S.C. § 312 and 37 C.F.R. § 42.104
`
`Case No. IPR2015-01612
`__________________________________________________________________
`
`
`
`

`
`
`
`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. 
`The ’363 Patent .................................................................................... 3 
`B. 
`Prosecution History of the ’363 Patent ................................................ 8 
`1. 
`The Original Prosecution ........................................................... 8 
`2. 
`Reexamination of the ’363 Patent ............................................ 13 
`Patents and Printed Publications Relied On ....................................... 14 
`C. 
`Statutory Grounds for Challenge (37 C.F.R. § 42.104(b)(1)-(2)) ...... 15 
`D. 
`Claim Construction (37 C.F.R. § 42.104(b)(3)) ................................. 15 
`E. 
`IV.  How Challenged Claims Are Unpatentable (37 C.F.R. § 42.104(b)(4)-
`(5)) ................................................................................................................ 18 
`A. 
`Claims 21, 24, 27, 30, 31, and 33 are Obvious in view of the
`Combination of Kniffin and Spaur ..................................................... 18 
`1. 
`Kniffin ...................................................................................... 19 
`2. 
`Spaur ........................................................................................ 21 
`3. 
`The Combination of Kniffin and Spaur ................................... 22 
`Claim 29 is Obvious in View of the Combination of Kniffin,
`Spaur, and Drori ................................................................................. 43 
`Claims 68, 69, 74, 77, and 80 are Anticipated in view of Spaur ....... 47 
`C. 
`Claim 72 is Obvious in view of Spaur ............................................... 59 
`D. 
`Conclusion .................................................................................................... 60 
`
`
`B. 
`
`V. 
`
`
`i
`
`

`
`LISTING OF EXHIBITS
`
`U.S. Patent No. 7, 397,363 to Joao
`
`U.S. Patent No. 6,072,402 to Kniffin
`
`U.S. Patent No. 5,070,320 to Ramono
`
`U.S. Patent No. 5,732,074 to Spaur
`
`U.S. Patent No. 5,081,667 to Drori
`
`Declaration of Scott Andrews
`
`Supplement to the Remarks for the Amendment Filed on
`October 24, 2007
`
`Response to Office Action, June 1, 2015
`
`
`
`Ex. 1001
`
`Ex. 1002
`
`Ex. 1003
`
`Ex. 1004
`
`Ex. 1005
`
`Ex. 1006
`
`Ex. 1007
`
`
`Ex. 1008
`
`
`
`ii
`
`

`
`
`
`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 (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-cv-7), ACTI
`
`1
`
`

`
`
`
`(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), Webcamnow.com (2:11-cv-8257); in the Northern District of California,
`
`Sling Media (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 (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.: 08/622,749; 08/883,467; 10/420,795; 10/781,751; 11/180,822;
`
`12/150,363; 60/187,735; 60/190,379; U.S. Pat. Nos. 5,917,405; 6,549,130;
`
`6,542,076; 6,542,077; 7,277,010; and 6,587,046; 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, -01611, -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. 7,397,363 (“the ’363 patent,” Ex. 1001)
`
`for which review is sought is available for inter partes review and that it 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 21, 24, 27, 29, 30, 31, 33, 68, 69, 72, 74, 77, and 80
`
`of the ’363 Patent under 35 U.S.C. §§ 102 and 103, and cancelation of those claims
`
`is requested.
`
`A. The ’363 Patent
` The ’363 patent issued to Raymond Joao on July 8, 2008, from U.S. Patent
`
`Application Serial No. 10/244,334 (“the ’334 application”), filed September 16,
`
`2002. The ’363 patent describes a remote-controlled control, monitoring, and/or
`
`security apparatus, and may be linked to “a variety of vehicle equipment systems.”
`
`4:56-57. Such vehicle systems may include alarms, horns, power door locks, video
`
`recording devices, cellular or mobile phones, or vehicle recovery systems. 4:61-
`
`5:8. Independent claim 21 of the ’363 patent includes three processing devices: a
`3
`
`

`
`
`
`first processing device which receives signals from a second processing device and
`
`transmits signals to a third processing device for controlling a vehicle component.
`
`The first processing device is located remote from the vehicle, the second
`
`processing device is located remote from the first processing device and the
`
`vehicle, and the third processing device is located at the vehicle. The first
`
`processing device is associated with a web site, and transmission of the signal from
`
`the second processing device to the first processing device is achieved via the
`
`Internet or the World Wide Web. Ex. 1006, ¶¶ 3-6.
`
` Claim 21 is reproduced below (emphasis added):
`
`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,
`4
`
`

`
`
`
`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 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.
` Similarly, independent claim 68 of the ’363 patent includes three devices, one
`
`of which is in the vehicle, communicating with each other: a first processing
`
`device monitors the vehicle for a state of disrepair, transmits a signal about the
`
`5
`
`

`
`
`
`detection of a state of disrepair to a second processing device, which in turn
`
`transmits a signal to a communication device over the Internet or World Wide
`
`Web. The communication device provides information regarding the detection of
`
`the state of disrepair. That is, the claimed communication of claim 68 occurs in
`
`reverse of claim 21; the in-vehicle device sends signals to a remote device, which
`
`sends signals to a further remote device, to provide information about the vehicle.
`
`Ex. 1006, ¶ 7.
`
` Claim 68 is reproduced below (emphasis added):
`
`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
`
`6
`
`

`
`
`
`communication device, wherein the second signal is transmitted to the
`communication device via, on, or over, at least on 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.
` The ’363 patent describes the use of a remote transmitter system 2, remote from
`
`the apparatus 1 and the motor vehicle. 21:52-56. 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.” 22:1-4.
`
` Responsive to the remote transmitter system 2 is a receiver 3, which “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” (22:45-49), such as a beeper or pager system (22:55). The system
`
`contains a controller or CPU 4, “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.”
`
`23:46-50. The CPU 4 is connected to, and controls, vehicle systems. 24:28-25:8.
`
`“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
`
`may be, the respective vehicle equipment system(s) 11 which are utilized in
`
`conjunction with the apparatus 1.” 31:24-28; Ex. 1006, ¶ 3.
`7
`
`

`
`
`
` The ’363 patent also describes that “[a] home and/or personal computer, and/or
`
`other personal communications device and/or apparatus may also be utilized for
`
`performing the functions of the transmitter and the vehicle position and locating
`
`system receiver.” 6:10-13. Additionally, the transmission of data over the internet
`
`is contemplated: “The apparatus may also be utilized in conjunction with a
`
`computer network such as an on-line service and/or on, or over, the Internet and/or
`
`the World Wide Web, by employing an appropriate server computer and/or an
`
`associated Web Site and/or Web Site technology in conjunction with an
`
`appropriate communication medium.” 6:13-19; Ex. 1006, ¶ 4.
`
`B. Prosecution History of the ’363 Patent
`1. The Original Prosecution
`The ’363 patent issued from U.S. Patent Application Serial No. 10/244,334
`
`(“the ’334 application”), which was filed on September 16, 2002. In a June 27,
`
`2004 preliminary amendment, Joao amended the benefit claim to delete all
`
`applications filed prior to March 27, 1996, such that the earliest filing date claimed
`
`is the March 27, 1996 filing date of U.S. Patent Application Serial No. 08/622,749
`
`(“the ’749 application”).1
`
` During the prosecution of the ’363 patent, Applicant repeatedly canceled all
`
`
`1 VWGoA does not concede that any claim of the ’363 patent is entitled to a filing
`
`date earlier than the July 18, 1996 filing date of the ’828 application.
`
`8
`
`

`
`
`
`pending claims and submitted new claims, so that claims 65 and 84, which would
`
`eventually issue as claims 21 and 68, respectively, were first submitted on
`
`September 8 and 11, 2005. See Amendments of July 2 and December 11, 2005,
`
`and June 3, July 27, September 8,2 and September 11, 2006. Application claims 65
`
`and 84 were never rejected during prosecution, and were amended once before
`
`issuance (see Amendment, Oct. 24, 2007); those claims are below, as amended:
`
`65. 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 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
`
`
`2 Along with the September 8, 2006 amendment, Applicant submitted a Terminal
`
`Disclaimer over the related U.S. Patent No. 6,542,077 (“the ’077 patent”).
`
`9
`
`

`
`
`
`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
`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.
`84. 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
`10
`
`

`
`
`
`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 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.
` The claims were never rejected over the prior art. A Notice of Allowance was
`
`mailed on December 21, 2007, identifying the whole of the independent claims as
`
`the reasons for allowance. After yet another amendment (on April 3, 2008,
`
`unrelated to claims 65 or 84), a Supplemental Notice of Allowance issued on April
`
`17, 2008. The ’363 patent issued on July 8, 2008.
`
`11
`
`

`
`
`
` During prosecution of the parent U.S. Patent No. 5,917,405 (“the ’405 patent”),
`
`the claims were allowed only after being amended to include a chain of command
`
`signals communicated among three control devices, similar to the chain of three
`
`control devices recited in the claims of the ’363 patent. Prior to the amendment to
`
`include the chain of command signals communicated between three control
`
`devices, the Examiner had rejected the pending claims based on the prior art. The
`
`Examiner eventually allowed the claims of the ’405 patent, in a Notice of
`
`Allowance issued on October 29, 1998, stating (emphasis in original):
`
`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 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’.
` Moreover, during prosecution of the parent U.S. Patent No. 6,543,076 (“the
`
`’076 patent”),
`
`the Examiner
`
`identified
`
`the chain of command signals
`
`communicated among three control devices as the reasons for allowance:
`
`[T]here are no references teaching of a control apparatus for
`controlling of at least one of activating, deactivating, enabling and
`
`12
`
`

`
`
`
`disabling of at least one of a vehicle and 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 second control device
`which is located remote from the vehicle and the premises. And
`further wherein the second control device is responsive to a third
`signal which is generated by a third control device which is located at
`a location remote from the vehicle and the premises and remote from
`the second control device.
`See Notice of Allowance, May 30, 2001.
`
` Thus, it appears that the claims of the ’363 patent, having a similar chain of
`
`command signals among three control devices, was allowed for the same reasons
`
`that the claims of the ’405 and ’076 patents were allowed.
`
`2. Reexamination of the ’363 Patent
` Ex Parte Reexamination Control No. 90/013,303 (“the ’303 reexam”) was
`
`requested by VWGoA on July 21, 2014, challenging claim 21 of the ’363 patent. In
`
`ordering reexamination, the Examiner determined that the following prior art raises
`
`a substantial new question of patentability of claim 21: U.S. Patent No. 6,072,402
`
`(“Kniffin,” Ex. 1002), in the context of an obviousness-type double patenting
`
`rejection based on the ’076 patent, and the combination of U.S. Patent No.
`
`5,070,320 (“Ramono,” Ex. 1003) and U.S. Patent No. 5,732,074 (“Spaur,” Ex.
`
`1004). The Examiner initially rejected claim 21 under the doctrine of obviousness-
`
`type double patenting in view of claim 13 of the ’076 patent, and as obvious over
`13
`
`

`
`
`
`Spaur, in a December 19, 2014, Office Action. After an interview and a response
`
`to the Office Action, the Examiner vacated the obviousness-type double patenting
`
`rejection, and rejected claim 21 again, on March 31, 2015, as obvious over Spaur,
`
`as modified by Kniffin, a ground of rejection that was never proposed by VWGoA
`
`in its request for reexamination. After Joao’s response to the Office Action, the
`
`Examiner vacated the rejection on July 29, 2015, because “[t]he proposed
`
`combination would [] produce a device which is essentially non-operational, and
`
`thus unsatisfactory for its intended purpose.” That is, the rejection was vacated, not
`
`because any claim limitation was deemed absent from the prior art, but instead
`
`because modifying Spaur according to the disclosure of Kniffin was considered by
`
`the Examiner to be not obvious.
`
`C. Patents and Printed Publications Relied On
` U.S. Patent No. 6,072,402 (“Kniffin,” Ex. 1002), issued June 6, 2000, from
`
`U.S. Patent Application Serial No. 07/819,345, filed January 9, 1992, constitutes
`
`prior art against the ’363 patent at least under 35 U.S.C. § 102(e).
`
` U.S. Patent No. 5,732,074 (“Spaur,” Ex. 1004), issued March 24, 1998, from
`
`U.S. Patent Application Serial No. 08/586,602, filed January 16, 1996, constitutes
`
`prior art against the ’363 patent at least under 35 U.S.C. § 102(e).
`
` U.S. Patent No. 5,081,667 (“Drori,” Ex. 1005), issued January 14, 1992,
`
`constitutes prior art against the ’363 patent under 35 U.S.C. §102(b).
`
`14
`
`

`
`
`
`D. Statutory Grounds for Challenge (37 C.F.R. § 42.104(b)(1)-(2))
` Cancelation of claims 21, 24, 27, 29, 30, 31, 33, 68, 69, 72, 74, 77, and 80 is
`
`requested on the following grounds:
`
`B.
`
`A. Claims 21, 24, 27, 30, 31, and 33 are obvious under 35 U.S.C. §103(a)
`in view of the combination of Kniffin and Spaur
`Claim 29 is obvious under 35 U.S.C. § 103(a) in view of the
`combination of Kniffin, Spaur, and Drori
`Claims 68, 69, 74, 77, and 80 are anticipated under 35 U.S.C. § 102(e)
`in view of Spaur
`D. Claim 72 is obvious under 35 U.S.C. § 103(a) in view of Spaur
`E. Claim Construction (37 C.F.R. § 42.104(b)(3))
` The claim terms in an unexpired patent should be given their broadest
`
`C.
`
`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 ’363 patent, on its face, claims the benefit of the March
`
`27, 1996 filing date of the ’749 application, and therefore will expire on March 27,
`
`2016, possibly before a final written decision on this Petition.
`15
`
`

`
`
`
`
`
`In this case, whether the claims are reviewed under the “broadest reasonable
`
`interpretation” standard or the Phillips standard should not affect the interpretation
`
`of the challenged claims of the ’363 patent. The specification of the ’363 patent
`
`does not present any special definition for any claim term. The original prosecution
`
`history includes a supplemental paper on November 23, 2007 (Ex. 1007),
`
`purporting to provide definitions of certain claim terms and phrases (including,
`
`e.g., “at least one of … and …,” “communication device,” “Internet,” “located at,”
`
`“remote,” “processing device,” “signal,” “transmits,” “transmitted,” and “via, on,
`
`or over,” all of which appear in the claims challenged in this Petition), but the
`
`purported definitions do not define these terms in any way relevant to the question
`
`of whether the claims of the ’363 patent are unpatentable in view of the prior art
`
`presented in this Petition, or whether there is a reasonable likelihood that Petitioner
`
`will prevail with respect to the challenged claims.
`
` For example, Joao asserted that “at least one of … and …” means “only one
`
`item from the list, or any combination of items in the list”; that “communication
`
`device” means “a device which transmits a signal, data, information, or a message,
`
`or a device which receives a signal, data, information, or a message, or a device
`
`which can transmit a signal, data, information, or a message and which can receive
`
`a signal, data, information, or a message”; that “Internet” means “the Internet” or
`
`“the global computer communication network which consists of a vast collection
`
`16
`
`

`
`
`
`of many computer networks which spans the World and which communicate using
`
`a protocol family called TCP/IP and which is commonly referred to as ‘the
`
`Internet’”; that “located at” means “situated at, or situated in, or situated on”; that
`
`“processing device” should be defined as “a device or a computer, or that part of a
`
`device or a computer, which performs an operation, an action, or a function, or
`
`which performs a number of operations, actions, or function”3; that “remote”
`
`means “separate and apart from, or external from, or at a distance from or distance
`
`from, or not located in”; that “signal” means “an indication, or an indication having
`
`or conveying data, information, or a message, or a conveyor of data, information,
`
`or a message, or an indication representing data or information”; that “transmits”
`
`means “sends a signal, data, information, or a message, from a device, system, or
`
`location, to another device, system, or location”; that “transmitted” means “a
`
`signal, data, information, or a message, is sent from a device, system, or location,
`
`to another device, system, or location”; and that “via, on, or over” means “by
`
`means of, or by way of, or using, or utilizing.” Ex. 1007, at 2-14. Otherwise, the
`
`original prosecution history does not present any claim construction arguments.
`
`
`3 “The Supplement asserts a definition of “control device” that is verbatim identical
`
`to the asserted definition of “processing device,” and, thus, “processing device”
`
`and “control device” are synonymous. See Ex. 1007, at 5 and 8.
`
`17
`
`

`
`
`
`IV. How Challenged Claims Are Unpatentable (37 C.F.R. § 42.104(b)(4)-(5))
` As described above, the challenged claims of the ’363 patent were not rejected
`
`in view of the prior art, however, the claims of the parent ’405 and ’076 patents
`
`were allowed based on the recitation of three control devices (which, as stated
`
`above are synonymous with “processing devices”) and a particular chain of
`
`command signals communicated between the three control devices. As discussed
`
`below, the prior art cited herein describes such a chain of command signals
`
`communicated between three processing or control devices, so that the claims of
`
`the ’363 patent are unpatentable.
`
`A. Claims 21, 24, 27, 30, 31, and 33 are Obvious
`in view of the Combination of Kniffin and Spaur
` Claims 21, 24, 27, 30, 31, and 33 are obvious in view of the combination of
`
`Kniffin and Spaur under 35 U.S.C. § 103(a). Kniffin was not cited by the Examiner
`
`or Joao during the original prosecution of the ’363 patent. Spaur was cited by the
`
`Applicant during prosecution of the ’363 patent, but was not relied upon by the
`
`Examiner to reject the claims. As noted above, in the ’303 reexam, VWGoA
`
`asserted in its request for reexamination that the combination of Kniffin and Spaur
`
`raises a substantial new question of patentability affecting claim 21; however, in
`
`rejecting claim 21, the Examiner, sua sponte, elected to rely on different grounds,
`
`initi