UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
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`VOLKSWAGEN GROUP OF AMERICA, INC.
`Petitioner,
`v.
`JOAO CONTROL & MONITORING SYSTEMS, LLC
`Patent Owner
`________________
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`Case IPR2015-01612
`Patent 7,397,363
`________________
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`PRELIMINARY RESPONSE OF PATENT OWNER
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`Preliminary Response of Patent Owner
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`TABLE OF CONTENTS
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`Page
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`I. INTRODUCTION ............................................................................................... 1
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`II. BACKGROUND ................................................................................................ 2
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` A. Overview of the ‘363 Patent .......................................................................... 2
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` B. Prosecution History of the ‘363 Patent .......................................................... 3
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` 1. Original prosecution .................................................................................. 3
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` 2. Reexamination of the ‘363 Patent .............................................................. 4
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` C. Petition Overview .......................................................................................... 5
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`III. CLAIM CONSTRUCTION ............................................................................... 9
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` A. Legal Standards .............................................................................................. 9
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` B. Petitioner has Failed to Submit Claim Constructions for Key Terms
` Supporting its Invalidity Arguments ........................................................... 12
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` C. “processing device” ...................................................................................... 14
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` 1. Each “processing device” is separate and distinct from the claimed vehicle
` systems being controlled .......................................................................... 15
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` 2. Each “processing device” is separate and distinct from the communication
` system or the communication network, or any component of same, on,
` over, via, or in conjunction with, which they operate ............................. 17
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` D. “remote” ....................................................................................................... 20
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` E. “located at” ................................................................................................... 21
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` A. Ground 1 ...................................................................................................... 22
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` 1. Kniffen fails to teach the “third processing device” of claim 21 ............ 22
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`IV. THE PROPOSED GROUNDS FAIL TO MEET THE BURDEN OF
` SHOWING A REASONABLE LIKELIHOOD OF PREVAILING ............... 22
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` 2. Kniffen fails to teach the “first processing device” and “second
` processing device” of claim 21 ............................................................... 29
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` 3. Spaur fails to teach the “first processing device” and “second
` processing device” of claim 21 ............................................................... 30
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` 4. The USPTO has already determined that claim 21 is patentable over the
` combination of Kniffen and Spaur ......................................................... 34
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` 5. The combination of Kniffen and Spaur fails to render obvious the subject
` matter of claims 21, 24, 27, 30, 31 and 33 .............................................. 35
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` B. Ground 2 ...................................................................................................... 36
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` C. Ground 3 ...................................................................................................... 36
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` 1. Spaur fails to teach the “second processing device” of claim 68 ........... 36
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` D. Ground 4 ...................................................................................................... 37
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`VII. CONCLUSION .............................................................................................. 37
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`LIST OF EXHIBITS
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`Description
`Exhibit
`EX2001 Notice of Intent to Issue Ex Parte Reexamination Certificate
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`iii iii
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`Preliminary Response of Patent Owner
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`I.
`INTRODUCTION
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`Patent Owner Joao Control & Monitoring Systems, LLC (“JCMS”)
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`respectfully submits this Preliminary Response of Patent Owner (“Preliminary
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`Response”) in accordance with 35 U.S.C. § 313 and 37 C.F.R. § 42.107. This
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`Preliminary Response responds to the Petition for Inter Partes Review
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`(“Petition”) filed by Petitioner regarding claims 21, 24, 27, 29-31, 33, 68, 69, 72,
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`74, 77 and 80 (“Challenged Claims”) of U.S. Patent No. 7,397,363 (“the ‘363
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`Patent”).
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`This Preliminary Response is timely filed under 35 U.S.C. § 313 and 37
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`C.F.R. § 42.107, as it is filed within three months of the August 4, 2015 date of
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`the Notice of Filing Date Accorded to Petition and Time for Filing Patent Owner
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`Preliminary Response (Paper No. 3).
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`JCMS requests that the Board not institute an inter partes review (“IPR”)
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`because Petitioner has failed to demonstrate a reasonable likelihood of prevailing
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`with respect to any of the Challenged Claims, thereby failing to meet the
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`threshold for institution under 35 U.S.C. § 314(a).
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`The four proposed grounds of rejection are substantively flawed, in that
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`none of the cited references teach important properly construed claim limitations.
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`Petitioner’s expert, Mr. Scott Andrews, makes statements and opines on
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`issues related to: (1) the state of the art at the time of the invention; (2) the prior
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`art used in Petitioner’s grounds of rejection; and (3) how the prior art renders the
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`claims unpatentable. However, Petitioner has
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`failed
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`constructions for certain key terms in the claims that support Mr. Andrews’
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`opinions, and that support Petitioner’s invalidity arguments. As such, Mr.
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`Andrews’ analysis and declaration is fundamentally flawed and should be given
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`no weight.
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`Petitioner’s failure to construe certain key terms renders an evaluation of
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`the merits of Petitioner’s invalidity arguments impossible. This failure alone is
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`sufficient reason to deny institution of inter partes review.
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`In the end, the Petition is materially deficient and fails to set forth
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`sufficient evidence that Petitioner has a reasonable likelihood of prevailing with
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`respect to any of the Challenged Claims, as required under 35 U.S.C. § 314(a).
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`JCMS respectfully submits that the Board should conserve resources by declining
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`to institute this meritless proceeding.
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`II. BACKGROUND
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`A. Overview of the ‘363 Patent
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`The ‘363 Patent is directed to a novel and unconventional system for, inter
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`alia, remotely-controlling and/or monitoring systems located at vehicles and
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`premises. EX1001 at 26. The Challenged Claims are directed to a specially
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`assembled and programmed distributed control and monitoring system for
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`vehicles, wherein control functions for a vehicle or for a vehicle system, vehicle
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`equipment system, vehicle component, vehicle device, vehicle equipment, or
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`vehicle appliance, of a vehicle, can be distributed among three separate and
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`distinct processing devices, each of which can generate or transmit a separate and
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`distinct signal in order to control and/or detect a state of disrepair of a separate
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`fourth device of or at the vehicle, which is the respective vehicle system, vehicle
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`equipment system, vehicle component, vehicle device, vehicle equipment, or
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`vehicle appliance.
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`B.
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`Prosecution History of the ‘363 Patent
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`1.
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`Original prosecution
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`The patent application that issued as the ‘363 patent was filed on
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`September 16, 2002. EX1001. The ‘363 patent issued on July 8, 2008. Id.
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`During prosecution, the Applicant chose to be his own lexicographer and
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`provided explicit definitions for various terms, including “processing device,”
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`“remote” and “located at,” in “Supplement to the Remarks for the Amendment
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`filed on October 24, 2007” filed on November 23, 2007 during prosecution of the
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`patent application that issued as the ‘363 patent (see EX1007, hereinafter “First
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`Remarks”).
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`2.
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`Reexamination of the ‘363 Patent
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`Ex Parte Reexamination Control No. 90/013,303 (hereinafter “the ‘363
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`Reexam”) was requested by Petitioner on July 21, 2014, challenging claim 21 of
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`the ‘363 Patent. Reexamination was ordered on September 17, 2014.
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`In a first Office Action dated December 19, 2014 (hereinafter “the First
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`Office Action”), the Examiner rejected claim 21 under the doctrine of
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`obviousness-type double patenting, in view of claim 13 U.S. Patent No.
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`6,542,076, and as being obvious over Spaur. Patent Owner submitted a response
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`to the First Office action on January 20, 2015, and also conducted an interview
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`with the Examiner on February 3, 2015. In response, the Examiner issued an
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`Office Action dated March 31, 2015 (hereinafter “the Second Office Action”) in
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`which he vacated the double patenting rejection and the obviousness rejection
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`based on Spaur. However, the Examiner rejected claim 21 again as being obvious
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`over Spaur in view of Kniffen.
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`Patent Owner submitted a response on June 1, 2015. The Examiner found
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`Patent Owner’s arguments persuasive, and issued a Notice of Intent to Issue Ex
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`Parte Reexamination Certificate on July 29, 2105 (EX2001, hereinafter
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`“Notice”).
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`In the Notice, the Examiner stated “[u]pon further analysis of Patent
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`Owner’s arguments of June 1, 2015, and reconsideration of the facts and
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`evidence, it has been found that this rejection would result in a system
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`unsatisfactory for its intended purpose, and thus would not have been obvious.”
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`(emphasis added). EX2001 at 4. The Examiner elaborated by saying that “the
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`prior art combination would result in a system where the third device (see office
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`action at p. 3) would lack a mechanism to receive or control the direction of
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`signals to the appropriate devices on the vehicle. The proposed combination
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`would thus produce a device which is essentially non-operational, and thus
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`unsatisfactory for its intended purpose.” Id. (emphasis added) (citing the Second
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`Office Action at p. 3).
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`Thus, the Examiner concluded that the combination of Spaur and Kniffen
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`fails to render obvious the subject matter of claim 21.
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`C.
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`Petition Overview
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`Petitioner has proposed four grounds of invalidity and relies on the
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`following three references:
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`1.
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`3.
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`U.S. Patent No. 6,072,402 to Kniffin (“Kniffin”);
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`U.S. Patent No. 5,732,074 to Spaur (“Spaur”); and
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`U.S. Patent No. 5,081,667 to Drori (“Drori”).
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`The table below summarizes Petitioner’s grounds of invalidity.
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`Ground
`1
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`2
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`3
`4
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`Claims
`21, 24, 27, 30,
`31 and 33
`29
`68, 69, 74, 77
`and 80
`72
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`Proposed Rejections
`obvious over Kniffen in view of Spaur
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`obvious over Kniffen in view of Spaur and
`Drori
`anticipated by Spaur
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`obvious in view of Spaur
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`Claims 21 and 68 are independent claims. They are reproduced below:
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`21. An apparatus, comprising:
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`a first processing device, wherein the first processing device at least
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`one of generates a first signal and transmits a first signal for at least one of
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`activating, deactivating, disabling, re-enabling, and controlling an operation of, at
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`least one of a vehicle system, a vehicle equipment system, a vehicle component, a
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`vehicle device, a vehicle equipment, and a vehicle appliance, of or located at a
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`vehicle, wherein the first processing device is associated with a web site, and
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`further wherein the first processing device is located at a location remote from
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`the vehicle,
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`wherein the first processing device at least one of generates the first
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`signal and transmits the first signal in response to a second signal, wherein the
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`second signal is a at least one of generated by a second processing device and
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`transmitted from a second processing device, wherein the second processing
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`device is located at a location which is remote from the first processing device
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`and remote from the vehicle, wherein the first processing device determines
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`whether an action or an operation associated with information contained in the
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`second signal, to at least one of activate, de-activate, disable re-enable, and
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`control an operation of, the at least one of a vehicle system, a vehicle equipment
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`system, a vehicle component, a vehicle device, a vehicle equipment, and a
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`vehicle appliance, is an authorized or an allowed action or an authorized or an
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`allowed operation, and further wherein the first processing device at least one of
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`generates the first signal and transmits the first signal to a third processing device
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`if the action or the operation is determined to be an authorized or an allowed
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`action or an authorized or an allowed operation, wherein the third processing
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`device is located at the vehicle,
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`wherein the second signal is transmitted to the first processing
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`device via, on, or over, at least one of the Internet and the World Wide Web, and
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`further wherein the second signal is automatically received by the first processing
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`device, wherein the first signal is transmitted to and automatically received by the
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`third processing device, wherein the third processing device at least one of
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`generates a third signal and transmits a third signal for at least one of activating,
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`de-activating, disabling, re-enabling, and controlling an operation of, the at least
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`one of a vehicle system, a vehicle equipment system, a vehicle component, a
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`vehicle device, a vehicle equipment, and a vehicle appliance, in response to the
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`first signal.
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`68. An apparatus, comprising:
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`a first processing device, wherein the first processing device at least
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`one of monitors and detects an event regarding at least one of a vehicle system, a
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`vehicle equipment system, a vehicle component, a vehicle device, a vehicle
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`equipment, and a vehicle appliance, of a vehicle, wherein the first processing
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`device is located at the vehicle, and further wherein the event is a detection of a
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`state of disrepair of the at least one of a vehicle system, a vehicle equipment
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`system, a vehicle component, a vehicle device, a vehicle equipment, and a
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`vehicle appliance, wherein the first processing device at least one of generates a
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`first signal and transmits a first signal to a second processing device, wherein the
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`first signal contains information regarding the event, and further wherein the
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`second processing device is located at a location which is remote from the
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`vehicle, wherein the second processing device automatically receives the first
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`signal, and further wherein the second processing device at least one of generates
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`a second signal and transmits a second signal to a communication device,
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`wherein the second signal is transmitted to the communication device via, on, or
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`over, at least on of the Internet and the World Wide Web, wherein the
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`communication device is located remote from the second processing device, and
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`wherein the communication device automatically receives the second signal, and
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`further wherein the communication device provides information regarding the
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`event.
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`III. CLAIM CONSTRUCTION
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`A.
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`Legal Standards
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`A claim term in an unexpired patent must be given its “broadest reasonable
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`interpretation in light of the specification of the patent in which it appears.” 37
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`C.F.R. § 42.100(b) (emphasis added); see also In re Cuozzo Speed Techs., LLC,
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`778 F.3d 1271, 1281 (Fed. Cir. 2015). The “broadest reasonable interpretation” is
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`not the same as the broadest possible interpretation; the construction must be
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`consistent with the one those skilled in the art would reach. See In re Cortright,
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`165 F.3d 1353, 1359 (Fed. Cir. 1999). The focus of the inquiry must be on the
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`ordinary and customary meaning as understood by one of ordinary skill in the art
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`at the time of the invention and in the context of the entire patent disclosure. See,
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`e.g., In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010); In re
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`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).1
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`“[A] patentee may choose to be his own lexicographer” and assign special
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`definitions to the words in the claim, as long as those definitions are clearly
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`stated in the patent specification or file history. Vitronics Corp. v. Conceptronic,
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`Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (citing Hoechst Celanese Corp. v. BP
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`Chems. Ltd., 78 F.3d 1575, 1578 (Fed. Cir. 1996)). Therefore, “it is always
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`1 Given the differing claim constructions standards that are mandated to be used
`by the district courts in litigation, JCMS reserves the right to advance different
`claim construction positions in district court.
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`necessary to review the specification to determine whether the inventor has used
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`any terms in a manner inconsistent with their ordinary meaning. The
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`specification acts as a dictionary when it expressly defines terms used in the
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`claims or when it defines terms by implication.” Id. Because the specification
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`must contain a description sufficient to those of ordinary skill in the art to make
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`and use the invention, the specification “is the single best guide to the meaning of
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`a disputed claim term.” Id.
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`The prosecution history of the patent is also important to a proper claim
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`construction. As a complete record of proceedings before the U.S. Patent and
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`Trademark Office, it may contain representations made by the applicant
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`regarding the scope of the claims. Vitronics, 90 F.3d at 1582. “The patentee is
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`bound by representations made and actions that were taken in order to obtain the
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`patent.” Phillips, 415 F.3d at 1317 (quoting Chimie v. PPG Indus., Inc., 402 F.3d
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`1371, 1384 (Fed. Cir. 2005)). The prosecution history limits the meaning of
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`claim terms “so as to exclude any interpretation that was disclaimed during
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`prosecution.” Southwall, 54 F.3d at 1576. Prior art, some of which may be
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`contained in the file history, is also important because a valid claim cannot read
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`on, or cover within its scope, what is disclosed in the prior art. See General
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`American Transportation Corp. v. Cryo-Trans, Inc., 93 F.3d 766, 771 (Fed. Cir.
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`1996).
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`B.
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`Petitioner has Failed to Submit Claim Constructions for Key
`Terms Supporting its Invalidity Arguments
`The Board has previously emphasized that if the Petitioner does not
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`explain how the Challenged Claims should be construed and how they read on
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`the prior art, then a reasonable likelihood of success is not established:
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`“It is the Petitioner’s burden to explain how the
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`Challenged Claims are to be construed and how they
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`read on the prior art. 37 C.F.R. § 42.104(b)(3)-(5).
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`Petitioner has not done so sufficiently on this record
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`with respect to the limitation of claims 1, 45, 46, and 47
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`requiring a “color changing cycle.” Accordingly,
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`Petitioner has not demonstrated a reasonable likelihood
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`of success in showing the subject matter of claims 1-11,
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`26-34, and 45-47 would have been obvious in view of
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`Wu and Chliwnyj.” Jiawei Technology (HK) LTD. et al
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`v. Simon Nicholas Richmond, IPR2014-00937, Paper 22
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`at 8.
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`Similarly, Petitioner has failed to propose claim constructions for certain
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`key terms in the claims, and thus has failed to provide constructions for key terms
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`that support Mr. Andrews’ opinions, and that support Petitioner’s invalidity
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`arguments. Petitioner’s failure to construe these key terms renders an evaluation
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`of the merits of Petitioner’s invalidity arguments impossible, and thus Petitioner
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`has failed to demonstrate a reasonable likelihood of success in showing that any
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`of the claims of the ‘363 Patent are anticipated or rendered obvious in view of the
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`art cited in Grounds 1-4.
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`Below are Patent Owner’s proposed constructions for the following key
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`terms, which Patent Owner submits are necessary to properly evaluate the merits
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`of Petitioner’s invalidity arguments: (1) “processing device;” (2) “remote”; and
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`(3) “located at.” As discussed supra, these key terms were defined by the
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`Applicant in the First Remarks filed on November 23, 2007 during prosecution of
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`the patent application that issued as the ‘363 Patent (EX1007). These definitions
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`provided by the Applicant during prosecution of the ‘363 Patent constitute
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`intrinsic evidence regarding the construction of these key claim terms.
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`In his submission to the USPTO, the Applicant also provided the page and
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`line numbers where support for each of the definitions is located in the original
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`specifications of the ‘363 Patent. By defining each of these terms in the
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`prosecution history, the ‘363 Applicant has chosen to be his own lexicographer.
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`See CCS Fitness Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)
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`(“[A] claim term will not receive its ordinary meaning if the patentee acted as his
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`own lexicographer and clearly set forth a definition of the disputed term...”).
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`Moreover, in the First Remarks, the Applicant stated “[a]pplicant provides the
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`following definitions for the following terms or phrases which appear in certain
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`of the pending Claims.” Thus, it is clear that the Applicant unequivocally and
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`intentionally defined the terms in the manner discussed infra.
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`C.
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`“processing device”
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`The term “processing device” appears in independent claims 21 and 68 and
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`its construction is necessary to interpret the meaning of the claims. Petitioner has
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`offered no construction for this key term.
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`As discussed supra, Applicant chose to be his own lexicographer and
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`provided an explicit definition for the term “processing device” in the First
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`Remarks. EX1007 at 9-10. Accordingly, the term “processing device” should be
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`construed as “a device or a computer, or that part of a device or a computer,
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`which performs an operation, an action, or a function, or which performs a
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`number of operations, actions, or functions.” This proposed construction is
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`consistent with Applicant’s definition of the term “processing device” in the First
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`Remarks, and is also supported by and is consistent with the Specification of the
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`‘363 Patent, including the written description, the drawings and the claims.
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`Further, “processing device” is separate and distinct from the claimed vehicle
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`systems being controlled and is separate and distinct from the communication
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`system or the communication network, or any component of same, on, over, via,
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`or in conjunction with, which they operate.
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`Each “processing device” is separate and distinct from the
`1.
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` claimed vehicle systems being controlled
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`As discussed supra, the Challenged Claims are directed to a specially
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`assembled and programmed distributed control system for vehicles, wherein
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`control and/or monitoring functions for a vehicle or for a vehicle system, vehicle
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`equipment system, vehicle component, vehicle device, vehicle equipment, or
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`vehicle appliance, can be distributed among three separate and distinct
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`“processing devices,” each of which can generate or transmit a separate and
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`distinct signal in order to control a separate fourth device of or at the vehicle,
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`which is the respective vehicle system, vehicle equipment system, vehicle
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`component, vehicle device, vehicle equipment, or vehicle appliance.
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`With reference to independent claims 21 and 68, throughout the
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`Specification and the intrinsic evidence, the “first processing device” of claim 21
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`and the “second processing device” of claim 68 can be seen as being served by
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`the “Server Computer 510” in Figure 5B, by the “Computer 970” in Figure 11A,
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`and by either the “Server Computer 952” or the “Computer 970” in Figure 11B.
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`EX1001 at 11, 19 and 20.
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`As and for an example, Figure 11B clearly depicts an illustrative
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`embodiment of Claim 21 showing the “third processing device” as being the
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`“CPU 4”, showing the “first processing device” as being either “Server Computer
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`952” or the “Computer 970”, and showing the “second processing device” as
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`being the “Home And/Or Personal Computer 150”. Figure 11B also clearly
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`depicts the CPU 4 as being a device separate and distinct from each of the
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`various “Vehicle Equipment System(s) 11”, each of which can be controlled in
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`one way or another by the separate and distinct CPU 4 (the “third processing
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`device” of Claim 21). It is clear, throughout the Specification and the intrinsic
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`evidence of the ‘363 Patent, that the CPU 4 (the “third processing device” of
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`Claim 21), which is illustrated throughout the various embodiments of Figures 1,
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`5A, 5B, 9, 11A, 11B, 12, 13, and 14, is a device which is separate and distinct
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`from any of the vehicle equipment systems 11 identified and described in the
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`Specification and the intrinsic evidence.
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`The CPU 4 (the “third processing device” of Claim 21) is specifically
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`described as being a separate and distinct entity from any of the numerous
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`vehicle systems, vehicle equipment systems, vehicle components, vehicle
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`devices, vehicle equipment, or vehicle appliances. Thus, it is clear that each
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`“processing device” is separate and distinct from the claimed vehicle systems
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`being controlled and/or monitored.
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`Each “processing device” is separate and distinct from the
`2.
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` communication system or the communication network, or any
` component of same, on, over, via, or in conjunction with,
` which they operate
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`The Specification and the intrinsic evidence of the ‘363 Patent also make it
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`clear and unequivocal that a component of a communication system or
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`communication network, such as the CDPD network modem of Spaur, cannot
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`serve as and cannot function as a “processing device.” Specifically, it is
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`abundantly clear that each “processing device” can generate or transmit a
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`separate and distinct signal, and that each “processing device” is: (1) not merely a
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`relay device or a modem; (2) not a device which simply retransmits a signal that
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`it receives; and (3) is separate and distinct from the communication system or the
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`communication network, or any component of same, on, over, via, or in
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`conjunction with, which they operate. Put simply, the Specification and the
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`intrinsic evidence of the ‘363 Patent is clear and unequivocal that a component of
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`a communication system or communication network, such as, for example, the
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`CDPD network modem of Spaur, cannot serve as and cannot function as the
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`"second processing device" of claim 68.
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`The Specification and the intrinsic evidence of the ‘363 Patent are replete
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`with examples which disclose that the apparatus and method of the present
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`invention, of which the apparatus of claim 68 is an embodiment, operates on,
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`over, via, or in conjunction with, a communication system or a communication
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`network, and that no relay device, modem, or component of the communication
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`system or the communication network, is relied upon as, or can serve as or can
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`function as, any “second processing device” of claim 68.
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`Specifically, the Specification and the intrinsic evidence of the ‘363 Patent
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`include numerous examples which disclose that the apparatus of the present
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`invention, of which the apparatus of claim 68 is an embodiment, operates on,
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`over, via, or in conjunction with, a communication system or a communication
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`network. In this regard, by the meaning of the words “on,” “over,” “via,” and “in
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`conjunction with,” the apparatus of claims 21 and 68, and each of the “first
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`processing device”, the “second processing device”, and the “third processing
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`device”, are separate and distinct entities from any communication system or any
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`communication network, or any relay device or modem, or any component of any
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`communication system or any communication network, on, over, via, or in
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`conjunction with, which the apparatus and any of the “first processing device”,
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`the “second processing device”, and the “third processing device” operate.
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`Patent Owner respectfully submits that the words “on”, “over”, “via” and
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`“in conjunction with”, as used extensively in the Specification and in the intrinsic
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`evidence, imply a separateness or a distinctiveness, such that when a first entity is
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`used “on”, “over”, “via”, or “in conjunction with”, a second entity, it is
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`understood that the first entity and the second entity are not the same thing and
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`that they do not share the same component parts.
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`Petitioner has failed to propose a construction for the term “processing
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`device,” and thus has not identified or provided any support from the
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`Specification or the intrinsic evidence of the ‘363 Patent to support Petitioner’s
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`position that the “second processing device” of claim 68 can be construed in such
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`a manner that the CDPD network modem of Spaur can serve as or can function as
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`the "second processing device" of claim 68. Further, this position contradicts the
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`Specification and the intrinsic evidence of the ‘363 Patent.
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`For at least the reasons set forth above, when the meaning of the term
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`“second processing device” is properly ascertained in light of the Specification
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`and the intrinsic evidence of the ‘363 Patent, as prescribed by and in accordance
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`with Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) and MPEP
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`§2111.01, the “second processing device” of claim 68 cannot be construed in
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`such a manner so that the CDPD network modem of Spaur can serve as or can
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`function as the "second processing device.” Such a construction for the “second
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`processing device” disregards, is inconsistent with, and contradicts, the
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`Specification and the i