Trials@uspto.gov
`571-272-7822
`
`
`
`
` Paper 22
`Entered: January 27, 2017
`
`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 IPR2015-01613
`Patent 5,917,405
`_______________
`
`
`
`Before DAVID C. MCKONE, STACEY G. WHITE, JASON J. CHUNG,
`Administrative patent Judges.
`
`Opinion for the Board filed by Administrative Patent Judge WHITE.
`Opinion Concurring filed by Administrative Patent Judge, CHUNG.
`
`WHITE, Administrative patent Judge.
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
` Paper 22
`Entered: January 27, 2017
`
`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 IPR2015-01613
`Patent 5,917,405
`_______________
`
`
`
`Before DAVID C. MCKONE, STACEY G. WHITE, JASON J. CHUNG,
`Administrative patent Judges.
`
`Opinion for the Board filed by Administrative Patent Judge WHITE.
`Opinion Concurring filed by Administrative Patent Judge, CHUNG.
`
`WHITE, Administrative patent Judge.
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
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`I. INTRODUCTION
`Volkswagen Group of America, Inc. (“Petitioner”) filed a Petition
`(Paper 2) requesting inter partes review of claims 1–3, 7, 8, 11, 12, 14, 16,
`17, 19, and 20 of U.S. Patent No. 5,917,405 (Ex. 1001, “the ’405 patent”)
`pursuant to 35 U.S.C. §§ 311–319. Joao Control & Monitoring Systems,
`LLC, (“Patent Owner”) filed a Preliminary Response. (Paper 6). Based on
`our review of these submissions, we instituted inter partes review of claims
`1–3, 7, 8, 11, 12, 14, 16, 17, 19, and 20 of the ‘405 patent on grounds of
`unpatentability asserted under 35 U.S.C. §§ 102, 103. Paper 11 (“Dec.”).
`Specifically, we authorized this inter partes review to proceed as to the
`following grounds:
`Claim(s) Challenged
`Basis
`Reference(s)
`§ 1022 1, 2, 7, 8, 11, 12, 14, 16, 17, 19, and 20
`Kniffin1
`§ 103
`3
`Kniffin and DiLullo3
`§ 102
`1, 2, 7, 8, 11, 12, 14, 16, 17, 19, and 20
`Ryoichi4
`Ryoichi and Mansell5 § 103
`3
`Id. at 19–20.
`
`
`1 U.S. Patent No. 6,072,402 (Ex. 1002) (“Kniffin”).
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29,
`revised 35 U.S.C. §§ 102, 103 and the relevant sections took effect on March
`16, 2013. Because the application from which the ’130 patent issued was
`filed before that date, our citations to Title 35 are to its pre-AIA version.
`3 U.S. Patent No. 4,897,642 (Ex. 1004) (“DiLullo”).
`4 U.S. Patent No. 5,113,427 (Ex. 1003) (“Ryoichi”).
`5 U.S. Patent No. 5,223,844 (Ex. 1005) (“Mansell”).
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`Patent Owner filed a Patent Owner’s Response (Paper 13, “PO
`Resp.”), and Petitioner filed a Reply (Paper 19, “Reply”). No oral hearing
`was conducted. Paper 21.
`We have jurisdiction under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons discussed below, Petitioner has demonstrated by a
`preponderance of the evidence that claims 1–3, 7, 8, 11, 12, 14, 16, 17, 19,
`and 20 of the ‘405 patent are unpatentable.
`
`A. Related Proceedings
`
`The parties inform us that the ʼ405 patent is at issue in numerous
`lawsuits pending in courts around the country. Paper 14, Pet. 1–2. In
`addition, ex parte reexamination No. 90/013,300 was filed with respect to
`the ’405 patent and has been stayed in light of this proceeding. Paper 16.
`The ’405 patent also is the subject of a co-pending petition for inter partes
`review (IPR2015-01585).
`
`B. The ʼ405 patent
`The ’405 patent describes a remote-controlled control, monitoring,
`and/or security apparatus and method for vehicles. Ex. 1001, 1:18–22. The
`apparatus described in the ’405 patent allows an owner, occupant, or other
`authorized individual to control or to perform various monitoring and
`security tasks in regards to a vehicle from a remote location and at any time.
`Id. at 2:64–3:3.
`An embodiment of the apparatus of the ’405 patent includes a
`transmitter system which is “a remote system, which may or may not be
`physically connected to the remainder of the apparatus. Further, the
`transmitter system is not located in the [vehicle] . . . , but rather, is located
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`external from, and/or separate and apart from, the vehicle.” Id. at 3:29–35.
`The apparatus also includes a CPU that is connected electrically and/or
`linked to one or more vehicle equipment systems (e.g., vehicle ignition or
`anti-theft systems). Id. at 4:12–17; 4:41–62. The vehicle equipment
`systems may be activated, de-activated, reset, or controlled by the apparatus.
`Id. at 4:63–67. This activation or control may be achieved by a user entering
`a code on the transceiver of the transmitter system. Id. at 6:9–15. The code
`is transmitted to the CPU and then the CPU communicates with the
`appropriate vehicle equipment system. Id. at 6:64–7:2.
`
`C. Illustrative Claim
`As noted above, we instituted inter partes review on claims 1–3, 7, 8,
`11, 12, 14, 16, 17, 19, and 20 of the ʼ405 patent, of which claims 1, 12, and
`16 are independent. Claim 1 is illustrative of the instituted claims and is
`reproduced below:
`1.
`A control apparatus for a vehicle, which comprises:
`
`a first control device, wherein said first control device one of
`generates and transmits a first signal for one of
`activating, deactivating, enabling, and disabling, one of a
`vehicle component, a vehicle device, a vehicle system,
`and a vehicle subsystem, wherein said first control device
`is located at the vehicle;
`
`wherein said first control device is responsive to a second
`signal, wherein the second signal is one of generated by
`and transmitted from a second control device, wherein
`the second control device is located at a location which is
`remote from the vehicle, and further wherein the second
`control device is responsive to a third signal, wherein the
`third signal is one of generated by and transmitted from a
`third control device, wherein the third control device is
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`located at a location which is remote from the vehicle
`and remote from the second control device.
`
`II. CLAIM CONSTRUCTION
`As acknowledged by the parties, the ’405 patent has expired. See
`Pet. 13; PO Resp. 6. We construe expired patent claims according to the
`principles set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)
`(en banc). See In re Rambus, 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). A patentee may act
`as a lexicographer by giving a term a particular meaning in the specification
`with “reasonable clarity, deliberateness, and precision.” In re Paulsen, 30
`F.3d 1475, 1480 (Fed. Cir. 1994).
`
`A. Term Preliminarily Construed in the Decision to Institute
`
`For purposes of the Decision to Institute, we construed the term
`“control device.” Dec. 5–8. Neither party raised any concerns regarding
`this constructions during trial. See PO Resp. 9; see generally Reply. Based
`on our review of the full record, we discern no reason to modify or further
`discuss in this Final Written Decision our construction for this claim term.
`For convenience, the claim construction is reproduced in the table below.
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`Term
`Control
`Device
`
`Construction
`Citations
`Ex. 2002, 6 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 functions.
`B. First, Second, and Third Signal Terms
`
`Patent Owner provides proposed constructions for the first, second,
`and third signal terms. PO Resp. 10–11. Specifically, Patent Owner asserts
`that the “first signal” is “a signal sent by a first device;” the “second signal”
`is “a signal sent by a second device;” and the “third signal” is “a signal sent
`by a third device.” Id. at 10.
`We agree, for example, that a first signal is sent by a first device. For
`example, claim 1 recites, in relevant part, that the “first control device”
`generates and transmits the first signal. The parties’ dispute, however, is
`directed to whether there may be an intermediate device between the
`transmitting device (e.g., second device) and the signal’s destination (e.g.,
`first device). In Patent Owner’s view, there may not be an intermediate
`device, between the first and second devices, that modifies or changes the
`signal. See PO Resp. 34–35.
`As part of our analysis, we note that the Applicant provided an
`express definition of the term “signal” in the First Remarks filed on
`November 23, 2007, during prosecution of the patent application that issued
`as the U.S. patent No. 7,397,363 (“the ’363 patent”) (Ex. 2002). The ’405
`patent and the ’363 patent each descend from U.S. patent Application No.
`08/622,749. See Ex. 1001, at [63]. Patent Owner relied upon this same
`filing in support of its arguments regarding the construction of “remote,”
`“control device,” and “located at.” See Dec. 5–6. The Applicant provided
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`this definition several years after the issuance of the ’405 patent. See Ex.
`1001, at [45] (June 29, 1999 issuance date). As the Federal Circuit has
`noted, however, “[a] statement made during prosecution of related patents
`may be properly considered in construing a term common to those patents,
`regardless of whether the statement pre- or post-dates the issuance of the
`particular patent at issue.” Teva Pharm. USA, Inc. v. Sandoz, Inc., 789 F.3d
`1335, 1343 (Fed. Cir. 2015) (citing Microsoft Corp. v. Multi–Tech Sys., Inc.,
`357 F.3d 1340, 1350 (Fed. Cir. 2004)).
`In that 2007 filing, the term “signal” was defined as “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.” Ex. 2002, 11. We are persuaded that this definition is
`instructive to understanding the proper scope of these claim terms. Thus, a
`first signal, for example, is an “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 is sent by a first device.”
`We have not been directed to evidence in the specification sufficient
`to show that the Applicant desired to narrow this very broad definition of
`signal in a manner that would exclude signals that pass through
`intermediaries. As defined by the Applicant, a signal may be an indication,
`information, or a message and we are not persuaded that it is impermissible
`for an intermediary to pass this information on and to add further data to the
`information that it received.
`For the foregoing reasons, we construe the term “first signal” to be “a
`signal sent by a first device;” “second signal” to be “a signal sent by a
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`second device;” and “third signal” to be “a signal sent by a third device.”
`The recited signals all are construed to be “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.” Finally, we are not persuaded that these terms exclude signals
`that may pass through an intermediary and any such intermediary may
`append additional information to the received signals.
`
`III. ANALYSIS
`A. Analysis of Asserted Ground of Anticipation by Kniffin
`
`Petitioner asserts that claims 1, 2, 7, 8, 11, 12, 14, 16, 17, 19, and 20
`of the ’405 patent are unpatentable under 35 U.S.C. § 102 as anticipated by
`Kniffin. Pet. 14–35. Petitioner relies on claim charts showing how this
`reference allegedly discloses the claimed subject matter. Id. Petitioner
`further relies on a declaration from Scott Andrews. Ex. 1006.
` Overview of Kniffin
`Kniffin describes a secure entry system that uses radio transmissions
`to communicate with locks, keys, and related components. Ex. 1002,
`Abstract. Figure 1 is reproduced below.
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`Figure 1 depicts the first embodiment of Kniffin. Id. at 2:25–26. In
`this embodiment, a secure entry system includes a lock (or other access
`control device) 12 that has an integrated cellular, paging, or other RF
`receiver 14. Users establish communication with the lock via “a cellular
`telephone, by a conventional telephone, or by some other communications
`link 16” that is in communication with clearinghouse 18. Id. at 2:32–34. In
`order to identify the lock that the user wishes to access, computer 20 of
`clearinghouse 18 synthesizes a series of voice prompts that are relayed to the
`user over communications link 16 that prompt the user to provide the
`appropriate identifying information. Id. at 2:35–43. If the clearinghouse
`determines that the user is authorized to access the lock then the
`clearinghouse will send a signal to lock 12. Id. at 2:44–47.
`Figure 4 is reproduced below.
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`Figure 4 depicts the fourth embodiment of Kniffin. Id. at 8:5–6. This
`embodiment is described in the context of an access control device for a
`delivery truck. Id. at 8:6–8. As described in Kniffin’s specification “the
`access control device 64 is not particularly detailed in FIG. 4, [but] it can
`take the same form as lock 12 of FIG. 1 (but with a lock mechanism adapted
`to secure the doors of a delivery truck).” Id. at 8:46–48. Here, a delivery
`company calls clearinghouse 66 and identifies the sequence of deliveries to
`be made by a truck. When truck 62 arrives at a delivery location access
`control device 64 will sense whether this location is the expected location by
`detecting an identification device 70. Id. at 8:25–27. Identification device
`70 may be a proximity card mounted at the loading dock or an electronic key
`carried by an authorized employee. Id. at 8:27–30. “If the detected
`identification device corresponds to the first expected stop that had earlier
`been programmed, the truck access control device unlocks, permitting access
`to the truck’s contents.” Id. at 8:30–33. At any time, the delivery company
`can call clearinghouse 66 and modify the route. Id. at 8:61–67.
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` Discussion
`Each of the challenged independent claims (1, 12, and 16) recites a
`first, second, and third control device. Petitioner asserts that “[c]laims 1, 12,
`and 16 identify these same control devices but in different orders.” Pet. 9.
`Petitioner includes the following chart on page 10 of its Petition.
`
`
`
`The preceding chart illustrates Petitioner’s allegation that the independent
`claims recite the same control devices in different orders. Id. Patent
`Owner’s arguments regarding the challenged claims are in accord with
`Petitioner’s grouping of the control devices. See e.g., PO Resp. 11–17.
`Petitioner and Patent Owner rely upon substantially similar evidence and
`arguments for these three devices. Thus, our analysis of Kniffin’s
`disclosures applies to each of the independent claims. For convenience,
`unless otherwise indicated, we shall use the terms first, second, and third
`control device to refer to the control devices as described in claim 1.
`Petitioner argues that Kniffin discloses these control devices through
`its discussion and depiction of access control device 64 (first control device)
`(Pet. 15), clearinghouse 18 or 66 (second control device) (id.), and
`communications link 16 (third control device) (id.). Petitioner asserts that
`a delivery company may contact clearinghouse 66, and provide
`a schedule of deliveries for the truck. . . . [C]learinghouse 66
`transmits the schedule to the truck access control device 64 (the
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`in-vehicle control device, i.e., at the truck 62 shown in Fig. 4),
`and stores the schedule in memory 68 (storing of the schedule
`constitutes activating a vehicle component).
`
`Id. at 16 (citing Ex. 1002, 8:15–24; Ex. 1006 ¶ 15). Petitioner argues that
`“[c]learinghouse 66 receives signals from a telephone 22 and
`communications link 16, and includes an RF transmission system for
`transmitting the verified schedule of stops. Moreover, truck access control
`device 64 is responsive to reprogramming signals from clearinghouse 66.”
`Pet. 17 (citing Ex. 1002, 8:61–67; Ex. 1006 ¶ 15). In the first embodiment,
`users communicate with the clearinghouse via “a cellular telephone, by a
`conventional telephone, or by some other communications link 16” and
`Petitioner argues that the communications link of the fourth embodiment is
`depicted as having similar communications. Id. at 17 (citing Ex. 1002,
`2:31–43, 8:61–67; Ex. 1006 ¶ 15).
`Patent Owner asserts that Kniffin does not disclose all of the elements
`of the independent claims. PO Resp. 11–30. Specifically, Patent Owner
`contends that “Kniffin does not generate a signal (the claimed ‘first signal’
`. . . ) for instructing the lock mechanism 32 to unlock the doors in response
`to a signal from the clearinghouse 66 (which Petitioner asserts corresponds
`to the claims ‘second control device’).” Id. at 19. Patent Owner asserts that
`information received from clearinghouse 66 is merely stored in memory. Id.
`at 20. “In fact, the signal that triggers the access control device 64 of
`Kniffin to generate a signal for instructing the lock mechanism 32 to unlock
`the doors is a signal from an ‘identification device 70’ that is present at one
`of the authorized locations stored in memory 68.” Id.
`Claim 1 recites “wherein said first control device is responsive to a
`second signal.” Ex. 1001, 74:66–67; see also id. 76:21–27 (similar language
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`in claim 12), 76:57–58 (claim 16). Thus, in each of the independent claims,
`the first control device must respond to a signal from the second control
`device. Petitioner asserts that access control device 64 is the first control
`device and that clearinghouse 18 or 66 is the second control device. Pet. 15.
`Therefore, Petitioner must establish that Kniffin discloses that access control
`device 64 responds to a signal from the clearinghouse. We are not
`persuaded that Petitioner has a made a sufficient showing on this point.
`Petitioner contends that “truck access control device 64 is responsive
`to reprogramming signals from clearinghouse 66.” Id. at 17 (citing Ex.
`1002, 8:61–67, Ex. 1006 ¶¶ 15). Petitioner, however, does not explain the
`import or impact of the signal sent from identification device 70. This is key
`because Kniffin states that “[i]n response to identification of the authorized
`user at the lock within the prescribed time period, a lock microprocessor
`CPU 30 instructs a lock mechanism 32 to unlock.” Ex. 1002, 3:64–66. In
`the fourth embodiment, access is based on the identity of a location and not
`that of an individual. See id. at 8:17–18 (“Each possible destination is
`assigned an identification number.”). Access is granted “[i]f the detected
`identification device corresponds to the first expected stop.” Id. at 8:30–31.
`Access is blocked if “the access control device . . . sense[s] either the
`absence of an identification device, or will sense an identification device that
`does not correspond to an authorized stop.” Id. at 8:39–45.
`Petitioner also alleges that “clearinghouse 66 transmits the schedule to
`the truck access control device 64 . . . and stores the schedule in memory
`68.” Id. at 16 (citing Ex. 1002, 8:15–24, Ex. 1006 ¶ 15). According to
`Petitioner this storage of the schedule in memory constitutes the activation
`of a vehicle component and is done in response to the receipt of the schedule
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`transmitted by the clearing house. Id. Petitioner contends that “while
`Kniffin describes controlling a lock mechanism, Kniffin also expressly
`activating the memory 68, which is a vehicle component device, system, or
`subsystem.” Reply 9.
`We, however, are not persuaded that Petitioner has put forth sufficient
`evidence to establish that the mere act of storing information in memory
`discloses the disputed limitation. The specification of the ’405 patent
`describes the “operational steps and/or sequence of operation of the
`apparatus and method of the present invention.” Ex. 1001, 32:10–11. In
`order “to prevent an unauthorized access” the system compares the received
`program command with “data which may be stored in apparatus program
`memory.” Id. at 32:40–48. Kniffin’s stored schedule of stops appears to be
`similar to the stored data described in the ’405 patent. The control device,
`however, is not responsive to the stored data, but rather it responds to the
`program code. See id. at 39:51–65. Thus, we are not persuaded that
`Kniffin’s disclosure of storing the schedule is sufficient to disclose the
`disputed limitation. Therefore, we are not persuaded that Petitioner has
`demonstrated that Kniffin discloses a first control device that is responsive
`to a second control signal.
`For the foregoing reasons we determine that Petitioner has not carried
`its burden to demonstrate by a preponderance of the evidence that
`independent claims 1, 12, and 16 are anticipated by Kniffin. By that same
`regard, we also are not persuaded that Petitioner has established the
`unpatentability of dependent claims 2, 3, 7, 8, 11, 14, 17, 19, and 20 as
`relates to the asserted grounds that include Kniffin. The various anticipation
`and obviousness grounds asserted for each of those claims relies upon the
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`assertions and arguments discussed above in relation to Petitioner’s
`assertions regarding Kniffin’s disclosures as applied to the independent
`claims. Petitioner has not argued that the above discussed deficiency is
`remedied by arguments or evidence put forth in any of the other Kniffin-
`based grounds. Therefore, Petitioner has not satisfied its burden in relation
`to its assertions of unpatentability based on Kniffin as directed to claims 1–
`3, 7, 8, 11, 12, 14, 16, 17, 19, and 20 of the ’405 patent.
`
`B. Analysis of Asserted Grounds Based on Ryoichi
`
` Analysis of Asserted Ground of Anticipation by Ryoichi
`Petitioner asserts that claims 1, 2, 7, 8, 11, 12, 14, 16, 17, 19, and 20
`of the ’405 Patent are unpatentable under 35 U.S.C. § 102 as anticipated by
`Ryoichi. Pet. 37–57. Petitioner relies on claim charts showing how this
`reference allegedly discloses the claimed subject matter. Id. at 46–57.
`Petitioner further relies on a declaration from Scott Andrews. Ex. 1006.
` Overview of Ryoichi
`Ryoichi describes “a radio-signal-responsive control system for
`controlling various devices on a motor vehicle.” Ex. 1003, 1:9–11. Figure 1
`of Ryoichi is reproduced below.
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`Figure 1 is a block diagram of the first embodiment of Ryoichi’s radio-
`signal-responsive vehicle device control system. Id. at 3:24–26. Personal
`radio paging unit 9 is inserted into the door of the vehicle. Id. at Fig. 3,
`7:52–55. A calling number is dialed on telephone unit TEL and that number
`represents a code number corresponding to a desired message signal. Id. at
`7:60–64. A radio wave indicating the message is radiated automatically
`from fixed radio station ST and that wave is received by personal radio
`paging unit 9. Id. at 7:64–67. In response, personal radio paging unit 9
`generates a sound which is detected by sensors 10 and these sensors turn on
`code converter 11 and control unit S. Id. at 8:1–5. Code converter 11
`converts the received electric signal into the format for the control unit S.
`Id. at 8:5–15. Then the converted code signal is sent to control unit S, which
`selects and executes a program corresponding to the received code signal.
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`Id. at 8:15–17. For example, control program PO is a program for operating
`the handbrake remotely. Id. at 8:17–22.
`a. Independent Claims 1, 12, and 16
`Petitioner’s arguments as to the independent claims may be
`summarized as follows: Petitioner argues that Ryoichi discloses the three
`recited control devices6 through its discussion and depiction of personal
`radio paging unit 9 (first control device) (Pet. 37), fixed radio station St
`(second control device) (id.), and telephone unit TEL (third control device)
`(id.). Petitioner asserts that “personal radio paging unit 9, located in the
`vehicle, generates sounds representing message signals, and the sounds are
`converted into code readable by control unit S to execute a control program,
`e.g., controlling the handbrake, unlocking the doors, turning on the
`headlights, or starting the engine.” Id. at 39 (citing Ex. 1003, 4:57–5:15;
`8:1–22; Ex. 1006 ¶¶ 30–31). According to Petitioner, personal radio paging
`unit 9 is responsive to signals sent by radio station ST and paging unit 9
`generate calling sounds in response to the signals from radio station ST. Id.
`39–40 (citing Ex. 1003, 7:64–8:3; Ex. 1006 ¶¶ 30–31). In addition, radio
`station ST is contended to be responsive to signals from telephone TEL
`because users enter a message into the touchpad of telephone TEL and a
`signal representing the entered message is sent to radio station ST for
`transmission. Id. at 40 (citing Ex. 1003, 7:60–8:1; Ex. 1006 ¶¶ 30–31).
`
`
`6 As with Kniffin, Petitioner espouses similar analysis for each of the three
`recited control devices. Thus, our analysis of Ryoichi’s disclosures applies
`to each of the independent claims. For convenience, unless otherwise
`indicated, we shall use the terms first, second, and third control device to
`refer to the control devices as described in claim 1.
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`
`
`IPR2015-01613
`Patent 5,917,405
`
`Patent Owner argues that Ryoichi fails to teach the second control
`device. PO Resp. 31. Petitioner asserts that Ryoichi discloses this element
`through its discussion and depiction of fixed radio station ST. Pet. 37.
`Petitioner asserts that personal radio paging unit 9 (first control device) is
`responsive to signals sent from fixed radio station ST and the fixed radio
`station ST is responsive to signals sent from telephone TEL (third control
`device.). Id. at 39–40. According to Patent Owner, fixed radio station ST is
`part of the communications system or network and as such it cannot be the
`second control device. PO Resp. 31. Patent Owner’s Response to the
`Petition, however, contains no discussion as to why a device that is part of
`the communication system may not be a second control device. See id.
`Presumably, Patent Owner’s contention that it “maintains” this argument is
`based on the fact that it unsuccessfully argued this point in its Preliminary
`Response. Our rules, however, preclude such incorporation by reference of
`arguments. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be
`incorporated by reference from one document into another document.”).
`Accordingly, we do not consider those arguments in this Decision. We find
`Petitioner’s analysis to be persuasive and we adopt it as the basis for our
`determination that Ryoichi’s fixed radio station ST discloses the second
`control device.
`Patent Owner also argues that in Ryoichi
`the vehicle devices/systems are not controlled in response to a
`“third signal” from the “third control device” (personal paging
`unit 9), but rather are controlled in response to a “fourth
`signal,” a “fifth signal” and a “sixth signal” from multiple
`intermediate devices (sensor 10, code converter 11 and control
`unit S, respectively) which are positioned between the personal
`
`18
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`IPR2015-01613
`Patent 5,917,405
`
`paging unit 9 of Ryoichi and the vehicle devices/systems of
`Ryoichi.
`
`PO Resp. 34–35. Thus, Patent Owner argues that Ryoichi discloses a
`system with six devices and seven signals and not the claimed three
`device/three signal system. Id. at 37. Petitioner argues and we agree that
`“[t]he claims of the ’405 patent do not require the first signal to be
`transmitted directly, excluding all conduits or electrical components between
`the first control device and the vehicle component.” Reply 17. As discussed
`above, we are not persuaded that the claims exclude systems with
`intermediate devices such as Ryoichi’s sensor 10, code converter 11, and
`control unit S. See § II.B. So the question is whether Petitioner has
`demonstrated that the devices signals disclosed in Ryoichi disclosed the
`recited devices and signals. We are persuaded that they do.
`As noted by Mr. Andrews, “Ryoichi provides for the control of an
`‘automobile-mounted device’ in which the telephone unit sends information
`related to controlling a device to a paging center, which subsequently sends
`paging signals containing the control information over the paging network.
`These are received by the paging unit in the vehicle, and are used to control
`various vehicle components.” Ex. 1006 ¶ 29; see id. ¶ 31. We find Mr.
`Andrews’ analysis of Ryoichi’s disclosures to be reasonable and we adopt it
`as our own. Thus, we are persuaded that Ryoichi discloses a system where
`the information sent from the telephone is received by the fixed radio station
`ST, which responds by sending control information to personal paging unit
`9. After receipt of the control information from fixed radio station ST, the
`personal paging unit responds by sending a signal to control the specified
`vehicle system. Therefore, we do not find Patent Owner’s argument to be
`
`19
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`IPR2015-01613
`Patent 5,917,405
`
`persuasive and we are persuaded by Petitioner’s arguments regarding the
`disclosures of Ryoichi.
`Based on our review of the full record, we find persuasive Petitioner’s
`arguments and evidence and we adopt them as the basis for our
`determination that Ryoichi discloses the limitations of claims 1, 12, and 16.
`See Pet. 37–55. Accordingly, we determine that Petitioner has demonstrated
`by a preponderance of the evidence the unpatentability of independent
`claims 1, 12, and 16 over the disclosures of Ryoichi.
`b. Dependent Claims 2, 7, 8, 11, 14, 17, 19 and 20
`Claims 2, 7, 8, and 11 depend from claim 1; claim 14 depends from
`12; and claims 17, 19, and 20 depend from claim 16. We have reviewed
`Petitioner’s assertions regarding these claims and we are persuaded that
`these claims also are anticipated by Ryoichi. See Pet. 37–57. For example,
`claim 2 depends from claim 1 and further recites, in relevant part, a
`monitoring device for monitoring at least one of the vehicle, vehicle
`operational status, or vehicle operation. In its arguments directed to this
`claim, Petitioner relies upon Ryoichi’s disclosure of remote control
`condition detectors, such as brake lever operation detector K1, shift
`lever/parking position detector K2, engine operation detector K3, door
`handle operation detector K6, and vehicle speed sensor 36, detecting
`conditions of the vehicle devices. Pet. 42 (citing Ex. 1002, 6:20–31, 15:16–
`20, 12:66–68; Fig. 2, Ex. 1006 ¶ 35). As to these dependent claims, Patent
`Owner stands by its arguments directed to the independent claims. PO
`Resp. 38. We disagree with those arguments for the reasons described
`above.
`
`20
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`IPR2015-01613
`Patent 5,917,405
`
`Based on our review of the full record, we find persuasive Petitioner’s
`arguments and evidence and we adopt them as the basis for our
`determination that Ryoichi discloses the limitations of claims 2, 7, 8, 11, 14,
`17, 19 and 20. See Pet. 37–57. Accordingly, we determine that Petitioner
`has demonstrated by a preponderance of the evidence the unpatentability of
`claims 2, 7, 8, 11, 14, 17, 19 and 20 over the disclosures of Ryoichi.
` Analysis of Asserted Grounds of Obviousness over Ryoichi
`Petitioner asserts that claim 3 of the ’405 patent is unpatentable under
`35 U.S.C. § 103 as obvious over Ryoichi and Mansell. Pet. 57–59.
`Petitioner relies on a claim chart showing how these references allegedly
`teach the claimed subject matter. Id. at 58–59. Petitioner further relies on a
`declaration from Scott Andrews. Ex. 1006.
`Claims 3 depends from claim 1. Claim 3, in relevant part, adds
`limitations regarding a positioning device for determining location of the
`vehicle. We are persuaded by Petitioner’s contention that Ryoichi and
`Mansell teach the apparatus of claim 3. Mansell is a U.S. Paten
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