Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 7
`Filed: February 1, 2016
`
`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 HOWARD B. BLANKENSHIP, STACEY G. WHITE, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`571.272.7822
`
`
`Paper No. 7
`Filed: February 1, 2016
`
`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 HOWARD B. BLANKENSHIP, STACEY G. WHITE, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
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`I. INTRODUCTION
`
`A. Background
`Volkswagen Group of America, Inc. (“Petitioner”) filed a Petition
`(Paper 2, “Pet.”) seeking to institute an inter partes review of claims 1, 2, 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, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a),
`which provides that an inter partes review may not be instituted “unless . . .
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.”
`Petitioner contends the challenged claims are unpatentable under
`35 U.S.C. §§ 102 and 103 on the following specific grounds (Pet. 14–59):
`Reference(s)
`Basis Claim(s) Challenged
`Kniffin1
`§ 102
`1, 2, 7, 8, 11, 12, 14, 16, 17, 19, and 20
`Kniffin and DiLullo2
`§ 103
`3
`Ryoichi3
`§ 102
`1, 2, 7, 8, 11, 12, 14, 16, 17, 19, and 20
`Ryoichi and Mansell4 § 103
`3
`
`Our factual findings and conclusions at this stage of the proceeding
`are based on the evidentiary record developed thus far (prior to Patent
`Owner’s Response). This is not a final decision as to patentability of claims
`for which inter partes review is instituted. Our final decision will be based
`
`
`1 U.S. Patent No. 6,072,402 (Ex. 1002) (“Kniffin”).
`2 U.S. Patent No. 4,897,642 (Ex. 1004) (“DiLullo”).
`3 U.S. Patent No. 5,113,427 (Ex. 1003) (“Ryoichi”).
`4 U.S. Patent No. 5,223,844 (Ex. 1005) (“Mansell”).
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`on the record as fully developed during trial. For reasons discussed below,
`we institute inter partes review of the ʼ405 patent as to claims 1, 2, 3, 7, 8,
`11, 12, 14, 16, 17, 19, and 20.
`
`B. Related Proceedings
`Petitioner informs us that the ʼ405 patent may be implicated in
`numerous lawsuits pending in courts around the country. Pet. 1–2. In
`addition, ex parte reexamination No. 90/013,302 was filed with respect to
`the ’405 patent and is pending. Pet. 2. The ’405 patent also is the subject of
`a co-pending petition for inter partes review (IPR2015-01585).
`
`C. The ʼ405 Patent
`The ’405 patent describes a remote-controlled control, monitoring,
`and/or security apparatus and method for vehicles or premises. 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
`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
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`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.
`
`D. Illustrative Claim
`As noted above, Petitioner challenges claims 1, 2, 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 challenged 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, therein the third control device is
`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; Prelim. Resp. 7. 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
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`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).
`Petitioner does not seek explicit construction of any term of the ’405
`patent. Pet. 12–14. Patent Owner argues that the terms “control device,”
`“remote,” and “located at” are defined expressly in the prosecution history
`of at least two related applications. Prelim. Resp. 15–32. Petitioner does not
`provide explicit arguments regarding the terms “remote” or “located at.”
`We are not persuaded that express construction of “remote,” or “located at”
`is necessary in order to resolve the issues currently before us. Thus, we
`discern no need to provide express constructions for these terms at this time.
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999) (“[O]nly those terms need be construed that are in controversy, and
`only to the extent necessary to resolve the controversy.”).
`We, however, discern a need to provide an express construction for
`“control device.” Patent Owner asserts that “control device” is defined
`expressly in remarks filed November 23, 2007, during prosecution of the
`patent application that issued as U.S. Patent No. 7,397,363 (“the ‘363
`patent”) (Ex. 2002). Prelim. Resp. 15. This statement was made several
`years after the issuance of the ’405 patent. See Ex. 1001, at [45] (June 29,
`1999 issuance date). The ’405 patent and the ’363 patent each descend from
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`U.S. Patent Application Nos. 08/587,628, 08/622,749, 08/489,238 (Patent
`No. 5,513,244) and 08/073,755. See Ex. 1001, at [63].
`As the Federal Circuit has noted, “[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)). An
`explicit definition for “control device” was provided in the related
`application. See Ex. 2002, 6. We have reviewed this definition and, on this
`record, we find it to be reasonable and instructive to understanding the
`proper scope of this claim term. See Paulsen, 30 F.3d at 1480.
`Patent Owner seeks to further narrow this term by also construing this
`term to mean that the control device must be “separate and distinct” from the
`vehicle system and the communications system. Prelim. Resp. 15–31. For
`reasons stated below, we do not find these arguments to be persuasive.
`First, Patent Owner argues that the control devices must be separate
`and distinct from the vehicle system being controlled. Prelim. Resp. 16–19.
`Claim 1 recites, in relevant part, “wherein said first control device is located
`at the vehicle” and that the first control device generates and transmits a first
`signal that directs a vehicle system to perform certain specified activities.
`Ex. 1001, 74:60–64; see also id. at 76:52–62 (reciting similar limitations in
`claim 16 in reference to the third control device and third signal). Patent
`Owner relies on the description of embodiments in which CPU 4 (which
`Patent Owner characterizes as the first control device of claim 3) is
`“electrically connected and/or linked to at least one or more of a vehicle
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`equipment system or systems 11.” Prelim. Resp. 18 (quoting Ex. 1001,
`22:24–32). Patent Owner also relies upon a passage from the specification
`that describes the vehicle equipment system as being “utilized in conjunction
`with the apparatus.” Id. at 17–18 (quoting Ex. 1001, 4:62–65).
`We are not persuaded that these passages require such a narrow
`interpretation of the claim language. “[A]lthough the specification often
`describes very specific embodiments of the invention,” See Phillips, 415
`F.3d at 1323, the U.S. Court of Appeals for the Federal Circuit “ha[s]
`repeatedly warned against confining the claims to those embodiments.” Id.
`On this record, this claim language does not require the control device to be
`separate and distinct from the vehicle systems; instead it speaks to the
`location of the control device and the transmission of signals between these
`elements of the claimed apparatus. We are not persuaded that the existence
`of embodiments where the control device is utilized by or electrically
`connected to the vehicle system narrows this term so as to exclude a control
`system that is not “separate and distinct” from the vehicle system.
`Second, Patent Owner argues that the control devices are 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. Prelim. Resp. 19–31. According to Patent Owner, the specification
`repeatedly describes the recited control devices as “operat[ing] on, over, via,
`or in conjunction with, a communication system or a communication
`network” and as such the control devices and communication network must
`be distinct. Id. at 21. Patent Owner quotes several passages from the
`specification that describe the claimed apparatus as operating “in a mobile
`and/or a wireless communications environment” and sending signals “over a
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`communication system.” Id. at 22 (quoting Ex. 1001, 3:48–56), 22–23
`(quoting Ex. 1001, 3:12–20). Here again, we are not persuaded that these
`passages narrow the claim language so as to exclude control devices that are
`not distinct from the communication system. A network environment or a
`communication system could include any number of network devices or
`pieces of communications equipment. We are not persuaded that these
`disclosures from the specification exclude all network devices and
`equipment from being part of the claimed control device. In addition, we
`note that the specification states that “[t]elephone signals and telephone
`communication devices can be utilized in the present invention.” Ex. 1001,
`3:54–56 (emphasis added). Thus, we are not persuaded that the control
`device must be separate and distinct from the communication system or the
`communication network.
`Thus, for all of the foregoing reasons, we adopt the following
`construction for purposes of this decision.
`
`Term
`Control
`Device
`
`Construction
`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.
`
`Citations
`Prelim. Resp.
`15–16; Ex.
`2002, 6
`
`
`
`III. ANALYSIS
`
`We turn to Petitioner’s asserted grounds of unpatentability to
`determine whether Petitioner has met the threshold of 35 U.S.C. § 314(a).
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`A. Analysis of Asserted Grounds Based on Kniffin (Ex. 1002)
`
` 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.
`
`
`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.
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`Figure 4 is reproduced below.
`
`
`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
`based on the delivery sequence provided to clearinghouse 66 by the delivery
`company. Id. at 8:25–30. If it is the expected location access control device
`64 will unlock and allow 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.
` 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
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`Kniffin. Pet. 14–35. Petitioner relies on claim charts showing how this
`reference allegedly discloses the claimed subject matter. Id. at 23–35.
`Petitioner further relies on a declaration from Scott Andrews. Ex. 1006.
`a. Independent Claims 1, 12, and 16
`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 in its Petition.
`
`
`
`The preceding chart illustrates Petitioner’s allegation that the three
`independent claims recite the same control devices in different order. Pet.
`10. Patent Owner’s arguments regarding the challenged claims are in accord
`with Petitioner’s grouping of the control devices. See e.g., Prelim. Resp.
`33–34 (discussing the first control device of claim 1, third control device of
`claim 12, and third control device of claim 16 as part of an argument
`directed to the “first control device” of claim 1). 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.
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`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
`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 argues that Kniffin fails to teach the first control device.
`Prelim. Resp. 33. According to Patent Owner, a device such as Kniffin’s
`access control device 64, that contains a lock, key, access control device, or
`any portion or component of same, cannot be the claimed first control device
`because that would be contrary to the ’405 patent specification. Id. at 34–
`35. Stated differently, Patent Owner contends that the vehicle component
`includes a lock system, as recited in the Specification of the ’405 patent and
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`dependent claim 7. Id. at 36–42. As noted above, however, we are not
`persuaded that the first control device described in the specification is
`necessarily separate and distinct from the vehicle system/vehicle component.
`See § II (construction of “control device”). Contained within Kniffin’s lock
`12 is lock mechanism 32 and CPU 30. Ex. 1002, Fig. 1. Kniffin’s lock
`mechanism 32, thus, corresponds to the vehicle component described in
`claims 3, 73, and 205 because there is nothing precluding the claimed
`“vehicle component” from being a subcomponent of a “control device.” Id.
`Patent Owner has not directed us to any portion of the specification of the
`’405 patent that persuades us that this configuration is outside of the scope
`of the claims. On this record, we are persuaded that this configuration is
`within the scope of the claimed first control device.
`Accordingly, we are persuaded, based on the current record, that
`Petitioner has established a reasonable likelihood it would prevail in
`showing that independent claims 1, 12, and 16 are unpatentable under
`35 U.S.C. § 102 over Kniffin.
`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
`Petitioner has made a sufficient showing that these claims also are
`anticipated by Kniffin. See Pet. 19–23. 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
`Kniffin’s disclosure of truck access control device 64 detecting an
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`identification device 70 at a delivery stop. Pet. 19 (citing Ex. 1002, 8:25–27,
`Ex. 1006 ¶ 18). Petitioner argues that this discloses monitoring the vehicle
`or activity outside of the vehicle and that this disclosure anticipates claim 2.
`Id. Patent Owner has not spoken in regards to the specific allegations
`directed to the dependent claims and at this time has only put forth
`arguments addressing the patentability of the independent claims. Prelim.
`Resp. 41–42. On this record, we find Petitioner’s arguments to be
`persuasive. Therefore, we are persuaded, based on the current record, that
`Petitioner has established a reasonable likelihood it would prevail in
`showing that dependent claims 2, 7, 8, 11, 14, 17, 19, and 20 are
`unpatentable under 35 U.S.C. § 102 over Kniffin.
` Analysis of Asserted Grounds of Obviousness Based on Kniffin and
`DiLullo
`Petitioner asserts that claim 3 of the ’405 Patent is unpatentable under
`35 U.S.C. § 103 as obvious over Kniffin and DiLullo. Pet. 35–37.
`Petitioner relies on a claim chart showing how these references allegedly
`teach the claimed subject matter. Id. at 36. Petitioner further relies on a
`declaration from Scott Andrews. Ex. 1006.
`Claim 3 depends from claim 1. Claim 3, in relevant part, adds
`limitations regarding a positioning device for determining the location of the
`vehicle. We are persuaded that the present record supports Petitioner’s
`contention that Kniffin and DiLullo teach the apparatus of claim 3. Kniffin
`states that “a preferred form of this embodiment, the truck security system is
`integrated with a satellite vehicle locator system, which may be of the sort
`disclosed in U.S. Pat. No.[] . . . 4,897,642 [DiLullo].” Ex. 1002, 9:1–5.
`DiLullo describes a locating apparatus located “within the tractor’s cab or
`tool compartment.” Ex. 1004, 2:30–33. Thus, for the foregoing reasons, we
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`are persuaded that Petitioner has established a reasonable likelihood it would
`prevail in showing that claim 3 would have been obvious over Kniffin and
`DiLullo.
`
`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. 1002.
` 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.
`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 devices5 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
`
`5 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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`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. 1002 ¶¶ 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. 1002 ¶¶ 30–31).
`Patent Owner argues that Ryoichi fails to teach the second control
`device. Prelim. Resp. 42–44. 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. Id. at 43. As noted above, however,
`we are not persuaded that the second control device is necessarily separate
`and distinct from the communications system. See § II (construction of
`“control device”). Thus, we are not persuaded that Ryoichi’s teachings fail
`to disclose the claimed second control device.
`Accordingly, we are persuaded, based on the current record, that
`Petitioner has established a reasonable likelihood it would prevail in
`showing that independent claims 1, 12, and 16 are unpatentable under
`35 U.S.C. § 102 over Ryoichi.
`
`17
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`IPR2015-01613
`Patent 5,917,405
`
`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
`Petitioner has made a sufficient showing that these claims also are
`anticipated by Ryoichi. See Pet. 42–46. 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). Patent Owner
`has not spoken in regards to the specific allegations directed to the
`dependent claims and at this time has only put forth arguments addressing
`the patentability of the independent claims. Prelim. Resp. 44. On this
`record, we find Petitioner’s arguments to be persuasive. Therefore, we are
`persuaded, based on the current record, that Petitioner has established a
`reasonable likelihood it would prevail in showing that dependent claims 2, 7,
`8, 11, 14, 17, 19, and 20 are unpatentable under 35 U.S.C. § 102 over
`Ryoichi.
` Analysis of Asserted Grounds of Obviousness Based on Ryoichi and
`Mansell
`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
`
`18
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`IPR2015-01613
`Patent 5,917,405
`
`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 that the present record supports Petitioner’s
`contention that Ryoichi and Mansell teach the apparatus of claim 3. Mansell
`is a U.S. Patent titled “Vehicle Tracking and Security System.” Ex. 1005, at
`[54]. Mansell describes “a vehicle tracking and security system which
`allows immediate response in case of vehicle theft.” Id. at Abstract. In
`Mansell, “tracking functions are provided through Mobile Units installed in
`hidden locations in vehicles to be monitored.” Id. Further, “location [of the
`vehicle is] precisely determinable anywhere in the world through use of
`Global Positioning System (GPS) information.” Id. Petitioner argues that
`the limitations of claim 3 are taught by Mansell’s description of “a vehicle
`tracking and security system, including a vehicle monitoring system having
`mobile units with GPS receivers.” Pet. 58 (citing Ex. 1005, 2:55–3:7, 7:19–
`26). On this record, we find Petitioner’s argument to be persuasive. Thus,
`for the foregoing reasons, we are persuaded that Petitioner has established a
`reasonable likelihood it would prevail in showing that claim 3 would have
`been obvious over Ryoichi and Mansell.
`IV. CONCLUSION
`For the foregoing reasons, we determine Petitioner has demonstrated
`there is a reasonable likelihood it would prevail in establishing the
`unpatentability of claims 1, 2, 3, 7, 8, 11, 12, 14, 16, 17, 19, and 20 of the
`ʼ405 patent. At this stage of the proceeding, the Board has not made a final
`
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`IPR2015-01613
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`
`determination as to the patentability of any challenged claim or any
`underlying factual and legal issues.
`V. ORDER
`For the reasons given, it is
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`
`review is hereby instituted as to claims 1, 2, 3, 7, 8, 11, 12, 14, 16, 17, 19,
`and 20 of the ’405 patent on the following grounds:
`1. Claims 1, 2, 7, 8, 11, 12, 14, 16, 17, 19, and 20 are anticipated by
`Kniffin under 35 U.S.C. § 102;
`2. Claim 3 would have been obvious under 35 U.S.C. § 103 over the
`combined teachings of Kniffin and DiLullo;
`3. Claims 1, 2, 7, 8, 11, 12, 14, 16, 17, 19, and 20 are anticipated by
`Ryoichi under 35 U.S.C. § 102; and
`4. Claim 3 would have been obvious under 35 U.S.C. § 103 over the
`combined teachings of Ryoichi and Mansell.
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`
`37 C.F.R. § 42.4, inter partes review of the ʼ405 patent shall commence on
`the entry date of this Order, and notice is hereby given of the institution of a
`trial; and
`
`FURTHER ORDERED that no ground other than that specifically
`provided above is authorized.
`
`
`
`
`
`20
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`IPR2015-01613
`Patent 5,917,405
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`PETITIONER:
`
`Michael J. Lennon
`Clifford A. Ulrich
`KENYON & KENYON LLP
`mlennon@kenyon.com
`culrich
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