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
`________________
`
`
`
`PATENT OWNER’S RESPONSE TO PETITION
`FOR INTER PARTES REVIEW UNDER 37 C.F.R. § 42.107
`
`
`
`
`
`
`________________
`
`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
`________________
`
`
`
`PATENT OWNER’S RESPONSE TO PETITION
`FOR INTER PARTES REVIEW UNDER 37 C.F.R. § 42.107
`
`
`
`
`
`
`
`Patent Owner’s Response to Petition
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2015-01613
`Patent 5,917,405
`
`TABLE OF CONTENTS
`
`
`
`Page
`
`
`I. INTRODUCTION ............................................................................................... 1
`
`II. BACKGROUND ................................................................................................. 2
`
` A. Overview of the ‘405 Patent .......................................................................... 2
`
` B. Prosecution History of the ‘405 Patent .......................................................... 3
`
` C. Representative Claims .................................................................................... 3
`
`III. CLAIM CONSTRUCTION ............................................................................... 6
`
` A. Legal Standards .............................................................................................. 6
`
` B. “control device” .............................................................................................. 9
`
`
`
` C. “first signal,” “second signal” and “third signal” ........................................... 9
`
` A. Ground 1 is Deficient ................................................................................... 11
`
`
`IV. THE PROPOSED GROUNDS FAIL TO MEET THE BURDEN OF
` SHOWING A REASONABLE LIKELIHOOD OF PREVAILING ............... 11
`
`
`
`
`
` 1. Storing a delivery schedule in a memory does not constitute “activating”
` or “enabling” a vehicle system/component ............................................. 11
`
`
`
` 2. Kniffin fails to disclose an “A to B to C” system for controlling a vehicle
` system/component in response to a signal from a control device located
` remote from the vehicle ........................................................................... 11
`
`
`i i
`
`
`
`Patent Owner’s Response to Petition
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2015-01613
`Patent 5,917,405
`
` 1. Ryoichi fails to disclose the “A to B to C” control system/method of
` claims 1, 12 and 16 ................................................................................. 32
`
`
`
` D. Ground 4 is Deficient ................................................................................... 38
`
`
`VII. CONCLUSION .............................................................................................. 39
`
`
`
`ii ii
`
`
`
`
`
` B. Ground 2 is Deficient ................................................................................... 30
`
` C. Ground 3 is Deficient ................................................................................... 31
`
`
`
`
`
`
`
`
`
`
`
`
`Patent Owner’s Response to Petition
`
`
`
`
`
`
`
`
`
`
`LIST OF EXHIBITS
`
`Case IPR2015-01613
`Patent 5,917,405
`
`Exhibit
`
`EX2001
`
`EX2002
`
`EX2004
`
`Description
`“Preliminary Remarks” filed by Applicant on November 26, 2006
`during prosecution of the patent application that issued as related U.S.
`Patent No. 7,277,010
`“Supplement to the Remarks for the Amendment filed on October 24,
`2007” filed on November 23, 2007 during prosecution of the patent
`application that issued as related U.S. Patent No. 7,397,363
`EX2003 Declaration of Steven W. Ritcheson
`August 26, 2015 Opinion and Order Construing Disputed Claim Terms
`in the matter of JCMS v. Chrysler Group LLC, Case No. 13-cv-13957
`(E.D. Mich.)
`EX2005 Transcript of April 20, 2016 Deposition of Scott Andrews
`EX2006 Transcript of April 21, 2016 Deposition of Scott Andrews
`“The Internet Report,” Morgan Stanley Global Technology Group,
`EX2007
`February 1996.
`
`
`
`iii iii
`
`
`
`
`
`
`
`Patent Owner’s Response to Petition
`
`
`
`
`
`
`
`I.
`INTRODUCTION
`
`
`
`
`
`
`
`
`
`
`Case IPR2015-01613
`Patent 5,917,405
`
`
`
`In response to the Petition for Inter Partes Review (“Petition”) filed by
`
`Petitioner, the Board has instituted inter partes review (Paper 7, the “Decision”)
`
`of claims 1, 2, 3, 7, 8, 11, 12, 14, 16, 17, 19 and 20 (“Challenged Claims”) of
`
`U.S. Patent No. 5,917,405 (“the ‘405 Patent”) based on the following grounds:
`
`
`
`Ground
`
`1
`
`2
`
`3
`
`4
`
`Claims
`1, 2, 7, 8, 11,
`12, 14, 16, 17,
`19 and 20
`3
`1, 2, 7, 8, 11,
`12, 14, 16, 17,
`19 and 20
`3
`
`Proposed Rejections
`anticipated by Kniffen
`
`obvious in view of Kniffen and DiLullo
`anticipated by Ryochi
`
`obvious in view of Ryochi and Mansell
`
`The four proposed grounds of rejection are substantively flawed, in that
`
`
`
`
`
`none of the cited references teach important properly construed claim limitations.
`
`For example, none of the cited references teach an “A to B to C” control
`
`system/method, as required by the challenged claims and as will be explained in
`
`more detail below.
`
`
`
`1 1
`
`
`
`Case IPR2015-01613
`
`
`
`Patent Owner’s Response to Petition
`Patent 5,917,405
`
`
`
`
`
`
`
`
`
`
`
`Accordingly, Joao Control & Monitoring Systems, LLC (“JCMS” or
`
`“Patent Owner”) submits this Response to Petitioner’s Petition and the Board’s
`
`Decision.
`
`II. BACKGROUND
`
`
`
`
`A. Overview of the ‘405 Patent
`
`The ‘405 Patent is directed to a novel and unconventional system for, inter
`
`alia, remotely-controlling and/or monitoring systems located at vehicles and
`
`premises. EX1001 at 23. The Challenged Claims are directed to a specially
`
`assembled and programmed distributed control system for vehicles, wherein
`
`control functions for a vehicle or for a vehicle component, vehicle device, vehicle
`
`system, or vehicle subsystem, of a vehicle, can be distributed among three
`
`separate and distinct control devices, each of which can generate or transmit a
`
`separate and distinct signal in order to control a separate fourth device of or at the
`
`vehicle, which is the respective vehicle component, vehicle device, vehicle
`
`system, or vehicle subsystem.
`
`A separate
`
`interface device can be optionally used
`
`to facilitate
`
`communications between one of the control devices and the separate fourth
`
`
`
`2 2
`
`
`
`Case IPR2015-01613
`
`
`
`Patent Owner’s Response to Petition
`Patent 5,917,405
`
`
`
`
`
`
`
`
`
`
`device of or at the vehicle, which is the respective vehicle component, vehicle
`
`device, vehicle system, or vehicle subsystem.
`
`
`
`
`
`B.
`
`Prosecution History of the ‘405 Patent
`
`The patent application that issued as the ‘405 Patent was filed on July 18,
`
`1996. EX1001. The ‘405 patent issued on June 29, 1999. Id. The ‘405 patent is an
`
`expired patent.
`
`
`
`During prosecution of related U.S. Patent Applications that issued as U.S.
`
`Patent Nos. 7,397,363 and 7,277,010 (hereinafter “the ‘363 Patent” and “the ‘010
`
`Patent,” respectively), the Applicant chose to be his own lexicographer and
`
`provided explicit definitions for, inter alia, the terms “control device,” “remote,”
`
`and “located at” in “Preliminary Remarks” filed by Applicant on November 26,
`
`2006 during prosecution of the patent application that issued as the ‘010 patent
`
`(see EX2001, hereinafter “Preliminary Remarks”) and in “Supplement to the
`
`Remarks for the Amendment filed on October 24, 2007” filed on November 23,
`
`2007 during prosecution of the patent application that issued as the ‘363 Patent
`
`(see EX2002, hereinafter “First Remarks”).
`
`C. Representative Claims
`
`
`
`
`
`3 3
`
`
`
`Case IPR2015-01613
`
`
`
`Patent Owner’s Response to Petition
`Patent 5,917,405
`
`
`
`
`
`
`
`
`
`
`
`Claims 1, 12 and 16 are the only independent claims. They are 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 located at a location
`
`which is remote from the vehicle and remote from the second control device.
`
`12. A control apparatus for a vehicle, which comprises:
`
`4 4
`
`
`
`
`
`
`
`Case IPR2015-01613
`
`
`
`Patent Owner’s Response to Petition
`Patent 5,917,405
`
`
`
`
`
`
`
`
`
`
`
`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 a location
`
`remote from 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 said first control device and remote from the vehicle,
`
`
`
`wherein said first signal controls a third control device, wherein the
`
`third control device is located at the vehicle, and further wherein the third control
`
`device one of generates and transmits a third signal for one of activating,
`
`deactivating, enabling, and disabling, said one of a vehicle component, a vehicle
`
`device, a vehicle system, and a vehicle subsystem, in response to said first signal.
`
`16. A method for control for a vehicle, which comprises:
`
`5 5
`
`
`
`
`
`
`
`Case IPR2015-01613
`
`
`
`Patent Owner’s Response to Petition
`Patent 5,917,405
`
`
`
`
`
`
`
`
`
`
`
`transmitting a first signal from a first control device to a second
`
`control device, wherein the first control device is located at a location remote
`
`from the vehicle and remote from the second control device;
`
`
`
`transmitting a second signal from the second control device to a
`
`third control device, wherein the third control device is located at the vehicle, and
`
`further wherein the second control device is located at a location remote from the
`
`vehicle;
`
`
`
`generating a third signal at the third control device in response to
`
`said second signal,
`
`
`
`
`
`one of activating, deactivating, enabling, and disabling, one of a
`
`vehicle component, a vehicle device, a vehicle system, and a vehicle subsystem,
`
`in response to said third signal.
`
`III. CLAIM CONSTRUCTION
`
`Legal Standards
`A.
`The ‘405 Patent is expired. Claim terms in an expired patent are generally
`
`
`
`given their “ordinary and customary meaning” as understood by a person of
`
`ordinary skill in the art in question at the time of the invention. Phillips v. AWH
`
`Corp., 415 F.3d 1303,1327 (Fed. Cir. 2005). However, it is important to note that
`
`
`
`6 6
`
`
`
`Case IPR2015-01613
`
`
`
`Patent Owner’s Response to Petition
`Patent 5,917,405
`
`
`
`
`
`
`
`
`
`
`the Manual of Patent Examining Procedure (MPEP) and controlling case law
`
`make it clear that the determination of the ordinary and customary meaning of a
`
`term or phrase does not occur in a vacuum, but instead it must be made in light of
`
`the patent’s specification and the intrinsic evidence. MPEP §2111.01 is clear and
`
`unequivocal on this point. The pertinent portion of the MPEP §2111.01 recites:
`
`The ordinary and customary meaning of a term may be
`
`evidenced by a variety of sources, including “the words
`
`of
`
`the claims
`
`themselves,
`
`the remainder of
`
`the
`
`specification, the prosecution history, and extrinsic
`
`evidence concerning relevant scientific principles, the
`
`meaning of technical terms, and the state of the art.”
`
`Phillips v. AWH Corp., 415 F.3d at 1314, 75 USPQ2d
`
`at 1327. If extrinsic reference sources, such as
`
`dictionaries, evidence more than one definition for the
`
`term, the intrinsic record must be consulted to identify
`
`which of the different possible definitions is most
`
`consistent with Applicant’s use of the terms. Brookhill-
`
`Wilk 1, 334 F.3d at 1300, 67 USPQ2d at 1137; see also
`
`
`
`7 7
`
`
`
`Case IPR2015-01613
`
`
`
`Patent Owner’s Response to Petition
`Patent 5,917,405
`
`
`
`
`
`
`
`
`
`
`Renishaw PLC v. Marposs Societa' per Azioni, 158
`
`F.3d 1243, 1250, 48 USPQ2d 1117, 1122 (Fed. Cir.
`
`1998) (“Where there are several common meanings for
`
`a claim term, the patent disclosure serves to point away
`
`from the improper meanings and toward the proper
`
`meanings.”) and Vitronics Corp. v. Conceptronic Inc.,
`
`90 F.3d 1576, 1583, 39 USPQ2d 1573, 1577 (Fed. Cir.
`
`1996) (construing the term “solder reflow temperature”
`
`to mean “peak reflow temperature” of solder rather than
`
`the “liquidus temperature” of solder in order to remain
`
`consistent with the specification.). (Emphasis added).
`
`
`
`“[A] patentee may choose to be his own lexicographer” and assign special
`
`definitions to the words in the claim, as long as those definitions are clearly
`
`stated in the patent specification or file history. Vitronics Corp. v. Conceptronic,
`
`Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (citing Hoechst Celanese Corp. v. BP
`
`Chems. Ltd., 78 F.3d 1575, 1578 (Fed. Cir. 1996)). Therefore, “it is always
`
`necessary to review the specification to determine whether the inventor has used
`
`any terms in a manner inconsistent with their ordinary meaning. The
`
`
`
`8 8
`
`
`
`Case IPR2015-01613
`
`
`
`Patent Owner’s Response to Petition
`Patent 5,917,405
`
`
`
`
`
`
`
`
`
`
`specification acts as a dictionary when it expressly defines terms used in the
`
`claims or when it defines terms by implication.” Id. Because the specification
`
`must contain a description sufficient to those of ordinary skill in the art to make
`
`and use the invention, the specification “is the single best guide to the meaning of
`
`a disputed claim term.” Id.
`
`B.
`
`“control device”
`
`For purposes of its Decision, the Board adopted the express definition of
`
`
`
`
`
`“control device” provided during prosecution of the patent application that issued
`
`as related U.S. Patent No. 7,397,363, which is “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.”
`
`Decision at 8.
`
`
`
`JCMS respectfully submits that this construction should be adopted for the
`
`remainder of this IPR.
`
`C.
`
`“first signal,” “second signal” and “third signal”
`
`JCMS respectfully submits that construction of these terms is necessary at
`
`
`
`
`
`this time, as will become apparent below.
`
`
`
`9 9
`
`
`
`Case IPR2015-01613
`
`
`
`Patent Owner’s Response to Petition
`Patent 5,917,405
`
`
`
`
`
`
`
`
`
`
`
`In litigation involving the ‘405 Patent, the U.S. District Court for the
`
`Eastern District of Michigan issued an Opinion and Order Construing Disputed
`
`Claim Terms in which they construed the terms “first signal,” “second signal”
`
`and “third signal” as follows:
`
`“The Court does, however, find that Defendant’s
`
`proposed alternative constructions are consistent with
`
`the normal understanding of the claim terms. In fact,
`
`the parties agree that the “first signal” is a signal sent
`
`by the first device, the “second signal” is sent by the
`
`second device, and the “third signal” is sent by the
`
`third device.” EX2004 at 23. (emphasis added).
`
`JCMS respectfully submits that, for purposes of this proceeding, these
`
`constructions should be adopted, as they are required to evaluate the merits of
`
`Petitioner’s arguments, namely:
`
`• “first signal” is “a signal sent by a first device”
`
` •
`
` “second signal” is “a signal sent by a second
` device”
`
` •
`
` “third signal” is “a signal sent by a third
` device”
`
`
`
`10 10
`
`
`
`Case IPR2015-01613
`
`
`
`Patent Owner’s Response to Petition
`Patent 5,917,405
`
`
`
`
`
`
`
`
`
`
`IV. THE PROPOSED GROUNDS FAIL TO MEET THE BURDEN OF
` SHOWING A REASONABLE LIKELIHOOD OF PREVAILING
`
`
`
`
`
`A. Ground 1 is Deficient
`
`Ground 1 alleges that claims 1, 2, 7, 8, 11, 12, 14, 16, 17, 19 and 20 are
`
`anticipated by Kniffen. However, Patent Owner respectfully submits that Kniffin
`
`fails to disclose every claimed element and feature of claims 1, 2, 7, 8, 11, 12, 14,
`
`16, 17, 19 and 20, as required under § 102, when the claim elements are properly
`
`construed.
`
`
`
`At the outset, Patent Owner disagrees with the Petitioner’s interpretation of
`
`“control device” that would allow the “access control device 64” of Kniffin to
`
`serve as the “first control device” of claim 1 and the “third control device” of
`
`claims 12 and 16. Patent Owner also maintains that the “access control device
`
`64” is the vehicle system being controlled and is not, and does not contain the
`
`“first control device” of claim 1 and the “third control device” of claims 12 and
`
`16.
`
`Storing a delivery schedule in a memory does not constitute
`1.
`
`
` “activating” or “enabling” a vehicle system/component
`
`Independent claim 1 recites, inter alia, “a first control device . . . [that]
`
`one of generates and transmits a first signal for one of activating, deactivating,
`
`
`
`11 11
`
`
`
`Case IPR2015-01613
`
`
`
`Patent Owner’s Response to Petition
`Patent 5,917,405
`
`
`
`
`
`
`
`
`
`
`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 . . . one
`
`of generated by . . . and transmitted from a second control device [that] is located
`
`at a location which is remote from the vehicle . . .” (emphasis added).
`
`Claim 12 similarly recites, inter alia, “a first control device . . . [that] 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 a
`
`location remote from the vehicle . . . wherein said first signal controls a third
`
`control device . . . [that] is located at the vehicle . . . wherein the third control
`
`device one of generates and transmits a third signal for one of activating,
`
`deactivating, enabling, and disabling, one of a vehicle component, a vehicle
`
`device, a vehicle system, and a vehicle subsystem, in response to said first
`
`signal.” (emphasis added).
`
`
`
`Claim 16 recites, inter alia, “transmitting a second signal from [a] second
`
`control device to a third control device . . . [that] is located at the vehicle, and
`
`further wherein the second control device is located at a location remote from the
`
`
`
`12 12
`
`
`
`Case IPR2015-01613
`
`
`
`Patent Owner’s Response to Petition
`Patent 5,917,405
`
`
`
`
`
`
`
`
`
`
`vehicle; generating a third signal at the third control device in response to the
`
`second signal, [and] one of activating, deactivating, enabling, and disabling, one
`
`of a vehicle component, a vehicle device, a vehicle system, and a vehicle
`
`subsystem, in response to said third signal.” (emphasis added).
`
`
`
`Petitioner asserts that the “first control device” of claim 1, and the “third
`
`control device” of claims 12 and 16, are satisfied by Kniffin’s “access control
`
`device 64.” Petition at 16, 20-22. Petitioner further asserts
`
`that
`
`the
`
`“clearinghouse” of Kniffin (element 18 in Fig. 1 of Kniffin and element 66 in
`
`Fig. 4 of Kniffin) corresponds to the claimed “second control device” of claims 1
`
`and 16, and the “first control device” of claim 12. Id. at 16, 20, 21. Petitioner also
`
`asserts that the combination of the telephone 22 and communications link 16 of
`
`Kniffin (shown in Fig. 1 of Kniffin) corresponds to the claimed “third control
`
`device” of claim 1, the claimed “second control device” of claim 12, and the
`
`claimed “first control device” of claim 16. Id. at 17, 20, 21.
`
`
`
`
`
`Figs. 1 and 4 of Kniffin are reproduced below:
`
`13 13
`
`
`
`Patent Owner’s Response to Petition
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2015-01613
`Patent 5,917,405
`
`
`
`
`
`Kniffin states that the access control device 64 in Fig. 4 can take the form
`
`as the lock 12 in Fig. 1. EX1002 at 8:45-48 (“[a]lthough the access control device
`
`64 is not particularly detailed in FIG. 4, 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)”).
`
`
`
`In addressing the requirement in independent claims 1, 12 and 16 that a
`
`control device at the vehicle must generate a signal “for one of activating,
`
`deactivating, enabling, and disabling, one of a vehicle component, a vehicle
`
`device, a vehicle system, and a vehicle subsystem,” Petitioner states the
`
`following:
`
`
`
`14 14
`
`
`
`Case IPR2015-01613
`
`
`
`Patent Owner’s Response to Petition
`Patent 5,917,405
`
`
`
`
`
`
`
`
`
`
`“According to Kniffin, a delivery company may contact
`
`clearinghouse 66, and provide a schedule of deliveries for
`
`the truck. Once clearinghouse 66 verifies the schedule of
`
`deliveries, the clearinghouse 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). 8:15-24; EX.
`
`1006, ¶ 15.” Petition at 16. (emphasis added).
`
`
`
`Thus, Petitioner, in a brief parenthetical, asserts that storing of a schedule
`
`of deliveries in memory satisfies the requirement of a control device at the
`
`vehicle that generates a signal “for one of activating, deactivating, enabling, and
`
`disabling, one of a vehicle component, a vehicle device, a vehicle system, and a
`
`vehicle subsystem,” with absolutely no analysis as to how the act of storing
`
`information in a memory constitutes “activating’ or “enabling” that memory.
`
`
`
`It is indisputable that Kniffin is directed to a system for remotely
`
`controlling a lock mechanism. Every embodiment described and illustrated in
`
`Kniffin is directed to remotely controlling a lock mechanism. Indeed, the
`
`
`15 15
`
`
`
`Case IPR2015-01613
`
`
`
`Patent Owner’s Response to Petition
`Patent 5,917,405
`
`
`
`
`
`
`
`
`
`
`disclosure of Kniffin makes it clear that the CPU 30 sends a signal to the lock
`
`mechanism 32 in order to lock or unlock the vehicle. See EX1002 at 3:64-66 (“In
`
`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”). See also EX1002 at 8:46-48. Thus, it is abundantly clear that it is the
`
`lock mechanism which is the vehicle system/component which is being
`
`controlled in Kniffin.
`
`
`
`Petitioner has offered no analysis or explanation whatsoever, in the form of
`
`an opinion from its expert, Mr. Andrews or otherwise, as to how storing a
`
`schedule of deliveries which is received from a remote control device, in a
`
`memory, satisfies the requirement in independent claims 1, 12 and 16 that a
`
`control device at the vehicle must generate a signal “for one of activating,
`
`deactivating, enabling, and disabling, one of a vehicle component, a vehicle
`
`device, a vehicle system, and a vehicle subsystem” in response to a signal from a
`
`remote control device.
`
`
`
`Further, there is no disclosure in Kniffin that the storing of a schedule of
`
`deliveries in a memory constitutes “one of activating, deactivating, enabling, and
`
`
`
`16 16
`
`
`
`Case IPR2015-01613
`
`
`
`Patent Owner’s Response to Petition
`Patent 5,917,405
`
`
`
`
`
`
`
`
`
`
`disabling, one of a vehicle component, a vehicle device, a vehicle system, and a
`
`vehicle subsystem.”
`
`Kniffin fails to disclose an “A to B to C” system for
`2.
`
`
` controlling a vehicle system/component in response to a
` signal from a control device located remote from the vehicle
`
`Independent claim 1 recites, inter alia, “a first control device . . . [that]
`
`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 . . .
`
`one of generated by . . . and transmitted from a second control device [that] is
`
`located at a location which is remote from the vehicle . . .” (emphasis added).
`
`Claim 12 similarly recites, inter alia, “a first control device . . . [that] 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 a
`
`location remote from the vehicle . . . wherein said first signal controls a third
`
`control device . . . [that] is located at the vehicle . . . wherein the third control
`
`device one of generates and transmits a third signal for one of activating,
`
`
`
`17 17
`
`
`
`Case IPR2015-01613
`
`
`
`Patent Owner’s Response to Petition
`Patent 5,917,405
`
`
`
`
`
`
`
`
`
`
`deactivating, enabling, and disabling, one of a vehicle component, a vehicle
`
`device, a vehicle system, and a vehicle subsystem, in response to said first
`
`signal.” (emphasis added).
`
`Claim 16 recites, inter alia, “transmitting a second signal from [a] second
`
`control device to a third control device . . . [that] is located at the vehicle, and
`
`further wherein the second control device is located at a location remote from the
`
`vehicle; generating a third signal at the third control device in response to the
`
`second signal, [and] one of activating, deactivating, enabling, and disabling, one
`
`of a vehicle component, a vehicle device, a vehicle system, and a vehicle
`
`subsystem, in response to said third signal.” (emphasis added).
`
`
`
`As discussed supra, Petitioner asserts that the “first control device” of
`
`claim 1, and the “third control device” of claims 12 and 16, are satisfied by
`
`Kniffin’s “access control device 64.” Petition at 16, 20-22. Petitioner further
`
`asserts that the “clearinghouse” of Kniffin (element 18 in Fig. 1 of Kniffin and
`
`element 66 in Fig. 4 of Kniffin) corresponds to the claimed “second control
`
`device” of claims 1 and 16, and the “first control device” of claim 12. Id. at 16,
`
`20, 21. Petitioner also asserts that the combination of the telephone 22 and
`
`communications link 16 of Kniffin (shown in Fig. 1 of Kniffin) corresponds to
`
`
`
`18 18
`
`
`
`Case IPR2015-01613
`
`
`
`Patent Owner’s Response to Petition
`Patent 5,917,405
`
`
`
`
`
`
`
`
`
`
`the claimed “third control device” of claim 1, the claimed “second control
`
`device” of claim 12, and the claimed “first control device” of claim 16. Id. at 17,
`
`20, 21.
`
`
`
`Kniffin states that the access control device 64 in Fig. 4 can take the form
`
`as the lock 12 in Fig. 1. EX1002 at 8:45-48 (“[a]lthough the access control device
`
`64 is not particularly detailed in FIG. 4, 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)”).
`
`
`
`Should Petitioner assert that the CPU 30 of Kniffin sending a signal to the
`
`lock mechanism 32 constitutes controlling a vehicle system/component in
`
`response to a signal from a control device located remote from the vehicle, this
`
`argument would fail.
`
`The access control device 64 of Kniffen does not generate a signal (the
`
`claimed “first signal” in claim 1 and the claimed “third signal” in claims 12 and
`
`16) 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
`
`claimed “second control device” of claims 1 and 16, and “first control device”
`
`
`
`19 19
`
`
`
`Case IPR2015-01613
`
`
`
`Patent Owner’s Response to Petition
`Patent 5,917,405
`
`
`
`
`
`
`
`
`
`
`of claim 12). The signal from the clearinghouse 66 is a signal that contains an
`
`authorized schedule of stops for the truck. EX1002 at 8:15-24. This authorized
`
`schedule of stops does not trigger the transmission of a signal from the access
`
`control device 64 for unlocking the lock mechanism 12, but rather, this schedule
`
`of stops is transmitted from the clearinghouse 66 to the access control device 64
`
`and is stored in memory 68. Id. at 8:21-24 (“[a]fter suitable verification checks,
`
`the clearinghouse transmits to the targeted truck access control device 64 the
`
`authorized schedule of stops, which data is received and stored in memory 68). It
`
`is important to note that Mr. Andrews confirmed that embodiment #4 of Kniffin
`
`is the only embodiment which pertains to vehicles. See EX2006 at p. 54, line 23
`
`to p. 55, line 2.
`
`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. EX1002 at 8:25-33. The signal from the
`
`“identification device 70” is received by the sensor 36 of Kniffin. If the truck
`
`stops at an authorized destination (as determined by the authorized schedule of
`
`stops stored in memory 68), then the signal from the identification device 70,
`
`
`20 20
`
`
`
`Case IPR2015-01613
`
`
`
`Patent Owner’s Response to Petition
`Patent 5,917,405
`
`
`
`
`
`
`
`
`
`
`which is received by sensor 36, will trigger the access control device 64 to
`
`generate a signal for unlocking the lock mechanism 12. Id.
`
`
`
`Kniffin explains this functionality unequivocally:
`
`“when the truck arrives at its first delivery stop, the truck
`
`access control device 64 senses this fact by detecting an
`
`identification device 70 maintained at that location. The
`
`identification device may be a proximity card mounted at
`
`the loading dock, or may be an electronic key carried by
`
`a manager employed at the first delivery stop. If the
`
`detected identification device corresponds to the first
`
`expected stop that had been earlier programmed, the
`
`truck access control device unlocks, permitting access to
`
`the truck’s contents.” Id. At 8:25-33. (emphasis added).
`
`
`
`Indeed, Petitioner’s expert, Scott Andrews, confirmed this functionality
`
`during his cross-examination testimony:
`
`EX2006 at p. 143, lines 6-12
`
`
`
`21 21
`
`
`
`Case IPR2015-01613
`
`
`
`Patent Owner’s Response to Petition
`Patent 5,917,405
`
`
`
`
`
`
`
`
`
`
`Q: Okay. So the information that we’ve described, then,
`
`going back to Figure 1, that’s being transmitted from the
`
`clearinghouse to the lock 12, is the schedule information
`
`that may include time and place?
`
`A: That’s right. I think that’s a fair characterization.
`
`
`
`
`
`EX2006 at p. 145, line 5 to p. 146, line 3
`
`Q: Okay. Let’s assume for the sake of this next round of
`
`questions that the schedule information that is sent from
`
`the clearinghouse to the locked – or the element 12, the
`
`lock, through receiver 14 is – that information is stored in
`
`memory. Okay?
`
`A: Okay.
`
`Q: And let’s assume also that that is for a plurality of
`
`stops, that is, for some stops exceeding one.
`
`A: Fine.
`
`Q: Okay. We’re at the second stop. What happens?
`
`A: Okay. So we arrive at the second stop. The sensor 36
`
`detects that we are at the second stop, it tells the CPU.
`
`22 22
`
`
`
`
`
`Case IPR2015-01613
`
`
`
`Patent Owner’s Response to Petition
`Patent 5,917,405
`
`
`
`
`
`
`
`
`
`
`The CPU has a conditional statement in its code that
`
`says, if you are at this stop or, you know, you’re allowed
`
`to open at these particular stops, and it’s going to
`
`compare the stop you’re at to the second that you are
`
`allowed to open at, and if they match, if one of them
`
`matches, you will open the lock. And I think Kniffin also
`
`describes that you can specify the particular order of
`
`stops so that you have to unlock – you have to go to the
`
`stops in the order that that was specified. (empha
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
