UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.
`Petitioner
`
`Patent No. 5,917,405
`Issue Date: June 29, 1999
`Title: CONTROL APPARATUS AND METHODS FOR VEHICLES
`__________________________________________________________________
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 5,917,405
`PURSUANT TO 35 U.S.C. § 312 and 37 C.F.R. § 42.104
`
`Case No. IPR2015-01613
`__________________________________________________________________
`
`
`
`

`
`
`
`I. 
`II. 
`III. 
`
`TABLE OF CONTENTS
`Mandatory Notices (37 C.F.R. § 42.8) ........................................................... 1 
`Grounds for Standing (37 C.F.R. § 42.104(a)) ............................................... 3 
`Identification of Challenge (37 C.F.R. § 42.104(b)(1)-(3)) and Relief
`Requested (37 C.F.R. § 42.22(a)(1)) .............................................................. 3 
`A. 
`The ’405 Patent .................................................................................... 3 
`B. 
`Prosecution History of the ’405 Patent ................................................ 5 
`1. 
`The Original Prosecution ........................................................... 5 
`2. 
`Reexamination of the ’405 Patent ............................................ 10 
`Patents and Printed Publications Relied On ....................................... 11 
`C. 
`Statutory Grounds for Challenge (37 C.F.R. § 42.104(b)(1)-(2)) ...... 11 
`D. 
`Claim Construction (37 C.F.R. § 42.104(b)(3)) ................................. 12 
`E. 
`IV.  How Challenged Claims Are Unpatentable (37 C.F.R. § 42.104(b)(4)-
`(5)) ................................................................................................................ 14 
`A. 
`Claims 1, 2, 7, 8, 11, 12, 14, 16, 17, 19, and 20 are Anticipated
`by Kniffin ........................................................................................... 14 
`1. 
`Claims 1, 2, 7, 8, and 11 .......................................................... 16 
`2. 
`Claims 12 and 14...................................................................... 20 
`3. 
`Claims 16, 17, 19, and 20 ........................................................ 21 
`Claim 3 is Obvious in View of the Combination of Kniffin and
`DiLullo ............................................................................................... 35 
`Claims 1, 2, 7, 8, 11, 12, 14, 16, 17, 19, and 20 are Anticipated
`by Ryoichi .......................................................................................... 37 
`1. 
`Claims 1, 2, 7, 8, and 11 .......................................................... 39 
`2. 
`Claims 12 and 14...................................................................... 43 
`3. 
`Claims 16, 17, 19, and 20 ........................................................ 44 
`Claim 3 is Obvious in View of the Combination of Ryoichi and
`Mansell ............................................................................................... 57 
`The Proposed Grounds of Unpatentability Are Not Redundant .................. 59 
`V. 
`VI.  Conclusion .................................................................................................... 60 
`
`
`
`B. 
`
`C. 
`
`D. 
`
`i
`
`

`
`
`
`Ex. 1001
`
`Ex. 1002
`
`Ex. 1003
`
`Ex. 1004
`
`Ex. 1005
`
`Ex. 1006
`
`
`LISTING OF EXHIBITS
`
`U.S. Patent No. 5,917,405 to Joao
`
`U.S. Patent No. 6,072,402 to Kniffin
`
`U.S. Patent No. 5,113,427 to Ryoichi
`
`U.S. Patent No. 4,897,642 to DiLullo
`
`U.S. Patent No. 5,223,844 to Mansell
`
`Declaration of Scott Andrews
`
`ii
`
`

`
`
`
`I. Mandatory Notices (37 C.F.R. § 42.8)
`Real Party-in-Interest: Volkswagen Group of America, Inc. (“VWGoA”), which is
`
`a subsidiary of Volkswagen AG.
`
`Related Matters: The following judicial matter may affect, or may be affected by, a
`
`decision in this inter partes review: Joao Control & Monitoring Systems, LLC v.
`
`Volkswagen Group of America, Inc., et al., No. 1:14-cv-517 (D. Del.), in which
`
`VWGoA and its subsidiary Bentley Motors, Inc. are defendants. Judicial matters in
`
`the following districts, against the following parties, may affect, or may be affected
`
`by, a decision in this inter partes review: in the District of Delaware, Nissan (1:14-
`
`cv-523), Mazda (1:13-cv-728), Mitsubishi (1:13-cv-00614), Jaguar Land Rover
`
`(1:13-cv-507), Verizon (1:14-cv-525), Cox (1:14-cv-520), Consolidated Edison
`
`(1:14-cv-519), Time Warner Cable (1:14-cv-524), Cablevision (1:14-cv-518),
`
`DirecTV
`
`(1:14-cv-521), DISH
`
`(1:14-cv-522), Alarm.com
`
`(1:14-cv-284),
`
`FrontPoint Security Solutions (1:13-cv-1760), Vivint (1:13-cv-508), American
`
`Traffic Solutions (1:13-cv-243), and Ford (1:12-cv-1479); in the Eastern District of
`
`Michigan, Chrysler (4:13-cv-13957) and Ford (4:13-cv-13615 and 4:12-cv-14004);
`
`in the Southern District of New York, Chrysler (1:13-cv-53), City of Yonkers
`
`(1:12-cv-7734), Digital Playground (1:12-cv-6781), Liquid (1:12-cv-6315), and
`
`Cenuco (7:05-cv-01037); in the Eastern District of New York, Slomin’s (2:14-cv-
`
`2598); in the Central District of California, Ford (2:12-cv-33), Hyundai (8:12-cv-
`
`1
`
`

`
`
`
`7), ACTI (8:10-cv-1909), Honda (2:12-cv-4013), Xanboo (2:12-cv-3698 and 8:11-
`
`cv-604), Smartvue (2:12-cv-3641), Digital Playground (2:12-cv-417), GSMC
`
`(2:11-cv-9636 and -8697), Game Link (2:11-cv-9633 and -8695), Ahava (2:11-cv-
`
`9638), Webcamnow.com (2:11-cv-8257); in the Northern District of California,
`
`Sling Media, Inc. (3:11-cv-6277); in the Eastern District of Pennsylvania,
`
`LifeShield (2:15-cv-2772); in the Northern District of Illinois, Telular (1:14-cv-
`
`9852); in the District of Arizona, Mobile Integrated Solutions (2:14-cv-2643); in
`
`the Northern District of Georgia, Comverge (1:14-cv-3862); in the Western
`
`District of North Carolina, CPI Security Systems (3:14-cv-202) and Lowe’s (5:13-
`
`cv-56); in the Western District of Texas, Protect America (1:14-cv-134); and in the
`
`Eastern District of Texas, Playboy (6:09-cv-499).
`
` The following administrative matters may affect, or may be affected by, a
`
`decision in this inter partes review: U.S. Pat. App. Ser. Nos.: 08/883,467;
`
`10/781,751; 11/180,822; and 12/150,363; U.S. Pat. Nos. 6,549,130; 6,542,076;
`
`6,542,077; 7,397,363; 7,277,010; and 6,587,046; Reexamination Control Nos.
`
`90/013,300; 90/013,301; 90/013,302; and 90/013,303; and Inter Partes Review
`
`Nos. IPR2015-01466, -01477, -01478, -01482, -01484, -01485, -01486, -01508, -
`
`01509, -01585, -01610, -01611, -01612, and 01645.
`
`Lead counsel: Michael J. Lennon (Reg. No. 26,562)
`
`Backup counsel: Clifford A. Ulrich (Reg. No. 42,194)
`
`2
`
`

`
`
`
`Service: VWGoA agrees to electronic service at the following email addresses:
`
`mlennon@kenyon.com and culrich@kenyon.com. Service may be made at the
`
`following address: Kenyon & Kenyon LLP, One Broadway, New York, NY 10004
`
`(Telephone: 212-425-7200; Facsimile: 212-425-5288).
`
`II. Grounds for Standing (37 C.F.R. § 42.104(a))
` VWGoA certifies that U.S. Patent No. 5,917,405 (“the ’405 patent,” Ex. 1001)
`
`for which review is sought is available for inter partes review and that it is not
`
`barred or estopped from requesting an inter partes review challenging the patent
`
`claims on the grounds identified in this petition.
`
`III. Identification of Challenge (37 C.F.R. § 42.104(b)(1)-(3)) and Relief
`Requested (37 C.F.R. § 42.22(a)(1))
` VWGoA challenges claims 1, 2, 3, 7, 8, 11, 12, 14, 17, 19, and 20 of the ’405
`
`Patent under 35 U.S.C. §§ 102 and 103, and requests cancelation of those claims.
`
`A. The ’405 Patent
` The ’405 patent issued to Raymond Joao on June 29, 1999, from U.S. Patent
`
`Application Serial No. 08/683,828 (“the ’828 application”), filed July 18, 1996.
`
` The ’405 patent describes a control, monitoring, and/or security apparatus for
`
`vehicles that may be operated remotely, and may be linked to “a variety of vehicle
`
`equipment systems.” 4:41-43. Such vehicle systems may include alarms, horns,
`
`power door locks, video recording devices, cellular or mobile phones, or vehicle
`
`recovery systems. 4:41-61. The claims of the ’405 patent include three control
`
`devices: one control device at the vehicle, another control device remote from the
`3
`
`

`
`
`
`vehicle, and yet another control device remote from the other remote control
`
`device and remote from the vehicle. The claims describe signals sent by one
`
`remote control device, via the other remote control device, to the in-vehicle control
`
`device, which activates or deactivates a vehicle component in response to a
`
`received signal. Ex. 1006, ¶¶ 3-5.
`
` Claim 1 is reproduced below (emphasis added):
`
`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.
` The ’405 patent describes the use of a remote transmitter system 2, remote from
`
`the apparatus 1 and from the motor vehicle. 18:58-63. The transmitter system may
`
`be “a touch tone telephone which may be a line-connected telephone, a cordless
`
`telephone and/or a cellular or mobile telephone.” 19:8-10.
`4
`
`

`
`
`
` Responsive to the remote transmitter system 2 is a receiver 3, which “may be
`
`any receiver which is capable of receiving the remote electrical, electronic,
`
`electromagnetic, and/or other signals, which may be transmitted by the transmitter
`
`system 2” (19:52-56), such as a beeper or pager system (19:63). The system
`
`contains a controller or CPU 4, “which receives, or reads, whichever the case may
`
`be, the digital signal or signals, or portions thereof, which are received by the
`
`receiver 3 and/or generated by the receiver 3 in response to the received signal.”
`
`20:57-62. The CPU 4 is connected to, and controls, vehicle systems. 21:42-24:63.
`
`“The vehicle equipment system or systems 11 receives signals from the CPU 4,
`
`which signals serve to activate or de-activate, or vice versa, whichever the case
`
`may be, the respective vehicle equipment system(s) 11 which are utilized in
`
`conjunction with the apparatus 1.” 24:63-67; Ex. 1006, ¶ 3.
`
`B. Prosecution History of the ’405 Patent
`1. The Original Prosecution
` As described in more detail below, the claims of the ’405 patent were allowed
`
`only after they were amended to describe three control devices and a particular
`
`chain of command among the three control devices.
`
` The original claims of the ’828 application included systems having one or two
`
`control devices, and an activation device. For example, the apparatus of application
`
`claim 1 included a control device and an activation device for activating the control
`
`device, while the apparatus of application claim 13 included a first control device,
`
`5
`
`

`
`
`
`a second control device, and an activation device for activating the first and second
`
`control devices. The control devices generated control signals for a vehicle device.
`
`Ex. 1006, ¶ 6. An Office Action on March 11, 1997, found all claims anticipated
`
`by or obvious over U.S. Patent No. 5,334,974 (“Simms”), describing combining
`
`satellite location technology with cellular telephone or satellite communication
`
`technology. The Examiner determined that Simms’s microcontroller disclosed the
`
`claimed control device, that Simms’s cellular telephone and remote sensors
`
`disclosed the claimed activation device, and that the addition of a second control
`
`device was obvious. Office Action, Mar. 11, 1997, at 2, 6.
`
` After an Examiner interview, Joao amended the claims on July 10, 1997, to add
`
`a second control device to claim 1 and a third control device to claim 13. Ex. 1006,
`
`¶ 7. An Office Action issued on October 20, 1997, rejecting all claims as
`
`anticipated by U.S. Patent No. 5,557,254 to Johnson, which describes a
`
`microcontroller receiving input from various intrusion detection devices. The
`
`Examiner determined that Johnson’s communications scheme between a CPU, the
`
`microcontroller, and the intrusion detection devices to control a vehicle’s lights,
`
`horn, or fuel line, disclosed the claimed control devices.
`
`
`
`In a Continued Prosecution Application, Joao asserted a claim to the benefit of
`
`earlier-filed applications,1 and argued that Johnson does not constitute prior art.
`
`1 VWGoA does not concede that any claim of the ’405 patent is entitled to a filing
`
`6
`
`

`
`
`
`Preliminary Amendment, Jan. 26, 1998, at 9. Joao canceled all claims and added
`
`new claims 24-43. Again, the claims included systems having two (claim 24) or
`
`three (claim 34) control devices. See claim 34 (emphasis added) (Ex. 1006, ¶ 8):
`
`34. A control, monitoring and/or security system for a vehicle, which
`
`comprises:
`
`a first control device for one of controlling and monitoring one of the
`operation and status of one of the vehicle and a vehicle one of component,
`device, system and subsystem, wherein said first control device is located at
`the vehicle;
`
`a second control device for one of controlling and monitoring one of the
`operation and status of one of the system, the vehicle and a vehicle one of
`component, device, system and subsystem, wherein said second control
`device is located at a central location;
`
`a third control device for one of controlling and monitoring one of the
`operation and status of one of the system, the vehicle and the vehicle one of
`component, device, system and subsystem, wherein said third control device
`is located at a location which is remote from the vehicle and remote from the
`central location;
` wherein one of said second control device and said third control device
`one of controls, monitors and activates an operation of said first control
`device, and further wherein said first control device generates a signal for at
`least one of controlling, monitoring, securing, disabling and re-enabling at
`least one of the vehicle and the vehicle one of component, device, system
`and subsystem.
`
`date earlier than the July 18, 1996 filing date of the ’828 application.
`
`7
`
`

`
`
`
` After a second preliminary amendment of March 9, 1998, an Office Action
`
`issued on April 28, 1998, rejecting the claims as anticipated by or obvious over
`
`U.S. Patent No. 5,081,667 to Drori, which describes a system combining cellular
`
`telephones with vehicle security systems. The Examiner determined that Drori’s
`
`system controller disclosed the claimed first control device, Drori’s ability to dial
`
`preprogrammed telephone numbers disclosed the claimed second control device
`
`located at a central location, and Drori’s communication with a remote telephone
`
`disclosed the claimed third control device. Office Action, Apr. 28, 1998, at 6-7.
`
` After another Examiner interview, Joao amended the claims on July 27, 1998,
`
`canceling all claims and adding new claims 44-63. The claims included systems
`
`having three control devices, communicating in a sequence of control signals. See
`
`claim 44 (emphasis added) (Ex. 1006, ¶ 9):
`
`44. 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
`8
`
`

`
`
`
`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.
` A Notice of Allowance issued on October 29, 1998, including the following:
`
`Examiner’s primary reason for allowance is in the environment of a control
`apparatus for a vehicle comprising, ‘a first control device, located at a
`vehicle, for generating and transmitting a control signal, first control device
`is responsive to a second signal, second signal is generated and transmitted
`by a second control device remote from first control device and second
`control device is responsive to a third signal, third signal is generated and
`transmitted by a third control device, third control device is at a location
`remote from vehicle and second control device, in that signals are
`sequentially relayed from outside control devices to a control device within
`the vehicle’.
`Notice of Allowance, Oct. 29, 1998 (emphasis in original); Ex. 1006, ¶ 10.
`
`Thus, the recitation of three control devices, and the particular chain of
`
`command among the three control devices, led to the allowance of the claims. Ex.
`
`1006, ¶ 10. A certificate of correction, which is included in Ex. 1001, issued on
`
`May 9, 2000, including corrections to claims 1, 11, 12, and 16.
`
` Claims 1, 12, and 16 identify these same control devices but in different orders,
`
`as shown below; despite the differences in semantics and ordering, the challenged
`
`claims claim the same chain of command among three control devices. The
`
`originating, middle, and in-vehicle control devices are the same across all claims of
`
`9
`
`

`
`
`
`the ’405 patent, and so are identified in this Petition accordingly:
`
`
`
`
`First Control
`Device
`Third Control
`Device
`Third Control
`Device
`
`Middle
`Originating
`Device
`Device
`
`Second Control
`Claim 1 Third Control
`Device
`Device
`First Control
`Claim 12 Second Control
`Device
`Device
`Second Control
`Claim 16 First Control
`Device
`Device
`2. Reexamination of the ’405 Patent
` Ex Parte Reexamination Control No. 90/013,300 (“the ’300 reexam”) was
`
`
`
`
`
`
`
`
`
`
`Vehicle
`Device
`Vehicle
`Device
`Vehicle
`Device
`
`requested by VWGoA on July 21, 2014, challenging claim 1 of the ’405 patent. In
`
`ordering reexamination, the Examiner determined that the following prior art raises
`
`substantial new questions of patentability of claim 1: U.S. Patent No. 5,070,320 to
`
`Ramono; U.S. Patent No. 6,072,402 (“Kniffin,” Ex. 1002); U.S. Patent No.
`
`5,113,427 (“Ryoichi,” Ex. 1003); U.S. Patent No. 5,276,728 to Pagliaroli; the
`
`combination of Ramono, Kniffin, Ryoichi, or Pagliaroli with Drori; and the
`
`combination of Ramono, Kniffin, Ryoichi, or Pagliaroli with U.S. Patent No.
`
`5,103,221 to Memmola. Ex. 1006, ¶ 11. In a December 10, 2014, Office Action,
`
`the Examiner rejected claim 1 as anticipated by each of Ramono, Kniffin, Ryoichi,
`
`and Pagliaroli, finding the proposed obviousness rejections based to be cumulative
`
`and not necessary. The Examiner was not persuaded by Joao’s January 12, 2015
`
`response to the Office Action, the interview with the Examiner held on February 3,
`
`2015, and February 26, 2015 supplemental response to the Office Action, and
`10
`
`

`
`
`
`maintained the anticipation rejections in a Final Office Action of May 22, 2015.
`
`The Examiner was also not persuaded by Joao’s July 20, 2015 response to the
`
`Final Office Action, finding that Joao’s “arguments are not persuasive” in an
`
`Advisory Action dated July 31, 2015. Thus, as of the filing of this petition, claim 1
`
`stands finally rejected as anticipated by each of Ramono, Kniffin, Ryoichi, and
`
`Pagliaroli. The repeated rejection of claim 1 over, e.g., Kniffin and Ryoichi, in the
`
`face of Joao’s arguments, supports the conclusion that there is a reasonable
`
`likelihood that VWGoA will prevail with respect to the claims challenged herein.
`
`C. Patents and Printed Publications Relied On
` U.S. Patent No. 6,072,402 (“Kniffin,” Ex. 1002), issued June 6, 2000, from
`
`U.S. Patent Application Serial No. 07/819,345, filed January 9, 1992, constitutes
`
`prior art against the ’405 patent at least under 35 U.S.C. § 102(e).
`
` U.S. Patent No. 4,897,642 (“DiLullo,” Ex. 1004), issued January 30, 1990,
`
`constitutes prior art against the ’405 patent under 35 U.S.C. § 102(b).
`
` U.S. Patent No. 5,113,427 (“Ryoichi,” Ex. 1003), issued May 12, 1992,
`
`constitutes prior art against the ’405 patent under 35 U.S.C. §102(b).
`
` U.S. Patent No. 5,223,844 (“Mansell,” Ex. 1005), issued June 29, 1993, from
`
`U.S. Patent Application Serial No. 07/870,141, filed April 17, 1992, constitutes
`
`prior art against the ’405 patent at least under 35 U.S.C. § 102(e).
`
`D. Statutory Grounds for Challenge (37 C.F.R. § 42.104(b)(1)-(2))
` Cancelation of claims 1, 2, 3, 7, 8, 11, 12, 14, 16, 17, 19, and 20 is requested on
`
`11
`
`

`
`
`
`the following grounds:
`
`B.
`
`A. Claims 1, 2, 7, 8, 11, 12, 14, 16, 17, 19, and 20 are anticipated by
`Kniffin under 35 U.S.C. § 102(e)
`Claim 3 is obvious under 35 U.S.C. §103(a) in view of the
`combination of Kniffin and DiLullo
`Claims 1, 2, 7, 8, 11, 12, 14, 16, 17, 19, and 20 are anticipated by
`Ryoichi under 35 U.S.C. § 102(b)
`D. Claim 3 is obvious under 35 U.S.C. § 103(a) in view of the
`combination of Ryoichi and Mansell
`VWGoA presents the above grounds of unpatentability to reflect the claims
`
`C.
`
`recently asserted against VWGoA, including claims depending from claim 1,
`
`which, as stated above, stands finally rejected in the ’300 reexam as anticipated by,
`
`e.g., Kniffin and Ryoichi. As the analysis of dependent claims 2, 7, 8, and 11 must
`
`include an analysis of claim 1, the request for cancellation of claim 1 in this
`
`Petition imparts no additional burden to the Board or the parties. Further, the ’405
`
`patent is expired, and so may not be amended in either proceeding, leaving no risk
`
`of the Board considering a claim that might later result in amended form from the
`
`’300 reexam.
`
`E. Claim Construction (37 C.F.R. § 42.104(b)(3))
` The claim terms in an unexpired patent should be given their broadest
`
`reasonable construction in view of the specification. 37 C.F.R. § 42.100(b). Claims
`
`terms in an expired patent are construed according to the principles of Phillips v.
`
`12
`
`

`
`
`
`AWH Corp., 415 F.3d 1303, 1312, 1327 (Fed. Cir. 2005). See, e.g., Square, Inc. v.
`
`J. Carl Cooper, IPR2014-00157 (Paper No. 17) (PTAB Jun. 23, 2014). Under the
`
`Phillips standard, the claim terms are generally presumed to take on their ordinary
`
`and customary meaning, as would be understood by a person of ordinary skill in
`
`the art, at the time of the invention, considering the claim language, the
`
`specification, and the prosecution history. The ’405 patent, on its face, claims the
`
`benefit of the June 8, 1993 filing date of U.S. Patent Application Serial No.
`
`08/073,755, and therefore has expired. The specification of the ’405 patent does
`
`not present any special definition for any claim term, and the original prosecution
`
`history of the ’405 patent does not include any claim construction arguments.
`
` During reexamination, Joao argued that the terms “first control device,”
`
`“second control device,” and “one of vehicle component, a vehicle device, a
`
`vehicle system, and a vehicle subsystem” should be given their ordinary and
`
`customary meaning, but then asserted that the specification (i) precludes a vehicle
`
`device from being a component of the control device controlling that vehicle
`
`device, and (ii) precludes a control device from being part of a communications
`
`network. Response, Feb. 26, 2015, at 3-5, 14-21; Response, Jul. 20, 2015. The
`
`Examiner rejected these positions, stating that the “patent does not offer a
`
`definition that indicates a vehicle component cannot be a subcomponent of another
`
`system,” and that the “patent does not offer any definition of ‘second control
`
`13
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`

`
`
`
`device’ that precludes a radio transmission device.” Final Office Action, May 22,
`
`2015, at 10-11; see also, Jul. 31, 2015 Advisory Action. Therefore, these terms, as
`
`well as all other terms, should be given their ordinary and customary meaning.
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` Moreover, applying the Phillips standard, the claim terms “first control device”
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`and “second control device” are clear on their face. There is no special definition
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`of these terms presented in the specification, and the claims describe the function
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`and interaction of these control devices within the claimed apparatus and method.
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`In the ’300 reexam, Joao has not proposed any claim construction, and has not
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`provided any specific evidence that would exclude the configurations of devices
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`described by the prior art from the scope of the claims in the manner proposed.
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`IV. How Challenged Claims Are Unpatentable (37 C.F.R. § 42.104(b)(4)-(5))
` As described above, during the original prosecution of the ’405 patent, the
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`claims of the ’405 patent were allowed only after they were amended to describe
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`three control devices and a particular chain of command among the three control
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`devices. The prior art cited herein describes the claimed chain of command among
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`three control devices, so that the claims of the ’405 patent are unpatentable.
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`A. Claims 1, 2, 7, 8, 11, 12, 14, 16, 17, 19, and 20 are Anticipated by Kniffin
` Claims 1, 2, 7, 8, 11, 12, 14, 16, 17, 19, and 20 are anticipated by Kniffin under
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`35 U.S.C. § 102(e). Kniffin describes the claimed chain of three control devices,
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`which was the basis for allowing the claims of the ’405 patent. Kniffin was not
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`cited by the Examiner or Joao during the original prosecution of the ’405 patent,
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`14
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`and is the basis of a final anticipation rejection of claim 1 in the ’300 reexam.
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` Kniffin discloses the claimed chain of three control devices, e.g., access control
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`device 64 (in-vehicle control device), clearinghouse 18 or 66 (middle device,
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`located remote from the vehicle), and telephone 22 and communications link 16
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`(originating device, located remote from the other control device and remote from
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`the vehicle), sends control signals from one device to the next, culminating in the
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`activation (or deactivation) of a vehicle system,
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`e.g., storing an authorized schedule in a
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`memory. Referring
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`to Figure 1, Kniffin
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`discloses a secure entry system 10, including
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`telephone 22, communications link 16, clearinghouse 18 connected to RF
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`transmission system 26, and access control device 12 having a cellular, paging, or
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`other RF receiver 14. 2:25-53; Ex. 1006, ¶ 13.
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` According to Kniffin, a user establishes communication over communications
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`link 16 (originating device) to clearinghouse 18 (middle device), which determines
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`if the user is authorized to access the access control device 12 (in-vehicle control
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`device). If so, clearinghouse 18 (middle device) uses RF transmission system 26 to
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`transmit a signal to access control device 12 (in-vehicle control device), via RF
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`receiver 14. 2:25-53; Ex. 1006, ¶ 14. In a vehicle embodiment, access control
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`device 64 (in-vehicle control device) is used to control the door locks on a truck
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`15
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`62. 8:11-14. Truck access control device 64 (in-vehicle
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`control device) “can take the same form as lock 12 of
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`FIG. 1 (but with a lock mechanism adapted to secure
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`the doors of a delivery truck).” 8:46-48; Ex. 1006, ¶ 15; see Fig. 4:
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`1. Claims 1, 2, 7, 8, and 11
` Claim 1 recites a first control device, located in a vehicle, sending a first signal
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`for activating, deactivating, enabling, and/or disabling a vehicle component,
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`device, system, and/or subsystem. According to Kniffin, a delivery company may
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`contact clearinghouse 66, and provide a schedule of deliveries for the truck. Once
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`clearinghouse 66 verifies the schedule of deliveries, clearinghouse 66 transmits the
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`schedule to the truck access control device 64 (the in-vehicle control device, i.e., at
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`the truck 62 shown in Fig. 4), and stores the schedule in memory 68 (storing of the
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`schedule constitutes activating a vehicle component). 8:15-24; Ex. 1006, ¶ 15
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` Claim 1 further recites that the first control device is responsive to a second
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`signal from a second control device located at a location remote from the vehicle.
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`Kniffin’s clearinghouse 18 (middle device) of Figure 1 includes computer 20 and
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`database 24 that communicates with the access control device 12 via a radio
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`transmission, e.g., by a paging or cellular telephone system, or other RF carrier.
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`2:44-49; Ex. 1006, ¶ 14. Similarly, in the vehicle embodiment, clearinghouse 66
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`(middle device), remote from the vehicle, transmits a signal to truck access control
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`16
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`device 64 (in-vehicle control device),
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`located at
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`the vehicle. 8:21-24.
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`Clearinghouse 66 receives signals from a telephone 22 and communications link
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`16, and includes an RF transmission system for transmitting the verified schedule
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`of stops. Moreover, truck access control device 64 is responsive to reprogramming
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`signals from clearinghouse 66. 8:61-67; Ex. 1006, ¶ 15.
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` Claim 1 also recites that the second control device is responsive to a third signal
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`from a third control device located remote from the vehicle and from the second
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`control device. Kniffin describes a “user who seeks access to the lock establishes
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`communication (by a cellular telephone, by a conventional telephone, or by some
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`other communications link 16) to a clearinghouse 18”; the user identifies the lock
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`12 to which access is desired, using, for example, a telephone’s Touch Tone pad 22
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`(originating device). 2:31-43; Ex. 1006, ¶ 14. In the vehicle embodiment of Figure
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`4, the communications link 16 and telephone 22 (originating device) is similarly
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`illustrated in connection with clearinghouse 66. Communication link 16 and
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`telephone 22 (originating device) are remote from clearinghouse 18 or 66 (middle
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`devices) and delivery truck 62. 8:61-67; Ex. 1006, ¶ 15.
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`In view of the foregoing, Kniffin directly addresses the Examiner’s reasons for
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`allowing the claims of the ’405 patent, i.e., “a first control device, located at a
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`vehicle, for generating and transmitting a control signal, first control device is
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`responsive to a second signal, second signal is generated and transmitted by a
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`second control device remote from first control device and second control device is
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`responsive to a third signal, third signal is generated and transmitted by a third
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`control device, third control device is at a location remote from vehicle and second
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`control device, in that signals are sequentially relayed from outside control devices
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`to a control device within the vehicle.” Ex. 1006, ¶ 16.
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`In the ’300 reexam, Joao argued that Kniffin’s access control device cannot
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`constitute both the first control device and the vehicle device that is being
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`controlled. Response, Feb. 26, 2015, at 13-17. First, as described above, Kniffin’s
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`access control device is used to control vehicle devices or systems, such as the
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`door locks or memory. Second, as the Examiner noted in applying the ordinary and
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`customary meaning of the claim terms, “[t]he [’405] patent does not offer a
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`definition that indicates a vehicle component cannot be a subcomponent of another
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`system. In fact, Kniffin’s lock mechanism 32 is a ‘vehicle component’ and so is the
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`larger system 12, but control system 12 (or CPU 30) is also a control device under
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`the ordinary meaning of the terms.” Final Office Action, May 22, 2015, at 9-10.
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`Figure 1 of Kniffin, for example, shows access control device 12 having a lock
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`microprocessor CPU 30, and a lock mechanism 32. In the ’300 reexam, Joao
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`asserts that such a configuration is barred by the specification, but provides no
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`support for such a broad exclusion.
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` Kniffin therefore discloses all of the limitations of, and anticipates, claim 1.
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` Depende