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
`
`Patent No. 5,917,405
`Issue Date: June 29, 1999
`Title: CONTROL APPARATUS AND METHODS FOR VEHICLES
`
`__________________________________________________________________
`
`PETITIONER’S REPLY
`
`Case No. IPR2015-01613
`__________________________________________________________________
`
`
`

`
`
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ......................................................................................... 1
`
`II. CLAIM CONSTRUCTION .......................................................................... 2
`
`A.
`
`“First Signal,” “Second Signal,” and “Third Signal” Need Not Be
`Construed ............................................................................................. 2
`
`III. CLAIMS 1–3, 7, 8, 11, 12, 14, 16, 17, 19, AND 20 ARE INVALID .......... 5
`
`A. Claims 1, 2, 7, 8, 11, 12, 14, 16, 17, 19, and 20 are Anticipated by
`Kniffin ................................................................................................... 5
`
`1.
`
`2.
`
`3.
`
`Kniffin describes 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 ..... 5
`
`Kniffin describes a chain of three control devices for
`controlling a vehicle system/component ................................. 9
`
`Kniffin describes dependent claims 2, 7, 8, 11, 14, 17, 19,
`and 20 .......................................................................................10
`
`B.
`
`Claim 3 is Obvious in View of the Combination of Kniffin and
`DiLullo ................................................................................................13
`
`C. Claims 1, 2, 7, 8, 11, 12, 14, 16, 17, 19, and 20 are Anticipated by
`Ryoichi ................................................................................................14
`
`1.
`
`2.
`
`Ryoichi describes a chain of three control devices for
`controlling a vehicle system/component ...............................14
`
`Ryoichi describes dependent claims 2, 7, 8, 11, 14, 17, 19,
`and 20 .......................................................................................17
`
`D. Claim 3 is Obvious in View of the Combination of Ryoichi and
`Mansell................................................................................................17
`
`IV. CONCLUSION ............................................................................................17
`i
`
`
`
`

`
`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
`
`August 18, 2015 Memorandum Opinion and Order
`Regarding Claim Construction in Joao Control &
`Monitoring Systems, LLC v. Protect America, Inc., Case
`No. 1:14-cv-134 (W.D. Tex.)
`
`March 23, 2016 Memorandum Opinion and Order in
`Joao Control & Monitoring Systems, LLC v. Telular
`Corp., Case No. 1:14-cv-09852 (N.D. Ill.)
`
`June 10, 2016 Opinion and Order (1) Granting In Part
`and Denying In Part Defendant FCA US LLC’S Motion
`for
`Summary
`Judgment
`on
`Invalidity
`and
`Noninfringement (Dkt. 59) and (2) Denying as Moot
`Plaintiff Joao Control & Monitoring Systems, LLC’S
`Motion for Summary Judgment of Infringement of U.S.
`Patent No. 7,397,363 by UConnect Access (Dkt. 57) in
`Joao Control & Monitoring Systems, LLC v. Chrysler
`Group LLC, Case No. 4:13-cv-13957
`
`U.S. Patent No. 5,404,361 to Casorso
`
`U.S. Patent No. 5,875,486 to Toda
`
`ii
`
`Exhibit 1001
`
`Exhibit 1002
`
`Exhibit 1003
`
`Exhibit 1004
`
`Exhibit 1005
`
`Exhibit 1006
`
`Exhibit 1007
`
`
`Exhibit 1008
`
`
`Exhibit 1009
`
`
`Exhibit 1010
`
`Exhibit 1011
`
`
`
`
`

`
`I.
`
`INTRODUCTION
`
`This Petitioner’s Reply is responsive to the Patent Owner’s Response to
`
`Petition for Inter Partes Review Under 37 C.F.R. § 42.107 (the “Response”).
`
`As set forth in the Petition, the challenged claims of U.S. Patent No.
`
`5,917,405 (the “’405 patent”) are invalid in view of the prior art cited therein,
`
`including U.S. Patent No. 6,072,402 (Exhibit 1002, “Kniffin”), U.S. Patent No.
`
`5,113,427 (Exhibit 1003, “Ryoichi”), U.S. Patent No. 4,897,642 (Exhibit 1004,
`
`“DiLullo”), and U.S. Patent No. 5,223,844 (Exhibit 1005, “Mansell”). Despite the
`
`Patent Owner’s (“Joao”) assertions that the ’405 patent describes a “novel and
`
`unconventional system,” and claims a “specially assembled and programmed
`
`distributed control system for vehicles” (Response at 2), the ’405 patent merely
`
`claims a conventional a chain of three control devices, passing along signals to
`
`allow for remote operation of vehicle systems. As set forth in the Petition, the
`
`claimed systems and methods are disclosed by the cited prior art and were well
`
`known before the earliest effective filing date of the ’405 patent, such that the
`
`challenged claims are invalid and should be canceled.
`
`In its Response, Joao argues that Kniffin fails to describe a signal for
`
`activating a vehicle component, even though Kniffin describes sending data to an
`
`in-vehicle memory to be stored. Joao argues that Kniffin fails to describe a chain of
`
`three control devices for controlling a vehicle component, even though Kniffin
`
`1
`
`

`
`describes communicating data from a communications link, to a clearinghouse, to
`
`an in-vehicle control device for storage in the in-vehicle memory. Finally, Joao
`
`argues that Ryoichi fails to describe a chain of three control devices for controlling
`
`a vehicle component, even though Ryoichi expressly describes signaling unlocking
`
`doors, turning on headlights, or starting an engine. For the reasons set forth below,
`
`and in the Petition, Joao’s arguments do not address the express disclosure of the
`
`prior art, so that the challenged claims are unpatentable, and should be canceled.
`
`II. CLAIM CONSTRUCTION
`
`A.
`
`“First Signal,” “Second Signal,” and “Third Signal” Need Not Be
`Construed
`
`The terms “first signal,” “second signal,” and “third signal” should be given
`
`their ordinary and customary meaning, as would be understood by a person of
`
`ordinary skill in the art, at the time of the alleged invention, considering the claim
`
`language, the specification, and the prosecution history. Phillips v. AWH Corp.,
`
`415 F.3d 1303, 1312, 1327 (Fed. Cir. 2005). In this case, the specification and
`
`prosecution history do not provide any special definition of the terms “first signal,”
`
`“second signal,” and “third signal.” Nor does Joao assert otherwise.
`
`Instead, Joao asserts that the claim terms “first signal,” “second signal,” and
`
`“third signal” require construction, that “first signal” is “a signal sent by a first
`
`device,” that “second signal” is “a signal sent by a second device,” and that “third
`
`2
`
`

`
`signal” is “a signal sent by a third device.” Response, at 10. Joao does not explain
`
`why these terms are not entitled to their ordinary and customary meaning
`
`according to Phillips, nor does Joao refer to any intrinsic evidence to support its
`
`proposed constructions. Joao relies only on a claim construction decision from
`
`Joao Control & Monitoring Systems, LLC v Chrysler Group LLC, Case No. 13-cv-
`
`13957 (E.D. Mich.). Response at 10.
`
`Joao’s reliance on this district court decision is misplaced. First, Joao
`
`incorrectly states that the Michigan court “construed the terms ‘first signal,’
`
`‘second signal,’ and ‘third signal.’” The Michigan court expressly did not construe
`
`these terms. Ex. 2004, at 23 (“After considering the claim term and the claims as a
`
`whole, the Court finds that the terms ‘first signal,’ second signal,’ and ‘third
`
`signal’ do not need to be construed, at least at this time, because the claim
`
`language is clear.”), and at 25 (“Accordingly, the Court will not rewrite or redefine
`
`claim terms which are otherwise clear to preserve the validity of the claims or
`
`defeat an anticipated invalidity argument.”). Second, the portion of that court’s
`
`opinion on which Joao relies only notes that the parties in that case agreed on the
`
`meaning of the terms; the court did not construe the terms accordingly. Id.
`
`The claim language is clear on its face, so that no construction is necessary.
`
`Joao’s narrow proposed constructions are both contradictory and redundant of the
`
`remaining claim language. Claim 1, for example, recites “said first control device
`
`3
`
`

`
`one of generates and transmits a first signal,” “the second signal is one of
`
`generated by and transmitted from a second control device,” and “the third signal
`
`is one of generated by and transmitted from a third control device.” That is, claim 1
`
`requires that the first control device either generate or transmit the first signal, that
`
`the second control device either generate or transmit the second signal, and the
`
`third control device either generate or transmit the third signal.
`
`Yet, Joao’s proposed construction would contradict this claim language,
`
`because it would eliminate the claimed subject matter describing, in the alternative,
`
`e.g., a first control device generating, but not necessarily transmitting, the first
`
`signal. Joao’s proposed construction is also redundant of this claim language,
`
`because the claim already describes, in the alternative, e.g., a first control device
`
`transmitting the first signal.
`
`These claim terms are unambiguous, so that no construction of these terms is
`
`necessary. As the Michigan court noted, the Board should not “rewrite or redefine
`
`claim terms which are otherwise clear to preserve the validity of the claims or
`
`defeat an anticipated invalidity argument.” Ex. 2004, at 23.
`
`4
`
`

`
`III. CLAIMS 1–3, 7, 8, 11, 12, 14, 16, 17, 19, AND 20 ARE INVALID
`
`A. Claims 1, 2, 7, 8, 11, 12, 14, 16, 17, 19, and 20 are Anticipated by
`Kniffin
`
`Joao states that it “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.”
`
`Joao further states 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.” Response at 11. Joao’s own
`
`proposed construction of “control device” belies these assertions.
`
`Joao contends that a “control device” 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.” Response at 9. This
`
`construction of “control device” does not exclude Kniffin’s access control device
`
`64, which is, for example, a device, or a part of a device, which performs an
`
`operation, action, or function (e.g., storing data in memory). Kniffin, 8:21–24.
`
`1. Kniffin describes 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
`
`Joao’s Response contends that “[s]toring a delivery schedule in a memory
`
`does not constitute ‘activating’ or ‘enabling’ a vehicle system/component.”
`
`5
`
`

`
`Response at 11-17. However, as explained in the Petition (see pp. 14–17), Kniffin
`
`describes the claimed chain of three control devices: access control device 64 (in-
`
`vehicle control device), clearinghouse 18 or 66 (middle device, located remote
`
`from the vehicle), and telephone 22 and communications link 16 (originating
`
`device, located remote from the other control device and remote from the vehicle).
`
`Kniffin describes sending control signals from one device to the next, culminating
`
`in the activation (or deactivation) of a vehicle system: storing schedule data in a
`
`memory. More specifically, Kniffin describes that a delivery company uses
`
`telephone 22 and communication link 16 to contact clearinghouse 66, and provide
`
`a schedule of deliveries for the truck. Once clearinghouse 66 verifies the schedule
`
`of deliveries, 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). Kniffin, 8:15-24; Ex. 1006, ¶ 15.
`
`Joao, in its Response, argues that the Petition provides “no analysis as to
`
`how the act of storing information in a memory constitutes ‘activating’ or
`
`‘enabling’ that memory.” Response, at 15.1 Kniffin, however, expressly describes
`
`that the clearinghouse transmits a schedule of stops to the truck access control
`
`1
`Joao does not argue that the claimed “activating” or “enabling” is
`
`distinguishable from Kniffin’s description of storing data in a memory.
`
`6
`
`

`
`device, and that schedule is then stored in a memory located in the vehicle. Kniffin,
`
`8:21-24 (“After 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 a memory 68.”). Kniffin’s memory 68 is located in
`
`the vehicle and constitutes a vehicle component, device, system, or subsystem; like
`
`any computer memory, Kniffin’s memory, for example, receives data, stores data,
`
`maintains stored data, etc. Storing data in the memory entails activation of the
`
`memory’s storage functionality, to store data not previously stored thereon. That is,
`
`upon receipt of data (in this case, the authorized schedule of stops), the memory is
`
`“activated” or “enabled” to store that data. Kniffin’s express disclosure of storing
`
`data in an in-vehicle memory therefore discloses that the memory is activated to
`
`receive and store the data.
`
`Thus, Kniffin’s description of storing data in memory constitutes a
`
`disclosure of activating a vehicle component, device, system, or subsystem.
`
`Though Joao asserts, in one conclusory statement, without support, that “there is
`
`no disclosure in Kniffin that the storing of a schedule of deliveries in a memory
`
`constitutes ‘one of activating, deactivating, enabling, and disabling, one of a
`
`vehicle component, a vehicle device, a vehicle system, and a vehicle subsystem’”
`
`7
`
`

`
`(Response at 16–17), it is common in the computer field to refer to storing data in
`
`memory as, e.g., “activating” memory.2
`
`Joao contends that the lock mechanism described by Kniffin is the controlled
`
`vehicle component. Response, at 16. However, Kniffin also describes storing data
`
`in an in-vehicle memory, in response to data received by the truck access control
`
`device 64 from a clearinghouse 66. The memory 68 is a device, located in the
`
`vehicle, that is activated by a signal received from the in-vehicle access control
`
`device 64, which receives a signal from the remote clearinghouse 66, which in turn
`
`2
`See, e.g., U.S. Patent No. 5,404,361 (Ex. 1010), at 12:38–42 (“Concurrently,
`
`memory control circuit 442 generates read/write control signals that are applied to
`
`the control leads 423 of cache memory bus 420 to select and activate memory
`
`device 411.”) and 14:53–58 (“A read control signal is concurrently applied by
`
`memory control circuit 442 to the control leads 423 of the cache memory bus 420
`
`to activate the selected memory device 411 to retrieve the requested data record
`
`and apply this data record to the data leads 421 of the cache memory bus 420.”);
`
`U.S. Patent No. 5,875,486 (Ex. 1011), at Abstract (“a specification circuit for
`
`specifying sequentially memory cells … and for entering them in an active
`
`state.”), 5:64–65 (“A signal CE is a signal which indicates the active period of
`
`the memory device 1.”), and 6:14–17 (“When the CE signal is switched to the ‘H’
`
`level, … the memory enters the inactive state.”) (all emphasis added).
`
`8
`
`

`
`receives a signal from the telephone 22 and communication link 16. Kniffin, 8:15-
`
`24. Thus, while Kniffin describes controlling a lock mechanism, Kniffin also
`
`expressly describes activating the memory 68, which is a vehicle component,
`
`device, system, or subsystem. The disclosure of the former (controlling a lock
`
`mechanism) does not negate the disclosure of the latter (activating the memory).
`
`2. Kniffin describes a chain of three control devices for
`controlling a vehicle system/component
`
`Joao’s Response contends that “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.” Response at 17-30. Again, as
`
`explained in the Petition (see pp. 14–17), Kniffin describes the claimed chain of
`
`three control devices: access control device 64 (in-vehicle control device),
`
`clearinghouse 18 or 66 (middle device, located remote from the vehicle), and
`
`telephone 22 and communications link 16 (originating device, located remote from
`
`the other control device and remote from the vehicle). Kniffin describes sending
`
`control signals from one device to the next, culminating in the activation (or
`
`deactivation) of a vehicle system: storing schedule data in a memory. More
`
`specifically, Kniffin describes that a delivery company uses telephone 22 and
`
`communication link 16 to contact clearinghouse 66, and provide a schedule of
`
`deliveries for the truck. Once clearinghouse 66 verifies the schedule of deliveries,
`
`clearinghouse 66 transmits the schedule to the truck access control device 64 (the
`
`9
`
`

`
`in-vehicle control device, i.e., at the truck 62 shown in Fig. 4), and the truck access
`
`control device 64 stores the schedule in memory 68 (storing of the schedule in the
`
`memory 68 constitutes activating a vehicle component, device, system, or
`
`subsystem). Kniffin, 8:15-24; Ex. 1006, ¶ 15.
`
`Joao argues that Kniffin’s description of a CPU 30 sending a signal to the
`
`lock mechanism 32 does not describe controlling a vehicle system/component in
`
`response to a signal from a control device located remote from the vehicle. Joao
`
`argues that the signal from the clearinghouse 66 to the lock mechanism 32 only
`
`provides a schedule of stops, and the lock mechanism 32 only unlocks the doors in
`
`response to the signal from identification device 70 indicating that the truck has
`
`reached an authorized stop. Response, at 19–26.
`
`Joao’s argument is misplaced. As explained above, Kniffin describes
`
`transmitting the verified schedule of stops to the truck access control device, and
`
`storing the schedule in memory 68. Kniffin, 8:15-24. It is this storage of data in the
`
`memory that describes the control of a vehicle component claimed by the ’405
`
`patent. Joao’s arguments relating to the control of lock mechanism 32 do not
`
`address the arguments presented in the Petition.
`
`3. Kniffin describes dependent claims 2, 7, 8, 11, 14, 17, 19,
`and 20
`
`As to claim 2, Kniffin describes clearinghouse 66 relaying status information
`
`to be provided to the user, including providing the user with notice that someone is
`
`10
`
`

`
`at the house. Kniffin, 2:62-3:6. In the vehicle embodiment, Kniffin further
`
`describes truck access control device 64 detecting an identification device 70 at a
`
`delivery stop. Kniffin, 8:25-27. Kniffin therefore discloses the additional
`
`limitations of, and, consequently anticipates, claim 2. Ex. 1006, ¶ 18. Joao argues
`
`that anticipation of claim 2 requires Kniffin to describe monitoring the memory in
`
`the access control device. Response, at 26–27. Claim 2, however, merely requires a
`
`monitoring device for monitoring at least one of the vehicle, vehicle operational
`
`status, vehicle operation, said one of a vehicle component, a vehicle device, a
`
`vehicle system, and a vehicle subsystem, a vehicle one of fuel supply, water
`
`supply, and coolant supply, one of electrical generator and alternator operation,
`
`battery charge level, engine temperature level, one of an electrical circuit and an
`
`electrical device, activity inside the vehicle, and activity outside the vehicle. Claim
`
`2 does not require that the monitoring device monitor the vehicle component that is
`
`activated, deactivated, enabled, or disabled.
`
`As to claims 7, 14, and 19, Kniffin describes electronic access control device
`
`64, which is an electromechanical vehicle system component, a vehicle anti-theft
`
`system, and a vehicle door lock system. Kniffin, 8:11-14, 21-24, and 46-48.
`
`Kniffin therefore discloses the additional limitations of, and, consequently
`
`anticipates, claims 7, 14, and 19. Ex. 1006, ¶ 19. Joao argues that the memory 68 is
`
`not one of the components, devices, or systems recited in claims 7, 14, and 19.
`
`11
`
`

`
`Response, at 27–28. However, claims 7, 14, and 19 state that the vehicle
`
`component may be “a vehicle one of electrical, mechanical, and electro-
`
`mechanical, one of system and component.” A memory device is, e.g., an electrical
`
`component, and so falls within the scope of claims 7, 14, and 19.
`
`As to claim 11, Kniffin describes a voice synthesizer reporting whether
`
`access is granted. Kniffin, 2:54-61. Kniffin therefore discloses the additional
`
`limitations of, and, consequently anticipates, claim 11. Ex. 1006, ¶ 21. Joao argues
`
`that Kniffin’s voice synthesizer is located at the clearinghouse 66, not at the
`
`vehicle. Response, at 28–29. Joao’s argument is misplaced; claim 11 does not
`
`require the voice synthesizing device to be “connected to the first control device.”
`
`Claim 11 merely requires “a voice synthesizing device for generating a voice
`
`message indicative of one of operation of the apparatus, status of the apparatus,
`
`operation of said first control device, and operation of the vehicle,” so that
`
`Kniffin’s disclosure of the voice synthesizer discloses the limitations of claim 11.
`
`As to claim 17, Kniffin describes clearinghouse 66 relaying status
`
`information to be provided to the user, including providing the user with notice
`
`that someone is at the house. Kniffin, 2:62-3:6. In the vehicle embodiment, Kniffin
`
`further describes truck access control device 64 detecting an identification device
`
`70 at a delivery stop. Kniffin, 8:25-27. According to Kniffin, access to the truck’s
`
`contents is permitted if the truck is at an expected stop, as programmed, and a
`
`12
`
`

`
`“record of this access is logged in the access control device memory 69, providing
`
`data as to the time of the access and the location and/or identity of the accessing
`
`party.” Kniffin, 8:30-36. Kniffin therefore discloses the additional limitations of,
`
`and, consequently anticipates, claim 17. Ex. 1006, ¶ 22. Joao argues that claim 17
`
`is not anticipated by Kniffin, because Kniffin does not describe determining an
`
`operation status of the memory 68. Response, at 27–28. However, claim 17 merely
`
`requires “determining an operational status of at least one of the vehicle
`
`component, vehicle device, vehicle system, and vehicle subsystem,” so that
`
`Kniffin’s disclosure of detecting and relaying status information, detecting an
`
`identification device 70, and detecting data regarding time of access and location
`
`and/or identity of the accessing party discloses the limitations of claim 17.
`
`The only argument made by Joao relating to claims 8 and 20 is that claim 8
`
`is patentable based on its dependency from claim 1 and that claim 20 is patentable
`
`based on its dependency from claim 12. Response, at 26. As set forth in the
`
`Petition (see pp. 19, 23), the additional limitations of claims 8 and 20 are disclosed
`
`by Kniffin, so that claims 8 and 20 are anticipated by Kniffin.
`
`B. Claim 3 is Obvious in View of the Combination of Kniffin and
`DiLullo
`
`The only argument made by Joao relating to claim 3 is that claim 3 is
`
`patentable based on its dependency from claim 1. Response, at 31. As set forth in
`
`the Petition (see pp. 35–36), claim 3 is obvious in view of Kniffin and DiLullo.
`13
`
`

`
`C. Claims 1, 2, 7, 8, 11, 12, 14, 16, 17, 19, and 20 are Anticipated by
`Ryoichi
`
`Joao states that it “disagrees with the Petitioner’s interpretation of ‘control
`
`device’ that would allow the ‘fixed radio station ST’ of Ryoichi to serve as the
`
`‘second control device’ of claims 1 and 16, and the ‘first control device’ of claim
`
`12.” Joao further states that “the ‘fixed radio station ST’ of Ryoichi is merely a
`
`part of, or a component of, a communication system or network, and not a ‘control
`
`device.’” Response at 31. Again, Joao’s own proposed construction of “control
`
`device” belies these assertions.
`
`Joao contends that a “control device” 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.” Response at 9.
`
`Joao’s construction of “control device” does not exclude Ryoichi’s fixed radio
`
`station ST, which is, for example, a device, or a part of a device, which performs
`
`an operation, action, or function (e.g., transmitting a message to paging unit 9).
`
`Ryoichi, 7:64–67.
`
`1.
`
`Ryoichi describes a chain of three control devices for
`controlling a vehicle system/component
`
`Joao contends that “Ryoichi fails to disclose the ‘A to B to C’ control
`
`system/method of claims 1, 12 and 16.” Response, at 32-38, However, as explained
`
`in the Petition (see pp. 37–40), Ryoichi describes the claimed chain of three control
`
`14
`
`

`
`devices: a personal radio paging unit 9 (in-vehicle control device), a fixed radio
`
`station St (middle device located remote from the vehicle), and a telephone unit
`
`TEL (originating device remote from the middle device and remote from the
`
`vehicle). Ryoichi describes sending control signals from one device to the next,
`
`culminating in the activation (or deactivation) of a vehicle system: unlocking the
`
`doors, turning on the headlights, or starting the engine. More specifically,
`
`Ryoichi’s personal radio paging unit 9, located in the vehicle, generates sounds
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`representing message signals, and the sounds are converted into code readable by
`
`the control unit S to execute a control program, e.g., controlling the handbrake,
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`unlocking the doors, turning on the headlights, or starting the engine. Ryoichi,
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`4:57-5:15, 8:1-22; Ex. 1006, ¶¶ 30-31. Ryoichi’s personal radio paging unit 9 (in-
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`vehicle control device), located in the vehicle, is responsive to signals radiated by
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`the fixed radio station St (middle device), located remote from the vehicle.
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`Personal radio paging unit 9 (in-vehicle control device) generates calling sounds in
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`response to the radiated signals, for sensor 10 to detect. Ryoichi, 7:64-8:3; Ex.
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`1006, ¶¶ 30-31. Ryoichi’s radio station St (middle device) is responsive to signals
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`from telephone TEL (originating device), located remote from the personal radio
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`paging unit 9 (in-vehicle control device) and the radio station St (middle device).
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`As shown in Figure 1, a user enters a message into a touchpad of telephone TEL,
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`and the signal representing the entered message is sent to the radio station St for
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`radio transmission. Ryoichi, 7:60-8:1; Ex. 1006, ¶¶ 30-31.
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`Joao, in its Response, argues that Ryoichi does not describe a chain of three
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`control devices, but instead describes a chain of six device. Joao refers to the three
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`devices identified in the Petition (telephone TEL, radio station St, and personal
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`radio paging unit 9), and then identifies three additional devices—sensor 10, code
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`converter 11, and control unit S—as generating signals for controlling the vehicle
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`components. Joao refers to the system of Ryoichi as an “A to B to C to D to E to
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`F” system, contrasting it with its characterization of an “A to B to C” system of the
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`challenged claims. Response, at 34–38.
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`The claims of the ’405 patent, however, do not exclude the Ryoichi system
`
`as described by Joao. Claim 1, for example, requires that “said first control device
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`one of generates and transmits a first signal for one of activating, deactivating,
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`enabling, and disabling, one of a vehicle component, a vehicle device, a vehicle
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`system, and a vehicle subsystem.” The calling sound generated by Ryoichi’s
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`personal radio paging unit 9 is generated and transmitted for the activation (or
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`deactivation) of a vehicle system, including unlocking the doors, turning on the
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`headlights, or starting the engine. The existence of sensor devices or code
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`converters to convey the instruction carried by the paging unit’s signal does not
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`negate that the signal generated by paging unit 9 is generated and transmitted for
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`16
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`controlling the vehicle system. The claims of the ’405 patent do not require the
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`first signal to be transmitted directly, excluding all conduits or electrical
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`components between the first control device and the vehicle component.
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`2.
`
`Ryoichi describes dependent claims 2, 7, 8, 11, 14, 17, 19,
`and 20
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`The only argument made by Joao relating to claims 2, 7, 8, 11, 14, 16, 19,
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`and 20 is that claims 2, 7, 8, and 11 are patentable based on their dependency from
`
`claim 1, that claim 14 is patentable based on its dependency from claim 12, and
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`that claims 17, 19, and 20 are patentable based on their dependencies from claim
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`16. Response, at 38. As set forth in the Petition (see pp. 42–46), the additional
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`limitations of claims 2, 7, 8, 11, 14, 17, 19, and 20 are disclosed by Ryoichi, so that
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`Ryoichi anticipates claims 2, 7, 8, 11, 14, 17, 19, and 20.
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`D. Claim 3 is Obvious in View of the Combination of Ryoichi and
`Mansell
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`The only argument made by Joao relating to claim 3 is that claim 3 is
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`patentable based on its dependency from claim 1. Response, at 38. As set forth in
`
`the Petition (see pp. 58–59), claim 3 is obvious in view of Ryoichi and Mansell.
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`IV. CONCLUSION
`
`As set forth in the Petition, claims 1–3, 7, 8, 11, 12, 14, 16, 17, 19, and 20 of
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`the ’405 patent are invalid in view of the prior art cited therein. For the reasons set
`
`forth in the Petition, and herein, Petitioner, Volkswagen Group of America, Inc.,
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`respectfully requests the cancellation of claims 1–3, 7, 8, 11, 12, 14, 16, 17, 19,
`
`and 20 of the ’405 patent.
`
`
`
`
`
`
`/Clifford A. Ulrich/
`Clifford A. Ulrich (Reg. No. 42,194)
`
`Dated: August 4, 2016
`
`
`
`
`
`Michael J. Lennon (Reg. No. 26,562) Lead Counsel
`Clifford A. Ulrich (Reg. No. 42,194) Backup Counsel
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004
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`CERTIFICATE OF WORD COUNT
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`The foregoing Petitioner’s Reply complies with the type-volume limitations
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`of 37 C.F.R. § 42.24(c)(1). Excluding the items listed in 37 C.F.R. § 42.24(c) as
`
`not included in the word count, and using the word count of the word-processing
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`system used to prepare the paper (Microsoft Word), the petition contains _4,390_
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`words.
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`
`
`/Clifford A. Ulrich/
`Clifford A. Ulrich (Reg. No. 42,194)
`
`
`
`
`
`
`
`Michael J. Lennon (Reg. No. 26,562) Lead Counsel
`Clifford A. Ulrich (Reg. No. 42,194) Backup Counsel
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004
`Tel:
`
`212.425.7200
`Fax:
`
`212.425.5288
`Email:
`mlennon@kenyon.com
`culrich@kenyon.com
`
`
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`19
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`CERTIFICATE OF SERVICE
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`The foregoing Petitioner’s Reply and associated Exhibits 1010 and 1011
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`
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`were served on August 4, 2016, via email upon the following:
`
`Raymond A. Joao, Reg. No. 35,907
`rayjoao@optonline.net
`René A. Vazquez, Reg. No. 38,647
`rvazquez@sinergialaw.com
`
`
`
`Michael J. Lennon (Reg. No. 26,562) Lead Counsel
`Clifford A. Ulrich (Reg. No. 42,194) Backup Counsel
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004
`Tel:
`
`212.425.7200
`Fax:
`
`212.425.5288
`Email:
`mlennon@kenyon.com
`culrich@kenyon.com
`
`
`
`
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`
`
`
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`
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`/Clifford A. Ulrich/
`Clifford A. Ulrich (Reg. No. 42,194)
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`20