Trials@uspto.gov
`571-272-7822
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` Paper 29
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` Date: January 27, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NISSAN NORTH AMERICA, INC.,
`Petitioner
`
`v.
`
`JOAO CONTROL & MONITORING SYSTEMS, LLC,
`Patent Owner
`____________
`
`
`Case IPR2015-01645
`Patent 7,397,363
`____________
`
`
`Before STACEY G. WHITE, JASON J. CHUNG, and BETH Z. SHAW,
`Administrative Patent Judges.
`
`
`SHAW, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Final Written Decision
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`I.
`
`INTRODUCTION
`
`Petitioner, Nissan North America, Inc., filed a Petition requesting
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`inter partes review of claims 21, 22, 24, 25, 29, and 36 of U.S. Patent No.
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`7,397,363 (“the ’363 patent”). Paper 1 (“Pet.”). Patent Owner, Joao Control
`
`& Monitoring Systems, LLC, filed a Preliminary Response pursuant to
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`571-272-7822
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` Paper 29
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`
` Date: January 27, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NISSAN NORTH AMERICA, INC.,
`Petitioner
`
`v.
`
`JOAO CONTROL & MONITORING SYSTEMS, LLC,
`Patent Owner
`____________
`
`
`Case IPR2015-01645
`Patent 7,397,363
`____________
`
`
`Before STACEY G. WHITE, JASON J. CHUNG, and BETH Z. SHAW,
`Administrative Patent Judges.
`
`
`SHAW, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Final Written Decision
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`I.
`
`INTRODUCTION
`
`Petitioner, Nissan North America, Inc., filed a Petition requesting
`
`inter partes review of claims 21, 22, 24, 25, 29, and 36 of U.S. Patent No.
`
`7,397,363 (“the ’363 patent”). Paper 1 (“Pet.”). Patent Owner, Joao Control
`
`& Monitoring Systems, LLC, filed a Preliminary Response pursuant to
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`IPR2015-01645
`Patent 7,397,363
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`35 U.S.C. § 313. Paper 8 (“Prelim. Resp.”). Based on our review of these
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`submissions, we instituted inter partes review of claims 21, 22, 24, 25, 29,
`
`and 36 (“the instituted claims”). Paper 11 (“Dec.”).
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`Patent Owner filed a Patent Owner’s Response (Paper 20, “PO
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`Resp.”), and Petitioner filed a Reply (Paper 23, “Pet. Reply”). An oral
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`hearing was held for this case on October 20, 2016. A transcript of the oral
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`hearing is included in the record. Paper 28.
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`We have jurisdiction under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
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`For the reasons discussed below, Petitioner has demonstrated by a
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`preponderance of the evidence that claims 21, 22, 24, 25, 29, and 36 of
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`the ’363 patent are unpatentable.
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`A.
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`Related Matters
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`Petitioner and Patent Owner indicate that the ’363 patent or related
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`patents have been asserted in a significant number of related cases. See Pet.
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`1–2; Paper 5. The ’363 patent also is the subject of another inter partes
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`review (IPR2015-01612).
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`B.
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`The Asserted Grounds
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`Petitioner identifies the following as asserted grounds of
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`unpatentability:
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`Reference(s)
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`Basis
`
`Instituted Claim(s)
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`Frossard (Ex. 1005)1
`and Spaur (Ex. 1016)2
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`Frossard, Spaur, and
`Pagliaroli (Ex. 1006)3
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`Frossard, Spaur, and
`Simms (Ex. 1007)4
`
`§ 103(a)
`
`21, 24, 25, and 36
`
`§ 103(a)
`
`22
`
`§ 103(a)
`
`29
`
`Johnson (Ex. 1008)5 and
`Rossmann (Ex. 1009)6
`
`§ 103(a)
`
`21, 22, 24, 25, 29,
`and 36
`
`
`
`C.
`
`The ’363 Patent
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`The ’363 patent is directed to controlling a vehicle or premises.
`
`Ex. 1001, Abst. The ’363 patent describes a first control device, which
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`generates a first signal and is associated with a web site and located remote
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`from a premises or vehicle. Id. The first control device generates the first
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`signal in response to a second signal that is transmitted via the Internet from
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`a second control device located remote from the first device and remote
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`from the premises or vehicle. Id. The first device determines whether an
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`
`1 European Patent Application Publication No. 0 505 266 A1, published
`March 17, 1992.
`2 U.S. Patent No. 5,732,074, filed Jan. 16, 1996.
`3 U.S. Patent No. 5,276,728, filed Nov. 6, 1991.
`4 U.S. Patent No. 5,334,974, filed Feb. 6, 1992.
`5 U.S. Patent No. 5,557,254, filed Nov. 16, 1993.
`6 U.S. Patent No. 5,809,415, filed Dec. 11, 1995.
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`action associated with the second signal is allowed, and if so, transmits the
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`first signal to a third device located at the premises. Id. The third device
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`generates a third signal for activating, de-activating, disabling, re-enabling,
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`or controlling an operation of a system, device, or component of the
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`premises or vehicle. See id.
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`D.
`
`Illustrative Claim
`
`We instituted inter partes review of claims 21, 22, 24, 25, 29, and 36,
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`of which claim 21 is the only independent claim. Claim 21 is illustrative and
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`is reproduced below:
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`21. An apparatus, comprising:
`
`the first
`a first processing device, wherein
`processing device at least one of generates a first signal and
`transmits a first signal for at least one of activating, de-activating,
`disabling, re-enabling, and controlling an operation of, at least
`one of a vehicle system, a vehicle equipment system, a vehicle
`component, a vehicle device, a vehicle equipment, and a vehicle
`appliance, of or located at a vehicle, wherein the first processing
`device is associated with a web site, and further wherein the first
`processing device is located at a location remote from the
`vehicle,
`
`wherein the first processing device at least one of
`generates the first signal and transmits the first signal in response
`to a second signal, wherein the second signal is [] at least one of
`generated by a second processing device and transmitted from a
`second processing device, wherein the second processing device
`is located at a location which is remote from the first processing
`device and remote from the vehicle, wherein the first processing
`device determines whether an action or an operation associated
`with information contained in the second signal, to at least one
`of activate, de-activate, disable re-enable, and control an
`operation of, the at least one of a vehicle system, a vehicle
`equipment system, a vehicle component, a vehicle device, a
`vehicle equipment, and a vehicle appliance, is an authorized or
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`an allowed action or an authorized or an allowed operation, and
`further wherein the first processing device at least one of
`generates the first signal and transmits the first signal to a third
`processing device if the action or the operation is determined to
`be an authorized or an allowed action or an authorized or an
`allowed operation, wherein the third processing device is located
`at the vehicle,
`wherein the second signal is transmitted to the first
`processing device via, on, or over, at least one of the Internet and
`the World Wide Web, and further wherein the second signal is
`automatically received by the first processing device, wherein
`the first signal is transmitted to and automatically received by the
`third processing device, wherein the third processing device at
`least one of generates a third signal and transmits a third signal
`for at least one of activating, de-activating, disabling, re-
`enabling, and controlling an operation of, the at least one of a
`vehicle system, a vehicle equipment system, a vehicle
`component, a vehicle device, a vehicle equipment, and a vehicle
`appliance, in response to the first signal.
`
`
`II. ANALYSIS
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`A.
`
`Claim Construction
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`In the Decision to Institute, we noted that the ’363 patent was due to
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`expire no later than May 6, 2016. Dec. 6. The parties have not disputed the
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`calculation of the ’363 patent’s expiration date. Based on our review of the
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`record, we discern no reason to modify that calculation and thus, we find the
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`’363 patent to be expired. For claims of an expired patent, the Board’s claim
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`interpretation is similar to that of a district court. See In re Rambus, Inc.,
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`694 F.3d 42, 46 (Fed. Cir. 2012). “In determining the meaning of the
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`disputed claim limitation, we look principally to the intrinsic evidence of
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`record, examining the claim language itself, the written description, and the
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`prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic
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`Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing
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`Phillips v. AWH Corp., 415 F. 3d 1303, 1312–17 (Fed. Cir. 2005)).
`
`We are mindful that “limitations are not to be read into the claims
`
`from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
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`1993). Nevertheless, claims are not interpreted in a vacuum but are part of
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`and read in light of the specification. United States v. Adams, 383 U.S. 39,
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`49 (1966) (“[I]t is fundamental that claims are to be construed in the light of
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`the specifications and both are to be read with a view to ascertaining the
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`invention.”). In that regard, the terms are given their ordinary and
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`customary meaning, as would be understood by one of ordinary skill in the
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`art in the context of the Specification. In re Translogic Tech., Inc., 504 F.3d
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`1249, 1257 (Fed. Cir. 2007). The construction that stays true to the claim
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`language and most naturally aligns with the inventor’s description is likely
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`the correct interpretation. Renishaw PLC v. Marposs Societa’ per Azioni,
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`158 F.3d 1243, 1250 (Fed. Cir. 1998).
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`In the Institution Decision, we determined that no terms required
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`express construction. Dec. 7. In its Response, Patent Owner proposes
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`constructions for “interface device,” “processing device,” “first signal,”
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`“second signal,” and “third signal.” PO Resp. 9–11. We determine that it is
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`not necessary to expressly construe these terms to resolve the controversy
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`here. To the extent it is necessary for us to construe any additional claim
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`terms in this decision, we do so below in the context of analyzing whether
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`the prior art renders the claims unpatentable.
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`B. Mr. McNamara’s Testimony
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`1.
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`Prosecution History
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`Petitioner relies on testimony of Mr. David McNamara. Pet. 26–30
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`(citing Ex. 1003). Patent Owner asserts that we should accord little or no
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`weight to the testimony of Mr. McNamara. PO Resp. 14–17. We note that
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`Patent Owner did not move to exclude this testimony and thus, its arguments
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`are limited to the weight that should be given to the testimony. Id.
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`First, Patent Owner argues that Mr. McNamara did not review the
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`materials required to properly reach his conclusions and opinions, such as
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`the prosecution history of the ’363 patent. Id. at 14–15. Paragraph 13 of
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`Mr. McNamara’s declaration states in part that “I have read the ’363 Patent
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`and its prosecution history.” Ex. 1003 at ¶ 13. Patent Owner argues Mr.
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`McNamara’s testimony is flawed, however, because during cross-
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`examination, Mr. McNamara testified that he had not reviewed the
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`prosecution history of the ’363 patent. PO Resp. 14–15 (citing Ex. 2006,
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`153:11–22 (In response to Patent Owner’s questions “you did not review the
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`prosecution histories for the four JCMS patents at issue correct” and “you
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`did not apply the, any definitions that may have been provided by Mr. Joao
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`during prosecution of those patents, correct,” Mr. McNamara answers
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`“[t]hat’s correct.”)).
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`Petitioner argues Mr. McNamara signed his declaration nine months
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`before the cross examination, and in the declaration, he stated that he read
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`the ’363 patent and its prosecution history. Reply 2–3 (citing Ex. 1003
`
`¶ 13). According to Petitioner, Patent Owner improperly tries to latch onto
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`Mr. McNamara’s testimony that he did not read the prosecution history
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`while ignoring other statements to the contrary. Id. (citing Ex. 2006,
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`153:11–15). In particular, Petitioner argues Patent Owner ignores Mr.
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`McNamara’s other statements that demonstrate that he reviewed the
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`prosecution history. Id. at 2–3 (citing Ex. 2006, 154:11–20). According to
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`Petitioner, Mr. McNamara’s inconsistent testimony, at best, illustrates a
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`lapse in memory during a lengthy deposition. Id. at 3.
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`Petitioner also argues that any alleged failure by McNamara to not
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`review the prosecution history of the ’363 patent has no bearing on the claim
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`construction in this proceeding. Id. at 4. Specifically, Petitioner argues that
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`Mr. McNamara confirmed during cross-examination that he reviewed all the
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`materials including Exhibit 1009 containing the preliminary amendment of
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`the ’363 patent—the only document in the prosecution history that is
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`potentially relevant because it includes proposed definitions of claim terms.
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`Id. (citing Ex. 2006, 154:14–20).
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`We are not persuaded that Mr. McNamara’s statements on cross-
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`examination are sufficient to accord his testimony little or no weight. The
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`prosecution history is an important element in understanding the claims of a
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`patent. Yet, we are persuaded that the statement “that’s correct” (in
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`response to the question made during cross examination about his review of
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`the prosecution history of four patents) appears to be a misstatement as to
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`Mr. McNamara’s review of the ’363 patent and its underlying prosecution
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`history. Mr. McNamara signed his declaration under penalty of perjury, and
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`made other statements during cross-examination that are consistent with his
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`declaration testimony that he reviewed the relevant prosecution history. See
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`Ex. 1003 ¶ 13; Ex. 2006, 154:11–20. We agree with Petitioner that Mr.
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`McNamara’s inconsistent testimony (i.e., “that’s correct”) appears to
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`illustrate a momentary lapse in memory. Compare e.g., Ex. 2006 at 153:11–
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`15, with id. at 154:11–20.
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`Moreover, Patent Owner has not explained why Mr. McNamara’s
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`testimony displays a lack of understanding of any particular part of the
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`prosecution history, or how such testimony is dispositive to any particular
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`issue in this case. In light of the foregoing, we credit the declaration
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`testimony of Mr. McNamara that he reviewed the prosecution history of the
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`’363 patent over his cross-examination statement to the contrary. See
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`Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (“It is within the
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`discretion of the trier of fact to give each item of evidence such weight as it
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`feels appropriate”) (quoting Velander v. Garner, 348 F. 3d 1359, 1371 (Fed.
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`Cir. 2003)).
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`2. Mr. McNamara’s Analysis of the Claims
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`Patent Owner also contends that Mr. McNamara has an erroneous
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`understanding of the standards of claim construction and thus, we should
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`give his testimony little or no weight. PO Resp. at 15–16. Patent Owner
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`argues Mr. McNamara acknowledged during cross-examination that he used
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`the wrong claim construction standard when construing the claims. Id.
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`(citing Ex. 2006, 151:14–152:18 (Mr. McNamara acknowledged that he
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`used “the broadest reasonable construction in light of the specification of the
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`patent.” However, in response to Patent Owner’s questions “[a]re you aware
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`that the PTAB has indicated or stated that this is, in fact, the wrong standard
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`for the 363’ patent” and “[h]ow does the use of the wrong claim construction
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`standard affect your opinions in this case,” Mr. McNamara answers “I don’t
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`think I used the wrong standard because I used the same standard through all
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`of the four patents. I used the one of ordinary and customary
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`understanding.”)). Patent Owner argues that Mr. McNamara acknowledged
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`that he cannot discern the difference between claims in an expired patent and
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`claims in an unexpired patent and uses the same claim construction standard
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`(i.e., plain and ordinary meaning) for both expired and unexpired patents.
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`PO Resp. 16–17 (citing Ex. 2006, 152:19–25).
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`Petitioner argues that Patent Owner’s reliance on Mr. McNamara
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`being unable to differentiate between the “broadest reasonable construction”
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`and the “ordinary and customary understanding” is misplaced because the
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`difference between the two standards is a legal question that is not at issue in
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`this case. Pet. Reply 4. Petitioner also argues Patent Owner fails to explain
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`how Mr. McNamara’s claim construction is incorrect, why Mr. McNamara’s
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`claim construction is different from the plain and ordinary meaning, or how
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`it impacts the opinions expressed in his declaration. Id. at 4–5. According
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`to Petitioner, at most, Patent Owner illustrates that Mr. McNamara did not
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`explain the difference between the “broadest reasonable construction” and
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`the “plain and ordinary meaning” legal standards. Id.
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`We agree with Petitioner that Patent Owner fails to explain what
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`relevance this argument has to this case. Patent owner faults the expert for
`
`using an incorrect claim construction standard, but does not explain why the
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`choice of standard is dispositive in this inter partes review. See PO Resp.
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`16–17. We are unconvinced that the expert’s choice of claim construction
`
`standards presents a meaningful distinction in this case, as Patent Owner has
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`not explained why or how the different standards would lead to a different
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`outcome in this case. In light of the foregoing, we credit the declaration
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`testimony of Mr. McNamara.
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`C. Obviousness Based on Frossard and Spaur
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`1. Frossard (Ex. 1005)
`
`Frossard describes a system for controlling shutdown of movable or
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`mobile equipment and locating the movable or mobile equipment. Ex. 1005,
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`2:1–2. Figure 1 is reproduced below.
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`
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`Figure 1 illustrates movable or mobile equipment 3 containing
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`receiver-decoder circuits 4 for an order message to shut down movable or
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`mobile equipment 3. Id. at 5:7–12. In addition, Figure 1 shows a scenario in
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`which equipment 3 is stolen, the owner or authorized person calls server 1 to
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`communicate a shutdown order of equipment 3. Id. at 9:14–17. After server
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`1 validates the shutdown order, the shutdown order is transmitted to
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`equipment 3. Id. at 9:23–24. Figure 2, which is reproduced below, provides
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`a more detailed explanation of how equipment 3 is shut down.
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`Figure 2 illustrates receiver-decoder circuits 4 and equipment
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`interface 5 from Figure 1. Id. at 3:26–27, 7:21–23. Shutdown circuit 423
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`controls immediate or deferred shutdown of equipment 3. Id. at 9:28–10:3.
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`When shutdown of equipment 3 occurs, an electrical contact that activates
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`the starter is broken. Id. at 10:13–21.
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`
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`2.
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`Spaur (Ex. 1016)
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`Spaur describes an apparatus for communication of information
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`“between a vehicle and one or more remote stations using an established
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`network, such as the Internet.” (Ex. 1016, 1:7–8; 5:40–6:22; Fig. 1.) Figure
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`1 is reproduced below.
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`Figure 1 illustrates an apparatus for bi-directional communication
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`between one or more remote stations 10a-n and a vehicle. Ex. 1016, 5:40–
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`43. At the remote site, there is “[a]n internet or world wide web browser . . .
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`available to the computer terminal” and “[t]he computer terminal supplies
`
`the browser with an IP (Internet protocol) address” which is “associated with
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`a particular vehicle.” Id. at 2:25–34.
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`3.
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`Analysis of Obviousness Challenge of Claims 21, 24, 25, and 36
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`Petitioner contends that the combination of Frossard and Spaur
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`teaches all of the limitations of independent claim 21. Pet. 13–26. As
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`support, Petitioner provides detailed explanations as to how the combination
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`of prior art meets each claim limitation, and as to why the references would
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`be combined. Id.
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`Petitioner points to Frossard’s transmitting “an access code” and
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`“corresponding intervention order” to a “server center… via a telephone
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`connection or a Minitel, for example.” Pet. 13–14 (citing Ex. 1005, p. 4 ¶
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`3). The server center transmits “an order message M to shut down this
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`equipment,” such as “a motor vehicle.” Id. (citing Ex. 1005, p. 4, ¶ 4;
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`Ex. 1003 ¶ 43).
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`Petitioner directs our attention to Spaur as teaching a computer
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`terminal, remote from the vehicle, which “is able to communicate with a
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`first standard communications network link, such as the Internet, through its
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`modem.” Pet. 21 (citing Ex. 1016, 2:27–29; 7:23–47; Fig. 2.) “An internet
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`or a world wide web browser, for example, that is available to the computer
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`terminal is accessed. . . ” and the computer terminal supplies the browser
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`with an IP (internet protocol) address that is “associated with a particular
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`vehicle including communications related hardware contained in the
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`vehicle.” Id. (citing Ex. 1016, 2:29–34; Ex. 1003 ¶ 58.). Spaur discloses
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`transmitting signals over the Internet to communicate information to a
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`remote vehicle. Id.
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`Petitioner contends a person having ordinary skill would have
`
`combined the teachings of Frossard with those of Spaur for various reasons,
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`including that both references describe systems for remotely communicating
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`information to a vehicle, and receivers located on the vehicle that receive a
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`signal from a remote device, and because one of ordinary skill in the art
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`would recognize that it would be advantageous to use a device associated
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`with a web site to send a shutdown signal to the vehicle. Pet. 16–17 (citing
`
`Ex. 1003 ¶ 49). Petitioner also contends that one of ordinary skill in the art
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`would have combined Spaur and Frossard because it would achieve the
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`predictable result of using a processing device associated with a web site for
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`the controlled shutdown of a vehicle. Id.
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`Patent Owner contends that Frossard fails to teach the “third
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`processing device” of claim 21 because Frossard’s “receiver/decoder circuits
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`4” is actually an “interface” device, and not a “processing” device. PO.
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`Resp. 18. Patent Owner argues that Frossard’s receiver-decoder circuits 4
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`only receives a signal and decodes that signal, therefore rendering it only an
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`“interface” device and not a “processing” device. Id. We are not persuaded
`
`by this argument. Claim 21 requires that the third processing device
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`generates or transmits a third signal. Ex. 1001 (a “third processing device”
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`that “at least one of generates a third signal and transmits a third signal . . .”)
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`(emphasis added). Petitioner points to the receiver-decoder circuits of
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`Frossard, which send a third signal (i.e., a “controlled inhibition means . . .
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`commanded by the receiver-decoder means . . . to ensure that the equipment
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`is switched to shutdown . . . .”) Pet. 22 (citing Ex. 1005, p. 3). Further,
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`Frossard’s receiver-decoder circuit “addresses the corresponding commands
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`to equipment 3 itself, causing immediate or deferred shutdown . . . .” Id.
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`(citing Ex. 1005, p. 9). Thus, we are not persuaded by Patent Owner’s
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`argument that Frossard’s receiver-decoder circuits 4 merely receives and
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`decodes a signal, without any transmission of a signal.
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`Patent Owner further argues that Spaur fails to teach the “first
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`processing device” that is “located at a location remote from the vehicle”
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`and that is “associated with a web site” as recited in claim 21. PO. Resp.
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`19–21. Patent Owner argues the only device in Spaur that could be
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`associated with a web site is controller 30, which is located at the vehicle.
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`Id. We disagree. Petitioner points to the computer terminal at the “remote
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`site” (not the vehicle) that has a “world wide web browser.” Pet. 14, 15
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`(citing Ex. 1016, 1:7–8, 5:40–6:22, Fig. 1, 2:25–34, Ex. 1003, 46). Thus, we
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`agree with Petitioner’s assertions that Spaur teaches a computer terminal at a
`
`remote site (remote from the vehicle) that includes a web browser, thereby
`
`teaching the claim limitation. Id. at 15. We agree with Petitioner that one of
`
`ordinary skill in the art would understand that Spaur discloses using a web
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`site at the remote site. Id. (citing Ex. 1003, 46).
`
`Patent Owner’s argument turns on a reading of “associated with a web
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`site” as requiring the first processing device to include a web server, located
`
`at the first processing device, which hosts the web site at that location. See
`
`PO Resp. 18–20. We decline to import these limitations into the language of
`
`claim 21, which does not recite anything about the location, or host, of “the
`
`web site.” Moreover, as Petitioners point out (Pet. Reply 14–16), the
`
`specification of the ’363 patent describes an embodiment where the
`
`association between the first processing device and the web site includes
`
`hosting the web site at another device and accessing the web site from that
`
`other device. See Ex. 1001, Figs. 11A, 11B, 57:20–67. Thus, Patent
`
`Owner’s argument is not supported by the language of claim 21 nor the
`
`specification of the ’363 patent.
`
`As to dependent claims 24, 25, and 36, Patent Owner stands by its
`
`arguments with respect to claim 21. PO Resp. 27. We disagree with those
`
`arguments for the reasons described above. We have reviewed Petitioner’s
`
`arguments and supporting evidence with respect to each of claims 21, 24, 25,
`
`and 36 of the ’363 patent, as set forth in the Petition. Pet. 13–26. We agree
`
`with and adopt Petitioner’s contentions regarding the teachings in Frossard
`
`and Spaur of each of these limitations and Petitioner’s articulated reasoning
`
`16
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`Patent 7,397,363
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`with rational underpinning for combining the references. Id. Based on these
`
`contentions, we conclude that Petitioner has shown by a preponderance of
`
`the evidence that the subject matter of claims 21, 24, 25, and 36 would have
`
`been obvious in view of the combination of Frossard and Spaur.
`
`D.
`
`Asserted Ground Based on Frossard, Spaur, and Pagliaroli
`
`1.
`
`Pagliaroli (Ex. 1006)
`
`Pagliaroli teaches enabling or disabling remotely an automobile. Ex.
`
`1006, Abs. When an automobile owner realizes their vehicle is stolen, the
`
`owner dials a telephone number to disable the automobile. Id. Figure 1 is
`
`reproduced below.
`
`
`
`Figure 1 illustrates a user connecting to receiver 14 when dialing from
`
`telephone 48. Id. at 4:53–5:1. In addition, Figure 1 shows telephone 48
`
`connects to receiver 14 via transmitter 46. Id. Receiver 14 receives signal
`
`code 40 and forwards code 40 to control unit 16. Id. at 5:30–33. When a
`
`disabling signal is sent, control unit 16 disables starter 20 and ignition
`
`system 22 stops the operation of the automobile and sends a signal activating
`
`emergency lights 24 of the automobile. Id. at 5:44–55. License plate lights
`
`17
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`IPR2015-01645
`Patent 7,397,363
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`26 may change colors or flash to identify to police that the automobile is
`
`stolen. Id. at 5:55–58.
`
`2.
`
`Analysis of Obviousness Challenge of Claim 22
`
`Petitioner contends claim 22 is unpatentable under 35 U.S.C. § 103(a)
`
`as obvious in view of Frossard, Spaur, and Pagliaroli. Pet. 26–30. Relying
`
`on the testimony of Mr. McNamara, Petitioner explains how Frossard,
`
`Spaur, and Pagliaroli allegedly teach the claim limitations of claim 22, and
`
`argues a person of ordinary skill in the art would have combined Frossard,
`
`Spaur, and Pagliaroli. Id. (citing Ex. 1003). Specifically, Petitioner
`
`contends that Frossard and Spaur teach the elements recited in claim 21 and
`
`Pagliaroli teaches the additional limitation recited in claim 22 relating to the
`
`controlling, monitoring, and determining an operating status of a vehicle
`
`system. Pet. 26–30. In particular, Petitioner argues at least Pagliaroli’s
`
`disclosure of monitoring the condition of an automobile and if theft sensor
`
`12 on the automobile is activated, transmitter 28 transmits signal 42 that can
`
`notify a person of the theft, meets the additional limitation recited in claim
`
`22. Id. at 27 (citing Ex. 1006, 4:22–24; 4:42–45; 5:44–57).
`
`As to claim 22, Patent Owner stands by its arguments with respect to
`
`claim 21. PO Resp. 27. Upon consideration of the full record, we are
`
`persuaded by Petitioner’s contentions. We agree with and adopt Petitioner’s
`
`contentions regarding the references teachings of the limitations of
`
`dependent claim 22. Petitioner has shown by a preponderance of the
`
`evidence that the combination of Frossard, Spaur, and Pagliaroli teaches the
`
`limitations recited in dependent claim 22, and Petitioner has articulated
`
`sufficient reasoning with rational underpinning for combining the references.
`
`18
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`IPR2015-01645
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`E.
`
`Asserted Ground Based on Frossard, Spaur, and Simms
`
`1.
`
`Simms (Ex. 1007)
`
`Simms teaches a security system utilizing Global Position Satellite
`
`(“GPS”). Ex. 1007, Abs. The security system comprises a mobile unit. Id.
`
`The mobile unit communicates emergency data including position
`
`coordinates to a central dispatch station that receives the emergency data and
`
`displays emergency information on a digitized map at a position
`
`corresponding to the location of the mobile unit. Id. Central dispatch station
`
`40 is a database that processes the code to display the position of the mobile
`
`entity on the digitized map. Id. at 5:49–51, 5:62–68, 12:37–41, 12:51–13:9.
`
`2.
`
`Analysis of Obviousness Challenge of Claim 29
`
`Petitioner contends claim 29 is unpatentable under 35 U.S.C. § 103(a)
`
`as obvious in view of Frossard, Spaur, and Simms. Pet. 30–34. Relying on
`
`the testimony of Mr. McNamara, Petitioner explains how Frossard, Spaur,
`
`and Simms allegedly teach the claim limitations of claim 29, and argues a
`
`person of ordinary skill in the art would have combined Frossard, Spaur, and
`
`Simms. Id. (citing Ex. 1003). Specifically, Petitioner contends that Frossard
`
`and Spaur teach the elements recited in claim 21 and Simms teaches the
`
`additional limitation recited in claim 29 relating to the positioning device for
`
`determining the location of the vehicle that is located at the vehicle. Id.
`
`In particular, Petitioner argues at least Simms’s disclosure of a
`
`positioning device for determining the location of the vehicle that is located
`
`at the vehicle meets the additional limitation in claim 29. Id. at 31.
`
`Petitioner concludes that one of ordinary skill in the art would have been
`
`motivated to combine Frossard’s system for protecting motor vehicles using
`
`19
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`IPR2015-01645
`Patent 7,397,363
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`a shutdown mechanism and Simms’s mobile unit using GPS communicating
`
`position coordinates to a database station that displays the position on a
`
`digitized map, because Simms’s mobile unit would provide more accurate
`
`location information on a digital map. Pet. 30–32. Petitioner argues that
`
`such a combination is nothing more than the use of a known technique to
`
`improve similar devices and methods in the same way. Id. at 32–34.
`
`Patent Owner does not dispute that the references teach the limitations
`
`of claim 29, but argues that a “complete redesign” of Frossard would be
`
`required to combine Frossard with Simms. PO Resp. 28–30. Patent Owner
`
`also generally argues that components of Spaur would also require redesign
`
`to combine with Simms. Id. at 30. According to Patent Owner, Mr.
`
`McNamara acknowledged this during his cross-examination. Id. (citing Ex.
`
`2007, 324:7–22; 329:7–12).
`
`Petitioner responds that Patent Owner’s arguments are not supported
`
`by any evidence or by the language of claim 29. Pet. Reply 20–21.
`
`Petitioner argues Patent Owner’s reliance on page 324, lines 7–22 and page
`
`329, lines 7–12 of the cross-examination do not support Patent Owner’s
`
`argument. Id. (citing Ex. 2007). Petitioner argues that instead, the
`
`statements from the cross-examination actually explain a simple
`
`implementation for combining Frossard’s system and Simms’s positioning
`
`device. Id. Petitioner argues Mr. McNamara further explains other
`
`implementations at page 335, line 13 through page 336, line 6 of the cross-
`
`examination. Id. (citing Ex. 2007).
`
`We agree with Petitioner. Patent Owner does not explain why
`
`combining Frossard, Simms, and Spaur is improper other than general
`
`attorney argument that a “substantial” redesign would be required. PO Resp.
`
`20
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`
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`IPR2015-01645
`Patent 7,397,363
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`28–30. Patent Owner’s arguments are conclusory and unsupported by the
`
`record. Patent Owner’s reliance on page 324, lines 5–25 and page 329, lines
`
`7–14 of the cross-examination do not support Patent Owner’s argument.
`
`Ex. 2007, 324:5–25, 329:7–14. We agree with Petitioner that the statements
`
`from the cross-examination explain a simple implementation for combining
`
`Frossard’s system and Simms’s positioning device. Id. Mr. McNamara
`
`further explains other implementations at page 335, line 13 through page
`
`336, line 6 of the cross-examination. Id. at 335:13–336:6. Mr. McNamara
`
`articulates sufficient reasoning with rational underpinning for combining the
`
`references. Ex. 1003 ¶¶ 77–82. We find Mr. McNamara’s testimony to be
`
`reasonable and persuasive. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
`
`401 (2007).
`
`With respect to Spaur, Patent Owner does not explain why combining
`
`Fro
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