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` Paper 11
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` Date: February 9, 2016
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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 HOWARD B. BLANKENSHIP, STACEY G. WHITE, and
`BETH Z. SHAW, Administrative Patent Judges.
`
`SHAW, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`I.
`
`INTRODUCTION
`
`Petitioner, Nissan North America, Inc., filed a Petition to institute an
`inter partes review of claims 21, 22, 24, 25, 29, and 36 (“the challenged
`claims”) of U.S. Patent No. 7,397,363 (“the ’363 patent”). Paper 1 (“Pet.”).
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`Patent Owner, Joao Control & Monitoring Systems, LLC, filed a
`Preliminary Response pursuant to 35 U.S.C. § 313. Paper 8 (“Prelim.
`Resp.”).
`We have authority to determine whether to institute an inter partes
`review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Upon consideration of the
`record, and for the reasons explained below, we determine that the
`information presented shows a reasonable likelihood that Petitioner would
`prevail with respect to claims 21, 22, 24, 25, 29, and 36. See 35 U.S.C.
`§ 314(a). Accordingly, we institute an inter partes review of these claims.
`
`A.
`
`Related Matters
`
`Petitioner indicates that there are a significant number of related
`cases. See Pet. 1–2. At the time the Petition was filed, U.S. Patent No.
`7,397,363 B2 was subject to ex parte reexamination and a Notice of Intent to
`Issue Ex Parte Reexamination Certificate was mailed July 29, 2015. Ex.
`2002. A reexamination certificate issued September 2, 2015 for U.S. Patent
`No. 7,397,363 C1.
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`B.
`
`The Asserted Grounds
`
`Petitioner identifies the following as asserted grounds of
`unpatentability:
`
`Reference(s)
`Frossard (Ex. 1005)1
`and Spaur (Ex. 1016)2
`Frossard, Spaur, and
`Pagliaroli (Ex. 1006)3
`Frossard, Spaur, and
`Simms (Ex. 1007)4
`Johnson (Ex. 1008)5 and
`Rossmann (Ex. 1009)6
`
`
`
`Basis
`
`Challenged Claim(s)
`
`§ 103(a)
`
`21, 24, 25, and 36
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`22
`
`29
`
`21, 22, 24, 25, 29,
`and 36
`
`C.
`
`The ’363 Patent
`
`The ’363 patent is directed to controlling a vehicle or premises. Ex.
`1001, Abst. The ’363 patent describes a first control device which generates
`a first signal and is associated with a web site and located remote from a
`premises or vehicle. Id. The first control device generates the first signal in
`response to a second signal that is transmitted via the Internet from a second
`control device located remote from the first device and remote from the
`premises or vehicle. Id. The first device determines whether an action
`
`
`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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`associated with the second signal is allowed, and if so, transmits the first
`signal to a third device located at the premises. Id. The third device
`generates a third signal for activating, de-activating, disabling, re-enabling,
`or controlling an operation of a system, device, or component of the
`premises or vehicle. See id.
`
`
`D.
`
`The Challenged Claims
`
`Petitioner challenges claims 21, 22, 24, 25, 29, and 36, of which claim
`21 is the only independent claim. Claim 21 is illustrative and is reproduced
`below:
`21. An apparatus, comprising:
`a first processing device, wherein the first
`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
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`a vehicle system, a vehicle equipment system, a vehicle
`component, a vehicle device, a vehicle equipment, and a vehicle
`appliance, is an authorized or 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
`
`A.
`
`Claim Construction
`
`Before proceeding with claim construction, we must determine the
`proper standard to apply. Petitioner and Patent Owner contend that the
`claims of the ʼ363 patent should be given their broadest reasonable
`construction. Pet. 8; Prelim. Resp. 10–12. That standard, however, is
`applicable only to unexpired patents. See 37 C.F.R. § 42.100(b) (“A claim
`in an unexpired patent shall be given its broadest reasonable construction in
`light of the specification of the patent in which it appears.”). In this case, if
`a trial proceeds, the patent will expire during the trial. For expired patents,
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`we apply the Phillips standard used in district court patent litigation. See
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
`The term of a patent grant begins on the date on which the patent
`issues and ends 20 years from the date on which the application for the
`patent was filed in the United States “or, if the application contains a
`specific reference to an earlier filed application or applications under section
`120, 121, or 365(c) of this title, from the date on which the earliest such
`application was filed.” 35 U.S.C. § 154(a)(2) (2002). The ’363 patent is
`subject to a terminal disclaimer with respect to U.S. Patent No. 6,542,077 B2
`(“’077 patent”). Ex. 1001, at [76]. The earliest patent application
`referenced for the benefit of priority under 35 U.S.C. § 120, for the ’077
`patent, was filed on March 27, 1996, and the patent has a term extension of
`40 days. The term of the ’363 patent, thus, will expire no later than May 6,
`2016.
`
`Because, on this record, we conclude that the term of the ’363 patent
`will expire prior to the end of the one-year period allotted for an inter partes
`review, for purposes of this Decision we treat the patent as expired. For
`claims of an expired patent, the Board’s claim interpretation is similar to that
`of a district court. See In re Rambus Inc., 694 F.3d 42, 46 (Fed. Cir. 2012).
`“In determining the meaning of the disputed claim limitation, we look
`principally to the intrinsic evidence of record, examining the claim language
`itself, the written description, and the prosecution history, if in
`evidence. . . .” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469
`F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17).
`There is, however, a “heavy presumption” that a claim term carries its
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`ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick Corp.,
`288 F.3d 1359, 1366 (Fed. Cir. 2002).
`
`B. Claim Terms
`
`Petitioner proposes a construction for “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 an allowed action or
`an authorized or an allowed operation.” Pet. 9–13.
`Patent Owner argues that the terms “interface device,” “processing
`device,” “remote” and “located at” are defined expressly in the prosecution
`history of at least two related applications. Prelim. Resp. 11. We, however,
`are not persuaded that express construction of any term is necessary in order
`to resolve the disputes currently before us. Thus, we discern no need to
`provide any express constructions at this time. Vivid Techs., Inc. v. Am. Sci.
`& Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need
`be construed that are in controversy, and only to the extent necessary to
`resolve the controversy.”).
`
`C.
`
`Asserted Ground Based on Frossard and Spaur
`
`1.
`
`Frossard (Ex. 1005)
`
`Frossard describes a system for controlling shutdown of movable or
`mobile equipment and locating the movable or mobile equipment. Ex. 1005,
`2:1–2. Figure 1 is reproduced below.
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`Figure 1 illustrates movable or mobile equipment 3 containing
`receiver-decoder circuits 4 for an order message to shut down movable or
`mobile equipment 3. Id. at 5:7–12. In addition, Figure 1 shows a scenario in
`which equipment 3 is stolen, the owner or authorized person calls server 1 to
`communicate a shutdown order of equipment 3. Id. at 9:14–17. After server
`1 validates the shutdown order, the shutdown order is transmitted to
`equipment 3. Id. at 9:23–24. Figure 2, which is reproduced below, provides
`a more detailed explanation of how equipment 3 is shut down.
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`Figure 2 illustrates receiver-decoder circuits 4 and equipment
`interface 5 from Figure 1. Id. at 3:26–27, 7:21–23. Shutdown circuit 423
`controls immediate or deferred shutdown of equipment 3. Id. at 9:28–10:3.
`When shutdown of equipment 3 occurs, an electrical contact that activates
`the starter is broken. Id. at 10:13–21.
`
`
`2.
`
`Spaur (Ex. 1016)
`
`Spaur describes an apparatus for communication of information
`“between a vehicle and one or more remote stations using an established
`network, such as the Internet.” (Ex. 1016, 1:7-8; 5:40-6:22; Fig. 1.) Figure 2
`is reproduced below.
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`Figure 1 illustrates an apparatus for bi-directional communication
`between one or more remote stations 10a-n and a vehicle. Ex. 1016, 5:40–
`43. At the remote site, there is “[a]n internet or world wide web browser . . .
`available to the computer terminal” and “[t]he computer terminal supplies
`the browser with an IP (Internet protocol) address” which is “associated with
`a particular vehicle.” Id. at 2:25–34.
`
`3.
`
`Analysis of Obviousness Challenge of Claims 21, 24, 25, and 36
`
`Petitioner contends that that the combination of Frossard and Spaur
`teaches all of the limitations of independent claim 21. Pet. 13–26. For
`example, Petitioner points to Frossard’s transmitting “an access code” and
`“corresponding intervention order” to a “server center… via a telephone
`connection or a Minitel, for example.” Pet. 14 (citing Ex. 1005, p. 4 ¶ 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; Ex.
`1003 ¶ 43).
`Petitioner contends a person having ordinary skill would have
`combined the teachings of Frossard with those of Spaur for various reasons,
`including that both references describe: systems for remotely
`communicating information to a vehicle, and receivers located on the vehicle
`that receive a signal from a remote device, and one of ordinary skill in the
`art would recognize that it would be advantageous to use a device associated
`with a web site to send a shutdown signal to the vehicle. Pet. 16–17 (citing
`Ex. 1003 ¶ 49). Petitioner contends that one of ordinary skill in the art
`would have combined Spaur and Frossard to achieve the predictable result of
`using a processing device associated with a web site for the controlled
`shutdown of a vehicle. Id.
`Patent Owner contends that Frossard fails to teach the “third
`processing device” of claim 21 because Frossard’s “receiver-decoder circuits
`4” is actually an “interface” device, and not a “processing” device. Prelim.
`Resp. 22. Patent Owner argues that Frossard’s receiver-decoder circuit only
`receives a signal and decodes that signal, therefore rendering it only an
`“interface” device and not a “processing” device. Id. We are not persuaded
`by this argument. Claim 21 requires that the third processing device
`generates or transmits a third signal.7 Petitioner points to the receiver-
`decoder circuits of Frossard, which send a third signal (i.e., a “controlled
`
`
`7 See Ex. 1001, (a “third processing device” that “at least one of
`generates a third signal and transmits a third signal . . .”) (emphasis added).
`
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`inhibition means . . . commanded by the receiver-decoder means . . . to
`ensure that the equipment is switched to shutdown . . . .” Pet. 22 (citing Ex.
`1005, p. 3). Further, Frossard’s receiver-decoder circuit “addresses the
`corresponding commands to equipment 3 itself, causing immediate or
`deferred shutdown . . . .” Id. (citing Ex. 1005, p. 9). Thus, on this record,
`we are not persuaded by Patent Owner’s argument that Frossard’s receiver-
`decoder circuit merely receives and decodes a signal, without any
`transmission of a signal.
`Patent Owner further argues that Spaur fails to teach the “first
`processing device” and second processing device of claim 21. Prelim. Resp.
`25, 26. Patent Owner argues the only device in Spaur that could be
`associated with a web site is controller 30, which is located at the vehicle.
`Id. at 26. We disagree. Petitioner points to the computer terminal at the
`“remote site” (not the vehicle) that has a “world wide web browser.” Pet.
`14, 15 (citing Ex. 1016, 1:7-8, 5:40-6:22, Fig. 1, 2:25-34, Ex. 1003, 46).
`Thus, we agree that Spaur teaches a computer terminal at a remote site
`(remote from the vehicle) that includes a web browser. Id. at 15. Petitioner
`argues that one of ordinary skill in the art would understand that Spaur
`discloses using a web site at the remote site. Id. (citing Ex. 1003, 46).
`Petitioner relies on its declaration testimony to support this conclusion. Id.
`We have reviewed Petitioner’s arguments with respect to each of
`claims 21, 24, 25, and 36 of the ’363 patent. Upon consideration of
`Petitioner’s explanations and supporting evidence, we are persuaded by
`Petitioner’s contentions. On the present record, Petitioner has shown
`sufficiently that the combination of Frossard and Spaur teaches the
`limitations recited in claims 21, 24, 25, and 36, and Petitioner has articulated
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`sufficient reasoning with rational underpinning for combining Frossard and
`Spaur. Pet. 16–17. Accordingly, the information presented shows a
`reasonable likelihood that Petitioner would prevail in establishing that
`claims 1–3 would have been rendered obvious by the combination of
`Frossard and Spaur.
`
`D.
`
`Asserted Ground Based on Frossard, Spaur, and Pagliaroli
`
`1.
`
`Pagliaroli (Ex. 1006)
`
`Pagliaroli describes 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
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`emergency lights 24 of the automobile. Id. at 5:44–55. License plate lights
`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).
`Upon consideration of Petitioner’s explanations and supporting
`evidence, we are persuaded by Petitioner’s contentions. On the present
`record, Petitioner has shown sufficiently 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. Accordingly, the information presented shows
`a reasonable likelihood that Petitioner would prevail in establishing that
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`claim 22 would have been rendered obvious by the combination of Frossard,
`Spaur, and Pagliaroli.
`
`
`
`E.
`
`Asserted Ground Based on Frossard, Spaur, and Simms
`
`1.
`
`Simms (Ex. 1007)
`
`Simms describes 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.
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`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. We are
`persuaded that the present record supports Petitioner’s contention that
`Simms’s mobile unit 32 using GPS that communicates position coordinates
`to a central dispatch database station 40 that receives and displays the
`information on a digitized map at a position corresponding to the location of
`the mobile unit teaches or suggest the limitations of claim 60. Pet. 31–34
`(citing Ex. 1007) (pinpoint citations omitted).
`Upon consideration of Petitioner’s explanations and supporting
`evidence, we are persuaded by Petitioner’s contentions. On the present
`record, Petitioner has shown sufficiently that the combination of Frossard,
`Spaur, and Simms teaches the limitations recited in dependent claim 29, and
`Petitioner has articulated sufficient reasoning with rational underpinning for
`combining the references. Accordingly, the information presented shows a
`reasonable likelihood that Petitioner would prevail in establishing that claim
`19 would have been rendered obvious by the combination of Frossard,
`Spaur, and Simms.
`Petitioner concludes that one of ordinary skill in the art would have
`combined Frossard’s system for protecting motor vehicles using 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
`in order to provide more accurate location information on a digital map. Pet.
`30–32.
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`Patent Owner argues that Simms fails to remedy Frossard’s alleged
`deficiencies. Prelim. Resp. 44. On the present record, we disagree with
`Patent Owner for the same reasons discussed supra in Part II.B.2.
`We have reviewed the proposed ground challenging claim 60 as
`obvious over Frossard and Simms, and we are persuaded, at this juncture of
`the proceeding, that Petitioner has established a reasonable likelihood of
`prevailing in its challenge to claim 60 on this ground.
`
`F.
`
`Asserted Ground Based on Johnson and Rossmann
`
`Petitioner contends the challenged claims are unpatentable under
`35 U.S.C. § 103(a) as obvious in view of Johnson and Rossmann. Pet. 30–
`36. Relying on the testimony of Mr. McNamara, Petitioner explains how
`Johnson and Rossmann allegedly teach the claim limitations of the
`challenged claims, and argues a person of ordinary skill in the art would
`have combined Johnson and Rossmann. Id. (citing Ex. 1003).
`Patent Owner argues that Johnson fails to teach the “first processing
`device” and “second processing device” of claim 21. In particular, Patent
`Owner argues that Johnson “teaches away” from the use of a first processing
`device that is associated with a web site and a second processing device that
`transmits a “second signal . . . to the first processing device via, on, or over,
`at least one of the Internet and the World Wide Web.” Prelim. Resp. 31-32
`(emphasis in original). Patent Owner argues this is because the operator
`console and computer system of Johnson are located at the same location,
`i.e., the central monitoring station 103, and therefore, there is no need to
`connect them via the Internet. Prelim. Resp. 32, 33.
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`On this record, we are not persuaded by this argument. A reference
`teaches away from a claimed invention if it “criticizes, discredits, or
`otherwise discourages” modifying the reference to arrive at the claimed
`invention. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). We will not,
`however, “read into a reference a teaching away from a process where no
`such language exists.” DyStar Textilfarben GmbH & Co. Deutschland KG
`v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006).
`Patent Owner’s teaching away argument is predicated on the notion
`that Johnson’s operator console and computer system being at central
`monitoring station 103 criticizes, discredits, or otherwise discourages
`modifying Johnson to utilize the Internet to send signals. We are not
`persuaded that Johnson teaches away from this solution and, as a result,
`teaches away from the claimed invention.
`Additionally, Patent Owner argues that Petitioner’s analysis as to how
`Rossmann remedies the deficiencies in Johnson lacks an articulated
`reasoning with some rational underpinning. Prelim. Resp. 35. Patent Owner
`argues that Petitioner has not articulated why one of skill in the art would
`look to Rossmann to address an alleged problem that does not exist in
`Johnson, and that there is no need in Johnson to use the Internet to establish
`a network connection between the computer system 601 and the operator
`console 605. Id. We are not persuaded by this argument. A person of
`ordinary skill is a person of ordinary creativity, not an automaton. KSR Int’l
`Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). First, we disagree that a
`person of ordinary skill would disregard Johnson because it discloses using a
`computer system 601 and operator console 605 in a client-server architecture
`at a central location. See Ex. 1008, 11:18–32. Moreover, “[t]he
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`combination of familiar elements according to known methods is likely to be
`obvious when it does no more than yield predictable results.” KSR, 550 U.S.
`at 416. “If a person of ordinary skill can implement a predictable variation,
`§ 103 likely bars its patentability.” Id. at 417.
`Petitioner contends that Johnson describes a system that uses a client-
`server architecture for a monitoring station, and the monitoring station issues
`signal commands to a vehicle to affect various functions to immobilize the
`vehicle. Id. at 35 (citing Ex. 1008, 11:18–32; Ex. 1003, 85). Petitioner
`contends that Rossmann describes a cellular telephone as a client in a client-
`server architecture and an Internet-based server. Id. (citing Ex. 1009).
`Petitioner contends that of ordinary skill in the art would have combined
`Rossmann (e.g., combining a computer module with a wireless
`communication module) with Johnson and achieved the predictable result of
`using the client-server architecture of Rossmann in the client-server
`architecture of Johnson. Id. at 35, 36 (citing Ex. 1003, 86). Upon
`consideration of Petitioner’s explanations and supporting evidence, we are
`persuaded by Petitioner’s contentions. On the present record, Petitioner has
`shown sufficiently that the combination of Johnson and Rossmann teaches
`the limitations recited in the challenged claims, and Petitioner has articulated
`sufficient reasoning with rational underpinning for combining the references.
`Accordingly, the information presented shows a reasonable likelihood that
`Petitioner would prevail in establishing that the challenged claims would
`have been rendered obvious by the combination of Johnson and Rossmann.
`
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`III. CONCLUSION
`
`For the foregoing reasons, we determine that the information
`presented establishes a reasonable likelihood that Petitioner would prevail in
`in showing that claims 21, 22, 24, 25, 29, and 36 of the ʼ363 patent are
`unpatentable. At this preliminary stage, the Board has not made a final
`determination with respect to the patentability of the challenged claims or
`any underlying factual and legal issues.
`IV. ORDER
`
`Accordingly, it is
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`review is hereby instituted for the following grounds of unpatentability:
`
`Claims 21, 24, 25, and 36 under 35 U.S.C. § 103(a) as obvious over
`Frossard and Spaur;
`
`Claim 22 under 35 U.S.C. § 103(a) as obvious over Frossard, Spaur,
`and Paglioli;
`
`Claim 29 under 35 U.S.C. § 103(a) as obvious over Frossard, Spaur,
`and Simms;
`
`Claims 21, 22, 24, 25, 29, and 36 under 35 U.S.C. § 103(a) as obvious
`over Rossmann and Johnson; and
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; the trial
`commences on the entry date of this decision.
`
`
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`PETITIONER:
`D. Clay Holloway
`Alton L. Absher III
`KILPATRICK TOWNSEND & STOCKTON LLP
`cholloway@kilpatricktownsend.com
`aabsher@kilpatricktownsend.com
`
`
`
`PATENT OWNER:
`Raymond A. Joao
`rayjoao@optonline.net
`
`René A. Vazquez
`HENINGER GARRISON DAVIS, LLC
`rvazquez@hgdlawfirm.com
`
`
`
`
`
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