UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF MICHIGAN
`SOUTHERN DIVISION
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`JOAO CONTROL & MONITORING
`SYSTEMS, LLC,
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`v.
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`Plaintiff,
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`CHRYSLER GROUP LLC,
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`Defendant.
`__________________________________/
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`Case No. 13-cv-13957
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`HON. MARK A. GOLDSMITH
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`
`OPINION AND ORDER
`(1) GRANTING IN PART AND DENYING IN PART DEFENDANT FCA US
`LLC’S MOTION FOR SUMMARY JUDGMENT ON INVALIDITY AND NON-
`INFRINGEMENT (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)
`
`This is a patent infringement case in which Plaintiff Joao Control & Monitoring Systems,
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`LLC (“JCMS”) alleges that Defendant FCA US LLC (formerly Chrysler Group LLC) (“FCA”)
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`has infringed several of its patents by manufacturing, selling, and using its UConnect Access
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`product. Before the Court are FCA’s Motion for Summary Judgment on Invalidity and Non-
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`Infringement (Dkt. 59) and JCMS’s Motion for Summary Judgment of Infringement of U.S.
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`Patent No. 7,397,363 by UConnect Access (Dkt. 57).
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`For the reasons stated below, the Court grants in part and denies in part FCA’s Motion
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`for Summary Judgment on Invalidity and Non-Infringement (Dkt. 59) and denies as moot
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`JCMS’s Motion for Summary Judgment of Infringement of U.S. Patent No. 7,397,363 by
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`UConnect Access (Dkt. 57). Specifically, the Court holds that all of the claims being asserted in
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`JCMS’s patents to be invalid, as either obvious or anticipated based on prior art. Because the
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`1
`Petitioner Nissan North America, Inc. - Exhibit 1018 - Page 1
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`Court finds that all asserted claims are invalid as being obvious and/or anticipated based on prior
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`art, FCA’s other invalidity and non-infringement arguments, as well as JCMS’s infringement
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`arguments, are moot. Summary judgment will be entered in favor of FCA, dismissing JCMS’s
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`complaint with prejudice.
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`I. BACKGROUND
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`A. Procedural Background
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`This patent infringement case was transferred to this Court from the United States
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`District Court for the Southern District of New York on September 16, 2013. After substantial
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`discovery, the Court held a claim construction hearing on March 24, 2015 and issued a formal
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`claim construction opinion on August 26, 2015. 8/26/2015 Op. & Order (Dkt. 53). After the
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`filing of the pending cross motions for summary judgment, the Court heard oral argument on
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`April 15, 2016 and allowed supplemental briefs, which were reviewed along with the earlier
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`briefing.
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`B. Overview of the Asserted Patents
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`JCMS has alleged that FCA has infringed four patents by making, selling, using a system
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`named UConnect Access: U.S. Patent No. 5,917,405 (‘405 Patent), entitled “Control Apparatus
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`and Methods for Vehicles”; U.S. Patent 6,549,130 (‘130 Patent), entitled “Control Apparatus and
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`Method for Vehicles and/or Premises”; U.S. Patent No. 6,542,076 (‘076 Patent), entitled
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`“Control, Monitoring and/or Security Apparatus and Method”; and U.S. Patent No. 7,397,363
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`(‘363 Patent), entitled “Control and/or Monitoring Apparatus and Method.”
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`The four patents are all part of the same family of patents and are thus related. The
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`parties agree that that the written description sections of the asserted patents are largely the same.
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`2
`Petitioner Nissan North America, Inc. - Exhibit 1018 - Page 2
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`The asserted patents relate inter alia to a security system to prevent a thief from stealing a
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`vehicle or, alternatively, to allow the owner of a vehicle to recover a stolen vehicle. In one
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`example embodiment of the invention, the asserted patents teach a system that allows a vehicle
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`owner, after a thief steals his car, to safely turn off the vehicle or lock out the thief from the
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`vehicle after his getaway. When his car is stolen, the vehicle’s owner would use his cellular
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`telephone or personal computer to access an online website (or a central security office) where
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`he could control various vehicle systems. The website or central security office would then
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`communicate with the vehicle’s onboard computer, thereby allowing the vehicle’s owner to
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`control systems of the vehicle.
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`More specifically, the patented system allows the vehicle’s owner to turn off or activate
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`various vehicle systems to thwart a user from stealing the vehicle in various ways, such as
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`turning off the fuel supply system, the exhaust system, or the ignition system, locking the vehicle
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`hood, turning on an interior or exterior siren, alarm, or horn, activating an intercom system for
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`providing communications between vehicle owner and the vehicle occupants, and/or activating a
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`video and/or audio recording device within the vehicle. The patented system would only allow
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`the vehicle owner to turn off these vehicle systems when it is safe to do so, such as when the
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`thief turns the engine or the vehicle is stopped. The asserted patents also teach that the patented
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`system can have a vehicle position and locating device which can be utilized to allow the
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`vehicle’s owner to determine the position and/or location of the vehicle after it is stolen.
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`Figure 11B of the ‘363 Patent illustrates the patented system, which has been reproduced
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`below. Reference number 150 shows a home and/or personal computer that communicates with
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`an intermediate computer server (952), a central security office (950), or directly with a receiver
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`(3) on the vehicle. By using the personal computer (150), the user can send instructions to the
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`3
`Petitioner Nissan North America, Inc. - Exhibit 1018 - Page 3
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`server computer (952), which will process the user directions, and then communicate the
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`instructions to the CPU (4) (computer processing unit) at the vehicle. The CPU (4) in the vehicle
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`will then send commands to the relevant system interface to control a system in the vehicle such
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`as the ignition system or the vehicle fuel pump. Thus, the user can remotely control a system in
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`the vehicle from a home computer by communicating with an intermediate server, which then
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`sends instructions to the vehicle.
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`C. REEXAMINATION AND INTER PARTES REVIEW PROCEEDINGS
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`In June 2014, Volkswagen Group of America, Inc. filed ex parte reexamination
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`proceedings at the United States Patent and Trademark Office (“USPTO”) challenging the
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`validity of one claim from each of the asserted patents in this case. 12/2/2015 Koperda Report at
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`D-5 ¶ 0178. The USPTO only upheld the validity of Claim 21 of the ‘363 Patent. Ex Parte
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`Reexamination Certificate U.S. Patent No. 7,397,363 (Dkt. 75-4). The USPTO Patent Examiner
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`4
`Petitioner Nissan North America, Inc. - Exhibit 1018 - Page 4
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`found the other claims challenged in the reexamination proceedings (Claim 1 of the ‘405, Claim
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`48 of the ’130 Patent, and Claim 3 of the ‘076 Patent) to be invalid. JCMS has appealed the
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`decisions of the USPTO Patent Examiner. Volkswagen did not rely upon the primary prior art
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`reference at issue in the present motion for summary judgment in the ex parte reexamination
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`proceedings, specifically the published European patent application 92400712.3 to inventor
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`Didier Frossard, entitled “System for controlled shutdown and for location of a movable or
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`mobile equipment” (Dkt. 59-33).
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`
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`In response to JCMS asserting its patents, accused infringers filed numerous inter partes
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`review proceedings at the USPTO challenging the validity of various claims in the ‘405, ‘130,
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`‘076, and ‘363 Patents. Of particular note to this case, in the automotive field, Nissan North
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`America, Inc. filed petitions to institute inter partes review proceedings against each of the
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`asserted ‘405,1 ‘130,2 ‘076,3 and ‘3634 Patents. In January 2016, the USPTO decided to institute
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`formal inter partes review proceedings against each of the ‘405, ‘130, 076, and ‘363 Patents
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`because Nissan had demonstrated that there was “a reasonable likelihood it would prevail in
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`establishing the unpatentability” of the challenged claims in the patents. 35 U.S.C. § 314(a).
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`(Dkts. 85-4, 5, 6, and 7). In making its preliminary decision, the USPTO relied heavily on
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`Frossard. A trial has not yet taken place in the Nissan inter partes review proceedings.
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`D. The Accused Product: UConnect Access
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`1 IPR2015-01585
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`2 IPR2015-01509
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`3 IPR2015-01508
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`4 IPR2015-01645
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`5
`Petitioner Nissan North America, Inc. - Exhibit 1018 - Page 5
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`Plaintiff alleges that certain features of FCA’s UConnect Access product infringe the asserted
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`patents. These features are “Remote Start, Remote Lock/Unlock, Remote Horn and Lights,
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`Theft Alarm Notification, Vehicle Health Report, 911 Call, Roadside Assistance, and Battery
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`Electric Vehicle Features.” UConnect Access is a subscription-based service that allows a user
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`to connect remotely with his or her vehicle. A subscriber may use his or her cellular telephone
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`or personal computer to communicate with the vehicle via third-party servers and networks
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`under contract with FCA. These remote features allow a user to inter alia use his or her cellular
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`telephone or personal computer to remotely start and stop the vehicle engine, lock or unlock
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`doors, or activate the horn and lights.
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`II. SUMMARY JUDGMENT STANDARD
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`“Summary judgment is as available in patent cases as in other areas of litigation.” Cont’l
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`Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1265 (Fed. Cir. 1991).
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`Under Federal Rule of Civil Procedure 56, summary judgment is proper when there is
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`“no genuine dispute as to any material fact,” and the moving party is entitled to judgment as a
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`matter of law. Fed. R. Civ. P. 56(a). “In deciding a motion for summary judgment, the court
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`must view the evidence in the light most favorable to the non-moving party, drawing all
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`reasonable inferences in that party's favor.” Sagan v. United States, 342 F.3d 493, 497 (6th Cir.
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`2003). “Where the moving party has carried its burden of showing that the pleadings,
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`depositions, answers to interrogatories, admissions and affidavits in the record, construed
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`favorably to the non-moving party, do not raise a genuine issue of material fact for trial, entry of
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`summary judgment is appropriate.” Gutierrez v. Lynch, 826 F.2d 1534, 1536 (6th Cir. 1987)
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`(citing Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986)).
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`Petitioner Nissan North America, Inc. - Exhibit 1018 - Page 6
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`The court does not weigh the evidence to determine the truth of the matter, but rather, to
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`determine if the evidence produced creates a genuine issue for trial. Sagan, 342 F.3d at 497
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`(quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249 (1986)). The moving party
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`discharges its burden by “‘showing’—that is, pointing out to the district court—that there is an
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`absence of evidence to support the nonmoving party's case.” Horton v. Potter, 369 F.3d 906, 909
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`(6th Cir. 2004) (citing Celotex, 477 U.S. at 325). The burden then shifts to the nonmoving party,
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`who “must do more than simply show that there is some metaphysical doubt as to the material
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`facts.” Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986). The non-
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`moving party must put forth enough evidence to show that there exists “a genuine issue for trial.”
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`Horton, 369 F.3d at 909 (citing Matsushita, 475 U.S. at 587). Summary judgment is not
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`appropriate when “the evidence presents a sufficient disagreement to require submission to a
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`jury. . . .” Anderson, 477 U.S. at 251-252.
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`The existence of a factual dispute alone does not, however, defeat a properly supported
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`motion for summary judgment — the disputed factual issue must be material. “The judge's
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`inquiry, therefore, unavoidably asks whether reasonable jurors could find . . . that the plaintiff is
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`entitled to a verdict—‘whether there is [evidence] upon which a jury can properly proceed to
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`find a verdict for the party producing it, upon whom the onus of proof is imposed.’” Id. at 252
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`(alteration in original) (citation omitted). A fact is “material” for purposes of summary judgment
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`when proof of that fact would establish or refute an essential element of the claim or a defense
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`advanced by either party. Kendall v. Hoover Co., 751 F.2d 171, 174 (6th Cir. 1984) (citation
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`omitted).
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`III. ANALYSIS
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`Petitioner Nissan North America, Inc. - Exhibit 1018 - Page 7
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`In its motion for summary judgment, FCA argues that the asserted claims in the patents-
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`in-suit are invalid as being anticipated and obvious in light of specific prior art. The asserted
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`claims are:
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`(cid:120)
`(cid:120)
`(cid:120)
`(cid:120)
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`‘405 Patent: Claims 15, 17, and 20
`‘076 Patent: Claims 13, 17, 18, 28, 65, and 68
`‘130 Patent: Claims 64, 85, 92, and 144
`‘363 Patent: Claims 21, 22, 24, 25, 33, and 36
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`Because a patent is presumed valid, invalidity must be proven by clear and convincing
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`evidence by the party asserting an invalidity defense. Microsoft Corp. v. i4i Ltd. P’ship, 564 U.S.
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`91, 95 (2011); 35 U.S.C. § 282.
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`“A claim is anticipated if each and every limitation is found either expressly or inherently
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`in a single prior art reference.” Whitserve, LLC v. Computer Packages, Inc., 694 F.3d 10, 21
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`(Fed. Cir. 2012) (citations omitted); 35 U.S.C. § 102. Anticipation is a question of fact. Zenith
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`Elec. Corp. v. PDI Comm. Sys., Inc., 522 F.3d 1348, 1356 (Fed. Cir. 2008). “Anticipation,
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`though a question of fact, may be resolved on summary judgment if no genuine issue of material
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`fact exists.” Osram Sylvania, Inc. v. Am. Induction Techs., Inc., 701 F.3d 698, 704 (Fed. Cir.
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`2012). “Summary judgment is proper if no reasonable jury could find that the patent is not
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`anticipated.” Zenith, 522 F.3d at 1357.
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`A patent claim is invalid as “obvious” under 35 U.S.C. § 103(a) where “the differences
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`between the subject matter sought to be patented and the prior art are such that the subject matter
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`as a whole would have been obvious at the time invention was made to a person having ordinary
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`skill in the art to which said subject matter pertains.” The obviousness determination must take
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`place through the eyes of a person of ordinary skill in the art, i.e., a hypothetical person
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`presumed to be aware of all the prior art in the field of invention and all analogous fields. In re
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`Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991).
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`Petitioner Nissan North America, Inc. - Exhibit 1018 - Page 8
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`
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`Obviousness is a question of law based on underlying facts. KSR Int’l Co. v. Teleflex,
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`Inc., 550 U.S. 398, 427 (2007). The underlying facts or factors a court considers are as follows:
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`(i) the scope and content of the prior art, (ii) the difference between the prior art and the claimed
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`invention, (iii) the level of ordinary skill in the field of invention, and (iv) any relevant secondary
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`consideration that evidence that the claimed invention is not obvious. Graham v. John Deere Co.,
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`383 U.S. 1, 17 (1966). “Where . . . the obviousness of the claim is apparent in light of these
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`factors, summary judgment is appropriate.” KSR, 550 U.S. at 427.
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`
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`The Court considers each of the Graham factors below and also addresses FCA’s
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`anticipation arguments.
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`A. First Graham Factor: The Person of Ordinary Skill in the Art
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`The first Graham factor that a Court must consider is the level of skill in the art. Because
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`the facts must be viewed in the light most favorable to the non-moving party in deciding a
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`summary judgment motion, the Court will accept the testimony of JCMS’s expert witness as to
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`the level of skill in the art. Specifically, Mr. Koperda states as follows:
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`[A] hypothetical person[] of ordinary skill in the art would be
`someone with at least a Bachelor’s Degree in a computer science
`or related major, such as software engineering, or electrical
`engineering with at least 3-4 years of practical experience in the
`field of control & data network communications and/or messaging
`systems.
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`12/2/2015 Koperda Report at 5 (Dkt. 78-1).
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`B. Second Graham Factor: Scope and Content of the Prior Art
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`
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`The second Graham factor that a Court must consider is the scope and content of the prior
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`art. The Court finds that there is no genuine issue of material fact regarding the scope and
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`content of the asserted prior art references.
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`Petitioner Nissan North America, Inc. - Exhibit 1018 - Page 9
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`FCA argues that the patents-in-suit are invalid based on two primary prior art references:
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`(i) published European patent application 92400712.3 to inventor Didier Frossard, entitled
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`“System for Controlled Shutdown and for Location of a movable or mobile equipment”
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`(“Frossard”) (Dkt. 59-33), and (ii) German patent application P4423328, entitled “Technical
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`Apparatus for Presentation of Location Data of Mobile Bodies on Digitized Maps and Elicitation
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`of Reactions in the Mobile Body Without the Need for a Cost Intensive Center” (“Schmidt) (Dkt.
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`59-32). Frossard was filed with the European Patent Office on March 17, 1992 and published on
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`September 23, 1992. Schmidt was filed with the German patent office on June 22, 1994 and
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`published on January 4, 1996. For brevity, and because there is a dispute as to whether Schmidt
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`is prior art to all of the asserted claims, the Court will analyze the patentability of the asserted
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`claims over Frossard either alone or in combination with other secondary prior art patents. It is
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`undisputed that Frossard is prior art to all the asserted claims.
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`
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`Frossard teaches a system to remotely shut down and locate a vehicle if it is stolen.
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`Frossard teaches a three-device communication system: (A) a person using a computer or
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`telephone communicates with (B) an intermediate computer server, which then sends a signal to
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`(C) the remote vehicle to have the vehicle perform a function, such as to shut down the vehicle if
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`it is stolen. In other words, Frossard discloses a three-device communication system: A to B to
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`C.
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`
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`Figure 1 of Frossard, reproduced below, illustrates the prior art system.
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`10
`Petitioner Nissan North America, Inc. - Exhibit 1018 - Page 10
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`In the prior art system of Frossard, as shown above, using a networked computer or
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`telephone, a person transmits an access code to a remote server (1). After the server verifies the
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`access code, the person can then enter an intervention order for the vehicle (3) to perform. If the
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`intervention order or code is recognized, the server will then send a signal to the vehicle. A
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`receiver (4) on the vehicle receives the message and then a “controlled inhibition circuit” (5) on
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`the vehicle performs the vehicle shutdown or other operation.
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`For example, Frossard describes the operation of its system as follows:
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`The general operation of the system constituting the object of the
`invention as described in Figure 1 to 3a, 3b is as follows:
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`* * *
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`In the case of theft of movable or mobile equipment 3, the owner
`or the authorized person calls server center 1 and communicates
`the access code thereto. After verification of the validity of this
`access code by server 1, as mentioned above in the description, the
`user is then invited to communicate the shutdown order. This
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`11
`Petitioner Nissan North America, Inc. - Exhibit 1018 - Page 11
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`order may be either the simple response to a question of the server
`or, on the other hand, as already mentioned above in the
`description, a digital message of several digits. Such a solution
`then permits very high transaction security, because it is possible,
`as already mentioned in the above, to personalize this message
`according to the aforesaid equipment.
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`The shutdown order is then validated by server center 1 and next
`transmitted to the box of equipment 3 via message M described
`above. The later, via the RDS receiver described in connection
`with Fig. 2, decodes this message and addresses the corresponding
`commands to equipment 3 itself, causing immediate or deferred
`shutdown depending on the application under consideration.
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`
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`Frossard at 8-9 (Dkt. 59-33).
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`
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`The record also contains other secondary prior art patents, which disclose secondary
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`features or claim limitations contained in various independent and dependent claims. Where
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`relevant, the Court will discuss and explain those additional prior art in the next section
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`analyzing the differences between the prior art and the asserted claims.
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`C. Third Graham Factor: Differences Between the Prior Art and the Claimed
`Invention
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`The third Graham factor that a Court must consider is the difference between the prior art
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`and the claimed invention. The Court finds that there is no genuine issue of material fact
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`regarding the differences between the prior art and the claimed invention.
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`The invention described in Frossard is nearly identical to the invention described in the
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`patents-in-suit. Below is a side-by-side comparison of Figure 1 of Frossard to a rearranged
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`version of Figure 5B of the ‘405 Patent, which illustrates the corresponding components. This
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`comparison illustrates that both systems have essentially the same overall structure of an A to B
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`to C communication system: a user using a remote computer sends a signal to an intermediate
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`control device, such as a computer server, which in turn sends a signal to the vehicle to shut
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`12
`Petitioner Nissan North America, Inc. - Exhibit 1018 - Page 12
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`down the vehicle if it is stolen. Figure 1 of Frossard below shows that using a networked
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`computer or telephone, a person transmits an access code to the remote server (1). After the
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`server verifies the access code, the person can then enter an intervention order for the vehicle (3)
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`to perform. If the intervention order or code is recognized, the server computer will then send a
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`signal to the vehicle. A receiver (4) on the vehicle receives the message and then a “controlled
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`inhibition circuit” (5) on the vehicle performs the vehicle shutdown or other operation.
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`13
`Petitioner Nissan North America, Inc. - Exhibit 1018 - Page 13
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`
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`The rearranged version of Figure 5B of the ‘405 Patent illustrates the inventions claimed
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`in the asserted patents. Like Frossard, the asserted patents teach a system that allows an owner,
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`after theft of his vehicle, to turn off the vehicle by controlling vehicle systems via an online
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`website or central security office. For example, the patented system allows the vehicle’s owner
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`to turn off or activate various vehicle systems to thwart theft of the vehicle, such as by turning
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`off the fuel supply system, turning off the ignition system, or activing a siren or alarm system. In
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`the typical embodiment of the patented invention, when the vehicle is stolen, the vehicle’s owner
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`through his personal computer (150) accesses and sends commands to a remote server computer
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`(510) via a website (520) or security office in order to control vehicle functions. The website or
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`security office system (510) then sends commands via a cellular network to the vehicle’s
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`computer (4), which in turn sends a signal to the vehicle systems, such as the ignition system (7)
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`or fuel system (9), to disable the vehicle. All of the asserted claims have the common design of
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`being a three control device communication system (i.e., A to B to C), although almost all of the
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`claims have additional claim limitations.
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`
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`Patentability of the individual claims must be considered as a whole. 35 U.S.C. § 103;
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`Jones v. Hardy, 727 F.2d 1524, 1529 (Fed. Cir. 1984) (“The test is whether the claimed invention,
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`considered as a whole, would have been obvious or nonobvious.”). Because of the numerous
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`asserted claims containing various combinations of features, the Court will now analyze the
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`various features claimed in the asserted claims and relied upon by JCMS in arguments regarding
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`patentability.
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`1. Frossard Teaches a Three Control Device System
`
`
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`As mentioned above, all of the asserted claims have the common design of being a three
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`control device communication system, although almost all of the claims contain additional claim
`
`14
`Petitioner Nissan North America, Inc. - Exhibit 1018 - Page 14
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`limitations. Claim 20 of the ‘405 Patent is the only asserted claim that is directed to the three-
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`device control system without additional material claim limitations.
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`
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`As discussed above, there is no genuine issue of material fact that Frossard discloses a
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`three control device system for remotely controlling a vehicle function such as the ignition
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`system or the fuel supply system. The asserted patents and Frossard have essentially the same
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`overall structure of an A to B to C communication system: a remote user using, for example, his
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`home computer sends a signal to an intermediate server computer which in turn sends a signal to
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`the control device at the vehicle to shut down the vehicle if it is stolen.
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`JCMS’s primary argument why Frossard does not anticipate or render the asserted claims
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`obvious is that while Frossard discloses a three-device communication system, Frossard does not
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`disclose a three “control” device communication system. At oral argument, JCMS clarified this
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`argument with respect to Frossard. JCMS argues that there is no control device at the vehicle.
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`For example, at oral argument JCMS stated:
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`[I]f we call them in order first, second, third control device[s], in
`this case, in the case of Frossard it’s the third control device that’s
`missing. Chrysler has missed the point on that I think and argued
`instead that there’s an intermediate server. We don’t dispute that
`that server is an intermediate server. The problem with Frossard is
`whether there’s a control device at the vehicle and there simply
`isn’t any reason for it to be at the vehicle.
`
`4/21/2016 Hr’g Tr. at 39-40 (Dkt. 118). According to JCMS, the receiver-decoder circuit 4 as
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`shown in Figure 1 of Frossard, is not a “control device” because it was simply responding or
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`passing along a signal like a “simple relay.” See, e.g., 4/21/2016 Hr’g Tr. at 39.
`
`
`
`Claim 20 of the ‘405 Patent and Claim 16 from which Claim 20 depends, which are
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`reproduced below, are representative of all the claims which require three “control devices”:
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`16. A method for control for a vehicle, which comprises:
`
`15
`Petitioner Nissan North America, Inc. - Exhibit 1018 - Page 15
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`transmitting a first signal from a first control device to a second
`control device, wherein the first control device is located at a
`location remote from the vehicle and remote from the second
`control device;
`
`transmitting a second signal from the second control device to a
`third control device, wherein the third control device is located at
`the vehicle, and further wherein the second control device is
`located at a location remote from the vehicle;
`
`generating a third signal at the third control device in response to
`said second signal,
`
`one of activating, deactivating, enabling, and disabling, one of a
`vehicle component, a vehicle device, a vehicle system, and a
`vehicle subsystem, in response to said third signal.
`
`20. The method of claim 16, wherein the first control device is one
`of a stationary device, a hand-held device, a mobile device, a
`telephone, a digital telephone, a cordless telephone, a cellular
`telephone, a wireless telephone, a computer, a personal computer,
`a personal digital assistant, a television, an interactive television, a
`digital television, a personal communications device, a personal
`communications services device, a display telephone, a video
`telephone, a watch, a beeper, and a pager.
`
`‘405 pat. cols. 76-77 and cert. of correction.
`
` In its Opinion and Order Construing Disputed Claim Terms, the Court construed
`
`“control device” as “a device that directs the activity of another device” based on a broad use of
`
`the term in the patents-in-suit. 8/26/2015 Op. & Order at pgs. 7-8 (Dkt. 53). For example, the
`
`asserted patents make clear the personal computer or telephone of a user is a control device, the
`
`intermediate server computer is a control device, and the processing unit within the vehicle is
`
`control device.
`
`
`
`The Court finds that there is no genuine issue of material fact that Frossard discloses a
`
`third control device or processing device at the vehicle. As illustrated in Figure 2 of Frossard,
`
`which is reproduced below, Frossard teaches using a “receiver/decoder circuit 4.” This
`
`16
`Petitioner Nissan North America, Inc. - Exhibit 1018 - Page 16
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`

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`receiver/decoder circuit is clearly a control device because it “directs the activity of another
`
`device.” 8/26/2015 Op. & Order at 7-8. As shown below in Figure 2 of Frossard, the
`
`receiver/decoder circuit 4 receives and decodes a RDS type signal at a “RDS Receiver” and
`
`evaluates it at a “paging message processing module 421.” Frossard at 7-12 (Dkt. 59-33.) As
`
`the names implies, the “paging messaging processing module 421” processes the signal and “on
`
`the basis of a criterion for evaluation” sends a shutdown, startup, or standby command to the
`
`“controlled inhibition circuit means 5.” Id. at 5, 8. The “controlled inhibition circuit means 5”
`
`shuts down the vehicle by breaking the electrical circuit of the starter, id. at 11, or by inhibiting
`
`the ignition or fuel injection circuits, id. at 14. If a vehicle shutdown order is received, the
`
`receiver/encoder circuit also issues the command to the “conditional transmitter 61” to send the
`
`vehicle location to the owner.
`
`Id. at 11. Thus, the receiver/decoder circuit of Frossard directs
`
`the activity of another device; for example, the receiver/decoder circuit directs the activity of the
`
`starter, ignition, fuel injector, and/or conditional transmitter.
`
`17
`Petitioner Nissan North America, Inc. - Exhibit 1018 - Page 17
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`

`
`Therefore, like the asserted patents, Frossard has three control or processing devices: (i) a
`
`computer or telephone, (ii) an intermediate server, and (iii) a control circuit in the vehicle to a
`
`control a system of the vehicle. In Frossard, the user’s computer sends an instruction to the
`
`intermediate server which then verifies the user and command and then sends a signal to the
`
`control circuit in the vehicle which controls the vehicle’s function. Accordingly, the Court
`
`rejects JCMS’s argument that the prior art does not anticipate or render the claimed invention
`
`obvious on the theory that it does not teach a three control device system.
`
`Based on the above, the Court finds there is no genuine issue of material fact that Claim
`
`20 of the ‘405 Patent is invalid as anticipated. Claim 20 of the ‘405 Patent is the broadest in
`
`18
`Petitioner Nissan North America, Inc. - Exhibit 1018 - Page 18
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`

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`scope of the asserted patents. Claim 20 is directed solely to the three control device system.
`
`Based on the evidence in the record, a reasonable jury could only conclude that Frossard teaches
`
`every claim limitation contained in dependent Claim 20 and independent Claim 16 from which
`
`Claim 20 depends.
`
`2. Claim Limitations Specifying Using the Internet Would Have Been
`Obvious to a Person of Ordinary Skill in the Art
`
`Besides setting forth the three control device system, Claim 15 of the ‘405 Patent, Claims
`
`13, 17, and 28 of the ‘076 Patent, Claims 64, 85, and 92 of the ‘130 Patent, and Claims 21, 22,
`
`24, 25, 33, and 36 of the ‘363 Patent contain an additional claim limitation requiring that the
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`user’s computer communicate to the intermediate computer server over the internet. For
`
`example, Claim 21 of the ‘363 Patent requires that a user send a signal from his computer using
`
`the Internet or World Wide Web to an intermediate processing device that is “associated with a
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`web site.”
`
`
`
`Claim 21 states as follows:
`
`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