UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`NISSAN NORTH AMERICA, INC.,
`Petitioner
`
`v.
`
`JOAO CONTROL & MONITORING SYSTEMS, LLC
`Patent Owner
`
`
`
`
`Case IPR2015-01645
`Patent No. 7,397,363
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`
`
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`PETITIONER NISSAN NORTH AMERICA, INC.’S
`REPLY TO PATENT OWNER’S RESPONSE TO PETITION
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`

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`TABLE OF CONTENTS
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`INTRODUCTION ........................................................................................... 1
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`INTRODUCTION ......................................................................................... .. 1
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`TABLE OF CONTENTS
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`CLAIM CONSTRUCTION ............................................................................ 1
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`CLAIM CONSTRUCTION .......................................................................... ..1
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`
`
`I.
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`II.
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`III. RESPONSE TO ARGUMENTS ..................................................................... 2
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`RESPONSE TO ARGUMENTS ................................................................... ..2
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`III.
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`A.
`A.
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`Full weight should be given to the Declaration. ................................... 2
`Full weight should be given to the Declaration .................................. ..2
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`B. Ground 1- Petition properly applies Frossard as a base
`B.
`Ground 1- Petition properly applies Frossard as a base
`reference. ............................................................................................... 5
`reference. ............................................................................................. ..5
`
`C. Ground 2- Simms cures the deficiency of Frossard and
`C.
`Ground 2- Simms cures the deficiency of Frossard and
`Spaur .................................................................................................... 19
`Spaur .................................................................................................. .. 19
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`D. Ground 4- Petition properly applies Johnson as a base
`D.
`Ground 4- Petition properly applies Johnson as a base
`reference. ............................................................................................. 21
`reference. ........................................................................................... ..21
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`IV. CONCLUSION .............................................................................................. 28
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`CONCLUSION ............................................................................................ ..28
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`IV.
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`i
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`
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`TABLE OF AUTHORITIES
`
`Cases
`In re Fulton,
`391 F.3d 1195 (Fed. Cir. 2004) .......................................................................................... 17
`Statutes
`
`MPEP § 2111.01(I)) .................................................................................................................. 5
`
`MPEP § 2143.03(VI)........................................................................................................ 17, 27
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`ii
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`LIST OF EXHIBITS
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`Opinion and Order of Mark A. Goldsmith, No. 13-cv-13957,
`(E.D. Mich. 2016) (1) Granting in Part and Denying in Part
`Defendant FCA US LLC’S Motion for Summary Judgment on
`Invalidity and Noninfringement (Dkt. 59) and (2) Denying as
`Moot Plaintiff Joao Control & Monitoring Systems, LLC’S
`Motion for Summary Judgment of Infringement of U.S. Patent
`No. 7,397,363 by Uconnect Access (Dkt. 57), signed on June
`10, 2016.
`
`
`
`
`Exhibit 1018
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`iii
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`

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`INTRODUCTION
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`
`
`I.
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`Petitioner Nissan North America, Inc. (“Petitioner”) submits this Reply to
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`Patent Owner’s Response (the “Response,” Paper 20) to the corrected Petition (the
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`“Petition,” Paper 3) for Inter Partes Review (“IPR”) of U.S. Patent No. 7,397,363
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`(the “’363 Patent,” Exhibit 1001).
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`Patent Owner’s attempt to construe additional claim terms is not needed.
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`Patent Owner’s arguments are without merit and consist entirely of attorney
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`argument with no expert testimony offered in support. All grounds presented in the
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`Petition and instituted by the Board demonstrate that the challenged claims are
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`unpatentable and should be canceled.
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`II. CLAIM CONSTRUCTION
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`For the purpose of this IPR proceeding, Petitioner does not contest the
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`Board’s claim construction.1 (Paper 11, pp. 5-7).
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`Patent Owner proposes construction of additional terms. (Paper 20, 9-14).
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`Among the additional terms, Patent Owner requests to adopt the claim construction
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`of the U.S. District Court for the Eastern District of Michigan for the claimed first,
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`second, and third “signals” recited in the independent claims. (Id. pp. 11-12).
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`1 Petitioner reserves all rights to propose constructions for additional terms in
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`litigation or other proceedings.
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`1
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`Petitioner recognizes that the District Court invalidated all of the asserted claims,
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`including claims 21, 22, 24, 25, and 36 which Petitioner currently challenge in this
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`IPR proceeding. (Exhibit 1018, pp. 14-28, 30, 35).
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`Petitioner agrees with the Board that these terms should be given their plain
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`and ordinary meaning. (Paper 11, pp. 5-7). Nonetheless, as discussed below, each
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`ground of rejection is properly maintained even under Patent Owner’s proposed
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`constructions.
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`III. RESPONSE TO ARGUMENTS
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`As a preliminary matter, it is noteworthy that Patent Owner does not provide
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`any expert testimony in support of its positions. Instead, it relies entirely on bare
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`attorney argument.
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`Full weight should be given to the Declaration.
`
`A.
`Patent Owner’s attempt to discredit Mr. McNamara’s declaration based on
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`an alleged failure to review the prosecution history and ambiguous deposition
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`testimony regarding legal standards for claim construction is baseless. (Paper 20,
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`pp. 14-17). Even if Patent Owner were correct, these arguments are irrelevant
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`because Patent Owner provides no explanation for how these alleged issues
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`impacted Mr. McNamara’s opinions. Also, Patent Owner is simply incorrect, as
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`explained below.
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`(1) Petitioner’s Expert reviewed all required materials.
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`2
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`

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`
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`At paragraph 13 of his Declaration, Mr. McNamara states that “I have read
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`the ’363 Patent and its prosecution history.” (Exhibit 1003, p. 7, ¶13). Nearly nine
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`months after Mr. McNamara signed his Declaration, he was cross-examined for
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`two days regarding his declarations in IPRs challenging four patents. In response
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`to “You have testified previously, I think, that you did not review the prosecution
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`histories for the four JCMS patents at issue, correct?” he answered “That’s
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`correct.” (Exhibit 2006 p. 153, lines 11-15).
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`Patent Owner misconstrues that statement as proof that Mr. McNamara did
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`not review the pertinent portions of the prosecution history. But Patent Owner
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`ignores Mr. McNamara’s testimony to the contrary. See id. p. 154, lines 11-20
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`(confirming that the portions of his declaration identifying the materials
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`considered—which include the prosecution history—are “a complete list of the
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`information that [Mr. McNamara] considered in reaching the opinions or
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`conclusions expressed in [his declaration]).
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`Thus, at best, the Response demonstrates a memory lapse during a lengthy
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`deposition. But it does not demonstrate that Mr. McNamara failed to review the
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`prosecution history.
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`(2) Any failure to review the entire prosecution history has no weight.
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`Even if Mr. McNamara did not review the entire prosecution history of the
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`’363 patent, he confirmed that he reviewed the relevant portion. First, as noted in
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`3
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`Part III.A.1, supra, he testified in his declaration that he did so. (Exhibit 1003, p.
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`7, ¶ 13).
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`Second, he confirmed during cross-examination that he reviewed all the
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`materials listed in his declaration in IPR2015-1509, including Exhibit 1009
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`containing the preliminary amendment of the ’363 Patent. That preliminary
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`amendment is the only document in the prosecution history that is potentially
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`relevant as it includes proposed definitions of claim terms . (Exhibit 2006, p. 154,
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`lines 14-20).
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`Accordingly, any alleged failure to review the entire prosecution history of
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`’363 patent has no bearing on the claim construction.
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`(3) Mr. McNamara properly analyzed the claims.
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`The Response relies on the statement that “I can’t personally differentiate
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`between broadest and ordinary and customary” (Exhibit 2006, p. 152, lines 22-25),
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`to incorrectly conclude that “it is not clear that [Mr. McNamara] even knows what
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`this standard is or should be.” (Paper 20, p. 17).
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`Patent Owner’s reliance on this statement is misplaced. The difference
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`between the “broadest reasonable interpretation” and “ordinary and customary”
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`standards is a legal question that is not at issue in this case. More importantly,
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`Patent Owner does not show how Mr. McNamara’s claim construction is incorrect,
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`why his claim construction is different from the plain and ordinary meaning, or
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`4
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`how it impacts the opinions expressed in his Declaration. Also, Patent Owner
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`provides no expert testimony whatsoever in support of its claim construction
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`arguments. At best, Patent Owner demonstrates that Mr. McNamara did not
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`explain the difference between two legal standards.
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`The legal standard has no effect on Mr. McNamara’s opinions. In fact, the
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`MPEP states that “[u]nder a broadest reasonable interpretation, words of the claim
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`must be given their plain meaning, unless such meaning is inconsistent with the
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`specification. The plain meaning of a term means the ordinary and customary
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`meaning given to the term by those of ordinary skill in the art at the time of the
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`invention.” (MPEP § 2111.01(I)). Thus, there is significant overlap between the
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`two standards, and under the plain and ordinary meaning standard, the Board found
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`that the arguments in the Petition were correct. These arguments are supported by
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`Mr. McNamara’s opinions in the Declaration.
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`B. Ground 1- Petition properly applies Frossard as a base reference.2
`Patent Owner argues that (1) Frossard does not disclose the three processing
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`device system, (2) the combination with Spaur does not disclose a processing
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`device system associated with a website and receiving a signal over the Internet or
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`2 The District Court found that claims 21, 22, 24, 25, and 36 are obvious in view of
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`that Frossard. (Exhibit 1017, pp. 14-28, 30, 35). Claim 25 was not challenged.
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`5
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`
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`World Wide Web, and (3) there is no motivation to combine. (Paper 20, 17-27).
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`The Response is incorrect for the following reasons.
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`(1) Frossard discloses the three processing device system.
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`Patent Owner’s argument is summarized in the below illustration, and is
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`incorrect as shown below.
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`Claim 21
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`Patent Owner’s application of Frossard
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`
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`(a) Patent Owner’s argument fails under its proposed claim construction.
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`Patent Owner improperly attempts to limit “processing device” in a way that
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`contradicts its own proposed claim construction. But even under its proposed
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`construction, Frossard discloses the recited processing device.
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`Patent Owner proposes to construe the term “processing device” as “a device
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`or a computer, or that part of a device or a computer, which performs an operation,
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`an action, or a function, or which performs a number of operations, actions, or
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`functions.” (Paper 20, p. 10). Because the “processing device” can include a “part
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`6
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`of a device,” it follows that a device can include multiple parts. Because a
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`“processing device” is a type of device, a “processing device” can necessarily
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`include multiple parts.
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`In contrast, Patent Owner argues that because Frossard has two parts (server
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`1 and resource 2), then one part can be a processing device, but the other part must
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`be a separate, intermediate device. (Paper 20, pp. 22-25). But as explained above,
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`a device can have multiple parts. Thus, Petitioner is correct that Frossard’s server 1
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`and resource 2 meet the “processing device” limitation.
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` (b) Patent Owner’s argument contradicts the specification of the ’363 Patent.
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`The specification of the ’363 Patent confirms that a server and a transmitter
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`can form a processing device.
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`The specification never defines or fully describes the term “processing
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`device.” Instead, FIG. 11A of the ’363 Patent illustrates a three device architecture
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`for controlling vehicle systems. The claimed “first processing device” covers
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`apparatus 50. Specifically, “the apparatus 950 can serve to provide control over,
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`and monitor the functions of, the apparatus 1 for a vehicle or for a plurality of
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`vehicles….” (Exhibit 1001, 56:4-6). Apparatus 950 responds to various codes
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`received from a transmitter 2 of a user remote from the vehicle. (Id. 53:46-54).
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`Apparatus 950 includes two illustrated parts: a computer 970 and a transmitter 965.
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`(Id. 53:55-57 and 54:1). “The apparatus 1 may then be accessed and controlled via
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`7
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`access and command codes which are transmitted by the transmitter 965 of the
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`apparatus 950….” (Id. 55:44-46). The “computer 970 is capable of recognizing all
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`of the possible access code(s) and command code(s) which are recognized by the
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`apparatus 1 for a particular vehicle. The apparatus 950 is capable of storing vehicle
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`identification information as well as access code and command code data for a
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`plurality of registered vehicles.” (Id. 54:39-45).
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`Accordingly, the specification describes an apparatus (950) as a first device
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`that exercises remote controls over vehicle systems, where the apparatus includes a
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`computer (970) and a transmitter (965).
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`In contrast, by arguing that the two parts in Frossard (server 1 and resource
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`2) cannot be the claimed “first processing device,” Patent Owner ignores that the
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`specification undercuts his argument by disclosing that the first device includes
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`two separate parts, just like Frossard’s two parts.
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`Further, everywhere the specification describes a first device that is remote
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`from a vehicle and that performs control-related operations over the vehicle, this
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`first device uses a transmitter for the remote control. All of the described first
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`devices use transmitters (e.g., apparatus 950 uses transmitter 965 in FIG. 11A).
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`Accordingly, the ’363 Patent does not enable a first processing device remote
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`from the vehicle that does not include a transmitter. Thus, Patent Owner’s
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`argument for excluding a transmitter from the first processing device lacks support
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`8
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`
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`in the ’363 Patent and, in fact, contradicts the ’363 Patent. Instead, Patent Owner’s
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`argument is simply an attempt to capture claim scope for an invention that he did
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`not invent.
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`(c) Frossard discloses the “first processing device” and “first signal.”
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`Patent Owner’s argument that Frossard’s resource 2 is an intermediate
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`device is incorrect because Frossard’s server 1 and resource 2 collectively form a
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`processing device that generates and transmits a signal.
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`As explained above, Frossard’s server 1 and resource 2 meet Patent Owner’s
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`claim construction of “processing device.” Frossard’s server 1 is a part of the
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`claimed “first processing device,” where this part performs an operation, an action,
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`or a function of generating the message order M (the claimed first signal).
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`Frossard’s resource 2 is also a part of the claimed “first processing device,” where
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`this part performs an operation, an action, or a function of transmitting the order
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`message M.
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`Specifically, Frossard discloses that an intervention code is “transmitted to
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`server center 1 by the subscriber or an authorized person in order to generate… a
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`request to shut down the aforesaid equipment 3.” (Exhibit 1005, p. 5, ¶¶ 4-5). Also,
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`Frossard’s “system contains a resource 2 for selective transmission to the aforesaid
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`equipment of an order message M to shut down this equipment 3…. [T]he
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`9
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`aforesaid transmission resource advantageously contains an analog radio frequency
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`transmitter provided with a subcarrier.” (Id. p. 4, ¶ 5, and p. 5, ¶ 1).
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`Additionally, in FIG. 1 of Frossard, comparing the order message M
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`generated by server 1 to the order message M transmitted by resource 2 transmits
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`confirms that resource 2 transmits order message M unchanged. Thus, Frossard’s
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`server 1 and resource 2, as a whole, send the same signal to a vehicle. While server
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`1 generates order Message M, resource 2 transmits it to the vehicle.
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`Frossard’s server 1 and resource 2 collectively form the claimed “first
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`processing device,” where server 1 and resource 2 collectively generate and
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`transmit the order message M (the claimed first signal). That is exactly what the
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`independent claims recite (e.g., “wherein the first processing device at least one of
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`generates a first signal and transmits a first signal” as in claim 21). (emphasis
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`added).
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`Further, Frossard’s server 1-resource 2 (e.g., server-transmitter) architecture
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`mirrors the computer 970-transmitter 965 architecture of apparatus 950 of FIG.
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`11A of the ’363 Patent. Frossard’s server 1 corresponds to computer 970 of the
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`’363 Patent because both generate a signal for remote control. Frossard’s resource
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`2 corresponds to transmitter 965 of the ’363 Patent because both transmit the
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`signal. Because the independent claims cover the computer 950-transmitter 970
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`architecture, as explained above, then Frossard’s server 1-resource 2 architecture
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`10
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`
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`necessarily discloses the features of the independent claims. This conclusion is
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`illustrated below.
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`Claim 21
`wherein the first processing device at least one of generates a first signal and
`transmits a first signal.
`FIG. 11A of the ’363 Patent
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`FIG. 1 of Frossard
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`(d) Frossard’s receiver/decoder circuits 4 are not an interface.
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`The Response maintains the previous position of the preliminary response
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`that “the receiver/decoder circuits 4 of Frossard are merely an interface device….”
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`(Paper 20, pp. 17-18). The Board properly rejected this position in its decision to
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`institute trial. (Paper 11, pp. 11-12).
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`In addition to the reasons in the Board’s institution decision and in the
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`Petition (Paper 3, pp. 13-18), Petitioner points to Frossard’s equipment interface 5
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`of FIG. 2, described in the first and second paragraphs of page 8. Equipment
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`interface 5 is an interface between the receiver/decoder circuits 4 and the vehicle
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`systems. Thus, this interface is an additional reason why Frossard’s
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`receiver/decoder circuits 4 are not merely an interface. Instead, Frossard’s
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`11
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`receiver/decoder circuits 4 are a processing device that utilizes equipment interface
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`5 to interface with the vehicle systems.
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`
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`(Exhibit 1005, FIG. 2) (annotation added).
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`(2) The combination with Spaur cures any deficiencies of Frossard.
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`Patent Owner argues three points against the combination: (a) Frossard does
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`not disclose a first processing device associated with a web site and Spaur cures
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`this deficiency, (Paper 20, pp. 18-22), (b) Spaur teaches away from associating a
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`web site with the first processing device, (id. pp. 21-22), and (c) Spaur necessarily
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`12
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`fails to disclose a second processing device that transmits a signal to the first
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`processing device. (Id. p. 22). Petitioner addresses these three arguments below.
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`On the outset, Patent Owner’s arguments repeat the arguments previously
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`presented in the preliminary response, with the exception of also including the
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`Internet Report (Exhibit 2008) as allegedly showing that the Internet is non-secure.
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`The Board has already rejected these arguments. (Paper 11, pp. 12-13).
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`In addition to the reasons in the Board’s institution decision and in the
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`Petition (Paper 3, pp. 7, 14-17, 20-21), Petitioner demonstrates below why Patent
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`Owner’s arguments are incorrect.
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`(a) The combination of Frossard and Spaur discloses a first processing device
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`associated with a web site.
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`The Petition demonstrates that, while Frossard’s server 1 and resource 2
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`disclose a first processing device, the combination with Spaur’s terminal computer
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`discloses a first processing device associated with a web site. (Paper 3, pp. 13-17).
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`The Response argues that Spaur fails to cure the deficiency of Frossard with
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`respect to server 1 and resource 2 being associated with a web site. (Paper 20, pp.
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`18-22). Patent Owner argues that the controller 30, as opposed to the computer
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`terminal, is associated with the web site by hosting the web site. (Id. pp. 20-22).
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`But Patent Owner admits that Spaur’s computer terminal “can access a web site
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`13
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`that is hosted at some remote web server. In fact, it accesses a web server that his
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`hosted at the controller 30, which located at the vehicle.” (Id. p. 20).
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`Patent Owner’s argument fails because a claimed first processing device
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`need not host a web site to be associated with the web site. The claim does not
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`require hosting. In fact, the specification of the ’363 Patent describes an
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`embodiment where the association between the first processing device and the web
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`site includes hosting the web site at another device and accessing the web site from
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`that other device. Therefore, Patent Owner’s above admission about Spaur’s
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`terminal computer access to a web site is an admission that Spaur’s terminal
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`computer is associated with the web site, thereby curing the deficiency of Frossard.
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`Specifically, claim 21 recites “the first processing device is associated with a
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`web site.” However, neither claim 21 nor any of its dependent claims further limit
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`where the web site is hosted.
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`In comparison, the specification of the ’363 Patent discloses that the web site
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`need not be hosted on the first processing device. This is shown in the
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`embodiments described in FIGS. 11A and 11B of the ’405 Patent. As described
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`above, apparatus 950 of FIG. 11A covers the first processing device. FIG. 11B
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`illustrates an “on-line service and/or Internet processing site” that includes a server
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`952 and a web site 954. In that regard, the specification describes that “the
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`authorized user or operator may access the server 952 via the on-line server and/or
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`14
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`via the associated Web site 954….” (Id. 57:22-24). The specification also explains
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`that “[t]he authorized user or operator may also access and provide control over or
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`exercise and/or perform control, monitoring and/or security functions on, or over,
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`the apparatus 1, the apparatus 950 and/or the server 952 via the on-line service
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`and/or via the Web Site 954.” (Id. 57:30-34). “[A]ll of the data transmitted… by
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`the apparatus 950 can be supplied to the server 952 of the on-line service and/or
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`the Internet and/or the Web site 954 of the World Wide Web.” (Id. 57:44-47). “It is
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`also envisioned that the server 952 and the central processing computer 970 may
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`be combined into a single central computer system.” (Id. 57:65-67).
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`Thus according to the specification, the apparatus 950 need not host the web
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`site 954 to be associated therewith. Instead, the association includes remote access
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`to the web site 954. This conclusion is illustrated in FIG. 11B, as annotated below.
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`15
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`1st. proc. device
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`3rd proc. device
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`Web site
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`2nd proc. device
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`(Id. FIG. 11B) (annotated).
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`Accordingly, the specification confirms that remote access satisfies the
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`claimed association between the first processing device and the web site of claim
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`21. And that is exactly what the Petition demonstrates (Paper 3, pp. 13-17), and
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`what Patent Owner admits (Paper 20, p. 20). Spaur’s terminal computer has
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`remote access to a web site, which cures the deficiency of Frossard.
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`(b) Spaur does not teach away from associating a web site with the first processing
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`device.
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`Contrary to Patent Owner’s assertion, Spaur does not teach away from the
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`combination because it describes an alternative, where the web site is hosted on a
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`device located at a vehicle. (Paper 20, pp. 21-22).
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`16
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`Further, Patent Owner’s argument does not meet the threshold for a
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`reference to teach away. Specifically, “the prior art’s mere disclosure of more than
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`one alternative does not constitute a teaching away from any of these alternatives
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`because such disclosure does not criticize, discredit, or otherwise discourage the
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`solution claimed....” (MPEP § 2143.03(VI), quoting In re Fulton, 391 F.3d 1195,
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`1201 (Fed. Cir. 2004)). Here, Spaur does not criticize, discredit, or discourage
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`other alternatives for web site hosting.
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`(c) The combination of Frossard and Spaur discloses a second processing device
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`that transmits a signal to the first processing device.
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`The Petition demonstrates that Frossard’s Minitel discloses a second
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`processing device that transmits a second signal to Forssard’s server 1 and resource
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`2 (the first processing device). (Paper 3, pp. 18-21). It also demonstrates that any
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`deficiency for Frossard using the Internet or World Wide Web for this
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`transmission, Spaur cures this deficiency. (Id. pp. 20-21).
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`Patent Owner fails to refute this combination of Frossard and Spaur. Instead,
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`Patent Owner merely asserts in a conclusory manner that Spaur does not disclose
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`transmitting a signal from a second processing device because it does not disclose
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`a first processing device associated with a web site. (Paper 20, p. 22).
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`17
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`(3) Petition establishes a proper motivation to combine.
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`Patent Owner asserts that no motivation to combine Frossard and Spaur
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`exists because the Internet was not secure at the effective filing date of the ’363
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`Patent. (Paper 20, pp. 25-27). This argument is wrong for multiple reasons.
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`First, the Report (Exhibit 2008) cited by Patent Owner describes security
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`solutions: “The market for Internet security is small today but has the potential for
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`strong growth over the next several years,” (Exhibit 2008, p. 24), and “Transaction
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`security is being addressed software encryption built into browsers and other
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`software by [various technology companies].” (Id. p. 109). The Report goes on to
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`explain the expected positive growth of the Internet to actually encourage the use
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`of the Internet: “In the months and years ahead, we should expect the Net to
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`become a closer reflection of the society in which we live, complete with retailers,
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`advertisers, consultants, manufacturers, and people of all types — except it will be
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`global and more accessible.” (Id. p. 35). Thus, the Report directly contradicts
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`Patent Owner’s assertion. It strongly encourages a person of ordinary skill in the
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`art (POSITA) to use the Internet.
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`Second, Patent Owner provides no expert testimony to support its position
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`that the two cited sections of the Report would discourage a POSITA from using
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`the Internet.
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`Third, Spaur itself teaches using the Internet for vehicle remote controls.
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`Fourth, as explained by the Court, Frossard’s Minitel “was essentially a
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`predecessor in popularity to the Internet and the World Wide Web.” (Exhibit 1017,
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`p. 21). The Court found that it would have been obvious to a POSITA to “modify
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`the system taught in Frossard to use the more modern popular computer
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`communication network of the Internet.” (Id. p. 22).
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`In contrast, the Petition provides ample rationale for the motivation to
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`combine and explaining how the combination is accomplished. (Paper 3, pp. 7, 14-
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`17, and 20-21).
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`C. Ground 2- Simms cures the deficiency of Frossard and Spaur
`The Response does not dispute that Simms discloses the elements added in
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`claim 29, but instead alleges that the combination with Simms requires a
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`substantial redesign of Frossard’s server 1 and at the vehicle. (Paper 20, pp, 28-
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`30). Patent Owner is incorrect because it is not supported by any evidence,
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`mischaracterizes Mr. McNamara’s position, and is contradicted by the teachings of
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`the references.
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`First and foremost, Patent Owner does not present any expert testimony to
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`support its conclusion of a substantial redesign. Instead, Patent Owner selectively
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`plucks disparate portions of Mr. McNamara’s deposition out of context to
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`incorrectly contend that Mr. McNamara supports its conclusion.
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`Rather than supporting Patent Owner’s conclusion, Mr. McNamara’s
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`statements actually explain a simple implementation for combining Simms’
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`positioning device with Frossard’s system. Mr. McNamara further explained other
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`implementations during his Cross-Examination. (Exhibit 2006, page 335, line 13-
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`page 336, line 6). For example, in response to a question in which Patent Owner
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`attempts to limit the map of claim 29 to being located at the vehicle, Mr.
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`McNamara explains that “a map database, from a design viewpoint, as I have been
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`explaining, can be at the vehicle…. [O]r, it can be located at the server…. So, the
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`map can be in many different places.” (Exhibit 2008, p. 334, lines 12-23, p. 335-
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`line 18-p. 336-line 6).
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`Against failure to provide its own expert testimony and the
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`mischaracterization of statements made by Petitioner’s expert, Patent Owner
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`asserts that the combination requires a redesign of Frossard’s receiver/decoder
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`circuits 4 (the first control device) to integrate Simms’ positioning device. (Paper
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`20, p. 29). But claim 29 does not require the positioning device to be a part of the
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`first control device. Thus, Patent Owner’s assertion is meaningless because the
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`combination is not limited to integrating the Simms’ positioning device with
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`Frossard’s receiver/decoder circuits 4.
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`Additionally, Patent Owner asserts that the combination requires a redesign
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`of Frossard’s server 1 to become “a manned central station.” (Id.). This assertion is
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`also meaningless because Frossard’s server 1 already supports manned operation.
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`Frossard explains that “introduction of the access code in the server center [server
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`1] and the noting of the corresponding intervention order may be effected either by
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`an operator or in totally automatic manner….” (Exhibit 1005, p. 5, ¶ 3) ( emphasis
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`added).
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`D. Ground 4- Petition properly applies Johnson as a base reference.
`The Response does not dispute that the combination discloses the claimed
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`three processing device system. Instead, Patent Owner argues that (a) Johnson’s
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`client-server architecture does not use a web site or the Internet, and (b) Rossmann
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`fails to cure the deficiency of Johnson. (Paper 20, pp. 30-39).
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`Here, Patent Owner repeats the arguments previously presented in its
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`preliminary response, with the exception of also including the Report (Exhibit
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`2008) as allegedly showing that the Internet is non-secure. The Board has already
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`rejected these arguments. (Paper 11, pp. 17-19).
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`In addition to the reasons in the Board’s institution decision and in the
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`Petition (Paper 3, pp. 7, 34-37, 40-42, 48-51), Patent Owner’s arguments fail for
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`the reasons below.
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`(a) The Petition demonstrates that Johnson’s client-server architecture uses a web
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`site and the Internet.
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`Patent Owner does not refute that Johnson teaches a client-server
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`architecture. (Paper 20, p. 32).
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`Instead, Patent Owner confuses a server being associated with a web site
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`with a client and the server being connected via the Internet or World Wide Web.
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`(Id.). Patent Owner is incorrect because a server can have remote access to a web
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`site independently of its connection with a client. The claims are not limited to a
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`configuration in which the server hosts the web site and the client accesses this
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`hosted web site over the Internet or the World Wide Web. The claims also cover
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`the server having remote access to a web site and, independently, the client and the
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`server connected via Internet or the World Wide Web.
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`The Petition is clear on this point. It demonstrates that the server in Johnson
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`(referred to as computer system) has a modem and that, because of the modem, it
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`would have been obvious to a POSITA to set the server to (1) host a web site and
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`provide access thereto to the client or (2) have remote access to a web site. (Paper
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`3, pp. 40-41).
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`The Petition is also clear on the connection between the client and the
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`server: the client sends a signal to the server; it is well within the knowledge of a
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`POSITA to use the Internet or the World Wide Web to transmit the signal in the
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`client-server architecture. (Paper 3, pp. 50-51).
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`In contrast, Patent Owner asserts that Johnson prohibits the use of the
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`Internet because Johnson’s client and server are at th