UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
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`NISSAN NORTH AMERICA, INC.
`Petitioner,
`v.
`JOAO CONTROL & MONITORING SYSTEMS, LLC
`Patent Owner
`________________
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`Case IPR2015-01645
`Patent 7,397,363
`________________
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`PRELIMINARY RESPONSE OF PATENT OWNER
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`Preliminary Response of Patent Owner
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`TABLE OF CONTENTS
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`Page
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`I. INTRODUCTION ............................................................................................... 1
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`II. BACKGROUND ................................................................................................ 2
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` A. Overview of the ‘363 Patent .......................................................................... 2
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` B. Prosecution History of the ‘363 Patent .......................................................... 3
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` 1. Original prosecution .................................................................................. 3
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` 2. Reexamination of the ‘363 Patent .............................................................. 4
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` C. Petition Overview .......................................................................................... 4
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`III. CLAIM CONSTRUCTION ............................................................................... 7
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` A. Legal Standards .............................................................................................. 7
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` B. Petitioner has Failed to Submit Claim Constructions for Key Terms
` Supporting its Invalidity Arguments ............................................................. 9
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` 1. Each “processing device” is separate and distinct from an “interface
` device” ..................................................................................................... 14
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` E. “remote” ....................................................................................................... 18
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` C. “interface device” ......................................................................................... 12
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` D. “processing device” ..................................................................................... 13
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` F. “located at” ................................................................................................... 18
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` A. Ground 1 ...................................................................................................... 21
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` 1. Frossard fails to teach the “third processing device” of claim 21 .......... 22
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` 2. Frossard fails to teach the “first processing device” of claim 21 ........... 24
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` G. “the first processing device determines whether an action or an
` operation associated with information contained in the second
` signal, to at least one of activate, de-activate, disable, re-enable,
` and control an operation of, the at least one of a vehicle system,
` a vehicle equipment system, a vehicle component, a vehicle
` device, a vehicle equipment, and a vehicle appliance, is an
` authorized or an allowed action or an authorized or an allowed
` operation” .................................................................................................... 19
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`IV. THE PROPOSED GROUNDS FAIL TO MEET THE BURDEN OF
` SHOWING A REASONABLE LIKELIHOOD OF PREVAILING ............... 21
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` 3. Spaur fails to teach the “first processing device” and “second
` processing device” of claim 21 ............................................................... 25
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` 4. The combination of Frossard and Spaur fails to render obvious the
` subject matter of claims 21, 22, 24 and 25 ............................................. 29
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` B. Ground 2 ...................................................................................................... 29
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` C. Ground 3 ...................................................................................................... 29
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` D. Ground 4 ...................................................................................................... 29
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` 1. Johnson fails to teach the “first processing device” and “second
` processing device” of claim 21 ................................................................ 30
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` 2. Rossmann fails to remedy the deficiencies in Johnson ........................... 34
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` 3. The combination of Johnson and Rossmann fails to render obvious the
` subject matter of claims 21, 22, 24, 25, 29 and 36 .................................. 36
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`VII. CONCLUSION .............................................................................................. 37
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`LIST OF EXHIBITS
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`Case IPR2015-01645
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`Exhibit
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`EX2001
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`Description
`“Supplement to the Remarks for the Amendment filed on October 24,
`2007” filed on November 23, 2007 during prosecution of the patent
`application that issued as related U.S. Patent No. 7,397,363
`EX2002 Notice of Intent to Issue Ex Parte Reexamination Certificate
`“Petition for Inter Partes Review Under 35 U.S.C. §§ 311-319 and 37
`EX2003
`C.F.R. § 42.100 Et Seq.” filed by Nissan North America, Inc.
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`Preliminary Response of Patent Owner
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`I.
`INTRODUCTION
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`Patent Owner Joao Control & Monitoring Systems, LLC (“JCMS”)
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`respectfully submits this Preliminary Response of Patent Owner (“Preliminary
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`Response”) in accordance with 35 U.S.C. § 313 and 37 C.F.R. § 42.107. This
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`Preliminary Response responds to the Petition for Inter Partes Review
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`(“Petition”) filed by Petitioner regarding claims 21, 22, 24, 25, 29 and 36
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`(“Challenged Claims”) of U.S. Patent No. 7,397,363 (“the ‘363 Patent”).
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`This Preliminary Response is timely filed under 35 U.S.C. § 313 and 37
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`C.F.R. § 42.107, as it is filed within three months of the August 17, 2015 date of
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`the Notice of Filing Date Accorded to Petition and Time for Filing Patent Owner
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`Preliminary Response (Paper No. 6).
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`JCMS requests that the Board not institute an inter partes review (“IPR”)
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`because Petitioner has failed to demonstrate a reasonable likelihood of prevailing
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`with respect to any of the Challenged Claims, thereby failing to meet the
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`threshold for institution under 35 U.S.C. § 314(a).
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`The four proposed grounds of rejection are substantively flawed, in that
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`none of the cited references teach important properly construed claim limitations.
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`Petitioner’s expert, Mr. David McNamara, makes statements and opines on
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`issues related to: (1) the state of the art at the time of the invention; (2) the prior
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`art used in Petitioner’s grounds of rejection; and (3) how the prior art renders the
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`claims unpatentable. However, Petitioner has
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`failed
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`constructions for certain key terms in the claims that support Mr. McNamara’s
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`opinions, and that support Petitioner’s invalidity arguments. As such, Mr.
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`McNamara’s analysis and declaration is fundamentally flawed and should be
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`given no weight.
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`Petitioner’s failure to construe certain key terms renders an evaluation of
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`the merits of Petitioner’s invalidity arguments impossible. This failure alone is
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`sufficient reason to deny institution of inter partes review.
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`In the end, the Petition is materially deficient and fails to set forth
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`sufficient evidence that Petitioner has a reasonable likelihood of prevailing with
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`respect to any of the Challenged Claims, as required under 35 U.S.C. § 314(a).
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`JCMS respectfully submits that the Board should conserve resources by declining
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`to institute this meritless proceeding.
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`II. BACKGROUND
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`A. Overview of the ‘363 Patent
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`The ‘363 Patent is directed to a novel and unconventional system for, inter
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`alia, remotely-controlling and/or monitoring systems located at vehicles and
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`premises. EX1001 at 26. The Challenged Claims are directed to a specially
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`assembled and programmed distributed control and monitoring system for
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`vehicles, wherein control functions for a vehicle or for a vehicle system, vehicle
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`equipment system, vehicle component, vehicle device, vehicle equipment, or
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`vehicle appliance, of a vehicle, can be distributed among three separate and
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`distinct processing devices, each of which can generate or transmit a separate and
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`distinct signal in order to control and/or detect a state of disrepair of a separate
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`fourth device of or at the vehicle, which is the respective vehicle system, vehicle
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`equipment system, vehicle component, vehicle device, vehicle equipment, or
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`vehicle appliance.
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`B.
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`Prosecution History of the ‘363 Patent
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`1.
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`Original prosecution
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`The patent application that issued as the ‘363 patent was filed on
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`September 16, 2002. EX1001. The ‘363 patent issued on July 8, 2008. Id.
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`During prosecution, the Applicant chose to be his own lexicographer and
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`provided explicit definitions for various terms, including “processing device,”
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`“remote” and “located at,” in “Supplement to the Remarks for the Amendment
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`filed on October 24, 2007” filed on November 23, 2007 during prosecution of the
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`patent application that issued as the ‘363 patent (see EX2001, hereinafter “First
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`Remarks”).
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`2.
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`Reexamination of the ‘363 Patent
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`Ex Parte Reexamination Control No. 90/013,303 (hereinafter “the ‘363
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`Reexam”) was requested by a third party on July 21, 2014, challenging claim 21
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`of the ‘363 Patent. Reexamination was ordered on September 17, 2014.
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`The Examiner issued a Notice of Intent to Issue Ex Parte Reexamination
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`Certificate on July 29, 2105 (EX2001, hereinafter “Notice”), in which original
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`claim 21 was confirmed as patentable over the prior art of record.
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`C.
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`Petition Overview
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`Petitioner has proposed four grounds of invalidity and relies on the
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`following six references:
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`1.
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`2.
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`3.
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`4.
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`EP 0505266 to Frossard et al. (“Frossard”);
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`U.S. Patent No. 5,732,074 to Spaur (“Spaur”);
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`U.S. Patent No. 5,334,974 to Simms et al. (“Simms”);
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`U.S. Patent No. 5,276,728 to Pagliaroli et al. (“Pagliaroli”);
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`5.
`U.S. Patent No. 5,557,254 to Johnson et al. (“Johnson”); and
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`6.
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`U.S. Patent No. 5,809,415 to Rossmann (“Rossmann”).
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`The table below summarizes Petitioner’s grounds of invalidity.
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`Ground
`1
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`2
`3
`4
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`Claims
`21, 22, 24 and
`25
`29
`36
`21, 22, 24, 25,
`29 and 36
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`Proposed Rejections
`obvious over Frossard in view of Spaur
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`obvious over Frossard in view of Spaur and
`Simms
`obvious over Frossard in view of Pagliaroli
`obvious over Johnson in view of Rossmann
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`Claim 21 is the only independent claim being challenged. It is reproduced
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`below:
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`21. An apparatus, comprising:
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`a first processing device, wherein the first processing device at least
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`one of generates a first signal and transmits a first signal for at least one of
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`activating, deactivating, disabling, re-enabling, and controlling an operation of, at
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`least one of a vehicle system, a vehicle equipment system, a vehicle component, a
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`vehicle device, a vehicle equipment, and a vehicle appliance, of or located at a
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`vehicle, wherein the first processing device is associated with a web site, and
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`further wherein the first processing device is located at a location remote from
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`the vehicle,
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`wherein the first processing device at least one of generates the first
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`signal and transmits the first signal in response to a second signal, wherein the
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`second signal is a at least one of generated by a second processing device and
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`transmitted from a second processing device, wherein the second processing
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`device is located at a location which is remote from the first processing device
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`and remote from the vehicle, wherein the first processing device determines
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`whether an action or an operation associated with information contained in the
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`second signal, to at least one of activate, de-activate, disable re-enable, and
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`control an operation of, the at least one of a vehicle system, a vehicle equipment
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`system, a vehicle component, a vehicle device, a vehicle equipment, and a
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`vehicle appliance, is an authorized or an allowed action or an authorized or an
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`allowed operation, and further wherein the first processing device at least one of
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`generates the first signal and transmits the first signal to a third processing device
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`if the action or the operation is determined to be an authorized or an allowed
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`action or an authorized or an allowed operation, wherein the third processing
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`device is located at the vehicle,
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`wherein the second signal is transmitted to the first processing
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`device via, on, or over, at least one of the Internet and the World Wide Web, and
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`further wherein the second signal is automatically received by the first processing
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`device, wherein the first signal is transmitted to and automatically received by the
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`third processing device, wherein the third processing device at least one of
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`generates a third signal and transmits a third signal for at least one of activating,
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`de-activating, disabling, re-enabling, and controlling an operation of, the at least
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`one of a vehicle system, a vehicle equipment system, a vehicle component, a
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`vehicle device, a vehicle equipment, and a vehicle appliance, in response to the
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`first signal.
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`III. CLAIM CONSTRUCTION
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`Legal Standards
`A.
`A claim term in an unexpired patent must be given its “broadest reasonable
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`interpretation in light of the specification of the patent in which it appears.” 37
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`C.F.R. § 42.100(b) (emphasis added); see also In re Cuozzo Speed Techs., LLC,
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`778 F.3d 1271, 1281 (Fed. Cir. 2015). The “broadest reasonable interpretation” is
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`not the same as the broadest possible interpretation; the construction must be
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`consistent with the one those skilled in the art would reach. See In re Cortright,
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`165 F.3d 1353, 1359 (Fed. Cir. 1999). The focus of the inquiry must be on the
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`ordinary and customary meaning as understood by one of ordinary skill in the art
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`at the time of the invention and in the context of the entire patent disclosure. See,
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`e.g., In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010); In re
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`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).1
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`“[A] patentee may choose to be his own lexicographer” and assign special
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`definitions to the words in the claim, as long as those definitions are clearly
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`stated in the patent specification or file history. Vitronics Corp. v. Conceptronic,
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`Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (citing Hoechst Celanese Corp. v. BP
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`Chems. Ltd., 78 F.3d 1575, 1578 (Fed. Cir. 1996)). Therefore, “it is always
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`necessary to review the specification to determine whether the inventor has used
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`any terms in a manner inconsistent with their ordinary meaning. The
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`specification acts as a dictionary when it expressly defines terms used in the
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`claims or when it defines terms by implication.” Id. Because the specification
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`must contain a description sufficient to those of ordinary skill in the art to make
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`1 Given the differing claim constructions standards that are mandated to be used
`by the district courts in litigation, JCMS reserves the right to advance different
`claim construction positions in district court.
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`and use the invention, the specification “is the single best guide to the meaning of
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`a disputed claim term.” Id.
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`The prosecution history of the patent is also important to a proper claim
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`construction. As a complete record of proceedings before the U.S. Patent and
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`Trademark Office, it may contain representations made by the applicant
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`regarding the scope of the claims. Vitronics, 90 F.3d at 1582. “The patentee is
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`bound by representations made and actions that were taken in order to obtain the
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`patent.” Phillips, 415 F.3d at 1317 (quoting Chimie v. PPG Indus., Inc., 402 F.3d
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`1371, 1384 (Fed. Cir. 2005)). The prosecution history limits the meaning of
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`claim terms “so as to exclude any interpretation that was disclaimed during
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`prosecution.” Southwall, 54 F.3d at 1576. Prior art, some of which may be
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`contained in the file history, is also important because a valid claim cannot read
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`on, or cover within its scope, what is disclosed in the prior art. See General
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`American Transportation Corp. v. Cryo-Trans, Inc., 93 F.3d 766, 771 (Fed. Cir.
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`1996).
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`B.
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`Petitioner has Failed to Submit Claim Constructions for Key
`Terms Supporting its Invalidity Arguments
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`The Board has previously emphasized that if the Petitioner does not
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`explain how the Challenged Claims should be construed and how they read on
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`the prior art, then a reasonable likelihood of success is not established:
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`“It is the Petitioner’s burden to explain how the
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`Challenged Claims are to be construed and how they
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`read on the prior art. 37 C.F.R. § 42.104(b)(3)-(5).
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`Petitioner has not done so sufficiently on this record
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`with respect to the limitation of claims 1, 45, 46, and 47
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`requiring a “color changing cycle.” Accordingly,
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`Petitioner has not demonstrated a reasonable likelihood
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`of success in showing the subject matter of claims 1-11,
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`26-34, and 45-47 would have been obvious in view of
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`Wu and Chliwnyj.” Jiawei Technology (HK) LTD. et al
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`v. Simon Nicholas Richmond, IPR2014-00937, Paper 22
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`at 8.
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`Similarly, Petitioner has failed to propose claim constructions for certain
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`key terms in the claims, and thus has failed to provide constructions for key terms
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`that support Mr. McNamara’s opinions, and that support Petitioner’s invalidity
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`arguments. Petitioner’s failure to construe these key terms renders an evaluation
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`of the merits of Petitioner’s invalidity arguments impossible, and thus Petitioner
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`has failed to demonstrate a reasonable likelihood of success in showing that any
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`of the claims of the ‘363 Patent are rendered obvious in view of the art cited in
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`Grounds 1-4.
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`Below are Patent Owner’s proposed constructions for the following key
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`terms, which Patent Owner submits are necessary to properly evaluate the merits
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`of Petitioner’s invalidity arguments: (1) “interface device;” (2) “processing
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`device;” (3) “remote” and (4) “located at.” As discussed supra, most of these key
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`terms were defined by the Applicant in the First Remarks filed on November 23,
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`2007 during prosecution of the patent application that issued as the ‘363 Patent
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`(EX2001). These definitions provided by the Applicant during prosecution of the
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`‘363 Patent constitute intrinsic evidence regarding the construction of these key
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`claim terms.
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`In his submission to the USPTO, the Applicant also provided the page and
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`line numbers where support for each of the definitions is located in the original
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`specifications of the ‘363 Patent. By defining each of these terms in the
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`prosecution history, the ‘363 Applicant had chosen to be his own lexicographer.
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`See CCS Fitness Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)
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`(“[A] claim term will not receive its ordinary meaning if the patentee acted as his
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`own lexicographer and clearly set forth a definition of the disputed term...”).
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`Moreover, in the First Remarks, the Applicant stated “[a]pplicant provides the
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`following definitions for the following terms or phrases which appear in certain
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`of the pending Claims.” Thus, it is clear that the Applicant unequivocally and
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`intentionally defined the terms in the manner discussed infra.
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`C.
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`“interface device”
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`The term “interface device” appears in independent claim 21 and its
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`construction is necessary to interpret the meaning of the claims. Petitioner has
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`offered no construction for this key term in the present Petition. However,
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`Petitioner offered a construction for this term in a petition Petitioner filed in
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`related Inter Partes Review No. IPR2015-01509 (see EX2003, hereinafter “the
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`‘1509 Petition”).
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`In the ‘1509 Petition, Petitioner’s proposed construction for “interface
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`device” is “a device that allows components connected via the interface
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`device to work together.” EX2003 at 14-15. Patent Owner agreed with this
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`proposed construction, and submits that the same construction should be used in
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`the present proceedings.
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`D.
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`“processing device”
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`The term “processing device” appears in independent claim 21 and its
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`construction is necessary to interpret the meaning of the claims. Petitioner has
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`offered no construction for this key term.
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`As discussed supra, Applicant chose to be his own lexicographer and
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`provided an explicit definition for the term “processing device” in the First
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`Remarks. EX2001 at 9-10. Accordingly, the term “processing device” should be
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`construed as “a device or a computer, or that part of a device or a computer,
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`which performs an operation, an action, or a function, or which performs a
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`number of operations, actions, or functions.” This proposed construction is
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`consistent with Applicant’s definition of the term “processing device” in the First
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`Remarks, and is also supported by and is consistent with the Specification of the
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`‘363 Patent, including the written description, the drawings and the claims.
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`Further, “processing device” is separate and distinct from the claimed vehicle
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`systems being controlled and is separate and distinct from the communication
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`system or the communication network, or any component of same, on, over, via,
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`or in conjunction with, which they operate.
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`Each “processing device” is separate and distinct from an
`1.
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` “interface device”
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`The Specification and the intrinsic evidence of the ‘363 Patent make it
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`clear and unequivocal that an “interface device,” which is described in the
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`Specification, cannot serve as and cannot function as any of the claimed
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`"processing device[s],” and certainly cannot serve as and cannot function as the
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`“third processing device” of claim 21.
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`The Specification and the intrinsic evidence of the ‘363 Patent make it
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`clear and unequivocal that an “interface device” is separate and distinct from the
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`“processing device[s]” of independent claim 21. See, for example, Col. 25, lines
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`9-17, of the ‘363 Patent, which states:
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`“The CPU 4, in the preferred embodiment, is also
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`electrically connected and/or linked to at least one or
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`more of a vehicle equipment system or systems 11. The
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`vehicle equipment system or systems 11 are located
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`externally from the apparatus 1 and may or may not be
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`connected and/or linked to the CPU 4, via a vehicle
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`equipment system or systems interface 12 which may or
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`may not be required for each one of the variety or
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`multitude of the vehicle equipment systems which may
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`be utilized in conjunction with the apparatus. (Emphasis
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`added).” EX1001 at 38. (emphasis added).
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`See also, Col. 31, lines 14-23, of the ‘363 Patent, which states:
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`“As noted above, the use of any one or more of the
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`vehicle equipment system or systems 11, and their
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`associated interface devices 12, may be optional and
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`may further include any other systems and/or devices
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`which may, or are, utilized in and/or in conjunction with
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`any of the above noted or envisioned vehicles. The
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`vehicle equipment system(s) 11, especially when the
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`apparatus is utilized in conjunction with law enforcement
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`and/or military vehicles, may also include guns and/or
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`weapon systems and/or self defense systems and
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`electronic warfare systems.” Id. at 41. (emphasis added).
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`See also, Col. 31, lines 32-36, of the ‘363 Patent, which states:
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`“It should be noted that any of the interface devices 8, 10
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`and 12 may include any of the requisite interfacing
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`circuitry which may be necessary to facilitate CPU 4
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`control over the respective systems which may be
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`utilized.” Id. (emphasis added).
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`It is noted from the above citation that the ‘363 Patent also teaches that the
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`“interface device” disclosed therein can also include circuitry, and thus this
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`feature does not disqualify the same from being an “interface device.”
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`See also, Col. 15, lines 30-38, of the ‘363 Patent, which states:
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`“The interface devices utilized in any of the various
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`embodiment of the present invention may be wireless
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`devices or modules which need not be directly
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`connected to the CPU or to its respective equipment
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`system in a hard-wired manner. In this regard, hard-wired
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`electrical connections may be unnecessary. In the case of
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`wireless interface devices or modules, corresponding
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`wireless technology and/or systems should be utilized in
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`order to provide for the wireless control and/or operation
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`of the respective equipment(s).” Id. at 33 (emphasis
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`added).
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`See also, Col. 48, lines 4-12, of the ‘363 Patent, which states:
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`“The apparatus 1, the CPU 4, and/or any of the vehicle
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`systems and/or devices and/or vehicle equipment
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`systems, and/or
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`the respective
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`interface devices
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`associated therewith or corresponding thereto, may also
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`be programmable by the user or operator via the
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`transmitter 2, and/or at the vehicle in an appropriate
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`manner and by an appropriately secured device, so that
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`certain parameters, such as the timing, and/or the degree
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`of disabling or re-enabling, of the various vehicle
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`systems may be programmed and/or controlled.” Id. at
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`49. (emphasis added).
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`It is noted from the above citation that the ‘363 Patent also teaches that the
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`“interface device” disclosed therein can also be programmable, and thus this
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`feature does not disqualify the same from being an “interface device”.
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`In view of the foregoing, an “interface device” cannot serve as and cannot
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`function as any “processing device” of claim 21.
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`E.
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`“remote”
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`The term “remote” appears in independent claim 21 and its construction is
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`necessary to interpret the meaning of the claims. Petitioner has offered no
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`construction for this key term.
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`As discussed supra, Applicant chose to be his own lexicographer and
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`provided an explicit definition for the term “remote” in the First Remarks.
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`EX2001 at 10-11. Accordingly, the term “remote” should be construed as
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`“separate and apart from.” This proposed construction is consistent with
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`Applicant’s definition of the term “remote” in the First Remarks, and is also
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`supported by and is consistent with the Specification of the ‘363 Patent, including
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`the written description, the drawings and the claims.
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`F.
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`“located at”
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`The term “located at” appears in independent claim 21 and its construction
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`is necessary to interpret the meaning of the claims. Petitioner has offered no
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`construction for this key term.
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`As discussed supra, Applicant chose to be his own lexicographer and
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`provided an explicit definition for the term “located at” in the First Remarks.
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`EX2001 at 8. Accordingly, the term “located at” should be construed as “situated
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`at, situated in or situated on.” This proposed construction is consistent with
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`Applicant’s definition of the term “located at” in the First Remarks, and is also
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`supported by and is consistent with the Specification of the ‘363 Patent, including
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`the written description, the drawings and the claims.
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`G.
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`“the first processing device determines whether an action or an
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` operation associated with information contained in the second
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` signal, to at least one of activate, de-activate, disable, re-enable,
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` and control an operation of, the at least one of a vehicle system,
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` a vehicle equipment system, a vehicle component, a vehicle
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` device, a vehicle equipment, and a vehicle appliance, is an
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` authorized or an allowed action or an authorized or an allowed
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` operation”
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`The phrase appears in independent claim 21, and Petitioner has proposed
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`the following construction: “the first processing device determines whether an
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`action or an operation associated with information contained in the second
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`signal is allowed or authorized, wherein the action or operation is to at least
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`one of activate, de-activate, disable, re-enable, and control an operation of,
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`the at least one of a vehicle system, a vehicle equipment system, a vehicle
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`component, a vehicle device, a vehicle equipment, and a vehicle appliance.”
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`Paper 3 at 9.
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`However, Petitioner goes on to state that “[t]his construction emphasizes
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`that the action or operation is what activates, deactivates, disables, re-enables, or
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`controls.” Id. (emphasis in original). This is a misleading statement. Patent
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`Owner submits that the “action” or “operation” is not “what activates,
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`deactivates, disables, re-enables, or controls.” Rather, the “action” or “operation”
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`being allowed or authorized is the so-called action or operation of activating, de-
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`activating, disabling, re-enabling, or controlling an operation of . . . ,” which is
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`performed by the third processing device as the result of the third processing
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`device generating or transmitting the third signal.
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`Accordingly, Patent Owner agrees with Petitioner’s construction only to
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`the extent that it means that the “action” or “operation” being “authorized” or
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`“allowed” is the action or the operation “to at least one of activate, de-activate,
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`disable, re-enable, and control an operation of, the at least one of a vehicle
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`system a vehicle equipment system, a vehicle component, a vehicle device, a
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`vehicle equipment, and a vehicle appliance . . . ,” which is performed by the third
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`processing device as the result of the third processing device generating or
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`transmitting the third signal.
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`IV. THE PROPOSED GROUNDS FAIL TO MEET THE BURDEN OF
` SHOWING A REASONABLE L