IPR2015-01645, Paper No. 28
`IPR2015-01508, Paper No. 30
`IPR2015-01585, Paper No. 31
`November 22, 2016
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`trials@uspto.gov
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`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NISSAN NORTH AMERICA, INC.,
`Petitioner,
`
`v.
`
`JOAO CONTROL & MONITORING SYSTEMS, LLC ,
`Patent Owner.
`____________
`
`IPR2015-01645 (Patent 7,396,363)
`IPR2015-01508 (Patent 6,542,076)
`IPR2015-01585 (Patent 5,917,405)
`____________
`
`Held: October 20, 2016
`____________
`
`
`
`
`
`BEFORE: STACEY G. WHITE, JASON J. CHUNG, and BETH
`Z. SHAW, Administrative Patent Judges.
`
`The above-entitled matter came on for hearing on Thursday,
`October 20, 2016, commencing at 1:00 p.m., at the U.S. Patent
`and Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
`
`IPR2015-01508, Paper No. 30
`IPR2015-01585, Paper No. 31
`November 22, 2016
`
`trials@uspto.gov
`
`
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NISSAN NORTH AMERICA, INC.,
`Petitioner,
`
`v.
`
`JOAO CONTROL & MONITORING SYSTEMS, LLC ,
`Patent Owner.
`____________
`
`IPR2015-01645 (Patent 7,396,363)
`IPR2015-01508 (Patent 6,542,076)
`IPR2015-01585 (Patent 5,917,405)
`____________
`
`Held: October 20, 2016
`____________
`
`
`
`
`
`BEFORE: STACEY G. WHITE, JASON J. CHUNG, and BETH
`Z. SHAW, Administrative Patent Judges.
`
`The above-entitled matter came on for hearing on Thursday,
`October 20, 2016, commencing at 1:00 p.m., at the U.S. Patent
`and Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
`
`
`IPR2015-01645 (Patent 7,396,363)
`IPR2015-01508 (Patent 6,542,076)
`IPR2015-01585 (Patent 5,917,405)
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`APPEARANCES:
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`ON BEHALF OF THE PETITIONER:
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`ALTON ABSHER, ESQUIRE
`PATRICK M. NJEIM, ESQUIRE
`Kilpatrick Townsend & Stockton, LLP
`1420 Fifth Avenue
`Suite 3700
`Seattle, Washington 98101
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`RENE A. VAZQUEZ, ESQUIRE
`Sinergia Technology Law Group, PLLC
`18296 St. Georges Court
`Leesburg, Virginia 20176
`
`and
`
`RAYMOND A. JOAO, ESQUIRE
`Joao Control & Monitoring Systems, LLC
`
`
`
`ON BEHALF OF PATENT OWNER:
`
`
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`IPR2015-01645 (Patent 7,396,363)
`IPR2015-01508 (Patent 6,542,076)
`IPR2015-01585 (Patent 5,917,405)
`
`
`P R O C E E D I N G S
`- - - - -
`JUDGE CHUNG: This is IPR2015-01508,
`IPR2015-01585, IPR2015-01645. Who do we have for
`petitioner?
`MR. ABSHER: Your Honor, we have Alton Absher
`from Kilpatrick Townsend. With me at counsel table is Patrick
`Njeim, also from Kilpatrick Townsend. And with us is Steve
`Harvin as well.
`JUDGE CHUNG: Who do we have for patent owner?
`MR. JOAO: Raymond Joao, patent owner, and Rene
`Vazquez.
`JUDGE CHUNG: Each party will have 90 minutes to
`present their argument. Petitioner may reserve some rebuttal
`time. Would the petitioner like to reserve any rebuttal time?
`MR. ABSHER: Yes, Your Honor. We anticipate our
`opening to go between 45 and 50 minutes. So we would like to
`reserve the remainder of that for rebuttal time, please.
`JUDGE CHUNG: Okay. With me on the panel are
`Judges White and Shaw and myself, Jason Chung. Judge White
`is remote from our location. So when referring to slide numbers
`or when referring to the slides, please refer to the slide number
`clearly and speak into the microphone so that Judge White can
`hear what you are saying.
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`IPR2015-01645 (Patent 7,396,363)
`IPR2015-01508 (Patent 6,542,076)
`IPR2015-01585 (Patent 5,917,405)
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`At this time, petitioner may present their argument.
`MR. ABSHER: Your Honor, I have paper copies of our
`slides, if you would like them.
`JUDGE CHUNG: Thanks.
`MR. ABSHER: May I approach?
`JUDGE CHUNG: You may.
`MR. ABSHER: This hearing concerns three U.S.
`patents, patent number 6,542,076, patent number 5,917,405, and
`patent number 7,397,363. These patents are all in the same
`family, have the same named inventor and have a great deal of
`overlap and subject matter. And because of the significant
`overlap, we will endeavor to cover these patents in groups where
`appropriate.
`Slide 3, please. So first we'll discuss the '076 and '405
`patents in connection with the grounds of rejection using the
`Frossard primary reference. Slide 4, please. Then we will
`discuss the '076 and '405 patents in the context of the Pagliaroli
`grounds of rejection. Slide 5, please. Then we will address the
`grounds of rejection for the '363 patent.
`Also, because of the significant overlap, whenever
`there's an issue or argument or an exhibit that's present in
`multiple IPRs, I'll endeavor to refer to it only once and by default
`we'll refer to it by the exhibit or paper number in the '076 IPR, the
`first one that was filed, IPR2015-01508.
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`IPR2015-01645 (Patent 7,396,363)
`IPR2015-01508 (Patent 6,542,076)
`IPR2015-01585 (Patent 5,917,405)
`
`
`Given that we are the petitioners and we carry the
`burden to prove the challenged claims unpatentable by a
`preponderance of the evidence, I would like to provide a brief
`overview of the record and how we got here.
`So for each of the three challenged patents, petitioner,
`we brought forward a petition along with a supporting expert
`declaration. Our declaration explained how a person of ordinary
`skill in the art, what he or she would understand from the
`disclosure and how he or she would compare it to the claims.
`Subsequently, the patent owner filed a preliminary response but
`did not introduce any evidence in either of the responses
`regarding how one of ordinary skill would understand the claims
`in the prior art.
`Subsequently, the Board instituted trial on all three
`patents and all challenged claims and all grounds finding a
`reasonable likelihood that we would prevail in proving the
`challenged claims unpatentable.
`After that the patent owner deposed our expert, filed its
`response but again did not provide any evidence of how a person
`of ordinary skill would understand the claims in the prior art.
`They did critique our expert but did not challenge the
`admissibility of his testimony. Only the weight of his testimony.
`And as we set forth in our reply papers, the baseless.
`Patent owner provided no evidence of secondary considerations
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`IPR2015-01645 (Patent 7,396,363)
`IPR2015-01508 (Patent 6,542,076)
`IPR2015-01585 (Patent 5,917,405)
`
`and relied almost exclusively on attorney argument. Thus, when
`the record closed, the patent owner had offered no evidence to
`rebut our showing, which the Board had already found had
`demonstrated a reasonable likelihood of invalidating the
`challenged claims. Thus, the factual record today is almost
`completely unchanged since the Board instituted trial. And thus,
`the petitioner respectfully requests that the Board find each of the
`challenged claims unpatentable.
`Slide 6, please. The reason I said the record was almost
`unchanged is because there has been one development in the
`interim. In June the District Court for the Eastern District of
`Michigan granted summary judgment of invalidity over Frossard
`for several claims of each of the challenged patents. And just two
`weeks ago on October 7th, that court denied the patent owner's
`request for reconsideration. And I'll just note for the record that
`this decision was under the clear and convincing standard used in
`District Court.
`And so as we see on slide 6, the underlying portion, the
`Court explained that the asserted patents in Frossard have
`essentially the same overall structure. And since that's the case,
`let's go ahead and move on to slide 7 and now slide 8 and discuss
`Frossard in light of the challenged independent claims of the '076
`and '405 patent.
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`IPR2015-01645 (Patent 7,396,363)
`IPR2015-01508 (Patent 6,542,076)
`IPR2015-01585 (Patent 5,917,405)
`
`
`So both Frossard and the claims disclose three control
`devices and three signals. They are all remote from each other.
`And one of them, the third or first, depending on which claim you
`are looking at, is located at the vehicle. So working from top to
`bottom, slide 1 is an annotated excerpt from Figure 1 of the
`Frossard prior art reference. Working from top to bottom, we can
`see a first control device represented by the telephone or minitel,
`a second control device represented by the server and its resource,
`and then a third control device which is that element 4 at the
`vehicle which is a receiver/decoder circuit.
`Slide 9, please. And slide 9 is another annotated
`depiction of Figure 1 of the Frossard reference. This one
`showing -- this one has annotations showing the signals. So
`again, working from top to bottom, the first signal being the
`access code and intervention order that's sent from the telephone
`or minitel to the server and its resource which then uses its
`resource to send the second signal which is that message M. And
`then finally, that's received by the vehicle, the receiver/decoder
`circuits, which send a third signal to the equipment interface
`labeled number 5.
`Slide 10, please. So with regards to the independent
`claims of the '076 and '045 patents, there's only one disputed
`issue. It boils down to whether Frossard's server and resource
`constitute a second control device. The patent owner contends
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`IPR2015-01645 (Patent 7,396,363)
`IPR2015-01508 (Patent 6,542,076)
`IPR2015-01585 (Patent 5,917,405)
`
`that a control device cannot include multiple components and that
`the server and its network thus can't be a second control device.
`Well, the patent owner is wrong for at least three
`reasons. Let's move to slide 11, please. First of all, even under
`patent owner's own claim construction which was adopted by the
`Board in its institution decision, a control device can include a
`part of a device or a computer. And so if a control device can
`include -- is a device and can include part of a device, then a
`control device can necessarily include multiple parts such as
`Frossard's server 1 and resource number 2.
`Second reason, let's move to slide 12, please, the patent
`owner's argument is incorrect, I would like to take a quick look at
`slide 12 is an excerpt from the patent owner's preliminary
`response in the '076 IPR where he explains that the server
`computer 952 in Figure 11B of the '076 patent corresponds to the
`second control device.
`Well, let's take a closer look at what this purported
`enabling disclosure is. Slide 13, please. Slide 13, these are both
`excerpts from the patent, from the '076 patent. And I'll represent
`that this disclosure is identical in both the '405 and the '076
`patent. On the right we have an excerpt from Figure 11B. And
`notice that it shows the server computer which the patent owner
`represents constitutes the second control device outlined in red.
`And then the corresponding disclosure explains that it can
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`IPR2015-01645 (Patent 7,396,363)
`IPR2015-01508 (Patent 6,542,076)
`IPR2015-01585 (Patent 5,917,405)
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`perform complete control. But notice below it outlined in green
`is a transmitter that the disclosure explains can transmit the
`control signals. So here we have in the spec, in the enabling
`disclosure for the second control device the transmitter being
`separate from the server computer. They are multiple
`components that form that exercised control.
`Move to slide 14, please. And so slide 14 ties it
`together with the Frossard reference. On the left, that's the
`excerpt from the Figure 11B; on the right, an excerpt from
`Figure 1 of Frossard. We can see how they line up really well.
`The server Figure 11B corresponds to the server of Frossard, and
`then both have a transmitter outlined in green and then both send
`a message which is outlined in blue. So not only does the
`Frossard reference plainly disclose what's recited in the claims, it
`even matches up very, very closely with the purported enabling
`disclosure.
`I would like to move on to the dependent claims, slide
`18, please. Claims 20 and 103 of the '076 patent, slide 19, please,
`patent owner doesn't dispute, doesn't provide any evidence or any
`argument against these grounds of rejection of claim 20 other
`than they are dependents from the independent claim. Thus,
`claim 20 rises and falls with its independent claim 3. Slide 20,
`please. It's the same with claim 103 of the '076.
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`IPR2015-01645 (Patent 7,396,363)
`IPR2015-01508 (Patent 6,542,076)
`IPR2015-01585 (Patent 5,917,405)
`
`
`Slide 21, please. Frossard in combination with
`Pagliaroli in context of claim 6 of the '076 and claims 2 and 17 of
`the '405 patent. Slide 22, please. Again, claim 65 rises and falls
`with its independent claim. Next slide, 23, the same with claim 2.
`Slide 24, please, same with slide 17. Each of these rises and falls
`with its parent claim.
`Slide 25, please. Frossard and LeBlanc in claim 104 of
`the '076 patent. Slide 26, again, patent owner does not dispute
`that LeBlanc discloses this limitation that's added in claim 104.
`Thus, it again rises and falls with its parent claim.
`Slide 27, please. Claim 93 of the '076, Frossard in
`combination with the Drori reference. Slide 28, so claim 93 of
`the '076 patent recites determining an operating status. And the
`patent owner does not dispute that Drori discloses this limitation
`added in dependent claim 93. But slide 29, please, patent owner's
`argument goes to the combination and really mischaracterizes the
`prior art arguing that a complete redesign of Frossard would be
`required because claiming that Frossard's receiver/decoder does
`not transmit. I'll note that this argument is made without any
`affirmative evidence or any admission from our expert. Just
`attorney argument.
`Slide 30, please. And actually, so patent owner is
`factually incorrect on this because Frossard does teach that the
`receiver/decoder contains a transmitter that can transmit
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`IPR2015-01645 (Patent 7,396,363)
`IPR2015-01508 (Patent 6,542,076)
`IPR2015-01585 (Patent 5,917,405)
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`messages. This is an excerpt on slide 30 from page 11 of the
`Frossard reference where he explains that the receiver/decoder
`means can additionally contain a conditional radio beacon signal
`transmitter that can transmit. So Frossard actually does teach that
`the receiver can include a transmitter.
`Slide 31, please. In addition to this factual evidence, we
`have unrebutted testimony from our expert, Mr. McNamara, that
`one of ordinary skill in the art would know how to make this
`combination and would be motivated to do so.
`Slide 32, please. Frossard in combination with Simms
`for claims 108 of the '076 and claim 3 of the 405. Slide 33,
`please. Each of these claims recites -- are dependent claims that
`recite additional limitations related to positioning devices. And
`there is no dispute from patent owner that Frossard in
`combination with Simms discloses the elements added by these
`dependent claims. But instead, patent owner makes a similar
`argument that a redesign is required, claiming that the positioning
`device must be installed and integrated with the receiver/decoder
`and also that a complete redesign would be required for the server
`center to be manned by an operator. Each of these arguments
`fails for the reasons we'll discuss next.
`Slide 34, please. First of all, patent owner's argument
`about integration fails for at least two reasons. First of all, the
`claims don't say anything about the positioning device being
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`IPR2015-01645 (Patent 7,396,363)
`IPR2015-01508 (Patent 6,542,076)
`IPR2015-01585 (Patent 5,917,405)
`
`integrated with any of the control devices. So it's just not a
`limitation of the claims. But even if some level of integration
`were required, that can take place, and our expert testified in his
`deposition as shown here on slide 34 that such integration could
`take place using the equipment interface 5, which is shown here
`in this excerpt from Figure 2 of the Frossard reference.
`Slide 35, please. The second reason patent owner is
`incorrect is that the server redesign argument is factually
`incorrect because Frossard plainly teaches that the server center
`can be manned by an operator. As shown here, this is an excerpt
`from page 5 of Exhibit 1005, the Frossard reference, explaining
`that the server center can be manned and certain actions can be
`handled by an operator.
`Slide 36, please. We additionally have unrebutted
`expert testimony describing the simplicity of integrating Simms.
`Again, patent owner provides no evidence to support it, but we
`have -- this is from on slide 36 is an excerpt from
`Mr. McNamara's deposition on Exhibit 2004, page 324 of his
`transcript where he explains that it was actually simple and at the
`time people were engaging in these sort of combinations, and it
`was actually pretty straightforward to be integrated.
`Slide 37, please. Claim 11 of the '405 patent. Slide 38,
`please. Claim 11 relates to -- is a dependent claim that adds a
`voice synthesizing device limitation. Here patent owner doesn't
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`IPR2015-01645 (Patent 7,396,363)
`IPR2015-01508 (Patent 6,542,076)
`IPR2015-01585 (Patent 5,917,405)
`
`dispute that Frossard in combination with the Shimizu reference
`discloses the elements added in claim 11.
`Slide 39, patent owner's argument is directed to the
`motivation to combine. In particular, patent owner argues that,
`well, a car thief, there's no motivation to give this kind of
`information to a car thief. But that was not our argument in our
`petition or it was not our expert's opinion in his declaration. To
`the contrary, the motivations to combine that were articulated by
`petitioner and by our expert have nothing to do with informing a
`thief. They were directed to informing the owner or informing
`the police about the thief's joyride after recovering the vehicle.
`And that's exactly what the petition and declaration confirms.
`Slide 40, please. This is an excerpt from
`Mr. McNamara's declaration where we have unrebutted testimony
`where Mr. McNamara provided several exemplary motivations,
`including providing operational information to the owner and to
`police, accurately determining the travel distance-type
`information, simplifying the access to this information and
`readily providing the information. So there were multiple
`motivations that were identified by our expert.
`Moving to slide 41, our expert was pressed on this
`during his deposition on patent owner's theory regarding a thief
`needing the information. And finally, during his deposition, our
`expert even articulated a reason why maybe you would use the
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`IPR2015-01645 (Patent 7,396,363)
`IPR2015-01508 (Patent 6,542,076)
`IPR2015-01585 (Patent 5,917,405)
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`voice synthesizing device to notify a thief, to notify them that we
`are on to you and you are not going to get away with this.
`But more to the original argument that we made, he also
`explained in his deposition that this trip information is useful for
`the car owner. He referred to it as abuse miles, how many miles
`the thief had ridden, that this would be useful information to be
`provided to an owner of a vehicle.
`Slide 42, please. Patent owner also claims that a
`redesign of the receiver and decoder would be required. Slide 43,
`again, we note that the claim does not require integration of the
`voice synthesizer with any of the particular control devices. But
`even if some level of integration were required, our expert, at his
`deposition testimony, explained that integration can be
`accomplished through the equipment interface 5 shown in
`Figure 2 of the Frossard reference.
`Let's move to slide 44, please. Moving to our second
`set of grounds of rejection, these are the independent claims of
`the '076 and '405 over the Pagliaroli grounds of rejection. Slide
`45, please. As with Frossard, there's really only one disputed
`issue with regard to these independent claims, and that is the
`receiver and control unit of Pagliaroli a control device.
`Slide 46, please. Here we can see this is an excerpt
`from Figure 1 of Pagliaroli. We can see just like Frossard,
`Pagliaroli discloses the control devices and the signals. Working
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`IPR2015-01645 (Patent 7,396,363)
`IPR2015-01508 (Patent 6,542,076)
`IPR2015-01585 (Patent 5,917,405)
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`from top to bottom, we have the telephone 48 which is a first
`control device sending a first signal to the transmitter 46, which is
`the second control device, which then sends a second signal to the
`receiver and control unit located at the vehicle which then send a
`third controller device to one of the vehicle components shown
`there at the bottom of Figure 1.
`Let's move to slide 47. Again, slide 47 is another
`excerpt from patent owner's preliminary response. This from --
`showing that the patent owner contends that the CPU 4 of
`Figure 11B of the patent corresponds to the first control device of
`claim 3.
`Well, let's move to slide 48. And again, as with
`Frossard, we can see that patent owner's argument here
`contradicts the specification. And I'll point out, I noticed this
`earlier today, actually, that the heading on the figure there says
`Figure 11B of the '130 patent. It was an artifact from the '130
`IPR, but I'll represent to you that the Figure 11B is identical in the
`'076 and '405 patents.
`So we see here on slide 48 the excerpt from 11B and
`from the written description showing that the CPU works with the
`receiver and transmitter to receive and issue signals, and thus,
`they form a control device together. That's an example of --
`another example of a control device that has two components, just
`like Pagliaroli.
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`IPR2015-01645 (Patent 7,396,363)
`IPR2015-01508 (Patent 6,542,076)
`IPR2015-01585 (Patent 5,917,405)
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`Slide 49, please. And so here we see an example of
`how Figure 1 of Pagliaroli lines up with Figure 11B of the
`challenged patents. They both have a receiver and control unit
`where the receiver receives the signal designated by the green
`arrow and then the CPU or control unit sends a signal to the
`ignition system or other vehicle components. So again, just like
`Frossard, Pagliaroli really lines up not only with the claim
`language, but also with the enabling disclosure of the challenged
`patents.
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`Slide 50, please. Again, we don't need to rehash, but
`even under patent owner's claim construction, the control device
`can include multiple parts. Slide 51, our expert also confirmed
`that the control unit and receiver work together. Patent owner did
`make an argument here that Pagliaroli's receiver is complex and
`thus that would somehow mean that it can't be part of a control
`device. First of all, that's not a limitation of the claim. Second of
`all, the expert explained that it actually could be quite simple.
`This is an excerpt from page 255, Exhibit 2004, of
`Mr. McNamara's deposition explaining how simple that unit
`could be.
`Move to slide 52, please, and work through the
`dependent claims, 20 and 65 of the '076. Slide 53, claim 20.
`Slide 54, claim 65, both of these, claims 20 and 65, rise and fall
`with their parent claims because there are no additional
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`IPR2015-01645 (Patent 7,396,363)
`IPR2015-01508 (Patent 6,542,076)
`IPR2015-01585 (Patent 5,917,405)
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`arguments made by patent owner with regards to these dependent
`claims. Slide 55, claims 2 and 17 of the '405 patent. Slide 56 and
`slide 57, claims 2 and 17, again, they rise and fall with their
`parent claims.
`Slide 58, dependent claim 93 of the '076. Slide 59, here
`the limitation is a first control device that determines an operating
`status. And Pagliaroli discloses theft sensors that meet this
`limitation. Patent owner doesn't dispute that sensors fail to
`determine an operating status. Patent owner simply argues that
`the theft sensors are not part of the first control device.
`Slide 60. Slide 61, petitioner contends that that sensor
`is actually part of the control device. Slide 62, this is confirmed
`by unrebutted expert testimony that one of ordinary skill would
`understand this, that the theft sensors are a unit of the control
`device. And we respectfully submit that patent owner's
`conclusory attorney argument doesn't outweigh our expert's
`reasoned opinion on this point.
`Slide 63, Pagliaroli in combination with Frossard in
`claim 103 of the '076. Slide 64, no dispute that Pagliaroli and
`Frossard disclose this additional limitation. Thus, claim 103 rises
`and falls with its parent claim.
`Slide 65, Pagliaroli, Frossard and LeBlanc for claim
`104. Slide 66, patent owner doesn't substantively dispute that the
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`IPR2015-01645 (Patent 7,396,363)
`IPR2015-01508 (Patent 6,542,076)
`IPR2015-01585 (Patent 5,917,405)
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`combination of these three references discloses a limitation added
`in claim 104.
`Slide 67, patent owner's argument is really that the
`ground of rejection isn't valid because in our petition we didn't
`specify that Frossard was part of the combination. So I want to
`address that in slide 68, please. So these are two excerpts from
`our petition. At the top, we explained in our petition starting at
`page 53 that claim 103 is rendered obvious by Pagliaroli in view
`of Frossard. We included an explanation of why that
`combination renders the claim obvious. And then for claim 104
`which depends directly from claim 3, we, frankly, made a mistake
`in our heading explaining that it's rendered obvious by Pagliaroli
`in view of LeBlanc. It should have said Pagliaroli in view of
`Frossard in view of LeBlanc, but we just left that Frossard part
`out. I'll represent that we include the discussion of LeBlanc in
`104 and we include the discussion of Pagliaroli and Frossard in
`the context of 103, but we did not make it clear in that section of
`our petition that Frossard was part of that combination.
`Slide 69, please. This is Pagliaroli in combination with
`Simms for claims 108 of the '076 and claim 3 of the '405.
`Slide 70, please. Again, patent owner does not dispute that
`Pagliaroli and Simms discloses these elements that are added.
`And slide 71, patent owner's only argument is that a complete
`redesign would be required. On 72 we have unrebutted testimony
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`IPR2015-01645 (Patent 7,396,363)
`IPR2015-01508 (Patent 6,542,076)
`IPR2015-01585 (Patent 5,917,405)
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`explaining how one of skill in the art would have done this and
`that a redesign would not have been required. Slide 73, further
`evidence that we've already looked at before in the context of
`Frossard and Simms, that it would be simple and one of ordinary
`skill would have been motivated to make this combination.
`Slide 74, please. Pagliaroli in combination with
`Shimizu, claim 11 of the '405 patent. Again, slide 75, patent
`owner doesn't dispute that Pagliaroli and Shimizu disclose
`limitations added in claim 11. And then slide 76, please. So
`really it's the same argument that we had in the context of
`Frossard and Shimizu with regards to the motivation to combine
`in that it's really not providing information to a car thief, but
`actually providing information to the police or to the owner of the
`car after it has been recovered.
`Let's skip over to slide 79. One additional argument
`that the patent owner makes is that the receiver would have to be
`redesigned to support a voice synthesizer. Slide 80, so first of all,
`again, the claim doesn't require the receiver to be integrated with
`a voice synthesizer. But even if some level of integration was
`needed, that can certainly be done.
`Moving on to the '363 patent, slide 81, so '363 patent,
`we'll start with the grounds of rejection under Frossard and Spaur.
`Slide 82, please. Slide 83. So as with the '076 and '405 patent,
`the Board instituted trial on all challenged claims and grounds.
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`IPR2015-01645 (Patent 7,396,363)
`IPR2015-01508 (Patent 6,542,076)
`IPR2015-01585 (Patent 5,917,405)
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`Slide 84, again, we see the similar three-device architecture that
`is recited in the claims of the '363 and also disclosed in the
`Pagliaroli reference.
`A primary difference between the '363 and the other
`two patents that we are discussing today are the numbering of the
`devices. So here the second processing device is up top. And it
`sends a second signal which is received by a first processing
`device which is represented by the server and its resource which
`then generates a first signal sent to the third processing device
`located at the vehicle which then sends the third signal.
`JUDGE SHAW: Are you asking us to construe all the
`signals like in the claim construction? Is it your position that we
`need to construe the claims to interpret the first signal, second
`signal, third signal, et cetera, that the patent owner proposes?
`MR. ABSHER: No, Your Honor. Our position is that
`those signals, that those terms are easily understandable and have
`a plain meaning.
`JUDGE SHAW: And as far as the claim construction of
`control device and processing device, do you think the
`construction makes a difference? If we continued or if we
`adopted the patent owner's construction, would it change the
`outcome here?
`MR. ABSHER: No, Your Honor, it would not affect
`the outcome here.
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`IPR2015-01645 (Patent 7,396,363)
`IPR2015-01508 (Patent 6,542,076)
`IPR2015-01585 (Patent 5,917,405)
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`Let's move on to slide 85, please. Again, so these are
`the signals that are shown in the Frossard reference that
`correspond to the signals in the independent claim 21 of the '363
`patent. Second signal, access code and intervention; the first
`signal, message M; and the third signal is the command sent from
`the receiver/decoder circuits to the equipment interface at the
`vehicle.
`Slide 86, please. Another key difference or the other
`key difference between the '363 patent and the '405 and '076 we
`were discussing earlier is that '363 patent, the claims --
`JUDGE CHUNG: Excuse me, counselor. Can we
`revisit dependent claim 104 for a moment, please. If that was just
`a typo, why didn't you mention anything earlier about that as far
`as -- and I guess are you asking us to treat dependent claim 104 as
`including all three applied references?
`MR. ABSHER: So the answer to your second question
`is yes, Your Honor. And the answer to your first question is, we
`did mention it in our reply brief. Let me see if I can point you to
`that. I guess it's page 27 of paper 25 in the IPR2015-01508. We
`have a paragraph addressing that issue where we argue that
`because -- because we argued that the ground of rejection of
`Pagliaroli in view of Frossard in claim 103 and added LeBlanc in
`claim 104, then we would request that that claim 104 rejection be
`treated as including all three references.
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`IPR2015-01645 (Patent 7,396,363)
`IPR2015-01508 (Patent 6,542,076)
`IPR2015-01585 (Patent 5,917,405)
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`JUDGE CHUNG: So is it the petitioner's position that
`the patent owner had notice of the petitioner's contentions
`regarding claim 104?
`MR. ABSHER: I think a fair reading of the petition
`would be that, yes, the patent owner had notice of it. The patent
`owner definitely --
`JUDGE CHUNG: They had notice of the petition
`initially or in view of your reply?
`MR. ABSHER: I think the patent owner had notice in
`our original petition because we -- because of the way we
`structured our argument with Pagliaroli and Frossard for claim
`103 and then
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