Trials@uspto.gov
`571-272-7822
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` Paper 25
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` Date: February 15, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`COXCOM, LLC,
`Petitioner,
`
`v.
`
`JOAO CONTROL & MONITORING SYSTEMS, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01760
`Patent 6,549,130 B1
`____________
`
`
`Before STACEY G. WHITE, JASON J. CHUNG, and
`BETH Z. SHAW, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`I.
`
`INTRODUCTION
`
`Petitioner, Coxcom, LLC, filed a Petition to institute an inter partes
`review of claims 1, 8, 10, 12, 15, 17, 98, 119, 124, 145, and 149 of U.S.
`Patent No. 6,549,130 B1 (“the ’130 patent”). Paper 1 (“Pet.”). Patent
`
`
`571-272-7822
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`
`
`
`
`
`
`
` Paper 25
`
`
` Date: February 15, 2017
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`COXCOM, LLC,
`Petitioner,
`
`v.
`
`JOAO CONTROL & MONITORING SYSTEMS, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01760
`Patent 6,549,130 B1
`____________
`
`
`Before STACEY G. WHITE, JASON J. CHUNG, and
`BETH Z. SHAW, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`I.
`
`INTRODUCTION
`
`Petitioner, Coxcom, LLC, filed a Petition to institute an inter partes
`review of claims 1, 8, 10, 12, 15, 17, 98, 119, 124, 145, and 149 of U.S.
`Patent No. 6,549,130 B1 (“the ’130 patent”). Paper 1 (“Pet.”). Patent
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`IPR2015-01760
`Patent 6,549,130 B1
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`Owner, Joao Control & Monitoring Systems, LLC, filed a Preliminary
`Response pursuant to 35 U.S.C. § 313. Paper 7 (“Prelim. Resp.”).
`Upon consideration of the Petition and the Preliminary Response, on
`February 17, 2016, we instituted inter partes review of claims 1, 8, 10, 12,
`17, 98, 119, 124, 145, and 149 (“instituted claims”), pursuant to 35 U.S.C.
`§ 314. Paper 8 (“Dec.”).
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response. Paper 14 (“PO Resp.”). Petitioner filed a Reply to Patent
`Owner’s Response. Paper 16 (“Reply”). An oral hearing was held on
`November 17, 2016 and a transcript of the oral hearing is available in the
`record. Paper 24 (“Tr.”).
`We issue this Final Written Decision pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73. For the reasons discussed herein, Petitioner has
`shown by a preponderance of the evidence that claims 1, 8, 10, 12, 17, 98,
`119, 124, 145, and 149 of the ’130 patent are unpatentable. See 35 U.S.C.
`§ 316(e).
`
`A.
`
`Related Matters
`
`Petitioner and Patent Owner indicate that the ’130 patent or related
`patents may be implicated in approximately seventy lawsuits pending in
`courts around the country. Pet. 2–3; Paper 5, 2–7.
`
`B.
`
`The Instituted Grounds
`
`We instituted the following grounds of unpatentability:
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`2
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`
`References
`
`Basis
`
`Koether (Ex. 1008)1
`
`§ 103(a)2
`
`Instituted Claims
`1, 8, 12, 17, 98, 145,
`and 149
`
`Koether and Crater
`(Ex. 1009)3
`
`§ 103(a)
`
`10, 119, and 124
`
`C.
`
`The ’130 Patent
`
`The ’130 patent is directed to controlling a premises. Ex. 1001, Abs.
`The ’130 patent describes three control devices: a first control device is
`located at a premises, a second control device is located remote from the
`premises, and a third control device is located remote from the premises and
`remote from the second control device. Id. The first control device
`generates a first signal in response to a second signal from the second
`control device. Id. The first control device can activate, de-activate, disable
`or re-enable, one or more of “a respective system, component, device,
`equipment, equipment system, and/or appliance, of . . . premises with the
`first signal.” Id. The second control device generates the second signal in
`response to a third signal from the third control device. Id. In some
`instances, the first control device performs the functions of the third control
`device, and vice-versa. Id. at 100:1–27.
`
`
`1 U.S. Patent No. 5,875,430, filed May 2, 1996.
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29,
`revised 35 U.S.C. § 103 and the relevant sections took effect on March 16,
`2013. Because the application from which the ’130 patent issued was filed
`before that date, our citations to Title 35 are to its pre-AIA version.
`3 U.S. Patent No. 5,805,442, filed May 30, 1996.
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`3
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`D.
`
`The Instituted Claims
`
`We instituted inter partes review of claims 1, 8, 10, 12, 17, 98, 119,
`124, 145, and 149. Of the instituted claims, claims 1, 98, and 145 are
`independent. Claim 1 is illustrative and reproduced below:
`1. A control apparatus, comprising:
`a first control device, wherein the first control device at least
`one of generates and transmits a first signal for at least one of
`activating, de-activating, disabling, and re-enabling, at least one
`of a premises system, a premises device, a premises equipment,
`a premises equipment system, and a premises appliance, of a
`premises, wherein the first control device is located at the
`premises,
`wherein the first control device is responsive to a second signal,
`wherein the second signal is at least one of generated by and
`transmitted from a second control device, wherein the second
`control device is located at a location which is remote from the
`premises, wherein the second signal is transmitted from the
`second control device to the first control device, and further
`wherein the second signal is automatically received by the first
`control device,
`wherein the second control device is responsive to a third
`signal, wherein the third signal is at least one of generated by
`and transmitted from a third control device, wherein the third
`control device is located at a location which is remote from the
`premises and remote from the second control device, wherein
`the third signal is transmitted from the third control device to
`the second control device, and further wherein the third signal
`is automatically received by the second control device.
`
`II. ANALYSIS
`
`A.
`
`Real Party in Interest
`
`“To challenge that identification of real party in interest a patent
`owner must provide sufficient rebuttal evidence to bring reasonably into
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`question the accuracy of Petitioner’s identification of RPIs.” See Office
`Patent Trial Practice Guide, 77 Fed. Reg. 48,680, 48,695 (Aug. 14, 2012).
`Whether a non-party is an RPI is a “highly fact-dependent question” that is
`addressed on a “case-by-case” basis. See 77 Fed. Reg. 48,759. “A common
`focus of the inquiry is . . . whether the non-party exercised or could have
`exercised control over a party’s participation in a proceeding.” Id.
`The concept of control means that “the non-party ‘had the opportunity
`to present proofs and argument’ . . . or ‘to direct or control the content’ of
`the filing.” JP Morgan Chase & Co., et. al. v. Maxim Integrated Prods.,
`Inc., Case CBM2014-00179, slip op. at 10 (PTAB Feb. 20, 2015) (Paper 11)
`(“JP Morgan”). “‘The evidence as a whole must show that the non-party
`possessed effective control over a party’s conduct of the [proceeding] as
`measured from a practical, as opposed to a purely theoretical standpoint.’”
`Id. (quoting Gonzalez v. Banco Cent Corp., 27 F.3d 751, 759 (1st Cir.
`1994)).
`The Petition names CoxCom, LLC (“CoxCom”) as the real party in
`interest. Pet. 1. Patent Owner has not articulated sufficient rebuttal
`evidence to bring reasonably into question the accuracy of Petitioner’s
`identification of CoxCom as the real party in interest. Patent Owner argues
`CoxCom was one of the named co-petitioners in related IPR2015-01486
`involving the ’130 patent. PO Resp. 34. Furthermore, Patent Owner argues
`two of Petitioner CoxCom’s co-petitioners in IPR2015-01486, Terremark
`North America LLC (“Terremark”) and Time Warner Cable Inc. (“Time
`Warner”) are time barred and should be named as real parties in interest. Id.
`at 35–38. Moreover, Patent Owner argues Terremark, Time Warner, and
`CoxCom cooperated in planning, preparation, and review of the present
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`Petition because: the present Petition is based on the same ’130 patent as
`IPR2015-01486; Petitioner’s expert in the present proceeding, Mr. Richard
`Bennett, is the same expert as in IPR2015-01486; and Mr. Bennett
`acknowledged that he incorporated some comments from attorneys
`representing Terremark and Time Warner into the final version of the
`declaration submitted in connection with the present Petition. Id. at 38–43.
`In reply, Petitioner argues neither Terremark nor Time Warner were
`involved in any aspect of preparing the present Petition. Reply 18.
`Petitioner also argues Terremark and Time Warner did not have the
`opportunity to direct, contribute, or control the content of the present
`Petition. Id. Moreover, Petitioner argues Mr. Bennett testified under oath
`that he was confused by Patent Owner’s questioning and that he misspoke
`when he acknowledged that he incorporated comments from Terremark’s
`and Time Warner’s counsel into the final version of the declaration in
`connection with the present Petition. Id. at 20–21.
`We agree with Petitioner. The Koether and Crater references relied
`upon by Petitioner in the present Petition were not relied upon in IPR2015-
`01486 so the strategy in preparing the present Petition was necessarily
`different than the strategy in preparing IPR2015-01486. In addition, simply
`because Petitioner filed a petition on the same patent, the ’130 patent, as the
`earlier filed IPR2015-01486, does not create an implication that CoxCom
`cooperated with or worked with non-parties Terremark or Time Warner. JP
`Morgan, slip op. at 13 (“[A] Petitioner and a non-party’s status as co-
`defendants and co-members of a joint defense group is not alone sufficient
`to render the non-party a real party in interest.”).
`We are not persuaded that Petitioner’s use of the same expert in both
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`the present Petition and IPR2015-01486 creates an implication that
`Terremark and Time Warner influenced Mr. Bennett’s opinions of the
`present Petition. Nothing prevents Petitioner from using the same expert in
`both the present Petition and IPR2015-01486 to opine on different prior art
`references (i.e., Koether and Crater) that were not at issue in IPR2015-
`01486.
`We also are not persuaded that Mr. Bennett’s acknowledgement that
`he incorporated some comments from attorneys representing Terremark and
`Time Warner into the final version of the declaration submitted in
`connection with the present Petition demonstrates that he worked with
`attorneys representing Terremark or Time Warner to prepare his declaration
`for the present Petition. Mr. Bennett testified that he was confused by Patent
`Owner’s questioning and “may have misspoken” when he acknowledged
`that he incorporated some comments from attorneys representing Terremark
`and Time Warner into the final version of the declaration submitted in
`connection with the present Petition. Ex. 1013, 47:19–48:3. Furthermore,
`Mr. Bennett’s participation on the present IPR is independent of his
`involvement in IPR2015-01486. Id. at 46:13–21, 47:9–13, 76:20–25. Mr.
`Bennett testified that he did not work, interact, or discuss the present Petition
`with attorneys representing Terremark or Time Warner. Id. at 46:6–47:8,
`47:14–49:2.
`There is insufficient evidence of record that Terremark or Time
`Warner controls or even had an opportunity to control CoxCom’s decision to
`file or maintain this inter partes review. Accordingly, we are not persuaded
`that Petitioner has failed to name Terremark or Time Warner as real parties
`in interest.
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`B.
`
`Level of Ordinary Skill in the Art
`
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(citation omitted). Petitioner asserts that a person of ordinary skill in the art
`in the field of the ’130 patent would have had a bachelor’s degree in
`engineering or equivalent coursework and at least two years of experience in
`networked systems. Pet. 12 (citing Ex. 1002 ¶ 17).
`Patent Owner does not address Petitioner’s statements regarding the
`level of ordinary skill in the art, but asserts that we should accord little or no
`weight to the testimony of Mr. Bennett because Mr. Bennett fails to qualify
`as a person of ordinary skill in the art under his own definition. PO Resp.
`25–34.
`The ’130 patent is directed to controlling a vehicle or premises.
`Ex. 1001, Abst. It describes the relevant problems encountered in the art as
`those involved in the control, monitoring, or security of vehicles or
`premises, in a network environment. Id. at 1:20–53; 3:8–15. The ’130
`patent is not directed to specific issues associated with electrical circuits or
`electrical connections between devices. The Specification identifies no
`specific problem that stems from the apparatus being a particular type of
`electrical device. From this evidence, we conclude that a person of ordinary
`skill in the art with respect to the ’130 patent would be skilled in the field of
`networked systems.
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`For the foregoing reasons, we are not persuaded that the level of
`ordinary skill in the art requires specific coursework or education in the form
`of a degree in electrical engineering. Instead, we are persuaded by
`Petitioner’s statement of the level of ordinary skill in the art, and our finding
`of the level of ordinary skill is similar to that proposed by Petitioner, but
`with a slight modification, i.e., that a basic level of experience is required, at
`the level of at least two years of experience in networked systems.
`We find that the level of ordinary skill in the art is that of one having
`at least two years of working experience with networked systems. A more
`advanced degree would be paired with a shorter period of working
`experience.
`
`C.
`
`Expert Testimony
`
`Patent Owner did not file specifically a motion to exclude Mr.
`Bennett’s testimony as inadmissible, but requests, in its Response, that we
`accord little or no weight to the testimony of Mr. Bennett because Mr.
`Bennett fails to qualify as a person of ordinary skill in the art under his own
`definition. PO Resp. 25–34.
`Patent Owner has not articulated a persuasive reason for giving Mr.
`Bennett’s testimony little or no weight. Moreover, as discussed above, we
`are not persuaded that a person of ordinary skill in the art of the ’130 patent
`would be required to have a specific degree or coursework in electrical
`engineering. We are, thus, not persuaded that Mr. Bennett’s answers, during
`deposition, to questions about his background are wrong or that the entirety
`of his testimony should be given little or no weight based on this testimony.
`We find Mr. Bennett to be highly qualified in the area of networked
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`systems. In his declaration, Mr. Bennett stated
`I worked as a computer programmer, network engineer, and
`system architect from 1977 until 2009 with a number of
`computer networking firms, including those that produced tele-
`video systems such as Hewlett-Packard, Sharp Labs,
`Compression Labs, Sony Electronics Laboratory, Starlight
`Networks, Fourth Network, 3Com, Intel, and Cisco. In the
`course of my professional career, I developed network protocols
`and applications, video servers, television remote control
`systems, ad insertion equipment for TV broadcasters, and
`Quality of Service mechanisms for networks that enabled high-
`quality video streaming and remote control of video streaming.
`
`Ex. 1002 ¶ 7. Moreover, Mr. Bennett states “[a]t the time of the invention in
`question, I was a software developer working on a video-on-demand server
`at Hewlett-Packard.” Id. ¶ 12.
`We are persuaded that Mr. Bennett’s education and experience is
`relevant to the issues discussed in the ’130 patent. Moreover, given the
`subject matter of the ’130 patent and Mr. Bennett’s experience in software
`development and networked systems, we do not find his admitted lack of a
`degree in electrical engineering (see Ex. 2006, 34) as basis to accord his
`testimony little or no weight. On this record, we still credit the testimony of
`Mr. Bennett. Mr. Bennett’s lack of an electrical engineering degree does not
`establish that his specialized knowledge in the area of networked systems
`will not assist the Board in understanding the evidence. See Fed. R. Evid.
`702.
`
`Under 37 C.F.R. § 42.1(d), we apply the preponderance of the
`evidence standard in determining whether Petitioner has established
`unpatentability. In doing so, it is within our discretion to determine the
`appropriate weight to be accorded the evidence presented, including expert
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`opinion, based on the disclosure of the underlying facts or data upon which
`that opinion is based. Thus, we decline to make a determination about Mr.
`Bennett’s opinion, as a whole. Rather, in our analysis we will consider
`relevant portions of Mr. Bennett’s testimony and determine the appropriate
`weight to accord that particular testimony.
`
`D. Claim Construction
`
`In the Decision to Institute, we noted that the ’130 patent was expired.
`Dec. 4. The parties have acknowledged the expiration of the ’130 patent.
`PO Resp. 11; Reply 2. For claims of an expired patent, the Board’s claim
`interpretation is similar to that of a district court. See In re Rambus, Inc.,
`694 F.3d 42, 46 (Fed. Cir. 2012). “In determining the meaning of the
`disputed claim limitation, we look principally to the intrinsic evidence of
`record, examining the claim language itself, the written description, and the
`prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic
`Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing
`Phillips v. AWH Corp., 415 F. 3d 1303, 1312–17 (Fed. Cir. 2005)).
`We are mindful that “limitations are not to be read into the claims
`from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
`1993). Nevertheless, claims are not interpreted in a vacuum but are part of
`and read in light of the specification. United States v. Adams, 383 U.S. 39,
`49 (1966) (“[I]t is fundamental that claims are to be construed in the light of
`the specifications and both are to be read with a view to ascertaining the
`invention.”). In that regard, the terms are given their ordinary and
`customary meaning, as would be understood by one of ordinary skill in the
`art in the context of the Specification. In re Translogic Tech., Inc., 504 F.3d
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`1249, 1257 (Fed. Cir. 2007). The construction that stays true to the claim
`language and most naturally aligns with the inventor’s description is likely
`the correct interpretation. Renishaw PLC v. Marposs Societa’ per Azioni,
`158 F.3d 1243, 1250 (Fed. Cir. 1998).
`For purposes of the Decision to Institute, we construed the terms
`“remote,” “premises,” and “located at.” Dec. 7. We reviewed and adopted
`Patent Owner’s explicit definitions for these terms, which Patent Owner
`provided in the prosecution of the application that issued as the ’130 patent.
`Dec. 7 (citing Ex. 2002). Based on our review of the full record, we discern
`no reason to modify or further discuss in this Final Written Decision our
`constructions for these claim terms. For convenience, these claim
`constructions are reproduced in the table below.
`Term
`Citations
`Construction
`Premises
`Ex. 2002, 4;
`A building or a structure and the
`Ex. 2003, 8–9
`grounds or parcel of land
`associated with the building or the
`structure, or a building or structure
`or a portion, room, or office, of or
`in the building or structure, or a
`home, mobile home, mobile
`building, mobile structure,
`residence, residential building,
`office, commercial building,
`commercial office, structure,
`equipment, facility, machine, rig,
`assembly line, or edifice.
`Separate and apart from, or
`external from, or at a distance
`from or distant from, or not
`located in.
`Situated at, situated in, or situated
`on.
`
`Ex. 2003, 3–4;
`Ex. 2002, 10–11
`
`Remote
`
`Located at
`
`Ex. 2003, 8;
`Ex. 2002, 5
`
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`
`In its Response, Patent Owner proposes an additional construction for
`“control device.” PO Resp. 12–13. We determine that it is not necessary to
`construe expressly this term to resolve the controversy here. To the extent it
`is necessary for us to construe any additional claim terms in this decision,
`we do so below in the context of analyzing whether the prior art renders the
`claims unpatentable.
`
`E.
`
`The Koether and Crater References Are Prior Art
`
`Petitioner argues that claims 1, 8, 12, 17, 98, 145, and 149 would have
`been obvious over Koether. Pet. 14–39. Petitioner argues that claims 10,
`119, and 124 would have been obvious over the combination of Koether and
`Crater. Id. at 39–47. Koether was filed on May 2, 1996. Pet. 14; Ex. 1008
`at [22]. Crater was filed on May 30, 1996. Pet. 39; Ex. 1009 at [22].
`Petitioner argues that the challenged claims are entitled to a priority date of
`no earlier than July 18, 1996 because the only support for a processing
`device located at a premises was added to the specification as part of a
`continuation-in-part (“CIP”) application (U.S. Patent Application No.
`08/683,828) filed on July 18, 1996 (“July 1996 application”). Pet. 12–13.
`In the Institution Decision, we determined that Koether and Crater are
`102(e) prior art to the challenged claims of the ’130 patent. Dec. 8, 14. In
`response, Patent Owner argues the instituted claims of the ’130 patent are
`entitled to a priority date of March 27, 1996 (“March 1996 application”).
`PO Resp. 15–25; Ex. 1001 at [63].
`Entitlement to the March 27, 1996 filing date would allow Patent
`Owner to antedate Koether and Crater, thereby removing them as references
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`against the claims. To determine whether Patent Owner is entitled to the
`March 27, 1996 priority date, we must determine if the March 1996
`application disclosure meets the written description requirement for the
`instituted claims. “To satisfy the written description requirement the
`disclosure of the prior application must ‘convey with reasonable clarity to
`those skilled in the art that, as of the filing date sought, [the inventor] was in
`possession of the invention.’” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,
`1563–1564 (Fed. Cir. 1991).
`We agree with Petitioner that in this case, there is no reason to
`presume that claims in the CIP July 1996 application are entitled4 to the
`effective filing date of the earlier filed March 1996 application. See
`PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1305 (Fed. Cir.
`2008). Thus, we review Patent Owner’s arguments as to why the limitations
`of the instituted claims were conveyed with reasonable clarity to those
`skilled in the art to show that the inventor was in possession of the invention
`as of March 27, 1996.
`Upon review of the full record, we conclude that the March 1996
`application does not provide a written description of “premises” as set forth
`in the instituted claims for the following reasons.
`As Petitioner points out, the March 1996 application never mentions
`the word “premises.” Pet. 13; Ex. 1004. Petitioner asserts that the only
`support for a processing device located at a “premises” was added to the
`specification as part of a continuation-in-part application filed on July 18,
`
`
`4 Patent Owner does not dispute that it must come forward with evidence to
`prove entitlement to claim priority to the earlier filing date of the March
`1996 application. See PO Resp. 13–24.
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`1996. Id. Petitioner argues that in contrast to the March 1996 application,
`the word premises is recited hundreds of times in the July 1996 application,
`which also added figures 15 and 16 corresponding to the added disclosure.
`Reply 10.
`In its Response, Patent Owner does not dispute that the March 1996
`application fails to use the word “premises,” but argues that the March 1996
`application includes various elements that show that Patent Owner claimed a
`premises. PO Resp. 17–18. In particular, Patent Owner points to Figure
`11B, which Patent Owner argues shows a server computer 952 located at a
`premises identified as a processing site, and a computer 970 at a premises
`identified as a central security office. Id.
`Patent Owner argues that a disclosure in Figure 11B in the March
`1996 application of a server computer at a processing site and a computer at
`a central security office shows possession of the subject matter of claim 1.
`Id. Yet, we must look to the claim scope and not merely whether the
`concept of a site or office was disclosed in isolation in the March 1996
`application. It is important review the language of claim 1 of the ’130
`patent, which does not merely recite a disclosure “premises” in isolation. In
`other words, to determine if Patent Owner had possession of the claimed
`subject matter, we must determine more than just whether the mere concept
`of a premises is disclosed. We look to the scope of claim 1, which is
`reproduced below with certain key limitations emphasized:
` 1. A control apparatus, comprising:
`a first control device, wherein the first control device at least
`one of generates and transmits a first signal for at least one of
`activating, de-activating, disabling, and re-enabling, at least one
`of a premises system, a premises device, a premises equipment,
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`a premises equipment system, and a premises appliance, of a
`premises, wherein the first control device is located at the
`premises,
`wherein the first control device is responsive to a second signal,
`wherein the second signal is at least one of generated by and
`transmitted from a second control device, wherein the second
`control device is located at a location which is remote from the
`premises, wherein the second signal is transmitted from the
`second control device to the first control device, and further
`wherein the second signal is automatically received by the first
`control device,
`wherein the second control device is responsive to a third
`signal, wherein the third signal is at least one of generated by
`and transmitted from a third control device, wherein the third
`control device is located at a location which is remote from the
`premises and remote from the second control device, wherein
`the third signal is transmitted from the third control device to
`the second control device, and further wherein the third signal
`is automatically received by the second control device.
`
`Ex. 1001, 74:59–75:19 (emphases added).
`Moreover, Patent Owner has urged a definition of the word
`“premises,” which we have adopted, to mean: “a building or a structure and
`the grounds or parcel of land associated with the building or the structure, or
`a building or structure or a portion, room, or office, of or in the building or
`structure, or a home, mobile home, mobile building, mobile structure,
`residence, residential building, office, commercial building, commercial
`office, structure, equipment, facility, machine, rig, assembly line, or edifice.”
`PO Resp. 11.
`This broad construction of premises is supported only by material
`added in the July 1996 application. In fact, Patent Owner cited only to
`language first introduced in the July 1996 application to support this broad
`
`16
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`
`
`IPR2015-01760
`Patent 6,549,130 B1
`
`construction. See Paper 7 at 18; Ex. 2002 at 4, Ex. 2003 at 8–9, Ex. 1018 at
`7–8, Ex. 1019 at 3. Moreover, during oral hearing, Patent Owner
`acknowledged the “assembly line” disclosure was added to the July 1996
`application. Tr. 27:1–28:17.
`Patent Owner has not explained adequately how the server and
`computer in Figure 11B show possession of the premises recited in claim 1.
`As Patent Owner appears to acknowledge, Figure 11B relates to a vehicle
`control system and not a premises control system. PO Resp. 19. Thus, we
`are not persuaded that Figure 11B shows possession of, for example, “at
`least one of a premises system, a premises device, a premises equipment, a
`premises equipment system, and a premises appliance, of a premises,
`wherein the first control device is located at the premises,” as recited in
`claim 1 (emphasis added).
`Additionally, the mere disclosure of a security office in the
`specification does not disclose the entire genus of “premises,” which by
`Patent Owner’s own definition encompasses many types of buildings,
`structures, and equipment, including an “assembly line.”5 Thus, even if we
`agreed with Patent Owner that there was some disclosure of a particular
`species of the genus of “premises” in the March 1996 application, this alone
`would not be sufficient to entitle the later claimed genus of “premises” to the
`filing date of the March 1996 application.
`While Patent Owner appears to argue that it does not need to show
`possession of its complete definition of “premises” to be entitled to the
`
`
`5 Patent Owner’s counsel, who is also listed as the inventor of the ’130
`patent, agreed at oral argument that the assembly line was only added in the
`July 1996 application. Tr. 28:10–11.
`
`17
`
`
`
`IPR2015-01760
`Patent 6,549,130 B1
`
`March 1996 filing date,6 we disagree. This conclusion would be untenable
`because it would allow Patent Owner to pick and choose one claim scope for
`purposes of showing written description, and choose another claim scope for
`purposes of invalidity. Cf., e.g., PowerOasis Inc., 522 F.3d at 1310
`(“PowerOasis’s argument boils down to a claim that PowerOasis is entitled
`to a broad claim construction for purposes of infringement and a different
`narrower claim construction for purposes of validity.”)
`Patent Owner argues that Petitioner’s expert agreed that one of
`ordinary skill in the art would have understood how to take a vehicle control
`system and modify it to provide premises control. PO Resp. 21–24. This is
`still not enough to entitle the instituted claims to a March 1996 priority date.
`“[T]he written description is ‘not a question of whether one skilled in the art
`might be able to construct the patentee’s device from the teachings of the
`disclosure. . . . Rather, it is a question whether the application necessarily
`discloses that particular device.’” PowerOasis, Inc., 522 F.3d at 1306
`(quoting Martin v. Mayer, 823 F.2d 200, 505 (Fed. Cir. 1987)); see also id.
`at 1310 (“Obviousness simply is not enough; the subject matter must be
`disclosed to establish possession.”)
`For the foregoing reasons, upon review of the entire record, we
`determine that the instituted claims are not entitled to the priority date of the
`March 1996 application because the written description of the March 1996
`
`
`6 Tr. 31:23–32:4 (“MR. JOAO: Well, I don't believe we need to have the
`disclosure of the complete definition, because the definition is in the
`disjunctive based on the different embodiments that are described in the
`various patent applications, but the term premises, as used in the disjunctive
`here, as defined in the disjunctive, a premises is defined as an office.”).
`
`18
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`IPR2015-01760
`Patent 6,549,130 B1
`
`application does not support the instituted claims. Thus, we conclude that
`Koether and Crater are 102(e) prior art to the instituted claims of the ’130
`patent.
`
`F.
`
`Alleged Obviousness of Claims 1, 8, 12, 17, 98, 145, and 149 by
`Koether and a Person Having Ordinary Skill in the Art
`
`1.
`
`Koether (Ex. 1008)
`
`Koether describes a smart commercial kitchen network that, in real-
`time, monitors and controls the maintenance and repair of kitchen or
`restaurant appliances. Ex. 1008, 3:50–53. Figure 1 is reproduced below.
`
`
`Figure 1 illustrates kitchen base stations 150 within respective cells
`105. Id. at 5:3–5. Each kitchen base station 150 is capable of
`
`19
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`IPR2015-01760
`Patent 6,549,130 B1
`
`communicating through wireless means with corresponding kitchen
`appliances 110. Id. at 5:5–8. Figure 2 is reproduced below.
`
`
`Figure 2 illustrates kitchen base station 150 communicating with
`microprocessor based controller 140; the microprocessor based controller
`communicates with kitchen appliance 110 to obtain diagnostic information
`pertaining to the operating condition of kitchen appliances 110 and the
`diagnostic information is communicated to control center 170. Id. at 5:60–
`6:9
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