throbber
IPR2015-01760
`U.S. Patent No. 6,549,130
`
`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
`U.S. Patent No. 6,549,130
`
`_____________
`
`PETITIONER’S REPLY
`
`
`
`
`
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`IPR2015-01760
`U.S. Patent No. 6,549,130
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`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`
`CLAIM CONSTRUCTION ............................................................................ 1
`
`III. PETITIONER HAS DEMONSTRATED THAT THE
`CHALLENGED CLAIMS ARE UNPATENTABLE .................................... 3
`
`A. Koether Teaches The Second Control Device Is Located
`Remote From The Premises of Claims 1, 98 and 145 .......................... 3
`
`B. Koether Discloses and/or Teaches The First Signal Is
`Transmitted From The First Control Device To The Premises
`Appliance Via A Wireless Device of Claim 8 ...................................... 6
`
`C.
`
`The Challenged Claims Are Not Entitled To A Priority Date
`Before July 18, 1996 ............................................................................. 7
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
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`6.
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`7.
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`8.
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`Patent Owner’s burden ................................................................ 7
`
`Patent Owner fails to meet its burden ......................................... 8
`
`The specification of the March 1996 Application
`provides no support for a “premises” system ............................. 9
`
`The intrinsic record provides no support for a “premises”
`system in the March 1996 Application ..................................... 11
`
`The figures of the March 1996 Application provide no
`support for a “premises” system ............................................... 12
`
`Patent Owner’s Response suggest that a “premises”
`system is not supported by the March 1996 Application ......... 12
`
`A “premises” system is not disclosed by the March 1996
`Application ................................................................................ 13
`
`The species of a home security system in the March 1996
`Application does not disclose the genus of a “premises”
`system ........................................................................................ 14
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`IPR2015-01760
`U.S. Patent No. 6,549,130
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`D. Mr. Bennett’s Testimony Should Be Considered Because Mr.
`Bennett is Qualified to Opine on the Perspective of a POSITA ......... 15
`
`E.
`
`F.
`
`The Petition Properly Names All Real Parties-In-Interest .................. 17
`
`Dependent Claims ............................................................................... 21
`
`IV. CONCLUSION .............................................................................................. 21
`
`
`
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`IPR2015-01760
`U.S. Patent No. 6,549,130
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`TABLE OF AUTHORITIES
`
`Cases
`Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co.,
`598 F.3d 1336 (Fed. Cir. 2010) .............................................................................. 9
`
`B/E Aerospace, Inc. v. MAG Aerospace Indus., LLC,
`IPR 2014-01513, Paper No. 104 (PTAB Mar. 18, 2016) ..................................... 16
`
`Gonzalez v. Banco Cent Corp.,
`27 F.3d 751 (1st Cir. 1994) ................................................................................... 18
`
`JP Morgan Chase & Co., et al. v. Maxim Integrated Prods., Inc.,
`CBM2014-00179, Paper No. 11 (PTAB Feb. 20, 2015) ............................... 17, 19
`
`Motorola Mobility, LLC v. Intellectual Ventures I, LLC,
`CBM2015-00004, Paper No. 33 (PTAB Mar. 21, 2016) ..................................... 16
`
`Mytee Prods., Inc. v. Harris Research, Inc.,
`439 F. App’x 882 (Fed. Cir. 2011) ....................................................................... 16
`
`PowerOasis, Inc. v. T-Mobile USA, Inc.,
`522 F.3d 1299 (Fed. Cir. April 11, 2008) ................................................ 7, 8, 9, 13
`
`Slip Track Sys., Inc. v. Metal-Lite, Inc.,
`304 F.3d 1256 (Fed. Cir. 2012) ............................................................................ 16
`
`Tronzo v. Biomet, Inc.,
`156 F.3d 1154 (Fed. Cir. 1998) ............................................................................ 14
`
`Vas-Cath Inc. v. Mahurkar,
`935 F.2d 1555 (Fed. Cir. June 7, 1991) ........................................................... 9, 10
`
`Statutes
`35 U.S.C. § 112 .......................................................................................................... 2
`
`Other Authorities
`Office Patent Trial Practice Guide,
`77 Fed. Reg. 48,680, 48,695 (Aug. 14, 2012) ...................................................... 17
`
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`IPR2015-01760
`U.S. Patent No. 6,549,130
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`LIST OF EXHIBITS
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`The following is a list of exhibits in support of this petition:
`
`EX-1001
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`EX-1002
`
`EX-1003
`
`EX-1004
`
`EX-1005
`
`EX-1006
`
`EX-1007
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`EX-1008
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`EX-1009
`
`EX-1010
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`EX-1011
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`EX-1012
`
`EX-1013
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`EX-1014
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`U.S. Patent No. 6,549,130
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`Declaration of Richard Bennett
`
`Curriculum Vitae of Richard Bennett
`
`U.S. Patent Application No. 08/622,749 filed on
`March 27, 1996 (“Mar 1996 application”)
`
`File History Excerpts from ‘130 Patent
`
`Excerpts from the Merriam-Webster Dictionary (10th ed. 1995)
`
`Excerpts from Concise Dictionary of Engineering: A Guide to
`the Language of Engineering (2014)
`
`U.S. Patent No. 5,875,430 to Koether et al., (“Koether”)
`
`U.S. Patent No. 5,805,442 to Crater et al., (“Crater”)
`
`Intentionally Omitted
`
`Claim Construction Order in Joao Control & Monitoring
`Systems, LLC v. Protect America,Inc., No. 1:14-cv-134,
`2015 WL 4937464 (W.D. Tex. Aug. 18, 2015)
`
`Claim Construction Order in Joao Control & Monitoring
`Systems, LLC v. Chrysler Grp. LLC, No. 4:13-cv-13957,
`slip op. (E.D. Mich. Jun. 10, 2016)
`
`Transcript of April 29, 2016 Deposition of Mr. Richard Bennett
`
`Transcript of June 3, 2016 Deposition of Dr. Val DiEuliis in
`related IPR No. IPR2015-01466
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`IPR2015-01760
`U.S. Patent No. 6,549,130
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`Transcript of March 3, 2016 Deposition of Mr. Richard Bennett
`in related IPR No. IPR2015-01477
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`Transcript of April 28, 2016 Deposition of Mr. Richard Bennett
`
`Additional File History Excerpts from ‘130 Patent
`
`File History Excerpts from ‘363 Patent
`
`File History Excerpts from ‘010 Patent
`
`EX-1015
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`EX-1016
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`EX-1017
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`EX-1018
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`EX-1019
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`IPR2015-01760
`U.S. Patent No. 6,549,130
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`
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`I.
`
`INTRODUCTION
`
`PETITIONER REPLY
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`Petitioner CoxCom LLC (“Petitioner” or “CoxCom”) submits this Reply to
`
`Patent Owner’s Response (Paper 14) to the Petition for Inter Partes Review of U.S.
`
`Patent No. 6,549,130.
`
`Patent Owner’s proposal to construe an additional claim term is not needed
`
`because it is not relevant to any issue raised. Patent Owner’s arguments against the
`
`instituted invalidity counts are without merit and consist entirely of attorney
`
`argument with no expert testimony offered in support. All grounds presented in the
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`Petition and instituted by the Board demonstrate the challenged claims are
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`unpatentable and should be canceled.
`
`II. CLAIM CONSTRUCTION
`For the purpose of this IPR proceeding, Petitioner does not contest the
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`Board’s construction of “remote,” “premises,” and “located at,” and its application
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`of the plain and ordinary meaning to the remaining terms.1
`
`Patent Owner requests the Board to adopt the claim construction of “control
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`device” as defined during prosecution of a related patent (U.S. Patent No.
`
`
`1 Petitioner reserves all rights to propose constructions for additional terms in
`litigation or other proceedings.
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`1
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`IPR2015-01760
`U.S. Patent No. 6,549,130
`7,397,363).2 Paper 14 at 12-13. This definition is consistent with the constructions
`
`of “control device” the Patent Owner advocated for in cases before the U.S.
`
`District Courts for the Western District of Texas and the Eastern District of
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`Michigan. See Ex. 1011 and 1012.
`
`In the Eastern District of Michigan case, the Court found Patent Owner’s
`
`construction to be “too broad” and construed “control device” to be “a device that
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`directs the activity of another device.” Ex. 1012 at 7-8. The Court held that “[t]his
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`construction most naturally aligns with the intrinsic evidence of claim language
`
`and written description of the patent.” Id.
`
`Since the ‘130 Patent has already expired the proper claim construction
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`standard to apply is “according to the standard applied by the district courts.”
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`Paper 8 at 4-5. Thus, for purposes of this IPR, Petitioner submits that “control
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`device” be construed as “a device that directs the activity of another device.”
`
`
`2 Petitioner does not raise any written description or indefiniteness issues with the
`challenged claims, because IPR petitioners are not authorized to challenge claims
`under 35 U.S.C. § 112. However, Petitioner explicitly reserves the right to raise
`Section 112 issues in this or any other proceeding.
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`2
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`IPR2015-01760
`U.S. Patent No. 6,549,130
`III. PETITIONER HAS DEMONSTRATED THAT THE CHALLENGED
`CLAIMS ARE UNPATENTABLE
`A. Koether Teaches The Second Control Device Is Located Remote
`From The Premises of Claims 1, 98 and 145
`
`Patent Owner’s entire argument hinges on an interpretation of the term
`
`“premises” that is both confusing and self-serving. In its Response, Patent Owner
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`expressly agrees with the Board’s construction of premises (Paper 14 at 11) and
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`then later disagrees with the Board’s construction (Paper 14 at 44-47) by
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`requesting a modification that eliminates from the construction “a portion…of or in
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`the building or structure.” Paper 14 at 11, 44-47. Patent Owner requests this
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`modification based on arguments that the context of the ‘130 patent specification
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`fails to support “a portion…of or in the building or structure” as part of the
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`construction. What is even more confusing is that Patent Owner proposed the
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`construction adopted by the Board and claimed, in its Preliminary Response, that
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`the construction “is also supported by and is consistent with the Specification of
`
`the ‘130 Patent, including the written description, the drawings and the claims.”
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`Paper 7 at 20-21.
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`Patent Owner’s position is self-serving. In its Preliminary Response, Patent
`
`Owner vehemently argued that the intrinsic record of the ‘010 and ‘363 patents3
`
`
`3 The ‘363 Patent is continuation in part of U.S. Patent No. 6,542,076 which is a
`continuation in part of the ‘130 patent. The ‘010 Patent is a continuation in part of
`3
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`were relevant to the construction of the term “premises” and that “the ‘130, ‘010
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`and ‘363 Applicant had chosen to be his own lexicographer.” Paper 7 at 16-17, 18.
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`Patent Owner cannot now avoid portions of the express definition it relied upon for
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`its construction and the intrinsic record of the ‘010 and ‘363 patents because they
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`now appear to be unfavorable for it. One such example is the portion of the
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`intrinsic record of the ‘010 and ‘363 patents where the patentee broadly defines a
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`“commercial premises” (a subset of a premises) in a manner that would include “a
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`portion…of or in the building or structure.” ‘363 Patent at 91:1-15, ‘010 Patent at
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`94:38-52. Further, in this IPR, the Board based its construction on Patent Owner’s
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`argument that the patentee acted as his own lexicographer; thus, the Patent Owner
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`should not be permitted to modify a construction when faced with a strong
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`invalidity challenge.
`
`Even if Patent Owner’s flawed interpretation of “a portion…of or in the
`
`building or structure” is accepted, Koether still teaches a second control device that
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`is located remote from the premises. The adopted construction of “premises”
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`includes “equipment” or a “machine.” Paper 9 at 7. Each kitchen appliance of
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`Koether, such as “ovens, and cooling systems, such as refrigerators and HVAC
`
`systems” is separately a piece of equipment or a machine. Ex. 1008 at 1:19-23,
`
`
`U.S. Patent No. 6,542,077 which is a continuation in part of U.S. Patent No.
`6,542,076 which is a continuation in part of the ‘130 patent.
`4
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`4:30-35. Accordingly, as construed in accordance with Patent Owner’s own
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`proposed construction, each kitchen appliance would be a separate premises and
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`would be remote from the kitchen base station, which serves as the second control
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`device.
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`To distinguish Koether, Patent Owner argues that the Koether system is
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`limited to “the radio coverage area that is defined by the kitchen base station that is
`
`associated with each defined ‘cell.’” Paper 14 at 50. This is incorrect. As
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`explained by the Board, “Koether teaches a kitchen base station that may be in a
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`different portion of a building or room from an application with which it
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`communicates.” Paper 8 at 13. Further, as Mr. Bennett testified, “the premises
`
`would be the portion of the kitchen in which the appliance is located.” Ex. 1016 at
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`81:20-22, 84:16-20 (“The premises would be the portion of the room in which the
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`blender is located at any given time.”) It also would have been obvious for the
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`kitchen appliance and kitchen base station to be remote from one another given the
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`geographical coverage and wireless communication methods expressly disclosed in
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`Koether. Paper 1 at 22, Ex. 1002 at ¶34.
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`This is even more evident from the disclosure of Koether that the kitchen
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`base station can control up to forty kitchen appliances (Ex. 1008 at 4:30-35) that
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`includes HVAC systems among the various appliances that can be controlled, as
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`such systems are typically located outdoors and not within the kitchen where the
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`kitchen base station is located. Ex. 1008 at 4:32-36.
`
`B. Koether Discloses And/Or Teaches The First Signal Is
`Transmitted From The First Control Device To The Premises
`Appliance Via A Wireless Device of Claim 8
`
`As the Board recognizes, Koether teaches this limitation by disclosing the
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`“microprocessor controller 140 communicating with kitchen appliances 110 using
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`RF communications.” Paper 8 at 11. Koether expressly describes that each
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`kitchen appliance can communicate using a wireless device such as an RF
`
`transmitter or through a wire data link. Ex. 1008 at 4:25-30.
`
`Patent Owner argues that Koether is limited to an integrated system where
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`the microprocessor controller is integrated with the kitchen appliance and where
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`the controller and appliance cannot communicate wirelessly. On the contrary,
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`Koether simply describes a “one-to-one relationship” between the microprocessor
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`controller and the kitchen appliance where “the microprocessor controller could be
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`integrated into the kitchen appliance or it could be connected to the kitchen
`
`appliance.” Ex. 1016 at 111:9-19 (emphasis added), Ex. 1008 at Figs. 1-2, 4:25-29,
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`8:26-34.
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`Koether also describes wireless communication between the kitchen
`
`appliance and the microprocessor controller. Ex. 1008 at Figs. 1-2, 4:25-29, 5:13-
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`19, 7:46-49, 8:26-34. Figure 1 of Koether illustrates each kitchen appliance A1-
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`A11 with its own antenna. Id. at Fig.1. Koether also advocates for wireless systems
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`because of the disadvantages of wired systems such as wires being inadvertently
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`cut. Id. at 5:13-20. Koether also describes prior art microprocessor controllers that
`
`can communicate with multiple kitchen appliance. Id. at 4:26-27, 4:37-51, Ex.
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`1002 at ¶¶27, 38. One of ordinary skill in the art would have understood that the
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`microprocessor controller and kitchen appliance would communicate wirelessly
`
`because of Koether’s discussion of prior art microprocessor controllers that could
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`communicate with multiple appliances and the advantages and pervasive use of
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`wireless communication. Paper 1 at 26, Ex. 1002 at ¶¶27, 38, Ex. 1008 at 4:26-27,
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`4:37-51, 5:13-19.
`
`C. The Challenged Claims Are Not Entitled To A Priority Date
`Before July 18, 1996
`1.
`Patent Owner has the burden to “come forward with evidence to prove
`
`Patent Owner’s burden
`
`entitlement to claim priority to an earlier filing date.” PowerOasis, Inc. v. T-Mobile
`
`USA, Inc., 522 F.3d 1299, 1305-1306 (Fed. Cir. April 11, 2008); see also id. at
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`1303 (“When a dispute arises concerning whether a CIP patent is entitled to
`
`priority to the date of the original application and the Patent Office has not
`
`addressed the issue, the burden of proof ordinarily should rest with the party
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`claiming priority to the date of the original application.”).
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`U.S. Patent No. 6,549,130
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`“When neither the PTO nor the Board has previously considered priority,
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`there is simply no reason to presume that claims in a CIP application are entitled to
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`the effective filing date of an earlier filed application.” Id. at 1305. Here, neither
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`the PTO nor the Board previously considered the priority of the challenged claims;
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`thus, the presumption is that the challenged claims are entitled to the later filing
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`date of the July 1996 application. Petitioner having satisfied its burden of
`
`production to establish a prima facie case of obviousness (Paper 8 at 13, 15-17),
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`the burden now rests with Patent Owner to present evidence that the challenged
`
`claims are entitled to a priority date earlier than July 1996.
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`Patent Owner fails to meet its burden
`
`2.
`Patent Owner fails to meets this burden. Patent Owner only provides
`
`attorney argument; Patent Owner does not present any evidence, for example by
`
`expert declaration, to establish the perspective of a person of ordinary skill in the
`
`art. See id. at 1307 (the Court held that PowerOasis’ presentment of the Original
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`Application and an expert declaration as its only evidence to prove priority of later
`
`filed claims to the earlier original application was insufficient.)
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`This is a critical issue because in order to meet its burden, Patent Owner
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`must present evidence sufficient to show the March 1996 disclosure meets the
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`written description requirement for the challenged claims. “To satisfy the written
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`description requirement the disclosure of the prior application must ‘convey with
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`U.S. Patent No. 6,549,130
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`reasonable clarity to those skilled in the art that, as of the filing date sought, [the
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`inventor] was in possession of the invention.’” Id. at 1306 (citing Vas-Cath Inc. v.
`
`Mahurkar, 935 F.2d 1555, 1563-1564 (Fed. Cir. June 7, 1991). Possession goes
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`beyond whether the term premises or the concept of a premises is mentioned once
`
`in the specification. “[T]he subject matter must be disclosed to establish
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`possession.”4 Id. at 1310.
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`3.
`
`The specification of the March 1996 Application provides
`no support for a “premises” system
`
`Patent Owner is unable to establish that it was in possession of a premises
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`system of the type claimed in the ‘130 patent or even the concept of a premises
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`system in the March 1996 Application. Patent Owner relies on a single mention of
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`a home security system and a Figure (Fig. 11B) as allegedly supporting disclosure
`
`of a premises system in the March 1996 application. Paper 14 at 16-20. This bare
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`bones disclosure however, is not sufficient to prove that the challenged claims are
`
`entitled to a March 1996 priority date. Ariad Pharmaceuticals, Inc. v. Eli Lilly and
`
`Co., 598 F.3d 1336 (Fed. Cir. 2010)(“the specification must describe an invention
`
`
`4 In PowerOasis, the Court determined that the disclosure of a vending machine
`with a display or user interface in the original application was not sufficient
`support for claims directed to a vending machine with a customer interface on a
`laptop in a CIP Application to claim the benefit of the filing date of the original
`application. Id. at 1309-1311.
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`understandable to that skilled artisan and show that the inventor actually invented
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`the invention claimed.”)
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`Patent Owner also cannot dispute that the term “premises” does not appear
`
`anywhere in the specification of the March 1996 application. The absence of
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`disclosure of “premises” or related subject matter is contrasted by the fact
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`“premises” is recited over five hundred times in the specification of the July 1996
`
`application. The July 1996 application adds at least two Figures (Figs. 15 and 16)
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`and over 9 columns of disclosure strictly directed to the “premises” subject matter
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`that are completely absent from the March 1996 application. Simply mentioning
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`home security system once within the specification of the March 1996 application
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`is not sufficient to disclose subject matter that reflects the entire functionality and
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`structure of the “premises” system described in the challenged claims.
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`Mentioning home security system once within the specification is also not
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`sufficient to convey that the patentee invented the claimed “premises” system. Vas-
`
`Cath Inc., 935 F.2d at 1561. The claimed premise system must be commensurate
`
`with the scope of “premises” defined by patentee. Ex. 2002 at 4, Ex. 2003 at 8-9,
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`Ex. 1018 at 7-8, Ex. 1019 at 3. A home security system is not sufficient to meet the
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`scope of a “premises” system and Patent Owner fails to provide any evidence to
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`prove otherwise.
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`4.
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`The intrinsic record provides no support for a “premises”
`system in the March 1996 Application
`
`The intrinsic record of the ‘363, ‘010 and ‘130 patents confirm that there is
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`no support in the March 1996 application for the claimed premises systems of the
`
`challenged claims. During prosecution of the related ‘363 and ‘010 patents, the
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`patentee had every opportunity to show the March 1996 application provides
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`written description support for the term “premises,” but failed to do so. Rather,
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`when the Applicant filed Remarks to define the term “premises,” the Applicant
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`was only able to cite to portions of the July 1996 application to support its
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`definition. Ex. 2002 at 4, Ex. 2003 at 8-9, Ex. 1018 at 7-8, Ex. 1019 at 3. These
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`Remarks -- that include no written description support for “premises” from the
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`March 1996 application -- are the basis for the Board’s construction of “premises,”
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`and Patent Owner solely relied on these July 1996 Remarks to advance its
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`construction of “premises.” Paper 8 at 7-9, Paper 7 at 18, Ex. 2002 at 4, Ex. 2003
`
`at 8-9, Ex. 1018 at 7-8, Ex. 1019 at 3.
`
`Similarly, when the Applicant submitted claims that recite “the premises is
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`at least one of a residential premises, a residential building, and a home[.]” and
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`“the premises is at least one of a mobile home and a mobile premises[.]”, the
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`Applicant again only pointed to portions of the July 1996 application to support the
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`claims. Ex. 1017 at 35, 37, 50, 76, 77, 234, 242, 254 (emphasis added). Patent
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`IPR2015-01760
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`Owner now argues that because “the term ‘home’ explicitly appears in the
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`definition of ‘premises’” (Paper 14 at 20) there is a connection to the March 1996
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`disclosure. However, in defining “premises” during prosecution, the patentee only
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`identified the July 1996 application as providing written description support for
`
`that term. Paper 14 at 20, Ex. 2002 at 4, Ex. 2003 at 8-9.
`
`5.
`
`The figures of the March 1996 Application provide no
`support for a “premises” system
`
`Patent Owner also relies on Figure 11B and its accompanying disclosure to
`
`support its argument that “premises” is supported by the March 1996 application.
`
`Paper 14 at 16-20. However, Patent Owner even acknowledges that Figure 11B
`
`and its accompanying disclosure is limited to a vehicle; not a premises. Paper 14 at
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`19. Thus, Figure 11B is irrelevant to this issue.
`
`6.
`
`Patent Owner’s Response suggest that a “premises” system
`is not supported by the March 1996 Application
`
`Patent Owner’s Response also suggests that “premises” is not supported by
`
`the March 1996 application. Paper 14 at 47-48. Patent Owner pushes for a
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`modification of the interpretation of “premises” by citing to Cols. 2:62-3:06 of the
`
`‘130 patent. Id. The cited portion of the ‘130 patent only appears in the July 1996
`
`application, not the March 1996 application.
`
`US2008 11760034 6
`
`
`12
`
`
`

`
`IPR2015-01760
`U.S. Patent No. 6,549,130
`
`7.
`
`A “premises” system is not disclosed by the March 1996
`Application
`
`Contrary to Patent Owner’s assertions, Petitioner’s expert did not concede
`
`that by March 1996 a person of ordinary skill in the art would understand how to
`
`take a vehicle control system and modify it to a premise control system. Mr.
`
`Bennett specifically noted that in 1996 to modify a vehicle control system to a
`
`premise control system many of the features of the vehicle control system would
`
`need to be discarded and replaced with a new set of features applicable to the
`
`home. Ex. 1016 at 53:6-11. Mr. Bennett also noted that additional features may
`
`need to be created as well. Id. at 53:25-54:7.
`
`Even if the Patent Owner could prove that one of ordinary skill in the art
`
`would modify a vehicle control system to a premise control system, that is still not
`
`enough to entitle the challenged claims to receive 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; see also id. at 1310 (“Obviousness
`
`simply is not enough; The subject matter must be disclosed to establish
`
`possession.”) As explained above, the March 1996 application does not disclose
`
`“premises.”
`
`US2008 11760034 6
`
`
`13
`
`
`

`
`IPR2015-01760
`U.S. Patent No. 6,549,130
`
`8.
`
`The species of a home security system in the March 1996
`Application does not disclose the genus of a “premises”
`system
`
`Patent Owner appears to be arguing that the disclosure of a species (home
`
`security system) in the March 1996 application also resulted in the disclosure of
`
`the genus (premises system). Yet, the March 1996 application does not even
`
`appear to disclose the species. Eluding to the invention being used on a home
`
`security system without additional disclosure fails the written description
`
`requirement as the specification provides no detail on how such a system could be
`
`implemented.
`
`Assuming arguendo that Patent Owner could establish support for a home
`
`security system, disclosing the home security system would still not entitle the
`
`premises system to a March 1996 priority date. Per Patent Owner’s own
`
`construction of premises, such a system is much broader than a home security
`
`system. Simply disclosing a species in an earlier application does not entitle the
`
`later claimed genus to the filing date of the earlier application. See Tronzo v.
`
`Biomet, Inc., 156 F.3d 1154, 1159 (Fed. Cir. 1998)(held that claims directed to all
`
`cup shapes in a CIP were not disclosed literally or inherently by an earlier filed
`
`application that only disclosed conical shaped cups.) As explained above, the
`
`genus of “premises” is not literally or inherently disclose based on the disclosure of
`
`the species of “home.”
`
`US2008 11760034 6
`
`
`14
`
`
`

`
`IPR2015-01760
`U.S. Patent No. 6,549,130
`D. Mr. Bennett’s Testimony Should Be Considered Because Mr.
`Bennett is Qualified to Opine on the Perspective of a POSITA
`
`Patent Owner argues that Mr. Bennett’s testimony should be given little to
`
`no weight because he is not a POSITA. Paper No. 14 at 25-26. Yet, it is without
`
`question or dispute that Mr. Bennett qualifies as an expert in this field.
`
`For example, Mr. Bennett began a forty year career in networked systems as
`
`a software engineer for Texas Instruments in 1977. Ex. 1015 at 210:2-9. By the
`
`time of the purported invention in 1996, he “had been a professional computer
`
`engineer for 19 years,” Ex. 1013 at 64:17-18, and was then working as a software
`
`developer on a video-on-demand server at Hewlett-Packard. Ex. 1002 at ¶ 11. As
`
`was “typical of people of [his] generation who are career, lifelong computer
`
`engineers,” Mr. Bennett did not receive a formal engineering degree, instead he
`
`received extensive on-the-job coursework and training from some of the nation’s
`
`premier technology companies, including Electronic Data Systems and Texas
`
`Instruments. Ex. 1015 at 211:17-213:9. Mr. Bennett has served many managerial
`
`roles in the field and widely participates in technical conferences, providing him
`
`with significant exposure to other POSITAs. Ex. 1003; Ex. 1013 at 10:3-24. Mr.
`
`Bennett is also an inventor or co-inventor of four issued patents which cover
`
`aspects of networked systems and video streaming across networks. Ex. 1003 at 4-
`
`5, Ex. 1015 at 49:15-50:10.
`
`US2008 11760034 6
`
`
`15
`
`
`

`
`IPR2015-01760
`U.S. Patent No. 6,549,130
`
`Mr. Bennett’s experience in the field makes him knowledgeable and
`
`qualified in the field of computer networking to provide testimony in this case. The
`
`law is clear that an expert witness “need not be a person of ordinary skill in the art,
`
`but rather may be ‘qualified in the pertinent art,’” B/E Aerospace, Inc. v. MAG
`
`Aerospace Indus., LLC, IPR 2014-01513, Paper No. 104 at 14 (PTAB Mar. 18,
`
`2016), and that a witness’ testimony is admissible if his or her “qualifications align
`
`with the challenged subject matter sufficiently so that his knowledge is helpful in
`
`understanding the evidence and determining facts in issue” and he or she can
`
`“competently opine on how a person having ordinary skill in the art would have
`
`understood the claims.” Motorola Mobility, LLC v. Intellectual Ventures I, LLC,
`
`CBM2015-00004, Paper No. 33 at 13 (PTAB Mar. 21, 2016). All that is necessary
`
`is that the witnesses’ “qualifications align with the challenged subject matter
`
`sufficiently so that his knowledge is helpful in understanding the evidence and
`
`determining facts in issue.” Motorola Mobility, CBM2015-00004, Paper No. 33 at
`
`14.5 Undisputedly, Mr. Bennett meets this standard.
`
`
`5 The Federal Circuit has likewise upheld the admission of the testimony of an
`expert who admitted that he was not a person of ordinary skill in the art because he
`“had experience relevant to the field of the invention.” Mytee Prods., Inc. v. Harris
`Research, Inc., 439 F. App’x 882, 886-87 (Fed. Cir. 2011); see also Slip Track
`Sys., Inc. v. Metal-Lite, Inc., 304 F.3d 1256, 1266 (Fed. Cir. 2012) (finding the
`testimony of a witnesses with forty years of experience in the industry to be
`probative, despite not having a formal engineering degree).
`16
`
`
`US2008 11760034 6
`
`
`

`
`IPR2015-01760
`U.S. Patent No. 6,549,130
`
`Although Patent Owner takes issue with Mr. Bennett’s formal education,
`
`they do not identify any substantive issue, including Mr. Bennett’s opinions on the
`
`claimed invention or prior art, that would be affected by the lack of a formal
`
`engineering degree. Indeed, Patent Owner’s own expert declarant in IPR2015-
`
`01466 (to a related patent), admits that the state of the art is not particularly
`
`advanced such that a bachelor’s degree in engineering is required. Ex. 1014 at
`
`28:25-29:7, 33:4-15.
`
`The Petition Properly Names All Real Parties-In-Interest
`
`E.
`The Petition properly names all of the real parties in interest by naming
`
`Petitioner CoxCom LLC, the sole real party in interest.
`
`“To challenge that identification of real party in interest a patent owner must
`
`provide sufficient rebuttal evidence to bring reasonably int

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