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 IPR: Unassigned
`____________________
`
`
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO.
`6,549,130 UNDER 35 U.S.C. §§311-319 AND 37 C.F.R. §§ 42.1-.80 & 42.100-.123
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`US2008 6649426 3
`
`
`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 6,549,130
`
`
`TABLE OF CONTENTS
`
`
`
`I.
`INTRODUCTION……………………………………………………..1
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1)…………....1
`A.
`Real party-in-interest under 37 C.F.R. § 42.8(b)(1)………………..1
`B.
`Related matters under 37 C.F.R. § 42.8(b)(2)……………………..2
`C.
`Lead and back-up counsel under 37 C.F.R. § 42.8(b)(3)&(4)……..3
`III. PAYMENT OF FEES…………………………………………………..3
`IV. REQUIREMENTS FOR INTER PARTES REVIEW………………….3
`A. Grounds for standing under 37 C.F.R. § 42.104(a)..……………...3
`B.
`Identification of challenge and relief requested –
`37 C.F.R. §42.104(b)………………………………………………….…..4
`V.
`BACKGROUND OF THE TECHNOLOGY AND PURPORTED
`INVENTION OF THE ‘363 PATENT.......................................................................4
`A.
`Background of the technology…………………………………….4
`B.
`Summary of the prosecution history of the ‘363 Patent .....................5
`C.
`Summary of the Challenged Claims .......................................................6
`D.
`Statement of Non-redundancy…………………………………….8
`VI. CLAIM CONSTRUCTION - 37 C.F.R. § 42.104(b)(3) .................................8
`A.
`“First Signal,” “Second Signal,” and “Third Signal” ............................9
`B.
`“Automatically Received” ..................................................................... 10
`C.
`“At least one of activate, de-activate, disable, re-enable, and
`control” ................................................................................................................ 11
`VII. PERSON HAVING ORDINARY SKILL IN THE ART (POSITA)...... 12
`VIII. THE CHALLENGED CLAIMS ARE NOT ENTITLED TO A
`PRIORITY DATE BEFORE JULY 18, 1996.......................................................... 12
`IX. HOW THE CHALLENGED CLAIMS ARE UNPATENTABLE UNDER
`37 C.F.R. § 42.104(b) ....................................................................................................... 13
`
`i
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 6,549,130
`
`
`A. Ground 1 – Claims 1, 8, 12, 15, 17, 98, and 145 Are
`Obvious over Koether in Light of the Knowledge of the Ordinary
`Skilled Artisan ........................................................................................................ 14
`B. Ground 2 – Claims 10, 15, 119 and 124 Are Obvious over Koether in
`Light of Crater and/or the Knowledge of the Ordinary Skilled Artisan
`................................................................................................................................. 40
`CONCLUSION.................................................................................................... 60
`
`
`
`
`X.
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`
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`ii
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`

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`
`
`
`
`Petition for Inter Partes Review of
`U.S. Patent No. 6,549,130
`
`
`LIST OF EXHIBITS
`
`The following is a list of exhibits in support of this petition:
`
`EX-1001
`
`EX-1002
`
`EX-1003
`
`EX-1004
`
`EX-1005
`
`EX-1006
`
`
`
`U.S. Patent No. 6,549,130
`
`Declaration of Richard Bennett
`
`Curriculum Vitae of Richard Bennett
`
`March 1996 Application
`
`File History Excerpts from the ‘130 Patent
`
`Excerpt from Merriam-Webster Dictionary (10th ed.
`
`1995)
`
`EX-1007
`
`Excerpt 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”)
`
`EX-1008
`
`EX-1009
`
`
`
`iii
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 6,549,130
`
`
`INTRODUCTION
`CoxCom LLC (“Petitioner”) respectfully requests inter partes review under 35
`
`I.
`
`U.S.C. § 311 and 37 C.F.R. § 42.100 of claims 1, 8, 10, 12, 15, 17, 98, 119, 124, 145
`
`and 149 (“the Challenged Claims”) of U.S. Patent No. 6,549,130 (“the ‘130 Patent”),
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`titled “Control and/or Monitoring Apparatus and Method” (Ex. 1001). The ‘130
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`Patent is believed to be owned by Joao Control & Monitoring Systems, LLC (“Joao”
`
`or “Patent Owner”).
`
`The ‘130 patent purports to solve a need for an improved premise security
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`system that “conveniently and effectively enable[s] one to exercise and/or to perform
`
`control, monitoring and/or security functions . . . [by] owners, occupants and/or
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`other authorized individuals to exercise and/or to provide control, monitoring and/or
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`security functions over these premises, from a remote location and at any time.” Ex.
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`1001 at 2:67-3:6. Systems for the control, monitoring, diagnosis, dispatch, and repair
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`of a premises from a remote location, however were previously disclosed in a number
`
`of prior art references.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1)
`
`A. Real party-in-interest under 37 C.F.R. § 42.8(b)(1)
`Pursuant to Rule 42.8(a)(1), the real party in interest for this Petition is
`
`CoxCom, LLC, a wholly owned subsidiary of Cox Communications, Inc.
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`1
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`

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`B. Related matters under 37 C.F.R. § 42.8(b)(2)
`
`Petition for Inter Partes Review of
`U.S. Patent No. 6,549,130
`
`
`Below is a chart listing the proceedings brought by the assignee, Joao that may
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`affect, or be affected, by a decision in the proceeding.
`
`CASES
`Joao v. LifeShield, Inc.
`Joao v. Telular Corporation
`Joao v. Mobile Integrated Solutions, LLC
`Joao v. Comverge, Inc.
`Joao v. Slomin’s, Inc.
`Joao v. Cox Communications, Inc.
`Joao v. Nissan North America, Inc.
`Joao v. Verizon Communications, Inc.
`Joao v. Time Warner Cable, Inc.
`Joao v. Consolidated Edison, Inc.
`Joao v. Volksvagen Group of America, Inc., et al.
`Alarm.com Incorporated v. Joao
`Joao v. Protect America, Inc.
`Joao v. FrontPoint Security Solutions LLC
`Joao v. Chrysler Corporation
`Joao v. Ford Motor Company
`Joao v. Lowe’s Companies, Inc.
`Joao v. Vivint Inc.
`Joao v. Chrysler Corporation
`Joao v. Ford Motor Company
`Joao v. City of Yonkers
`Joao v. Ford Motor Company
`Joao v. Xanboo, Inc., et al.
`
`2
`
`NUMBER DISTRICT
`2-15-cv-02772 PAED
`1-14-cv-09852 ILND
`2-14-cv-02643 AZD
`1-14-cv-03862 GAND
`2-14-cv-02598 NYED
`1-14-cv-00520 DED
`1-14-cv-00523 DED
`1-14-cv-00525 DED
`1-14-cv-00524 DED
`1-14-cv-00519 DED
`1-14-cv-00517 DED
`1-14-cv-00284 DED
`1-14-cv-00134 TXWD
`1-13-cv-01760 DED
`4-13-cv-13957 MIED
`4-13-cv-13615 MIED
`5-13-cv-00056 NCWD
`1-13-cv-00508 DED
`1-13-cv-00053 NYSD
`1-12-cv-01479 DED
`1-12-cv-07734 NYSD
`4-12-cv-14004 MIED
`2-12-cv-03698 CACD
`
`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 6,549,130
`
`
`Joao of California, LLC v. Sling Media, Inc., et al.
`Joao of California, LLC v. ACTI Corporation Inc., et
`al.
`
`3-11-cv-06277 CACD
`8-10-cv-01909 CACD
`
`C.
`
`Lead and back-up counsel under 37 C.F.R. § 42.8(b)(3)&(4)
`
`Petitioners designate the following counsel and provide service information in
`
`accordance with 37 C.F.R. § 42.8(b)(3)&(4). Pursuant to 37 C.F.R. § 42.10(b), Powers
`
`of Attorney accompany this Petition.
`
`For CoxCom, LLC
`
`Lead Counsel
`Mitchell G. Stockwell (Reg. No. 39,389)
`mstockwell@kilpatricktownsend.com
`Kilpatrick Townsend & Stockton LLP
`1100 Peachtree Street NE, Suite 2800 Atlanta, GA 30309-4528
`Phone: (404) 532-6959 Fax: (404) 541-3258
`
`Back-Up Counsel
`D. Clay Holloway (Reg. No. 58,011)
`cholloway@kilpatricktownsend.com
`
`III. PAYMENT OF FEES
`Payment of the required $23,000 fee for this Petition accompanies this Petition.
`
`Any additional fees associated with this Petition may be charged to Deposit Acct. No.
`
`20-1430.
`
`IV. REQUIREMENTS FOR INTER PARTES REVIEW
`A. Grounds for standing under 37 C.F.R. § 42.104(a)
`Petitioner certifies that (1) the ‘130 Patent is available for inter partes review and
`
`(2) Petitioner is not barred or estopped from requesting inter partes review of the
`
`claims of the ‘130 Patent on the grounds identified in this Petition.
`
`3
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 6,549,130
`
`
`Identification of challenge and relief requested - 37 C.F.R. §
`42.104(b)
`
`B.
`
`Petitioners request cancellation of claims 1, 8, 10, 12, 15, 17, 98, 119, 124, 145
`
`and 149 of the ‘130 Patent in view of the following grounds: Ground 1 – Claims 1, 8,
`
`12, 15, 17, 98, and 145 Are Obvious over Koether in Light of the Knowledge of the
`
`Ordinary Skilled Artisan; and Ground 2 – Claims 10, 15, 119 and 124 Are Obvious
`
`over Koether in Light of Crater and/or the Knowledge of the Ordinary Skilled
`
`Artisan
`
`V. BACKGROUND OF THE TECHNOLOGY AND PURPORTED
`INVENTION OF THE ‘130 PATENT
`A. Background of the technology
`The ‘130 patent explains “[a]nti-theft devices for vehicles and premises are
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`known in the prior art for preventing and/or thwarting the theft of a vehicles and/or
`
`of a premises.” (Ex. 1001, 1:34-36.) Obviously as technology improvements,
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`specifically the transition to electronic and digital connectivity, were made such
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`advances were incorporated into alarm systems as evidenced, in part, by U.S. Patent
`
`No. 3,449,738 to Chesnul et al. (issued: June 10, 1969) entitled “Electronic Security
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`System” and directed to a home electronic security system that “us[es] modern digital,
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`solid-state circuitry [to] is easily put into individual modules thereby facilitating
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`installation, maintenance, and expansion of the system.” Chesnul, 1:25-29.
`
`4
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`

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`The use of electronic data transfer was yet another logical transition for alarm
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,549,130
`
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`and anti-theft systems as it allowed for the centralization and remote monitoring of a
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`premises or device. As explained below, not only was this the next logical step, it
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`actually occurred before the ‘130 patent was sought.
`
`B.
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`Summary of the prosecution history of the ‘130 Patent
`
`During prosecution of the application that led to the ‘130 patent, the claims
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`were rejected as anticipated and obvious over U.S. Patent No. 6,028,537 to Suman et
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`al. Ex. 1005 at JCCOX-003963-03975. The Suman reference described a remotely
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`controlled vehicle system. The Examiner reasoned that Suman taught “a vehicle
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`communications and remote control system can be used on a premises” having “RKE
`
`receiver 1855 (first control device) responsive to the received RF signal from a system
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`controller 1810 (second control device) having a micro-controller 1830 for to
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`open/close garage door, gates, to activate/deactivate house light modules, house
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`appliances and to activate/deactivate door locks[, and the] micro-controller 1830 is
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`response to a remote RF transmitter/receiver 1825 (third control device).” Id. at
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`JCCOX-003965. To overcome this, Joao argued with no support that the claims were
`
`entitled to priority ahead of Suman. As shown below, the Challenged Claims are not
`
`entitled to a filing date before July 1996.
`
`During prosecution of the application that led to the ‘130 patent, there were
`
`several amendments to the claims, the specification, and figures. The Examiner
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`5
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`

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`allowed the claims because in the Examiner’s view the claims required a three control
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,549,130
`
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`device system and the prior art before the Examiner only taught two devices:
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`[T]here are no references teaching of a control apparatus for
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`controlling of at least one activating, deactivating, enabling and
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`disabling of at least one of a premises having at least one of system,
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`subsystem, component, equipment and appliance. Wherein the first
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`control device is responsive to a second signal and the second signal is
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`at least generated by a a [sic] second control device which is located
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`remote from the premises. And further wherein the second control
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`device is responsive to a third control signal which is generated by a
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`third control device which is located at a location remote from the
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`premises and remote from the second control device.
`
`Ex. 1005 at JCCOX-004079, JCCOX 004074-04076. Joao Responded to the
`
`Reasons for Allowance in essence copying the claim language. Id. at 04520-
`
`04542. As explained below, the art the Examiner was not aware of did, in fact,
`
`teach the three devices recited in the claims.
`
`C.
`
`Summary of the Challenged Claims
`
`The Challenged Claims contain several common elements relating to the
`
`functionality and the physical location of the various control devices described in the
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`6
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`

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`Notice of Allowance. For claims 1, 8, 10, 12, 15, 17, 98, 119, 124, 145 and 149 a
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,549,130
`
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`summary of these common elements is presented below:
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`• A first control device: (i) located at the premises, (ii) generates a first
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`signal to activate and control an operation of the premise device, and (iii)
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`generates and transmits the first signal in response to a second signal
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`that is automatically received.
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`• A second control device: (i) located remote from the premises and (ii)
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`generates and transmits a second signal to the first processing device in
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`response to a third signal that is automatically received.
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`• A third control device: (i) located remote from the premise and remote
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`from the second control device, and (ii) generates and transmits a third
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`signal to the second processing device.
`
`Third Control
`Device (Third
`Signal)
`
`Second Control
`Device (Second
`Signal)
`
`First Control
`Device (First
`Signal)
`
`
`
`The above simplification of the three claimed processing devices and flow of
`
`signals, along with additional detailed disclosures rendering the Challenged Claims
`
`unpatentable, was disclosed in prior art not considered by the U.S. Patent and
`
`Trademark Office in allowing the claims.
`
`7
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`

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`Claim 149 describes a method of transmitting signals for control and operation
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,549,130
`
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`of a premises device involving the three control devices. Although the sequence of
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`transmission among the three control devices is claimed differently in claim 149, the
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`concept described in the claim is very similar.
`
`D.
`
`Statement of Non-redundancy
`
`This petition asserts the obviousness of the identified claims based on two
`
`references plus the knowledge of the skilled artisan at the relevant time period:
`
`Koether and Crater. Neither of these references was before the Patent Office during
`
`original prosecution and neither was part of any inter partes review petition filed by, or
`
`on behalf of, Petitioner. The grounds detailed below are based primarily on the
`
`Koether reference but for claim elements specifically requiring recording and
`
`transmission of video information, to the extent it would not have been obvious given
`
`Koether’s own disclosure, the Crater reference is used to demonstrate what the skilled
`
`artisan would have known at the time the Challenged Claims were added.
`
`VI. CLAIM CONSTRUCTION - 37 C.F.R. § 42.104(b)(3)
`The ‘130 Patent expired on June 8, 2013, and is therefore not subject to
`
`amendment. The claims are thus construed pursuant to Phillips v. AWH Corp., 415
`
`F.3d 1303, 1327 (Fed. Cir. 2005) (holding words of a claim “are generally given their
`
`ordinary and customary meaning” as understood by a person of ordinary skill in the
`
`8
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`

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`art in question at the time of the invention). See IPR2013-00065, Paper 11 at 10;
`
`Petition for Inter Partes Review of
`U.S. Patent No. 6,549,130
`
`
`MPEP 2258(I)(G).
`
`The terms of the Challenged Claims have a well-understood meaning.
`
`Therefore, Petitioner submits the plain and ordinary meaning of the terms of the
`
`Challenged Claims applies. Petitioner is aware, in its ongoing litigation, Joao has
`
`provided constructions for certain terms of the ‘130 Patent which are inconsistent
`
`with the plain and ordinary meaning of the terms or the intrinsic record of the ‘130
`
`Patent, as discussed in relevant part below. Many of these constructions are based on
`
`litigation-driven, unsolicited statements submitted to the PTO during the prosecution
`
`of related patents. Because Petitioner expects the Patent Owner may address certain
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`claim terms in response to this Petition, Petitioner has discussed the claim
`
`construction of some terms of the Challenged Claims below. Because in an IPR,
`
`petitioners are not authorized to challenge claims under 35 U.S.C. § 112, Petitioner
`
`does not raise such a challenge here. Petitioner, however, reserves the right to raise
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`Section 112 issues in this or any other proceeding as appropriate.
`
`A. “First Signal,” “Second Signal,” and “Third Signal”
`
`The plain and ordinary meaning of “first signal,” “second signal,” and “third
`
`signal” is well understood. No construction of these terms is necessary. “The use of
`
`the terms ‘first’ and ‘second’ is a common patent-law convention to distinguish
`
`between repeated instances of an element or limitation.” 3M Innovative
`
`9
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`

`
`Properties, Co. v. Avery Dennison Corp., 350 F.3d 1365, 1371 (Fed. Cir. 2003).
`
`Petition for Inter Partes Review of
`U.S. Patent No. 6,549,130
`
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`Alternatively, Petitioner proposes a proper construction is that a “first signal” is a
`
`“signal sent by a first control device,” a “second signal” is a “signal sent by a second
`
`control device,” and a “third signal” is a “signal sent by a third control device.” This
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`construction reflects the plain and ordinary meaning of the terms as recited in the
`
`claims.
`
`In litigation, Joao argued the “first signal,” “second signal,” and “third signal”
`
`should be construed as “each different signals with content that is not identical to the
`
`content of the other signals.” That is, Joao contended the modifiers “first,” “second”
`
`and “third” reflect unique content of the signals, rather than simply an enumeration of
`
`one signal from another. This position is incorrect because it seeks to ascribe specific
`
`content to each signal, where no content is required by the plain meaning of the
`
`terms, and the specification and the prosecution history of the ‘130 Patent do not
`
`suggest the limitations should be redefined in this manner. The terms “first,”
`
`“second,” and “third” simply enumerate each signal, and do not indicate unique
`
`content for each signal.
`
`B. “Automatically Received”
`
`The plain and ordinary meaning of “automatically” is “functioning without
`
`human intervention.” Ex. 1007 at 26. This is the proper construction for
`
`“automatically received.”
`
`10
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`

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`The claims of the ‘130 Patent describe a signal as being received automatically
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,549,130
`
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`by a control device. The ‘130 Patent does not specifically discuss how signals are
`
`automatically received. The specification simply explains apparatuses may be activated
`
`automatically based on pre-programmed conditions, such that no operator
`
`intervention is necessary. Ex. 1001 at 44:13-18 (“the apparatus will be programmed to
`
`become activated, or de-activated, automatically, such as upon the occurrence, or lack
`
`thereof, of a pre-defined event or occurrence and/or at any desired time”); 48:37-39
`
`(“apparatus 950 may be designed to operate and/or perform any and all of the
`
`described functions automatically and without operator intervention”).
`
`The prosecution history of the ‘130 Patent is in accord with this construction.
`
`In a number of preliminary amendments submitted when prosecution was reopened
`
`after allowance, the patentee stated “the term ‘automatically’ means ‘without human
`
`intervention’.” Ex. 1005 at JCCOX-004218.
`
`C. “At least one of activating, de-activating, disabling, and reenabling”
`
`While the claim term “activating” is part of a larger phrase, i.e., “at least one of
`
`activating, de-activating, disabling, and re-enabling,” this phrase is disjointed and only
`
`requires one of the actions be met to satisfy the claims. As such, Petitioner proposes a
`
`construction for the term “activating.” The plain and ordinary meaning of
`
`“activating” is “to make active or more active.” Ex. 1006 at 3. The claims of the ‘130
`
`Patent describe a signal and processing device capable of, among other things,
`
`11
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`

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`activating at least one of a premises system, device, equipment, equipment system, or
`
`Petition for Inter Partes Review of
`U.S. Patent No. 6,549,130
`
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`an appliance. The ‘130 Patent does not specifically discuss how any of these
`
`components are activated. The specification simply explains premises components
`
`may be disabled or re-enabled so as to maintain desired conditions in the premises.
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`See, e.g., Ex. 1001 at 66:31-42. Thus, there is no indication in the claims or the
`
`specification that the term “activating” should be construed in any way other than the
`
`term’s plain and ordinary meaning which is “making active or more active.”
`
`VII. PERSON HAVING ORDINARY SKILL IN THE ART
`For purposes of this proceeding, Petitioner asserts a person of ordinary skill in
`
`the art of remote-controlled premise systems at the time of the alleged invention
`
`would have had a bachelor’s degree in engineering or equivalent coursework and at
`
`least two years of experience in networked systems. Ex. 1002, ¶ 17.
`
`VIII. THE CHALLENGED CLAIMS ARE NOT ENTITLED TO A
`PRIORITY DATE BEFORE JULY 18, 1996.
`A patent’s invention date is presumed its filing date. Bausch & Lomb, Inc. v.
`
`Barnes-Hind/Hydrocurve, Inc., 796 F.2d 443, 449 (Fed. Cir. 1986). A patentee may claim
`
`benefit of a priority date by “demonstrat[ing] that the claims meet the requirements of
`
`35 U.S.C. § 120.” In re NTP, Inc., 654 F.3d 1268, 1276 (Fed. Cir. 2011).
`
`For Challenged Claims to be entitled to an earlier date of priority “[t]he test is
`
`whether the [earlier] disclosure conveys to those skilled in the art that the inventor
`
`had possession of the claimed subject matter as of the filing date.” Streck, Inc. v.
`
`12
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`

`
`Research & Diagnostic Sys., Inc., 665 F.3d 1269, 1285 (Fed. Cir. 2012) (internal citations
`
`Petition for Inter Partes Review of
`U.S. Patent No. 6,549,130
`
`
`omitted). This test requires an “objective inquiry into the four corners of the
`
`specification from the perspective of a person of ordinary skill in the art.” Id.
`
`On its face, the ‘130 patent claims priority as a continuation of U.S. Patent
`
`Application No. 08/683,828, filed on July 18, 1996 (“the July 1996 application”),
`
`which is a continuation-in-part to U.S. Patent Application No. 08/622,749 filed on
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`March 27, 1996 (“March 1996 application”). The ‘130 patent is not, however, entitled
`
`to the benefit of the March 27, 1996 application date.
`
`Each of the Challenged Claims requires some processing device located at a
`
`premises. In contrast, the March 1996 application only discloses a vehicle theft
`
`deterrent system, and does not disclose a processing device located at a premises. See
`
`Ex. 1004. The March 1996 application does not contain Figures 15 and 16 of the ‘130
`
`patent which discloses a premises and premise equipment. Id. Indeed, the March
`
`1996 application never mentions a premise and is solely focused on vehicles. Id.
`
`Because a premises is not a vehicle and a vehicle is not a premises, the March 1996
`
`application does not disclose a premises system. Therefore, the Challenged Claims
`
`are not entitled to the benefit of the March 1996 application filing date.
`
`IX. HOW THE CHALLENGED CLAIMS ARE UNPATENTABLE
`
`13
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 6,549,130
`
`
`UNDER 37 C.F.R. § 42.104(b)1
`A. Ground 1 – Claims 1, 8, 12, 15, 17, 98, and 145 Are Obvious over
`Koether in Light of the Knowledge of the Ordinary Skilled Artisan.
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`Koether (Ex. 1008) was filed on May 2, 1996 and issued on February 23, 1999.
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`Because of its filing date, Koether is prior art to the Challenged Claims under 35
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`U.S.C. § 102(e). Koether was not disclosed or considered during the prosecution of
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`the ‘130 patent. The following provides disclosure from Koether and an explanation
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`of how the reference applies to each limitation of the claim. Petitioner does not assert
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`the preambles of the Challenged Claims are limiting or non-limiting. Regardless,
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`Koether discloses the features recited in each preamble.
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`Koether describes a Smart Commercial Kitchen. As the opening sentence of
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`the Abstract states, Koether “provides a bi-directional communication network which
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`provides real-time computer-aided diagnostics, asset history, accounting records,
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`maintenance records and energy management.” Ex. 1008. Figure 1 shows three
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`processing devices connected wirelessly or over high speed data links. Id. at Fig. 1;
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`2:9-13. “In particular, the system monitors and tracks the maintenance and repair of
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`1 Petitioners have enumerated each element of the Challenged Claims providing
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`them with a unique identifier set forth before the element in brackets. Thus, for claim
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`“X” the first element would be listed as [X.0], the next as [X.1], etc. These elements
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`are cross-referenced throughout this Petition.
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`kitchen appliances by means of information transmitted to and received from those
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,549,130
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`appliances over the data network.” Id. at 2:13-16. “The control center may, if desired,
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`control in real-time the normal operation for some or all of the kitchen or restaurant
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`appliances.” Id. at 3:5-7. “In this manner, retail food service chains may readily
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`update the cooking profiles of their food products on a global basis.” Id. at 3:10-12.
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`Koether goes on to describe the use of the system to monitor device failure or
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`degradation. Id. at 8:57-9:2 (“If the degradation, however, is gross, the control center
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`may communicate and display on the console of the kitchen appliance a message
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`warning that the kitchen appliance is unacceptable for cooking purposes. If desired,
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`the control center may be programmed in the latter instance to disable the kitchen
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`appliance to eliminate any possibly health risks.”). Koether describes its control
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`system in connection with a broad range of equipment, including fryers, ovens,
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`cooling systems, HVAC systems and more. Id. at 1:19-23.
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`Koether teaches, or at the very least makes obvious, the apparatus capable of
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`remotely monitoring and controlling a kitchen appliance as claimed in claims 1, 8, 12,
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`15, 17, 98, and 145:
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`Claim Language
`[1.0] “A control apparatus,
`comprising:”
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`Koether (Ex. 1008)
`See, e.g., Ex. 1008 at Abstract; Fig. 1; 1:13-19
`(“The present invention relates to … a
`cooking computer communication system, for
`monitoring and controlling the activities of
`commercial kitchen or restaurant appliances,
`and for providing bi-directional
`communication between such appliances and a
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`[1.1] “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,”
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`[1.2] “wherein the first control
`device is located at the premises,”
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`[1.3] “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,”
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,549,130
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`control center.”)
`See, e.g., Ex. 1008 at Fig. 1 (Appliances “A1-
`A11”); 4:26-27 (“Each kitchen appliance 110
`(A1-A11) is preferably provided with a RF
`transmitter 10, RF receiver 130 and
`microprocessor based controller 140, as
`illustrated in Fig. 2.”); 4:37-59
`(“Microprocessor based controllers has been
`developed . . . to assist in the preparation of
`properly cooked foods. These controllers . . .
`regulate the temperature within the kitchen
`appliance to insure that the food is cooked or
`baked to the proper degree of doneness.”);
`4:52-59 (“Moreover, the controller regulates
`the percentage of time power is applied to the
`heating (or cooling) element …For example,
`the heating element or heating elements may
`be pulsed with either a fixed or variable duty
`cycle (proportional control heating), may be
`fully turned on, or operated in an on/off
`manner similar to a thermostat, depending in
`the heating mode of the kitchen appliance.”)
`
`See, e.g., Ex. 1008 at 4:25-27 (“Each kitchen
`appliance 110 (A1-A11) is preferably provided
`with a RF transmitter 120, RF receiver 130 and
`microprocessor based controller 140, as
`illustrated in Fig. 2.”); 4:30-32 (“Restaurants,
`bakeries or hotels, for example, can have
`anywhere from one to forty (40) kitchen
`appliances at a single site or cell.”)
`See, e.g., Ex. 1008 at Fig. 1; 5:3-8 (“With
`continuing reference to Fig. 1, kitchen base
`stations [second processing device] 150 (B1-
`B6) may be found within respective cells 105
`(C1-C6). Preferably, each kitchen base station
`150 (B1-B6) is capable of communicating
`through wireless means, such as through
`cellular radio or other wireless means, with
`corresponding kitchen appliances 110 (A1-
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,549,130
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`A11).”); 7:30-32 (“Each appliance 110 receives
`burst modulated signals from kitchen base
`station 150…”) 7:54-57 (Also, kitchen base
`stations 150 each includes a microprocessor
`167 that controls the base stations and
`communication among the appliances and the
`kitchen base stations.”)
`See, e.g., Ex. 1008 at Fig. 1; 5:3-8 (“With
`continuing reference to Fig. 1, kitchen base
`stations [second processing device] 150 (B1-
`B6) may be found within respective cells 105
`(C1-C6). Preferably, each kitchen base station
`150 (B1-B6) is capable of communicating
`through wireless means, such as through
`cellular radio or other wireless means, with
`corresponding kitchen appliances 110 (A1-
`A11).”); 5:20-35 (“each of the cells 105 (C1-
`C6) is allocated at least one cellular radio
`channel use to effect bidirectional
`communication so as to monitor and track the
`maintenance, repair and energy management
`of kitchen appliances 110 (A1-A11) by means
`of information transmitted to and received
`from those appliances.”); 7:45-50 (“Those
`skilled in the art will readily note that much of
`the equipment used by appliances 110 to effect
`cellular communication may also be used by
`kitchen base stations 150 and mobile kitchen
`center 200.”); 5:55-59 (“Control center 170
`may be, for example, located within the same
`physical location as the cells. For extended
`coverage around the world, however, a
`plurality of control centers linked to each other
`may be employed.”); 15:20-23 (“wherein each
`of said base stations is associated with a radio
`coverage area or cell, such that restaurant
`appliances located within the same cell
`communicate with the same base station.”).
`See, e.g., Ex. 1008 at 5:60-67 (“Each kitchen
`base station 150 (B1-B6) may interrogate a
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`[1.4] “wherein the second control
`device is located at a location which
`is remote from the premises,”
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`[1.5] “wherein the second signal is
`transmitted from the second control
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`device to the first control device, and
`further wherein the second signal is
`automatically received by the first
`control device,”
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`[1.6] “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,”
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`[1.7] “wherein the third control
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,549,130
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`corresponding controller 140 or controller 140
`may request to transmit diagnostic information
`relating to the operating conditions of kitchen
`appliances (A1-A11), which diagnostic
`information may be immediately
`communicated to control center 170.”); 6:6-8
`(“Most of the functions are automatically
`controlled by the control center, but may also
`be performed manually by a control center
`operator.”); 6:8-9 (“If desired, some of these
`functions can be distributed to the base
`stations”). 7:30-32 (“Each appliance 110
`receives burst modulated signals from kitchen
`base station 150 through an antenna 550
`connected to a receiver.).
`See, e.g., Ex. 1008 at Fig. 1; 7:54-59 (“Also,