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
`________________
`
`
`
`PRELIMINARY RESPONSE OF PATENT OWNER
`
`
`
`
`
`
`________________
`
`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
`________________
`
`
`
`PRELIMINARY RESPONSE OF PATENT OWNER
`
`
`
`
`
`
`
`Preliminary Response of Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2015-01760
`Patent 6,549,130
`
`TABLE OF CONTENTS
`
`
`
`Page
`
`
`I. INTRODUCTION ............................................................................................... 1
`
`II. BACKGROUND ................................................................................................ 2
`
` A. Overview of the ‘130 Patent .......................................................................... 2
`
` B. Prosecution History of the ‘130 Patent .......................................................... 6
`
` C. Petition Overview .......................................................................................... 7
`
`III. CLAIM CONSTRUCTION ............................................................................. 11
`
` A. Legal Standards ............................................................................................ 11
`
` B. Petitioner has Failed to Submit Claim Constructions for Key Terms
` Supporting its Invalidity Arguments ........................................................... 13
`
`
`
`
`
` C. “first signal,” “second signal” and “third signal” ........................................ 18
`
` D. “automatically received” .............................................................................. 19
`
` E. “at least one of activating, de-activating, disabling, and re-enabling” ......... 19
`
` F. “premises” .................................................................................................... 19
`
` G. “remote” ....................................................................................................... 20
`
` H. “located at” .................................................................................................. 21
`
`i i
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2015-01760
`
`
`Preliminary Response of Patent Owner
`Patent 6,549,130
`
`
`
`
`
`
`
`
`
`
`IV. THE CHALLENGED CLAIMS ARE ENTITLED TO A PRIORITY DATE
` OF MARCH 27, 1996 ...................................................................................... 22
`
`V. RESPONSE TO PROPOSED GROUNDS OF INVALIDITY ........................ 22
`
`
`
`
`
` A. Petitioner’s Proposed Grounds Fail to Comply with the Applicable Rules 23
`
` C. Ground 1 ...................................................................................................... 29
`
` B. The Proposed Grounds Fail to Meet the Burden of Showing a Reasonable
` Likelihood of Prevailing .............................................................................. 26
`
`
`
`
`
` 1. Koether fails to teach a “second control device” which is “located at a
` location remote from the premises” as recited in Claims 1, 98 and
` 145 .......................................................................................................... 29
`
`
`
` D. Ground 2 ...................................................................................................... 33
`
`
`VII. CONCLUSION .............................................................................................. 34
`
`
`
`ii ii
`
`
`
`
`
`
`
`
`
`Preliminary Response of Patent Owner
`
`
`
`
`
`
`
`
`
`
`LIST OF EXHIBITS
`
`Case IPR2015-01760
`Patent 6,549,130
`
`EX2002
`
`Description
`Exhibit
`EX2001 U.S. Patent No. 6,204,760 to Brunius
`“Preliminary Remarks” filed by applicant on November 26, 2006
`during prosecution of the patent application that issued as related U.S.
`Patent No. 7,277,010
`“Supplement to the Remarks for the Amendment filed on October 24,
`2007” filed on November 23, 2007 during prosecution of the patent
`application that issued as related U.S. Patent No. 7,397,363
`
`EX2003
`
`
`
`iii iii
`
`
`
`
`
`
`
`Preliminary Response of Patent Owner
`
`
`
`
`
`
`
`
`I.
`INTRODUCTION
`
`
`
`
`
`
`
`Case IPR2015-01760
`Patent 6,549,130
`
`
`
`Patent Owner Joao Control & Monitoring Systems, LLC (“JCMS”)
`
`respectfully submits this Preliminary Response of Patent Owner (“Preliminary
`
`Response”) in accordance with 35 U.S.C. § 313 and 37 C.F.R. § 42.107. This
`
`Preliminary Response responds to the Petition for Inter Partes Review (“Petition”)
`
`filed by Petitioner regarding claims 1, 8, 10, 12, 15, 17, 98, 119, 124, 145 and 149
`
`(“Challenged Claims”) of U.S. Patent No. 6,549,130 (“the ‘130 patent”).
`
`
`
`This Preliminary Response is timely filed under 35 U.S.C. § 313 and 37
`
`C.F.R. § 42.107, as it is filed within three months of the August 26, 2015 date of
`
`the Notice of Filing Date Accorded to Petition and Time for Filing Patent Owner
`
`Preliminary Response (Paper No. 3).
`
`
`
`JCMS requests that the Board not institute an inter partes review (“IPR”)
`
`because Petitioner has failed to demonstrate a reasonable likelihood of prevailing
`
`with respect to any of the Challenged Claims, thereby failing to meet the threshold
`
`for institution under 35 U.S.C. § 314(a).
`
`
`
`The two proposed grounds of rejection are substantively and procedurally
`
`flawed, as will be explained below. Further, none of the cited references teach
`
`important properly construed claim limitations.
`
`
`
`1 1
`
`
`
`Case IPR2015-01760
`
`
`Preliminary Response of Patent Owner
`Patent 6,549,130
`
`
`
`
`
`
`
`
`
`
`
`Petitioner’s expert, Mr. Richard Bennett, makes statements and opines on
`
`issues related to: (1) the state of the art at the time of the invention; (2) the prior art
`
`used in Petitioner’s grounds of rejection; and (3) how the prior art renders the
`
`claims obvious. However, Petitioner has failed to propose claim constructions for
`
`certain key terms in the claims that support Mr. Bennett’s opinions, and that
`
`support Petitioner’s invalidity arguments. As such, Mr. Bennett’s analysis and
`
`declaration is fundamentally flawed and should be given no weight.
`
`
`
`Petitioner’s failure to construe certain key terms renders an evaluation of the
`
`merits of Petitioner’s invalidity arguments impossible. This failure alone is
`
`sufficient reason to deny institution of inter partes review.
`
`
`
`In the end, the Petition is materially deficient and fails to set forth sufficient
`
`evidence that Petitioner has a reasonable likelihood of prevailing with respect to
`
`any of the Challenged Claims, as required under 35 U.S.C. § 314(a). JCMS
`
`respectfully submits that the Board should conserve resources by declining to
`
`institute this meritless proceeding.
`
`II. BACKGROUND
`
`
`
`
`
`
`A. Overview of the ‘130 Patent
`
`2 2
`
`
`
`Case IPR2015-01760
`
`
`Preliminary Response of Patent Owner
`Patent 6,549,130
`
`
`
`
`
`
`
`
`
`
`The ‘130 patent is directed to a novel and unconventional system for, inter
`
`
`alia, remotely-controlling and/or monitoring systems located at vehicles and
`
`premises. EX1001 at 23. The Challenged Claims are directed to a specially
`
`assembled and programmed apparatus for controlling a premises system from a
`
`remote location.
`
`
`
`At the time of the claimed invention, existing premises monitoring, control
`
`and/or security systems shared a similar and conventional architecture. Namely,
`
`such systems generally utilized various sensors located at the premises (e.g., door
`
`sensors, window sensors, motion sensors) and a main controller located at the
`
`premises that receives signals from the various sensors.
`
`
`
`For example, U.S. Patent No. 6,204,760 to Brunius (“Brunius”) discloses a
`
`security system for a building complex that is representative of the conventional
`
`systems that existed at the time of the claimed invention. EX2001. Brunius
`
`describes a typical security system existing at the time as follows:
`
`“In a
`
`typical security system, a main controller
`
`communicates with sensors positioned throughout a
`
`surveillance area, such as a home or business, to monitor
`
`various security conditions . . . [t]he control panel is
`
`
`
`3 3
`
`
`
`Case IPR2015-01760
`
`
`Preliminary Response of Patent Owner
`Patent 6,549,130
`
`
`
`
`
`
`
`
`
`
`typically placed in a remote location in the surveillance
`
`area such as in a basement or utility closet . . . [t]he
`
`sensors placed throughout the surveillance area may
`
`include door/window sensors, passive infrared sensors
`
`for motion, temperature sensors, and the like . . . [w]hen
`
`a change in condition is sensed, the transmitter associated
`
`with a sensor transmits a sensor signal . . . to the main
`
`controller. When the resident opens a door that is
`
`monitored by a door/window sensor, the sensor transmits
`
`a sensor signal to the main controller indicating that the
`
`door has been opened . . . [i]f the security system is not
`
`disarmed within the entry delay, e.g., thirty seconds, the
`
`main controller . . . may sound an alarm. Also, the main
`
`controller may be tied to a telephone system for the
`
`purpose of notifying a security agency or police of the
`
`alarm condition.” (emphasis added). EX2001 at 1:15-36.
`
`
`
`Thus, conventional security systems at the time of the claimed invention
`
`would utilize sensors located at the premises (the surveillance area in Brunius) that
`
`
`
`4 4
`
`
`
`Case IPR2015-01760
`
`
`Preliminary Response of Patent Owner
`Patent 6,549,130
`
`
`
`
`
`
`
`
`
`
`sends sensor signals to a main controller which, although located remote from the
`
`sensors, is still located at the premises (the examples given in Brunius are a
`
`basement or utility closet). Further, the main controller could, optionally, send a
`
`notification signal to a security agency or police in response to an alarm condition.
`
`
`
`One capability missing from conventional systems existing at the time of the
`
`claimed invention is the ability of an owner or occupant of the premises, as
`
`opposed to a monitoring entity such as a security agency or police, to remotely
`
`control the premises security system or monitor conditions at the premises. Indeed,
`
`this is one of the problems addressed by the ‘130 patent, which utilizes a unique
`
`and unconventional system made up of special purpose devices that enable owners
`
`or occupants of vehicles and/or premises to monitor the vehicle or premises and/or
`
`exert control over devices located at the vehicle or premises. As indicated in the
`
`‘130 patent:
`
`“While anti-theft and/or security systems exist for
`
`residential and/or commercial premises, such systems fail
`
`to enable the owner or occupant and/or other authorized
`
`individual to conveniently and effectively exercise and/or
`
`perform control, monitoring and/or security functions
`
`
`
`5 5
`
`
`
`Case IPR2015-01760
`
`
`Preliminary Response of Patent Owner
`Patent 6,549,130
`
`
`
`
`
`
`
`
`
`
`with
`regards
`to
`these premises. The ability
`to
`
`conveniently and effectively enable one to exercise
`
`and/or to perform control, monitoring and/or security
`
`functions would prove to be invaluable in allowing
`
`owners, occupants and/or other authorized individuals to
`
`exercise and/or to provide control, monitoring and/or
`
`security functions over these premises, from a remote
`
`location and at any time.” (emphasis added). EX1001 at
`
`2:62 – 3:06.
`
`B.
`
`Prosecution History of the ‘130 Patent
`
`The patent application that issued as the ‘130 patent was filed on March 29,
`
`
`
`
`
`1999. EX1001. The ‘130 patent issued on April 15, 2003. Id.
`
`
`
`During prosecution of related U.S. Patent Application Nos. 7,397,363 and
`
`7,277,010 (hereinafter “the ‘363 patent” and “the ‘010 patent,” respectively), the
`
`Applicant chose to be his own lexicographer and provided explicit definitions for,
`
`inter alia, the terms “remote,” “premises” and “located at” in “Preliminary
`
`Remarks” filed by Applicant on November 26, 2006 during prosecution of the
`
`patent application that issued as the ‘010 patent (see EX2002, hereinafter
`
`
`
`6 6
`
`
`
`Case IPR2015-01760
`
`
`Preliminary Response of Patent Owner
`Patent 6,549,130
`
`
`
`
`
`
`
`
`
`
`“Preliminary Remarks”) and in “Supplement to the Remarks for the Amendment
`
`filed on October 24, 2007” filed on November 23, 2007 during prosecution of the
`
`patent application that issued as the ‘363 patent (see EX2003, hereinafter “First
`
`Remarks”).
`
`
`
`
`
`C.
`
`Petition Overview
`
`Petitioner has proposed two grounds of invalidity and relies on the following
`
`two references:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`1.
`
`2.
`
`U.S. Patent No. 5,875,430 to Koether et al. (“Koether”); and
`
`U.S. Patent No. 5,805,442 to Crater et al. (“Crater”).
`
`The table below summarizes Petitioner’s grounds of invalidity.
`
`Ground
`
`1
`
`2
`
`
`
`Claims
`1, 8, 12, 15, 17,
`98 and 145
`
`10, 15, 119 and
`124
`
`Proposed Rejections
`obvious under 35 U.S.C. § 103(a) over Koether
`“in light of the knowledge of the ordinary
`skilled artisan”
`obvious under 35 U.S.C. § 103(a) over Koether
`“in light of Crater and/or the knowledge of the
`ordinary skilled artisan”
`
`Claims 1, 98 and 145 are independent claims. They are reproduced below:
`
`1.
`
`A control apparatus, comprising:
`
`7 7
`
`
`
`Case IPR2015-01760
`
`
`Preliminary Response of Patent Owner
`Patent 6,549,130
`
`
`
`
`
`
`
`
`
`
`
`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.
`
`
`
`8 8
`
`
`
`Preliminary Response of Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2015-01760
`Patent 6,549,130
`
`98. A control apparatus, comprising:
`
`
`
`
`
`a first control device, wherein the first control device is capable of at
`
`least one of activating, deactivating, disabling, and re-enabling, one or more of a
`
`plurality of 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 at least one of generates and transmits a first signal
`
`for at least one of activating, de-activating, disabling, and re-enabling, the at least
`
`one of a premises system, a premises device, a premises equipment, a premises
`
`equipment system, and a premises appliance, 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,
`
`
`
`9 9
`
`
`
`Case IPR2015-01760
`
`
`Preliminary Response of Patent Owner
`Patent 6,549,130
`
`
`
`
`
`
`
`
`
`
`
`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.
`
`
`
`
`
`
`
`
`
`145. A method for providing control, comprising:
`
`
`
`transmitting a first signal from a first control device to a second
`
`control device, wherein the first control device is located at a location remote from
`
`a premises and remote from the second control device, and further wherein the first
`
`signal is automatically received by the second control device;
`
`
`
`transmitting a second signal from the second control device to a third
`
`control device, wherein the third control device is located at the premises, and
`
`further wherein the second control device is located at a location remote from the
`
`premises, wherein the second signal is automatically received by the third control
`
`device, and further wherein the third control device is capable of at least one of
`
`
`
`10 10
`
`
`
`Case IPR2015-01760
`
`
`Preliminary Response of Patent Owner
`Patent 6,549,130
`
`
`
`
`
`
`
`
`
`
`activating, de-activating, disabling, and re-enabling, one or more of a plurality of at
`
`least one of a premises system, a premises device, a premises equipment, a
`
`premises equipment system, and a premises appliance;
`
`
`
`generating a third signal with the third control device in response to
`
`the second signal; and
`
`
`
`at least one of activating, de-activating, disabling, and re-enabling, the
`
`at least one of a premises system, a premises device, a premises equipment, a
`
`premises equipment system, and a premises appliance, in response to the third
`
`signal.
`
`III. CLAIM CONSTRUCTION
`
`Legal Standards
`A.
`A claim term in an expired patent is generally given its ordinary and
`
`
`
`customary meaning” as understood by a person of ordinary skill in the art in
`
`question at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303,1327
`
`(Fed. Cir. 2005). However, it is important to note that the Manual of Patent
`
`Examining Procedure (MPEP) and controlling case law make it clear that the
`
`determination of the ordinary and customary meaning of a term or phrase does not
`
`occur in a vacuum, but instead it must be made in light of the patent’s specification
`
`
`
`11 11
`
`
`
`Case IPR2015-01760
`
`
`Preliminary Response of Patent Owner
`Patent 6,549,130
`
`
`
`
`
`
`
`
`
`
`and the intrinsic evidence. MPEP §2111.01 is clear and unequivocal on this point.
`
`The pertinent portion of the MPEP §2111.01 recites:
`
`The ordinary and customary meaning of a term may be
`
`evidenced by a variety of sources, including “the words
`
`of
`
`the claims
`
`themselves,
`
`the
`
`remainder of
`
`the
`
`specification, the prosecution history, and extrinsic
`
`evidence concerning relevant scientific principles, the
`
`meaning of technical terms, and the state of the art.”
`
`Phillips v. AWH Corp., 415 F.3d at 1314, 75 USPQ2d at
`
`1327. If extrinsic reference sources, such as dictionaries,
`
`evidence more than one definition for the term, the
`
`intrinsic record must be consulted to identify which of
`
`the different possible definitions is most consistent with
`
`applicant’s use of the terms. Brookhill-Wilk 1, 334 F.3d
`
`at 1300, 67 USPQ2d at 1137; see also Renishaw PLC v.
`
`Marposs Societa' per Azioni, 158 F.3d 1243, 1250,
`
`48 USPQ2d 1117, 1122 (Fed. Cir. 1998) (“Where there
`
`are several common meanings for a claim term, the
`
`
`
`12 12
`
`
`
`Case IPR2015-01760
`
`
`Preliminary Response of Patent Owner
`Patent 6,549,130
`
`
`
`
`
`
`
`
`
`
`patent disclosure serves to point away from the improper
`
`meanings and
`
`toward
`
`the proper meanings.”) and
`
`Vitronics Corp. v. Conceptronic Inc., 90 F.3d 1576,
`
`1583, 39 USPQ2d 1573, 1577
`
`(Fed. Cir. 1996)
`
`(construing the term “solder reflow temperature” to mean
`
`“peak reflow temperature” of solder rather than the
`
`“liquidus temperature” of solder in order to remain
`
`consistent with the specification.). (Emphasis added).
`
`
`
`“[A] patentee may choose to be his own lexicographer” and assign special
`
`definitions to the words in the claim, as long as those definitions are clearly stated
`
`in the patent specification or file history. Vitronics Corp. v. Conceptronic, Inc., 90
`
`F.3d 1576, 1582 (Fed. Cir. 1996) (citing Hoechst Celanese Corp. v. BP Chems.
`
`Ltd., 78 F.3d 1575, 1578 (Fed. Cir. 1996)). Therefore, “it is always necessary to
`
`review the specification to determine whether the inventor has used any terms in a
`
`manner inconsistent with their ordinary meaning. The specification acts as a
`
`dictionary when it expressly defines terms used in the claims or when it defines
`
`terms by implication.” Id. Because the specification must contain a description
`
`
`
`13 13
`
`
`
`Case IPR2015-01760
`
`
`Preliminary Response of Patent Owner
`Patent 6,549,130
`
`
`
`
`
`
`
`
`
`
`sufficient to those of ordinary skill in the art to make and use the invention, the
`
`specification “is the single best guide to the meaning of a disputed claim term.” Id.
`
`B.
`
`Petitioner has Failed to Submit Claim Constructions for many of
`the Key Terms Supporting its Invalidity Arguments
`The Board has previously emphasized that if the Petitioners do not explain
`
`
`
`how the Challenged Claims should be construed and how they read on the prior art,
`
`then a reasonable likelihood of success is not established:
`
`“It is the Petitioner’ss burden to explain how the
`
`Challenged Claims are to be construed and how they read
`
`on the prior art. 37 C.F.R. § 42.104(b)(3)-(5). Petitioners
`
`have not done so sufficiently on this record with respect
`
`to the limitation of claims 1, 45, 46, and 47 requiring a
`
`“color changing cycle.” Accordingly, Petitioners have
`
`not demonstrated a reasonable likelihood of success in
`
`showing the subject matter of claims 1-11, 26-34, and 45-
`
`47 would have been obvious in view of Wu and
`
`Chliwnyj.” Jiawei Technology (HK) LTD. et al v. Simon
`
`Nicholas Richmond, IPR2014-00937, Paper 22 at 8.
`
`
`
`14 14
`
`
`
`Case IPR2015-01760
`
`
`Preliminary Response of Patent Owner
`Patent 6,549,130
`
`
`
`
`
`
`
`
`
`
`
`Similarly, Petitioner has failed to propose claim constructions for certain key
`
`terms in the claims, and thus has failed to provide constructions for key terms that
`
`support Mr. Bennett’s opinions, and that support Petitioner’s invalidity arguments.
`
`Petitioner’s failure to construe these key terms renders an evaluation of the merits
`
`of Petitioner’s obviousness arguments impossible, and thus Petitioner has failed to
`
`demonstrate a reasonable likelihood of success in showing that any of the claims of
`
`the ‘130 patent are obvious or unpatentable in view of the art cited in Grounds 1
`
`and 2.
`
`
`
`Below are Patent Owner’s proposed constructions for the following key
`
`terms, which Patent Owner submits are necessary to properly evaluate the merits of
`
`Petitioner’s obviousness arguments: (1) “premises”; (2) “remote”; and (3) “located
`
`at.” As discussed supra, these key terms were defined by the Applicant in the
`
`Preliminary Remarks filed by Applicant on November 26, 2006 during prosecution
`
`of the patent application that issued as the ‘010 patent (EX2002) and in the First
`
`Remarks filed on November 23, 2007 during prosecution of the patent application
`
`that issued as the ‘363 patent (EX2003). These definitions provided by the
`
`Applicant during prosecution of the related ‘010 Patent and ‘363 Patent constitute
`
`intrinsic evidence regarding the construction of these key claim terms.
`
`
`
`15 15
`
`
`
`Case IPR2015-01760
`
`
`Preliminary Response of Patent Owner
`Patent 6,549,130
`
`
`
`
`
`
`
`
`
`
`
`Although the submissions were made during prosecution of the ‘363 Patent
`
`and the ‘010 Patent, the ’130 Patent is in the priority chain of the ‘363 and ‘010
`
`Patents, and thus all these patents share common grandparent applications
`
`(Application Nos. 08/587,628, 08/622,749, 08/489,238 (Patent No. 5,513,244) and
`
`08/073,755). The Federal Circuit has stated that “[w]hen the application of
`
`prosecution disclaimer involves statements from prosecution of a familial patent
`
`relating to the same subject matter as the claim language at issue in the patent
`
`being construed, those statements in the familial application are relevant in
`
`construing the claims at issue.” Ormco Corporation v. Align Technology, Inc., 498
`
`F.3d 1307, 1314 (Fed. Cir. 2007). This principle has been used to apply statements
`
`from child applications to ancestor applications:
`
`Any statement of the patentee in the prosecution of a
`
`related application as to the scope of the invention would
`
`be relevant to claim construction, and the relevance of the
`
`statement made in this instance is enhanced by the fact
`
`that it was made in an official proceeding in which the
`
`patentee had every
`
`incentive
`
`to exercise care
`
`in
`
`characterizing the scope of its invention. Accordingly, we
`
`
`
`16 16
`
`
`
`Case IPR2015-01760
`
`
`Preliminary Response of Patent Owner
`Patent 6,549,130
`
`
`
`
`
`
`
`
`
`
`conclude that Multi-tech’s statements made during the
`
`prosecution of the ‘627 patent with regard to the scope of
`
`it inventions as disclosed in the common specification are
`
`relevant not only to the ‘627 and ‘532 patents, but also to
`
`the earlier issued ‘649 patent.
`
`Microsoft Corporation v. Multi-Tech Systems, Inc., 357 F.3d 1340, 1350 (Fed. Cir.
`
`2004); see also Sprint Communications Company L.P. v. Vonage Holdings Corp.,
`
`518 F. Supp. 2d 1306, 1316 (D. Kan. 2007)(“[T]he court will consider the
`
`possibility that statements made during prosecution of the child ‘928 patent are
`
`relevant to construing the same claim terms in the ancestor ‘429 and ‘064 patent
`
`claims.”). With regards to multiple sibling applications (applications that stem
`
`from a common parent application), if a statement is made during prosecution of
`
`one sibling application, that statement can be applied to a second sibling
`
`application, even though the second sibling application issued before the first
`
`sibling application. Id. at 1350 (“Furthermore, even though the ‘649 patent had
`
`already issued, we think that it is not unsound to apply the same interpretation to
`
`that patent. We take the patentee at its word and will not construe the scope of the
`
`‘649 patent’s claims more broadly than the patentee itself clearly envisioned.”).
`
`
`
`17 17
`
`
`
`Case IPR2015-01760
`
`
`Preliminary Response of Patent Owner
`Patent 6,549,130
`
`
`
`
`
`
`
`
`
`
`
`If no ambiguity is found in the meaning of the terms of a claim after review
`
`of the specification and prosecution history, the inquiry is at an end. If uncertainty
`
`remains, extrinsic evidence (e.g., expert and inventor testimony), may be
`
`considered. Vitronics, 90 F.3d at 1583.
`
`
`
`In his submission to the PTO, the Applicant also provided the page and line
`
`numbers where support for each of the definitions is located in the original
`
`specifications of the ‘363 and ‘010 Patents. By defining each of these terms in the
`
`prosecution history, the ’130, ‘010 and ‘363 Applicant had chosen to be his own
`
`lexicographer. See CCS Fitness Inc. v. Brunswick Corp., 288 F.3d 1359, 1366
`
`(Fed. Cir. 2002) (“[A] claim term will not receive its ordinary meaning if the
`
`patentee acted as his own lexicographer and clearly set forth a definition of the
`
`disputed term...”). Moreover, in the Preliminary Remarks and First Remarks, the
`
`Applicant stated “[a]pplicant provides the following definitions for the following
`
`terms or phrases which appear in certain of the pending Claims.” Thus, it is clear
`
`that the Applicant unequivocally and intentionally defined the disputed terms in the
`
`manner discussed infra.
`
`C.
`
`“first Signal,” “second Signal” and “third Signal”
`
`
`
`18 18
`
`
`
`Case IPR2015-01760
`
`
`Preliminary Response of Patent Owner
`Patent 6,549,130
`
`
`
`
`
`
`
`
`
`
`
`JCMS disagrees with Petitioner’s assertion that these terms should be given
`
`their plain and ordinary meaning because of the treatment of these terms in the
`
`specification. Petitioners are correct in that, in related litigation, JCMS has argued
`
`that these terms should be construed as “each different signals with content that is
`
`not identical to the content of the other signals.” JCMS asserts that this is the
`
`correct construction for these terms. JCMS reserves its full arguments on this issue
`
`for its Patent Owner’s Response, if necessary.
`
`D.
`
`“automatically received”
`
`
`
`JCMS disagrees with Petitioner’s proposed construction of “automatically
`
`received” as “functioning without human intervention,” because this proposed
`
`construction ignores the term “receives.” JCMS asserts that “automatically
`
`receives” should be construed as “received without human intervention.”
`
`
`
`E.
`
`“at least one of activating, de-activating, disabling and re-
`
`enabling”
`
`
`
`JCMS disagrees with Petitioner’s proposed construction of this phrase in
`
`that it is too narrow. Petitioner’s proposed construction of “making active or more
`
`active” ignores the rest of the explicit language used in the phrase, which also calls
`
`for “de-activating,” “disabling” and “re-enabling,” in the disjunctive. JCMS
`
`
`
`19 19
`
`
`
`Case IPR2015-01760
`
`
`Preliminary Response of Patent Owner
`Patent 6,549,130
`
`
`
`
`
`
`
`
`
`
`reserves its full arguments on this issue for its Patent Owner’s Response, if
`
`necessary.
`
`
`
`
`
`F.
`
`“premises”
`
`The term “premises” appears in independent claims 1, 98 and 145 and its
`
`construction is necessary to interpret the meaning of the claims. Petitioner has
`
`offered no construction for this key term.
`
`
`
`As discussed supra, Applicant chose to be his own lexicographer and
`
`provided an explicit definition for the term “premises” in the Preliminary Remarks
`
`and First Remarks. EX2002 at 4; EX2003 at 8-9. Accordingly, the term “premises”
`
`should be construed as “a building or a structure and the grounds or parcel of
`
`land associated with the building or the structure, or a building or structure
`
`together with its grounds or land, 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.” This proposed construction is consistent
`
`with Applicant’s definition of the term “premises” in the Preliminary Remarks and
`
`
`
`20 20
`
`
`
`Case IPR2015-01760
`
`
`Preliminary Response of Patent Owner
`Patent 6,549,130
`
`
`
`
`
`
`
`
`
`
`First Remarks, and is also supported by and is consistent with the Specification of
`
`the ‘130 Patent, including the written description, the drawings and the claims.
`
`G.
`
`“remote”
`
`The term “remote” appears in independent claims 1, 98 and 145 and its
`
`
`
`
`
`construction is necessary to interpret the meaning of the claims. Petitioner has
`
`offered no construction for this key term.
`
`
`
`As discussed supra, Applicant chose to be his own lexicographer and
`
`provided an explicit definition for the term “remote” in the Preliminary Remarks
`
`and First Remarks. EX2011 at 3; EX2002 at 10-11. Accordingly, the term
`
`“remote” should be construed as “separate and apart from.” This proposed
`
`construction is consistent with Applicant’s definition of the term “remote” in the
`
`Preliminary Remarks and First Remarks, and is also supported by and is consistent
`
`with the Specification of the ‘130 Patent, including the written description, the
`
`drawings and the claims.
`
`
`
`
`
`H.
`
`“located at”
`
`The term “located at” appears in independent claims 1, 98 and 145 and its
`
`construction is necessary to interpret the meaning of the claims. Petitioner has
`
`offered no construction for this key term.
`
`
`
`21 21
`
`
`
`Case IPR2015-01760
`
`
`Preliminary Response of Patent Owner
`Patent 6,549,130
`
`
`
`
`
`
`
`
`
`
`As discussed supra, Applicant chose to be his own lexicographer and
`
`
`provided an explicit definition for the term “located at” in the Preliminary Remarks
`
`and First Remarks. EX2011 at 5; EX2002 at 8. Accordingly, the term “located at”
`
`should be construed as “situated at, situated in or situated on
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
