Trials@uspto.gov
`571-272-7822
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` Paper 23
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` Date: February 15, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`COXCOM, LLC,
`Petitioner
`
`v.
`
`JOAO CONTROL & MONITORING SYSTEMS, LLC,
`Patent Owner
`____________
`
`Case IPR2015-01762
`Patent 7,397,363
`____________
`
`
`Before STACEY G. WHITE, JASON J. CHUNG, and BETH Z. SHAW,
`Administrative Patent Judges.
`
`SHAW, Administrative Patent Judge.
`
`
`DECISION
`Final Written Decision
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`INTRODUCTION
`
`I.
`Petitioner, CoxCom, LLC, filed a Petition requesting inter partes
`review of claims 1, 3–5, 8, 13–17, 20, 42–46, 48–49, 53–54, and 84–86 of
`U.S. Patent No. 7,397,363 (“the ’363 patent”). Paper 1 (“Pet.”). Patent
`Owner, Joao Control & Monitoring Systems, LLC, filed a Preliminary
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`Response pursuant to 35 U.S.C. § 313. Paper 7 (“Prelim. Resp.”). Based on
`our review of these submissions, we instituted inter partes review of claims
`1, 3–5, 8, 13–17, 20, 44, and 84–86 (“the instituted claims”) but did not
`institute inter partes review of claims 42, 43, 45, 46, 48, 49, 53, and 54.
`Paper 11 (“Dec.”).
`Patent Owner filed a Patent Owner’s Response (Paper 20, “PO
`Resp.”), and Petitioner filed a Reply (Paper 23, “Pet. Reply”). An oral
`hearing was held for this case on November 17, 2016. A transcript of the
`oral hearing is included in the record. Paper 22.
`We have jurisdiction under 35 U.S.C. § 6. This final written decision
`is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the
`reasons discussed below, Petitioner has demonstrated by a preponderance of
`the evidence that claims 1, 3–5, 8, 13–17, 20, and 84–86 of the ’363 patent
`are unpatentable, but has not shown by a preponderance of the evidence that
`claim 44 of the ’363 patent is unpatentable.
`
`Related Matters
`
`A.
`Petitioner and Patent Owner indicate that the ’363 patent or related
`patents have been asserted in a significant number of related cases. See Pet.
`1–2; Paper 5. The ’363 patent also is the subject of two other inter partes
`reviews (IPR2015-01612 and IPR2015-01645).
`
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`
`The Instituted Grounds
`
`B.
`We instituted review based on following grounds of unpatentability:
`claims 1, 3–5, 8, 13–17, 20, 44, and 84–86 under 35 U.S.C. § 103(a) as
`obvious over the combination of Koether (Ex. 1008)1 and Crater (Ex.
`1009)2.
`
`The ’363 Patent
`
`C.
`The ’363 patent is directed to controlling a vehicle or premises.
`Ex. 1001, Abst. The ’363 patent describes a first control device, which
`generates a first signal and is associated with a web site and located remote
`from a premises or vehicle. Id. The first control device generates the first
`signal in response to a second signal that is transmitted via the Internet from
`a second control device located remote from the first device and remote
`from the premises or vehicle. Id. The first device determines whether an
`action associated with the second signal is allowed, and if so, transmits the
`first signal to a third device located at the premises. Id. The third device
`generates a third signal for activating, de-activating, disabling, re-enabling,
`or controlling an operation of a system, device, or component of the
`premises or vehicle. See id.
`
`Illustrative Claim
`
`D.
`We instituted inter partes review of claims 1, 3–5, 8, 13–17, 20, 44,
`and 84–86, of which claims 1 and 84 are the only independent claim. Claim
`1 is illustrative and is reproduced below:
`
`
`1 U.S. Patent No. 5,875,430, filed May 2, 1996.
`2 U.S. Patent No. 5,805,442, filed May 30, 1996.
`
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`1. An apparatus, comprising:
`a first processing device, wherein the first processing
`device at least one of generates a first signal and transmits a
`first signal for at least one of activating, de-activating,
`disabling, re-enabling, and controlling an operation of, at least
`one of a premises system, a premises device, a premises
`equipment, a premises equipment system, a premises
`component, and a premises appliance, of or located at a
`premises, wherein the first processing device is associated with
`a web site, and further wherein the first processing device is
`located at a location remote from the premises,
`wherein the first processing device at least one of
`generates the first signal and transmits the first signal in
`response to a second signal, wherein the second signal is at
`least one of generated by a second processing device and
`transmitted from a second processing device, wherein the
`second processing device is located at a location which is
`remote from the first processing device and remote from the
`premises, wherein the first processing device determines
`whether an action or an operation associated with information
`contained in the second signal, to at least one of activate, de-
`activate, disable, re-enable, and control an operation of, the at
`least one of a premises system, a premises device, a premises
`equipment, a premises equipment system, a premises
`component, and a premises appliance, is an authorized or an
`allowed action or an authorized or an allowed operation, and
`further wherein the first processing device at least one of
`generates the first signal and transmits the first signal to a third
`processing device if the action or the operation is determined to
`be an authorized or an allowed action or an authorized or an
`allowed operation, wherein the third processing device is
`located at the premises,
`wherein the second signal is transmitted to the first
`processing device via, on, or over, at least one of the Internet
`and the World Wide Web, and further wherein the second
`signal is automatically received by the first processing device,
`wherein the first signal is transmitted to and automatically
`received by the third processing device, wherein the third
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`processing device at least one of generates a third signal and
`transmits a third signal for at least one of activating, de-
`activating, disabling, re-enabling, and controlling an operation
`of, the at least one of a premises system, a premises device, a
`premises equipment, a premises equipment system, a premises
`component, and a premises appliance, in response to the first
`signal.
`
`
`II. ANALYSIS
`
`Real Party in Interest
`
`A.
`“To challenge that identification of real party in interest a patent
`owner must provide sufficient rebuttal evidence to bring reasonably into
`question the accuracy of Petitioner’s identification of RPIs.” See Office
`Patent Trial Practice Guide, 77 Fed. Reg. 48,680, 48,695 (Aug. 14, 2012).
`Whether a non-party is a real party in interest is a “highly fact-dependent
`question” that is addressed on a “case-by-case” basis. See 77 Fed. Reg.
`48,759. “A common focus of the inquiry is . . . whether the non-party
`exercised or could have exercised control over a party’s participation in a
`proceeding.” Id.
`The concept of control means that “the non-party ‘had the opportunity
`to present proofs and argument’ . . . or ‘to direct or control the content’ of
`the filing.” JP Morgan Chase & Co., et al. v. Maxim Integrated Prods., Inc.,
`Case CBM2014-00179, slip op. at 10 (PTAB Feb. 20, 2015) (Paper 11) (“JP
`Morgan”). “‘The evidence as a whole must show that the non-party
`possessed effective control over a party’s conduct of the [proceeding] as
`measured from a practical, as opposed to a purely theoretical standpoint.’”
`Id. (quoting Gonzalez v. Banco Cent Corp., 27 F.3d 751, 759 (1st Cir.
`1994)).
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`The Petition names CoxCom, LLC (“CoxCom”) as the real party in
`interest. Pet. 1. Patent Owner has not articulated sufficient rebuttal
`evidence to bring reasonably into question the accuracy of Petitioner’s
`identification of CoxCom as the real party in interest. Patent Owner argues
`CoxCom was one of the named co-petitioners in related IPR2015-01482 and
`IPR2015-01485 involving the ’363 patent. PO Resp. 34. Furthermore,
`Patent Owner argues two of CoxCom’s co-petitioners in IPR2015-01482 and
`IPR2015-01485, Terremark North America LLC (“Terremark”) and Time
`Warner Cable Inc. (“Time Warner”) are time barred and should be named as
`real parties in interest. Id. at 35–38. Patent Owner argues Terremark, Time
`Warner, and CoxCom cooperated in planning, preparation, and review of the
`present Petition because: the present Petition is based on the same patent as
`IPR2015-01482 and IPR2015-01485; Petitioner’s expert in the present
`proceeding, Mr. Richard Bennett, is the same expert as in IPR2015-01482
`and IPR2015-01485; and Mr. Bennett acknowledged that he incorporated
`some comments from attorneys representing Terremark and Time Warner
`into the final version of the declaration submitted in connection with the
`present Petition. Id. at 38–43.
`In reply, Petitioner argues neither Terremark nor Time Warner were
`involved in any aspect of preparing the present Petition. Pet. Reply 19.
`Petitioner also argues Terremark and Time Warner did not have the
`opportunity to direct, contribute, or control the content of the present
`Petition. Id. Moreover, Petitioner argues Mr. Bennett testified under oath
`that he was confused by Patent Owner’s questioning and that he misspoke
`when he acknowledged that he incorporated comments from Terremark’s
`and Time Warner’s counsel into the final version of the declaration in
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`connection with the present Petition. Id. at 20–21.
`We agree with Petitioner. The Koether and Crater references in the
`present Petition were not relied upon in IPR2015-01482 and IPR2015-
`01485, so the strategy in preparing the present Petition was necessarily
`different than the strategies in preparing IPR2015-01482 and IPR2015-
`01485. Simply because Petitioner filed a petition on the same patent as the
`earlier filed IPR2015-01482 and IPR2015-01485, does not create an
`implication that CoxCom cooperated with or worked with non-parties
`Terremark or Time Warner. JP Morgan, slip op. at 13 (“[A] Petitioner and a
`non-party’s status as co-defendants and co-members of a joint defense group
`is not alone sufficient to render the non-party a real party in interest.”).
`We are not persuaded that Petitioner’s use of the same expert in the
`present Petition and IPR2015-01482 and IPR2015-01485 creates an
`implication that Terremark and Time Warner influenced Mr. Bennett’s
`opinions of the present Petition. Nothing prevents Petitioner from using the
`same expert in the present Petition and IPR2015-01482 and IPR2015-01485
`to opine on different prior art references (i.e., Koether and Crater) that were
`not at issue in either IPR2015-01482 or IPR2015-01485.
`We also are not persuaded that Mr. Bennett’s acknowledgement that
`he incorporated some comments from attorneys representing Terremark and
`Time Warner into the final version of the declaration submitted in
`connection with the present Petition demonstrates that he worked with
`attorneys representing Terremark or Time Warner to prepare his declaration
`for the present Petition. Mr. Bennett testified that he was confused by Patent
`Owner’s questioning and “may have misspoken” when he acknowledged
`that he incorporated some comments from attorneys representing Terremark
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`and Time Warner into the final version of the declaration submitted in
`connection with the present Petition. Ex. 1013, 47:19–48:3. Furthermore,
`Mr. Bennett’s participation on the present IPR is independent of his
`involvement in IPR2015-01482 and IPR2015-01485. Id. at 46:13–21, 47:9–
`13, 76:20–25. Mr. Bennett testified that he did not work, interact, or discuss
`the present Petition with attorneys representing Terremark or Time Warner.
`Id. at 46:6–47:8, 47:14–49:2.
`There is insufficient evidence of record that Terremark or Time
`Warner controls or had an opportunity to control CoxCom’s decision to file
`or maintain this inter partes review. Accordingly, we are not persuaded that
`Petitioner has failed to name Terremark or Time Warner as real parties in
`interest.
`
`Level of Ordinary Skill in the Art
`
`B.
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(citation omitted). Petitioner asserts that a person of ordinary skill in the art
`in the field of the ’363 patent would have had a bachelor’s degree in
`engineering or equivalent coursework and at least two years of experience in
`networked systems. Pet. 12 (citing Ex. 1002 ¶ 21).
`Patent Owner does not address Petitioner’s statements regarding the
`level of ordinary skill in the art, but asserts that we should accord little or no
`weight to the testimony of Mr. Bennett because Mr. Bennett fails to qualify
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`as a person of ordinary skill in the art under his own definition. PO Resp.
`26–34.
`The ’363 patent is directed to controlling a vehicle or premises.
`Ex. 1001, Abst. It describes the relevant problems encountered in the art as
`those involved in the control, monitoring, or security of vehicles or
`premises, in a network environment. Id. at 1:20–52; 3:12–21. The ’363
`patent is not directed to specific issues associated with electrical circuits or
`electrical connections between devices. The Specification identifies no
`specific problem that stems from the apparatus being a particular type of
`electrical device. From this evidence, we conclude that a person of ordinary
`skill in the art with respect to the ’363 patent would be skilled in the field of
`networked systems.
`For the foregoing reasons, we are not persuaded that the level of
`ordinary skill in the art requires specific coursework or education in the form
`of a degree in electrical engineering. Instead, we are persuaded by
`Petitioner’s statement of the level of ordinary skill in the art, and our finding
`of the level of ordinary skill is similar to that proposed by Petitioner, but
`with a slight modification, i.e., that a basic level of experience is required, at
`the level of at least two years of experience in networked systems.
`We find that the level of ordinary skill in the art is that of one having
`at least two years of working experience with networked systems. A more
`advanced degree would be paired with a shorter period of working
`experience.
`
`C. Expert Testimony
`Patent Owner did not file a motion to exclude Mr. Bennett’s testimony
`as inadmissible, but requests, in its Response, that we accord little or no
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`weight to the testimony of Mr. Bennett because Mr. Bennett fails to qualify
`as a person of ordinary skill in the art under his own definition. PO Resp.
`25–34.
`Patent Owner has not articulated a persuasive reason for giving Mr.
`Bennett’s testimony little or no weight. Moreover, as discussed above, we
`are not persuaded that a person of ordinary skill in the art of the ’363 patent
`would be required to have a specific degree or coursework in electrical
`engineering. We are, thus, not persuaded that Mr. Bennett’s answers, during
`deposition, to questions about his background are wrong or that the entirety
`of his testimony should be given little or no weight based on this testimony.
`We find Mr. Bennett to be highly qualified in the area of networked
`systems. In his declaration, Mr. Bennett stated
`I worked as a computer programmer, network engineer, and
`system architect from 1977 until 2009 with a number of
`computer networking firms, including those that produced tele-
`video systems such as Hewlett-Packard, Sharp Labs,
`Compression Labs, Sony Electronics Laboratory, Starlight
`Networks, Fourth Network, 3Com, Intel, and Cisco. In the
`course of my professional career, I developed network protocols
`and applications, video servers, television remote control
`systems, ad insertion equipment for TV broadcasters, and
`Quality of Service mechanisms for networks that enabled high-
`quality video streaming and remote control of video streaming.
`
`Ex. 1002 ¶ 7. Moreover, Mr. Bennett states “[a]t the time of the invention in
`question, I was a software developer working on a video-on-demand server
`at Hewlett-Packard.” Id. ¶ 12.
`We are persuaded that Mr. Bennett’s education and experience is
`relevant to the issues discussed in the ’363 patent. Moreover, given the
`subject matter of the ’363 patent and Mr. Bennett’s experience in software
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`development and networked systems, we do not find his admitted lack of a
`degree in electrical engineering (see Ex. 2006, 34) as basis to accord his
`testimony little or no weight. On this record, we still credit the testimony of
`Mr. Bennett. Mr. Bennett’s lack of an electrical engineering degree does not
`establish that his specialized knowledge in the area of networked systems
`will not assist the Board in understanding the evidence. See Fed. R. Evid.
`702.
`
`Under 37 C.F.R. § 42.1(d), we apply the preponderance of the
`evidence standard in determining whether Petitioner has established
`unpatentability. In doing so, it is within our discretion to determine the
`appropriate weight to be accorded the evidence presented, including expert
`opinion, based on the disclosure of the underlying facts or data upon which
`that opinion is based. Thus, we decline to make a determination about Mr.
`Bennett’s opinion, as a whole. Rather, in our analysis we will consider
`relevant portions of Mr. Bennett’s testimony and determine the appropriate
`weight to accord that particular testimony.
`
`D. Claim Construction
`In the Decision to Institute, we noted that the ’363 patent was due to
`expire no later than May 6, 2016. Dec. 6. The parties have not disputed the
`calculation of the ’363 patent’s expiration date. Based on our review of the
`record, we discern no reason to modify that calculation, and, thus, we find
`the ’363 patent to be expired. For claims of an expired patent, the Board’s
`claim interpretation is similar to that of a district court. See In re Rambus,
`Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). “In determining the meaning of the
`disputed claim limitation, we look principally to the intrinsic evidence of
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`record, examining the claim language itself, the written description, and the
`prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic
`Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing
`Phillips v. AWH Corp., 415 F. 3d 1303, 1312–17 (Fed. Cir. 2005)).
`We are mindful that “limitations are not to be read into the claims
`from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
`1993). Nevertheless, claims are not interpreted in a vacuum but are part of
`and read in light of the specification. United States v. Adams, 383 U.S. 39,
`49 (1966) (“[I]t is fundamental that claims are to be construed in the light of
`the specifications and both are to be read with a view to ascertaining the
`invention.”). In that regard, the terms are given their ordinary and
`customary meaning, as would be understood by one of ordinary skill in the
`art in the context of the Specification. In re Translogic Tech., Inc., 504 F.3d
`1249, 1257 (Fed. Cir. 2007). The construction that stays true to the claim
`language and most naturally aligns with the inventor’s description is likely
`the correct interpretation. Renishaw PLC v. Marposs Societa’ per Azioni,
`158 F.3d 1243, 1250 (Fed. Cir. 1998).
`For purposes of the Decision to Institute, we construed the terms
`“remote,” “premises,” and “located at.” Dec. 8–9. We reviewed and
`adopted Patent Owner’s explicit definitions for these terms, which Patent
`Owner provided in the prosecution of the application that issued as the ’363
`patent. Dec. 8 (citing Ex. 2002). Based on our review of the full record, we
`discern no reason to modify or further discuss in this Final Written Decision
`our constructions for these claim terms. For convenience, these claim
`constructions are reproduced in the table below.
`
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`Term
`Remote
`
`Citations
`Ex. 2002,
`10–11
`
`Premises
`
`Ex. 2002, 8–
`9
`
`Located at Ex. 2002, 8
`
`Construction
`“‘Remote’ means ‘separate and apart from, or
`external from, or at a distance from or distant
`from, or not located in.’”
`“‘Premises’ means ‘a building or a structure
`and the grounds or parcel of land associated
`with the building or the structure, or a building
`or structure or a portion, room, or office, of or
`in the building or structure, or a home, mobile
`home, mobile building, mobile structure,
`residence, residential building, office,
`commercial building, commercial office,
`structure, equipment, facility, machine, rig,
`assembly line, or edifice.’”
`“‘Located at’ means ‘situated at, or situated in,
`or situated on.’”
`
`
`In its Response, Patent Owner proposes an additional construction for
`“processing device.” PO Resp. 12–13. We determine that it is not necessary
`to expressly construe this term to resolve the controversy here. To the extent
`it is necessary for us to construe any additional claim terms in this decision,
`we do so below in the context of analyzing whether the prior art renders the
`claims unpatentable.
`
`E.
`
`Priority Status of Koether and Crater
`
`Petitioner argues that claims 1, 3–5, 8, 13–17, 20, 44, and 84–86
`would have been obvious over the combination of Koether and Crater. Pet.
`14–59. Koether was filed on May 2, 1996. Pet. 14; Ex. 1008 at [22]. Crater
`was filed on May 30, 1996. Pet. 36; Ex. 1009 at [22]. The earliest
`application listed on the face of the ’363 patent was filed on March 27, 1996
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`(“March 1996 application”). Ex. 1001 at [63]. Petitioner argues that the
`challenged claims are entitled to a priority date of no earlier than July 18,
`1996 because the only support for a processing device located at a premises
`was added to the specification as part of a continuation-in-part (“CIP”)
`application (U.S. Patent Application No. 08/683,828) filed on July 18, 1996
`(“July 1996 application”). Pet. 12–13. In the Institution Decision, we
`determined that Koether and Crater are 102(e) prior art to the challenged
`claims of the ’363 patent. Dec. 9–10.
`Entitlement to the March 27, 1996 filing date would allow Patent
`Owner to antedate Koether and Crater, thereby removing them as references
`against the claims. To determine whether Patent Owner is entitled to the
`March 27, 1996 priority date, we must determine if the March 1996
`application disclosure meets the written description requirement for the
`instituted claims. To satisfy the written description requirement, the
`disclosure of the prior application must “convey with reasonable clarity to
`those skilled in the art that, as of the filing date sought, [the inventor] was in
`possession of the invention.” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,
`1563–1564 (Fed. Cir. 1991).
`We agree with Petitioner that in this case, there is no reason to
`presume that claims in the CIP July 1996 application are entitled3 to the
`effective filing date of the earlier filed March 1996 application. See
`PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1305 (Fed. Cir.
`2008). Thus, we review Patent Owner’s arguments as to why the limitations
`
`
`3 Patent Owner does not dispute that it must come forward with evidence to
`prove entitlement to claim priority to the earlier filing date of the March
`1996 application. See PO Resp. 13–24.
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`of the instituted claims were conveyed with reasonable clarity to those
`skilled in the art to show that the inventor was in possession of the invention
`as of March 27, 1996.
`It is important review the language of claim 1 of the ’363 patent,
`which does not merely recite a disclosure “premises” in isolation. In other
`words, to determine if Patent Owner had possession of the claimed subject
`matter, we must determine more than just whether the mere concept of a
`premises is disclosed. Upon review of the full record, we conclude that the
`March 1996 application does not provide a written description of “premises”
`as set forth in the instituted claims for the following reasons.
`As Petitioner points out, the March 1996 application never mentions
`the word “premises.” Pet. 13; Ex. 1004. Petitioner asserts that the only
`support for a processing device located at a “premises” was added to the
`specification as part of a continuation-in-part application filed on July 18,
`1996. Id. Petitioner argues that in contrast to the March 1996 application,
`the word premises is recited hundreds of times in the July 1996 application,
`which also added figures 15 and 16 corresponding to the added disclosure.
`Id.
`
`In its Response, Patent Owner does not dispute that the March 1996
`application fails to use the word “premises,” but argues that the March 1996
`application includes various elements that show that Patent Owner claimed a
`premises. PO Resp. 17–18. In particular, Patent Owner points to Figure
`11B, which Patent Owner argues shows a server computer 952 located at a
`premises identified as a processing site, and a computer 970 at a premises
`identified as a central security office. Id.
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`Patent Owner argues that a disclosure in Figure 11B in the March
`1996 application of a server computer at a processing site and a computer at
`a central security office shows possession of the subject matter of claim 1.
`Id. Yet, we must look to the claim scope and not merely whether the
`concept of a site or office was disclosed in isolation in the March 1996
`application.
`We look to the scope of claim 1, which is reproduced below with
`certain limitations emphasized:
` 1. An apparatus, comprising:
`a first processing device, wherein the first processing device at
`least one of generates a first signal and transmits a first signal for at
`least one of activating, de-activating, disabling, re-enabling, and
`controlling an operation of, at least one of a premises system, a
`premises device, a premises equipment, a premises equipment system,
`a premises component, and a premises appliance, of or located at a
`premises, wherein the first processing device is associated with a web
`site, and further wherein the first processing device is located at a
`location remote from the premises,
`wherein the first processing device at least one of generates the
`first signal and transmits the first signal in response to a second signal,
`wherein the second signal is at least one of generated by a second
`processing device and transmitted from a second processing device,
`wherein the second processing device is located at a location which is
`remote from the first processing device and remote from the premises,
`wherein the first processing device determines whether an action or
`an operation associated with information contained in the second
`signal, to at least one of activate, de-activate, disable, re-enable, and
`control an operation of, the at least one of a premises system, a
`premises device, a premises equipment, a premises equipment system,
`a premises component, and a premises appliance, is an authorized or
`an allowed action or an authorized or an allowed operation, and
`further wherein the first processing device at least one of generates the
`first signal and transmits the first signal to a third processing device if
`the action or the operation is determined to be an authorized or an
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`
`allowed action or an authorized or an allowed operation, wherein the
`third processing device is located at the premises,
`wherein the second signal is transmitted to the first processing
`device via, on, or over, at least one of the Internet and the World Wide
`Web, and further wherein the second signal is automatically received
`by the first processing device, wherein the first signal is transmitted to
`and automatically received by the third processing device, wherein the
`third processing device at least one of generates a third signal and
`transmits a third signal for at least one of activating, de-activating,
`disabling, re-enabling, and controlling an operation of, the at least
`one of a premises system, a premises device, a premises equipment, a
`premises equipment system, a premises component, and a premises
`appliance, in response to the first signal.
`
`Ex. 1001, 104:13–60 (emphases added).
`Patent Owner has urged a definition of the word “premises,” which
`we have adopted, to mean: “a building or a structure and the grounds or
`parcel of land associated with the building or the structure, or a building or
`structure or a portion, room, or office, of or in the building or structure, or a
`home, mobile home, mobile building, mobile structure, residence, residential
`building, office, commercial building, commercial office, structure,
`equipment, facility, machine, rig, assembly line, or edifice.” PO Resp. 11.
`This broad construction of premises is supported only by material
`added in the July 1996 application. In fact, Patent Owner cited only to
`language first introduced in the July 1996 application to support this broad
`construction. See Paper 7 at 18; Ex. 2002 at 4, Ex. 2003 at 8–9, Ex. 1018 at
`7–8, Ex. 1019 at 3. Moreover, during oral hearing, Patent Owner
`acknowledged the “assembly line” disclosure was added to the July 1996
`application. Tr. 27:1–28:17.
`Patent Owner has not explained adequately how the server and
`computer in Figure 11B show possession of the premises recited in claim 1.
`
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`As Patent Owner appears to acknowledge, Figure 11B relates to a vehicle
`control system and not a premises control system. PO Resp. 19. Thus, we
`are not persuaded that Figure 11B shows possession of, for example, “a first
`processing device, wherein the first processing device at least one of
`generates a first signal and transmits a first signal for at least one of
`activating, de-activating, disabling, re-enabling, and controlling an
`operation of, at least one of a premises system,” as recited in claim 1
`(emphasis added).
`Additionally, the mere disclosure of a security office in the
`specification does not disclose the entire genus of “premises,” which by
`Patent Owner’s own definition encompasses many types of buildings,
`structures, and equipment, including an “assembly line.”4 Thus, even if we
`agreed with Patent Owner that there was some disclosure of a particular
`species of the genus of “premises” in the March 1996 application, this alone
`would not be sufficient to entitle the later claimed genus of “premises” to the
`filing date of the March 1996 application.
`While Patent Owner appears to argue that it does not need to show
`possession of its complete definition of “premises” to be entitled to the
`March 1996 filing date,5 we disagree. This conclusion would be untenable
`
`
`4 Patent Owner’s counsel, who is also listed as the inventor of the patent at
`issue, agreed at oral argument that the assembly line was only added in the
`July 1996 application. Tr. 28:10–11.
`5 Tr. 31:23–32:4 (“MR. JOAO: Well, I don't believe we need to have the
`disclosure of the complete definition, because the definition is in the
`disjunctive based on the different embodiments that are described in the
`various patent applications, but the term premises, as used in the disjunctive
`here, as defined in the disjunctive, a premises is defined as an office.”).
`
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`because it would allow Patent Owner to pick and choose one claim scope for
`purposes of showing written description, and choose another claim scope for
`purposes of invalidity. Cf., e.g., PowerOasis Inc., 522 F.3d at 1310
`(“PowerOasis’s argument boils down to a claim that PowerOasis is entitled
`to a broad claim construction for purposes of infringement and a di