Paper 8
`
`
`
`
`
`Trials@uspto.gov
` Date: February 22, 2016
`
`
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`571-272-7822
`
`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 C1
`____________
`
`
`Before HOWARD B. BLANKENSHIP, STACEY G. WHITE, and
`BETH Z. SHAW, Administrative Patent Judges.
`
`SHAW, Administrative Patent Judge.
`
`
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`I.
`
`INTRODUCTION
`
`Petitioner, CoxCom, LLC, filed a Petition requesting an inter partes
`review of claims 1, 3‒5, 8, 13‒17, 20, 42‒46, 48, 49, 53, 54, and 84‒86 (“the
`challenged claims”) of U.S. Patent No. 7,397,363 C1 (“the ’363 patent”).
`Paper 1 (“Pet.”). Patent Owner, Joao Control & Monitoring Systems, LLC,
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`filed a Preliminary Response pursuant to 35 U.S.C. § 313. Paper 7 (“Prelim.
`Resp.”).
`We have authority to determine whether to institute an inter partes
`review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Upon consideration of the
`record, and for the reasons explained below, we determine that the
`information presented shows a reasonable likelihood that Petitioner would
`prevail with respect to claims 1, 3–5, 8, 13–17, 20, 44, and 84–86. See
`35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of
`claims 1, 3–5, 8, 13–17, 20, 44, and 84–86.
`We determine that Petitioner has not established a reasonable
`likelihood of prevailing on claims 42, 43, 45, 46, 48, 49, 53, and 54 in the
`Petition. Accordingly, we do not institute an inter partes review of claims
`42, 43, 45, 46, 48, 49, 53, and 54.
`
`A.
`
`Related Matters
`
`Petitioner indicates that there are a significant number of related
`cases. See Pet. 1–2. At the time the Petition was filed, U.S. Patent No.
`7,397,363 B2 was subject to ex parte reexamination and a Notice of Intent to
`Issue Ex Parte Reexamination Certificate was mailed July 29, 2015. Ex.
`2002. A reexamination certificate issued September 2, 2015 for U.S. Patent
`No. 7,397,363 C1.
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`B.
`
`The Asserted Grounds
`
`Petitioner identifies the following as asserted grounds of
`unpatentability:
`
`Reference(s)
`
`Basis
`
`Koether (Ex. 1008)1
`
`§ 103(a)
`
`Koether and Crater (Ex.
`1009)2
`
`§ 103(a)
`
`Challenged Claim(s)
`42, 43, 45, 46, 48,
`49, 53, and 54
`1, 3–5, 8, 13–17, 20,
`44, and 84–86
`
`
`
`C.
`
`The ’363 Patent
`
`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.
`
`
`
`
`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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`D.
`
`The Challenged Claims
`
`Petitioner challenges claims 1, 3–5, 8, 13–17, 20, 42, 43, 45, 46, 48,
`49, 53, 54, and 84–86, of which claims 1, 42, and 84 are the only
`independent claims. Claims 1 and 42 are illustrative and are reproduced
`below:
`
` 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,
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`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.
`
`42. An apparatus, comprising:
`a first processing device, wherein the first processing
`device at least one of monitors and detects an event regarding at
`least one of a premises system, a premises equipment system, a
`premises component, a premises device, a premises equipment,
`and a premises appliance, of a premises, wherein the first
`processing device is located at the premises, and further wherein
`the event is a detection of a state of disrepair of the at least one
`of a premises system, a premises equipment system, a premises
`component, a premises device, a premises equipment, and a
`premises appliance, wherein the first processing device at least
`one of generates a first signal and transmits a first signal to a
`second processing device, wherein the first signal contains
`information regarding the event, and further wherein the second
`processing device is located at a location which is remote from
`the premises, wherein
`the
`second processing device
`automatically receives the first signal, and further wherein the
`second processing device at least one of generates a second
`signal and transmits a second signal to a communication device,
`wherein the second signal is transmitted to the communication
`device via, on, or over, at least one of the Internet and the World
`Wide Web, wherein the communication device is located remote
`from
`the second processing device, and wherein
`the
`communication device automatically receives the second signal,
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`the communication device provides
`and further wherein
`information regarding the event.
`
`
`II. ANALYSIS
`
`A.
`
`Claim Construction
`
`Before proceeding with claim construction, we must determine the
`proper standard to apply. Petitioner and Patent Owner contend that the
`claims of the ʼ363 patent should be given their broadest reasonable
`construction. Pet. 8; Prelim. Resp. 10–12. That standard, however, is
`applicable only to unexpired patents. See 37 C.F.R. § 42.100(b) (“A claim
`in an unexpired patent shall be given its broadest reasonable construction in
`light of the specification of the patent in which it appears.”). In this case, if
`a trial proceeds, the patent will expire during the trial. For expired patents,
`we apply the Phillips standard used in district court patent litigation. See
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
`The term of a patent grant begins on the date on which the patent
`issues and ends 20 years from the date on which the application for the
`patent was filed in the United States “or, if the application contains a
`specific reference to an earlier filed application or applications under section
`120, 121, or 365(c) of this title, from the date on which the earliest such
`application was filed.” 35 U.S.C. § 154(a)(2) (2002). The ’363 patent is
`subject to a terminal disclaimer with respect to U.S. Patent No. 6,542,077 B2
`(“’077 patent”). Ex. 1001, at [76]. The earliest patent application
`referenced for the benefit of priority under 35 U.S.C. § 120, for the ’077
`patent, was filed on March 27, 1996, and the patent has a term extension of
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`40 days. The term of the ’363 patent, thus, will expire no later than May 6,
`2016.
`
`Because, on this record, we conclude that the term of the ’363 patent
`will expire prior to the end of the one-year period allotted for an inter partes
`review, for purposes of this Decision we treat the patent as 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 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, 415 F.3d at 1312–17).
`There is, however, a “heavy presumption” that a claim term carries its
`ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick Corp.,
`288 F.3d 1359, 1366 (Fed. Cir. 2002).
`Petitioner asserts that “[t]he terms of the challenged claims have a
`well-understood meaning.” Pet. 8. Petitioner presents arguments regarding
`the construction of several terms, including “first signal,” “second signal,”
`“third signal,” “automatically received,” and “at least one of activate, de-
`activate, disable, re-enable, and control.” Id. at 9–12. Patent Owner also
`provides argument for these terms (see Prelim. Resp. 16–17); however, at
`this juncture, we are not persuaded that express construction of these terms
`is necessary in order to resolve the disputes currently before us. Thus, we
`discern no need to provide express constructions for these terms at this time.
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
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`1999) (“[O]nly those terms need be construed that are in controversy, and
`only to the extent necessary to resolve the controversy.”).
`Patent Owner also argues that the terms “premises,” “remote,” and
`“located at” are defined expressly in the prosecution history of the ’363
`patent. Prelim. Resp. 15. Petitioner does not provide explicit arguments
`regarding these terms. Patent Owner seeks to rely upon statements made in
`the First Remarks filed on November 23, 2007 (“First Remarks”), during
`prosecution of the patent application that issued as the ’363 patent. Id.; Ex.
`2002.
`As noted above, explicit definitions for these terms were provided in
`the prosecution of the application that issued as the ’363 patent. See Ex.
`2002. We have reviewed the definitions and we find them to be reasonable
`and instructive to understanding the proper scope of these claims terms. See
`In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Thus, we adopt the
`following constructions for the purposes of this decision.
`
`Term
`Remote
`
`Construction
`“‘Remote’ means ‘separate and apart from, or
`external from, or at a distance from or distant
`from, or not located in.’”
`
`Citations
`Ex. 2002,
`9–11
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`Term
`Premises
`
`Citations
`Ex. 2002,
`7–9
`
`Located at Ex. 2002, 7
`
`
`
`Construction
`“‘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 a 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.’”
`“‘Located at’ means ‘situated at, or situated in,
`or situated on.’”
`
`B.
`
`Prior Art Status of Koether and Crater
`
`Petitioner argues that claims 42, 43, 45, 46, 48, 49, 53, and 54 would
`have been obvious over Koether, and 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. Ex. 1001, at [63]. Thus, as a threshold matter, we must address
`Petitioner’s argument that the challenged claims are entitled to a priority
`date of no earlier than July 18, 1996. Pet. 12–13. 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. Patent Owner has not spoken on this issue. On the record
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`currently before us, we are persuaded that Koether and Crater are 102(e)
`prior art to the challenged claims of the ’363 patent.
`
`C.
`
`Asserted Ground Based on Koether
`
`1.
`
`Koether (Ex. 1008)
`
`Koether describes a smart commercial kitchen network that real-time
`monitors and controls the maintenance and repair of kitchen or restaurant
`appliances. Ex. 1008, 3:50–53. Koether describes kitchen base stations
`within respective cells. Id. at 5:3–5. Each kitchen base station is capable of
`communicating through wireless means with corresponding kitchen
`appliances. Id. at 5:5–8. Koether describes using data networks for
`communication, such as an ISDN network or a network using data packets
`such as a TDMA technique. Id. at 5:37–45; 6:67–7:15.
`
`2.
`
`Analysis of Obviousness Challenge of Claims 42, 43, 45, 46, 48, 49,
`53, and 54
`
`Petitioner contends that that Koether, in light of the knowledge of the
`ordinary skilled artisan, teaches all of the limitations of independent claim
`42. Pet. 14–36. Claim 42 requires, in part, “the second signal is
`communicated . . . over, at least one of the Internet and the World Wide
`Web.” Ex. 1001, 114:55‒57. With respect to this limitation, Petitioner
`contends that in Koether, the signal communicated from the kitchen base
`station (the claimed second processing device) to the control center (the
`claimed communication device) was described as being over an integrated
`data network such as ISDN or using divided packets such as TDMA digital
`communications. Pet. 24 (citing Ex. 1008, 5:37-45; 6:67-7:1). Petitioner
`argues that by disclosing these types of data networks and communications
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`protocols, specifically ISDN, a person of ordinary skill in the art prior to
`July 1996 would have understood that a design choice yielding a predictable
`result for transmitting the second signal would be across either the Internet
`or the World Wide Web. Id. at 24–25. In its analysis, Petitioner relies on
`the Declaration testimony of Mr. Richard Bennett. Id. (citing Ex. 1002 ¶
`38).
`
`Patent Owner asserts that using an ISDN or TDMA communications
`standard does not mean that communications are over the Internet or World
`Wide Web, at least because the ISDN and TDMA standards can be used
`over any type of physical network. Prelim. Resp. 32. Thus, Patent Owner
`contends, Petitioner has not articulated any reasoning with some rational
`underpinning to support its conclusory statements, and Koether fails to teach
`or suggest this limitation. Id.
`We are not persuaded that Petitioner has identified or explained
`sufficiently how the portions of Koether relied upon by Petitioner teach or
`suggest that the second signal is communicated over Internet or the World
`Wide Web. Rather, Koether teaches use of ISDN or TDMA techniques, but
`Petitioner has not explained persuasively how the limited description of
`ISDN or TDMA in this context teaches or suggests how the second signal is
`communicated over the Internet or World Wide Web.
`Nor does Petitioner point to persuasive testimony from Mr. Bennett
`that demonstrates one of ordinary skill in the art would have understood that
`transmitting the second signal over the Internet or World Wide Web would
`represent a mere “design choice yielding a predictable result.” Pet. 24‒25;
`Ex. 1002 ¶ 38. See 37 C.F.R. § 42.65 (a) (“Expert testimony that does not
`disclose the underlying facts or data on which the opinion is based is entitled
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`to little or no weight.”). Thus, we deny Petitioner’s challenge that Koether
`renders obvious claim 42, or dependent claims 43, 45, 46, 48, 49, 53, and 54.
`
`D.
`
`Asserted Ground Based on Koether and Crater
`
`Petitioner argues that claims 1, 3–5, 8, 13–17, 20, 44, and 84–86
`would have been obvious over Koether and Crater. Pet. 36–59. Petitioner
`contends a person having ordinary skill would have combined the teachings
`of Koether with those of Crater for various reasons, including that both
`references describe systems for remote monitoring, management, and
`control of equipment. Pet. 37–38 (citing Ex. 1002 ¶¶ 54–55). Petitioner
`contends that one of ordinary skill in the art would have recognized the
`benefit of adding Crater’s multi-media capabilities to Koether’s kitchen
`monitoring system. Id.
`Patent Owner contends that Petitioner’s mapping of the processing
`devices in claims 1, 42, and 84 is incorrect, but provides no further
`explanation of how these alleged mapping errors would undermine
`Petitioner’s arguments with respect to unpatentability. Prelim. Resp. 33.
`Patent Owner also contends that Koether fails to teach an intermediate
`processing device that is associated with a web site and that is located at a
`location that is remote from the premises, and therefore fails to teach the
`“first processing device” of claim 1 and the “second processing device” of
`claim 84. Id.at 33–34. In particular, Patent Owner contends that the proper
`construction of the term “premises” includes not only a building or structure,
`but also the grounds or parcel of land associated with the building or
`structure. Prelim. Resp. 27. Patent Owner contends that each kitchen base
`station in Koether is associated with kitchen appliances located at the same
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`cell (e.g., building) as the kitchen appliances with which it communicates.
`Id. at 30. Thus, Patent Owner contends, each kitchen base station in Koether
`is not located “remote from the premises” because it is located on the same
`grounds, or same “premises,” associated with the kitchen appliances with
`which it communicates. Id.
`Patent Owner’s recitation of the premises as “not only a building or
`structure, but also the grounds or parcel of land associated with the building
`or structure,” however is incorrect. See Prelim Resp. 27. Rather, as
`discussed above, we adopt Patent Owner’s proposed construction for
`“premises” (as stated on page 18 of the Preliminary Response) as explicitly
`defined in the prosecution history, 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 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.”
`Prelim. Resp. 18; Ex. 2002, 8–9 (emphasis added). Thus, the construction of
`“premises” includes a “portion” of a building, structure, or office.
`Accordingly, we are not persuaded by Patent Owner’s argument that each
`kitchen base station in Koether must be located on the same “premises” as
`the kitchen appliances with which it communicates, and is therefore not
`remote from the premises. Rather, Koether teaches that each kitchen base
`station is some distance from at least one appliance within its cell. Pet. 22–
`23 (citing Ex. 1002 ¶ 34; Ex. 1008, Fig. 1; 5:3–8; 5:20–25; 4:15–19; 5:16–
`19). Therefore, on this record, we find that Koether teaches a kitchen base
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`station that may be in a different portion of a building or room from an
`appliance with which it communicates—i.e., remote from the premises. See
`id.
`
`We are persuaded by Petitioner’s arguments that “wherein the second
`processing device is located at a location which is remote from the first
`processing device and remote from the premises,” as recited in claim 1, is
`taught by the combination of Koether and Crater. See Pet. 40, 17; Ex. 1008
`at Fig. 1; 5:3–8. Similarly, we are persuaded by Petitioner’s arguments that
`“wherein the second processing device is located at a location which is
`remote from the premises,” as recited in claim 84, is also taught by the
`combination of Koether and Crater. See Pet. 54–56.
`We have reviewed Petitioner’s arguments with respect to each of
`claims 1, 3–5, 8, 13–17, 20, 44, and 84–86 of the ’363 patent. Upon
`consideration of Petitioner’s explanations and supporting evidence, we are
`persuaded by Petitioner’s contentions. On the present record, Petitioner has
`shown sufficiently that the combination of Koether and Crater teaches the
`limitations recited in claims 1, 3–5, 8, 13–17, 20, 44, and 84–86, and
`Petitioner has articulated sufficient reasoning with rational underpinning for
`combining Koether and Crater. Pet. 36–60. Accordingly, the information
`presented shows a reasonable likelihood that Petitioner would prevail in
`establishing that claims 1, 3–5, 8, 13–17, 20, 44, and 84–86 would have been
`rendered obvious by the combination of Koether and Crater.
`
`III. CONCLUSION
`
`For the foregoing reasons, we determine that the information
`presented establishes a reasonable likelihood that Petitioner would prevail in
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`in showing that claims 1, 3–5, 8, 13–17, 20, 44, and 84–86 of the ʼ363 patent
`are unpatentable. We determine that the information presented does not
`establish a reasonable likelihood that Petitioner would prevail in in showing
`that claims 42, 43, 45, 46, 48, 49, 53, and 54 are unpatentable.
`At this preliminary stage, the Board has not made a final
`determination with respect to the patentability of the challenged claims or
`any underlying factual and legal issues.
`IV. ORDER
`
`Accordingly, it is
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`review is hereby instituted for the 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 Koether and Crater;
`
`FURTHER ORDERED that no other ground of unpatentability
`asserted in the Petition is authorized for this inter partes review; and
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; the trial
`commences on the entry date of this decision.
`
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`PETITIONER:
`Mitchell G. Stockwell
`mstockwell@kilpatricktownsend.com
`
`D. Clay Holloway
`cholloway@kilpatricktownsend.com
`
`PATENT OWNER:
`
`Raymond A. Joao
`rayjoao@optonline.net
`
`René A. Vazquez
`rvazquez@hgdlawfirm.com
`
`
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