UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`COXCOM, LLC
`Petitioner,
`v.
`JOAO CONTROL & MONITORING SYSTEMS, LLC
`Patent Owner
`________________
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`Case IPR2015-01762
`Patent 7,397,363
`________________
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`PATENT OWNER’S RESPONSE TO PETITION
`FOR INTER PARTES REVIEW UNDER 37 C.F.R. § 42.107
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`Patent Owner’s Response to Petition
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`TABLE OF CONTENTS
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`I. INTRODUCTION ............................................................................................... 1
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`Page
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`II. BACKGROUND ................................................................................................. 2
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` A. Overview of the ‘363 Patent .......................................................................... 2
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` B. Prosecution History of the ‘363 Patent .......................................................... 6
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` 1. Original prosecution ................................................................................... 6
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` 2. Reexamination of the ‘363 Patent .............................................................. 6
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` C. Exemplary Claims .......................................................................................... 7
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`III. CLAIM CONSTRUCTION ............................................................................. 10
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` A. Legal Standards ............................................................................................ 10
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` B. “premises” .................................................................................................... 11
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`IV. THE KOETHER AND CRATER REFERENCES ARE NOT PRIOR ART TO
` THE ‘363 PATENT ......................................................................................... 13
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` C. “remote” ....................................................................................................... 11
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` D. “located at” ................................................................................................... 12
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` E. “processing device” ...................................................................................... 12
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` A. The Relevant Legal Principals ..................................................................... 14
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` B. The ‘363 Patent is Entitled to a Priority Date of March 27, 1996 ................ 15
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` 1. Claim construction ................................................................................... 16
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` 2. The March 1996 Application discloses premises processing devices ..... 16
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` 3. Admissions made by Petitioner’s expert confirm a sufficient disclosure
` was made in the March 1996 Application ............................................... 20
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`V. MR. RICHARD BENNETT’S DECLARATION IS FUNDAMENTALLY
` FLAWED .......................................................................................................... 25
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` A. Mr. Bennett is not a POSITA ....................................................................... 25
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` B. Mr. Bennett’s Testimony Should Be Given Little or No Weight ................ 33
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` A. Background .................................................................................................. 33
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` B. The Relevant Legal Principals ..................................................................... 35
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` C. Terremark and Time Warner Cooperated with CoxCom and Engaged in the
` Strategic Planning, Preparation and Review of the present Petition ........... 36
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` 1. The present Petition is Terremark’s and Time Warner’s second “bite at the
` apple” after being time-barred ................................................................. 36
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` 2. Terremark, Time Warner and CoxCom had necessarily cooperated
` in the strategic planning, preparation and review of the present
` Petition ..................................................................................................... 37
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` D. The Petition Should Be Dismissed for Failing to Name All Real Parties-In
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`VI. THE PETITION SHOULD BE DISMISSED FOR FAILING TO NAME ALL
` REAL PARTIES-IN-INTEREST .................................................................... 33
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` Interest and for Being Time Barred ............................................................. 43
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`VII. RESPONSE TO INSTITUTED GROUND OF INVALIDITY ..................... 44
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` A. The X.25 Protocol Used by Koether Teaches Away from Combining
` Koether and Crater and the Use of the Internet ......................................... 44
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` B. Koether and Crater Fail to Disclose, Teach or Suggest Determining
` Whether an Action or Operation is an Authorized or Allowed Action or
` Operation ..................................................................................................... 48
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` C. The Combination of Koether and Crater Fails to Render Obvious the
` Subject Matter of Claims 1, 3-5, 8, 13-17, 20, 44, 84, 85 and 86 .............. 51
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`VIII. CONCLUSION ............................................................................................. 53
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`LIST OF EXHIBITS
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`EX2002
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`Description
`Exhibit
`EX2001 U.S. Patent No. 6,204,760 to Brunius
`“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 Declaration of Steven W. Ritcheson
`EX2004 Notice of Intent to Issue Ex Parte Reexamination Certificate
`EX2005 Transcript of April 28, 2016 Deposition of Richard Bennett in the
`Present IPR
`EX2006 Transcript of March 3, 2016 Deposition of Richard Bennett in related
`IPR No. IPR2015-01477
`EX2007 Patent Owner’s Joint Opposition to Motions to Recognize June 23
`Filing Date of Petitions filed in related IPR No. IPR2015-01485
`“The Internet Report,” Morgan Stanley Global Technology Group,
`EX2008
`February 1996.
`EX2009 Transcript of April 29, 2016 Deposition of Richard Bennett in the
`Present IPR
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`I.
`INTRODUCTION
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`In response to the Petition for Inter Partes Review (“Petition”) filed by
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`Petitioner, the Board declined to institute inter partes review (Paper 8, the
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`“Decision”) of claims 42, 43, 45, 46, 48, 49, 53 and 54. However, the Board has
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`instituted inter partes review of claims 1, 3-5, 8, 13-17, 20, 44 and 84-86
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`(“Challenged Claims”) of U.S. Patent No. 7,397,363 (“the ‘363 Patent”) based on
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`the following grounds:
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`Ground
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`2
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`Claims
`1, 3-5, 8, 13-17,
`20, 44 and 84-
`86
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`Proposed Rejections
`obvious under 35 U.S.C. § 103(a) over Koether
`in view of Crater
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`The instituted ground of rejection is substantively flawed.
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`As an initial matter, Joao Control & Monitoring Systems, LLC (“JCMS” or
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`“Patent Owner”) respectfully submits that, based in part on information obtained
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`during the cross-examination of Petitioner’s expert, the Petition should be
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`dismissed for failing to name all real parties-in-interest and for being time-barred,
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`as will be discussed infra.
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`Also, as will be discussed infra, JCMS maintains that the ‘363 Patent is
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`entitled to a priority date of March 27, 1996. Thus, Koether and Crater are not
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`prior art with respect to all the challenged claims, and Ground 2 fails on this basis
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`alone.
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`In addition, even if, arguendo, the ‘363 Patent is not entitled to a priority
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`date of March 27, 1996 (which JCMS maintains is not the case), Koether and
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`Crater fail to teach important properly construed claim limitations, as will be
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`explained in more detail infra.
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`Further, as will be discussed infra, Petitioner’s expert, Mr. Richard Bennett,
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`does not meet his own definition of a person of ordinary skill in the art
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`(“POSITA”) in the field of the ‘363 Patent. Thus, he does not qualify as an expert
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`in the field of the ‘363 Patent, based on his own definition of a POSITA. Thus, the
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`Board should give Mr. Bennett’s testimony little or no weight because he is unable
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`to provide reliable testimony from the perspective of a POSITA.
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`Accordingly, Patent Owner submits this Response to Petitioner’s Petition
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`and the Board’s Decision.
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`II. BACKGROUND
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`A. Overview of the ‘363 Patent
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`The ‘363 Patent is directed to a novel and unconventional system for, inter
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`alia, remotely-controlling and/or monitoring systems located at vehicles and
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`premises. EX1001 at 1:23-30. The Challenged Claims are directed to a specially
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`assembled and programmed apparatus for controlling, and/or detecting a state of
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`disrepair of, a premises system and/or device from a remote location.
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`At the time of the claimed invention, existing premises monitoring, control
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`and/or security systems shared a similar and conventional architecture. Namely,
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`such systems generally utilized various sensors located at the premises (e.g., door
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`sensors, window sensors, motion sensors) and a main controller located at the
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`premises that receives signals from the various sensors.
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`For example, U.S. Patent No. 6,204,760 to Brunius (“Brunius”) discloses a
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`security system for a building complex that is representative of the conventional
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`systems that existed at the time of the claimed invention. EX2001. Brunius
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`describes a typical security system existing at the time as follows:
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`“In a
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`typical security system, a main controller
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`communicates with sensors positioned throughout a
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`surveillance area, such as a home or business, to monitor
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`various security conditions . . . [t]he control panel is
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`typically placed in a remote location in the surveillance
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`area such as in a basement or utility closet . . . [t]he
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`sensors placed throughout the surveillance area may
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`include door/window sensors, passive infrared sensors
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`for motion, temperature sensors, and the like . . . [w]hen
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`a change in condition is sensed, the transmitter associated
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`with a sensor transmits a sensor signal . . . to the main
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`controller. When the resident opens a door that is
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`monitored by a door/window sensor, the sensor transmits
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`a sensor signal to the main controller indicating that the
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`door has been opened . . . [i]f the security system is not
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`disarmed within the entry delay, e.g., thirty seconds, the
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`main controller . . . may sound an alarm. Also, the main
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`controller may be tied to a telephone system for the
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`purpose of notifying a security agency or police of the
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`alarm condition.” (emphasis added). EX2001 at 1:15-36.
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`Thus, conventional security systems at the time of the claimed invention
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`would utilize sensors located at the premises (the surveillance area in Brunius) that
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`sends sensor signals to a main controller which, although located remote from the
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`sensors, is still located at the premises (the examples given in Brunius are a
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`basement or utility closet). Further, the main controller could, optionally, send a
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`notification signal to a security agency or police in response to an alarm condition.
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`One capability missing from conventional systems existing at the time of the
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`claimed invention is the ability of an owner or occupant of the premises, as
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`opposed to a monitoring entity such as a security agency or police, to remotely
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`control the premises security system or monitor conditions at the premises. Indeed,
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`this is one of the problems addressed by the ‘363 Patent, which utilizes a unique
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`and unconventional system made up of special purpose devices that enable owners
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`or occupants of vehicles and/or premises to monitor the vehicle or premises and/or
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`exert control over devices located at the vehicle or premises. As indicated in the
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`‘363 Patent:
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`“While anti-theft and/or security systems exist for
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`residential and/or commercial premises, such systems fail
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`to enable the owner or occupant and/or other authorized
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`individual to conveniently and effectively exercise and/or
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`perform control, monitoring and/or security functions
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`with
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`regards
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`to
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`these premises. The ability
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`to
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`conveniently and effectively enable one to exercise
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`and/or to perform control, monitoring and/or security
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`functions would prove to be invaluable in allowing
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`owners, occupants and/or other authorized individuals to
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`exercise and/or to provide control, monitoring and/or
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`security functions over these premises, from a remote
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`location and at any time.” (emphasis added). EX1001 at
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`2:63 – 3:08.
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`B.
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`Prosecution History of the ‘363 Patent
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`1.
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`Original prosecution
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`The patent application that issued as the ‘363 Patent was filed on September
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`16, 2002. EX1001. The ‘363 Patent issued on July 8, 2008. Id.
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`During prosecution, the Patentee chose to be his own lexicographer and
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`provided explicit definitions for various terms, including “remote,” “processing
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`device,” “premises” and “located at,” in “Supplement to the Remarks for the
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`Amendment filed on October 24, 2007” filed on November 23, 2007 during
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`prosecution of the patent application that issued as the ‘363 Patent (see EX2002,
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`hereinafter “First Remarks”).
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`2.
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`Reexamination of the ‘363 Patent
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`Ex Parte Reexamination Control No. 90/013,303 was requested by a third
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`party on July 21, 2014, challenging claim 21 of the ‘363 Patent. Reexamination
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`was ordered on September 17, 2014.
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`The Examiner issued a Notice of Intent to Issue Ex Parte Reexamination
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`Certificate on July 29, 2105 (EX2004), in which original claim 21 was confirmed
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`as patentable over the prior art of record.
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`C.
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`Exemplary Claims
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`Claims 1 and 84 are the only independent claims for which inter partes
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`review was instituted. They are reproduced below:
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`1.
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`An apparatus, comprising:
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`a first processing device, wherein the first processing device at least
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`one of generates a first signal and transmits a first signal for at least one of
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`activating, deactivating, disabling, re-enabling, and controlling an operation of, at
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`least one of a premises system, a premises device, a premises equipment, a
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`premises equipment system, a premises component, and a premises appliance, of
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`or located at a premises, wherein the first processing device is associated with a
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`web site, and further wherein the first processing device is located at a location
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`remote from the premises,
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`wherein the first processing device at least one of generates the first
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`signal and transmits the first signal in response to a second signal, wherein the
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`second signal is at least one of generated by a second processing device and
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`transmitted from a second processing device, wherein the second processing device
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`is located at a location which is remote from the first processing device and remote
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`from the premises, wherein the first processing device determines whether an
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`action or an operation associated with information contained in the second signal,
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`to at least one of activate, de-activate, disable, re-enable, and control an operation
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`of, the at least one of a premises system, a premises device, a premises equipment,
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`a premises equipment system, a premises component, and a premises appliance, is
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`an authorized or an allowed action or an authorized or an allowed operation, and
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`further wherein the first processing device at least one of generates the first signal
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`and transmits the first signal to a third processing device if the action or the
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`operation is determined to be an authorized or an allowed action or an authorized
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`or an allowed operation, wherein the third processing device is located at the
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`premises,
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`wherein the second signal is transmitted to the first processing device
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`via, on, or over, at least one of the Internet and the World Wide Web, and further
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`wherein the second signal is automatically received by the first processing device,
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`wherein the first signal is transmitted to and automatically received by the third
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`processing device, wherein the third processing device at least one of generates a
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`third signal and transmits a third signal for at least one of activating, de-activating,
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`disabling, re-enabling, and controlling an operation of, the at least one of a
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`premises system, a premises device, a premises equipment, a premises equipment
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`system, a premises component, and a premises appliance, in response to the first
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`signal.
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`84. An apparatus, comprising:
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`a first processing device, wherein the first processing device at least
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`one of monitors and detects an event regarding at least one of a premises system, a
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`premises equipment system, a premises component, a premises device, a premises
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`equipment, and a premises appliance of, at, or associated with, a premises, wherein
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`the first processing device is located at the premises, wherein the event is a
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`detection of a state of disrepair of the at least one of a premises system, a premises
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`equipment system, a premises component, a premises device, a premises
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`equipment, and a premises appliance, wherein the first processing device at least
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`one of generates a first signal and transmits a first signal to a second processing
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`device, wherein the first signal contains information regarding the event, wherein
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`the second processing device is associated with a web site, and further wherein the
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`second processing device is located at a location which is remote from the
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`premises, wherein the second processing device automatically receives the first
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`signal, and further wherein the second processing device at least one of generates a
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`second signal and transmits a second signal to a communication device, wherein
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`the second signal is transmitted to the communication device via, on, or over, at
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`least one of the Internet and the World Wide Web, wherein the communication
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`device is located remote from the second processing device, and wherein the
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`communication device automatically receives the second signal, and further
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`wherein the communication device provides information regarding the event.
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`III. CLAIM CONSTRUCTION
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`Legal Standards
`A.
`The Board concluded that the term of the ‘363 Patent will expire prior to the
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`end of the one-year period allotted for an inter partes review, and thus the Board is
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`treating the ‘363 Patent as expired for purposes of claim interpretation. Decision at
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`7. Claim terms in an expired patent are generally given their “ordinary and
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`customary meaning” as understood by a person of ordinary skill in the art in
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`question at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303,1327
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`(Fed. Cir. 2005).
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`B.
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`“premises”
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`For purposes of its Decision, the Board adopted the express definition of
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`“premises” provided during prosecution of the patent application that issued as the
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`‘363 Patent, which is “a building or a structure and the grounds or parcel of
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`land associated with the building or the structure, or a building or structure
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`together with its grounds or land, or a building or structure or a portion,
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`room, or office, of or in the building or structure, or a home, mobile home,
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`mobile building, mobile structure, residence, residential building, office,
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`commercial building, commercial office, structure, equipment, facility,
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`machine, rig, assembly line, or edifice.” Decision at 8-9.
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`JCMS respectfully submits that this construction should be adopted for the
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`remainder of this IPR.
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`C.
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`“remote”
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`For purposes of its Decision, the Board adopted the express definition of
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`“remote” provided during prosecution of the patent application that issued as the
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`‘363 Patent, which is “separate and apart from, or external from, or at a
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`distance from or distant from, or not located in.” Id.
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`JCMS respectfully submits that this construction should be adopted for the
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`remainder of this IPR.
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`D.
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`“located at”
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`For purposes of its Decision, the Board adopted the express definition of
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`“located at” provided during prosecution of the patent application that issued as the
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`‘363 Patent, which is “situated at, situated in or situated on.” Id.
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`JCMS respectfully submits that this construction should be adopted for the
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`remainder of this IPR.
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`E.
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`“processing device”
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`The term “processing device” was defined by the Patentee during
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`prosecution of the ‘363 Patent in the First Remarks. EX2002 at 9-10. Patent Owner
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`respectfully submits that the definition offered by the Patentee is helpful in
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`determining the nature and extent of the Patentee’s inventions, as will be explained
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`in more detail infra at Section IV. Accordingly, the term “processing device”
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`should be construed as “a device or a computer, or that part of a device or a
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`computer, which performs an operation, an action, or a function, or which
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`performs a number of operations, actions, or functions.”
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`This proposed construction is consistent with Patentee’s definition of the
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`term “processing device” in the First Remarks, and is also supported by and is
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`consistent with the Specification of the ‘363 Patent, including the written
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`description, the drawings and the claims.
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`IV. THE KOETHER AND CRATER REFERENCES ARE NOT PRIOR
`ART TO THE ‘363 PATENT
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`Petitioner has argued that claims 42, 43, 45, 46, 48, 49, 53 and 54 would
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`have been obvious over Koether, and that claims 1, 3-5, 8, 13-17, 20, 44 and 84-86
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`would have been obvious over the combination of Koether and Crater. Petition at
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`14-59. Koether was filed on May 2, 1996. Petition at 14; EX1008. Crater was
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`filed on May 30, 1996. Petition at 36; EX1009. The ‘363 Patent claims priority to
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`U.S. Patent Application No. 08/622,749, filed on March 27, 1996 (the “March
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`1996 Application”). EX1001. Nevertheless, Petitioner argues that the challenged
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`claims are entitled to a priority date no earlier than July 18, 1996. Petition at 12-
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`13. Specifically, Petitioner argues that the only support for a processing device
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`located at a “premises” was added to the specification as part of a continuation-in-
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`part application (U.S. Patent Application No. 08/683,828) filed on July 18, 1996
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`(the “July 1996 Application”). Id. Patent Owner has not previously addressed this
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`issue, and thus addresses this issue for the first time herein.
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`A.
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`The Relevant Legal Principals
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`Title 35 U.S.C. § 112 requires that a “specification shall contain a written
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`description of the invention … .” To comply with the written description
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`requirement, each claim limitation must be expressly, implicitly, or inherently
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`supported in the originally filed disclosure. See, e.g., MPEP 2163, II.A.3; In re
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`Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (“To establish inherency, the
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`extrinsic evidence ‘must make clear that the missing descriptive matter is
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`necessarily present in the thing described in the reference, and that it would be so
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`recognized by persons of ordinary skill.’”) (Citations omitted).
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`It has been stated that “the ‘essential goal’ of the description of the invention
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`requirement is to clearly convey the information that an applicant has invented the
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`subject matter which is claimed.” In re Barker, 559 F.2d 588, 592 n.4 (CCPA
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`1977). To satisfy the written description requirement, a patent specification must
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`describe the claimed invention in sufficient detail that one skilled in the art can
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`reasonably conclude that the inventor had possession of the claimed invention.
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`See, e.g., Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1319 (Fed.
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`Patent Owner’s Response to Petition
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`Cir. 2003). If a skilled artisan would have understood the inventor to be in
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`possession of the claimed invention at the time of filing, even if every nuance of
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`the claims is not explicitly described in the specification, then the adequate
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`description requirement is met. See, e.g., Vas-Cath, Inc. v. Mahurkar, 935 F.2d
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`1555, 1563 (Fed. Cir. 1991); Martin v. Johnson, 454 F.2d 746, 751 (CCPA 1972)
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`(stating “the description need not be in ipsis verbis [i.e., “in the same words”] to be
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`sufficient”). Compliance with the written description requirement is a question of
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`fact which must be resolved on a case-by-case basis. Vas-Cath, 935 F.2d at 1563
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`(Fed. Cir. 1991).
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`In sum, the fundamental factual inquiry is whether the specification conveys
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`with reasonable clarity to those skilled in the art that, as of the filing date sought,
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`applicant was in possession of the invention as now claimed. See, e.g., Vas-Cath,
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`935 F.2d at 1563-64.
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`B.
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`The ‘363 Patent is Entitled to a Priority Date of March 27, 1996
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`Petitioner’s fundamental premise, that the only support for a processing
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`device located at a “premises” was added to the specification as part of the July
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`1996 Application, is demonstrably incorrect. The July 1996 Application is a
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`continuation-in-part of the March 1996 Application. Patent Owner submits that the
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`claimed premises processing device is expressly, or at least inherently, disclosed in
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`the March 1996 Application.
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`1.
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`Claim construction
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`As discussed supra at Section III.E., term “processing device” was defined
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`by the Patentee during prosecution of the ‘363 Patent. See EX2002. Although the
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`Board has not adopted this definition, Patent Owner respectfully submits that the
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`definition offered by the Patentee is helpful in determining the nature and extent of
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`the Patentee’s inventions. In this regard, the Patentee defined the term “processing
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`device” to mean, inter alia, “a device or computer … .” Id.
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`In addition, the term “premises” has been defined in these proceedings as
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`including, inter alia, “a building or a structure and the grounds or parcel of land
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`associated with the building or structure … or office, of or in the building or
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`structure, or a home, mobile home, mobile building, mobile structure … office,
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`commercial building … [or] commercial office ...” Decision at 9.
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`The March 1996 Application discloses premises processing
`2.
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` devices
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`Petitioner correctly asserts that “[e]ach of the Challenged Claims requires
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`some processing device located at a premises.” Petition at 13. (emphasis in
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`original). Petitioner then incorrectly asserts that the March 1996 Application: (a)
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`“does not disclose a processing device located at a premises;” (b) “never mentions
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`a premise [sic];” and (c) “a premises is not a vehicle and a vehicle is not a
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`premises.” Id.
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`The March 1996 Application does, in fact, disclose processing devices at
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`multiple premises. For example, Figure 11B of the March 1996 Application is
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`reproduced below, with red ovals added by Patent Owner to highlight relevant
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`components.
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`FIG. 11B
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`Figure 11B discloses at least a server computer 952 located at a premises,
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`identified as an “On-Line Service And/Or Internet Processing Site,” (for example,
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`an “office” or “commercial office,” which are explicitly listed in the definition of
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`“premises”) and computer 970 at a premises, identified as a “Central Security
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`Office,” (for example, an “office” or “commercial office,” which are explicitly
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`listed in the definition of “premises”), each of which provide processing device
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`functionality. In fact, the specification discloses that “server 952 will process the
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`data received by the server receiver 952 and perform the same processing
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`functions and/or computing functions as the computer 970, the CPU 4, and/or
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`the computer 150.” EX1004 at 94 (emphasis added).
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`Additionally, computer 970 is described as being “capable of recognizing all
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`of the possible access code(s) and command codes which are recognized by the
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`apparatus 1 for a particular vehicle” and will “identify the vehicle which is stolen
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`and/or which has been accessed.” Id. at 89-90. (emphasis added). Thus, the
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`specification of the March 1996 Application clearly discloses multiple processing
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`devices at multiple premises that combine to form parts of a distributed control and
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`monitoring apparatus. Further the March 1996 Application further discloses that
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`the computer 970 is capable of controlling position data receiver 960, transmitter
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`965, output device 985, and display device 980 at the Central Security Office.
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`Although an embodiment of the March 1996 Application discloses a final
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`processing device which is located at a vehicle, it cannot be disputed that the
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`majority of the claimed apparatus is located at premises that are remote from the
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`vehicle. See, e.g., EX1004 at 11-13. This point can be clearly seen in multiple
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`portions of the specification such as:
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`The user may transmit data, via the home and/or personal
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`computer 150, directly to the apparatus 1, to the
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`apparatus 950 and/or to the server 952. By using the
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`computer 150
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`in conjunction with an appropriate
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`communications medium, the authorized user or operator
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`may access the server 952 via the on-line service and/or
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`via the associated Web site 954, or in any other
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`appropriate manner, so as to provide control over, and/or
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`obtain any and all of the above-described data and/or
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`information about, his or her vehicle over the on-line
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`server and/or on, or over, the Internet and/or the World
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`Wide Web. Id. at 94-95.
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`Finally, and perhaps most significantly, the Patentee expressly disclosed use
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`of the entire apparatus to control premises systems. Specifically, the Patentee
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`expressly disclosed:
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`It is also envisioned that the apparatus and method of
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`the present invention may find applications in areas
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`other than in vehicle anti-theft and/or vehicle recovery.
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`For example, the present invention may also find
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`application in home, boat and/or other security systems,
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`and the like, wherein a long-range remote-controlled
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`interactive system may be utilized in order to provide an
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`immediate, or a deferred, response to a theft situat