throbber
IPR2015-01762
`U.S. Patent No. 7,397,363
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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
`U.S. Patent No. 7,397,363
`
`_____________
`
`PETITIONER’S REPLY
`
`
`
`
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`IPR2015-01762
`U.S. Patent No. 7,397,363
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`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`CLAIM CONSTRUCTION ............................................................................ 1
`
`III. PETITIONER HAS DEMONSTRATED THAT THE
`CHALLENGED CLAIMS ARE UNPATENTABLE .................................... 2
`
`A. Koether and Crater Teach the Use of the Internet................................. 2
`
`B. Koether and Crater Teach Determining Whether An Action Or
`Operation Is An Authorized Or Allowed Action Or Operation ............ 6
`
`C.
`
`The Challenged Claims Are Not Entitled To A Priority Date
`Before July 18, 1996 ............................................................................. 8
`
`1.
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`2.
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`3.
`
`4.
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`5.
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`6.
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`7.
`
`8.
`
`Patent Owner’s burden ................................................................ 8
`
`Patent Owner fails to meet its burden ......................................... 9
`
`The specification of the March 1996 Application
`provides no support for a “premises” system ........................... 10
`
`The intrinsic record provides no support for a “premises”
`system in the March 1996 Application ..................................... 11
`
`The figures of the March 1996 Application provide no
`support for a “premises” system ............................................... 13
`
`Patent Owner’s Response suggest that a “premises”
`system is not supported by the March 1996 Application ......... 13
`
`A “premises” system is not disclosed by the
`March 1996 Application ........................................................... 13
`
`The species of a home security system in the March 1996
`Application does not disclose the genus of a “premises”
`system ........................................................................................ 14
`
`D. Mr. Bennett’s Testimony Should Be Considered Because Mr.
`Bennett is Qualified to Opine on the Perspective of a POSITA ......... 15
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`E.
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`F.
`
`The Petition Properly Names All Real Parties-In-Interest .................. 18
`
`Koether and Crater Render Obvious Claims 1, 3-5, 8, 13-17, 20,
`44, 84, 85 and 86 ................................................................................. 22
`
`IV. CONCLUSION .............................................................................................. 23
`
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`TABLE OF AUTHORITIES
`
`Cases
`Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co.,
`598 F.3d 1336 (Fed. Cir. 2010) ............................................................................ 10
`
`B/E Aerospace, Inc. v. MAG Aerospace Indus., LLC,
`IPR 2014-01513, Paper No. 104 (PTAB Mar. 18, 2016) ..................................... 16
`
`Gonzalez v. Banco Cent Corp.,
`27 F.3d 751 (1st Cir. 1994) ................................................................................... 18
`
`In re Fulton,
`391 F.3d 1195 (Fed. Cir. 2004) .............................................................................. 4
`
`In re Gurley,
`27 F.3d 551 (Fed. Cir. 1994) .................................................................................. 4
`
`In re Hubbell Inc.,
`No. 2015-1222, 2016 WL 1382677 (Fed. Cir. Apr. 7, 2016) ................................. 5
`
`JP Morgan Chase & Co., et al. v. Maxim Integrated Prods., Inc.,
`CBM2014-00179, Paper No. 11 (PTAB Feb. 20, 2015) ............................... 18, 20
`
`Motorola Mobility, LLC v. Intellectual Ventures I, LLC,
`CBM2015-00004, Paper No. 33 (PTAB Mar. 21, 2016) ..................................... 17
`
`Mytee Prods., Inc. v. Harris Research, Inc.,
`439 F. App’x 882 (Fed. Cir. 2011) ....................................................................... 17
`
`PowerOasis, Inc. v. T-Mobile USA, Inc.,
`522 F.3d 1299 (Fed. Cir. April 11, 2008) .............................................. 8, 9, 10, 14
`
`Slip Track Sys., Inc. v. Metal-Lite, Inc.,
`304 F.3d 1256 (Fed. Cir. 2012) ............................................................................ 17
`
`Tronzo v. Biomet, Inc.,
`156 F.3d 1154 (Fed. Cir. 1998) ............................................................................ 15
`
`Vas-Cath Inc. v. Mahurkar,
`935 F.2d 1555 (Fed. Cir. June 7, 1991) ........................................................... 9, 11
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`IPR2015-01762
`U.S. Patent No. 7,397,363
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`Statutes
`35 U.S.C. § 112 .......................................................................................................... 2
`
`Rules
`Office Patent Trial Practice Guide,
`77 Fed. Reg. 48,680, 48,695 (Aug. 14, 2012) ...................................................... 18
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`LIST OF EXHIBITS
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`The following is a list of exhibits in support of this petition:
`
`EX-1001
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`EX-1002
`
`EX-1003
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`EX-1004
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`EX-1005
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`EX-1006
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`EX-1007
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`EX-1008
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`EX-1009
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`EX-1010
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`EX-1011
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`EX-1012
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`EX-1013
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`EX-1014
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`U.S. Patent No. 7,397,363 (“the ‘363 Patent”)
`
`Declaration of Richard Bennett for the ‘363 Patent
`
`Curriculum Vitae of Richard Bennett
`
`U.S. Patent Application No. 08/622,749 filed on
`March 27, 1996 (“Mar 1996 application”)
`
`Excerpts from the Prosecution History of the ‘363 Patent
`
`Excerpts from the Prosecution History of the ‘130 Patent
`
`Excerpts from the Merriam-Webster Dictionary (10th ed. 1995)
`
`U.S. Patent No. 5,875,430 to Koether et al., (“Koether”)
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`U.S. Patent No. 5,805,442 to Crater et al., (“Crater”)
`
`Excerpts from the Concise Dictionary of Engineering: A Guide
`to the Language of Engineering (2014)
`
`Claim Construction Order in Joao Control & Monitoring
`Systems, LLC v. Protect America,Inc., No. 1:14-cv-134,
`2015 WL 4937464 (W.D. Tex. Aug. 18, 2015)
`
`Claim Construction Order in Joao Control & Monitoring
`Systems, LLC v. Chrysler Grp. LLC, No. 4:13-cv-13957,
`slip op. (E.D. Mich. Jun. 10, 2016)
`
`Transcript of April 29, 2016 Deposition of Mr. Richard Bennett
`
`Transcript of June 3, 2016 Deposition of Dr. Val DiEuliis in
`related IPR No. IPR2015-01466
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`EX-1015
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`EX-1016
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`EX-1017
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`EX-1018
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`EX-1019
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`EX-1020
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`Transcript of March 3, 2016 Deposition of Mr. Richard Bennett
`in related IPR No. IPR2015-01477
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`Transcript of April 28, 2016 Deposition of Mr. Richard Bennett
`
`Additional Excerpts from the Prosecution History of the ‘130
`Patent
`
`Additional Excerpts from the Prosecution History of the ‘363
`Patent
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`Excerpts from the Prosecution History of the ‘010 Patent
`
`Request for Comments 1356 on Multiprotocol Interconnect on
`X.25 and ISDN in the Packet Mode (August 1992)
`
`EX-1021
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`Patent Owner’s Response in IPR2015-01760
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`IPR2015-01762
`U.S. Patent No. 7,397,363
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`
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`I.
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`INTRODUCTION
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`PETITIONER REPLY
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`Petitioner CoxCom LLC (“Petitioner” or “CoxCom”) submits this Reply to
`
`Patent Owner’s Response (Paper 14) to the Petition for Inter Partes Review of U.S.
`
`Patent No. 7,397,363.
`
`Patent Owner’s proposal to construe an additional claim term is not needed
`
`because it is not relevant to any issue raised. Patent Owner’s arguments against the
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`instituted invalidity counts are without merit and consist entirely of attorney
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`argument with no expert testimony offered in support. All grounds presented in the
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`Petition and instituted by the Board demonstrate the challenged claims are
`
`unpatentable and should be canceled.
`
`II. CLAIM CONSTRUCTION
`For the purpose of this IPR proceeding, Petitioner does not contest the
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`Board’s construction of “remote,” “premises,” and “located at,” and its application
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`of the plain and ordinary meaning to the remaining terms.1
`
`Patent Owner requests the Board to adopt the claim construction of
`
`“processing device” as defined during prosecution of the ‘363 Patent.2 Paper 14 at
`
`
`1 Petitioner reserves all rights to propose constructions for additional terms in
`litigation or other proceedings.
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`12-13. This definition is consistent with constructions of “processing device”
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`Patent Owner presented in cases before the U.S. District Courts for the Western
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`District of Texas and for the Eastern District of Michigan. See Ex. 1011 and 1012.
`
`III. PETITIONER HAS DEMONSTRATED THAT THE CHALLENGED
`CLAIMS ARE UNPATENTABLE
`A. Koether and Crater Teach the Use of the Internet
`Patent Owner argues that a person of ordinary skill in the art at the time of
`
`filing would not be motivated to modify Koether to include the Internet or World
`
`Wide Web features of Crater. Paper 14 at 48-49. Patent Owner specifically argues
`
`Koether teaches away from the Internet, as described in Crater, because Koether
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`includes an embodiment where an integrated system digital network (ISDN) can
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`use the X.25 protocol. Id.
`
`Patent Owner’s entire argument is based on a mischaracterization of Koether
`
`as being limited to “the use of an ISDN network that utilizes the X.25 protocol.”
`
`Paper 14 at 45. On the contrary, Koether is not limited to an ISDN network that
`
`uses the X.25 protocol. “Koether describes using data networks for
`
`communication, such as an ISDN network or a network using data packets such as
`
`a TDMA technique.” Paper 8 at 10, Ex. 1008 at 5:37-44, 6:67-7:15.
`
`2 Petitioner does not raise any written description or indefiniteness issues with the
`challenged claims, because IPR petitioners are not authorized to challenge claims
`under 35 U.S.C. § 112. However, Petitioner explicitly reserves the right to raise
`Section 112 issues in this or any other proceeding.
`2
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`Koether just mentions, in an embodiment, that the X.25 protocol “may be”
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`used to send data between a control center and a base station. Ex. 1008 at 5:42-44.
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`That does not mean the disclosure of an ISDN network is limited to using the X.25
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`protocol; ISDN networks not only transmit data using the X.25 protocol but other
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`protocols as well, such as the Internet Protocol (“IP”). Ex. 1020 at 1, Paper 1 at 24-
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`25, 41, Ex. 1002 at ¶¶38, 55, 59, Ex. 2008 at 26.
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`It was well known to a person of ordinary skill in the art, at the time of the
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`invention, that ISDN networks could be used to transmit data over the Internet.
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`Ex. 1002 at ¶59, Ex. 2008 at 26, Ex. 1020 at 1. In fact, the same Morgan Stanley
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`“Internet Report” relied on by Patent Owner states that “[a]nother increasingly
`
`attractive method of accessing the Internet is Integrated Services Digital Network
`
`[ISDN].” Ex. 2008 at 26, 59, 70 (“. . . connect small networks or individual
`
`computers to the Internet using modems and ISDN connections.”) Prior to the
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`claimed invention, there were even ISDN networks that used IP over X.25
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`networks. Ex. 1020 at 1 (The document “applies to the use of the Internet protocols
`
`on the ISDN in the circuit mode only when the circuit is established as an end-to-
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`end X.25 connection.”)
`
`According to Patent Owner, Koether teaches away from the use of the
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`Internet or World Wide Web because in one embodiment it discloses that the data
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`network can be an ISDN network that uses the X.25 protocol. Paper No. 14 at 46-
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`49. But even if Patent Owner’s understanding of Koether was correct, the law
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`requires more than the disclosure of an alternative to the claimed limitation to
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`show “teaching away.” Rather, a POSITA must “be discouraged from following
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`the path set out in the reference, or [must] be led in a direction divergent from the
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`path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir.
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`1994) (affirming obviousness rejection because statement in reference noting that a
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`certain epoxy was inferior to another available epoxy for use in a circuit board did
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`not teach away from the applicant’s use of that epoxy in its circuit board). Far from
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`discouraging a POSITA from using the Internet or World Wide Web, Koether
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`encourages it.
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`Here, Koether in no way criticizes, discredits, or otherwise discourages the
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`use of the Internet or World Wide Web. On the contrary, Koether emphasizes that
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`the network can be an ISDN network, which a POSITA would know includes the
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`Internet. Ex. 2008 at 26, 59, 70, Paper 1 at 24-25, 1002 at ¶¶38, 59. Even if, as
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`Patent Owner argues, “Koether teaches the use of an ISDN network that utilizes
`
`the X.25 protocol”(Paper 14 at 45), this in and of itself would still not teach away
`
`from the Internet or World Wide Web under a proper application of the law. See In
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`re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (disclosure of an alternative to the
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`claimed limitation did not teach away because “such disclosure does not criticize,
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`discredit, or otherwise discourage the solution claimed”); In re Hubbell Inc., No.
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`2015-1222, 2016 WL 1382677, at *4 (Fed. Cir. Apr. 7, 2016) (a reference’s “stated
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`preference . . . does not disparage or discredit alternatives such that it teaches away
`
`from the claimed invention.”). Nowhere does Koether state a preference for or
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`articulate the benefits of X.25 over the Internet or World Wide Web, much less
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`criticize or disparage Internet or World Wide Web —the necessary elements of a
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`teaching away. Simply mentioning in an embodiment that an ISDN network can
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`use the X.25 protocol does not teach away.
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`A person of ordinary skill in the art would be very encouraged to combine
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`Koether and Crater. Paper 1 at 47, Ex. 1002 at ¶¶55, 59. As Mr. Bennett testified,
`
`if a person of ordinary skill in the art saw a reference to an ISDN network that
`
`utilized the X.25 protocol they would immediately think to use the Internet on that
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`ISDN network as well. Ex. 1016 at 138:3-10, Ex. 1020 at 1.
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`“A person of ordinary skill in the art would have been motivated to make
`
`use of the packet-based transmission of Koether on the Internet or World Wide
`
`Web”, as explicitly disclosed in Crater, because both of those are packet-
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`transmission networks. Paper 1 at 47, Ex. 1002 at ¶¶55, 59. Additionally, the
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`ISDN network described in Koether could have included the Internet and World
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`Wide Web explicitly disclosed in Crater to make use of the web-based
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`infrastructure for the remote monitoring and control of geographically dispersed
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`control centers and restaurant chains. Id., Ex. 1008 at claim 1, 3:51-54, 8:57-61.
`
`B. Koether and Crater Teach Determining Whether An Action Or
`Operation Is An Authorized Or Allowed Action Or Operation
`
`Patent Owner first argues that there is no connection between features of the
`
`present claim limitation that “the first processing device determines whether an
`
`action or operation associated with information contained in the second signal…is
`
`an authorized or an allowed action” and those features of claim 54. Paper 14 at 49-
`
`50. Claim 54 includes features relevant to the present claim limitation.
`
`The present claim limitation simply adds the concept that “the remote first
`
`processing device analyzes the signal from the second device to determine if the
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`use of the premises appliance is authorized or allowed.” Paper 1 at 45. Claim 54 is
`
`relevant because it includes limitations directly related to determining if the use of
`
`the premises is authorized or allowed including, for instance, the limitations of
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`“detecting…an unauthorized use of the premises,” and generating and transmitting
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`“a message containing information regarding…an authorized use of the premises”
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`to a communication device “associated with the authorized individual.” Ex. 1001
`
`at Claim 54. Petitioners also point to claim 54 in the Petition because some
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`citations in the analysis of claim 54 in view of Koether are also relevant to the
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`analysis of the present claim limitation in view of Koether and Crater.
`
`Koether alone or in combination with Crater teach “the first processing
`
`device determines whether an action or operation associated with information
`
`contained in the second signal…is an authorized or an allowed action.” Paper 1 at
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`45, Ex. 1002 at ¶63. Patent Owner focuses its efforts on criticizing Crater.
`
`However, that criticism is misplaced. Crater directly discloses “authenticating a
`
`control command sent by a user.” Notably, Crater discloses allowing “an
`
`appropriately authorized client to directly modify control parameters…that
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`determine the operation of the controller and, hence, the controlled machine or
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`process.” Ex. 1009 at 9:3-7. Crater also describes determining authorized use or
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`control by describing providing a password or other security measures. Ex. 1009
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`at 8:37-9:14. These disclosures disclose, teach or suggest that an action or
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`operation by an appropriately authorized client to modify a control parameter of a
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`controller is an authorized or an allowed action, thereby meeting the present claim
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`limitation.
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`Using a password also meets the claim limitation of determining whether an
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`action is authorized or allowed. Ex. 1013 at 25:2-13. Because using a password is
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`“a form of authorization.” Id. Passwords are not limited to identifying a person but
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`“[p]asswords can also be used to authenticate a process or a program.” Id. at
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`25:14-19. “[T]here is a commonality between authorizing a user and authorizing.
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`They’re both an action. They’re both acts of authorization.” Id. at 25:2-13.
`
`C. The Challenged Claims Are Not Entitled To A Priority Date
`Before July 18, 1996
`1.
`Patent Owner has the burden to “come forward with evidence to prove
`
`Patent Owner’s burden
`
`entitlement to claim priority to an earlier filing date.” PowerOasis, Inc. v. T-Mobile
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`USA, Inc., 522 F.3d 1299, 1305-1306 (Fed. Cir. April 11, 2008); see also id. at
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`1303 (“When a dispute arises concerning whether a CIP patent is entitled to
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`priority to the date of the original application and the Patent Office has not
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`addressed the issue, the burden of proof ordinarily should rest with the party
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`claiming priority to the date of the original application.”)
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`“When neither the PTO nor the Board has previously considered priority,
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`there is simply no reason to presume that claims in a CIP application are entitled to
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`the effective filing date of an earlier filed application.” Id. at 1305. Here, neither
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`the PTO nor the Board previously considered the priority of the challenged claims;
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`thus, the presumption is that the challenged claims are entitled to the later filing
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`date of the July 1996 application. Petitioner having satisfied its burden of
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`production to establish a prima facie case of obviousness (Paper 8 at 12-15), the
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`burden now rests with Patent Owner to present evidence that the challenged claims
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`are entitled to a priority date earlier than July 1996.
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`Patent Owner fails to meet its burden
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`2.
`Patent Owner fails to meets this burden. Patent Owner only provides
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`attorney argument; Patent Owner does not present any evidence, for example by
`
`expert declaration, to establish the perspective of a person of ordinary skill in the
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`art. See id. at 1307 (the Court held that PowerOasis’ presentment of the Original
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`Application and an expert declaration as its only evidence to prove priority of later
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`filed claims to the earlier original application was insufficient.)
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`This is a critical issue because in order to meet its burden, Patent Owner
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`must present evidence sufficient to show the March 1996 disclosure meets the
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`written description requirement for the challenged claims. “To satisfy the written
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`description requirement the disclosure of the prior application must ‘convey with
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`reasonable clarity to those skilled in the art that, as of the filing date sought, [the
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`inventor] was in possession of the invention.’” Id. at 1306 (citing Vas-Cath Inc. v.
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`Mahurkar, 935 F.2d 1555, 1563-1564 (Fed. Cir. June 7, 1991)). Possession goes
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`beyond whether the term premises or the concept of a premises is mentioned once
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`in the specification. “[T]he subject matter must be disclosed to establish
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`possession.”3 Id. at 1310.
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`3.
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`The specification of the March 1996 Application provides
`no support for a “premises” system
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`Patent Owner is unable to establish that it was in possession of a premises
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`system of the type claimed in the ‘363 patent or even the concept of a premises
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`system in the March 1996 Application. Patent Owner relies on a single mention of
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`a home security system and a Figure (Fig. 11B) as allegedly supporting disclosure
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`of a premises system in the March 1996 application. Paper 14 at 16-20. This bare
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`bones disclosure however, is not sufficient to prove that the challenged claims are
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`entitled to a March 1996 priority date. Ariad Pharmaceuticals, Inc. v. Eli Lilly and
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`Co., 598 F.3d 1336 (Fed. Cir. 2010) (“the specification must describe an invention
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`understandable to that skilled artisan and show that the inventor actually invented
`
`the invention claimed.”)
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`Patent Owner also cannot dispute that the term “premises” does not appear
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`anywhere in the specification of the March 1996 application. The absence of
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`disclosure of “premises” or related subject matter is contrasted by the fact
`
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`3 In PowerOasis, the Court determined that the disclosure of a vending machine
`with a display or user interface in the original application was not sufficient
`support for claims directed to a vending machine with a customer interface on a
`laptop in a CIP Application to claim the benefit of the filing date of the original
`application. Id. at 1309-1311.
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`“premises” is recited over five hundred times in the specification of the July 1996
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`application. The July 1996 application adds at least two Figures (Figs. 15 and 16)
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`and over 9 columns of disclosure strictly directed to the “premises” subject matter
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`that are completely absent from the March 1996 application. Simply mentioning
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`home security system once within the specification of the March 1996 application
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`is not sufficient to disclose subject matter that reflects the entire functionality and
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`structure of the “premises” system described in the challenged claims.
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`Mentioning home security system once within the specification is also not
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`sufficient to convey that the patentee invented the claimed “premises” system. Vas-
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`Cath Inc., 935 F.2d at 1561. The claimed premise system must be commensurate
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`with the scope of “premises” defined by patentee. Ex. 2002 at 4, Ex. 2003 at 8-9,
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`Ex. 1018 at 7-8, Ex. 1019 at 3. A home security system is not sufficient to meet the
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`scope of a “premises” system and Patent Owner fails to provide any evidence to
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`prove otherwise.
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`4.
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`The intrinsic record provides no support for a “premises”
`system in the March 1996 Application
`
`The intrinsic record of the ‘363, ‘010 and ‘130 patents confirm that there is
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`no support in the March 1996 application for the claimed premises systems of the
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`challenged claims. During prosecution of the ‘363 and ‘010 patents, the patentee
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`had every opportunity to show the March 1996 application provides written
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`U.S. Patent No. 7,397,363
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`description support for the term “premises,” but failed to do so. Rather, when the
`
`Applicant filed Remarks to define the term “premises,” the Applicant was only
`
`able to cite to portions of the July 1996 application to support its definition. Ex.
`
`2002 at 4, Ex. 2003 at 8-9, Ex. 1018 at 7-8, Ex. 1019 at 3. These Remarks -- that
`
`include no written description support for “premises” from the March 1996
`
`application -- are the basis for the Board’s construction of “premises,” and Patent
`
`Owner solely relied on these July 1996 Remarks to advance its construction of
`
`“premises.” Paper 8 at 7-9, Paper 7 at 18, Ex. 2002 at 4, Ex. 2003 at 8-9, Ex. 1018
`
`at 7-8, Ex. 1019 at 3.
`
`Similarly, when the Applicant submitted claims that recite “the premises is
`
`at least one of a residential premises, a residential building, and a home[.]” and
`
`“the premises is at least one of a mobile home and a mobile premises[.]”, the
`
`Applicant again only pointed to portions of the July 1996 application to support the
`
`claims. Ex. 1017 at 35, 37, 50, 76, 77, 234, 242, 254 (emphasis added). Patent
`
`Owner now argues that because “the term ‘home’ explicitly appears in the
`
`definition of ‘premises’” (Paper 14 at 20) there is a connection to the March 1996
`
`disclosure. However, in defining “premises” during prosecution, the patentee only
`
`identified the July 1996 application as providing written description support for
`
`that term. Paper 14 at 20, Ex. 2002 at 4, Ex. 2003 at 8-9.
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`5.
`
`The figures of the March 1996 Application provide no
`support for a “premises” system
`
`Patent Owner also relies on Figure 11B and its accompanying disclosure to
`
`support its argument that “premises” is supported by the March 1996 application.
`
`Paper 14 at 16-20. However, Patent Owner even acknowledges that Figure 11B
`
`and its accompanying disclosure is limited to a vehicle; not a premises. Paper 14 at
`
`19. Thus, Figure 11B is irrelevant to this issue.
`
`6.
`
`Patent Owner’s Response suggest that a “premises” system
`is not supported by the March 1996 Application
`
`Patent Owner’s Response in the related ‘130 Patent also suggests that
`
`“premises” is not supported by the March 1996 application. Ex. 1021 at 47-48.
`
`Patent Owner pushes for a modification of the interpretation of “premises” by
`
`citing to Cols. 2:62-3:06 of the ‘130 patent. Id. The cited portion of the ‘130 patent
`
`only appears in the July 1996 application, not the March 1996 application.
`
`7.
`
`A “premises” system is not disclosed by the
`March 1996 Application
`
`Contrary to Patent Owner’s assertions, Petitioner’s expert did not concede
`
`that by March 1996 a person of ordinary skill in the art would understand how to
`
`take a vehicle control system and modify it to a premise control system. Mr.
`
`Bennett specifically noted that in 1996 to modify a vehicle control system to a
`
`premise control system many of the features of the vehicle control system would
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`need to be discarded and replaced with a new set of features applicable to the
`
`home. Ex. 1016 at 53:6-11. Mr. Bennett also noted that additional features may
`
`need to be created as well. Id. at 53:25-54:7.
`
`Even if the Patent Owner could prove that one of ordinary skill in the art
`
`would modify a vehicle control system to a premise control system, that is still not
`
`enough to entitle the challenged claims to receive a March 1996 priority date.
`
`“[T]he written description is ‘not a question of whether one skilled in the art might
`
`be able to construct the patentee’s device from the teachings of the disclosure. . . .
`
`Rather, it is a question whether the application necessarily discloses that particular
`
`device.’” PowerOasis, Inc., 522 F.3d at 1306; see also id. at 1310 (“Obviousness
`
`simply is not enough; The subject matter must be disclosed to establish
`
`possession.”) As explained above, the March 1996 application does not disclose
`
`“premises.”
`
`8.
`
`The species of a home security system in the March 1996
`Application does not disclose the genus of a “premises”
`system
`
`Patent Owner appears to be arguing that the disclosure of a species (home
`
`security system) in the March 1996 application also resulted in the disclosure of
`
`the genus (premises system). Yet, the March 1996 application does not even
`
`appear to disclose the species. Eluding to the invention being used on a home
`
`security system without additional disclosure fails the written description
`14
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`requirement as the specification provides no detail on how such a system could be
`
`implemented.
`
`Assuming arguendo that Patent Owner could establish support for a home
`
`security system, disclosing the home security system would still not entitle the
`
`premises system to a March 1996 priority date. Per Patent Owner’s own
`
`construction of premises, such a system is much broader than a home security
`
`system. Simply disclosing a species in an earlier application does not entitle the
`
`later claimed genus to the filing date of the earlier application. See Tronzo v.
`
`Biomet, Inc., 156 F.3d 1154, 1159 (Fed. Cir. 1998) (held that claims directed to all
`
`cup shapes in a CIP were not disclosed literally or inherently by an earlier filed
`
`application that only disclosed conical shaped cups.) As explained above, the
`
`genus of “premises” is not literally or inherently disclose based on the disclosure of
`
`the species of “home.”
`
`D. Mr. Bennett’s Testimony Should Be Considered Because Mr.
`Bennett is Qualified to Opine on the Perspective of a POSITA
`
`Patent Owner argues that Mr. Bennett’s testimony should be given little to
`
`no weight because he is not a POSITA. Paper No. 14 at 25-26. Yet, it is without
`
`question or dispute that Mr. Bennett qualifies as an expert in this field.
`
`For example, Mr. Bennett began a forty year career in networked systems as
`
`a software engineer for Texas Instruments in 1977. Ex. 1015 at 210:2-9. By the
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`time of the purported invention in 1996, he “had been a professional computer
`
`engineer for 19 years,” Ex. 1013 at 64:17-18, and was then working as a software
`
`developer on a video-on-demand server at Hewlett-Packard. Ex. 1002 at ¶12. As
`
`was “typical of people of [his] generation who are career, lifelong computer
`
`engineers,” Mr. Bennett did not receive a formal engineering degree, instead he
`
`received extensive on-the-job coursework and training from some of the nation’s
`
`premier technology companies, including Electronic Data Systems and Texas
`
`Instruments. Ex. 1015 at 211:17-213:9. Mr. Bennett has served many managerial
`
`roles in the field and widely participates in technical conferences, providing him
`
`with significant exposure to other POSITAs. Ex. 1003; Ex. 1013 at 10:3-24. Mr.
`
`Bennett is also an inventor or co-inventor of four issued patents which cover
`
`aspects of networked systems and video streaming across networks. Ex. 1003 at 4-
`
`5, Ex. 1015 at 49:15-50:10.
`
`Mr. Bennett’s experience in the field makes him knowledgeable and
`
`qualified in the field of computer networking to provide testimony in this case. The
`
`law is clear that an expert witness “need not be a person of ordinary skill in the art,
`
`but rather may be ‘qualified in the pertinent art,’” B/E Aerospace, Inc. v. MAG
`
`Aerospace Indus., LLC, IPR 2014-01513, Paper No. 104 at 14 (PTAB Mar. 18,
`
`2016), and that a witness’ testimony is admissible if his or her “qualifications align
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`with the challenged subject matter sufficiently so that his knowledge is helpful in
`
`understanding the evidence and determining facts in issue” and he or she can
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`“competently opine on how a person having ordinary skill in the art would have
`
`understood the claims.” Motorola Mobility, L

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