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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`PRELIMINARY RESPONSE OF PATENT OWNER
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`Preliminary Response of Patent Owner
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`TABLE OF CONTENTS
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`Page
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`I. INTRODUCTION ............................................................................................... 1
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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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` C. Petition Overview .......................................................................................... 6
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`III. CLAIM CONSTRUCTION ............................................................................. 11
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` A. Legal Standards ............................................................................................ 11
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` B. Petitioner has Failed to Submit Claim Constructions for many of the Key
` Terms Supporting Its Invalidity Arguments ................................................. 14
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` C. “first signal,” “second signal” and “third signal” ........................................ 16
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` D. “automatically received” .............................................................................. 17
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` E. “at least one of activating, de-activating, disabling, re-enabling and
` controlling” .................................................................................................. 17
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` F. “premises” .................................................................................................... 18
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` G. “remote” ....................................................................................................... 18
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` H. “located at” .................................................................................................. 19
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`IV. THE CHALLENGED CLAIMS ARE ENTITLED TO A PRIORITY DATE
` OF MARCH 27, 1996 ...................................................................................... 20
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`V. RESPONSE TO PROPOSED GROUNDS OF INVALIDITY ........................ 20
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` A. Petitioner’s Proposed Grounds Fail to Comply with the Applicable
` Rules ........................................................................................................... 21
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` B. The Proposed Grounds Fail to Meet the Burden of Showing a Reasonable
` Likelihood of Prevailing .............................................................................. 24
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` C. Ground 1 ...................................................................................................... 27
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` 1. Koether fails to teach a “second processing device” which is “located at a
` location which is remote from the premises,” as required by
` Claim 42 .................................................................................................. 27
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` 2. Koether fails to teach that the “second processing device . . . transmits a
` second signal . . . to the communication device via, on, or over, at least
` one of the Internet and the World Wide Web,” as required by
` claim 42 ................................................................................................... 31
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` D. Ground 2 ...................................................................................................... 32
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` 1. Petitioner’s mapping of the processing devices in claims 1, 42, and 84 is
` incorrect and flawed ................................................................................ 33
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` 2. Koether fails to teach an intermediate processing device that is located
` remote from the premises and, therefore, Koether fails to teach the “first
` processing device” of Claim 1 and the “second processing device” of
` Claim 84 ................................................................................................... 33
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`VI. CONCLUSION ............................................................................................... 35
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`LIST OF EXHIBITS
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`Case IPR2015-01762
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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
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`EX2002
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`I.
`INTRODUCTION
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`Patent Owner Joao Control & Monitoring Systems, LLC (“JCMS”)
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`respectfully submits this Preliminary Response of Patent Owner (“Preliminary
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`Response”) in accordance with 35 U.S.C. § 313 and 37 C.F.R. § 42.107. This
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`Preliminary Response responds to the Petition for Inter Partes Review (“Petition”)
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`filed by Petitioners regarding claims 1, 3-5, 8, 13-17, 20, 42, 43-46, 48, 49, 53, 54,
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`and 84-86 (“Challenged Claims”) of U.S. Patent No. 7,397,363 (“the ‘363 Patent”).
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`This Preliminary Response is timely filed under 35 U.S.C. § 313 and 37
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`C.F.R. § 42.107, as it is filed within three months of the August 26, 2015 date of
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`the Notice of Filing Date Accorded to Petition and Time for Filing Patent Owner
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`Preliminary Response (Paper No. 3).
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`JCMS requests that the Board not institute an inter partes review (“IPR”)
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`because Petitioner has failed to demonstrate a reasonable likelihood of prevailing
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`with respect to any of the Challenged Claims, thereby failing to meet the threshold
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`for institution under 35 U.S.C. § 314(a).
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`The two proposed grounds of rejection are substantively and procedurally
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`flawed, as will be explained below. Further, none of the cited references disclose,
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`teach, or suggest important properly construed claim limitations.
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`Petitioner’s expert, Mr. Richard Bennett, makes statements and opines on
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`issues related to: (1) the state of the art at the time of the invention; (2) the prior art
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`used in Petitioner’s grounds of rejection; and (3) how the prior art renders the
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`claims obvious. However, Petitioner has failed to propose claim constructions for
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`certain key terms in the claims that support Mr. Bennett’s opinions, and that
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`support Petitioner’s invalidity arguments. As such, Mr. Bennett’s analysis and
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`declaration is fundamentally flawed and should be given no weight.
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`Petitioner’s failure to construe certain key terms renders an evaluation of the
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`merits of Petitioner’s invalidity arguments impossible. This failure alone is
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`sufficient reason to deny institution of inter partes review.
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`In the end, the Petition is materially deficient and fails to set forth sufficient
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`evidence that Petitioner has a reasonable likelihood of prevailing with respect to
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`any of the Challenged Claims, as required under 35 U.S.C. § 314(a). JCMS
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`respectfully submits that the Board should conserve resources by declining to
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`institute this meritless proceeding.
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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
`regards
`to
`these premises. The ability
`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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`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 Applicant chose to be his own lexicographer and
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`provided explicit definitions for various terms, including “remote,” “premises” and
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`“located at,” in “Supplement to the Remarks for the Amendment filed on October
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`24, 2007” filed on November 23, 2007 during prosecution of the patent application
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`that issued as the ‘363 Patent (see EX2002, hereinafter “First Remarks”).
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`C.
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`Petition Overview
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`Petitioner has proposed two grounds of invalidity and relies on the following
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`two references:
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`1.
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`2.
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`U.S. Patent No. 5,875,430 to Koether et al. (“Koether”); and
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`U.S. Patent No. 5,805,442 to Crater et al. (“Crater”).
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`The table below summarizes Petitioner’s grounds of invalidity.
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`Ground
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`1
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`2
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`Claims
`42, 43, 45, 46,
`48, 49, 53 and
`54
`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 Light of the Knowledge of the Ordinary
`Skilled Artisan”
`obvious under 35 U.S.C. § 103(a) over Koether
`“in Light of the Knowledge of the Ordinary
`Skilled Artisan”
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`Claims 1, 42 and 84 are the only independent claims being challenged. They
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`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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`42. 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 a premises, wherein the first processing
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`device is located at the premises, and further wherein the event is a detection of a
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`state of disrepair of the at least one of a premises system, a premises equipment
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`system, a premises component, a premises device, a premises equipment, and a
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`premises appliance, wherein
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`the first processing device at
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`least one of
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`generates a first signal and transmits a first signal to a second processing device,
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`wherein the first signal contains information regarding the event, and further
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`wherein the second processing device is located at a location which is remote from
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`the 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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`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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`A.
`Legal Standards
`A claim term in an unexpired patent must be given its “broadest reasonable
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`interpretation in light of the specification of the patent in which it appears.” 37
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`C.F.R. § 42.100(b) (emphasis added); see also In re Cuozzo Speed Techs., LLC,
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`778 F.3d 1271, 1281 (Fed. Cir. 2015). The “broadest reasonable interpretation” is
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`not the same as the broadest possible interpretation; the construction must be
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`consistent with the one those skilled in the art would reach. See In re Cortright,
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`165 F.3d 1353, 1359 (Fed. Cir. 1999). The focus of the inquiry must be on the
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`ordinary and customary meaning as understood by one of ordinary skill in the art at
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`the time of the invention and in the context of the entire patent disclosure. See, e.g.,
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`In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010); In re Translogic
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`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).1
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`“[A] patentee may choose to be his own lexicographer” and assign special
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`definitions to the words in the claim, as long as those definitions are clearly stated
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`in the patent specification or file history. Vitronics Corp. v. Conceptronic, Inc., 90
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`F.3d 1576, 1582 (Fed. Cir. 1996) (citing Hoechst Celanese Corp. v. BP Chems.
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`1 Given the differing claim constructions standards that are mandated to be used by
`the district courts in litigation, JCMS reserves the right to advance different claim
`construction positions in district court.
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`Ltd., 78 F.3d 1575, 1578 (Fed. Cir. 1996)). Therefore, “it is always necessary to
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`review the specification to determine whether the inventor has used any terms in a
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`manner inconsistent with their ordinary meaning. The specification acts as a
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`dictionary when it expressly defines terms used in the claims or when it defines
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`terms by implication.” Id. Because the specification must contain a description
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`sufficient to those of ordinary skill in the art to make and use the invention, the
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`specification “is the single best guide to the meaning of a disputed claim term.” Id.
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`The prosecution history of the patent is also important to a proper claim
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`construction. As a complete record of proceedings before the U.S. Patent and
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`Trademark Office, it may contain representations made by the applicant regarding
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`the scope of the claims. Vitronics, 90 F.3d at 1582. “The patentee is bound by
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`representations made and actions that were taken in order to obtain the patent.”
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`Phillips, 415 F.3d at 1317 (quoting Chimie v. PPG Indus., Inc., 402 F.3d 1371,
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`1384 (Fed. Cir. 2005)). The prosecution history limits the meaning of claim terms
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`“so as to exclude any interpretation that was disclaimed during prosecution.”
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`Southwall, 54 F.3d at 1576. Prior art, some of which may be contained in the file
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`history, is also important because a valid claim cannot read on, or cover within its
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`scope, what is disclosed in the prior art. See General American Transportation
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`Corp. v. Cryo-Trans, Inc., 93 F.3d 766, 771 (Fed. Cir. 1996).
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`B.
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`Petitioner has Failed to Submit Claim Constructions for many of
`the Key Terms Supporting its Invalidity Arguments
`The Board has previously emphasized that if the Petitioners do not explain
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`how the Challenged Claims should be construed and how they read on the prior art,
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`then a reasonable likelihood of success is not established:
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`“It is the Petitioner’s burden to explain how the
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`Challenged Claims are to be construed and how they read
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`on the prior art. 37 C.F.R. § 42.104(b)(3)-(5). Petitioner
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`has not done so sufficiently on this record with respect to
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`the limitation of claims 1, 45, 46, and 47 requiring a
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`“color changing cycle.” Accordingly, Petitioner has not
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`demonstrated a reasonable likelihood of success in
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`showing the subject matter of claims 1-11, 26-34, and 45-
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`47 would have been obvious in view of Wu and
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`Chliwnyj.” Jiawei Technology (HK) LTD. et al v. Simon
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`Nicholas Richmond, IPR2014-00937, Paper 22 at 8.
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`Similarly, Petitioner has failed to propose claim constructions for certain key
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`terms in the claims, and thus has failed to provide constructions for key terms that
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`support Mr. Bennett’s opinions, and that support Petitioner’s invalidity arguments.
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`Petitioner’s failure to construe these key terms renders an evaluation of the merits
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`of Petitioner’s obviousness arguments impossible, and thus Petitioner has failed to
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`demonstrate a reasonable likelihood of success in showing that any of the
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`Challenged Claims are obvious in view of the art cited in Grounds 1 and 2.
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`Below are Patent Owner’s proposed constructions for the following key
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`terms, which Patent Owner submits are necessary to properly evaluate the merits of
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`Petitioner’s obviousness arguments: (1) “premises”; (2) “remote”; and (3) “located
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`at.” As discussed supra, these key terms were defined by the Applicant in the First
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`Remarks filed on November 23, 2007 during prosecution of the patent application
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`that issued as the ‘363 Patent (EX2002). These definitions provided by the
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`Applicant constitute intrinsic evidence regarding the construction of these key
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`claim terms.
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`If no ambiguity is found in the meaning of the terms of a claim after review
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`of the specification and prosecution history, the inquiry is at an end. If uncertainty
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`remains, extrinsic evidence (e.g., expert and inventor testimony), may be
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`considered. Vitronics, 90 F.3d at 1583.
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`In his submission to the PTO, the Applicant also provided the page and line
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`numbers where support for each of the definitions is located in the original
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`specifications of the ‘363 Patent. By defining each of these terms in the
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`prosecution history, the Applicant had chosen to be his own lexicographer. See
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`CCS Fitness Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (“[A]
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`claim term will not receive its ordinary meaning if the patentee acted as his own
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`lexicographer and clearly set forth a definition of the disputed term...”). Moreover,
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`in the First Remarks, the Applicant stated “[a]pplicant provides the following
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`definitions for the following terms or phrases which appear in certain of the
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`pending Claims.” Thus, it is clear that the Applicant unequivocally and
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`intentionally defined the disputed terms in the manner discussed infra.
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`C.
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`“first Signal,” “second Signal” and “third Signal”
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`JCMS disagrees with Petitioner’s assertion that these terms should be given
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`their plain and ordinary meaning because of the treatment of these terms in the
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`specification. Petitioners are correct in that, in related litigation, JCMS has argued
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`that these terms should be construed as “each different signals with content that is
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`not identical to the content of the other signals,” and JCMS asserts that this is the
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`correct construction for these terms. JCMS reserves its full arguments on this issue
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`for its Patent Owner’s Response, if necessary.
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`D.
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`“automatically received”
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`Petitioner first states that the proper construction of “automatically received”
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`should be “functioning without human intervention,” but then in the next
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`sentence states that “received without human intervention” is the proper
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`construction.
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`JCMS submits that “automatically receives” should be construed as
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`“received without human intervention.”
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`E.
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`“at least one of activating, de-activating, disabling, re-enabling
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`and controlling”
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`JCMS disagrees with Petitioner’s proposed construction of this phrase in
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`that it is too narrow. Petitioner’s proposed construction of “making active or more
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`active” ignores the rest of the explicit language used in the phrase, which also calls
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`for “de-activating,” “disabling,” “re-enabling,” and “controlling,”
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`in
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`the
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`disjunctive. JCMS reserves its full arguments on this issue for its Patent Owner’s
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`Response, if necessary.
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`F.
`“premises”
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`A construction for the term “premises” is necessary to interpret the meaning
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`of the claims. Petitioner has offered no construction for this key term.
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`As discussed supra, Applicant chose to be his own lexicographer and
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`provided an explicit definition for the term “premises” in the First Remarks.
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`EX2002 at 8-9. Accordingly, the term “premises” should be construed as “a
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`building or a structure and the grounds or parcel of land associated with the
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`building or the structure, or a building or structure together with its grounds
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`or land, or a building or structure or a portion, room, or office, of or in the
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`building or structure, or a home, mobile home, mobile building, mobile
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`structure, residence, residential building, office, commercial building,
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`commercial office, structure, equipment, facility, machine, rig, assembly line,
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`or edifice.” This proposed construction is consistent with Applicant’s definition of
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`the term “premises” in the First Remarks, and is also supported by and is consistent
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`with the Specification of the ‘363 Patent, including the written description, the
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`drawings and the claims.
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`G.
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`“remote”
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`A construction for the term “remote” is necessary to interpret the meaning of
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`the claims. Petitioner has offered no construction for this key term.
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`As discussed supra, Applicant chose to be his own lexicographer and
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`provided an explicit definition for the term “remote” in the First Remarks. EX2002
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`at 10-11. Accordingly, the term “remote” should be construed as “separate and
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`apart from.” This proposed construction is consistent with Applicant’s definition
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`of the term “remote” 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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`H.
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`“located at”
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`A construction for the term “located at” is necessary to interpret the meaning
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`of the claims. Petitioner has offered no construction for this key term.
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`As discussed supra, Applicant chose to be his own lexicographer and
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`provided an explicit definition for the term “located at” in the First Remarks.
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`EX2002 at 8. Accordingly, the term “located at” should be construed as “situated
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`at, situated in or situated on.” This proposed construction is consistent with
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`Applicant’s definition of the term “located at” in the First Remarks, and is also
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`supported by and is consistent with the Specification of the ‘363 Patent, including
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`the written description, the drawings and the claims.
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`IV. THE CHALLENGED CLAIMS ARE ENTITLED TO A PRIORITY
`DATE OF MARCH 27, 1996
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`The ‘363 Patent is a continuation-in-part of U.S. Patent Application No.
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`09/551,365, filed on April 17, 2000, which is a continuation-in-part of U.S. Patent
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`Application No. 09/277,935, filed on March 29, 1999, which is a continuation of
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`U.S. Patent Application No. 08/683,828, filed July 18, 1996, which is a
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`continuation-in-part of U.S. Patent Application No. 08/622,749, filed on March 27,
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`1996. Patent Owner respectfully submits that at least independent Claims 1, 42 and
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`84 of the ‘363 Patent is entitled to at least a March 27, 1996 priority date, and will
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`provide its full arguments on this issue in the Patent Owner’s Response, if
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`necessary. This is i