UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.
`
`Petitioner
`
`
`Patent No. 8,296,146
`Issue Date: October 23, 2012
`Title: COMPUTERIZED INFORMATION PRESENTATION APPARATUS
`__________________________________________________________________
`
`PETITIONER’S RESPONSE TO
`PATENT OWNER’S MOTION TO AMEND
`
`
`Case No. IPR2016-00156
`__________________________________________________________________
`
`
`
`
`
`
`
`
`
`
`
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.
`
`Petitioner
`
`
`Patent No. 8,296,146
`Issue Date: October 23, 2012
`Title: COMPUTERIZED INFORMATION PRESENTATION APPARATUS
`__________________________________________________________________
`
`PETITIONER’S RESPONSE TO
`PATENT OWNER’S MOTION TO AMEND
`
`
`Case No. IPR2016-00156
`__________________________________________________________________
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`I.
`Introduction ..................................................................................................... 1
`The Proposed Claims are not Directed to Patentable Subject Matter ............ 1
`II.
`III. The Proposed Claims Enlarge the Scope of the Claims of the ’146
`Patent .............................................................................................................. 8
`IV. The Proposed Claims are Indefinite ............................................................... 9
`V.
`The Proposed Claims are not Reasonable ...................................................... 9
`VI. The Original Disclosure Does not Support the Proposed Claims ................ 14
`VII. The Proposed Substitute Claims are not Patentable Over the Prior Art....... 15
`A.
`The Prior Art Describes Claim 35 ...................................................... 15
`B.
`The Prior Art Describes Claim 36 ...................................................... 18
`C.
`The Prior Art Describes Claim 37 ...................................................... 19
`D.
`The Prior Art Describes Claim 38 ...................................................... 20
`E.
`The Prior Art Describes Claim 39 ...................................................... 20
`F.
`The Prior Art Describes Claim 40 ...................................................... 22
`G.
`The Prior Art Describes Claim 41 ...................................................... 24
`H.
`The Prior Art Describes Claim 42 ...................................................... 24
`VIII. Conclusion .................................................................................................... 25
`
`
`
`
`
`
`
`
`i
`
`
`
`
`
`Exhibit 1001
`
`Exhibit 1002
`
`Exhibit 1003
`
`
`Exhibit 1004
`
`Exhibit 1005
`
`
`Exhibit 1006
`
`Exhibit 1007
`
`Exhibit 1008
`
`Exhibit 1009
`
`
`Exhibit 1010
`
`
`Exhibit 1011
`
`
`Exhibit 1012
`
`
`
`
`
`
`LISTING OF EXHIBITS
`
`U.S. Patent No. 8,296,146 to Gazdzinski
`
`Declaration of Scott Andrews
`
`U.S. Patent Application Publication No. 2004/0104842 to
`Drury et al.
`
`U.S. Patent No. 6,707,421 to Drury et al.
`
`The Network Vehicle - A Glimpse into the Future of
`Mobile Multi-Media, by R. Lind et al., The 17th DASC –
`The AIAA/IEEE/SAE Digital Avionics Systems
`Conference – Bellevue, WA – Oct. 31-Nov. 7, 1998 –
`Proceedings
`
`U.S. Patent No. 6,230,132 to Class et al.
`
`U.S. Patent No. 6,249,740 to Ito et al.
`
`Redline Comparison of Challenged Independent Claims
`
`AUTOMOTIVE ELECTRONICS HANDBOOK, Ronald Jurgen
`(ed.), Chapter 11
`
`David Flynn, IBM’s Corporate High Flier, THE SYDNEY
`MORNING HERALD, September 29, 1997
`
`Suzanne Kantra Kirschner, Wired Wheels, POPULAR
`SCIENCE, March 1998
`
`“Plaintiff and Counter-Defendant West View Research,
`LLC’s Revised Disclosure of Asserted Claims and
`Infringement Contentions, Pursuant to Patent L.R. 3.1
`and the June 10, 2015 Court Order,” dated June 26, 2015
`
`ii
`
`
`
`
`
`Exhibit 1013
`
`
`Exhibit 1014
`
`
`Exhibit 1015
`
`
`Exhibit 1016
`
`
`Exhibit 1017
`
`
`Exhibit 1018
`
`
`Exhibit 1019
`
`
`Exhibit 1020
`
`
`Exhibit 1021
`
`
`
`
`U.S. Copyright Registration No. TX 4-900-822, “1998
`IEEE/AIAA 17th Digital Avionics Systems Conference -
`Oct 31, 1998 - Bellevue, WA - (98CH36267),” dated
`December 8, 1998
`
`Library of Congress Public Catalog Information, 17th
`DASC: The AIAA/IEEE/SAE Digital Avionics Systems
`Conference: Proceedings:
`[Electronics
`in motion]:
`Bellevue, WA, Oct. 31-Nov. 7, 1998
`
`MARC Tags corresponding to Library of Congress
`Public Catalog
`Information, 17th DASC: The
`AIAA/IEEE/SAE Digital Avionics Systems Conference:
`Proceedings: [Electronics in motion]: Bellevue, WA, Oct.
`31-Nov. 7, 1998
`
`The Network Vehicle - A Glimpse into the Future of
`Mobile Multi-Media, by R. Lind et al., SAE Technical
`Paper Series 982901
`
`U.S. Copyright Registration No. TX 5-149-812,
`“November 1998 Quarterly Technical Papers on
`Microfiche (MICQ-N98),” dated June 2, 2000
`
`U.S. Copyright Office Public Catalog Information,
`“Quarterly technical papers on microfiche,” ISSN 0148-
`7191
`
`Society of Automotive Engineers (SAE), Abstract, “The
`Network Vehicle - A Glimpse into the Future of Mobile
`Multimedia,” Paper No. 982901, http://papers.sae.org/
`982901/
`
`U.S. Patent Application Publication No. 2008/0201748 to
`Hasek et al.
`
`U.S. Patent No. 6,845,084 to Rangnekar
`
`iii
`
`
`
`
`
`Exhibit 1022
`
`
`Exhibit 1023
`
`
`Exhibit 1024
`
`
`Exhibit 1025
`
`
`Exhibit 1026
`
`
`Exhibit 1027
`
`
`
`Exhibit 1028
`
`Exhibit 1029
`
`Exhibit 1030
`
`Exhibit 1031
`
`
`Exhibit 1032
`
`Exhibit 1033
`
`
`Exhibit 1034
`
`“Order Granting Motions for Judgment on the Pleadings”
`in West View Research, LLC v. Tesla Motors, Inc., Case
`No. 3:14-cv-02679, dated December 11, 2015
`
`“Order Granting Motions for Judgment on the Pleadings”
`in West View Research, LLC v. Audi AG, et al., Case No.
`3:14-cv-02668 (S.D. Cal.), The March 31, 2016
`
`“Judgment” in West View Research, LLC v. Audi AG, et
`al., Case No. 3:14-cv-02668 (S.D. Cal.), dated March 31,
`2016
`
`“Notice of Appeal” in West View Research, LLC v. Audi
`AG, et al., Case No. 3:14-cv-02668 (S.D. Cal.), dated
`The April 29, 2016
`
`“Notice of Docketing” in West View Research, LLC v.
`Audi AG et al., Case No. 16-1947 (Fed. Cir.), dated May
`2, 2016
`
`“Order Consolidating Appeals” in West View Research,
`LLC v. Audi AG, et al., Case No. 16-1947 (Fed. Cir.),
`date May 9, 2016
`
`ITI HomeLink® Security Interface User Manual
`
`U.S. Patent No. 5,283,559 to Kalendra
`
`U.S. Patent No. 7,640,185 to Giordano
`
`Fancher, In Your Pocket: Smartcards, IEEE Spectrum,
`vol. 34, issue 2 (Feb. 1997)
`
`U.S. Patent No. 7,114,179 to Ritter
`
`U.S. Patent Application Publication No. 2001/0021950 to
`Hawley
`
`U.S. Patent No. 6,169,552 to Endo
`iv
`
`
`
`
`
`
`Exhibit 1035
`
`Exhibit 1036
`
`Exhibit 1037
`
`
`U.S. Patent No. 6,133,947 to Mikuni
`
`U.S. Patent No. 5,258,837 to Gormley
`
`U.S. Patent No. 6,125,326 to Ohmura
`
`
`v
`
`
`
`
`
`I.
`
`
`Introduction
`
`
`
`In response to the Petition, West View Research, LLC (“WVR”) filed a Motion
`
`to Amend (“Motion”) canceling all challenged claims, proposing to substitute
`
`claims 35-42. The original claims were found invalid under 35 U.S.C. § 101 by the
`
`United States District Court for the Southern District of California (the “District
`
`Court”). Ex. 1022-1024. WVR has not shown that the proposed claims are directed
`
`to patent-eligible subject matter pursuant to 35 U.S.C. § 101. Further, the Motion
`
`does not meet the requirements of 35 U.S.C. § 316 or 37 C.F.R. § 42.121. The
`
`proposed claims improperly enlarge the scope of the claims, and WVR has not
`
`shown that the proposed claims are reasonable in number, responsive to grounds of
`
`unpatentability in this proceeding, supported by the application as filed pursuant to
`
`35 U.S.C. § 112, definite pursuant to 35 U.S.C. § 112, or patentable over the prior
`
`art pursuant to 35 U.S.C. §§ 102 and 103. It is WVR’s burden to show that its
`
`Motion should be granted, including a showing of patentable distinction over the
`
`prior art. Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1334 (Fed. Cir. 2016); Microsoft
`
`Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1306 (Fed. Cir. 2015); Idle Free Systems,
`
`Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 26 at 7 (Jun. 11, 2013); see also 37
`
`C.F.R. § 42.20(c).
`
`II. The Proposed Claims are not Directed to Patentable Subject Matter
` The Motion should be denied because the proposed claims, like the original
`
`1
`
`
`
`
`
`claims, are not directed to patent-eligible subject matter pursuant to 35 U.S.C. §
`
`101 and Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014). As stated
`
`above, the District Court has found all of the claims challenged in this review to be
`
`invalid under 35 U.S.C. § 101. That conclusion is equally applicable to the
`
`proposed claims; the Motion does not explain otherwise.
`
`Alice Step One
`
` Claims describing “collecting information, analyzing it, and displaying certain
`
`results of the collection and analysis” are “a familiar class of claims ‘directed to’ a
`
`patent-ineligible [abstract idea]”:
`
`Information as such is an intangible. Accordingly, we have treated collecting
`information, including when limited to particular content (which does not
`change its character as information), as within the realm of abstract ideas. In
`a similar vein, we have treated analyzing information by steps people go
`through in their minds, or by mathematical algorithms, without more, as
`essentially mental processes within the abstract-idea category. And we have
`recognized that merely presenting the results of abstract processes of
`collecting and analyzing information, without more (such as identifying a
`particular tool for presentation), is abstract as an ancillary part of such
`collection and analysis.
`Elec. Power Group, LLC v. Alstom S.A., No. 2015-1778, 2016 WL 4073318, at
`
`*3–4 (Fed. Cir. Aug. 1, 2016). The District Court ruled that the challenged claims
`
`of the ’146 patent were abstract because they describe the use of conventional
`
`combinations of known computer components “to receive an information request
`2
`
`
`
`
`
`from a user, access the information from a remote server, display the information
`
`to the user and/or transfer it to a portable device associated with the user.” See,
`
`e.g., Ex. 1023, at 2–3; see also Ex. 1022, at 11–13.
`
` Claims 35-42 are not distinguishable from the patent claims already ruled
`
`invalid. Like the original claims, they describe different combinations of computer
`
`components, including general-purpose computers and processors within a
`
`transport apparatus; portable radio frequency (RF) devices; input devices such as
`
`speech digitization and recognition devices, touch screen displays with soft
`
`function keys, and video cameras; standard wireless or radio-frequency (RF)
`
`networking interfaces; and output devices such as touchscreen and video display
`
`devices. Computers and processors receive an inquiry from the input devices,
`
`communicate the information to external systems through the network/wireless
`
`interfaces, process the information, and provide information representing a
`
`response to the inquiry either through the video display devices, or by downloading
`
`the response information to the portable RF device. The information that can be
`
`requested by the claimed systems includes, e.g., the name of a business or entity a
`
`passenger seeks to locate, directions and maps, and desired functions to be
`
`performed. Compare Motion at 26-38, with Ex. 1022 at 1-7, and Ex. 1023 at 3-4.
`
` The additional limitations recited in the proposed claims do not render those
`
`claims any less abstract than the original claims under review (now canceled). The
`
`3
`
`
`
`
`
`proposed
`
`limitations merely describe
`
`specific examples of
`
`receiving,
`
`communicating, processing, and displaying information:
`
`• Interrogating, identifying, and authenticating a portable RF device (claims
`
`35–39);
`
`• Configuring received information for a user based on user- or device-
`
`specific configuration parameters (claims 36, 38, 42);
`
`• Converting the coordinates of a user touch input on a displayed map to
`
`actual geographic coordinates (claim 40);
`
`• Displaying or implementing the desired information on a touchscreen
`
`display and input device (claim 35, 38, 39, 40, 41), for example using a
`
`graphics co-processor (claim 40); and
`
`• Transferring the data to a portable device for later display and use after the
`
`user leaves the transport apparatus (claim 42).
`
`Or they describe types of information that are received, communicated, processed,
`
`and displayed:
`
`• Security, lighting, HVAC, and other environmental functions associated
`
`with a user premises (claims 35, 37, 39);
`
`• A map or directions (claims 39, 40, 41, 42);
`
`• The name of a business or entity (claim 40, 41); and
`
`4
`
`
`
`
`
`• Audio/video data compressed using a compression algorithm (claims 39, 40,
`
`41).
`
`The substitute claims are, as a result, no different than the original claims and other
`
`computer-implemented claims already found to be directed to an unpatentable
`
`abstract idea. See, e.g., Elec. Power Group, 2016 WL 4073318, at *3–4
`
`(“gathering and analyzing information of a specified content, then displaying the
`
`results”); In re TLI Comms. LLC Patent Litigation, 823 F.3d 607, 611–13 (Fed.
`
`Cir. 2016) (“classifying an
`
`image and storing the
`
`image based on
`
`its
`
`classification”); Content Extraction and Transmission LLC v. Wells Fargo Bank,
`
`Nat. Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (“1) collecting data, 2)
`
`recognizing certain data within the collected data set, and 3) storing that
`
`recognized data in a memory”); Intellectual Ventures I LLC v. Capital One Bank
`
`(USA), 792 F.3d 1363, 1367–68 (Fed. Cir. 2015) (“tracking financial transactions
`
`to determine whether they exceed a pre-set spending limit”).
`
`Alice Step Two
`
` The non-abstract elements of the claims, alone or in combination, do not
`
`provide an inventive concept, because merely “limiting the claims to [a] particular
`
`technological environment” that is not otherwise inventive, or “merely selecting
`
`information, by content or source, for collection, analysis, and display,” is not
`
`sufficient to transform the claims into a patentable application of the abstract idea.
`
`5
`
`
`
`
`
`Elec. Power Group, 2016 WL 4073318, at *4.
`
` As the District Court recognized (see Ex. 1022 at 11–13; Ex. 1023 at 3–4), the
`
`specifications describe systems consisting of different combinations of
`
`conventional components, without asserting that any of those components or
`
`configurations provides a specific technical advance. The ’146 patent confirms that
`
`the particular combinations recited in the substitute claims are not inventive,
`
`stating that “many different arrangements for the disposition of various
`
`components within the system, including, inter alia, the processor/motherboard,
`
`storage devices, server, and memory (and the transfer of data and signals there
`
`between) are possible, all of which are encompassed within the scope of the
`
`present invention.” See ’146 patent, 9:7-12, 25:39-45.
`
` The categories of common and familiar information that can be requested by a
`
`user of the claimed systems, including the name of an entity the user would like to
`
`locate, direction/maps, and information related to a physical premises or topic,
`
`likewise do not describe an inventive concept because the programming required to
`
`receive, select, process, and display one or more forms of known information is
`
`conventional. See, e.g., Elec. Power Group, 2016 WL 4073318, at *4 (“The claims
`
`in this case do not even require a new source or type of information, or new
`
`techniques for analyzing it. As a result, they do not require an arguably inventive
`
`set of components or methods, such as measurement devices or techniques, that
`
`6
`
`
`
`
`
`would generate new data. They do not invoke any assertedly inventive
`
`programming.”).
`
` Finally, the individual computer systems and components for receiving,
`
`retrieving, processing, and displaying information— such as speech recognition
`
`devices and compression algorithms (col. 7:15–31), touch screen displays (col.
`
`6:62–65, 7:18–32, 8:14–17, 8:21–33), wireless and radio frequency (RF)
`
`networking interfaces (col. 8:51–56, 8:62–9:6, 19:19–32), video cameras (col.
`
`16:36–42), and general-purpose computers and microprocessors (col. 7:46–55)—
`
`do not provide an inventive concept because the specification states they were
`
`known and conventional before the filing date of the ’778 patent. “[S]uch
`
`invocations of computers and networks that are not even arguably inventive are
`
`‘insufficient to pass the test of an inventive concept in the application’ of an
`
`abstract idea.” See Elec. Power Group, 2016 WL 4073318, at *5 (quoting
`
`buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1353, 1355 (Fed. Cir. 2014))
`
`(“Though lengthy and numerous, the claims do not go beyond requiring the
`
`collection, analysis, and display of available information in a particular field,
`
`stating those functions in general terms, without limiting them to technical means
`
`for performing the functions that are arguably an advance over conventional
`
`computer and network technology…. The claims … do not include any
`
`requirement for performing the claimed functions of gathering, analyzing, and
`
`7
`
`
`
`
`
`displaying in real time by use of anything but entirely conventional, generic
`
`technology.”); Mortgage Grader, Inc. v. First Choice Loan Services Inc., 811 F.3d
`
`1314, 1324 (Fed. Cir. 2016) (“[T]he claims ‘add’ only generic computer
`
`components such as an ‘interface,’ ‘network,’ and ‘database.’ These generic
`
`computer components do not satisfy the inventive concept requirement.”);
`
`buySAFE, 765 F.3d at 1355 (“That a computer receives and sends the information
`
`over a network—with no further specification—is not even arguably inventive.”);
`
`Content Extraction and Transmission, 776 F.3d at 1348 (“There is no ‘inventive
`
`concept’ in CET’s use of a generic scanner and computer to perform well-
`
`understood, routine, and conventional activities commonly used in industry.”).
`
`III. The Proposed Claims Enlarge the Scope of the Claims of the ’146 Patent
`The proposed claims improperly enlarge the scope of the claims of the ’146
`
`patent. For example, claim 37 is proposed as a substitute from claim 11, which
`
`originally depended from claim 10. Though claim 36 is proposed as a substitute for
`
`claim 10, claim 37 does not depend (and therefore does not include) the limitations
`
`of claim 36. Claim 37 therefore eliminates the following limitations from original
`
`claim 11: “said received information is configured specifically for the user, said
`
`configuration specifically for the user based at least in part on data previously
`
`stored an relating specifically to that user” (from original claim 10) and “said data
`
`is stored on a remote server and relates specifically to that user based at least in
`
`8
`
`
`
`
`
`part on one or more previously supplied user selected configuration parameters”
`
`(from original claim 11). Proposed claim 37 therefore enlarges the scope of the
`
`claims of the ’146 patent in violation of 37 C.F.R. § 42.121(a)(2)(i).
`
`IV. The Proposed Claims are Indefinite
`The proposed claims include terms of degree and purely subjective limitations
`
`that render the claims indefinite under 35 U.S.C. § 112. See, e.g., Interval
`
`Licensing LLC v. AOL, Inc., 766 F.3d 1364 (Fed. Cir. 2014). For example, claim
`
`37 refers to “an area or zone particularly associated with the user,” claims 38 and
`
`39 refer to “radio frequency devices that are immediately proximate to a transport
`
`apparatus,” and claim 42 refers to navigating “in the local area,” which are terms
`
`of degree or are purely subjective, and are indefinite under 35 U.S.C. § 112.
`
`V. The Proposed Claims are not Reasonable
` WVR’s proposed claims are not reasonable, both because they are not
`
`responsive to an alleged ground of unpatentability, and because WVR proposes too
`
`many substitute claims. 35 U.S.C. § 316(d)(1)(B); 37 C.F.R. § 42.121(a)(2), (3).
`
` Many of WVR’s proposed amendments are not tied to any ground of
`
`unpatentability, and are not provided with any supporting rationale. As the Board
`
`has held, where a patent owner asserts that a certain claim amendment renders a
`
`proposed claim patentable, the patent owner should provide “meaningful reasons”
`
`establishing a “special circumstance” for adding further features. Idle Free, at 9
`
`9
`
`
`
`
`
`(“Adding features for no meaningful reason is generally inconsistent with
`
`proposing a reasonable number of substitute claims, and also is not responsive to
`
`an alleged ground of unpatentability.”). For example, WVR does not assert that
`
`any of the following amendments have any bearing on patentability.
`
`Claim 35 “remote network server apparatus”
`
`“at least one of: (i) a capacitive touch-screen display and input device of
`the computerized information system; and/or (ii) a speech synthesis
`apparatus of the computerized information system”
`
`“the plurality of soft function keys comprising at least one of: (i) a
`premises lighting control function key and (ii) a premises heating,
`ventilation, air conditioning-related function key”
`
`“the authentication comprising: (i) receipt of electromagnetic radiation
`transmitted from the portable radio frequency device and encoded with
`first data which provides unique identification of the portable radio
`frequency device; and (ii) comparison of the received first data, and
`second data relating to one or more authenticated radio frequency
`devices”
`
`Claim 36 “wherein said data is stored on a remote network server apparatus and
`relates specifically to that user based at least in part on one or more
`previously supplied user-selected configuration parameters”
`
`Claim 38 “comprising a radio frequency interrogation apparatus configured to
`interrogate only radio frequency devices that are immediately proximate
`to the transport apparatus”
`
`10
`
`
`
`
`
`“at least one of (i) a capacitive touch-screen input and display and input
`device of the computerized information system; and/or (ii) a speech
`synthesis apparatus of the computerized information system”
`
`“said input relating to a desired function comprises [[an] a digitized
`speech input to obtain information relating to a particular destination or
`entity”
`
`“the a speech synthesis apparatus of the computerized information
`system”
`
`“verbally traverse a menu structure”
`
`“at least one of: (i) a touch screen input and display device of the
`computerized system; and/or (ii) a speech synthesis apparatus”
`
`Claim 39 “means for wireless communication interface”
`
`“the access based at least on the compressed digital data”
`
`“at least one of: (i) a capacitive touch screen input and display device of
`the computerized information system; and/or (ii) a means for speech
`synthesis”
`
`“the fixed mounting such that the user can interface with each of the
`touch screen input and display device, the speech synthesis means, and
`the speech recognition means”
`
`“the invocation of the one or more functions comprising user actuation
`of a soft function key or icon generated by the computerized information
`system and displayed on the touch screen input and display device
`contemporaneous with the provision of the at least a portion of the
`accessed information relating to the directions to the business or entity
`
`11
`
`
`
`
`
`thereon, the invocation of the one or more functions comprising wireless
`communication with a receiver disposed at the premises”
`
`Claim 40 “[[an]] a digitized speech input from the user, the digitized speech input
`relating to a user’s desire to obtain directions to a business or entity from
`the computerized information system, the digitized speech input
`comprising only a name or part of a name of the business or entity”
`
`“cause utilization of a wireless interface and a network to, based at least
`on the digitized speech input, access information disposed on a remote
`network server apparatus”
`
`“at least one of: (i) a touch screen input and display device of the
`computerized system; and/or (ii) a speech synthesis apparatus”
`
`Claim 41 “[[an]] a digitized speech input from the user, the digitized speech input
`relating to a user’s desire to obtain directions to a business or entity from
`the computerized information system, the digitized speech input
`comprising only a name or part of a name of the business or entity”
`
`“cause utilization of a wireless interface and a network to, based at least
`on the digitized speech input, access information disposed on a remote
`network server apparatus”
`
`“at least one of: (i) a capacitive touch screen input and display device of
`the computerized system; and/or (ii) a speech synthesis apparatus”
`
`“the displayed at least portion of the received digital video data
`comprising a window delineating the received digital video data from
`the displayed at least portion of the accessed information”
`
`12
`
`
`
`
`
`Claim 42 “wherein the transfer of data between the computerized information
`system and the portable electronic device occurs via data
`communication between an application computer program resident and
`operable on the portable electronic device and the computerized
`information system, the application computer program configured to
`save at least a portion of the transferred data to a storage device on the
`portable electronic device, and subsequently access the stored at least
`portion of data for display on a display device of the portable electronic
`device, the display of the at least portion of the transferred data on the
`display device of the portable electronic device configured to occur after
`the user and the portable electronic device have egressed from the
`transport apparatus”
`
`
` Further, WVR makes no showing of a “special circumstance” to justify the
`
`amendments of proposed dependent claims 36, 37, and 42. See, e.g., Idle Free, at
`
`9-10; Riverbed Tech., Inc. v. Silver Peak Sys., Inc., IPR2013-00402, Paper 35 at
`
`27-30 (Dec. 30, 2014) (“[T]he issue is whether Patent Owner has shown a special
`
`circumstance for making the additional changes in proposed substitute [dependent]
`
`claims 14 and 16, such as a patentable distinction over the parent proposed
`
`substitute claims.”). The Motion does not provide any analysis comparing any of
`
`the dependent substitute claims to any other proposed substitute claims, including
`
`the parent claims. Though the Motion states that “the dependent claims are
`
`patentably distinct from their respective base claims for the reasons in section V
`
`13
`
`
`
`
`
`below,” the Motion does not include any discussion of patentable distinction of
`
`these dependent claims from their respective independent claims.
`
`VI. The Original Disclosure Does not Support the Proposed Claims
` At pages 3-7 of the Motion, WVR alleges that the additional features of claims
`
`31-40 are supported by the original application (“’980 application,” Ex. 2001).
`
`However, WVR provides only citations, without explanation as to why it should be
`
`understood that the inventor possessed the claimed subject matter. Nichia Corp. v.
`
`Emcore Corp., IPR2012-00005, Paper 27 at 4 (Jun. 3, 2013) (“should the claim
`
`language … not appear in ipsis verbis in the original disclosure, a mere citation to
`
`the original disclosure without any explanation as to why a person of ordinary skill
`
`in the art would have recognized that the inventor possessed the claimed subject
`
`matter as a while may be similarly inadequate.”). In addition, as discussed below,
`
`the ’980 application does not describe the claims.
`
`The ’980 application does not describe a “radio frequency interrogation
`
`apparatus configured to interrogate only radio frequency devices that are
`
`immediately proximate to the transport apparatus,” as recited in claims 38 and 39.
`
`The ’980 application generally discusses the limited range and direction of its
`
`reader 1504. ’980 application, 26:16-17 (“The reader 1504 has limited range and is
`
`directional in nature such that it will not interfere with the readers of other elevator
`
`cars nearby or other RF devices.”). But the claim language does not reflect the
`
`14
`
`
`
`
`
`described limited range or direction, nor does the specification provide any
`
`description of the “immediate proximity” for the transport apparatus.
`
`Further, the ’980 application does not describe converting a coordinate of touch
`
`input to a touch screen into an “actual geographic coordinate,” as recited in claim
`
`40. Instead, at 24:1-6, the ’980 application describes a touch input that is
`
`“converted to coordinates within the floor.” Coordinates within the floor are not
`
`“geographic”; the ’980 application does not describe any geographic coordinates.
`
`VII. The Proposed Substitute Claims are not Patentable Over the Prior Art
`The obviousness of the original claims in view of the prior art, including Drury,
`
`Lind, Ito, and Class, is presented in the Petition. The Motion does not present any
`
`additional limitations that would render the substitute claims non-obvious.
`
`A. The Prior Art Describes Claim 35
`As to claim 35, WVR asserts that the prior art does not describe “a
`
`computerized information system that is disposed on or within a transport
`
`apparatus and that is configured to (i) provide the user with remote control of
`
`environmental functions associated with a premises specifically associated with the
`
`user and (ii) provide the user a plurality of soft function keys associated with
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`respective ones of the environmental functions.” Motion, at 8. WVR concedes that
`
`the prior art describes buttons and icons for navigation functions (Drury, Lind, Ito,
`
`Class, see Motion, at 8), portable devices with soft function keys to control house
`
`lights (Lenchik, see Motion, at 17), as well as environmental controls for the
`15
`
`
`
`
`
`vehicle (Motion, at 8). But WVR then asserts that the prior art does not describe
`
`remote control of environmental functions associated with a premise specifically
`
`associated with a user, from a capacitive touch screen in a moving transport
`
`apparatus. Motion, at 8.
`
`First, WVR’s description of the prior art already concedes that soft function
`
`keys for controlling environmental functions were known (Motion, at 17,
`
`describing Lenchik). In view of Lind’s description of remote control of vehicle
`
`environmental functions (e.g., controlling vehicle lights from a remote computer,
`
`see Lind, I21-4), it would have been obvious to provide control in the reverse
`
`direction, providing remote control of home environmental functions from a
`
`vehicle.
`
`Second, the Motion refers generally to HomeLink as a prior art control system
`
`(but did not include any evidence supporting its statements). The ITI HomeLink®
`
`Security Interface user manual (“HomeLink,” Ex. 1028, dated July 1997) describes
`
`remote control of, e.g., house lights, from a vehicle. HomeLink, at 1 (describing an
`
`Interface that allows “HomeLink buttons to arm and disarm the security system,
`
`control the lights in the house, and operate the garage door opener”; “[t]he user
`
`presses a button on the HomeLink console in their car, which transmits a radio
`
`signal to the Interface.”). WVR argues that HomeLink’s mechanical buttons, in a
`
`vehicle just outside the home, does not describe claim 35. However, the ’146
`
`16
`
`
`
`
`
`patent states that capacitive touch screens were well known in the prior art (see
`
`’980 application, 8:10-12, 10:13-14; see also U.S. Patent No. 5,283,559
`
`(“Kalendra,” Ex. 1029), at 1:17-22), and the Motion states that soft function keys
`
`for controlling environmental functions were also well known (Motion, at 17).
`
`Further, claim 35 does not require that the claimed remote control originate from
`
`beyond the “immediate proximity” of a user’s home, or that the claimed transport
`
`apparatus be in motion.
`
`Further regarding claim 35, WVR asserts that the prior art does not describe
`
`that the system is “configured to perform an authentication of a portable radio
`
`frequency device carried by the user prior to enabling access to” the environmental
`
`functions. Motion, at 9 (emphasis in original). First, as noted by the ’980
`
`application, RFID tags, RFID readers, and access databases were well known in
`
`the art, as were passwords, encrypted data protocols, and spread spectrum
`
`techniques for security (i.e., to authenticate the user). ’980 application, 25:20-23,
`
`26:9-14. Second, the prior art describes authenticating portable RF devices prior to
`
`enabling access to certain functionality. For example, U.S. Patent No. 7,640,185
`
`(“Giordano,” Ex. 1030) describes a gas station using hand-held RFID transponders
`
`(7:59-62) to identify a customer, and authenticating the transponders using a
`
`challenge code and an algorithm, which is checked by the RF reader and a host
`
`computer (11:3-22). Access to the automatic credit payment system is only granted
`
`17
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