Trials@uspto.gov
`571-272-7822
`
`Paper 10
`Date: January 6, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NISSAN NORTH AMERICA,INC.,
`Petitioner,
`
`Vv.
`
`JOAO CONTROL & MONITORING SYSTEMS, LLC,
`Patent Owner.
`
`Case IPR2015-01509
`Patent 6,549,130 Bl
`
`Before HOWARD B. BLANKENSHIP, STACEY G. WHITE,and
`JASON J. CHUNG,Administrative Patent Judges.
`
`CHUNG,Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 CFR. § 42.108
`
`I.
`
`INTRODUCTION
`
`Petitioner, Nissan North America,Inc., filed a Petition to institute an
`
`inter partes review ofclaims 26, 29, 30, 33, 42, 43, 48, 60, and 68 (“the
`
`challenged claims”) of U.S. Patent No. 6,549,130 B1 (“the ’130 patent”).
`
`
`571-272-7822
`
`Paper 10
`Date: January 6, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NISSAN NORTH AMERICA,INC.,
`Petitioner,
`
`Vv.
`
`JOAO CONTROL & MONITORING SYSTEMS, LLC,
`Patent Owner.
`
`Case IPR2015-01509
`Patent 6,549,130 Bl
`
`Before HOWARD B. BLANKENSHIP, STACEY G. WHITE,and
`JASON J. CHUNG,Administrative Patent Judges.
`
`CHUNG,Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 CFR. § 42.108
`
`I.
`
`INTRODUCTION
`
`Petitioner, Nissan North America,Inc., filed a Petition to institute an
`
`inter partes review ofclaims 26, 29, 30, 33, 42, 43, 48, 60, and 68 (“the
`
`challenged claims”) of U.S. Patent No. 6,549,130 B1 (“the ’130 patent”).
`
`
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`IPR2015-01509
`Patent 6,549,130 Bl
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`Paper | (“‘Pet.”). Patent Owner, Joao Control & Monitoring Systems, LLC,
`
`filed a Preliminary Response pursuant to 35 U.S.C. § 313. Paper 9 (“Prelim.
`
`Resp.”).
`
`Wehave authority to determine whetherto institute an inter partes
`
`review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Upon consideration of the
`
`Petition and the Preliminary Response, and for the reasons explained below,
`
`we determine that the information presented showsa reasonable likelihood
`
`that Petitioner would prevail with respect to claims 26, 29, 30, 33, 42, 43,
`
`48, 60, and 68. See 35 U.S.C. § 314(a). Accordingly, we institute an inter
`partes review ofthese claims.
`
`A.
`
`Related Matters
`
`Petitioner and Patent Ownerindicate that the ’130 patent or related
`
`patents have been asserted in the following proceedings: (1) Joao v. Nissan
`
`North America, Inc., No. 1-14-cv-00523 (D. Del.); (2) Joao v. City of
`
`Yonkers, No. 1-12-cv-07734 (S.D.N.Y.); (3) Joao v. Chrysler Corp., No. 4-
`
`13-cv-13957 (E.D. Mich.); (4) Joao v. Volkswagen Group ofAmerica, Inc.,
`
`No. 1-14-cv-00517 (D. Del.); (5) Joao v. Protect America, Inc., No. 1-14-cv-
`
`00134 (W.D. Tex.); (6) Joao v. Cox Communications, Inc., No. 1-14-cv-
`
`00520 (D. Del.); (7) Joao v. Time Warner Cable, Inc., No. 1-14-cv-00524
`
`(D. Del.); (8) Joao v. Verizon Communications, Inc., No. 1-14-cv-00525 (D.
`
`Del.); (9) Joao v. Slomin’s Inc., No. 2-14-cv-02598 (E.D.N.Y.); (10) Joaov.
`
`LifeShield, Inc., No. 2-15-cv-02772 (E.D. Pa.); (11) [control Networks,Inc.
`
`v. Joao, No. 1-15-cv-00755 (W.D. Tex.); (12) Joao v. Telular Corp., No. 14-
`
`cv-09852 (N.D. III.); (13) Joao v. Comverge, Inc., No. 14-cv-03862;
`
`(14) Joao of California, LLC v. ACTI Corp., No. 8-10-cv-01909 (C.D. Cal.);
`
`
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`(15) Joao ofCalifornia, LLC v. Sling Media, Inc., No. 3-11-cv-06277 (C.D.
`
`Cal.); (16) Joao v. Ford Motor Co., No. 4-12-cv-14004 (E.D. Mich.);
`(17) Joao v. Chrysler Corp., No. 1-13-cv-00053 (S.D.N.Y.); (18) Joao v.
`Ford Motor Co., No. 4-13-cv-13615 (E.D. Mich.); (19) Joao v. Jaguar Land
`
`Rover North America LLC, No. 1-13-cv-00507 (D. Del.); (20) Joaov.
`
`Mitsubishi Motors North America Inc., No. 1-13-cv-00614 (D. Del.);
`
`(21) Joao v. Mazda Motor ofAmerica Inc., No. 1-13-cv-00728 (D. Del.);
`
`(22) Joao v. Vivint Inc., No. 1-13-cv-00508 (D. Del.); (23) Joao v. Lowe’s
`
`Cos., Inc., No. 5-13-cv-00056 (W.D.N.C.); (24) Joao v. FrontPoint Security
`Solutions LLC, No. 1-13-cv-01760 (D. Del.); (25) Alarm.com Inc. v. Joao,
`No. 1-14-cv-00284 (D. Del.); (26) Joao v. Cenuco, Inc., No. 7-05-cv-01037
`
`(S.D.N.Y.); (27) Joao v. Xanboo, Inc., No. 2-12-cv-3698 (C.D. Cal.);
`
`(28) Joao v. Ford Motor Co., No. 1-12-cv-01479 (D. Del.); (29) Joaov.
`
`Ford Motor Co., No. 2-12-cv-00033 (C.D. Cal.); (30) Joao v. Hyundai
`Motor America, No. 8-12-cv-00007 (C.D. Cal.); (31) Joao v. Consolidated
`Edison, Inc., No. 1-14-cv-00519 (D. Del.); (32) Joao v. Honda Motor Co.,
`
`Inc., No 2-12-cv-04013 (C.D. Cal.); (33) Xanboo Inc. v. Joao of California,
`
`No. 8-11-cv-00604 (C.D. Cal.); (34) Joao v. Cablevision Systems Corp., No
`1-14-cv-00518 (D. Del.); (35) Joao v. DirecTV, No. 1-14-cv-00521 (D.
`
`Del.); (36) Joao v. DISH Network Corp., No. 1-14-cv-00522 (D. Del.); and
`
`(37) Joao v. Mobile Integrated Solutions LLC, No. 14-cv-2643 (D. Ariz.).
`
`Exs. 1016-1018; Paper5.
`According to Petitioner and Patent Owner, the ’130 patent and several
`related patents are the subject of four exparte reexaminations,
`Reexamination Control Nos.: (1) 90/013,303; (2) 90/013,301; (3)
`90/013,302; and (4) 90/013,300. Exs. 1016-1018; Paper 5. Petitions have
`
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`been filed in regards to the ’130 patent and several related patents requesting
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`inter partes review of U.S. Patent Nos.: (1) 6,542,076 (Case IPR2015-
`
`01478); (2) 7,397,363 (Case IPR2015-01482); (3) 7,397,363 (Case
`
`. IPR2015-01485); (4) 6,549,130 (Case IPR2015-01486); (5) 6,542,076 (Case
`
`IPR2015-01508); (6) 6,549,130 (Case IPR2015-01509); (7) 5,917,405 (Case
`
`IPR2015-01585); (8) 6,542,076 (Case IPR2015-01610); (9) 6,549,130 (Case
`
`IPR2015-01611); (10) 7,397,363 (Case IPR2015-01612); (11) 5,917,405
`
`(Case IPR2015-01613); (12) 7,397,363 (Case IPR2015-01645);
`
`(13) 6,549,130 (Case IPR2015-01760); (14) 7,397,363 (IPR2015-01762);
`
`(15) 6,542,077 (Case IPR2015-01466); (16) 6,587,046 (Case IPR2015-
`
`01477); and (17) 7,277,010 (Case IPR2015-01484). Exs. 1016-1018; Paper
`
`5.
`
`B.
`
`The Asserted Grounds
`
`Petitioner identifies the following as asserted grounds of
`
`unpatentability:
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`
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`Reference(s)|Basis|ChallengedClaim(s)_
`
`Frossard (Ex. 1005)!
`Polarx. 1006)
`ca[mole
`
`§ 103(a)0
`
`Lk
`
`:
`
`26, 29, 30, 42, 43,
`
`Pagliaroli and
`
`Frossard § 103(a)|33 and 68
`
`-Pagliaroli and Simms
`
`C.
`
`The ’130 Patent
`
`The *130 patentis directed to controlling a vehicle or premises. Ex.
`|
`| 1001, Abs. The ’130 patent describes three control devices; a first control
`device is located at a vehicle or premises, a second control device is located
`
`remote from the vehicle or premises, and a third control device is located
`
`remote from the vehicle or premises and remote from the second control
`
`device. Jd. The first control device generatesa first signal in response to a
`
`second signal from the second control device. /d. Thefirst control device
`
`' European Patent Application Publication No. 0 505 266 A1, published
`March 17, 1992.
`? The relevant sections of the Leahy-Smith America Invents Act (“AIA”),
`Pub. L. No. 112-29, took effect on March 16, 2013. Because the application
`from which the ’130 patent issued was filed before that date, our citations to
`Title 35 are to its pre-AJA version.
`> US. Patent No. 5,276,728, filed Nov.6, 1991.
`“U.S. Patent No. 5,334,974,filed Feb. 6, 1992.
`
`5
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`can activate, de-activate, disable or re-enable, one or more of“a respective
`
`system, component, device, equipment, equipment system, and/or appliance,
`
`of a respective vehicle or premises with the first signal.” Jd. The second
`
`control device generates the secondsignalin responseto a third signal from
`
`the third control device. Jd. The “second control device is at least one of a
`
`server computer, a computer, and a network computer.” /d. at 81:19-21. In
`
`addition,
`
`least one of a
`the third control device is at
`stationary device, a portable device, a hand-held
`device, a mobile device, a telephone, a cordless
`telephone, a cellular telephone, a home computer,
`a personal computer, a personal digital assistant, a
`television,
`an interactive television,
`a digital
`television, a personal communications device, a
`personal
`communications
`services
`device,
`a
`display telephone, a video telephone, a watch, and
`a two-way pager.
`Id. at 81:21-29.
`
`D.
`
`The Challenged Claims
`
`Petitioner challenges claims 26, 29, 30, 33, 42, 43, 48, 60, and 68.
`
`Pet. 2-3. Claims 26, 42, and 48 are independent. Claim 26is illustrative
`
`and reproduced below:
`
`26. A control apparatus, comprising:
`
`a first control device, wherein the first control device at least
`one of generates and transmits a first signal for at least one of
`activating, de-activating, disabling, and re-enabling,at least one
`of a vehicle system, a vehicle component, a vehicle device, a
`vehicle equipment, a vehicle equipment system, and a vehicle
`appliance, of a vehicle, wherein the first control deviceis
`located at the vehicle, wherein the first control device is
`responsive to a second signal, wherein the secondsignalis at
`
`
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`IPR2015-01509
`Patent 6,549,130 BI.
`
`least one of generated by and transmitted from a second control
`device, wherein the second control device is located at a
`location which is remote from the vehicle, wherein the second
`signal is transmitted from the second control deviceto thefirst
`control device, and further wherein the second signal is
`automatically received bythe first control device,
`
`wherein the second control device is responsiveto a third
`signal, wherein the third signalis at least one of generated by
`and transmitted from a third control device, wherein the third
`control device is located at a location which is remote from the
`vehicle and remote from the second control device, wherein the
`third signal is transmitted from the third control device to the
`_ second control device, and further wherein the third signalis
`automatically received by the secondcontrol device,
`
`wherein the at least one of a vehicle system, a vehicle
`component, a vehicle device, a vehicle equipment, a vehicle
`equipment system,and a vehicle appliance, is at least one of a
`vehicle ignition system, a vehicle fuel pump system, a vehicle
`alarm system, a vehicle door locking device, a vehicle hood
`locking device, a vehicle trunk locking device, a wheel locking
`device, a brake locking device, a horn, a vehicle light, a vehicle
`lighting system, a refrigerator, an air conditioner, an oven, a
`vehicle window locking device, a video recording device, an
`audio recording device, a camera, an intercom device, a
`microphone,a locking device, a monitoring device for
`monitoring at least one of fuel supply, water or coolant supply,
`generator operation, alternator operation, battery charge level,
`and engine temperature, fire extinguishing equipment, radar
`equipment, hydraulic equipment, pneumatic equipment, a
`winch, a self-defense system, a weapon system, a gun, an
`electronic warfare system, a pumping device, sonar equipment,
`a locking device for preventing unauthorized accessto a vehicle
`compartment, and landing gear.
`
`
`
`IPR2015-01509
`Patent 6,549,130 B1
`
`Il.
`
`ANALYSIS
`
`A,
`
`Claim Construction
`
`As acknowledgedbythe parties, the ’130 patent has expired. See Pet.
`
`8; Prelim. Resp. 10. We construe expired patent claims accordingto the
`
`standard applied by the district courts. See In re Rambus Inc., 694 F.3d 42,
`
`46 (Fed. Cir. 2012). Specifically, we apply the principles set forth in
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). “In
`
`determining the meaningofthe disputed claim limitation, we look
`
`principally to the intrinsic evidence of record, examining the claim language
`
`itself, the written description, and the prosecutionhistory, if in evidence.”
`
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014
`
`(Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312-17). A patentee mayact
`as a lexicographer by giving a term a particular meaningin the specification
`
`with “reasonable clarity, deliberateness, and precision.” In re Paulsen, 30
`
`F.3d 1475, 1480 (Fed. Cir. 1994),
`
`Petitioner and Patent Owneragree on the construction of“interface
`
`device.” Pet. 8-9; Prelim. Resp. 18. Patent Owner, however, also argues
`
`that the terms “remote” and “located at” are defined expressly in the
`
`prosecution history of at least two related applications; however, we are not
`99 6
`
`persuaded that express construction of “interface device,”
`
`“remote,”, and
`
`“located at” are necessary in order to resolve the disputes currently before
`
`us. See Prelim. Resp. 18, 39. Thus, we discern no need to provide express
`
`constructions for these termsat this time. Vivid Techs., Inc. v. Am. Sci. &
`
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be
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`IPR2015-01509
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`construed that are in controversy, and only to the extent necessary to resolve
`
`the controversy.”).
`Werecognize, however, a need to provide an express construction for
`“control device.” Petitioner and Patent Owneragree that the term “control
`
`device”is defined expressly in the prosecution history of a related
`
`application. Pet. 36 n.1; Prelim. Resp. 18. Patent Ownerseeks to rely upon
`
`a statement madein the remarksfiled on November 23, 2007, during
`
`prosecution of the patent application that issued as U.S. Patent No.
`
`7,397,363 (‘the ‘363 patent”) (Ex. 2002). Prelim. Resp. 18. This statement
`
`was madeseveral years after the issuance of the ’130 patent. See Ex. 1001,
`
`at [45] (April 15, 2003 issuance date). The ’130 patent and the ’363 patent
`
`each descend from U.S. Patent Application Nos. 08/683,828 and 08/622,749.
`See Ex. 1001, 73.
`|
`Asthe Federal Circuit has noted,“[a] statement made during
`
`prosecution of related patents may be properly considered in construing a
`term commonto those patents, regardless of whetherthe statementpre- or
`post-dates the issuance ofthe particular patent at issue.” Teva Pharm. USA,
`
`Inc. v. Sandoz, Inc., 789 F.3d 1335, 1343 (Fed. Cir. 2015) (citing Microsoft
`
`Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350 (Fed. Cir. 2004)). An
`
`explicit definition for “control device” was providedin the related
`
`application. See Ex. 2002, 6. We have reviewedthis definition and, onthis
`
`record, wefind it to be reasonable andinstructive to understanding the
`
`proper scope of this claim term. See Paulsen, 30 F.3d at 1480. Thus, we
`
`adopt the following construction for purposes of this decision.
`
`
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`
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`Control Pet.36n.1;|A device or a computer, or that part of a device
`
`
`
`
`
`Device
`Prelim.
`or a computer, which performsan operation,
`
`
`
`Resp. 18;
`an action, or a function, or which performs a
`
`
`
`Ex. 2002, 6|numberofoperations, actions, or functions.
`
`
`
`
`
`
`B.
`
`Alleged Anticipation of Claims 26, 29, 33, 42, 48, and 68 by Frossard
`
`1,
`
`Frossard (Ex. 1005)
`
`Frossard describes a system for controlling shut down of movable or
`
`mobile equipmentand locating the movable or mobile equipment. Ex. 1005,
`
`2:1-2. Figure 1 is reproduced below.
`
`CALL BY TELEPHONE
`
`FIG.1.
`
`9
`
`PROM THE SINTER
`
`Figure | illustrates movable or mobile equipment3 containing
`
`receiver-decodercircuits 4 for an order message to shut down movable or
`
`mobile equipment 3.
`
`/d. at 5:7-12. In addition, Figure 1 showsa scenario in
`
`which equipment3 is stolen, the owneror authorized person calls server 1 to
`
`communicate a shut downorder of equipment 3.
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`/d. at 9:14-17. After
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`
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`server | validates the shut downorder, the shut downorderis transmitted to
`
`equipment 3. Id. at 9:23-24. Figure 2, whichis reproduced below,provides
`a more detailed explanation ofhow equipment3 is shut down.
`FM ANTENNA
`
`FIG.2 .
`
`Figure 2 illustrates receiver-decodercircuits 4 and equipment
`
`interface 5 from Figure 1. Jd. at 3:26-27, 7:21-23. Shutdowncircuit 423
`
`controls immediate or deferred shut down of equipment3. Jd. at 9:28—10:3.
`
`Whenshut down of equipment 3 occurs, an electrical contact that activates
`
`the starter is broken.
`
`/d. at 10:13-21.
`
`2.
`
`The Parties’ Contentions for Claims 26, 29, 33, 42, 48, and 68
`
`Petitioner asserts that the subject matter of claims 26, 29, 33, 42, 48,
`and 68 is anticipated by Frossard under 35 U.S.C. § 102(a). Pet. 9-24.
`Petitioner providesa limitation-by-limitation analysis of where each
`limitation of claims 26, 29, 33, 42, 48, and 68 allegedly is disclosed in
`
`Frossard. Id.
`
`Weare persuadedthat the present record supports the contention that
`
`Frossard discloses a system for controlling shut down of a motor vehicle and
`
`1]
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`“locating the motor vehicle, which discloses the limitations in claims 26, 42,
`and 48. See Pet. 9-23 (citing Ex. 1005) (pinpointcitations omitted). The
`
`present record also sufficiently supports the contention that Frossard
`
`discloses the motor vehicle containing receiver-decodercircuits 4 for an
`
`order message to shut down the motor vehicle, which discloses the
`
`limitations in claims 26, 42, and 48. Pet. 9-24 (citing Ex. 1005, 5:7-12). In
`
`addition, the present record supports the contention that Frossard discloses
`
`that when motorvehicle is stolen, the owneror authorized personcalls
`server | to communicate a shut downorrestart order of motor vehicle and
`
`after server | validates the shut downorrestart order; the shut downorderis
`transmitted to equipment 3, which causesanelectrical contact that activates
`
`the starter to be broken, which discloses the limitations in claims 26, 42, and
`
`48. Pet. 9-24 (citing Ex. 1005) (pinpoint citations omitted).
`
`Petitioner relies on Frossard’s addressing the corresponding
`
`commandsto motor vehicle 3, which causes immediate or deferred shut
`down of motorvehicle 3 to disclose the limitations of claim 29. Pet. 16
`
`(citing Ex. 1005, 4:28-31, 9:23-27).
`Petitioner relies on Frossard’s user utilizing a telephone or Minitel to
`communicate an access codeto server 1, in which server 1 transmits an
`
`order message to shut down motorvehicle 3 to disclose the limitations of
`
`claim 33. Pet. 16-17 (citing Ex. 1005, 4:18-31, Fig. 1).
`Petitioner relies on Frossard’s interface circuit between the receiver-
`decodercircuits 4 and motor vehicle components, devices, and/or equipment
`to disclose the limitations of claim 68. Pet. 23—24 (citing Ex. 1005, 8:4—13).
`
`Patent Owner, however, argues because “interface device” is recited
`
`in dependent claims 32 and 68 and “control device[s]”is recited in
`
`12
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`independentclaims 26, 42, and 48, the doctrine of claim differentiation
`
`creates a presumption that “interface device” is separate and distinct from
`“control device[s].” Prelim. Resp. 33-38. Patent Owner, thus, contendsthat
`Frossard’s receiver-decodercircuits 4 merely functions as an “interface
`
`device” because it decodes a message sent by server 1. Jd. at 40-43.
`Moreover, Patent Owner contends that Frossard’s receiver-decodercircuits 4
`
`are interface devices rather than control devices because dependent claims
`
`32 and 68 recite “interface device” and claims 26, 42, and 48 recite “second
`
`control device.” Jd. at 33-35, 43.
`
`Althoughthe doctrine of claim differentiation creates a presumption
`
`that the “interface device” limitations in dependent claims 32 and 68 are
`
`different in scope than the “control device”limitations in claims 26, 42, and
`
`48, this presumption can be overcomeby written description or prosecution
`history. See SeachangeInt’l, Inc. v. C-COR Inc., 413 F.3d 1361, 1369 (Fed.
`Cir. 2005). In this case, Patent Ownerrelies on the Specification describing
`
`“systems 11 are located externally from apparatus 1 and may or may not be
`
`connected and/orlinked to the CPU4via. . . interface 12 which may or may
`not be required” (emphasis added). Prelim. Resp. 35 (quoting Ex. 1001,
`
`22:30-36).
`
`In addition, Patent Ownerrelies on the Specification stating
`
`[a]s noted above, the use of any one or more of the
`vehicle equipment system or systems 11, and their
`associated interface devices 12, may be optional
`and may further include any other systems and/or
`devices which may, or are, utilized in and/or in
`conjunction with any of the above noted or
`envisioned vehicles
`
`(emphasis added). Prelim. Resp. (quoting Ex. 1001, 24:55-61).
`
`13
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`Patent Owneralso relies on the Specification disclosing “interface
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`devices 8, 10 and 12 may include any ofthe requisite interfacing circuitry
`
`which may benecessaryto facilitate CPU 4 control over the respective
`
`systems which may be utilized” (emphasis added). Prelim. Resp. 36
`
`‘
`
`(quoting Ex. 1001, 25:8—-11). Patent Owneradditionally relies on the
`Specification disclosing “[t]he interface devices utilized .
`.
`. may be wireless
`devices or modules which neednot be directly connected to the CPU [and] .
`
`.
`
`. hard-wired electrical connections may be unnecessary” (emphasis added).
`
`Prelim. Resp. 37 (quoting Ex. 1001, 15:36-41). Moreover, Patent Owner
`relies on the Specification describing “CPU 4... , and/or the respective
`interface devices .
`.
`. may also be programmableby the user operator”
`
`(emphasis added). Prelim. Resp. 37-38 (quoting 41:67—42:3).
`
`Each ofthe cited portions of the Specification relied upon by Patent
`
`Ownerdoesnotinclude a special definition or a disavowalthat requires the
`
`“interface device” to be separate and distinct from the “control device[s].”
`
`Moreover, Patent Owner acknowledges on pages 20 through 21 of the
`
`Preliminary Response that CPU 4, whichis described in the Specification,is
`
`the claimed “‘first control device” recited in claims 26 and 48 and the
`
`claimed “third control device” recited in claim 42. The cited portions of the
`
`Specification relied upon by Patent Ownerdo not preclude interface device
`
`12 from being housed within CPU 4. Petitioner similarly contends
`
`Frossard’s interface device housed within receiver-decodercircuits 4
`
`discloses the “interface device” and thefirst/third “control device,” as
`
`recited in the challenged claims. Pet. 23-24 (citing Ex. 1005, 8:9-13, Fig.
`
`2).
`
`14
`
`
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`IPR2015-01509
`Patent 6,549,130 Bl
`
`Accordingly, we have reviewed the proposed groundofanticipation
`by Frossard against claims 26, 29, 33, 42, 48, and 68, and weare persuaded,
`at this juncture of the proceeding, that Petitioner has established a reasonable
`
`likelihood of prevailing in its challenge to claims 26, 29, 33, 42, 48, and 68
`
`on this ground.
`
`C.
`
`Alleged Obviousness of Claims 30 and 43 in View ofFrossard and
`Pagliaroli
`.
`Pagliaroli (Ex. 1006)
`
`1.
`
`|
`
`Pagliaroli describes enabling or disabling remotely an automobile.
`
`Ex. 1006, Abs. When an automobile ownerrealizes their vehicle is stolen,
`the ownerdials a telephone numberto disablethe automobile.
`/d. Figure 1
`is reproduced below.
`
`RECENER
`
` PORTABLE
`
`Figure | illustrates a user connecting to receiver 14 when dialing from
`
`telephone 48.
`
`/d. at 4:53-5:1. In addition, Figure 1 shows telephone 48
`
`connects to receiver 14 via transmitter 46. Jd. Receiver 14 receives signal
`
`code 40 and forwards code 40 to control unit 16.
`
`/d. at 5:30-33. Whena
`
`disabling signal is sent, control unit 16 disables starter 20 and ignition
`
`system 22 stops the operation of the automobile and sendsa signal activating
`
`15
`
`
`
`IPR2015-01509
`Patent 6,549,130 B1.
`
`emergencylights 24 of the automobile. Jd. at 5:44—55. Licenseplate lights
`
`26 may changecolorsorflashto identify to police that the automobile is
`
`stolen. Id. at 5:55—58.
`
`2.
`
`The Parties’ Contentionsfor Claims 30 and 43
`
`Petitioner asserts that the subject matter of claims 30 and 43 would
`
`have been obvious in view of Frossard and Pagliaroli under 35 U.S.C.
`
`§ 103(a). Pet. 24-27. Petitioner provides a limitation-by-limitation analysis
`
`of where each limitation of claims 30 and 43 allegedly is taught in Frossard
`
`and Pagliaroli. Jd.
`
`Weare persuaded that the present record supports Petitioner’s
`contention that Pagliaroli teaches monitoring the condition of an automobile
`andif theft sensor 12 on the automobileis activated, transmitter 28 transmits
`
`signal 42 that can notify a person of the theft, which teaches the limitations
`
`of claims 30 and 43. Pet. 24—25 (citing Ex. 1006, 2:39-57, 4:22—52).
`Petitioner concludesthat one of ordinary skill in the art would have
`
`combined Frossard’s system for protecting motor vehicles using a shut down
`
`mechanism andPagliaroli’s similar vehicle theft detection and vehicle
`
`disabling system in order to add theft sensors to provide notifications when
`
`the vehicle is tampered with, broken into, or stolen. Pet. 25-27.
`
`Patent Ownerargues that Pagliaroli fails to remedy Frossard’s alleged
`
`deficiencies. Prelim. Resp. 43-44. On the present record, we disagree with .
`
`Patent Ownerfor the same reasonsdiscussed supra in Part II.B.2.
`
`Wehave reviewed the proposed ground challenging claims 30 and 43
`
`as obvious over Frossard and Pagliaroli, and we are persuaded,at this
`
`16
`
`
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`IPR2015-01509
`Patent 6,549,130 Bl
`
`juncture of the proceeding, that Petitioner has established a reasonable
`
`likelihood of prevailing in its challenge to claims 30 and 43 on this ground.
`
`D.
`
`Alleged Obviousness ofClaim 60 in View ofFrossard and Simms
`
`1.
`
`Simms (Ex. 1007)
`
`Simmsdescribes a security system utilizing Global Position Satellite
`(“GPS”). Ex. 1007, Abs. The security system comprises a mobile unit. Jd.
`‘The mobile unit communicates emergencydata includingposition
`
`coordinates to a central dispatch station that receives the emergency data and
`
`displays emergency information on a digitized mapat a position
`
`corresponding to the location of the mobile unit. Jd. Central dispatch station
`
`40 is a database that processes the code to display the position of the mobile
`
`entity on the digitized map.
`
`/d. at 5:49-51, 5:62—68, 12:37-41, 12:51-13:9.
`
`2.
`
`The Parties’ Contentions for Claim 60
`
`Petitioner asserts that the subject matter of claim 60 would have been
`obvious in view of Frossard and Simmsunder 35 U.S.C. § 103(a). Pet. 27—
`
`32. Petitioner provides a limitation-by-limitation analysis of where each
`
`limitation of claim 60 allegedly is taught in Frossard and Simms.
`
`/d.
`
`Weare persuaded that the present record supports Petitioner’s
`
`contention that Simms’s mobile unit 32 using GPS that communicates
`
`position coordinates to a central dispatch database station 40 that receives
`
`and displays the information on a digitized map at a position corresponding
`
`to the location of the mobile unit teaches or suggest the limitations of claim
`
`60. Pet. 27-32 (citing Ex. 1007) (pinpointcitations omitted).
`
`17
`
`
`
`IPR2015-01509
`Patent 6,549,130 B1
`
`Petitioner concludesthat one of ordinary skill in the art would have
`
`combined Frossard’s system for protecting motor vehicles using a shut down
`
`mechanism and Simms’s mobile unit using GPS communicating position
`
`coordinates to a database station that displays the position on a digitized map
`
`in order to provide more accurate location information on a digital map. Pet.
`
`30-32.
`
`Patent Ownerargues that Simmsfails to remedy Frossard’s alleged
`
`deficiencies. Prelim. Resp. 44. On the present record, we disagree with
`
`Patent Ownerfor the same reasonsdiscussed supra in Part II.B.2.
`
`Wehavereviewed the proposed ground challenging claim 60 as
`
`obvious over Frossard and Simms, and weare persuaded,at this juncture of
`
`the proceeding, that Petitioner has established a reasonable likelihood of
`
`prevailing in its challenge to claim 60 onthis ground.
`
`E.
`
`Alleged Anticipation of Claims 26, 29, 30, 42, 43, and 48 by
`Pagliaroli
`Petitioner asserts that the subject matter of claims 26, 29, 30, 42, 43,
`and 48 is anticipated by Pagliaroli under 35 U.S.C. § 102(e). Pet. 32-50.
`
`Petitioner provides a limitation-by-limitation analysis of where each
`
`limitation of claims 26, 29, 30, 42, 43, and 48 allegedly is disclosed in
`
`Pagliaroli. Jd.
`
`The present record supports the contention that Pagliaroli discloses
`
`enabling or disabling remotely an automobile, which discloses the
`
`limitations in claims 26, 42, and 48. Pet. 32-50 (citing Ex. 1006) (pinpoint
`
`citations omitted). The present record also supports the contention that
`
`Pagliaroli discloses a user dialing telephone 48 to connect to receiver 14 via
`
`
`
`
`
`IPR2015-01509
`Patent 6,549,130 Bl
`
`transmitter 46 to disable the automobile, which discloses the limitations in
`
`claims 26, 42, and 48. Pet. 32-50 (citing Ex. 1006, 5:7-12). In addition, the
`
`present record supports the contention that Pagliaroli discloses that control
`
`unit 16 receives signal code 40 from receiver 14 to disable starter 20,
`
`ignition system 22, the operation of the automobile, and sendsa signal
`
`activating emergencylights 24 or license plate lights 26 to identify to police
`
`that the automobile is stolen, which discloses the limitations in claims 26,
`
`42, and 48. Pet. 32-50 (citing Ex. 1005) (pinpoint citations omitted).
`
`Petitioner relies on Pagliaroli’s disabling starter 20, ignition system
`
`22, the operation of the automobile, and sending a signal activating
`
`emergency lights 24 or license plate lights 26 to identify to police that the
`
`automobile is stolen to disclose the limitations of claim 29. Pet. 41-42
`
`(citing Ex. 1006, 2:40-42, 4:44-45, 4:66-5:7, 5:44—58).
`
`Petitioner relies on Pagliaroli’s monitoring the condition of an
`
`automobile and if theft sensor 12 on the automobile is activated, transmitter
`
`28 transmits signal 42 that can notify a person of the theft to disclose the
`
`limitations of claims 30 and 43. Pet. 24-25, 49-50 (citing Ex. 1006, 3:27-
`
`32, 3:40-52, 4:22—52, and 5:44-57).
`
`Patent Owner, however, argues that Pagliaroli’s transmitter 46 cannot
`
`serve as and cannot function as a “second control device” because the
`
`Specification of the ’130 patent makesit clear and unequivocalthat
`
`Pagliaroli’s transmitter 46 is actually part of a communication system or
`
`network. Prelim. Resp. 21-33, 44-46.
`
`As discussed supra in Part II.A., Patent Owner, however,
`
`acknowledged that “control device” should be construed as “a device or a
`
`computer, or that part of a device or a computer, which performs an
`
`19
`
`
`
`IPR2015-01509
`Patent 6,549,130 Bl
`
`operation, an action, or a function, or which performs a numberof
`
`operations, actions, or functions.” Petitioner similarly contends Pagliaroli’s
`
`user using telephone 48 generates and transmits the signal code 40 by
`
`dialing a phone numbercausing transmitter 46 to transmit signal code 40;
`
`Pagliaroli’s transmitter 46 transmitting signal code 40 is “a device...,
`
`which performs an operation, an action, or a function,” which discloses
`
`Patent Owner’s definition of “second control device.” Pet. 32—50 (citing Ex.
`
`1006, 4:53—5:7, Fig. 1).
`
`Accordingly, we have reviewedthe proposed ground ofanticipation
`
`by Pagliaroli against claims 26, 29, 30, 42, 43, and 48, and weare
`
`persuaded,at this juncture of the proceeding, that Petitioner has established a
`
`reasonable likelihood of prevailing in its challenge to claims 26, 29, 30, 42,
`
`43, and 48 on this ground.
`
`F.
`
`Alleged Obviousness of Claims 33 and 68 in View ofPagliaroli and
`Frossard
`
`Petitioner asserts that the subject matter of claims 33 and 68 would
`
`have been obvious in view of Pagliaroli and Frossard under 35 U.S.C.
`
`§ 103(a). Pet. 51-53, 56-58. Petitioner provides a limitation-by-limitation
`analysis of where each limitation of claims 33 and 68 allegedly is taught in
`
`Pagliaroli and Frossard. Jd.
`
`The present record supports Petitioner’s contention that Pagliaroli
`teaches transmitting signal code 40 to disable an automobile and Frossard
`teaches a userutilizing a telephone or Minitel to communicate an access
`
`code to server 1, in which server 1 transmits an order message to shut down
`
`motor vehicle 3; Petitioner contends these cited portions teach the
`
`20
`
`
`
`IPR2015-01509
`Patent 6,549,130 Bl
`
`limitations of claim 33. Pet. 51-53 (citing Exs. 1005-1006) (pinpoint
`
`citations omitted).
`
`Weare persuadedthat the present record supports Petitioner’s
`
`contention that Frossard teachesinterface circuit between the receiver-
`
`decodercircuits 4 and motor vehicle components, devices, and/or
`
`equipment, which teachesthe limitations of claim 68. Pet. 56-58 (citing Ex.
`
`1005, 8:4—13).
`
`Petitioner concludesthat one of ordinary skill in the art would have
`
`combined Pagliaroli’s vehicle theft detection and vehicle disabling system
`and Frossard’s similar system for protecting motor vehicles using a shut
`down mechanismin order to enable automatic activation when the vehicle is
`
`stolen. Pet. 51-53, 57-58.
`
`Patent Ownerarguesthat Frossard fails to remedy Pagliaroli’s alleged
`
`deficiencies. Prelim. Resp. 46. On the present record, we disagree with
`
`Patent Ownerfor the samereasonsdiscussed supra in Part I.E.
`
`Wehavereviewed the proposed ground challenging claims 33 and 68
`
`as obvious over Pagliaroli and Frossard, and we are persuaded,at this
`juncture of the proceeding, that Petitioner has established a reasonable
`
`likelihood of prevailing in its challenge to claims 33 and 68 on this ground.
`
`G.
`
`Alleged Obviousness of Claim 60 in View ofPagliaroli and Simms
`
`Petitioner asserts that the subject matter of claim 60 would have been
`
`obvious in view of Pagliaroli and Simms under 35 U.S.C. § 103(a). Pet. 53-
`
`55. Petitioner provides a limitation-by-limitation analysis of where each
`
`limitation of claim 60 allegedly is taught in Pagliaroli and Simms. /d.
`
`21
`
`
`
`IPR2015-01509
`Patent 6,549,130 B1
`
`Weare persuadedthat the present record supports Petitioner’s
`contention that Simms’s mobile unit 32 using GPS that communicates
`position coordinates to central dispatch databasestation 40 that receives and
`displays the information on a digitized map at a position correspo
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