Trials@uspto.gov
`571-272-7822
`
`Paper 25
`Date: February 15, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`COXCOM,LLC,
`Petitioner,
`
`V.
`
`JOAO CONTROL & MONITORING SYSTEMS, LLC,
`Patent Owner.
`
`Case IPR2015-01760
`Patent 6,549,130 Bl
`
`Before STACEY G. WHITE, JASON J. CHUNG,and
`BETH Z. SHAW,Administrative Patent Judges.
`
`CHUNG,Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F-R. § 42.73
`
`I.
`
`INTRODUCTION
`
`Petitioner, Coxcom, LLC,filed a Petition to institute an inter partes
`
`review ofclaims 1, 8, 10, 12, 15, 17, 98, 119, 124, 145, and 149 of U.S.
`
`Patent No. 6,549,130 B1 (“the ’130 patent”). Paper 1 (“Pet.”). Patent
`
`
`571-272-7822
`
`Paper 25
`Date: February 15, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`COXCOM,LLC,
`Petitioner,
`
`V.
`
`JOAO CONTROL & MONITORING SYSTEMS, LLC,
`Patent Owner.
`
`Case IPR2015-01760
`Patent 6,549,130 Bl
`
`Before STACEY G. WHITE, JASON J. CHUNG,and
`BETH Z. SHAW,Administrative Patent Judges.
`
`CHUNG,Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F-R. § 42.73
`
`I.
`
`INTRODUCTION
`
`Petitioner, Coxcom, LLC,filed a Petition to institute an inter partes
`
`review ofclaims 1, 8, 10, 12, 15, 17, 98, 119, 124, 145, and 149 of U.S.
`
`Patent No. 6,549,130 B1 (“the ’130 patent”). Paper 1 (“Pet.”). Patent
`
`
`
`IPR2015-01760
`Patent 6,549,130 Bl
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`Owner, Joao Control & Monitoring Systems, LLC,filed a Preliminary
`
`Response pursuant to 35 U.S.C. § 313. Paper 7 (“Prelim. Resp.”).
`
`Upon consideration of the Petition and the Preliminary Response, on
`
`February 17, 2016, we instituted inter partes review of claims1, 8, 10, 12,
`
`17, 98, 119, 124, 145, and 149 (“instituted claims”), pursuant to 35 U.S.C.
`
`§ 314. Paper 8 (“Dec.”).
`
`Subsequentto institution, Patent Ownerfiled a Patent Owner
`
`Response. Paper 14 (“PO Resp.”). Petitioner filed a Reply to Patent
`
`Owner’s Response. Paper 16 (“Reply”). An oral hearing was held on
`
`November17, 2016 and a transcript of the oral hearing is available in the
`
`record. Paper 24 (“Tr.”).
`
`Weissue this Final Written Decision pursuant to 35 U.S.C. § 318(a)
`
`and 37 C.F.R. § 42.73. For the reasons discussed herein, Petitioner has
`
`shown bya preponderanceofthe evidence that claims 1, 8, 10, 12, 17, 98,
`
`119, 124, 145, and 149 of the ’130 patent are unpatentable. See 35 U.S.C.
`
`§ 316(e).
`
`A.
`
`Related Matters
`
`Petitioner and Patent Ownerindicate that the ’130 patent or related
`
`patents may be implicated in approximately seventy lawsuits pending in
`
`courts around the country. Pet. 2—3; Paper 5, 2—7.
`
`B.
`
`The Instituted Grounds
`
`Weinstituted the following grounds of unpatentability:
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`
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`IPR2015-01760
`Patent 6,549,130 Bl
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`
`
`
`
`(Ex. 1009)3 § 103(a)|10,119, and 124
`
`
`
`
`Koether (Ex. 1008)
`
`1
`
`2
`
`§ 103(a)
`
`9
`
`1,
`8, 12, 17, 98, 145
`Os
`’
`>
`’
`and 149
`
`’
`
`
`
`Koether and Crater
`
`C.
`
`The ’130 Patent
`
`The ’130 patentis directed to controlling a premises. Ex. 1001, Abs.
`
`The ’130 patent describes three control devices: a first control deviceis
`
`located at a premises, a second control device is located remote ftom the
`
`premises, andathird control device is located remote from the premises and
`
`remote from the second control device. Jd. Thefirst contro] device
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`generatesa first signal in response to a second signal from the second
`
`control device. Jd. The first control device can activate, de-activate, disable
`
`or re-enable, one or more of“a respective system, component, device,
`
`equipment, equipment system, and/or appliance, of .
`
`.
`
`. premises with the
`
`first signal.” Jd. The second control device generates the secondsignalin
`
`responseto a third signal fromthe third control device. Jd.
`
`In some
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`instances, the first control device performsthe functions of the third control
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`device, and vice-versa. /d. at 100:1-27.
`
`'U.S. Patent No. 5,875,430, filed May 2, 1996.
`? The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
`revised 35 U.S.C. § 103 and the relevant sections took effect on March 16,
`2013. Because the application from which the ’130 patent issued wasfiled
`before that date, our citations to Title 35 are to its pre-AJA version.
`3 U.S. Patent No. 5,805,442,filed May 30, 1996.
`
`3
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`D.
`
`The Instituted Claims
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`Weinstituted inter partes review of claims 1, 8, 10, 12, 17, 98, 119,
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`124, 145, and 149. Of theinstituted claims, claims 1, 98, and 145 are
`
`independent. Claim 1 is illustrative and reproduced below:
`
`1. A control apparatus, comprising:
`
`a first control device, wherein the first control device at least
`one of generates and transmitsa first signal for at least one of
`activating, de-activating, disabling, and re-enabling, at least one
`of a premises system, a premises device, a premises equipment,
`a premises equipment system, and a premises appliance, of a
`premises, wherein the first control device is located at the
`premises,
`whereinthefirst control device is responsive to a secondsignal,
`wherein the secondsignalis at least one of generated by and
`transmitted from a second control device, wherein the second
`contro! device is located at a location which is remote from the
`premises, wherein the secondsignalis transmitted from the
`second control device to the first control device, and further
`wherein the secondsignal is automatically received by the first
`control device,
`
`wherein the second control device is responsive to a third
`signal, wherein the third signal is 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
`premises 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 signal
`is automatically received by the second control device.
`
`II.
`
`ANALYSIS
`
`A.
`
`Real Party in Interest
`
`“To challenge that identification of real party in interest a patent
`
`owner must provide sufficient rebuttal evidence to bring reasonably into
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`
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`question the accuracy ofPetitioner’s identification of RPIs.” See Office
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`Patent Trial Practice Guide, 77 Fed. Reg. 48,680, 48,695 (Aug. 14, 2012).
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`Whethera non-party is an RPI is a “highly fact-dependent question”that is
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`addressed on a “case-by-case” basis. See 77 Fed. Reg. 48,759. “A common
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`focus of the inquiry is... whether the non-party exercised or could have
`
`exercised control over a party’s participation in a proceeding.” Id.
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`The concept of control meansthat “the non-party ‘had the opportunity
`
`to present proofs and argument’.. . or ‘to direct or control the content’ of
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`the filing.” JP Morgan Chase & Co., et. al. v. Maxim Integrated Prods.,
`
`Inc., Case CBM2014-00179, slip op. at 10 (PTAB Feb. 20, 2015) (Paper 11)
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`(“JP Morgan”). “‘The evidence as a whole must show that the non-party
`
`possessed effective control over a party’s conduct of the [proceeding] as
`
`measured from a practical, as opposed to a purely theoretical standpoint.’”
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`Id. (quoting Gonzalez v. Banco Cent Corp., 27 F.3d 751, 759 (Ast Cir.
`
`1994)).
`
`The Petition names CoxCom, LLC (““CoxCom”)as the real party in
`
`interest. Pet. 1. Patent Ownerhasnotarticulated sufficient rebuttal
`
`evidenceto bring reasonably into question the accuracy of Petitioner’s
`
`identification of CoxCom asthe real party in interest. Patent Owner argues
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`CoxCom wasone of the named co-petitioners in related IPR2015-01486
`
`involving the ’130 patent. PO Resp. 34. Furthermore, Patent Owner argues
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`two of Petitioner CoxCom’s co-petitioners in IPR2015-01486, Terremark
`
`North America LLC (“Terremark”) and Time Warner CableInc. (“Time
`
`Warner”) are time barred and should be namedas realparties in interest. Jd.
`
`at 35-38. Moreover, Patent Owner argues Terremark, Time Warner, and
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`CoxCom cooperated in planning, preparation, and review ofthe present
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`Petition becausc: the present Petition is based on the same *130 patent as
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`IPR2015-01486; Petitioner’s expert in the present proceeding, Mr. Richard
`
`Bennett, is the same expert as in IPR2015-01486; and Mr. Bennett
`
`acknowledged that he incorporated some comments from attorneys
`
`representing Terremark and Time Warnerinto the final version of the
`
`declaration submitted in connection with the present Petition. Jd. at 38-43.
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`In reply, Petitioner argues neither Terremark nor Time Warner were
`
`involved in any aspect of preparing the present Petition. Reply 18.
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`Petitioner also argues Terremark and Time Warnerdid not have the
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`opportunity to direct, contribute, or control the content of the present
`
`Petition. Jd. Moreover, Petitioner argues Mr. Bennett testified under oath
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`that he was confused by Patent Owner’s questioning and that he misspoke
`
`when he acknowledgedthat he incorporated comments from Terremark’s
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`and Time Warner’s counselinto the final version of the declaration in
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`connection with the present Petition. Jd. at 20-21.
`
`Weagree with Petitioner. The Koether and Crater references relied
`
`upon by Petitioner in the present Petition were not relied upon in 1PR2015-
`
`01486 so the strategy in preparing the present Petition was necessarily
`ditterent than the strategy in preparing IPR2015-01486. In addition, simply
`
`because Petitioner filed a petition on the samepatent, the ’130 patent, as the
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`earlier filed IPR2015-01486, does not create an implication that CoxCom
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`cooperated with or worked with non-parties Terremark or Time Warner. JP
`
`Morgan,slip op. at 13 (“[A] Petitioner and a non-party’s status as co-
`
`defendants and co-membersof a joint defense groupis not alone sufficient
`
`to render the non-party a real party in interest.”).
`
`Weare not persuadedthat Petitioner’s use of the same expert in both
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`
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`IPR2015-01760
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`the present Petition and IPR2015-01486 creates an implication that
`
`Terremark and Time Warnerinfluenced Mr. Bennett’s opinions of the
`present Petition. Nothing prevents Petitioner from using the same expert in
`both the present Petition and IPR2015-01486 to opine on differentpriorart
`references(i.e., Koether and Crater) that were not at issue in IPR2015-
`01486.
`
`Wealso are not persuaded that Mr. Bennett’s acknowledgementthat
`
`he incorporated some comments from attorneys representing Terremark and
`
`Time Warnerinto the final version of the declaration submitted in
`
`_ connection with the present Petition demonstrates that he worked with
`attorneys representing Terremark or Time Warnerto prepare his declaration
`
`for the present Petition. Mr. Bennett testified that he was confused by Patent
`
`Owner’s questioning and “may have misspoken” when he acknowledged
`
`that he incorporated some comments from attorneys representing Terremark
`
`and Time Warnerinto the final version of the declaration submitted in
`
`connection with the present Petition. Ex. 1013, 47:19-48:3. Furthermore,
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`Mr. Bennett’s participation on the present IPR is independentofhis
`
`involvement in IPR2015-01486. Jd. at 46:13—21, 47:9-13, 76:20-25. Mr.
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`Bennett testitied that he did not work, interact, or discuss the present Petition
`
`with attorneys representing Terremark or Time Warner. Id. at 46:6-47:8,
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`47:14 49:2.
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`Thereis insufficient evidence of record that Terremark or Time
`
`Warnercontrols or even had an opportunity to control CoxCom’s decision to
`
`file or maintain this inter partes review. Accordingly, we are not persuaded
`
`that Petitioner has failed to name Terremark or Time Warneras real parties
`
`in interest.
`
`
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`IPR2015-01760
`Patent 6,549,130 B1
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`B.
`
`Level of Ordinary Skill in the Art
`
`In determining the level of ordinary skill in the art, various factors
`
`may be considered, including the “type of problems encounteredin theart;
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`prior art solutions to those problems; rapidity with which innovationsare
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`made; sophistication of the technology; and educationallevel of active
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`workersin the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`
`(citation omitted). Petitioner asserts that a person of ordinary skill in the art
`
`in the field of the ’130 patent would have had a bachelor’s degree in
`
`engineering or equivalent coursework andat least two years of experience in
`
`networkedsystems. Pet. 12 (citing Ex. 1002 4 17).
`
`Patent Owner does not address Petitioner’s statements regarding the
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`level of ordinary skill in the art, but asserts that we should accordlittle or no
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`weight to the testimony of Mr. Bennett because Mr. Bennett fails to qualify
`
`as a person of ordinary skill in the art under his own definition. PO Resp.
`
`25-34.
`
`The ’130 patent is directed to controlling a vehicle or premises.
`
`Ex. 1001, Abst. It describes the relevant problems encounteredin the art as
`
`those involved in the control, monitoring, or security of vehicles or
`
`premises, in a network environment. Jd. at 1:20-53; 3:8-15. The °130
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`patentis not directed to specific issues associated with electrical circuits or
`
`electrical connections between devices. ‘I'he Specification identifies no
`
`specific problem that stems from the apparatus being a particular type of
`
`electrical device. From this evidence, we concludethat a person of ordinary
`
`skill in the art with respect to the °130 patent would be skilled in thefield of
`
`networked systems.
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`For the foregoing reasons, we are not persuaded that the level of
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`ordinary skill in the art requires specific coursework or education in the form
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`of a degree in electrical engineering. Instead, we are persuaded by
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`Petitioner’s statement of the level of ordinary skill in the art, and ourfinding
`
`of the level of ordinary skill is similar to that proposed by Petitioner, but
`with a slight modification, i.e., that a basic level of experience is required,at
`the level of at least two years of experience in networked systems.
`
`Wefind that the level of ordinary skill in the art is that of one having
`
`at least two years of working experience with networked systems. A more
`
`advanced degree would be paired with a shorter period of working
`
`experience.
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`C.
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`Expert Testimony
`
`Patent Ownerdid not file specifically a motion to exclude Mr.
`
`Bennett’s testimony as inadmissible, but requests, in its Response, that we
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`accordlittle or no weight to the testimony of Mr. Bennett because Mr.
`
`Bennett fails to qualify as a person of ordinary skill in the art under his own
`
`definition. PO Resp. 25-34.
`
`Patent Ownerhasnotarticulated a persuasive reason for giving Mr.
`Bennett’s testimonylittle or no weight. Moreover, as discussed above, we
`are not persuadedthat a person ofordinary skill in the art of the *130 patent
`would be required to have a specific degree or courseworkin electrical
`
`engineering. Weare, thus, not persuaded that Mr. Bennett’s answers, during
`
`deposition, to questions about his background are wrongorthat the entirety
`
`of his testimony should be givenlittle or no weight based onthis testimony.
`
`Wefind Mr. Bennett to be highly qualified in the area of networked
`
`
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`systems. In his declaration, Mr. Bennctt stated
`
`I worked as a computer programmer, network engineer, and
`system architect
`from 1977 until 2009 with a number of
`computer networking firms, including those that producedtele-
`video
`systems
`such
`as Hewlett-Packard,
`Sharp Labs,
`Compression Labs, Sony Electronics Laboratory, Starlight
`Networks, Fourth Network, 3Com, Intel, and Cisco.
`In the
`course of my professional career, I developed network protocols
`and applications, video servers,
`television remote control
`systems, ad insertion equipment
`for TV broadcasters, and
`Quality of Service mechanisms for networks that enabled high-
`quality video streaming and remote control of video streaming.
`
`Ex. 1002 1 7. Moreover, Mr. Bennett states “[a]t the time of the invention in
`
`question, I was a software developer working on a video-on-demandserver
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`at Hewlett-Packard.” Id. ¥ 12.
`
`Weare persuaded that Mr. Bennett’s education and experienceis
`
`relevant to the issues discussed in the ’130 patent. Moreover, given the
`
`subject matter of the 130 patent and Mr. Bennett’s experience in software
`
`development and networked systems, we do notfind his admitted lack ofa
`
`degree in electrical cnginccring (see Ex. 2006, 34) as basis to accord his
`
`testimonylittle or no weight. Onthis record, westill credit the testimony of
`
`Mr. Bennett. Mr. Bennett’s lack of an electrical engineering degree does not
`
`establish that his specialized knowledge in the area of networked systems
`
`will not assist the Board in understanding the evidence. See Fed. R. Evid.
`
`702.
`
`Under 37 C.F.R. § 42.1(d), we apply the preponderance ofthe
`
`evidence standard in determining whether Petitioner has established
`
`unpatentability. In doing so,it is within our discretion to determine the
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`appropriate weight to be accorded the evidence presented, including expert
`
`10
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`opinion, based on the disclosure of the underlying facts or data upon which
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`that opinion is based. Thus, we decline to make a determination about Mr.
`
`Bennett’s opinion, as a whole. Rather, in our analysis we will consider
`relevant portions of Mr. Bennett’s testimony and determine the appropriate
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`weight to accord that particular testimony.
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`D.
`
`Claim Construction
`
`In the Decisionto Institute, we noted that the ’°130 patent was expired.
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`Dec. 4. The parties have acknowledged the expiration of the ’130 patent.
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`PO Resp. 11; Reply 2. For claims of an expired patent, the Board’s claim
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`interpretation is similar to that of a district court. See In re Rambus, Inc.,
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`694 F.3d 42, 46 (Fed. Cir. 2012). “In determining the meaning of the
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`disputed claim limitation, we look principally to the intrinsic evidence of
`
`record, examining the claim languageitself, the written description, and the
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`prosecutionhistory, if in evidence.” DePuy Spine, Inc. v. Medtronic
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`Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing
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`Phillips v. AWH Corp., 415 F. 3d 1303, 1312—17 (Fed. Cir. 2005)).
`
`Weare mindfulthat “limitations are not to be read into the claims
`
`from the specification.” Jn re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
`
`1993). Nevertheless, claims are not interpreted in a vacuum butare part of
`
`and read in light of the specification. United States v. Adams, 383 U.S. 39,
`49 (1966) (“[I]t is fundamental that claims are to be construedin thelight of
`
`the specifications and both are to be read with a view to ascertaining the
`
`invention.”). In that regard, the terms are given their ordinary and
`
`customary meaning, as would be understood by oneofordinary skill in the
`
`art in the context of the Specification. In re Translogic Tech., Inc., 504 F.3d
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`11
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`1249, 1257 (Fed. Cir. 2007). The construction that stays true to the claim
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`language and mostnaturally aligns with the inventor’s descriptionis likely
`
`the correct interpretation. Renishaw PLC v. Marposs Societa’ per Azioni,
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`158 F.3d 1243, 1250 (Fed. Cir. 1998).
`
`For purposes of the Decision to Institute, we construed the terms
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`“remote,” “premises,” and “located at.” Dec. 7. We reviewed and adopted
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`Patent Owner’s explicit definitions for these terms, which Patent Owner
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`provided in the prosecution of the application that issued as the ’130 patent.
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`Dec. 7 (citing Ex. 2002). Based on ourreview ofthe full record, we discern
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`no reason to modify or further discuss in this Final Written Decision our
`
`constructions for these claim terms. For convenience, these claim
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`constructions are reproduced in the table below.
`
`
`
`A building or a structure and the
`Ex. 2002,4;
`Premises
`
`
`
`groundsor parcel of land
`Ex. 2003, 8-9
`
`
`
`associated with the building or the
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`structure, or a building or structure
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`or a portion, room,or office, of or
`
`in the building or structure, or a
`
`home, mobile home, mobile
`
`building, mobile structure,
`
`residence, residential building,
`
`office, commercial building,
`
`commercial office, structure,
`
`equipment, facility, machine,rig,
`
`assembly line, or edifice.
`
`
`
`
`Separate and apart from,or
`Ex. 2003, 3-4;
`
`Remote
`external from,or at a distance
`Ex. 2002, 10-11
`
`
`from or distant from, or not
`
`
`
`locatedin.
`
`
`
`Situated at, situated in, or situated
`on.
`
`
`Ex. 2003, 8;
`Ex. 2002, 5
`
`Located at
`
`12
`
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`In its Response, Patent Owner proposes an additional construction for
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`“control device.” PO Resp. 12-13. We determinethat it is not necessary to
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`construe expressly this term to resolve the controversy here. To the extentit
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`is necessary for us to construe any additional claim termsin this decision,
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`wedo so below in the context of analyzing whetherthe prior art renders the
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`claims unpatentable.
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`E.
`
`The Koether and Crater References Are Prior Art
`
`Petitioner argues that claims 1, 8, 12, 17, 98, 145, and 149 would have
`
`been obvious over Koether. Pet. 14-39. Petitioner argues that claims 10,
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`119, and 124 would have been obvious over the combination of Koether and
`
`Crater. Jd. at 39-47. Koether wasfiled on May 2, 1996. Pet. 14; Ex. 1008
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`at [22]. Crater was filed on May 30, 1996. Pet. 39; Ex. 1009 at [22].
`
`Petitioner argues that the challenged claimsare entitled to a priority date of
`
`no earlier than July 18, 1996 because the only support for a processing
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`device located at a premises was addedto the specification as part of a
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`continuation-in-part (“CIP”) application (U.S. Patent Application No.
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`08/683,828) filed on July 18, 1996 (“July 1996 application”). Pet. 12-13.
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`In the Institution Decision, we determined that Koether and Crater are
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`102(e) prior art to the challenged claims of the 7130 patent. Dec. 8, 14. In
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`response, Patent Ownerarguesthe instituted claims of the ’130 patent are
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`entitled to a priority date of March 27, 1996 (“March 1996 application”).
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`PO Resp. 15-25; Ex. 1001 at [63].
`
`Entitlement to the March 27, 1996 filing date would allow Patent
`
`Ownerto antedate Koether and Crater, thereby removing them as references
`
`13
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`against the claims. To determine whether Patent Ownerisentitled to the
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`March27, 1996 priority date, we must determineif the March 1996
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`application disclosure meets the written description requirement for the
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`instituted claims.
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`‘““To satisfy the written description requirement the
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`disclosure of the prior application must ‘convey with reasonable clarity to
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`those skilled in the art that, as of the filing date sought, [the inventor] was in
`
`possession of the invention.’” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,
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`1563-1564 (Fed. Cir. 1991).
`
`Weagree with Petitioner that in this case, there is no reason to
`presumethat claims in the CIP July 1996 application are entitled‘ to the
`
`effective filing date of the earlier filed March 1996 application. See
`
`PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1305 (Fed. Cir.
`
`2008). Thus, we review Patent Owner’s argumentsas to whythelimitations
`
`of the instituted claims were conveyed with reasonable clarity to those
`
`skilled in the art to show that the inventor was in possession of the invention
`
`as of March 27, 1996.
`
`Upon review ofthe full record, we conclude that the March 1996
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`application does not provide a written description of “premises”as set forth
`
`in the instituted claims for the following reasons.
`
`AsPetitioner points out, the March 1996 application never mentions
`
`the word “premises.” Pct. 13; Ex. 1004. Pctitioner asserts that the only
`
`support for a processing device located at a “premises” was addedto the
`
`specification as part of a continuation-in-part application filed on July 18,
`
`4 Patent Ownerdoes not dispute that it must come forward with evidence to
`prove entitlement to claim priority to the earlier filing date of the March
`1996 application. See PO Resp. 13-24.
`
`14
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`Patent 6,549,130 Bl
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`1996.
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`Id. Petitioner argues that in contrast to the March 1996 application,
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`the word premisesis recited hundreds of times in the July 1996 application,
`
`whichalso addedfigures 15 and 16 corresponding to the added disclosure.
`
`Reply 10.
`
`In its Response, Patent Owner does not dispute that the March 1996
`
`application fails to use the word “premises,” but argues that the March 1996
`
`application includes various elements that show that Patent Ownerclaimed a
`
`premises. PO Resp. 17-18. In particular, Patent Ownerpoints to Figure
`
`11B, which Patent Ownerargues showsa server computer 952 located at a
`premises identified as a processing site, and a computer 970 at a premises
`identified as a central security office. Id.
`
`Patent Ownerarguesthat a disclosure in Figure 11B in the March
`
`1996 application of a server computer at a processing site and a computerat
`
`a central security office shows possession of the subject matter of claim 1.
`
`Id. Yet, we must look to the claim scope and not merely whether the
`
`conceptof a site or office was disclosed in isolation in the March 1996
`
`application.
`
`It is important review the language ofclaim 1 ofthe ’130
`
`patent, which does not merely recite a disclosure “premises”in isolation. In
`other words, to determine if Patent Ownerhad possession ofthe claimed
`
`subject matter, we must determine more than just whether the mere concept
`
`of a premises is disclosed. Wc look to the scope of claim 1, which is
`
`reproduced below with certain key limitations emphasized:
`
`1. A control apparatus, comprising:
`
`a first control device, wherein the first control device at least
`one of generates and transmitsafirst signal for at least one of
`activating, de-activating, disabling, and re-enabling, at least one
`ofa premises system, a premises device, a premises equipment,
`
`15
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`TPR2015-01760
`Patent 6,549,130 Bl
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`a premises equipment system, and a premises appliance, ofa
`premises, wherein thefirst control device is located at the
`premises,
`wherein the first control device is responsive to a secondsignal,
`wherein the secondsignalis at 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
`premises, wherein the second signal is transmitted from the
`second control deviceto the first control device, and further
`wherein the secondsignal is automatically received by thefirst
`control device,
`
`wherein the second control device is responsive to a third
`signal, wherein the third signal is 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
`premises 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 signal
`is automatically received by the second contro] device.
`
`Ex. 1001, 74:59-75:19 (emphases added).
`
`Moreover, Patent Ownerhas urged a definition of the word
`
`“premises,” which we have adopted, to mean: “a building or a structure and
`
`the groundsor parcel of land associated with the building or the structure, or
`
`a building or structure or a portion, room,or office, of or in the building or
`structure, or a home, mobile home, mobile building, mobile structure,
`
`residence, residential building, office, commercial building, commercial
`
`office, structure, equipment, facility, machine, rig, assembly line, or edifice.”
`
`PO Resp.11.
`
`This broad construction of premises is supported only by material
`
`addedin the July 1996 application. In fact, Patent Ownercited only to
`| languagefirst introduced in the July 1996 application to support this broad
`
`16
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`IPR2015-01760
`Patent 6,549,130 Bl
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`construction. See Paper 7 at 18; Ex. 2002 at 4, Ex. 2003 at 8-9, Ex. 1018 at
`
`7-8, Ex. 1019 at 3. Moreover, during oral hearing, Patent Owner
`
`acknowledged the “assembly line” disclosure was added to the July 1996
`
`application. Tr. 27:1—28:17.
`
`Patent Ownerhas not explained adequately how the server and
`
`computer in Figure 11B show possession of the premisesrecited in claim 1.
`
`As Patent Ownerappears to acknowledge, Figure 11B relates to a vehicle
`
`control system and not a premises control system. PO Resp. 19. Thus, we
`
`are not persuaded that Figure 11B showspossession of, for example, “at
`
`least one ofa premises system, a premises device, a premises equipment, a
`
`premises equipment system, and a premises appliance, ofa premises,
`
`wherein thefirst control device is located at the premises,”as recited in
`
`claim 1 (emphasis added).
`
`Additionally, the mere disclosure of a security office in the
`
`specification does not disclose the entire genus of “premises,” which by
`
`Patent Owner’s own definition encompasses many typesofbuildings,
`
`structures, and equipment, including an “assembly line.”°? Thus, even if we
`
`agreed with Patent Ownerthat there was somedisclosure of a particular
`
`species of the genus of “premises” in the March 1996 application, this alone
`
`would not be sufficient to entitle the later claimed genus of “premises”to the
`
`filing date of the March 1996 application.
`
`While Patent Ownerappearsto arguethat it does not need to show
`
`possessionof its complete definition of “premises” to be entitled to the
`
`5 Patent Owner’s counsel, whois also listed as the inventor of the ’130
`patent, agreed at oral argument that the assembly line was only addedin the
`July 1996 application. Tr. 28:10-11.
`
`17
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`
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`IPR2015-01760
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`March 1996filing date,° we disagree. This conclusion would be untenable
`
`because it would allow Patent Ownerto pick and choose one claim scope for
`
`purposes of showing written description, and choose another claim scope for
`
`purposesofinvalidity. Cf, e.g., PowerOasis Inc., 522 F.3d at 1310
`
`(“PowerOasis’s argument boils down to a claim that PowerOasisis entitled
`
`to a broad claim construction for purposes of infringementand a different
`
`narrowerclaim construction for purposesofvalidity.”’)
`
`Patent Owner arguesthat Petitioner’s expert agreed that one of
`
`ordinary skill in the art would have understood how to take a vehicle control
`
`system and modify it to provide premises control. PO Resp. 21-24. Thisis
`
`still not enoughto entitle the instituted claims to a March 1996priority date.
`
`“T]he written description is ‘not a question of whether one skilled in the art
`
`might be able to construct the patentee’s device from the teachings of the
`
`disclosure. ... Rather, it is a question whether the application necessarily
`
`discloses that particular device.’” PowerOasis, Inc., 522 F.3d at 1306
`
`(quoting Martin v. Mayer, 823 F.2d 200, 505 (Fed. Cir. 1987)); see also id.
`
`at 1310 (““Obviousness simply is not enough; the subject matter must be
`
`disclosed to establish possession.”’)
`For the foregoing reasons, upon review ofthe entire record, we
`
`determine that the instituted claims are not entitled to the priority date of the
`March 1996 application becausethe written description ofthe March 1996
`
`6 Tr. 31:23-32:4 (“MR. JOAO: Well, I don't believe we need to have the
`disclosure of the complete definition, because the definition is in the
`disjunctive based on the different embodiments that are described in the
`various patent applications, but the term premises, as used in the disjunctive
`here, as defined in the disjunctive, a premises is defined as an office.”).
`
`18
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`application does not support the instituted claims. Thus, we concludethat
`
`Koether and Crater are 102(e)priorart to the instituted claims of the ’130
`
`patent.
`
`F.
`
`Alleged Obviousness of Claims 1, 8, 12, 17, 98, 145, and 149 by
`Koether and a Person Having Ordinary Skill in the Art
`
`1.
`
`Kaether (Ex. 1008)
`
`Koether describes a smart commercial kitchen networkthat, in real-
`
`time, monitors and controls the maintenance andrepair of kitchen or
`
`restaurant appliances. Ex. 1008, 3:50—53. Figure 1 is reproduced below.
`FIG.1
`
`105.
`
`4
`
`100
`t VEHICLE
`
`yoy
`
`SERVICE
`
`Figure 1 illustrates kitchen base stations 150 within respectivecells
`
`105. Id. at 5:3~5. Each kitchen base station 150 is capable of
`
`19
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`IPR2015-01760
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`communicating through wireless means with corresponding kitchen
`
`appliances 110. Jd. at 5:5-8. Figure 2 is reproduced below.
`FIG.e
`pe ee en ee es
`
`een ee ee ee ee
`
` * 175
`
`
`NnN
`13 —l
`
`BTA NETWOR: aOS
`
`Figure 2 illustrates kitchen base station 150 communicating with
`
`microprocessorbased controller 140; the microprocessor based controller
`
`communicates with kitchen appliance 110 to obtain diagnostic information
`
`pertaining to the operating condition of kitchen appliances 110 and the
`
`diagnostic information is communicated to control center 170. Jd. at 5:60—
`
`6:9.
`
`Koether Teaches a “Second Control Device”that is “Located at a
`2.
`Location Remotefrom the Premises”as recited in Claims 1, 98, and 145
`
`The parties argue whether Koether and the knowledgeofthe ordinary
`
`skilled artisan teaches a “second control device”that is “located at a location
`
`remote from the premises”as recited in claims 1, 98, and 145. PO Resp. 44—
`
`51; Reply 3-6. Because Petitioner has the burden of proof (see 35 U.S.C.
`
`§ 315(e), 37 C.F.R. § 42.20(c)), we begin with Petitioner’s arguments.
`
`20
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`
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`IPR2015-01760
`Patent 6,549,130 B1
`
`Petitioner argues Koether’s microprocessor based controller 140
`
`teachesthe claimed “first control device.” Pet. 19-20; see also id. at 34, 36
`
`(discussing claims 98 and 145). Petitioner also argues Koether’s kitchen
`
`base station teaches the claimed “second control device”th
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