Trials@uspto.gov
`§71-272-7822
`
`Paper 21
`Entered: January 26, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`VOLKSWAGEN GROUP OF AMERICA,INC.,
`Petitioner,
`
`Vv.
`
`JOAO CONTROL & MONITORING SYSTEMS, LLC,
`Patent Owner.
`
`Case IPR2015-01611
`Patent 6,549,130 Bl
`
`Before DAVID C. MCKONE,STACEYG. WHITE,and JASON J.
`CHUNG,Administrative Patent Judges.
`
`Opinion for the Board filed by Administrative Patent Judge WHITE.
`
`Opinion Dissenting-in-part filed by Administrative Patent Judge, CHUNG.
`
`WHITE,Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. $318(a) and 37 C-F.R. § 42.73
`
`
`§71-272-7822
`
`Paper 21
`Entered: January 26, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`VOLKSWAGEN GROUP OF AMERICA,INC.,
`Petitioner,
`
`Vv.
`
`JOAO CONTROL & MONITORING SYSTEMS, LLC,
`Patent Owner.
`
`Case IPR2015-01611
`Patent 6,549,130 Bl
`
`Before DAVID C. MCKONE,STACEYG. WHITE,and JASON J.
`CHUNG,Administrative Patent Judges.
`
`Opinion for the Board filed by Administrative Patent Judge WHITE.
`
`Opinion Dissenting-in-part filed by Administrative Patent Judge, CHUNG.
`
`WHITE,Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. $318(a) and 37 C-F.R. § 42.73
`
`
`
`IPR2015-01611
`Patent 6,549,130 Bl
`
`I.
`
`INTRODUCTION
`
`Petitioner, Volkswagen Group of America,Inc., filed a Petition to
`
`institute an inter partes review ofclaims 26, 31, 38, 42, 43, 48, 60, 63, 64,
`
`73, 74, 85, 91, 92, 138, 139, and 143 of U.S. Patent No. 6,549,130 B1 (“the
`
`’130 patent”). Paper 2 (“Pet.”). Patent Owner, Joao Control & Monitoring
`
`Systems, LLC,filed a Preliminary Response pursuant to 35 U.S.C. § 313.
`
`Paper6 (“Prelim. Resp.”).
`
`Upon consideration of the Petition and the Preliminary Response, on
`
`January 28, 2016, we instituted inter partes review of claims 26, 31, 38, 42,
`
`43, 48, 60, 63, 64, 73, 74, 85, 91, 92, 138, 139, and 143 (“instituted claims”),
`
`pursuant to 35 U.S.C. § 314. Paper 7 (“Dec.”).
`
`Subsequentto institution, Patent Ownerfiled a Patent Owner
`
`Response. Paper 13 (“PO Resp.”). Petitioner filed a Reply to Patent
`
`Owner’s Response. Paper 19 (“Reply”). An oral hearing was notheld.
`
`Paper20.
`
`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 by a preponderanceofthe evidence that claims 91 and 92 are
`
`unpatentable and has not shown by a preponderance of the evidence that
`
`claims 26, 31, 38, 42, 43, 48, 60, 63, 64, 73, 74, 85, 138, 139, and 143 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 a numberof lawsuits pending in courts around
`
`the country. Pet. 1-2; Paper 5, 2—7. In addition, ex parte reexamination No.
`
`2
`
`
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`IPR2015-01611
`Patent 6,549,130 Bl
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`90/013,301 wasfiled with respect to the 130 patent and has been stayed in
`light ofthis proceeding. Paper 16. The ’076 patent also is the subject of a
`co-pendingpetitions for inter partes review (IPR2015-01509 and IPR2015-
`01760).
`|
`
`R.
`
`The Instituted Grounds
`
`Weinstituted inter partes review on the following grounds of
`
`.
`
`]
`
`2
`
`26, 38, 42, 43, 48, 63
`2
`>
`>
`?
`>
`
`’
`
`§ 103
`
`64, 85, and 92
`
`
`
`unpatentahility:.
`.
`
`
`
`
`Reference(s)|Basis_|Instituted Claim(s)
`
`
`Kniffin and one of Spaur’, Behr’,
`or Kubler?
`
`
`
`
`
`
`
`Kniffin and Drori’
`
`§ 102
`
`60 and 139
`
`
`
`()3
`
`'U.S. Patent No. 6,072,402,filed Jan. 9, 1992 (Ex. 1006) (“Kniffin”).
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
`revised 35 U.S.C. §§ 102, 103 and the relevant sections 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-AIJA version.
`3 U.S. Patent No. 5,732,074,filed Jan. 16, 1996 (Ex. 1016)(“Spaur).
`4U.S. Patent No. 5,808,566, filed June 23, 1995 (Ex. 1017) (“Behr”).
`> U.S. Patent No. 5,726,984,filed Oct. 5, 1995 (Ex. 1018) (“Kubler”).
`6 U.S. Patent No. 5,113,427, issued May 12, 1992 (Ex. 1007) (“Ryoichi”).
`7U.S. Patent No. 5,081,667, issued Jan. 14, 1992 (Ex. 1008) (“Drori’”).
`8 U.S. Patent No. 4,602,127, issued July 22, 1986 (Ex. 1015) (“Neely”).
`3
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`
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`IPR2015-01611
`Patent 6,549,130 Bl
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`C.
`
`The ’130 Patent
`
`The ’130 patentis directed to controlling a vehicle or premises.
`
`Ex. 1001, Abstract 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 deviceis
`
`located remote from the vehicle or premises and remote from the second
`
`control device. Id. Thefirst control device 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 a respective vehicle or premises with the first signal.”
`
`Id. The second control device generates the second signal in response to a
`
`third signal from the third control device. Jd. The “second control deviceis
`
`at least one of a server computer, a computer, and a network computer.”
`
`Id. at 81:19-21. In addition,
`
`the third control deviceis at least one ofa 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 a_displayservices device,
`
`
`telephone, a video telephone, a watch, and a two-
`way pager.
`
`Id. at 81:21-29.
`
`
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`IPR2015-01611
`Patent 6,549,130 Bl
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`Dz.
`
`The Instituted Claims
`
`Ofthe instituted claims, claims 26, 42, 48, 91, and 138 are
`
`independent. Claims 26 and 91 are 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 device is located at the
`vehicle, wherein the first control device is responsive to a
`second signal, wherein the secondsignal is 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 vehicle, wherein the
`second signal is transmitted from the second control
`device to the first control device, and further wherein the
`second signal 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 fromathird control device,
`wherein the third control deviceis located at a location
`which is remote from the vehicle and remote from the
`second control device, wherein the third signalis
`transmitted from the third control device to the second
`control device, and further wherein the third signalis
`automatically received by the second control 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
`pumpsystem, 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
`
`5
`
`
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`IPR2015-01611
`Patent 6,549,130 Bl
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`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
`weaponsystem, a gun, an electronic warfare system, a
`pumping device, sonar equipment, a locking device for
`preventing unauthorized accessto a vehicle
`compartment, and landing gear.
`
`91. A control apparatus, comprising:
`a first control device, wherein the first contro} device at least
`one of generates and transmitsafirst 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 device is located at a
`location remote from the vehicle, and further wherein the
`first control device is responsive to a second signal,
`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 whichis
`remote from the first control device and remote from the
`vehicle, wherein the secondsignalis transmitted from the
`second control device to the first control device, and
`further wherein the secondsignal is automatically
`received bythefirst control device,
`wherein the first signal is transmitted from the first control
`device to a third control device, wherein the third control
`device is capable of at least one of activating, de-
`activating, disabling, and re-enabling, one or more of a
`
`6
`
`
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`IPR2015-01611
`Patent 6,549,130 Bl
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`plurality of 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, and
`wherein the third control device is located at the vehicle,
`and further wherein thefirst signal is automatically
`received by the third control device, wherein the third
`control device at least one of generates and transmits a
`third signal for at least one of activating, de-activating,
`disabling, and re-enabling, 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.
`
`II.
`
`ANALYSIS
`
`A.
`
`Claim Construction
`
`In the Decision to Institute, we noted that the ’130 patent was expired.
`Dec. 5. For claimsof an expired patent, the Board’s claim interpretation is
`similar to that of a district court. See In re Rambus, Inc., 694 F.3d 42, 46
`
`(Fed. Cir. 2012). “In determining the meaningofthe disputed claim
`
`limitation, we look principally to the intrinsic evidence of record, examining
`
`the claim languageitself, the written description, and the prosecution
`history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek,
`Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips v. AWH Corp.,
`415 F. 3d 1303, 1312—17 (Fed. Cir. 2005) (en banc)).
`|
`For purposesof the Decision to Institute, we construed the term
`
`“control device.” Dec. 5-7. Neither party raised any concerns regarding
`
`this construction during trial. See PO Resp. 14; Reply 2. Based on our
`
`review ofthe full record, we discern no reason to modify or further discuss
`
`
`
`IPR2015-01611
`Patent 6,549,130 Bl
`
`‘in this Final Written Decision our constructions for this claim term. For
`
`convenience,this claim construction is reproducedin the table below.
`
`
`
`Control Ex. 2002, 6;|A device or a computer, or that part of a device
`
`
`
`
`
`Device | PO Resp. 14|or a computer, which performsan operation, an
`
`
`action, or a function, or which performsa
`(
`numberof operations, actions, or functions.
`
`B.- Analysis ofAsserted Ground ofAnticipation by Kniffin
`Petitioner asserts that claims 26, 38, 42, 43, 48, 63, 73, 74, 91, and
`
`138 of the ’130 patent are unpatentable under35 U.S.C. § 102 as anticipated
`
`by Kniffin. Pet. 13-40. Petitioner relies on claim charts showing how this
`
`reference allegedly discloses the claimed subject matter. Jd. Petitioner
`
`further relies on a declaration from Scott Andrews. Ex. 1002.
`
`24
`
`~
`
` £ Overview ofKniffin
`
`Kniffin describes a secure entry system that uses radio transmissions
`
`to communicate with locks, keys, and related components. Ex. 1006,
`
`Abstract. Figure 1 is reproduced below.
`
`
`
`IPR2015-01611
`Patent 6,549,130 Bl
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`
`
`26
`
`TRANSMITTER
`
`10
`
`\
`
`k oDno0
`
`000
`oD
`
`FIG. 1 14 RESET
`
`
`
`Taser\\
`
`
`a
`TIMER _
`TRANSMISSION
`1D
`LOCK
`POWER
`SYSTEM
`
`
`SUPPLY ||MECHANISM]|MEANS
`
`287
`
`
`
`22
`
` 16
`
`Figure | depicts the first embodiment of Kniffin. Jd. at 2:25—26. In this
`
`embodiment, a secure entry system includesa lock (or other access control
`
`device) 12 that has an integrated cellular, paging, or other RF receiver 14.
`
`Users establish communication with the lock via “a cellular telephone, by a
`
`conventional telephone, or by some other communicationslink 16”that is in
`
`communication with clearinghouse 18. Jd. at 2:32~34. In orderto identify
`
`the lock that the user wishes to access, computer 20 of clearinghouse 18
`
`synthesizes a series of voice prompts that are relayed to the user over
`
`communications link 16 that prompt the user to provide the appropriate
`
`identifying information. /d. at 2:35—43. If the clearinghouse determines that
`
`the user is authorized to access the lock then the clearinghouse will send a
`
`signal to lock 12. Id. at 2:44-47.
`
`Figure 4 is reproduced below.
`
`
`
`IPR2015-01611
`Patent 6,549,130 B1
`
`
`
`CLEARINGHOUSE
`
`cD
`
`Figure 4 depicts the fourth embodimentof Kniffin. Jd. at 8:5—6. This
`
`embodimentis described in the context of an access control device for a
`
`delivery truck. Jd. at 8:6-8. As described in Kniffin’s specification “the
`
`access control device 64 is not particularly detailed in FIG. 4, [but] it can
`
`take the same form as lock 12 of FIG. 1 (but with a lock mechanism adapted
`
`to secure the doors of a delivery truck).” Jd. at 8:46—48. Here, a delivery
`
`companycalls clearinghouse 66 and identifies the sequence of deliveries to
`
`be madeby a truck. When truck 62 arrives at a delivery location access
`
`control device 64 will sense whetherthis location is the expected location by
`
`detecting an identification device 70. Id. at 8:25—27. Identification device
`
`70 may be a proximity card mountedat the loading dock or an electronic key
`
`carried by an authorized employee. /d. at 8:27-30. “If the detected
`
`identification device correspondsto the first expected stop that had earlier
`
`been programmed,the truck access control device unlocks, permitting access
`
`to the truck’s contents.” Jd. at 8:30-33. At any time,the delivery company
`
`can call clearinghouse 66 and modify the route. Jd. at 8:61-67.
`
`10
`
`
`
`IPR2015-01611
`Patent 6,549,130 Bl
`
`it. Discussion
`
`Each ofthe challenged independentclaims(26, 42, 48, 91, and 138)
`
`recites a first, second, and third control device. Petitioner asserts that
`
`“[c]laims 26, 42, 48, 91, and 138 identify these same control devices but in
`
`different orders.” Pet. 9. Petitioner includes the following chart on page 9
`
`of its Petition.
`
`°
`
`
`
`Device
`- Device
`Claim
`26 Third Control c> Second Controi c> First Control > Vehicle
`Device
`Device
`Device
`Device
`clan-ez PHRSConr > SendContol > ThtComeel > yn
`clamag THEConte! a> SeedComte Nel > yee
`cnn SimsCmFiCoal gy TkConta gy Vea
`clam 38 RIMS! eb SseopdContol p> TaniComre > yon
`
`The preceding chart illustrates Petitioner’s allegation that the independent
`
`claims recite the same control devices in different orders. Jd. Patent
`
`Owner’s arguments regarding the challenged claimsare in accord with
`
`Petitioner’s grouping of the control devices. See e.g., PO Resp. 20
`
`(discussing the first control device of claims 26 and 48 andthethird control
`
`device of claims 42 and 138 as part of an argumentdirectedto the “first
`
`control device” of claim 26), 29-31 (discussing claim 91). Petitioner and
`
`Patent Ownerrely upon substantially similar evidence and arguments for
`
`these three devices. Thus, our analysis of Kniffin’s disclosures applies to
`
`each of the independent claims. For convenience, unless otherwise
`
`11
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`IPR2015-01611
`Patent 6,549,130 Bi
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`indicated, we shall use the termsfirst, second, and third control device to
`
`refer to the control devices as described in claim 26.
`
`Petitioner argues that Kniffin discloses these control devices through
`
`its discussion and depiction of access contro! device 64(first control device)
`
`(Pet. 13-14), clearinghouse 18 or 66 (second contro] device) (id. at 14), and
`
`communicationslink 16 (third control device) (id.). Petitioner asserts that
`
`a delivery company maycontact clearinghouse 66, and provide
`a schedule of deliveries for the truck.
`.
`.
`. [C]learinghouse 66
`transmits the schedule to the truck access control device 64 (the
`in-vehicle control device,i.e., at the truck 62), where the
`schedule is stored in memory 68.
`
`Id. at 15 (citing Ex. 1006, 8:15—24). Petitioner argues that “[c]learinghouse
`
`66 receives signals from a telephone 22 and communications link 16, and
`
`includes an RF transmission system for transmitting the verified schedule of
`
`stops. Moreover, truck access control device 64 (the in-vehicle control
`
`device) is responsive to signals from clearinghouse 66 (the middle device).”
`
`Pet. 17 (citing Ex. 1006, 8:61-67; Ex. 1002 4 11-13). In the first
`
`embodiment, users communicate with the clearinghouse via “a cellular
`
`telephone, by a conventional telephone, or by some other communications
`
`link 16” and Petitioner argues that the communicationslink of the fourth
`
`embodimentis depicted as having similar communications. Jd. at 17-18
`
`(citing Ex. 1006, 2:31-43, 8:61-67; Ex. 1002 4 11-13).
`
`Patent Owner’s Arguments as to Independent
`a)
`Claims 26, 42, 48, and 138
`
`Patent Ownerasserts that Kniffin does not disclose all of the elements
`
`of the independent claims. PO Resp. 14-31. Specifically, Patent Owner
`
`contendsthat “Kniffin does not generate a signal (the claimed ‘first signal’
`
`12
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`
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`IPR2015-01611
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`... ) for instructing the lock mechanism 32 to unlock the doors in response
`
`to a signalfrom the clearinghouse 66 (which Petitioner asserts corresponds
`
`to the claims ‘second control device’).” Id. at 20-21. Patent Ownerasserts
`
`that information received from clearinghouse 66 is merely stored in memory.
`Id. at 21. “In fact, the signal that triggers the access control device 64 of
`Kniffin to generate a signal for instructing the lock mechanism 32 to unlock
`
`the doorsis a signal from an ‘identification device 70’ that is present at one
`
`ofthe authorized locations stored in memory 68.” Id.
`
`Claim 26 recites “wherein the first control device is responsive to a
`
`second signal, wherein the secondsignal is at least one of generated by and
`
`transmitted from a second control device.” Ex. 1001, 80:9-10; see alsoid.
`
`83:25—26 (similar language in claim 42), 85:15—18 (claim 48), 99:13-14
`
`(claim 138). Thus, in each of independentclaims 26, 42, 48, and 138, the
`
`first control device must respondto a signal from the second control device.
`
`Petitioner asserts that access control device 64 is the first control device and
`
`that clearinghouse [8 or 66 is the second control device. Pet. 13-14.
`
`Therefore, Petitioner must establish that Kniffin discloses that access control
`
`device 64 respondsto a signal from the clearinghouse. We are not
`persuaded that Petitioner has a made a sufficient showing on this point.
`
`Petitioner alleges that “clearinghouse 66 transmits the schedule to the
`
`truck access control device 64 .
`
`.
`
`. where the schedule is stored in memory
`
`68.” Jd. at 15. Petitioner then makesthe bare assertion that “Kniffin’s truck
`
`access control device 64 (the in-vehicle control device), located in the
`
`vehicle, is responsive to signals from clearinghouse 18 or 66 (the middle
`
`device), located remote from the vehicle 62.” Jd. at 16. Petitioner also
`
`contendsthat “truck access control device 64 (the in-vehicle control device)
`
`13
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`IPR2015-01611
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`is responsive to signals from clearinghouse 66 (the middle device), as
`
`Kniffin discloses that truck access control device 64 may be reprogrammed
`
`by clearinghouse 66.” Jd. at 17 (citing Ex. 1006, 8:61-67, Ex. 1002 4 11-
`
`13). Petitioner, however, does not explain why storing a schedule in
`
`memory or reprogramminga device discloses the recited device responsive
`
`to a second signal. Nor does Petitioner explain the import or impact of the
`
`signal sent from identification device 70. This is key because Kniffin states
`
`that “/i]n response to identification ofthe authorized user at the lock within
`
`the prescribed time pcriod, a lock microprocessor CPU 30 instructs a lock
`
`mechanism 32 to unlock.” Ex. 1006, 3:64—-66. In the fourth embodiment,
`
`access is based on the identity of a location and not that of an individual.
`
`See id. at 8:17—18 (“Each possible destination is assigned an identification
`
`number.”). Access is granted “[i]f the detected identification device
`
`correspondsto the first expected stop.” Jd. at 8:30-31. Accessis blocked if
`
`“the access control device .
`
`.
`
`. sense|s] either the absence of an identification
`
`device, or will sense an identification device that does not correspondto an
`
`authorized stop.” fd. at 8:39 -45.
`
`Petitioner responds to Patent Owner’s argumentsbystating that
`
`“(while Kniffin describes controlling the in-vehicle lock mechanism,as set
`
`forth in the Petition, Kniffin also describes storing data in an in-vehicle
`
`memory, in response to data received by the access control device from a
`
`clearinghouse.” Reply 4 (citing Pet. 13-15). Petitioner asserts that Patent
`
`Owner’s arguments regarding Kniffin’s disclosures as related to the lock do
`
`not address Kniffin’s disclosures as related to activating memory. Jd. We,
`
`however, are not persuadedthat Petitioner has put forth sufficient evidence
`
`14
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`IPR2015-01611
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`to establishthat the mere act of storing information in memory discloses the
`
`disputed limitation.
`The specification of the ’130 patent describes the “operational steps
`and/or sequenceof operation ofthe apparatus and method ofthe present
`invention.” Ex. 1001, 32:10-14. In order “to prevent an unauthorized
`
`access” the system comparesthe received program command with “data
`
`which maybestored in apparatus program memory.” Id. at 32:39—-50.
`
`Kniffin’s stored schedule of stops appears to be similar to the stored data
`
`described in the ’130 patent. The control device of the ’130 patent,
`
`however,is not responsive to the stored data, but rather it respondsto the
`
`program code. See id. at 32:51-67. Thus, weare not persuadedthat
`
`Kniffin’s disclosure of storing the schedule is sufficient to disclose the
`
`disputed limitation. Therefore, we are not persuadedthat Petitioner has
`demonstrated that Kniffin discloses a first control device that is responsive
`
`to a second control signalas recited by claims 26, 42, 48, and 138.
`
`For the foregoing reasons we determinethat Petitioner has not carried
`
`its burden to demonstrate by a preponderance ofthe evidence that
`
`independent claims 26, 42, 48, and 138 are anticipated by Kniffin. By that
`same regard, wealso are not persuaded that Petitioner has established the
`unpatentability of dependent claims 38, 43, 63, 73, 74, 139, and 143. The
`various anticipation and obviousness groundsasserted for each of those
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`claimsrelies upon the assertions and arguments discussed aboveinrelation
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`to the independentclaims. Petitioner has not argued that the above
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`discussed deficiency is remedied by arguments or evidence put forth in any
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`of the other grounds. Therefore, Petitioner has not satisfied its burden in
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`15
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`relation to its assertions of unpatentability directed to claims 26, 31, 38, 42,
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`43, 48, 60, 63, 64, 73, 74, 85, 138, 139, and 143 of the 7130 patent.
`
`Patent Owner’s Arguments as to Independent
`b)
`Claim 91
`
`As comparedto the other independent claims, claim 91 recites
`
`different languagein that it does not recite that the in-vehicle device (claim
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`91’s third contro! device) is responsive to the intermediate device (claim
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`91’s first control device). As to this claim, Patent Owner contendsthat the
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`information sent from the clearinghouse “regarding an authorized schedule
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`of stops is not a signal‘for at least one of activating, de-activating, disabling,
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`_ and re-enabling’ a vehicle system/component, but rather it is simply a
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`schedule that is transmitted from the clearinghouse 66 to the access control
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`device 64 and stored in memory 68.” PO Resp. 30-31 (citing Ex. 1006,
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`8:21-24).
`
`Claim 91 recites “a first signal for at least one ofactivating, de-
`
`activating, disabling, and re-enabling .
`
`.
`
`. a vehicle component. .
`
`. wherein
`
`the first control device is located at a location remote from the vehicle...
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`[and] whereinthefirst signal is transmitted from thefirst control device to a
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`third control device .
`
`.
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`. [that] is located at the vehicle .
`
`.
`
`. [and] wherein the
`
`first control signal is automatically received by the third control device,
`
`wherein the third control device at least one of generates and transmits a
`
`third signal for at least one of activating, de-activating, disabling, and re-
`
`enabling .
`
`.
`
`. a vehicle component.”
`
`Petitioner asserts that the first signal is disclosed by Kniffin’s
`
`communication sent from the clearinghouseto the access control device.
`
`Pet. 25. Accordingto Petitioner, this communication includes a schedule
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`16
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`that is used to manageaccessto the doors of a delivery truck 62. Id. (citing
`Ex. 1006, 8:15—21; 2:31-43). Wefindthat thescheduleis stored in
`Kniffin’s access control device andlater used in the processing to determine
`
`whetherthe lock should unlock. Thus, we are persuaded that Kniffin’s
`
`description of the clearinghouse sending a sequence ofdeliveries to the
`
`access control device discloses the claimedfirst signal“for .
`
`.
`
`. activating,
`
`de-activating, disabling, and re-enabling .
`
`.
`
`. a vehicle component.” In the
`
`previously discussed independent claims we were not persuadedthat
`Petitioner has established that the in-vehicle device was “responsive”to the
`
`signal from the clearinghouse. We, however, are persuadedthat Petitioner
`
`has established that the in-vehicle device uses the information from the
`
`clearinghouse in deciding whether to unlock the access control device and as
`
`such the scheduleis transmittedfor activating or de-activating the lock. See
`
`Pet. 25 (citing Ex. 1006, 8:46-48, 3:64—4:3, Ex. 1002 Jf 11-13).
`
`Based on our review ofthe full record, we find persuasive Petitioner’s
`
`arguments and evidence and we adopt them asthe basis for our
`
`determination that Kniffin discloses the limitations of claim 91. See Pet. 25—
`
`26, 37-39. Accordingly, we determine that Petitioner has demonstrated by a
`
`preponderanceofthe evidence the unpatentability of claim 91 as anticipated
`
`by Kniffin.
`
`C.—Asserted Obviousness of Claim 92
`
`iii. Overview ofSpaur
`
`Spaur teacheswirelessly linking with a vehicle using an Internet
`
`communicationslink to control a vehicle component. Ex. 1016, 2:42-48,
`
`3:13—20, 7:40-47, 12:51-S4.
`
`17
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`iv. Overview ofBehr
`
`Behr teachesan electronic navigation system providing route
`
`guidance,tracking information, and other information from a base unit to a
`
`remote unit over wireless, wireline, or optical devices, including cellular or
`
`Internet Protocol networks. Ex. 1017, Abstract, 1:19-—26, 9:38-42.
`
`v. Overview ofKubler
`
`Kubler teaches a communication system using wired and wireless
`networks, including the Internet, to communicate betweenstationary and
`
`roaming devices, such as a vehicle-mounted computer terminal. Ex. 1018,
`
`Abstract, 8:25—-29.
`
`vi. Analysis
`
`Claim 92 depends from claim 91. As we have foundthat claim 91 is
`
`unpatentable over Kniffin, we now examine whetherPetitioner has put forth
`
`a sufficient case as to claim 92. Claim 92 furtherrecites, in relevantpart, the
`
`usage of the apparatusof the claim 91 over the Internet and World Wide
`
`Web.
`
`Petitioner asserts that claim 92 is unpatentable under 35 U.S.C. § 103
`
`as obvious over Kniffin. Pet. 45-46. Petitioner relies on claim charts
`
`showing how Kniffin allegedly teaches the claimed subject matter. Jd. at
`
`47-49. Petitioner further relies on the declaration from Scott Andrews.
`
`Ex. 1002. Mr. Andrewsasserts that “[t]he use of the Internet or World Wide
`
`Webin vehicle control systems was well-known atthe time of the 7130
`
`patent as evidenced, for example, by Spaur, Behr, and Kubler.” Ex. 1002
`
`q 24. As noted in the Institution Decision, we exercised our discretion to
`
`recognize Petitioner’s implicit argument that these claims would have been
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`18
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`obvious over the teachings of Kniffin and the knowledge of one of ordinary
`
`skill in the art as evidenced by Spaur, Behr, and Kubler. Dec. 13; See In re
`
`Cuozzo Speed Techs., LLC, 793 F.3d 1297, 1301 (Fed. Cir. 2015), aff'd sub
`
`nom, Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016); SightSound
`
`Techs., LLC v. Apple Inc., 809 F.3d 1307, 1313 (Fed. Cir. 2015), cert. -
`
`denied, No. 16-483, 2017 WL 160459 (US. Jan. 17, 2017).
`
`Patent Ownercontendsthat one of ordinary skill in the art would not
`
`have modified Kniffin to use the Internet because “conventional wisdom at
`
`the time ofthe effective filing date of the ’130 Patent was that the Internet
`
`wasnot secure and there were also many impediments on the use of the
`
`Internet.” PO Resp. 32. In support of this position, Patent Ownercites a
`
`1996 Morgan Stanley “Internet Report” that noted concerns about security
`
`and potential limits to Internet access. Id. at 32-34 (citing Ex. 2005, 24).
`
`Petitioner responds by asserted that Patent Owner “admitted that, in
`
`March of 1996, a person of ordinary skill in the art as would have
`
`appreciated the Internet as an improved transmission system.” Reply 10-11
`
`(citing Pet. 35-36). Specifically, Petitioner directs us to Patent Owner’s
`
`Responseto an Office Action in the reexamination of U.S. Patent No.
`
`7,397,363 (“the ’363 patent”). 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, at [63]. In that Response to an Office Action, Patent Owner
`
`asserted that one of ordinary skill in the art “would appreciate the
`
`infrastructure of the Internet and its improved signal transmission
`
`capabilities, as compared to the [RF] system used in Kniffin, as being a
`superior system for transmitting a signal or message from one location to
`another.” Ex. 1020, 11. Petitioner also asserts that the cited Morgan Stanley
`
`19
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`IPR2015-01611
`Patent 6,549,130 B1
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`Internet Report does not represent the conventional wisdom of one of
`
`ordinary skill in the art because it was preparedto help investors ascertain
`
`risks and rewardsrelated to the Internet and Patent Owner does not show
`
`that one of ordinary skill would have looked to such a document. Reply. 12
`
`(citing Ex. 2005, 4).
`
`Weare persuadedbyPetitioner’s arguments. Patent Owner’s
`
`statements as to the knowledgeof one of ordinary skill are more directly
`
`related to the issues at hand than an investment report. We agree with
`
`Petitioner’s analysis of Kniffin and the teachings of Spaur, Behr, or Kubler.
`
`Thus, wefind that one of ordinary skill in the art would have been motivated
`
`to improve Kniffin’s system with the known methodsoftransmitting
`
`information over the Internet. See Muniauction, Inc. v. Thomson Corp., 532
`
`F.3d 1318, 1326-27 (Fed. Cir. 2008).
`
`Based on our review ofthe full record, we find persuasive Petitioner’s
`
`arguments and evidence and we adopt them asthe basis for our
`
`determination that Kniffin and the knowledge of one of ordinary skill in the
`
`art as evidenced by Spaur, Behr, and Kubler renders obvious claim 92. See
`
`Pet. 56-57. Accordingly, we determine that Petitioner has demonstrated by
`
`a preponderanceofthe evidence the unpatentability of claim 92 over the
`
`teachings of Kniffin and the knowledge of one of ordinary skill in the art as
`
`evidenced by Spaur, Behr, and Kubler.
`
`Dz
`
`Conclusion
`
`Petitioner has shown by a preponderanceofthe evidencethat claim 91
`
`of the ’130 patent is anticipated under 35 U.S.C. § 102 by Kniffin and that
`
`claim 92 is unpatentable under 35 U.S.C. § 103 over the teachings of Kniffin
`
`20
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`and the knowledge of one of ordinary skill in the art as evidenced byat least
`
`one of Spaur, Behr, or Kubler. Petitioner has not established the
`
`unpatentability of claims 26, 31, 38, 42, 43, 48, 60, 63, 64, 73, 74, 85, 138,
`
`°
`
`139, and 143 of the ’130 patent as unpatentable.
`
`Il. ORDER
`
`Accordingly,it is
`
`ORDEREDthatclaims 91 and 92 of the ’130 patent have been shown
`
`to be unpatentable;
`
`FURTHER ORDEREDthatclaims 26, 31,+38, 42, 43, 48, 60, 63, 64,
`
`73, 74, 85, 138, 139, and 143 of the ?130 patent have not been shown to be
`
`unpatentable;
`
`FURTHER ORDEREDthat, becausethis is a final written decision,
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`parties to this proceeding seeking judicial review of our Decision must
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`comply with the notice and service requirements of 37 C.F.R. § 90.2.
`
`21
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`
`
`Trials@uspto.gov
`571-272-7822
`
`Paper 21
`Entere
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