Trials@uspto.gov
`571-272-7822
`
`Paper 29
`Date: December 30, 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.
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. $318(a) and 37 C.F-R. $ 42.73
`
`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 of U.S.
`
`Patent No. 6,549,130 B1 (‘the ’130 patent”). Paper 1 (“Pet.”). Patent
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`

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`Owner, Joao Control & Monitoring Systems, LLC,filed a Preliminary
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`Response pursuantto 35 U.S.C. § 313. Paper 9 (“Prelim. Resp.”).
`
`Uponconsideration of the Petition and the Preliminary Response, on
`
`January 7, 2016, we instituted inter partes review ofclaims 26, 29, 30, 33,
`
`42, 43, 48, 60, and 68 (“instituted claims”), pursuant to 35 U.S.C. § 314.
`
`Paper 10 (“Dec.”).
`
`Subsequentto institution, Patent Ownerfiled a Patent Owner
`
`Response. Paper 20 (“PO Resp.”’). Petitioner filed a Reply to Patent
`
`Owner’s Response. Paper 24 (“Reply”). An oral hearing was held on
`
`September9, 2016, and a transcript of the hearing is included in the record.
`
`Paper 28 (“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 by a preponderanceofthe evidence that claims 26, 29, 30, 33, 42, 43,
`
`48, 60, and 68 of the ’130 patent are unpatentable. See 35 U.S.C. § 316(e).
`
`A.
`
`Related Matters
`
`Both Petitioner and Patent Ownerindicate that the ’130 patent or
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`related patents have been asserted in numerousproceedings. Exs. 1016—
`
`1018; Paper5.
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`

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`~ IPR2015-01509
`Patent 6,549,130 Bl
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`B.
`
`The Asserted Grounds
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`Petitioner identifies the following as asserted grounds of
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`unpatentability:
`Reference(s)
`
`Frossard (Ex. 1005)!
`
`|
`
`.
`
`
` Pagliaroli and
`
`Pia(1006)
`
`resonane Simms s103@)|0
`
`
`
`Frossard § 103(a)|33 and 68
`
`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 deviceis located
`
`' European Patent Application Publication No. 0 505 266 A1, published
`March 17, 1992.
`* 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. Becausethe application from which the ’130 patent issued wasfiled
`before that date, our citations to Title 35 are to its pre-AIA version.
`3U.S. Patent No. 5,276,728, filed Nov. 6, 1991.
`4U.S. Patent No. 5,334,974,filed Feb. 6, 1992.
`
`

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`IPR2015-01509
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`remote from the vehicle or premises, and a third control deviceis located
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`remote from the vehicle or premises and remote from the second control
`
`device. Jd. Thefirst contro! device generatesa first signal in response to a
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`second signal from the second control device. /d. Thefirst control device
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`can activate, de-activate, disable or re-enable, one or moreof “a respective
`
`system, component, device, equipment, equipment system, and/or appliance,
`
`of a respective vehicle or premises with a first signal.” Jd. The second
`
`control device generates the second signal in responseto 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.” /d. at 81:19-21. In
`
`addition,
`
`the third control deviceis at least one of a 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.
`
`D.
`
`The Instituted Claims
`
`Ofthe instituted claims 26, 29, 30, 33, 42, 43, 48, 60, and 68, 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 transmitsafirst signal for at least one of
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`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 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 vehicle, wherein the second
`signal is transmitted from the second control deviceto the first
`control device, and further wherein the second signalis
`automatically received by the first control device,
`
`wherein the second control device is responsiveto 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
`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 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 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,
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`a locking device for preventing unauthorized access to a vehicle
`compartment, and landing gear.
`
`II.
`
`ANALYSIS
`
`A.
`
`Claim Construction
`
`In the Decision to Institute, we noted that the ’130 patent was expired.
`
`Dec. 8. For claims of an expired patent, the Board’s claim interpretationis
`similar to that ofa district court. See In re Rambus, Inc., 694 F.3d 42, 46
`
`(Fed. Cir. 2012). “In determining the meaning of the 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)).
`
`1.
`
`Terms Preliminarily Construed in the Decision to Institute
`
`For purposes of the Decision to Institute, we construed the term
`
`“control device.” Dec. 8-10. Based on our review of the full record, we
`
`discern no reason to modify or further discuss in this Final Written Decision
`
`our constructions for this claim term. For convenience, this claim
`
`construction is reproducedin the table below.
`
`
`
`Control
`A device or a computer,or that part of a
`
`
`
`Device
`device or a computer, which performs an
`operation, an action, or a function, or which
`
`performs a numberofoperations, actions, or
`functions.
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`2.
`
`First Signal, Second Signal, and Third Signal Terms
`
`Patent Ownerprovides proposed constructionsforthe first, second,
`
`and third signal terms. PO Resp. 15-16. Specifically, Patent Ownerasserts
`
`that the “first signal”is “a signal sent by a first device;” the “second signal”
`
`is “a signal sent by a second device;” and the “third signal” is “a signal
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`generated by a third device.” Jd. at 16.
`
`Weagree, for example, that a first signal is sent by a first device. The
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`parties’ dispute, however, is directed to whether there may be an
`
`intermediate device between the transmitting device(e.g, first device) and
`
`the signal’s destination (e.g,. second device). Claim 42recites, in relevant
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`part, that the “first signal” must be transmitted to and “automatically
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`received”by the “second control device.” In Patent Owner’s view,there
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`may not be an intermediate device, between the first and second devices,
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`that modifies or changes the signal. See PO Resp. 20-24, 26-31.
`
`Aspart of our analysis, we note that the Applicant provided an
`
`express definition of the term “signal”in the First Remarksfiled on
`
`November23, 2007, during prosecution of the patent application that issued
`
`as the U.S. Patent No. 7,397,363 (“the °363 patent”) (Ex. 2002). The ’130
`
`patent and °363 patents all descend from U.S. Patent Application Nos.
`
`09/551,365, 08/622,749, 09/277,935, and 08/683,828. See Ex. 1001, at [63].
`
`Patent Ownerrelied upon this samefiling in support of its arguments
`
`regarding the construction of “control device.” See Dec. 8. The Applicant
`
`provided this definition several years after the issuance of the ’130 patent.
`
`See Ex. 1001, at [45] (April 15, 2003 issuance date). As the Federal Circuit
`
`has noted, however, “[a] statement made during prosecution ofrelated
`
`patents may be properly considered in construing a term commonto those
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`patents, regardless of whether the statementpre- or post-dates the issuance
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`of the particular patent at issue.” Teva Pharm. USA, Inc. v. Sandoz, Inc.,
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`789 F.3d 1335, 1343 (Fed. Cir. 2015) (citing Microsoft Corp. v. Multi-Tech
`
`Sys., Inc., 357 F.3d 1340, 1350 (Fed. Cir. 2004)).
`
`In that 2007 filing, the term “signal” was defined as “an indication, or
`
`an indication having or conveying data, information, or a message,or a
`
`conveyorof data, information, or a message, or an indication representing
`
`data or information.” Ex. 2002, 11. We are persuadedthat this definition is
`
`instructive to understanding the proper scope of these claim terms. Thus, a
`
`first signal, for example, is an “an indication, or an indication having or
`
`conveying data, information, or a message, or a conveyorofdata,
`
`information, or a message, or an indication representing data or information
`
`that is sent by a first device.”
`
`We havenot been directed to evidencein the specification sufficient
`
`to show that the Applicant desired to narrow this very broad definition of
`
`signal in a manner that would exclude signals that pass through
`
`intermediaries. As defined by the Applicant, a signal may be an indication,
`
`information, or a message and weare not persuadedthatit is impermissible
`
`for an intermediary to pass this information on and to add further data to the
`
`information that it received.
`
`For the foregoing reasons, we construe the term “first signal” to be “a
`99 66
`
`signal sent by a first device;”
`“second signal”to be “a signal sent by a
`second device;” and “third signal” to be “a signal sent byathird device.”
`
`For convenience,this claim construction is reproducedin the table below.
`
`

`

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`
`
`First A signal sent byafirst devicePO Resp.
`
`
`
`
`
`
`Siow[ise
`
`
`sem[ise
`
`
`Third
`
`Therecited signals all are construed to be “an indication, or an
`
`Second
`
`PO Resp.
`
`A signal sent by a second device
`
`PO Resp.
`
`A signal sent by a third device
`
`indication having or conveying data, information, or a message, or a
`
`conveyor of data, information, or a message, or an indication representing
`
`data or information.” Finally, we are not persuaded that these terms exclude
`
`signals that may pass through an intermediary and any such intermediary
`
`may append additional information to the received signals for the reasons
`
`discussed infra in §§ II.C.2. and IL.F.1.
`
`3.
`
`Interface Device
`
`Patent Ownerproposes a new definition of the term “interface
`
`device.” PO Resp. 12-14. In reply, Petitioner does not contest the
`
`definition for “interface device” at this juncture. Reply 1. We are not
`
`persuaded that express construction of “interface device” is necessary in
`
`order to resolve the disputes currently before us. Thus, we discern no need
`
`to provide an express construction forthis term at 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 construed that are in controversy, and only to the extent
`
`necessary to resolve the controversy.”).
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`B.
`
`Mr. David McNamara’s Testimony
`
`Ll.
`
`Mr. McNamara Reviewedthe Prosecution History
`
`Petitioner argues the “petition is supported by the declaration of Mr.
`
`David McNamara.” Pet. 7. Mr. McNamara’signedhis declaration on June
`
`24, 2015. Ex. 1003 4 14. Paragraph 14 ofhis declaration states that “I have
`
`read the ’130 Patent and its prosecution history.” Jd.
`
`Patent Ownerasserts that we should accordlittle or no weight to the
`
`testimony of Mr. David McNamara.® PO Resp. 19. Patent Owner’s
`
`objections are twofold. First, Patent Owner argues that Mr. McNamara did
`
`not review the proper materials such as the prosecution history of the ’130
`
`patent. Jd. at 16-17. Second, Patent Owner contends that Mr. McNamara
`
`has an erroneous understanding of the standards of claim construction. Jd. at
`
`17-19.
`
`> Accordingto Petitioner, Mr. McNamara earned a “M.S. in Engineering in
`Solid State Physics from the University of Florida in 1976.” Pet. 7.
`According to Mr. McNamara,he achieved a “Master of Engineering degree
`in Solid State Physics from the University of Florida in 1976” rather than a
`“M.S.” degree. Ex. 1003 § 2. Although we determinethis distinction to be
`minorandthis distinction does not alter our decision, we credit Mr.
`McNamaraas achieving a “Master of Engineering degree in Solid State
`Physics from the University of Florida in 1976.”
`® Mr. McNamara acknowledgedthe highest level of education that he
`completed was “a “Master of Engineering degree in Solid State Physics from
`the University of Florida in 1976.” Ex. 1003 4 2; see also Pet. 7. Although
`Patent Ownerrefers to Mr. McNamara as Dr. McNamara, becausePetitioner
`and Mr. McNamara do not proffer evidence of Mr. McNamara achieving a
`PhD or equivalent andit is not clear from the record that Mr. McNamara
`attained a PhD or equivalent, we, therefore, refer to Petitioner’s declarant as
`“Mr. McNamara.”
`
`10
`
`

`

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`Patent Ownerargues Mr. McNamara’s testimonyis fatally flawed
`
`because during cross-examination, Mr. McNamaratestified that he had not
`
`reviewed the prosecution history of the ’130 patent. PO Resp. 16-17 (citing
`
`Ex. 2003, 153:11—22 (In response to Patent Owner’s questions “you did not
`
`review the prosecution histories for the four JCMSpatents [including the
`
`°130 patent] at issue correct” and “you did not apply the, any definitions that
`
`may have been provided by Mr. Joao during prosecution of those patents,
`
`correct,” Mr. McNamaraanswers“[t]hat’s correct.”)).
`
`In reply, Petitioner argues Mr. McNamarasigned his declaration on
`
`June 24, 2015 and in the declaration he states that he read the ’130 patent
`
`and its prosecution history. Reply 2 (citing Ex. 1003 4 14). Accordingto
`
`Petitioner, Patent Owner improperlytries to latch onto Mr. McNamara’s
`
`.
`
`testimony that he did not read the prosecution history while ignoring other
`
`statements to the contrary. Reply 2 (citing Ex. 2003, 153:11—15). Petitioner
`
`argues Mr. McNamara’s testimony was, however, approximately nine
`
`months after Mr. McNamarasigned his declaration. Reply 2 (citing
`
`Ex. 2003, 153:11-15). Petitioner further argues Patent Ownerignores Mr.
`McNamara’sother statements that demonstrate that he reviewed the
`
`prosecution history. Reply 2—3 (citing Ex. 2003, 154:11-20). According to
`
`Petitioner, Mr. McNamara’s inconsistent testimony,at best, illustrates a
`
`lapse in memory during a lengthy deposition. Reply 3.
`
`Petitioner also argues Patent Owner’s argument(i.e., Mr. McNamara
`
`did not review the prosecution history of the ’130 patent) would have no
`
`bearing on the claim construction in this proceeding. Reply 3. Specifically,
`
`Petitioner argues Patent Owner’s argument that Mr. McNamara did not
`
`review the prosecution history of the ’130 patent is irrelevant because Patent
`
`11
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`

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`Ownerdid not define any claim termsat issue during the prosecution ofthe
`
`°130 patent. Jd. at 3. Petitioner argues the only terms Mr. McNamara
`
`defined were “automatically” and “automatically received,” which neither
`
`party contests. /d. (citing Ex. 1020, 26). According to Petitioner and Mr.
`
`McNamara, Mr. McNamara’s definitions for the terms “automatically” and
`
`“automatically received” are their plain and ordinary meaning.
`
`/d. at 3-4
`
`(citing Ex. 1003 { 10).
`
`According to Petitioner, the only attempts to define claim terms are
`
`found in the prosecution history of U.S. Patent Nos. 7,397,363 B2 (the °363
`
`patent) and 7,277,010 B2 (the ’010 patent). Petitioner further argues to the
`
`extent that weight should be given to the claim term definitions at issue, Mr.
`
`McNamarareviewed and considered the definitions identified in Exhibit
`
`1009. Id. at 4. Exhibit 1009 includes prosecution history definitions of the
`
`’363 patent and the ’010 patent. Jd. (citing Ex. 1003 ff 14 and 20). During
`
`the cross-examination, Mr. McNamarare-affirmed that he reviewed these
`eee
`
`“‘with respect to Paragraphs 14
`
`definitions. Jd.
`
`In responseto the question
`
`through 25, through 24, other than the information that is referenced in 25, is
`
`that a complete list of the information that you considered in reaching the
`
`opinions or conclusions expressed in Exhibit 1?,”” Mr. McNamara answered
`
`““t]hat is correct.’” Jd. (quoting Ex. 2003, 154:11-20).
`
`Weare not persuaded that Mr. McNamara’s statements on cross
`
`examination are sufficient reason to accord his testimonylittle or no weight.
`
`The prosecution history is an important element in understanding the claims
`
`of a patent. Weare persuadedthat the statements made during cross
`
`examination appear to misstatements as to Mr. McNamara’s review of the
`
`patent and its underlying prosecution history. Mr. McNamarasigned his
`
`12
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`

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`declaration under penalty of perjury and he has madeother statements
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`consistent with his testimony underoath stating that he reviewed the
`
`prosecution history. See Ex. 1003 § 14; Ex. 2003, 154:11-20.
`
`Mr. McNamarasigned his declaration on June 24, 2015, which states
`that he read the °130 patent and its prosecution history. Ex. 1003 { 14.
`|
`Although Mr. McNamaratestified that he did not read the prosecution
`
`history (Ex. 2003, 153:11—15), Patent Owner ignores Mr. McNamara’s other
`
`statements that demonstrate that he reviewed the prosecution history (id. at
`
`154:11-20). In addition, Mr. McNamara’s statement was during a lengthy
`
`deposition approximately nine months after Mr. McNamarasigned his
`
`declaration. Mr. McNamara’s inconsistent testimony appearsto illustrate a
`
`momentary lapse in memory. Comparee.g., id. at 153:11-—15, with id. at
`
`154:11-20.
`
`Moreover, the only claim terms Mr. McNamaradefinedin view of the
`prosecution history of the ’130 patent were “automatically” and
`
`“automatically received,” which neither party contests. Compare PO Resp.
`
`10-16; Reply 1; Pet. 8-9, with Ex. 1020, 26. In addition, we are not
`
`persuaded that Mr. McNamara’s statementthat he did not review the
`
`prosecution history of the ’130 patent displays a lack of understanding of the
`
`prosecution history because Patent Ownerdid not define any claim termsat
`
`issue in this proceeding that overlap with claim terms defined during the
`
`prosecution of the ’130 patent. Compare PO Resp. 10-16, with Ex. 1020,
`
`26.
`
`The only attempts at defining claim termsin this proceeding that
`
`overlap with claim terms foundin the prosecution history occur in two other
`
`patents, which are U.S. Patent Nos. 7,397,363 B2 (the ’363 patent) and
`
`13
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`

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`7,277,010 B2 (the ?010 patent). For the claim terms found in the
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`prosecutionhistory of the ’363 patent and the 010 patent, Mr. McNamara
`
`reviewed and considered these definitions. Ex. 1003 [J 14 and 20; see also
`
`Ex. 1009. During the cross-examination, Mr. McNamarare-affirmed that he
`reviewed these definitions. Ex. 2003, 154:11-20 (In responseto the
`
`question “with respect to Paragraphs 14 through 25, through 24, other than
`
`the information that is referenced in 25, is that a complete list of the
`
`information that you considered in teaching the opinions or conclusions
`
`expressed,” Mr. McNamara answered“[t]hat is correct.”).
`
`Accordingly, we are not persuaded Mr. McNamara’s testimony
`
`displays a lack of understanding of the prosecutionhistory.
`
`2.
`
`Mr. McNamara Applied the Correct Claim Construction Standard
`
`Mr. McNamarastatedthat he applied the plain and ordinary meaning
`
`as understood by a person having ordinary skill in the art. Ex. 1003 | 10.
`
`During cross-examination, Mr. McNamarare-affirmed his position by
`
`stating “I used the samestandardthroughall of the four patents [including
`the °130 patent].
`I used the one of ordinary and customary understanding.”
`
`Ex. 2003, 152:15—18.
`
`In response, Patent Owner argues Mr. McNamara acknowledged
`
`during cross-examination that he used the wrong claim construction standard
`
`when construing the claimsin a related inter partes review brought by the
`
`same Petitioner. PO Resp.(citing Ex. 2003, 151:14-152:18 (Mr. McNamara
`
`acknowledged that he used “the broadest reasonable construction in light of
`
`the specification of the [’363] patent.” However, in response to Patent
`
`Owner’s questions “{a]re you aware that the PTAB hasindicated orstated
`
`14
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`that this is, in fact, the wrong standard for the 363’ patent” and “[h]ow does
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`the use of the wrong claim construction standard affect your opinionsinthis
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`case,” Mr. McNamaraanswers“I don’t think I used the wrong standard
`
`because I used the same standard throughall of the four patents [including
`
`the ’?130 patent].
`
`I used the one of ordinary and customary
`
`understanding.”)). Patent Ownerfurther argues that Mr. McNamara
`
`acknowledgedthat he cannot discern the difference between claims in an
`
`expired patent and claims in an unexpired patent and uses the same claim
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`construction standard(i.e., plain and ordinary meaning) for both expired and
`
`unexpired patents. PO Resp. 17-19 (citing Ex. 2003, 152:19~25).
`
`In reply, Petitioner argues Mr. McNamarastated that he applied the
`
`plain and ordinary meaning as understood by a person having ordinary skill
`
`in the art. Reply 5 (citing Ex. 1003 ¥ 10; Ex. 2003, 152:15-18). Petitioner
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`further argues Patent Owner’s reliance on Mr. McNamara being unable to
`
`differentiate between the “broadest reasonable construction” and the
`
`“ordinary and customary understanding” is misplaced becausethe difference
`
`between the two standardsis a legal question. Reply 5. Petitioner also
`
`argues Patent Ownerfails to demonstrate how Mr. McNamara’s claim
`
`construction is incorrect, why Mr. McNamara’s claim constructionis
`
`different from the plain and ordinary meaning,or that his opinion and
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`conclusion allegedly are based on an incorrect standard. Jd. According to
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`Petitioner, at best, Patent Ownerillustrates that Mr. McNamarafailed to
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`explain the difference between the “broadest reasonable construction” and
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`the “plain and ordinary meaning.” Id.
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`Petitioner also argues Mr. McNamara’s declaration is consistent with
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`the Board’s construction of “control device” and the remaining claim terms,
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`which were giventheir plain and ordinary meaning.
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`/d. at 5—6 (citing Dec.
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`10; Ex. 1003 § 10). Regarding the claim term “control device,” as an
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`example, Petitioner refers to Mr. McNamara’s statement that “‘Frossard
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`further states that the receiver-decoder means ‘decodes this message’ thatit
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`received and ‘addresses the corresponding commandsto equipment3 itself,
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`causing an immediate or deferred shutdown depending on the application
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`underconsideration.’” Jd. at 6 (quoting Ex. 1003 741). Petitioner argues
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`Frossard performing numerous operations such as decoding and addressing
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`is consistent with the Board’s construction of “control device” that includes
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`performing “a numberof operations.” Jd. Petitioner also argues another
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`example of Mr. McNamara’s consistency with the Board is disclosed in Mr.
`coe
`McNamara’s statementthat “‘the CPU4is acting as a control deviceasitis
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`
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`performing actions and operations on the ignition system and fuel pump.’”
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`Id. (quoting Ex. 2003, 164:16—18). Petitioner further argues Mr. McNamara
`also states “‘I agree with the PTAB’s construction that control device is |
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`generally something that performs an operation or function or action; the
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`transmitter is, yes, the transmitter is performing an operation.”” Jd. (quoting
`Ex. 2003, 166:11—15).
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`Weagree with Petitioner. Mr. McNamarastated that he applied the
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`plain and ordinary meaning as understood by a person having ordinary skill
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`in the art. Ex. 1003 § 10; Ex. 2003, 152:14-18. Wealso agree with
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`Petitioner that Patent Owner’s reliance on Mr. McNamara being unable to
`differentiate between the “broadest reasonable construction” and the
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`“ordinary and customary understanding” is misplaced because the difference
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`between the two standardsis a legal question. Moreover, we agree with
`
`Petitioner that Patent Owner’s argumentfails to demonstrate how Mr.
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`McNamara’s claim construction is incorrect, why Mr. McNamara’s claim
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`construction is different from the plain and ordinary meaning,or that Mr.
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`McNamara’s opinion and conclusion allegedly are based on anincorrect
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`standard.
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`Mr. McNamara’s declaration is consistent with the Board’s
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`construction of “control device” and the remaining claim terms, which were
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`given their plain and ordinary meaning. Dec. 10; Ex. 1003 7 10. For
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`instance, Mr. McNamarastates “Frossard further states that the receiver-
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`decoder means‘decodesthis message’ that it received and ‘addresses the
`
`corresponding commandsto equipment3 itself, causing an immediate or
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`deferred shutdown depending on the application under consideration.”
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`Ex. 1003 7 41. Frossard’s performance of numerousoperations such as
`
`decoding and addressing is consistent with the Board’s construction of
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`“control device”that includes performing ‘“‘a numberofoperations.”
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`Compare e.g., Dec. 10, with Ex. 1003 441. Another example of Mr.
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`McNamara’s consistency with the Boardis disclosed in Mr. McNamara’s
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`statementthat “the CPU 4 is acting as a control deviceas it is performing
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`actions and operations on the ignition system and fuel pump.” Compare
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`Dec. 10, with Ex. 2003, 164:16—-18. Moreover, Mr. McNamaraalsostates,
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`“T agree with the PTAB’s construction that control device is generally
`
`something that performs an operation or function or action; the transmitter
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`is, yes, the transmitter is performing an operation.” Ex. 2003, 166:11—15.
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`Accordingly, we determine Mr. McNamara’s testimonyis reliable and
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`we will accord it appropriate weight in our analysis that follows.
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`C.
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`Alleged Anticipation of Claims 26, 29, 33, 42, 48, and 68 by Frossard
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`1.
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`Frossard (Ex. 1005)
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`Frossard describes a system for controlling shut down of movable or
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`mobile equipment and locating the movable or mobile equipment. Ex. 1005,
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`2:1-2. Figure 1 is reproduced below.
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`DBD
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`CALL BY TELEPHONE
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`ADORESS CODE + ORDER
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`FIG.1.
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`Q
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`FROM TRE MINITEL ACCESS CODE + INTERVENTION ORDER
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`Figure | illustrates movable or mobile equipment3 containing
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`receiver-decodercircuits 4 for an order message to shut down movable or
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`mobile equipment 3. Jd. at 5:7~-12. In addition, Figure 1 shows a scenario in
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`which equipment3 is stolen, the owneror authorized person calls server 1 to
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`communicate a shut down order of equipment 3. Jd. at 9:14-17. After
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`server | validates the shut down order, the shut downorderis transmitted to
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`equipment 3. Jd. at 9:23-24. Figure 2, which is reproduced below, provides
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`a more detailed explanation of how equipment3 is shut down.
`paar
`FIG.2,
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`
` 3
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`Figure 2 illustrates receiver-decodercircuits 4 and equipment
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`interface 5 from Figure 1. Jd. at 3:26—27, 7:21-23. Shutdowncircuit 423
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`controls immediate or deferred shut down of equipment 3. Jd. at 9:28-10:3.
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`Whenshut down of equipment 3 occurs, an electrical contact that activates
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`the starter is broken. Jd. at 10:13-21.
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`2.
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`Discussion
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`a.
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`Frossard Discloses the “A to B to C” System/Method ofIndependent
`Claims 26, 42, and 48
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`The parties argue whether Frossard discloses the “A to B to C”
`system/method of independentclaims 26, 42, and 48.’ PO Resp. 21-24;
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`7 Rach ofthe three instituted independent claims 26, 42, and 48recite three
`control devices, with one control device located at the vehicle, and the other
`two control devices located remote from the vehicle. In claims 26 and 48,
`the “first control device” is located at the vehicle and the “second control
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`Reply 7-14. 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.
`Petitioner argues Frossard’s telephone and Minitel are two examples
`
`of disclosures of a “first control device” as recited in claim 42 and similarly
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`recited in claims 26 and 48. Pet. 13, 18 (citing Ex. 1005, 4). Moreover,
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`Petitioner argues the access code and corresponding intervention order is an
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`example ofthe first signal, which is transmitted from thefirst control device
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`as recited in claim 42 andsimilarly recited in claims 26 and 48. Pet. 18; see
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`also Pet. 13 (quoting Ex. 1005, 4). Petitioner refers to the combination of
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`Frossard’s server 1 and network 2 as disclosing a “second control device” as
`recited in claims 26, 42, and 48. Pet. 12, 21 (citing Ex. 1005, 4, Figs. 1, 4;
`
`Ex. 1003 {{ 46, 70). In addition, Petitioner argues Frossard’s receiver
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`-decodercircuits 4 receiving “‘an order message to shut down the
`
`device” and “third control device” are located remote from the vehicle. In
`claim 42, the “third control device” is located at the vehicle, and “first
`control device” and “second control device” are located remote from the
`vehicle. In all three challenged independentclaims, the “second control
`device”is the intermediate control device between the “first control device”
`and the “third control device.” Patent Ownerrefers to the “third control
`device” as being the control device within the vehicle that receives a signal
`from the intermediate “second control device,” and refers to the “first
`control device” as being remote from the vehicle that sendsa signal to the
`intermediate “second control device.” PO Resp. 19-20. Patent Owner’s
`nomenclature refers to the “first control device” as being the control device
`located remote from the vehicle, which in turn sendsa signal to an
`intermediate “second control device” located remote from vehicle, which in
`turn sends a signalto a “third control device” located at the vehicle. Jd. at
`20. To avoid confusion, we, thus, refer to Patent Owner’s nomenclature
`whendiscussing Patent Owner’s argumentsto identify features recited in
`claims 26, 42, and 48.
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`equipment’” discloses receiving a secondsignal asrecited in claims 26, 42,
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`and 48. Pet. 10, 19 (quoting Ex. 1005, 3). Petitioner argues Frossard’s
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`receiver-decodercircuits 4 discloses the claimed “third control device”as
`
`recited in claim 42 and similarly recited in claims 26 and 48. Pet. 9-10, 19
`
`(citing Ex. 1005, 5). Petitioner further argues Frossard’s control inhibition
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`means being commanded byreceiver-decodercircuits 4 in order to ensure
`
`that the equipmentis switched to shutdown,startup, or standby status
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`discloses the “third signal” as recited in claim 42 and similarly recited i