Trials@uspto.gov
`571-272-7822
`
`Paper 8
`Date: February 17, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`COXCOM,LLC,
`Petitioner,
`
`Vv.
`
`JOAO CONTROL & MONITORING SYSTEMS, LLC,
`Patent Owner.
`
`Case IPR2015-01760
`Patent 6,549,130 Bl
`
`Before HOWARD B. BLANKENSHIP, STACEYG. WHITE,and
`JASON J. CHUNG, Administrative Patent Judges.
`
`CHUNG,Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 CFR. § 42.108
`
`INTRODUCTION
`
`Petitioner, Coxcom, LLC,filed a Petition to institute an inter partes
`
`review of claims 1, 8, 10, 12, 15, 17, 98, 119, 124, 145, and 149 (“the
`
`challenged claims”) of U.S. Patent No. 6,549,130 B1 (“the ’130 patent”).
`
`
`571-272-7822
`
`Paper 8
`Date: February 17, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`COXCOM,LLC,
`Petitioner,
`
`Vv.
`
`JOAO CONTROL & MONITORING SYSTEMS, LLC,
`Patent Owner.
`
`Case IPR2015-01760
`Patent 6,549,130 Bl
`
`Before HOWARD B. BLANKENSHIP, STACEYG. WHITE,and
`JASON J. CHUNG, Administrative Patent Judges.
`
`CHUNG,Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 CFR. § 42.108
`
`INTRODUCTION
`
`Petitioner, Coxcom, LLC,filed a Petition to institute an inter partes
`
`review of claims 1, 8, 10, 12, 15, 17, 98, 119, 124, 145, and 149 (“the
`
`challenged claims”) of U.S. Patent No. 6,549,130 B1 (“the ’130 patent”).
`
`
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`IPR2015-01760
`Patent 6,549,130 Bl
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`Paper 1 (“Pet.”). Patent Owner, Joao Control & Monitoring Systems, LLC,
`
`filed a Preliminary Response pursuantto 35 U.S.C. § 313. Paper 7 (“Prelim.
`
`Resp.”).
`
`Wehave authority to determine whetherto institute an inter partes
`
`review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Upon consideration of the
`
`Petition and the Preliminary Response, and for the reasons explained below,
`
`we determinethat the information presented showsa reasonable likelihood
`that Petitioner would prevail with respect to claims 1, 8, 10, 12, 17, 98, 119,
`
`124, 145, and 149. See 35 U.S.C. § 314(a). Accordingly, we institute an
`
`inter partes review of these claims.
`
`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 Asserted Grounds
`
`Petitioner identifies the following as asserted grounds of
`
`unpatentability:
`
`
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`1
`
`2
`
`1,
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`8, 12,
`9% ’
`
`15,
`
`>
`
`17, 98
`>
`
`>
`
`
`References|Basis Challenged Claims
`
`
`Koether (Ex. 1008)
`§ 103(a)
`145, and 149
`
`
`
`(Ex. 1009)? § 103(a)|10,15, 119, and 124
`
`Koether and Crater
`
`C. The ’130 Patent
`
`The °130 patent is directed to controlling a premises. Ex. 1001, Abs.
`
`The ’130 patent describes three control devices: a first control device is
`
`located at a premises, a second control device is located remote from the
`
`premises, and a third control device is located remote from the premises and
`
`remote from the second control device. Jd. Thefirst control device
`
`generatesa first signal in response to a secondsignal 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
`
`In some
`responseto a third signal from the third control device. Jd.
`instances, the first control device performsthe functions of the third control
`
`device, and vice-versa. Jd. at 100:1—27.
`
`'U.S. Patent No. 5,875,430, filed May 2, 1996.
`2 The relevant sections of the Leahy-Smith America Invents Act (“AIA”),
`Pub. L. No. 112-29, took effect on March 16, 2013. Because the application
`from whichthe ’130 patent issued wasfiled before that date, our citations to
`Title 35 are to its pre-AIA version.
`3 U.S. Patent No. 5,805,442,filed May 30, 1996.
`
`3
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`Patent 6,549,130 B1
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`D. The Challenged Claims
`
`Petitioner challenges claims 1, 8, 10, 12, 15, 17, 98, 119, 124, 145,
`
`and 149. Pet. 3. Claims 1, 98, and 145 are independent. Claim 1 is
`
`illustrative and reproduced below:
`
`1. A control apparatus, comprising:
`
`a first contro! 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 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,
`
`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 device to the first control device, and further
`wherein the secondsignal is automatically received bythefirst
`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. Claim Construction
`
`As acknowledgedbythe parties, the ’130 patent has expired. See Pet.
`
`8; Prelim. Resp. 11. We construe expired patent claims accordingto the
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`standard applied by the district courts. See In re Rambus Inc., 694 F.3d 42,
`46 (Fed. Cir. 2012). Specifically, we apply the principles set forth in
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). “In
`determining the meaning of the disputed claim limitation, we look
`
`principally to the intrinsic evidence of record, examining the claim language
`
`itself, 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, 415 F.3d at 1312-17). “Although wordsin
`
`a claim are generally given their ordinary and customary meaning, a
`
`patentee may choose to be his own lexicographer and use terms in a manner
`
`other than their ordinary meaning,as long as the special definition of the
`
`term is clearly stated in the patent specification or file history.” Vitronics
`
`Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
`
`Patent Ownerarguesthat the terms“first signal,” “second signal,”
`
`“third signal,” “automatically received,” and “at least one of activating, de-
`
`activating, disabling and re-enabling,” should be construed according to
`
`Patent Owner’s constructions; however, we are not persuaded that express
`
`constructionsof“first signal,” “second signal,”“third signal,”
`
`“automatically received,” and “at least one of activating, de-activating,
`
`disabling and re-enabling,” are necessary in orderto resolve the disputes
`
`currently before us. See Prelim. Resp. 18-20. Thus, we discern no need to
`
`provide express constructions for these termsat this time. Vivid Techs., Inc.
`
`v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those
`
`terms need be construed that are in controversy, and only to the extent
`
`necessary to resolve the controversy.”).
`
`
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`Werecognize, however, a need to provide an express construction for
`“premises”, “remote,”and “located at.” Patent Ownerasserts that the terms
`
`“premises”, “remote,” and “located at” are defined expressly in the
`
`prosecution history of a related application. Prelim. Resp. 20-22. Patent
`
`Ownerseeksto rely upon a statement made in the remarksfiled on
`
`November26, 2006, during prosecution of the patent application that issued
`
`as U.S. Patent No. 7,277,010 (“the ’010 patent”) (Ex. 2002). Jd.
`
`In addition,
`
`Patent Ownerseeksto rely upon a statement made in the remarksfiled on
`
`November23, 2007, during prosecution of the patent application that issued
`
`as U.S. Patent No. 7,397,363 (“the ’363 patent”) (Ex. 2003). Jd. This
`
`statement was madeseveral years after the issuance of the ’130 patent. See
`
`Ex. 1001, at [45] (April 15, 2003 issuance date). The °010 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, 73.
`
`Asthe Federal Circuit has noted, “[a] statement made during
`
`prosecution of:related patents may be properly considered in construing a
`
`term commonto those patents, regardless of whether the statementpre- or
`
`post-dates the issuance of the particular patent at issue.” Teva Pharm. USA,
`Inc. v. Sandoz, Inc., 789 F.3d 1335, 1343 (Fed. Cir. 2015) (citing Microsoft
`Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350 (Fed. Cir. 2004)).
`Explicit definitions for “premises,”
`“remote,” and “located at” were
`
`99 66.
`
`provided during prosecution ofthe related application. See Ex. 2002, 4—5,
`
`10-11; Ex. 2003, 3-4, 8-9. We have reviewedthese definitions and, on this
`
`record, we determinethat the inventor of both the ’130 patent and °363
`patent acted as his own lexicographerby setting forth clear definitions
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`during prosecution. See Vitronics, 90 F.3d at 1582; Teva, 789 F.3d at 1343.
`
`Thus, we adopt the following constructions for purposes ofthis decision.
`eae
`ee ee Ea pe ee
`erm
`Citatio
`‘Constructio
`Premises
`Prelim. Resp.
`20-21; Ex. 2002,|grounds or parcel of land
`4; Ex. 2003, 8-9|associated with the building or the
`.
`structure, or a building or structure
`or a portion, room,or office, of or
`in the building orstructure, 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‘
`Ex. 2002, 10-11|external from,or at a distance
`from or distant from, or not
`located in.
`Situated at, situated in, or situated
`Prelim. Resp.
`Located at
`21-22; Ex. 2003,|on.
`8; Ex. 2002, 5
`
`4 Patent Owner’s definition of “remote”in the Preliminary Response is
`“separate and apart from,” whereas Patent Owner’s definition of“remote”in
`the prosecution history is “separate and apart from, or external from, or at a
`distance from or distant from, or not located in.” Prelim. Resp. 21; Ex.
`2002, 10-11; Ex. 2003, 3-4. Patent Owner proposes adopting the definition
`of “remote” from the prosecution history. Prelim. Resp. 21. We, thus,
`consider this discrepancy as a typographical error and adopt the definition
`from the prosecution history. Ex. 2002, 10-11; Ex. 2003, 3-4.
`
`7
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`B.
`
`Alleged Obviousness of Claims 1, 8, 12, 15, 17, 98, 145, and 149 by
`Koether and a Person Having Ordinary Skill in the Art
`
`1.
`
`Prior Art — Koether
`
`Koetherhas a filing date of May 2, 1996. Ex. 1008 § 22. The ’130
`
`patent wasfiled on March 29, 1999 andis a continuation of U.S. Patent No.
`
`5,917,405, which wasfiled on July 18, 1996; U.S. Patent No. 5,917,405 is a
`
`continuation-in-part of several earlier filed applications. Jd. at {] 22, 63.
`
`Petitioner contends claims 1, 8, 12, 15, 17, 98, 145, and 149, whichrecite
`
`“premises,” cannot be entitled to a filing date earlier than July 18, 1996. Pet.
`
`12-13. On this record, we are persuadedthat the subject matter of claims1,
`8, 12, 15, 17, 98, 145, and 149 cannotbeentitled to a filing date earlier than
`
`July 18, 1996, becausethatis the filing date of the earliest priority
`
`application that describes “premises.” Koether, consequently, has an earlier
`
`effective date under 35 U.S.C. § 102(e)(2) than claims 1, 8, 12, 15, 17, 98,
`
`145, and 149.
`
`2.
`
`Koether (Ex. 1008)
`
`Koether describes a smart commercial kitchen networkthat, in real-
`
`time, monitors and controls the maintenanceandrepair of kitchen or
`
`restaurant appliances. Ex. 1008, 3:50—53. Figure 1 is reproduced below.
`
`
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`~
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`ON
`eee
`
`SEDER 510
`
`
` VEHICLE
`
`195
`
`SERVICE
`
`Figure 1 illustrates kitchen base stations 150 within respective cells
`
`105. Id. at 5:3-5. Each kitchen basestation 150 is capable of
`
`communicating through wireless means with corresponding kitchen
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`appliances 110. Jd. at 5:5-8. Figure 2 is reproduced below.
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`
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`(i a is ln ee oe ee ey
`
`wee ee ee eet
`
`167
`o)
`
`150
`
`
`
`\
`
`wy
`‘
`
`17S
`
`18G
`
`Figure 2 illustrates kitchen base station 150 communicating with
`
`microprocessor based 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. Id. at 5:60—
`
`6:9.
`
`3.
`
`The Parties’ Contentions for Claims 1, 8, 12, 17, 98, 145, and 149
`
`Petitioner asserts that the subject matter of claims 1, 8, 12, 17, 98,
`
`145, and 149 would have been obviousin view of Koether and knowledge of
`
`the ordinary skilled artisan under 35 U.S.C. § 103(a). Pet. 13-39. Petitioner
`
`provides a limitation-by-limitation analysis of where each limitation of
`
`10
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`claims 1, 8, 12, 17, 98, 145, and 149 allegedly is taught in Koether. Jd.
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`Petitioner also relies upon a Declaration of Mr. Richard Bennett, who has
`
`been retained as an expert witness by Petitioner for the instant proceeding.
`
`Ex. 1002.
`
`Weare persuadedthat the present record supports the contention that
`
`Koether teaches a smart commercial kitchen network that monitors in real-
`
`time and controls the maintenance and repair of kitchen or restaurant
`
`appliances, which teachesthe limitations of claim 1, 98, and 145. Pet. 13—
`
`39 (citing Ex. 1008, 3:50-53). The present record also sufficiently supports
`
`the contention that Koether teaches kitchen base stations 150 communicating
`with microprocessor based 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, which
`
`teachesthe limitations of claims 1, 98, and 145. Pet. 13-39 (pinpoint
`
`citations omitted).
`
`Weare persuadedthat the present record supports the contention that
`
`Koether’s microprocessor.controller 140 communicating with kitchen
`
`appliances 110 using RF communicationsteachesthe limitations of claim 8.
`
`Pet. 26 (citing Ex. 1008, Figs. 1-2, 4:25—26).
`
`Weare persuadedthat the present record supports the contention that
`Koether’s control center receiving diagnostic information from kitchen
`appliances teachesthe limitations of claim 12. Pet. 26—29 (citing Ex. 1008)
`
`(pinpoint citations omitted).
`
`—
`
`Petitioner relies on Koether’s turning off a kitchen appliance and
`
`informing control center 170—asserting it would have been obviousto have
`
`1]
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`microprocessorcontroller 140 communicate a signal to the control center
`
`notifying that turning off the kitchen appliance is complete—to teach the
`
`limitations of claim 17. Pet. 32—33 (citing Ex. 1008) (pinpointcitations
`
`omitted).
`
`Weare persuadedthat the present record supports the contention that
`
`Koether monitoring a kitchen appliance and informing control center 170 of
`
`diagnostic information teachesthe limitations of claim 149. Pet. 38-39
`
`(citingEx. 1008) (pinpoint citations omitted).
`
`Patent Owner, however, argues that Koetherfails to teach a “second
`
`control device”that is “located at a location remote from the premises”
`
`(emphasis added) because each of Koether’s base stations covers an entire
`
`cell and, thus, is associated with the kitchen appliances (located in the same
`
`cell as the base station) with which it communicates. Prelim. Resp. 20-21,
`
`29-33.
`
`Asdiscussed supra in Part II.A., we adopt Patent Owner’s proposed
`
`construction for “premises” (as stated on pages 20-21 of the Preliminary
`Response) as explicitly defined in the prosecution history, 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, commercialoffice, structure, equipment,facility, —
`
`machine, rig, assembly line, or edifice” (emphasis added). Prelim. Resp.
`
`20-21 (citing Ex. 2002, 4; Ex. 2003, 8-9). Thus, the construction of
`“premises” includes a “portion”of a building, structure, or office.
`Accordingly, we are not persuaded by Patent Owner’s argumentthat each
`
`12
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`kitchen base station in Koether must be located on the same “premises” as
`
`the kitchen appliances with which it communicates, andis, therefore, not
`
`remote from the premises. Rather, Koether teaches that each kitchen base
`station is some distance from at least one appliance withinits cell. Pet. 13—
`
`39 (citing Ex. 1002 | 34; Ex. 1008, Fig. 1; 5:3—8; 5:20-25; 4:15-19; 5:16—
`
`19). Therefore, at this stage of the case, we find that Koether teaches a
`
`kitchen base station that may be in a different portion of a building or room
`
`from an appliance with which it communicates—i.e., remote from the
`
`premises. Seeid.
`
`.
`
`Accordingly, we have reviewed the proposed groundchallenging
`
`claims 1, 8, 12, 17, 98, 145, and 149 as obvious over Koether andlevelof.
`
`ordinary skill in the art and we are persuadedthat Petitioner has established
`‘a reasonable likelihood ofprevailing in its challenge to claims 1, 8, 12, 17,
`
`98, 145, and 149 on this ground.
`
`4.
`
`The Parties’ Contentionsfor Claim 15
`
`Petitioner asserts that the subject matter of claim 15 would havebeen °
`
`obvious in view of Koether and knowledge ofthe ordinary skilled artisan
`
`under 35 U.S.C. § 103(a). Pet. 29-32. Petitioner providesa limitation-by-
`
`limitation analysis of where each limitation of claim 15 allegedly is taught in
`
`_ Koether. Jd.
`
`Weare not persuadedthat the present record supports the contention
`
`that Koether’s message warning on a kitchen appliance leads to dispatching
`
`a repair person using a telephoneteachesor suggests “the apparatus
`
`provides information regarding the occurrence in .
`
`. .a telephonecall”
`
`(emphasis added). Pet. 29-32 (citing Ex. 1008) (pinpoint citations omitted).
`
`13
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`Accordingly, we have reviewedthe proposed ground challenging
`
`claim 15 as obvious over Koether and level of ordinary skill in the art and
`
`“ we are not persuaded,that Petitioner has established a reasonable likelihood
`
`of prevailing in its challenge to claim 15 on this ground.
`
`C.
`
`Alleged Obviousness of Claims 10, 15, 119, and 124 in View of:
`Koether, Crater, and Knowledgeofthe Ordinary Skilled Artisan
`
`1.
`
`Prior Art — Crater
`
`Petitioner contends claims 10, 15, 119, and 124, whichrecite
`
`' “premises,” cannot be entitled to a filing date earlier than July 18, 1996. Pet.
`
`12-13. On this record, we agree with Petitioner that claims 10, 15, 119, and
`
`124 cannotbeentitled to a filing date earlier than July 18, 1996, because that
`
`is the filing date of the earliest priority application that describes “premises.”
`
`Crater, consequently, has an earlier effective date than claims 10, 15, 119,
`
`and 124.
`
`2.
`
`Crater (Ex. 1008)
`
`Crater teaches a monitoring computer playing audio and video
`
`segments stored on a computer memory, and the audio and video segments
`
`being captured on from a remote location. Ex. 1008, 3:5—34, 4:58-67, Abs.
`
`3.
`
`The Parties’ Contentionsfor Claims 10, 119, and 124
`
`Petitioner asserts that the subject matter of claims 10, 119, and 124
`
`would have been obvious in view of Koether, Crater, and knowledgeofthe
`
`ordinary skilled artisan under 35 U.S.C. § 103(a). Pet. 39-43, 46-47.
`
`Petitioner provides a limitation-by-limitation analysis of where each
`
`14
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`limitation of claims 10, 119, and 124 allegedly is taught in Koether, Crater,
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`and knowledge ofthe ordinary skilled artisan. Jd.
`
`Weare persuadedthat the present record supports Petitioner’s
`
`contention that Crater teaches a monitoring computer playing audio and
`
`video segments stored on a computer memory,and the audio and video
`
`segments are captured from a remote location, which teaches or suggests the
`
`limitations of claims 10, 119, and 124. Jd.
`
`Patent Owner arguesthat claims 10, 119, and 124 are patentable over
`
`Koether, Crater, and knowledge ofthe ordinary skilled artisan for at least the
`
`reasons discussed supra in Part II.B.3. Prelim. Resp. 33-34. On the present
`
`record, we disagree with Patent Ownerfor the same reasons discussed supra
`
`in Part II.B.3.
`
`Wehave reviewed the proposed ground challenging claims 10, 119,
`
`and 124 as obvious over Koether, Crater, and knowledgeof the ordinary
`
`skilled artisan, and we are persuadedthat Petitioner has established a
`
`reasonable likelihood of prevailing in its challenge to these claims on this
`
`ground.
`
`4.
`
`The Parties’ Contentions for Claim 15
`
`Petitioner asserts that the subject matter of claim 15 would have been
`
`obvious in view of Koether, Crater, and knowledgeofthe ordinary skilled
`
`artisan under 35 U.S.C. § 103(a). Pet. 43-46. Petitioner provides a
`
`limitation-by-limitation analysis of where each limitation of claim 15
`
`allegedly is taught in Koether and Crater. Id.
`
`Petitioner relies on declaration evidencetoillustrate that it would have
`
`been obvious to modify Crater’s playing of audio and video segments or
`
`15
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`alarms, mechanicalindications, printing, or storage of data for subsequent
`
`display to a “voice message.” Pet. 45—46 (citing Ex. 1002 f¥ 53-54). We
`
`are not persuaded that the present record supports the contention that the
`
`cited declaration evidence renders an obviousnessrationale of, prior to July
`
`1996, Crater’s playing of audio and video segments or alarms, mechanical
`
`indications, printing, or storage of data for subsequentdisplay to a “voice
`
`message.” Thus, we are not persuadedthat the present record supports the
`
`contention that the cited declaration evidence coupled with Crater’s playing
`
`of audio and video segments or alarms, mechanical indications,printing, or
`storage of data for subsequent display, teaches or suggests “apparatus
`provides information regarding the occurrencein at least one ofa telephone
`call, a voice message, a pager message, an electronic mail message, and a
`fax transmission.” Pet. 43-46 (citing Ex. 1008; Ex. 1002) (emphasis added)
`(pinpoint citations omitted).
`
`Accordingly, we have reviewed the proposed ground challenging
`
`claim 15 as obvious over Koether, Crater, and level of ordinary skill in the
`
`art, and weare not persuadedthat Petitioner has established a reasonable
`
`likelihood of prevailing in its challenge to claim 15 on this ground.
`
`II.
`
`CONCLUSION
`
`For the foregoing reasons, based on the information presented in the
`
`Petition and the Preliminary Response, we are persuaded that there is a
`
`reasonable likelihood that Petitioner would prevail in showing the
`
`unpatentability of claims 1, 8, 10, 12, 17, 98, 119, 124, 145, and 149 of the
`
`°130 patent. We are not persuaded, however,that there is a reasonable
`
`16
`
`
`
`IPR2015-01760
`Patent 6,549,130 Bl
`
`likelihood that Petitioner would prevail in showing the unpatentability of
`claim 15 of the ’130 patent.
`
`Atthis stage of the proceeding, we have not madea final
`
`determination on the patentability of the challenged claims.
`
`IV. ORDER
`
`Accordingly,it is
`
`ORDEREDthat, pursuant to 35 U.S.C. § 314, an inter partes review
`
`of U.S. Patent No. 6,549,130 B1 is hereby instituted on the groundsthat
`
`claims 1, 8, 12, 17, 98, 145, and 149 are asserted to be unpatentable under
`
`35 U.S.C. § 103(a) in view of Koether and knowledge ofthe ordinary skilled
`
`artisan; claims 10, 119, and 124 are asserted to be unpatentable under
`
`35 U.S.C. § 103(a) in view of Koether, Crater, and knowledge of the
`
`ordinary skilled artisan;
`
`FURTHER ORDEREDthatno other ground of unpatentability
`
`alleged in the Petition for any claim is authorized for this inter partes
`review; and
`|
`
`FURTHER ORDEREDthat pursuant to 35 U.S.C. § 314(c) and
`
`37 C.F.R. § 42.4, notice is hereby given ofthe institution ofa trial; the trial
`
`commencesonthe entry date of this decision.
`
`17
`
`
`
`IPR2015-01760
`Patent 6,549,130 Bl
`
`PETITIONER:
`
`Mitchell G. Stockwell
`Kilpatrick Townsend & Stockton LLP
`mstockwell@kilpatricktownsend.com
`
`D. Clay Holloway
`Kilpatrick Townsend & Stockton LLP
`cholloway@kilpatricktownsend.com
`
`PATENT OWNER:
`
`Raymond A.Joao
`rayjoao@optonline.net
`
`René A. Vazquez
`Heninger Garrison Davis, LLC
`rvazquez@hgdlawfirm.com
`
`18
`
`
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