Trials@uspto.gov
`571-272-7822
`
`Paper 7
`Date: January 28, 2016
`
`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 HOWARD B. BLANKENSHIP, STACEY G. WHITE,and
`JASON J. CHUNG, Administrative Patent Judges.
`
`CHUNG,Administrative Patent Judge.
`
`DECISION
`Institution of Jnter Partes Review
`37 CFR. § 42.108
`
`I.
`
`INTRODUCTION
`
`Petitioner, Volkswagen Group of America,Inc., filed a Petition to
`
`institute an inter partes review of claims 26, 31, 38, 42, 43, 48, 60, 63, 64,
`73, 74, 85, 91, 92, 138, 139, and 143 (“the challenged claims”) of U.S.
`
`
`571-272-7822
`
`Paper 7
`Date: January 28, 2016
`
`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 HOWARD B. BLANKENSHIP, STACEY G. WHITE,and
`JASON J. CHUNG, Administrative Patent Judges.
`
`CHUNG,Administrative Patent Judge.
`
`DECISION
`Institution of Jnter Partes Review
`37 CFR. § 42.108
`
`I.
`
`INTRODUCTION
`
`Petitioner, Volkswagen Group of America,Inc., filed a Petition to
`
`institute an inter partes review of claims 26, 31, 38, 42, 43, 48, 60, 63, 64,
`73, 74, 85, 91, 92, 138, 139, and 143 (“the challenged claims”) of U.S.
`
`
`
`IPR2015-01611
`Patent 6,549,130 B1
`
`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. Paper 6 (“Prelim. Resp.”).
`
`Wehave authority to determine whetherto institute an inter partes
`
`review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Upon consideration of the
`
`Petition and the Preliminary Response, and for the reasons explained below,
`
`we determine that the information presented showsa reasonablelikelihood
`that Petitioner would prevail with respect to claims 26, 31, 38, 42, 43, 48,
`
`60, 63, 64, 73, 74, 85, 91, 92, 138, 139, and 143. 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. 1-2; Paper 5, 2—7.
`
`B.
`
`The Asserted Grounds
`
`Petitioner identifies the following as asserted grounds of
`
`unpatentability:
`
`
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`IPR2015-01611
`Patent 6,549,130 B1
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`Kniffin (Ex. 1006)!
`
`§ 102(e|
`
`26, 38, 42, 43, 48,
`63, 73, 74, 91, and
`138
`
`
`
`
`
`Reference(s)|Basis—Challenged Claim(s)
`
`
`
`
`
`Kniffin § 103(a)|64, 85, and 92'
`
`Kniffin and Ryoichi
`cette|$1048
`
`Kniffin and Drori (Ex.
`.
`
`1008)! § 102(e)|60 and 139
`
`
`Kniffin and Neely (Ex.
`
`
`C.
`
`The °130 Patent
`
`The ’130 patentis directed to controlling a vehicle or premises. Ex.
`
`1001, Abs. The ’130 patent describes three control devices; a first control
`device is located at a vehicle or premises, a second control device is located
`remote from the vehicle or premises, and a third control device is located
`remote from the vehicle or premises and remote from the second control
`device. Jd. Thefirst control device generatesa first signal in response to a
`
`second signal from the second control device.
`
`/d. Thefirst control device
`
`can activate, de-activate, disable or re-enable, one or moreof “a respective
`
`'ULS. Patent No. 6,072,402, filed Jan. 9, 1992.
`* The relevantsections 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 was filed before that date, our citations to
`Title 35 are to its pre-AIA version.
`3 U.S. Patent No. 5,113,427, issued May 12, 1992.
`4U.S. Patent No. 5,081,667, issued Jan. 14, 1992.
`> U.S. Patent No. 4,602,127, issued July 22, 1986.
`
`3
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`
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`IPR2015-01611
`Patent 6,549,130 Bl
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`system, component, device, equipment, equipment system, and/or appliance,
`
`of a respective vehicle or premises with the first signal.” /d. The second
`
`control device generates the secondsignal in response toa 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.” Jd. at 81:19-21. In
`
`addition,
`
`least one of.a
`the third control device is at
`stationary device, a portable device, a hand-held
`device, a mobile device, a telephone, a cordless
`telephone, a cellular telephone, a home computer,
`a personal computer, a personal digital assistant, a
`television,
`an
`interactive television,
`a digital
`television, a personal communications device, a
`personal
`communications
`services
`device,
`a
`display telephone, a video telephone, a watch, and
`a two-way pager.
`Id. at 81:21-29.
`
`D.
`
`The Challenged Claims
`
`Petitioner challenges claims 26, 31, 38, 42, 43, 48, 60, 63, 64, 73, 74,
`
`85, 91, 92, 138, 139, and 143. Pet. 3. Claims 26, 42, 48, 91, and 138 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
`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 second signalis at
`least one of generated by and transmitted from a second control
`device, wherein the second control device is located at a
`
`
`
`IPR2015-01611
`Patent 6,549,130 B1
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`location which is remote from the vehicle, wherein the second
`signal is transmitted from the second control deviceto thefirst
`control device, and further wherein the secondsignal is
`automatically received by thefirst contro! 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
`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 chargelevel,
`and engine temperature, fire extinguishing equipment, radar
`equipment, hydraulic equipment, pneumatic equipment, a
`winch,a self-defense system, a weapon system, a gun, an
`electronic warfare system, a pumping device, sonar equipment,
`a locking device for preventing unauthorized accessto a vehicle
`compartment, and landing gear.
`
`II.
`
`ANALYSIS
`
`A,
`
`Claim Construction
`
`As acknowledgedbythe parties, the °130 patent has expired. See Pet.
`
`12; Prelim. Resp. 13. We construe expired patent claims according to the
`
`
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`IPR2015-01611
`Patent 6,549,130 Bl
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`standard applied bythe 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 ofthe 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). A patentee mayact
`
`as a lexicographer by giving a term a particular meaningin the specification
`
`with “reasonable clarity, deliberateness, and precision.” Jn re Paulsen, 30
`
`F.3d 1475, 1480 (Fed. Cir. 1994).
`
`Patent Ownerargues that the terms “remote” and “located at” are
`defined expressly in the prosecution history ofat least two related
`applications; however, we are not persuaded that express constructions of
`
`“remote” and “located at” are necessary in order to resolve the disputes
`
`currently before us. See Prelim. Resp. 23-25. 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.”).
`
`Werecognize, however, a need to provide an express construction for
`“control device.” Patent Owner acknowledgesthat the term “control device”
`
`is defined expressly in the prosecution history of a related application.
`
`Prelim. Resp. 20-21. Patent Ownerseeks to rely upon a statement madein
`
`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.
`
`
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`IPR2015-01611
`Patent 6,549,130 B1
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`2002). Jd. This statement was made several years after the issuance of the
`
`°130 patent. See Ex. 1001, at [45] (April 15, 2003 issuance date). The °130
`
`patent and the ’363 patent each descend from U.S. Patent Application Nos.
`
`08/683,828 and 08/622,749. See Ex. 1001, 73.
`
`Asthe Federal Circuit has noted, “[a] statement made during
`
`prosecution of related patents may be properly considered in construing a
`
`term commonto those patents, regardless of whether the statementpre- or
`
`post-dates the issuanceofthe particular patent at issue.” Teva Pharm. USA,
`Inc. v. Sandoz, Inc., 789 F.3d 1335, 1343 (Fed. Cir. 2015) (citing Microsoft
`
`Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350 (Fed. Cir. 2004)). An
`explicit definition for “control device” was provided in the related
`|
`application. See Ex. 2002, 6. We have reviewedthis definition and, on this
`
`record, we find it to be reasonable andinstructive to understanding the
`
`proper scopeof this claim term. See Paulsen, 30 F.3d at 1480. Thus, we
`
`adopt the following construction for purposesof this decision.
`
`numberof operations, actions, or functions.
`
`
`
`
`
`A device or a computer, or that part of adevice
`Prelim.
`Control
`
`Device Resp. 20—21;|or a computer, which performs an operation,
`Ex. 2002, 6|an action, or a function, or which performsa
`
`B.
`
`Alleged Anticipation of Claims 26, 38, 42, 43, 48, 63, 73, 74, 91, and
`138 by Kniffin
`
`1.
`
`Kniffin (Ex. 1006)
`
`Kniffin describes a secure entry system using radio frequencies to
`
`communicate with components throughout the system. Ex. 1006, Abs.
`
`Figure 4 is reproduced below.
`
`
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`IPR2015-01611
`Patent 6,549,130 Bl
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`CLEARINGHOUSE
`
`Figure 4 illustrates delivery truck 62 with electronic access control
`device 64 guarding against unauthorized opening.
`/d. at 8:5-14. A delivery
`companycalls clearinghouse 66 and identifies a sequence of deliveries for
`delivery truck 62.
`/d. at 8:15-17. The delivery company calls clearinghouse
`66 and clearinghouse 66 transmits the authorized schedule of stops to access —
`
`control device 64. Jd. at 8:17—24. If truck 62 visits an unauthorized
`
`location, access control device 64 senses either the absence of an
`
`identification device, or senses an identification device, which does not
`
`correspondto an authorized stop; in both cases, access control device 64
`
`restricts access.to the contents of truck 62. Id. at 8:40-44. Access control
`
`device 64 can take the same form as lock 12 as in Figure 1.
`
`/d. at 8:45-49.
`
`Figure | is reproduced below.
`
`
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`IPR2015-01611
`Patent 6,549,130 B1
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`Figure | illustrates a user using telephone Touch Tone pad 22
`
`communicating with clearinghouse 18 to access lock 12 that controls lock
`
`mechanism 32. Jd. at 2:25-43. In addition, lock 12 receiver 14 receives a
`
`radio transmission suchas a cellular telephone system. Jd. at 2:25—-30, 2:44—
`
`51.
`
`2.
`
`The Parties’ Contentions for Claims 26, 38, 42, 43, 48, 63, 73, 74, 91,
`and 138
`
`Petitioner asserts that the subject matter of claims 26, 38, 42, 43, 48,
`
`63, 73, 74, 91, and 138 is anticipated by Kniffin under 35 U.S.C. § 102(e).
`
`Pet. 13-40. Petitioner provides a limitation-by-limitation analysis of where
`
`each limitation of claims 26, 38, 42, 43, 48, 63, 73, 74, 91, and 138 allegedly -
`
`is disclosed in Kniffin.
`
`/d.
`
`Weare persuaded that the present record supports the contention that
`
`Kniffin discloses accessing or denying accessto delivery truck 62 with
`
`electronic access control device 64, which discloses the limitations in claims
`26, 42, 48, 63, 91, and 138. See Pet. 13-40 (citing Ex. 1006, 8:5—14). The
`present record also sufficiently supports the contention that Kniffin discloses
`
`a delivery companycalls clearinghouse 66 and identifies a sequence of
`deliveries for delivery truck 62, which discloses the limitations in claims 26,
`42, 48, 63, 91, and 138. Pet. 13-40 (citing Ex. 1006, 8:15-17). In addition,
`
`the present record supports the contention that Kniffin discloses the
`
`sequence is programmedusing a Touch Tonetelephone pad and
`clearinghouse 66 transmits the authorized schedule of stops to access control
`
`device 64, which discloses the limitations in claims 26, 42, 48, 63, 91, and
`
`138. Pet. 13-40 (citing Ex. 1006, 8:17—24). The present record supports the
`
`
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`IPR2015-01611
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`contention that Kniffin discloses if truck 62 visits an unauthorized location,
`
`access control device 64 senses either the absence ofan identification
`
`device, or senses an identification device, which does not correspondto an
`
`authorized stop; in both cases, access control device 64 restricts access to the
`
`contents of truck 62, which discloses the limitations in claims 26, 42, 48, 63,
`
`91, and 138. Pet. 13-40 (citing Ex. 1006, 8:40-44).
`
`Petitioner relies on Kniffin’s making a phonecall and establishing
`
`cellular telephone link 16; then providing status information to the user via
`
`cellular telephone link 16, which discloses the limitations of claim 38.
`
`Pet. 32-33 (citing Ex. 1006, 2:25-43, 2:62-3:6).
`
`Petitioner relies on Kniffin’s providing status information to the user
`
`via cellular telephone link 16 to disclose the limitations of claim 43. Pet.
`
`34-35 (citing Ex. 1006) (pinpoint citations omitted).
`
`Petitioner relies on Kniffin’s cellular telephone or conventional
`
`telephoneto disclose the limitations of claim 73. Pet. 37 (citing Ex. 1006,
`2:3 1-43).
`Petitioner relies on Kniffin’s voice synthesizer reporting to the user
`
`|
`
`whetheraccess is granted and the window periodto disclose the limitations
`
`of claim 74. Pet. 37 (citing Ex. 1006, 2:54-61).
`
`Patent Owner, however, argues that according to the Specification of
`
`the ’130 patent, each “control device” is separate and distinct from the
`
`“vehicle component” being controlled. Prelim. Resp. 21-23. Patent Owner,
`
`thus, contends that the vehicle componentincludes a lock system,as recited
`
`in the Specification of the ’130 patent and dependentclaim 49; put another
`
`way, Patent Owneralleges Kniffin’s access control device 64 cannotbe both
`
`a “control device” and a “vehicle component” because each “control device”
`
`10
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`IPR2015-01611
`Patent 6,549,130 B1
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`is separate and distinct from the “vehicle component.” Jd. at 25-35. We
`
`disagree with Patent Ownerthat the claimed “vehicle component” cannot be
`
`a subcomponentofa “control device.”
`
`At the outset, Kniffin’s access control device 64 senses either the
`
`absence ofan identification device, or senses an identification device, which
`
`does not correspond to an authorized stop; in both cases, access control
`
`device 64 restricts access to the contents of truck 62 (Ex. 1006, 8:40-44),
`
`whichis the sameas a “control device” defined supra in Part II.A. as “a
`device ... which performs an operation, an action, or a function.” Kniffin
`discloses that access control device 64 of Figure 4 includes a lock
`mechanism as in Figure 1. Pet. 15 (citing Ex. 1006, 8:46—48). Kniffin also
`discloses that lock 12 instructs. lock mechanism 32 to unlock and allow
`
`access. Pet. 15 (citing Ex. 1006, 3:64—-4:3). Kniffin’s lock mechanism 32,
`
`thus, corresponds to the vehicle componentdescribed in claims 26, 42, 48,
`91, and 138 because there is nothing precluding the claimed “vehicle
`
`component” from being a subcomponentof a “control device.” Pet. 16.
`
`Wehave considered Patent Owner’s argumentthat the Petition should
`
`be denied because claim 48 was previously rejected by the Patent Office
`
`based on Kniffin and the Examiner dropped the rejection of claim 48 based
`
`on Kniffin. Prelim. Resp. 36. Although 35 U.S.C. § 325(d) permits the
`
`Board to reject a petition merely for the reason that the sameor substantially
`
`the sameprior art or arguments were considered previously in another
`
`proceeding before the Office, it does not require the Board to do so. In this
`
`case, we decline to exercise our discretion to reject the Petition under
`
`35 U.S.C. § 325(d).
`
`11
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`IPR2015-01611
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`Accordingly, we have reviewed the proposed groundofanticipation
`
`by Kniffin against claims 26, 38, 42, 43, 48, 63, 73, 74, 91, and 138, and we
`
`are persuaded,at this juncture of the proceeding, that Petitioner has
`
`established a reasonable likelihood of prevailing in its challenge to claims
`
`26, 38, 42, 43, 48, 63, 73, 74, 91, and 138 on this ground.
`
`Alleged Obviousness ofClaims 64,-85, and 92 in View of: Kniffin and
`C.
`Spaur (Ex. 1016)°; Kniffin and Behr (Ex. 1017)’; Kniffin and Kubler (Ex.
`1018)8
`
`1.
`
`Priority Date
`
`Petitioner contends claims 64, 85, and 92, whichrecite “at least one of
`
`the Internet and the World Wide Web,” cannotbe entitled to a filing date
`
`earlier than March 27, 1996. Pet. 42 n.5. On this record, we agree with
`
`Petitioner that the subject matter of claims 64, 85, and 92 cannotbeentitled
`
`to a filing date earlier than March 27, 1996 becausethatis the filing date of
`
`the earliest priority application that describes the Internet or the World Wide
`
`Web. Spaur, Behr, and Kubler, consequently, have an earlier priority date
`
`than the subject matter of claims 64, 85, and 92.
`
`2.
`
`Spaur (Ex. 1016)
`
`Spaur teaches wirelessly linking with a vehicle using an Internet
`communications link to control a vehicle component. Ex. 1016, 2:42-48,
`
`3:13-20, 7:40-47, 12:51-54.
`
`6 U.S. Patent No. 5,732,074,filed Jan. 16, 1996.
`7U.S. Patent No. 5,808,566, filed June 23, 1995.
`8 U.S. Patent No. 5,726,984,filed Oct. 5, 1995.
`
`12
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`3.
`
`Behr (Ex. 101 7)
`
`Behrteachesan 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, Abs., 1:19-26, 9:38-42.
`
`4.
`
`Kubler (Ex. 1018)
`
`Kubler teaches a communication system using wired and wireless
`
`networks, including the Internet, to communicate between stationary and
`
`roaming devices, such as a vehicle-mounted computer terminal. Ex. 1018,
`
`Abs., 8:25-29.
`
`5,
`
`The Parties’ Contentions for Claims 64, 85, and 92
`
`Asevidence that one of ordinary skill in the art would have been
`
`aware of the use of internet technologyin such vehicle systems,Petitioner
`cites three patents, Spaur, Behr, and Kubler. Pet. 40-48. Weare persuaded
`
`that claims 64, 85, and 92 would have been obvious over the combined
`
`teachings of Kniffin and one of Spaur, Behr, or Kubler. Thus, we exercise
`
`our discretion to recognize Petitioner’s implicit argument that these claims
`
`would have been obvious overthe teachings of Kniffin and one of Spaur,
`
`Behr, or Kubler. See Garmin Int'l, Inc. et al. v. Cuozzo Speed Techs., Case
`
`IPR2012-00001, 2013 WL 5947691, at *10 (Jan. 9, 2013); aff'd sub nom, In
`| re Cuozzo Speed Techs., LLC, 793 F.3d 1297, 1301 (Fed. Cir. 2015), cert.
`granted, 72016 WL 205946 (U.S. Jan. 15, 2016) (No. 15-446).
`
`Specifically, we are persuadedthat the present record supports
`
`_Petitioner’s contention that Kniffin teaches a paging system,a cellular
`
`13
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`telephone system,or other RF carrier. We are persuadedthat the present
`
`record supports Petitioner’s contention that at least one of Spaur, Behr, or
`
`Kubler teaches a controlling a device over Internet communications; the
`
`combination of Kniffin and Spaur; Kniffin and Behr; or Kniffin and Kubler
`
`teaches the limitations of claims 64, 85, and 92. Pet. 40-46.
`
`Petitioner concludesthat one of ordinary skill in the art would have
`combined Kniffin’s system for accessing or denying access to a truck and
`Spaur, Behr, or Kubler’s controlling a device over Internet communications
`to have “the infrastructure of the Internet andits improved signal
`transmission capabilities.” Jd.
`Patent Owner argues that claims 64, 85, and 92 are patentable over
`Kniffin and Spaur; Kniffin and Behr; or Kniffin and Kubler for at least the
`
`reasons discussed supra in Part II.B.2. Prelim. Resp. 37. On the present
`
`record, we disagree with Patent Owner for the same reasons discussed supra
`
`in Part II.B.2.
`
`Wehave reviewedthe proposed groundchallenging claims 64, 85,
`
`and 92 as obvious over Kniffin and Spaur; Kniffin and Behr; or Kniffin and
`
`Kubler, and we are persuaded,at this juncture of the proceeding,that
`Petitioner has established a reasonable likelihood of prevailingin its
`challenge to claims 64, 85, and 92 on this ground.
`
`D.
`
`Alleged Obviousness ofClaim 31 in View ofKniffin and Ryoichi
`
`1.
`
`Ryoichi (Ex. 1007)
`
`Ryoichi teaches personal radio paging unit9, fixed radio station ST,
`
`and telephone unit TEL sending control signals from one device to the next
`
`device that culminates in the activation or deactivation of a vehicle system,
`
`14
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`such as unlocking the doors, turning on the headlights, or starting the engine.
`
`Ex. 1007, 5:16—6:9, 8:1-22, 9:1-10:27, Figs. 1, 5-7.
`
`2.
`
`The Parties’ Contentions for Claim 31
`
`Petitioner asserts that the subject matter of claim 31 would have been
`
`obvious in view of Kniffin and Ryoichi under 35 U.S.C. § 103(a). Pet. 48-
`
`51. Petitioner provides a limitation-by-limitation analysis of where each
`limitation ofclaim 31 allegedly is taught in Kniffin and Ryoichi. Jd.
`Weare persuadedthat the present record supports Petitioner’s
`contention that Ryoichi’s personal radio paging unit 9 generatesa calling
`-soundthat is detected by sensor 10 to control a handbrake teachesor
`
`suggests the limitations of claim 31. Pet. 50 (citing Ex. 1007, 8:1-22).
`Petitioner concludes that one ofordinary skill in the art would have
`
`combined Kniffin’s wireless system for accessing or denying access to a
`
`truck and Ryoichi’s wireless vehicle control system in order to provide a
`
`_system with easy installation that is cost-effective for equipping delivery
`
`trucks. Pet. 50-51.
`
`Patent Ownerarguesthat claim 31 is patentable over Kniffin and
`
`Ryoichi for at least the reasons discussed supra in Part II.B.2. Prelim. Resp.
`
`37. On the present record, we disagree with Patent Ownerfor the same
`
`reasons discussed supra in Part II.B.2.
`
`Wehavereviewed the proposed ground challenging claim 31 as
`
`obvious over Kniffin and Ryoichi, and we are persuaded,at this juncture of
`
`the proceeding, that Petitioner has established a reasonable likelihood of
`prevailing in its challenge to claim 31 on this ground.
`
`15
`
`
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`IPR2015-01611
`Patent 6,549,130 Bl
`
`E.
`
`Alleged Obviousness ofClaims 60 and 139 in View ofKniffin and
`Drori
`
`1.
`
`Drori (Ex. 1008)
`
`Drori teaches cellular telephone and automobile security systems that
`
`include a system that permits installing of a cellular phone and a controller
`
`in an automobile. Ex. 1008, 1:12—14, 1:67—2:5. In addition, Drori teaches
`
`communications system 10, used with telephone system 12, interposed
`
`between handset unit 14 and transceiver 16 of cellular telephone system 12.
`
`Id. at 3:58-64. Drori also teaches that system controller 20 receives inputs
`
`from a global positioning tracker via level conversion andfiltering circuits
`36. Id. at 4:44-48. Drori teaches that communications system 10 translates
`the tracking data input from the global positioning system into a location on
`
`amap.
`
`/d. at 5:9-17.
`
`2.
`The Parties’ Contentions for Claims 60 and 139
`Petitioner asserts that the subject matter of claims 60 and 139 would
`have been obviousin view of Kniffin and Drori under 35 U.S.C. § 103(a).
`Pet. 51-56. Petitioner provides a limitation-by-limitation analysis of where
`
`each limitation of claims 60 and 139 allegedly is taught in Kniffin and Drori.
`
`Td.
`
`The present record supports the contention that Drori teaches that
`
`system controller 20 receives inputs from a global positioning; subsequently,
`
`communications system 10 translates the tracking data input from the global
`
`positioning system into a location on a map, whichteachesthe limitations in
`claims 60 and 139. Pet. 51-56 (citing Ex. 1008) (pinpoint citations omitted).
`
`16
`
`
`
`IPR2015-01611
`Patent 6,549,130 Bl
`
`Petitioner concludesthat one of ordinary skill in the art would have
`
`combined Kniffin’s wireless system for accessing or denying access to a
`
`truck and Drori’s global positioning system in order to provide “a versatile
`
`cellular security system which is compatible with a wide variety of cellular
`telephones. Pet. 55—56 (citing 1008, 1:62-64).
`
`Patent Owner argues that claims 60 and 139 are patentable over
`
`Kniffin and Drori for at least the reasons discussed supra in Part II.B.2.
`
`Prelim. Resp. 37-38. On the present record, we disagree with Patent Owner
`
`for the same reasons discussed supra in Part II.B.2.
`
`Wehave reviewed the proposed ground challenging claims 60 and
`
`139 as obvious over Kniffin and Drori, and we are persuaded, atthis
`
`juncture of the proceeding, that Petitioner has established a reasonable
`likelihood ofprevailing in its challenge to claims 60 and 139 onthis ground.
`
`F.
`
`Alleged Obviousness ofClaim 143 in View ofKniffin and Neely
`
`1.
`
`Neely (Ex. 1015)
`
`Neely teaches a vehicular diagnostic system that helps repair
`malfunctionsand employs a portable communications control station. Ex.
`1015 (pinpoint citations omitted).
`
`2.
`
`The Parties’ Contentions for Claim 143
`
`Petitioner asserts that the subject matter of claim 143 would have been
`
`obviousin view of Kniffin and Neely under 35 U.S.C. § 103(a). Pet. 56-60.
`
`Petitioner provides a limitation-by-limitation analysis of where each
`
`limitation of claim 143 allegedly is taught in Kniffin and Neely. Jd.
`
`17
`
`
`
`IPR2015-01611
`Patent 6,549,130 Bl
`
`The present record supports the contention that Neely teaches a
`
`vehicular diagnostic system that helps repair malfunctions and employsa
`
`~ portable communicationscontrol station, which teaches the limitations in
`
`claim 143. Pet. 51-56 (citing Ex. 1008) (pinpoint citations omitted).
`
`Petitioner concludesthat one of ordinary skill in the art would have
`
`combined Kniffin’s wireless system for accessing or denying access to a
`
`truck and Neely’s vehicular diagnostic system in orderto retrofit access
`
`control devices into existing applications and service a variety of vehicle
`
`models over a numberof model years. Pet. 59-60.
`
`Patent Ownerarguesthat claim 143 is patentable over Kniffin and
`
`Neely for at least the reasons discussed supra in Part II.B.2. Prelim. Resp.
`
`38. On the present record, we disagree with Patent Owner for the same
`
`reasons discussed supra in Part II.B.2.
`
`Wehave reviewed the proposed ground challenging claim 143 as
`obvious over Kniffin and Neely, and we are persuaded,at this juncture of the
`proceeding, that Petitioner has established a reasonable likelihood of
`
`prevailing in its challenge to claim 143 on this ground.
`
`Il.
`
`CONCLUSION
`
`For the foregoing reasons, based on the information presented in the
`
`Petition and the Preliminary Response, we are persuadedthat there is a
`
`reasonable likelihood that Petitioner would prevail in showing the
`
`unpatentability of claims 26, 31, 38, 42, 43, 48, 60, 63, 64, 73, 74, 85, 91,
`
`92, 138, 139, and 143 of the ’130 patent.
`
`Atthis stage of the proceeding, we have not madeafinal
`
`determination on the patentability of the challenged claims.
`
`18
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`IPR2015-01611
`Patent 6,549,130 Bl
`
`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 grounds that
`
`claims 26, 38, 42, 43, 48, 63, 73, 74, 91, and 138 are asserted to be
`
`anticipated under 35 U.S.C. § 102(e) by Kniffin; claims 64, 85, and 92 are
`
`asserted to be unpatentable under 35 U.S.C. § 103(a) in view of Kniffin and
`
`Spaur; Kniffin and Behr; or Kniffin and Kubler; claim 31 is asserted to be
`unpatentable under 35 U.S.C. § 103(a) in view of Kniffin and Ryoichi;
`claims 60 and 139 are asserted to be unpatentable under 35 U.S.C.§ 103(a)
`in view of Kniffin and Drori; and claim 143 is asserted to be unpatentable
`
`under 35 U.S.C. § 103(a) in view of Kniffin and Neely; and
`
`FURTHER ORDEREDthatpursuant 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.
`
`19
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`IPR2015-01611
`Patent 6,549,130 Bl
`
`PETITIONER:
`
`Michael J. Lennon
`mlennon@kenyon.com
`
`Clifford A. Ulrich
`culrich@kenyon.com
`
`PATENT OWNER:
`
`Raymond A. Joao
`rayjoao@optonline.net
`
`René A. Vazquez
`rvazquez@hgdlawfirm.com
`
`
`
`20
`
`
`
`
`
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