• Volkswagen Group Of America, Inc. v. Joao Control & Monitoring Systems, LLCAll claims unpatentable
  PTAB · Jan 27, 2017 · IPR2015-01613 · APJ Stacey G White · IPR · Final written decision

  Claims 1–3, 7, 8, 11, 12, 14, 16, 17, 19, and 20 are unpatentable: claims 1, 2, 7, 8, 11, 12, 14, 16, 17, 19, and 20 over Ryoichi; claim 3 over Ryoichi and Mansell.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “in claim 12), 76:57–58 (claim 16). Thus, in each of the independent claims, the first control device must respond to a signal from the second control device. Petitioner asserts that access control device 64 is the first control device and that clearinghouse 18 or 66 is the second control device. Pet. 15. Therefore, Petitioner must establish that Kniffin discloses that access control device 64 responds to a signal from the clearinghouse. We are not persuaded that Petitioner has a made a sufficient showing on this point. Petitioner contends that “truck access control device 64 is responsive to reprogramming signals from clearinghouse 66.” Id. at 17 (citing Ex. 1002, 8:61–67, Ex. 1006 ¶¶ 15). Petitioner, however, does not explain the import or impact of the signal sent from identification device 70. This is key because Kniffin states that “[i]n response to identification of the authorized user at the lock within the prescribed time period, a lock microprocessor CPU 30 instructs a lock mechanism 32 to unlock.” Ex. 1002, 3:64–66. In the fourth embodiment, access is based on the identity of a location and not that of an individual. See id. at 8:17–18 (“Each possible destination is assigned an identification number.”). Access is granted “[i]f the detected identification device corresponds to the first expected stop.” Id. at 8:30–31. Access is blocked if “the access control device . . . sense[s] either the absence of an identification device, or will sense an identification device that does not correspond to an authorized stop.” Id. at 8:39–45.” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “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 conveyor of data, information, or a message, or an indication representing data or information.” Ex. 2002, 11. We are persuaded that 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 conveyor of data, information, or a message, or an indication representing data or information that is sent by a first device.” We have not been directed to evidence in 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 we are not persuaded that it 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 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 by a third device.” The recited signals all are construed to be “an indication, or an 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.” slip op. at 7

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “in claim 12), 76:57–58 (claim 16). Thus, in each of the independent claims, the first control device must respond to a signal from the second control device. Petitioner asserts that access control device 64 is the first control device and that clearinghouse 18 or 66 is the second control device. Pet. 15. Therefore, Petitioner must establish that Kniffin discloses that access control device 64 responds to a signal from the clearinghouse. We are not persuaded that Petitioner has a made a sufficient showing on this point. Petitioner contends that “truck access control device 64 is responsive to reprogramming signals from clearinghouse 66.” Id. at 17 (citing Ex. 1002, 8:61–67, Ex. 1006 ¶¶ 15). Petitioner, however, does not explain the import or impact of the signal sent from identification device 70. This is key because Kniffin states that “[i]n response to identification of the authorized user at the lock within the prescribed time period, a lock microprocessor CPU 30 instructs a lock mechanism 32 to unlock.” Ex. 1002, 3:64–66. In the fourth embodiment, access is based on the identity of a location and not that of an individual. See id. at 8:17–18 (“Each possible destination is assigned an identification number.”). Access is granted “[i]f the detected identification device corresponds to the first expected stop.” Id. at 8:30–31. Access is blocked if “the access control device . . . sense[s] either the absence of an identification device, or will sense an identification device that does not correspond to an authorized stop.” Id. at 8:39–45.” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “We, however, are not persuaded that Petitioner has put forth sufficient evidence to establish that the mere act of storing information in memory discloses the disputed limitation. The specification of the ’405 patent describes the “operational steps and/or sequence of operation of the apparatus and method of the present invention.” Ex. 1001, 32:10–11. In order “to prevent an unauthorized access” the system compares the received program command with “data which may be stored in apparatus program memory.” Id. at 32:40–48. Kniffin’s stored schedule of stops appears to be similar to the stored data described in the ’405 patent. The control device, however, is not responsive to the stored data, but rather it responds to the program code. See id. at 39:51–65. Thus, we are not persuaded that Kniffin’s disclosure of storing the schedule is sufficient to disclose the disputed limitation. Therefore, we are not persuaded that Petitioner has demonstrated that Kniffin discloses a first control device that is responsive to a second control signal. For the foregoing reasons we determine that Petitioner has not carried its burden to demonstrate by a preponderance of the evidence that independent claims 1, 12, and 16 are anticipated by Kniffin. By that same regard, we also are not persuaded that Petitioner has established the unpatentability of dependent claims 2, 3, 7, 8, 11, 14, 17, 19, and 20 as relates to the asserted grounds that include Kniffin. The various anticipation and obviousness grounds asserted for each of those claims relies upon the assertions and arguments discussed above in relation to Petitioner’s assertions regarding Kniffin’s disclosures as applied to the independent claims. Petitioner has not argued that the above discussed deficiency is remedied by arguments or evidence put forth in any of the other Kniffin-based grounds. Therefore, Petitioner has not satisfied its burden in relation to its assertions of unpatentability based on Kniffin as directed to claims 1– 3, 7, 8, 11, 12, 14, 16, 17, 19, and 20 of the ’405 patent. B. Analysis of Asserted Grounds Based on Ryoichi” slip op. at 14

  Patent outcomesUS 5,917,405 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 5,917,405
• Volkswagen Group Of America, Inc. v. Joao Control & Monitoring Systems, LLCAll claims unpatentable
  PTAB · Jan 27, 2017 · IPR2015-01610 · APJ Stacey G White · IPR · Final written decision

  Claims 3, 18, 65, 67, 68, 70, 73, 91, 94, 96, 103, 110, 116, 119, 120, and 205 are unpatentable, including as anticipated by Ryoichi and obvious over Ryoichi-based combinations.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “For purposes of the Decision to Institute, we construed the term “control device.” Dec. 5–9. Neither party raised any concerns regarding this construction during trial. See PO Resp. 10–11; Reply 1. Based on our review of the full record, we discern no reason to modify or further discuss in this Final Written Decision our construction for this claim term. For convenience, the claim construction is reproduced in the table below. Term Citations Construction Control Ex. 2002, 6 A device or a computer, or that part of a device or Device a computer, which performs an operation, an action, or a function, or which performs a number of operations, actions, or functions.” slip op. at 5

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed patent owner constructionDecided for patent owner

    “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 conveyor of data, information, or a message, or an indication representing data or information.” Ex. 2002, 11. We are persuaded that 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 conveyor of data, information, or a message, or an indication representing data or information that is sent by a first device.” We have not been directed to evidence in 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, 7 This information was modified by a Certificate of Correction issued July 1, 2003. See Ex. 1001, 95. information, or a message and we are not persuaded that it 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 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 by a third device.” The recited signals all are construed to be “an indication, or an 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.” slip op. at 7

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “generates the first signal and transmits the first signal in response to a second signal.” Ex. 1001, 106:51–54; see also id. 122:10–12 (similar language in claim 73), 141:38–40 (claim 205). Thus, in each of the independent claims, the first control device must respond to a signal from the second control device. Petitioner asserts that access control device 64 is the first control device and that clearinghouse 18 or 66 is the second control device. Pet. 12. Therefore, Petitioner must establish that Kniffin discloses that access control device 64 responds to a signal from the clearinghouse. We are not persuaded that Petitioner has a made a sufficient showing on this point. Petitioner alleges that “clearinghouse 66 transmits the schedule to the truck access control device 64 . . . where the schedule is stored in memory 68.” Id. at 14. Petitioner then makes the bare assertion that “Kniffin’s truck access control device 64 (the in-vehicle control device), located in the vehicle, is responsive to signals from clearinghouse 66 (the middle device), located remote from the vehicle.” Id. at 15. Petitioner also contends that “truck access control device 64 is responsive to signals from clearinghouse 66, as Kniffin discloses that truck access control device 64 may be reprogrammed by clearinghouse 66.” Id. at 15–16 (citing Ex. 1010, 8:61– 67, Ex. 1002 ¶¶ 11–13). Petitioner, however, does not explain why storing a schedule in memory or reprogramming a device discloses the recited device responsive to a second signal. Nor does Petitioner explain the import or impact of the signal sent from identification device 70. This is key because Kniffin states that “[i]n response to identification of the authorized user at the lock within the prescribed time period, a lock microprocessor CPU 30 instructs a lock mechanism 32 to unlock.” Ex. 1010, 3:64–66. In the fourth embodiment, access is based on the identity of a location and not that of an individual. See id. at 8:17–18 (“Each possible destination is assigned an identification number.”). Access is granted “[i]f the detected identification device corresponds to the first expected stop.” Id. at 8:30–31. Access is blocked if “the access control device . . . sense[s] either the absence of an identification device, or will sense an identification device that does not correspond to an authorized stop.” Id. at 8:39–45.” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “Patent Owner argues that one of ordinary skill in the art would not have modified Ryoichi to use the Internet because “conventional wisdom at the time of the effective filing date of the ‘076 Patent was that the Internet was not secure and there were also many impediments on the use of the Internet.” PO Resp. 37. In support of this position, Patent Owner cites a Morgan Stanley “Internet Report” from 1996 which noted concerns about security and potential limits to Internet access. Id. at 26 (citing Ex. 2007, 24). Petitioner responds by asserting that Patent Owner “admitted that, in March of 1996, a person of ordinary skill in the art as would have appreciated the Internet as an improved transmission system.” Reply 10 (citing Pet. 35–36). Specifically, Petitioner is directing us to Patent Owner’s Response to an Office Action in the reexamination of the ’363 patent. As mentioned above, the ’363 and ’076 patents are related patents that share common ancestors. See § II.B. There, Patent Owner asserted that one of ordinary skill in the art “would appreciate the infrastructure of the Internet and its improved signal transmission capabilities, as compared to the [RF] system used in Kniffin, as being a superior system for transmitting a signal or message from one location to another.” Ex. 1024, 11. Petitioner also asserts that the cited Morgan Stanley Internet Report does not represent the conventional wisdom of one of ordinary skill in the art because it was prepared to help investors ascertain risks and rewards related to the Internet and Patent Owner does not show that one of ordinary skill would have looked to such a document. Reply. 12 (citing Ex. 2007, 4). We are persuaded by Petitioner’s arguments. Patent Owner’s statements during reexamination of the ’363 patent as to the knowledge of one of ordinary skill are more directly related to the issues at hand than an investment report. We agree with Petitioner’s analysis of Ryoichi and the teachings of Spaur, Behr, or Kubler. Thus, we find that one of ordinary skill in the art would have been motivated to improve Ryoichi’s system with the known methods of transmitting information over the Internet. See Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1326–27 (Fed. Cir. 2008).” slip op. at 22

  Patent outcomesUS 6,542,076 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 6,542,076
• Volkswagen Group Of America, Inc. v. Joao Control & Monitoring Systems, LLCSome claims unpatentable
  PTAB · Jan 26, 2017 · IPR2015-01611 · APJ Stacey G White · IPR · Final written decision

  Claims 91 and 92 are unpatentable over Kniffin; the petitioner did not show claims 26, 31, 38, 42, 43, 48, 60, 63, 64, 73, 74, 85, 138, 139, and 143 unpatentable.

  RulingsFinal written decision

  • BurdenMixed

    “second signal, wherein the second signal is at least one of generated by and transmitted from a second control device.” Ex. 1001, 80:9–10; see also id. 83:25–26 (similar language in claim 42), 85:15–18 (claim 48), 99:13–14 (claim 138). Thus, in each of independent claims 26, 42, 48, and 138, the first control device must respond to a signal from the second control device. Petitioner asserts that access control device 64 is the first control device and that clearinghouse 18 or 66 is the second control device. Pet. 13–14. Therefore, Petitioner must establish that Kniffin discloses that access control device 64 responds to a signal from the clearinghouse. We are not persuaded that Petitioner has a made a sufficient showing on this point.” slip op. at 13

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “second signal, wherein the second signal is at least one of generated by and transmitted from a second control device.” Ex. 1001, 80:9–10; see also id. 83:25–26 (similar language in claim 42), 85:15–18 (claim 48), 99:13–14 (claim 138). Thus, in each of independent claims 26, 42, 48, and 138, the first control device must respond to a signal from the second control device. Petitioner asserts that access control device 64 is the first control device and that clearinghouse 18 or 66 is the second control device. Pet. 13–14. Therefore, Petitioner must establish that Kniffin discloses that access control device 64 responds to a signal from the clearinghouse. We are not persuaded that Petitioner has a made a sufficient showing on this point.” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable

    “have modified Kniffin to use the Internet because “conventional wisdom at the time of the effective filing date of the ’130 Patent was that the Internet was not secure and there were also many impediments on the use of the Internet.” PO Resp. 32. In support of this position, Patent Owner cites a 1996 Morgan Stanley “Internet Report” that noted concerns about security and potential limits to Internet access. Id. at 32–34 (citing Ex. 2005, 24).” slip op. at 19

  • Skill levelSkill level board ownDecided for petitioner

    “have modified Kniffin to use the Internet because “conventional wisdom at the time of the effective filing date of the ’130 Patent was that the Internet was not secure and there were also many impediments on the use of the Internet.” PO Resp. 32. In support of this position, Patent Owner cites a 1996 Morgan Stanley “Internet Report” that noted concerns about security and potential limits to Internet access. Id. at 32–34 (citing Ex. 2005, 24).” slip op. at 19

  Patent outcomesUS 6,549,130 mixed
  § 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 6,549,130
• Nissan North America, Inc. v. Joao Control & Monitoring Systems, LLCAll claims unpatentable
  PTAB · Jan 25, 2017 · IPR2015-01585 · APJ Stacey G White · IPR · Final written decision

  Claims 1–3, 11, 16, and 17 are unpatentable: claims 1 and 16 are anticipated by Frossard and Pagliaroli; the remaining claims are unpatentable on the stated obviousness grounds.

  RulingsFinal written decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyTerm construed patent owner constructionDecided for patent owner

    “Claim 3 recites, in relevant part, “a positioning device for determining location of the vehicle, wherein said positioning device is located at the vehicle.” In the Institution Decision, we preliminarily construed the term “positioning device” to be governed by 35 U.S.C. § 112 ¶ 65. Dec. 6. Patent Owner disagrees and asserts that one of ordinary skill in the art would understand ‘“positioning device’ to be the name for the structure that performs the corresponding functions, even though the term covers a broad class of structures and/or identifies the structures by their function.” PO. Resp. 10–11. Petitioner maintains that the preliminary construction should govern this Final Written Decision. Reply 1–2. In Patent Owner’s view, “positioning device” is similar to terms such as filters, brakes, and clamps that have functional names, but still provide sufficient structure to remove the term from the reach of § 112 ¶ 6. PO Resp. 10–11. Patent Owner argues that Petitioner’s position is inconsistent because Petitioner argues that “positioning device” is not sufficient structure while arguing for a construction that includes the same term. Id. at 11 (noting that the proposed structure is a “satellite-based global positioning device.”). We are persuaded by Patent Owner’s arguments. Thus, we find that “positioning device” is not governed by 35 U.S.C. § 112 ¶ 6. For the purposes of this decision, we adopt Patent Owner’s proposed construction of “positioning device” which is “a device that determines the location of the vehicle.” PO Resp. 12.” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “We have not been directed to evidence in 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 we are not persuaded that it 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 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 by a third device.” The recited signals all are construed to be “an indication, or an 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. III. ANALYSIS” slip op. at 9

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We are not persuaded that Mr. McNamara’s statements on cross examination are sufficient to accord his testimony little or no weight. The prosecution history is an important element in understanding the claims of a patent. We, however, are persuaded that the statements made during cross examination appear to be misstatements as to Mr. McNamara’s review of the patent and its underlying prosecution history. Mr. McNamara signed his declaration under penalty of perjury and he has made other statements consistent with his testimony under oath stating that he reviewed the prosecution history. See Ex. 1003 ¶ 14; Ex. 2005, 154:11–20. In addition, we have reviewed the relevant prosecution history and we are in the position to evaluate whether Mr. McNamara’s testimony is at odds with the evidence in this case, which include the relevant prosecution history. Accordingly, we are not persuaded Mr. McNamara’s testimony should be accorded little or no weight due to the statements he made during cross-examination regarding his review of the prosecution history.” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Petitioner is correct in arguing that Patent Owner improperly attempts to limit “control device” in a way that contradicts the construction of the term. We agree with Petitioner that Frossard’s server center 1 and resource 2 may disclose the claimed “second control device” because by definition a “control device” can comprise “part of a device”; therefore, it follows that if something may be “part of a device” then it is permissible for that device to have multiple parts. Thus, a “control device,” which necessarily is a type of device, can include multiple parts. Therefore, the question is whether the cited elements of Frossard (server center 1 and resource 2) reasonably can be interpreted to be the parts of the second control device. To that end, Petitioner compares the combination of Frossard’s server center 1 and resource 2 with the ’405 patent’s combination of server 952 and transmitter 957. Id. at 8–9. It is Petitioner’s contention that “Frossard’s server 1 corresponds to server 952 of the ’405 patent because both generate a signal for remote control. Frossard’s resource 2 corresponds to transmitter 957 of the ’405 patent because both transmit the signal.” Id. at 12. According to Petitioner, “[t]he specification describes that, in response to a command received by the server receiver 953, the server 952 sends a control signal via the transmitter 957.” Id. at 8 (citing Ex. 1001, 58:41–48, 5:55– 58). Further, Petitioner asserts that “[a]ll of the described second devices use transmitters (e.g., server 952 uses transmitter 957 in Fig. 11B).” Id. at 9. Thus, in Petitioner’s view, Patent Owner’s argument that the control device may not be the combination of a server and transmitter is not supported by the specification. Id. We agree and find that Frossard discloses the claimed second control device. We also determine that because Patent Owner acknowledged, in its own definition, that “control device” means “a device or a computer, or that part of a device or a computer, which performs an operation, an action, or a function, or which performs a number of operations, actions, or functions” (emphases added), it necessarily follows that the “or” implies that a control device can include multiple parts. Tr. 36:1–38:19. Thus, a “control device” that is both “[1] a device and [2] a computer” would fall within the scope of the construed claim term because the term “or” is broad enough to include a variant that has both of the listed options. Id. Here, we determine Frossard’s server center 1 and resource 2 discloses a control device (i.e., “a device or a computer”).” slip op. at 20

  Patent outcomesUS 5,917,405 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 5,917,405
• Nissan North America, Inc. v. Joao Control & Monitoring Systems, LLCAll claims unpatentable
  PTAB · Jan 25, 2017 · IPR2015-01508 · APJ Stacey G White · IPR · Final written decision

  Claims 3, 20, 65, 73, 93, 103, 104, 108, and 205 are unpatentable: claims 3, 20, 73, 103, and 205 are anticipated by Frossard; the remaining claims are unpatentable on the stated obviousness or anticipation …

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “For purposes of the Decision to Institute, we construed the term “control device.” Dec. 10–11. Neither party raised any concerns regarding this construction during trial. See PO Resp. 10–11; Reply 1. Based on our review of the full record, we discern no reason to modify or further discuss in this Final Written Decision our construction for this claim term. For convenience, the claim construction is reproduced in the table below. Term Citations Construction Control Ex. 2002, 6 A device or a computer, or that part of a device or Device a computer, which performs an operation, an action, or a function, or which performs a number of operations, actions, or functions.” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for petitioner

    “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 conveyor of data, information, or a message, or an indication representing data or information.” Ex. 2002, 11. We are persuaded that 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 conveyor of data, information, or a message, or an indication representing data or information that is sent by a first device.” 7 This information was modified by a Certificate of Correction issued July 1, 2003. See Ex. 1001, 95. We have not been directed to evidence in 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 we are not persuaded that it 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 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 by a third device.” The recited signals all are construed to be “an indication, or an 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.” slip op. at 7

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We are not persuaded that Mr. McNamara’s statements on cross examination are sufficient to accord his testimony little or no weight. The prosecution history is an important element in understanding the claims of a patent. We, however, are persuaded that the statements made during cross examination appear to be misstatements as to Mr. McNamara’s review of the patent and its underlying prosecution history. Mr. McNamara signed his declaration under penalty of perjury and he has made other statements consistent with his testimony under oath stating that he reviewed the prosecution history. See Ex. 1003 ¶ 14; Ex. 2005, 154:11–20. In addition, we have reviewed the relevant prosecution history and we are in the position to evaluate whether Mr. McNamara’s testimony is at odds with the evidence in this case, which include the relevant prosecution history. Accordingly, we are not persuaded Mr. McNamara’s testimony should be accorded little or no weight due to the statements he made during cross-examination regarding his review of the prosecution history.” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Petitioner is correct in arguing that Patent Owner improperly attempts to limit “control device” in a way that contradicts the construction of the term. We agree with Petitioner that Frossard’s server center 1 and resource 2 may disclose the claimed “second control device” because by definition a “control device” can comprise “part of a device”; therefore, it follows that if something may be “part of a device” then it is permissible for that device to have multiple parts. Thus, a “control device,” which necessarily is a type of device, can include multiple parts. Therefore, the question is whether the cited elements of Frossard (server center 1 and resource 2) reasonably can be interpreted to be the parts of the second control device. To that end, Petitioner compares the combination of Frossard’s server center 1 and resource 2 with the ’076 patent’s combination of server 952 and transmitter 957. Id. at 9. It is Petitioner’s contention that “Frossard’s server 1 corresponds to server 952 of the ’076 patent because both generate a signal for remote control. Frossard’s resource 2 corresponds to transmitter 957 of the ’076 patent because both transmit the signal.” Id. at 12. According to Petitioner, “[t]he specification describes that, in response to a command received by the server receiver 953, the server 952 sends a control signal via the transmitter 957.” Id. at 9 (citing Ex. 1001, 58:41–48, 5:55–58). Further, Petitioner asserts that “[a]ll of the described second devices use transmitters (e.g., server 952 uses transmitter 957 in Fig. 11B).” Id. at 10. Thus, in Petitioner’s view, Patent Owner’s argument that the control device may not be the combination of a server and transmitter is not supported by the specification. Id. We agree and find that Frossard discloses the claimed second control device.” slip op. at 19

  Patent outcomesUS 6,542,076 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 6,542,076
• Volkswagen Group Of America, Inc. v. Joao Control & Monitoring Systems, LLCAll claims unpatentable
  PTAB · Jan 23, 2017 · IPR2015-01612 · APJ Beth Z Shaw · IPR · Final written decision

  Claims 68, 69, 74, 77, and 80 are unpatentable as anticipated by Spaur; claim 72 is unpatentable as obvious over Spaur.

  RulingsFinal written decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “Monitoring Systems, LLC, filed a Preliminary Response pursuant to 35 U.S.C. § 313. Paper 6 (“Prelim. Resp.”). Based on our review of these submissions, we declined to institute review of claims 21, 24, 27, 29, 30, 31, and 33, and we instituted inter partes review of claims 68, 69, 72, 74, 77, and 80. Paper 7 (“Dec.”). Specifically, we authorized this inter partes review to proceed as to the following grounds: (1) claims 68, 69, 74, 77, and 80 under 35 U.S.C. § 102(e) as anticipated by Spaur1; and (2) claim 72 under 35 U.S.C. § 103(a) as obvious over Spaur.” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner

    “processing device” Patent Owner argues that “processing device” means “a device or a computer, or that part of a device or a computer, which performs an operation, an action, or a function, or which performs a number of operations, actions, or functions.” PO Resp. 8. Patent Owner argues that this definition comes from the prosecution history of the ’363 patent (Ex. 1007) and is consistent with the Specification. Id. Petitioner does not dispute this construction. See Reply 2–4. We agree that this explicit definition for “processing device” was provided in the prosecution of the application that issued as the ’363 patent. See Ex. 1007. We have reviewed the definition and we find it to be instructive to understanding the proper scope of “processing device.” See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Thus, we adopt the Patent Owner’s construction of “processing device” to mean “a device or a computer, or that part of a device or a computer, which performs an operation, an action, or a function, or which performs a number of operations, actions, or functions” for the purposes of this decision. slip op. at 6

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “We agree with Petitioner’s characterization of Spaur’s teachings and we are not persuaded by Patent Owner’s argument. Patent Owner does not direct us to any persuasive evidence that the “second processing device” of claim 68 is not encompassed by Spaur’s teaching of a CDPD network modem. Pursuant to our construction discussed above, the term “processing device” means “a device or a computer, or that part of a device or a computer, which performs an operation, an action, or a function, or which performs a number of operations, actions, or functions.” See § II.A. This is the definition Patent Owner proposed and that Patent Owner provided during prosecution. We are unpersuaded as to why Spaur’s CDPD network modem 76 is necessarily different from “a device or a computer, or that part of a device or a computer, which performs an operation, an action, or a function, or which performs a number of operations, actions, or functions.”” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “not address the arguments in the Petition about the obviousness of claim 72. Reply 13. In particular, the Petition stated that: (1) Spaur describes a “wireless device” contained in the vehicle for transmitting and receiving information over an air link (Ex. 1004, 6:3–5), (2) Spaur describes that such devices may be among vehicle devices 50 (id. at 10:1–9), and (3) using a wireless device, a cellular telephone, or a personal digital assistant as the communication device in the system described by Spaur would have been within the understanding of a person of ordinary skill in the art at the time the alleged invention of claim 72 was made, and it would have been obvious to do so because it would allow the user to operate the system from a mobile device. Pet. 59–60 (citing Ex. 1006 ¶ 40). We agree with Petitioner that Patent Owner does not dispute the first two statements. Rather, we interpret Patent Owner’s arguments as directed to the third statement. Petitioner argues that Mr. Andrews testified in his declaration that wireless devices, cellular telephones, and personal digital assistants were well-known as of the filing of the ’363 patent, and that the use of a mobile device in Spaur’s system would have been obvious. Id. (citing Ex. 1006 ¶ 40). During his cross examination, Mr. Andrews testified that people “could certainly contact using a cellular telephone contact, an Internet gateway, and obtain information from devices on the Internet via an Internet gateway.” Ex. 2004, 45:16–19. Thus, Petitioner argues, Patent Owner has no basis for its statement that Mr. Andrews could not support this position during cross-examination. We agree with Petitioner and are not persuaded that Mr. Andrews’s testimony is unsupported based on his statements during cross examination.” slip op. at 14

  Patent outcomesUS 7,397,363 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 7,397,363
• Nissan North America, Inc. v. Joao Control & Monitoring Systems, LLCAll claims unpatentable
  PTAB · Dec 30, 2016 · IPR2015-01509 · APJ Jason J Chung · IPR · Final written decision

  Claims 26, 29, 30, 33, 42, 43, 48, 60, and 68 are unpatentable as anticipated by Frossard or Pagliaroli, or obvious over the stated combinations.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededDecided for petitioner

    “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 conveyor of data, information, or a message, or an indication representing data or information.” Ex. 2002, 11. We are persuaded that 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 conveyor of data, information, or a message, or an indication representing data or information that is sent by a first device.” We have not been directed to evidence in 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 we are not persuaded that it 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 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 by a third device.” For convenience, this claim construction is reproduced in the table below.” slip op. at 8

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We are not persuaded that Mr. McNamara’s statements on cross examination are sufficient reason to accord his testimony little or no weight. The prosecution history is an important element in understanding the claims of a patent. We are persuaded that the statements made during cross examination appear to misstatements as to Mr. McNamara’s review of the patent and its underlying prosecution history. Mr. McNamara signed his declaration under penalty of perjury and he has made other statements consistent with his testimony under oath stating that he reviewed the prosecution history. See Ex. 1003 ¶ 14; Ex. 2003, 154:11–20. Mr. McNamara signed his declaration on June 24, 2015, which states that he read the ’130 patent and its prosecution history. Ex. 1003 ¶ 14. Although Mr. McNamara testified 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. McNamara signed his declaration. Mr. McNamara’s inconsistent testimony appears to illustrate a momentary lapse in memory. Compare e.g., id. at 153:11–15, with id. at 154:11–20. Moreover, the only claim terms Mr. McNamara defined in 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 statement that he did not review the prosecution history of the ’130 patent displays a lack of understanding of the prosecution history because Patent Owner did not define any claim terms at 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.” slip op. at 12

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “We agree with Petitioner that Patent Owner attempts to limit “control device” improperly in a way that contradicts Patent Owner’s proposed claim construction. As discussed supra, “control device” is construed as “a device or a computer, or that part of a device or a computer, which performs an operation, an action, or a function, or which performs a number of operations, actions, or functions.” We agree with Petitioner that Frossard’s server 1 and resource 2 discloses the claimed “second control device” because Patent Owner’s proposed definition of “control device” can comprise “part of a device”; it follows that a device can comprise multiple parts. Also, because a “control device” is a type of device, a “control device” can include necessarily multiple parts. We also determine that because Patent Owner acknowledged, in its own definition, that “control device” means “a device or a computer, or that part of a device or a computer, which performs an operation, an action, or a function, or which performs a number of operations, actions, or functions” (emphases added), it necessarily follows that the “or” implies that a control device can include multiple parts. Tr. 32:15–19. For example, a “control device” can be “[1] a device or [2] a computer”; in other words, logic dictates that the “or” can be interpreted as an “and” such that a “control device” can be “[1] a device and [2] a computer.” Id. Moreover, during oral hearing, Patent Owner acknowledged Frossard’s server 1 is a “computer” and Frossard’s resource 2 is a “device.” Id. at 34:14–35:11 (In response to the question, “[s]o you are saying that a server can’t be a device,” Patent Owner acknowledged “[a] server is a computer, and broadly, if you consider a computer a device, a server is a device.”) (In response to the question “resource 2 or indicating a network number 2, is that a device as well?” Patent Owner acknowledged “resource 2 has a coder and has a transmitter. I would say it is a computer, but in a broad sense it can be considered a device.”). Using Patent Owner’s acknowledgement during the oral hearing, it follows that Frossard’s server 1 and Frossard’s resource 2, together, discloses a “control device” under Patent Owner’s proposed definition of “control device.” Furthermore, Figure 1 illustrates that Frossard’s server 1 and resource 2, together, form a control device generating and transmitting a signal. Ex. 1005, Fig. 1. Frossard’s server 1 is part of the claimed “second control device,” such that this part performs an operation, an action, or a function of generating the message order M (i.e., the claimed “second signal”). Id. at 4– 5. In addition, Frossard’s resource 2 is part of the claimed “second control device,” such that this part performs an operation, an action, or a function of transmitting the order message M (i.e., the claimed “second signal”). Id.” slip op. at 28

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “We agree with Petitioner and Mr. McNamara that it would have been obvious to a person having ordinary skill in the art to combine Frossard’s system with Pagliaroli’s theft sensor 12 to provide a system for remotely disabling or enabling a vehicle that also provides a notification when it detects tampering or theft. Patent Owner fails to proffer any rationale or evidence for why the combination of Frossard and Pagliaroli would destroy the functionality of Frossard. Further, Patent Owner fails to proffer its own expert testimony refuting Petitioner’s arguments and Mr. McNamara’s opinion. Patent Owner’s arguments are conclusory attorney argument. Patent Owner’s argument that Pagliaroli does not provide a teaching or suggestion that its theft sensor 12 can function as Frossard’s receiver-decoder circuits 4 is improper because Petitioner argues for combining (rather than replacing) Pagliaroli’s theft sensor 12 and Frossard’s receiver-decoder circuits 4. In addition, Patent Owner is incorrect because any teaching or suggestion need not be found in the reference itself.” slip op. at 37

  Patent outcomesUS 6,549,130 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 6,549,130
• Terremark North America LLC / Verizon Business Network Services Inc. et al. v. Joao Control & Monitoring Systems, LLCAll claims unpatentable
  PTAB · Dec 29, 2016 · IPR2015-01466 · APJ Stacey G White · IPR · Final written decision

  Claims 22, 29, 31, 32, 39, and 40 are unpatentable as anticipated by French; claim 27 is unpatentable as obvious over French and Caglayan.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “skill in the art. Id. at 16. Mr. Bennett testified that a person of ordinary skill would have “a bachelor’s degree in engineering or equivalent coursework and at least two years of experience in networked systems.” Id. (quoting Ex. 1002 ¶ 18). Mr. Bennett, however, does not have a degree in engineering and he has limited coursework in the field. Id. at 16–21. Thus, according to Patent Owner his testimony should be accorded little to no weight because he does not meet his own definition of a person of ordinary skill in the art. Id. This argument is not persuasive. Our reviewing court has noted that “[t]he ‘person of ordinary skill in the art’ is a theoretical construct used in determining obviousness under § 103, and is not descriptive of some particular individual.” Endress + Hauser, Inc. v. Hawk Measurement Sys. Pty. Ltd., 122 F.3d 1040, 1042 (Fed. Cir. 1997) (citing Custom Accessories, Inc. v. Jeffrey–Allan Indus., Inc., 807 F.2d 955, 963 (Fed. Cir. 1986)). The Federal Circuit has instead examined whether the purported expert has substantial credentials that would allow the judge to permit testimony from the purported expert. Id. Under the Federal Rules of Evidence, the question is whether Mr. Bennett has “scientific, technical, or other specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issue.” Fed. R. Evid. 702; see also Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008) (noting that under Rule 702, a person need not be a person of ordinary skill in the art, but rather may be “qualified in the pertinent art”). We are persuaded that Mr. Bennett has such credentials. Mr. Bennett has nearly 40 years of experience in networked systems (Reply. 14 (citing Ex. 1019, 210:2–9)) and is a named inventor in four issued patents dealing with networked systems (id. (citing Ex. 1003, 4–5; Ex. 1019, 49:15–50:10)). Patent Owner did not raise any substantive issues with Mr. Bennett’s experience or knowledge; instead, it only argued that Mr. Bennett did not have sufficient classroom education. We find that Mr. Bennett’s work experience, research, and industry participation are sufficient to provide the expertise necessary to assist us in this matter.” slip op. at 5

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “We find Petitioner’s argument to be persuasive. We have not been directed to evidence in 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 we are not persuaded that it 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 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 by a third (communications) device.” The recited signals all are construed to be “an indication, or an 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. Further, we are persuaded that the claims are broad enough to encompass situations in which an intermediary may append additional information to the received signals.” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “second processing device because “there is an intermediate device between the local control module 38a and the central control system 20 that receives the ‘first signal’ from the local control module 38a and then subsequently generates and sends a ‘second signal’ to control system 20.” PO Resp. 25– 26 (citing Ex. 2012 ¶ 18); see also id at. 30–31. Dr. DiEuliis testified that “Global Control Module 30a assembles the data from the Local Control Module 38a and other modules, it generates a signal that contains all of this information and transmits it on network 32, where it is received by the Central Control System 20.” Ex. 2012 ¶ 22 (citing Ex. 1005, 6:43–53). As discussed above, we are not persuaded that the claims exclude systems with intermediate devices such as French’s global control module. See § II.B.2. As noted by Dr. DiEuliiss, French’s global control module transmits a signal to the central control module that “contains all of [the information received from the local control module].” Ex. 2012 ¶ 22. Pursuant to our construction, the signal received by the central control module (second control device) is the first signal because it contains all of the information sent by the local control module (first device). Thus, we do not find Patent Owner’s argument to be persuasive and we are persuaded by Petitioner’s arguments regarding the disclosures of French. Based on our review of the full record, we find persuasive Petitioner’s arguments and evidence and we adopt them as the basis for our determination that French discloses the limitations of claim 22. See Pet. 19– 28. Accordingly, we determine that Petitioner has demonstrated by a preponderance of the evidence the unpatentability of independent claim 22 over the disclosures of French.” slip op. at 17

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable

    “Desktop, Internet, and Intranet Agents. Ex. 1006, 1. Caglayan describes how intelligent agents manage tasks such as notifying users of events of significance. Id. at 66. Petitioner argues that it would have been obvious to use Caglayan’s intelligent agents in French’s automation system to further automate the remote monitoring system and more efficiently monitor the data received from the building equipment and systems remotely. Pet. 35– 36 (citing Ex. 1002 ¶¶ 41–44). We find this rationale to be reasonable. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Based on our review of the full record, we find persuasive Petitioner’s arguments and evidence and we adopt them as the basis for our determination that French and Caglayan teach the limitations of claim 27. See Pet. 33–36. Accordingly, we determine that Petitioner has demonstrated by a preponderance of the evidence the unpatentability of claim 27 over the combined teachings of French and Caglayan.” slip op. at 19

  Patent outcomesUS 6,542,077 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 6,542,077
• Terremark North America LLC / Verizon Business Network Services Inc. et al. v. Joao Control & Monitoring Systems, LLCAll claims unpatentable
  PTAB · Dec 22, 2016 · IPR2015-01477 · APJ Howard B Blankenship · IPR · Final written decision

  Claims 30, 33, 53, and 85–88 are unpatentable by disclaimer; claims 33 and 90 are also unpatentable as obvious over Fuhr, but not anticipated by Goldberg.

  RulingsFinal written decision

  • Adverse judgmentAdverse judgmentUnpatentable

    “Patent Owner states that it “hereby disclaims claims 30, 53, and 85‒ 88.” PO Resp. 21. Patent Owner does not present any arguments in its Patent Owner Response directed to those claims. A review of the USPTO electronic file of the ʼ046 patent indicated that Patent Owner had not filed a statutory disclaimer. In an Order entered December 7, 2016, we notified Patent Owner that if it failed to file a notice in this proceeding indicating that it has filed a statutory disclaimer for claims 30, 53, and 85‒88 in the patent, the claims will be held unpatentable. Paper 28. The period provided for filing of such notice has passed without response from Patent Owner. See id. at 2. Accordingly, we determine that claims 30, 53, and 85‒88 are 1 Time Warner Cable Inc. and iControl Networks, Inc. also were named as petitioners. We granted a joint motion to terminate the inter partes review with respect to those parties. Paper 22. unpatentable. The patentability of claims 33 and 90 remain for consideration in this Final Written Decision.” slip op. at 2

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “objections with respect to Mr. Bennett’s testimony, nor sought to preclude him from testifying as an expert witness. In any event, to testify as an expert under Federal Rule of Evidence 702, a person need not be a person of ordinary skill in the art, but rather may be “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008); Mytee Prods., Inc. v. Harris Research, Inc., 439 F. App’x 882, 886–87 (Fed. Cir. 2011) (non-precedential) (upholding admission of the testimony of an expert who “had experience relevant to the field of the invention,” despite admission that he was not a person of ordinary skill in the art). We give appropriate weight to the testimony of Mr. Bennett as an individual with more than 30 years of industry experience in computers and networking, including the development of real-time video collaboration tools (Ex. 1003, 2) and software for a video-on-demand server (Ex. 1002 ¶ 12). See generally Ex. 1002 ¶¶ 5‒12; Ex. 1003 (CV).” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “We construe “video information” to mean “data or information containing, pertaining to or representing, an image or images or a photograph.” PO Resp. 12; see also Prelim. Resp. 25. Patent Owner submits that “real-time video information” should be construed as synonymous with “live video information,” with each meaning “video information” that is broadcast or transmitted as the video information event occurs. PO Resp. 13‒14. Patent Owner refers to a Memorandum and Order from the U.S. District Court for the Southern District of New York, which construes those terms in the ʼ046 patent. Id. (citing Ex. 2013, 17). We adopt the construction set forth by the District Court and as advocated by Patent Owner. Petitioner does not oppose that construction. See Pet. Reply 2 (“Petitioners have no issue with the wording of this construction, provided it is understood that the construction does not require instantaneous transmission of video information.”).” slip op. at 7

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Anticipation is established only when a single prior art reference discloses, expressly or under principles of inherency, each and every element of a claimed invention.” RCA Corp. v. Applied Digital Data Systems, Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984). “The identical invention must be shown in as complete detail as is contained in the patent claim.” Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989). The expert testimony upon which the Petition relies does not provide sufficient support for anticipation. Mr. Bennett submits that the camera disclosed in Goldberg “is capable of capturing and transmitting individual images, as well as live video.” Ex. 1002 ¶ 38 (emphasis added). His Declaration does not allege that the artisan would understand that Goldberg discloses a system that includes live video. Further, Goldberg’s description of “two possible fixes” for a live video feed (Ex. 1006, 210 n.1) is in the form of an invitation for the artisan to investigate possible ways to supply a live video feed, as opposed to describing an invention in terms such that the ordinary artisan would be placed in possession of it. See In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (“A reference anticipates a claim if it discloses the claimed invention ‘such that a skilled artisan could take its teachings in combination with his own knowledge of the particular art and be in possession of the invention.’” (quoting In re LeGrice, 301 F.2d 929, 936 (CCPA 1962))). Goldberg, however, describes a system having “a limited level of teleoperation.” Ex. 1006, 210 (§ 2). slip op. at 11

  Patent outcomesUS 6,587,046 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 6,587,046
• Bungie, Inc. v. Worlds Inc.All claims unpatentable
  PTAB · Dec 6, 2016 · IPR2015-01319 · APJ Jason J Chung · IPR · Final written decision

  Claims 1–8, 10, 12, and 14–16 are unpatentable: obvious over the Funkhouser combinations; the Durward anticipation and obviousness grounds were not proven.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “art. Petitioner argues, and Dr. Zyda opines, that a person of ordinary skill in the art relevant to the ’501 patent would have had “through education or practical experience, the equivalent of a bachelor’s degree in computer science or a related field and at least an additional two years of work experience developing or implementing networked virtual environments.” Pet. 7; Ex. 1002 ¶ 55. Mr. Pesce similarly testifies that a person of ordinary skill in the art would have had “at least a bachelor’s degree or equivalent in computer science, with two or more years of experience in coding related to both virtual environments and computer networking.” Ex. 2017 ¶ 33. The parties’ proposals for the level of ordinary skill in the art have slight differences in wording, yet we do not find them to have meaningful distinctions (e.g., “at least” two years versus “two or more years,” “networked virtual environments” versus “virtual environments and computer networking”). Neither party asserts that there is any such distinction. Based on the testimony of the parties’ experts as well as our review of the ’501 patent, the types of problems and solutions described therein, and the prior art involved in this proceeding, we adopt the following as the level of ordinary skill in the art: the equivalent, through education or practical experience, of a bachelor’s degree in computer science or a related field, and at least two years of experience developing, coding, or implementing networked virtual environments, or virtual environments and computer networking.” slip op. at 5

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “witness has applied the principles and methods reliably to the facts of the case.” Fed. R. Evid. 702. Under this standard, testimony on the issue of unpatentability proffered by a witness who is not “qualified in the pertinent art” generally is not admissible. Sundance Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008). Rule 702, however, does not “require[] a witness to possess something more than ordinary skill in the art to testify as an expert” and a “witness possessing merely ordinary skill will often be qualified to present expert testimony.” Id. at 1363. Nor does the Rule require a perfect match or complete overlap between the witness’s technical qualifications and the field of the invention. See SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010). In his declaration and curriculum vitae, Mr. Pesce details his relevant work experience from 1984 to the present as well as his teaching experience and numerous technical publications and presentations. See Ex. 2017 ¶¶ 3– 19, 35–42, pp. 67–82; see also Ex. 1046, 19:8–21:16, 39:11–40:20. Having reviewed this experience and Mr. Pesce’s technical testimony, we find his knowledge, skill, and experience in the relevant field of networked virtual environments, as well as computer networking and virtual reality more generally, sufficient to render him qualified to offer expert testimony in this proceeding under Rule 702.” slip op. at 8

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “unnamed real party in interest, who was served with a complaint in the District Court Case more than one year before the Petition was filed. PO Resp. 39–45. Thus, according to Patent Owner, the Petition fails to comply with 35 U.S.C. § 312(a)(2) and 37 C.F.R. § 42.8, and institution of review was barred under 35 U.S.C. § 315(b). PO Resp. 36–42. Patent Owner argues the Board erred in denying its Motion for Routine or Additional Discovery related to this issue (Paper 9) and in instituting review despite Patent Owner’s assertions of Activision’s status as a real party in interest. PO Resp. 36–42.” slip op. at 54

  • ExcludeMotion to exclude, deniedMixed

    “Given that Exhibit 1041 is relevant for this purpose and its admission is not barred by Rules 404, 405, and 608, we turn to Rule 403 to consider whether it should nonetheless be excluded because its “probative value is substantially outweighed by a danger of . . . unfair prejudice.” Fed. R. Evid. 403.15 Here, the probative value of Exhibit 1041 as to Mr. Pesce’s ability to perceive and recall events and details from the art in the early to mid-1990s is limited as, for example, it lacks specific details regarding the extent and regularity of his drug use. Yet, on the other hand, the risk of unfair prejudice is minimal. To begin with, an unfair prejudice analysis is not well suited to a bench trial, such as this. See, e.g., Schultz v. Butcher, 24 F.3d 626, 632 (4th Cir. 1994) (“[I]n the context of a bench trial, evidence should not be excluded under 403 on the ground that it is unfairly prejudicial.”); Gulf States Utilities Co. v. Ecodyne Corp., 635 F.2d 517, 519 (5th Cir. 1981) (holding that “exclusion of evidence under Rule 403’s weighing of probative value against prejudice was improper” and was a “useless procedure” because “[t]his portion of Rule 403 has no logical application to bench trials”). Moreover, the only “unfair prejudice” that Patent Owner alleges is that all of Mr. Pesce’s testimony will be given little to no weight—which is not accurate, as we are considering the admissibility of Exhibit 1041 only for its relevance to his capacity and reliability in perceiving and recalling events and other details from the early to mid- 1990s, on which he offers testimony. See Mot. 8. Although we are cognizant of the sensitive nature of evidence of drug use, there is minimal 15 Rule 403 lists other considerations but Patent Owner does not argue that any of these apply, and we conclude that they do not. See id.; Mot. 7–8. risk of any unfair prejudice from considering Exhibit 1041 for this limited purpose. In sum, the probative value of Exhibit 1041 for this limited purpose is not “substantially outweighed” by any danger of unfair prejudice and, thus, exclusion under Rule 403 is not warranted.” slip op. at 60

  Patent outcomesUS 8,082,501 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 8,082,501

Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.