Coxcom, LLCv.Joao Control & Monitoring Systems, LLC

Patent Trial and Appeal Board

Feb 19, 2016

10263554 (P.T.A.B. Feb. 19, 2016)

Trials@uspto.gov Paper 8
571-272-7822 Date: February 19, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

COXCOM, LLC,
Petitioner,

v.

JOAO CONTROL & MONITORING SYSTEMS, LLC,
Patent Owner.
____________

Case IPR2015-01765
Patent 7,277,010 B2
____________

Before HOWARD B. BLANKENSHIP, STACEY G. WHITE, and
JASON J. CHUNG, Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

I. INTRODUCTION
Petitioner, Coxcom, LLC, filed a Petition to institute an inter partes
review of claims 139, 157, 158, 169–171, 193, 194, 196–198, 201, 202, 211,
213, 215–217, 219, 222–225, 227, 228, and 234–236 (“the challenged
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claims”) of U.S. Patent No. 7,277,010 B2 (“the ’010 patent”). Paper 1
(“Pet.”). Patent Owner, Joao Control & Monitoring Systems, LLC, filed a
Preliminary Response pursuant to 35 U.S.C. § 313. Paper 7 (“Prelim.
Resp.”).
We have authority to determine whether to 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 does not show a reasonable
likelihood that Petitioner would prevail with respect to at least one of the
challenged claims. See 35 U.S.C. § 314(a). Accordingly, we decline to
institute an inter partes review of these claims.
A. Related Matters
Petitioner and Patent Owner indicate that the ’010 patent or related
patents may be implicated in numerous lawsuits pending in courts around
the country. Pet. 2–3; Paper 5, 2–6.
B. The Asserted Grounds
Petitioner identifies the following as asserted grounds of
unpatentability:
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References Basis Challenged Claims
Paulos (Ex. 1006)1 § 103(a)2
139, 157, 158, 193, 198, 201,
202, 211, 213, 215, 216, 219,
222–225, 227, and 228
Paulos and Katz
(Ex. 1008)3 § 103(a)
169–171, 194, 196, 197, 217,
and 234–236
C. The ’010 Patent
The ’010 patent is directed to monitoring a premises using a
processor. Ex. 1001, Abs. The processor is “associated with a web site and
capable of providing audio and video, which receives audio information”
from the premises. Id. Video information may be recorded. Id. at 124:40–
47. The processor is at a remote location from the premises. Id. at Abs.
The processor receives request from a device for audio or video information;
the device is at a remote location from the processor and the premises. Id.
Furthermore, the processing device determines if transmission of the audio
or video to the device is authorized. Id. at 119:60–67, 124:52–61. The ’010
patent further describes transmitting the audio or video information to the
device over the World Wide Web and/or Internet in response to determining
that transmission to the device is authorized. Id. at 119:60–120:3, 124:52–
63.

1 Eric Paulos & John Canny, A World Wide Web Telerobotic Remote
Environment Browser, WORLD WIDE WEB J., Dec. 11–14, 1995, at 677.
2 The relevant sections of the Leahy-Smith America Invents Act (“AIA”),
Pub. L. No. 112–29, took effect on March 16, 2013. Because the application
from which the ’010 patent issued was filed before that date, our citations to
Title 35 are to its pre-AIA version.
3 Randy H. Katz, Adaption and Mobility in Wireless Information Systems, 1
IEEE PERS. COMM., no. 1, 1994, at 6.
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D. The Challenged Claims
Petitioner challenges claims 139, 157, 158, 169–171, 193, 194, 196–
198, 201, 202, 211, 213, 215–217, 219, 222–225, 227, 228, and 234–236.
Pet. 4. Claims 139, 193, and 198 are independent. Claim 139 is illustrative
and reproduced below:
139. A monitoring apparatus, comprising:
a processing device, wherein the processing device is associated
with a web site, and further wherein the processing device is
capable of providing audio information and video information,
wherein the processing device receives audio information
recorded by at least one of an audio recording device, a
microphone, and a tape recorder, wherein the at least one of an
audio recording device, a microphone, and a tape recorder, is
located at a premises, and wherein the processing device is
located at a location remote from the premises,
wherein the processing device receives a signal transmitted
from a communication device, wherein the communication
device is located at a location remote from the processing
device and remote from the premises, wherein the processing
device determines whether a transmission of the audio
information to the communication device is authorized, and
further wherein the processing device transmits the audio
information to the communication device in response to the
signal if the processing device determines that the transmission
of the audio information to the communication device is
authorized, and further wherein the audio information is
transmitted to the communication device on or over at least one
of the Internet and the World Wide Web.
II. ANALYSIS
A. Claim Construction
At this juncture, we do not need to explicitly construe any term. Vivid
Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)
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(“[O]nly those terms need be construed that are in controversy, and only to
the extent necessary to resolve the controversy.”).
B. Alleged Obviousness of Claims 139, 157, 158, 193, 198, 201, 202,
211, 213, 215, 216, 219, 222–225, 227, and 228 by Paulos and a
Person Having Ordinary Skill in the Art
1. Paulos (Ex. 1006)
Paulos describes multiple users viewing a collection of physical
museum exhibits. Ex. 1006, 11. Figure 1 is reproduced below.

Figure 1 illustrates a delivery process in which an HTTP server contains an
interface for individual users to make requests and receive results. Id. at 15.
Paulos further describes the users viewing the museum exhibits using
Radius, which is a telerobotic robot arm with an attached camera that
captures real-time audio and video. Id. at 15–16. The users connect to an
HTTP server via the World Wide Web. Id. The HTTP server connects to
Radius via the Internet. Id. Paulos discusses that “Radius . . . check[ing] for
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authentication” to prevent unauthorized control of robot hardware. Id.
Paulos also describes “provid[ing] all WWW users unrestricted access to the
browser” and providing registration for users who desire additional
privileges. Id. at 19. Further, the registered users’ additional privileges
include “roll and pitch control tools” and the ability to “leave comments
about the various exhibits.” Id.
2. The Parties’ Contentions for Claims 139, 157, 158, 193, 198, 201,
202, 211, 213, 215, 216, 219, 222–225, 227, and 228
The parties’ contention focuses on whether Paulos’s user registration
for additional privileges teaches the limitation “the processing device
determines whether a transmission of the audio information to the
communication device is authorized” as recited in claim 139 (and similarly
recited in claims 193 and 198). We begin with Petitioner’s assertions
regarding this limitation.
Petitioner asserts that Paulos’s disclosure of user registration with a
password teaches the limitation “the processing device determines whether a
transmission of the audio information to the communication device is
authorized” as recited in claim 139 (and similarly recited in claims 193 and
198; claim 193 recites a “processing device or server computer”). Pet. 17–
18, 38–42 (citing Ex. 1006, 19). Petitioner asserts
[t]o the extent it is argued that the HTTP server does
not determine whether the transmission of such
audio information to the remote WWW user is
authorized, it would have been obvious to a person
of ordinary skill in the art prior to July 1996 that the
transmission of real-time audio from the HTTP
Server to the remote WWW user can be determined
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based on whether the remote WWW user is a
Registered user.

Pet. 27, 38–42 (citing Ex. 1002 ¶ 48).
Patent Owner, in response, argues that Paulos’ system
restrict[s] only certain privileges to registered
users, and the restricted privileges did not include
access to audio and video, but rather the ability to
control the robot and the ability to leave comments
about the various exhibits. Paulos’ explicitly stated
goal is to “provide [all WWW users] unrestricted
access to the browser.

Prelim. Resp. 31 (quoting Ex. 1006, 19).
We have considered the evidence on this record and agree with Patent
Owner that the cited portion of Paulos relied upon by Petitioner teaches
providing all users access and user registration provides additional privileges
that include “roll and pitch control tools” and the ability to “leave comments
about various exhibits.” Ex. 1006, 19. In contrast, claim 139 prevents
transmission of audio information to unauthorized users. Similarly, claims
193 and 198 prevent transmission of video information to unauthorized
users. We are not persuaded, on this record, that Mr. Bennett’s testimony
remedies Paulos’ shortcoming because Mr. Bennett’s testimony relies on a
conclusory statement. See 37 C.F.R. § 42.65(a) (“Expert testimony that does
not disclose the underlying facts or data on which the opinion is based is
entitled to little or no weight.”); Ashland Oil, Inc. v. Delta Resins &
Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (stating a lack of
objective support for an expert opinion “may render the testimony of little
probative value in [a patentability] determination”).
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Paulos’ disclosure of providing all users access and user registration
provides additional privileges (Pet. 17–18 (citing Ex. 1006, 19)), thus, fails
to teach the limitation “the processing device determines whether a
transmission of the audio information to the communication device is
authorized” as recited in claim 139 (and similarly recited in claims 193 and
198).
The parties’ next contention focuses on whether Paulos’s “Radius . . .
check[ing] for authentication” to prevent unauthorized control of robot
hardware (Ex. 1006, 15–16) teaches the limitation “the processing device
determines whether a transmission of the audio information to the
communication device is authorized” as recited in claim 139 (and similarly
recited in claims 193 and 198). We begin with Petitioner’s assertions
regarding this limitation.
Petitioner contends Paulos’s HTTP server teaches the limitation “a
processing device” as recited in claim 139 (and similarly recited in claims
193 and 198). Pet. 20, 37, 41 (citing Ex. 1006, Fig. 1). Petitioner further
contends that Paulos’s disclosure of “Radius . . . check[ing] for
authentication” to prevent unauthorized control of robot hardware teaches
the limitation “the processing device determines whether a transmission of
the audio information to the communication device is authorized” as recited
in claim 139 (and similarly recited in claims 193 and 198). Id. at 17–18, 34–
35, 41 (citing Ex. 1006, 15–16). In addition, Petitioner contends that “[i]t
would have been obvious that the authentication check to determine whether
a user can interact with the robot and the camera can be performed by the
HTTP Server.” Id. at 27–28, 40, 42 (citing Ex. 1002 ¶¶ 49, 63).
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We have considered the evidence on this record and find that Paulos’s
disclosure of “Radius . . . check[ing] for authentication” to prevent
unauthorized control of robot hardware fails to teach the claim 139 (and
similarly recited in claims 193 and 198) limitation “the processing device
determines whether a transmission of the audio information to the
communication device is authorized” (emphasis added) because Paulos’s
“Radius” determines authentication instead of Paulos’s “HTTP Server” (i.e.,
the alleged “processing device” according to Petitioner). Ex. 1006, 15–16.
We are not persuaded that Mr. Bennett’s testimony remedies Paulos’s
shortcoming because Mr. Bennett’s testimony relies on a conclusory
statement. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not
disclose the underlying facts or data on which the opinion is based is entitled
to little or no weight.”); Ashland Oil, Inc. v. Delta Resins & Refractories,
Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (stating a lack of objective support
for an expert opinion “may render the testimony of little probative value in
[a patentability] determination”).
Paulos’s disclosure of “Radius . . . check[ing] for authentication” to
prevent unauthorized control of robot hardware (Pet. 17–18 (quoting Ex.
1006, 15–16)), thus, fails to teach the limitation “the processing device
determines whether a transmission of the audio information to the
communication device is authorized” (emphasis added) as recited in claim
139 (and similarly recited in claims 193 and 198).
Accordingly, we have reviewed the proposed ground challenging
claims 139, 157, 158, 193, 198, 201, 202, 211, 213, 215, 216, 219, 222–225,
227, and 228 as obvious over Paulos and level of ordinary skill in the art and
we are persuaded, on this record, that Petitioner has not established a
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reasonable likelihood of prevailing in its challenge to claims 139, 157, 158,
193, 198, 201, 202, 211, 213, 215, 216, 219, 222–225, 227, and 228 on this
ground.
C. Alleged Obviousness of Claims 169–171, 194, 196, 197, 217, and
234–236 in View of: Paulos, Katz, and Knowledge of the Ordinary
Skilled Artisan
Claims 169–171, 194, 196, 197, 217, and 234–236 depend from one
of claims 139, 193, and 198. Petitioner does not rely on Katz to teach the
limitation “the processing device determines whether a transmission of the
audio information to the communication device is authorized” as recited in
claim 139 (and similarly recited in claims 193 and 198). Pet. 54–59. Claims
169–171, 194, 196, 197, 217, and 234–236, thus, overcome the applied prior
art for at least the reasons stated supra in Part II.B.2.
Accordingly, we have reviewed the proposed ground challenging
claims 169–171, 194, 196, 197, 217, and 234–236 as obvious over Paulos,
Katz, and level of ordinary skill in the art and we are persuaded, on this
record, that Petitioner has not established a reasonable likelihood of
prevailing in its challenge to claims 169–171, 194, 196, 197, 217, and 234–
236 on this ground.
III. CONCLUSION
For the foregoing reasons, based on the information presented in the
Petition and the Preliminary Response, we are not persuaded that there is a
reasonable likelihood that Petitioner would prevail in showing the
unpatentability of claims 139, 157, 158, 169–171, 193, 194, 196–198, 201,
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202, 211, 213, 215–217, 219, 222–225, 227, 228, and 234–236 of the ʼ010
patent.
IV. ORDER
Accordingly, it is
ORDERED that the Petition is denied as to all challenged claims and
no trial is instituted.

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PETITIONER:
Mitchell G. Stockwell
mstockwell@kilpatricktownsend.com

D. Clay Holloway
cholloway@kilpatricktownsend.com

PATENT OWNER:
Raymond A. Joao
rayjoao@optonline.net

René A. Vazquez
rvazquez@hgdlawfirm.com