By Mark Engstrom, J.D.
Joao Control & Monitoring Systems was not entitled to reconsideration of the court’s finding that various claims of Joao’s patent on a vehicle security system were invalid as obvious over prior art, the federal district court in Detroit has ruled. Because the deposition testimony of an expert witness in another case was not an admission that the prior art did not disclose a disputed claim limitation, and because the disputed limitation was indeed disclosed in the prior art, the motion for reconsideration was denied (Joao Control & Monitoring Systems, LLC v. Chrysler Group LLC, October 7, 2016, Goldsmith, M.).
Joao alleged that FCA US, f/k/a Chrysler Group, infringed four of its patents by manufacturing, selling, and using an in-vehicle connectivity product called UConnect Access. The patents in suit described a security system that could prevent a thief from stealing a vehicle, or could allow an owner to recover a stolen vehicle.
The court previously held that the asserted patent claims were anticipated and/or obvious based on prior art, but Joao asked the court to reconsider its conclusion that independent claim 21 and various dependent claims of U.S. Patent No. 7,397,363 were invalid for obviousness, under 35 U.S.C. §103, based on prior art.
Disclosure in prior art. The disputed claim language described an apparatus in which "the first processing device determines whether an action or an operation associated with the information contained in the second signal … is an authorized or an allowed action or an authorized or an allowed operation, and … transmits the first signal to a third processing device if the action or the operation is determined to be an authorized or an allowed action or an authorized or an allowed operation" (emphasis added). Joao argued that the prior art ("Frossard") did not disclose the claim limitation "determines whether an action … is an authorized or an allowed action."
The court previously found that the correct construction of the disputed claim language was that an intermediate processing device would determine whether the vehicle owner had authorized the action "or" whether the action itself was a permitted action. In Joao’s view, however, the correct construction of the limitation would indicate that two codes—an access code and a command code (or "intervention" code)—had to be validated. Because Frossard did not disclose the validation of an intervention code, Joao argued, the disputed claim could not be anticipated or made obvious by Frossard.
The court disagreed. Because the "authorized or allowed" limitation used the disjunctive "or," the intermediate processing device needed only to determine whether the user was authorized or whether the action was permitted (i.e, one of the permissible options). Ultimately, the court concluded that Joao had not established a "palpable defect" in the summary judgment decision.
Even if the claim limitation required the intermediate device to determine that the action or operation was allowed (i.e., determine that the command code was valid), the court decided that Frossard clearly taught that validation. Sigificantly, Frossard taught that, after the intermediate device verified the access code, the device confirmed that the "intervention code" was allowed.
Testimony of expert witness. The testimony of an expert witness in another case was not an admission by FCA that the prior art did not disclose the "authorized or allowed" claim limitation of the ’363 patent, the court decided. The expert’s statements could not be imputed to FCA because the expert did not have a substantial relationship with FCA.
Admission at oral argument. Joao unsuccessfully argued that FCA’s counsel had conceded at oral argument that using an "access code" did not meet the disputed claim limitation of determining whether an action or operation was "authorized or allowed." According to the court, FCA did not make that concession. Even if the use of an access code did not, by itself, satisfy the disputed claim limitation, the court had found that Frossard clearly taught a system in which the intermediate device verified that an action or operation was allowed (by validating an "intervention" code).
The case is No. 13-cv-13957.
Attorneys: Allen M. Krass (Gifford, Krass, Sprinkle, Anderson & Cikowski, P.C.) and Maureen V. Abbey (Heninger Garrison Davis LLC) for Joao Control and Monitoring Systems LLC. Frank C. Cimino Jr. (Venable LLP) and Patrick G. Seyferth (Bush, Seyferth & Paige, PLLC) for Chrysler Group LLC, f/k/a Chrysler Corp.
Companies: Joao Control & Monitoring Systems, LLC; Chrysler Group LLC
MainStory: TopStory Patent MichiganNews
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