IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`In the Inter Partes Review of:
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`Trial Number: IPR2015-_____
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`
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`U.S. Patent No. 8,896,447
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`Filed:
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`April 16, 2014
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`Issued:
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`November 25, 2014
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`
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`Title: PROGRAMMABLE SECURITY SYSTEM
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`AND METHOD FOR PROTECTING
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`MERCHANDISE
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`Panel: To Be Assigned
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`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`P.O. Box 1450
`Alexandria, VA 22313-1450 Panel:
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`
`
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`PETITION FOR INTER PARTES REVIEW OF CLAIMS 1-12 and 15-24
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`OF U.S. PATENT NO. 8,896,447
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`PURSUANT TO 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42
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`

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`Petition for Inter Partes Review of U.S. Patent No. 8,896,447
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`TABLE OF CONTENTS
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`I.  MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) ................................................ 1 
`
`A.  Real Party-In-Interest Under 37 C.F.R § 42.8(B)(1) .......................................................... 1 
`
`B.  Related Matters Under 37 C.F.R § 42.8(B)(2).................................................................... 1 
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`C.  Lead and Backup Counsel Under 37 C.F.R. § 42.8(B)(3) .................................................. 1 
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`D.  Service Information Under 37 C.F.R. § 42.8(B)(4) ............................................................ 2 
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`II.  PAYMENT OF FEES UNDER 37 C.F.R § 42.15(A) ............................................................ 2 
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`III. 
`
`SUMMARY OF U.S. PATENT NO. 8,896,447................................................................. 3 
`
`A.   Technical Background of the ’447 Patent ........................................................................ 3 
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`B.  Description of the ’447 Patent ............................................................................................ 4 
`
`C.  Summary of the Prosecution History of the ’447 Patent .................................................... 5 
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`IV. 
`
`REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R § 42.104 ............ 9 
`
`A.  Grounds for Standing Under 37 C.F.R. § 42.104(a) ........................................................... 9 
`
`B. 
`
`Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested ............ 10 
`
`1.  Claims for Which Inter Partes Review is Requested (37 C.F.R. § 42.104(b)(1)) .......... 10 
`
`2.  The Specific Art and Statutory Ground(s) on Which the Challenge is Based Under 37
`C.F.R. § 42.104(b)(2) ............................................................................................................ 10 
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`C.  Claim Construction (37 C.F.R. § 42.104(b)(3))................................................................ 11 
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`1.  A “key” is a “remote control” ........................................................................................ 12 
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`D.  How the Construed Claims are Unpatentable (37 C.F.R. § 42.104(b)(4)) ....................... 13 
`
`V.  BRIEF DESCRIPTION OF PRIOR ART RELIED ON ...................................................... 13 
`
`A.  Background ....................................................................................................................... 13 
`
`B.  Prior Art Applied Against Challenged Claims of the ’447 Patent .................................... 13 
`
`1. 
`
` WO/1997031347 A1 (“Cowell”) .................................................................................. 13 
`
`2.  U.S. Pat. No. 6,441,719 (“Tsui”) ................................................................................... 17 
`
`i
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`Petition for Inter Partes Review of U.S. Patent No. 8,896,447
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`3.  U.S. Pat. No. 6,380,855 (“Ott”) ..................................................................................... 19 
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`4.  U.S. Pat. No. 5,650,774 (“Drori”) .................................................................................. 21 
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`5.  U.S. Reissue 33,873 (“Romano”) ................................................................................... 22 
`
`6.  U.S. Pat. No. 5,942,985 (“Chin”) ................................................................................... 24 
`
`7.  U.S. Pat. No. 5,964,877 (“Victor”) ................................................................................ 25 
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`DETAILED EXPLANATION OF PERTINENCE AND MANNER OF APPLYING
`VI. 
`CITED PRIOR ART TO EVERY CHALLENGED CLAIM....................................................... 26 
`
`VII.  CONCLUSION ................................................................................................................. 57 
`
`
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`
`ii
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`Petition for Inter Partes Review of U.S. Patent No. 8,896,447
`
`LIST OF EXHIBITS
`
`Exhibit No.
`
`Description
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`1001
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`1002
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`1003
`
`1004
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`1005
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`1006
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`1007
`
`1008
`
`
`
`WO/1997031347 A1 (“Cowell”)
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`U.S. Pat. No. 6,441,719 (“Tsui”)
`
`U.S. Pat. No. 6,380,855 (“Ott”)
`
`U.S. Pat. No. 5,650,774 (“Drori”)
`
`U.S. Reissue 33,873 (“Romano”)
`
`U.S. Pat. No. 5,942,985 (“Chin”)
`
`U.S. Pat. No. 5,964,877 (“Victor”)
`
`Declaration of Dr. Mitchell A. Thornton (“Declaration”)
`
`iii
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`

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`Petition for Inter Partes Review of U.S. Patent No. 8,896,447
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`I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1)
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`
`
`
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`The following mandatory notices are provided as part of this Petition.
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`A. Real Party-In-Interest Under 37 C.F.R § 42.8(B)(1)
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`The real parties-in-interest for this Petition are Hangzhou Langhong
`
`Technology Co., Ltd. and Langhong Technology USA Inc. (collectively,
`
`“Petitioner”).
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`B. Related Matters Under 37 C.F.R § 42.8(B)(2)
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`
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`U.S. Pat. No. 8,896,447 (“’447 patent”) is presently the subject of the
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`following patent infringement lawsuit brought on November 25, 2014 by InVue
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`Security Products Inc. (“InVue” or “plaintiff”) in U.S. District Court: InVue
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`Security Products, Inc. v. Hangzhou Langhong Technology Co., Ltd., et al., Case
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`No. 3:14-cv-00654 in the Western District of North Carolina, Charlotte Division.
`
`The following are known pending administrative matters: application serial no.
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`14/306,761 and 14/529,516. Both of these applications claim the benefit of
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`60/753,908, filed December 23, 2005, which is the provisional application to
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`which the ’447 patent claims priority. Moreover, the following U.S. patents issued
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`from respective applications that claim priority to 60/753,908: 8,884,762;
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`8,890,691; 7,969,305; and 7,737,846.
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`C.
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`Lead and Backup Counsel Under 37 C.F.R. § 42.8(B)(3)
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`
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`Petitioner provides the following designation of counsel:
`
`1
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,896,447
`
`Name: John D. Zele (Reg. No. 39,887)
`(Lead Counsel)
`Name: Alex Hanna (pro hac vice to be
`filed)
`MORGAN, LEWIS & BOCKIUS
`LLP
`Postal and Hand Delivery Address
`1111 Pennsylvania Avenue, NW
`Washington, DC 20004
`T: 202.739.3000
`F: 202.739.3001
`jzele@morganlewis.com
`ahanna@morganlewis.com
`
`Name: Dion M. Bregman (Reg. No.
`45,645) (Backup Counsel)
`MORGAN, LEWIS & BOCKIUS
`LLP
`Postal and Hand Delivery Address
`2 Palo Alto Square, Suite 700
`3000 El Camino Real
`Palo Alto, CA 94306
`T: 650.843.4000
`F: 650.843.4001
`dbregman@morganlewis.com
`
`D.
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`Service Information Under 37 C.F.R. § 42.8(B)(4)
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`
`
`Petitioner
`
`consents
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`to
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`electronic
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`service
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`by
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`email
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`to:
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`wapatents@morganlewis.com and dbregman@morganlewis.com.
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`E.
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`Power of Attorney Under 37 C.F.R. § 42.10(B)
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`A power of attorney is being filed concurrently herewith.
`
`F.
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`Service on the Patent Owner Under 37 C.F.R. § 42.105(A)
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`This Petition, exhibits, and all supporting evidence are being served
`
`
`
`
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`concurrently herewith by Federal Express on the patent owner as follows: InVue
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`Security Products Inc., 15015 Lancaster Highway, Charlotte NC 28277 (Attention:
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`Mr. Trent A. Kirk).
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`II.
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`PAYMENT OF FEES UNDER 37 C.F.R § 42.15(A)
`
`
`
`The undersigned authorizes the Office to charge Deposit Account No. 50-
`
`0310 (Order No. 102838-3003) for the fee set forth in 37 C.F.R. § 42.15(a) for this
`
`2
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,896,447
`
`Petition for Inter Partes Review. The undersigned further authorizes payment for
`
`any additional fees that might be due in connection with this Petition to be charged
`
`to Deposit Account No. 50-0310 (Order No. 102838-3003).
`
`III. SUMMARY OF U.S. PATENT NO. 8,896,447
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`A. Technical Background of the ’447 Patent
`
`
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`The following technical information is supported by the Declaration of Dr.
`
`Mitchell A. Thornton (“Dec.”) (Ex. 1008). The ’447 patent relates to security
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`systems and methods for protecting merchandise items (e.g., consumer electronics)
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`by utilizing a programmable key for arming and disarming a security device
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`attached to the item. ’447.1.21-26; 2.18-23; Dec. at 16. These security devices are
`
`commonly used theft-deterrent systems that include an alarm module. ’447.1.30-
`
`55; Dec. at 16. Security devices generally also include a mechanical, electrical, or
`
`magnetic key for arming and disarming the associated alarm when, for example,
`
`the item needs to be removed. ’447.1.30-55; Dec. at 16-17. The ’447 patent
`
`allegedly improves on the traditional security device system by disclosing a key
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`programmable with a security code that is unique to a particular retail store.
`
`’447.2.18-27; Dec. at 17. In addition, the programmable key may be equipped
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`with an internal timer for automatic activation, an internal counter to track the
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`number of activations, and visual indicators to display the operational status of the
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`3
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`

`Petition for Inter Partes Review of U.S. Patent No. 8,896,447
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`station. ’447.2.35-42; 52-58; 3.37-41; 4.23-29; Dec. at 17. The ’447 patent
`
`contains 24 claims, 2 of which are independent.
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`B. Description of the ’447 Patent
`
`
`
`The ’447 Patent discloses three primary components of a security system: (i)
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`a programming station; (ii) a programmable key; and (iii) an alarm module that
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`uses an attachment device to attach to an item of merchandise. ’447.6.4-10; Dec.
`
`at 17-18. A preferred attachment device may be a cable that contains a sense loop.
`
`’447.6.9-10.
`
`As shown in Fig. 1 of the ’447 patent, the alarm module 7 is
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`attached to an item of merchandise 9 through an attachment cable 11. ’447.6.4-10;
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`Dec. at 18. The programming station 3 contains a logic control circuit that further
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`includes: a main controller, a communication circuit, and a security code memory
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`communicating with the controller. The memory stores a security code known as
`
`the Security Disarm Code (SDC). ’447.6.11-31. Additionally, the ’447 patent
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`describes an upper housing member 72 in alignment with a light emitting diode 90
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`to indicate to a user the status and activation of programmable keys. ’447.8.46-50.
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`Components and functionality of the programming station, the alarm module, and
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`the programmable key, and logic control circuits, are disclosed in greater detail in
`
`U.S. Patent Nos.: (a) 7,737,844, (b) 7,737,843, and (c) 7,737,845, which are
`
`incorporated by reference in the ’447 patent. ’447.6.11-15 and 59-64; 7.9-14;
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`8.15-17 and 59-62; 12.66-67; 13.1-2; 15.3-5; Dec. at 18-19.
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`4
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`Petition for Inter Partes Review of U.S. Patent No. 8,896,447
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`
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`In operation, a programmable key is placed in the key receiving port 65 (Fig.
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`5). When the activation switch 85 is actuated, the logic control circuit 77 of the
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`programming station randomly generates a unique SDC transmitted through a
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`communication circuit to the communication circuit of the programmable key.
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`The key memory stores the SDC. The process of activation and transmission is
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`confirmed and relayed through a light emitting diode. ’447.9.1-18; Dec. at 19.
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`The alarm module can then be disarmed when a key, programmed with a valid
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`SDC, is placed into the key receiving port of the alarm module. ’447.10.47-58;
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`Dec. at 19. This is illustrated in Fig. 5, below, of the ’447 patent.
`
`
`
`
`
`In Fig. 5, the programmable key 5 is placed in the key activation port, seen
`
`at 65. Id.; Dec. at 19-20.
`
`C.
`
`Summary of the Prosecution History of the ’447 Patent
`
`
`
`U.S. Patent Application No. 14/254,224 (“’224 Application”) that led to the
`
`’447 patent was filed on April 16, 2014. Dec. at 22. The ’224 Application was
`
`filed with 24 claims; 2 of the as-filed claims were independent claims. Dec. at 22.
`
`5
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`Petition for Inter Partes Review of U.S. Patent No. 8,896,447
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`
`
`On July 24, 2014, the Examiner issued a Non-Final Office Action. Dec. at
`
`22. The Office Action, among other things, provisionally rejected all 24 claims on
`
`the grounds of nonstatutory double patenting as being unpatentable over claims of
`
`co-pending Application Nos. 13/169,968 (“’968 Application”), 14/254,210 (“’210
`
`Application”), and 14/254,244 (“’244 Application”) in view of either Sedon et al.
`
`(U.S. 2005/0073413) or Deconinck et al. (U.S. Patent No. 7,002,467). Dec. at 22-
`
`23. The Office Action noted that the ’968 Application disclosed substantially
`
`similar technology to the ’224 Application, but lacked the security device “further
`
`comprising an alarm and a plurality of connection jacks,” at least one of which
`
`could be attached to merchandise through an attachment cable. USPTO Office
`
`Action, July 24, 2014 at 4; Dec. at 23. The Office Action, however, asserted that
`
`these features were well known in the art at the time of the invention, as discussed
`
`by Sedon et al. and Deconinck et al. Dec. at 23.
`
` The Office Action also noted
`
`that missing elements of
`
`the ’244 Application, such as
`
`the “wireless”
`
`communication between the security device and the key, were either obvious to
`
`one skilled in the art or taught by Sedon et al. and Deconinck et al. Dec. at 23.
`
`Similarly, the Office Action noted that the ’244 Application was missing
`
`substantially the same elements as the ’210 Application, such as the wireless
`
`element. Dec. at 23-24.
`
`6
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,896,447
`
`
`
`On July 30, 2014, Applicant held a telephone interview with the Examiner
`
`and filed an Amendment on the same day. Dec. at 24. Response to Office Action,
`
`July 30, 2014 at 6; Dec. at 24. The Applicant noted that the issue fee for the ’968
`
`Application was unpaid, rendering it abandoned. Id. at 6; Dec. at 26. Further, to
`
`overcome the nonstatutory double patenting rejection, Applicant filed terminal
`
`disclaimers for the ’210 and ’244 Applications. Id. at 6-7; Dec. at 26.
`
`
`
`On September 12, 2014, the USPTO issued a second Office Action. Second
`
`Office Action, September 12, 2014; Dec. at 26. According to the second Office
`
`Action, all 24 claims were found to be unpatentable over claims 1-3, 6-18, and 20
`
`of Applicant’s co-pending Application No. 14/306,761 (“’761 Application”) in
`
`view of Sedon et al. or Deconinck et al. Id.; Dec. at 26. The Office Action noted
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`that Sedon and Deconinck disclosed missing elements of the ’761 Application. Id.
`
`at 5-7; Dec. at 26. The Office Action also noted that the following elements,
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`missing from the ’761 Application, would have been obvious to one skilled in the
`
`art: “wireless” communication between the “key” and the “security device,” an
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`“activation switch” at the key to initiate wireless communication, the key being
`
`reprogrammable by a person, a “visual indicator” in the key. Id. at 5-7; Dec. at 26-
`
`27.
`
`
`
`On September 12, 2014, in response to the second Office Action, the
`
`Applicant filed a Request for Reconsideration and a terminal disclaimer to
`
`7
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`Petition for Inter Partes Review of U.S. Patent No. 8,896,447
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`overcome the rejection. Response to Second Office Action, September 12, 2014;
`
`Dec. at 27. A Notice of Allowance issued on October 23, 2014; Dec. at 27.
`
`’447 Patent Elements Disclosed in the Prior Art
`
`D.
`
`Below are color-coded, annotated figures illustrating how elements of claim
`
`
`
`1 of the ’447 patent, shown through Fig. 1, are clearly disclosed in the prior art to
`
`Cowell and Tsui (see V.B infra; Exs. 1001-02), taken together.
`
`
`
`
`
`8
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,896,447
`
`
`
`IV. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R
`§ 42.104
`
`
`
`As set forth below and pursuant to 37 C.F.R. § 42.104, each requirement for
`
`inter partes review of the ’447 patent is satisfied.
`
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`
`
`
`Petitioner hereby certifies that the ’447 patent is available for inter partes
`
`review and that the Petitioner is not barred or estopped from requesting inter partes
`
`review challenging the claims of the ’447 patent on the grounds identified herein.
`
`More particularly, Petitioner certifies that: (1) Petitioner is not the owner of the
`
`’447 patent; (2) Petitioner has not filed a civil action challenging the validity of the
`
`’447 patent; (3) this Petition is filed less than one year after the date on which the
`
`Petitioner, the Petitioner’s real party-in-interest, or a privy of the Petitioner was
`
`9
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,896,447
`
`served with a complaint alleging infringement of the ’447 patent; (4) the estoppel
`
`provisions of 35 U.S.C. § 315(3)(1) do not prohibit this inter partes review.
`
`B.
`
`
`Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested
`
`
`
`Petitioner requests cancellation of claims 1-12 and 15-24 of the ’447 patent
`
`as unpatentable under 35 U.S.C. § 103(a). This Petition, supported by a
`
`Declaration of Dr. Mitchell A. Thornton (Ex. 1008), filed herewith, demonstrates
`
`that there is a reasonable likelihood that Petitioner will prevail with respect to at
`
`least one challenged claim and that each challenged claim is not patentable.
`
`1.
`
`Claims for Which Inter Partes Review is Requested (37 C.F.R.
`§ 42.104(b)(1))
`
`Inter partes review of claims 1-12 and 15-24 of the ’447 patent is requested.
`
`2.
`
`The Specific Art and Statutory Ground(s) on Which the
`Challenge is Based Under 37 C.F.R. § 42.104(b)(2)
`
`Inter partes review is requested in view of the following prior art references:
`
`Prior Art Reference
`WO/1997031347 A1 (“Cowell”)
`
`Publication/Issue Date Exhibit No.
`8-28-1997
`1001
`
`U.S. Pat. No. 6,441,719 (“Tsui”)
`U.S. Pat. No. 6,380,855 (“Ott”)
`U.S. Pat. No. 5,650,774 (“Drori”)
`U.S. Reissue 33,873 (“Romano”)
`U.S. Pat. No. 5,942,985 (“Chin”)
`U.S. Pat. No. 5,964,877 (“Victor”)
`
`8-27-2002
`4-30-2002
`7-22-1997
`4-7-1992
`8-24-1999
`10-12-1999
`
`1002
`1003
`1004
`1005
`1006
`1007
`
`All of the above references qualify as prior art against the ’447 patent under
`
`
`
`
`
`
`
`
`pre-AIA 35 U.S.C. § 102 et seq. Although Cowell, Ott, and Romano are cited as
`10
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,896,447
`
`prior art on the face of the ’447 patent, they are among over 100 other cited prior
`
`art references that were cited. Furthermore, none of these references were applied
`
`by the Examiner during prosecution of the ’447 patent. Dec. at 36-38, 42, 44.
`
`
`
`The following are specific obviousness grounds under 35 U.S.C. § 103(a)
`
`for challenging the validity of claims 1-12 and 15-24 of the ’447 patent. Dec. at
`
`54.
`
`Ground 1: Claims 1-6, 8-9, and 16-24 are obvious under 35 U.S.C. § 103(a) in
`view of Cowell further in view of Tsui.
`Ground 2: Claim 7 is obvious under 35 U.S.C. § 103(a) in view of Cowell
`further in view of Tsui, and further in view of Ott.
`Ground 3: Claims 10-11 are obvious under 35 U.S.C. § 103(a) in view of
`Cowell further in view of Tsui, and further in view of Drori.
`Ground 4: Claim 12 is obvious under 35 U.S.C. § 103(a) in view of Cowell
`further in view of Tsui, and further in view of Romano.
`Claim 15 is obvious under 35 U.S.C. § 103(a) in view of Cowell
`further in view of Tsui, and further in view of Chin or, alternatively,
`Victor.
`
`Grounds
`5-6:
`
`
`C. Claim Construction (37 C.F.R. § 42.104(b)(3))
`A claim in inter partes review is given the “broadest reasonable construction
`
`
`
`in light of the specification.” See 37 C.F.R. § 42.100(b). For the purpose of this
`
`proceeding, claim terms are presumed to take on their broadest reasonable
`
`interpretation (“BRI”). Petitioner reserves the right to contend in the concurrent
`
`11
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`

`Petition for Inter Partes Review of U.S. Patent No. 8,896,447
`
`district court actions that a different claim construction standard should apply and
`
`to advance a different construction.
`
`1.
`
`A “key” is a “remote control”
`
`
`
`Petitioner proposes a construction of the claim term “key.” The claim term
`
`“key” appears in all of the independent claims of the ’447 patent, i.e., claims 1 and
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`20. ’447.27-29; Dec. 27-28, 31-32, 36. Therefore, “key” is present, at least by
`
`dependency, in all 24 claims of the ’447 patent. Dec. 27-33, 36. A construction of
`
`“key,” supported by Dr. Thornton’s Declaration, is offered below. Dec. at 35.
`
`Term
`“key”
`
`Proposed Claim Construction
`“remote control”
`
`
` 
`
`The U.S. District Court for the Northern District of Texas (Fort Worth
`
`Division), in InVue Security Products, Inc. v. Hangzhou Langhong Tech. Co., Ltd.
`
`et al. (civil action no. 4:13-CV-457-A), construed the claim term “key” to mean
`
`“remote control.” Dec. at 35. In that case, plaintiff InVue Security Products, Inc.
`
`(“InVue”), the entity listed as assignee on the face of the ’447 patent, asserted
`
`claim 1 of U.S. Patent No. 7,737,843 (“’843 patent”) that recites the term “key,”
`
`and advanced the U.S. District Court’s adopted claim construction that a “key”
`
`means a “remote control.” Dec. at 35. Importantly, the ’843 patent disclosure is
`
`expressly incorporated by reference in the ’447 patent, making it highly relevant
`
`intrinsic evidence. ’447.7.9-14; Dec. 35. The incorporation of the ’843 patent
`
`disclosure in the ’447 patent and the U.S. District Court’s adoption of InVue’s
`12
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,896,447
`
`proposed construction that a “key” is a “remote control” support the BRI of “key”
`
`as a “remote control.” Dec. 35. See, e.g., Omega Eng’g, Inc. v. Raytek Corp., 334
`
`F.3d 1314, 1334 (Fed. Cir. 2003) (“[W]e presume, unless otherwise compelled,
`
`that the same claim term in the same patent or related patents carries the same
`
`construed meaning.”)
`
`For the purposes of this Petition, Petitioner proposes that
`
`the remaining claim terms of claims 1-12 and 15-24 of the ’447 patent should be
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`provided their ordinary and customary meaning. 
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`D. How the Construed Claims are Unpatentable (37 C.F.R. §
`42.104(b)(4))
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`
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`An explanation of how claims 1-12 and 15-24 of the ’447 patent are
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`unpatentable under 35 U.S.C. § 103(a) is provided in Sections V and VI, below.
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`V.
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`BRIEF DESCRIPTION OF PRIOR ART RELIED ON
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`A.
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`Background
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`
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`In the following section, an explanation of each invalidating prior art
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`reference is given using selected excerpts cited that are exemplary and not
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`exhaustive. The ’447 patent is a continuation of application no. 13/169,968, filed
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`on June 27, 2011, and is therefore subject to pre-AIA 35 U.S.C. § 102 et seq. The
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`’447 patent’s claims priority to provisional application no. 60/753,908 filed on
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`December 23, 2005.
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`B.
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`Prior Art Applied Against Challenged Claims of the ’447 Patent
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`1.
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` WO/1997031347 A1 (“Cowell”)
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`Petition for Inter Partes Review of U.S. Patent No. 8,896,447
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`Cowell qualifies as prior art to the ’447 patent under at least pre-AIA §
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`102(b), as Cowell was published on August 28, 1997 which is more than one year
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`prior to December 23, 2005. Although Cowell was cited on the face of the ’447
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`patent, it was not applied to reject any application claim. Cowell is directed to a
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`key operated security system for protecting merchandise from theft. Cowell, p.1 ¶
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`2 (Ex. 1001); Dec. at 38. Cowell discloses, inter alia, a “key” operated security
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`system with a key that carries a “microchip containing a security code formed by a
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`number of digits.” Id. at Abstract; Dec. at 38. This “key” is used to arm or disarm
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`an alarm. Id. at Abstract; Dec. at 38. Cowell aims to rectify a common problem
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`with various types of security systems, which require keys that “have to be
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`provided by the manufacturer and, if lost, can cause considerable problems as a
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`result of delays which would be incurred in obtaining a replacement key.” Id. at
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`p.1 ¶ 2; Dec. at 38.
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`Fig. 1, below, illustrates the first preferred form of the security system for
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`use in stores (Key added for ease of reference).
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`Petition for Inter Partes Review of U.S. Patent No. 8,896,447
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`KEY:
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`“main alarm unit 12”
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`“flex 20”
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`“garment grip 14”
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`“disarming key 16”
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`
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`Fig. 1 depicts a system with a “main alarm unit 12” attached to an item of
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`merchandise through either a suitable or a “garment grip 14.” Id. at Abstract, p.3 ¶
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`6; Dec. at 39. The garment grip:
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`carries a microswitch which is tripped when the grip is removed from
`the garment. The microswitch is closed by the presence of the
`garment and is opened when the garment is removed. The
`microswitch is connected to a plug 18 by way of a suitable flex 20, the
`plug 18 engaging in one of several sockets 22 in the main alarm unit
`12.
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`Id. at p.3 ¶ 7; Dec. at 39. Each socket 22 has an associated identical trigger circuit
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`with its “own visual indicator or LED 32 to indicate clearly which of the garment
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`grip 14 and/or flex 20 has been tampered with.” Id. at p.4 ¶ 1; Dec. at 39. In
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`operation, “if any of the grips 14 or the flexes 20 are tampered with then an alarm
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`is sounded.” Id. at p.7 ¶ 4; Dec. at 39.
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`Petition for Inter Partes Review of U.S. Patent No. 8,896,447
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`The system also includes a disarming key 16, which has a number of pins 24
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`that connect with a microchip 17 in the key in which a variable four-digit code is
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`pre-programmed. Id. at p.3 ¶ 9; Dec. at 40. This security code is read into the
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`logic control circuit, discussed in further detail below, to inhibit the alarm. Id. at
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`Abstract; Dec. at 40. When the key is removed, remote sensors 14 can generate a
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`trigger signal in response to sensed conditions such as the removal of merchandise,
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`and will then cause activation of the alarm. Id. at Abstract; Dec. at 40.
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`The logic control circuit includes a “microprocessor 102 with means 152 for
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`reading the key security code of a key inserted in the socket 104, a store means
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`(RAM) 154 for storing a key security code, monitoring means 156 for scanning the
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`socket 104 and monitoring the presence or absence of a key in the socket, and a
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`comparator 158 for comparing the security code stored in the store 154 with the
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`key security code read from the key inserted in the socket 104.” Id. at p.4 ¶ 3, Fig.
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`2; Dec. at 40-41.
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`
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`In operation, the system “has the great advantage that if the disarming key
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`16 is lost or damaged it can be easily replaced and the replacement key does not
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`have to have stored in its memory the same four digit code as the original key.” Id.
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`at p.7 ¶ 6; p.8 ¶ 1; Dec. at 41. This can be implemented by disconnecting the
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`power supply to the system, thus wiping the original stored four-digit code, and
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`reconnecting the power supply with the new key inserted. Id. at p.8 ¶ 1; Dec. at
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`16
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`Petition for Inter Partes Review of U.S. Patent No. 8,896,447
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`41. The power supply may come from a battery or a main supply. Id. at p.9 ¶ 1;
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`Dec. at 41.
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`2.
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`U.S. Pat. No. 6,441,719 (“Tsui”)
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`Tsui qualifies as prior art to the ’447 patent under at least pre-AIA § 102(b),
`
`as Tsui issued as a patent on August 27, 2002 which is more than one year prior to
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`December 23, 2005. Tsui was not cited or considered in the prosecution of the
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`’447 patent. Claims 1-6, 8-9, and 16-24 are obvious in view of Cowell in view of
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`Tsui. Dec. at 46, 48.
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`
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`Tsui is directed to wireless security systems with a signaling device capable
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`of receiving and verifying coded signals. Tsui, col. 1.9-14 (Ex. 1002); Dec. at 46.
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`Tsui identifies problems in conventional security systems using a single, fixed
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`identification code: for example, the code may be detected by a hostile user, or
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`generated by a non-system source and incorrectly recognized as a system signal.
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`Id. at col. 1.33-39; Dec. at 46. To address these issues, Tsui discloses a security
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`system with a control unit “which operates with a number of peripheral devices,
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`each having different identification codes which cannot be easily detected.” Id. at
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`col. 1 ll. 40-43; Dec. at 46.
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`Fig. 1A, below, depicts a block diagram illustrating one embodiment of the
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`security system which includes a security console 20 comprising a housing 22, a
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`keypad 24 which may be alphanumeric, a display panel 26, and an opening 28 to
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`Petition for Inter Partes Review of U.S. Patent No. 8,896,447
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`facilitate the projection of audio signals (Key added for ease of reference). Id. at
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`col. 2.39-64; Dec. at 46-47.
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`KEY:
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`“security console 20”
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`“housing 22”
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`“keypad 24”
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`“remote control 40”
`
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`The security console further comprises a micro-controller, a memory, a
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`powerup reset circuit, LED display, tamper switches, and a voltage regulator. Id.
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`at col. 3; ll. 29-47; Dec. at 47.
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`In operation, when each peripheral device is activated a unique identification
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`code and associated variable security code is transmitted from the device to the
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`security console. Id. at col. 3.49-56; Dec. at 47. This information is stored in the
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`memory. Id. at col. 3.49; Dec. at 47. The housing, which includes the keypad and
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`LED display, is coupled to tamper switches via a tamper detection circuit to
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`determine if the housing is subject to a predetermined level of pressure indicative
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`of tampering or breakage. Id. at col. 5.11-26; Dec. at 47. When such a level is
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`Petition for Inter Partes Review of U.S. Patent No. 8,896,447
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`detected, the micro-controller may activate an alarm. Id. at col. 5.23-26; Dec. at
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`47. The micro-controller may also receive signals from any of the remote
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`controllers that have both a unique identification code and a variable security code.
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`Id. at col. 4.65-67; Dec. at 47-48. These remote controllers can be used to arm or
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`disarm the security console by initiating transmissions between the security
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`console and the signaling devices. Id. at col. 5.1-10; Dec. at 48. Tsui therefore
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`remedies the deficiency of Cowell; namely, Tsui teaches a key configured to
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`wirelessly communicate with the security device to arm or disarm the security
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`device upon a matching of the security code stored in the memory of the security
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`device with the security code stored in the memory of the key. Dec. at 48.
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`Tsui also discloses a receiver, from which the processer may receive signals.
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`These signals “include a unique identification code and a variable security or
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`rolling code.” Id. at. col. 9.56-62; Dec. at 48. If the processor determines that the
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`received signal is valid and intended for the signaling device, it will activate an
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`alarm. Id.; Dec. at 48.
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`3.
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`U.S. Pat. No. 6,380,855 (“Ott”)
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`
`
`Ott qualifies as prior art to the ’447 patent under at least pre-AIA § 102(b),
`
`as Ott issued as a patent on April 30, 2002 which is more than one year prior to
`
`December 23, 2005. Ott was cited on the face of the ’447 patent, but was not
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`Petition for Inter Partes Review of U.S. Patent No. 8,896,447
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`applied to reject any application claim. Claim 7 is obvious in view of Cowell in
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`view of Tsui further in view of Ott. Dec. at 42, 44.
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`Ott is directed to an apparatus for safeguarding a merchandise item against
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`theft in a manner that improves presentation of the merchandise item. Ott, col.
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`1.43-46 (Ex. 1003); Dec. at 42. Ott proposes to overcome inadequacies of
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`common safeguarding apparatuses that have a safeguarding part for fixing to the
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`merchandise item as well as a connecting cord for connecting the safeguarding part
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`to an object not at risk for theft. Id. at col. 1.5-10; Dec. at 42-43. These
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`inadequacies include difficulty in fixing the safeguarding part to comparatively
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`small merchandise items or items with curved surfaces, as well as systems that
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`adversely affect the presentation of the merchandise item. Id. at col. 1.24-30; Dec.
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`at 43.
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`Ott discloses a “fixing part” that can be held in a “particularly reliable
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`manner on the merchandise item, for example by means of a flexible adhesive pad
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`disposed on the surface of the fixing part which faces the merchandise item.” Ott
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`at col. 2.5-15; Dec. at 43. Such a system is depicted in Fig. 1, below.
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`In Fig. 1, three contact elements 38, 39, and 40 can be fixed to the
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`merchandise item 12 by means of adhesive pads. Id. at col. 8.36-40; Dec. at 43.
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`These pads correspond to the adhesive pad 28 of the ho