Paper 35
`Trials@uspto.gov
`571-272-7822 Entered: September 28, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`MOBILE TECH, INC.,
`Petitioner,
`
`v.
`
`INVUE SECURITY PRODUCTS INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00892
`Patent 8,884,762 B2
`____________
`
`
`
`
`Before JUSTIN T. ARBES, STACEY G. WHITE, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`GALLIGAN, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a)
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: September 28, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`MOBILE TECH, INC.,
`Petitioner,
`
`v.
`
`INVUE SECURITY PRODUCTS INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00892
`Patent 8,884,762 B2
`____________
`
`
`
`
`Before JUSTIN T. ARBES, STACEY G. WHITE, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`GALLIGAN, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`IPR2016-00892
`Patent 8,884,762 B2
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`
`I. INTRODUCTION
`In this inter partes review, instituted pursuant to 35 U.S.C. § 314 and
`37 C.F.R. § 42.108, Mobile Tech, Inc. (“Petitioner”) challenges the
`patentability of claims 1–27 (“the challenged claims”) of U.S. Patent No.
`8,884,762 B2 (“the ’762 patent,” Ex. 1001), owned by InVue Security
`Products Inc. (“Patent Owner”).
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision, issued pursuant to 35 U.S.C. § 318(a), addresses issues and
`arguments raised during trial. For the reasons discussed below, we
`determine that Petitioner has proven by a preponderance of the evidence that
`claims 1–27 of the ’762 patent are unpatentable. See 35 U.S.C. § 316(e) (“In
`an inter partes review instituted under this chapter, the petitioner shall have
`the burden of proving a proposition of unpatentability by a preponderance of
`the evidence.”).
`
`A. Procedural History
`On April 14, 2016, Petitioner requested an inter partes review of
`claims 1–27 of the ’762 patent. Paper 4 (“Pet.”). Patent Owner filed a
`Preliminary Response. Paper 8 (“Prelim. Resp.”). In a Decision on
`Institution of Inter Partes Review, the panel instituted trial of claims 1–27
`on the following grounds of unpatentability:
`1. Whether claims 1, 2, 5–9, and 11–27 are unpatentable under 35
`U.S.C. § 102 as anticipated by Belden.1
`
`2. Whether claims 3 and 4 are unpatentable under 35 U.S.C. § 103(a)
`as having been obvious over Belden and Sedon;2
`
`
`1 US 2007/0159328 A1, published July 12, 2007 (Ex. 1002).
`2 US 2005/0073413 A1, published Apr. 7, 2005 (Ex. 1004).
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`3. Whether claim 10 is unpatentable under 35 U.S.C. § 103(a) as
`having been obvious over Belden and Rothbaum;3
`
`4. Whether claims 1, 5–20, 22–25, and 27 are unpatentable under
`35 U.S.C. § 103(a) as having been obvious over Rothbaum and
`Denison;4 and
`
`5. Whether claims 2–4, 21, and 26 are unpatentable under 35 U.S.C.
`§ 103(a) as having been obvious over Rothbaum, Denison, and
`Ott.5
`
`Paper 9 (“Dec. on Inst.”), 24–25.
`During the trial, Patent Owner filed a Response (Paper 18, “PO
`Resp.”), and Petitioner filed a Reply (Paper 22, “Pet. Reply”). In addition,
`Patent Owner filed a Motion to Exclude evidence. Paper 26. Petitioner filed
`an Opposition to Patent Owner’s Motion to Exclude (Paper 29), and Patent
`Owner filed a Reply in support of its Motion to Exclude (Paper 30).
`An oral hearing was held on June 14, 2017, a transcript of which
`appears in the record. Paper 32.
`B. Related Matters
`The parties indicate the ’762 patent is at issue in InVue Security
`Products Inc. v. Mobile Tech, Inc., 3:15-cv-00610 (W.D.N.C.). Pet. 1;
`Paper 7, 1. Petitioner also has filed petitions for inter partes review
`involving the same parties and related patents. Pet. 1; Paper 7, 1; Paper 13,
`2–3; Paper 21, 1–2; IPR2016-00895, IPR2016-00896, IPR2016-00898,
`IPR2016-00899, IPR2016-01241, IPR2016-01915, IPR2017-00344,
`IPR2017-00345, IPR2017-01900, and IPR2017-01901. In addition, the
`
`
`3 US 5,543,782, issued Aug. 6, 1996 (Ex. 1005).
`4 US 2004/0201449 A1, issued Oct. 14, 2004 (Ex. 1003).
`5 US 6,380,855 B1, issued Apr. 30, 2002 (Ex. 1006).
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`parties identify certain patents and pending patent applications that may be
`affected by a decision in this proceeding. See Paper 7, 1; Pet. 1; Paper 13, 3;
`Paper 21, 2.
`
`C. The ’762 Patent and Illustrative Claim
`The ’762 patent relates to programmable security systems for
`protecting merchandise. See Ex. 1001, Abstract. Figure 1 of the ’762 patent
`is reproduced below.
`
`Figure 1 depicts security system 1 that includes programming station 3,
`programmable key 5, and alarm module 7 adapted to be attached to item of
`merchandise 9 by cable 11 with sense loop 13. Id. at 6:4–10. Programming
`station 3 randomly generates a unique security code (Security Disarm Code,
`or “SDC”) that is transmitted via wireless (e.g., infrared) link to
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`programmable key 5, which in turn stores the SDC in key memory. Id. at
`6:29‒31, 7:25‒30, 9:7‒13. Once programmed with an SDC, programmable
`key 5 is taken to one or more alarm modules 7 and the SDC is
`communicated via circuitry to the respective alarm module, which stores the
`SDC in its memory. Id. at 9:26‒35.
`Cable 11 extends between alarm module 7 and item of merchandise 9.
`Ex. 1001, 7:54–56, Fig. 1. If sense loop 13 (which contains electrical or
`fiber optic conductors) is compromised, such as by cutting cable 11 or by
`pulling the cable loose from alarm module 7 or item of merchandise 9, the
`alarm module emits an audible alarm. Id. at 7:52‒64. To disarm alarm
`module 7, programmable key 5 programmed with a valid SDC is placed into
`key receiving port 65 of alarm module 7, and circuits in the alarm module
`and the key communicate with one another to deactivate the alarm, thereby
`enabling cable 11 to be removed from the merchandise item without
`triggering an alarm. Id. at 10:47‒59. Programmable key 5 then may be used
`to re-arm the alarm module. Id. at 10:59–63. “[T]o disarm and re-arm alarm
`module 7, the SDC memory 53 of the alarm module must read the same
`SDC that was randomly generated by the programming station 3 and
`programmed into the programmable key 5 and subsequently provided by the
`key to the alarm module.” Id. at 10:66‒11:4.
`Claims 1 and 25 are independent claims. Claims 2–24 depend directly
`or indirectly from independent claim 1, and claims 26 and 27 depend from
`claim 25. Claim 1 is illustrative of the challenged claims and is reproduced
`below:
`
`A programmable security system for protecting items of
`1.
`merchandise from theft, the programmable security system
`comprising:
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`a programming station configured to generate a security
`code and having a memory for storing the security code;
`a programmable key configured to communicate with the
`programming station to receive the security code and to store the
`security code in a memory; and
`a security device comprising an alarm and a memory for
`storing the security code, the security device configured to be
`attached to an item of merchandise, the security device further
`comprising a switch configured to be actuated for activating the
`alarm in response to the integrity of the security device being
`compromised,
`to
`is configured
`the programmable key
`wherein
`communicate with the security device to arm or disarm the
`security device upon a matching of the security code stored in
`the memory of the security device with the security code stored
`in the memory of the programmable key.
`
`
`
`II. ANALYSIS
`A. Claim Interpretation
`
`The Board interprets claims in an unexpired patent using the “broadest
`reasonable construction in light of the specification of the patent in which
`[they] appear[].” 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs., LLC
`v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest
`reasonable interpretation standard). Under this standard, we interpret claim
`terms using “the broadest reasonable meaning of the words in their ordinary
`usage as they would be understood by one of ordinary skill in the art, taking
`into account whatever enlightenment by way of definitions or otherwise that
`may be afforded by the written description contained in the applicant’s
`specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
`We presume that claim terms have their ordinary and customary meaning.
`See Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016)
`
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`(“Under a broadest reasonable interpretation, words of the claim must be
`given their plain meaning, unless such meaning is inconsistent with the
`specification and prosecution history.”); In re Translogic Tech., Inc., 504
`F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary meaning is
`the meaning that the term would have to a person of ordinary skill in the art
`in question.” (internal quotation marks omitted)). A patentee, however, may
`rebut this presumption by acting as his own lexicographer, providing a
`definition of the term in the specification with “reasonable clarity,
`deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`1994).
`
`1. “Programmable Key”
`In the Decision on Institution, the panel preliminarily determined that
`the claim term “programmable key” is not “limited to a programmable key
`that ‘deactivates itself upon the occurrence of a specific event,’ as argued by
`Petitioner,” and that “a key that is able to be programmed once is within the
`broadest reasonable interpretation of a ‘programmable key.’” Dec. on
`Inst. 5. The parties do not dispute this interpretation, and we do not perceive
`any reason or evidence that compels any deviation from the interpretation.
`Accordingly, we adopt the previous analysis for purposes of this Decision.
`
`2. “Unique Security Code”
`In the Decision on Institution, the panel stated that it “agree[s] with
`the parties that a randomly generated security code is within the broadest
`reasonable interpretation of ‘unique security code,’” but the panel did not
`further construe the term “unique security code.” Dec. on Inst. 5–6. The
`parties do not dispute this interpretation, and we do not perceive any reason
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`or evidence that compels any deviation from the interpretation.
`Accordingly, we adopt the previous analysis for purposes of this Decision.
`
`3. “Upon a Matching”
`Claim 1 recites that “the programmable key is configured to
`communicate with the security device to arm or disarm the security device
`upon a matching of the security code stored in the memory of the security
`device with the security code stored in the memory of the programmable
`key” (emphasis added). Claim 25 recites “actuating the programmable key
`storing the security code to communicate with the security device to arm or
`disarm the security device upon a matching of the security code stored in the
`security device with the security code stored in the programmable key”
`(emphasis added).
`Patent Owner argues in its Response that “upon a matching” should
`be interpreted to mean “on or after a match.” PO Resp. 4–11. Petitioner
`argues that the phrase means “as a result of a determination of a match.”
`Pet. Reply 5–11. During the hearing, Patent Owner agreed to the “as a result
`of” portion of Petitioner’s proposed interpretation but disagreed as to the
`“determination of a match” aspect. Tr. 43:13–45:5, 50:18–21 (“[W]e do
`agree that there has to be a cause, causal connection. So we would also be
`happy with, you know, a definition of upon a match being a result of the
`matching.”). Thus, the parties agree that the claim language requires a
`causal relationship between the matching of the security codes and the
`arming or disarming of the security devices (i.e., the arming or disarming is
`“as a result of” the matching). See id.; Pet. Reply 6. The dispute we must
`resolve is whether the arming or disarming must be as a result of a
`“determination of a match.” See Tr. 86:6–87:19.
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`We begin with the plain language of the claims. The term “matching”
`is used as a gerund (i.e., a verb acting as a noun) in claims 1 and 25 and
`ordinarily means “[t]he action of match.” Ex. 1020, 4, 6. Thus, the use of
`“upon a matching” suggests some action of a match, as opposed to, for
`example, “upon a match,” which might be read to require simply the
`existence of a match. This supports Petitioner’s view that the arming or
`disarming must be as a result of a “determination of a match” (a particular
`type of action).
`Turning to the Specification, only the Abstract uses the term
`“matching,” and it largely repeats the phrasing of the claims. Ex. 1001,
`Abstract. The verb “match” also appears twice. Although this usage is
`“match” rather than “matching,” both times the Specification uses the term
`to describe a determination of whether the security code stored in the
`programmable key is the same as what is stored in the programming station,
`and then performing some action based on the outcome of that
`determination. Id. at 3:32–37 (“enable the programming station to
`immediately ‘time-out’ the key . . . upon the programming station reading a
`SDC stored in the key that does not match the SDC of the programming
`station”), 4:4–8 (“the logic control circuit of the programming station may
`be configured to permanently inactivate the SDC in a programmable key if
`the SDC programmed in the key does not match the SDC of the
`programming station”). These portions, therefore, are consistent with
`Petitioner’s proposed interpretation requiring a determination of a match.
`The Specification also describes, in connection with disarming and
`re-arming the security device, reading the security codes in the
`programmable key and security device to determine if they are the same.
`
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`“In order to disarm alarm module 7, a programmable key 5 programmed
`with a valid SDC that is still within the active predetermined time period is
`placed into the key receiving port 65 of the alarm module, . . . and activation
`switch 85 is energized by depressing the flexible member 87 on the key.”
`Ex. 1001, 10:47–52. Alarm module 7 and programmable key 5 then
`communicate with each other to deactivate the alarm, “thereby enabling
`cable 11 and any associated sensor to be removed from an item of
`merchandise 9 for sale of the merchandise to a customer.” Id. at 10:52–59.
`“The programmable key 5 may then be used to re-arm the alarm module 7
`by again presenting the key to the key receiving port 65 on the alarm module
`and depressing the flexible member 87 to energize the activation switch 85.”
`Id. at 10:59–63.
`Importantly, the Specification states that “in order to disarm and
`re-arm alarm module 7, the SDC memory 53 of the alarm module must read
`the same SDC that was randomly generated by the programming station 3
`and programmed into the programmable key 5 and subsequently provided by
`the key to the alarm module.” Id. at 10:66–11:4 (emphases added). “If a
`SDC is sensed by alarm module 7 that is different than the one stored in
`SDC memory 53, controller 49 of alarm module 7 will sound alarm 51 to
`indicate that an invalid programmable key 5 has been used.” Id. at 11:4–8
`(emphasis added); see also id. at 4:48–61 (“disarming the security device
`upon verifying . . . the security code in the alarm module with the security
`code in the key”). Thus, for disarming and re-arming the security device,
`the Specification describes reading the security codes in the programmable
`key and security device and making a determination of whether they match.
`Patent Owner acknowledges this disclosure from the Specification
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`with respect to disarming and re-arming but argues that the Specification
`describes another way to arm “upon a matching.” PO Resp. 11. According
`to Patent Owner, programming the security code into the security device
`“causes a matching of the memories of the programmable key and the
`security device, thus meeting a condition precedent to arm the device.” Id.
`at 6 (first emphasis added). Patent Owner argues that the security codes in
`the programmable key and security device match “after the
`programming/storing function occurs” and that “this matching of the SDC
`codes must occur in order to arm the security device,” citing the testimony
`of the parties’ declarants and Figure 13 of the ’762 patent. Id. at 7–9.
`Petitioner responds that the programming cited by Patent Owner simply
`involves the security code being “copied from the key into the alarm
`module,” without any “check . . . to see if the SDC in the alarm module and
`key ‘read the same.’” Pet. Reply 10. Thus, programming the security
`device with the security code does not involve “matching” as recited in the
`claims. Id.
`We agree with Petitioner as to the initial programming of the security
`code into the security device. The Specification states that
`[o]nce programmed with the SDC, key 5 is taken to one or more
`alarm modules 7 (or other security devices) and key end 93 is
`inserted into key receiving port 65, as shown in FIG. 5.
`Activation switch 85 of key 5 is then actuated, thereby
`programming the SDC via the communication circuit 50 of alarm
`module 7 and communication circuit 79 of key 5 into security
`code (SDC) memory 53 of the logic control circuit 46 of the
`alarm module 7. SDC memory 53 permanently stores the
`randomly generated SDC in the alarm module 7, preferably for
`the remaining lifetime of the alarm module.
`Ex. 1001, 9:26–35 (emphases added). This merely indicates that the security
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`code is programmed (i.e., stored) into the security device, not that the
`security device is armed “upon a matching.” See id.; Pet. Reply 9. Indeed,
`claims 1 and 25 separately recite the security device “storing” the security
`code and “arm[ing] or disarm[ing]” the security device, indicating that the
`two actions are not the same. Further, in contrast to the portions of the
`Specification cited above regarding disarming and re-arming, which
`specifically refer to the security codes being “read” and being the “same,”
`the portions cited by Patent Owner regarding initial programming include no
`such language. See PO Resp. 7–10 (citing Ex. 1001, 3:67–4:3, 4:45–47,
`9:26–39, 11:27–29).
`We also are not persuaded by Patent Owner’s arguments (PO Resp. 8–
`9) regarding Figure 13 of the ’762 patent, which is reproduced below.
`
`
`Figure 13 “illustrates in flow chart form the manner of operation of the logic
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`control circuit 46 of alarm module 7,” the sequence of events and actions of
`which are “readily understood and appreciated by those skilled in the art.”
`Ex. 1001, 11:52–57. Patent Owner contends that “[t]he security device goes
`from a ‘DISARMED’ state to an ‘ARMED’ state only upon a matching
`occurring between the SDC in the programmable key and the code in the
`security device.” PO Resp. 8. The point at which the security codes in the
`programmable key and security device become the same, however, is
`earlier—when the security code is first programmed into the security device
`in the “STORE SDC” step. Ex. 1001, Fig. 13. After doing so, the security
`device moves to the “DISARMED” state, and only moves to the “ARMED”
`state when the sense loop connected to the item of merchandise is
`determined to be valid (“SN LOOP VALID”). Id., Fig. 13, 3:63–4:3, 7:50–
`8:4. Thus, Figure 13 does not support Patent Owner’s position regarding the
`“upon a matching” claim language.
`Finally, we note that the parties also disagree as to whether the “upon
`a matching” language requires the arming or disarming to take place
`“immediately” as a result of the matching. See, e.g., PO Resp. 17–18; Pet.
`Reply 6–7 & n.1; Tr. 44:7–16, 59:9–60:17, 69:19–70:10, 112:11–115:4.
`Petitioner submits dictionary definitions of “on,” including “[o]n the
`occasion of (an action),” “immediately after (and because of or in reaction
`to),” and “as a result of.” Ex. 1020, 3; see Pet. Reply 6 n.1 (also arguing that
`“upon” means “on”). However, unlike the disclosure of the Specification
`cited above, which supports Petitioner’s view that the arming or disarming
`must be “as a result of” a determination of a match, we see no language in
`the claims or written description pertaining to the timing of when the arming
`or disarming must occur. Thus, we are not persuaded to read into the claims
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`a requirement that the arming or disarming take place “immediately” after a
`matching. The only requirement supported by the claim language and
`Specification is arming or disarming as a result of a determination of a
`match.
`Reading the Specification of the ’762 patent as a whole, we are
`persuaded that Petitioner’s proposed interpretation of “upon a matching” is
`the broadest reasonable interpretation in light of the Specification.
`Accordingly, we interpret “upon a matching” to mean as a result of a
`determination of a match.
`
`4. “Communicate” and “Configured to Communicate”
`Petitioner argues that the terms “communicate” and “configured to
`communicate,” as used in the challenged claims of the ’762 patent,
`“encompass both wireless and wired forms of communication.” Pet. 7.
`Petitioner bases this argument on the Specification’s disclosure that
`“[a]nother aspect of the present invention is to provide various forms of data
`communication between the various elements of the security system,”
`including, “[i]n one preferred embodiment, . . . by wireless communication,”
`and, “[i]n another preferred embodiment, . . . through electrical contacts.”
`Ex. 1001, 3:4–16. Petitioner proposes this construction to argue that
`Application Number 11/639,102, to which the ’762 patent claims priority,
`does not describe wired communication and, therefore, does not provide
`written description support for the claimed subject matter reciting
`“communicate” and “configured to communicate.” See Pet. 17–20. In
`particular, Petitioner contends that the continuation-in-part application to
`which the ’762 patent claims priority “broadened the meaning of the term
`‘communicate’ within the claims to encompass the genus of both wireless
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`and non-wireless communication” by reciting other forms of
`communication, such as communication “through electrical contacts.” Pet.
`19–20 (citing Ex. 1001, 3:4–19).
`We do not agree that the recital of various “forms of data
`communication” (Ex. 1001, 3:4–19) in the ’762 patent broadened the
`meanings of the term “communicate” and the phrase “configured to
`communicate” themselves. Rather, the “forms” of communication in the
`cited portion of the ’762 patent merely represent examples of the media or
`means by which the communication occurs in various preferred
`embodiments. Ex. 1001, 3:4–19 (listing at least seven examples). Thus,
`Petitioner does not persuade us that we need to construe the terms
`“communicate” and “configured to communicate” expressly to encompass
`both wireless and wired communications.
`B. Principles of Law
`To establish anticipation, each and every element in a claim, arranged
`as recited in the claim, must be found in a single prior art reference. Net
`MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
`Although the elements must be arranged or combined in the same way as in
`the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e.,
`identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334
`(Fed. Cir. 2009).
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
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`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) when in evidence, objective
`evidence of non-obviousness (i.e., secondary considerations). Graham v.
`John Deere Co., 383 U.S. 1, 17–18 (1966).
`C. Level of Ordinary Skill in the Art
`Section 103(a) forbids issuance of a patent when “the differences
`between the subject matter sought to be patented and the prior art
`are such that the subject matter as a whole would have been
`obvious at the time the invention was made to a person having
`ordinary skill in the art to which said subject matter pertains.”
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C.
`§ 103(a)).
`Petitioner’s declarant, Mr. Thaine Allison, testifies:
`[A] [person of ordinary skill in the art] would have had a four
`year technical degree (e.g. B.S. engineering) with a minimum of
`three years of experience in using, provisioning, designing or
`creating, or supervising the design or creation, of such theft
`prevention devices, and other related security devices. Extended
`experience in the industry could substitute for a technical degree.
`A [person of ordinary skill in the art] would have known how to
`research the technical literature in fields relating to theft
`prevention, including in retail and other environments, as well as
`security in general. Also, a [person of ordinary skill in the art]
`may have worked as part of a multidisciplinary team and drawn
`upon not only his or her own skills, but also taken advantage of
`certain specialized skills of others in the team, e.g., to solve a
`given problem. For example, designers, engineers (e.g.,
`mechanical or electrical), and computer scientists or other
`computer programmers may have been part of a team.
`Ex. 1015 ¶ 22.
`
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`16
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`
`Patent Owner provides a slightly different skill level:
`[A] [person of ordinary skill in the art] would have the equivalent
`of a four-year degree in electrical engineering, computer
`engineering, computer science, or the equivalent and would also
`have approximately two to five years of professional experience
`and be trained in electronics including microcontrollers, and
`embedded programming for microcontrollers.
`PO Resp. 12 (citing Ex. 2001 ¶ 34). Patent Owner’s declarants, Dr. Harry
`Direen and Mr. Christopher Fawcett, testify that a person of ordinary skill in
`the art would have been
`an engineer (with a B.S. in electrical engineering, computer
`engineering, computer science, or the equivalent) with 2 to 5
`years of experience and trained in electronics including
`microcontrollers,
`and
`embedded
`programming
`for
`microcontrollers. He/she would have been familiar with
`flowcharts and turning flowcharts and system operational
`descriptions into working software/firmware. He/she would
`have been familiar with asynchronous serial communications
`which were very common in systems that use microcontrollers.
`He/she would have been adept at turning design concepts into
`working products.
`Ex. 2001 ¶ 34; Ex. 2013 ¶ 39.
`Neither party explains in detail why its proposed level of ordinary
`skill in the art should be adopted nor how the different levels affect the
`parties’ analyses. Although there are slight differences between the
`proposed levels of ordinary skill in the art, the parties’ declarants agree that
`an ordinarily skilled artisan would have had a four-year technical degree or
`the equivalent and some amount of professional experience. Based on the
`evidence of record, including the testimony of the parties’ declarants, the
`subject matter at issue, and the prior art of record, we determine that the skill
`level of a person of ordinary skill in the art would have been that of a person
`
`
`
`17
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`IPR2016-00892
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`having a four year technical degree or equivalent experience with a
`minimum of two years of professional technical experience in the field of
`theft prevention devices or related security devices. We apply this level of
`ordinary skill in the art in our obviousness analysis.
`D. Unpatentability Challenge Based on Rothbaum and Denison
`(Claims 1, 5–20, 22–25, and 27)
`
`Petitioner contends that the subject matter of claims 1, 5–20, 22–25,
`and 27 would have been obvious based on the combination of Rothbaum and
`Denison. Pet. 4, 35–54. Petitioner explains how the cited prior art
`references teach the claimed subject matter, provides reasoning as to why
`one of ordinary skill in the art would have been motivated to combine their
`respective teachings, and relies upon the Allison Declaration to support its
`positions. Id. at 35–54.
`
`1. Independent Claims 1 and 25
`Petitioner relies on Rothbaum for teaching certain limitations of
`claims 1 and 25 and relies on Denison for teaching other limitations. See
`Pet. 35–46. Below we address Petitioner’s contentions as to each reference
`and then address Petitioner’s contentions and Patent Owner’s arguments
`with respect to the combination of the teachings of Rothbaum and Denison.
`
`a. Analysis of Rothbaum
`Claim 1 is directed to “[a] programmable security system for
`protecting items of merchandise from theft,” and independent claim 25 is
`directed to “[a] method for protecting items of merchandise from theft.”
`Petitioner contends Rothbaum discloses a security system for protecting
`merchandise, as illustrated in Figure 1 of Rothbaum, reproduced below.
`Pet. 35, 41, 45.
`
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`18
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`In Figure 1, “a twelve jack security system 10 is shown which can protect
`twelve items of merchandise.” Ex. 1005, 5:10–11. We are persuaded by
`Petitioner’s argument, and we find Rothbaum discloses a security system for
`protecting items of merchandise from theft and a method for protecting
`items of merchandise from theft. See, e.g., id. at 5:10–11, Fig. 1; see also id.
`at 1:6–9 (“The present invention generally relates to security systems, and
`more specifically to electronic security systems used in retail stores, offices,
`hotels and other establishments to prevent the theft of merchandise.”).
`Petitioner argues Rothbaum’s disclosure of “strip or housing 12”
`connecting to article of merchandise 22 via “item cord 28” teaches a
`“security device configured to be attached to an item of merchandise,” as
`
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`recited in independent claim 1, and “attaching a security device to an item of
`merchandise,” as recited in independent claim 25. Pet. 35, 43–46 (citing,
`inter alia, Ex. 1005, Fig. 1, 5:62–6:4). We are persuaded by Petitioner’s
`argument, and we find Rothbaum teaches these limitations of claims 1
`and 25 based on Rothbaum’s disclosure in Figure 1 that item cord 28
`connects strip 12 to sensor 24 on article of merchandise 22. See Ex. 1005,
`5:62–6:2 (“Hard goods sensor 24, including a sensor housing 23, is attached
`to the article 22 . . . . Item cord 28 is of sufficient length to connect the
`sensor 24 to the alarm circuitry in strip 12.”); see also Ex. 1015 ¶ 160.
`Petitioner also argues Rothbaum discloses that its security device has
`an “alarm” (horn 126) and that Rothbaum’s “tamper switch 225” teaches “a
`switch configured to be actuated for activating the alarm in response to the
`integrity of the security device being compromised,” as recited in
`independent claims 1 and 25. Pet. 35, 40, 43, 45–46 (citing, inter alia, Ex.
`1005, 6:15–22, 8:22–28, 12:10–18, Fig. 12). In particular, Petitioner argues
`that tamper switch 225 causes the horn to activate when the battery
`compartment is opened and that the integrity of the security device is
`compromised when the battery compartment is opened. Id. at 40. We are
`persuaded by Petitioner’s argument, and we find Rothbaum teaches a
`security device having an alarm and “a switch configured to be actuated for
`activating the alarm in response to the integrity of the security device being
`compromised” based on the following disclosure of Rothbaum:
`As can be seen in FIG. 12, tamper switch 225 is normally open.
`The tamper switch is activated by the battery compartment screw
`224 as can be seen in F
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