Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 34
`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.
`____________
`
`Cases IPR2016-00898 and IPR2016-00899
`Patent 9,269,247 B2
`____________
`
`
`
`Before JUSTIN T. ARBES, STACEY G. WHITE, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a)
`
`
`
`571-272-7822
`
`
`
`
`Paper 34
`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.
`____________
`
`Cases IPR2016-00898 and IPR2016-00899
`Patent 9,269,247 B2
`____________
`
`
`
`Before JUSTIN T. ARBES, STACEY G. WHITE, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a)
`
`
`
`
`IPR2016-00898 and IPR2016-00899
`Patent 9,269,247 B2
`
`
`IPR2016-00898 1–24
`
`IPR2016-00899 25–37
`
`I. BACKGROUND
`Petitioner Mobile Tech, Inc. filed two Petitions requesting inter partes
`review of claims 1–37 of U.S. Patent No. 9,269,247 B2 (Ex. 1001,1 “the
`’247 patent”), pursuant to 35 U.S.C. §§ 311–319, in Cases IPR2016-00898
`and IPR2016-00899. On September 29, 2016, an inter partes review was
`instituted in each proceeding on certain grounds of unpatentability. Patent
`Owner InVue Security Products Inc. filed a Patent Owner Response and
`Petitioner filed a Reply in each proceeding, as listed in the following chart.
`Case Number
`Challenged
`Decision
`Petition Response Reply
`Claims
`on
`Institution
`Paper 10
`(“-898
`Dec. on
`Inst.”)
`Paper 9
`(“-899
`Dec. on
`Inst.”)
`
`Paper 5
`(“-898
`Pet.”)
`
`Paper 19
`(“-898
`PO Resp.”)
`
`Paper 4
`(“-899
`Pet.”)
`
`Paper 16
`(“-899
`PO Resp.”)
`
`Paper
`23
`(“-898
`Reply”)
`Paper
`20
`(“-899
`Reply”)
`
`Patent Owner also filed a Motion to Exclude certain evidence submitted by
`Petitioner, Petitioner filed an Opposition, and Patent Owner filed a Reply in
`each proceeding, as listed in the following chart.
`Case Number
`Motion
`Opposition Reply
`
`Paper 30
`IPR2016-00898 Paper 27
`(“-898
`(“-898
`Opp.”)
`Mot.”)
`IPR2016-00899 Paper 24 Paper 26
`
`Paper 31
`
`Paper 27
`
`
`1 Unless otherwise specified, we refer to papers and exhibits filed in
`Case IPR2016-00898.
`
`
`
`2
`
`
`
`IPR2016-00898 and IPR2016-00899
`Patent 9,269,247 B2
`
`A combined oral hearing with Cases IPR2016-00892, IPR2016-00895, and
`IPR2016-00896 was held on June 14, 2017, and a transcript of the hearing is
`included in the record (Paper 33, “Tr.”).
`Cases IPR2016-00898 and IPR2016-00899 involve the same
`challenged patent and parties, and there is overlap in the asserted prior art
`and other evidence submitted by the parties. To administer the proceedings
`more efficiently, we exercise our authority under 35 U.S.C. § 315(d) to
`consolidate the two proceedings for purposes of issuing one final written
`decision.
`We have jurisdiction under 35 U.S.C. § 6. This Decision is issued
`pursuant to 35 U.S.C. § 318(a). For the reasons that follow, we determine
`that Petitioner has shown, by a preponderance of the evidence, that claims
`1–37 of the ’247 patent are unpatentable.
`
`
`A. The ’247 Patent
`The ’247 patent describes a “programmable security system and
`method for protecting an item of merchandise.” Ex. 1001, Abstract.
`Figure 1 of the ’247 patent is reproduced below.
`
`
`
`3
`
`
`
`
`
`IPR2016-00898 and IPR2016-00899
`Patent 9,269,247 B2
`
`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 col. 6, ll. 4‒10.
`Programming station 3 randomly generates a unique security code (Security
`Disarm Code, or “SDC”) that is transmitted via a wireless (e.g., infrared)
`link to programmable key 5, which in turn stores the SDC in key memory.
`Id. at col. 6, ll. 29‒31, col. 7, ll. 25‒30, col. 9, ll. 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 col. 9, ll. 26‒35.
`Cable 11 extends between alarm module 7 and item of merchandise 9.
`Id. at col. 7, ll. 54–56. 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 col. 7, ll. 52‒64. To disarm alarm
`module 7, programmable key 5 is programmed with a valid SDC 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. Id. at col. 10, ll. 47‒59. Programmable key 5 then may be used to
`re-arm the alarm module. Id. at col. 10, ll. 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 col. 10, l. 66‒col. 11, l. 8.
`
`
`
`
`4
`
`
`
`IPR2016-00898 and IPR2016-00899
`Patent 9,269,247 B2
`
`
`B. Illustrative Claim
`Claims 1, 25, and 31 of the ’247 patent are independent. Claim 1
`recites:
`
`1. A programmable security system for protecting items
`of merchandise from theft, the programmable security system
`comprising:
`a programming station comprising a logic control circuit
`configured to generate a unique security code, and a memory
`for storing the unique security code;
`a plurality of programmable keys each configured to
`communicate with the programming station to receive and store
`the unique security code in a memory, each of the plurality of
`programmable keys having the unique security code stored in
`its memory; and
`a plurality of security devices each comprising an alarm
`and a memory for storing the unique security code, each of the
`plurality of security devices having the unique security code
`stored in its memory, each of the plurality of security devices
`configured to be attached to an item of merchandise, each of the
`plurality of security devices further configured to activate the
`alarm in response to the integrity of the security device being
`compromised;
`wherein each of the plurality of programmable keys is
`configured to arm or disarm each of the plurality of security
`devices upon a matching of the unique security code stored by
`the plurality of security devices with the unique security code
`stored by the plurality of programmable keys.
`
`C. Prior Art
`The pending grounds of unpatentability in the instant inter partes
`reviews are based on the following prior art:
`U.S. Patent No. 5,543,782,
`(Ex. 1005, “Rothbaum”);
`
`issued Aug. 6, 1996
`
`
`
`5
`
`
`
`IPR2016-00898 and IPR2016-00899
`Patent 9,269,247 B2
`
`
`U.S. Patent No. 6,380,855 B1, issued Apr. 30, 2002
`(Ex. 1006, “Ott”);
`U.S. Patent Application Publication No. 2004/0201449
`A1, published Oct. 14, 2004 (Ex. 1003, “Denison”);
`U.S. Patent Application Publication No. 2005/0073413
`A1, published Apr. 7, 2005 (Ex. 1004, “Sedon”); and
`U.S. Patent Application Publication No. 2007/0159328
`A1, filed Dec. 14, 2006, published July 12, 2007 (Ex. 1002,
`“Belden”).
`
`
`D. Pending Grounds of Unpatentability
`The instant inter partes reviews involve the following grounds of
`unpatentability:
`Reference(s)
`Belden
`
`Claim(s)
`Basis
`35 U.S.C. § 102(b)2 1, 3–34, 36, and 37
`
`Belden and Sedon
`
`35 U.S.C. § 103(a)
`
`2 and 35
`
`Rothbaum and Denison 35 U.S.C. § 103(a)
`
`1 and 3–37
`
`Rothbaum, Denison,
`and Ott
`
`35 U.S.C. § 103(a)
`
`2
`
`
`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
`
`2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102, 103, and 112. Because the
`’247 patent has an effective filing date before the effective date of the
`applicable AIA amendments, we refer to the pre-AIA versions of 35 U.S.C.
`§§ 102, 103, and 112.
`
`
`
`6
`
`
`
`IPR2016-00898 and IPR2016-00899
`Patent 9,269,247 B2
`
`[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)
`(“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.” See -898 Dec. on Inst. 7; -899 Dec. on Inst. 6–7. The parties do
`
`
`
`7
`
`
`
`IPR2016-00898 and IPR2016-00899
`Patent 9,269,247 B2
`
`not dispute this interpretation, and we do not perceive any reason or
`evidence that compels any deviation from the interpretation. We adopt the
`previous analysis and need not further interpret the term for purposes of this
`Decision.
`
`
`2. “Upon a Matching”
`Claim 1 recites that “each of the plurality of programmable keys is
`configured to arm or disarm each of the plurality of security devices upon a
`matching of the unique security code stored by the plurality of security
`devices with the unique security code stored by the plurality of
`programmable keys” (emphasis added). Claim 25 recites “arming or
`disarming each of the plurality of security devices upon a matching of the
`unique security code stored by the plurality of security devices with the
`unique security code stored by the plurality of programmable keys”
`(emphasis added). Claim 31 recites “arming or disarming the security
`device upon a matching of the security code generated by the programming
`station with the security code stored by the security device” (emphasis
`added).
`Patent Owner argues in its Responses that “upon a matching” should
`be interpreted to mean “on or after a match.” -898 PO Resp. 4–12.3
`Petitioner argues that the phrase means “as a result of a determination of a
`match.” -898 Reply 5–10. During the hearing, Patent Owner agreed to the
`“as a result of” portion of Petitioner’s proposed interpretation but disagreed
`
`
`3 The parties make a number of similar arguments in their Petitions,
`Responses, and Replies. As to these arguments, we refer only to the papers
`filed in Case IPR2016-00898 for ease of reference.
`8
`
`
`
`
`
`IPR2016-00898 and IPR2016-00899
`Patent 9,269,247 B2
`
`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.; -898 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.
`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, 25, and 31, 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 col. 3, ll. 32–37 (“enable the programming station to
`immediately ‘time-out’ the key . . . upon the programming station reading a
`
`
`
`9
`
`
`
`IPR2016-00898 and IPR2016-00899
`Patent 9,269,247 B2
`
`SDC stored in the key that does not match the SDC of the programming
`station”), col. 4, ll. 4–10 (“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.
`“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.”
`Id. at col. 10, ll. 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 col. 10,
`ll. 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 col. 10, ll. 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
`
`
`
`10
`
`
`
`IPR2016-00898 and IPR2016-00899
`Patent 9,269,247 B2
`
`the key to the alarm module.” Id. at col. 10, l. 66–col. 11, l. 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
`col. 11, ll. 4–8 (emphasis added); see also id. at col. 4, ll. 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
`with respect to disarming and re-arming but argues that the Specification
`describes another way to arm “upon a matching.” -898 PO Resp. 11–12.
`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 7 (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 ’247 patent. Id. at 8–10.
`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.’” -898 Reply 9–10. Thus, programming the security
`
`
`
`11
`
`
`
`IPR2016-00898 and IPR2016-00899
`Patent 9,269,247 B2
`
`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, col. 9, ll. 26–35 (emphases added). This merely indicates that the
`security code is programmed (i.e., stored) into the security device, not that
`the security device is armed “upon a matching.” See id.; -898 Reply 8.
`Indeed, claims 1, 25, and 31 separately recite “storing” the security code in
`the security device and “arming or disarming” 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 -898 PO Resp. 7–10 (citing Ex. 1001, col. 3, l. 67–col.
`4, l. 3, col. 4, ll. 45–47, col. 9, ll. 26–39, col. 11, ll. 27–29).
`
`
`
`12
`
`
`
`IPR2016-00898 and IPR2016-00899
`Patent 9,269,247 B2
`
`
`We also are not persuaded by Patent Owner’s arguments (id. at 9–10)
`regarding Figure 13 of the ’247 patent, which is reproduced below.
`
`
`Figure 13 “illustrates in flow chart form the manner of operation of the logic
`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, col. 11, ll. 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.” -898 PO Resp. 9–10. 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
`
`
`
`13
`
`
`
`IPR2016-00898 and IPR2016-00899
`Patent 9,269,247 B2
`
`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,
`col. 3, l. 63–col. 4, l. 3; col. 7, l. 50–col. 8, l. 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., -898 PO Resp. 18–19;
`-898 Reply 6 & 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 -898 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 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 ’247 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.
`
`
`
`14
`
`
`
`IPR2016-00898 and IPR2016-00899
`Patent 9,269,247 B2
`
`
`3. “Configured to Communicate” and
`“Providing the [Unique] Security Code”
`Claim 1 recites “a plurality of programmable keys each configured to
`communicate with the programming station to receive and store the unique
`security code in a memory, each of the plurality of programmable keys
`having the unique security code stored in its memory” (emphasis added).
`Claim 25 recites “providing the unique security code to each of a plurality of
`programmable keys, each of the plurality of programmable keys having a
`memory and the unique security code stored in its memory” (emphasis
`added). Claim 31 recites “providing the security code to a programmable
`key” (emphasis added).4
`Petitioner argues that the phrases “configured to communicate” and
`“providing the [unique] security code,” as used in the challenged claims of
`the ’247 patent, “encompass[] both wireless and wired forms of
`communication.” See -898 Pet. 7; -899 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, col. 3,
`ll. 6–21. Petitioner proposes this interpretation to argue that the application
`that published as Belden does not describe communication through electrical
`contacts and, therefore, does not provide written description support for the
`
`
`4 Claim 13, which depends from claim 1, recites that the programmable keys
`are configured to “wirelessly communicate” with the programming station.
`Claims 26 and 32, which depend from claims 25 and 31, respectively, recite
`that the providing comprises “wirelessly communicating” the security code.
`15
`
`
`
`
`
`IPR2016-00898 and IPR2016-00899
`Patent 9,269,247 B2
`
`claimed subject matter reciting “configured to communicate” and “providing
`the [unique] security code.” See -898 Pet. 17–19; -899 Pet. 17–20. In
`particular, Petitioner contends that the continuation-in-part application to
`which the ’247 patent claims priority “broadened the meaning of the term[s]
`‘communicate’ [and ‘providing’] within the claims to encompass the genus
`of both wireless and non-wireless communication” by reciting other forms
`of communication, such as communication “through electrical contacts.”
`-898 Pet. 18–19 (citing Ex. 1001, col. 3, ll. 6–21); see -899 Pet. 19–20.
`We do not agree that the recital of various “forms of data
`communication” (Ex. 1001, col. 3, ll. 6–21) in the ’247 patent broadened the
`meanings of the phrases “configured to communicate” and “providing the
`[unique] security code.” Rather, the “forms” of communication in the cited
`portion of the ’247 patent merely represent examples of the media or means
`by which the communication occurs in various preferred embodiments. Id.
`(listing at least seven examples, including “wireless communication, such as
`infrared (IR), radio frequency (RF) or similar wireless communication
`system[s],” “through electrical contacts,” and “induction, for example
`electromagnetic induction, magnetic induction, electrostatic induction,
`etc.”). Thus, Petitioner does not persuade us that we need to interpret the
`phrases “configured to communicate” and “providing the [unique] security
`code” expressly to encompass both wireless and wired communications.
`
`
`
`
`16
`
`
`
`IPR2016-00898 and IPR2016-00899
`Patent 9,269,247 B2
`
`
`4. “Unique Security Code” (Claims 1 and 25),
`“Security Code Generated by the Programming Station and
`Being Unique Thereto” (Claim 31), and
`“Unique to a Particular Retail Establishment or Retail Store” (Claim 21)
`Independent claims 1 and 25 recite a “unique security code.”
`Independent claim 31 recites “the security code generated by the
`programming station and being unique thereto.” Claim 21, which depends
`from claim 1, recites that “the unique security code is unique to a particular
`retail establishment or retail store.” In the Decision on Institution, the panel
`determined that “a randomly generated security code is within the broadest
`reasonable interpretation of ‘unique security code,’” as recited in claims 1
`and 25 and similarly recited in claim 31. See -898 Dec. on Inst. 7–8;
`-899 Dec. on Inst. 7. The parties do not dispute this interpretation as to
`claims 1 and 25, and we do not perceive any reason or evidence that compels
`any deviation from the interpretation as to claims 1 and 25.
`With respect to claims 21 and 31, Petitioner contends that the phrases
`encompass a randomly generated security code, just like claims 1 and 25,
`relying primarily on the Specification of the ’247 patent. -899 Pet. 6–7,
`53; -899 Reply 19–21. Patent Owner responds that the “unique” phrase in
`claim 31 should be given its “[p]lain meaning affording adequate weight to
`[the] requirement of ‘unique’ in the context of . . . the programming station.”
`-899 PO Resp. 4. According to Patent Owner, “[a]lthough some randomly
`generated codes are unique, not all randomly generated codes are unique.”
`Id. In support of its position, Patent Owner cites portions of the
`Specification, claim 33, and the testimony of Petitioner’s declarant, Thaine
`Allison III. Id. at 4–6. Patent Owner makes similar arguments with respect
`to claim 21. -898 PO Resp. 40–43.
`
`
`
`17
`
`
`
`IPR2016-00898 and IPR2016-00899
`Patent 9,269,247 B2
`
`
`We are persuaded that, given its broadest reasonable interpretation in
`light of the Specification, the “unique” phrases in claims 21 and 31
`encompass a randomly generated security code. In multiple places, the
`Specification characterizes a randomly generated security code as “unique.”
`See Ex. 1001, col. 9, ll. 7–13 (“Actuation of activation switch 85 causes
`logic control circuit 18 of programming station 3 to randomly generate a
`unique security code (i.e. SDC) . . . .”), col. 9, ll. 19–23 (“In accordance with
`one of the objectives and features of the present invention, the SDC initially
`provided by programming station 3 is randomly generated and is unique to
`that programming station and always remains with that programming station
`for subsequent use.”), col. 12, ll. 33–39 (“the programmable key . . . is
`programmed with a randomly generated SDC unique to that particular retail
`store, and the SDC is initially randomly generated by a programming station
`used only by that particular retail store”), col. 15, ll. 26–28 (“the logic
`control circuit further comprises an electronic random number generator
`producing a unique SDC”). Thus, while there may be other ways to generate
`security codes, one way to generate a security code unique to the
`programming station and/or retail store, according to the Specification of the
`’247 patent, is to randomly generate the security code. See id. at col. 15,
`ll. 20–26 (stating that the security code “may be a predetermined (i.e.
`‘factory preset’) security code, but preferably is a random security code”).
`This is confirmed by claim 33, which depends from claim 31 and
`recites “randomly generating the security code in the programming station.”
`See also id., claims 20, 28 (also reciting random generation of security
`codes). Contrary to Patent Owner’s arguments, the language of claim 33
`indicates that parent claim 31 encompasses within its scope the random
`
`
`
`18
`
`
`
`IPR2016-00898 and IPR2016-00899
`Patent 9,269,247 B2
`
`generation of a security code in the programming station (as well as
`potentially other methods of generation), not that claim 31 requires
`something “more” than random generation. See -899 PO Resp. 5–6.
`We also are not persuaded by Patent Owner’s arguments regarding
`Mr. Allison’s testimony and the potential sample size for generating a
`security code that is unique to the programming station. See id. at 6 (citing
`Ex. 2010, 178:24–179:23; Ex. 2013 ¶ 47). Mr. Allison was testifying in the
`cited excerpt to uniqueness “[i]n an absolute sense,” not in the context of the
`’247 patent. See Ex. 2010, 179:19–23; -899 Reply 20–21. As Petitioner
`correctly points out, no number (even in a sample size of one to one billion,
`for example) is “unique in an absolute sense,” and the term “unique” must
`be interpreted in light of the Specification. See -899 Reply 20.
`Finally, we note that Patent Owner’s proposed interpretation is vague
`and unclear in scope. Patent Owner contends that “adequate weight” must
`be given to how “unique” is used “in the claimed context,” but does not
`explain in any detail how much weight should be given or provide any
`logical basis for determining whether a security code is or is not unique to a
`programming station or retail store. See -899 PO Resp. 4, 6. For this reason
`as well, we are not persuaded by Patent Owner’s arguments.
`Accordingly, we interpret “unique security code” in claims 1 and 25,
`“security code generated by the programming station and being unique
`thereto” in claim 31, and “unique to a particular retail establishment or retail
`store” in claim 21 as encompassing (but not being limited to) a randomly
`generated security code. We need not further interpret the claim language
`for purposes of this Decision.
`
`
`
`
`19
`
`
`
`IPR2016-00898 and IPR2016-00899
`Patent 9,269,247 B2
`
`
`B. 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. Allison, testifies that 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
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
