Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 10
`Entered: November 15, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`DEPARTMENT OF JUSTICE,
`Petitioner,
`
`v.
`
`DISCOVERY PATENTS, LLC,
`Patent Owner.
`_____________
`
`Case IPR2016-01039
`Patent 6,778,085 B2
`_____________
`
`
`
`Before BART A. GERSTENBLITH, MATTHEW R. CLEMENTS, and
`PETER P. CHEN, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 10
`Entered: November 15, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`DEPARTMENT OF JUSTICE,
`Petitioner,
`
`v.
`
`DISCOVERY PATENTS, LLC,
`Patent Owner.
`_____________
`
`Case IPR2016-01039
`Patent 6,778,085 B2
`_____________
`
`
`
`Before BART A. GERSTENBLITH, MATTHEW R. CLEMENTS, and
`PETER P. CHEN, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`Background
`A.
`The United States Department of Justice (“Petitioner”) filed a Petition
`(Paper 1, “Pet.”) requesting institution of inter partes review of claims 38–
`55 of U.S. Patent No. 6,778,085 B2 (Ex. 1002, “the ’085 patent”).
`Discovery Patents, LLC (“Patent Owner”) filed a Preliminary Response
`(Paper 6, “Prelim. Resp.”).
`Under 35 U.S.C. § 314(a), an inter partes review may be instituted
`only if “the information presented in the petition . . . and any [preliminary]
`response . . . shows that there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” See 37 C.F.R. § 42.108(c).
`For the reasons given below, on this record, Petitioner has not
`established a reasonable likelihood of prevailing with respect to at least one
`challenged claim of the ’085 patent. Accordingly, we deny the Petition and
`decline to institute an inter partes review of the ’085 patent.
`
`Related Proceedings
`B.
`The parties indicate that the ’085 patent is asserted in the United
`States Court of Federal Claims, in a case captioned 3rd Eye Surveillance,
`LLC v. United States, No. 15-cv-00501-CFL (filed May 15, 2015). Pet. 2;
`Paper 5, 2. The parties indicate that the following case would affect or be
`affected by a decision in this proceeding—3rd Eye Surveillance, LLC v. City
`of Fort Worth, Tex., No. 6-14-cv-00725 (E.D. Tex.). Pet. 2; Paper 5, 2.
`Additionally, Petitioner indicates that the following case would affect or be
`affected by a decision in this proceeding—3rd Eye Surveillance, LLC v.
`Vision Video Security, LLC, No. 6-14-cv-00161 (E.D. Tex.). Pet. 2.
`
`
`
`2
`
`
`
`Petitioner challenges several claims of the ’085 patent in
`IPR2016-01037 and IPR2016-01038. Additionally, Petitioner challenges
`claims of two other patents related to the ’085 patent in IPR2016-01035,
`IPR2016-01040, and IPR2016-01041. Pet. 2.
`
`Real Parties in Interest
`C.
`The Petition identifies “The United States as represented by the
`Department of Justice” as the sole real party in interest. Pet. 1. Patent
`Owner identifies “Discovery Patents, LLC” as the sole real party in interest,
`and identifies “3rd Eye Surveillance, LLC” as the exclusive licensee of the
`’085 patent. Paper 5, 2.
`Patent Owner contends that the Petition fails to identify all real parties
`in interest as required by 35 U.S.C. § 312(a)(2). Prelim. Resp. 32. In
`particular, Patent Owner asserts that “IndigoVision, LTD, Datawatch
`Systems, Inc., Tyco Integrated Security LLC, Diebold, Inc., Vidsys, Inc.,
`EFW Inc., Tactical Micro, Inc., and ICx Technologies, Inc.” (“the Third
`Parties”) are real parties in interest because each company has a contract
`with a government entity in which each company agreed to indemnify the
`government for, inter alia, liability for patent infringement. Id. at 33–39.
`In its Reply to Patent Owner’s Preliminary Response,1 Petitioner
`asserts that the Third Parties are not real parties in interest in this
`proceeding, and that Patent Owner has not shown that any of these
`companies exercises, or could have exercised, control over Petitioner’s
`participation in this proceeding, provided funding for this proceeding, or
`
`
`1 We authorized Petitioner to file a reply to Patent Owner’s Preliminary
`Response addressing solely the issue of real parties in interest, and we
`authorized Patent Owner to file a sur-reply in response thereto. Paper 7.
`
`
`
`3
`
`
`
`provided any direction of any kind pertaining to this proceeding. Paper 8, 3.
`Additionally, Petitioner cites several decisions by the Board in which the
`existence of an indemnification agreement, alone, was insufficient to
`establish that a third party was a real party in interest. Id. at 1–2 (citations
`omitted).
`In its Sur-Reply, Patent Owner contends that Petitioner fails to show
`that these additional companies are not real parties in interest and that “[a]t a
`general level, . . . [a real party in interest] is a party that desires review of the
`patent.” Paper 9, 1.
`A petition for inter partes review may be considered only if, inter
`alia, “the petition identifies all real parties in interest.” 35 U.S.C.
`§ 312(a)(2). The Office Patent Trial Practice Guide provides guidance
`regarding factors to consider in determining whether a party is a real party in
`interest. 77 Fed. Reg. 48,756, 48,759–60 (Aug. 14, 2012). Considerations
`may include whether a non-party “funds and directs and controls” an IPR
`petition or proceeding. Id. at 48,760. Additional relevant factors include:
`the non-party’s relationship with the petitioner; the non-party’s relationship
`to the petition itself, including the nature and/or degree of involvement in the
`filing; and the nature of the entity filing the petition. Id. Whether a party
`who is not a named participant in a given proceeding is a real party in
`interest to that proceeding “is a highly fact-dependent question.” Id. at
`48,759. There is no “bright line test.” Id. Courts invoke the term real party
`in interest to describe relationships and considerations sufficient to justify
`applying conventional principles of estoppel and preclusion. Id. A
`non-party’s participation with a petitioner may be overt or covert, and the
`evidence may be direct or circumstantial, but the evidence as a whole must
`show that the non-party possessed effective control over the petitioner
`
`
`
`4
`
`
`
`relating to the inter partes review. Zoll Lifecor Corp. v. Philips Elecs. N.
`Am. Corp., Case IPR2013-00609, slip op. at 10 (PTAB Mar. 20, 2014)
`(Paper 15).
`We have considered Patent Owner’s and Petitioner’s arguments and
`evidence, and we determine that Petitioner was not required to identify the
`Third Parties as real parties in interest because there is insufficient evidence
`that any of these companies exercised, or could exercise, control over
`Petitioner with respect to this proceeding. Patent Owner’s arguments
`regarding the motion practice before the Court of Federal Claims and
`notification of that action to the Third Parties (Prelim. Resp. 33–39) does not
`reflect otherwise. Although we acknowledge that the existence of the
`above-identified indemnification clauses supports Patent Owner’s argument,
`we are unaware of any inter partes review decision in which a real party in
`interest finding was based solely on evidence of an indemnification clause,
`and we decline to do so here.2
`
`The References
`D.
`Petitioner relies on the following references:
`U.S. Patent No. 6,970,183 B1, issued Nov. 29, 2005 (Ex. 1009,
`“Monroe ’183”);
`U.S. Patent No. 7,634,662 B2, issued Dec. 15, 2009 (Ex. 1013,
`“Monroe ’662”);
`
`
`2 During our conference call in which we authorized additional briefing by
`the parties on this issue, Patent Owner was unable to cite a Board decision in
`which an entity was found to be a real party in interest based solely on an
`indemnification clause. Paper 7, 4. Patent Owner’s Sur-Reply is similarly
`lacking in this regard. Paper 9.
`
`
`
`5
`
`
`
`U.S. Patent No. 7,015,806 B2, issued Mar. 21, 2006 (Ex. 1017,
`“Naidoo”);
`U.S. Patent No. 6,335,688 B1, issued Jan. 1, 2002 (Ex. 1023,
`“Sweatte”); and
`European Patent Application No. EP 0809123 A2, published Nov. 26,
`1997 (Ex. 1027, “Huguenin”).
`
`The Asserted Grounds of Unpatentability
`E.
`Petitioner challenges the patentability of claims 38–55 of the
`’085 patent on the following grounds:
`
`Reference(s)
`Monroe ’183
`Monroe ’183 and Huguenin
`Monroe ’183 and Sweatte
`Monroe ’662
`Naidoo
`
`Basis
`§ 102(e)
`§ 103(a)
`§ 103(a)
`§ 102(e)
`§ 102(e)
`
`Claim(s) challenged
`38, 39, 41–47, and
`50–55
`40
`48 and 49
`38, 48, and 49
`38, 39, and 54
`
`Petitioner supports its challenge with a Declaration by Dr. Clifford
`Reader, dated May 11, 2016 (Ex. 1007, “the Reader Declaration”).
`
`The ’085 Patent
`F.
`The ’085 patent is directed to “[a] security alarm system that provides
`secure, realtime video and/or other realtime imagery of a secured location to
`one or more emergency response agencies over a high-speed
`communications link, such as an Internet link.” Ex. 1002, Abstract.
`According to the ’085 patent, security alarm systems with video capability
`were known, but the video captured by such systems was “of limited value”
`because it was “not available to the appropriate emergency response agency or
`
`
`
`6
`
`
`
`agencies and their highly trained professional emergency response personnel.”
`Id. at 1:40–51.
`Figure 2 of the ’085 patent is reproduced below:
`
`
`Figure 2 of the ’085 patent “is a diagram illustrating a security alarm system
`in accordance with exemplary embodiments of the present invention.” Id. at
`2:58–60. Central monitoring station 201 is connected to a number of
`secured locations 203–207 via high-speed communications link 209. Id. at
`3:52–57. At each secured location 203–207, there is at least one video
`camera and one or more alarm sensors. Id. at 3:57–59. Central monitoring
`station 201 is also connected via a high-speed communications link to one or
`more emergency response agencies 211–215. Id. at 3:59–61. According to
`the ’085 patent, central monitoring station 201 may be associated with a
`private security service or a government agency, and the emergency
`response agencies may be local, state, or federal agencies. Id. at 3:61–65.
`
`
`
`7
`
`
`
`Illustrative Claim
`G.
`Claim 38, the sole independent claim challenged in this proceeding, is
`illustrative of the claimed subject matter and is reproduced below:
`38. A method of securing a location comprising the steps of:
`
`generating realtime imagery of a secured location;
`
`transmitting the realtime imagery to a security system
`central station over a network connection;
`
`processing the real-time imagery at the central station;
`
`transmitting the realtime imagery from the security system
`central station to an emergency response agency over a network
`connection;
`
`displaying the realtime imagery at the emergency response
`agency.
`Id. at 14:46–56.
`
`CLAIM CONSTRUCTION
`II.
`Although Petitioner and Patent Owner present proposed constructions
`for several claim terms, no terms require express construction for purposes
`of this Decision.
`
`A.
`
`III. ANALYSIS
`Preliminary Matters
`Arguments Not in Petition
`1.
` Patent Owner contends that arguments made only in Dr. Reader’s
`Declaration and not in the Petition should not be considered because they are
`improperly incorporated by reference. Prelim. Resp. 7, 9–12.
`To the extent an argument is raised solely in Dr. Reader’s Declaration
`and not also in the Petition, we have declined to consider it for purposes of
`this Decision.
`
`
`
`8
`
`
`
`Patent Owner also contends that the Petition “fails to sufficiently
`specify where each element of the claims is found in the applied references,
`and fails to include a detailed explanation of the significance of the
`quotations and citations from the applied references.” Id. at 7. Patent
`Owner asserts that the Petition is deficient because Petitioner relies only
`upon claim charts that recite the claim and provides quotes and citations to
`the prior art references, nothing more. Id. at 8.
`We disagree that reliance only upon claim charts containing the claim
`elements and quotations and citations from prior art references allegedly
`disclosing those elements is per se insufficient. Each case is fact specific.
`In some instances, quotes and citations to a reference are so clear that further
`explanation is unnecessary. In other instances, however, where it is not clear
`which elements of the claims are allegedly disclosed by a quotation or
`citation to a reference, the lack of additional explanation by a petitioner can
`be detrimental. Ultimately, a petition must “identif[y], in writing and with
`particularity . . . the evidence that supports the grounds for the challenge to
`each claim.” 35 U.S.C. § 312(a)(3); see 37 C.F.R. § 42.22(a)(2) (each
`petition must include “[a] full statement of the reasons for the relief
`requested, including a detailed explanation of the significance of the
`evidence including material facts, and the governing law, rules, and
`precedent”). But, we decline to impose a per se rule requiring argument in
`addition to claim charts.
`
`Constitutionality of Inter Partes Reviews
`2.
`Patent Owner asserts that this proceeding is unconstitutional because
`it “violate[s] Separation of Powers principles and the Seventh Amendment.”
`Prelim. Resp. 42.
`
`
`
`9
`
`
`
`We decline to consider Patent Owner’s constitutional challenge as,
`generally, “administrative agencies do not have jurisdiction to decide the
`constitutionality of congressional enactments.” See Riggin v. Office of
`Senate Fair Emp’t Practices, 61 F.3d 1563, 1569 (Fed. Cir. 1995); see also
`Harjo v. Pro-Football, Inc., 50 USPQ2d 1705, 1710 (TTAB 1999) (“[T]he
`Board has no authority . . . to declare provisions of the Trademark Act
`unconstitutional.”); Amanda Blackhorse, Marcus Briggs-Cloud, Philip
`Gover, Jillian Pappan and Courtney Tsotigh v. Pro-Football, Inc.,
`111 USPQ2d 1080 (TTAB 2014); but see Am. Express Co. v. Lunenfeld,
`Case CBM2014-00050, slip op. at 9–10 (PTAB May 22, 2015) (Paper 51)
`(“for the reasons articulated in Patlex [Corp. v. Mossinghoff, 758 F.2d 594
`(Fed. Cir. 1985)], we conclude that covered business method patent reviews,
`like reexamination proceedings, comply with the Seventh Amendment”).
`
`Level of Ordinary Skill in the Art
`B.
`With regard to the level of ordinary skill in the art, we determine that
`no express finding is necessary, on this record, and that the level of ordinary
`skill in the art is reflected by the prior art of record. See Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d
`1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`
`Anticipation by Monroe ’183
`C.
`Petitioner asserts that Monroe ’183 teaches each and every element of
`claims 38, 39, 41–47, and 50–55 of the ’085 patent. Pet. 21–37. The
`Petition includes a claim chart comprising figures, one of which is boxed in
`a red outline,3 and quoted material from Monroe ’183. Id.
`
`
`3 The only annotated figure in Petitioner’s claim chart is Monroe ’183’s
`Figure 35, which Petitioner applies to dependent claim 42. Pet. 27.
`
`
`
`10
`
`
`
`1. Monroe ’183
`Monroe ’183 relates generally to a multimedia surveillance system
`based on wireless data transmission, still image and/or step video, video
`streaming, audio, motion detection, event detection and/or physical
`condition detection using various network configurations. Ex. 1009, 1:8–14.
`Figure 4 of Monroe ’183 is reproduced below.
`
`
`Figure 4 depicts an exemplary embodiment using network 26 (or wide area
`network 36) between receiver 24 and the various other components, such as
`server 46 and one or multiple monitoring stations 28–28n. Id. at 18:12–15.
`“The server may be located virtually anywhere on the network.” Id. at
`18:15–16. Monroe ’183 states:
`
`Typically, the sensors will “sense” the presence of
`unauthorized activity and activate recording from the various
`audio and/or video equipment and will activate alarms. This will
`initiate the generation of a signal at each of the activated units.
`The generated signals will then be transmitted to the monitoring
`and recording equipment, as described, to permit both real-time
`surveillance and recordation of activity at the site. Motion
`detection may also be determined using video time/change
`techniques in the well-known manner.
`Id. at 29:36–44.
`
`
`
`11
`
`
`
`Discussion
`2.
`Claim 38 of the ’085 patent recites “generating realtime imagery of a
`secured location.” Ex. 1002, 14:48. Petitioner points to Monroe ’183’s
`disclosure that its system “provides a combination of megapixel digital
`camera capability with full motion video surveillance . . . with a network.”
`Pet. 21 (quoting Ex. 1009, 3:40–48). Petitioner points to Monroe ’183’s
`disclosure that centralized servers and monitoring stations have access to the
`surveillance data via the Internet as teaching the “transmitting the realtime
`imagery to a security system central station over a network connection” step
`of the claim. Id. at 22 (quoting Ex. 1009, 4:17–27). Petitioner points to
`Monroe ’183’s disclosure that a server “provides a centralized location for
`data collection, alarm detection and processing . . . and/or other specialized
`functions” as teaching the “processing the realtime imagery at the central
`station” step of the claim. Id. (quoting Ex. 1009, 4:65–5:7).
`Additionally, Petitioner points to Monroe ’183’s disclosure that “[t]he
`video stream can be routed to one or more monitor stations, one or more
`roving PDA monitor stations and can be ‘recorded’ on one or more serve[r]s
`in digital format” as teaching the “transmitting the realtime imagery from the
`security system central station to an emergency response agency over a
`network connection” step of the claim. Id. at 23 (quoting Ex. 1009, 15:53–
`62); see also id. at 24 (relying on Monroe ’183’s Figure 66). Further,
`Petitioner relies upon the same teaching in Monroe ’183 as disclosing the
`“displaying the realtime imagery at the emergency response agency” step of
`claim 38. Id. at 24 (quoting Ex. 1009, 15:53–62). Petitioner also relies upon
`Monroe ’183’s teaching regarding notifying and supplying a roving officer
`with “the type of event, the location and . . . images and/or maps and/or
`audio” and that its server can dispatch an alarm condition by sending a
`
`
`
`12
`
`
`
`graphic message to a wireless PDA, such as a message showing a map and
`collected images. Id. at 25 (citing Ex. 1009, 18:58–61, 30:11–29).
`Patent Owner raises several arguments in response, including that the
`embodiment shown in Monroe’s Figure 66, “is arranged so that the network
`communications system connects one or more pay telephones directly to 911
`resources, which is part of the emergency response system. In other words,
`in the Figure 66 embodiment, Monroe . . . does not disclose any type of
`security system central station.” Prelim. Resp. 20–21.
`“[T]o demonstrate anticipation, the proponent must show that the four
`corners of a single, prior art document describe every element of the claimed
`invention.” Net MoneyIn, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369
`(Fed. Cir. 2008) (quotation omitted). Additionally, the elements must be
`“arranged or combined in the same way as in the claim.” Id. at 1370.
`Petitioner’s challenge based on this ground is completely devoid of
`any explanation as to how we should understand its mapping of the figures
`of Monroe ’183 to the elements of claim 38. Petitioner’s claim chart fails to
`include any specific identification of which elements in either the quoted
`material or the figures allegedly correspond to the claim limitations. For
`“transmitting the realtime imagery to a security system central station over a
`network connection,” for example, Petitioner points to a block quote from
`Monroe ’183 describing “[c]entralized servers and monitoring stations,” but
`does not indicate which (the server or the station) it contends discloses the
`security system central station. Pet. 22. Petitioner proposes that we construe
`“security system central station” to mean “the facility associated with most
`security companies that monitors secured locations for their clients.” Id. at
`6. That suggests Petitioner meant to point to Monroe ’183’s monitor station
`as allegedly disclosing the claimed security system central station. But,
`
`
`
`13
`
`
`
`Petitioner’s mapping of Monroe ’183’s Figure 66 appears to rely upon
`monitor stations as teaching the “emergency response agency” element of
`the claim. See Pet. 23 (referring to “roving PDA monitor stations”).
`Alternatively, if Petitioner meant to point to Monroe ’183’s centralized
`server as teaching the recited security system central station, Petitioner fails
`to explain how the server is a “facility associated with most security
`companies that monitors secured locations for their clients” under
`Petitioner’s construction.
`If a claim chart, on its own, is not clear as to how the teachings of a
`reference map to the elements of a claim, as here, it is incumbent upon
`Petitioner to provide some type of explanation, in any form, indicating its
`position. See 35 U.S.C. § 312(a)(3) (“A petition . . . [must] identif[y], in
`writing and with particularity, . . . the evidence that supports the grounds for
`the challenge to each claim . . . .”); see also 37 C.F.R. § 42.22(a)(2) (each
`petition must include “[a] full statement of the reasons for the relief
`requested, including a detailed explanation of the significance of the
`evidence including material facts, and the governing law, rules, and
`precedent”). Here, the petition does not identify or explain, with any
`particularity, how the figures or quoted portions of Monroe ’183 teach these
`elements of the claim.4
`
`
`4 We recognize that Petitioner challenges similar claim language in other
`claims of the ’085 patent and in petitions challenging related patents. We
`make our determination herein based on the evidence and argument, or lack
`thereof, in the record before us in this proceeding. See 37 C.F.R.
`§ 42.6(a)(3) (prohibiting incorporation by reference of arguments from one
`document into another).
`
`
`
`14
`
`
`
`Accordingly, we determine that, based on the record before us,
`Petitioner has not shown a reasonable likelihood that it would prevail in
`establishing that Monroe ’183 anticipates claim 38 and claims 39, 41–47,
`and 50–55, which depend therefrom, of the ’085 patent.
`
`D. Obviousness Grounds Based on Monroe ’183 and Huguenin
`and Sweatte
`Petitioner contends that claim 40 would have been obvious over
`Monroe ’183 in combination with Huguenin, Pet. 37–39, and that claims 48
`and 49 would have been obvious over Monroe ’183 in combination with
`Sweatte, id. at 39–43. Petitioner relies upon Huguenin solely for its alleged
`disclosure of a “[p]assive imaging camera.” Id. at 38. Thus, Huguenin does
`not remedy the deficiencies discussed above regarding whether Monroe ’183
`discloses the elements of claim 38, from which claim 40 depends.
`Petitioner relies upon Sweatte solely for its alleged disclosure of the
`additional steps recited by dependent claims 48 and 49 that Petitioner
`contends are not disclosed by Monroe ’183. Id. at 39–40. Thus, Sweatte
`does not remedy the deficiencies discussed above regarding whether
`Monroe ’183 discloses the elements of claim 38, from which claims 48 and
`49 depend.5
`Accordingly, for the same reasons discussed in the context of
`addressing whether Monroe ’183 anticipates claim 38, we determine that,
`based on the record before us, Petitioner has not shown a reasonable
`likelihood that it would prevail in establishing that Monroe ’183 in
`combination with Huguenin would have rendered obvious the subject matter
`
`
`5 Claim 48 depends from claim 47, which depends from claim 38; claim 49
`depends from claim 48. Ex. 1002, 15:24, 15:29, 15:37.
`
`
`
`15
`
`
`
`of claim 40, or that Monroe ’183 in combination with Sweatte would have
`rendered obvious the subject matter of claims 48 and 49, to one of ordinary
`skill in the art at the time of the invention.
`
`Anticipation by Monroe ’662
`E.
`Petitioner asserts that Monroe ’662 teaches each and every element of
`claims 47–49 of the ’085 patent. Pet. 43–54. Petitioner contends that
`Monroe ’662 expressly incorporates by reference U.S. Patent Application
`No. 09/594,041, which issued as Monroe ’183. Id. at 43. As discussed
`above, claims 47–49 depend from claim 38. See supra note 4. Petitioner
`relies upon Monroe ’183 as disclosing the elements of claims 38 and 47. Id.
`Petitioner relies upon disclosures specific to Monroe ’662 solely for
`allegedly teaching the additional steps of claims 48 and 49. Id. at 43–44.
`Thus, Monroe ’662 does not remedy the deficiencies discussed above
`regarding whether Monroe ’183 discloses the elements of claim 38.
`Accordingly, for the same reasons discussed in the context of addressing
`whether Monroe ’183 anticipates claim 38, we determine that, based on the
`record before us, Petitioner has not shown a reasonable likelihood that it
`would prevail in establishing that Monroe ’662 anticipates claims 47–49 of
`the ’085 patent.
`
`Anticipation by Naidoo
`F.
`Petitioner asserts that Naidoo teaches each and every element of
`claims 38, 39, and 54 of the ’085 patent. Pet. 54–57. The Petition includes a
`claim chart comprising Naidoo’s Figure 1, with a single annotation
`identifying video cameras 112, and quoted material from Naidoo, some of
`which is reproduced with emphasis. Id.
`
`
`
`16
`
`
`
`Naidoo
`1.
`Naidoo is directed to “[a] system and method for distributed
`monitoring and remote verification of conditions surrounding an alarm
`condition in a security system.” Ex. 1017, Abstract. Naidoo’s Figure 1 is
`shown below:
`
`
`Figure 1 of Naidoo “is a simplified block diagram of a security system
`according to one embodiment of the disclosed system and method.” Id. at
`4:50–52. Naidoo explains:
`The security system 100 includes a security gateway 115 (also
`called a “base station”), which is typically located at the desired
`premises 110 to be monitored, and a monitoring client 133,
`typically located at a central station and operatively coupled to
`security gateway 115 through a network 120. Often, security
`gateway 115 is located at the target site. However, on some
`occasions, some or all components of security gateway 115 may
`be located remotely, but remain operatively coupled to security
`sensors 105 and video cameras 112 which are at the premises.
`Upon
`detection
`of
`an
`alarm
`condition,
`security
`gateway 115 captures video (usually through an attached video
`camera 112) of the target site, and sends the video to security
`system server 131 in real time.
`. . .
`
`
`
`17
`
`
`
`Generally, security gateway 115 is a processor-based
`
`device that functions to detect alarm conditions at a target site, to
`capture information relating to such alarm conditions, and upon
`occasion of an alarm condition, to send such information
`ultimately to security system server 131 for verification and
`response. Monitoring client 133 is generally a software program
`that may be used to display some or all of the information
`provided by security gateway 115. . . . One or more operators
`may then use this information to evaluate whether the alarm
`condition corresponds to an actual alarm condition and then take
`additional action, if desired, such as alerting the appropriate
`authorities. Advantageously, in many instances the incidence of
`false alarm being reported to the authorities is reduced, and the
`response effectiveness of the authorities is improved.
`Id. at 5:38–51, 6:19–35.
`Naidoo’s Figure 5 is shown below:
`
`
`Figure 5 of Naidoo “is a flowchart of the operation of the security system
`according to one embodiment of the disclosed system and method.” Id. at
`4:62–64. In step 510, security gateway 115 detects an alarm condition
`
`
`
`18
`
`
`
`corresponding to a possible alarm event. Id. at 13:32–33. In step 520,
`“alarm information may be sent from security gateway 115 to the security
`system server 131 and may include a notification of the alarm condition and
`information relating to the alarm condition, which may include alarm
`video.” Id. at 13:48–52. “After receiving alarm notification 520, security
`system server 131 relays the notification to one or more monitoring
`clients 133 . . . .” Id. at 14:13–15. In step 530, “monitoring client 133
`notifies a monitoring operator of alarm conditions and managing responses
`to these events.” Id. at 14:22–24. In step 535, “a monitoring person or
`monitoring personnel staffing the monitoring client 133 verifies whether the
`alarm signal corresponds to an actual alarm condition using the alarm signal
`information and the segment of real-time video.” Id. at 14:61–64.
`Naidoo states that monitoring client 133 “may possess one or more
`proficiencies . . . . [for example,] understanding foreign languages, handling
`specific types of alarms (e.g., burglar, fire, medical), and possessing a
`minimum level of experience.” Id. at 10:54–62. If the alarm signal is
`deemed to be false, monitoring client 133 may inform security gateway 115
`and further action, such as turning off any siren, bell, or audio alarm, may
`occur. Id. at 15:13–18. If the alarm signal is deemed not to be a false alarm,
`“monitoring personnel may take the appropriate follow-up action.
`Typically, this includes notifying the customer 540 and contacting the
`appropriate authorities 545, which may be the police department, emergency
`medical dispatch, or any other public safety agency.” Id. at 15:24–29.
`Naidoo further explains: “In some embodiments, the security system of the
`present invention may integrate directly with the systems of various
`emergency response agencies. For example, in one embodiment, upon
`verification of an alarm condition at the central monitoring station, an alarm
`
`
`
`19
`
`
`
`notification and alarm video may be transmitted directly into a police
`dispatch system.” Id. at 15:33–38.
`
`Discussion
`2.
`Petitioner maps claim 38’s step of “generating realtime imagery of a
`secured location” to Naidoo’s teaching that the security system “includes
`one or more video cameras 112 that is operable to capture video of
`monitored premises 110.” Pet. 55 (quoting Ex. 1017, 6:51–54). Petitioner
`maps claim 38’s step of “transmitting the realtime imagery to a security
`system central station over a network connection” to Naidoo’s teaching that
`“security gateway 115 transmits an alarm signal and video . . . to media
`handler 710, which relays the information to the central station in
`substantially ‘real-time.’” Id. at 55–56 (quoting Ex. 1017, 20:1–6).
`Petitioner maps claim 38’s step of “processing the realtime imagery at the
`central station” to Naidoo’s description of Figure 7, in which the “security
`system server and monitoring station . . . . are processor-based devices
`operating under the Microsoft Windows NTTM operating system.” Id.
`at 56 (quoting Ex. 1017, 8:33–41).
`Petitioner maps claim 38’s step of “transmitting the realtime imagery
`from the security system central station to an emergency response agency
`over a network connection” to Naidoo’s disclosure that the security system
`may integrate directly with the systems of emergency response agencies, in
`which “upon verification of an alarm condition at the central monitoring
`station, an alarm notification and alarm video may be transmitted directly
`into a police dispatch system.” Id. (quoting Ex. 1017, 15:33–48). For the
`“displaying” limitation, however, Petitioner appears to rely on Naidoo’s
`“monitoring client 133” rather than Naidoo’s “emergency response
`agencies” or “police dispatch system,” as the claimed “emergency response
`
`
`
`20
`
`
`
`agency,” See id.; see also id. at 56–57 (mapping claim 38’s step of
`“displaying the realtime imagery at the emergency response agency” to
`Naidoo’s teaching that monitoring client 133 is a software program that may
`be used to display the information provided by security gateway 115). As a
`result, it is not clear whether Petitioner is contending that the recited
`“emergency response agency” is taught by Naidoo’s disclosure of
`“emergency response agencies,” such as “a police dispatch system”
`(Ex. 1017, 15:33–48) or by Naidoo’s monitoring client 133.
`Patent Owner challenges Petitioner’s position, arguing that although
`Naidoo teaches transferring alarm video from a central monitoring station to
`a police dispatch system, Naidoo “is silent about the police dispatch system
`and its functionality, how alarm video is received by the police dispatch
`system, and what happens
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
