Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 22
`Filed: December 19, 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 IPR2016-01241
`Patent 7,737,846 B2
`____________
`
`
`
`Before JUSTIN T. ARBES, STACEY G. WHITE, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`571.272.7822
`
`
`Paper No. 22
`Filed: December 19, 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 IPR2016-01241
`Patent 7,737,846 B2
`____________
`
`
`
`Before JUSTIN T. ARBES, STACEY G. WHITE, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`IPR2016-01241
`Patent 7,737,846 B2
`
`
`A. Background
`
`I. INTRODUCTION
`
`Mobile Tech, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`
`seeking to institute an inter partes review of claims 1–18 of U.S. Patent No.
`
`7,737,846 B2 (Ex. 1001, “the ’846 patent”) pursuant to 35 U.S.C. §§ 311–
`
`319. Invue Security Products, Inc. (“Patent Owner”) filed a Preliminary
`
`Response. Paper 6. Based on our review of these submissions, we instituted
`
`inter partes review of claims 1–3, 6, and 9 of the ’846 patent based on the
`
`following grounds:
`
`Instituted Claim(s)
`Basis
`Reference(s)
`Denison1
`§ 102 1 and 6
`§ 103 1–3 and 6
`Denison
`Denison and Rothbaum2 § 103 9
`
`Paper 7 (“Dec.”), 21.
`
`Patent Owner filed a Patent Owner’s Response (Paper 9, “PO Resp.”),
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`and Petitioner filed a Reply (Paper 11, “Reply”). Patent Owner filed a
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`Motion to Exclude (Paper 17) and Petitioner filed an Opposition (Paper 20).
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`An oral hearing was held on August 8, 2017. Paper 21 (“Tr.”).
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`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`
`Decision is issued pursuant to 35 U.S.C. § 318(a). For the reasons that
`
`follow, Petitioner has demonstrated by a preponderance of the evidence that
`
`claims 1–3, 6, and 9 of the ’846 patent are unpatentable.
`
`
`1 U.S. Patent Pub. 2004/0201449, pub. Oct. 14, 2004 (“Denison,” Ex. 1002).
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`2 U.S. Patent 5,543,782, issued Aug. 6, 1996 (“Rothbaum,” Ex. 1003).
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`2
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`B. Related Proceedings
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`Petitioner informs us that Invue Security Products Inc. v. Mobile Tech,
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`Inc., 3:15-cv-00610 (W.D.N.C.) may be impacted by this proceeding. Paper
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`8. In addition, Petitioner filed petitions for inter partes review involving the
`
`same parties and related patents. Pet. 1; Paper 4, 1; IPR2016-00892,
`
`IPR2016-00895, IPR2016-00896, IPR2016-00898, IPR2016-00899,
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`IPR2016-01915, IPR2017-00344, IPR2017-00345, IPR2017-01900,
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`IPR2017-01901, and PGR2018-00004. Also, the parties identify certain
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`patents and pending patent applications that may be impacted by this
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`proceeding. See id.
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`C. The ʼ846 Patent
`
`The ’846 patent describes a security system and method including a
`
`smart key that is programmed with a security disarm code (“SDC”).
`
`Ex. 1001, 1:14–19. Figure 1 of the ’846 patent is reproduced below.
`
`
`
`Figure 1 depicts security system 1. Id. at 4:65–5:1. The primary
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`components of security system 1 are programming station 3, programmable
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`smart key 5, and alarm module or security device 7. Id. at 5:1–3.
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`Merchandise 9 is connected to alarm module 7 via cable 11 that preferably
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`contains sense loop 13. Id. at 5:4–6. Programming station 3 randomly
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`3
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`generates a unique SDC that is transmitted to smart key 5, which in turn
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`stores the SDC in key memory. Id. at 7:28‒35. Once programmed with an
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`SDC, key 5 is taken to one or more alarm modules 7 and the SDC is stored
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`in the alarm module’s memory. Id. at 7:45‒50. “SDC memory 53
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`permanently stores this SDC in the programmed alarm module preferably
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`for the life of the alarm module.” Id. at 7:50–52. The storage of the SDC in
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`the memory of key 5 will actuate timer 82 for a predetermined time period.
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`Id. at 7:56–58. When the timer expires the SDC “will automatically be
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`erased or invalidated by [the smart key’s] control logic circuit 77 rendering
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`the key inoperative if attempted to be used with alarm module 7.” Id.
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`at 7:58–62. In addition, counter 83 of key control logic circuit 77 counts
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`each time that the key is activated. Id. at 8:20–22. “After a predetermined
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`number of activations . . . counter 83 will cause logic control circuit 77 to
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`inactive the key rendering it inoperative for further use.” Id. at 8:23–26.
`
`D. Illustrative Claim
`
`As noted above, we instituted inter partes review of claims 1–3, 6,
`
`and 9 of the ʼ846 patent, of which claim 1 is independent. Claim 1 is
`
`illustrative of the challenged claims and is reproduced below:
`
`1. A security system for protecting an item of merchandise
`comprising:
`a) a programmable key;
`b) a programming station for generating a security code
`in the key; and
`c) a security device for attachment to the item of
`merchandise, said security device being initially programmed
`with the security code from the key and subsequently being
`controlled by the key upon matching the security code of the
`key with the security code in the security device.
`
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`E. Claim construction
`
`In an inter partes review, “[a] claim in an unexpired patent that will
`
`not expire before a final written decision is issued shall be given its broadest
`
`reasonable construction in light of the specification of the patent in which it
`
`appears.” 37 C.F.R. § 42.100(b); see Cuozzo Speed Techs. LLC v. Lee, 136
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`S. Ct. 2131, 2144 (2016) (upholding the use of the broadest reasonable
`
`interpretation standard). Under this standard, we construe claim terms using
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`“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
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`be afforded by the written description contained in the applicant’s
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`specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). We
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`presume that claim terms have their ordinary and customary meaning. See
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`Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016). This
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`presumption, however, may be rebutted if the specification defines the claim
`
`term with “reasonable clarity, deliberateness, and precision.” In re Paulsen,
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`30 F.3d 1475, 1480 (Fed. Cir. 1994).
`
`With respect to the claims challenged in this inter partes review, the
`
`Decision on Institution discussed the broadest reasonable interpretation of
`
`the term “programmable key.” Dec. 6 (“we are not persuaded the broadest
`
`reasonable interpretation of ‘programmable key’ is limited to a
`
`programmable key that ‘deactivates itself upon the occurrence of a specific
`
`event,’ as argued by Petitioner”). During trial, the parties did not further
`
`address our initial determination regarding the broadest reasonable
`
`interpretation of this term. See PO Resp. 4; see generally Reply. Based on
`
`our review of the record, we do not see any reason or evidence that compels
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`any change from the preliminary interpretation. We adopt the previous
`
`analysis and need not further interpret the term “programmable key” for
`
`purposes of this Decision.
`
`F. Level of Ordinary Skill in the Art
`
`Patent Owner and Petitioner provide similar definitions of the person
`
`of ordinary skill in the art. Petitioner’s Declarant, Mr. Thaine Allison III,
`
`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 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. 1010 ¶ 18. 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. 4–5 (citing Ex. 2005 ¶ 35). Patent Owner’s declarant, Christopher
`
`J. Fawcett, testifies that a person of ordinary skill in the art would have been
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`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. 2005 ¶ 35.
`
`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 a
`
`person of ordinary skill in the art would have had 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 for
`
`purposes of this Decision.
`
`II. ANALYSIS
`
`A. Unpatentability Challenge Based on Denison
`
`1. Overview of Denison
`
`Denison is directed to vending machines that are equipped with
`
`electronic locks. Ex. 1002 ¶ 2. Denison describes vending machines as
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`automated means for selling products. Id. ¶ 3. Denison’s vending machines
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`broadly include “machines commonly used for vending drinks and snacks,
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`ATM stations, change machines, toll machines, coin-operated laundry
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`machines, video arcades, etc.” Id. ¶ 36. Access to the contents of the
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`vending machine is controlled by an electronic lock and key. Id. ¶ 7. In
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`order to unlock the electronic lock, there must be a match between codes
`
`stored in the electronic key and electronic lock. Id. ¶ 42. Figure 1 of
`
`Denison is shown below.
`
`
`
`Figure 1 is a schematic view of Denison’s vending machine and electronic
`
`lock. Id. ¶ 15. Vending machine 20 has a front panel or door 22 that can be
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`opened when the electronic lock is unlocked by a properly programmed
`
`electronic key. Id. ¶ 36. Electronic key 26 preferably communicates with
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`the lock via wireless communications. Id. ¶ 37.
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`2. Asserted Ground of Anticipation
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`Review of claims 1 and 6 was instituted pursuant to Petitioner’s
`
`assertion that these claims are anticipated by Denison. Dec. 11–13, 15, 21;
`
`Pet. 14–29. Petitioner provides claim charts in support of its contentions and
`
`relies upon the Allison Declaration to support its positions. Pet. 14–29; Ex.
`
`8
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`1010. Based on our review of Petitioner’s explanations and supporting
`
`evidence and Patent Owner’s arguments and evidence, we are persuaded that
`
`Petitioner has demonstrated by a preponderance of the evidence that claims
`
`1 and 6 are anticipated by Denison.
`
`a. Independent Claim 1
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`Petitioner’s arguments as to the alleged anticipation of claim 1 may be
`
`summarized as follows: Denison describes a security system (vending
`
`machine) for protecting an item of merchandise (e.g., drinks and snacks).
`
`Pet. 14; see also id. at 18–26 (claim chart). Denison is relied upon to
`
`disclose the recited programmable key and programming station through its
`
`description of a vending machine with an electronic lock and electronic key
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`wherein external computing device 426 is used to program a key code and
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`an access code into the memory of the electronic key. Id. at 14–15. The
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`electronic key programs the vending machine with an access code. Id. at 24.
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`In order to unlock Denison’s vending machine, the access codes in the
`
`electronic lock and key must be the same. Id. at 15.
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`Patent Owner argues that Denison does not anticipate claim 1 because
`
`it does not disclose an embodiment that has “a programming station for
`
`generating a security code in the key [and] . . . said security device being
`
`initially programmed with the security code from the key.” PO Resp. 5.
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`Petitioner relies on Denison’s discussion of an “‘external computing
`
`device,’ such as a ‘laptop’” to disclose the recited programming station.
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`Pet. 21 (citing Ex. 1010, 38–39); see Ex. 1002 ¶ 78 (“To communicate
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`wirelessly with the electronic lock, the external computing device 426, such
`
`as a laptop computer, is equipped with a wireless transceiver 428.”). In
`
`Denison, “the external computing device 426 may optionally be used to
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`program an electronic key 410.” Ex. 1002 ¶ 85. In addition to the
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`programming station that programs the electronic key, claim 1 also recites
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`“said security device being initially programmed with the security code from
`
`the key.” As to this limitation, Petitioner relies upon Denison’s disclosure
`
`that “[t]he electronic lock can learn a key code from a corresponding
`
`electronic key, a hand-held programming unit, and/or an external computing
`
`device via wireless communications.” Pet. 16 (quoting Ex. 1002 ¶ 6); see
`
`also Ex. 1010, 41 (supporting testimony of Mr. Allison). As described in
`
`Denison, “a service person sets the electronic lock in a learning mode, in
`
`which the electronic lock receives a key code transmitted from an electronic
`
`key, and stores the key code in a non-volatile memory for future access
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`control of the vending machine.” Pet. 24 (quoting Ex. 1002 ¶ 7).
`
`First, Patent Owner contends that the disclosures relied upon for the
`
`programming station and electronic lock that is programmed by an
`
`electronic key are found in two different embodiments and, thus, it is
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`improper for Petitioner to rely upon them as part of an anticipation
`
`allegation. PO Resp. 7–12. According to Patent Owner, Petitioner
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`characterizes Denison as including a “‘first method’—where an electronic
`
`lock of a vending machine learns a key code from an electronic key—[as]
`
`disclosed in ¶¶ [0036]–[0076] of Denison.” Id. at 7–8. In addition,
`
`according to Patent Owner, Denison includes two other methods disclosed in
`
`paragraphs 77–88, which “have the electronic lock ‘learning the key code
`
`from the hand-held program unit’ or learning the key code ‘from the external
`
`computing device.’” Id. at 8. Patent Owner argues that Denison’s file
`
`history and specification show that the first method and the other two
`
`methods come from descriptions of different inventions that were disclosed
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`at different times. Id. at 8–11. Specifically, Patent Owner asserts that
`
`Denison is a continuation-in-part, which adds new matter to the previous
`
`filing. Id. at 8–9. According to Patent Owner, that new matter included
`
`“another approach of the invention” that allowed the vending machine lock
`
`to be programmed by receiving an access code from an electronic key. Id. at
`
`9.
`
`Petitioner responds by arguing that Denison’s Summary of the
`
`Invention ties together the three methods for programming the vending
`
`machine lock. Reply 5. In particular, Petitioner notes Denison states that
`
`“[i]n view of the foregoing, the present invention provides a vending
`
`machine with a field-programmable electronic lock. The electronic lock can
`
`learn a key code from a corresponding electronic key, a hand-held program
`
`unit, and/or an external computing device via wireless communications.”
`
`Id. (quoting Ex. 1002 ¶ 6 (emphases by Petitioner)). Petitioner asserts that
`
`this passage means that the lock of Denison’s vending machine is able to be
`
`programmed by an electronic key, an external computing device, or both.
`
`Id. (citing Ex. 1011, 41:3–12).
`
`According to Patent Owner, the term “and/or” makes this passage
`
`ambiguous. Tr. 31:2–15. Patent Owner contends that the usage of the term
`
`“present invention” in the first sentence merely signifies that the inventive
`
`system must have a vending machine with a field programmable lock. PO
`
`Resp. 16. Per Patent Owner’s arguments, the next sentence in that passage,
`
`which includes the “and/or” language, is a distinct disclosure that lists the
`
`three different embodiments, but does not combine the teachings of these
`
`embodiments. Id. “Tellingly, Denison does not, following the ‘and/or’
`
`statement, go on to describe in the Summary of the Invention any particular
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`embodiment that combines using an external computer to program the key
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`and then using the key to program the electronic lock.” Id. (citing Ex. 1002
`
`¶¶ 7–14).
`
`An anticipating reference “must clearly and unequivocally disclose
`
`the claimed compound or direct those skilled in the art to the compound
`
`without any need for picking, choosing, and combining various disclosures
`
`not directly related to each other by the teachings of the cited reference.” In
`
`re Arkley, 455 F.2d 586, 587 (CCPA 1972). Patent Owner describes in
`
`detail when each of the methods was introduced into the disclosure that
`
`eventually became the Denison specification. See PO Resp. 8–10. This
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`exercise, however, does not address what one of ordinary skill in the art
`
`would understand to be disclosed by Denison as published. The disclosure
`
`of Denison may have evolved from the earlier filings, but we are presented
`
`with a specific publication that is the basis for Petitioner’s asserted ground
`
`of anticipation and are tasked with determining what information would be
`
`obtained from reading Denison as published. We must refrain from “picking
`
`and choosing snippets” of Denison, but we must consider the reference as a
`
`whole and determine whether the teachings relied upon are sufficiently
`
`interrelated to support Petitioner’s anticipation challenge. Arkley, 455 F.2d
`
`at 587.
`
`Petitioner argues that Denison ties these methods together by stating
`
`that the vending machine’s lock can be programmed by an electronic key
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`and/or the external computing device. See Reply 5; Ex. 1002 ¶ 6. Patent
`
`Owner, on the other hand, is attempting to parse Denison’s sentences in a
`
`manner that would require each individual sentence to be read alone and
`
`without context. The passage relied upon by Petitioner describes the present
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`invention as having the vending machine and the lock. Ex. 1002 ¶ 6. The
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`very next sentence provides additional disclosure about the lock of the
`
`present invention. Id. Specifically, that sentence recites that the lock of the
`
`present invention can learn the key code from the electronic key, hand-held
`
`programming unit, and/or an external computing device. Id. We find that
`
`the “and/or” term would have indicated to one of ordinary skill in the art that
`
`the electronic lock can learn the access code from any one of those methods
`
`or it can learn the access code by using any combination of those methods.
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`Thus, we are persuaded that these methods are “directly related to each other
`
`by the teachings of the cited reference.” See Arkley, 455 F.2d at 587; see
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`also Purdue Pharma L.P. v. Epic Pharma, LLC, 811 F.3d 1345, 1358–59
`
`(finding two portions of a specification “directly related” based on one
`
`statement describing an embodiment of the disclosed invention).
`
`In addition, Petitioner contends that “after a key is programmed with
`
`an access code by the external computing device, that same key is usable to
`
`program the vending machine (or alternatively, the external computing
`
`device can program the vending machine).” Pet. 17 (citing Ex. 1010
`
`¶¶ 100–105). Denison’s external computing device 426 has a memory
`
`containing a list of access codes or a program for computing new access
`
`codes. Ex. 1002 ¶ 79 (cited at Pet. 22). Denison describes using the
`
`external computing device to program access codes into an electronic key.
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`Id. ¶ 86; see also Pet. 15 (citing Ex. 1002 ¶ 85 (“the external computing
`
`device 426 may optionally be used to program an electronic key 410”)
`
`(emphasis added)). Denison further describes programming the vending
`
`machine lock with the “access code(s), access limit parameters, etc. that are
`
`already in the electronic key 410.” Ex. 1002 ¶ 87 (emphasis added); see
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`also Pet. 15 (citing Ex. 1002 ¶ 45 (“[T]he access control strategy is
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`established by ‘learning’ or transferring the access code of the electronic key
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`to be used to operate the machine into the electronic lock via a secured
`
`transfer process.”)). Thus, we find that Denison describes electronic
`
`key 410 as being programed by external computing station 426 and being
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`used to program the vending machine lock.
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`Next, Patent Owner asserts that these disclosures are insufficient to
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`anticipate claim 1 because the claim requires a specific sequence of events.
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`PO Resp. 17. According to Patent Owner, claim 1 “requires the particular
`
`sequence of 1) the programming station ‘generating a security code in the
`
`key’ 2) the key ‘initially’ programming the security device with the security
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`code ‘from the key’ and 3) the security device ‘subsequently being
`
`controlled by the key upon matching the security code.’” Id. In Patent
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`Owner’s view, in order to meet the claim language a system must be
`
`configured to carry out each of those events in the sequence listed above.
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`Tr. 29:21–30:5. Thus, Patent Owner contends that Denison does not
`
`anticipate claim 1 because it does not disclose this particular sequence. PO
`
`Resp. 18.
`
`Claim 1 is directed to “[a] security system for protecting an item of
`
`merchandise.” Ex. 1001, 11:7. One element of this security system is a
`
`“security device for attachment to the item of merchandise.” Id. at 11:12–
`
`13. The claim recites “said security device initially programmed with the
`
`security code from the key and subsequently being controlled by the key
`
`upon matching the security code.” Id. at 11:13–16 (emphases added).
`
`Petitioner asserts that the “subsequently” and “initially” language found in
`
`claim 1 does not require a particular series of events because timing of
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`events is not part of a product claim. Tr. 7:4–13. Petitioner asserts that in
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`Denison, “after a key is programmed with an access code by the external
`
`computing device, that same key is usable to program the vending machine
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`(or alternatively, the external computing device can program the vending
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`machine).” Pet. 17 (citing Ex. 1010 ¶¶ 100–105).
`
`As noted above, claim 1 recites “said security device initially
`
`programmed with the security code from the key and subsequently being
`
`controlled by the key upon matching the security code.” Id. at 11:13–16
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`(emphases added). We determine that this means that the security device
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`must be capable of being controlled by the key that programmed the security
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`device. This determination is based upon the specific language of the claim.
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`The antecedent basis for “said” security device and “the” key indicates that
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`the same security device and key are referred to throughout the claim. The
`
`functional language in the claims (“programmed” and “being controlled”)
`
`“reflects the capability of” the structures recited in the claims. MasterMine
`
`Software, Inc. v. Microsoft Corp., 874 F.3d 1307, 1315 (Fed. Cir. 2017).
`
`The claim recites that the security device is programmed with a security
`
`code and being controlled by a key. As such, these functional terms indicate
`
`capabilities that must be present within the claimed system. We determine
`
`that the security device must be capable of being programmed and controlled
`
`by the recited key. As such, the functional capabilities at issue recite the
`
`capability to perform an initial programming with the key and subsequent
`
`control by the key. Thus, we find the claim to require a key capable of
`
`programming and controlling the security device.
`
`Denison discloses “the external computing device 426 may optionally
`
`be used to program an electronic key 410 . . . . To that end, the electronic
`
`15
`
`
`
`IPR2016-01241
`Patent 7,737,846 B2
`
`key 410 is connected to the cradle 430, and the access code that has been
`
`programmed into the lock is transmitted via the cradle into the key.”
`
`Ex. 1002 ¶ 85. Further, “[e]ach electronic key 26 has a key code 88 stored
`
`therein, and the same key code is stored in the memory 52 of the electronic
`
`lock in each vending machine to be operated with the electronic key.” Id.
`
`¶ 42; see also id. ¶ 79 (“The electronic key 410 has stored therein access
`
`code(s), control parameters for accessing the lock, and an optional
`
`timebase.”). “The electronic lock can be unlocked if the key code it receives
`
`from the electronic key matches the key code stored in the memory of the
`
`lock.” Id. ¶ 42; see also id. ¶ 87 (“[T]he operator takes the key 410 to the
`
`location of the vending machine and uses the key to access the lock by
`
`communicating with the lock via the access control transceiver 408 based on
`
`the new access code and/or operation parameters programmed into the
`
`lock.”). We find that these passages disclose the recited programming
`
`station for generating a security code and security device capable of being
`
`programmed by a key and capable of being controlled by that key upon a
`
`matching of the security code.
`
`Thus, for the foregoing reasons, we are persuaded by Petitioner’s
`
`contentions as to all of the limitations of independent claim 1. Upon
`
`consideration of the evidence, we conclude that Petitioner has shown by a
`
`preponderance of the evidence that claim 1 is anticipated by Denison.
`
`b. Analysis of Dependent Claim 6
`
`Petitioner asserts that claim 6 is anticipated by Denison. Pet. 28–29.
`
`Claim 6 depends from claim 1 and further recites “wherein the key includes
`
`a counter which counts the number of activations of the key.” Petitioner
`
`relies upon Denison’s disclosure of an access counter in the key memory
`
`16
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`
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`IPR2016-01241
`Patent 7,737,846 B2
`
`that keeps track of the number of accesses for that key. Id. (citing Ex. 1002
`
`¶ 60, Fig. 9). Although Patent Owner does not make any additional
`
`arguments with respect to claim 6, and thereby waived any arguments as to
`
`its patentability apart from Patent Owner’s arguments addressed above in the
`
`context of the independent claim, the burden remains on Petitioner to
`
`demonstrate unpatentability of all challenged claims. 35 U.S.C. § 316(e);
`
`see Paper 8, 3 (“Patent Owner is cautioned that any arguments for
`
`patentability not raised in the response will be deemed waived.”); Dynamic
`
`Drinkware LLC, v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
`
`2015). We have analyzed Petitioner’s contentions and cited evidence,
`
`including the supporting testimony of Mr. Allison, and agree with and adopt
`
`Petitioner’s analysis regarding claim 6. Pet. 28–29. Upon consideration of
`
`all the evidence, we conclude that Petitioner has proved by a preponderance
`
`of the evidence that claim 6 is anticipated by Denison.
`
`3. Asserted Ground of Obviousness
`
`Petitioner argues claims 1–3 and 6 would have been obvious over
`
`Denison. Pet. 29–34. Petitioner provides claim charts in support of its
`
`contentions and relies upon the Allison Declaration to support its positions.
`
`Id. Ex. 1010. Based on our review of Petitioner’s explanations and
`
`supporting evidence, we are persuaded that Petitioner has demonstrated by a
`
`preponderance of the evidence that claims 1–3 and 6 would have been
`
`obvious over Denison.
`
`a. Claims 1 and 6
`
`Petitioner directs us to the same disclosures in Denison as relied upon
`
`in support of its alleged ground of anticipation of claims 1 and 6. See Pet.
`
`29–31. Petitioner supplements these disclosures by arguing, in the
`
`17
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`
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`IPR2016-01241
`Patent 7,737,846 B2
`
`alternative, that if the Board were to be persuaded that the “descriptions of
`
`electronic key 26 and 410 describe different embodiments, combining these
`
`embodiments would have been obvious.” Id. at 29 (citing Ex. 1010 ¶¶ 120–
`
`124). Mr. Allison testifies that one of ordinary skill would have been
`
`motivated to combine the cited disclosures “in order to provide extra
`
`flexibility to the user of the system.” Ex. 1010 ¶ 123. Mr. Allison also
`
`testifies that combining the cited disclosures “would have been a routine and
`
`simple task for a [person of ordinary skill in the art], and thus there would
`
`have been a high expectation of success.” Id. ¶ 124. Further, Petitioner
`
`contends that
`
`Denison discloses only two different ways for storing a security
`code on the electronic key: (1) the key is programmed with a
`code at the factory (Ex. 1002 ¶ 45), and (2) the key receives the
`code from the external computing device (id. ¶ 84-85). Given
`only two options, a person of ordinary skill in the art (“POSA”)
`would have found it obvious to use a key programmed either way
`to program a vending machine.
`
`Reply 10 (citing KSR Int’l v. Teleflex Inc., 550 U.S. 398, 410 (2007)).
`
`Patent Owner asserts that Petitioner’s obviousness argument “still
`
`fails to address the programming sequence required by claim 1.” PO
`
`Resp. 18. Petitioner responds by asserting that if the claims were construed
`
`to require a particular order then that recited order of capabilities would have
`
`been obvious over Denison. Reply 10. Specifically, Petitioner argues that
`
`if the key programmed with an external computing device is used
`to program the lock of the vending machine (security device), the
`key must receive the code from the external computing device
`before it can program the code into the lock. And the lock must
`be programmed with the code before the lock can be controlled
`by the key upon matching the code of the key with the code in
`the vending machine.
`
`18
`
`
`
`IPR2016-01241
`Patent 7,737,846 B2
`
`Id. We find Petitioner’s contentions to be a persuasive explanation of what
`
`would have been learned from the disclosures of Denison. We are
`
`persuaded that it would have been obvious to program the key before using
`
`the key to program the lock and that it would have been obvious to program
`
`the lock before attempting to use the key to unlock the lock. We also are
`
`persuaded that because Denison only describes two ways of programming a
`
`key, it would have been obvious to use a key programmed by the external
`
`computing device as the key that programs the vending machine lock.
`
`Patent Owner argues that Petitioner’s arguments do not account for
`
`the prosecution history of Denison. PO Resp. 21. When asked at oral
`
`hearing, however, Patent Owner was unable to cite any precedent to support
`
`its argument that, to determine whether a cited reference discloses one
`
`embodiment or multiple embodiments, the reference should be reviewed in
`
`light of its prosecution history. Tr. 33:6–34:5. We are not convinced that
`
`consideration of the prosecution history is necessary in this instance to
`
`determine w
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