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 IPR2016-01915
`Patent 7,737,844 B2
`____________
`
`Record of Oral Hearing
`Held: November 15, 2017
`____________
`
`
`
`Before JUSTIN T. ARBES, STACEY G. WHITE, and DANIEL J.
`GALLIGAN, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`MOBILE TECH, INC.,
`Petitioner,
`
`v.
`
`INVUE SECURITY PRODUCTS INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01915
`Patent 7,737,844 B2
`____________
`
`Record of Oral Hearing
`Held: November 15, 2017
`____________
`
`
`
`Before JUSTIN T. ARBES, STACEY G. WHITE, and DANIEL J.
`GALLIGAN, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2016-01915
`Patent 7,737,844 B2
`
`APPEARANCES:
`
`FOR THE PETITIONER:
`
` Anthony F. Blum, Esq.
` Alan H. Norman, Esq.
` David B. Jinkins, Esq.
` Robert Gerlock, Esq.
` THOMPSON COBURN
` One U.S. Bank Plaza
` St. Louis, Missouri 63101
` 314.552.6000
` ABlum@thompsoncoburn.com
` ANorman@thompsoncoburn.com
`
`FOR THE PATENT OWNER:
`
` Gregory J. Carlin, Esq.
` MEUNIER, CARLIN & CURFMAN
` 999 Peachtree Street NE
` Suite 1300
` Atlanta, Georgia 30309
` 404-645-7700
`
`ALSO PRESENT:
` Judge Justin T. Arbes (by videoconference)
` Judge Stacey G. White
` Judge Daniel J. Galligan
` Trent Kirk, Esq. (InVue In-House Counsel)
`
`
`
`
`The above-entitled matter came on for hearing on November 15,
`2017, commencing at 9:00 a.m. at the U.S. Patent and Trademark Office,
`207 South Houston Street, Dallas, Texas.
`
`
`
`
`
`2
`
`
`
`
`Case IPR2016-01915
`Patent 7,737,844 B2
`
`
`
`P R O C E E D I N G S
` JUDGE WHITE: You may be seated. Good morning.
` MR. BLUM: Good morning.
` MR. CARLIN: Good morning.
` JUDGE WHITE: Well, good morning. This is the oral --
`this is the oral hearing for IPR2016-01915 between Petitioner
`Mobile Tech, Inc., and Patent Owner, InVue Security Products,
`concerning U.S. Patent No. 7,737,844. I'm Judge White, and with
`me today is Judge Galligan, and appearing via videoconference, we
`have Judge Arbes.
` Let's start with appearances. Petitioner, who do we
`have?
` MR. BLUM: Good morning, Your Honors. I'm Anthony Blum
`for Petitioner, MTI. I have with me here Alan Norman, David
`Jinkins, and Rob Gerlock, all from Thompson Coburn.
` JUDGE WHITE: Thank you.
` And for Patent Owner?
` MR. CARLIN: Good morning, Your Honors. I'm Gregory
`Carlin from Meunier, Carlin & Curfman representing the Patent
`Owner. And next to me is Mr. Trent Kirk, in-house patent counsel
`for the patent owner, InVue Security Products.
` JUDGE WHITE: All right. And I know you gentlemen have
`been here before, but I'll just run over the administrative
`matters just as a reminder. We do have one judge hearing
`remotely. He will not hear you unless you are speaking into the
`microphone, so please make sure your microphone is on and that you
`3
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`Case IPR2016-01915
`Patent 7,737,844 B2
`
`are speaking into it so that all the judges can hear what you have
`to say.
` And, also, Judge Arbes may be not be able to see what's
`projected on the screen. He does have an electronic copy of the
`record and all the slides and everything, so just be clear as to
`which slide you're referring to, and we can all follow along
`clearly with your demonstratives.
` Per the hearing order in this matter, Petitioner, you'll
`have 45 minutes of total argument time to discuss the challenge
`claims and the grounds in which you are pursuing in this matter.
`You may reserve some time for rebuttal.
` How much time would you like to reserve for rebuttal?
` MR. BLUM: We'd like to reserve 15 minutes for rebuttal.
` JUDGE WHITE: Okay. I'll give each side a warning when
`you're about five minutes from your time.
` Does everyone have their microphones on? Is there a
`little green light?
` MR. CARLIN: Ours appears to be on, Your Honor.
` JUDGE ARBES: The podium is not.
` MR. BLUM: Ours was not on. I just turned it on; I
`apologize.
` JUDGE WHITE: Okay. All right. I just want to make
`sure that Judge Arbes can hear everything you guys are saying.
` Okay. Did anybody bring paper copies of the
`demonstratives? If not, we have electronic copies; it's optional.
` MR. CARLIN: Permission to approach?
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`4
`
`
`
`
`Case IPR2016-01915
`Patent 7,737,844 B2
`
` JUDGE WHITE: Yes.
` Thank you.
` MR. CARLIN: You're welcome.
` JUDGE GALLIGAN: Thank you.
` MR. CARLIN: You're welcome.
` JUDGE WHITE: Thank you.
` Are there any questions before we begin?
` MR. BLUM: No, ma'am.
` JUDGE WHITE: All right. Petitioner, you may begin when
`ready.
` MR. BLUM: May it please the Board. Every claim at
`issue that was instituted in this proceeding is invalid as
`obvious.
` As shown on Slide 2, there are five main issues disputed
`in the briefing. The first is that Denison, Roatis and Deguchi
`are obvious -- render obvious, Claims 1 and 17. The remaining
`four issues each regard a dependent claim or set of claims.
`Notably, Claims 2, 14, and 18 through 19 are not listed on Slide 2
`and that is because NDO has not disputed that the claims are
`obvious to the extent the independent claims are obvious.
`Nonetheless, those claims are obvious as set forth in the petition
`in more detail and the declaration of Thaine Allison.
` So the claim language of Claim 1 is on Slide 3. Claim 1
`recites an apparatus for generating/entertaining a security code.
`That apparatus comprises two elements: A housing and a logic
`control circuit located within said housing, said -- and then the
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`5
`
`
`
`
`Case IPR2016-01915
`Patent 7,737,844 B2
`
`logic control circuit includes four sub elements. It includes the
`controller for generating the security code, a memory for storing
`that code, a wireless communication system, and fourth, a visual
`display for indicating the status of the logic control circuit.
` On Slide 4 is Claim 17, which is very similar with just
`a couple exceptions, notably, the communication system in Claim 17
`does not have to be wireless. In addition, the visual display of
`Claim 17 is not required to be part of the logic control circuit.
` Denison discloses most, if not all, the limitations of
`Claims 1 and 17. On Slide 5 is Figure 17 from Denison. Denison
`discloses an external computing device, 426, which is a laptop
`computer. Denison discloses that that laptop computer generates
`an access code, which is a security code. As Thaine Allison
`testified, one of ordinary skill in the art would have understood
`that a laptop has a microprocessor, which is a controller under
`the claim language and that that microprocessor would have
`generated the code.
` The Denison reference also discloses that the laptop
`computer has a memory or database for storing the code. In
`addition, Denison discloses the laptop which, as you can see on
`Figure 17, has a laptop monitor or screen, which is a visual
`display.
` Slide 3 of the four elements -- well, for the visual
`display, in addition, Thaine Allison testified that a laptop
`computer, they kind of may have a whole host of different visual
`indicators, including backlit keyboards and different indicator
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`6
`
`
`
`
`Case IPR2016-01915
`Patent 7,737,844 B2
`
`lights that flash or turn on when communication is taking place or
`power is turned on.
` As for the fourth sub element, the cradle 430 is a
`wireless communication system. One of ordinary skill in the art
`would have understood that because it communicates with the
`electronic key 410, and in Denison, the electronic key is only
`described as having wireless or infrared communication capability;
`it has no non-wireless communication capability.
` So, therefore, Denison discloses all the limitations of
`Claims 1 and 17, but nonetheless, Thaine Allison testified that it
`would have been obvious to combine the Denison and Roatis
`references. Both references have overlapping inventors. They
`both describe the same system for programming and controlling
`vending machines using an electronic key. So Thaine Allison
`testified that it would have been obvious to use the Roatis
`cradle, which is shown on the right side of the Slide 5 with the
`Denison system. And that Roatis cradle includes an additional
`visual display of ready/wait lights 40 that are shown in red on
`Slide 5.
` Now, InVue is making two arguments for why this Denison
`combination doesn't render obvious Claims 1 and 17, and the first
`in the logic control circuit. This really comes down to a claim
`construction --
` JUDGE GALLIGAN: Sorry to interrupt. Just if you could
`identify the slides for Judge Arbes.
` MR. BLUM: I apologize, Your Honors. I'm on Slide 7 now
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`7
`
`
`
`
`Case IPR2016-01915
`Patent 7,737,844 B2
`
`which deals with the claim construction of the logic control
`circuit limitation. Now, the '844 patent doesn't explicitly
`define the term, but it does define and depict and describe the
`preferred embodiment of the logic control circuit, and it does so
`in Figure 6. And as you can see in Figure 6, on Slide 7, the
`logic control circuit is an SDC memory, a controller, a wireless
`communication circuit, and a status display.
` So that's basically the four sub elements that were
`recited in Claim 1. The specification additionally describes that
`the circuit is made up of circuit components, and it describes
`that those circuit components can vary without affecting the
`concept of the invention. So based upon these disclosures, it is
`Petitioner's position that the logic control circuit is a
`collection of circuit or computer components that perform the
`functions that are required by Claims 1 and 17.
` On Slide 8, InVue admits that Denison contains a
`collection of computer components. It, however, appears to deny
`that those components are connected in circuit. This, however, is
`incorrect. Components of a laptop computer have to be in circuit.
`They have to be able to electrically communicate. If they
`weren't, the computer wouldn't work. Information wouldn't be able
`to be communicated from the microprocessor to the memory and then
`also to the laptop display in order for the data to be displayed.
`If they weren't in the circuit, the computer wouldn't work -- the
`computer, Denison, wouldn't be able to perform the functions that
`it is explicitly described as performing in the Denison reference.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`8
`
`
`
`
`Case IPR2016-01915
`Patent 7,737,844 B2
`
` In addition, it's notable that the proposed combination
`has the exact same circuit components that are shown in Figure 6
`of the '844 patent: A controller, a memory, a visual or status
`display, and the wireless communication circuit. So InVue denies
`that the Denison combination has a circuit, but it does so without
`any expert or factual evidence to contradict the testimony of
`Thaine Allison.
` The next issue as shown on Slide 9 is a logic control
`circuit located within said housing. And this language is shown
`again on Slide 10 within the context of Claim 1. And for this
`limitation, it is InVue -- it appears to be InVue's position that
`all four of the sub elements of Claim 1 -- the controller, memory,
`communication system, individual display -- all have to be
`completely or entirely located within a single housing. As shown
`on Slide 11, however, this is an incorrect claim construction
`interpretation.
` Moving to Slide 12, the claim language is a logic
`control circuit located within said housing. There is no
`limitation that the logic control circuit has to be located
`completely or entirely within said housing, and the ex parte
`Adelman case is instructive as to this issue. In that case, the
`claim required a groove extending through the medium's first
`layer. Both the examiner and the Board found that -- or both the
`Board and the examiner rejected the Applicant's argument that the
`groove had to extend completely through the first layer; instead,
`they agreed that had a prior art reference in which the groove
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`9
`
`
`
`
`Case IPR2016-01915
`Patent 7,737,844 B2
`
`extended only partially through the first layer met the claim
`under the broadest reasonable interpretation.
` The same thing applies here. The logic control circuit
`doesn't have to be located completely within said housing; it can
`be located partially within the housing.
` And, in fact --
` JUDGE GALLIGAN: Just a question on that: But does it
`still have to be one housing? It says said housing -- I believe
`you said it doesn't have to be -- "a housing" doesn't necessarily
`mean one housing.
` MR. BLUM: Correct. So under Federal Circuit case law
`as shown in Slide 14, the claims here set forth "a housing", and
`then they refer to a logic control circuit located within said
`housing. So under Federal Circuit precedent, including the
`Baldwin case, that "a" or "an" can mean one or more, as best
`described as a rule rather than merely presumption or even a
`convention. The exceptions of this rule are extremely limited.
`And here, there is no exception. So when the claims say "a
`housing," that means one or more housings.
` And then, under the Baldwin case, the subsequent use of
`definite articles "the" are said in a claim to refer back to the
`same claim term does not change the general plural rule, but
`simply re-invokes that non-singular meaning. So when the claims
`then refer back to a logic control circuit located within said
`housing, that said housing re-invokes the potential plurality of a
`housing. So the claim limitation is satisfied by a logic control
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`10
`
`
`
`
`Case IPR2016-01915
`Patent 7,737,844 B2
`
`circuit that's located partially within one or more housings, as
`shown on Slide 15.
` Moving back to Slide 13, another point is that InVue's
`construction is actually inconsistent with the '844 patent
`specification as shown in Figure 3. Figure 3 illustrates the
`visual display, which are the LEDs 23, shown on Slide 13, and
`those LEDs extend beyond the housing. They are not completely
`within the housing. They are only partially within the housing.
`So InVue's construction actually excludes the preferred
`embodiment.
` Moving to Slide 16, based upon the correct claim
`construction, the Denison combination renders the claims obvious.
`As you can see in Figure 17, the logic control circuit is located
`partially within a single housing. Specifically, the memory, the
`controller, and the visual display are all located within the
`housing of the laptop 426. And so the limitation -- or the claims
`are actually going to be obvious --
` JUDGE WHITE: Hold on for a second; we might be having
`an audio problem. And I'll note this for your time.
` MR. BLUM: Okay.
` JUDGE WHITE: Why don't we just take a brief break. You
`can stand up there. We'll let you know when we're there.
` (A brief recess was taken.)
` JUDGE ARBES: Can you hear me?
` JUDGE WHITE: Yes, we can hear you.
` MR. BLUM: Yes, we do.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`11
`
`
`
`
`Case IPR2016-01915
`Patent 7,737,844 B2
`
` JUDGE ARBES: Thank you. Great.
` JUDGE WHITE: Could you hear us before?
` JUDGE ARBES: Yes. I believe the audio from here was --
`got disconnected.
` JUDGE WHITE: Okay. So we just -- we couldn't hear you.
` JUDGE ARBES: Yes.
` JUDGE WHITE: So he heard your presentation up until
`now.
` MR. BLUM: Okay.
` JUDGE ARBES: And actually, Counsel, if you can hear me
`now, can you -- if we can go back a couple of minutes to the claim
`interpretation. I'd like to ask a few questions about that.
` I understand your position that the claim says "a
`housing," and so, theoretically, there can be more --
`more housings present, but given the subsequent language that the
`logic control circuit located within said housing, the logic
`control circuit includes those four items, doesn't that imply that
`those four items have to be within a single housing?
` MR. BLUM: Your Honor, I think the Baldwin case says it
`doesn't. It says when the claim refers back to the "the" or the
`"said", that re-invokes the potential nonsingular meaning.
` JUDGE ARBES: So let me ask you a hypothetical then.
`Let's say that we have the controller located within one housing
`and the visual display located in another housing and they're
`connected by a wire 10 feet apart, it's your position that that
`would meet the claim then?
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`12
`
`
`
`
`Case IPR2016-01915
`Patent 7,737,844 B2
`
` MR. BLUM: So there's a controller within one housing
`and a communication system within a second housing? I think that
`would meet the claim limitation for several reasons. First is
`that the claim only requires the logic control circuit -- it
`requires the logic control circuit to be within the housing. It
`doesn't require the entire logic control circuit to be in the
`housing.
` And so when you have part of the logic control circuit
`in the first housing, that's going to meet the limitation. And
`additionally, because you have the rest of the circuit in another
`housing, it's going to be within one or more housing, so it's also
`going to meet the claim limitation.
` In addition, though, we also set forth that even if the
`entire circuit has to be within a single housing, the claims are
`still obvious in view of the prior art references.
` JUDGE ARBES: Okay. So just to make sure I understand
`your initial position on the claim interpretation then: If I have
`a visual display located in one housing and a controller located
`in another housing, that still meets the claim limitation located
`within said housing?
` MR. BLUM: Yes, Your Honor, I believe that's correct.
`Had the applicant or had InVue wanted to draft the claim to
`require all the elements to be in a single housing, it could have
`drafted a claim to recite a single housing and then a logic
`control circuit located within said single housing. And I think
`this is dictated by the Baldwin graphic case.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`13
`
`
`
`
`Case IPR2016-01915
`Patent 7,737,844 B2
`
` JUDGE ARBES: Okay. Are there any other cases you would
`point us to other than the Baldwin case? I just want to make sure
`I understand your position.
` MR. BLUM: I don't have any cases off the top of my
`head, although I believe there are more cited in the briefs and
`Baldwin Graphic, in turn, cites other cases.
` JUDGE ARBES: Okay. Thank you.
` MR. BLUM: Just to finish up that point on Slide 16, we
`have got three of the four required sub elements within the
`external computer device: The memory, the controller, and the
`visual display. And then the fourth element -- the fourth sub
`element is the wireless communication system within the additional
`housing of the cradle 430. So MTI believes that does meet the
`claim limitation; however, as set forth in Claim 17 -- or in Slide
`17, even if the Board does believe the logic control circuit has
`to be located entirely within a single housing, that's still going
`to be obvious in view of the references.
` As shown in Slide 18, we have Figure 17 again. The only
`element of the logic control circuit that's potentially not within
`a single housing would be the cradle 430, the wireless
`communication system. But as Thaine Allison testified, it would
`have been obvious to integrate that into the laptop computer 426,
`and so, at that point, you would have all of the -- the entire
`logic control circuit within that single housing of the laptop
`computer.
` And on Slide 19 -- in fact, the Deguchi reference
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`14
`
`
`
`
`Case IPR2016-01915
`Patent 7,737,844 B2
`
`teaches and provides that expressed motivation for integrating the
`cradle into the laptop computer. The Deguchi references teaches
`that it would be desirable to provide portable electronic devices
`or appliances, which have integrated communication port for direct
`connection to a host device for data exchange and storage without
`the need for an intermediary-type connection such as a cradle.
` So Deguchi teaches that it would be desirable to have
`direct connection between a portable electronic device, such as
`the electronic key of Denison, and a host device such as the
`laptop computer of Denison. So, at that point, we have all -- the
`entire logic control circuit within one housing, and so Claims 1
`and 17 are obvious.
` JUDGE ARBES: Counsel, can you respond to the Patent
`Owner's argument that the overall obviousness reasoning that you
`have is illogical because it's based on substituting
`Roatis's wireless cradle for Denison's cradle, but then discarding
`the use of cradles altogether based on Deguchi? Would that --
`both of those rationales do not fit together. Can you respond
`to that?
` MR. BLUM: So I think there's no inconsistency here.
`You know, Thaine Allison -- well, the Deguchi reference explicitly
`teaches that it would be desirable to eliminate cradles, to
`integrate that into the computer. And Thaine Allison also
`testified that it could be obvious to do so simply because getting
`rid of the cradle is just getting rid of one additional accessory.
`It's one less thing that you have to remember, one less thing
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`15
`
`
`
`
`Case IPR2016-01915
`Patent 7,737,844 B2
`
`that, you know, you might forget.
` JUDGE ARBES: But it appears that one of ordinary
`skill in the art would have been motivated to eliminate the cradle
`altogether and integrate functionality into the device. Why would
`that person also be motivated to substitute Roatis's cradle or
`functionality for Denison's cradle or functionality? Do you see
`what I'm saying?
` MR. BLUM: Yes. I don't think it's a step-by-step where
`you replaced the Denison/Roatis -- or the Roatis cradle and the
`Denison cradle and then, afterwards, you integrate. A person of
`ordinary skill in the art is going to be looking at all three
`references, and the Roatis is telling you that the cradle can be
`wireless. In fact, Denison really already teaches that the cradle
`can be wireless.
` And then Deguchi is just telling us, well, you want to
`eliminate that cradle and integrate it so you have one less
`device, and, in fact, the Deguchi reference actually also
`discloses that you would do this using infrared communication as
`shown in Figure 6 on Slide 20.
` JUDGE WHITE: I think, put another way, the question is
`why would someone of ordinary skill look to both? Why wouldn't
`you just say, okay, Denison and Deguchi, why would you pull Roatis
`in this too, if you are just really, in the end, trying to
`integrate into a singular housing?
` MR. BLUM: I mean, perhaps you don't need the Roatis
`reference because Denison already does disclose wireless
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`16
`
`
`
`
`Case IPR2016-01915
`Patent 7,737,844 B2
`
`communication and as does Deguchi, but to the extent a claim is
`obvious in view of two references, adding in a third reference,
`it's still going to be obvious. It doesn't become unobvious in
`view of additional prior art.
` So if there are no more questions about Claims 1 and 17,
`the next issue on Slide 20 is Claim 13 -- dependent Claim 13 adds
`an additional limitation that there's a key port formed in the
`housing for receiving the programmable key. So that's -- Thaine
`Allison testified and discussed earlier, a person of ordinary
`skill in the art would have been motivated to integrate the cradle
`into the laptop based upon Deguchi, and as Thaine Allison
`testified, it would have been obvious to do so using the infrared
`connectors that are taught by Deguchi. Specifically, it would
`have been obvious to modify that electronic key of Denison with
`the male connector shown in Figure 6A and then to modify the
`laptop computer with the female connector as shown in Figure 6B on
`Slide 20; as such, Claim 13 is obvious.
` InVue argues without any expert testimony that Deguchi
`doesn't actually disclose a male and a female connector. This,
`however, is incorrect. InVue's argument is that what Figure 6 is
`showing is simply communication from a distance such as you might
`have with a remote control and a television. But this is contrary
`to the other expert testimony in the case.
` Shown on Slide 21, Deguchi discloses a number of
`different embodiments, and when you consider all those embodiments
`together, it becomes clear that InVue's argument is wrong. The
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`17
`
`
`
`
`Case IPR2016-01915
`Patent 7,737,844 B2
`
`first embodiment disclosed by Deguchi shown in Figure 3 has a USB
`connector instead of infrared, and so, there, you have a male USB
`connector that inserts into a female USB connector.
` On Slide 22, we have another embodiment. This time, you
`have a male FireWire connector that inserts into a female
`FireWire connector.
` Slide 23 is a third embodiment. Again, you have a male
`connector that inserts into a female connector or female port.
`This time, the port is added to a laptop computer using P.C. card,
`which was just a well-known method of adding ports to a laptop
`prior to 2005.
` And then you get to Figure 6, which is the infrared
`embodiment, and then, you can see that there is a male prong here
`that's shown in yellow. This is a prong which is made to insert
`into the female port of the host device.
` So for all those reasons, Claim 13 is obvious in view of
`the references.
` The next issue is for Claims 3 through 6. Each of these
`recites an LED limitation. Claim 3 recites that the visual
`display includes a plurality of LEDs. Claim 4 -- one of those
`LEDs activates when power is turned on; Claim 5, an LED flashes
`when wireless communication starts; and Claim 6, an LED activates
`when there's a programming failure. Thaine Allison testified that
`these were all well-known functions performed by laptop computers
`well before the priority date. Laptop computers commonly have
`lights that indicate power is on and that communication is taking
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`18
`
`
`
`
`Case IPR2016-01915
`Patent 7,737,844 B2
`
`place or that an error has occurred.
` In fact, the Roatis reference discloses indicator lights
`that turn on and inherently flash when there's power and
`communication is taking place, and Thaine Allison testified it
`would have been obvious to a person of ordinary skill in the art
`to incorporate that LED functionality into the Denison laptop for
`usability purposes.
` Petitioner set forth more than a sufficient rationale to
`find these claims obvious. InVue has no evidence to contradict
`Thaine Allison, and it basically says nothing more than that it
`disagrees.
` As the Supreme Court stated in KSR, if a technique has
`been used and proved on one device and a person of ordinary skill
`in the art would recognize that it would improve similar devices
`in the same way, using the technique is obvious unless the actual
`application is beyond his or her skill. Similarly, the KSR court
`said the combination of familiar elements, according to the known
`methods, is likely to be obvious when it does no more than yield
`predictable results. And that's exactly the case for Claims 3, 4,
`5, and 6.
` Claim 7 on Slide 26 is the next issue. This dependent
`claim recites in which the logic control circuit is a printed
`circuit board located within the housing chamber, the laptop of
`Denison has a housing -- there's going to be a chamber within that
`housing, which is where all the components of the computer are.
`The laptop is going to have a motherboard, which is a circuit
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`19
`
`
`
`
`Case IPR2016-01915
`Patent 7,737,844 B2
`
`board, and that motherboard is going to be connected and the
`components are going to be mounted to it, such as the processer
`and the memory. So that meets the limitation of Claim 7.
` The claim could also perhaps be interpreted as requiring
`that the logic control circuit consists of a printed circuit board
`and nothing else, but if that were the construction, the claim
`would be indefinite, nonsensical, and invalid for lack of written
`description support. In fact, that type of construction would
`read out the limitations of Claim 1, which require the logic
`control circuit to include the four sub elements. A board -- a
`circuit board, of course, is a board. It's not a controller.
`It's not a visual display.
` Now, InVue has a third interpretation of this claim,
`which is that it means all of the circuit components of the
`board -- or all the circuit components of the logic control
`circuit have to be mounted on a single printed circuit board, but
`the claim language doesn't say that. The interpretation is wrong
`for a number of reasons. For one, it, again, ignores that any
`printed circuit board means one or more circuit boards under
`Federal Circuit precedent, and also, it is contrary to the
`specific of the '844. As you can see in Figure 3 on Slide 26, the
`visual display is 23, which is part of the logic control circuit
`of Claim 1, is not mounted to the circuit board. Instead, it's
`connected to the circuit board via the conductor's 24.
` So, essentially, InVue's claimed construction would read
`out the preferred embodiment and, in fact, render the claims
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`20
`
`
`
`
`Case IPR2016-01915
`Patent 7,737,844 B2
`
`invalid for lack of written description. So, for those reasons,
`Claim 7 is obvious.
` The last issue is Claim 12. Claim 12 recites a
`mechanical key-activated on/off switch. And as Thaine Allison
`testified, laptop computers have buttons on one that you press
`that activate a switch that turn power on and off. InVue's only
`argument against this is that an on/off button on a laptop is not
`a mechanical key. So it appears to be narrowly construing a
`mechanical key to be limited to a key such as a house key that
`you, you know, stick into a lock and turn. But this isn't the
`broadest reasonable interpretation. Buttons on a computer are
`keys. A keyboard consists of keys or buttons, so there's nothing
`in the specification that would limit the mechanical key of Claim
`12 to a key such as a house key.
` JUDGE WHITE: You have about five minutes left.
` MR. BLUM: That was actually all I had for Claim 12,
`which was the last issue, so unless the Board has any further
`questions, I'll reserve the rest of my time for rebuttal.
` JUDGE WHITE: Thank you.
` MR. BLUM: Thank you, Your Honors.
` JUDGE WHITE: You can begin when you're ready.
`
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
