Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 36
`
`
` Entered: May 24, 2018
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MOBILE TECH, INC.,
`Petitioner,
`
`v.
`
`INVUE SECURITY PRODUCTS INC.,
`Patent Owner.
`____________
`
`Cases IPR2017-00344 and IPR2017-00345
`Patent 9,396,631 B2
`____________
`
`
`
`Before JUSTIN T. ARBES, STACEY G. WHITE, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`GALLIGAN, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a)
`
`
`

`

`IPR2017-00344 and IPR2017-00345
`Patent 9,396,631 B2
`
`
`IPR2017-00344 1–13, 15–
`19, and
`21–29
`
`IPR2017-00345 1–29
`
`I. BACKGROUND
`Petitioner Mobile Tech, Inc. filed two Petitions requesting inter partes
`review of claims 1–29 of U.S. Patent No. 9,396,631 B2 (Ex. 1001,1 “the
`’631 patent”) in Cases IPR2017-00344 and IPR2017-00345. On May 26,
`2017, we instituted trial in IPR2017-00344 on claims 1–13, 15–19, and 21–
`29, and we instituted trial in IPR2017-00345 on claims 1–29. In each
`proceeding, Patent Owner InVue Security Products Inc. filed a Patent Owner
`Response and Petitioner filed a Reply, as listed in the following chart.
`Case Number
`Claims
`Decision
`Petition Response Reply
`Instituted
`on
`Institution
`Paper 7
`(“-344
`Dec. on
`Inst.”)
`Paper 7
`(“-345
`Dec. on
`Inst.”)
`
`Paper 1
`(“-344
`Pet.”)
`
`Paper 13
`(“-344
`PO Resp.”)
`
`Paper 1
`(“-345
`Pet.”)
`
`Paper 11
`(“-345
`PO Resp.”)
`
`Paper
`15
`(“-344
`Reply”)
`Paper
`12
`(“-345
`Reply”)
`
`In each proceeding, we also granted in part Patent Owner’s requests
`for limited discovery related to Petitioner’s identification of real parties-in-
`interest and authorized Patent Owner to file a motion to terminate. -344
`Paper 20; -345 Paper 17. Patent Owner filed a motion to terminate in each
`proceeding, Petitioner filed an opposition to each motion, and we denied the
`motion in each proceeding, as listed in the following chart.
`
`
`1 The ’631 patent is Exhibit 1001 in each proceeding. Citations may be
`preceded by “-344” to designate IPR2017-00344 or “-345” to designate
`IPR2017-00345.
`
`
`
`2
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`

`

`IPR2017-00344 and IPR2017-00345
`Patent 9,396,631 B2
`
`
`Case Number Motion
`
`Opposition
`
`Denial of Motion
`
`IPR2017-00344 Paper 27 (non-
`public), Paper
`33 (public)
`IPR2017-00345 Paper 24 (non-
`public), Paper
`32 (public)
`
`Paper 28 (non-
`public), Paper 30
`(public)
`Paper 25 (non-
`public), Paper 27
`(public)
`
`Paper 34 (non-
`public), Paper 37
`(public)
`Paper 30 (non-
`public), Paper 34
`(public)
`
`In addition, in IPR2017-00344 the parties filed a Joint Motion to
`Limit the Petition by removing the ground of unpatentability based on U.S.
`Patent Application Publication 2007/0159328 A1 (-344 Ex. 1002, published
`July 12, 2007, “Belden”). -344 Paper 39. We consolidated the two
`proceedings pursuant to 35 U.S.C. § 315(d) and granted the parties’ Motion.
`-344 Paper 40. As a result, Petitioner’s asserted ground challenging claims
`1–29 as unpatentable under 35 U.S.C. § 102(b) over Belden is no longer at
`issue in this proceeding.
`An oral hearing was held for both proceedings on January 31, 2018,
`and a transcript of the hearing is included in the record of each proceeding
`(-344 Paper 25, “Tr.”; -345 Paper 22).
`We have jurisdiction under 35 U.S.C. § 6. This Decision is issued
`pursuant to 35 U.S.C. § 318(a). For the reasons that follow, we determine
`that Petitioner has shown, by a preponderance of the evidence, that claims
`1–29 of the ’631 patent are unpatentable. See 35 U.S.C. § 316(e) (“In an
`inter partes review instituted under this chapter, the petitioner shall have the
`burden of proving a proposition of unpatentability by a preponderance of the
`evidence.”).
`
`
`
`3
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`

`IPR2017-00344 and IPR2017-00345
`Patent 9,396,631 B2
`
`
`A. The ’631 Patent
`The ’631 patent describes a “programmable security system and
`method for protecting an item of merchandise.” Ex. 1001, Abstract.
`Figure 1 of the ’631 patent is reproduced below.
`
`
`
`Figure 1 depicts security system 1 that includes programming station 3,
`programmable key 5, and alarm module 7 adapted to be attached to item of
`merchandise 9 by cable 11 with sense loop 13. Ex. 1001, 6:7–13.
`Programming station 3 randomly generates a unique security code (Security
`Disarm Code, or “SDC”) that is transmitted via a wireless (e.g., infrared)
`link to programmable key 5, which in turn stores the SDC in key memory.
`Id. at 6:32–34, 7:29–34, 9:11–17. Once programmed with an SDC,
`programmable key 5 is taken to one or more alarm modules 7 and the SDC
`
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`IPR2017-00344 and IPR2017-00345
`Patent 9,396,631 B2
`
`is communicated via circuitry to the respective alarm module, which stores
`the SDC in its memory. Id. at 9:30–39.
`Cable 11 extends between alarm module 7 and item of merchandise 9.
`Ex. 1001, 7:58–60. If sense loop 13 (which contains electrical or fiber optic
`conductors) is compromised, such as by cutting cable 11 or by pulling the
`cable loose from alarm module 7 or item of merchandise 9, the alarm
`module emits an audible alarm. Id. at 7:56–8:1. To disarm alarm module 7,
`programmable key 5 is programmed with a valid SDC and circuits in the
`alarm module and the key communicate with one another to deactivate the
`alarm, thereby enabling cable 11 to be removed from the merchandise item.
`Id. at 10:51–63. Programmable key 5 then may be used to re-arm the alarm
`module. Id. at 10:63–67. “[T]o disarm and re-arm alarm module 7, the SDC
`memory 53 of the alarm module must read the same SDC that was randomly
`generated by the programming station 3 and programmed into the
`programmable key 5 and subsequently provided by the key to the alarm
`module.” Id. at col. 11:4–8.
`
`
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`
`5
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`

`IPR2017-00344 and IPR2017-00345
`Patent 9,396,631 B2
`
`
`B. Illustrative Claim
`Claims 1 and 22 are independent. Claim 1 recites:
`1.
` A programmable security system for protecting items of
`merchandise from theft, the programmable security system
`comprising:
`a logic control circuit configured to provide a unique
`security code, the unique security code being unique to the
`logic control circuit;
`a programmable key comprising a memory configured to
`store the unique security code; and
`a security device comprising an alarm and a memory for
`storing the unique security code, the security device configured
`to be attached to an item of merchandise, the security device
`further configured to activate the alarm in response to the
`integrity of the security device being compromised,
`wherein the programmable key is configured to control
`the security device upon a matching of the unique security code
`stored in the memory of the security device with the unique
`security code stored by the programmable key.
`
`C. References
`The grounds of unpatentability in the instant inter partes reviews are
`based on the following references:
`Aug. 6, 1996
`Rothbaum
`US 5,543,782
`Apr. 30, 2002
`Ott
`US 6,380,855 B1
`Denison
`US 2004/0201449 A1 Oct. 14, 2004
`Roatis
`US 2005/0165806 A1
`July 28, 2005
`Burri
`EP 0745747 A1
`Dec. 4, 1996
`Uchida
`JP 1997-259368
`Oct. 3, 1997
`Garner
`CA 2465692 A1
`Nov. 2, 2004
`
`
`-345 Ex. 1003
`-345 Ex. 1004
`-345 Ex. 1002
`-345 Ex. 1005
`-344 Ex. 1006
`-344 Ex. 10032
`-344 Ex. 1005
`
`
`2 In this Decision, references to Uchida are to the English translation
`provided as -344 Exhibit 1004.
`
`
`
`6
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`

`IPR2017-00344 and IPR2017-00345
`Patent 9,396,631 B2
`
`
`Basis
`§ 103(a)3
`§ 103(a)
`§ 103(a)
`§ 102(b)
`
`D. Grounds of Unpatentability
`The instant inter partes reviews involve the following grounds of
`unpatentability.
`Reference(s)
`Rothbaum and Denison
`Rothbaum, Denison, and Ott
`Rothbaum, Denison, and Roatis
`Uchida
`
`Claim(s) Challenged
`1–5, 8–27, and 29
`6 and 7
`28
`1–5, 8–11, 13, 15, 16, 18,
`19, 21–23, and 25–29
`6 and 7
`12
`17 and 24
`
`Uchida and Garner
`Uchida and Burri
`Uchida
`
`§ 103(a)
`§ 103(a)
`§ 103(a)
`
`II. ANALYSIS
`A. Claim Interpretation
`The Board interprets claims in an unexpired patent using the “broadest
`reasonable construction in light of the specification of the patent in which
`[they] appear[].” 37 C.F.R. § 42.100(b). Under this standard, we interpret
`claim terms using “the broadest reasonable meaning of the words in their
`ordinary usage as they would be understood by one of ordinary skill in the
`art, taking into account whatever enlightenment by way of definitions or
`otherwise that may be afforded by the written description contained in the
`applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
`1997). We presume that claim terms have their ordinary and customary
`
`
`3 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102, 103, and 112. Because the
`’631 patent has an effective filing date before the effective date of the
`applicable AIA amendments, we refer to the pre-AIA versions of 35 U.S.C.
`§§ 102, 103, and 112.
`
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`IPR2017-00344 and IPR2017-00345
`Patent 9,396,631 B2
`
`meaning. See Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir.
`2016) (“Under a broadest reasonable interpretation, words of the claim must
`be given their plain meaning, unless such meaning is inconsistent with the
`specification and prosecution history.”); In re Translogic Tech., Inc., 504
`F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary meaning is
`the meaning that the term would have to a person of ordinary skill in the art
`in question.” (internal quotation marks omitted)). A patentee, however, may
`rebut this presumption by acting as his own lexicographer, providing a
`definition of the term in the specification with “reasonable clarity,
`deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`1994).
`
`1. “Logic Control Circuit”
`Petitioner contends “a ‘collection of computer components’ that
`perform the functionality recited in the claims” is within the broadest
`reasonable interpretation of the claimed “logic control circuit.” -344 Pet. 12
`(citing Ex. 1001, 6:27–39, Fig. 4). Patent Owner asserts that Petitioner’s
`proposed interpretation is too broad because it “omits the term ‘circuit’ from
`the phrase.” -344 PO Resp. 4. Patent Owner argues that “[t]he term ‘logic
`control circuit’ is well understood in the art and needs no construction.”
`-344 PO Resp. 4. In its Reply, Petitioner cites the testimony of its declarant,
`Thaine H. Allison III, that “a person of ordinary skill in the art would
`understand that those collection of components would necessarily need to be
`connected through a circuit, so I believe ‘circuit’ is included in my
`definition.” -344 Ex. 2015, 20:21–25, quoted in -344 Reply 2.
`Figure 4 of the ’631 patent is reproduced below.
`
`
`
`8
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`

`IPR2017-00344 and IPR2017-00345
`Patent 9,396,631 B2
`
`
`
`Figure 4 depicts logic control circuit 18, which includes main controller 19,
`security code memory 21, wireless communication circuit 20, and status
`display 22 having LEDs 24 (shown in Figure 3). Ex. 1001, 6:27–39. The
`’631 patent states:
`The particular circuitry of logic control circuit 18 is shown in
`further detail in the U.S. Pat. No. 7,737,844 referenced above,
`but could be other types of circuitry than that shown therein that
`are readily known to those skilled in the art for obtaining the
`features and results of the programming station 3, as discussed
`further below.
`Ex. 1001, 6:62–67. U.S. Patent No. 7,737,844 B2 (“the ’844 patent”) was at
`issue in Case IPR2016-01915. During oral argument in that proceeding,
`Patent Owner agreed that components “connected through a circuit” would
`be within the scope of a “logic control circuit” as recited in the claims of the
`’844 patent. IPR2016-01915, Paper 20, 23:4–16.
`Based on the foregoing, we are persuaded that “a collection of
`computer components that are connected through a circuit” is consistent
`with the language of the claims themselves and the Specification of the
`’631 patent and, thus, within the broadest reasonable interpretation of “logic
`
`
`
`9
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`

`IPR2017-00344 and IPR2017-00345
`Patent 9,396,631 B2
`
`control circuit.” We determine that the phrase “logic control circuit” does
`not require further construction.
`
`2. “Unique Security Code Being Unique to the Logic Control Circuit”
`Petitioner argues that the term “unique security code” encompasses
`codes that are generated in various ways described in the ’631 patent. -344
`Pet. 12–13 (citing Ex. 1001, 2:29–31, 9:5–22, 13:59–64, 15:24–33). Patent
`Owner does not dispute Petitioner’s particular contentions as to what is
`within the scope of “unique security code,” but argues that the claims also
`require the code to be “unique to the logic control circuit.” -344 PO Resp. 5.
`Patent Owner argues the term “unique security code” does not require an
`express construction. -344 PO Resp. 5. We agree with Patent Owner that
`the claims expressly recite that the code must be “unique to the logic control
`circuit,” and we also determine that the phrase “the unique security code
`being unique to the logic control circuit” does not require further
`construction to determine whether the asserted prior art references describe
`this subject matter.
`
`3. “Configured to Provide a Unique Security Code” (Claim 1);
`“Providing a Unique Security Code” (Claim 22)
`In the Decision on Institution in IPR2017-00344, we determined that
`“provid[ing] a unique security code” is not limited to “communicating a
`unique security code to a programmable key using wireless or non-wireless
`forms of communication,” and we also determined that no further
`construction was necessary. -344 Dec. on Inst. 6. In its Response, Patent
`Owner argues “that the terms providing and configured to provide are
`irrelevant to communication between devices.” -344 PO Resp. 6. During
`oral argument, however, Patent Owner acknowledged that if something is
`10
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`

`

`IPR2017-00344 and IPR2017-00345
`Patent 9,396,631 B2
`
`supplying a code or otherwise communicating it, then the code is being
`provided and, therefore, that providing is not irrelevant to communication.
`Tr. 42:7–11. Consistent with our Decision on Institution, we determine that
`providing a code encompasses communicating the code, although it is not
`limited to “how the logical control circuit provides the security code to the
`key,” as Petitioner asserts. See -344 Pet. 13. “Rather, claims 1 and 22 recite
`‘provid[ing] a unique security code,’ without reciting that the
`‘programmable key’ is the device to which it is provided.” -344 Dec. on
`Inst. 5–6. Indeed, claim 27 includes a further limitation to claim 22 of
`“communicating the unique security code to the programmable key.”
`We determine that no further construction of the “providing”
`limitations is necessary.
`
`4. Remaining Terms
`We determine that the remaining terms of the claims do not require
`express construction.
`
`B. Principles of Law
`To establish anticipation, each and every element in a claim, arranged
`as recited in the claim, must be found in a single prior art reference. Net
`MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
`Although the elements must be arranged or combined in the same way as in
`the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e.,
`identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334
`(Fed. Cir. 2009).
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`11
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`

`IPR2017-00344 and IPR2017-00345
`Patent 9,396,631 B2
`
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) any secondary
`considerations, if in evidence.4 Graham v. John Deere Co., 383 U.S. 1, 17–
`18 (1966).
`
`C. Level of Ordinary Skill in the Art
`Petitioner’s declarant, Mr. Allison, testifies that a person of ordinary
`skill in the art
`would have had a four year technical degree (e.g. B.S.
`engineering) with a minimum of three years of experience in
`using, provisioning, designing or creating, or supervising the
`design or creation, of such theft prevention devices, and other
`related security devices. Extended experience in the industry
`could substitute for a technical degree. A [person of ordinary
`skill in the art] would have known how to research the technical
`literature in fields relating to theft prevention, including in retail
`and other environments, as well as security in general. Also, a
`[person of ordinary skill in the art] may have worked as part of
`a multidisciplinary team and drawn upon not only his or her
`own skills, but also taken advantage of certain specialized skills
`of others in the team, e.g., to solve 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.
`-344 Ex. 1017 ¶ 22; -345 Ex. 1010 ¶ 19. Patent Owner provides a slightly
`different skill level:
`
`
`4 Patent Owner does not present arguments or evidence of such secondary
`considerations.
`
`
`
`12
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`

`IPR2017-00344 and IPR2017-00345
`Patent 9,396,631 B2
`
`
`[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.
`-344 PO Resp. 6–7 (citing Ex. 20065 ¶¶ 32–34); -345 PO Resp. 7.
`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, 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.
`D. Unpatentability Challenge Based on Rothbaum and Denison
`(§ 103(a) – Claims 1–5, 8–27, and 29)
`Petitioner contends that claims 1–5, 8–27, and 29 would have been
`obvious based on the combination of Rothbaum and Denison. -345 Pet. 7,
`14–51. Petitioner explains how the cited prior art references teach the
`claimed subject matter, provides reasoning as to why one of ordinary skill in
`
`5 Exhibit 2006 is the Declaration of Harry Direen, Ph.D., P.E., which Patent
`Owner submitted with its preliminary responses in the following cases
`involving patents related to the ’631 patent: IPR2016-00892, -895, -896,
`-898, and -899.
`
`
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`13
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`IPR2017-00344 and IPR2017-00345
`Patent 9,396,631 B2
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`the art would have been motivated to combine their respective teachings,
`and relies upon the testimony of Mr. Allison to support its positions. Id.
`at 14–51.
`
`1. Overview of Rothbaum
`Rothbaum is directed to an electronic security system for monitoring
`merchandise that provides for the sounding of an alarm based on an
`indication from a sensor. -345 Ex. 1003, Abstract. The system is intended
`to be used for theft prevention in retail stores, hotels, and other businesses.
`Id. at 1:6–9. Figure 1 of Rothbaum is reproduced below.
`
`
`Figure 1 depicts a perspective view of Rothbaum’s security system. Id. at
`4:22–23. Article 22 is the merchandise being protected by security
`system 10. Id. at 5:5–9, 5:49–50. Sensor 24 is attached to article 22. Id. at
`5:54–56, 5:62–64. Item cord 28 connects sensor 24 to the alarm circuitry
`
`
`
`14
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`

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`Patent 9,396,631 B2
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`located in housing 12. Id. at 5:16–17, 6:1–2. An alarm will sound and an
`LED will light when an alarm condition occurs. Id. at 3:43–47.
`
`2. Overview of Denison
`Denison discloses vending machines equipped with programmable
`electronic locks. -345 Ex. 1002 ¶ 2. As used in Denison, a “vending
`machine” is “a device that performs a money transaction, which may involve
`the insertion of cash or commercial paper, or the swiping of a credit and/or
`debit card, and may (but [is] not required to) dispense an item or items or
`provide functions in response to the money transaction,” and broadly covers
`“machines commonly used for vending drinks and snacks, ATM stations,
`change machines, toll machines, coin-operated laundry machines, video
`arcades, etc.” Id. ¶ 36. Access to the contents of the disclosed vending
`machine is controlled by an electronic lock and electronic key. Id. ¶ 7.
`To unlock the electronic lock and open the vending machine, there must be a
`match between the code stored in the electronic key and the code stored in
`the electronic lock. Id. ¶ 42. Figure 1 of Denison is reproduced below.
`
`
`
`15
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`
`
`Figure 1 is a schematic view of Denison’s vending machine and electronic
`lock. Id. ¶¶ 15, 36–37. Vending machine 20 has front panel or door 22 that
`can be opened when the electronic lock is wirelessly unlocked using
`properly programmed electronic key 26. Id. ¶¶ 36–37.
`
`
`
`16
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`
`
`Figure 17 of Denison is reproduced below.
`
`
`Figure 17 depicts external computing device 426 (e.g., a laptop computer)
`with wireless transceiver 428 and cradle 430, electronic key 410, and
`vending machine 400 with wireless transceiver 420 and electronic lock 402
`having microprocessor-based electronic lock circuit 406 and wireless
`transceiver 408. -345 Ex. 1002 ¶¶ 31, 77–78. External computing
`device 426 may be used to generate a new “access code” and wirelessly
`program it into the electronic lock “without having to open the vending
`machine to access a program switch” and also to program the access code
`into the electronic key. Id. ¶¶ 77–79, 83–85. Denison discloses that
`the external computing device 426 may optionally be used to
`program an electronic key 410 that can be used to visit and
`access the vending machine 400 through the access control
`transceiver 408. To that end, the electronic 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
`
`
`
`17
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`

`IPR2017-00344 and IPR2017-00345
`Patent 9,396,631 B2
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`
`key, together with any other appropriate access control
`parameters for the key. The key 410 can then be used to access
`the vending machine by communicating with the electronic
`lock circuit 406 via the access control transceiver 406 based on
`the newly programmed access code(s) and control parameters.
`Id. ¶ 85.
`
`3. Whether Rothbaum and Denison are Analogous Art
`As an initial matter, to be considered for obviousness, a reference
`must be analogous art. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir.
`2004) (“References within the statutory terms of 35 U.S.C. § 102 qualify as
`prior art for an obviousness determination only when analogous to the
`claimed invention.”). A prior art reference qualifies as analogous art (1) if it
`is from the same field of endeavor as the claimed invention, regardless of the
`problem addressed, or (2) if the reference is not within the field of the
`inventor’s endeavor, it is nonetheless reasonably pertinent to the particular
`problem with which the inventor is involved. Id.
`Petitioner argues that “Denison and Rothbaum are in the field of
`security devices for the protection of merchandise.” -345 Pet. 17 (citing
`-345 Ex. 1010 ¶¶ 78–79). The ’631 patent describes the “Field of the
`Invention” as follows:
`The invention relates to security systems and methods for
`protecting merchandise from theft, and in particular, to a
`security system and method including a programmable key that
`is programmed with a security code from a programming
`station and is subsequently used to program and/or operate an
`alarm module attached to an item of merchandise.
`Ex. 1001, 1:26–31. Therefore, the ’631 patent itself describes the relevant
`field of endeavor as “protecting merchandise from theft.” Further, claims 1
`
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`IPR2017-00344 and IPR2017-00345
`Patent 9,396,631 B2
`
`and 22 are directed to a programmable security system and a method “for
`protecting items of merchandise from theft.”
`We find that Rothbaum and Denison are analogous to the claimed
`invention because both references are in the same field of endeavor as the
`claimed invention, namely protecting merchandise from theft. In particular,
`Rothbaum is directed to “security systems, and more specifically to
`electronic security systems used in retail stores, offices, hotels and other
`establishments to prevent the theft of merchandise.” -345 Ex. 1003, 1:6–9.6
`Similarly, Denison’s disclosure of electronically-locking vending machines
`is directed to protecting merchandise from theft. See -345 Ex. 1002 ¶ 9
`(“The use of the field-programmable electronic locks for vending machines
`provides an effective way to reduce theft and fraud in terms of unauthorized
`access to the machines.”).7 Therefore, both references qualify as analogous
`prior art to the challenged claims.
`
`
`6 During the oral argument for several cases involving patents related to the
`’631 patent, counsel for Patent Owner acknowledged that Rothbaum is
`analogous art to U.S. Patent No. 9,269,247 B2, of which the ’631 patent is a
`continuation. IPR2016-00899, Paper 29, 94:21–22.
`7 In its Response, Patent Owner argues that “[v]ending machines are not
`analogous to retail merchandise systems (using alarms) as [Petitioner]
`alleges.” -345 PO Resp. 10. Patent Owner made the same argument in
`several cases involving patents related to the ’631 patent. E.g., IPR2016-
`00895, Paper 18, 34; IPR2016-00899, Paper 16, 31. During the oral
`argument for these cases, counsel for Patent Owner stated that “Denison is
`only somewhat analogous to retail store security” and later clarified that
`Patent Owner’s argument in those cases was that Petitioner has not set forth
`a sufficient rationale to combine the teachings of Rothbaum and Denison,
`not that Denison is not analogous art to the patents at issue. IPR2016-
`00899, Paper 29, 95:11–97:2.
`
`
`
`19
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`IPR2017-00344 and IPR2017-00345
`Patent 9,396,631 B2
`
`
`4. Independent Claims 1 and 22
`Petitioner relies on Rothbaum for teaching certain limitations of
`claims 1 and 22 and relies on Denison for teaching other limitations. See
`-345 Pet. 14–35. Below we address the parties’ contentions as to each
`reference and then address their arguments with respect to the combined
`teachings of Rothbaum and Denison.
`
`a. Claim limitations taught by Rothbaum
`Claim 1 is directed to “[a] programmable security system for
`protecting items of merchandise from theft,” and independent claim 22 is
`directed to “[a] method for protecting items of merchandise from theft.”
`Petitioner contends Rothbaum discloses a security system for protecting
`merchandise, as illustrated in Figure 1, discussed above. -345 Pet. 14–15,
`20.
`
`We are persuaded by Petitioner’s argument, and we find Rothbaum
`discloses a security system for protecting items of merchandise from theft
`and a method for protecting items of merchandise from theft. For example,
`in Figure 1 of Rothbaum, “a twelve jack security system 10 is shown which
`can protect twelve items of merchandise.” -345 Ex. 1003, 5:10–11; see also
`id. at 1:6–9 (“The present invention generally relates to security systems,
`and more specifically to electronic security systems used in retail stores,
`offices, hotels and other establishments to prevent the theft of
`merchandise.”).
`Petitioner argues Rothbaum’s disclosure of “strip or housing 12”
`connecting to article of merchandise 22 via “item cord 28” teaches a
`“security device configured to be attached to an item of merchandise,” as
`recited in independent claim 1, and “a security device attached to an item of
`20
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`

`IPR2017-00344 and IPR2017-00345
`Patent 9,396,631 B2
`
`merchandise,” as recited in independent claim 22. -345 Pet. 15, 25–27, 34
`(citing, inter alia, -345 Ex. 1003, Fig. 1, 5:62–6:4). We are persuaded by
`Petitioner’s argument, and we find Rothbaum teaches these limitations of
`claims 1 and 22 based on Rothbaum’s disclosure in Figure 1 that item
`cord 28 connects strip 12 to sensor 24 on article of merchandise 22. See Ex.
`-345 1003, 5:62–6:2 (“Hard goods sensor 24, including a sensor housing 23,
`is attached to the article 22 . . . . Item cord 28 is of sufficient length to
`connect the sensor 24 to the alarm circuitry in strip 12.”); see also -345 Ex.
`1010 ¶ 67.
`Petitioner also argues Rothbaum discloses that its security device has
`an “alarm” (horn 126) and that Rothbaum teaches that the security device is
`“configured to activate the alarm in response to the integrity of the security
`device being compromised,” as recited in independent claim 1, and that “the
`security device compris[es] an alarm configured to be activated in response
`to the integrity of the security device being compromised,” as recited in
`claim 22. -345 Pet. 15, 26–27, 34 (citing, inter alia, -345 Ex. 1003, 6:15–
`22, 8:22–28, 12:10–18, Fig. 1). We are persuaded by Petitioner’s argument,
`and we find Rothbaum teaches this subject matter based on the following
`disclosure of Rothbaum:
`As can be seen in FIG. 12, tamper switch 225 is normally
` The
`tamper switch is activated by
`the battery
`open.
`compartment screw 224 as can be seen in FIG. 1. If an
`unauthorized person attempts to tamper with the battery 226, by
`opening the battery compartment cover 220, they must loosen
`screw 224. As screw 224 is removed, tension on the activator
`of switch 225 is moved thus closing switch 225. When switch
`225 closes, transistor 122 is turned on thus activating horn 126.
`
`
`
`21
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`IPR2017-00344 and IPR2017-00345
`Patent 9,396,631 B2
`
`-345 Ex. 1003, 12:10–18. We find that the integrity of the security device is
`compromised when the battery compartment is opened. See -345 Ex. 1010,
`37.
`
`Petitioner further argues Rothbaum teaches a key for controlling the
`security device by disarming the security device after a security breach
`occurs. -345 Pet. 15 (citing -345 Ex. 1003, 6:15–22, 8:22–28). We are
`persuaded by Petitioner’s argument, and we find Rothbaum teaches a key for
`disarming the security device after a breach occurs because Rothbaum
`discloses that, “once a breach of security condition is detected, the alarm
`horn 126 will sound [u]ntil key switch 38 is turned from the ON position to
`the SET position.” -345 Ex. 1003, 8:23–25.
`Petitioner notes Rothbaum does not disclose a programmable key and,
`instead, relies on Denison to teach a programmable key and a logic control
`circuit. -345 Pet. 15–16.
`
`b. Claim limitations taught by Denison
`As discussed above, Denison discloses vending machines having
`electronic locks that can be controlled with electronic keys programmed by
`an external computing device. -345 Ex. 1002, Abstract, ¶¶ 2, 6, 85, Figs. 1
`and 17. Petitioner relies on Denison’s disclosures for various limitations of
`claims 1 and 22 as explained below.
`
`i. Logic control circuit
`Petitioner argues that internal components of Denison’s external
`computing device constitute “a logic control circuit configured to provide a
`unique security code, the unique security code being unique to the logic
`control circuit,” as recited in claim 1, and the similarly recited “logic control
`
`
`
`22
`
`

`

`IPR