Trials@uspto.gov
`571-272-7822
`
`Paper 51
`Entered: June 1, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`AXON ENTERPRISE, INC.,
`Petitioner,
`
`v.
`
`DIGITAL ALLY, INC.,
`Patent Owner.
`
`
`Case IPR2017-00375
`Patent 8,781,292 B1
`
`
`
`
`
`
`
`
`
`
`Before PHILLIP J. KAUFFMAN, MINN CHUNG, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`KAUFFMAN, Administrative Patent Judge.
`
`
`
`
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`571-272-7822
`
`Paper 51
`Entered: June 1, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`AXON ENTERPRISE, INC.,
`Petitioner,
`
`v.
`
`DIGITAL ALLY, INC.,
`Patent Owner.
`
`
`Case IPR2017-00375
`Patent 8,781,292 B1
`
`
`
`
`
`
`
`
`
`
`Before PHILLIP J. KAUFFMAN, MINN CHUNG, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`KAUFFMAN, Administrative Patent Judge.
`
`
`
`
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`IPR2017-00375
`Patent 8,781,292 B1
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`
`A.
`
`INTRODUCTION
`
`I.
`PROCEDURAL HISTORY
`Axon Enterprise Inc. (“Petitioner”)1 filed a Petition (Paper 1, “Pet.”)
`requesting inter partes review of claims 1, 3, 8, 18, 20, 21, 24, 26, 27, 29–
`31, 36, 38, 39, 42, 43, 45, 46, 48, 50, 51, 54, 55, 57, and 58 of U.S. Patent
`No. 8,781,292 B1 (Ex. 1001, “the ’292 patent) as unpatentable under
`35 U.S.C. § 103(a) over (1) Pierce2 and (2) Pierce and 20/20-W.3 Pet. 1,
`26–71. Digital Ally, Inc. (“Patent Owner”) filed a Preliminary Response
`(Paper 7, “Prelim. Resp.”) to the Petition.
`We instituted an inter partes review of all of the challenged claims on
`both grounds, except that we did not institute on Petitioner’s contingent
`assertion that if Pierce alone and Pierce combined with 20/20-W do not
`disclose a second communication signal as claimed, it would have been a
`variant of Pierce that was obvious to try (“the contingent assertion”). Paper
`9 (“Dec.”) at 27, n. 18.
`Subsequently, Patent Owner filed a Motion to Amend (Paper 22),
`Petitioner filed an Opposition to that Motion (Paper 30), and Patent Owner
`filed a Reply to Petitioner’s Opposition (Paper 31). Patent Owner filed a
`
`
`1 Petitioner indicates that, since the filing of the Petition, it has changed its
`name from Taser International, Inc. to Axon Enterprise, Inc. Paper 8, 1.
`2 U.S 2005/0083404 A1, published Apr. 21, 2005 (Ex. 1014).
`3 Raytheon JPS Communications, Raytheon Model 20/20-W, Raytheon
`20/20 VISION, Digital In-Car Video Systems, White Paper WP-8002-11
`(Ex. 1015). See also Exhibit 1016 regarding public availability of Exhibit
`1015.
`
`2
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`Response (Paper 23, “PO Resp.”), and Petitioner filed a Reply (Paper 29,
`“Pet. Reply”).
`We held oral hearing on February 23, 2018, and a transcript is
`included in the record. Paper 46 (“Tr.”).
`On April 27, 2018, we amended our Institution Decision to institute
`on the contingent assertion. Paper 47. In response, the parties requested,
`and we granted, additional briefing. See Papers 48 (authorization), 49
`(Supplemental Patent Owner Response), 50 (Supplemental Petitioner’s
`Reply).
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`We have considered the papers submitted by the parties and the
`evidence cited therein. For the reasons discussed below, we determine
`Petitioner has not shown by a preponderance of the evidence that the
`challenged claims are unpatentable. In light of that determination, we need
`not and do not address Patent Owner’s Motion to Amend.
`
`RELATED PROCEEDINGS
`The parties indicate that the ’292 patent is at issue in: Digital Ally, Inc.
`v. TASER International, Inc., Case No. 2:16-cv-02032-CM-JPO, and Digital
`Ally, Inc. v. Enforcement Video, LLC, Case No. 2:16-cv-02349-JTM-JPO,
`
`B.
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`3
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`each pending in the United States District Court for the District of Kansas
`(“the related litigation”) (Ex. 1007 ¶ 26).4 Pet. 2; Paper 5, 2.
`The ’292 patent is also the subject of IPR2017-00376, that was filed
`concurrently with the Petition at hand. We denied institution on June 6,
`2017. IPR2017-00376, Paper 10.
`The ’292 patent is a continuation of U.S. Patent No. 9,253,452 B2
`(“the ’452 patent”).5 The ’452 patent is the subject of IPR2017-00515 and
`IPR2017-00775, both of which were filed by Petitioner. We denied
`institution in both cases. IPR2017-00775, Paper 12; IPR2017-00515, Paper
`10.
`
`
`
`A.
`
`II. THE CLAIMED SUBJECT MATTER
`INTRODUCTION
`Background
`1.
`The ’292 patent describes that it was known in the related art of
`recording device management systems to coordinate recording devices to
`capture multiple recordings of an event. Ex. 1001, 1:28–31. For example, a
`user could press a button on a control board to start multiple video cameras.
`Id. at 1:31–35. Such systems did little if anything to react to inputs from
`electronic devices, to make decisions based on statuses of electronic devices,
`or to corroborate the recorded data from distinct devices. Id. at 1:33–39.
`
`
`4 We reference Petitioner’s exhibits in a slightly different format. For
`example, Petitioner labels a page of Exhibit 1001 as “1001-017,” and we
`reference that page as “1001, 17.”
`5 A copy of the ’452 patent is filed as Exhibit 1002.
`
`4
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`The ’292 patent describes that the law enforcement field frequently
`used recording devices to record evidence. Id. at 1:40–42. These devices
`often failed to record crucial evidence due to using different cues to start
`recording or manual operation. Id. at 1:40–49. Known drawbacks of such
`systems included lack of corroboration or other forensic verification, and
`time needed to correlate such evidence. Id. at 4:49–57.
`The ’292 Patent
`2.
`The ’292 patent is titled, “Computer Program, Method, and System
`for Managing Multiple Data Recording Devices.” Ex. 1001, [54], 1:61–64.
`The ’292 patent describes an embodiment in the form of an intermediate
`recording device managing apparatus for use in a multiple recording device
`system that insures that multiple recording devices record an event. Id. at
`1:61–2:8. The system is comprised of a controller having a receiver for
`receiving from a first recording device a first communication signal that the
`first recording device has started recording, and a transmitter for transmitting
`to a second recording device a second communication signal instructing the
`second recording device to begin recording. Id. at 1:67–2:6.
`
`5
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`Figure 1 follows:
`
`
`Figure 1 is a schematic plan view of multiple recording device management
`system 10. Id. at 2:32–37. System 10 includes intermediate vehicle video
`recording device 14 mounted in police vehicle 16 and personal video
`recording device 18 carried by police officer 20, each wirelessly synced to
`recording device manager 12. Id. at 3:21–30. Multiple personal recording
`devices 18 can be synced to recording device manager 12. Id. at 3:46–48,
`4:30–34. When recording device manager 12 receives a signal that a first
`recording device (e.g., personal recording device 18) has begun recording,
`either due to an instruction to record or a triggering event, recording device
`manager 12 signals a second recording device (e.g., vehicle recording device
`14) to record.6 Id. at 4:39–53.
`
`
`6 Either recording device (14, 18) may be considered the first or second
`recording device. See generally Ex. 1001, 4:27–53.
`
`6
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`B.
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`
`
`ILLUSTRATIVE CLAIM7
`Claims 1, 18, 36, and 48 are independent. Claim 1 is illustrative and
`follows:8
`[A] A multiple recording device management system,
`1.
`comprising:
`[B] a recording device manager including at least one
`receiver and at least one transmitter;
`[C] a first recording device communicatively coupled with
`the recording device manager,
`[D] wherein said at least one receiver is configured to
`receive a first communication signal from the first recording
`device indicating the first recording device has received an
`instruction initiated by a first law enforcement officer to record
`a first set of record data related to an event,
`[E] wherein the first recording device includes a first input
`for receiving the first set of record data, and wherein the received
`first set of record data is recorded on a first computer-readable
`medium associated with the first recording device; and
`[F] a second recording device communicatively coupled
`with the recording device manager,
`[G] wherein said at least one transmitter is configured to
`transmit a second communication signal to the second recording
`device instructing the second recording device to begin recording
`a second set of record data related to the event,
`[H] wherein the second recording device includes a second
`input for receiving the second set of record data, and wherein the
`
`7 The ’292 patent was subject to ex parte reexamination, and a
`Reexamination Certificate was issued on January 14, 2016. Ex. 1001, 17–
`22. We reference the claim language as amended in the Reexamination
`Certificate.
`8 We identify portions of the claim with added bracketed letters because the
`parties reference the claim in this manner. See, e.g., Pet. 32; PO Resp. 22.
`
`7
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`received second set of record data is recorded on a second
`computer-readable medium associated with the second recording
`device,
`[I] wherein the first recording device is different from the
`second recording device, such that the first set of record data
`recorded by the first recording device is different than the second
`set of record data recorded by the second recording device,
`is
`[J] wherein
`the second communication signal
`transmitted to the second recording device in response to the at
`least one receiver of the recording device manager receiving the
`first communication signal from the first recording device
`indicating the first recording device has received said instruction
`initiated by the first law enforcement officer to record, such that
`the recording device manager insures the first recording device
`records the first set of record data using the first input, and the
`second recording device records the second set of record data
`using the second input,
`[K] wherein one of the first recording device and the
`second recording device is configured to be mounted on or
`carried by one of the first law enforcement officer and a second
`law enforcement officer.
`Ex. 1001, 18 (claim 1 in reexamination certificate with bracketed
`[deleted] content removed).
`
`
`C. APPLICABLE STANDARD
`In an inter partes review, the Board interprets claim terms in an
`unexpired patent according to the broadest reasonable interpretation in light
`of the specification of the patent in which they appear. 37 C.F.R.
`§ 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46
`
`8
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`
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`D.
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`(2016) (upholding the use of the broadest reasonable interpretation
`approach).9
`For the purposes of this decision, and on this record, we determine
`that only the claim term “record” needs express interpretation. See Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)
`(only those terms which are in controversy need to be construed, and only to
`the extent necessary to resolve the controversy).
`
`“RECORD” AND VARIANTS
`Claim 1 recites a variety of forms of the word “record” in a variety of
`contexts. For example, claim 1 recites “a recording device manager,” “to
`record,” “record data,” and “to begin recording.”
`Prior to institution, the parties disagreed regarding the meaning of
`“recording” in the claim terms “first recording device” and “second
`recording device.” Specifically, Petitioner asserted that a “recording device”
`is a device for recording. Pet. 20. Patent Owner countered that a “recording
`device” is “a device that captures and stores data for future retrieval”
`because “record” as claimed means, “to store captured data for future
`retrieval.” Prelim. Resp. 13–17. In the Institution Decision, we disagreed
`with Patent Owner’s assertion that a recording device as claimed must “store
`captured data for future retrieval” because the “associated” first computer
`
`
`9 The Notice of Proposed Rulemaking regarding claim construction that is
`found at 83 FR 21221 (May 9, 2018) does not impact this case.
`
`9
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`readable medium (CRM) stores the captured data, and that CRM need not be
`part of the first recording device.10 See Dec. 8–9.
`During trial, the dispute between the parties shifted to focus on the
`meaning of “to begin recording” in the instruction of the second
`communication signal. Petitioner asserts that, “record” means, “to generate
`or capture data for the purpose of storing.” Pet. Reply 2–4. Patent Owner
`characterizes Petitioner’s assertion as contending that “record” means to
`transmit data. PO Resp. 5. Patent Owner contends that an instruction to
`transmit data is not an instruction to record, and that the second recording
`device must do the recording. Id. Patent Owner asks that we construe
`“record” and the variants of that term to at least encompass, “storing the
`captured data for future retrieval.” PO Resp. 5–7.
`For the reasons that follow, the term “record” and its variants may
`refer to the entire recording process (i.e., generating or capturing data and
`storing that data for future retrieval) or to a portion of that process,
`depending on the context of the use of the term.
`It is the claims that define the scope of the right to exclude, and for
`that reason, our inquiry begins and ends with the actual words of the claim.
`Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1248 (Fed.
`Cir. 1998) (citations omitted). Neither party properly accounts for the
`context of the use of the term “record” and its variants. See, e.g.,
`Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016)
`
`
`10 A CRM can be any non-transitory medium that can contain, store, or
`communicate computer programs. Ex. 1001, 10:23–46.
`
`10
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`(“Construing individual words of a claim without considering the context in
`which those words appear is simply not ‘reasonable.’”).
`Claim 1 recites that the second communication signal instructs the
`second recording device “to begin recording a second set of record data
`related to the event.” See limitation 1[G] (emphasis added). Claim 1 does
`not require that the second communication signal is an instruction to
`complete the entire recording process; rather, it is an instruction to the
`second recording device to begin recording a second set of record data.
`Elsewhere, claim 1 recites that the second set of record data is “recorded”
`(stored) on a second CRM. See limitation 1[H]. Consequently, the second
`communication signal includes an instruction to the second recording device
`“to begin recording” (generate or capture the second set of record data), and
`that data is subsequently “recorded” (stored) on the second CRM.
`Claim 1 refers to the first and second recording devices as “recording”
`devices even though those devices capture or generate data and that data is
`stored by another device (the associated first or second CRM).
`Consequently, the language of claim 1 uses the term “record” and its
`variants to refer to all or part of the recording process. This is consistent
`with our determination in the Institution Decision that the first and second
`recording devices are associated with a respective first and second CRM,
`and that associated CRM stores the data for subsequent retrieval. See Dec.
`8–9. A CRM that is “associated” with a recording device may or may not be
`a part of that device. Id.
`
`11
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`
`This interpretation is also consistent with the Specification.11
`In parity with the language of claim 1, the ’292 patent refers to a
`device as a “recording” device even if that device does not store that data for
`subsequent retrieval. See, e.g., Ex. 1001, 3:49–52 (describing vehicle
`recording device 14 and personal recording device 18 (first and second
`recording devices) as operable to record data, including audio and video
`data), 11:64–12:2 (describing that devices 14, 18 may include memory or
`may utilize memory in vehicle 16).
`The record also contains extrinsic information that is consistent with
`our interpretation. Specifically, Pierce, like the ’292 patent, uses the term
`“record” and its variants to refer to the entire recording process or a portion
`of that process. See, e.g. Ex. 1014 ¶ 56 (describing that data is “recorded”
`by camera 62 even though that data is stored on recording media 44).
`The second communication signal must include an instruction to the
`second recording device to begin recording, but that signal need not include
`an instruction to store the data that is generated or captured.
`
`In our patentability analysis below, we determine that Petitioner has
`not sufficiently shown that the prior art cited in the patentability challenges
`discloses or suggests a second communication signal as claimed because the
`alleged second recording device in the prior art is configured to continuously
`record and would not need to be instructed to begin recording. Whether an
`instruction to “begin recording” as claimed requires that the data be stored is
`
`
`11 The claims are part of the Specification and our use of the term
`Specification here means the portion other than the claims. We need not
`consult a dictionary for the ordinary meaning of “record” because it is clear
`from the claims and Specification.
`
`12
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`not the determinative point. Consequently, our claim construction could be
`seen as not determinative; however, we provide that interpretation because
`it is useful to understand the claim and the prior art.
`
`
`III. PATENTABILITY
`
`A. WITNESSES
`Dr. Houh
`1.
`Petitioner’s expert witness, Dr. Henry Houh, works in the area of
`digital and streaming media, and has a doctorate and Master of Science in
`Electrical Engineering and Computer Science, and a Bachelor of Science
`degree in Physics. See Ex. 1003 ¶¶ 3–4 (Declaration), Ex. 1004 (Curriculum
`Vitae), Ex. 1027 (Reply Declaration); see also Ex. 2005 (Deposition); Pet. 4,
`25.
`
`Patent Owner contends that Dr. Houh, “could not or would not
`provide any explanation of what he believes ‘activation’ as used in Pierce
`means.” PO Resp. 37–38 (citing Dr. Houh’s testimony at Ex. 2005, 19:16–
`33:20, 40:17–49:16). Patent Owner’s general proposition that Dr. Houh
`could not or would not provide “any explanation” is an overstatement. To
`the contrary, Dr. Houh provided explanations. It is more accurate to say that
`Patent Owner disagrees with the validity of these explanations.
`Patent Owner’s more specific assertions regarding Dr. Houh’s
`testimony are addressed in our obviousness analysis below.
`Dr. Madisetti
`2.
`Patent Owner’s first expert witness, Dr. Vijay Madisetti, is a professor
`in Electrical and Computer Engineering at Georgia Institute of Technology,
`and has a Bachelor’s degree and doctorate in Electronics and Electrical
`
`13
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`Communications Engineering. Ex. 2001 ¶ 5, App’x 1, 4 (curriculum vitae));
`see also Ex. 1028 (Deposition).
`Petitioner contends that “[b]ecause Dr. Madisetti failed to consider the
`content of the prior art in its entirety, the Board should accord his opinions
`and testimony little to no weight.” Pet. Reply 24 (citing Ex. 1028, 77:1–
`81:4, 142:10–143:2, 144:7–149:3).
`We disagree with Petitioner’s assessment. In the portions of
`Dr. Madisetti’s testimony cited by Petitioner, Dr. Madisetti consistently
`maintains that Pierce only discloses embodiments having continuous
`recording (pre-event recording).12 This does not indicate that Dr. Madisetti
`failed to consider Pierce in its entirety; rather, it indicates only that Dr.
`Madisetti’ s interpretation of Pierce differs from Petitioner’s interpretation.
`Indeed, Dr. Madisetti expressly indicated that he reviewed Pierce. See Ex.
`2001 ¶ 2.
`Captain Ayers
`3.
`Patent Owner’s second expert witness, Captain Matthew Ayers, is a
`law enforcement officer with experience with event recorder systems for law
`enforcement use. Ex. 2002 ¶ 2; see also Ex. 1029 (Deposition).
`Patent Owner submitted the Declaration of Captain Ayers “to opine on
`what a law enforcement officer would understand as the features and
`operation of event recording systems for law enforcement use.” PO Resp.
`10–11. The ’292 patent and the prior art of record were readily
`
`
`12 As shorthand, the parties sometimes refer to Pierce’s disclosure of
`continuous recording of up to one minute as “pre-event recording.” See Ex.
`1014 ¶ 86; see, e.g., Pet. Reply 1, 8; PO Resp. 16.
`
`14
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`understandable in view of the arguments of each party and the Declarations
`of Dr. Houh and Dr. Madisetti. Consequently, we did not rely on Captain
`Ayers’s testimony, and Petitioner’s arguments regarding this testimony are
`moot. See Pet. Reply 22–24.
`
`LEVEL OF SKILL IN THE ART
`In our Institution Decision, we observed that the parties are largely in
`agreement regarding the level of skill in the art. Dec. 14–16. Based on our
`review of the record at institution, we determined that a person of
`ordinary skill would have had at least a bachelor’s degree in electrical
`engineering or a related field. Id. That person would have had two
`years of experience in an industrial or educational setting, to include
`design experience. Id. Given this education level and experience,
`that person would have had a working knowledge of computing
`devices and associated hardware and software. Id.
`We instructed the parties that additional argument and evidence
`related to the level of skill in the art should focus on how that level impacts
`the obviousness analysis. Id. at 15–16. After institution, neither party
`contested this determination, and consequently, we apply the level of skill
`set forth above to our analysis.
`
`C. OBJECTIVE INDICIA OF NONOBVIOUSNESS
`Patent Owner did not present objective indicia of nonobviousness.
`
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`D.
`
`ISSUE
`For the reasons discussed below, we find that there is insufficient
`evidence of record to support Petitioner’s contention that the claimed second
`communication signal would have been obvious. Thus, we need not
`consider whether Petitioner has met its burden with respect to any other
`claim limitations.
`Each of the challenged independent claims (1, 18, 36, and 48) requires
`the second communication signal to include an instruction that the second
`recording device “begin recording” a second set of record data related to an
`event. As explained above, this means that the second communication signal
`must include an instruction for the second recording device to begin
`recording (generate or capture data), but that signal need not include an
`instruction to store the data that is generated or captured. Additionally, the
`second communication signal interrelates to the first communication signal
`in that the at least one transmitter must be configured to transmit the second
`communication signal in response to receiving the first communication
`signal from the first recording device indicating that the first recording
`device has received the first law enforcement officer’s instruction to record.
`In other words, the second communication signal must be triggered by the
`first communication signal.
`Petitioner contends that the claimed second communication signal
`would have been obvious over either: (1) Pierce alone or (2) Pierce and
`20/20-W. Pet. 26–71; see also Pet. 5–15 (regarding the scope and content of
`the prior art), 17–18 (regarding the level of skill in the art).
`
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`16
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`E. ASSERTED GROUNDS OF UNPATENTABILITY
`In the Petition, Petitioner asserted that the challenged claims are
`unpatentable under 35 U.S.C. § 103(a) over (1) Pierce13 and (2) Pierce and
`20/20-W.14 Pet. 26–71.
`Introduction to the References
`1.
`Pierce
`a)
`Pierce discloses a vehicle mounted data acquisition and display
`system and method of recording referred to as the ICOP 20/20. Ex. 1014
`¶¶ 2, 7, 18, Fig. 4a (“ICOP 20/20” in top left corner of the device); see Pet.
`26. Pierce’s system addresses the concern that law enforcement officers
`often fail to record valuable data because the recording apparatus is not
`activated until after an incident is resolved. Ex. 1014 ¶ 4. Further, it was
`thought that recording the activities of officers and suspects could reduce or
`eliminate incidents of police brutality and false allegations of police
`brutality. Id. ¶ 6.
`Pierce’s data acquisition and display system 10 includes cameras 62
`(e.g., first camera 62a, second camera 62b), microphones 68 (e.g., first and
`second microphone 68a and 68b), and speed measuring apparatus 77.
`Ex. 1014 ¶¶ 35, 52, 61, 69, Figs. 1–3. Central unit 30 of the system houses
`controller 31 that is programmable to coordinate operation of system 10. Id.
`¶ 39.
`
`
`13 U.S 2005/0083404, published Apr. 21, 2005 (Ex. 1014).
`14 Raytheon JPS Communications, Raytheon Model 20/20-W, Raytheon
`20/20 VISION, Digital In-Car Video Systems, White Paper WP-8002-11
`(Ex. 1015). See also Exhibit 1016 regarding public availability of Exhibit
`1015.
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`Figure 1 of Pierce follows.
`
`
`Figure 1 is a perspective view of Pierce’s vehicle and data acquisition and
`display system. Ex. 1014 ¶ 15.
`Pierce’s system 10 includes a recording device manager (central unit
`30 housing controller 31) having at least one receiver and at least one
`transmitter (communication connections, ports, or jacks 54 that receive data
`and transmit control signals). Ex. 1014 ¶¶ 30, 39, 51, 57, Fig. 3; Ex. 1003
`¶ 165; Pet. 32–39.
`Pierce’s user interface 40 includes buttons for controlling operation of
`video cameras 62 (e.g., “REC1,” “STOP”), internal microphone 68a (an
`“INT MIC” button), and speed measuring apparatus 77 (a record button).
`Ex. 1014 ¶¶ 43, 44, 61, 70, 85, Figs. 2, 4a. Figure 4a of Pierce follows.
`
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`Figure 4a is a front view of a portion of system 10. Ex. 1014 ¶¶ 18, 35.
`Thus, the controls at user interface 40 are triggered by an operator and not
`by activation of 72b of wireless microphone 68b.
`20/20-W
`b)
`20/20-W discloses a digital in-car video system (Model 20-20-W)
`based on the ICOP 20/20 system. Pet. 28; Ex. 1015 ¶ 1. Consequently,
`Pierce and 20/20-W are similar systems.
`
`OBVIOUSNESS OVER PIERCE15
`Petitioner contends that Pierce discloses a multiple recording device
`management system that includes a recording device manager (central unit
`
`F.
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`15 As mentioned above, each of the independent claims and therefore all of
`the challenged claims, call for a second communication signal. Therefore,
`our analysis of claim 1 applies to all of the challenged claims.
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`30 housing controller 31) including at least one receiver and at least one
`transmitter (communication connections, ports, or jacks 54 that receive data
`and transmit control signals). Pet. 32–35.
`Petitioner contends that Pierce discloses a first recording device
`(wireless microphone 68b) communicatively coupled with the recording
`device manager (central unit 30), and a second recording device (either first
`camera 62a, internal microphone 68a, or speed measuring apparatus 77)
`communicatively coupled with the recording device manager (central unit
`30). Pet. 39–41, 44–46; Pet. Reply 6–7.
`With regard to the first communication signal, Petitioner contends that
`Pierce’s receiver (jack 54) is configured to receive a first communication
`signal from the first recording device (wireless microphone 68b) indicating
`that device received an instruction initiated by a first law enforcement
`officer to record a first set of record data related to an event (either when
`RECORD button 72a or HELP/CALL16 button 72b is depressed).17 Pet. 41–
`42; Pet. Reply 7. In other words, Petitioner contends that the signal from
`wireless microphone 68b to one of jacks 54 of central unit 30 corresponds to
`a first communication signal as claimed.
`With regard to the second communication signal, Petitioner contends
`that Pierce’s central unit 30 includes communication ports 54 that transmit
`
`
`16 Patent Owner does not contest Dr. Houh’s opinion that Pierce refers to
`button 72b both as the “CALL button” and as the “HELP button.” See Ex.
`1003 ¶¶ 152, 172. We agree. For clarity, we refer to it as the “HELP/CALL
`button 72b.”
`17 Petitioner mistakenly refers to the HELP button as 72a (Pet. 41), but
`subsequently correctly identifies it as 72b (Pet. 42).
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`activation signals to each of first camera 62a, internal microphone 68a, and
`speed measuring apparatus 77. Pet. 46 (citing Ex. 1014 ¶¶ 44, 70, 85; Ex.
`1003 ¶¶ 173, 234). Petitioner contends that, “Pierce explains that in
`response to an officer’s activation of the wireless microphone 68b via the
`HELP button, the controller causes the first camera 62a, the internal
`microphone 68a, and the speed measuring apparatus 77 to all begin
`recording data.” Id. (citing Ex.1014 ¶¶ 68, 84; Ex.1003 ¶¶ 152, 172); see
`also Pet. 51 (asserting that Pierce discloses that depression of the
`HELP/CALL button on microphone 68b “is an instruction for the wireless
`microphone [microphone 68a] to record”); Pet. Reply 7. In other words,
`Petitioner contends that each of the signals from communication port 54 of
`Pierce’s central unit 30 to first camera 62a, internal microphone 68a, and
`speed measuring apparatus 77 corresponds to a second communication
`signal as claimed.
`In the Preliminary Response, Patent Owner argued that the alleged
`second recording devices (first camera 62a, internal microphone 68a, or
`speed measuring apparatus 77) are already recording when an operator
`depresses button 72b of microphone 68b so that a signal for those devices to
`begin recording is not needed. Prelim. Resp. 28–29. In our Institution
`Decision we preliminarily determined, based on the record at that point, that
`Petitioner had shown a reasonable likelihood of prevailing because Pierce’s
`disclosure that in some constructions (embodiments) data is continuously
`recorded suggests that in other constructions (embodiments) data is not
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`continuously recorded.18 Dec. 24–25. Now we consider that issue in light
`of the entire record and against the standard that Petitioner must demonstrate
`unpatentability by a preponderance of the evidence.
`Pierce Does Not Disclose the Claimed Second Communication
`1.
`Signal19
`Petitioner contends that Pierce discloses or explains that depressing
`HELP/CALL button 72b of wireless microphone 68b causes a signal (the
`alleged second communication signal) instructing first camera 62a, internal
`microphone 68a, or speed measuring apparatus 77 to begin recording data.
`Pet. 46–48, 51–52; Pet. Reply 7. Dr. Houh echoes this interpretation. See
`Ex. 1003 ¶¶ 152, 172–173, 234–237.
`Several factors undermine Petitioner’s contention.
`First, and significantly, as discussed above, Pierce discloses that an
`operator may control cameras 62, microphone 68a, and speed measuring
`apparatus 77 via user interface 40. However, the claimed second
`
`
`18 In the Institution Decision we stated that in an embodiment of Pierce that
`was not continuously recording, a signal to recording devices to begin
`recording would be “necessary.” See Dec. 25. Use of the term “necessary”
`led the parties to discuss whether Pierce inherently disclosed a second
`communication signal as claimed. See, e.g., Tr. 13:17–14:6, 33:7–34:10; PO
`Resp. 13; Pet. Reply. 11–12. Our use of the term “necessary,” was not
`intended to indicate that Pierce inherently discloses a second communication
`signal. Had we inten
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