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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`AXON ENTERPRISE, INC.
`(f/k/a TASER International, Inc.)
`Petitioner
`
`v.
`
`DIGITAL ALLY, INC.
`Patent Owner
`____________
`
`Case IPR2017-00375
`Patent 8,781,292
`____________
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`PATENT OWNER’S REPLY TO PETITIONER’S
`OPPOSITION TO MOTION TO AMEND
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`TABLE OF CONTENTS
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`I. CLAIM CONSTRUCTION .................................................................................. 1
`A. “record” and Variants Thereof ......................................................................... 1
`B. “recording device” ............................................................................................ 2
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`II. WRITTEN DESCRIPTION SUPPORT FOR SUBSTITUTE CLAIMS ......... 3
`A. The Claims Should Not Be Construed As Requiring the Communication
`Signal Indicate the Medium on Which to Store ............................................ 3
`B. Support for the First and Second Communication Signals ............................... 4
`C. Support for Claims As a Whole ........................................................................ 6
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`III. THE SUBSTITUTE CLAIMS ARE PATENTABLE OVER PIERCE IN
`VIEW OF CILIA .............................................................................................. 7
`A. The Combination Does Not Teach Recording Data on the Included CRM in
`Response to an Instruction to Record ............................................................ 7
`B. A POSITA Would Have No Reason to Combine Pierce and Cilia ................ 10
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`“REASONABLE” NUMBER OF
`IV. DIGITAL PROPOSED A
`SUBSTITUTE CLAIMS ................................................................................ 12
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`i
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`Cases:
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`TABLE OF AUTHORITIES
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`Page No(s).
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`Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010)
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`C.R. Bard, Inc. v. M3 Systems, Inc., 157 F.3d 1340 (Fed. Cir. 1998)
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`Intellectual Ventures I LLC v. Motorola Mobility LLC, 870 F.3d
`1320 (Fed. Cir. 2017)
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`Nichia Corp. v. Emcore Corp., IPR2012-00005, (PTAB Jun. 3, 2013)
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`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795 (Fed. Cir. 2000)
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`5
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`4
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`4
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`6, 7
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`1
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`
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`Regulations:
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`37 CFR § 42.121(a)(3)
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`Page No(s).
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`12
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`ii
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`I.
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`CLAIM CONSTRUCTION
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`A.
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` “record” and Variants Thereof
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`Digital proposes that “record” and variants thereof be construed as “storing
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`captured data for future retrieval.” (Paper 23, 5). Axon instead proposes “generate
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`or capture data for the purpose of storing.” (Paper 29, 2). Axon’s arguments for
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`unpatentability of the substitute claims necessitate construing “record.” Applying
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`Digital’s construction of “record,” Cilia’s (EX_1030) personal transceiver device
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`does not store, i.e., preserve, data but rather buffers the data until it is successfully
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`transmitted to the recording device. (EX_1030, ¶ 8; see also EX_2001, ¶ 41 (Dr.
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`Madisetti opining “recorded” data, as claimed, is preserved)). Additionally, Cilia’s
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`transceiver device does not store for the purpose of “future retrieval” but rather for
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`immediate retransmission. (EX_2009, ¶ 23). As such, the term “record” is in
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`controversy, which construing it would resolve. Thus, Digital requests the Board
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`construe the claim term. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
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`803 (Fed. Cir. 2000) (“Only those terms need be construed that are in controversy,
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`and only to the extent necessary to resolve the controversy.”).
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`Digital previously submitted that Axon’s implicit construction of “record” to
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`mean “to transmit” resulted in a logical inconsistency when read in the context of
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`the claims. (Paper 23, 6). Construing “record” as “generate or capture” does not
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`resolve this contradiction. (EX_2009, ¶ 7). By shoehorning “for the purposes of
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`1
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`storing” into its proposed construction to avoid a nonsensical read of the substitute
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`claims, Axon appears to agree that “record” must include the concept of “storage.”
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`However, Axon’s arguments in the Petition hinge on Pierce, which does not teach
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`sending an instruction to the input devices to begin storing data. Thus, Axon is
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`forced to propose a strained, results-driven construction that should be rejected.
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`B.
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` “recording device”
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`The substitute claims recite additional structure in the “recording device,”
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`and, even if the “input” recited in the Challenged Claims is insufficient to inform
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`the structural character of the recording device, the claimed input in combination
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`with the “included” computer-readable medium (CRM) does so. (EX_2009, ¶ 8).
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`Additionally, Axon’s own evidence supports a finding that a POSITA would
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`understand the term “recording device” as sufficiently definite for structure; Cilia
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`uses the term “recording device” no fewer than 37 times in describing both its
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`invention and the prior art. (EX_1030, ¶¶ 5-7, 14-15, EX_2009 ¶ 9). Cilia
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`describes the recording device as “includ[ing] an input/output module […] and a
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`mass-storage module.” Id. at ¶ 15. This, in combination with Dr. Madisetti’s
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`testimony and the use of the term in the background references cited by Axon (see
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`Paper 23, 8-9) support “recording device” being common parlance within the art
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`and understood to a POSITA to include sufficiently definite structure.
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`2
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`II. WRITTEN DESCRIPTION SUPPORT FOR SUBSTITUTE CLAIMS
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`A. The Claims Should Not Be Construed As Requiring the
`Communication Signal Indicate the Medium on Which to Store
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`Axon contends Digital’s alleged claim construction renders the claims
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`invalid for lack of written description: “according to Digital, the instruction must
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`indicate the medium on which the first recording device is to record.” (Paper 30, 3-
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`4, 7). Digital proposed no such construction. Axon identifies no material besides a
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`bullet-point summary in the Content of the Amendment section of the Motion to
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`Amend in support of the alleged construction. Axon is blatantly attempting to read
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`limitations into the claims to gin up a lack of written description argument.
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`The substitute claims speak for themselves: they do not require that the
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`communication signal indicate the medium on which to record. Rather, they
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`require that the recording occur on a particular medium. For example, the second
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`communication signal (Axon argues similarly for first and second communication
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`signals) instructs the second recording device to begin recording, and that
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`recording occurs on the second CRM. This is confirmed in later limitations: the
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`“second set of record data is recorded on the second computer-readable medium
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`included in the second recording device.” See, e.g., Paper 22, 7, 60[I].
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`Axon’s only support for its contention is the bullet-point summary. (Paper
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`30, 7 citing Paper 22, 2). Axon provides no further support because there is none.
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`Digital did not propose Axon’s alleged construction in the Claim Construction
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`3
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`section of the Motion (see Paper 22, 15 (noting there are no new claim terms
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`requiring construction)); did not discuss this alleged limitation in its listing of the
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`nonobvious features (id. at 16); and did not discuss this alleged limitation in its
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`written description section (id. at 4-12). Digital did not argue the alleged limitation
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`for claim construction, patentability, or written description because Digital did not
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`and does not contend the claims should be construed to include this limitation.
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`Axon argues Digital made this construction because Axon is seeking any
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`reason for the substitute claims to be unpatentable–even if it means manufacturing
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`a lack of written description argument. This is impermissible: “[I]t is incorrect to
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`construe the claims contrary to the specification, and then to hold the claims
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`invalid because they are contrary to the specification.” Intellectual Ventures I LLC
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`v. Motorola Mobility LLC, 870 F.3d 1320, 1325-1326 (Fed. Cir. 2017), quoting
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`C.R. Bard, Inc. v. M3 Systems, Inc., 157 F.3d 1340, 1360 (Fed. Cir. 1998).
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`Axon states that “[s]hould the Board adopt Digital’s construction, it should
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`find that the ‘first[/second] communication signal’ limitation lacks written
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`description support.” (Paper 30, 4, 7). Digital expressly requests the Board not
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`adopt this alleged construction because Digital did not propose this construction.
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`B.
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`Support for the First and Second Communication Signals
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`Axon’s argument for a lack of written description for the first and second
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`communication signals is tied up in Axon’s urged construction that the claims
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`4
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`require the signal indicate the medium on which to store the respective data.
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`Essentially, Axon does not dispute that the reexamined claims of the ’292 Patent
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`include written description support. Instead, Axon argues the amended claim
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`language regarding the CRM lacks support based on Axon’s urged construction
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`that the signal must indicate the medium on which to store.
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`For example, regarding the first communication signal as taught by ¶ 56 of
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`the filed application, Axon states that ¶ 56 “makes no mention of a signal or an
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`instruction….” (Paper 30, 3-4). Similar arguments are made regarding the other
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`citations to the as-filed application. Id. These arguments can be dismissed because
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`the claims should not be construed to include Axon’s narrowing limitation.
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`As set forth in the Motion to Amend, the filed application discloses (1) a
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`communications signal from a recording device indicating that it has begun
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`recording, (2) because an officer has caused it to record, and that (3) includes a
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`local CRM on which it records. (Paper 22, 4-5, citing EX_1005). The question of
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`written description support is “whether the disclosure of the application relied upon
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`reasonably conveys to those skilled in the art that the inventor had possession of
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`the claimed subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly &
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`Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Digital’s expert, Dr.
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`Madisetti, reviewed the Reply Declaration of Axon’s expert, Dr. Houh. Dr.
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`Madisetti disagrees with Dr. Houh’s conclusions. (EX_2009, ¶¶ 11, 14). As
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`5
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`explained by Dr. Madisetti, the as-filed application would have conveyed to a
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`POSITA that the applicant was in possession of the claimed features because the
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`disclosed system operated in accordance with the claimed embodiment. For
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`example, regarding the first communication signal, an officer instructs the
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`recording device to begin recording, and it begins recording on a local CRM and
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`sends a signal indicating the same to the recording device manager. (EX_2009, ¶¶
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`10-12). Similar arguments apply to the second communication signal, and Dr.
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`Madisetti agrees that the specification includes written description for the second
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`communication signal. (EX_2009, ¶¶ 13-15). Accordingly, Axon’s contentions
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`regarding an alleged lack of written description should be rejected.
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`C.
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`Support for Claims As a Whole
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`Axon argues Digital failed to meet its burden to show written description
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`support for the substitute dependent claims because the Motion to Amend
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`“present[s] only citations ‘to the specification of the ’292 Patent as filed.’” (Paper
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`30, 11). Axon cites Nichia Corp. v. Emcore Corp., IPR2012-00005, Paper 27, 4:
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`“[M]erely indicating where each claim limitation individually [is] described in the
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`original disclosure may be insufficient to demonstrate support for the claimed
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`subject matter as a whole.” (Paper 30, 2). Axon selectively quotes from Nichia, as
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`the next sentence in Nichia explains how such citations “may be” insufficient:
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`“[f]or instance, the statement ‘Proposed claim 21: See, e.g., existing claims 6, 14,
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`6
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`and 15’ without any explanation is on its face inadequate for the patent owner to
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`meet its burden, as each of claims 6, 14, and 15 separately depends from claim 1.”
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`Nichia, Paper 27, 4. In the Nichia Motion to Amend, new claim 21 included a
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`combination of the features recited separately in existing claims 6, 4, and 15. The
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`Board recognized that where dependent claims of new scope were substituted,
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`support would be needed for an embodiment combining all the features of claims
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`6, 14, and 15. This is not the present situation. Digital’s proposed substitute claims
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`are concomitant in scope with the corresponding challenged claims, varying only
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`in dependency. As such, the citations to the support for each feature recited in a
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`dependent claim provide support for the dependent claims as a whole, as that is the
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`only feature added to the corresponding independent claim.
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`III. PATENTABILITY OF THE SUBSTITUTE CLAIMS
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`Axon contends the substitute claims are obvious over Pierce in view of Cilia.
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`Like Pierce, Cilia fails to teach recording data, on a CRM included in the recording
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`device, in response to an instruction to record.
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`A. The Combination Does Not Teach Recording Data on the
`Included CRM in Response to an Instruction to Record
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`Digital and Axon propose different constructions for “record.” Digital
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`analyzes the proposed combination of Pierce and Cilia under both constructions.
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`Applying Digital’s proposed construction, the mapped second recording device in
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`Pierce, modified to include Cilia’s buffer memory, does not receive an instruction
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`7
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`to “record,” nor is the data recorded on the included CRM. Specifically, the
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`communication signal does not instruct the second recording device to “store
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`captured data for future retrieval.” (EX_2009, ¶ 23). (For brevity, this argument
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`references only the second recording device, but the same reasoning applies to the
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`first recording device). Cilia teaches that under normal circumstances, data is
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`captured, buffered, transmitted, and deleted. (EX_1030, Abst.). If the initial
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`transmission is successful, the data in the buffer memory is deleted without ever
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`being accessed, much less “retrieved.” Id. at ¶ 18; EX_2009, ¶ 21. Thus, rather
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`than “storing data for later retrieval” on an included CRM, Pierce as modified by
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`Cilia buffers for potential retransmission and, ultimately, deletion without retrieval.
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`(EX_1030, ¶ 28; EX_2009, ¶ 23). In such a Pierce-Cilia system, there is no
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`provision for retrieval from the included CRM. Id. Cilia does disclose that the
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`buffer memory may be non-volatile flash memory (EX_1030, ¶ 15) with enough
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`capacity to store 8 hours worth of data. Id. at ¶ 23. However, the fact that the buffer
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`is a large one does not change that it remains a buffer. Cilia’s personal transceiver
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`device “continually tries to deliver the stored data packets” (id.) and “[o]nce the
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`data have been adequately transmitted, the data can be deleted from the memory
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`module.” Id. at ¶ 18; EX_2009, ¶ 21. Thus, even if the buffer memory of Cilia’s
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`transceiver has accumulated a full 8 hours of data, as soon as the officer reenters
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`transmission range of the recording device, the data will be delivered and promptly
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`8
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`deleted from the buffer memory, without ever being retrieved. See, e.g., id. at ¶ 21
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`(“[T]he data are uploaded [to the recording device], for example, when the officer
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`gets back in the patrol car.”), ¶ 18 (“Responsive to adequate communication
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`recurring, […] successfully transmitted data buffered in the memory module 120 is
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`deleted in order to free that portion of the memory module 120 for further
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`recording.”). Thus, Pierce modified by Cilia does not “record” on an included
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`CRM, i.e., does not “store captured data for future retrieval” on the included CRM.
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`Even under Axon’s proposed construction, Pierce’s input device as modified
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`to include Cilia’s buffer memory still does not receive an instruction to “record,”
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`nor is the data “recorded” on the included CRM. Applying Axon’s construction,
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`the instruction does not cause the recording device to “generate or capture [data]
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`for the purposes of storing” in the local buffer memory. Rather, data is stored in
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`the buffer for the purpose of ensuring successful transmission: “[f]or example, the
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`personal transceiver device may utilize a FIFO buffer in conjunction with an
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`acknowledgement from a receiving device such as […] a recording device […] in
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`order to verify that transmission of data […] was successful.” Id. at ¶ 27;
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`EX_2009, ¶ 23. That the storing of data in the buffer memory is for the purpose of
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`transmission rather than storage is evidenced in Cilia’s teaching that data is deleted
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`from the buffer memory as soon as successful transmission is confirmed.
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`(EX_1030, Abst. (“The method also includes […] responsive to a determination
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`9
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`that the transmitted buffered data was successfully received deleting the
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`transmitted buffered data…”)). Thus, Pierce modified by Cilia does not “generate
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`or capture [data] for the purpose of storing” on an included CRM and therefore
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`does not “record” on that CRM under Axon’s proposed construction.
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`B. A POSITA Would Have No Reason to Combine Pierce and Cilia
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`Digital previously submitted that a POSITA would have no reason to
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`combine Pierce with another reference teaching a recording device with an
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`included CRM. (Paper 22, ¶ 29-30; see also EX_2009, ¶ 19-21). This is because
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`Pierce desires to prevent tampering and theft of the recording medium, and a
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`Pierce input device with included memory would be vulnerable to tampering/theft.
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`(EX_1014, ¶¶ 46-47; EX_2009, ¶ 20). If the Pierce input device is being used to
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`store data for more than just buffering purposes, e.g., for an extended period of
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`time, then leaving the input device vulnerable to theft/tampering is specifically
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`discouraged by Pierce. Cilia also discourages storing data at the transceiver for
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`longer than necessary to buffer and transmit. (EX_2009, ¶ 21). Thus, both
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`references cited by Axon teach away from, i.e., specifically discourage, modifying
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`the Pierce input device to include a CRM for storing data for later retrieval.
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`Conversely, there is also no reason why a POSITA would modify Pierce’s
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`vehicle-mounted input devices (mapped to the second recording device) to include
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`Cilia’s buffer memory for immediate retransmission. Axon’s reason to combine
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`10
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`Pierce and Cilia is based upon Cilia’s stated goal of ensuring data is not lost due to
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`the transmission environment. (Paper 30, 14-15, citing EX_1030, ¶¶ 6-7). Axon
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`asserts that a POSITA would have been motivated to modify Pierce so that
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`“valuable information/evidence is not lost and is faithfully transmitted and stored.”
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`Id. at 15, 16. However, the transmission in Cilia is for storage at the central
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`recording device and not, as required by the substitute claims, at the transceiver
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`(mapped to the claimed recording device). EX_2009, ¶ 25. As discussed above,
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`Cilia teaches “continually” buffering the data until the recording device confirms
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`receipt of the transmitted data from the transceiver. (EX_1030, ¶ 23). Axon relies
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`on Cilia’s teaching that data transmission could fail because the “transmission
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`range of the personal transceiver device [is exceeded]” or the transceiver is
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`“shielded by a metal building or other object.” (Paper 30, 19). However, Axon
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`mapped the claimed “second recording device” to Pierce’s cameras 62 or internal
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`microphone 68a (Paper 30, 17-18),1 which are all described as being mounted in
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`1At Paper 30, 20-21, Axon appears to be changing its mapping to contend, for the
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`first time, that Pierce’s “remote camera” can be the claimed “second recording
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`device.” Digital objects to any such change in the claim mapping as not responsive
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`to the Motion to Amend and not establishing how the combination teaches the
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`claimed “second communication signal” is transmitted to the remote camera.
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`11
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`the law enforcement vehicle. (EX_1014, ¶¶ 52, 61). Similarly, the controller 31,
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`which Axon maps to the transmitter, is mounted in the law enforcement vehicle.
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`Id. at ¶¶ 38-39. As such, the mapped second recording devices will never be “out
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`of range” of controller 31, nor will they ever be “shielded by a building or metal
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`object” from it. Accordingly, Axon’s stated motivation fails. (EX_2009, ¶ 18).
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`IV. A “REASONABLE” NUMBER OF SUBSTITUTE CLAIMS
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`Axon contends, without explanation or argument, that Digital did not
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`propose a reasonable number of substitute claims. (Paper 30, 1, 30). A presumption
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`exists that that “only one substitute claim would be needed to replace each
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`challenged claim.” 37 CFR § 42.121(a)(3). Digital proposed one substitute claim
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`for each challenged claim. Axon’s contention should be rejected.
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`
`
`Date: December 22, 2017
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`7015 College Boulevard, Suite 700
`Overland Park, Kansas 66211
`Telephone: (913) 777-5600
`Facsimile: (913) 777-5601
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`Respectfully submitted,
`ERISE IP, P.A.
`
`
`
`/Jennifer C. Bailey/
`Jennifer C. Bailey, Reg. No. 52,583
`Jennifer.Bailey@EriseIP.com
`Robin A. Snader, Reg. No. 66,085
`Robin.Snader@EriseIP.com
`Marshall Honeyman, Reg. No. 48,114
`Marshall.Honeyman@EriseIP.com
`
`PTAB@eriseip.com
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`ATTORNEYS FOR PATENT OWNER
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`12
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct copy of the foregoing PATENT
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`OWNER’S RESPONSE TO PETITIONER’S OPPOSITION TO MOTION TO
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`AMEND and associated Exhibit 2009 was served on December 22, 2017, by email
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`on the following counsel of record for Petitioner:
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`Michael D. Specht (mspecht-PTAB@skgf.com)
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`Richard M. Bemben (rbemben-PTAB@skgf.com)
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`Michelle K. Holoubek (holoubek-PTAB@skgf.com)
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`Courtesy Copy to PTAB@skgf.com
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`Date: December 22, 2017
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`7015 College Boulevard, Suite 700
`Overland Park, Kansas 66211
`Telephone: (913) 777-5600
`Facsimile: (913) 777-5601
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`Respectfully submitted,
`ERISE IP, P.A.
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`
`
`/Jennifer C. Bailey/
`Jennifer C. Bailey, Reg. No. 52,583
`Jennifer.Bailey@EriseIP.com
`Robin A. Snader, Reg. No. 66,085
`Robin.Snader@EriseIP.com
`Marshall Honeyman, Reg. No. 48,114
`Marshall.Honeyman@EriseIP.com
`
`PTAB@eriseip.com
`
`
`ATTORNEYS FOR PATENT OWNER
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`13
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