throbber

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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AXON ENTERPRISE, INC.
`(f/k/a TASER International, Inc.)
`Petitioner
`
`v.
`
`DIGITAL ALLY, INC.
`Patent Owner
`____________
`
`Case IPR2017-00375
`Patent 8,781,292
`____________
`
`PATENT OWNER’S REPLY TO PETITIONER’S
`OPPOSITION TO MOTION TO AMEND
`
`
`
`

`

`
`
`TABLE OF CONTENTS
`
`I. CLAIM CONSTRUCTION .................................................................................. 1
`A. “record” and Variants Thereof ......................................................................... 1
`B. “recording device” ............................................................................................ 2
`
`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
`
`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
`
`“REASONABLE” NUMBER OF
`IV. DIGITAL PROPOSED A
`SUBSTITUTE CLAIMS ................................................................................ 12
`
`
`
`
`
`
`
`
`i
`
`

`

`
`
`Cases:
`
`TABLE OF AUTHORITIES
`
`Page No(s).
`
`Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010)
`
`C.R. Bard, Inc. v. M3 Systems, Inc., 157 F.3d 1340 (Fed. Cir. 1998)
`
`Intellectual Ventures I LLC v. Motorola Mobility LLC, 870 F.3d
`1320 (Fed. Cir. 2017)
`
`Nichia Corp. v. Emcore Corp., IPR2012-00005, (PTAB Jun. 3, 2013)
`
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795 (Fed. Cir. 2000)
`
`5
`
`4
`
`4
`
`6, 7
`
`1
`
`
`
`Regulations:
`
`37 CFR § 42.121(a)(3)
`
`Page No(s).
`
`12
`
`
`
`
`
`ii
`
`

`

`
`
`I.
`
`CLAIM CONSTRUCTION
`
`A.
`
` “record” and Variants Thereof
`
`Digital proposes that “record” and variants thereof be construed as “storing
`
`captured data for future retrieval.” (Paper 23, 5). Axon instead proposes “generate
`
`or capture data for the purpose of storing.” (Paper 29, 2). Axon’s arguments for
`
`unpatentability of the substitute claims necessitate construing “record.” Applying
`
`Digital’s construction of “record,” Cilia’s (EX_1030) personal transceiver device
`
`does not store, i.e., preserve, data but rather buffers the data until it is successfully
`
`transmitted to the recording device. (EX_1030, ¶ 8; see also EX_2001, ¶ 41 (Dr.
`
`Madisetti opining “recorded” data, as claimed, is preserved)). Additionally, Cilia’s
`
`transceiver device does not store for the purpose of “future retrieval” but rather for
`
`immediate retransmission. (EX_2009, ¶ 23). As such, the term “record” is in
`
`controversy, which construing it would resolve. Thus, Digital requests the Board
`
`construe the claim term. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`
`803 (Fed. Cir. 2000) (“Only those terms need be construed that are in controversy,
`
`and only to the extent necessary to resolve the controversy.”).
`
`Digital previously submitted that Axon’s implicit construction of “record” to
`
`mean “to transmit” resulted in a logical inconsistency when read in the context of
`
`the claims. (Paper 23, 6). Construing “record” as “generate or capture” does not
`
`resolve this contradiction. (EX_2009, ¶ 7). By shoehorning “for the purposes of
`
`
`
`1
`
`

`

`
`
`storing” into its proposed construction to avoid a nonsensical read of the substitute
`
`claims, Axon appears to agree that “record” must include the concept of “storage.”
`
`However, Axon’s arguments in the Petition hinge on Pierce, which does not teach
`
`sending an instruction to the input devices to begin storing data. Thus, Axon is
`
`forced to propose a strained, results-driven construction that should be rejected.
`
`B.
`
` “recording device”
`
`The substitute claims recite additional structure in the “recording device,”
`
`and, even if the “input” recited in the Challenged Claims is insufficient to inform
`
`the structural character of the recording device, the claimed input in combination
`
`with the “included” computer-readable medium (CRM) does so. (EX_2009, ¶ 8).
`
`Additionally, Axon’s own evidence supports a finding that a POSITA would
`
`understand the term “recording device” as sufficiently definite for structure; Cilia
`
`uses the term “recording device” no fewer than 37 times in describing both its
`
`invention and the prior art. (EX_1030, ¶¶ 5-7, 14-15, EX_2009 ¶ 9). Cilia
`
`describes the recording device as “includ[ing] an input/output module […] and a
`
`mass-storage module.” Id. at ¶ 15. This, in combination with Dr. Madisetti’s
`
`testimony and the use of the term in the background references cited by Axon (see
`
`Paper 23, 8-9) support “recording device” being common parlance within the art
`
`and understood to a POSITA to include sufficiently definite structure.
`
`
`
`2
`
`

`

`
`
`II. WRITTEN DESCRIPTION SUPPORT FOR SUBSTITUTE CLAIMS
`
`A. The Claims Should Not Be Construed As Requiring the
`Communication Signal Indicate the Medium on Which to Store
`
`Axon contends Digital’s alleged claim construction renders the claims
`
`invalid for lack of written description: “according to Digital, the instruction must
`
`indicate the medium on which the first recording device is to record.” (Paper 30, 3-
`
`4, 7). Digital proposed no such construction. Axon identifies no material besides a
`
`bullet-point summary in the Content of the Amendment section of the Motion to
`
`Amend in support of the alleged construction. Axon is blatantly attempting to read
`
`limitations into the claims to gin up a lack of written description argument.
`
`The substitute claims speak for themselves: they do not require that the
`
`communication signal indicate the medium on which to record. Rather, they
`
`require that the recording occur on a particular medium. For example, the second
`
`communication signal (Axon argues similarly for first and second communication
`
`signals) instructs the second recording device to begin recording, and that
`
`recording occurs on the second CRM. This is confirmed in later limitations: the
`
`“second set of record data is recorded on the second computer-readable medium
`
`included in the second recording device.” See, e.g., Paper 22, 7, 60[I].
`
`Axon’s only support for its contention is the bullet-point summary. (Paper
`
`30, 7 citing Paper 22, 2). Axon provides no further support because there is none.
`
`Digital did not propose Axon’s alleged construction in the Claim Construction
`
`
`
`3
`
`

`

`
`
`section of the Motion (see Paper 22, 15 (noting there are no new claim terms
`
`requiring construction)); did not discuss this alleged limitation in its listing of the
`
`nonobvious features (id. at 16); and did not discuss this alleged limitation in its
`
`written description section (id. at 4-12). Digital did not argue the alleged limitation
`
`for claim construction, patentability, or written description because Digital did not
`
`and does not contend the claims should be construed to include this limitation.
`
`Axon argues Digital made this construction because Axon is seeking any
`
`reason for the substitute claims to be unpatentable–even if it means manufacturing
`
`a lack of written description argument. This is impermissible: “[I]t is incorrect to
`
`construe the claims contrary to the specification, and then to hold the claims
`
`invalid because they are contrary to the specification.” Intellectual Ventures I LLC
`
`v. Motorola Mobility LLC, 870 F.3d 1320, 1325-1326 (Fed. Cir. 2017), quoting
`
`C.R. Bard, Inc. v. M3 Systems, Inc., 157 F.3d 1340, 1360 (Fed. Cir. 1998).
`
`Axon states that “[s]hould the Board adopt Digital’s construction, it should
`
`find that the ‘first[/second] communication signal’ limitation lacks written
`
`description support.” (Paper 30, 4, 7). Digital expressly requests the Board not
`
`adopt this alleged construction because Digital did not propose this construction.
`
`B.
`
`Support for the First and Second Communication Signals
`
`Axon’s argument for a lack of written description for the first and second
`
`communication signals is tied up in Axon’s urged construction that the claims
`
`
`
`4
`
`

`

`
`
`require the signal indicate the medium on which to store the respective data.
`
`Essentially, Axon does not dispute that the reexamined claims of the ’292 Patent
`
`include written description support. Instead, Axon argues the amended claim
`
`language regarding the CRM lacks support based on Axon’s urged construction
`
`that the signal must indicate the medium on which to store.
`
`For example, regarding the first communication signal as taught by ¶ 56 of
`
`the filed application, Axon states that ¶ 56 “makes no mention of a signal or an
`
`instruction….” (Paper 30, 3-4). Similar arguments are made regarding the other
`
`citations to the as-filed application. Id. These arguments can be dismissed because
`
`the claims should not be construed to include Axon’s narrowing limitation.
`
`As set forth in the Motion to Amend, the filed application discloses (1) a
`
`communications signal from a recording device indicating that it has begun
`
`recording, (2) because an officer has caused it to record, and that (3) includes a
`
`local CRM on which it records. (Paper 22, 4-5, citing EX_1005). The question of
`
`written description support is “whether the disclosure of the application relied upon
`
`reasonably conveys to those skilled in the art that the inventor had possession of
`
`the claimed subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly &
`
`Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Digital’s expert, Dr.
`
`Madisetti, reviewed the Reply Declaration of Axon’s expert, Dr. Houh. Dr.
`
`Madisetti disagrees with Dr. Houh’s conclusions. (EX_2009, ¶¶ 11, 14). As
`
`
`
`5
`
`

`

`
`
`explained by Dr. Madisetti, the as-filed application would have conveyed to a
`
`POSITA that the applicant was in possession of the claimed features because the
`
`disclosed system operated in accordance with the claimed embodiment. For
`
`example, regarding the first communication signal, an officer instructs the
`
`recording device to begin recording, and it begins recording on a local CRM and
`
`sends a signal indicating the same to the recording device manager. (EX_2009, ¶¶
`
`10-12). Similar arguments apply to the second communication signal, and Dr.
`
`Madisetti agrees that the specification includes written description for the second
`
`communication signal. (EX_2009, ¶¶ 13-15). Accordingly, Axon’s contentions
`
`regarding an alleged lack of written description should be rejected.
`
`C.
`
`Support for Claims As a Whole
`
`Axon argues Digital failed to meet its burden to show written description
`
`support for the substitute dependent claims because the Motion to Amend
`
`“present[s] only citations ‘to the specification of the ’292 Patent as filed.’” (Paper
`
`30, 11). Axon cites Nichia Corp. v. Emcore Corp., IPR2012-00005, Paper 27, 4:
`
`“[M]erely indicating where each claim limitation individually [is] described in the
`
`original disclosure may be insufficient to demonstrate support for the claimed
`
`subject matter as a whole.” (Paper 30, 2). Axon selectively quotes from Nichia, as
`
`the next sentence in Nichia explains how such citations “may be” insufficient:
`
`“[f]or instance, the statement ‘Proposed claim 21: See, e.g., existing claims 6, 14,
`
`
`
`6
`
`

`

`
`
`and 15’ without any explanation is on its face inadequate for the patent owner to
`
`meet its burden, as each of claims 6, 14, and 15 separately depends from claim 1.”
`
`Nichia, Paper 27, 4. In the Nichia Motion to Amend, new claim 21 included a
`
`combination of the features recited separately in existing claims 6, 4, and 15. The
`
`Board recognized that where dependent claims of new scope were substituted,
`
`support would be needed for an embodiment combining all the features of claims
`
`6, 14, and 15. This is not the present situation. Digital’s proposed substitute claims
`
`are concomitant in scope with the corresponding challenged claims, varying only
`
`in dependency. As such, the citations to the support for each feature recited in a
`
`dependent claim provide support for the dependent claims as a whole, as that is the
`
`only feature added to the corresponding independent claim.
`
`III. PATENTABILITY OF THE SUBSTITUTE CLAIMS
`
`Axon contends the substitute claims are obvious over Pierce in view of Cilia.
`
`Like Pierce, Cilia fails to teach recording data, on a CRM included in the recording
`
`device, in response to an instruction to record.
`
`A. The Combination Does Not Teach Recording Data on the
`Included CRM in Response to an Instruction to Record
`
`Digital and Axon propose different constructions for “record.” Digital
`
`analyzes the proposed combination of Pierce and Cilia under both constructions.
`
`Applying Digital’s proposed construction, the mapped second recording device in
`
`Pierce, modified to include Cilia’s buffer memory, does not receive an instruction
`
`
`
`7
`
`

`

`
`
`to “record,” nor is the data recorded on the included CRM. Specifically, the
`
`communication signal does not instruct the second recording device to “store
`
`captured data for future retrieval.” (EX_2009, ¶ 23). (For brevity, this argument
`
`references only the second recording device, but the same reasoning applies to the
`
`first recording device). Cilia teaches that under normal circumstances, data is
`
`captured, buffered, transmitted, and deleted. (EX_1030, Abst.). If the initial
`
`transmission is successful, the data in the buffer memory is deleted without ever
`
`being accessed, much less “retrieved.” Id. at ¶ 18; EX_2009, ¶ 21. Thus, rather
`
`than “storing data for later retrieval” on an included CRM, Pierce as modified by
`
`Cilia buffers for potential retransmission and, ultimately, deletion without retrieval.
`
`(EX_1030, ¶ 28; EX_2009, ¶ 23). In such a Pierce-Cilia system, there is no
`
`provision for retrieval from the included CRM. Id. Cilia does disclose that the
`
`buffer memory may be non-volatile flash memory (EX_1030, ¶ 15) with enough
`
`capacity to store 8 hours worth of data. Id. at ¶ 23. However, the fact that the buffer
`
`is a large one does not change that it remains a buffer. Cilia’s personal transceiver
`
`device “continually tries to deliver the stored data packets” (id.) and “[o]nce the
`
`data have been adequately transmitted, the data can be deleted from the memory
`
`module.” Id. at ¶ 18; EX_2009, ¶ 21. Thus, even if the buffer memory of Cilia’s
`
`transceiver has accumulated a full 8 hours of data, as soon as the officer reenters
`
`transmission range of the recording device, the data will be delivered and promptly
`
`
`
`8
`
`

`

`
`
`deleted from the buffer memory, without ever being retrieved. See, e.g., id. at ¶ 21
`
`(“[T]he data are uploaded [to the recording device], for example, when the officer
`
`gets back in the patrol car.”), ¶ 18 (“Responsive to adequate communication
`
`recurring, […] successfully transmitted data buffered in the memory module 120 is
`
`deleted in order to free that portion of the memory module 120 for further
`
`recording.”). Thus, Pierce modified by Cilia does not “record” on an included
`
`CRM, i.e., does not “store captured data for future retrieval” on the included CRM.
`
`Even under Axon’s proposed construction, Pierce’s input device as modified
`
`to include Cilia’s buffer memory still does not receive an instruction to “record,”
`
`nor is the data “recorded” on the included CRM. Applying Axon’s construction,
`
`the instruction does not cause the recording device to “generate or capture [data]
`
`for the purposes of storing” in the local buffer memory. Rather, data is stored in
`
`the buffer for the purpose of ensuring successful transmission: “[f]or example, the
`
`personal transceiver device may utilize a FIFO buffer in conjunction with an
`
`acknowledgement from a receiving device such as […] a recording device […] in
`
`order to verify that transmission of data […] was successful.” Id. at ¶ 27;
`
`EX_2009, ¶ 23. That the storing of data in the buffer memory is for the purpose of
`
`transmission rather than storage is evidenced in Cilia’s teaching that data is deleted
`
`from the buffer memory as soon as successful transmission is confirmed.
`
`(EX_1030, Abst. (“The method also includes […] responsive to a determination
`
`
`
`9
`
`

`

`
`
`that the transmitted buffered data was successfully received deleting the
`
`transmitted buffered data…”)). Thus, Pierce modified by Cilia does not “generate
`
`or capture [data] for the purpose of storing” on an included CRM and therefore
`
`does not “record” on that CRM under Axon’s proposed construction.
`
`B. A POSITA Would Have No Reason to Combine Pierce and Cilia
`
`Digital previously submitted that a POSITA would have no reason to
`
`combine Pierce with another reference teaching a recording device with an
`
`included CRM. (Paper 22, ¶ 29-30; see also EX_2009, ¶ 19-21). This is because
`
`Pierce desires to prevent tampering and theft of the recording medium, and a
`
`Pierce input device with included memory would be vulnerable to tampering/theft.
`
`(EX_1014, ¶¶ 46-47; EX_2009, ¶ 20). If the Pierce input device is being used to
`
`store data for more than just buffering purposes, e.g., for an extended period of
`
`time, then leaving the input device vulnerable to theft/tampering is specifically
`
`discouraged by Pierce. Cilia also discourages storing data at the transceiver for
`
`longer than necessary to buffer and transmit. (EX_2009, ¶ 21). Thus, both
`
`references cited by Axon teach away from, i.e., specifically discourage, modifying
`
`the Pierce input device to include a CRM for storing data for later retrieval.
`
`Conversely, there is also no reason why a POSITA would modify Pierce’s
`
`vehicle-mounted input devices (mapped to the second recording device) to include
`
`Cilia’s buffer memory for immediate retransmission. Axon’s reason to combine
`
`
`
`10
`
`

`

`
`
`Pierce and Cilia is based upon Cilia’s stated goal of ensuring data is not lost due to
`
`the transmission environment. (Paper 30, 14-15, citing EX_1030, ¶¶ 6-7). Axon
`
`asserts that a POSITA would have been motivated to modify Pierce so that
`
`“valuable information/evidence is not lost and is faithfully transmitted and stored.”
`
`Id. at 15, 16. However, the transmission in Cilia is for storage at the central
`
`recording device and not, as required by the substitute claims, at the transceiver
`
`(mapped to the claimed recording device). EX_2009, ¶ 25. As discussed above,
`
`Cilia teaches “continually” buffering the data until the recording device confirms
`
`receipt of the transmitted data from the transceiver. (EX_1030, ¶ 23). Axon relies
`
`on Cilia’s teaching that data transmission could fail because the “transmission
`
`range of the personal transceiver device [is exceeded]” or the transceiver is
`
`“shielded by a metal building or other object.” (Paper 30, 19). However, Axon
`
`mapped the claimed “second recording device” to Pierce’s cameras 62 or internal
`
`microphone 68a (Paper 30, 17-18),1 which are all described as being mounted in
`
`
`
`1At Paper 30, 20-21, Axon appears to be changing its mapping to contend, for the
`
`first time, that Pierce’s “remote camera” can be the claimed “second recording
`
`device.” Digital objects to any such change in the claim mapping as not responsive
`
`to the Motion to Amend and not establishing how the combination teaches the
`
`claimed “second communication signal” is transmitted to the remote camera.
`
`
`
`11
`
`

`

`
`
`the law enforcement vehicle. (EX_1014, ¶¶ 52, 61). Similarly, the controller 31,
`
`which Axon maps to the transmitter, is mounted in the law enforcement vehicle.
`
`Id. at ¶¶ 38-39. As such, the mapped second recording devices will never be “out
`
`of range” of controller 31, nor will they ever be “shielded by a building or metal
`
`object” from it. Accordingly, Axon’s stated motivation fails. (EX_2009, ¶ 18).
`
`IV. A “REASONABLE” NUMBER OF SUBSTITUTE CLAIMS
`
`Axon contends, without explanation or argument, that Digital did not
`
`propose a reasonable number of substitute claims. (Paper 30, 1, 30). A presumption
`
`exists that that “only one substitute claim would be needed to replace each
`
`challenged claim.” 37 CFR § 42.121(a)(3). Digital proposed one substitute claim
`
`for each challenged claim. Axon’s contention should be rejected.
`
`
`
`Date: December 22, 2017
`
`7015 College Boulevard, Suite 700
`Overland Park, Kansas 66211
`Telephone: (913) 777-5600
`Facsimile: (913) 777-5601
`
`
`
`
`
`
`
`
`
`
`
`
`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
`
`
`ATTORNEYS FOR PATENT OWNER
`
`12
`
`

`

`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing PATENT
`
`OWNER’S RESPONSE TO PETITIONER’S OPPOSITION TO MOTION TO
`
`AMEND and associated Exhibit 2009 was served on December 22, 2017, by email
`
`on the following counsel of record for Petitioner:
`
`Michael D. Specht (mspecht-PTAB@skgf.com)
`
`Richard M. Bemben (rbemben-PTAB@skgf.com)
`
`Michelle K. Holoubek (holoubek-PTAB@skgf.com)
`
`Courtesy Copy to PTAB@skgf.com
`
`
`
`
`
`Date: December 22, 2017
`
`7015 College Boulevard, Suite 700
`Overland Park, Kansas 66211
`Telephone: (913) 777-5600
`Facsimile: (913) 777-5601
`
`
`
`
`
`
`
`
`
`
`
`
`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
`
`
`ATTORNEYS FOR PATENT OWNER
`
`13
`
`

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