Trials@uspto.gov
`571-272-7822
`
` Paper 10
`
`
` Entered: July 6, 2017
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`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AXON ENTERPRISE, INC.,
`Petitioner,
`
`v.
`
`DIGITAL ALLY, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00515
`Patent 9,253,452 B2
`____________
`
`
`
`Before PHILLIP J. KAUFFMAN, MINN CHUNG, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`
`571-272-7822
`
` Paper 10
`
`
` Entered: July 6, 2017
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AXON ENTERPRISE, INC.,
`Petitioner,
`
`v.
`
`DIGITAL ALLY, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00515
`Patent 9,253,452 B2
`____________
`
`
`
`Before PHILLIP J. KAUFFMAN, MINN CHUNG, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`
`
`IPR2017-00515
`Patent 9,253,452 B2
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`I. BACKGROUND
`A. Introduction
`Axon Enterprise, Inc. (“Petitioner”)1 filed a Petition (Paper 1, “Pet.”)
`requesting inter partes review of claims 10–17 and 20 of U.S. Patent
`No. 9,253,452 B2 (Ex. 1001, “the ’452 patent”). Digital Ally, Inc. (“Patent
`Owner”) filed a Preliminary Response (Paper 8, “Prelim. Resp.”). We have
`authority to determine whether to institute an inter partes review. 35 U.S.C.
`§ 314(b); 37 C.F.R. § 42.4(a).
`The standard for instituting an inter partes review is set forth in
`35 U.S.C. § 314(a), which provides that an inter partes review may not be
`instituted unless the information presented in the Petition “shows that there
`is a reasonable likelihood that the petitioner would prevail with respect to at
`least 1 of the claims challenged in the petition.” Upon consideration of the
`Petition and the Preliminary Response, we conclude that the information
`presented in the Petition does not establish a reasonable likelihood that
`Petitioner would prevail in showing the unpatentability of any of the
`challenged claims on the grounds set forth in the Petition. Accordingly, we
`deny Petitioner’s request to institute an inter partes review of claims 10–17
`and 20.
`
`B. Related Proceedings
`The parties indicate that the ’452 patent is the subject of the following
`patent infringement cases: Digital Ally, Inc. v. TASER International, Inc.,
`Case No. 2:16-cv-02032-CM-JPO, and Digital Ally, Inc. v. Enforcement
`
`
`1 Petitioner indicates that, since the filing of the Petition, it has changed its
`name from TASER International, Inc. to Axon Enterprise, Inc. Paper 9, 1.
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`2
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`Video, LLC, Case No. 2:16-cv-02349-JTM-JPO, each pending in the United
`States District Court for the District of Kansas. Pet. 2–3; Prelim. Resp. 1;
`Paper 5, 2. The ’452 patent is also the subject of a co-pending petition for
`inter partes review filed by Petitioner in IPR2017-00775. Additionally, we
`instituted inter partes review of certain claims of U.S. Patent No. 8,781,292
`B1, which is a continuation for the ’452 patent, in IPR2017-00375.
`
`II. THE ’452 PATENT
`A. Background
`As a description of related art, the ’452 patent describes that recording
`device management systems are used to coordinate recording devices to
`capture multiple recordings of an event. Ex. 1001, 1:18–20. For example, a
`user could press a button on a control board to start multiple video cameras.
`Id. at 1:20–24. According to the ’425 patent, 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 1:22–28.
`Also as background, the ’452 patent describes that law enforcement
`often used recording devices to record evidence. Id. at 1:29–31. These
`devices often used different cues to start recording, or required manual
`operation. Id. at 1:35–38. Known drawbacks of such systems included lack
`of corroboration or other forensic verification, and time to correlate this
`evidence. Id. at 4:40–46.
`
`B. Described Invention
`The ’452 patent describes an embodiment in the form of an
`intermediate recording device managing apparatus (“recording device
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`manager”) for use in a multiple recording device system. Id. at 1:54–56.
`The recording device manager receives a first communication signal from a
`first recording device that the first recording device has started recording,
`and transmits a second communication signal to a second recording device
`instructing the second recording device to begin recording. Id. at 1:56–62.
`Thus, the recording device manager insures multiple recording devices
`record an event. Id. at 1:63–64.
`In another embodiment, an intermediate recording device managing
`apparatus comprises an internal clock and a controller. Id. at 1:65–2:1. The
`controller obtains time readings from the internal clock and creates time
`stamps. Id. at 2:1–3. The controller transmits the time stamps to synced
`recording devices for corroborating recordings. Id. at 2:3–4.
`Figure 1 of the ’452 patent is reproduced below.
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`Figure 1 is a schematic plan view of a multiple recording device
`management system. Id. at 2:21–26. 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 3:10–20. Multiple personal
`recording devices 18 can be synced with manager 12. Id. at 3:36–38, 4:20–
`24. Recording device manager 12 also may generate time stamps and
`unique serial numbers for a data recording, and create or collect metadata
`and transmit such time stamps, unique serial number, and metadata to
`recording devices 14, 18 for corroborating the recorded data. Id. at 3:25–30.
`In an embodiment, when recording device manager 12 receives a
`signal from a first recording device (e.g., personal recording device 18) that
`it 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 begin recording.2 Id. at 4:29–43.
`In another embodiment, recording device manager 12, upon receiving
`a signal indicating a triggering event, broadcasts a signal to recording
`devices 14 and 18, instructing both of them to begin recording. Id. at 14:41–
`48. Examples of a trigger event include the officer turning on the police
`vehicle sirens, police lights, or spotlight. Id. at 14:46–48. In yet another
`aspect of the invention, the time stamp and serial number are sent to
`recording devices 14 and 18 when the recording devices begin recording for
`a particular data recording event. Id. at 6:57–60. By beginning to record
`
`
`2 Either recording device (14, 18) may be the first or second recording
`device.
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`almost simultaneously as personal recording device 18, vehicle recording
`device 14 can capture additional video and audio data recordings of the
`situation encountered by the officer, including capturing from a different
`vantage point than the officer. Id. at 7:11–15. The time stamp and serial
`number corresponding to the captured and recorded video and audio data
`recordings from personal recording device 18 can be matched with the
`concurrent time stamp corresponding to the captured and recorded video and
`audio data recordings from vehicle recording device 14 to link the
`recordings chronologically. Id. at 7:15–21. According to the ’452 patent, it
`is desirable to forensically establish the timing of the events captured by the
`two recording devices and the relation of the recorded images and audio
`from the personal recording device to the recorded images and audio from
`the vehicle recording device. Id. at 7:21–25.
`
`C. Illustrative Claim
`Of the challenged claims, only claim 10 is independent. Claim 10 is
`illustrative of the challenged claims and is reproduced below.
`10. A system for recording multiple viewpoints of an event,
`comprising:
`a first recording device configured to be mounted on or
`configured to be carried by a law enforcement officer so
`as to record a first set of record data for the event;
`a second recording device, distinct from the first recording
`device, located so as to record a second set of record data
`for the event, said first set of record data being distinct
`from the second set of record; and
`a recording device manager operable to:
`receive a trigger signal,
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`said trigger signal being at least one of activation of a law
`enforcement vehicle’s siren, activation of said law
`enforcement vehicle’s signal lights, activation of said
`law enforcement vehicle’s spotlight, a vehicle crash
`event, and a vehicle speed, and
`broadcast, in response to receiving the trigger signal, at
`least one communication signal including correlation
`data to the first recording device and the second
`recording device instructing the first recording device
`to begin recording said first set of record data and
`instructing the second recording device to begin
`recording said second set of record data,
`wherein the first recording device stores the correlation
`data as metadata for the first set of record data and the
`second recording device stores the correlation data as
`metadata for the second set of record data, such that the
`first set of record data and the second set of record data
`can be correlated back to the event,
`wherein the first set of record data and the second set of
`record data are recorded beginning substantially
`simultaneously
`in
`response
`to
`the broadcast
`communication signal.
`
`Ex. 1001, 16:21–53.
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`III. PETITIONER’S CHALLENGES
`A. Prior Art Cited in Petitioner’s Challenges
`Petitioner cites the following references in its challenges to
`patentability.
`
`Reference and Relevant Dates
`
`Designation Exhibit No.
`
`U.S. Patent Application Pub. No. 2005/0083404
`Al (published Apr. 21, 2005)
`
`Pierce3
`
`Ex. 1014
`
`U.S. Patent No. 8,594,485 B2 (filed Dec. 30,
`2010; issued Nov. 26, 2013)
`
`U.S. Patent No. 8,805,431 B2 (filed July 31,
`2012; issued Aug. 12, 2014)
`
`Brundula
`
`Ex. 1015
`
`Vasavada
`
`Ex. 1010
`
`U.S. Patent Application Pub. No. 2014/0355951
`Al (published Dec. 4, 2014)
`
`Tabak
`
`Ex. 1009
`
`
`
`49):
`
`B. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability (Pet. 4, 25,
`
`Claims Challenged
`
`Statutory Basis
`
`References
`
`10–17 and 20
`
`10–17 and 20
`
`
`
`§ 103(a)
`
`§ 103(a)
`
`Pierce and Brundula
`
`Vasavada and Tabak
`
`
`3 For clarity and ease of reference, we only list the first named inventor.
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`IV. CLAIM CONSTRUCTION
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b); see Cuozzo Speed
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of
`the broadest reasonable interpretation standard as the claim construction
`standard to be applied in an inter partes review proceeding). Under the
`broadest reasonable interpretation standard, and absent any special
`definitions, claim terms generally are given their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art, in view
`of the specification. In re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed.
`Cir. 2007).
`For the purposes of this decision, and on the record presented, we
`determine that no claim terms need express interpretation. See Wellman,
`Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011)
`(explaining that “claim terms need only be construed ‘to the extent necessary
`to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
`
`
`V. ANALYSIS OF PETITIONER’S PRIOR ART CHALLENGES
`A. Obviousness over Pierce and Brundula
`Petitioner contends claims 10–17 and 20 are unpatentable under
`35 U.S.C. § 103(a) as obvious over the combination of Pierce and Brundula.
`Pet. 25–49. Petitioner submits a Declaration of Dr. Henry H. Houh
`(Ex. 1003) in support of its contentions. We have reviewed the parties’
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`contentions and supporting evidence. Given the evidence of record, we are
`not persuaded that Petitioner has established a reasonable likelihood of
`prevailing on this asserted ground as to any of these challenged claims for
`the reasons explained below.
`
`1. Relevant Principles of Law
`A claim is unpatentable under § 103(a) if the differences between the
`claimed subject matter and the prior art are such that the subject matter, as a
`whole, would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which the subject matter pertains.
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`obviousness is resolved on the basis of underlying factual determinations,
`including: (1) the scope and content of the prior art; (2) any differences
`between the claimed subject matter and the prior art; (3) the level of skill in
`the art; and (4) where in evidence, so-called secondary considerations.
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`Furthermore, determining obviousness requires considering whether
`two or more pieces of prior art could be combined, or a single piece of prior
`art could be modified, to produce the claimed invention, Comaper Corp. v.
`Antec, Inc., 596 F.3d 1343, 1351–52 (Fed. Cir. 2010), including whether a
`person of ordinary skill would have been motivated to modify or combine
`the prior art to achieve the claimed invention, see Belden Inc. v. Berk-Tek
`LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (citation omitted). To show
`obviousness, the analysis of the purported reasons to combine or modify the
`prior art “should be made explicit.” See KSR, 550 U.S. at 418. “To satisfy
`its burden of proving obviousness, a petitioner cannot employ mere
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`conclusory statements. The petitioner must instead articulate specific
`reasoning, based on evidence of record, to support the legal conclusion of
`obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380
`(Fed. Cir. 2016).
`
`2. Overview of Pierce (Ex. 1014)
`Pierce discloses a vehicle mounted data acquisition and display
`system and a method of recording and storing data in a vehicle mounted
`apparatus. Ex. 1014 ¶ 2.
`Figure 3 of Pierce is reproduced below.
`
`
`Figure 3 is a schematic illustrating the vehicle mounted data acquisition and
`display system of Pierce. Id. ¶ 17.
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`As shown in Figure 3, the data acquisition and display system
`includes central unit 30, which houses controller 31 and recording media 44.
`Id. ¶¶ 39, 46. Central unit 30 is connected to junction box 56 by line 58. Id.
`¶ 51. Junction box 56 includes communication ports, such as infrared,
`wireless, and microwave receiving ports. Id. The data acquisition and
`display system also includes a number of wired or wireless cameras 62
`located throughout the vehicle. Id. ¶ 52. Data recorded by cameras 62 is
`transmitted over lines 66 to junction box 56, and then from the junction box
`to controller 31 and recording media 44 via line 58. Id. ¶ 56. In an
`alternative embodiment, the data acquisition and display system can include
`a remote handheld video camera (not shown in Figure 3), which can be
`carried by an officer to record video when the officer leaves the vehicle to
`chase a suspect or to conduct an investigation. Id. ¶ 57. The data
`acquisition and display system of Pierce also includes microphones 68, such
`as internal microphone 68a and cordless or external microphone 68b. Id.
`¶¶ 61, 62. Cordless microphone 68b transmits sound data to wireless
`transceiver 70 connected to junction box 56. Id. ¶ 62. The data acquisition
`and display system includes speed measuring apparatus 77, such as a radar-
`based gun or a laser-based speed gun. Id. ¶ 69. Similar to data recorded by
`cameras 62, data recorded by microphones 68 or speed gun 77 is transmitted
`to junction box 56 and subsequently to controller 31 and recording media 44.
`Id. ¶¶ 61, 62, 69, Fig. 3.
`
`3. Overview of Brundula (Ex. 1015)
`Brundula describes systems and methods for presenting incident
`information provided by video devices and electronic weapons. Ex. 1015,
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`Abstract. Information from video devices and/or electronic weapons may be
`temporally aligned (e.g., synchronized) for presenting events that occurred
`in a temporally related manner. Id. The present time and the identification
`number of a weapon is sent to a video device for use to align the weapon log
`with the video device recordings. Id. at 8:32–43.
`
`4. Discussion
`a. Independent Claim 10
`Petitioner contends that the combination of Pierce and Brundula
`teaches or renders obvious all limitations of claim 10. Pet. 31–46. Patent
`Owner disagrees and argues that Petitioner’s analysis is deficient in several
`aspects. Prelim. Resp. 23–48. Our analysis focuses on the limitations
`identified by Petitioner as limitations 10[D], 10[G], and 10[K] (Pet. 36, 40,
`45), which recite “a recording device manager operable to” (10[D])
`“broadcast, in response to receiving the trigger signal, at least one
`communication signal including correlation data to the first recording device
`and the second recording device instructing the first recording device to
`begin recording said first set of record data and instructing the second
`recording device to begin recording said second set of record data” (10[G]),
`and “wherein the first set of record data and the second set of record data are
`recorded beginning substantially simultaneously in response to the broadcast
`communication signal” (10[K]).
`
`(1) Limitation 10[G]
`
`Claim 10 recites that “a recording device manager” receives a trigger
`signal and performs the step to “broadcast, in response to receiving the
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`trigger signal, at least one communication signal including correlation data
`to the first recording device and the second recording device instructing the
`first recording device to begin recording said first set of record data and
`instructing the second recording device to begin recording said second set of
`record data.” Ex. 1001, 16:30–31, 37–43. Claim 10 refers to the signal
`broadcast to the first and second recording devices as “the broadcast
`communication signal.” Id. at 16:52–53.
`
`i) Petitioner’s Contentions
`
`Petitioner contends that controller 31 of Pierce discloses “a recording
`device manager” recited in claim 10. Pet. 36–39. Petitioner also maps “a
`first recording device configured to be mounted on or configured to be
`carried by a law enforcement officer” to Pierce’s remote handheld video
`camera, and “a second recording device, distinct from the first recording
`device” to wired or wireless cameras 62, an internal microphone 68a, a
`wireless microphone 68b, and a radar or LIDAR speed gun 77 of Pierce. Id.
`at 32–34, 40.
`Petitioner asserts that Pierce discloses a broadcast communication
`signal “to the second recording device instructing the second recording
`device to begin recording” because, when the operator activates the siren or
`light bar, controller 31 of Pierce automatically activates a number of
`recording devices, such as cameras 62 and microphones 68 (i.e., the claimed
`“second recording device”). Id. at 40–41 (citing Ex. 1014 ¶¶ 76, 84, 85).
`With respect to the broadcast communication signal “to the first
`recording device . . . instructing the first recording device to begin
`recording,” however, Petitioner does not argue Pierce discloses a signal sent
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`by controller 31 to the remote handheld camera (i.e., the claimed “first
`recording device”) instructing the handheld camera to begin recording. See
`Pet. 40–41. Rather, Petitioner contends, citing the testimony of Dr. Houh,
`that it would have been an “obvious variant” of Pierce to modify “the
`wireless receiver [of junction box 56] to function as a wireless transceiver”
`so as to “transmit activation signals (record instructions) to both the remote
`handheld camera and the [wireless] camera 62a.” Id. at 38 (citing Ex. 1003
`¶¶ 164–166). Petitioner argues that a person of ordinary skill in the art
`would have understood that controller 31 would have been “capable of
`activating the remote handheld camera in a similar manner as the wireless
`microphone 68b when the wireless receiver of the junction box is simply
`modified to be a transceiver.” Id. at 41 (emphasis added) (citing Ex. 1003
`¶ 178). Petitioner does not indicate expressly whether any modification is
`necessary to the handheld camera of Pierce. In his Declaration, Dr. Houh
`testifies that “[a]ny modifications needed at the handheld camera would also
`be slight, and well within the skill of one skilled in the art . . . in view of the
`structure and operation of the wireless microphone.” Ex. 1003 ¶ 164
`(emphases added). Dr. Houh, however, does not explain what specific
`modification would be necessary to the handheld camera of Pierce. Id.
`Petitioner further contends that Brundula teaches “including
`correlation data” with the communication signal to the first recording device
`and the second recording device, as recited in claim 10, because Brundula
`discloses transmitting the identification number of a device and the local
`time of a device to other devices, including the video devices, in order to
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`establish temporal alignment for the data recorded by different devices.
`Pet. 42 (citing Ex. 1015, Abstract, 7:21–38, 8:32–43, 18:33).
`
`ii) Patent Owner’s Arguments
`
`Patent Owner argues that Pierce does not teach that controller 31
`sends any signal to the remote handheld camera, as evidenced by the fact
`that Petitioner “never asserts” Pierce teaches this feature. Prelim. Resp. 24–
`25 (citing Pet. 36, 38). Addressing Petitioner’s “obvious variant” argument
`to supply this limitation missing from Pierce, Patent Owner asserts that
`Petitioner’s argument and Dr. Houh’s testimony are conclusory, and do not
`include the necessary reasoned analysis and evidentiary support to establish
`obviousness, especially when the missing limitation is a key feature of the
`invention. Id. at 35 (citing Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355,
`1362 (Fed. Cir. 2016)), 40–44. Patent Owner argues, therefore, Petitioner
`has not met its burden to show that the proposed modification to Pierce
`would have been obvious to a person of ordinary skill in the art. Id. at 43–
`44.
`
`iii) Analysis
`
`We agree with Patent Owner that Petitioner does not show Pierce
`teaches a broadcast communication signal “to the first recording device . . .
`instructing the first recording device to begin recording,” as recited in claim
`10. As discussed above, Petitioner does not argue Pierce discloses a signal
`sent by controller 31 to the remote handheld camera (i.e., the claimed “first
`recording device”) instructing the handheld camera to begin recording. See
`Pet. 40–41. Indeed, we do not discern anything in Pierce that teaches this
`feature.
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`Pierce describes the use of a remote handheld camera in paragraph 57.
`In that paragraph, Pierce describes that a remote handheld video camera can
`be carried by an officer to record video when the officer leaves the vehicle to
`chase a suspect or to conduct investigation. Ex. 1014 ¶ 57. Pierce also
`describes that, when the officer returns to the vehicle, the officer can upload
`recorded video data from the handheld camera to controller 31 and recording
`media 44. Id. Alternatively, the handheld camera could “wirelessly
`communicate video data to the controller 31 . . . , in real-time or upon the
`conclusion of the recording session.” Id. (emphasis added). Hence, the only
`communication between the controller and the handheld camera described in
`Pierce is transmission of video data from the handheld camera to controller
`31. Therefore, Petitioner does not cite, nor do we discern, anything in Pierce
`that teaches transmission of a broadcast communication signal from
`controller 31 to the handheld camera that instructs the handheld camera to
`begin recording.
`Addressing next the parties’ contentions regarding obviousness, we
`agree with Patent Owner that Petitioner’s arguments and evidence are
`insufficient to show that the missing limitation would have been obvious to a
`person of ordinary skill in the art. As discussed above, Petitioner proposes
`to make two separate modifications to the teachings of Pierce to supply the
`missing limitation—i.e., (1) modifying the wireless receiver of junction box
`56 to function as a wireless transceiver (Pet. 38, 41), and (2) modifying the
`remote handheld camera in an unspecified way as “needed,” “in view of the
`structure and operation of the wireless microphone [68b]” (Ex. 1003 ¶ 164).
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`Pierce describes “cordless . . . microphone 68b” as “a walky-talky, a
`two-way radio, etc.” Ex. 1014 ¶ 62. Neither Petitioner nor Dr. Houh
`explains what specific modification to the remote handheld camera would
`have been necessary or how a person of ordinary skill would have been
`motivated to make the necessary modification based on “the structure and
`operation” of a walky-talky or a two-way radio. In addition, Dr. Houh does
`not explain what specific modification was “well within the skill of one
`skilled in the art” and why one would make such a modification. See
`Ex. 1003 ¶ 164. Further, Dr. Houh does not cite any evidence in support of
`his testimony. See id.; 37 C.F.R. § 42.65(a) (“Expert testimony that does not
`disclose the underlying facts or data on which the opinion is based is entitled
`to little or no weight.”). Hence, we agree with Patent Owner that, at least
`with respect to the proposed modification to the remote handheld camera of
`Pierce, Petitioner’s argument and Dr. Houh’s testimony are conclusory, are
`based on hindsight, and do not include a reasoned analysis and evidentiary
`support sufficient to establish obviousness. See Magnum Oil Tools, 829
`F.3d at 1380.
`Petitioner’s articulated rationale for modifying Pierce as proposed is
`also insufficient for the additional reason that Petitioner’s analysis is
`incomplete. Neither Petitioner nor Dr. Houh explains in sufficient detail the
`nature of Petitioner’s proposed modification to the remote handheld camera
`of Pierce. To the extent that Petitioner argues to modify the junction box
`only and not necessarily the handheld camera, Petitioner does not explain
`why the remote handheld camera, as described in Pierce and without any
`modification, would have been able to receive and process the signal from
`
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`IPR2017-00515
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`the wireless transceiver of the modified junction box to allow the controller
`of Pierce to remotely initiate recording at the handheld camera. Hence,
`Petitioner’s analysis is insufficient because Petitioner does not explain in
`sufficient detail how the proposed modification is supposed to work. See
`Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 994 (Fed. Cir. 2017)
`(“[A] clear, evidence-supported account of the contemplated workings of the
`combination is a prerequisite to adequately explaining and supporting a
`conclusion that a relevant skilled artisan would have been motivated to make
`the combination and reasonably expect success in doing so.”) (emphases
`added).
`Petitioner’s arguments and Dr. Houh’s testimony seem to be directed
`to the contention that it was technologically feasible at the time of the
`invention of the ’452 patent to modify the system of Pierce as proposed, and
`enable the controller to remotely initiate or activate recording at the
`handheld camera. See, e.g., Pet. 41 (“A [person of ordinary skill in the art]
`would understand that the controller 31 would be capable of activating the
`remote handheld camera in a similar manner as the wireless microphone 68b
`when the wireless receiver of the junction box is simply modified to be a
`transceiver.” (emphases added)) (citing Ex. 1003 ¶ 178 (“controller 31 is
`also capable of activating these wireless cameras”)). Although not discussed
`in the Petition, Dr. Houh in his Declaration states that the proposed
`modification would have been “obvious to try” for a person of ordinary skill
`in the art because “[t]here are only a few predictable solutions to activate
`both the handheld camera and the cameras 62.” Ex. 1003 ¶ 166. An
`obvious to try rationale generally requires some identification of “a design
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`IPR2017-00515
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`
`need or market pressure to solve a problem” before looking at the “finite
`number of identified, predictable solutions.” See KSR, 550 U.S. at 421.
`Neither Dr. Houh nor Petitioner presents such an analysis. Instead,
`Dr. Houh opines that “[o]ne skilled in the art could also program the system
`to employ the transceiver 70 to bi-directionally communicate with both the
`microphone 68b and the cameras, or to include addition transceivers 70 for
`this purpose.” Ex. 1003 ¶ 166 (emphasis added). Hence, Dr. Houh’s
`purported “obvious to try” rationale appears to be nothing more than the
`statement that a person of ordinary skill in the art could have made the
`proposed modification.
`Therefore, we agree with Patent Owner that Petitioner’s contentions
`and Dr. Houh’s opinions say no more than that a person of ordinary skill in
`the art could have made the proposed modification. Prelim. Resp. 43 (citing
`Ex. 1003 ¶¶ 166–168). However, “obviousness concerns whether a skilled
`artisan not only could have made but would have been motivated to make the
`combinations or modifications of prior art to arrive at the claimed
`invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d at 1073 (citing InTouch
`Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)).
`Therefore, we find the rationale articulated by Petitioner for modifying
`Pierce in the manner asserted by Petitioner to be insufficient.
`Because Petitioner relies on Brundula only for the “including
`correlation data” limitation recited in claim 10 (see Pet. 42), Brundula does
`not cure the deficiencies in Petitioner’s obviousness analysis with respect to
`the limitation identified by Petitioner as limitation 10[G]. Based on the
`foregoing, Petitioner does not demonstrate that Pierce alone or Pierce
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`
`combined with Brundula teaches or renders obvious “a recording device
`manager” performing the step to “broadcast, in response to receiving the
`trigger signal, at least one communication signal including correlation data
`to the first recording device and the second recording device instructing the
`first recording device to begin recording said first set of record data and
`instructing the second recording device to begin recording said second set of
`record data,” as recited in claim 10.
`
`(2) Limitation 10[K]
`
`Petitioner identifies as limitation 10[K] the recitation “wherein the
`first set of record data and the second set of record data are recorded
`beginning substantially simultaneously in response to the broadcast
`communication signal.” Pet. 45. Petitioner contends that Pierce teaches or
`renders this limitation obvious. Id. at 45–46.
`Petitioner asserts that controller 31 of Pierce automatically activates a
`number of recording devices, such as cameras 62 and microphones 68, when
`the operator activates the siren or light bar. Id. at 45 (citing Ex. 1014 ¶ 84).
`Petitioner argues that, therefore, “the record activation of the cameras 62
`(i.e., second recording device) and the microphones 68 occurs at the same
`time.” Id. at 45–46.
`Petitioner does not argue, however, Pierce teaches that the recording
`at the remote handheld camera (i.e., the claimed “first recording device”)
`and cameras 62 and microphones 68 (i.e., the claimed “second recording
`device”) begins substantially simultaneously. Rather, Petitioner contends
`that the simultaneous activation of cameras 62 and microphones 68 “could
`obviously also include simultane
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