UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`TRANSCORE, LP,
`Petitioner
`
`v.
`
`AXCESS INTERNATIONAL, INC.,
`Patent Owner
`
`________________
`
`Case IPR2018-00048
`Patent No. 7,286,158
`________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`

`Case No.: IPR2017-00048
`Patent No: 7,286,158
`
`Attorney Docket No. AXCESS001-IPR
`Patent Owner’s Preliminary Response
`
`TABLE OF CONTENTS
`INTRODUCTION................................................................................................................. 1
`I.
`II. OVERVIEW OF THE ’158 PATENT ................................................................................ 2
`A.
`Prosecution History........................................................................................................ 3
`III.
`SUMMARY OF CITED REFERENCES ........................................................................ 4
`A.
`Clare ................................................................................................................................ 4
`B.
`Vaios ................................................................................................................................ 6
`C.
`Enright............................................................................................................................. 7
`IV. CLAIM CONSTRUCTION .............................................................................................. 8
`A.
`“integrated remote monitoring services”..................................................................... 9
`B.
`“RFID system”.............................................................................................................. 12
`C.
`“receiving and storing radio frequency identification (RFID) data from an RFID
`system at a remote facility of a subscriber”.......................................................................... 12
`D.
`“remote facility” ........................................................................................................... 13
`E.
`“receiving and storing video data from a video system at the facility”................... 13
`F.
`“alert condition”........................................................................................................... 14
`V. Level of Ordinary Skill in the Art ..................................................................................... 15
`VI.
`THE BOARD SHOULD DENY GROUNDS A-D AGAINST ALL THE
`CHALLENGED CLAIMS. ........................................................................................................ 16
`A.
`Ground A Should be Denied. ...................................................................................... 16
`Claim 1....................................................................................................................... 16
`1.
`Claim 2....................................................................................................................... 26
`2.
`Claim 3....................................................................................................................... 26
`3.
`Claim 5....................................................................................................................... 27
`5.
`Claim 8....................................................................................................................... 27
`6.
`Claim 9....................................................................................................................... 28
`7.
`Claim 10..................................................................................................................... 28
`8.
`Claim 11..................................................................................................................... 29
`9.
`10. Claim 12..................................................................................................................... 29
`Ground B Should be Denied........................................................................................ 29
`Ground C Should Be Denied....................................................................................... 31
`Claim 1....................................................................................................................... 32
`Claim 2....................................................................................................................... 33
`
`B.
`C.
`
`1.
`2.
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`Attorney Docket No. AXCESS001-IPR
`Case No.: IPR2017-00048
`Patent Owner’s Preliminary Response
`Patent No: 7,286,158
`3.
`Claim 3....................................................................................................................... 33
`4.
`Claim 4....................................................................................................................... 34
`5.
`Claim 5....................................................................................................................... 34
`6.
`Claim 8....................................................................................................................... 34
`7.
`Claim 9....................................................................................................................... 35
`8.
`Claim 10..................................................................................................................... 35
`9.
`Claim 11..................................................................................................................... 35
`10. Claim 12..................................................................................................................... 36
`Ground D Should Be Denied....................................................................................... 36
`D.
`VII. CONCLUSION ................................................................................................................ 37
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`Case No.: IPR2017-00048
`Patent No: 7,286,158
`
`Exhibit
`Ex. 2001
`
`Attorney Docket No. AXCESS001-IPR
`Patent Owner’s Preliminary Response
`EXHIBIT LIST
`Description
`Declaration of Allan R. Griebenow
`
`iii
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`

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`Case No.: IPR2017-00048
`Patent No: 7,286,158
`I.
`INTRODUCTION
`Pursuant to 37 C.F.R. § 42.107(a), patent owner Axcess International, Inc.
`
`Attorney Docket No. AXCESS001-IPR
`Patent Owner’s Preliminary Response
`
`(“Patent Owner”), submits this Preliminary Response to the Petition for Inter Partes
`
`Review (“Petition”) of U.S. Patent No. 7,286,158 (the “’158 Patent”) (Exhibit 1001
`
`to Petition) filed by Transcore, LP (“Petitioner”). Petitioner challenges claims 1-5,
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`8-12, and 19-21 of the ’158 Patent based on four grounds. Ground A challenges
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`claims 1-5 and 8-12 as obvious under 35 U.S.C. § 103 by U.S. Patent No. 5,745,036
`
`to Clare (“Clare”) (Exhibit 1004 to Petition) in light of U.S. Patent No. 6,271,752 to
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`Vaios (“Vaios”) (Exhibit 1005 to Petition). Ground B challenges claims 19-21 as
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`obvious under 35 U.S.C. § 103 by Clare in light of European Patent Application No.
`
`0 921 505 to Cox (“Cox”) (Exhibit 1006 to Petition). Ground C challenges claims
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`1-5 and 8-12 as obvious under 35 U.S.C. § 103 by Clare in light of U.S. Patent No.
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`6,583,813 to Enright et al. (“Enright”) (Exhibit 1007 to Petition). Ground D
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`challenges claims 19-21 as obvious under 35 U.S.C. § 103 by Clare in view of itself.
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`All four grounds advanced by petitioner are based upon flawed assumptions
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`and legal errors. For example, Petitioner relies on Clare as the primary reference for
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`all four grounds. However, Clare does not disclose either “integrated remote
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`monitoring services” or “receiving and storing video data from a video system at the
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`facility,” and none of the secondary references remedy these defects. For example,
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`the inventions disclosed in Clare do not “receiv[e] and stor[e] video from a video
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`1
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`Attorney Docket No. AXCESS001-IPR
`Case No.: IPR2017-00048
`Patent Owner’s Preliminary Response
`Patent No: 7,286,158
`system at the facility.” In Clare, only the RFID data is received from a remote
`
`facility and stored, while the video data is stored entirely at the facility. Petitioner
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`does not even contend that
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`these defects are remedied by a combination of
`
`references. Additionally, Clare does not disclose—as Petitioner contends—
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`transmitting the notice of the alert condition along with the video image for delivery
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`to a manager of the facility. Petitioner’s arguments in this regard have already been
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`raised in a reexamination proceeding and have been rejected. Furthermore, a
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`PHOSITA would have no motivation to combine Clare with Vaios (in Ground A),
`
`as Clare specifically teaches away from non-fixed cameras which monitor a
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`predesignated location only, and which would not achieve their intended purpose of
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`the pitch, zoom, or tilt were changed.
`
`II. OVERVIEW OF THE ’158 PATENT
`The ’158 Patent, entitled “System and Method for Providing Integrated
`
`Remote Monitoring Services,” results from an application filed on December 22,
`
`1999, and issued on October 23, 2007. It contains 23 claims in total, and claims 1,
`
`14, and 19 are independent. The ’158 Patent describes “integrated remote
`
`monitoring services that allow a subscriber to remotely monitor, evaluate, and
`
`control operations at a facility.” Ex. 1001 at 1:49-42. Earlier systems had “remote
`
`‘look-in’ capabilities . . . [but did] not provide an integrated solution for business
`
`owners.” Id. at 1:39-42. The invention of the ’158 Patent integrates the remote
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`Attorney Docket No. AXCESS001-IPR
`Case No.: IPR2017-00048
`Patent Owner’s Preliminary Response
`Patent No: 7,286,158
`access control systems with the video systems, allowing a user to both know when
`
`an access attempt has occurred as well as verify remotely the nature of the attempt,
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`e.g., whether it is an authorized user or an unauthorized attempt at access. Id. at 27-
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`42. One of the key inventions of the ’158 Patent is the ability to “reciev[e] and stor[e]
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`radio frequency identification data (RFID) data from an RFID system at a remote
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`facility of a subscriber” as well as receive and store video data “from a video system
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`at the facility” and to provide the subscriber “with access to and control of a video
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`camera in the video system at the facility.” Id. at 1:55-62. Additionally, the ’158
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`Patent discloses combining remote video monitoring systems with remote access
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`control systems and linking the two separate types of data from each system, thus
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`allowing for storage of integrated location and video data.
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`Id. at 6:54-67 (“The
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`location data is embedded into video frame headers for transmission and storage”).
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`A. Prosecution History
`Petitioner’s argument is based on a glaring misrepresentation, namely that
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`“[t]he primary examiner denied the inter partes reexamination [previously filed
`
`against the ‘158 Patent] (the “Reexam”), finding Clare was deficient with respect to
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`a single claim element of each of independent claims 1 and 19 of the ’158 Patent.”
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`Petition at 4.
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`In other words, Petitioner’s argument is based upon the false
`
`presumption that the examiner explicitly found that Clare disclosed all elements but
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`one in claims 1 and 19. This is simply not the case.
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`In point of fact, neither the
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`Attorney Docket No. AXCESS001-IPR
`Case No.: IPR2017-00048
`Patent Owner’s Preliminary Response
`Patent No: 7,286,158
`Order Denying Request for Inter Partes Reexamination (“Order”) which denied the
`
`reexamination request, nor the Decision on Petition, which denied the Petition to
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`Reverse Denial of Request for Reexamination (“Termination Order”) contain any
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`such statements. Nowhere in either of these decisions did either the examiner or the
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`director of the reexamination unit make any suggestion, statement, or finding that
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`Clare disclosed all of the elements with the sole exception of but one for claims 1
`
`and 19. Petitioner’s statements to the contrary are simply false. The only finding in
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`either the Order or the Termination Order was that “Clare does not teach, ‘providing
`
`the subscriber with access to and control of a video camera in the video system at
`
`the facility’ in regards to claim 1” and that “Clare does not teach, ‘electronically
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`transmitting notice of the alert condition along with the video image for delivery to
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`a manage of the facility’ in regards to claim 19.” Ex. 1010 at 10, 28-29.
`
`III.
`
`SUMMARY OF CITED REFERENCES
`A. Clare
`Clare describes an “electronic article security system” for monitoring “articles
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`sold by a retail store to detect shrinkage.” Ex. 1004, Abstract. The invention of
`
`Clare uses a combination of recorded RFID data and video data in order to monitor
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`the ingress and egress of items in a retail store. Id at 2:34-50. Figure 1, reproduced
`
`below, demonstrates the functionality of Clare.
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`Attorney Docket No. AXCESS001-IPR
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`As shown in figure 1, Clare describes a system encompassing three separate physical
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`locations, i.e., “retail distribution center 14,” “headquarters 17,” and “retail store
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`16”. At “retail distribution center 14” the articles 12 to be tracked are provided RFID
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`tags at the distribution center before being sent to the second location, “retail store
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`16”. Id. at 3:51-55. The retail store the system includes an exit 20, which is covered
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`by camera 58 and interrogator 42.
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`Id. at 9:45-50.
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`Interrogator 42 “detects the
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`presence of the purchased article 12” using the RFID tags 22. Id. at 4:4-6. The “RF-
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`ID data is appended with date and time information regarding when the security tag
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`22 was detected and sent to the remote computer 38 at the headquarters 17.” Id. at
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`6:39-43. Video signals from camera 58 are sent to “video recorder 60 for storing the
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`Patent No: 7,286,158
`video signal on a portable video storage medium 62, such as a videotape.” Id. at
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`7:40-44.
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`In addition to being stored at video storage medium, the “video signals
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`output from the video recorded 60 may be sent directly to headquarters 17”. Id. at
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`10:23-25. In contrast, the “RF-ID data . . . may be stored locally at the store 16 and
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`downloaded at periodic intervals to the headquarters.” Id. at 10:20-23. The third
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`location is the “retail store headquarters 17” which includes a “central computer 70”
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`which contains an “event data base” which stores RFID data and a “transaction
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`database” which stores transaction data. Id. at 8:66-9:14. The RFID and video data
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`are stored separately, with the RFID data being stored at “central computer 70”
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`which is at “retail store headquarters 17” while the video data is stored on “portable
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`video storage medium 62” at the retail store 16. Id. at 7:40-44. The RFID data and
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`Transaction data are compared to detect discrepancies, such as those shown in Fig.
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`5(c). The invention of Clare is, thus, able to provide monitoring of articles to detect
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`shrinkage.
`
`B. Vaios
`Vaios describes a system for remote monitoring of multiple facilities. Vaios
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`discloses a “security surveillance area [that] comprises a local computer system, a
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`network interface, and a camera having a motion sensor.” Ex. 1005 at 2:10-12. The
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`local computer system is connected to the video camera “so that video, sound, and
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`motion sensor data can be transmitted from the camera to the local computer.” Id.
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`Patent No: 7,286,158
`at 2:14-15.
`“When the motion sensor detects an obstruction the camera starts
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`recording and the local computer system notifies a remote individual . . . [who] can
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`logon to the local computer system via the communications network and obtain
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`additional information, control the video camera remotely, or view video images.”
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`Id. at Abstract. The camera can be manipulated using a web browser “including
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`focus, rotation, view, peak, dimming, play, record, fast forward, etc.” Id. at 2:45-
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`49.
`
`C. Enright
`Enright discloses a system and method for capturing image data in response to
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`programmed sequences. Ex. 1007 at Abstract. The invention of Enright includes an
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`ATM with a camera. Id. at 4:49-54. When “a triggering event occurs, the capture
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`of images and other actions occur in a predetermined sequence.” Id. at 2:43-45. The
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`captured image data and transaction data can be accessed via a user terminal
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`connected to a server via a computer network. Id. at 5:13-14.
`
`D. Cox
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`Cox is a European Patent Application claiming a priority date of December 4,
`
`1997, and a publication date of June 9, 1999. It pertains to a security system for use
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`in a retail environment employing a number of tags attached to retail goods. Ex.
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`1006 at Abstract. According to the disclosure:
`
`Whenever the EAS detector detects the presence of an active tag, it
`sends an alert message to the control computer, by way of the data
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`Attorney Docket No. AXCESS001-IPR
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`Patent Owner’s Preliminary Response
`Patent No: 7,286,158
`collection device 21. Alert massages may also be generated from other
`sources. For example a checkout may generate an alert message when
`a potentially suspicious event, such as “no sale” or a refund occurs, as
`described in our co-pending European Patent application no.
`95306822.8.
`Id. at ¶ 14. The disclosure goes on to state:
`When the control computer receives an alert message, it first checks the
`priority level of the event indicated by the message, and compares it
`with the priorities of other events currently being handled. If the priority
`level is high enough, the control computer selects one of the CCTV
`cameras and points it at the origin of the alert. In particular, if the alert
`message came from an EAS detector, the control computer points one
`of the CCTV cameras at that detector, so as to capture a picture of the
`person currently passing that detector. At the same time, the control
`computer sends a signal to the CCTV switch, causing it to connect the
`selected CCTV camera to the VCR, and sends the alert message to the
`VCR.
`Id. at ¶ 14. Accordingly, Cox does not disclose a determination of “whether
`
`the RFID action corresponds to a pre-defined alert condition” as disclosed in
`
`the ‘158 Patent and required by Claim 19. Cox merely discloses sending an
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`alert message when the presence of an active RFID tag is detected.
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`IV. CLAIM CONSTRUCTION
`For the purposes of IPR, each claim of the ’158 patent is to be “given its
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`broadest reasonable construction in light of the specification of the patent in which
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`it appears” (“BRI”). 37 C.F.R. § 42.100(b). “While the Board must give the terms
`
`their broadest reasonable construction, the construction cannot be divorced from the
`
`specification and the record evidence.” In re NTP, Inc., 654 F.3d 1279, 1288 (Fed.
`
`Cir. 2011). “This court’s cases on BRI make clear that the proper BRI construction
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`Attorney Docket No. AXCESS001-IPR
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`Patent Owner’s Preliminary Response
`Patent No: 7,286,158
`is not just the broadest construction, but rather the broadest reasonable construction
`
`in light of the specification.” In re Man Mach. Interface Techs. LLC, 822 F.3d 1282,
`
`1287 (Fed. Cir. 2016).
`
`A. “integrated remote monitoring services”
`The term “integrated remote monitoring services” is clearly defined in the
`
`’158 Patent as “services that allow a subscriber to remotely monitor, evaluate, and
`
`control operations at a facility.” Id. at 1:49-51. Furthermore, it must include the
`
`collection of data “using automatic location technology and digital video networking
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`and recording technology.” Id. at 2:25-28. The specification clearly requires that
`
`the integration be of location technology and data with video technology and data.
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`Id. at 6:62-66 (“The local computer system 78 may combine location data with
`
`multi-media data to provide enhanced and integrated services for subscribers 18. In
`
`a particular embodiment, data is streamed out of the location and video system. The
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`location data is embedded into video frame headers for transmission and storage.”).
`
`Figures 2 and 3, reproduced below, support this construction.
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`Attorney Docket No. AXCESS001-IPR
`Patent Owner’s Preliminary Response
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`For example, Fig. 2 is an illustration of the inventions deployed in a remote
`
`facility. It includes cameras 110, 112, 114, 116, 118, 120, 122, and 124 and access
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`control systems 92, 94, 96, and 98.
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`It also includes computer system 7 which
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`“collects data using automatic location identification technology and digital video
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`networking and recording technology.”
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`Id. at 4:50-53. Thus the “integration”
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`Attorney Docket No. AXCESS001-IPR
`Case No.: IPR2017-00048
`Patent Owner’s Preliminary Response
`Patent No: 7,286,158
`shown in figure 2 is the integration of location systems and data with video systems
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`and data. Ex. 2001 at ¶ 44
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`Fig. 3 illustrates the central host 16 which stores the received location data
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`162 and video data 164. Ex. 1001 at 7:10-16. This information is stored in database
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`160 in the form of activity records 160 which contain a combined record 166 which
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`includes “location and video information”.
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`Id. at 7:26-30. This supports a
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`construction that the “integration” must be of location systems and data with video
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`systems and data. As such, the proper construction is “integrated location systems
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`and data with video systems and data services.” Ex. 2001 at ¶ 45
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`Patent No: 7,286,158
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`Attorney Docket No. AXCESS001-IPR
`Patent Owner’s Preliminary Response
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`B. “RFID system”
`Petitioner’s proposed construction of this term is inconsistent with the
`
`broadest reasonable interpretation of this term. Petitioner proposes the construction
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`“a conventional radio frequency identification (RFID) system that includes a base
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`station with a reader and a control/processing unit that processes RFID data.”
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`However, under event the broadest reasonable interpretation, an RFID system would
`
`include radio tags. Ex. 2001 at ¶ 46. Therefore, a proper construction of RFID
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`system for purposes of this review is “a system that includes radio frequency
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`identification (RFID) reader operable to receive RFID data from radio tags and a
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`control/processing unit that processes RFID data.” Id. ¶ 46
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`C. “receiving and storing radio frequency identification (RFID) data
`from an RFID system at a remote facility of a subscriber”
`Petitioner’s construction for the phrase “receiving and storing radio frequency
`
`identification (RFID) data from an RFID system at a remote facility of a subscriber”
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`is incorrect and directly contradicted by the specification and the claims themselves.
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`As shown in figures 1 and 2, RFID data is received from monitored facilities,
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`denoted as MF 14 in figure 1, which are depicted in full in figure 2. Ex. 1001 at
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`Figs. 1 and 2. The data is received at central host 16 which stores the received RFID
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`data.
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`Id. at 7:10-16. The data is then retrievable by Subscriber 18, who is also
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`depicted as remote from both Monitored Facility 14 and Host 16. As such, the proper
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`Attorney Docket No. AXCESS001-IPR
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`Patent No: 7,286,158
`construction for this term is “receiving and storing at a facility remote from a remote
`
`facility radio frequency identification (RFID) data from an RFID system at a remote
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`facility of a subscriber.” Ex. 2001 at ¶ 47
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`D. “remote facility”
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`Petitioner appears to conflate the terms “remote facility,” “remote monitored
`
`facility,” and “monitored facilities.” Petition at 15.
`
`In the context of the claims,
`
`however, it is clear that the broadest reasonable construction of the term remote
`
`facility is “a facility or area having an RFID system and a video system.” ‘158
`
`Patent, Claim 1. The specification states that, in one embodiment, the inventive
`
`system includes:
`
`geographically distributed monitored facilities (MF) 14, a central host
`16, and subscribers 18. The monitored facilities 14 each include a data
`collection system that collects video, audio, location, and other data at
`the facility 14 based upon the specific business needs of a subscriber
`18. The data, once collected, may be viewed live, processed and stored
`at the monitored facility 14, or retrieved and processed at the central
`host 16.
`Ex. 1001 at 3:60-4:1. This is consistent with the broadest reasonable construction
`
`of remote facility is “a facility having an RFID system and a video system.” Ex.
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`2001 at ¶ 48.
`
`E. “receiving and storing video data from a video system at the
`facility”
`Petitioner’s construction for the phrase “receiving and storing video data from
`
`a video system at
`
`the facility” is incorrect and directly contradicted by the
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`Patent No: 7,286,158
`specification and the claims themselves. As shown in figures 1 and 2, video data is
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`received from monitored facilities, denoted as MF 14 in figure 1, which are depicted
`
`in full in figure 2. Id. at Figs. 1 and 2. The data is received at central host 16 which
`
`stores the received video data.
`
`Id. at 7:10-16. The data is then retrievable by
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`Subscriber 18, who is also depicted as remote from both Monitored Facility 14 and
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`Host 16. As such, the proper construction for this term is “receiving and storing at
`
`a facility remote from a remote facility video data from a video system at the
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`facility.” Ex. 2001 at ¶ 49
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`F. “alert condition”
`
`The specification describes alert conditions in numerous instances. See, e.g.,
`
`Ex. 1001 at 8:20-28. It states:
`
`The alert processor 184 receives alerts generated by the monitored
`facilities 14 and/or generates alerts and response to information
`uploaded from the monitored facilities 14. As described in more detail
`below, the alert processor notifies the subscribers 18 of an alert
`condition in order to allow them to suitably respond. The alerts may be
`a burglar alarm, fire alarm, or subscriber-defined operation conditions
`such as less than a minimum number of employees at a facility or
`performing a specified function at a facility.
`Id. The processing of an alert condition of the invention—therefore—requires more
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`than simply the detection of the presence of a radio tag, but rather a decisional step
`
`based on information included in the alert condition. Ex. 2001 at ¶ 50. In the context
`
`of Claim 19, an RFID action must correspond to an alert condition. Ex. 1001 at
`
`Claim 19. Accordingly, an alert condition of the invention of Claim 19 must be
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`Attorney Docket No. AXCESS001-IPR
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`Patent Owner’s Preliminary Response
`Patent No: 7,286,158
`“information corresponding to an RFID action that can be processed by an alert
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`processor.” Ex. 2001 at ¶ 50.
`
`V.
`
`Level of Ordinary Skill in the Art
`
`Petitioner contends that the appropriate level of skill in the art “would have a
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`Bachelor’s Degree in Electrical Engineering, Computer Engineering, Computer
`
`Science, or equivalent training, and approximately three years of industry experience
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`related to RFID, video control/transmission and/or general communications.”
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`Petition at 18. “A person of ordinary skill in the art is . . . presumed to be one who
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`thinks along the line of conventional wisdom in the art and is not one who undertakes
`
`to innovate, whether by patient, and often expensive, systematic research or by
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`extraordinary insights, it makes no difference which.” Standard Oil Company v.
`
`American Cyanamid Company, 774 F.2d 448, 455 (Fed. Cir. 1995). At the time of
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`the invention, the integration of video data with RFID data was extraordinary due,
`
`among other things, to the amount of data involved in video collection. Ex. 2001 at
`
`¶ 39. Accordingly, knowledge of video control/transmission was certainly outside
`
`the scope of those of ordinary skill in the art. Id. at ¶ 39. Rather than Petitioner’s
`
`unsupportable suggestion, a person of ordinary skill in the art of the inventions
`
`claimed in the ‘158 patent would have a bachelor’s degree in electrical engineering
`
`or equivalent experience in the field of RFID systems. Id.
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`Attorney Docket No. AXCESS001-IPR
`Case No.: IPR2017-00048
`Patent Owner’s Preliminary Response
`Patent No: 7,286,158
`VI. THE BOARD SHOULD DENY GROUNDS A-D AGAINST ALL
`THE CHALLENGED CLAIMS.
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`The Petitioner proposes four grounds for unpatentability: (a) that claims 1-5
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`and 8-12 are rendered obvious over Clare in light Vaios; (b) that claims 19-21 are
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`rendered obvious over Clare in light Cox; (c) that claims 1-5 and 8-12 are rendered
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`obvious over Clare in light of Enright; and (d) that claims 19-21 render obvious by
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`Clare. All four grounds fail for the reasons discussed below.
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`A. Ground A Should be Denied.
`Petitioner’s Ground A should be denied as the combination of Clare and Vaios
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`fails to disclose all the elements of claims 1-5 and 8-12. For example, the
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`combination of Clare and Vaios fails to disclose either “providing integrated remote
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`monitoring services” or “receiving and storing video data from a video system at the
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`facility.” Furthermore, a PHOSITA would not have been motivated to combine
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`Clare and Vaios as Clare specifically teaches away from “providing the subscriber
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`with access to and control of a video camera in the video system at the facility.” For
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`these reasons, the petition should be denied.
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`1. Claim 1
`a. Clare fails to disclose “providing integrated remote
`monitoring services”
`The Petition fails to show that the combination of Clare and Vaios discloses
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`“providing integrated remote monitoring services.” Generally, “[a] preamble is not
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`limiting” unless it “it recites essential structure or steps, or if it is ‘necessary to give
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`Attorney Docket No. AXCESS001-IPR
`Case No.: IPR2017-00048
`Patent Owner’s Preliminary Response
`Patent No: 7,286,158
`life, meaning, and vitality’ to the claim.” Symantec Corp. v. Comput. Assocs. Int'l,
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`Inc., 522 F.3d 1279, 1288 (Fed. Cir. 2008) (citing Catalina Mktg. Int'l, Inc. v.
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`Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002)). A preamble should be
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`construed as a limitation if there is a “clear reliance on the preamble during
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`prosecution to distinguish the claimed invention from the prior art [that] transforms
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`the preamble into a claim limitation because such reliance indicates use of the
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`preamble to define, in part, the claimed invention.” Id. “Additionally, dependence
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`on a particular disputed preamble phrase for antecedent basis may limit claim scope
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`because it indicates a reliance on both the preamble and claim body to define the
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`claimed invention.” Catalina, 289 F.3d at 808. Here, the preamble should be
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`construed as a limitation as it does in fact give meaning to the claim.
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`First, the term “integrated remote monitoring services” provides an antecedent
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`basis for the term “remote.” Id. at claim 1. For example, it limits the claim to
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`systems where the integrated remote monitoring is “remote” from “a remote facility
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`of a subscriber” and requires that the RFID and video data be “reciev[ed] and
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`stor[ed]” at a location “remote” from the “remote facility.” Ex. 1001 at claim 1.
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`Second, the specification uses the phrase “integrated remote monitoring services” to
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`distinguish the invention of claim 1 from the prior art.
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`Id. at 1:35-52 (“More
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`recently, remote monitoring capabilities have improved with the advent of. This
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`technology allows remote personnel to connect to a video camera in a facility and to
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`Attorney Docket No. AXCESS001-IPR
`Case No.: IPR2017-00048
`Patent Owner’s Preliminary Response
`Patent No: 7,286,158
`control or determine conditions at the facility. While [video tele surveillance
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`technologies] “look-in” capability provides significant advances over earlier
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`monitoring systems, it does not provide an integrated solution . . . The present
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`invention provides a method and system for providing remote monitoring services
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`that . . . allow a subscriber to remotely monitor, evaluate, and control operations at
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`a facility.”). Furthermore, this same passage indicates that the preamble is in fact
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`intended to give meaning to the claim and defines the invention itself. In addition,
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`the claims themselves emphasis the requirement that the preamble serve as a
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`limitation. For example, claim 1 requires that both RFID and video data be obtained
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`from the remote facility, and that the subscriber be provided with “access to and
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`control of a video camera in the video system at the facility”. Id. at Claim 1. This
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`further emphasizes the fact that the preamble is what gives meaning to the claims.
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`As such, the pre