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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`AXON ENTERPRISE, INC.,
`Petitioner
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`v.
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`DIGITAL ALLY, INC.,
`Patent Owner
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`
`
`Case PGR2018-00052
`Patent 9,712,730 B2
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`PETITION FOR POST-GRANT REVIEW
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`

`

`
`
`Petition for Post-Grant Review
`Patent 9,712,730 B2
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`TABLE OF CONTENTS
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`I.
`
`II.
`
`III.
`
`Introduction. ..................................................................................................... 1
`
`Grounds For Standing (37 C.F.R. § 42.204(a)). .............................................. 2
`
`Statement of Relief Requested and Identification of the Challenge
`(37 C.F.R. § 42.204(b)). .................................................................................. 7
`
`A. Citation of prior art. ............................................................................... 7
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`B. Statutory grounds for the challenge. ..................................................... 8
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`IV. Background. ................................................................................................... 11
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`A. Overview of the ’730 patent. ............................................................... 11
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`B. Level of Ordinary Skill in the Art. ...................................................... 13
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`C. Claim Construction. ............................................................................ 13
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`D. Summary of the Asserted Prior Art. .................................................... 14
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`1. Smith discloses a wearable video system for law
`enforcement officers that records and documents incidents..... 14
`
`2. Strub discloses a wearable video system that marks video
`files with location information. ................................................. 15
`
`3. O’Donnell discloses a wearable video system with a
`versatile mount to secure a camera to various surfaces. ........... 16
`
`4. Haler discloses a vehicle-mounted system that triggers a
`video recording while a police officer is in the vehicle. ........... 17
`
`5. Guzik discloses a wearable video system that marks files
`with metadata about time, location, and the event. .................. 18
`
`6. Balardeta discloses that devices with a camera, processor,
`memory, and GPS components were compact. ........................ 18
`
`V. Ground 1: Claims 1-21 lack written-description support. ............................. 19
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`VI. Ground 2: Smith renders claims 1, 4, 7, and 9 obvious. ............................... 23
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`Petition for Post-Grant Review
`Patent 9,712,730 B2
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`A.
`
`Independent claim 1. ........................................................................... 23
`
`1. Smith teaches or suggests “[a] portable video and imaging
`system for law enforcement.” .................................................... 23
`
`2. Smith teaches or suggests “a portable housing configured
`to be mounted on a body of a law enforcement officer, on a
`device carried by the law enforcement officer, or in a law
`enforcement vehicle.” ............................................................... 25
`
`3. Smith teaches or suggests “a camera component housed
`within the housing and configured to capture video of an
`event.” ....................................................................................... 27
`
`4. Smith teaches or suggests “a memory element housed
`within the housing and configured to record the captured
`video of the event, wherein said captured and recorded
`video comprises a plurality of video frames of a video file.”
` ................................................................................................... 29
`
`5. Smith teaches or suggests “an input mounted on the
`housing and configured to be actuated by the law
`enforcement officer in the field and in response to being
`actuated, generate an activation signal.” ................................. 31
`
`6. Smith teaches or suggests “a processing element
`associated with the memory element and the input.” ............... 33
`
`7. Smith teaches or suggests that the processing element is
`configured to “receive said activation signal generated in
`response to the law enforcement officer actuating the
`input.”........................................................................................ 34
`
`8. Smith teaches or suggests that the processing element is
`configured to “in response to the activation signal, store a
`mark in the video file for at least one of the plurality of
`video frames to thereby identify a point in time or location
`in the video file.” ....................................................................... 34
`
`9. Smith teaches or suggests “wherein said mark in the video
`file of the at least one of the plurality of video frames
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`Petition for Post-Grant Review
`Patent 9,712,730 B2
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`enables the processing element to perform the following:
`upon playback of the video file and in response to receipt
`from a user request, automatically advance the video file
`to the marked at least one video frame representing the
`point in time or location in the video file at which the law
`enforcement officer actuated the input.” .................................. 38
`
`B. Dependent claim 4. .............................................................................. 39
`
`C. Dependent claim 7. .............................................................................. 40
`
`D. Dependent claim 9. .............................................................................. 42
`
`VII. Ground 3: Smith in view of Strub renders claims 2 and 3 obvious. ............. 44
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`A. Dependent claim 2. .............................................................................. 44
`
`B. Dependent claim 3. .............................................................................. 47
`
`VIII. Ground 4: Smith in view of O’Donnell renders claims 5, 6, and 8
`obvious. .......................................................................................................... 49
`
`A. Dependent claim 5. .............................................................................. 49
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`B. Dependent claim 6. .............................................................................. 54
`
`1. Smith in view of O’Donnell teaches or suggests “a
`universal mount coupled to or integral with the portable
`housing.” ................................................................................... 54
`
`2. Smith in view of O’Donnell teaches or suggests “a first
`mounting assembly including a first coupler for coupling
`the first mounting assembly to the universal mount,
`wherein the first mounting assembly is configured for
`mounting the portable housing to the law enforcement
`officer’s body.” .......................................................................... 56
`
`3. Smith in view of O’Donnell teaches or suggests “a second
`mounting assembly including a second coupler for
`coupling the second mounting assembly to the universal
`mount, wherein the second mounting assembly is
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`Petition for Post-Grant Review
`Patent 9,712,730 B2
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`configured for mounting the portable housing in the law
`enforcement vehicle.” ............................................................... 58
`
`4. Smith in view of O’Donnell teaches or suggests that the
`portable housing “may selectively and interchangeably be
`mounted on the law enforcement officer’s body via the first
`mounting assembly and the law enforcement vehicle via
`the second mounting assembly.” ............................................... 59
`
`5. Smith in view of O’Donnell teaches or suggests “wherein
`the first mounting assembly and the second mounting
`assembly are selectively and interchangeably mounted to
`the portable housing by coupling the respective first
`coupler or second coupler to the universal mount.” ................ 61
`
`C. Dependent claim 8. .............................................................................. 62
`
`IX. Ground 5: Smith in view of Haler renders claims 10 and 12 obvious. ......... 64
`
`A. Dependent claim 10. ............................................................................ 64
`
`B. Dependent claim 12. ............................................................................ 67
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`X. Ground 6: Smith in view of Guzik renders claims 11 and 22 obvious. ........ 70
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`A. Dependent claim 11. ............................................................................ 70
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`1. Smith teaches or suggests “wherein the plurality of video
`frames is associated with metadata.” ....................................... 70
`
`2. Smith in view of Guzik teaches or suggests “wherein the
`metadata includes a geographical location of at least one
`component of the system when at least some of the
`plurality of video frames was captured, a time or date of
`when at least some of the plurality of video frames was
`captured, and any triggering event that initiated capturing
`of at least some of the plurality of video frames.” .................... 71
`
`B.
`
`Independent claim 22. ......................................................................... 75
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`Petition for Post-Grant Review
`Patent 9,712,730 B2
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`1. Smith teaches or suggests “[a] non-transitory computer
`readable medium storing a video file of a law enforcement
`event.” ....................................................................................... 75
`
`2. Smith teaches or suggests that the video file comprises “a
`plurality of frames, each frame including video data of an
`event.” ....................................................................................... 76
`
`3. Smith teaches or suggests “wherein said video data is
`captured by a portable video and imaging system.” ................ 76
`
`4. Smith teaches or suggests that the video file comprises
`“information indicative of a mark of at least one of the
`plurality of frames of the video file to thereby identify a
`point in time or location in the video file.” ............................... 76
`
`5. Smith teaches or suggests “wherein said mark is initiated
`by the law enforcement officer actuating an input on a
`housing of the portable video and imaging system.” ................ 77
`
`6. Smith teaches or suggests “wherein said mark in the video
`file of the at least one of the plurality of video frames
`enables, during playback of the video file, automatically
`advancing the video file to the marked at least one video
`frame representing the point in time or location in the
`video file at which the law enforcement officer actuated
`the input.” .................................................................................. 78
`
`7. Smith in view of Guzik teaches or suggests that the video
`file comprises “metadata associated with at least a portion
`of the plurality of frames.” ........................................................ 78
`
`8. Smith in view of Guzik teaches or suggests “wherein the
`metadata includes a geographical location of at least one
`component of the portable video and imaging system when
`at least one of the plurality of frames was captured, a time
`or date of when at least one of the plurality of frames was
`captured, and any triggering event that initiated capturing
`of the video file” ........................................................................ 79
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`Petition for Post-Grant Review
`Patent 9,712,730 B2
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`XI. Ground 7: Smith in view of Haler, further in view of Guzik renders
`claims 13 and 23 obvious. ............................................................................. 79
`
`A. Dependent Claim 13. ........................................................................... 79
`
`B. Dependent Claim 23. ........................................................................... 81
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`XII. Ground 8: Smith in view of Balardeta renders claim 14 obvious. ................ 82
`
`XIII. Ground 9: Smith in view of O’Donnell, further in view of Haler renders
`claims 15, 17, and 20 obvious. ...................................................................... 83
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`A.
`
`Independent claim 15. ......................................................................... 83
`
`1. Smith teaches or suggests “[a] portable video and imaging
`system for law enforcement.” .................................................... 83
`
`2. Smith in view of O’Donnell teaches or suggests “a
`portable housing configured to be selectively mounted on
`a body of a law enforcement officer and in a law
`enforcement vehicle.” ............................................................... 83
`
`3. Smith in view of O’Donnell teaches or suggests “a first
`mounting assembly configured for mounting the housing to
`the law enforcement officer's body.” ........................................ 84
`
`4. Smith in view of O’Donnell teaches or suggests “a second
`mounting assembly configured for mounting the housing in
`the law enforcement vehicle.” ................................................... 84
`
`5. Smith in view of O’Donnell teaches or suggests that the
`housing “may selectively and interchangeably be mounted
`on the law enforcement officer's body via the first
`mounting assembly and the law enforcement vehicle via
`the second mounting assembly.” ............................................... 84
`
`6. Smith teaches or suggests “a camera component housed
`within the housing and configured to capture video of an
`event.” ....................................................................................... 85
`
`7. Smith teaches or suggests “a memory element housed
`within the housing and configured to record the captured
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`Petition for Post-Grant Review
`Patent 9,712,730 B2
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`video of the event, wherein said captured and recorded
`video comprises a plurality of video frames of a video file.”
` ................................................................................................... 85
`
`8. Smith teaches or suggests “an input mounted on the
`housing and configured to be actuated by the law
`enforcement officer in the field and in response to being
`actuated, generate an activation signal.” ................................. 85
`
`9. Smith teaches or suggests “a processing element
`associated with the memory element and the input.” ............... 85
`
`10. Smith teaches or suggests that the processing element is
`configured to “receive said activation signal generated in
`response to the law enforcement officer actuating the
`input.”........................................................................................ 85
`
`11. Smith teaches or suggests that the processing element is
`configured to “in response to the activation signal, store a
`mark in the video file for at least one of the plurality of
`video frames to thereby identify a point in time or location
`in the video file.” ....................................................................... 86
`
`12. Smith teaches or suggests that the processing element is
`configured to “upon playback of the video file and in
`response to receipt from a user request, automatically
`advance the video file to the marked at least one video
`frame representing the point in time or location in the
`video file at which the law enforcement officer actuated
`the input.” .................................................................................. 86
`
`13. Smith in view of O’Donnell teaches or suggests that the
`processing element is configured to “wirelessly transmit
`the video file to a mobile communications device
`configured for viewing the video on the mobile
`communications device.” .......................................................... 86
`
`14. Smith teaches or suggests that the processing element is
`configured to “instruct capturing of video by the camera
`component for recording the event in response to receiving
`information indicative of a triggering event.” .......................... 87
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`Petition for Post-Grant Review
`Patent 9,712,730 B2
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`15. Smith in view of O’Donnell, further in view of Haler
`teaches or suggests “wherein the triggering event is a
`signal from the law enforcement vehicle.” ............................... 87
`
`B. Dependent claim 17. ............................................................................ 88
`
`C. Dependent claim 20. ............................................................................ 88
`
`XIV. Ground 10: Smith in view of O’Donnell, further in view of Haler and
`Strub renders claim 16 obvious. .................................................................... 88
`
`XV. Ground 11: Smith in view of O’Donnell, further in view of Haler and
`Guzik renders claims 18 and 19 obvious. ...................................................... 89
`
`A. Dependent claim 18. ............................................................................ 89
`
`1. Smith teaches or suggests “wherein the plurality of video
`frames is associated with metadata.” ....................................... 89
`
`2. Smith in view of O’Donnell and Haler, further in view of
`Guzik teaches or suggests “wherein the metadata includes
`a geographical location of at least one component of the
`system when at least some of the plurality of video frames
`was captured, a time or date of when at least some of the
`plurality of video frames was captured, and any triggering
`event that initiated capturing of at least some of the
`plurality of video frames.” ........................................................ 89
`
`B. Dependent claim 19. ............................................................................ 90
`
`XVI. Ground 12: Smith in view of O’Donnell, further in view of Haler and
`Balardeta renders claim 21 obvious............................................................... 91
`
`XVII. Ground 13: Smith in view of Guzik, further in view of Strub renders
`claim 24 obvious. ........................................................................................... 91
`
`XVIII.Mandatory Notices (37 C.F.R. § 42.8). ......................................................... 92
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`XIX. Conclusion ..................................................................................................... 93
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`Petition for Post-Grant Review
`Patent 9,712,730 B2
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`No.
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`EXHIBIT LIST
`
`DESCRIPTION
`
`1001 U.S. Patent No. 9,712,730 to Phillips et al.
`
`1002
`
`Prosecution History of U.S. Patent No. 9,712,730
`
`1003 Original Disclosure of U.S. Patent No. 9,712,730
`
`1004 U.S. Patent No. 9,237,262 to Phillips et al.
`
`1005
`
`1006
`
`Prosecution History of U.S. Patent Application No. 14/575,433 (now
`U.S. Patent No. 9,237,262)
`
`Comparison of Original Disclosure of U.S. Patent No. 9,712,730 to
`Original Disclosure of U.S. Patent No. 9,237,262.
`
`1007 U.S. Patent No. 9,019,431 to Phillips et al.
`
`1008
`
`1009
`
`Prosecution History of U.S. Patent Application No. 14/040,329 (now
`U.S. Patent No. 9,019,431)
`
`Comparison of Original Disclosure of U.S. Patent No. 9,712,730 to
`Original Disclosure of U.S. Patent No. 9,019,431.
`
`1010 U.S. Provisional Patent Application No. 61/707,326
`
`1011 U.S. Provisional Patent Application No. 61/707,348
`
`1012 U.S. Patent Pub. No. 2009/0276708 A1 to Smith et al.
`
`1013 U.S. Patent No. 6,563,532 B1 to Strub et al.
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`1014
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`International Patent Pub. No. WO 2012/037139 A2 to O’Donnell et al.
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`1015 U.S. Patent Pub. No. 2009/0002491 A1 to Haler
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`1016 U.S. Patent Pub. No. 2011/0018998 A1 to Guzik
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`1017 U.S. Patent Pub. No. 2011/0098924 A1 to Balardeta et al.
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`Patent 9,712,730 B2
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`1018 U.S. Patent Pub. No. 2010/0060747 A1 to Woodman
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`1019 U.S. Patent No. 7,421,024 to Castillo
`
`1020 MPEG-4 Coding of Moving Pictures and Audio ISO/IEC
`JTC1/SC29/WG11 N4668 (March 2002)
`
`1021 U.S. Patent App. No. 14/040,006 to Troxel
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`1022 U.S. Patent No. 8,520,069 to Haler
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`1023 U.S. Patent App. No. 13/967,151 to Ross et al.
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`1024 Original Specification of U.S. Application No. 14/991,607
`
`1025 Original Specification of U.S. Application No. 14/575,433
`
`1026 Original Specification of U.S. Application No. 14/040,329
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`1027 Declaration of Mr. Kurtis P. Keller
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`1028
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`Curriculum Vitae of Mr. Kurtis P. Keller
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`
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`Petition for Post-Grant Review
`Patent 9,712,730 B2
`
`
`I.
`
`Introduction.
`
`Axon Enterprise, Inc. (“Petitioner”) requests post-grant review and
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`cancelation of claims 1-24 of U.S. Patent No. 9,712,730 B2 (Exhibit 1001, “’730
`
`patent”). The ’730 patent is PGR eligible because it contains at least one claim that
`
`has an effective filing date after March 16, 2013. The ’730 patent also contains
`
`specific references under 35 U.S.C. § 120 to patents that contain at least one claim
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`that has an effective filing date after March 16, 2013, further demonstrating PGR
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`eligibility.
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`The ’730 patent discloses a body camera for law enforcement personnel and
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`claims a portable video system that: (1) captures video of an event; (2) records a
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`video file in memory; and (3) marks the video file to indicate the time and/or
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`location when a law enforcement officer actuated the input. Portable systems that
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`performed these functions were ubiquitous in the industry long before September
`
`28, 2012, which is the earliest possible1 effective filing date of the challenged
`
`claims. Indeed, the ’730 patent itself admits that wearable devices for recording
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`video were known. And U.S. Pub. No. 2009/0276708 to Smith et al. (Exhibit 1012,
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`
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`1 As discussed below, the challenged claims are not entitled to the
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`September 28, 2012 filing date.
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`Petition for Post-Grant Review
`Patent 9,712,730 B2
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`“Smith”) demonstrates that placing a mark in a video file was well known years
`
`before the alleged invention.
`
`This Petition, supported by the Declaration of Mr. Kurtis Keller (Exhibit
`
`1027, “Keller”), demonstrates that all challenged claims are unpatentable.
`
`Petitioner thus respectfully requests institution of PGR and cancelation of the
`
`challenged claims.
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`II.
`
`Grounds For Standing (37 C.F.R. § 42.204(a)).
`
`The undersigned and Petitioner certify that the ’730 patent is available for
`
`PGR. Petitioner certifies that it is not barred or estopped from requesting this PGR
`
`on the grounds identified herein.
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`The ’730 patent is PGR eligible because it contains at least one claim that
`
`has an effective filing date after March 16, 2013, and because it contains specific
`
`references to patents that contain at least one claim that has an effective filing date
`
`after March 16, 2013. The ’730 patent issued from a transitional application2 that
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`claims priority to two provisional applications—61/707,348 (Exhibit 1011, “’348
`
`
`
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`2 A transitional application is an application filed on or after March 16,
`
`2013, and claiming the benefit of a filing date before March 16, 2013. See 35
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`U.S.C. §§119, 120, 121, 365.
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`Petition for Post-Grant Review
`Patent 9,712,730 B2
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`provisional”) and 61/707,326 (Exhibit 1010, “’326 provisional”)—filed before
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`March 16, 2013. (’730 patent, (60).) The ’730 patent also claims priority to two
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`non-provisional applications—14/040,329 (“’329 application”) and 14/575,433
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`(“’433 application”)—filed after March 16, 2013. (’730 patent, (63).)
`
`The ’730 patent is PGR eligible because it “contains … at least one claim
`
`that was not disclosed in compliance with the written description and enablement
`
`requirements of §112(a) in the earlier application[s] for which the benefit of an
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`earlier filing date prior to March 16, 2013 was sought.” Inguran LLC v. Premium
`
`Genetics, PGR2015-00017, Paper 8 at pp. 11-16 (Dec. 22, 2015); see also AIA
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`§3(n)(1); 35 U.S.C. §100(i); U.S. Endodontics, LLC v. Gold Standard Instruments,
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`LLC, PGR2015-00019, Paper 17 at p. 8 (Jan. 29, 2016). Specifically, neither the
`
`’326 provisional nor the ’348 provisional provides written-description support for
`
`at least independent claims 1, 15, and 22, and dependent claim 6. “[T]he test for
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`sufficiency [of written description] 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 Pharma., Inc.
`
`v. Eli Lily and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).
`
`Independent claims 1 and 15 require a “processing element” that performs
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`the following functions: (1) “receive said activation signal …”; (2) “in response to
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`the activation signal, store a mark in the video file for at least one of the plurality
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`Petition for Post-Grant Review
`Patent 9,712,730 B2
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`of video frames …”; and (3) “upon playback of the video file … automatically
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`advance the video file to the marked at least one video frame ….” The provisional
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`applications do not reasonably convey that the inventor had possession of a
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`“processing element” that performed all of these functions as of September 28,
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`2012. (Keller, ¶¶38-42.)
`
`The ’326 provisional does not disclose the claimed “processing element”
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`and provides very limited disclosure of marking. (Keller, ¶¶39-40.) It describes a
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`“video system” that includes “an electronics module” (’326 provisional, 1, 3), and
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`provides the following description of marking: “A flag button may place a
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`bookmark in the video to mark the location of significant events in a video
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`sequence” (id., 5). These disclosures make no mention of, and thus fail to
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`reasonably convey to a POSITA possession of, a processing element that (1)
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`receives an “activation signal”; (2) stores a mark “in [a] video file” in response to
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`receiving an activation signal; and (3) “automatically advance[s] the video file” to
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`the mark during video playback. (Keller, ¶¶39-40.)
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`The ’348 provisional also fails to convey possession of the claimed
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`“processing element.” (Keller, ¶¶41-42.) It describes a “camera” that includes “an
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`electronic controller” and “a second button … [that] causes the camera to
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`‘bookmark’ a video during video recording.” (’348 provisional, 5.) The ’348
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`provisional does not disclose that the camera’s electronic controller “receive[s] an
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`Petition for Post-Grant Review
`Patent 9,712,730 B2
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`activation signal.” (Keller, ¶41.) Nor does it disclose that the electronic controller
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`stores a mark “in [a] video file.” (Id.) Regarding playback, the ’348 provisional
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`explains that “[t]he bookmark may be useable, for example, by a computer running
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`software that enables a user to view the video once transferred to the computer
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`from the base portion. Such software would enable the user to jump to a bookmark
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`….” (’348 provisional, 5.) A POSITA would have understood that the camera’s
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`electronic controller is separate from the computer. (Keller, ¶42.) And thus the
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`’348 provisional’s disclosure of a computer running software that can “jump to a
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`bookmark” does not convey possession of a “processing element” that performs
`
`the three functions required in claims 1 and 15. (Id.)
`
`Independent claim 22 requires “metadata” that includes “any triggering
`
`event that initiated capturing of the video file.” The ’326 and ’348 provisional
`
`applications fail to provide written-description support for this element. (Keller,
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`¶¶43-44.) The ’326 provisional describes placing “a bookmark in the video” (’326
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`provisional, 5), incorporating “watermarks into the recorded video images” (id., 6),
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`and stamping “audiovisual signals” with a camera identifier (id., 9). But none of
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`this information represents a “triggering event that initiated capturing of the video
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`file.” (Keller, ¶43.) The ’348 provisional mentions metadata in general and
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`explains that the “bookmark” indicating depression of the bookmark button is
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`stored as metadata. (’348 provisional, 3, 5.) But, again, this information does not
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`Petition for Post-Grant Review
`Patent 9,712,730 B2
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`represent a “triggering event that initiated capturing of the video file.” (Keller,
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`¶44.)
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`Regarding dependent claim 6, the provisional applications lack written-
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`description support for the myriad of details about the “universal mount” and the
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`first and second mounting assemblies. (Keller, ¶¶46-49.)
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`For at least these reasons, the challenged claims are not entitled to the pre-
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`March 16, 2013 filing date of the ’326 and ’348 provisional applications, and thus
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`the ’730 patent is PGR eligible. AIA §3(n)(1); 35 U.S.C. §100(i)(1)(a).
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`The ’730 patent is also eligible for post-grant review because the ’730 patent
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`contains a specific reference under 35 U.S. C. §120 to patents that contain at least
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`one claim that has an effective filing date after March 16, 2013. See AIA §3(n)(1);
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`35 U.S.C. §100(i). The ’730 patent references U.S. Patent Nos. 9,019,431 and
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`9,237,262, both of which claim subject matter that does not have written-
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`description support in the provisional applications. For example, the ’431 patent
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`claims “a lock mechanism . . . operable to selectively enable access to [the]
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`memory located within [the] housing” (claims 7, 12) and a housing that includes “a
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`recessed seat” (claims 1, 8). The ’262 patent claims a mating member that is “a
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`recessed seat” and first and second mount mating members are each “a raised
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`seat” (claims 3, 4, 19); “a hat mount assembly” (claims 7, 20); “a hook-and-loop
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`mount assembly” with “adhesively-securable hook-and-loop material” (claims 7,
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`Petition for Post-Grant Review
`Patent 9,712,730 B2
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`16, 17, 19); and “a saddle bracket for securing the first housing to a barrel of a
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`firearm” (claim 20). These claims are not supported by the provisional
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`applications. (Keller, ¶¶50-53.) The ’730 patent’s specific reference to U.S. Patent
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`Nos. 9,237,262 and 9,019,431 is therefore further grounds for PGR standing.
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`III.
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`Statement of Relief Requested and Identification of the Challenge
`(37 C.F.R. § 42.204(b)).
`
`A. Citation of prior art.
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`The ’730 patent was filed on January 8, 2016, and claims priority through a
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`chain of continuations to two provisional applications filed on September 28, 2012.
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`(’730 patent, (63), (60).) Petitioner demonstrated in Section II that First-Inventor-
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`To-File provisions of the AIA apply to the ’730 patent because, inter alia, the ’730
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`patent contains at least one claim that has an effective filing date after March 16,
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`2013. Petitioner takes no position on the earliest effective filing date of the
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`challenged claims because the following references, cited in support of the grounds
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`of unpatentability presented below, qualify as prior art even if the claims were
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`entitled to the September 28, 2012 filing dates of the provisional applications:
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`U.S. Pub. No. 2009/0276708 to Smith et al. (Exhibit 1012, “Smith”) was
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`filed on April 3, 2009, was published on November 5, 2009, and thus qualifies as
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`prior art under 35 U.S.C. §102(a)(1) and (2).
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`Petition for Post-Grant Review
`Patent 9,712,730 B2
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`U.S. Patent No. 6,563,532 to Strub et al. (Exhibit 1013, “Strub”) was filed
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`
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`on April 21, 2000, was published on May 13, 2003, and thus qualifies as prior art
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`under 35 U.S.C. §102(a)(1) and (2).
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`WO 2012/037139 to O’Donnell et al. (Exhibit 1014, “O’Donnell”) was
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`published on March 22, 2012, and thus qualifies as prior art under 35 U.S.C.
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`§102(a)(1).
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`U.S. Pub. No. 2009/0002491 to Haler (Exhibit 1015, “Haler”) was filed on
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`August 10, 2008, was published on January 1, 2009, and thus qualifies as prior art
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`under 35 U.S.C. §102(a)(1) and (2).
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`U.S. Pub. No. 2011/0018998 to Guzik (Exhibit 1016, “Guzik”) was filed on
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`September 30, 2010, was published on January 27, 2011, and thus qualifies as prior
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`art under 35 U.S.C. §102(a)(1) and (2).
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`U.S. Pub. No. 2011/0098924 to Balardeta et al. (Exhibit 1017, “Balardeta”)
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`was filed on October 28, 2009, was published on April 28, 2011, and thus qualifies
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`as prior art under 35 U.S.C. §102(a)(1) and (2).
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`B.
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` Statutory grounds for the challenge.
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`Petitioner requests post-grant review and cancelation of the challenged
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`claims based on the following grounds.
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`Petition for Post-Grant Review
`Patent 9,712,730 B2
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`Basis
`written description
`(§112)
`§103
`
`§103
`
`§103
`
`§103
`
`§103
`
`§103
`
`§103
`
`§103
`
`§103
`
`§103
`
`§103
`
`§103
`
`Re