`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`AXON ENTERPRISE, INC.,
`Petitioner
`
`v.
`
`DIGITAL ALLY, INC.,
`Patent Owner
`
`____________
`
`Case PGR2018-00052
`Patent 9,712,730
`
`____________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`TO PETITION FOR POST-GRANT REVIEW
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`for a processing element that advances the video file to the mark in the
`
`INTRODUCTION .................................................................................................. 1
`I.
`A. Related Matters ....................................................................................... 2
`B. Summary of the ’730 Patent .................................................................... 2
`C. Level of Ordinary Skill in the Art ........................................................... 2
`II. DISCLAIMER OF CLAIMS .................................................................................... 4
`III. CLAIM CONSTRUCTION ...................................................................................... 4
`IV. PETITIONER’S GROUND 1: WRITTEN DESCRIPTION SUPPORT FOR CLAIMS 1-21 ... 5
`A. The Specification of the ’730 Patent provides written description support
`for a processing element that receives an activation signal ...................... 7
`B. The Specification of the ’730 Patent provides written description support
`for a processing element that stores a mark in the video file ................. 10
`C. The Specification of the ’730 Patent provides written description support
`video file ............................................................................................... 12
`D. Conclusion ............................................................................................ 15
`V. PETITIONER’S GROUND 9: OBVIOUSNESS OF CLAIMS 15, 17 AND 19 OVER SMITH,
`O’DONNELL, AND HALER ............................................................................... 15
`A. Smith in view of O’Donnell and in further view of Haler fails to teach or
`the video on the mobile communications device.” ................................ 16
`1. Smith’s “secondary subsystem” is not a mobile communications
`communications device ............................................................... 16
`2. O’Donnell fails to teach or suggest that the video file is wirelessly
`viewing the video on the mobile communications device ............. 22
`3. Haler fails to teach or suggest that the video file is wirelessly
`viewing the video on the mobile communications device ............. 31
`B. A POSITA would not be motivated to combine the teachings of Smith
`and O’Donnell ...................................................................................... 32
`C. Conclusion ............................................................................................ 35
`
`suggest that the processing element is configured to “wirelessly transmit
`the video file to a mobile communications device configured for viewing
`
`device configured for viewing the video on the mobile
`
`transmitted to a mobile communications device configured for
`
`transmitted to a mobile communications device configured for
`
`ii
`
`

`

`VI. PETITIONER’S GROUND 4: OBVIOUSNESS OF CLAIMS 5, 6 AND 8 OVER SMITH AND
`O’DONNELL .................................................................................................. 35
`VII. PETITIONER’S GROUNDS 10-12: OBVIOUSNESS OF CLAIMS 16, 18-19, AND 21 . 36
`VIII. PETITIONER’S OTHER GROUNDS................................................................. 37
`IX. CONCLUSION ................................................................................................... 37
`
`
`
`iii
`
`

`

`Cases:
`
`TABLE OF AUTHORITIES
`
`Page No(s).
`
`01 Communique Lab., Inc. v. Logmein, Inc. 687 F.3d 1292 (Fed. Cir. 2012) 12-13
`
`10X Genomics, Inv. v. Bio-Rad Labs., Inc., IPR2018-00489
`
`(PTAB Jun. 28, 2018)
`
`Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064 (Fed. Cir. 2015)
`
`Capon v. Eshhar, 418 F.3d 1349 (Fed. Cir. 2005)
`
`Cuozzo Speed Techs. v. Lee, 136 S. Ct. 2131 (2016)
`
`Infobionic, Inc. v. Braemer Manufacturing, LLC., IPR2015-01704
`
`(PTAB Feb. 16, 2016)
`
`Inphi Corp. v. Netlist, Inc., 805 F.3d 1350 (Fed. Cir. 2015)
`
`In re Hayes Microcomputer Prod., Inc. Patent Litig., 982 F.2d 1527
`
`(Fed. Cir. 1992)
`
`In re Suitco Surface, Inc., 603 F.3d 1255 (Fed. Cir. 2010)
`
`Kinetic Technologies, Inc. v. Skyworks Solutions, Inc., IPR2014-00529
`
`(PTAB Sept. 23, 2014)
`
`33
`
`32
`
`14
`
`4
`
`7
`
`6
`
`6
`
`5
`
`7
`
`Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358 (Fed. Cir. 2017)
`
`33
`
`iv
`
`

`

`
`
`Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir. 2015)
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)
`
`
`
`Statutes:
`
`35 U.S.C. § 103
`
`35 U.S.C. § 112
`
`35 U.S.C. § 253(a)
`
`35 U.S.C. § 323
`
`
`
`Regulations:
`
`37 CFR § 1.321(a)
`
`37 C.F.R. § 42.24(a)(1)
`
`37 CFR § 42.65(a)
`
`37 C.F.R. § 42.121
`
`37 C.F.R. § 42.200(b)
`
`37 C.F.R § 42.207
`
`v
`
`5
`
`5
`
`15, 35
`
`6,7, 14
`
`4
`
`1
`
`Page No(s).
`
`4
`
`40
`
`6, 20
`
`39
`
`4
`
`1, 4, 37
`
`

`

`Pursuant to 35 U.S.C. § 323 and 37 C.F.R § 42.207, Patent Owner, Digital
`
`Ally, Inc. (“Patent Owner”) submits this Preliminary Response to the Petition for
`
`Post-Grant Review of U.S. Patent No. 9,712,730 (“the ’730 Patent”) by Petitioner,
`
`Axon Enterprise Inc. (“Petitioner”).
`
`I.
`
`INTRODUCTION
`
`The claims of the ’730 Patent are amply supported by written description in
`
`the as-filed Specification. Petitioner does not appear to dispute that the claimed
`
`functions are disclosed. Nor does Petitioner appear to dispute that the claimed
`
`“processing element” is disclosed. As best understood, Petitioner’s sole argument
`
`is that the disclosed processor does not perform the disclosed functions. This
`
`argument is premised on a fundamental misunderstanding of the law governing
`
`written description.
`
`The claims at issue are also not obvious in view of the cited art. Both claims
`
`8 and 15 recite that the video file be wirelessly transmitted to a mobile
`
`communications device for viewing on the device. None of the cited art
`
`(specifically, Smith and O’Donnell) teaches this claimed feature. Smith does not
`
`teach mobile communication devices at all. And O’Donnell does not teach
`
`wirelessly transmitting the video file to a mobile communications device.
`
`
`
`1
`
`

`

`A. Related Matters
`Digital Ally, Inc. is the Patent Owner of the ’730 Patent.
`
`Patent Owner is not aware of any pending judicial or administrative matters
`
`related to the ’730 Patent.
`
`Summary of the ’730 Patent
`
`B.
`The ’730 Patent is related to a portable video and imaging system for use in
`
`law enforcement. The claimed embodiments of the system include a selectively
`
`mountable housing (e.g., on an officer’s body or in a law enforcement vehicle)
`
`containing a camera for capturing video of an event, a memory for storing the
`
`recorded video, an input operable to store a mark in the recorded video indicating a
`
`time and allowing the video to be quickly advanced to the indicated time during
`
`playback.1 Certain claims also require the ability of the system to wirelessly
`
`transmit the video file to a mobile communications device for viewing.
`
`C. Level of Ordinary Skill in the Art
`Patent Owner submits that a POSITA as of September 28, 2012, the earliest
`
`priority date of the ’730 Patent, would have had (1) a bachelor’s degree in
`
`electrical engineering, computer engineering, or an equivalent science or
`
`engineering field; (2) a working knowledge of digital data recording systems and
`
`
`1 Independent claim 22 is instead directed to a computer-readable medium
`
`storing the resulting video file.
`
`2
`
`

`

`their associated hardware and software, including portable, wireless digital data
`
`recording systems; and (3) at least two years of experience designing wireless
`
`digital data recording systems. Additional industry experience or technical training
`
`may offset less formal education, while advanced degrees or additional formal
`
`education may offset lesser levels of industry experience. (Ex. 2001, ¶ 31).
`
`Petitioner submits that a POSITA would have had a B.S. in Mechanical
`
`Engineering or an equivalent field and at least 5 years of professional experience
`
`working with, building, or designing portable and mountable electronic devices,
`
`including electronic video cameras that can be mounted on a person. (Pet. 13).
`
`Patent Owner respectfully disagrees that a mechanical engineering degree is
`
`sufficient for a POSITA, as a significant portion of the features claimed in the ’730
`
`Patent are directed to issues involving the processing, manipulation, and wireless
`
`transmission of digital video files and other digital data. Patent Owner appreciates
`
`that Petitioner submits that a POSITA would have an interdisciplinary engineering
`
`background, but it is unclear how a mechanical engineering degree suffices to
`
`address the wireless digital data recording requirements in the claims. Therefore,
`
`Patent Owner submits that a POSITA would have at least a B.S. in electrical
`
`engineering, computer engineering, or an equivalent science or engineering field.
`
`3
`
`

`

`II. DISCLAIMER OF CLAIMS
`Patent Owner has attended to filing a statutory disclaimer under 35 U.S.C.
`
`§ 253(a) and 37 CFR § 42.207(e) of claims 1-7, 9-14, and 22-24 of the ’730 Patent.
`
`The statutory disclaimer is filed with the U.S. Patent Office in the patent file
`
`history, pursuant to 37 CFR § 1.321(a). (Ex. 2007). Per 37 C.F.R. § 42.207(e), no
`
`post-grant review will be instituted based on disclaimed claims. Therefore, only
`
`claims 8 and 15-21 are eligible for post-grant review.
`
`The statutory disclaimer of claims 1-7, 9-14, and 22-24 is made for purposes
`
`of narrowing the issues for efficient resolution of this PGR and should not be
`
`considered an admission that any feature of any claim, in whole or in part, is taught
`
`in the art of record.
`
`III. CLAIM CONSTRUCTION
`For purposes of post-grant review of an unexpired patent, a claim is to be
`
`given its “broadest reasonable construction in light of the specification of the
`
`patent in which it appears.” 37 C.F.R. § 42.200(b); Cuozzo Speed Techs. v. Lee,
`
`136 S. Ct. 2131, 2135 (2016). While the Board should apply the broadest
`
`reasonable construction, caution should be taken “to not read ‘reasonable’ out of
`
`the standard. This is to say that ‘[e]ven under the broadest reasonable
`
`interpretation, the Board’s construction cannot be divorced from the specification
`
`and the record evidence, and must be consistent with the one that those skilled in
`
`4
`
`

`

`the art would reach.’” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298
`
`(Fed. Cir. 2015) (internal citations omitted). The construction must be “consistent
`
`with the specification … and [the] claim language should be read in light of the
`
`specification as it would be interpreted by one of ordinary skill in the art.” In re
`
`Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010) (internal quotations
`
`omitted). Claim terms are “given their ordinary and customary meaning … that the
`
`term would have to a person of ordinary skill in the art.” Phillips v. AWH Corp.,
`
`415 F.3d 1303, 1312-13 (Fed. Cir. 2005).
`
`IV. PETITIONER’S GROUND 1: WRITTEN DESCRIPTION SUPPORT
`FOR CLAIMS 1-21
`
`Petitioner alleges that the originally filed specification of the application that
`
`issued as the ’730 Patent (“the ’730 Specification”) does not include written
`
`description support for claims 1-21 of the ’730 Patent. Petitioner asserts that the
`
`’730 Specification lacks written description for a processor that performs several
`
`functions of the system. Petitioner does not appear to dispute that a processor is
`
`disclosed (Petition at 20), and appears to concede that the functions in question,
`
`those of “marking video,” are disclosed (id.). Petitioner’s sole argument appears to
`
`be that a POSITA would not understand that the disclosed processor is involved in
`
`performing the disclosed functions. However, “[d]isclosing a microprocessor
`
`capable of performing certain functions is sufficient to satisfy the requirement of
`
`5
`
`

`

`section 112, first paragraph, when one skilled in the relevant art would understand
`
`what is intended and know how to carry it out.” In re Hayes Microcomputer Prod.,
`
`Inc. Patent Litig., 982 F.2d 1527, 1534 (Fed. Cir. 1992); Inphi Corp. v. Netlist,
`
`Inc., 805 F.3d 1350, 1355 (Fed. Cir. 2015) (“Whether a patent claim satisfies the
`
`written description requirement of 35 U.S.C. § 112, paragraph 1 depends on
`
`whether the description ‘clearly allow[s] persons of ordinary skill in the art to
`
`recognize that [the inventor] invented what is claimed.’”) (internal citations
`
`omitted).
`
`Here, the functions are disclosed and “[o]ne skilled in the art would know
`
`how to program a microprocessor to perform the necessary steps described in the
`
`specification.” Id.; see also Ex. 2001, ¶ 54 (Dr. Madisetti opining that a POSITA
`
`would be able to program the claimed “processing element” to carry out the
`
`disclosed steps). As such, Petitioner’s position does not hold up in view of the
`
`disclosures of the Specification or the relevant case law.
`
`In support of this argument, the Petition repeatedly cites to Dr. Keller’s
`
`Declaration from ¶¶ 69-75. However, this testimony merely restates the contents of
`
`the seven paragraphs of the Petition’s written-description argument on a nearly
`
`verbatim basis. “Expert testimony that does not disclose the underlying facts or
`
`data on which the opinion is based is entitled to little or no weight.” 37 CFR §
`
`42.65(a). Furthermore, expert testimony that merely recapitulates arguments made
`
`6
`
`

`

`in a petition and adds “in my opinion” is particularly disfavored. See, Kinetic
`
`Technologies, Inc. v. Skyworks Solutions, Inc., IPR2014-00529, Paper 8 at 15
`
`(PTAB Sept. 23, 2014) (holding that “merely repeating an argument from the
`
`Petition in the declaration of a proposed expert does not give that argument
`
`enhanced probative value.”); Infobionic, Inc. v. Braemer Manufacturing, LLC.,
`
`IPR2015-01704, Paper 11 at 6 (PTAB Feb. 16, 2016) (finding expert testimony
`
`unpersuasive because it merely repeated arguments set forth in the pleading with
`
`the addition of the phrase “in my opinion”). This precisely characterizes Dr.
`
`Keller’s testimony, and for this reason, that testimony should be afforded no
`
`weight.
`
`A. The Specification of the ’730 Patent provides written description
`support for a processing element that receives an activation signal
`
`Petitioner alleges that claims 1-21 are invalid under 35 U.S.C. § 112(a) at
`
`least because they lack written-description support for a “processing element” that
`
`“receives said activation signal” (i.e., the signal generated in response by the
`
`claimed input in response to actuation by the user). (Pet. 19). Petitioner does not
`
`dispute that the ’730 Specification contains written description for generating and
`
`transmitting this activation signal. (Pet. § V). As best understood, Petitioner
`
`contends that the ’730 Specification does not explicitly state that the activation
`
`signal is sent to recording component 14, and therefore, the disclosed processing
`
`element 38 of recording element 14 is not involved in the marking process “in any
`
`7
`
`

`

`way.” (Pet. 20). Petitioner further contends that the provisional applications
`
`incorporated by reference fail to provide written description support for a
`
`processing element that receives an activation signal from an input. (Pet. § V)
`
`(incorporating Pet. § II).
`
`First, the ’730 Specification discloses that the camera component 12 and
`
`recording component 14 are “communicatively coupled via cabling 18” or
`
`“wirelessly communicatively coupled” and that in the latter case “wireless signals
`
`comprising instructions or data” can be communicated between them. (Ex. 1003,
`
`¶ [0046]). A POSITA would understand that these “instructions” include the
`
`instruction to record and the instruction to mark the video file generated by second
`
`input 34. (Ex. 2001, ¶ 40). As described in Section B below, the disclosed
`
`processing element stores both the video file and the marks; thus, the processing
`
`element is involved in the marking process at least to that extent. Furthermore, the
`
`Specification specifies that actuation of the second input 34 “serves as […] [an]
`
`instruction […] to mark the captured video.” (Ex. 1003, ¶ [0052]). Because the
`
`user instructs marking via the input (which Petitioner does not dispute generates
`
`the claimed activation signal), and because processing element 38 performs the
`
`marking (as discussed below), a POSITA would understand that the processing
`
`element 38 must receive the activation signal or it would not know to store the
`
`mark in the file. (Ex. 2001, ¶ 40). Thus, the as-filed Specification of the ’730
`
`8
`
`

`

`Patent includes written description support for “a processing element […]
`
`configured to […] receive said activation signal.”
`
`Furthermore, the ’326 Provisional Application (Ex. 1010), incorporated by
`
`reference into the ’730 Specification, also provides written description support for
`
`this claim element. Petitioner contends that the ’326 Provisional Application does
`
`not include written description support for a processing element that receives an
`
`activation signal. (Pet. § II). This position does not withstand even cursory
`
`scrutiny. First, the ’326 Provisional Application includes an “electronics module”
`
`that “includes components operable to receive and execute instructions stored in
`
`internal memory.” (Ex. 1010, 4). A POSITA would understand this disclosure to
`
`include a processor or “processing element.” (Ex. 2001, ¶ 38). Figure 1 of the ’326
`
`Provisional Application depicts “input buttons” connected to this “electronics
`
`module.” (Ex. 1010, 12). The ’326 Provisional Application describes these input
`
`buttons as including a “flag button” that causes a bookmark to be placed in the
`
`video. Id. at 5. Petitioner does not dispute that the ’326 Provisional Application
`
`includes written description support for “an input […] configured to […] generate
`
`an activation signal.” As shown in FIG. 1, the input buttons are connected
`
`exclusively to the electronics module, and as such, any signal generated by the
`
`input buttons would be received by the electronics module. As discussed above,
`
`this electronics module is a “processing element” and, as it receives the activation
`
`9
`
`

`

`signal from the flag button, it is a “processing element […] configured to receive
`
`said activation signal.” Thus, the ’326 Provisional Application, incorporated by
`
`reference into the ’730 Specification, also provides written-description support for
`
`this claim element.
`
`B.
`
`The Specification of the ’730 Patent provides written description
`support for a processing element that stores a mark in the video
`file
`
`Petitioner further alleges
`
`that
`
`the ’730 Specification
`
`lacks written-
`
`description support for a processing element that “in response to the activation
`
`signal, store[s] a mark in the video file for at least one of the plurality of frames.”
`
`(Pet. 19). As described above, Petitioner does not appear to dispute that the ’730
`
`Specification discloses that such a mark is stored in the video file. Instead,
`
`Petitioner’s argument is that the ’730 Specification does not disclose that the
`
`processor (which is disclosed) does the storing.
`
`The ’730 Specification discloses that the recorded video is stored in memory
`
`element 40 of recording component 14: “The camera component 12 is configured
`
`to […] transmit the captured video to the recording component 14 for storage on a
`
`memory of the recording component, as further discussed below.” (Ex. 1003, ¶
`
`[0047]). Additionally, the ’730 Specification discloses that marks are stored in or
`
`with the video (for example, as metadata): “‘Marking’ of the captured video
`
`provides an indication of a point in time […] The user can then quickly move to
`
`10
`
`

`

`marked locations in the captured video upon viewing of the video using
`
`standardized video viewing software.” Id. at ¶ [0052]. The marks are thus also
`
`stored at recording component 14. (Ex. 2001, ¶ 46).
`
`Next, Petitioner appears to concede that processing element 38 is a processor
`
`that can perform functions such as “execut[ing], process[ing], or run[ning]
`
`instructions.” (Pet. 20). The ’730 Specification states, “processing element 38 may
`
`be in communication with the memory element 40 through address busses, data
`
`busses, control lines, and the like.” (Ex. 1003, ¶ [0058]). A POSITA would thus
`
`understand that processing element 38 controls the operation of memory element
`
`40, including what data is stored there, via these address busses, data busses, and
`
`control lines. (Ex. 2001, ¶ 45). A POSITA would also understand that, because the
`
`processing element 38 controls memory element 40, and because memory element
`
`40 stores the claimed mark in the video file, processing element 38, as disclosed, is
`
`configured to “store[s] a mark in the video file for at least one of the plurality of
`
`frames.” Id. at ¶ 45-47.
`
`Finally, the ’730 Specification discloses that these marks are stored in
`
`response to the actuation of the second input: “Actuation of the second input 34
`
`thus serves as both an instruction to begin recording and to mark the captured
`
`video to identify a time or location in the captured video corresponding to
`
`actuation of the second input 34.” (Ex. 1003, ¶ [0052]). Petitioner does not dispute
`
`11
`
`

`

`that there is written description support for the actuation of second input 34
`
`causing the activation signal to be sent. (Pet. § V). Because, as shown above, the
`
`processor causes the mark to be stored, and the mark is stored in response to the
`
`activation signal, a POSITA would understand that the ’730 Specification discloses
`
`a processor that “in response to the activation signal, stores a mark in the video
`
`file.” As such, the ’730 Specification provides written description support for this
`
`claim element.
`
`C. The Specification of the ’730 Patent provides written description
`support for a processing element that advances the video file to
`the mark in the video file
`
`Petitioner’s final argument is that the ’730 Specification does not disclose “a
`
`processing element” that can “upon playback of the video file [and in response to
`
`receipt from a user request]2 automatically advance the video file to the marked at
`
`least one video frame.” (Pet. 19). Initially, Patent Owner notes that there is no
`
`requirement that the same processing element can “receive said activation signal,”
`
`“store a mark,” and “advance the video file.” “As a general rule, the words ‘a’ or
`
`‘an’ carry the meaning of ‘one or more.’ […] An exception to this general rule
`
`arises only where the language of the claims, the specification, or the prosecution
`
`history necessitate a departure form the rule.” 01 Communique Lab., Inc. v.
`
`
`
`2 The Petition omits the bracketed claim language.
`
`12
`
`

`

`Logmein, Inc. 687 F.3d 1292, 1297 (Fed. Cir. 2012) (emphasis in original)
`
`(citations omitted). Here, the ’730 Specification discloses an embodiment where
`
`the captured video is viewed on a separate computing device (which a POSITA
`
`would understand contains a separate processing element; see, Ex. 2001, ¶ 50)
`
`from system 10: “[e]mbodiments of the invention may also include a computer
`
`program for viewing the captured video on a mobile communications device, such
`
`as via an app, at a website, or using viewing software.” (Ex. 1003, ¶ [0066]). Thus,
`
`at least because the ’730 Specification contemplated the steps being performed by
`
`multiple processors, the claimed “a processing element” is not limited to a single
`
`processing element performing all of the recited functions.
`
`Petitioner does not appear to contend that the disclosed function, i.e., quickly
`
`moving to a marked location in the recorded video, lacks written description
`
`support. (Pet. § V). However, for completeness, as described above the ’730
`
`Specification discloses that the video file can be viewed (i.e., played back) on a
`
`mobile communications device. The ’730 Specification further discloses that “[t]he
`
`user can then quickly move to marked locations in the captured video upon
`
`viewing of the video using standardized video viewing software.” (Ex. 1003, ¶
`
`[0052]). A POSITA would thus understand that the ’730 Specification discloses
`
`the function of “upon playback and in response to receipt from a user request,
`
`13
`
`

`

`automatically advancing the video file to the marked at least at least one video
`
`frame.” (Ex. 2001, ¶¶ 51-52).
`
`Finally, the ’730 Specification inherently discloses “a processing element
`
`configured to” perform this function, by disclosing the mobile communications
`
`device on which it is performed. Inherent disclosure can provide written
`
`description support. MPEP 2163.05 (“To comply with the written description
`
`requirement of 35 U.S.C. 112(a) […] each claim limitation must be expressly,
`
`implicitly, or inherently supported in the originally filed disclosure.”) (emphasis
`
`added). Furthermore, “[t]he ‘written description’ requirement must be applied in
`
`the context of the particular invention and the state of the knowledge.” Capon v.
`
`Eshhar, 418 F.3d 1349, 1357 (Fed. Cir. 2005).
`
`In this case, a POSITA would understand that a personal communication
`
`device that can run “apps” or “viewing software” or access video “at a website”
`
`necessarily includes a processor for running those apps or software, or for running
`
`a web browser for accessing the web. (Ex. 2001, ¶¶ 50-51). As such, the ’730
`
`Specification discloses a “processing element” (inherently, in the form of the
`
`processor of the mobile communications device) that is “configured” (by the
`
`viewing software) to perform the disclosed function as well. A POSITA would
`
`understand that the processing element of the mobile communications device is
`
`“associated with the memory element and the input” of the portable video and
`
`14
`
`

`

`imaging system at least because the mobile device is configured to view the
`
`captured video stored in the memory and ship to marks recorded using the input.
`
`(Ex. 2001, ¶ 50). Thus, the ’730 Specification provides written description for this
`
`claim element.
`
`D. Conclusion
`As shown above, the ’730 Specification, as filed, includes written-
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`description support for each of the elements cited by Petitioner. As such, there is
`
`no likelihood that claims 1-21 will be found unpatentable as lacking written-
`
`description support and Post-Grant Review should not be instituted based on
`
`Petitioner’s Ground 1.
`
`V.
`
`PETITIONER’S GROUND 9: OBVIOUSNESS OF CLAIMS 15, 17,
`AND 19 OVER SMITH, O’DONNELL, AND HALER
`
`Petitioner contends that claim 15 (and its dependent claims 17 and 20) is
`
`obvious under 35 U.S.C. § 103 over Smith in view of O’Donnell and in further
`
`view of Haler. Petitioner’s Ground 9 does not include individual analyses of claim
`
`elements, but rather cites to analyses in Grounds 2, 4, and 5. Similarly, Mr.
`
`Keller’s Declaration does not include any analysis in the portions related to
`
`Ground 9, but instead cites to the sections of the Declaration related to Grounds 2,
`
`4, and 5. As such, Patent Owner’s discussion will address (and cite to) Petitioner’s
`
`substantive analysis as it appears in the sections of the Petition related to Grounds
`
`2, 4, and 5, rather than the sections related to Ground 9.
`
`15
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`

`

`A.
`
`Smith in view of O’Donnell and in further view of Haler fails to
`teach or suggest 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.”
`
`Claim 15 is not obvious over the combination of Smith, O’Donnell, and
`
`Haler at least because the art of record, alone or in combination, fails to teach or
`
`suggest the claimed “processing element […] configured to […] wirelessly
`
`transmit the video file to a mobile communications device configured for viewing
`
`the video on the mobile communications device,” as recited in claim 15. In support
`
`of the contention that the combination teaches this claim element, the Petition cites
`
`to § VIII.C, which addresses dependent claim 8. (Pet. 86, citing Pet. 62).
`
`1.
`
`is not a mobile
`subsystem”
`Smith’s “secondary
`communications device configured for viewing the video on
`the mobile communications device
`
`Petitioner asserts that Smith’s “secondary subsystem” satisfies the claim
`
`limitation of “a mobile communications device configured for viewing the video
`
`on the mobile communications device” to which the processing element wirelessly
`
`transmits the video file. (Pet. 62). This argument fails for multiple reasons.
`
`As an initial note, both the station hub 110 and the shift hub 120 in Smith
`
`are described as secondary subsystems. (Ex. 1012, Smith, ¶ [0054]). In contrast,
`
`the incident recorder 208 is described as a primary subsystem. Id. at ¶ [0061].
`
`16
`
`

`

`a)
`
`Smith does not teach wirelessly transmitting the video file to a
`device where it can be viewed
`
`Claim 15 requires that the processing element of the “portable video and
`
`imaging system” be configured to wirelessly transmit the video file to a device
`
`where it can be viewed. Smith’s “incident recorder 208” transmits data to the “shift
`
`hub 120.” (Ex. 1012, Smith, ¶ [0098]). This set-up in Smith does not teach the
`
`recited limitation because (1) the shift hub 120 cannot display for viewing the data
`
`received from the incident recorder 208; and (2) Smith’s workstations, which are in
`
`communication with station hub 110 and at which the data is viewed, are not in
`
`communication with the incident recorder at all.
`
`In more detail, Smith teaches that the wired/wireless interface of the incident
`
`recorder 208 “provides communication between 132 and shift hub 120. […] A
`
`wireless interface enables handset 132 to wirelessly communicate with ad hoc
`
`transceiver 124 of shift hub 120.” (Ex. 1012, Smith, ¶ [0098]). Thus, Smith teaches
`
`that the incident recorder 208 transmits data to the shift hub 120. This shift hub,
`
`however, does not include a display for viewing the video, and Petitioner does not
`
`assert otherwise. See, Ex. 1012, Smith, FIG. 1.
`
`The station hub 110 (as opposed to the shift hub 12) hosts evidence manager
`
`112, which may be accessed at a workstation: “A user of an evidence manager
`
`[i.e., evidence manager 112 hosted by station hub 110] may obtain summaries of
`
`numerous incident reports using database query and reporting technologies and
`
`17
`
`

`

`may view the results on a workstation.” (Ex. 1012, Smith, ¶¶ [0031], [0055]).
`
`Thus, data from the incident recorder is loaded into the database of evidence
`
`manager 112. (Ex. 2001, ¶ 61, citing Ex. 1012, Smith, ¶ [0031]). Subsequently, a
`
`user who wishes to view the video accesses that database from a workstation. Id.
`
`Accordingly,
`
`the workstation on which
`
`the user views
`
`the video never
`
`communicates with the incident recorder at all. Thus, Smith fails to teach or
`
`suggest any component that (1) wirelessly communicates with the incident
`
`recorder, and (2) is configured for viewing the data.
`
`Recognizing that no data is viewable at the shift hub 120, Petitioner asserts
`
`that the incident recorder 208 communicates with station hub 110 “via the ‘ad hoc
`
`transceiver’ of the shift hub.” (Pet. 62). Respectfully, the Petitioner is incorrect.
`
`Smith discloses that processor 122 of shift hub 120 communicates “via ad hoc
`
`transceiver 124.” (Ex. 1012, Smith, ¶ [0056]) (emphasis added). The Petition
`
`mischaracterizes this teaching in Smith, claiming that it is processor 340 (of the
`
`handset 132, which is included in the incident recorder 208) that communicates via
`
`ad hoc transceiver 124. (Pet. 62; see also, Ex. 1012, Smith, FIG. 3 (illustrating
`
`incident recorder 208, handset 132, processor 340 (included in handset 132), and
`
`wired/wireless interface 349 (also included in handset 132)). However, processor
`
`340 (of the handset 132) communicates via wired/wireless interface 349 (also of
`
`the handset), and is disclosed exclusively as communicating with shift hub 120.
`
`18
`
`

`

`(Ex. 1012, Smith, ¶ [0098]). Moreover, because Smith’s “incident recorder 208”
`
`includes “wired/wireless interface 349,” a POSITA would not understand that