Trials@uspto.gov
`571-272-7822
`
` Paper 8
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` Entered: October 1, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AXON ENTERPRISE, INC.,
`Petitioner,
`
`v.
`
`DIGITAL ALLY, INC.,
`Patent Owner.
`____________
`
`Case PGR2018-00052
`Patent 9,712,730 B2
`____________
`
`
`
`Before PHILLIP J. KAUFFMAN, MINN CHUNG, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Post-Grant Review
`35 U.S.C. § 324(a)
`
`
`
`
`571-272-7822
`
` Paper 8
`
`
` Entered: October 1, 2018
`
`
`
`
`
`
`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 B2
`____________
`
`
`
`Before PHILLIP J. KAUFFMAN, MINN CHUNG, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Post-Grant Review
`35 U.S.C. § 324(a)
`
`
`
`
`
`PGR2018-00052
`Patent 9,712,730 B2
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`
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`I. INTRODUCTION
`Axon Enterprise Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`requesting a post-grant review of claims 1–24 (the “challenged claims”) of
`U.S. Patent 9,712,730 B2 (Ex. 1001, “the ’730 patent”). Digital Ally, Inc.
`(“Patent Owner”) filed a Preliminary Response (Paper 7, “Prelim. Resp.”).
`We have authority to determine whether to institute a post-grant review.
`35 U.S.C. § 324; 37 C.F.R. § 42.4(a).
`The standard for instituting a post-grant review is set forth in
`35 U.S.C. § 324(a), which provides that a post-grant review may not be
`instituted unless “the information presented in the petition . . . , if such
`information is not rebutted, would demonstrate that it is more likely than not
`that at least 1 of the claims challenged in the petition is unpatentable.” Upon
`consideration of the Petition and the Preliminary Response, we conclude that
`the information presented in the Petition does not demonstrate that it is more
`likely than not at least one of the challenged claims is unpatentable.
`Accordingly, we do not institute a post-grant review.
`
`
`II. BACKGROUND
`A. Related Proceedings
`Petitioner indicates that there are no other proceedings involving the
`’730 patent. Pet. 92. Similarly, Patent Owner indicates that the ’730 patent
`is not currently a subject of any related matters. Paper 5, 2.
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`B. The ’730 Patent
`The ’730 patent relates to a portable video and imaging system
`comprising a camera and a video recording device. Ex. 1001, Abstract.
`Figure 1 of the ’730 patent is reproduced below.
`
`
`
`Figure 1 depicts an embodiment of the ’730 patent in the form of a portable
`video and imaging system mounted on a user’s body. Id. at 2:41–43. As
`shown in Figure 1 above, digital video recording system 10 comprises
`camera component 12, recording component 14, and mounting assembly 16.
`Id. at 4:39–42.
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`According to the ’730 patent, the camera component and the
`recording component are physically separate but “communicatively
`coupled” to each other. Id. at 2:22–24, Abstract. As shown in Figure 1,
`camera component 12 and recording component 14 are “communicatively
`coupled” via cabling 18. Id. at 5:4–6. In an alternative embodiment, camera
`component 12 and recording component 14 are “communicatively coupled”
`wirelessly such that instructions or data can be transmitted between the
`components as wireless signals over communication networks, such as
`Wi-Fi links. Id. at 5:8–14.
`Figure 30 of the ’730 patent is reproduced below.
`
`Figure 30 is a schematic of camera component 12 and recording
`component 14 in an embodiment of the ’730 patent. Id. at 3:50–51. As
`shown in Figure 30, recording component 14 includes processing element
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`38, memory element 40, and at least one communication port 44. Id. at
`7:10–13.
`Processing element 38 may “generally execute, process, or run
`instructions, code, software, firmware, programs, applications, apps,
`processes, services, daemons, or the like.” Id. at 7:20–23. In addition,
`memory element 40 may store “the instructions, code, software, firmware,
`programs, applications, apps, services, daemons, or the like” that are
`executed by processing element 40. Id. at 7:34–37.
`Communication port 44 may be in communication with processing
`element 38 and memory element 40, and generally allows recording
`component 14 to communicate with camera component 12 over a
`communications network. Id. at 7:51–56. In an embodiment,
`communication port 44 is a mini-USB port to connect cabling 18 for
`transmission of data from camera component 12 to recording component 14.
`Id. at 7:59–64.
`As shown in Figure 30 above, camera component 12 includes camera
`20, microphone 22, and user interface elements 24 for providing input or
`instructions to camera 20. Id. at 5:35–38. In an embodiment, user interface
`elements 24 comprises first input 32, which is a power on/off switch, and
`second input 34. Id. at 6:17–21.
`Second input 34 controls recording and marking of an event. Id. at
`6:35–36. For example, a user can instruct recording of video by actuating
`second input 34. Id. at 6:36–39. During recording of an event, the user can
`also “mark” the captured video by actuating second input 34. Id. at 6:40–41.
`According to the ’730 patent, “marking” of the captured video provides an
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`indication of a point in time, i.e., the time when the user depressed second
`input 34. Id. at 6:41–43. In other words, “marking” of the captured video
`allows the user to identify the point in time at which a particular event in the
`captured video occurs. Id. at 6:46–48. Thus, actuation of second input 34
`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 second input 34. Id. at 6:48–52. When viewing the video using
`standardized video-viewing software, the user can quickly move to the
`marked locations in the captured video. Id. at 6:43–46.
`In another embodiment, digital video recording system 10 may be
`provided with a “pre-event” recording program and method in which
`system 10 records constantly in a loop of a selected duration of time, such as
`thirty seconds or sixty seconds. Id. at 8:41–45. When a triggering event
`occurs, camera component 12 transmits to recording component 14 the
`captured video for the selected duration of time, e.g., the thirty-second
`segment of captured video occurring prior to the triggering event. Id. at
`8:45–49. Examples of a triggering event may include the user actuating
`second input 34 to instruct recording by the camera component 12, turning
`on a vehicle’s siren and/or signal lights, an accelerometer measurement
`outside a pre-established norm, a position of the vehicle and/or officer as
`measured by a GPS, a vehicle crash event or the police vehicle attaining a
`threshold speed (e.g., 80 m.p.h.), etc. Id. at 8:50–57.
`In an embodiment, the recorded video can be downloaded to a laptop
`or other computer. Id. at 9:14–15. The captured video may also be viewed
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`on a mobile communications device using an app, a web site, or viewing
`software. Id. at 9:29–32.
`
`C. Illustrative Claim
`Claims 1, 15, and 22 are the independent claims in the ’730 patent.
`Claim 15 is illustrative of the challenged claims and is reproduced below.
` 15. A portable video and imaging system for law enforcement
`comprising:
`a portable housing configured to be selectively mounted on a
`body of a law enforcement officer and in a law
`enforcement vehicle;
`a first mounting assembly configured for mounting the
`housing to the law enforcement officer’s body;
`a second mounting assembly configured for mounting the
`housing in the law enforcement vehicle, such 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;
`a camera component housed within the housing and
`configured to capture video of an event;
`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;
`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;
`and
`a processing element associated with the memory element
`and the input and configured to:
`receive said activation signal generated in response to the
`law enforcement officer actuating the input,
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`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,
`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,
`wirelessly
`transmit
`the video
`file
`to a mobile
`communications device configured for viewing the
`video on the mobile communications device, and
`instruct capturing of video by the camera component for
`recording
`the event
`in
`response
`to
`receiving
`information indicative of a triggering event, wherein
`the triggering event is a signal from the law
`enforcement vehicle.
`Ex. 1001, 19:61–20:39.
`
`D. Asserted Prior Art and Grounds of Unpatentability
`Petitioner cites the following references in its art-based challenges to
`patentability.
`
`Reference
`U.S. Patent App. Pub. No. 2009/0276708 A1
`(published Nov. 5, 2009)
`U.S. Patent No. 6,563,532 B1 (issued May 13,
`2003).
`International Patent App. Pub. No. WO
`2012/037139 A2 (published Mar. 22, 2012)
`U.S. Patent App. Pub. No. 2009/0002491 A1
`(published Jan. 1, 2009)
`
`Designation Exhibit No.
`
`Smith
`
`Ex. 1012
`
`Strub
`
`Ex. 1013
`
`O’Donnell
`
`Ex. 1014
`
`Haler
`
`Ex. 1015
`
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`Reference
`U.S. Patent App. Pub. No. 2011/0018998 A1
`(published Jan. 27, 2011)
`U.S. Patent App. Pub. No. 2011/0098924 A1
`(published Apr. 28, 2011)
`
`Designation Exhibit No.
`
`Guzik
`
`Ex. 1016
`
`Balardeta
`
`Ex. 1017
`
`Petitioner asserts the following grounds of unpatentability in relation
`to the challenged claims in the ’730 patent:
`Claim(s) Challenged Statutory
`Basis
`§ 112(a)
`§ 103
`§ 103
`§ 103
`§ 103
`§ 103
`§ 103
`§ 103
`§ 103
`§ 103
`§ 103
`§ 103
`§ 103
`
`1–21
`1, 4, 7, and 9
`2 and 3
`5, 6, and 8
`10 and 12
`11 and 22
`13 and 23
`14
`15, 17, and 20
`16
`18 and 19
`21
`24
`
`Reference(s) /
`Asserted Prior Art
`
`
`Smith
`Smith and Strub
`Smith and O’Donnell
`Smith and Haler
`Smith and Guzik
`Smith, Haler, and Guzik
`Smith and Balardeta
`Smith, O’Donnell, and Haler
`Smith, O’Donnell, Haler, and Strub
`Smith, O’Donnell, Haler, and Guzik
`Smith, O’Donnell, Haler, and Balardeta
`Smith, Guzik, and Strub
`
`
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`Pet. 8–9. Petitioner also relies on the Declaration of Kurtis P. Keller
`(Ex. 1027). Patent Owner relies on the Declaration of Dr. Vijay K.
`Madisetti (Ex. 2001) to support its Preliminary Response.
`
`
`III. ANALYSIS
`A. Statutory Disclaimer
`After the filing of the Petition on March 19, 2018, Patent Owner filed
`a statutory disclaimer, disclaiming claims 1–7, 9–14, and 22–24 of the ’730
`patent, effective July 5, 2018. Prelim. Resp. 4; Ex. 2007, 1.
`“No post-grant review will be instituted based on disclaimed claims.”
`37 C.F.R. § 42.207(e). Further, as we have determined in the context of
`covered business method patents, “patent review eligibility is determined
`based on the claims of the challenged patent as they exist at the time of the
`decision whether to institute, and statutorily disclaimed claims must be
`treated as if they never existed.” Facebook, Inc. v. Skky, LLC, Case
`CBM2016-00091, slip op. at 11 (PTAB Sept. 28, 2017) (Paper 12)
`(precedential). Here, because claims 1–7, 9–14, and 22–24 have been
`statutorily disclaimed, we must treat them as if they never existed in
`determining whether to institute a post-grant review. Consequently, we will
`consider only claims 8 and 15–21 for purposes of determining post-grant
`eligibility. Similarly, our substantive analysis of Petitioner’s challenges will
`address only claims 8 and 15–21 based on the following grounds of
`unpatentability.
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`Claim(s) Challenged Statutory
`Basis
`§ 112(a)
`§ 103
`§ 103
`§ 103
`§ 103
`§ 103
`
`8 and 15–21
`8
`15, 17, and 20
`16
`18 and 19
`21
`
`
`
`References /
`Asserted Prior Art
`
`
`Smith and O’Donnell
`Smith, O’Donnell, and Haler
`Smith, O’Donnell, Haler, and Strub
`Smith, O’Donnell, Haler, and Guzik
`Smith, O’Donnell, Haler, and Balardeta
`
`B. Post-Grant Review Eligibility
`Post-grant reviews are available only for patents that issue from
`applications that, at one point, contained at least one claim with an “effective
`filing date,” as defined by 35 U.S.C. § 100(i), on or after March 16, 2013.
`See AIA1 §§ 6(f)(2)(A), 3(n)(1). Our rules require a petitioner for post-grant
`review to certify that the challenged patent is available for post-grant review.
`37 C.F.R. § 42.204(a). Petitioner includes the requisite certification, and
`further, asserts that at least claim 15 has an effective filing date after
`March 16, 2013. Pet. 2–5.
`The effective filing date of an application for a patent on an invention
`is “the filing date of the earliest application for which the . . . application is
`entitled, as to such invention, to a right of priority under section 119, 365(a),
`365(b), 386(a), or 386(b) or to the benefit of an earlier filing date under
`
`
`1 Leahy-Smith America Invents Act (“AIA”), Pub L. No. 112-29,
`125 Stat. 284 (2011).
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`section 120, 121, 365(c), or 386(c).” 35 U.S.C. § 100(i)(1)(B). Entitlement
`to the benefit of an earlier date under §§ 119 and 120 is premised on
`disclosure of the claimed invention “in the manner provided by § 112(a)
`(other than the requirement to disclose the best mode)” in the application for
`which the benefit of the earlier filing date is sought. See 35 U.S.C.
`§§ 119(e), 120.
`According to the front page of the ’730 patent, the ’730 patent was
`filed on January, 8, 2016, and is a continuation of application
`no. 14/575,433, filed December 18, 2014, which in turn is a continuation of
`application no. 14/040,329, filed on September 27, 2013. Ex. 1001, [63].
`The ’730 patent also lists, as related U.S. applications, provisional
`application nos. 61/707,348 (Ex. 1011, “the ’348 provisional”) and
`61/707,326 (Ex. 1010, “the ’326 provisional”), both filed on September 28,
`2012. Id. at [60]. Petitioner asserts that the ’730 patent is eligible for post-
`grant review because neither the ’326 provisional nor the ’348 provisional
`provides written-description support for at least claim 15. Pet. 3–5.
`Whether the written description requirement of 35 U.S.C. § 112(a) has
`been satisfied “requires an objective inquiry into the four corners of the
`specification from the perspective of a person of ordinary skill in the art.”
`Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
`(en banc). The specification must describe sufficiently an invention
`understandable to a person of ordinary skill in the art and “show that the
`inventor actually invented the invention claimed.” Id. “One shows that one
`is ‘in possession’ of the invention by describing the invention, with all its
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`claimed limitations, not that which makes it obvious.” Lockwood v. Am.
`Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997) (emphasis omitted).
`Petitioner asserts that claim 15 requires a “processing element” that
`performs the following three functions: (1) “receive [an] activation signal”;
`(2) “in response to the activation signal, store a mark in the video file for at
`least one of the plurality of video frames”; and (3) “upon playback of the
`video file . . . automatically advance the video file to the marked at least one
`video frame.”2 Pet. 3–4. Petitioner further contends that neither the ’326
`provisional nor the ’348 provisional reasonably conveys to a person of
`ordinary skill in the art that the inventor had possession of a “processing
`element” that performed all of these three functions. Id. at 4.
`Petitioner asserts that, although the ’348 provisional describes a
`“camera” that includes “an electronic controller” (i.e., the claimed
`“processing element”) and “a second button . . . [that] causes the camera to
`‘bookmark’ a video during video recording,” it does not disclose that the
`“electronic controller” “upon playback of the video file . . . automatically
`advance[s] the video file to the marked . . . video frame,” as recited in
`claim 15. Id. at 4–5 (citing Ex. 1011, 5). Petitioner argues that, because the
`’348 provisional describes that the “jump to the bookmark” function is
`performed by a computer when the user views the video “once transferred to
`the computer,” a person of ordinary skill in the art would have understood
`that the camera’s electronic controller is separate from the computer and,
`
`
`2 Petitioner asserts that claim 1 also requires the same three functions.
`Pet. 3–4. As discussed above, in determining post-grant review eligibility,
`we treat claim 1 as if it never existed because claim 1 has been disclaimed.
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`therefore, does not perform the “jump to the bookmark” function. Id. at 5
`(citing Ex. 1011, 5; Ex. 1027 ¶ 42).
`We have reviewed Petitioner’s evidence and agree with Petitioner that
`neither the ’326 provisional nor the ’348 provisional describes the claimed
`invention, with all of the limitations recited in claim 15. Patent Owner does
`not dispute the post-grant review eligibility of the ’730 patent. See generally
`Prelim. Resp.
`An additional requirement for post-grant review eligibility is that “[a]
`petition for a post-grant review may only be filed not later than the date that
`is 9 months after the date of the grant of the patent.” 35 U.S.C. § 321(c); see
`37 C.F.R. § 42.202(a). The Petition was accorded a filing date of March 19,
`2018 (Paper 3), which is not later than the date that is 9 months after July 18,
`2017, the date of the grant of the ’730 patent. Accordingly, we determine
`that Petitioner has demonstrated sufficiently that the ’730 patent is eligible
`for post-grant review.
`
`C. Level of Ordinary Skill in the Art
`The parties appear to dispute the level of skill in the art at the time of
`the invention of the ’730 patent. The main point of dispute appears to be
`whether a person of ordinary skill in the art would have had a degree in
`mechanical engineering or electrical (or computer) engineering. Pet. 13;
`Prelim. Resp. 2–3. Although the parties’ proposals for the level of skill in
`the art have differences in wording, we do not find the proposals to be
`materially different because Petitioner asserts broadly that a person of
`ordinary skill in the art would have “an interdisciplinary engineering
`background that includes experience and/or education in mechanical
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`engineering and in electrical or computer engineering (or a related field such
`as computer science).” Pet. 13 (citing Ex. 1027 ¶ 20). For purposes of this
`Decision, we find no meaningful differences between the parties’ respective
`definitions that would materially alter the outcome of this Decision.
`Further, the level of ordinary skill in the art may be reflected by the
`prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
`Cir. 2001) (prior art itself can reflect appropriate level of ordinary skill in the
`art). We find the parties’ definitions to be comparable to the level of skill
`reflected in the asserted prior art. Hence, for purposes of this Decision, the
`prior art itself is sufficient to demonstrate the level of ordinary skill in the
`art.
`
`D. Claim Construction
`In a post-grant review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.200(b). Under the broadest
`reasonable interpretation standard, and absent any special definitions, claim
`terms generally are given their ordinary and customary meaning, as would
`be understood by one of ordinary skill in the art, in view of the specification.
`In re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`Neither Petitioner nor Patent Owner proposes an express construction
`for any claim term. See Pet. 13; Prelim. Resp. 4–5. Based on the current
`record, and for purposes of this Decision, we do not find it necessary to
`make formal claim constructions for any claim terms. See, e.g., Nidec Motor
`Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed.
`Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and
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`only to the extent necessary to resolve the controversy.’” (quoting Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
`
`E. Lack of Written Description
`Petitioner contends that claims 8 and 15–21 are unpatentable as
`lacking written description support under 35 U.S.C. § 112(a) because the
`originally filed specification of the ’730 patent (Ex. 1003, “the Original
`Specification”) does not disclose a “processing element” that performs the
`three functions identified by Petitioner (set forth above) in the context of
`assessing post-grant review eligibility. Pet. 19–21. Petitioner does not
`dispute that the ’730 patent discloses processing element 38 or performance
`of the three functions identified by Petitioner. Rather, Petitioner argues that
`the Original Specification does not disclose that “processing element 38 is
`involved, in any way, with marking video,” or in performing the other two
`functions mentioned above. Id. at 20–21 (emphases added). In other words,
`Petitioner essentially argues that a person of ordinary skill would not
`understand that the element that performs the disclosed functions in the ’730
`patent is the processing element disclosed in the patent.
`Patent Owner disagrees and argues that a person of ordinary skill in
`the art would understand that processing element 38 described in the
`Original Specification performs all three functions identified by Petitioner.
`Prelim. Resp. 5–15.
`Upon considering the parties’ arguments and the record presented, we
`are not persuaded by Petitioner’s argument and agree with Patent Owner’s
`argument. As discussed above in our overview of the ’730 patent (§ II.B),
`the ’730 patent describes that camera component 12 and recording
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`component 14 are “communicatively coupled” via cabling 18 or a wireless
`communication link such that instructions or data can be transmitted
`between the components. Ex. 1001, 5:4–6, 5:8–14. The ’730 patent further
`describes that communication port 44 is in communication with processing
`element 38 and generally allows recording component 14 to communicate
`with camera component 12 over a communications link, such as cabling 18
`connected to a mini-USB port. Id. at 7:59–64. In addition, the ’730 patent
`describes that actuation of second input 34 serves as both an instruction to
`begin recording and to mark the captured video. Id. at 6:36–41, 6:48–52.
`Patent Owner cites the same or similar disclosures in the Original
`Specification, as well as the testimony of Dr. Madisetti, and argues that a
`person of ordinary skill in the art would understand that the Original
`Specification discloses a “processing element” that receives an activation
`signal and, in response to the activation signal, stores a mark in the video
`file. Prelim. Resp. 7–12 (citing Ex. 1003 ¶¶ 40, 45–48, 52; Ex. 2001 ¶¶ 40,
`46). We agree with Patent Owner’s argument.
`We also agree with Patent Owner that the ’730 patent discloses a
`“processing element” that “automatically advance[s] the video file to the
`marked . . . video frame” during playback because the ’730 patent describes
`that, when viewing the video using standardized video-viewing software, the
`user can quickly move to the marked locations in the captured video.
`Ex. 1001, 6:43–46. The ’730 patent also describes that processing element
`38 can “generally execute” any software or program (id. at 7:20–23) and that
`memory element 40 can store any software or program executed by
`processing element 40 (id. at 7:34–37). In other words, the ’730 patent
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`describes processing element 38 as a general-purpose processor that can
`execute standardized video-viewing software that provides the function of
`quickly moving to the marked locations in the captured video.
`More importantly, we note that the Original Specification included
`claims that recite a “processing element” that performs the same or
`essentially the same functions identified by Petitioner. For example,
`originally filed claim 17 recites
`a processing element associated with the memory element and
`the input and configured to:
`receive said activation signal generated in response to the law
`enforcement officer actuating the input,
`in response to the activation signal, mark the captured video to
`thereby identify a point in time or location in the marked,
`captured video for enabling a user viewing the captured video
`to move to said point in time or location in the marked,
`captured video,
`. . . .
`Ex. 1003, 41–42 (emphases added).
`“Original claims are part of the original specification and in many
`cases will satisfy the written description requirement.” Mentor Graphics
`Corp. v. EVE-USA, Inc., 851 F.3d 1275, 1297 (Fed. Cir. 2017) (citations
`omitted). Although “certain claims, such as claims to a functionally defined
`genus, will not satisfy the written description requirement without a
`disclosure showing that the applicant had invented species sufficient to
`support the claim,” Crown Packaging Tech., Inc. v. Ball Metal Beverage
`Container Corp., 635 F.3d 1373, 1380 (Fed. Cir. 2011) (citing Ariad
`Pharms., 598 F.3d at 1349), the challenged claims in this case do not raise
`such genus/species concerns. Therefore, because original claim 17 recites a
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`“processing element” that performs the same or essentially the same
`functions as those recited in the challenged claims, we determine that the
`originally filed claim 17, in view of the disclosures in the Specification or
`the Original Specification discussed above, satisfies the written description
`requirement under § 112(a) for the limitations argued by Petitioner. See
`Mentor Graphics, 851 F.3d at 1297 (holding that the original claim language
`demonstrates that the inventor possessed an invention including the disputed
`limitation); Crown Packaging, 635 F.3d at 1381 (finding that the original
`claims show “the applicants had in mind the invention as claimed” and
`described it); ScriptPro LLC v. Innovation Assocs., Inc., 833 F.3d 1336,
`1341 (Fed. Cir. 2016) (finding written description support when the original
`claims and the challenged claims recited the same limitation).
`Accordingly, based on the record presented, we determine that
`Petitioner has not demonstrated that it is more likely than not at least one of
`claims 8 and 15–21 is unpatentable as lacking written description support
`under 35 U.S.C. § 112(a).
`
`F. Obviousness over the Combination of Smith and O’Donnell or
`over the Combination of Smith, O’Donnell, and Haler
`Petitioner contends that claim 8 is unpatentable under 35 U.S.C. § 103
`as obvious over the combination of Smith and O’Donnell. Pet. 62–64.
`Petitioner also asserts that claims 15, 17, and 20 are unpatentable under
`35 U.S.C. § 103 as obvious over the combination of Smith, O’Donnell, and
`Haler. Id. at 83–88. We have reviewed the parties’ contentions and
`supporting evidence. Given the evidence of record, we are not persuaded
`that Petitioner has established that it is more likely than not claim 8 is
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`unpatentable as obvious over the combination of Smith and O’Donnell or
`claims 15, 17, and 20 are unpatentable as obvious over the combination of
`Smith, O’Donnell, and Haler.
`
`1. Relevant Principles of Law
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time the invention was
`made to a person having ordinary skill in the art to which the subject matter
`pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The
`question of obviousness is resolved on the basis of underlying factual
`determinations, including: (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
`of skill in the art; and (4) where in evidence, so-called secondary
`considerations.3 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We
`analyze this asserted ground based on obviousness with the principles
`identified above in mind.
`
`2. Overview of Smith (Ex. 1012)
`Smith describes a system for collecting and managing information
`about incidents comprising primary and secondary subsystems. Ex. 1012
`¶ 28. Primary subsystems are generally used at the time and place of the
`
`
`3 Patent Owner does not present arguments or evidence of such secondary
`considerations in its Preliminary Response. Therefore, at this preliminary
`stage, secondary considerations do not constitute part of our analysis.
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`incident. Id. Secondary subsystems generally are not used at the time and
`place of the incident. Id.
`Figure 2 of Smith is reproduced below.
`
`
`Figure 2 is a pictorial representation of a hypothetical incident involving two
`law enforcement officers apprehending a suspect while each officer is
`operating a respective primary subsystem for collecting and managing
`information about incidents. Id. ¶ 11.
`As depicted in Figure 2, each of primary subsystem 208 or 209 is
`worn by an officer and records a movie during the incident. Id. ¶ 62.
`Primary subsystem 208 (209) includes headset 222 (232), handset 132 (134),
`and on-duty transceiver 228 (238). Id. ¶ 63. Each headset 222 or 232
`includes a camera and a microphone. Id.
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`Figure 1 of Smith is reproduced below.
`
`
`Figure 1 is a block diagram of a secondary subsystem of Smith. Id. ¶ 10. As
`shown in Figure 1, secondary system 100 comprises station hub 110 and
`shift hub 120, which are coupled to each other by network 114. Id. ¶ 55.
`Shift hub 120 includes processor 122, ad hoc transceiver 124 for
`wireless communication with primary subsystems, and docks 126 for wired
`communication with primary subsystems. Id. Docks 126 accept, by plug-in
`to a wired network, any suitable number of primary subsystems. Id. ¶ 59.
`As depicted in Figure 1, handset 132 can be electrically coupled to dock 126
`to communicate information between handset 132 and shift hub 120 via a
`wired interface. Id. ¶ 98. If primary subsystems are nearby but not plugged
`into docks 126, data transfer may occur via ad hoc transceiver 124 from
`primary subsystems with wireless communication capability. Id. ¶ 60. For
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`example, handset 132 can communicate wirelessly with ad hoc transceiver
`of shift hub 120 via a wireless interface. Id. ¶ 98.
`As also shown in Figure 1, station hub 110 hosts evidence manager
`112. Id. ¶ 55. A user of an evidence manager may obtain summaries of
`incident reports using database queries and reporting technologies. Id. ¶ 31.
`
`3. Overview of O’Donnell (Ex. 1014)
`As background, O’Donnell states that, when recording video or taking
`photographs in a sports application, digital video cameras are often mounted
`in a location that does not permit the user to easily see the camera. Ex. 1014
`¶ 136. To address this problem, O’Donnell describes embodiments that
`integrate Bluetooth® wireless technology in wearable digital video cameras
`to implement rem
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