PTAB

IPR2013-00021

Midland Radio Corp v. Cobra Electronics Corp

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Two-Way Radio With Silent Annunciation
  • Brief Description: The ’306 patent describes a point-to-point two-way radio system, such as a walkie-talkie, that includes a user-selectable mechanism for announcing incoming calls. The system allows a user to choose between a conventional audible alert and a silent, vibrational alert.

3. Grounds for Unpatentability

Ground 1: Obviousness over Dailey in view of Nokia - Claims 1-7 are obvious over Dailey (Patent 5,487,181) in view of Nokia (Patent 5,915,225).

  • Prior Art Relied Upon: Dailey (Patent 5,487,181) and Nokia (Patent 5,915,225).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Dailey disclosed all elements of independent claim 1 except for a vibrator and a switch to select between audible and vibrational announcements. Dailey taught a two-way radio system (walkie-talkie) with a transmitter and receiver for call and voice signals, and an audible notification means (a tone generator or "ringer"). Petitioner contended that Nokia, which disclosed a portable communication device (a mobile phone), explicitly taught the missing elements. Nokia described a user-selectable alerting system that allowed the user to choose between an audible ringer, a silent vibrator, or a visual indicator to announce incoming calls. Petitioner asserted that adding Nokia's selectable vibration alert to Dailey's radio would result in the system claimed in the ’306 patent. The arguments for dependent claims 2-7 were based on Dailey's disclosure of various power sources (DC power, batteries) and operating frequencies, which were presented as well-known and conventional options in the art.
    • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would combine Dailey and Nokia to solve a known and well-documented problem with two-way radios, a problem expressly noted in the ’306 patent's background section. Specifically, audible-only alerts were ineffective in noisy environments (e.g., construction sites) and disruptive in quiet environments (e.g., libraries, meetings). Nokia's teachings directly addressed this by providing a silent, tactile alert mechanism for a portable device. A POSITA would have been motivated to incorporate this known solution from the analogous art of mobile phones into a two-way radio to enhance its utility and overcome the recognized limitations of audible alerts.
    • Expectation of Success: Petitioner asserted there would have been a high expectation of success. Both two-way radios and vibrational alerting mechanisms were mature technologies at the time. Integrating a small, commercially available vibration motor and a simple selection switch into the housing of Dailey's radio was a straightforward engineering task with predictable results.

Ground 2: Obviousness over Panther in view of Nokia - Claims 1-7 are obvious over Panther (Patent 5,263,195) in view of Nokia (Patent 5,915,225).

  • Prior Art Relied Upon: Panther (Patent 5,263,195) and Nokia (Patent 5,915,225).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground presented an alternative but similar argument to Ground 1. Petitioner argued that Panther, like Dailey, taught a conventional two-way radio system with audible alerting capabilities. Panther disclosed a handheld radio transceiver system with call signaling and audible annunciation, meeting most limitations of claim 1. As in the first ground, Petitioner relied on Nokia to teach the missing elements: a vibrator responsive to the call signal and a switch for selecting between the audible alert and the vibrational alert. The combination of Panther's base radio system and Nokia's user-selectable silent alert functionality was alleged to render the claimed invention obvious.
    • Motivation to Combine: The motivation was identical to that asserted in Ground 1. A POSITA would have sought to improve the functionality of Panther’s radio by adding a silent alerting option to make it more versatile for use in both loud and quiet settings. Nokia provided an established and effective solution for this exact problem in the closely related field of portable communications, making its application to a two-way radio a matter of common sense and predictable design improvement.
    • Expectation of Success: The expectation of success was argued to be high for the same reasons as in Ground 1. The combination involved applying a known feature from one portable electronic device to another using conventional components and established integration techniques.

4. Key Claim Construction Positions

  • "a switch for selectively choosing between an audible call announcement or a vibrational call announcement" (claim 1): Petitioner argued this term should be construed broadly under the "broadest reasonable interpretation" standard to encompass any mechanism that allows a user to select an alert mode. This would include not only a physical two-position toggle switch but also multi-function buttons, menu-driven software selections, or any other user interface element that performs the selection function. This broad construction was asserted to be consistent with the specification and necessary to properly read the claim onto prior art like Nokia, which taught user selection via a menu interface.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-7 of the ’306 patent as unpatentable under 35 U.S.C. §103.