Digital Ally Inc v. Utility Associates Inc

1. Case Identification

• Case #: IPR2015-01389
• Patent #: 6,831,556
• Filed: June 11, 2015
• Petitioner(s): Digital Ally, Inc.
• Patent Owner(s): Utility Associates, Inc.
• Challenged Claims: 8

2. Patent Overview

• Title: Mobile Digital Video and Audio Recording System
• Brief Description: The ’556 patent discloses a surveillance system for use in a mobile environment, such as an emergency response vehicle. The system captures video, audio, and other data, digitally integrates the information into a single data stream, and stores the stream in a local storage unit for subsequent transfer to a second, remote location.

3. Grounds for Unpatentability

Ground 1: Obviousness over Monroe and Rayner - Claim 8 is obvious over Monroe in view of Rayner and further in view of the knowledge of one of ordinary skill in the art.

• Prior Art Relied Upon: Monroe (Patent 6,246,320) and Rayner (Patent 6,389,340).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that claim 8, which depends from claims 1, 2, 5, and 7, is unpatentable over the combination.
    • Claims 1 & 2: Petitioner asserted that Monroe, which discloses a multi-media surveillance system for commercial transport (e.g., aircraft), teaches the core limitations of independent claim 1. This includes a device for capturing video, audio, and data; and a server for digitally integrating the data into a single stream and transferring it to a second location. Petitioner contended Monroe’s system, comprising a master controller and multimedia multiplexer, constitutes the claimed server.
    • Claim 5: This claim adds a two-tier storage system with a temporary buffer and permanent memory, triggered by an event. Petitioner argued that while Monroe discloses archival recording, Rayner explicitly teaches this two-tier memory architecture for a vehicle data recorder. Rayner discloses continuously recording data in a buffer memory and, upon a triggering event (like a collision), copying the data to more permanent non-volatile memory.
    • Claim 7: This claim adds a wireless device for transmitting data and an Ethernet controller for wired transmission. Petitioner argued Monroe discloses both wireless (radio, satellite) and wired LAN transmission systems. A person of ordinary skill in the art (POSITA) would have found it obvious to substitute a standard Ethernet controller for Monroe’s generic wired LAN to achieve predictable results.
    • Claim 8: This is the sole challenged claim. It requires the system’s computer processing unit to include a camera control device for controlling at least one camera, where the control device can be controlled by either the local computer processing unit or a remote one via the wireless device. Petitioner asserted that Monroe explicitly teaches this functionality. Monroe discloses that cameras can be "manually operated by crew or ground personnel" and that a remote ground station can send "operational commands" for "camera tilt, pan and zoom and sensor activation" to the onboard system via a two-way wireless link.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Rayner’s two-tier memory system with Monroe’s surveillance system to solve a known problem: ensuring that all pertinent data surrounding a triggering event is reliably and permanently captured for archival purposes, a need that Monroe itself recognized. The combination simply applies a known data-storage technique (from Rayner) to an existing system (Monroe) to improve its function.
  • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success because combining Rayner’s memory architecture with Monroe’s system would involve only well-known programming and system design techniques to yield a predictable result.

4. Arguments Regarding Discretionary Denial

• This petition was filed as a "follow-on" to a prior inter partes review (IPR), IPR2014-00725, which challenged claims 1-7 and 9-25 of the ’556 patent but in which the Board did not institute review on claim 8. Petitioner presented arguments under 35 U.S.C. §314(a) and §325(d) as to why institution was appropriate.
• Different Arguments: Petitioner argued this petition does not raise the same or substantially the same arguments as the prior IPR. The current rejection of claim 8 is based on Monroe, Rayner, and the "knowledge of one of ordinary skill in the art," whereas the prior petition’s challenge to claim 8 was based only on Monroe and Rayner. This addition of a POSITA’s knowledge was asserted to present new arguments not previously considered by the Board.
• No Harassment: Petitioner contended the petition was not harassing, but rather an efficient mechanism to resolve a dispute that the Patent Owner intended to continue in district court litigation. By addressing the patentability of the sole remaining asserted claim, the IPR would be more economical for both parties and the courts than continued litigation.
• Judicial Economy: Petitioner argued that instituting review on a single claim with a single ground would not unduly tax the Board’s resources, especially given the Board’s existing familiarity with the ’556 patent and the primary prior art reference (Monroe) from the earlier IPR.

5. Relief Requested

• Petitioner requests institution of inter partes review and cancellation of claim 8 of Patent 6,831,556 as unpatentable.