Avigilon USA Corp Inc v. JDS Technologies Inc

1. Case Identification

• Case #: IPR2016-00522
• Patent #: 6,891,566
• Filed: January 29, 2016
• Petitioner(s): Avigilon USA Corporation, Inc. and Avigilon Corporation
• Patent Owner(s): JDS Technologies, Inc.
• Challenged Claims: 47-54

2. Patent Overview

• Title: Digital Video System
• Brief Description: The ’566 patent describes a digital video surveillance system and a computer-readable medium for recording a sequence of images. The technology involves storing images from one or more cameras, which are connected to video servers over a network, into a single indexed file and using unique identifiers to manage access to the cameras.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claim 47 under §102(b) over Winter

• Prior Art Relied Upon: Winter (International Publication No. WO 1998/019450).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Winter, which discloses a closed-circuit video security surveillance system, anticipates every limitation of independent claim 47. Winter teaches a system that records video streams onto hard drives, including "compressed video data 1288 and index data 1290." Petitioner asserted Winter’s disclosure of storing video as .AVI files, which can be compressed in JPEG format, satisfies the "graphics file format" limitation. The index data in Winter, which includes a "starting date and time and an ending date and time" for each file, was argued to meet the claim’s requirement for a "first marker" and a "second marker" to identify the start and end of an image sequence within a single concatenated file.

Ground 2: Obviousness of Claim 48 under §103 over Winter

• Prior Art Relied Upon: Winter (WO 1998/019450).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that claim 48 is nearly identical to claim 47 but adds an "image viewer program" operable to use the index to locate images (limitation 48-d) and, if the index is not found, to create one (limitation 48-e). Winter’s disclosed "video search component" and "archive manager component" were alleged to constitute the claimed image viewer program. While Winter did not explicitly disclose creating a missing index, Petitioner contended this was a common-sense feature.
  • Motivation to Combine (with common sense): A person of ordinary skill in the art (POSITA) would be motivated to add the functionality of creating a missing index to improve system robustness and enable playback features like rewind and fast forward. Petitioner argued this would be a simple and logical step to ensure the indexing system, which Winter already taught, was always available.
  • Expectation of Success: A POSITA would have a high expectation of success in implementing this minor software modification, as it involves a predictable programming task to handle a foreseeable condition (a missing index file).

Ground 3: Obviousness of Claims 49 and 52-54 under §103 over AXIS Manual, Flightcam, and Schell

• Prior Art Relied Upon: AXIS Manual (AXIS 240 user manual), Flightcam Publications (a whitepaper and webpage showing an implementation of the AXIS 240 server), and Schell (Patent 6,477,648).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued the combination renders independent claim 49 obvious. The AXIS Manual was asserted to teach a digital video system with a client computer, a network, and a video server connected to multiple cameras, meeting the preamble and limitations 49-a, 49-b, and 49-c. Schell was introduced to teach using a "unique number" (specifically a MAC address) stored on a server to validate the server's identity before a client computer accepts data, addressing limitations 49-d and 49-f (enabling/disabling display based on the unique number). Flightcam Publications, an exemplary use case for the AXIS server, was used to show a user interface displaying simultaneous feeds from multiple cameras in separate windows, meeting limitation 49-e. Dependent claims 52 (multi-camera server), 53 (validating the unique number), and 54 (unique number is a MAC address) were argued to be taught by the same combination.
  • Motivation to Combine: A POSITA would combine Schell’s security method with the AXIS system to solve the known problem of unauthorized access on a network. The AXIS system's password protection was described as insufficient, and Schell’s MAC address validation offered a known, more robust solution. The combination was a straightforward application of a known security technique to a known system. Further, a POSITA implementing the AXIS system would naturally look to the Flightcam Publications, an official use-case example, for guidance on creating a user-friendly multi-camera display.
  • Expectation of Success: Combining the references involved using known elements for their intended purposes (e.g., using MAC filtering for security), which would yield the predictable result of a more secure video surveillance system with a functional multi-view user interface.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including for claim 50 (obvious over AXIS Manual, Flightcam, Schell, and Walpole, which adds the teaching of a plurality of video servers) and claim 51 (obvious over the claim 50 combination plus AXIS 200, which adds the teaching of a self-contained camera server). These grounds relied on the same core combination and design modification theories.

4. Key Claim Construction Positions

• "Digital storage device" (claims 47, 48): Petitioner proposed the construction "device for digitally storing computer code or other data," based on the specification’s examples including hard disks, CDROMs, and DVDs.
• "Program" (claims 47, 48): Petitioner proposed "coded software instructions for controlling the operation of a computer or other machine," citing the specification’s description of a "user interface client application."
• "Unique number" (claim 49): Petitioner proposed "data that uniquely identifies hardware on a network, such as a MAC address." This construction was central to combining the AXIS Manual, which discloses using an "Ethernet address," with Schell, which teaches authenticating servers via their MAC addresses.

5. Relief Requested

• Petitioner requested that the Board institute an inter partes review and issue a final written decision canceling claims 47-54 of Patent 6,891,566 as unpatentable.