Mobile Tech Inc v. InVue Security Products Inc

1. Case Identification

• Case #: IPR2016-00895
• Patent #: 9,135,800
• Filed: April 14, 2016
• Petitioner(s): Mobile Tech, Inc.
• Patent Owner(s): InVue Security Products Inc.
• Challenged Claims: 1-34

2. Patent Overview

• Title: Programmable Security System for Retail Merchandise
• Brief Description: The ’800 patent discloses security systems for protecting retail merchandise from theft. The system comprises three main components: a programming station that generates a unique security code, a programmable key that stores the code, and a security device attached to merchandise that is armed or disarmed by the key upon a matching of the security code. The key can be configured to deactivate after a predetermined time or number of uses to prevent theft by dishonest employees or shoplifters.

3. Grounds for Unpatentability

Ground 1: Anticipation by Belden - Claims 1, 3-7, 9-29, and 31-34 are anticipated by Belden

• Prior Art Relied Upon: Belden (Application # 2007/0159328).
• Core Argument for this Ground:
  • Priority Date Argument: Petitioner first argued that the ’800 patent was not entitled to the filing date of its parent applications, from which Belden published. Petitioner asserted the parent applications failed the written description requirement of 35 U.S.C. §112 because they only disclosed disarming (not arming) a security device upon a code match and were expressly limited to wireless communication. Because the challenged claims recite both arming and disarming and are not limited to wireless communication, Petitioner contended they contain new matter, making Belden, which published in 2007, prior art under 35 U.S.C. §102(b).
  • Prior Art Mapping: Petitioner argued Belden disclosed every limitation of the challenged claims. Belden taught a programmable security system with a programming station that randomly generates a unique security disarm code (SDC) and stores it in memory. It further disclosed a programmable "smart key" that receives and stores the SDC and a security device (alarm module) that is attached to merchandise. The smart key is configured to disarm the security device upon a matching of the SDC stored in the key with the SDC stored in the device, satisfying the "arm or disarm" limitation.

Ground 2: Obviousness over Rothbaum and Denison - Claims 1, 3-22, and 24-34 are obvious over Rothbaum in view of Denison

• Prior Art Relied Upon: Rothbaum (Patent 5,543,782) and Denison (Application # 2004/0201449).
• Core Argument for this Ground:
  • Prior Art Mapping: Rothbaum disclosed a retail anti-theft system with a security device attached to merchandise via a cord, where an alarm sounds if the cord is cut. The system used a simple mechanical key for arming and disarming. Denison disclosed a security system for vending machines that solved key management problems by using a programmable electronic key, a programming station, and an electronic lock. Denison's key could be programmed with access codes and operation limits, such as an expiration time. Petitioner argued that combining these references supplied Rothbaum's basic retail security framework with Denison's advanced programmable key and programming station functionality.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Denison’s programmable key technology with Rothbaum’s retail security device to address the well-known problems of lost, stolen, or copied mechanical keys in a retail setting. Both references are in the field of securing merchandise, and Denison’s solution to key management was directly applicable to improving the security and functionality of the Rothbaum system.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success, as the use of electronic keys and programming stations in security systems was a known technological progression. Integrating Denison's electronic components into Rothbaum's alarm system was a predictable combination of known elements to achieve a known goal.

Ground 3: Obviousness over Rothbaum, Denison, and Ott - Claims 2 and 23 are obvious over Rothbaum, Denison, and Ott

• Prior Art Relied Upon: Rothbaum (Patent 5,543,782), Denison (Application # 2004/0201449), and Ott (Patent 6,380,855).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground built upon the Rothbaum/Denison combination to address dependent claims 2 (fastener comprises an adhesive) and 23 (switch comprises a plunger switch). Ott disclosed a device for safeguarding merchandise that used double-sided adhesive tape to mount a security housing and included a plunger switch to detect if the housing was improperly removed from its mounting surface. Petitioner argued that adding Ott’s features to the base Rothbaum/Denison system would render claims 2 and 23 obvious.
  • Motivation to Combine: A POSITA would be motivated to incorporate Ott’s teachings to improve the base system. Using an adhesive, as taught by Ott, is a simple and common alternative for mounting security devices without damaging display surfaces. Adding Ott's plunger switch was an obvious way to incorporate an additional, known anti-tamper feature to detect unauthorized removal of the entire security device.
  • Expectation of Success: Incorporating an adhesive fastener and a plunger switch were both simple, well-understood mechanical and electrical modifications that a POSITA could implement with a high degree of predictability.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including that claim 2 is obvious over Belden and Sedon (Application # 2005/0073413); claim 8 is obvious over Belden and Rothbaum; and claim 30 is obvious over Belden.

4. Key Claim Construction Positions

• "programmable key": Petitioner argued this term should be construed as a "key capable of being programmed such that it deactivates itself upon the occurrence of a specific event (e.g., a certain time period or number of activations)." This construction was based on language in the specification repeatedly describing this deactivation feature as an "aspect of the present invention," which Petitioner contended limited the claim scope through disavowal.
• "security code being unique to the programming station": Petitioner argued this term encompasses a "randomly generated security code." This was based on the specification's disclosure that the logic control circuit includes a random number generator to produce a unique code, which Petitioner asserted was the only method disclosed for achieving uniqueness.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-34 of Patent 9,135,800 as unpatentable.