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 Protecting Merchandise
• Brief Description: The ’800 patent relates to retail security systems for preventing theft of merchandise. The system comprises three main components: a programming station that generates a unique security code, a programmable key that receives the code, and a security device attached to the merchandise that can be armed or disarmed by the key.

3. Grounds for Unpatentability

Ground 1: Anticipation over Belden - Claims 1, 3-7, 9-29, and 31-34 are anticipated by Belden under §102(b).

• Prior Art Relied Upon: Belden (Application # 2007/0159328).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner’s primary argument was that the ’800 patent was not entitled to the priority date of its parent applications (’102 and ’321 applications) because they failed to provide adequate written description for the full scope of the challenged claims. Specifically, Petitioner argued the parent applications only disclosed disarming upon a code match, not arming, and were limited to wireless communication, whereas the challenged claims cover both arming/disarming and wired communication (e.g., "through electrical contacts"). This lack of support, Petitioner contended, made the earlier-published Belden application (from the same patent family) prior art. Belden was alleged to disclose every limitation of independent claim 1, including a programming station that randomly generates a unique security disarm code (SDC), a programmable "smart key" that receives and stores the SDC, and a security device that is disarmed upon a matching of the SDC between the key and the device.
  • Key Aspects: The central thrust of this ground was a priority date challenge. By arguing the ’800 patent added new matter in a continuation-in-part (CIP), Petitioner sought to establish the earlier family member, Belden, as invalidating prior art.

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: Petitioner argued that Rothbaum disclosed a basic retail security system with a security device attached to merchandise via a cord, which sounded an alarm upon tampering. However, Rothbaum used a simple, non-programmable key. Denison disclosed a more advanced system for vending machines featuring a "field-programmable" electronic key, a programming station, and an electronic lock that unlocked when security codes matched. Denison's system addressed problems like lost or copied keys by allowing keys to be reprogrammed and to expire after a set time or number of uses. Petitioner asserted that a person of ordinary skill in the art (POSA) would have combined these references, substituting Rothbaum's mechanical key with Denison's programmable electronic key and programming station system.
  • Motivation to Combine: A POSA would have been motivated to replace Rothbaum's basic mechanical key with Denison's advanced programmable key system to gain its known advantages, such as improved security against lost or stolen keys, customized access limitations (e.g., time-based expiration), and eliminating the need for costly lock replacements.
  • Expectation of Success: A POSA would have had a reasonable expectation of success in this combination, as the use of electronic keys in security systems was a known progression in the art. Combining Denison's electronic key control system with Rothbaum's alarm module and sensor hardware was presented as a straightforward integration of known technologies to achieve a predictable result.

Ground 3: Obviousness over Rothbaum, Denison, and Ott - Claims 2 and 23 are obvious over the combination of 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 and Denison combination from Ground 2, adding Ott to teach the specific limitations of dependent claims 2 and 23. For claim 2, which requires the security device to be attached with an adhesive, Petitioner pointed to Ott's disclosure of fixing a security device to a display case using a double-sided adhesive pad. For claim 23, which requires a plunger switch, Petitioner cited Ott's disclosure of a sensor unit with a "switching plunger" that detects if the security device is improperly removed from its mounting surface.
  • Motivation to Combine: A POSA, having already combined Rothbaum and Denison, would have been motivated to incorporate Ott’s teachings for well-understood functional reasons. Using an adhesive (from Ott) is a common and known alternative to screws for mounting a security device, especially on surfaces like glass. Similarly, incorporating a plunger switch (from Ott) was argued to be a known method for adding anti-tamper capability to a surface-mounted device.
  • Expectation of Success: The integration of an adhesive fastener and a plunger switch into the combined Rothbaum/Denison system would have been a simple and predictable modification for a POSA.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including rendering claim 2 obvious over Belden and Sedon (Application # 2005/0073413), claim 8 obvious over Belden and Rothbaum, and claim 30 obvious over Belden alone. These grounds relied on adding teachings of adhesives, coiled cords, and key inactivation logic, respectively, to the base system disclosed in Belden.

4. Key Claim Construction Positions

• "programmable key": Petitioner argued this term should be construed to mean a "key capable of being programmed such that it deactivates itself upon the occurrence of a specific event," such as after a set time period or number of uses. This construction was based on what Petitioner characterized as repeated, mandatory language in the ’800 patent specification describing this feature as an aspect "of the present invention," thereby constituting a disavowal of broader scope.
• "configured to communicate": Petitioner argued that in the context of the parent applications, this phrase was limited to wireless communication only. The petition asserted that statements describing wireless communication as an aspect "of the present invention" in the parent applications limited their scope, and that the addition of wired communication ("electrical contacts") in the ’800 patent was new matter that broke the priority chain.
• "security code being unique to the programming station": Petitioner asserted this phrase should encompass a "randomly generated security code," as the specification explicitly described a random number generator as the mechanism for producing a "unique" code.

5. Relief Requested

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