Mobile Tech, Inc. v. InVue Security Products Inc.

1. Case Identification

• Case #: IPR2016-00896
• Patent #: 9,135,800
• Filed: April 14, 2016
• Petitioner(s): Mobile Tech, Inc.
• Patent Owner(s): InVue Security Products Inc.
• Challenged Claims: 35-49

2. Patent Overview

• Title: Programmable Security System for Protecting Merchandise
• Brief Description: The ’800 patent relates to a security system for protecting retail merchandise from theft. The system uses a programming station to load a unique security code onto a programmable key, which can then arm or disarm multiple security devices attached to merchandise, and is designed to deactivate after a set time or number of uses to prevent misuse of lost or stolen keys.

3. Grounds for Unpatentability

Ground 1: Anticipation over Belden - Claims 35-49 are anticipated under 35 U.S.C. §102 by Belden.

• Prior Art Relied Upon: Belden (Application # 2007/0159328).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner’s core argument was that the challenged claims were not entitled to the priority date of their parent applications. Petitioner contended that new matter was added in a later continuation-in-part (CIP) for which the parent applications lacked written description support, specifically for (1) arming a device via code match (as the parents only disclosed disarming) and (2) wired communication (as the parents allegedly only disclosed wireless). By breaking the priority chain, Belden, an application published from the patent’s own family, qualified as §102(b) prior art. Petitioner argued Belden discloses every element of the claims, including a programming station, programmable keys that deactivate after a set time, and security devices. Petitioner asserted that Belden’s disclosure of disarming upon a code match was sufficient to meet the "arm or disarm" claim limitation.
  • Key Aspects: This ground's success hinges on a technical argument that the challenged claims contain new matter not supported by the parent applications, thereby making a reference from the patent's own prosecution history anticipatory.

Ground 2: Obviousness over Rothbaum and Denison - Claims 35-49 are obvious under 35 U.S.C. §103 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 asserted that Rothbaum teaches a basic retail security system with a security device attached to merchandise that sounds an alarm, but it uses a simple, non-programmable mechanical key. Denison teaches a more sophisticated security system (for vending machines) that utilizes programmable electronic keys, a programming station to load security codes onto the keys, and operational limits that cause the keys to expire after a set time or number of uses. The combination of Rothbaum's retail alarm system with Denison's programmable key system allegedly discloses all limitations of the challenged claims.
  • Motivation to Combine: A person of ordinary skill in the art (POSA) would have been motivated to replace Rothbaum’s basic mechanical key with Denison’s advanced programmable electronic key system. This combination would predictably solve the well-known security problems associated with mechanical keys being lost, stolen, or copied, a problem that Denison was expressly designed to address.
  • Expectation of Success: A POSA would have had a reasonable expectation of success in combining the references. The progression from mechanical to electronic keys in security systems was a known trend, and integrating Denison's electronic key and programming station with Rothbaum's retail alarm device was a straightforward application of known technologies to improve an existing system.

4. Key Claim Construction Positions

• "programmable key": Petitioner argued that this term should be narrowly construed to mean a "key capable of being programmed such that it deactivates itself upon the occurrence of a specific event," such as a predetermined time period or number of activations. This proposed construction was based on numerous "present invention" statements in the ’800 patent specification that, Petitioner argued, amounted to a lexicography or disavowal limiting the scope of the invention to keys with this deactivation feature.
• "security code is unique": Petitioner asserted this term should be construed to mean a "randomly generated security code." The basis for this construction was that the patent’s specification explicitly describes a random number generator as the mechanism for producing a "unique" security code and discloses no other method.
• "communicating" / "configured to communicate": Petitioner argued these terms should be given their plain meaning, which encompasses both wired and wireless forms of communication. This construction was foundational to the priority date challenge in Ground 1, where Petitioner argued the parent applications only disclosed wireless communication and thus could not support the broader scope of the challenged claims.

5. Key Technical Contentions (Beyond Claim Construction)

• Priority Date Entitlement: A central technical contention underpinning Ground 1 was that the ’800 patent claims were not entitled to the filing dates of their parent applications. Petitioner argued that the parent applications failed to provide adequate written description under §112 for the full scope of the "arm or disarm" and broad "communicating" (including wired) limitations. This alleged introduction of new matter in a later CIP was the critical step required to establish Belden as valid anticipatory prior art against the challenged claims.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 35-49 of Patent 9,135,800 as unpatentable.