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 and Method for Protecting Items of Merchandise
• Brief Description: The ’800 patent discloses security systems for protecting retail merchandise from theft. The system comprises three main components: a programming station, one or more programmable keys, and multiple security devices attached to merchandise. The programming station generates a unique security code that is programmed into the keys, which are then used to arm or disarm the security devices.

3. Grounds for Unpatentability

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

• 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 filing date of its parent applications (’102 and ’321 applications) for two key reasons: (1) the parent applications failed to disclose the claimed feature of arming a security device upon a matching of security codes, only disclosing disarming; and (2) the parent applications were explicitly limited to wireless communication, while the ’800 patent claims cover both wired and wireless communication. Because new matter was introduced, the effective filing date was the date of the continuation-in-part (June 27, 2011). Consequently, Belden, which published in 2007 from a parent application in the same chain, qualifies as §102(b) prior art. Petitioner argued that Belden discloses every limitation of claims 35-49. Specifically, Belden teaches a security system with a programming station, programmable keys, and security devices, where the key disarms the device upon matching a security code. This meets the "arm or disarm" limitation of the independent claims. Belden also discloses all features of the dependent claims, including keys that are inactivated after a predetermined time and a programming station that randomly generates a unique security code for a particular store.

Ground 2: Obviousness over Rothbaum and Denison - Claims 35-49 are obvious over Rothbaum in view of Denison under 35 U.S.C. §103.

• 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 complete security system for protecting retail merchandise, including security devices with alarms attached to items. However, Rothbaum’s system utilized a simple, non-programmable mechanical key to arm and disarm the alarm. Denison disclosed a security system for vending machines that solved the problems of managing mechanical keys by using field-programmable electronic keys, an external computing device (a programming station) to program the keys with access codes, and the ability to set operational limits (e.g., deactivation after a set time or number of uses). The combination of Rothbaum's retail security context with Denison's advanced programmable key technology rendered the claims obvious.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would have been motivated to replace Rothbaum's outdated mechanical key with the advanced electronic, programmable key system from Denison. The problems Denison solved—such as lost, stolen, or copied keys—were inherent to any key-based security system, including Rothbaum's. Combining them would predictably result in a more secure and manageable retail anti-theft system. Both references are in the field of security devices for protecting merchandise.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in making this combination. The progression from mechanical to electronic keys was a known trend in the security art. Implementing Denison’s electronic key, which communicates with a lock to match a security code, into Rothbaum’s system was a straightforward substitution of one type of known key-and-lock mechanism for another.

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." This construction was based on repeated statements in the ’800 patent specification describing an internal timer and/or counter that deactivates the key as a feature "of the present invention." This limiting construction was asserted to be required by disavowal.
• "security code is unique": Petitioner argued this phrase requires a "randomly generated security code." This was based on the specification, which explicitly states that a random number generator produces a "unique" security code and discloses no other method for achieving uniqueness.
• "communicating" / "configured to communicate": Petitioner asserted these terms encompass both wired and wireless forms of communication, as disclosed in the specification. This broad construction was central to the priority date argument in Ground 1, as the parent applications were allegedly limited only to wireless communication.
• "single security code": Petitioner argued this term means the programming station generates one code at a time, not that it is only capable of generating one code for its entire lifespan. This construction allows for the code to be changed or updated, which is consistent with the patent's disclosure.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 35-49 of the ’800 patent as unpatentable.