PTAB

IPR2016-00898

Mobile Tech Inc v. InVue Security Products Inc

Key Events

Petition

petition Intelligence

Title: Security System and Method for Protecting Merchandise
Brief Description: The ’247 patent relates to a security system for protecting merchandise in a retail environment. The system comprises three main components: a central programming station, a plurality of programmable electronic keys, and a plurality of security devices affixed to merchandise, each with its own alarm. 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.

Prior Art Relied Upon: Belden (Application # 2007/0159328).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner’s primary argument was that the ’247 patent is not entitled to its parent applications' earlier priority dates. Petitioner contended that new matter was added in a later continuation-in-part (CIP) application, specifically by introducing the concept of arming a security device upon a code match (where the parents only disclosed disarming) and by adding wired communication methods (where the parents were limited to wireless). This argument, if successful, makes the 2007 publication of Belden prior art to the ’247 patent. Petitioner asserted that Belden discloses every limitation of claims 1 and 3-24. Because the claims require a key configured to "arm or disarm" the device upon a code match, Belden's disclosure of disarming functionality alone satisfies this limitation.
- Key Aspects: This ground's viability hinges on a successful challenge to the ’247 patent's effective filing date.

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 security system with merchandise sensors and an alarm but used a simple mechanical key for arming and disarming. Denison disclosed a security system for vending machines that utilized modern, field-programmable electronic keys, a programming station to load security codes, and the ability to set time- or use-based "operation limits" on the keys. The combination of Rothbaum's retail application with Denison's programmable key system allegedly meets all limitations of independent claim 1.
- Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine these references to upgrade Rothbaum’s outdated mechanical key system with the superior security and management features of Denison’s electronic key technology. Denison explicitly addressed the problems of lost, stolen, or copied keys, providing a clear motivation to apply its solution to other security systems like Rothbaum’s to achieve the same benefits.
- Expectation of Success: Petitioner argued that replacing a mechanical key with an electronic one was a well-known technological progression and a predictable solution. A POSITA would have a high expectation of success in integrating Denison's electronic key and programming station with Rothbaum's security device to create the claimed system.

Prior Art Relied Upon: Belden (Application # 2007/0159328) and Sedon (Application # 2005/0073413).
Core Argument for this Ground:
- Prior Art Mapping: This ground builds on the anticipation argument against claim 1 using Belden. Claim 2 adds the limitation that each security device "comprises an adhesive." Belden taught securing its alarm modules with "attachment screws." Sedon, in the same field, disclosed securing a merchandise display system to a support structure using "adhesives."
- Motivation to Combine: A POSITA would be motivated to replace Belden's screws with Sedon's adhesive as a known, alternative attachment method. This would be particularly useful in situations where screws are impractical or would damage the support surface, such as a glass countertop.
- Expectation of Success: The substitution of screws with adhesive was presented as a simple design choice with predictable results.
Additional Grounds: Petitioner asserted an additional obviousness challenge for claim 2 over the combination of Rothbaum, Denison, and Ott (Patent 6,380,855). This ground relied on the same core combination as Ground 2 above, adding Ott for its teaching of using an "adhesive pad" to mount a similar security device.

"programmable key": Petitioner argued that 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 proposed construction was based on language in the ’247 patent specification that repeatedly described features like an "internal timer" and "counter" as being part of the "present invention," which Petitioner argued constituted a lexicographical disavowal of any broader meaning.
"unique security code": Petitioner contended this term should encompass a "randomly generated security code," as the specification described a random number generator as the mechanism for producing such a code.

The petition's central technical and legal contention, underpinning the primary ground of invalidity, was that the ’247 patent was not entitled to the filing date of its parent applications. Petitioner detailed two instances of alleged new matter added in a continuation-in-part: (1) the parent applications only disclosed disarming with a code match, while the challenged claims cover arming or disarming; and (2) the parent applications were limited to wireless communication, while the challenged patent was broadened to include wired "electrical contacts." These arguments were foundational to establishing Belden as anticipatory prior art.

Petitioner requested the institution of an inter partes review (IPR) and the cancellation of claims 1-24 of Patent 9,269,247 as unpatentable.