Mobile Tech Inc v. InVue Security Products Inc

1. Case Identification

• Case #: IPR2016-00899
• Patent #: 9,269,247
• Filed: April 14, 2016
• Petitioner(s): Mobile Tech, Inc.
• Patent Owner(s): InVue Security Products Inc.
• Challenged Claims: 25-37

2. Patent Overview

• Title: Security System and Method
• Brief Description: The ’247 patent discloses security systems for protecting retail merchandise. The system comprises a programming station that generates a unique security code, a programmable key that receives and stores the code, and a security device attached to merchandise that is also programmed with the code to be armed or disarmed by the key.

3. Grounds for Unpatentability

Ground 1: Anticipation over Belden - Claims 25-34 and 36-37 are anticipated by Belden

• Prior Art Relied Upon: Belden (Application # 2007/0159328).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner first argued that the challenged claims were not entitled to the priority date of their parent applications (’102 and ’321 applications). Petitioner contended these earlier applications failed to provide written description support for two key limitations: (1) "arming" a security device upon a matching of security codes and (2) communicating the security code via wired "electrical contacts." As a result, Petitioner asserted that Belden, which published in 2007, qualifies as prior art under §102(b). Petitioner then argued that Belden discloses every limitation of the challenged claims. Specifically, Belden teaches a system with a programming station that randomly generates a unique security disarm code (SDC), provides it to a plurality of programmable smart keys, and stores the SDC in alarm modules attached to merchandise. Although Belden does not teach arming upon a code match, it explicitly discloses disarming the alarm module upon a match between the SDC in the key and the SDC in the device, thereby meeting the "arming or disarming" limitation of the independent claims.
  • Key Aspects: The central thrust of this ground is the priority date challenge, which, if successful, establishes Belden as anticipating prior art.

Ground 2: Obviousness over Belden and Sedon - Claim 35 is obvious over Belden in view of Sedon

• Prior Art Relied Upon: Belden (Application # 2007/0159328) and Sedon (Application # 2005/0073413).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground specifically targets claim 35, which, unlike the other independent claims, requires arming upon a matching of the security code, not "arming or disarming." Petitioner argued that Belden discloses all elements of claim 35 except for the specific arming-upon-a-match step. Sedon was introduced because it discloses a merchandise security device that uses a magnetic key for both arming and disarming its alarm.
  • Motivation to Combine: A POSITA would have been motivated to modify Belden’s system to incorporate the arming function taught by Sedon. Belden’s system only disarms with the key, which is an incomplete solution. Adding the ability to also arm the device with the same key would be a logical and desirable improvement for a comprehensive security system. The combination would simply apply Belden’s electronic code-matching principle to the arming function already known from Sedon.
  • Expectation of Success: A POSITA would have had a high expectation of success because implementing an arming function based on a code match is analogous to the disarming function already taught by Belden and is a well-understood concept in security systems (e.g., home alarms).

Ground 3: Obviousness over Rothbaum and Denison - Claims 25-37 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 asserted that Rothbaum discloses a basic retail security system with an alarm that is attached to merchandise and armed/disarmed using a conventional mechanical key. However, Rothbaum lacks a programmable key or a programming station. Denison, on the other hand, discloses a security system for vending machines that solves the problems of managing mechanical keys by using a "field-programmable" electronic key and an "external computing device" (a programming station) to generate and manage unique access codes. Denison’s keys can also be programmed with operational limits, such as expiring after a set time or number of uses.
  • Motivation to Combine: A POSITA would have been motivated to replace Rothbaum’s outdated mechanical key system with Denison’s more advanced and secure electronic, programmable key system. The problems of lost or copied mechanical keys that Denison addresses for vending machines are the same problems faced in the retail environment of Rothbaum. Therefore, a POSITA would combine the teachings to create a more robust retail security system, resulting in the invention claimed in the ’247 patent.
  • Expectation of Success: The combination would have been straightforward, as it involved substituting a known electronic key system for an older mechanical one to achieve predictable benefits in security and key management. The technologies were well-established and their integration would not have presented undue challenges.

4. Key Claim Construction Positions

• "unique security code": Petitioner argued this term should be construed to encompass a "randomly generated security code," as this is the only method of generation disclosed in the ’247 patent’s specification.
• "programmable key": Based on statements describing the "present invention" in the specification, 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," such as after a certain time period or number of uses.
• "permanently storing the security code": Petitioner asserted this means the code is stored in non-volatile memory for an indefinite time, but does not preclude the possibility that the code could be deleted or replaced with a new code at a later time.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 25-37 of the ’247 patent as unpatentable.