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 relates to security systems for protecting retail merchandise from theft. The system comprises a programming station that generates a unique security code, a programmable key that receives and stores this code, and one or more security devices attached to merchandise that can be armed or disarmed by the key upon a matching of the security code.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 25-34 and 36-37 by Belden

• Prior Art Relied Upon: Belden (Application # 2007/0159328).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the challenged claims are not entitled to their claimed priority date, making Belden, an earlier-published application in the patent's own chain of title, invalidating prior art under pre-AIA §102(b). Petitioner asserted the priority claim is defective because the parent applications failed the written description requirement of §112 for two reasons. First, the parents allegedly only disclosed disarming a security device upon a code match, not arming as is required by the "arming or disarming" limitation. Second, the parents allegedly limited the invention to "wireless communication" through "present invention" statements, while the challenged claims encompass broader communication methods like "electrical contacts."
  • Prior Art Mapping: With Belden established as prior art, Petitioner contended it anticipates the claims. Belden discloses a security system with a programming station that randomly generates a unique security disarm code (SDC), provides it to programmable keys, and stores it in security devices. Belden explicitly teaches disarming the security device upon matching the SDC from the key with the SDC in the device, thereby satisfying the "arming or disarming" limitation. Petitioner mapped each element of independent claims 25 and 31, and their dependent claims, to specific disclosures in Belden.

Ground 2: Obviousness of Claim 35 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 addressed claim 35, which requires arming the security device upon a matching of codes. Petitioner asserted that Belden teaches every element of claim 35 except for the specific act of arming via a code match (as Belden only teaches disarming). Sedon was introduced to supply this missing element. Sedon discloses a merchandise display security system where a magnetic key is used for both arming and disarming the alarm.
  • Motivation to Combine: A person of ordinary skill in the art (POSA) would have been motivated to modify the system of Belden to incorporate the two-way (arming and disarming) key functionality taught by Sedon. The motivation would be to create a more versatile and complete security system, as using a single key for both functions is a logical and desirable improvement.
  • Expectation of Success: A POSA would have had a reasonable expectation of success in this combination. Given that security devices have long been armed and disarmed by matching codes (e.g., PINs in home alarms), applying this well-known principle to arm the electronic system of Belden would have been a straightforward and predictable modification.

Ground 3: Obviousness of Claims 25-37 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 this combination renders all challenged claims obvious. Rothbaum was presented as a base system, disclosing a retail security device attached to merchandise that is armed and disarmed using a mechanical key. However, Rothbaum lacks a programmable key or a programming station. Denison was introduced to remedy this deficiency. Denison teaches a security system for vending machines that solves the problems of managing mechanical keys (e.g., loss, theft, copying) by using field-programmable electronic keys, a programming station (an "external computing device") to generate and load security codes, and locks that operate upon a code match. Denison also teaches features like deactivation of keys after a set time or number of uses.
  • Motivation to Combine: A POSA would have been motivated to replace Rothbaum's outdated mechanical key system with Denison's modern, programmable electronic key system. The motivation would be to achieve the clear advantages taught by Denison, such as enhanced security, the ability to reprogram keys and locks instead of replacing them, and the ability to set customized access limitations. Both references are in the field of securing merchandise from theft.
  • Expectation of Success: A POSA would have had a reasonable expectation of success because the progression from mechanical to electrical and electronic keys was a known technological trend. Combining Denison's electronic control system with Rothbaum's merchandise tethering device would involve applying known electronic principles and would have been a predictable implementation.

4. Key Claim Construction Positions

• "unique security code": Petitioner argued this term should be construed as a "randomly generated security code." This construction was based on the ’247 patent’s specification, which allegedly only discloses generating the code randomly and equates "unique" with "random."
• "programmable key": Petitioner argued for a narrower construction where the term means a "key capable of being programmed such that it deactivates itself upon the occurrence of a specific event," such as a set time period or number of uses. Petitioner contended that repeated "present invention" language in the specification describing this feature amounted to a lexicography or disavowal of any broader scope.
• "permanently storing the security code": Petitioner argued this phrase means the code is stored in non-volatile memory for an indefinite time but can be deleted or replaced. This construction was based on the specification's use of the term "preferably" regarding the lifetime of the storage and diagrams showing a "MAGIC KEY" deleting the code.

5. Relief Requested

• Petitioner requested that the Board institute an inter partes review and cancel claims 25-37 of the ’247 patent as unpatentable.