PTAB

IPR2016-01915

Mobile Tech Inc v. InVue Security Products Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Security System for Protecting Merchandise
  • Brief Description: The ’844 patent discloses security systems and methods for protecting retail merchandise from theft. The system comprises three main components: a programming station that generates and stores a security code, a programmable key, and a security device attached to merchandise that is armed or disarmed by the key.

3. Grounds for Unpatentability

Ground 1: Claims 1-7, 12-13, and 17-19 are obvious over Denison, Roatis, and Deguchi.

  • Prior Art Relied Upon: Denison (Application # 2004/0201449), Roatis (Application # 2005/0165806), and Deguchi (Application # 2004/0003150).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Denison disclosed the core elements of the claimed invention, including a security system for vending machines with an "electronic key" (a programmable key) and an "external computing device" like a laptop (a programming station) that generates and transmits an access code to the key. Petitioner asserted Roatis, a related reference by the same inventor, taught using a wireless "cradle" to communicate with the key and disclosed a user interface with status indicators. Deguchi was cited for teaching the integration of an infrared communication port directly into a host device like a laptop, eliminating the need for a separate cradle.
    • Motivation to Combine: A POSITA would combine Denison and Roatis to gain the known advantages of wireless communication and improved user feedback through status lights, as both references describe similar electronic key systems for vending machines. A POSITA would then be motivated by Deguchi to integrate the wireless communication functionality into the programming station's housing to create a more compact, portable, and convenient device without external cables.
    • Expectation of Success: Petitioner contended that combining these known elements—a security system, a wireless interface, and integrated components—was a predictable application of existing technologies to improve convenience and portability, leading to a high expectation of success.

Ground 2: Claim 15 is obvious over Denison in view of Timblin.

  • Prior Art Relied Upon: Denison (Application # 2004/0201449) and Timblin (Patent 4,117,465).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued Denison taught nearly all limitations of claim 15, including a security system with a programming station that programs a key with a security code, a security device (vending machine) that stores the code, and a timer in the key to invalidate the code after a set period. However, Denison’s key is used to "unlock" or "access" the device. To meet the "disarm" limitation, Petitioner cited Timblin, which disclosed an alarm system for a vending machine that is "disarmed" when an authorized attendant properly unlocks and opens the door.
    • Motivation to Combine: A POSITA would combine Timblin’s alarm system with Denison’s electronic lock system to enhance security. Both references address vending machine security, and Petitioner argued that adding an audible alarm to a lock is a well-known and common-sense method to deter and prevent theft. The combination would simply add an alarm function to Denison's existing access control system.
    • Expectation of Success: The combination involved adding a conventional alarm to a known security lock system, which Petitioner asserted was a routine and predictable modification with a high expectation of success.

Ground 3: Claims 8-11 are obvious over Denison, Roatis, and Deguchi in view of Wu.

  • Prior Art Relied Upon: Denison (Application # 2004/0201449), Roatis (Application # 2005/0165806), Deguchi (Application # 2004/0003150), and Wu (Application # 2002/0085343).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground built upon the combination of Denison, Roatis, and Deguchi from Ground 1, which established the obviousness of the functional apparatus. Claims 8-11 add specific structural limitations for the apparatus housing (e.g., a base plate, a main housing shell, an internal spacer, and a cover plate). Petitioner argued that Denison's "external computing device" is a laptop, but Denison did not detail its physical construction. Wu was cited as disclosing a portable computer with a housing containing the exact structural elements recited in the claims.
    • Motivation to Combine: A POSITA implementing the obvious system from Ground 1 in a laptop form factor would have naturally used a conventional laptop structure. Petitioner contended that Wu merely provided an example of such a conventional structure, and the physical design of the laptop housing was an irrelevant design choice. Therefore, a POSITA would have been motivated to use any suitable laptop design, such as that shown in Wu, to house the components of the Denison system.
    • Expectation of Success: Implementing the system's electronics within a standard laptop housing as taught by Wu would be a routine design task for a POSITA.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including for claim 16 (adding infrared/RF communication over Denison, Timblin, and Roatis) and claim 14 (adding a "disarming" function to the Ground 1 combination via Timblin).

4. Key Claim Construction Positions

  • Petitioner argued for several claim constructions. The most critical was for the term "programmable key." Petitioner asserted the patentee disavowed a broader scope through "present invention" statements in the specification. The proposed construction was a "key capable of being programmed such that it deactivates itself upon the occurrence of a specific event," such as the expiration of a preset time period.
  • For "invalidating the security code stored in the key," Petitioner argued the term means the security code in the key will no longer match or be compared with the code in the security device. This interpretation was supported by an analysis of an operational flowchart from a co-pending application incorporated by reference.

5. Key Technical Contentions (Beyond Claim Construction)

  • A central technical contention was that a POSITA would read Denison's disclosure of multiple embodiments (e.g., "electronic key 26," "electronic key 410") as describing a single, unified system possessing all the disclosed functionalities. Petitioner argued that Denison explicitly stated the "present invention" provides a lock that can learn a key code from one of several devices ("and/or"), indicating the features were not mutually exclusive. This interpretation was critical to combining features described in different sections of Denison to meet claim limitations.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-19 of the ’844 patent as unpatentable.