Mobile Tech Inc v. InVue Security Products Inc

1. Case Identification

• Case #: IPR2017-01901
• Patent #: 9,478,110
• Filed: July 31, 2017
• Petitioner(s): Mobile Tech, Inc.
• Patent Owner(s): InVue Security Products Inc.
• Challenged Claims: 1-36

2. Patent Overview

• Title: Programmable Security System and Method for Protecting Merchandise
• Brief Description: The ’110 patent discloses a security system for retail environments that uses a programming station to program a unique, store-specific security code into both a portable key and one or more security devices attached to merchandise. The key can then arm or disarm the corresponding security devices, addressing the prior art problem of stolen keys being used maliciously.

3. Grounds for Unpatentability

Ground 1: Obviousness over Rothbaum and Denison - Claims 1-17 and 19-36 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 argued that Rothbaum disclosed the foundational elements of a retail security system, including a security device housing with an alarm attached to merchandise via a cord, but utilized an outdated mechanical key. Denison taught a more advanced system with a programmable electronic key, a programming station (“external computing device”), and the use of a unique, randomly generated “access code” to solve the known security risks of mechanical keys. The combination of Rothbaum’s retail system with Denison’s programmable key and station was alleged to disclose every limitation of the challenged independent claims, including a programmable key, a security device with memory, and a unique security code not chosen by a person.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine the references to upgrade Rothbaum’s insecure mechanical key with Denison’s superior programmable electronic key system. This combination would achieve the recognized advantages taught by Denison, namely preventing the use of lost or stolen keys and providing better security management, which directly addressed a problem the ’110 patent purported to solve.
  • Expectation of Success: A POSITA would have a high expectation of success in making this combination, as the progression from mechanical to electronic keys in security systems was a well-known and straightforward technological evolution.

Ground 2: Obviousness over Rothbaum, Denison, and Deguchi - Claims 8, 18, and 25 are obvious over Rothbaum, Denison, and Deguchi.

• Prior Art Relied Upon: Rothbaum (Patent 5,543,782), Denison (Application # 2004/0201449), and Deguchi (Application # 2004/0003150).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the Rothbaum/Denison combination to address dependent claims requiring a port for receiving the key (in either the security device or programming station). Denison taught using a separate “cradle” to connect its electronic key to the programming station. Deguchi taught that it is desirable to move from systems using an intermediary cradle to a more integrated system where a portable device communicates directly with a host device through a port built into the host. Deguchi explicitly disclosed a host device (e.g., a laptop) with an integrated infrared port for receiving a portable device.
  • Motivation to Combine: A POSITA would be motivated to incorporate Deguchi’s teaching of an integrated port into the Rothbaum/Denison system to simplify the design, improve convenience, and reduce the number of required components by eliminating Denison's separate cradle. Since Denison’s system already used infrared communication, modifying it to include Deguchi's integrated infrared port was presented as a logical and obvious design choice.
  • Expectation of Success: The expectation of success was high because the combination involved integrating known communication interfaces (infrared ports) into systems that already utilized that communication protocol.

4. Key Claim Construction Positions

• "programmed in a retail store" / "not chosen by a person": Petitioner argued these phrases should be construed as product-by-process limitations. As such, they describe the method of making the claimed product (the security system) but do not impart any structural difference to the final product itself. Therefore, Petitioner contended these limitations should be given no patentable weight in the obviousness analysis.
• "unique security code": Petitioner proposed this term imparts a structural limitation and should be broadly construed to encompass either a randomly generated code or a code that is unique to a particular retail store, such that a key from one store would not work in another.
• "logic control circuit": Petitioner argued this term should be construed as a "collection of computer components" (e.g., microprocessor, memory) arranged to form a circuit that performs the functionality recited in the claims.

5. Key Technical Contentions (Beyond Claim Construction)

• Combination of Embodiments in a Single Reference: Petitioner asserted that Denison's disclosure explicitly teaches that the functionalities of its various embodiments are not mutually exclusive. By using "and/or" language when describing methods of programming its system, Denison allegedly taught that a single system could incorporate all described features. This argument was intended to preemptively counter any assertion by the Patent Owner that Petitioner improperly mixed and matched distinct and separate embodiments from the Denison reference.

6. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate. Although the Rothbaum and Denison references were cited in an Information Disclosure Statement (IDS) during prosecution of the ’110 patent, the prosecution history allegedly showed no indication that the Examiner substantively considered or applied these references. Petitioner also noted it was concurrently filing a separate, non-redundant petition based on different prior art and anticipation theories, arguing that institution should be granted in both proceedings.

7. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-36 of Patent 9478110 as unpatentable.