PTAB

IPR2018-01310

Deeper, UAB v. Vexilar, Inc.

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1. Case Identification

2. Patent Overview

  • Title: Wireless Water Regimen Detecting Device, System and Method Based on WiFi
  • Brief Description: The ’592 patent relates to a fish finder device that connects wirelessly to a display terminal, such as a smartphone, using WIFI. The device is deployable on water, uses sonar to detect fish, and is configured to generate a WIFI hotspot for communication.

3. Grounds for Unpatentability

Ground 1: Claims 1-5, 9-11, and 15-18 are obvious over Jang.

  • Prior Art Relied Upon: Jang (Korean Patent No. 10-0993227 B1).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Jang, a prior art reference not relied upon by the examiner during prosecution, discloses all key elements of the challenged claims. Independent claim 1 recites a wireless fish finder with a housing for water deployment, a fish finder module (with temperature sensor), a data communication module, and a WIFI module configured to generate a WIFI hotspot. Petitioner asserted that Jang teaches a buoyant, float-type fish finder that communicates with a smartphone via WIFI. Jang explicitly discloses a "WIFI module" and a communication system that functions as an access point, which Petitioner equated to the claimed "WIFI hotspot." While Jang discloses displaying water temperature, Petitioner argued that including the underlying temperature sensor and circuit would be a routine and obvious design choice for a person of ordinary skill in the art (POSITA) to achieve the displayed output.
    • Motivation to Combine (for §103 grounds): This ground is based on a single reference. The motivation for any minor modifications, such as explicitly adding a temperature sensor, was argued to be the simple desire to achieve the functionality (displaying temperature) already disclosed by Jang.
    • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success in implementing any minor sensor additions as they are standard components in marine electronics.

Ground 2: Claims 6-8, 12-14, and 19-23 are obvious over Jang in view of Fairbairn.

  • Prior Art Relied Upon: Jang (Korean Patent No. 10-0993227 B1) and Fairbairn (Application # 2005/0135192).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds on Jang by adding Fairbairn to teach limitations in dependent claims, primarily the inclusion of a "GPS module" (claim 6). Petitioner contended that Jang provides the base wireless fish finder system communicating with a smartphone via WIFI, as established in Ground 1. Fairbairn, which relates to an electronic fishing aid, was cited for its explicit disclosure that marine electronics can include multiple sensors, such as a depth finder and a GPS sensor, with the information displayed to an angler. The combination also addresses claims requiring an MCU processor connected to memory (claim 12), as Fairbairn shows a processor connected to memory, which Petitioner argued would be an obvious addition to Jang's control module.
    • Motivation to Combine (for §103 grounds): A POSITA would be motivated to combine Jang and Fairbairn because both references pertain to marine electronics for assisting anglers. Adding GPS functionality, as taught by Fairbairn, to Jang's wireless fish finder would be a predictable improvement, allowing anglers to mark and return to specific fishing locations.
    • Expectation of Success (for §103 grounds): Combining a known GPS module with a sonar device was a well-established practice in the field of marine electronics, ensuring a high expectation of success.

Ground 3: Claims 1-4, 11-12, and 19-20 are obvious over Langer in view of Kabel.

  • Prior Art Relied Upon: Langer (Patent 5,483,767) and Kabel (Patent 6,909,946).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground presented an alternative to Jang. Petitioner argued that Langer taught a waterproof, castable fish finder with various sensors (including temperature and sonar) that transmits data wirelessly to a receiver. However, Langer does not specify the wireless protocol. Kabel was introduced to supply the specific teaching of using WIFI. Kabel discloses a system for wirelessly linking marine electronic components and explicitly states that the wireless transmitter and receiver can use "BlueTooth or WiFi communication protocols." The combination of Langer's wireless sensor device with Kabel's WIFI protocol was alleged to render obvious the core invention of the ’592 patent, including the WIFI hotspot.
    • Motivation to Combine (for §103 grounds): A POSITA would combine Langer and Kabel to improve the wireless communication of Langer's device. Using a standardized, high-speed protocol like WIFI, as taught by Kabel, would be a known and desirable alternative to a proprietary or unspecified wireless system, offering benefits of interoperability and performance.
    • Expectation of Success (for §103 grounds): Integrating a standard WIFI communication module into a wireless electronic device like Langer's was well within the skill of a POSITA, leading to a reasonable expectation of success.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 4) for claims 5-10, 13-18, and 21-23 based on the combination of Langer and Kabel, in further view of Park (Application # 2007/0147173). Park was used to provide teachings of using a mobile phone as the display terminal for a wireless fish finder.

4. Key Claim Construction Positions

  • "WIFI hotspot": Petitioner argued this term, added during prosecution to overcome prior art, should be construed to mean "an area that enables wireless communication using WIFI." This construction was based on the specification and prosecution history, where the applicant equated "using a 'wireless communication way of WIFI'" with creating a "hotspot."
  • "WIFI": Proposed to mean "wireless communication using WIFI (or wireless fidelity)."
  • "sonar": Proposed to mean "use of sound waves, such as ultrasonic waves, for detection."
  • "transreceiver": Proposed to mean a component that can "transmit and receive communications."

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-23 of the ’592 patent as unpatentable.