PTAB

IPR2019-00078

InVue Security Products Inc v. Mobile Tech Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Apparatus for Displaying an Electronic Device
  • Brief Description: The ’140 patent relates to a retail security display system for electronic devices. The system comprises a base assembly, a mounting member ("puck") that secures the device, and a retractable tether connecting the puck to the base. The purported invention involves using a conductor-less tether (e.g., mechanical or fiber optic), where the puck is charged via electrical contacts only when resting on the base, and security signals are communicated wirelessly or through the fiber optic tether.

3. Grounds for Unpatentability

Ground 1: Claims 1-25, 27-37, 51, 68-71, and 93-96 are anticipated by or obvious over Logokett.

  • Prior Art Relied Upon: Logokett (WO 2011/045058).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Logokett, a PCT publication, discloses all key elements of the challenged claims. Logokett described a security device with a base unit, a sensor unit (the puck), and a retractable tether. Critically, the tether is disclosed as a fiber optic cable capable of transmitting optical signals, and the puck is powered via electrical contacts when it rests on the base. Logokett also disclosed a "charge store" (rechargeable battery) within the sensor unit. Petitioner asserted these teachings directly map to the limitations of the independent claims and many dependent claims, particularly those reciting a fiber optic tether or the transmission of optical signals.
    • Motivation to Combine (for §103 grounds): For claim limitations not explicitly anticipated (e.g., specific puck/base shapes for multi-orientation charging), Petitioner argued a Person of Ordinary Skill in the Art (POSITA) would have been motivated to modify Logokett using known design principles. For instance, incorporating complementary shapes to allow multiple charging orientations was a known solution to a known problem in retail displays, as evidenced by other prior art.

Ground 2: Claims 1-25, 27-37, 51, 68-71, and 93-95 are obvious over Deconinck in view of known prior art.

  • Prior Art Relied Upon: Deconinck (Patent 7,327,276) and other references demonstrating conventional design choices (e.g., Chatterjee, published 2010).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Deconinck taught a security display with a stand (base), a housing (puck) containing a rechargeable battery, and the capability to transmit security signals wirelessly. However, Deconinck disclosed charging the puck via wireless induction rather than electrical contacts. The core of the argument was that substituting Deconinck’s wireless charging with well-known electrical contacts would have been an obvious modification. For claims reciting a fiber optic tether, Petitioner argued Deconinck's disclosure of a mechanical tether could have been obviously replaced with a known fiber optic tether.
    • Motivation to Combine: A POSITA would combine Deconinck with the knowledge of electrical contacts to create a cheaper and potentially more reliable charging connection, as contacts were a well-known, interchangeable alternative to induction coils. Similarly, a POSITA would have been motivated to replace Deconinck's mechanical tether with a fiber optic one to gain known benefits such as enhanced security and immunity to electrical interference.
    • Expectation of Success: The substitution of one known charging method (induction) for another (contacts), or one type of conductor-less tether (mechanical) for another (fiber optic), involved the use of conventional components to achieve predictable results.

Ground 3: Claims 1-25, 27-37, 51, 68-71, and 93-95 are obvious over the Video in view of known prior art.

  • Prior Art Relied Upon: MTI's 2009 Virtual Tour Video ("the Video") and other references teaching fiber optic tethers (e.g., Logokett, Davey (Patent 4,370,020)).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted the Video, a product demonstration by the Patent Owner's predecessor, constituted a prior art printed publication. The Video disclosed the "Freedom LP3" product, which featured a base, a puck, a conductor-less mechanical retractor, electrical contacts for charging the puck when docked, and wireless (RF) alarm signaling. Petitioner argued this combination taught nearly every limitation of the independent claims except for the use of a fiber optic tether.
    • Motivation to Combine: The primary motivation was to improve upon the Video's design by substituting the mechanical tether with a fiber optic tether. A POSITA would have recognized the known advantages of fiber optics in security applications, such as preventing signal tampering and avoiding RF interference, and would have been motivated to incorporate this known element into the system shown in the Video.
    • Expectation of Success: Given that fiber optic tethers were well-known in security systems, a POSITA would have reasonably expected that replacing a mechanical tether with a fiber optic one would be a straightforward and successful modification.

4. Key Claim Construction Positions

  • "electronic control board" (claims 17-18, 24-25): Petitioner proposed this term be construed broadly as "components and/or circuits for providing power and/or security-related functions in the puck assembly." This construction was argued to be consistent with the specification and a POSITA's understanding, allowing prior art circuit descriptions to meet the limitation.
  • "modular retractable tether assembly" (claim 37): Petitioner proposed this term means "a retractable tether assembly that can be removed and replaced." This construction was critical for arguing that prior art retractors that could be swapped for maintenance or replacement met the claim limitation.

5. Key Technical Contentions (Beyond Claim Construction)

  • A central technical contention underlying multiple grounds was the argument that a POSITA would have viewed certain technologies as interchangeable design choices from a finite number of known solutions. Specifically, Petitioner repeatedly argued that:
    • Charging Methods: Electrical contacts and wireless induction were known, interchangeable options for powering a device in a cradle.
    • Tether Types: Mechanical, electrical, and fiber optic tethers were all known options for securing a device, with predictable trade-offs in cost, security, and durability.

6. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-25, 27-37, 51, 68-71, and 93-96 of the ’140 patent as unpatentable.