Vanguard Products Group Inc v. InVue Security Products Inc

1. Case Identification

• Patent #: 9,818,274
• Filed: June 17, 2019
• Petitioner(s): Vanguard Products Group, Inc., d/b/a Vanguard Protex Global
• Patent Owner(s): InVue Security Products Inc.
• Challenged Claims: 1, 2, 4, 9-11, 14, 15, 19-25, 28, 30, 31, 33-36, 38, and 39

2. Patent Overview

• Title: Anti-Theft Security Device
• Brief Description: The ’274 patent discloses an anti-theft security device for retail merchandise. The system comprises a sensor attached to an item, a cable connected to the sensor, and optical transceivers in both the sensor and the cable that communicate with each other to detect if the cable has been cut or disconnected from the sensor.

3. Grounds for Unpatentability

Ground 1: Obviousness over Brenner, Koo, Vogt, and Chapman (Claims 1, 2, 4, 9-11, 15, 19, 28, 33-36, 38-39)

• Prior Art Relied Upon: Brenner (WO 2011/045058), Koo (Patent 6,169,295), Vogt (Patent 5,912,619), and Chapman (Patent 6,150,940).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Brenner taught the foundational anti-theft system, including a sensor unit, a base unit, a securing tether with an optical waveguide, and a charging circuit. The Petitioner contended that a Person of Ordinary Skill in the Art (POSA) would find it obvious to modify Brenner by first substituting its separate optical transmitter and receiver with a single integrated "optical transceiver" module as taught by Koo for known benefits like reduced size and cost. The core of the proposed modification was to then solve the signal-loss problem inherent in Brenner’s flexible optical waveguide. To do this, a POSA would adopt the solution from Vogt, which taught placing two optical transceivers in close proximity to communicate directly, without an intervening optical fiber. This would involve relocating Brenner's base-unit transceiver to the end of the cable, adjacent to the sensor's transceiver. Consequently, the now-unnecessary optical waveguide in the cable would be replaced with standard electrical conductors, as taught by Chapman, to provide power and a data link between the cable-end transceiver and the base unit.
  • Motivation to Combine: The primary motivation was to solve a known and significant reliability problem in Brenner: signal loss (e.g., microbend and curvature loss) in its flexible optical waveguide when bent or wound. A POSA would look for known solutions and find Vogt’s teaching of direct, proximal communication between transceivers to be an effective way to eliminate the problematic optical waveguide. The use of electrical conductors taught by Chapman was a well-known method to establish the remaining required connection to the base unit.
  • Expectation of Success: A POSA would have a high expectation of success, as the combination involved substituting known elements (integrated transceivers, electrical conductors) and applying a known technique (proximal optical communication) to solve a known problem (signal loss), with each component performing its predictable function to yield an improved, more reliable security device.

Ground 2: Obviousness over Brenner, Koo, Vogt, Chapman, and Roberds (Claims 14 and 20)

• Prior Art Relied Upon: Brenner, Koo, Vogt, Chapman, and Roberds (Application # 2016/0087726).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination in Ground 1, adding Roberds to teach claims requiring the transceivers to be rotatable relative to one another and separated by an air gap. Brenner disclosed an "anti-twist element" at the cable-sensor interface. Petitioner argued that a POSA, having decided to place a transceiver at the end of the cable, would be motivated to use a connector that preserved this rotational capability. Roberds allegedly taught a suitable fiber-optic connector assembly with rotatable portions that house transceivers and are designed to communicate across a free-space medium like an air gap, thus rendering claims 14 and 20 obvious.

Ground 3: Obviousness over Brenner, Koo, Vogt, Chapman, and McDonald (Claims 21-24)

• Prior Art Relied Upon: Brenner, Koo, Vogt, Chapman, and McDonald (Patent 6,648,520).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground added McDonald to the primary combination to address claims requiring a "releasable connector." Petitioner asserted that a POSA would be motivated to make the security tether detachable from the sensor for user convenience (e.g., to allow customers to handle merchandise more freely). McDonald taught a releasable, screw-threaded fiber optic plug and receptacle. Petitioner argued it would be an obvious design choice to incorporate this known type of releasable connector to couple the modified cable (from Ground 1) to the sensor unit.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on adding Tran (Patent 8,579,659) to the Ground 3 combination to teach a retaining clip for the connector (claim 25), and adding Fawcett (Patent 8,368,536) to the Ground 1 combination to teach locating alarms in both the sensor and base units (claims 30-31).

4. Key Claim Construction Positions

• "optical transceiver": Petitioner proposed this term be construed as "an optical receiver and an optical transmitter housed in a single unit with appropriate electrical and optical connectors." This construction, based on a dictionary definition, was crucial for arguing that Brenner’s disclosed separate transmitter and receiver components collectively met the claim limitation, or alternatively, that it would have been obvious to substitute them with an integrated module from Koo.
• "sense loop": Petitioner proposed this term be construed broadly as "a means for detecting a security event concerning one or more components of the security device." This functional construction allowed Petitioner to argue that the optical communication system created by the proposed prior art combination met the limitation.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under 35 U.S.C. §325(d), despite the primary references (Brenner, Vogt, Chapman) having been cited in an Information Disclosure Statement (IDS) during original prosecution. The core of this argument was that the patent examiner never substantively analyzed these references or used them in any rejection. Therefore, Petitioner contended, the specific invalidity combination presented in the petition had not been previously considered on its merits by the USPTO.

6. Relief Requested

• Petitioner requested institution of inter partes review and cancellation of claims 1, 2, 4, 9-11, 14, 15, 19-25, 28, 30, 31, 33-36, 38, and 39 of Patent 9,818,274 as unpatentable.