Mobile Tech Inc v. InVue Security Products Inc

1. Case Identification

• Case #: IPR2019-01553
• Patent #: 10,062,266
• Petitioner(s): Mobile Tech, Inc.
• Patent Owner(s): InVue Security Products Inc.
• Challenged Claims: 1-3, 5-24, 26-52, 54-56

2. Patent Overview

• Title: Security Systems and Methods for Protecting Merchandise from Theft
• Brief Description: The ’266 patent discloses a security system for retail merchandise comprising a programming station, one or more programmable keys, and security devices attached to merchandise. The system is designed to prevent theft by employees or shoplifters using stolen keys by deactivating a programmable key after a predetermined time or number of uses, requiring the key to be refreshed at the programming station to restore its functionality.

3. Grounds for Unpatentability

Ground 1: Claims 1-3, 5-10, 12-24, 26-30, 32-47, 49-52, and 54-56 are obvious over Roatis in view of Yoneda.

• Prior Art Relied Upon: Roatis (Application # 2005/0165806) and Yoneda (Japanese Unexamined Patent Application Publication H1-192970).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Roatis disclosed nearly all elements of the challenged claims. Roatis teaches an electronic key control system for vending machines, which Petitioner asserted are analogous to the claimed security devices for merchandise. The system includes a "key management system" (a programming station) that programs an "electronic key" (a programmable key) with operational limits, such as a total number of accesses or expiration date. The key stores a unique "key ID" or "serial number" (a security code), which is matched against a database in the station to authorize a "refresh operation." Roatis, however, does not explicitly disclose an alarm in its vending machines. Petitioner contended Yoneda, which also discloses a vending machine security system, supplied this missing element. Yoneda teaches a "buzzer" (an alarm) that sounds upon an unauthorized forced opening but is disarmed when the machine is unlocked by an authorized IR key.
  • Motivation to Combine: A POSITA would combine these references because both address the same field of security for vending machines. Petitioner asserted a POSITA would be motivated to add an alarm system, as taught by Yoneda, to the system of Roatis to enhance security by deterring theft, a need Roatis itself recognizes by mentioning an "alert mechanism."
  • Expectation of Success: A POSITA would have a high expectation of success in incorporating a conventional alarm into Roatis's security system, as it was a well-known and predictable modification to improve security.

Ground 2: Claims 1-3, 5-24, 26-52, and 54-56 are obvious over Roatis, Yoneda, and Denison.

• Prior Art Relied Upon: Roatis (Application # 2005/0165806), Yoneda (Japanese Unexamined Patent Application Publication H1-192970), and Denison (Application # 2004/0201449).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground builds upon the combination of Roatis and Yoneda by adding Denison to provide further detail on the authorization process. Petitioner argued that while Roatis describes "challenge-response communications" between the key and station, it does not elaborate on the mechanism. Denison, a related reference sharing an inventor and terminology with Roatis, explicitly details this process. Denison teaches that an electronic lock is unlocked only if the "key code" it receives from an electronic key matches the code stored in the lock's memory, clarifying the wireless authorization and code-matching limitations required by the claims.
  • Motivation to Combine: A POSITA seeking to implement the challenge-response protocol mentioned in Roatis would naturally look to a closely related reference like Denison for the specific implementation details. The shared technology and inventor would make this combination straightforward and logical for implementing a robust authorization mechanism.
  • Expectation of Success: A POSITA would have a high expectation of success in using Denison's detailed challenge-response protocol to implement the more general disclosure in Roatis, as it represented a known method for secure communication in such systems.

• Additional Grounds: Petitioner asserted additional obviousness challenges against claims 20 and 40 based on Roatis, Yoneda, and Beuchat (Patent 6,578,148), with a further combination including Denison. These grounds focused on the physical configuration and securing of the programming station housing, arguing Beuchat taught methods for physically securing a PC (like the one in Roatis) to a support structure to prevent theft.

4. Key Claim Construction Positions

• "security code": Petitioner argued this term should be construed broadly to encompass any code used for security purposes. This construction would include a factory-set serial number or unique identifier, such as the "key ID" disclosed in Roatis, and is not limited to randomly generated or changeable codes.
• "programming station" / "authorization station": Petitioner contended these terms are used interchangeably in the patent and should be given the same meaning. This position is relevant because independent claim 22 substitutes "authorization station" for the "programming station" recited in independent claim 1, and the specification provides no basis for any distinction.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate. Although some of the asserted prior art was cited in an Information Disclosure Statement (IDS) during prosecution, Petitioner contended the Examiner did not substantively consider the references in the specific combinations proposed in the petition (e.g., with Yoneda) or address the arguments presented in related IPR decisions, and therefore the Board should institute review.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-3, 5-24, 26-52, and 54-56 of the ’266 patent as unpatentable.