PTAB

PGR2018-00004

Mobile Tech, Inc. v. InVue Security Products Inc.

Title: Programmable Security System for Retail Merchandise
Brief Description: The ’472 patent relates to security systems for protecting retail merchandise from theft. The system comprises a programming station, programmable electronic keys, and security devices attached to merchandise, all intended to operate with a security code that is unique to a single retail store to prevent the use of stolen keys.

Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that every claim contains the limitation that a "single security code," "programmable keys," and/or "security devices" are "usable in only a single retail store." However, the specification allegedly fails to describe how to achieve this functional limitation. Instead, Petitioner contended that the disclosed embodiments are inherently capable of being used in more than one retail store (e.g., by moving a key or the entire system to another location).
- Key Aspects: The argument asserted that because the specification discloses a system that is functionally the opposite of what is claimed (i.e., a system usable in multiple stores), the patentee was not in possession of the invention at the time of filing. Petitioner contended that this functional claiming without corresponding structural or methodological support in the specification fails the written-description requirement.

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 a security system for retail merchandise that used a conventional mechanical key. Denison disclosed a security system (for a vending machine) that solved problems related to key distribution by using a programmable electronic key, a programming station to generate security codes, and a memory in the key to store the code. The combination of these references allegedly taught all elements of the challenged independent claims.
- Motivation to Combine: A Person of Ordinary Skill in the Art (POSA) would have been motivated to replace Rothbaum's outdated mechanical key with Denison's programmable electronic key system to solve the known problem of stolen or lost keys being used by unauthorized individuals.
- Expectation of Success: A POSA would have had a reasonable expectation of success in combining the systems because they are in analogous arts (security systems) and the integration involved applying known electronic key technology to an existing retail security framework.

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 combination of Rothbaum and Denison. Petitioner asserted that Deguchi was added to teach the use of a physical port integrated directly into the housing of a host device (e.g., programming station) for communication with a portable device (e.g., the key). This contrasts with Denison, which used a separate "cradle" as an intermediary.
- Motivation to Combine: Deguchi explicitly taught the desirability of moving from a system requiring a separate docking cradle to one with an integrated port for direct communication, which simplifies the system. A POSA would have been motivated to modify the Rothbaum/Denison system with Deguchi's integrated port for improved simplicity and reliability.
- Key Aspects: This ground specifically addressed claim limitations requiring a "port" in the programming station or security device for receiving the programmable key.
Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Ott (Patent 6,380,855) for teaching mounting security devices with fasteners/adhesives and including a plunger switch for anti-tamper purposes.

"usable in only a single retail store": Petitioner argued this term is central to the patent's validity and proposed it means the security code/device is capable of being used in one retail store and incapable of being used in any other retail store. This construction was foundational to the §112 arguments, as Petitioner contended the specification fails to describe a system that is "incapable" of cross-store use.
"single security code": Petitioner argued that phrases like "providing a single security code" should be construed to mean providing one security code at a time, not one and only one code for the device's entire lifespan. This construction was necessary to avoid rendering dependent claims that require generating additional codes (e.g., claim 4) superfluous.
"a housing" with "a port": Petitioner argued that the use of "a" means the claims encompass devices with one or more housings, where at least one has a port. This construction prevents a narrow reading that would limit the claims to single-housing devices only.

PGR Eligibility / Effective Filing Date: Petitioner contended the ’472 patent was eligible for Post-Grant Review (PGR) because at least one claim (claim 25) was not entitled to a pre-AIA filing date. Petitioner argued that claim 25’s limitation that the programming station "cannot generate more than one single security code" lacked written-description support in any of the parent applications. This allegedly new matter gave claim 25 an effective filing date of January 3, 2017, making the entire patent subject to the AIA and thus eligible for PGR.

Petitioner argued that discretionary denial under §325(d) would be inappropriate. Although the core prior art (Rothbaum and Denison) was cited in an Information Disclosure Statement (IDS) during prosecution, Petitioner asserted that the Examiner never considered or addressed the substantive obviousness arguments presented in this petition or in related IPRs concerning the same patent family. Furthermore, the §112 invalidity grounds were not raised or considered at all during prosecution.

Petitioner requested institution of a Post-Grant Review and cancellation of claims 1-45 of Patent 9,659,472 as unpatentable.