iTakeaway: A patent owner’s arguments rebutting an instituted ground of unpatentability must be tied to limitations actually recited in the challenged claims, with respect to obviousness considerations based on combined teachings of references, and should not attack references individually.
In its Final Written Decision, the Board found that Petitioner had shown by a preponderance of the evidence that all challenged claims of the ’183 patent are unpatentable. The ’183 patent “describes a full service, multi-media surveillance system capable of a wide range of monitoring techniques using digital network architecture.”
Addressing claim construction, the Board indicated that “claim terms in an unexpired patent are given their broadest reasonable construction in light of the specification.” The Board construed four claim terms: (1) surveillance sensor appliance; (2) multi-function image sensor appliance; (3) surveillance sensor appliance controlled by the server for monitoring an area and generating a signal indicating a condition in the monitored area in a programmed response mode controlled by the server; and (4) comprehensive, IP network compatible, multimedia surveillance and security system.
The Board provided explicit constructions for the first two terms; noted that the third term “has a plain meaning and requires no special construction; and held that the fourth term, the preamble of each independent claim, “does not set forth any claim feature that is not already included in the body of the claim.”
The Board then turned to the instituted grounds of unpatentability, addressing Patent Owner’s arguments in turn. With respect to the first ground of obviousness of claims 1-9, 12-17, 25, and 32 based on the combination of Ely and Fernandez, Patent Owner argued that Petitioner failed to provide an articulated reason to combine the references. The Board disagreed, quoting the Petition’s identification of a reason to combine. Patent Owner also argued that the prior art did not disclose particular claim limitations, but the Board disagreed for various reasons, including the express disclosure of the prior art, Petitioner’s “unchallenged testimony,” finding that Patent Owner argued limitations not recited in the claims, and finding Patent Owner improperly attacked references individually.
Turning to the second ground of obviousness of claims 10, 11, and 18-23 based on the combination of Ely, Fernandez, and Imaide, the Board again found Patent Owner’s arguments unpersuasive. In particular, the Board disagreed with Patent Owner’s interpretations of the prior art in light of Petitioner’s uncontested testimony and found that Patent Owner argued limitations not found in the claims.
With respect to the third ground of obviousness of claim 24 based on the combination of Ely, Fernandez, and Barzdins, the Board was again persuaded by Petitioner’s arguments. Patent Owner did not specifically address claim 24, but did generally argue that no reason to combine was articulated in the Petition. However, the Board found that argument unpersuasive.
With respect to the fourth ground of anticipation of claims 25 and 33 based on Kogane, the Board found Patent Owner’s arguments distinguishing the claims from Kogane unpersuasive. Once again, the Board disagreed with Patent Owner’s interpretation of the prior art and found that its arguments did not coincide with limitations recited in the claim.
Regarding the fifth and final ground of obviousness of claims 32 and 34 over Kogane and Fernandez, the Board found Patent Owner’s arguments unpersuasive for improperly attacking the references individually and for being inconsistent with the disclosure of the prior art.
Thus, the Board concluded that Petitioner had established by a preponderance of the evidence that the challenged claims are unpatentable.
Mobotix Corp. v. e-Watch, Inc., IPR2013-00255
Paper 23: Final Written Decision
Dated: August 7, 2014
Patent: 6,970,183
Before: Jameson Lee, Michael W. Kim, and Georgianna W. Braden
Written by: Braden
