In its Final Written Decision, the Board found that Petitioner established by a preponderance of the evidence that claims 1-5, 9-11, 15-17, 21, and 22 of the ‘573 patent are unpatentable.

The ‘573 patent “generally relates to remote sobriety monitoring using a breath testing and identification device.” Trial was instituted on the following grounds: (1) claims 1-3 and 9 obvious over Walter; (2) claims 4, 5, 10, and 11 obvious over Walter and Hawthorne; (3) claims 15-17 and 21 obvious over Walter and Williams; and (4) claim 22 obvious over Walter, Williams, and Hawthorne.

The Board first addressed claim construction, stating that “claims of an unexpired patent using the broadest reasonable construction.” In its Decision on Institution, the Board adopted Petitioner’s proposed constructions.  Because neither party disputed the constructions, the Board maintained them.

The Board then addressed Patent Owner’s Motion to Exclude. First, Patent Owner objected to several paragraphs of the Wojcik Declaration.  Because the Board did not rely upon the paragraphs subject to the Motion, the Motion was moot.  Patent Owner also moved to exclude several exhibits on hearsay grounds, but the Board was not persuaded by the general reference to hearsay “without identifying any such instances.”  Finally, Patent Owner objected to certain exhibits as not being authenticated, but the Board did not find Patent Owner’s reasoning persuasive.

Turning to the asserted grounds of unpatentability, the Board first discussed the Walter reference. The Board found that Walter differed from the claimed invention in that the claimed invention requires a wireless transceiver “housed within the case” while Walter discloses a separate relay device housing the transceiver.  Therefore, the dispute centered on whether it would have been obvious to modify the cellular phone of Walter to include the transceiver functions of the disclosed relay device.  In its Decision on Institution, the Board “preliminarily determined that using the handheld device’s cellular phone in place of the relay box’s would have been no more than a predictable, and obvious, rearrangement of old elements.”  Patent Owner’s arguments were not persuasive in changing the Board’s decision.  In particular, the Board found Patent Owner’s arguments were either not tied to the claim language, that the proposed modification of Walter would not transform the system as alleged, and that Petitioner’s marketing materials regarding “[w]hether transdermal monitoring is more effective than breath alcohol monitoring is inapposite to [teaching away].”

Patent Owner also argued that the Petition should be denied because it failed to explicitly state a level of skill in the art. At oral hearing and in its Reply, Petitioner argued that such an explicit statement was not needed, at least because the prior art itself reflects the level of skill in the art.  The Board was persuaded by Petitioner’s arguments and held that the failure to explicitly state the level of skill in the art in the Petition was not dispositive.

Next, the Board turned to evidence of secondary considerations. Patent Owner alleged that evidence of copying showed the claimed invention’s nonobviousness.  However, the Board found that “[w]hile Patent Owner alleges that Petitioner had access to its product, Patent Owner has not introduced credible evidence to show that its product was replicated or that Petitioner’s competing product was substantially similar to the patented product.”  Accordingly, Patent Owner failed to establish the required nexus between the evidence of copying and the challenged claims.

Patent Owner’s evidence of long-felt need was also not persuasive. In this regard, the Board found that “[m]erely stating that the prior art had deficiencies is not enough to show a long-felt need,” and that evidence “of efforts to solve [a] problem” would be required.  Evidence of commercial success was also found to be unpersuasive, in particular, because the evidence failed to show significant sales in the market and a nexus with the claimed invention.  Finally, evidence of industry praise was found lacking because the record did not show what product was being praised.

The Board finally addressed the remaining grounds based on combinations including Walter. Patent Owner did not contest the disclosures of the additional references but argued that their combination with Walter would not have been obvious.  In particular, Patent Owner argued that Hawthorne teaches away from the claimed invention, but the Board was not persuaded, finding that the cited portions of Hawthorne only described advantages of different alcohol monitoring methods.  The Board also agreed with Petitioner that Patent Owner was attacking the references individually rather than considering the teachings of the combination.

Alcohol Monitoring Systems, Inc. v. Soberlink, Inc., IPR2013-00577
Paper 40: Final Written Decision
Dated: January 13, 2015
Patent: 8,381,573 B2
Before: Kalyan K. Deshpande, Scott E. Kamholz, and David C. McKone
Written by: McKone