Takeaway: The Board deemed certain claims unpatentable where a patent owner failed to provide any specific arguments supporting its contention that the claims are patentable and also failed to file a supplemental patent owner response for six weeks after the Board had requested it for purposes of considering whether to authorize its filing.

In its Final Written Decision, the Board found that Petitioner had shown by a preponderance of the evidence that claims 7, 33-35, and 51 are unpatentable, and that the rest of the challenged claims (1-6, 8-14, 22, 26-28, 32, 38, 44-49, and 65) were unpatentable because Patent Owner had conceded the unpatentability of those claims. The ’429 Patent “relates to sensor, monitor, and control appliance devices generally utilized in monitoring and surveillance systems, and is specifically adapted to a network adaptation of such appliances.”

Patent Owner had waived the filing of a Preliminary Response, and the Board instituted trial on all of the challenged claims. After institution, Patent Owner filed Patent Owner Response and a Corrected Patent Owner Response. During a telephone conference before Petitioner’s Reply, Patent Owner agreed that, in absence of an authorized supplemental Patent Owner Response, claims 1-6, 8-14, 22, 26-28, 32, 38, 44-49, and 65 would be deemed unpatentable and would be cancelled. No supplemental Patent Owner Response was authorized.

The Board began with claim construction, noting that claim terms in an unexpired patent are interpreted according to their broadest reasonable construction in light of the specification. The Board construed the term “compressor” found in independent claims 1 and 6. Petitioner argued the “compressor” means “a device for reducing the number of bits needed to represent an item of digital data,” and relied on a definition from Computer User’s Dictionary and several portions of the ’429 Patent for support. In particular, Petitioner argued that the term should not include software-based compressors, because such compressors are not enabled by the ’429 Patent. The Board agreed with Petitioner in construing the term with regard to its Decision on Institution.

Patent Owner argued that “compressor” does not require construction, and that if it did, it should be construed as “hardware, software, or a combination for performing data compression,” because the Specification does not exclude software-based compressors. To support its construction, Patent Owner relies on its expert’s testimony and a reference by the expert to a webpage that cites an article. The Board determined that Petitioner’s construction constitutes the broadest reasonable interpretation in light of the specification, because its extrinsic definition of “compressor” was consistent with the Specification, especially the portion of the Specification in which “compressor” was treated an equivalent to hardware, such as processors and circuits. Regarding Patent Owner’s argument, the Board determined that merely not excluding something does not mean that it is included. Instead, Patent Owner needed to show how the Specification would lead one of ordinary skill in the art to determine that a broadest reasonable construction of the term would include disembodied software implementations.

The Board then turned to the grounds of unpatentability asserted in the Petition. The Board noted that for the first ground, Patent Owner asserted in its Corrected Patent Owner Response that claims 1-6, 8-14, 22, 26-28, 32, 38, 44-49, and 65 were not obvious over the Mobotix Brochure, but provided no specific arguments supporting its contention. Patent Owner indicated in a teleconference afterward that although the Due Date for filing its Response had passed, it was contemplating requesting authorization to file a Supplemental Patent Owner Response. The Board ordered that any such Supplemental Response be filed immediately, and Patent Owner waited six weeks, the same day that Petitioner filed a Reply, to request leave to file the Supplemental Response. The Board refused to authorize the Supplemental and ordered that Patent Owner had conceded the patentability of claims 1-6, 8-14, 22, 26-28, 32, 38, 44-49, and 65.

Next, the Board turned to the grounds of unpatentability based on Seeley. The Board only addressed claims 33-35, which depending indirectly from claim 1, because the other claims asserted as unpatentable under this ground had been deemed unpatentable for the reason provided above. Patent Owner argued that Seeley does not render obvious limitations from claim 1, to which claims 33-35 depend, and did not address the limitations specific to claims 33-35. The Board was persuaded that Petitioner had demonstrated by a preponderance of the evidence that claims 33-35 would have been obvious over Seeley. Petitioner acknowledged that Seeley did not disclose expressly that the disclosed video compression module implements an MPEG standard or that the disclosed frame compression unit implements a JPEG standard, but stated with evidence provided by its expert that it would have been obvious at the time of the invention that the video compression module and frame compression unit could have used the MPEG and JPEG standards, respectively, since they were each one of a limited number of well-known, commonly used standards at the that time. The Board also disagreed with Patent Owner on a number of other arguments in which the Patent Owner interpreted the claims in a manner narrower than appropriate under a broadest reasonable construction standard.

Next, the Board turned to the final ground of unpatentability. Again the Board only addressed claims that were not deemed unpatentable for the reasons provided above. Petitioner argued that claim 1 was taught by Seeley, and the additional limitations recited in claims 7 and 51, which depend, directly or indirectly, from claim 1, is taught by Fernandez. Patent Owner countered that claim 1 was not taught by Seeley for reasons similar to those put forth previously with regard to claims 33-35, and did not present separate arguments for limitations recited in dependent claims 7 and 51. The Board disagreed with Patent Owner’s arguments for the same reasons as for its analysis of claims 33-35.

Finally, the Board addressed Petitioner’s Motion to Exclude Patent Owner’s expert’s declaration. The Board determined that without excluding the identified evidence, Petitioner demonstrated by a preponderance of the evidence that the challenged claims are unpatentable, and thus dismissed the motion as moot.

Mobotix Corp. v. E-Watch, Inc., IPR2013-00335
Paper 43: Final Written Decision
Dated: May 2, 2014
Patent 7,228,429
Before: Jameson Lee, Michael W. Kim, and Matthew R. Clements
Written by: Lee