Takeaway: When considering a claim term’s broadest reasonable construction, that the specification does not exclude a particular embodiment does not mean that the embodiment is necessarily included.

In its Final Written Decision, the Board found that Petitioner had shown by a preponderance of the evidence that the challenged claims of the ’913 patent are unpatentable, and dismissed Petitioner’s Motion to Exclude.

The ’913 patent “relates to multimedia sensors for use in connection with a digital networked surveillance system.” To address problems in the technology, the ’913 patent discloses “using a fully digital camera system capable of providing high resolution still image and/or streaming video signals via a network to a centralized, server-supported security and surveillance system.”

With respect to claim construction, the Board particularly addressed three claim terms. First, with respect to the term “compressor,” the Board held that Petitioner’s proposal was most consistent with the broadest reasonable interpretation, as supported by the specification and extrinsic dictionary definitions.  Thus, it construed “compressor” to mean “device for reducing the number of bits needed to represent an item of digital data.”  Second, regarding “multiplexer,” the Board again agreed with Petitioner’s proposal, finding it to be consistent with the broadest interpretation.  Thus, “multiplexer” was construed as meaning “a device for combining two or more input signals into at least one output signal.”  For both of the above terms, Patent Owner unsuccessfully argued that the terms should not be limited to hardware because “the Specification does not exclude software-based multiplexers.”  In rejecting Patent Owner’s arguments, the Board noted that “the fact that the Specification does not exclude a particular implementation does not indicate that it includes it,” and instructed that the proper inquiry is rather what the specification would lead one of ordinary skill in the art to understand to be the broadest reasonable construction.

With respect to the term “network,” Patent Owner argued the term should be limited to “those associated with Internet protocols, such as TCP/IP.” However, the Board was not persuaded.  Referencing the specification, the Board defined “network” to mean “a series of interconnected devices that employ protocols for sending and receiving digital data.”

Turning to the prior art, the Board was persuaded that claims 1–4, 6, 8, 9, 17, and 19 of the ’913 patent are unpatentable as obvious over Seeley. Patent Owner’s arguments regarding the lack of disclosure of Seeley were found to be not persuasive as they were not commensurate in scope with the claims or relied upon claim constructions that were not adopted by the Board.  Its arguments regarding the alleged lack of a reason to modify Seeley were not found persuasive.

With respect to the ground of obviousness of claims 1–6, 8–10, 13, 17, and 19 over Brusewitz and Ohki, the Board found Petitioner’s arguments persuasive. The Board rejected Patent Owner’s arguments, finding that Patent Owner attacked Ohki individually when the instituted ground was based on a combination of Brusewitz and Ohki.  Additional arguments presented by Patent Owner were not found to be persuasive for reasons similar to those with respect to the ground based on Seeley.

With respect to the remaining grounds of unpatentability, these were all instituted based on either Seeley or the combination of Brusewitz and Ohki, with additional references. Patent Owner’s arguments were similar to those discussed above.  Therefore, the Board concluded for similar reasons, that Petitioner had established the unpatentability of the challenged claims on these additional grounds.

Finally, the Board addressed Petitioner’s unopposed Motion to Exclude Patent Owner’s expert declaration as well as Exhibits 2002-2009. The Board dismissed the Motion as moot because it found the claims unpatentable even without excluding the evidence subject to the Motion.

Mobotix Corp. v. e-Watch, Inc., IPR2013-00337
Paper 35: Final Written Decision
Dated: October 10, 2014
Patent: 7,023,913
Before: Jameson Lee, Michael W. Kim, and Matthew R. Clements
Written by: Kim