Takeaway: In a case where the Patent Owner has filed neither a Preliminary Response nor a Patent Owner Response, the Board will base its Final Written Decision on the information of record, including the submitted testimonial evidence and the positions advocated by Petitioner.

In its Final Written Decision, the Board concluded that Petitioner had shown by a preponderance of the evidence that all claims of the ’429 patent for which trial was instituted are unpatentable. The claims for which trial had been instituted were claims 15–21, 23–26, 29–32, 34, 36, 37, 39, 41–50, 52–58, 60, 62–67, and 70–76.

Petitioner had filed a Corrected Inter Partes Review Petition challenging the above-identified claims of the ’429 patent. Patent Owner did not file any Preliminary Response prior to institution of trial, and did not file any Patent Owner Response after trial had been instituted.  Moreover, oral argument was not requested by either party.

The ’429 patent relates to a single network appliance that participates “in a comprehensive multimedia security and building support system that may be deployed singularly, or in combination, to achieve the degree of monitoring and protection desired” and that “provides all of the functions previously supplied by a plurality of dedicated purpose, discrete appliances.”

After considering all of the evidence, including the declaration testimony of Petitioner’s expert Dr. Wicker, the Board ultimately made the following determinations: that claims 15–18, 23–25, 39, 43–50, 55, 60, 62–65, 71, 73, and 74 are unpatentable under 35 U.S.C. § 103(a) as obvious over Seeley; that claims 18–21, 23, 24, 26, 29, 37, 41, 42, 70, and 75 are unpatentable under 35 U.S.C. § 103(a) as obvious over Seeley and Fernandez; that claims 26, 29–31, 37, 42, 52, 54, 55, 58, 72, and 75 are unpatentable under 35 U.S.C. § 103(a) as obvious over Seeley and Maram; that claims 32, 34, 36, 42, 43, 50, 53, 55–57, 60, 65, 67, 75, and 76 are unpatentable under 35 U.S.C. § 103(a) as obvious over Seeley and Body; and that claims 15–18, 20, 23–25, 43–50, 65, 66, and 71 are unpatentable under 35 U.S.C. § 103(a) as obvious over the Mobotix Brochure. In sum, the Board found that all challenged claims of the ’429 were unpatentable.

Mobotix Corp. v. e-Watch, Inc., IPR2013-00499
Paper 20: Final Written Decision
Dated: February 3, 2015 P
atent: 7,228,429
Before: Jameson Lee, Michael W. Kim, and Matthew R. Clements
Written by: Clements