Petition for Inter Partes Review of U.S. Patent No. 9,253,452 Paper No. UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD TASER INTERNATIONAL, INC. Petitioner v. DIGITAL ALLY, INC. Patent Owner Case IPR Patent No. 9,253,452 Issued: February 2, 2016 Filed: August 14, 2013 PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 9,253,452 UNDER 35 U.S.C. 311-319 AND 37 C.F.R. 42.100 ET SEQ.
US Patent 9,253,452 B2 TABLE OF CONTENTS I. INTRODUCTION.... 1 II. STANDING.... 1 III. FEE.... 2 IV. MANDATORY NOTICES (37 C.F.R 42.8(b)).... 2 A. Real Party in Interest (37 C.F.R 42.8(b)(1)).... 2 B. Related Proceedings (37 C.F.R 42.8(b)(2)).... 2 C. Lead and Back-up Counsel (37 C.F.R 42.8(b)(3)).... 3 D. Service Information (37 C.F.R. 42.8(b)(4)).... 3 E. Power of Attorney (37 C.F.R. 42.10(b)).... 3 V. STATEMENT OF RELIEF REQUESTED.... 4 A. Identification of Prior Art and Challenged Claims.... 4 B. Supporting Evidence Relied Upon for the Challenged Claims.... 4 C. Summary of Unpatentability.... 5 D. Grounds for Unpatentability.... 5 VI. OVERVIEW OF THE '452 Patent.... 6 A. Effective Filing Date of the '452 Patent.... 6 B. State of the Art as of the '452 Priority Date.... 7 1. Third-Party System Development Culminating in Police Department Specifications for Automatically-Triggered Camera Systems.... 7 -i-
2. Petitioner TASER's Own Prior, Public Activities and Patents.... 9 C. Summary of the '452 Patent.... 11 1. The Patent Owner's Admitted Prior Art.... 11 2. Technical Overview of the '452 Patent.... 12 3. The Claims of the '452 Patent.... 14 D. Summary of the Prosecution History.... 14 E. Person of Ordinary Skill in the Art.... 15 VII. CLAIM CONSTRUCTION.... 15 A. "broadcast" (All Challenged Claims).... 16 B. "substantially simultaneously" (All Challenged Claims).... 16 C. "correlation data" (All Challenged Claims).... 17 D. "recording device" (All Challenged Claims).... 17 E. "recording device manager" (All Challenged Claims)... 18 F. "operable to" (All Challenged Claims).... 20 VIII. DETAILED EXPLANATION OF GROUNDS FOR OBVIOUSNESS.... 20 A. Ground 1: Obviousness of Claims 10-17 and 20 under 35 U.S.C. 103(a) in View of Pierce and Brundula.... 25 1. Pierce (Ex.1014).... 25 2. Brundula (Ex.1015).... 27 3. Reasons to Combine the Teachings of Pierce and Brundula.... 29 4. Claim-by-Claim Analysis.... 31 - ii -
a. Independent Claim 10 Is Rendered Obvious in View of Pierce and Brundula... 31 i. Limitation 10[A] "A system for recording multiple viewpoints of an event, comprising" (Ex.1001, Claim 10).... 31 ii. iii. iv. Limitation 10[B] "a first recording device configured to be mounted on or configured to be carried by a law enforcement officer so as to record a first set of record data for the event" (Ex.1001, Claim 10).... 32 Limitation 10[C] "a second recording device, distinct from the first recording device, located so as to record a second set of record data for the event, said first set of record data being distinct from the second set of record data" (Ex.1001, Claim 10).... 34 Limitation 10[D] "a recording device manager operable to" (Ex.1001, Claim 10).... 36 v. Limitation 10[E] "receive a trigger signal" (Ex.1001, Claim 10).... 39 vi. vii. Limitation 10[F] "said trigger signal being at least one of activation of a law enforcement vehicle's siren, activation of said law enforcement vehicle's signal lights, activation of said law enforcement vehicle's spotlight, a vehicle crash event, and a vehicle speed" (Ex.1001, Claim 10).... 39 Limitation 10[G] "broadcast, in response to receiving the trigger signal, at least one communication signal including correlation data to the first recording device and the second recording device instructing the first recording device to begin recording said first - iii -
set of record data and instructing the second recording device to begin recording said second set of record data" (Ex.1001, Claim 10).... 40 viii. ix. Limitation 10[H] "wherein the first recording device stores the correlation data as metadata for the first set of record data" (Ex.1001, Claim 10).... 43 Limitation 10[I] "and the second recording device stores the correlation data as metadata for the second set of record data" (Ex.1001, Claim 10).... 44 x. Limitation 10[J] "such that the first set of record data and the second set of record data can be correlated back to the event" (Ex.1001, Claim 10).... 45 xi. Limitation 10[K] "wherein the first set of record data and the second set of record data are recorded beginning substantially simultaneously in response to the broadcast communication signal." (Ex.1001, Claim 10).... 45 b. Dependent Claim 11 Is Obvious in View of Pierce and Brundula.... 46 c. Dependent Claim 12 Is Obvious in View of Pierce and Brundula.... 46 d. Dependent Claim 13 Is Obvious in View of Pierce and Brundula.... 46 e. Dependent Claim 14 Is Obvious in View of Pierce and Brundula.... 47 f. Dependent Claim 15 Is Obvious in View of Pierce and Brundula.... 48 - iv -
g. Dependent Claim 16 Is Obvious in View of Pierce and Brundula.... 48 h. Dependent Claim 17 Is Obvious in View of Pierce and Brundula.... 49 i. Dependent Claim 20 Is Obvious in View of Pierce and Brundula.... 49 B. Ground 2: Obviousness of Claims 10-17 and 20 under 35 U.S.C. 103(a) in View of Vasavada and Tabak.... 49 1. Vasavada (Ex.1010).... 49 2. Tabak (Ex.1009).... 51 3. Reasons to Combine the Teachings of Vasavada and Tabak.... 52 4. Claim-by-Claim Analysis.... 54 a. Independent Claim 10 Is Rendered Obvious in View of Vasavada and Tabak.... 54 i. Limitation 10[A] "A system for recording multiple viewpoints of an event, comprising" (Ex.1001, Claim 10).... 54 ii. iii. Limitation 10[B] "a first recording device configured to be mounted on or configured to be carried by a law enforcement officer so as to record a first set of record data for the event" (Ex.1001, Claim 10).... 55 Limitation 10[C] "a second recording device, distinct from the first recording device, located so as to record a second set of record data for the event, said first set of record data being distinct from the second set of record" (Ex.1001, Claim 10).... 57 - v -
iv. Limitation 10[D] "a recording device manager operable to" (Ex.1001, Claim 10).... 58 v. Limitation 10[E] "receive a trigger signal" (Ex.1001, Claim 10).... 61 vi. vii. viii. ix. Limitation 10[F] "said trigger signal being at least one of activation of a law enforcement vehicle's siren, activation of said law enforcement vehicle's signal lights, activation of said law enforcement vehicle's spotlight, a vehicle crash event, and a vehicle speed" (Ex.1001, Claim 10).... 61 Limitation 10[G] "broadcast, in response to receiving the trigger signal, at least one communication signal including correlation data to the first recording device and the second recording device instructing the first recording device to begin recording said first set of record data and instructing the second recording device to begin recording said second set of record data" (Ex.1001, Claim 10).... 64 Limitation 10[H] "wherein the first recording device stores the correlation data as metadata for the first set of record data" (Ex.1001, Claim 10).... 66 Limitation 10[I] "and the second recording device stores the correlation data as metadata for the second set of record data" (Ex.1001, Claim 10).... 68 x. Limitation 10[J] "such that the first set of record data and the second set of record data can be correlated back to the event" (Ex.1001, Claim 10).... 68 - vi -
xi. Limitation 10[K] "wherein the first set of record data and the second set of record data are recorded beginning substantially simultaneously in response to the broadcast communication signal." (Ex.1001, Claim 10).... 69 b. Dependent Claim 11 Is Obvious in View of Vasavada and Tabak.... 70 c. Dependent Claim 12 Is Obvious in View of Vasavada and Tabak.... 70 d. Dependent Claim 13 Is Obvious in View of Vasavada and Tabak.... 71 e. Dependent Claim 14 Is Obvious in View of Vasavada and Tabak.... 71 f. Dependent Claim 15 Is Obvious in View of Vasavada and Tabak.... 71 g. Dependent Claim 16 Is Obvious in View of Vasavada and Tabak.... 72 h. Dependent Claim 17 Is Obvious in View of Vasavada and Tabak.... 72 i. Dependent Claim 20 Is Obvious in View of Vasavada and Tabak.... 73 IX. CONCLUSION.... 74 X. APPENDIX OF EXHIBITS.... 75 XI. CERTIFICATE OF WORD COUNT.... 77 XII. CERTIFICATE OF SERVICE.... 78 - vii -
US Patent 9,253,452 B2 I. INTRODUCTION. Pursuant to 35 U.S.C. 311-319 and 37 C.F.R. 42.100 et seq., TASER International, Inc. ("TASER" or "Petitioner") petitions for inter partes review of claims 10-17 and 20 ("challenged claims") of U.S. Patent No. 9,253,452 ("'452 Patent"). (Ex.1001). The '452 Patent is assigned to Digital Ally, Inc. Accordingly, Digital Ally, Inc., is believed to be the "Patent Owner" in this Petition. This Petition demonstrates a reasonable likelihood that Petitioner will prevail with respect to at least one of the claims challenged in this Petition, and thus a trial for inter partes review must be instituted. Evidence in this Petition demonstrates the challenged claims are unpatentable under 35 U.S.C. 103. Petitioner respectfully requests the challenged claims be rejected and cancelled. II. STANDING. Pursuant to 37 C.F.R. 42.104(a), Petitioner hereby certifies that the '452 Patent is available for inter partes review. The '452 Patent issued on February 2, 2016, more than nine months prior to the filing of this petition. (Ex.1001). Petitioner further certifies under 37 C.F.R. 42.104(a) that it is not barred or estopped from requesting inter partes review of the '452 Patent on the grounds identified below. Pursuant to 35 U.S.C. 315(b), this Petition is timely because it is being filed within one year after Patent Owner served its complaint against Petitioner in Digital Ally, Inc. v. TASER International, Inc., Case No. 2:16-cv- -1-
02032-CM-JPO, now pending in the United States District Court for the District of Kansas. III. FEE. The undersigned authorizes the Office to charge $23,000.00 which includes, if any, additional claims fees, to the credit card supplied in Financial Manager for the fees set forth in 37 C.F.R. 42.15(a) for this Petition for Inter Partes Review Proceeding. The undersigned further authorizes payment for any additional fees that might be due or credit any overpayment in connection with this Petition to the above-referenced credit card. IV. MANDATORY NOTICES (37 C.F.R 42.8(b)). A. Real Party in Interest (37 C.F.R 42.8(b)(1)). TASER International, Inc., located at 17800 North 85th Street, Scottsdale, AZ, 85255, is the sole real party-in-interest. B. Related Proceedings (37 C.F.R 42.8(b)(2)). Digital Ally, Inc. v. TASER International, Inc., Case No. 2:16-cv-02032- CM-JPO, now pending in the United States District Court for the District of Kansas ( Kansas Litigation ). Patent Owner is also asserting the '452 Patent against Enforcement Video, LLC, dba Watchguard Video, in Digital Ally, Inc. v. Enforcement Video, LLC - 2 -
d/b/a/ Watchguard Video, Case No. 2:16-cv-02349-JTM-JPO, pending in the United States District Court for the District of Kansas. On December 1, 2016, TASER filed two Petitions for Inter Partes Review requesting review of several claims of U.S. Patent No. 8,781,292 C1 (child patent of the '452 Patent), Case Nos. IPR2017-00375, IPR2017-00376. C. Lead and Back-up Counsel (37 C.F.R 42.8(b)(3)). In accordance with 37 C.F.R. 42.8(b)(3) and 42.10(a), TASER designates Brandon C. Stallman, Reg. No. 46,468, as Lead Counsel, and L. Rhys Lawson, Reg. No. 57,869, as Back-up Counsel. D. Service Information (37 C.F.R. 42.8(b)(4)). Counsel for Petitioner can be reached at Christensen O'Connor Johnson Kindness PLLC; 1201 Third Ave., Suite 3600, Seattle, Washington, 98101; Tel. (206) 682-8100; Fax (206) 224-0779. TASER consents to service by electronic mail at: brandon.stallman@cojk.com; rhys.lawson@cojk.com; litdoc@cojk.com. E. Power of Attorney (37 C.F.R. 42.10(b)). A Power of Attorney is filed concurrently with this Petition. - 3 -
V. STATEMENT OF RELIEF REQUESTED. Pursuant to 35 U.S.C. 311, and 37 C.F.R. 42.22(a)(1) and 42.104(b), Petitioner respectfully requests cancellation of the challenged claims of the '452 Patent based on the following reasons: A. Identification of Prior Art and Challenged Claims. Ground 1: Claims 10-17, and 20 are unpatentable under 35 U.S.C. 103 over U.S. Patent Publication No. 2005/0083404 to Pierce ("Pierce," Ex.1014) in view of U.S. Patent No. 8,594,485 ("Brundula," Ex.1015). Ground 2: Claims 10-17, and 20 are unpatentable under 35 U.S.C. 103 over U.S. Patent No. 8,805,431 ("Vasavada," Ex.1010) in view of U.S. Patent Publication 2014/0355951 ("Tabak," Ex.1009). B. Supporting Evidence Relied Upon for the Challenged Claims. The evidence to support the above challenges and the identification of where each claim limitation is found in the prior art references is provided below. This Petition and Dr. Henry Houh s Declaration (Ex.1003) demonstrate the challenged claims are not patentable. In particular, the Petition and Declaration explain where each claim element is found in the prior art and why the claims would have been obvious to a person of ordinary skill in the art ("POSITA") when the '452 Patent was filed. - 4 -
C. Summary of Unpatentability. The challenged claims generally describe a system for recording multiple viewpoints of an event using a "recording device manager" that has received a trigger signal. The use of a "recording device manager" in this manner was not new. Indeed, a number of prior art systems employ such methodologies to record event data from different vantage points using multiple recording devices. (Ex.1003, 92, 95-96, 107, 111, 115). Petitioner's own product designs and public presentations also included automatic activation of video recording devices based on police-vehicle triggers (e.g., light bar activation), years before the '452 Patent s priority date (Ex.1003, 99-100). This Petition is based on systems that teach a "manager" that automatically transmits a record instruction signal with correlation data to first and second recording devices in response to receiving a trigger signal, as well as other requirements of the challenged claims. D. Grounds for Unpatentability. Ground 1 is based on prior art patent publication Pierce (Ex.1014) in combination with prior art patent Brundula (Ex.1015). The systems of Pierce and Brundula are both directed to applications in law enforcement. Pierce teaches the claimed type of "manager" for activating synced recording devices to record based on a trigger, such as activation of a law enforcement vehicle's siren and/or signal - 5 -
lights. In Pierce, the manager automatically activates a plurality of recording devices, including a number of video cameras, a number of microphones, and a speed measuring apparatus in response to receiving a trigger signal, such as activation of a siren or light bar. (Ex.1014, 0076, 0084). Brundula is Petitioner's own patent and discloses a system for "presenting incident information provided by video devices," so as to align multiple recordings of an event, e.g., using a time reference to align the multiple recordings. (Ex.1015, Abstract). Ground 2 is based on prior art patent Vasavada (Ex.1010) in combination with prior art publication Tabak (Ex.1009). Vasavada discloses a "manager" that automatically transmits a record request signal to a talkgroup of synced recording devices in response to receiving an emergency alert and video signal such that members of the talkgroup all record an event from their own perspective. (Ex.1010). Tabak discloses a similar system for correlating recordings by a group of users that each records an event from their own perspective. (Ex.1009). VI. OVERVIEW OF THE '452 Patent. A. Effective Filing Date of the '452 Patent. The '452 Patent was filed on August 14, 2013. Based on the record, there is no reason to believe that the priority date of any of the challenged claims is earlier than August 14, 2013. - 6 -
B. State of the Art as of the '452 Priority Date. As of this priority date, the concept of a connected system of cameras and other triggering devices was well-known, including as a result of Petitioner TASER's own disclosures. In addition to Pierce, Brundula, Vasavada, and Tabak (relied upon herein as invalidating references), the patent art and public record are replete with references teaching systems such as those claimed in the challenged claims. 1. Third-Party System Development Culminating in Police Department Specifications for Automatically-Triggered Camera Systems. Before the 452 Patent priority date, many surveillance systems captured and stored data from multiple video cameras (and audio recorders). (See, e.g., Ex.1001, 1:18-28). One commercially-available example was the Raytheon 20/20-W system, which was sold to law enforcement and involved the use of multiple automatic triggers to initiate recording, such as activating a patrol vehicle s light bar or siren. (Ex.1006, p.9). This system is cited as an invalidating reference in Petitioner's IPR2017-00375 against a child patent (U.S. Patent No. 8,781,292 ("'292 Patent")) that claims priority as a continuation of the 452 Patent. Other examples of prior art systems included the multi-camera setup described in Kister (Ex.1005, Ex.1028), TASER s TACOM wireless system (further described below), and systems disclosed in various other patents and prior - 7 -
publications. See, for example, Blanco (Ex.1018), Brown (Ex.1020), Mirabile (Ex.1021), Pearlson (Ex.1022), and Lee (Ex.1023). Many of these systems focused on in-car recording systems with video cameras, along with officer-worn microphones and/or cameras. It was also well-known that one such device could trigger another, or that one trigger could simultaneously start multiple video or audio recorders to capture event data from various vantage points. (Ex.1003, 92, 95-96, 107, 111, 115). Before Patent Owner s priority date for the 452 Patent, such recording systems were so well-known that law enforcement customers were describing them in requests for proposal and detailed specifications. For example, the City of Pomona issued a Request for Proposal ( RFP ) in early 2013 that specified: (1) three mounted, miniature cameras; (2) a digital video recorder; (3) a wireless microphone; (4) a monitor to provide integration with a body-worn camera system; (5) auto-activation of the mobile video system and/or officer-worn microphone; (6) simultaneous recordings; and (7) optional metadata and time stamping. (Ex.1025 pp.5-7, 9-12, 15-16; public at least by 4/4/2013; http://www.ci.pomona.ca.us/mm/finance/bids/s0901.6_mobile_video_recording_ Sys.pdf; Ex.1003, 94). Similarly, the International Association of Chiefs of Police ("IACP") issued a minimum specifications document stating that such systems should include: (1) at least one camera and at least one microphone; (2) a device - 8 -
used to record Digital Multimedia Evidence and associated metadata; (3) autoactivation of audio and video recording by the Vehicle Recording wireless microphone; (4) auto-activation of a Vehicular Recording System by a police vehicle s emergency lights and/or sirens; and (5) time syncing. (Ex.1017, pp.1, 3, 6, 15-16, and 18-19; 1.4.17, 1.4.51, 4.1.1, 4.2.15, 4.2.16, 4.2.22, 4.2.24, and 5.4.1-5; Ex.1003, 94, 98). In a proposal to the State of Utah, Kustom Signals Inc. proposed a system with "all the automatic record activations you're used to: light bar, siren and mic activation, as well as available GPS and crash-detection activation." (Ex.1019, p.28). filing. All of these activities and documents predate Patent Owner s 452 Patent 2. Petitioner TASER's Own Prior, Public Activities and Patents. TASER was also active in this space years before Patent Owner s priority date. TASER identified automatic activation of body worn cameras, including using activation triggers such as a law enforcement vehicle s light bar, as a potential functionality beginning as early as 2008. TASER gave several public presentations describing its version of such a system, including CEO Rick Smith's April 28, 2009, presentation at the Evidence.com Technology Summit in - 9 -
Scottsdale, AZ. That presentation included the slide below, which illustrated the "TACOM" (TASER Communications) system: As pictured above, the cameras could be triggered by activation of a vehicle s light bar, a CEW, or even another camera. The TACOM system was described by TASER as enabling time alignment and event triggering and logging between devices, including officer-mounted cameras and TASER weapons. This coordination allowed for the alignment of data recordings from connected devices when transferred to Evidence.com. TASER also secured patents on triggering and time alignment within such an ecosystem of weapons and cameras (see, e.g., - 10 -
Brundula (Ex.1015) filed December 30, 2010, and charted herein against the 452 Patent). Thus, it was well-known from many sources in the art, including TASER, to provide an automatically-triggered (e.g., from a law enforcement vehicle light bar or siren trigger) system of synced devices for recording events from multiple viewpoints, and to time stamp and coordinate the multiple data sets generated. C. Summary of the '452 Patent. 1. The Patent Owner's Admitted Prior Art. The '452 Patent admits that recording device management systems were known prior to August 14, 2013, and had been used to coordinate recording devices to capture multiple recordings of an event. (Ex.1001, 1:18-20). An example of an admitted prior art recording device management system includes a control board that starts multiple video cameras to record video data from multiple vantage points. (Ex.1001, 1:20-22). This is said to occur by the control board simply receiving a single input, such as a button press, that is transmitted to multiple recording devices. (Ex.1001, 1:22-24). The '452 Patent also admits the law enforcement field is growing more dependent on recording devices, such as cameras and audio recorders, to preserve evidence. (Ex.1001, 1:29-33). The '452 Patent states that prior to the filing date, officers had used dash-cams, hidden cameras, and personal recording devices worn - 11 -
by the officers to obtain crucial video and audio data recordings. (Ex.1001, 1:29-33). One type of vehicle recording device that can be employed by the claims of the '452 Patent is described in prior art US Patent Publication 2009/0002491 (Ex.1001; 11:26-32; Ex.1026). 2. Technical Overview of the '452 Patent. The '452 Patent is said to solve the problems of the prior art by providing a computer program, method, apparatus, and system for managing multiple recording devices. (Ex.1001, 1:50-53). According to the '452 Patent, the multiple recording device management system includes a multiple recording device managing apparatus, referred to in the challenged claims as the "recording device manager." (Ex.1001, 1:54-56). The multiple recording device management system also includes a vehicle recording device, such as a video camera, synced to the recording device manager and a personal recording device, such as a video camera, synced to the multiple recording device manager. (Ex.1001, Abstract). The basic components of the claimed system are shown in Fig. 1 below. - 12 -
With reference to Fig.1, as applied to the challenged claims, the recording device manager 12 operates by receiving a trigger signal indicative of a triggering event related to the vehicle 16, such as activation of a siren or signal lights. (Ex.1001, 14:41-48). After receiving the trigger signal from either the recording device 14 or recording device 18, which is described in the '452 Patent as being a signal indicative of the respective recording device 14 or 18, receiving an instruction to record, the device manager 12 will instruct a number of synced recording devices, such as vehicle recording device 14 and/or personal recording device 18 to begin recording record data (e.g., video). (Ex.1001, 7:46-67). It is said that any number of recording devices 14 and/or 18 can be synced with the device manager 12 and receive the instruction signal to begin recording. (Ex.1001, 4:16-55). - 13 -
The recording of record data is said to begin almost simultaneously. (Ex.1001, 7:11-15). The instruction signal includes correlation data, which is stored on the first and second recording devices as metadata, such that record data from the first and second recording devices can be correlated back to the event recorded. (Ex.1001, 6:16-56). 3. The Claims of the '452 Patent. Claim 10 of the challenged claims is independent. The remaining challenged claims depend from claim 10. Claim 10 is representative of the challenged claims. D. Summary of the Prosecution History. Claims 1-20 were originally filed on August 14, 2013. (Ex.1005, pp.447-454). During an extensive prosecution, claim 21 (issued claim 10) was amended several times to overcome the prior art. After interviews and presentations of Patent Owner arguments, a Notice of Allowance issued on December 17, 2015. (Ex.1005, pp.19-30). Despite a previous indication of allowance of independent claims 1 and 21 in a Non-Final Office Action dated November 5, 2015, a subsequent Interview occurred on December 2, 2015, and U.S. Patent Application Publication No. 2014/0049636 ("O'Donnell") was discussed. (Ex.1005, pp.72-73). No further details are provided in the record, but the Examiner's Amendment in the Notice of Allowance adds to claim 21 the recitation, "said trigger signal being at least one of activation of a law enforcement - 14 -
vehicle's siren, activation of said law enforcement vehicle's signal lights, activation of said law enforcement vehicle's spotlight, a vehicle crash event, and a vehicle speed," (Ex.1005, pp.19-30) and O'Donnell is cited in the Notice of References Cited (Ex.1005, p.31) mailed with the December 17, 2015, Notice of Allowance. Accordingly, it appears that this final amendment to claim 21 was required to overcome O'Donnell. U.S. Patent No. 9,253,452 issued on February 2, 2016. E. Person of Ordinary Skill in the Art. A POSITA in the field of the '452 Patent in August 2013, would have been someone with at least a bachelor s degree in electrical engineering or a related field (including but not limited to computer or network engineering), with two years of additional experience in the area of data communications and data storage. (Ex.1003, 67). The additional two years of experience could be either in an industrial setting or in an educational setting, such as in the course of obtaining an advanced degree. (Id.). VII. CLAIM CONSTRUCTION. A claim subject to inter partes review ( IPR ) is given its broadest reasonable construction ( BRI ) in light of the specification of the patent in which it appears. 37 C.F.R. 42.100(b). Under the BRI standard, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the - 15 -
specification and prosecution history. Straight Path IP Grp., Inc. v. Sipnet EU S.R.O., 806 F.3d 1356, 1362 (Fed.Cir.2015). Petitioner below proposes the BRI of certain claim language, as understood by a POSITA as of the filing date of the '452 Patent. 37 C.F.R. 42.104(b)(3). Petitioner also below sets forth claim terms that are subject to 35 U.S.C. 112(f). Petitioner submits that all remaining claim terms should be accorded their plain and ordinary meaning as understood by a POSITA. 77 Fed. Reg. 48700 (2012). Petitioner reserves all rights regarding claim constructions presented during litigation, including the Kansas Litigation, as they do not necessarily correspond to a BRI approach. Different standards may be involved in litigation and Patent Office proceedings. Cuozzo Speed Technologies, LLC v. Lee, 136 S.Ct. 2131 (2016). A. "broadcast" (All Challenged Claims). The term "broadcast" should be construed as: "sending a transmission simultaneously to two or more synced recording devices." This construction is consistent with the specification of the '452 Patent. (Ex.1001, 4:44-55, 7:46-67; 9:49-62, 14:17-48). B. "substantially simultaneously" (All Challenged Claims). In the Kansas Litigation, Patent Owner has proposed that substantially simultaneously be construed as at the same time or nearly the same time. - 16 -
(Ex.1011, p.23). Patent Owner has not explained what nearly the same time means. However, for purposes of this Petition, and because this term s scope at least includes actions occurring at the same time, Petitioner demonstrates unpatentability on that basis below. Petitioner further applies this term to the prior art in the same manner Patent Owner has sought to apply it to Petitioner s products in the Kansas Litigation. C. "correlation data" (All Challenged Claims). In the Kansas Litigation, Petitioner and the Patent Owner have agreed to a construction of "correlation data" as meaning "data, including but not limited to a unique serial number and time stamp, used to link together or otherwise associate record data." (Ex.1012, p.6). Petitioner accepts this construction of the term "correlation data" for purposes of this Petition, and demonstrates unpatentability based on this construction. D. "recording device" (All Challenged Claims). The term "recording device" is a means plus function limitation under 35 U.S.C. 112(f). Although "means" is not recited, the rebuttable presumption should be overcome, as the term "recording device" lacks sufficiently definite structure. This claim term uses the generic placeholder or nonce term "device." - 17 -
(MPEP 2181(I)). And the term "recording" that modifies the nonce word "device" is written as a present participle ("'ing"), which does nothing more than to identify the function for the "device" to perform. To be sure, the function associated with the nonce term "device" is "recording." In other words, a recording device is a "device [means] for recording." In the Kansas Litigation, the Patent Owner has proposed that "recording device" be construed as "a device that records information." (Ex.1013, p.4). Petitioner asserts this merely attempts to circumvent the functional claiming in the 452 Patent by rewriting the claim language. Regardless, it is clear from the 452 Patent that whichever construction applies, recording devices at least include structures such as video cameras, audio recorders, radar and LIDAR scanners, and chemical analyzers, as well as a number of video camera products produced by Patent Owner, and their equivalents. (Ex.1001, 3:40-48; 11:13-19, 11:43-63; Ex.1003, 90). Thus, Petitioner demonstrates unpatentability based on both constructions. E. "recording device manager" (All Challenged Claims). The term "recording device manager" is a means plus function limitation under 35 U.S.C. 112(f). Although "means" is not recited, the rebuttable presumption should be overcome as this claim term lacks sufficiently definite - 18 -
structure. It uses the generic placeholder or nonce term "manager," with modifiers that only address which components are to be "managed." The function set forth in claim 10 for "manager" is "managing the synced recording devices by receiving a trigger and simultaneously sending communication signals to the first and second synced recording devices" (i.e., "broadcasting"). (Ex.1001, Claims 1, 36). The '452 Patent explains the functions of the recording device manager throughout the specification. (Ex.1001, Abstract, 5:60-67, 6:16-56, 4:17-55, 14:17-48). The '452 Patent sets forth the corresponding structure that performs the function of "managing" throughout the specification as being a receiver, a transmitter, and a special purpose controller programmed to perform the disclosed algorithm. (Ex.1001, 8:20-40, 9:26-10:54). The '452 Patent also sets forth an algorithm performed by the controller for carrying out the claimed function. (Ex.1001, Abstract, 4:17-55, 7:46-66, 8:31-45, 14:33-48, 13:25-32). As properly construed, the corresponding structure for this claim limitation (as described in the specification and equivalents thereof) is a receiver, a transmitter, and a special purpose controller programmed to perform the disclosed algorithm. (Ex.1003, 90). - 19 -
F. "operable to" (All Challenged Claims). The term "operable to" should be construed as: "capable of. In the reexamination of the child 292 Patent, on August 17, 2015, the USPTO made eight rejections of limitations that used the phrase "operable to," finding that this phrase only refers to an intended use: "If the prior art structure is capable of performing the intended use, then it reads on the claimed limitation." (Ex.1028, pp.243-244, 246-248, 251-256, 260 (with similar finding for the phrases "so as to" and "so that")). Here, in the context of the 452 Patent, if the language following the term operable to is given any patentable weight, it must be in the context of a means-plus-function construction of recording device manager. VIII. DETAILED EXPLANATION OF GROUNDS FOR OBVIOUSNESS. Provided below is a detailed discussion of why the challenged claims of the '452 Patent are rendered obvious. Indeed, the challenged claims recite nothing more than predictable design choices that use known components and techniques according to their well-understood and established functions. The showing below establishes a reasonable likelihood of prevailing as to each ground of invalidity with respect to the challenged claims as to that ground. This showing is supported by the Dr. Henry Houh's Declaration. (Ex.1003). - 20 -
The first set of grounds is based on Pierce in view of Brundula under 35 U.S.C. 103. These grounds are arguably stronger than the second set of grounds at least because Pierce discloses many of the same devices that comprise the system described in the 452 Patent, including a police vehicle-based central control unit (e.g., Ex.1014, Fig.3 item 30; Ex.1001, Fig.1 item 12) that triggers multiple recording devices to record, a junction box (Ex.1014, Fig.3, item 56; Ex.1001, Fig.1 item 44), trigger signals from sensors within the police car (e.g., Ex.1014, Fig.3 signals from items 92 through junction box 56; Ex.1001, Fig.1 signals from police car 16), an in-car DVR (Ex.1014, Fig.3 item 46; Ex.1001, Fig.1 item 46), and car-mounted and officer-carried video recording devices (e.g., Ex.1014, Fig.3 items 62a-c, 0057 (portable camera not shown in Fig.3); Ex.1001, Fig.1 item 14, 18). - 21 -
Ex.1014 (Pierce), Fig.3. - 22 -
Ex.1001 ('452 Patent), Fig.1. Further, Pierce expressly discloses the final Examiner-provided amendment that led to the Notification of Allowance for issued claim 10, as described above in Section VI(D) namely triggering the recordings to simultaneously begin from a trigger signal that can be either the activation of a law enforcement vehicle's siren and/or signal lights. The second set of grounds is based on Vasavada in view of Tabak under 35 U.S.C. 103. These grounds are arguably stronger than Pierce in view of Brundula because Vasavada more explicitly discloses sending a transmission to the multiple - 23 -
recording devices, e.g., cameras, to record. Vasavada also focuses on multiple officer-mounted cameras, as opposed to the Pierce system, which employs, e.g., vehicle mounted video cameras, a portable video camera, and wireless microphone. Finally, while Vasavada clearly discloses several different trigger signals that are used to start multiple recording devices to simultaneously begin recording, Vasavada does not expressly mention the well-known activation by a law enforcement vehicle's siren and/or signal lights, as Pierce does. Petitioner would be prejudiced by the Board s decision to institute trial based only on one of the two grounds presented. Further, the Board s construction of terms, such as "operable to," could also affect the strength of the grounds and will not be known until the Final Written Decision. If the Board institutes trial for only one set of grounds, Petitioner may be precluded from asserting its best challenge against claims that are clearly unpatentable. Accordingly, the Board should use its discretion to institute trial for each challenged claim based on both sets of presented grounds. - 24 -
A. Ground 1: Obviousness of Claims 10-17 and 20 under 35 U.S.C. 103(a) in View of Pierce and Brundula. 1. Pierce (Ex.1014). Pierce published on April 21, 2005, before the earliest possible priority date claimed by the '452 Patent. Pierce thus qualifies as prior art under 102(a)(1). Pierce was not cited during prosecution of the '452 Patent. Pierce was assigned to ICOP Digital, of Overland Park, Kansas. (Ex.1024). Pierce is directed to a data acquisition system, referred to as the ICOP 20/20 (Ex.1014, Fig.4a), for use with a law enforcement vehicle, and discloses techniques for automatically triggering recordings of a police incident from multiple vantage points by employing a number of wired or wireless cameras and microphones, as well as a speed gun. (Ex.1014, 0035, 0084). Pierce explains that while prior art in-car video systems are "generally useful," it "is often difficult for officers to operate the electronic apparatus during high-speed pursuits, domestic disturbances, and other high-stress and high-activity situations." (Ex.1014, 0004). Pierce also states these in-car video systems "are often underutilized and valuable data, including video data and speed data, is often not recorded." (Ex.1014, 0004). Pierce further explains that there "is an increasing demand for apparatus (sic) that monitor and record the activity of police officers - 25 -
and/or suspects during arrests, altercations, vehicle searches, and traffic stops." (Ex.1014, 0006). To address these problems, which are quite similar to those set forth in the '452 Patent, Pierce discloses a system that employs automatic activation of, for example, a number of wired or wireless cameras, microphones, and speed measuring apparatus, as a result of a triggering event, such as when the patrol car s light bar and/or siren is activated. (Ex.1014, 0084, Fig.3). - 26 -
The activation of the recording devices of the system to acquire video and audio data as well as vehicle data from the patrol vehicle is managed by a dashmounted central unit. The wired or wireless cameras and microphones include both the vehicle mounted and officer-carried/mounted types. (Ex.1014, 0052, 0057, 0061-0062). As a result of the triggering event, the data acquisition system of Pierce automatically obtains data of the incident from different vantage points, and coordinates and indexes the data for later retrieval. (Ex.1014, 0084). 2. Brundula (Ex.1015). Brundula was filed on December 30, 2010, before the earliest possible priority date claimed by the '452 Patent, and issued on November 26, 2013. Brundula thus qualifies as prior art under 102(a)(2). Brundula was not cited during prosecution of the '452 Patent. Brundula describes, among other things, systems and methods for presenting incident information provided by video devices. (Ex.1015, Abstract, 1:6-8). Brundula describes how the information from multiple video devices may be selected for presentation and temporally aligned, for instance, in accordance with a time of occurrence, so that the events that occurred may be presented in a temporally related manner. (Ex.1015, Abstract, 3:48-61, 3:64-67, 13:33-34, 4:6-8, 4:11-18, 4:48-49). In order to establish temporal alignment, Brundula transmits the identification number of a device and the local time of the device to other devices, - 27 -
including the video devices. (Ex.1015, 7:21-38). The difference between the local clock and the clocks of the other devices as well as the other devices' identification number is further stored with the recording. (Ex.1015, 8:32-43). In a specific example, Brundula describes that the present time and identification number from an electronic weapon is wirelessly sent to a video device for use to align the weapon log with the video device recordings. (Ex.1015, 7:35-38, 7:21-32, 8:32-43, 18:22-33, Fig.4). The video device is said to capture video and/or audio information about an incident, which may be captured, for instance, from the perspective of the authority or victim (e.g., head-worn camera) or from the perspective of a location (e.g., mounted security camera). (Ex.1015, 8:57-67, 3:13-25, 8:1-3). The video device receives information (e.g., a time stamp from another device for aligning) and provides access to the recordings, for instance via a wired or wireless connection. (Ex.1015, 6:4-13, 8:44-56, 5:16-27, 8:32-43). The video device creates records, which are stored in the memory, and may include frames, time-stamps, and operations for a specific time. (Ex.1015, 5:61-6:3, 8:5-25, 3:39-47). Brundula further describes a server which may prepare an aligned presentation based on a recording. The server and the video devices communicate to provide access to information, request information, and receive information. (Ex.1015, 5:28-33). The server can receive and store recordings from one or more - 28 -
video devices, i.e., a device recording, and the device recording from each video device may include the recording as well as metadata, such as time stamps and device identification. (Ex.1015, 9:30-41). 3. Reasons to Combine the Teachings of Pierce and Brundula. Pierce stresses the need for the acquisition and storage of multiple forms of data (e.g., video, audio, traffic speed, vehicle data) about a police-related event in order, e.g., to combat "incidents of police brutality and false allegations of police brutality." (Ex.1014, 0004-0006). The recordings of Brundula are said to capture for a police-related event "the circumstances (e.g., incident) in which force is applied to a target" and that the recording "may be captured from the perspective of the authority or victim (e.g., head-worn camera), the perspective of the weapon (e.g., weapon mounted video device), or from the perspective of a location (e.g., mounted security camera)" and "may include the behavior of the subject, actions of the authority or victim, behavior of by-standers, and a result of application of a force by an electronic weapon." (Ex.1015, 3:13-25). An improvement taught by Brundula is that the presentation of multiple device recordings capturing such events can be aligned in accordance with the occurrence of an event by distributing, for example, a time reference from one device to other independent devices (e.g., a portable video camera and a mounted camera). (Ex.1015, Abstract, 1:6-8, 3:1-25, 3:48-61, 4:6-18, 4:34-61, 8:57-67, 8:1-3, 13:33-34, 15:24-29). By - 29 -
providing a time reference to align the presentations of the recordings, the temporal occurrence of events can be more accurately analyzed when a presentation is reviewed for: compliance with law by an authority; effectiveness of defensive and/or offensive measures; behavior of an authority; behavior of a victim; behavior of a target; operation of a weapon; and/or an amount of force delivered to a target. (Ex.1015, 3:13-25). It would have been obvious to a POSITA to modify the programming of the controller and cameras of Pierce to include the additional functionality disclosed in Brundula. (Ex.1003, 134-137). Both Pierce and Brundula are directed to systems for capturing law enforcement (first responder) related events from multiple recording devices (video devices as well as other devices that gather information from an event). (Ex.1014, 0004, 0006, 0035, 0052, 0057, 0061-62, 0084; Ex.1015, Abstract, 1:6-8, 3:13-25, 3:48-61, 4:20-33, 8:1-3, 8:57-67). Modifying Pierce's controller and cameras to include the additional functionality of Brundula would have been obvious to a POSITA and would yield predictable results. (Ex.1003, 134-137). Indeed, combining the teachings of Pierce and Brundula in this manner is nothing more than combining prior art elements according to known methods to yield predictable results and/or the [u]se of known technique[s] to improve similar devices (methods, or products) in the same way. KSR Int l Co. v. Teleflex Inc., 550 U.S. 398, 417-22 (2007); MPEP 2143(A,C). - 30 -
This is particularly the case where [a] person of ordinary skill is also a person of ordinary creativity, not an automaton. KSR, 550 U.S. at 421. 4. Claim-by-Claim Analysis. a. Independent Claim 10 Is Rendered Obvious in View of Pierce and Brundula. i. Limitation 10[A] "A system for recording multiple viewpoints of an event, comprising" (Ex.1001, Claim 10). Pierce is directed to a data acquisition and display system, also referred to as an audio/video recording apparatus, for use in a conventional police car. (Ex.1014, 0035). Pierce discloses in Fig.3 (below) a system that includes a central unit 30 that controls, coordinates or "manages" the acquisition and storage of policerelated data from multiple recording devices, including a portable wireless microphone 68b, patrol car mounted cameras 62a, 62b, 62c, a patrol car mounted speed gun 77, a patrol car mounted microphone 68a, and a portable camera (not shown). (Ex.1014; Fig.3, 0039, 0052, 0057, 0062, 0069, Claim 23). - 31 -
In sum, Pierce discloses a system that manages the acquisition and storage of police-related data between a plurality of discrete recording devices distributed in different locations in the vicinity of a police car, thereby teaching the recited "system for recording multiple viewpoints of an event." (See also Ex.1003, 140). ii. Limitation 10[B] "a first recording device configured to be mounted on or configured to be carried by a law enforcement officer so as to record a first set of record data for the event" (Ex.1001, Claim 10). The term "recording device" is construed above in Section VII(D) under 35 U.S.C. 112(f). Regarding both the function and corresponding structure of - 32 -
"recording device," Pierce discloses, for example, a "portable handheld video camera" for recording a first set of record data of the event. (Ex.1014, 0057). Pierce teaches a data acquisition system that includes the function of "recording" video by, for example, a number of video cameras, including cameras 62. (Ex.1014, 0052). The cameras can be wired or wireless. (Id). The cameras of the Pierce system also include a remote handheld video camera that is configured to record video. (Ex.1014, 0057 ("the data acquisition and display system 10 can include a remote handheld video camera (not shown) which can be carried by an operator to record video data when he leaves the vehicle V to chase a suspect or to investigate a building or another vehicle.")). As disclosed in Pierce, the remote handheld video camera is configured to be carried by a law enforcement officer (i.e., a portable camera). (Id). Therefore, Pierce discloses a remote handheld video camera that matches both the function and corresponding structure of the recited "first recording device." (Ex.1003, 143-146). If not identical to the video cameras disclosed in the '452 Patent, the handheld video camera of Pierce is nevertheless an equivalent for performing the function of "recording" a first set of record data for the event. (Ex.1003, 147). - 33 -
If it is found that the first recording device is not a means-plus-function limitation, Pierce's handheld video camera nevertheless satisfies the claim limitation of the first recording device. (Ex.1014, 0057; Ex.1003, 148). Indeed, the handheld video camera records a first set of record data for the event. (Id.). iii. Limitation 10[C] "a second recording device, distinct from the first recording device, located so as to record a second set of record data for the event, said first set of record data being distinct from the second set of record data" (Ex.1001, Claim 10). Again, the term "recording device" is construed above in Section VII(D) under 35 U.S.C. 112(f). In addition to the handheld portable camera (i.e., the first recording device as set forth in Section VIII(A)(4)(a)(ii)), Pierce discloses, for example, wired or wireless cameras 62, an internal microphone 68a, a portable, wireless microphone 68b, and a radar or LIDAR speed gun 77 throughout its disclosure for performing the function of "recording" data. (Ex.1014, 53, 57, 61-62, 69; Ex.1003, 150-151). Regarding both the function and corresponding structure of the second "recording device," Pierce discloses, for example, first and second wired or wireless video cameras 62a and 62b capable of recording video images (Ex.1014, 0053), an audio recording apparatus or microphone 68a capable of recording a passenger s voice (Ex.1014, 0061), a wireless microphone 68b capable of - 34 -
recording, e.g., an officer's voice (Ex.1014, 0066), and a speed measuring apparatus 77 (e.g., a radar-based gun or a laser-based speed gun) operable to record the speed of target vehicles (Ex.1014, 0069; Ex.1003, 150-151, 153). If not identical to the video camera, audio recorder, and radar or LIDAR scanner disclosed in the '452 Patent, the camera 62a, 62b, the microphones 68a, 68b, and the speed measuring apparatus 77 of Pierce, respectively, are nevertheless an equivalent for performing the function of "recording" video, sound, and speed. (Ex.1003, 154). If it is found that the second recording device is not a means-plus-function limitation, Pierce's cameras, microphones, and speed measuring apparatus nevertheless satisfy the claim limitation of the second recording device. (Ex.1014, 0053, 0061, 0069; Ex.1003, 155). In short, all of these machines are capable of recording data. Regarding the remaining requirements of limitation 10[C], Pierce discloses in Figs.1 and 3 that each second recording device, such as the cameras 62 and the microphones 68, are distinct devices and are located separate from one another and separate from the handheld video camera (i.e., the first recording device). (Ex.1014, 0053, 0061, 0062, 0069, Fig.3; Ex.1003, 156). As such, the second - 35 -