InVue Security Products Inc.

Patent Trials and Appeals Board

May 26, 2020

IPR2019-01209 (P.T.A.B. May. 26, 2020)

Trials@uspto.gov Paper 12
571-272-7822 Date: May 26, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

VANGUARD PRODUCTS GROUP, INC., D/B/A VANGUARD PROTEX
GLOBAL,
Petitioner,

v.

INVUE SECURITY PRODUCTS INC.,
Patent Owner.
____________

IPR2019-01209
Patent 10,062,253 B2
____________

Before MICHAEL R. ZECHER, LYNNE E. PETTIGREW, and
SHEILA F. McSHANE, Administrative Patent Judges.

PETTIGREW, Administrative Patent Judge.

DECISION
Denying Petitioner’s Request on Rehearing of
Decision Denying Institution of Inter Partes Review
37 C.F.R. § 42.71(d)

IPR2019-01209
Patent 10,062,253 B2
2
I. INTRODUCTION
Petitioner, Vanguard Products Group, Inc., d/b/a Vanguard Protex
Global, filed a Request for Rehearing under 37 C.F.R. § 42.71(c) and (d).
Paper 10 (“Req. Reh’g”). In the Request, Petitioner seeks reconsideration of
our Decision (Paper 9, “Dec.”) denying institution of inter partes review of
claims 1, 2, 4, 8, 9, 13, 15–19, 27, 28, 30, and 32 of U.S. Patent No.
10,062,253 B2 (Ex. 1001, “the ’253 patent”). Req. Reh’g 1. For the reasons
explained below, we deny the Request for Rehearing.1
II. DISCUSSION
The party challenging a decision in a request for rehearing bears the
burden of showing the decision should be modified. 37 C.F.R. § 42.71(d)
(2019). A request for rehearing “must specifically identify all matters the
party believes the Board misapprehended or overlooked, and the place where
each matter was previously addressed.” Id. “When rehearing a decision on
petition, a panel will review the decision for an abuse of discretion.” Id.
§ 42.71(c); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140
(2016) (“[T]he agency’s decision to deny a petition is a matter committed to
the Patent Office’s discretion.”). “An abuse of discretion is found if the
decision: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on
an erroneous conclusion of law; (3) rests on clearly erroneous fact finding;
or (4) involves a record that contains no evidence on which the Board could

1 During a conference call with the Board on February 6, 2020, Patent
Owner, InVue Security Products Inc., sought leave to file a response to
Petitioner’s Request for Rehearing. In view of our decision to deny
Petitioner’s Request for Rehearing, Patent Owner’s request to file a response
is denied as moot.
IPR2019-01209
Patent 10,062,253 B2
3
rationally base its decision.” Intelligent Bio-Systems, Inc. v. Illumina
Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016).
In our Decision, we determined that the Petition failed to provide
adequate reasoning supported by evidence in the record for Petitioner’s
proposed modifications to Brenner2 in view of the teachings of Vogt3 and
Chapman4. Dec. 16–18. For at least that reason, we determined that the
information presented did not demonstrate a reasonable likelihood that
Petitioner would prevail in showing that the challenged claims are
unpatentable as obvious over the combined teachings of Brenner, Koo5,
Vogt, and Chapman. Id. at 18.
In its Request for Rehearing, Petitioner contends that (1) the Board
misapprehended evidence in the record, (2) Patent Owner’s
mischaracterization of the record and obfuscation of legal standards misled
the Board, and (3) the record contains disputed issues of fact that should be
resolved on a full record developed during trial. Req. Reh’g 6–15. We
address these arguments in turn.
A. The Decision Properly Considered the Evidence Relied on in
the Petition
According to the Request for Rehearing, the Petition articulates the
following reasoning for modifying Brenner in view of Vogt and Chapman:
“[b]y relocating the optical transceiver from the base unit into the proximal
end of the cable, ‘the optical waveguide—which is prone to signal loss due

2 Int’l Pub. No. WO 2011/045058 A2, published Apr. 21, 2011 (Ex. 1003).
Citations to Brenner herein are to the certified English translation that
appears before the original German language document in Exhibit 1003.
3 U.S. Patent No. 5,912,619, issued June 15, 1999 (Ex. 1005).
4 U.S. Patent No. 6,150,940, issued Nov. 21, 2000 (Ex. 1006).
5 U.S. Patent No. 6,169,295 B1, issued Jan. 2, 2001 (Ex. 1004).
IPR2019-01209
Patent 10,062,253 B2
4
to bending—would be replaced with standard electrical conductors, which
do not suffer signal loss when bent or wound.’” Req. Reh’g 2 (quoting
Pet. 22–23 (quoting Ex. 1007 ¶ 48 (Figh Decl.))). Petitioner argues that our
Decision misapprehended two sources of evidence supporting this
reasoning: (1) Communications Standard Dictionary6 (“Weik,” Ex. 1002),
and (2) the Declaration of Mr. John “Jack” Figh (Ex. 1007). Id. For the
following reasons, the Request for Rehearing fails to persuade us that we
overlooked or misapprehended evidence in our Decision.
As the Petition makes clear, the linchpin of Petitioner’s argument for
modifying Brenner is that a person of ordinary skill in the art would have
recognized reliability issues due to signal loss in the optical waveguide of
Brenner’s device. See Pet. 21 (“Thus, a [person of ordinary skill in the art]
would have recognized that the security device of Brenner is prone to
reliability issues due to signal loss in the optical waveguide.”); id. at 34 (“A
[person of ordinary skill in the art] would recognize that . . . the security
device will likely suffer from reliability issues associated with signal loss
within the optical waveguide.”); id. at 35 (“[T]he optical transceivers of the
sensor unit and the base unit may not be able to reliably communicate with
one another due to optical signal loss within the optical waveguide.”); id.

6 The Petition and our Decision refer to this book by its title
(“Communications Standard Dictionary”), but Petitioner now refers to it by
the last name of its author (“Weik”). Compare Pet. 6, 19, with Req. Reh’g 2.
For convenience and consistency with the Request for Rehearing, we refer to
the book herein as “Weik.” Notably, Petitioner did not submit Weik as a
prior art printed publication to be considered as part of an unpatentability
ground, as set forth in 35 U.S.C. § 311(b) (2018). See Pet. 5. Rather, the
Petition cites Weik as support for its proposed claim construction and as
support for an alleged “well-known fact” that an optical waveguide
subjected to bending or winding is prone to signal loss. Id. at 6, 19.
IPR2019-01209
Patent 10,062,253 B2
5
(“This readily-apparent flaw would have motivated a [person of ordinary
skill in the art] to improve the reliability of the security device of
Brenner . . . .”); see also Dec. 14–15, 17–18 (citing Pet. 21, 35). Because we
determined in our Decision that Petitioner failed to show sufficiently that a
person of ordinary skill in the art would have recognized reliability issues in
Brenner’s device, we concluded Petitioner did not provide adequate
reasoning with rational underpinning for why a person of ordinary skill in
the art would have been motivated to modify Brenner as proposed. Dec. 16–
18.
In the Request, Petitioner argues that we improperly discarded factual
evidence set forth in Weik. Req. Reh’g 2–3, 8–10. In particular, Petitioner
contends that we overlooked explanations and diagrams of “microbending”
and “microbend loss” provided in Weik and cited in the Petition. Id. at 9
(citing Pet. 19–20, 34–35; Ex. 1002, 536 (Fig. L-9), 576). Petitioner asserts
that Figure L-9 of Weik depicts physical damage of an optical waveguide as
a result of microbending and shows that “‘microbend loss’ can cause a total
failure of an optical signal to reach its target destination.” Id. (emphasis
omitted) (citing Ex. 1002, 536, 576; Pet. 20). Petitioner also asserts that
“Weik describes microbending as a serious concern because ‘[m]icrobends
can cause significant or excessive radiative loss.’” Id. (emphasis omitted)
(quoting Ex. 1002, 576).
We are not persuaded that we overlooked evidence from Weik relied
on in the Petition. Our Decision considered Weik’s description of a
“microbend loss” that was quoted in the Petition: “the optical power loss
caused by a microbend, i.e., a small bend, kink, or abrupt discontinuity in the
direction of the optical axis of fibers, in the core-cladding interface surface,
or both, usually caused by cabling, wrapping the fiber around drums and
IPR2019-01209
Patent 10,062,253 B2
6
capstans, and winding the fiber on reels.” Ex. 1002, 576; see Dec. 14, 17
(citing Pet. 34–35 (citing Ex. 1002, 576)). But Petitioner does not identify,
nor do we see, any assertion in the Petition that Weik shows a microbend
loss can cause a “total failure” of an optical signal to reach its destination.
See Req. Reh’g 9; Pet. 19–20, 34–35. Petitioner’s Request for Rehearing
also does not identify where the Petition addressed Weik’s statement that
microbends can cause radiative loss. See Pet. 19–20, 34–35. Because these
arguments were not presented in the first instance in the Petition, we could
not have overlooked them in our Decision.
Petitioner also contends in the Request that we misapprehended
Mr. Figh’s declaration testimony. Req. Reh’g 4, 10. Specifically, Petitioner
argues that Mr. Figh identified a flaw in Brenner’s teachings that a person of
ordinary skill in the art would have perceived: Brenner’s optical waveguide,
when wound under tensile stress, would be prone to signal loss and physical
damage, as seen in Figures L-8 and L-9 of Weik. Id. at 10 (citing Ex. 1007
¶¶ 44–45). Petitioner contends that Mr. Figh’s testimony is tethered to
objective evidence provided in Weik and, therefore, provides sufficient
reasoning with rational underpinning for modifying Brenner in view of the
other references, contrary to our determination in the Decision. Id. at 10–11.
We are not persuaded that we overlooked or misapprehended
Mr. Figh’s testimony. We considered the cited paragraphs of his
Declaration but found Mr. Figh did not explain what effect a microbend loss
would have specifically on the optical waveguide in Brenner’s securing
tether or on its reliability. Dec. 17 (citing Ex. 1007 ¶¶ 44, 45). In other
words, even if a person of ordinary skill in the art would have expected the
winding of Brenner’s optical waveguide to cause a microbend, Mr. Figh
does not explain why any potential microbend loss, defined in Weik as an
IPR2019-01209
Patent 10,062,253 B2
7
“optical power loss,” would result in a “signal loss” in Brenner’s device, or
how any such loss would affect the reliability of communications between
the optical transceivers in Brenner’s sensor unit and base unit. Essentially,
Mr. Figh’s testimony does not provide sufficient detail to show persuasively
how general knowledge of microbend losses in optical fibers would have led
a person of ordinary skill in the art to conclude that Brenner’s security
device has reliability issues.
B. The Request for Rehearing Fails to Identify Legal Error in the
Decision
Petitioner contends that in our Decision we accepted Patent Owner’s
erroneous argument that, because Brenner itself perceives using an optical
waveguide as advantageous, a person of ordinary skill in the art would not
have been motivated to use a different means for communication between
optical transceivers. Req. Reh’g 11–12 (citing Dec. 16–17). We disagree.
The Decision simply pointed out that Brenner identifies reduced
susceptibility to faults as an advantage of using an optical waveguide, thus
undercutting Petitioner’s argument that a person of ordinary skill in the art
would have recognized reliability issues with Brenner’s device. Dec. 16–17
(citing Ex. 1003, 3). The Decision did not conclude, as Petitioner argues in
the Request for Rehearing, that Brenner affirmatively discourages modifying
the securing tether to eliminate the optical waveguide. See Req. Reh’g 11–
12; Dec. 16–17. Nor did the Decision require evidence of a motivation to
modify Brenner to be disclosed expressly in the prior art references
themselves, as Petitioner also argues in the Request. See Req. Reh’g 12;
Dec. 16–17.
Petitioner further contends that our Decision used “an overly
restrictive standard for establishing motivation to combine” by requiring
IPR2019-01209
Patent 10,062,253 B2
8
Petitioner to “prove that ‘microbend loss in Brenner’s device would result in
signal loss sufficient to adversely affect the reliability of communications
between Brenner’s transceivers.’” Req. Reh’g 13 (emphasis omitted)
(quoting Dec. 18). Petitioner asserts that the correct legal principle for
establishing a motivation to modify Brenner using Vogt’s technique is:
“[f]or the technique’s use to be obvious, the skilled artisan need only be able
to recognize, based on her background knowledge, its potential to improve
the device and be able to apply the technique.” Id. at 14 (emphasis omitted)
(quoting Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1003 (Fed. Cir.
2016)). Petitioner contends it met its burden because “the Petition explains
that, based on the documented negative consequences associated with
bending and winding an optical waveguide, a [person of ordinary skill in the
art] would have perceived Brenner as ripe for potential improvement using
the technique taught in Vogt.” Id. (emphasis omitted) (citing Pet. 36–37).
We are not persuaded of legal error in our Decision. The “principle”
cited by Petitioner applies when “a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way.” Unwired Planet, 841 F.3d at
1003 (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)). The
Petition did not include this legal argument as a basis for why a person of
ordinary skill in the art would have had reason to modify Brenner. See
Pet. 34–35. Rather, the Petition’s asserted rationale for modifying Brenner
depended on the contention that a person of ordinary skill in the art would
have recognized reliability issues in Brenner, an argument we determined
lacked sufficient evidentiary support in the Petition. See Dec. 17. We
further note that the contention in the Request for Rehearing regarding the
effect of an increased number of winding cycles on microbend loss in an
IPR2019-01209
Patent 10,062,253 B2
9
optical waveguide does not cite evidence of record and could have not been
overlooked or misapprehended in our Decision because it was not raised in
the first instance in the Petition. See Req. Reh’g 13.
Petitioner also argues in the Request for Rehearing that “[m]otivation
to combine is not negated by existence of allegedly more desirable
alternatives.” Id. at 14 (emphasis omitted). Here, Petitioner refers to an
argument made by Patent Owner in the Preliminary Response that we did
not address in our Decision. See id. (citing Prelim. Resp. 21). Thus,
Petitioner does not show legal error in our Decision on this basis.
C. The Decision Did Not Improperly Resolve Genuine Issues of
Material Fact
Petitioner argues in the Request for Rehearing that the parties’ experts
“are in direct disagreement with respect to the material issue of fact:
whether there is a motivation to modify Brenner.” Req. Reh’g 15 (citing
Ex. 2001 ¶¶ 39–40 (Pearson Decl.)). Petitioner contends that under current
Board rules, “a genuine issue of material fact created by such testimonial
evidence will be viewed in the light most favorable to Petitioner solely for
purposes of deciding whether to institute an inter partes review.” Id.
(quoting 37 C.F.R. § 42.108(c)). Accordingly, Petitioner argues that trial
should be instituted to resolve the issue on a full record. Id.
We are not persuaded that a genuine issue of material fact exists with
respect to motivation to modify Brenner. As the U.S. Court of Appeals for
the Federal Circuit has recognized, “[m]ere existence in the record of
dueling expert testimony does not necessarily raise a genuine issue of
material fact.” Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811
F.3d 1314, 1325 (Fed. Cir. 2016). Notably, our Decision did not cite the
declaration testimony of Patent Owner’s expert, Dr. Pearson, in analyzing
IPR2019-01209
Patent 10,062,253 B2
10
Petitioner’s asserted obviousness grounds. See Dec. 13–19. Rather, we
determined that the Petition and the evidence relied upon therein did not
provide sufficient reasoning with rational underpinning for modifying
Brenner’s device as proposed. Id. at 18. Under the circumstances presented
here, there is no genuine issue of material fact that must be resolved on a full
record developed during trial.
III. CONCLUSION
For the foregoing reasons, Petitioner has not demonstrated that we
misapprehended or overlooked any matter or that we abused our discretion
in not instituting an inter partes review of claims 1, 2, 4, 8, 9, 13, 15–19, 27,
28, 30, and 32 of the ’253 patent.
IV. ORDER
Accordingly, it is
ORDERED that Petitioner’s Request for Rehearing is denied.

IPR2019-01209
Patent 10,062,253 B2
11
FOR PETITIONER:
Andriy Lytvyn
Anton Hopen
Nicholas Pfeifer
SMITH & HOPEN
andriy.lytvyn@smithhopen.com
anton.hopen@smithhopen.com
nicholas.pfeifer@smithhopen.com

FOR PATENT OWNER:
Tim F. Williams
Scott A. Cole
DORITY & MANNING P.A.
timw@dority-manning.com
scole@dority-manning.com

Trent A. Kirk
INVUE SECURITY PRODUCTS INC.
trentkirk@invue.com