U.S. Department of Homeland Securityv.Larry Golden

Patent Trial and Appeal Board

Oct 1, 2015

13199853 (P.T.A.B. Oct. 1, 2015)

Trials@uspto.gov Paper 35
571-272-7822 Entered: October 1, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

UNITED STATES DEPARTMENT OF HOMELAND SECURITY,
Petitioner,

v.

LARRY GOLDEN,
Patent Owner.

Case IPR2014-00714
Patent RE43,990 E

Before LORA M. GREEN, JON B. TORNQUIST, and
KEVIN W. CHERRY, Administrative Patent Judges.

CHERRY, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

IPR2014-00714
Patent RE43,990 E

2

I. INTRODUCTION
The United States Department of Homeland Security (“Petitioner”)
filed a Petition requesting an inter partes review of claims 11, 74, and 81 of
U.S. Patent No. RE43,990 E (Ex. 1001, “the ’990 patent”). Paper 1 (“Pet.”).
Larry Golden (“Patent Owner”) timely filed a Patent Owner Preliminary
Response. Paper 10 (“Prelim. Resp.”). In a Decision to Institute (Paper 16,
“Dec. to Inst.”) issued October 8, 2014, we instituted an inter partes review
of claims 11, 74, and 81 of the ’990 patent.
On January 13, 2015, Patent Owner filed a Patent Owner Response
(Paper 24 (“PO Resp.”)), a Non-Contingent Motion to Amend (Paper 25
(“Non-Cont. Mot. to Amend”)), and a Motion to Amend (Paper 26 (“Mot. to
Amend”)).1 Petitioner filed a Reply to Patent Owner’s Response (Paper 31,
“Pet. Reply”) and an Opposition to the Motion to Amend (Paper 32,
“Opp.”). Patent Owner filed a Reply to Petitioner’s Opposition. Paper 33
(“PO Reply”). No oral hearing was held.
With its Petition, Petitioner provided a declaration from Dr. Sriram
Vishwanath, dated April 29, 2014. Ex. 1005 (“Vishwanath Decl.”).

1 As explained in our February 4, 2015 order, Patent Owner confirmed in a
conference call with the Board that the Motion to Amend is non-contingent.
Paper 29, 2 (“We reminded Mr. Golden that, as set forth in our order of
January 13, 2015 (Paper 23), with a noncontingent motion to amend, he
bears the burden of demonstrating that the claims are patentable, and that he
is abandoning the claims on which trial was instituted. Mr. Golden
confirmed again that the motion to amend was a non-contingent motion to
amend.”). As we further explained in that order, we are treating Paper 25
and Paper 26 collectively as the Motion to Amend. Id.
IPR2014-00714
Patent RE43,990 E

3

We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73, and
addresses issues raised during trial.
In the Motion to Amend, Patent Owner requests cancellation of claims
11, 74, and 81, and substitution of those claims with proposed claims 154–
156. Non-Cont. Mot. to Amend 1.2 For the reasons discussed below, Patent
Owner’s Motion to Amend is granted with respect to the cancellation of
claims 11, 74, and 81, and denied with respect to the proposed substitution
of claims 154–156.
A. Related Proceedings
Patent Owner and Petitioner note that the ’990 patent is asserted in a
proceeding pending before the U.S. Court of Federal Claims, Golden v.
United States, Case No. 13-307 C. Paper 5, 2; Pet. 1. Patent Owner also
identifies a related pending patent application: U.S. Application
No. 14/021,693 (“the ’693 application”). Non-Cont. Mot. to Amend 1.
B. The ’990 Patent (Ex. 1001)
The ’990 patent is a reissue of U.S. Patent No. 7,636,033 (“the ’033
patent”). Ex. 1001, at [64]. The ’033 patent issued from U.S. Application
No. 12/155,573 (“the ’573 application), which was filed on June 6, 2008. Id.
The ’573 application, in turn, was a continuation-in-part of U.S.
Application No. 11/397,118 (“the ’118 application”) that was filed on April
5, 2006. Id. at [63].

2 Paper 24 has no page numbers. We treat the first page after the caption
page as page 1 and number the pages consecutively from there.
IPR2014-00714
Patent RE43,990 E

4

The ’990 patent relates generally to a multi-sensor detection and lock
disabling system for detecting agents, such as, chemical, biological, and
radiological agents in, for example, cargo containers, shipping containers,
and tractor trailers. Id. at col. 3, ll. 16–26, 37–41. Specifically, one
embodiment of the system of the ’990 patent includes detector cases for
holding interchangeable detectors. Ex. 1001, Abstract. The detectors
sample for chemical, biological, and radiological compounds. Id. Each
detector case is disposed in, or upon, a monitored product, such as a
shipping container or tractor trailer. Id. If a specific nuclear, chemical, or
other agent is detected, alarm indicators on the detector case light up, and the
detector case transmits information to a monitoring computer. Id. The
detector case may lock or unlock the monitored product by communicating
with a lock disabler in the container or may perform other actions based on
instructions received directly from the monitoring site. Id.
Figure 16 of the ’990 patent is reproduced below:

IPR2014-00714
Patent RE43,990 E

5

Figure 16 is representation of an embodiment of the multi-sensor detection
system of the ’990 patent.
Figure 16 shows an embodiment of the multi-sensor detection and
lock system that incorporates satellite 136 for signal receipt and transmission
from vehicle 130, in which the detector system is placed, to a monitoring site
with monitoring equipment 138. Ex. 1001, col. 11, ll. 1–22.
C. Proposed Substitute Claims
In the Motion to Amend, Patent Owner proposes to add substitute
claims 154–156. Proposed substituted claims 154–156 are reproduced
below, with bracketed, italicized subject matter indicative of subject matter
deleted from challenged claims 11, 74, and 81 and underlined subject matter
indicative of subject matter added to challenged claims 11, 74, and 81:
154. (Substitute to claim 11) A communication device of at least
one of [a cell phone, a smart phone, a desktop, a handheld, a PDA, a
laptop, or a computer terminal at a monitoring site] the products
grouped together by common features in the product groupings
category of design similarity (e.g., computer terminal, personal
computer (PC)) for monitoring products, interconnected to a product
for communication therebetween, comprising:
at least one of a central processing unit (CPU) for executing and
carrying out the instructions of a computer program, a network
processor which is specifically targeted at the networking application
domain, or a front end processor for communication between a host
computer and other devices;
a transmitter for transmitting signals and messages to at least one
of plurality product groups based on the categories of a multi-sensor
detection device, a maritime cargo container, [a cell phone detection
device,] a locking device, a device for stalling and stopping a vehicle,
or a building monitoring device;
a receiver for receiving signals, data or messages from at least one
of plurality product groups based on the categories of a multi-sensor
IPR2014-00714
Patent RE43,990 E

6

detection device, a maritime cargo container, [a cell phone detection
device,] a locking device, a device for stalling and stopping a vehicle,
or a building monitoring device;
at least one satellite connection, [Bluetooth connection, WiFi
connection,] internet connection, radio frequency (RF) connection,
[cellular connection, broadband connection,] long and short range
radio frequency (RF) connection, or GPS connection;
the communication device is at least a fixed, portable or mobile
communication device interconnected to a fixed, portable or mobile
product, capable of wired or wireless communication therebetween;
and
whereupon the communication device, is interconnected to a
product equipped to receive signals from or send signals to lock or
unlock doors, stall, stop, or slowdown vehicles, activate or deactivate
security systems, or activate or deactivate multi-sensor detection
systems [, or to activate or deactivate cell phone detection systems];
[wherein, the communication device receives a signal via any of
one or more products listed in any of the plurality of product grouping
categories;]
wherein at least one satellite connection, [Bluetooth connection,
WiFi connection,] internet connection, radio frequency (RF)
connection, [cellular connection, broadband connection,] long and
short range radio frequency (RF) connection is capable of signal
communication with the transmitter and the receiver of the
communication device and transceivers of the products.
* * *
155. (substitute to claim 74) A built-in [embedded] multi sensor
detection system for monitoring products with a plurality of sensors
detecting at least one chemical, biological, radiological, nuclear,
explosive, human, contraband agent;
comprising at least one built-in [embedded] sensor for detecting at
least one of the following: motion, perimeter, temperature, tampering,
breach, and theft;
comprising a built-in [embedded] sensor array or fixed detection
device into the product that detects an agent that includes at least one
IPR2014-00714
Patent RE43,990 E

7

of a chemical agent, a biological agent, a nuclear agent, an explosive
agent, a human agent, contraband, or a radiological agent; and
wherein, when an alarm occurs, the built-in [embedded] multi
sensor detection system communicates the alarm by way of at least
one of, product-to-product, product-to-satellite, [product-to-cellular],
product-to-long or short range radio frequency, product-to-radio
frequency (RF), product-to-internet, [product-to-broadband, product-
to-smartphone or cell phone,] product-to-monitoring site [or central
controlling station, product-to-WiFi or WiMax], product-to-
authorized persons, [product-to-handheld,] or product-to-laptop or
desktop.
* * *
156. A multi-sensor detection system for monitoring products and
for detecting at least one explosive, nuclear, contraband, chemical,
biological, human, or radiological agents and compounds, comprising:
a plurality of sensors for detecting at least one chemical,
biological, radiological, explosive, nuclear, human or contraband
agents and compounds and capable of being disposed within a
multisensor detection device
monitoring equipment [located at a determinate site, comprising at
least one of plurality product groups based on the categories of a
computer, laptop, notebook, PC, handheld, reader, cell phone, PDA
or smart phone] of at least one of the products grouped together by
common features in the product groupings category of design
similarity (e.g., computer terminal, personal computer (PC)) for the
receipt and transmission of signals therebetween;
[at least one cell phone tower interconnected to the monitoring
equipment for sending signals thereto and receiving signals
therefrom;]
at least one satellite capable of transmitting signals to the
monitoring equipment [and receiving signals from the monitoring
equipment];
[at least one satellite or at least one cell phone tower capable of
two-way signal communication between the multi sensor detection
device and the monitoring equipment;]
IPR2014-00714
Patent RE43,990 E

8

at least one [modem] transceiver for short [and/or] and long range
radio frequency communication with the monitoring equipment; and
at least one internet connection capable of communication between
the multi sensor detection device and the monitoring equipment;

whereupon a signal sent [from] to the multi sensor detection device
[to] from a satellite; [or to a cell phone tower;] or through short
[and/or] and long range radio frequency; causes a signal to be sent to
the monitoring equipment that includes location data and sensor data;
[wherein the communication device receives a signal via any of
one or more products listed in any of the plurality of product grouping
categories;]
wherein at least one satellite connection, [Bluetooth connection,
WiFi connection,] internet connection, radio frequency (RF)
connection, [cellular connection, broadband connection,] long and
short range radio frequency (RF) connection is capable of signal
communication with the transmitter and the receiver of the
[communication device] monitoring equipment and transceivers of the
products.
Claims Appendix (Ex. 2020), 1–6
II. ANALYSIS
A. Claim Construction
In an inter partes review, we interpret claim terms in unexpired
patents according to their broadest reasonable construction in light of the
specification of the patent in which they appear. 37 C.F.R. § 42.100(b); In
re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1276–79 (Fed. Cir. 2015).
There is a “heavy presumption” that a claim term carries its ordinary and
customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359,
1366 (Fed. Cir. 2002). However, a “claim term will not receive its ordinary
meaning if the patentee acted as his own lexicographer and clearly set forth a
IPR2014-00714
Patent RE43,990 E

9

definition of the disputed claim term in either the specification or
prosecution history.” Id.
In the Decision to Institute, we construed certain claim terms. Those
constructions are reproduced in the chart below.
Claim Term Construction
“built in, embedded” (claim 74) “something is included within,
incorporated into, disposed within,
affixed to, connected to, or mounted
to another device, such that it is an
integral part of the device”
“communication device” (claim 81) “monitoring equipment”
Dec. to Inst. 11–16.
No party challenges these constructions. Both of these terms were
modified or removed in the amendment. To the extent that any of these
constructions remain relevant after the amendment, we see no reason to
modify them.
We further determined that no explicit construction was necessary for
any other claim terms. Dec. to Inst. 10–11. Based on the record adduced
during trial, we see no need to construe any other terms.
B. Patent Owner Response
The Patent Owner Response contains arguments directed both to
claims 11, 74, and 81 and to the proposed substitute claims. To the extent
Patent Owner argues the patentability of claims 11, 74, and 81, those
arguments are moot because Patent Owner has cancelled those claims. To
the extent that Patent Owner wishes us to apply the arguments made
regarding claims 11, 74, and 81 to the patentability of the amended claims or
incorporate arguments regarding claims 154–156 from the Patent Owner
IPR2014-00714
Patent RE43,990 E

10

Response into the Motion to Amend, we decline to do so. Pursuant to
37 C.F.R. § 42.6(a)(3), “[a]rguments must not be incorporated by reference
from one document into another document. Combined motions, oppositions,
replies, or other combined documents are not permitted.” Patent Owner is
precluded from incorporating arguments regarding the patentability of
claims 11, 74, and 81 from the Patent Owner Response into the Motion to
Amend to address how proposed substitute claims 154–156 are patentable.
Such incorporation by reference circumvents our rule limiting the pages in a
motion to amend to twenty-five pages. See 37 C.F.R. § 42.24(a)(v).
Arguments that are not developed and presented in the Motion to Amend,
itself, are not entitled to consideration. See Intellectual Ventures Mgmt.,
LLC v. Xilinx, Inc., Case IPR2012-00023, slip op. at 41 (PTAB Feb. 11,
2014) (Paper 35).
We do address two arguments that Patent Owner raises in the Patent
Owner Response that are applicable to the proceeding generally: (1) Patent
Owner’s contention that Petitioner failed to name all of the real-parties-in-
interest (PO Resp. 6–8); and (2) Patent Owner’s contentions regarding
Petitioner’s expert (id. at 8–11).
i. Real Party In Interest
Petitioner has identified itself, the U.S. Department of Homeland
Security, as the real party in interest. Pet. 1. Patent Owner contends that
Petitioner should also have identified “the United States Department of the
Treasury, seven (7) Government Agencies named as indirect infringers [in
Patent Owner’s U.S. Court of Federal Claims action], and the at least
twenty-seven (27) third-party direct infringing Companies.” PO Resp. 7.
IPR2014-00714
Patent RE43,990 E

11

A petition for inter partes review must identify “all real parties in
interest.” 35 U.S.C. § 312(a)(2). The Office Patent Trial Practice Guide
provides guidance regarding factors to consider in determining whether a
party is a real party in interest. 77 Fed. Reg. 48,756, 48,759–60 (Aug. 14,
2012). Considerations may include whether a non-party “funds and directs
and controls” an IPR petition or proceeding. Id. at 48,760. Additional
relevant factors include: the non-party’s relationship with the petitioner; the
non-party’s relationship to the petition itself, including the nature or degree
of involvement in the filing; and the nature of the entity filing the petition.
Id. Generally, a party does not become a “real party-in-interest” merely
through association with another party in an unrelated endeavor. Id. A party
also is not considered a real party in interest in an inter partes review solely
because it is a joint defendant with a petitioner in a patent infringement suit
or is part of a joint defense group with a petitioner in the suit. Id.
Whether a party who is not a named participant in a given proceeding
is a “real party-in-interest” to that proceeding “is a highly fact-dependent
question.” Id. at 48,759. There is no “bright line test.” Id. Courts invoke
the term “real party-in-interest” to describe relationships and considerations
sufficient to justify applying conventional principles of estoppel and
preclusion. Id.
Here, even assuming this contention is timely, Patent Owner has
failed to provide any evidence, besides the mere fact that the other parties
are co-defendants in a lawsuit or alleged infringers, to support the contention
that Petitioner has failed to name all of the real parties in interest. That one
fact, without any further proof of control or involvement by these parties in
this proceeding, is insufficient to establish that Petitioner has failed to name
IPR2014-00714
Patent RE43,990 E

12

all of the real parties in interest. See Sony Computer Entmt. Am., LLC v.
Game Controller Tech. LLC, Case IPR2013-00634, slip op. 8 (PTAB Apr. 2,
2015) (Paper 31) (denying request to terminate based on failure to name all
real parties in interest when Patent Owner failed to provide sufficient
evidence that other parties were a real party in interest); see also First
Quality Baby Prods., LLC v. Kimberly-Clark Worldwide, Inc., Case
IPR2014-01021, slip op. 3–7 (PTAB July 16, 2015) (Paper 42) (same).
ii. Petitioner’s Expert
Patent Owner asks that we “dismiss [Petitioner’s] Expert Declaration
and disqualify [Petitioner’s Declarant] for making and using a false writing.”
PO Resp. 9. Patent Owner contends that Petitioner’s Declarant falsely
claimed that certain patent applications were patents by listing them under
the heading “Patents” in his Resume. Id. at 8–9. A Patent Owner Response
is not the proper vehicle to seek to exclude testimony. See 37 C.F.R.
§ 42.64(c). Moreover, even if it were the proper vehicle, we are not
persuaded that the alleged “falsehood” that Patent Owner identified—listing
patent applications, which are clearly identified as such, under a heading
titled “Patents”—is, in any way, misleading. Thus, we decline Patent
Owner’s request that we dismiss Dr. Vishwanath’s testimony.3
C. Motion to Amend
As discussed above, in the Motion to Amend, Patent Owner requests
that challenged claims 11, 74, and 81 be canceled and replaced with

3 Patent Owner also argues that Petitioner’s declarant has a conflict of
interest because he has received grants from the federal government. PO
Resp. 10–11. Patent Owner, however, does not ask for any relief on this
basis. Id.
IPR2014-00714
Patent RE43,990 E

13

proposed substitute claims 154–156. Non-Cont. Mot. to Amend 1; see
35 U.S.C. § 316(d)(1); 37 C.F.R. § 42.121(a)(3) (“A motion to amend may
cancel a challenged claim or propose a reasonable number of substitute
claims.”). Patent Owner’s request to cancel challenged claims 11, 74, and
81 is not contingent on the claims being determined to be unpatentable. Id.
Patent Owner’s request to cancel challenged claims 11, 74, and 81 is granted
and we need not address these claims further. Instead, we analyze proposed
substitute claims 154–156 set forth in the Claims Appendix (Ex. 2020) to the
Non-Contingent Motion to Amend.
i. Level of Ordinary Skill in the Art
Neither party puts forward a succinct definition of the level of
ordinary skill in the art. Petitioner’s declarant, however, has put forward a
detailed discussion of various references dated before April 20064 (the date
Patent Owner now alleges is the priority date) related to subject matter of the
’990 patent. See Ex. 1005 ¶¶ 20–74, 94–99. We have reviewed that
discussion and the references cited in those paragraphs. We have found it
accurately reflects the teachings of the references. Moreover, we agree with
Petitioner’s declarant that the references are analogous to the claimed
invention, and, as such, represent the level of skill in the relevant art at the
time of the invention. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir.
1995) (finding that the Board did not err in concluding that the level of
ordinary skill was best determined by the references of record); In re
Oelrich, 579 F.2d 86, 91(CCPA 1978) (“[T]he PTO usually must evaluate . .
. the level of ordinary skill solely on the cold words of the literature.”); see

4 We accept this date as the priority date only for the sake of argument.
IPR2014-00714
Patent RE43,990 E

14

also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he
absence of specific findings on the level of skill in the art does not give rise
to reversible error ‘where the prior art itself reflects an appropriate level and
a need for testimony is not shown.”’).
ii. Proposed Substitute Claims
Unlike examination, entry of the proposed substitute claims in an inter
partes review is not automatic. As the moving party, Patent Owner must
establish that it is entitled to the requested relief. See Microsoft Corp. v.
Proxyconn, Inc., 789 F.3d 1292, 1304 (Fed. Cir. 2015); see also 37 C.F.R.
§ 42.20(c) (movant bears burden of showing entitlement to relief). In its
motion to amend, a patent owner bears the burden to show, inter alia, that a
reasonable number of substitute claims is proposed, there is no broadening
of scope, the proposed claims are supported adequately by the written
description of the application as filed originally, and the proposed claims are
patentable over the prior art. See 37 C.F.R. § 42.121; Idle Free Sys. Inc. v.
Bergstrom, Inc., Case IPR2012-00027, slip op. at 5–6 (PTAB June 11, 2013)
(Paper 26) (“Idle Free”) (informative). We address each of these
requirements in turn.
a. Reasonable Number of Substitute Claims
A patent owner may propose a reasonable number of substitute claims
for each challenged claim. 35 U.S.C. § 316(d)(1)(B). Absent special
circumstances, it is presumed that only one substitute claim is needed to
replace each challenged claim. 37 C.F.R. § 42.121(a)(3). This presumption
may be rebutted by showing that the substitute claims are patentably distinct
from each other. Idle Free, Paper 26, 8–9. To the extent that no patentable
IPR2014-00714
Patent RE43,990 E

15

distinction is shown, we may deny entry of the excess claims, or group them
together for purposes of considering patentability over the prior art. See id.
In the Motion to Amend, Patent Owner proposes adding three new claims,
154, 155, and 156, as substitutes for the three challenged claims, 11, 74, and
81, respectively. Given this one to one correspondence, we determine the
number of proposed substitute claims to be reasonable.
b. No Broadening of Scope
Proposed substitute claims in an inter partes review “may not enlarge
the scope of the claims of the patent.” 35 U.S.C. § 316(d)(3); see 37 C.F.R.
§ 42.121(a)(2)(ii). In the Motion to Amend, Patent Owner proposes claim
154 as a substitute for claim 11, claim 155 as a substitute for claim 74, and
claim 156 as a substitute for claim 81. Non-Cont. Mot. to Amend 1. Patent
Owner has deleted limitations from each of the challenged claims in the
proposed substitute claims. See Ex. 2020, 1–6.
Patent Owner does not represent that the proposed substitute claims
do not enlarge the scope of the challenged claims of the ’990 patent. Mot. to
Amend 2–7. Instead, Patent Owner appears to argue, as discussed below,
that the amended claims are at least as broad as claims 11, 74, and 81 (“the
original claims”). Id. Indeed, it appears that the purpose of Patent Owner’s
amendment is not to narrow the claims to overcome the prior art, but rather
to remove any matter in the claims supported only by the disclosure added in
the ’573 application, so that the claims can receive the April 5, 2006 priority
date of the ’118 application. Id. at 2. Patent Owner also appears to seek to
correct some of the claim defects we noted, but did not act on, in our
Decision to Institute. Id. at 7–9.
IPR2014-00714
Patent RE43,990 E

16

Petitioner argues that Patent Owner has enlarged the scope of
challenged claims. Opp. 2–5. We agree with Petitioner that Patent Owner
impermissibly has attempted to broaden the scope of the challenged claims.
We consider each of the substitute claims in detail below.
1. Proposed Substitute Claim 154
With respect to claim 154, Petitioner points to two changes in the
claim language that it contends broaden the scope. Opp. 3. First, Petitioner
points to the amendment in the claim preamble. Id. Second, Petitioner
points to the deletion of the entire claim passage “wherein the
communication device receives a signal via any of the one or more products
listed in any of the plurality of product grouping categories . . . .” Id. We
agree with Petitioner that both of these amendments impermissibly broaden
the scope of claim 154.
Beginning with the claim preamble amendment, the preamble of claim
11 originally read: “A communication device of at least one of a cell phone
a smart phone a desktop, a handheld, a PDA, a laptop, or a computer
terminal at a monitoring site for monitoring products for communication
therebetween, comprising….” In claim 154, the language in italics has been
eliminated and replaced with “the products grouped together by common
features in the product groupings category of design similarity (e.g.,
computer terminal, personal computer (PC))….” Patent Owner contends
that this new language is consistent with words found in the disclosure of the
’118 application. Mot. to Amend 4. Patent Owner further contends that this
new language is broad enough to include the removed items, such as cell
phones and smart phones, because those items are “species terms” that are
“included in the genus ‘monitoring equipment’ and ‘communication device’
IPR2014-00714
Patent RE43,990 E

17

when the clause ‘products grouped together by common features in the
product groupings category of design similarity’ is included.” Id. Patent
Owner argues that “[t]he specific devices removed, such as the cell phones
and smart phones would be recognized by one of ordinary skill in the art as a
type of communication device or monitoring equipment because cell phones
and smartphones are devices that are capable of communication and are
capable of receiving signals.” Id.
We agree with Petitioner and find, based on the Patent Owner’s own
arguments, that these terms improperly broaden the scope of the claims. As
Patent Owner explains, the added language is broad enough to include the
removed items, and is intended to reflect the entire genus of “monitoring
equipment” and “communications devices” that “are capable of
communication and capable of receiving signals.” Mot. to Amend 4, 5.
Thus, the claim has been broadened to not only include the listed species
that have been removed, but anything falling within the claimed genus.
Accordingly, we find that this amendment impermissibly broadens the
claim.
As for the second change in the claim language, we find that Patent
Owner has failed to show why removal of the entire passage “wherein, the
communication device receives a signal via any of one or more products
listed in any of the plurality of product grouping categories,” would not
impermissibly broaden the scope of claim 154. The deletion of this
limitation necessarily broadens the claim in that limitation’s aspect. See In
re Clement, 131 F.3d 1464, 1468 (Fed. Cir. 1997) (“For example, a reissue
claim that deletes a limitation or element from the patent claims is broader in
that limitation’s aspect.”). Given that Patent Owner has entirely deleted this
IPR2014-00714
Patent RE43,990 E

18

limitation and Patent Owner bears the burden of showing entitlement to the
amendment, it was incumbent on Patent Owner to explain why removing
this entire passage from claim 154 would not broaden the scope of the claim.
See In re Bennett, 766 F.2d 524, 526 (Fed. Cir. 1985) (en banc) (“[A] claim
is broadened if it is broader in any respect than the original claim, even
though it may be narrowed in other respects.”).
2. Proposed Substitute Claim 155
The amendment of claim 155 deletes, among other things, the claim
term “embedded” from wherever it is found in claim 74. Ex. 2020, 3–4.
Petitioner argues that deleting this limitation broadens the claim. Opp. 3.
Patent Owner merely states that “a built-in component could be an
embedded component” (Mot. to Amend 3) and “that the term (embedded)
has been examined, reviewed and accepted by the patent Examiner and was
found to have a genus, species relationship with the term (built-in)” (Mot. to
Amend 7).
We agree with Patent Owner’s understanding that “built-in” reflects a
broader genus of which “embedded” is a particular species. As we
explained in the Decision to Institute, the term “built-in” generally means
“constructed to form an integral part of a larger unit.” Dec. to Inst. 12
(quoting OED ONLINE (OXFORD ENGLISH DICTIONARY (3d ed. 2003))
available at http://www.oed.com/view/Entry/24414 (accessed: Oct. 6, 2014)
(Ex. 3003)). As also discussed in the Decision to Institute, the term
“embedded” is alternatively defined as “to enclose closely in or as if in a
matrix” and “to make something an integral part of.” Dec. to Inst. 12
(quoting MERRIAM-WEBSTER.COM, available at http://www.merriam-
webster.com/ dictionary/embedded (accessed: Aug. 24, 2015) (Ex. 3007));
IPR2014-00714
Patent RE43,990 E

19

see also OED ONLINE (OXFORD ENGLISH DICTIONARY (3d ed. 2003))
available at http://www.oed.com/view/Entry/60835 (accessed: Oct. 6, 2014)
(“to enclose firmly”) (Ex. 3006). Thus, the ordinary meaning would suggest
that something “embedded” necessarily is “built-in,” and that something
“built-in” could be, but is not necessarily, “embedded.” As such, the term
“built-in” alone would imply a broader genus than “built-in embedded.”
Moreover, as discussed above, the removal of a limitation implies that the
claim has been broadened. See In re Clement, 131 F.3d at 1468; In re
Bennett, 761 F.2d at 526. Patent Owner has not shown otherwise. Thus, we
find that Patent Owner has failed to show that claim 155 is not
impermissibly broadened.
3. Proposed Substitute Claim 156
As for proposed claim 156, there are a number of amendments, but
Petitioner directs our attention to four changes to the language of the claim.
First, Petitioner points to the limitation reciting “monitoring equipment.”
Opp. 4. In claim 81, the limitation originally recited “monitoring equipment
located at a determinate site, comprising at least one of plurality product
groups based on the categories of a computer, laptop, notebook, PC,
handheld, reader, cell phone, PDA or smart phone for the receipt and
transmission of signals therebetween.” In claim 156, the italicized portion
was deleted, and replaced by the limitation that the “monitoring equipment”
be “of at least one of the products grouped together by common features in
the product groupings category of design similarity (e.g., computer terminal,
personal computer (PC)).” This amendment is nearly identical to the change
to the preamble of claim 154. For the same reasons discussed above with
respect to the similar amendment to the preamble of claim 154, we find that
IPR2014-00714
Patent RE43,990 E

20

Patent Owner has failed to demonstrate that this claim amendment would not
broaden the scope of the claim 156, as compared to claim 81.
Second, Petitioner argues that the removal of the limitation “at least
one cell phone tower interconnected to the monitoring equipment for
sending signals thereto and receiving signals therefrom” impermissibly
broadened claim 156. Opp. 4. Patent Owner provides no argument why this
would not broaden the scope.
Claim 156, unlike claim 81, has no requirement of a cell phone tower
that is connected to the monitoring equipment and can send and receive
signals to the monitoring equipment. The elimination of an entire physical
structure from the claim has broadened its scope to include systems that do
not include a cell phone tower. Moreover, as discussed above, the removal
of a limitation implies that the claim has been broadened. See In re Clement,
131 F.3d at 1468. Patent Owner has not shown otherwise. Thus, we find
that Patent Owner has failed to show this amendment would not
impermissibly broaden the claim.
Third, claim 156 also has been amended to remove the entire
limitation that “at least one satellite or at least one cell phone tower capable
of two-way signal communication between the multi sensor detection device
and the monitoring equipment.” Thus, in claim 156, there is no requirement,
as was the case in claim 81, that there be a cell phone tower, or any
requirement that the satellite be capable of two-way communication with the
monitoring equipment. This impermissibly broadens the scope. In addition,
as discussed above, the removal of an entire limitation implies that the scope
is broader. See In re Clement, 131 F.3d at 1468; In re Bennett, 766 F.2d at
IPR2014-00714
Patent RE43,990 E

21

526. Patent Owner has not shown otherwise. Thus, we agree with Petitioner
that this amendment is also impermissibly broadening in scope.
Finally, Petitioner points to the deletion of the entire limitation
“wherein the communication device receives a signal via any of one or more
products listed in any of the plurality of product grouping categories.”
Opp. 4. This amendment is identical to an amendment made in claim 154.
For the reasons discussed above with respect the same change in claim 154,
we also determine that Patent Owner has failed to show that this amendment
is also not broadening in scope.
4. Conclusion
In sum, the proposed amendments either replace existing claim
language with new, broader claim language or delete entire limitations from
claims without replacing them. For the reasons discussed above, we
determine that Patent Owner has failed to show that any of the claims were
not impermissibly broadened in scope. Accordingly, we find this sufficient
by itself to deny the motion to amend as to claims 154–156.
c. Written Description Support
Pursuant to 37 C.F.R. § 42.121(b), Patent Owner bears the burden in
the Motion to Amend to set forth “[t]he support in the original disclosure of
the patent for each claim that is added or amended,” and “[t]he support in an
earlier-filed disclosure for each claim for which benefit of the filing date of
the earlier filed disclosure is sought.” The test for written description
support is “whether the disclosure of the application relied upon reasonably
conveys to those skilled in the art that the inventor had possession of the
claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly
& Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The purpose of the
IPR2014-00714
Patent RE43,990 E

22

written description requirement is to convey with reasonable clarity to those
skilled in the art that, as of the filing date sought, applicant was in
possession of the invention as now claimed. Vas-Cath, Inc. v. Mahurkar,
935 F.2d 1555, 1563–64 (Fed. Cir. 1991).
Patent Owner has provided written description support only for the
amendments to the claims, and has not provided written description support
for the amended claims as a whole. Mot. to Amend 2–6. Without any
explanation why a person of ordinary skill in the art would have recognized
that the inventor possessed the claimed subject matter as a whole, we find
that Patent Owner’s citation to written description support only for the added
claim language is inadequate to satisfy the written description requirement
for the claims overall. See Novozymes A/S v. DuPont Nutrition Biosciences
APS, 723 F.3d 1336, 1349 (Fed. Cir. 2013) (claim is considered as an
“integrated whole” when assessing written description). Accordingly, we
find that Patent Owner has failed to show adequate written description
support for the amended claims in their entirety, and that this defect is also
sufficient to serve as a basis to deny the Motion to Amend. See Microsoft
Corp. v. Surfcast, Inc., Cases IPR2013-00292, IPR2013-00293, IPR2013-
00294, IPR2013-00295, slip op. at 46 (PTAB Oct. 14, 2014) (Paper 93);
Nichia Corp. v. Emcore Corp., Case IPR2012-00005, slip. op. at 4 (PTAB
Feb. 11, 2014) (Paper 27).
d. Patentability Over the Prior Art
In a motion to amend, the patent owner bears the burden of proof to
demonstrate patentability of its proposed substitute claims over the prior art,
and, thus, entitlement to the claims. Idle Free at 7. This does not mean that
the patent owner is assumed to be aware of every item of prior art known to
IPR2014-00714
Patent RE43,990 E

23

a person of ordinary skill in the art. See MasterImage 3D, Inc. v. RealD,
Inc., Case IPR2015-00040, slip op. at 2 (PTAB July 15, 2015) (Paper 42)
(“MasterImage 3D”) (representative). The patent owner, however, should
explain in its motion why the proposed substitute claims are patentable over
the prior art of record, as well as prior art known to the patent owner:
A patent owner should identify specifically the feature or
features added to each substitute claim, as compared to the
challenged claim it replaces, and come forward with technical
facts and reasoning about those feature(s), including
construction of new claim terms, sufficient to persuade the
Board that the proposed substitute claim is patentable over the
prior art of record, and over prior art not of record but known to
the patent owner. The burden is not on the petitioner to show
unpatentability, but on the patent owner to show patentable
distinction over the prior art of record and also prior art known
to the patent owner. Some representation should be made
about the specific technical disclosure of the closest prior art
known to the patent owner, and not just a conclusory remark
that no prior art known to the patent owner renders obvious
the proposed substitute claims.
Idle Free at 7. These requirements include addressing the basic knowledge
and skill set possessed by a person of ordinary skill in the art even without
reliance on any particular item of prior art. Id. at 7–8. Prior art of record
includes “any material art in the current proceeding, including art asserted in
grounds on which the Board did not institute review.” MasterImage 3D,
at 2.
The petitioner then has the opportunity, in its opposition, to argue any
deficiency in the patent owner’s motion and “come forward with specific
evidence and reasoning, including citation and submission of any applicable
IPR2014-00714
Patent RE43,990 E

24

prior art,” to rebut the patent owner’s position on patentability.
Idle Free at 8.
This case is unusual because the amendments at issue here did not add
limitations to the claims, but rather, removed limitations from the claims.
As we found above, the result of these amendments is that the substitute
claims are not narrower, but broader than the original claims.
We instituted an inter partes review of claims 11, 74, and 81 of the
’990 patent because Petitioner had demonstrated a reasonable likelihood of
showing that these claims were anticipated by Astrin (Ex. 1002)5 and Breed
(Ex. 1004).6 Paper 16. We declined to institute on the grounds based on
Mostov (Ex. 1003) because Astrin and Breed addressed all of the claims,
and there was no explanation why that ground differed from the instituted
grounds.7
In the Motion to Amend, Patent Owner states that in addition to these
references, the closest “prior art of which the [Patent Owner] is aware” is
U.S. Patent No. 8,564,661 to Lipton.8 Mot. to Amend 11–13. Patent Owner
argues Lipton does not render claims 154–156 unpatentable. Mot. to
Amend 11–13. Patent Owner submits that the proposed substitute claims are
similar to claims that were submitted in the pending ’693 application. Non-
Cont. Mot. to Amend 1–2. Patent Owner further asserts that Astrin, Mostov,

5 Astrin, US 2006/0250235 A1, published November 9, 2006, filed
April 28, 2006.
6 Breed, US 7,961,094 B2, issued June 14, 2011, filed November 29, 2007.
7 Mostov, US 2006/0181413 A1, published Aug. 17, 2006, filed
January 30, 2006.
8 Lipton, US 8,564,661 B2, issued October 22, 2013, priority date
October 24, 2000.
IPR2014-00714
Patent RE43,990 E

25

and Breed were submitted to the Examiner in the ’693 application and were
not found to be relevant. Id. at 2.
We do not consider Patent Owner’s arguments that the examiner of
the ’693 application considered Astrin, Breed, and Mostov and found them
irrelevant to the patentability of the claims in the ’693 application to be
entitled to any weight in this proceeding for several reasons. First, the
actions of an examiner in another, related case pending in the PTO are not
necessarily binding upon us. See Sze v. Block, 458 F.2d 137, 140–41 (CCPA
1972) (inter partes interference not bound by prior ex parte examination);
Switzer v. Sockman, 333 F.2d 935, 940–43 (CCPA 1964) (ex parte
proceeding not binding on subsequent inter partes proceeding); see also
Dayco Prods. Inc. v. Total Containment Inc., 329 F.3d 1358, 1368 (Fed. Cir.
2003) (noting examiners are not bound to follow other examiners’
interpretations). Thus, the mere fact that an examiner made statements in
the ’693 application regarding these references does not require us to follow
them in this proceeding. Second, Patent Owner fails to establish that the
claims at issue in this proceeding are identical to the claims in the ’693
application. Thus, there is no link shown between this proceeding and the
claims in the ’693 application to allow us to assess accurately the relevance
of that examiner’s action. Finally, it is unclear precisely what feature that
examiner found to be lacking from Astrin, Breed, and Mostov. Thus, Patent
Owner has failed to provide adequate support for us to assess whether that
examiner is correct. Accordingly, we do not find that the examiner’s
statements in the ’693 application are sufficient to establish the patentability
of the substitute claims here.
IPR2014-00714
Patent RE43,990 E

26

We next consider Patent Owner’s argument that Astrin, Mostov, and
Breed are not prior art because the amended claims are entitled to the April
5, 2006 priority date. Mot. to Amend 2–7. Even accepting, for the sake of
argument, that the substitute claims are entitled to this earlier priority date, at
the very least, Mostov remains prior art under 35 U.S.C. § 102(e) because
Mostov’s non-provisional filing date is January 30, 2006. Ex. 1003, at [22].
The fact that we did not institute this proceeding on Mostov does not mean it
is no longer relevant to the patentability of the substitute claims. In deciding
not to institute on Mostov, we did not rule on the merits of Petitioner’s case.
Dec. to Inst. 28–29. We merely determined that, given the Astrin and Breed
references, instituting on Mostov was not a necessary use of resources. We
consider Mostov still to be relevant to the patentability of the claims. Thus,
Petitioner’s arguments regarding the priority date, even if accepted, do not
show patentability over Mostov, which we discuss below.
Mostov (Exhibit 1003)
Mostov is titled “Transportation Security System and Associated
Methods.” Ex. 1003, at [54]. Mostov describes a security system for
monitoring shipping containers by the use of Container Security Devices
(CSDs) 140 within the containers. Ex. 1003, Abstract, Figs. 1–3.
Figure 22 of Mostov is reproduced below:
IPR2014-00714
Patent RE43,990 E

27

Figure 22 of Mostov is a block diagram illustrating the structure of
Network Operations Center 170.
Network Operations Center (NOC) 170 (or 2200) consists of servers
and computer terminals. Id. ¶¶ 9, 22, 28, 47, 88, 89. NOC 170 (or 2200)
is interconnected to and serves to monitor containers 130 containing CSDs
(not depicted). Id. ¶¶ 11–13. NOC 170 (or 2200) includes communication
capabilities to communicate with CSDs. Id. ¶¶ 44, 45, 48, 93, 96, 97, 98,
102, 106, 112, 113, 117, Figs. 1, 2, 22, 23, 25. The CSDs report condition
information to Network Operations Center 170 via a bridge, cellular, or
satellite antenna. Id. ¶¶ 44, 46, 48, 112, 113. Based on the condition
information received, NOC 170 (or 2200) may use the same
communications channels to transmit instructions (e.g., an activate or
deactivate instruction) back to CSD 140. Id. ¶¶ 96, 113, Fig. 24.
IPR2014-00714
Patent RE43,990 E

28

CSD 140 contains a number of built-in sensors for detecting various
conditions (e.g., temperature, humidity, tampering, theft, breach, personal
conditions, physical load, explosions, gunshots, etc.).9 Id. ¶¶ 4, 9, 11, 22,
28, 47, 61, 88, 89, 115, Figs. 3, 4, 10. CSD 140 can contain a variety of
communications devices including cellular model 350A and satellite
modem 350B, which CSD 140 uses to communicate with NOC 170 (or
2200). Id. ¶¶ 93, 112, Figs. 1, 3. Figure 3 of Mostov is reproduced below.

Figure 3 of Mostov is a block diagram of CSD 140.

9 To the extent that Patent Owner contends that the sensors are RFID tags
(PO Resp. 46), we do not agree. As paragraphs 47 and 58 of Mostov, which
were cited by Patent Owner, make clear, the RFID reader is in addition to
the sensors and receives data from sources other than the sensors. See
Ex. 1003 ¶¶ 47, 58.
IPR2014-00714
Patent RE43,990 E

29

Proposed substitute claim 154
As discussed above, Patent Owner does not contend that claim 154
has been narrowed in any way over claim 11, or that any individual claim
element of claim 154 is meaningfully narrower than the corresponding claim
element of claim 11. See Mot. to Amend 5–6. Mostov discloses a PC at a
monitoring site (NOC 170 (or 2200)) that can communicate, via cellular or
satellite connections, with containers containing CSDs 140. Ex. 1003 ¶¶ 9,
22, 28, 44, 45, 47, 48, 88, 89, 93, 96, 97, 98, 102, 106, 112, 113, 117,
Figs. 1, 2, 22, 23, 25. CSDs 140 include a number of different sensors and
can be activated or deactivated by NOC 170 (or 2200). See ¶¶ 4, 9, 11, 22,
28, 47, 61, 88, 89, 93, 112, 115, Figs. 1, 3, 4, 10. We have reviewed
Petitioner’s evidence and arguments regarding why Mostov anticipates
claim 11. Pet. 29–35; Ex. 1005 ¶¶ 95–99. We are persuaded that the
evidence and citations establishes that claim 154, which is at least as broad
in every element as claim 11, is anticipated by Mostov. Patent Owner
presents no persuasive evidence or argument addressing why Mostov, which
is prior art of record in this proceeding, does not anticipate claim 154, nor
any persuasive evidence or argument addressing Petitioner’s analysis with
respect to this reference. Patent Owner bears the burden of showing that
claim 154 is patentable, but has failed to show that Mostov does not
anticipate claim 154. Thus, we find that Patent Owner has failed to meet the
burden of showing that claim 154 is patentable over Mostov.
Proposed Substitute Claim 155
As discussed above, Patent Owner does not contend that claim 155
has been narrowed in any way over claim 74, or that any individual claim
element in claim 155 is meaningfully narrower than the corresponding
IPR2014-00714
Patent RE43,990 E

30

element in claim 74. Mot. to Amend 3–4. Indeed, as discussed above, one
of Patent Owner’s amendments to claim 74 was to remove the limitation
“embedded” wherever it was found in the claim. Ex. 2020, 3–4. Thus, as
discussed above, Patent Owner broadened the claim to include not only
those sensors that were “built-in embedded,” but also those that were merely
“built-in.” See supra § II.C.ii.b.2. Patent Owner’s other amendments
remove certain communication techniques from the claim (see Ex. 2020, 4),
but not satellite communications, which Mostov discloses (Ex. 1003 ¶¶ 44,
46, 48, 112, 113).
Mostov discloses a multi-sensor detection system for monitoring
products with a plurality of sensors including sensors built into CSDs 140
for detecting chemical agents and explosives, that CSDs may be fixed to the
container, and that CSDs 140 can communicate alarms to the monitoring
site, NOC 170. Ex. 1003 ¶¶ 4, 9, 11, 22, 28, 46, 47, 61, 87, 88, 89, 97, 112,
115, Fig. 3, 4, 25. We have reviewed Petitioner’s evidence and arguments
regarding why Mostov anticipates claim 74. Pet. 36–38; Ex. 1005 ¶¶ 95–99.
We are persuaded that the evidence and citations also establish that claim
155 is anticipated by Mostov. Patent Owner presents no persuasive
evidence or argument addressing why Mostov, which is prior art of record in
this proceeding, does not anticipate claim 155, nor any persuasive evidence
or argument addressing Petitioner’s analysis with respect to this reference.
Patent Owner bears the burden of showing that claim 155 is patentable, but
has failed to show that Mostov does not anticipate claim 155. Thus, we find
that Patent Owner has failed to show that claim 155 is patentable over, at the
very least, Mostov.
IPR2014-00714
Patent RE43,990 E

31

Proposed Substitute Claim 156
As discussed above, Patent Owner does not contend that claim 156
has been narrowed in any way over claim 81, or that any individual claim
element in claim 156 is meaningfully narrower than claim 81. Mot. to
Amend 3–7. As described above, Mostov discloses a multi-sensor detection
system for detecting explosives and other compounds, including a plurality
of sensors in CSD 140, and monitoring equipment, such as PCs at the NOC.
In addition, both the CSDs and NOC including satellite and other types of
radio transmission, to allow internet communication between the NOC and
CSD. Ex. 1005 ¶¶ 95–99; Ex. 1003 ¶¶ 9, 11, 89, 90, 101–103; Figs. 1, 3, 22.
We have reviewed Petitioner’s evidence and arguments regarding why
Mostov anticipates claim 81. Pet. 37–42; Ex. 1005 ¶¶ 95–99. We are
persuaded that the evidence and citations establish that claim 156 is
anticipated by Mostov. Patent Owner presents no persuasive evidence or
argument addressing why Mostov, which is prior art of record in this
proceeding, does not anticipate claim 156, nor any persuasive evidence or
argument addressing Petitioner’s analysis with respect to this reference.
Patent Owner bears the burden of showing that claim 156 is patentable, but
has failed to show that Mostov does not anticipate claim 156. Thus, we find
that Patent Owner has failed to show that claim 156 is patentable over, at the
very least, Mostov.
e. Conclusion
In sum, Patent Owner has failed to show that the motion to amend to
substitute claims 154–156 should be granted. Specifically, Patent Owner
has failed to show that claims 154–156: (1) are not broader in scope than
IPR2014-00714
Patent RE43,990 E

32

claims 11, 74, and 81; (2) have written description support in the originally
filed application; and (3) are patentable over the prior art of record.

III. CONCLUSION
Patent Owner has not demonstrated by a preponderance of the
evidence that proposed substitute claims 154–156 are patentable over the
prior art of record. Moreover, Patent Owner fails to demonstrate that the
Motion to Amend complies with our requirements that the claims not be
broadening in scope, and that the amended claims have written description
support. Therefore, we grant Patent Owner’s Motion to Amend solely as to
the non-contingent request to cancel challenged claims 11, 74, and 81 of the
’990 patent, and deny the Motion to Amend as to the proposed substitution
of claims 154–156.
IV. ORDER
Accordingly, it is
ORDERED that Patent Owner’s Motion to Amend is granted as to the
request to cancel claims 11, 74, and 81 of the ’990 patent; and
FURTHER ORDERED that Patent Owner’s Motion to Amend is
denied as to the request to add proposed substitute claims 154–156.
Because this is a Final Written Decision, the parties to the proceeding
seeking judicial review of the decision must comply with the notice and
service requirements of 37 C.F.R. § 90.2.

IPR2014-00714
Patent RE43,990 E

33

For PETITIONER:

Lavanya Ratnam
lavanya.ratnam@hq.dhs.gov

Nathan Grebasch
nathan.grebasch@hq.dhs.gov

William Washington
william.washington@tsa.dhs.gov

For PATENT OWNER:

Larry Golden
atpg-tech@charter.net