Vigilant Solutions, LLC

Patent Trials and Appeals Board

Dec 23, 2020

IPR2020-01584 (P.T.A.B. Dec. 23, 2020)

Trials@uspto.gov Paper 9
Tel: 571-272-7822 Entered: December 23, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

REKOR SYSTEMS, INC.,
REKOR RECOGNITION SYSTEMS, INC.,
and OPENALPR SOFTWARE SOLUTIONS, LLC,
Petitioner,

v.

VIGILANT SOLUTIONS, LLC,
Patent Owner.
____________

IPR2020-01584
Patent 8,781,169 B2
____________

Before NATHAN A. ENGELS, MONICA S. ULLAGADDI, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

AMUNDSON, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314

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I. INTRODUCTION
Rekor Systems, Inc., Rekor Recognition Systems, Inc., and
OpenALPR Software Solutions, LLC (collectively “Petitioner”) filed a
Petition (Paper 1, “Pet.”) requesting an inter partes review of claims 1–8 and
11–19 in U.S. Patent No. 8,781,169 B2 (Exhibit 1001, “the ’169 patent”)
under 35 U.S.C. §§ 311–319. Vigilant Solutions, LLC (“Patent Owner”)
filed a Preliminary Response (Paper 8, “Prelim. Resp.”) and a statutory
disclaimer of claims 1–8 and 11–19 (Exhibit 2001).
Under 37 C.F.R. § 42.4(a), we have authority to determine whether
to institute an inter partes review. We may institute an inter partes review
only if “the information presented in the petition filed under section 311 and
any response filed under section 313 shows that there is a reasonable
likelihood that the petitioner would prevail with respect to at least 1 of the
claims challenged in the petition.” 35 U.S.C. § 314(a) (2018).
For the reasons explained below, we do not institute an inter partes
review.
II. BACKGROUND
A. Real Parties in Interest
Petitioner identifies the following entities as the real parties in
interest: Rekor Systems, Inc., Rekor Recognition Systems, Inc., and
OpenALPR Software Solutions, LLC. Pet. 74. Patent Owner identifies
itself as the real party in interest. Paper 5, 2. The parties do not raise any
issue about real parties in interest.
B. Related Matters
Petitioner and Patent Owner identify the following civil action where
Patent Owner has asserted the ’169 patent against Petitioner: Vigilant
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Solutions, LLC v. Rekor Systems, Inc., Rekor Recognition Systems, Inc., and
OpenALPR Software Solutions, LLC, No. 1:20-cv-00465-SAG (D. Md. filed
Feb. 21, 2020). Pet. 74; Paper 5, 2–3.
C. The ’169 Patent (Ex. 1001)
The ’169 patent, titled “Vehicle Tracking and Locating System,”
issued on July 15, 2014, based on an application filed on September 12,
2011. Ex. 1001, codes (21), (22), (45), (54). The patent states that the
“disclosure relates to systems for identifying motor vehicles, and in
particular, relates to systems for providing information about stolen vehicles
and vehicles subject to repossession.” Id. at 1:16–19.
D. The Challenged Claims
Petitioner challenges independent claim 1, claims 2–8 and 11–17 that
depend from claim 1, independent claim 18, and independent claim 19.
Pet. 8, 15–74. Claim 1 exemplifies the challenged claims and reads as
follows:
1. A vehicle tracking and locating system for providing
information to a user about a vehicle of interest, the system
comprising:
a database controller coupled to a client data processor,
the database controller in operative communication with a
database, and configured to receive data corresponding to
vehicles from a plurality of client sources, and save the data as
information records corresponding to each client source;
one or more external communication devices, including
at least one wireless communication device, configured to
transmit a data request by the user, the data request
corresponding to the vehicle of interest;
a request server configured to receive the data request,
the data request received in one of a plurality of communication
formats;
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an input request processor operatively coupled to the
request server and configured to obtain information records
from the database corresponding to the data request; and
an output processor operatively coupled to the request
server and configured to provide data of interest from the
obtained information records for transmission to the respective
communication device.
Ex. 1001, 14:18–41.
E. The Asserted Prior Art
For its challenges, Petitioner relies on the following prior art:
Name Reference Exhibit
Kim US 2004/0218785 A1, published Nov. 4, 2004 1005
Bucholz US 7,579,965 B2, issued Aug. 25, 2009 1006
Sherman US 2009/0150267 A1, published June 11, 2009 1007
Pet. 8, 15–74.
F. The Asserted Challenges to Patentability
Petitioner asserts the following challenges to patentability:
Claims Challenged 35 U.S.C. § Reference(s)
1–8, 11, 13, 18–19 103(a)1 Kim
12, 14–17 103(a) Kim, Bucholz
1–5, 7, 11–12, 18–19 102(b) Sherman
6, 8 103(a) Sherman
13–17 103(a) Sherman, Bucholz
Pet. 8, 15–74.

1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
125 Stat. 284 (2011), amended 35 U.S.C. §§ 102 and 103 effective
March 16, 2013. Because the ’169 patent’s filing date predates the AIA’s
amendments to §§ 102 and 103, this decision refers to the pre-AIA versions
of §§ 102 and 103.
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III. ANALYSIS
Patent Owner has filed a statutory disclaimer of claims 1–8 and 11–19
in the ’169 patent. Ex. 2001; see Prelim. Resp. 1–3. Petitioner has not
challenged the disclaimer in any manner.
According to our rules, “[t]he patent owner may file a statutory
disclaimer under 35 U.S.C. 253(a) in compliance with [37 C.F.R.] § 1.321(a)
of this chapter, disclaiming one or more claims in the patent. No inter
partes review will be instituted based on disclaimed claims.” 37 C.F.R.
§ 42.107(e) (2020). A disclaimer under 35 U.S.C. § 253(a) is “considered as
part of the original patent” as of the date it is “recorded” in the Office. See
35 U.S.C. § 253(a). For a disclaimer to be “recorded” in the Office, the
document filed must:
(1) Be signed by the patentee, or an attorney or agent of
record;
(2) Identify the patent and complete claim or claims, or term
being disclaimed. A disclaimer which is not a disclaimer
of a complete claim or claims, or term will be refused
recordation;
(3) State the present extent of patentee’s ownership interest
in the patent; and
(4) Be accompanied by the fee set forth in [37 C.F.R.]
§ 1.20(d).
37 C.F.R. § 1.321(a); see also Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d
1379, 1382 (Fed. Cir. 1998) (holding that § 253 disclaimer is immediately
“recorded” on date that Office receives disclaimer meeting requirements of
37 C.F.R. § 1.321(a) and that no further action is required in the Office).
Based on our review of Exhibit 2001 and Office public records, we
conclude that a disclaimer under 35 U.S.C. § 253(a) of claims 1–8 and
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11–19 in the ’169 patent has been recorded in the Office as of November 10,
2020. Ex. 2001. Because Patent Owner has filed a statutory disclaimer
under 35 U.S.C. 253(a) in compliance with 37 C.F.R. § 1.321(a) disclaiming
all claims challenged by Petitioner, we do not institute an inter partes
review. 37 C.F.R. § 42.107(e); see Gen. Elec. Co. v. United Techs. Corp.,
IPR2017-00491, Paper 9 (PTAB July 6, 2017) (precedential).
IV. CONCLUSION
For the reasons discussed above, we do not institute an inter partes
review of claims 1–8 and 11–19 in the ’169 patent.
V. ORDER
Accordingly, it is
ORDERED that the Petition is denied and no trial is instituted.

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PETITIONER:

Vincent J. Galluzzo
Scott L. Bittman
CROWELL & MORING LLP
vgalluzzo@crowell.com
sbittman@crowell.com

PATENT OWNER:

John C. Alemanni
Joshua H. Lee
KILPATRICK TOWNSEND & STOCKTON LLP
jalemanni@kilpatricktownsend.com
jlee@kilpatricktownsend.com