Digital Ally, Inc.v.Utility Associates, Inc.

Patent Trial and Appeal Board

Nov 16, 2015

09855653 (P.T.A.B. Nov. 16, 2015)

Trials@uspto.gov Paper 29
571–272–7822 Entered: November 16, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

DIGITAL ALLY, INC.,
Petitioner,

v.

UTILITY ASSOCIATES, INC.,
Patent Owner.
_______________

Case IPR2014-00725
Patent 6,831,556 B1
_______________

Before KALYAN K. DESHPANDE, JAMES B. ARPIN, and
ROBERT J. WEINSCHENK, Administrative Patent Judges.

WEINSCHENK, Administrative Patent Judge.

DECISION
Denying Request for Rehearing
37 C.F.R. § 42.71

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I. INTRODUCTION
Utility Associates, Inc. (“Patent Owner”) filed a Request for
Rehearing (Paper 28, “Req. Reh’g”) of the Final Written Decision (Paper 27,
“Decision” or “Dec.”) determining that Digital Ally, Inc. (“Petitioner”) had
shown by a preponderance of the evidence that claims 1–7, 9, 10, and 12–25
of U.S. Patent No. 6,831,556 B1 (Ex. 1001, “the ’556 patent”) are
unpatentable. In the Request for Rehearing, Patent Owner argues that we
misapprehended or overlooked several matters. For the reasons set forth
below, the Request for Rehearing is denied.
II. ANALYSIS
When considering a request for rehearing, the Board reviews its
decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party
requesting rehearing bears the burden of showing that the decision should be
modified, and “[t]he request must specifically identify all matters the party
believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).
A. Construction of the “Transmitting” Limitation
In the Decision, we determined that claims 1, 14, 15, 18, and 19 of the
’556 patent do not require transmitting the data stream from storage in the
vehicle to a second location. Dec. 20–21. We explained that the challenged
claims recite transmitting the data stream from the vehicle to a second
location, but do not require specifically that the data stream be transmitted
from storage in the vehicle to a second location. Id. We also explained that
the Specification and prosecution history of the ’556 patent support that
plain reading of the claim language. Id. at 21.
Patent Owner argues that we misapprehended the claim language,
which dictates that, “[w]ithout the first step of storing, there would be no
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‘data stream’ to transfer from the vehicle.” Req. Reh’g 5–6. We considered
Patent Owner’s argument, but did not find it persuasive. See Dec. 20–21.
Claim 1 of the ’556 patent recites “a server for digitally integrating the
captured information into one data stream.” Ex. 1001, col. 8, ll. 47–49. This
claim language indicates that the term “data stream” refers to a digital
integration of the captured information (id.), and, at the oral hearing, Patent
Owner agreed (Paper 26 (“Tr.”), 41:16–20). Thus, according to the claim
language, the data stream exists as soon as the captured information is
integrated; storage is not required. The Specification of the ’556 patent
states that “all of the various types of information are aggregated into a
single data stream which is then stored in the storage unit 270.” Id. at col.
4, ll. 36–38 (emphasis added). As such, the Specification, like the claim
language discussed above, indicates that the data stream exists before it is
stored in the storage unit. Further, some of the challenged claims recite
transmitting the data stream to a second location, even though they do not
recite storing the data stream in the vehicle. See, e.g., id. at col. 9, ll. 60–63,
col 10, ll. 3–6. Those claims also demonstrate that the data stream exists and
can be transmitted to a second location without being stored.
Patent Owner argues that we overlooked evidence showing that the
claimed “data stream” is defined in the Specification as stored information,
and, thus, must be transmitted from storage to a second location. Req. Reh’g
2–3. Patent Owner contends that this argument was presented previously at
the oral hearing. Id. at 2 (citing Tr. 35:8–13). However, no new arguments
may be presented at the oral hearing, and Patent Owner does not identify
where this argument was presented prior to the oral hearing. See Office
Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012).
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Accordingly, we could not have misapprehended or overlooked this
argument because Patent Owner had not presented this argument properly.
Moreover, Patent Owner’s argument is not persuasive. Patent Owner
identifies a portion of the Specification as allegedly defining the “data
stream” to mean stored information. Req. Reh’g 2 (citing Ex. 1001, col. 6,
ll. 4–9). The portion of the Specification cited by Patent Owner states:
When the vehicle 100 returns to the home base 210, it is
connected via a high-speed, high-capacity Ethernet controller
285 (such as a 3COM 1 GB controller) to the home base server
211 via port 290 and the digitally stored video/audio/related
information (i.e., data stream) is data dumped to a home base
master storage repository 212.
Ex. 1001, col. 6, ll. 4–9 (emphasis added). This portion of the Specification
describes a particular example in which the video/audio/related information
is transmitted from storage in the vehicle to a master storage repository after
the vehicle returns to the home base. Id. However, this example from the
Specification should not be read into the claims. Dec. 7 (citing In re Van
Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)). The challenged claims of the
’556 patent broadly recite transmitting the data stream from the vehicle to a
second location. See, e.g., Ex. 1001, col. 8, ll. 50–52, col. 9, ll. 62–63.
Thus, as explained in the Decision, the challenged claims should be
construed to include the other embodiments in the Specification, such as
those in which the data stream is transmitted live to a second location rather
than from storage. Dec. 21; Ex. 1001, col. 3, ll. 17–20, col. 5 ll. 45–50.
Patent Owner’s argument also is not persuasive because some of the
challenged claims in the ’556 patent specify that the second location to
which the data stream is transmitted is a “remote location.” Ex. 1001, col. 9,
ll. 62–63, col. 10, ll. 5–6. However, the portion of the Specification cited by
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Patent Owner as allegedly defining the term “data stream” only describes
transmitting the data stream to a storage repository at the home base after the
vehicle returns to the home base. Id. at col. 6, ll. 4–9. The home base is not
a remote location when the vehicle also is located at the home base.
Because claim terms should be construed consistently throughout a patent
(see Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir.
2001)), the challenged claims that recite transmitting the data stream to a
remote location demonstrate that the term “data stream” should not be
limited to the example in the Specification identified by Patent Owner.
As mentioned above and explained in the Decision, the ’556 patent
describes a “live transmission” of information from the vehicle to a second
location, which indicates that the challenged claims are not limited to
transmitting the data stream from storage to a second location. Dec. 21; Ex.
1001, col. 3, ll. 17–20, col. 5 ll. 45–50. Patent Owner argues that we
overlooked evidence indicating that the live transmission described in the
’556 patent only relates to “some information,” not the claimed “data
stream.” Req. Reh’g 3. Patent Owner contends that this argument was
presented previously at the oral hearing. Id. (citing Tr. 36:6–37:22, 40:15–
41:15). However, no new arguments may be presented at the oral hearing,
and Patent Owner does not identify where this argument was presented prior
to the oral hearing. See Office Patent Trial Practice Guide, 77 Fed. Reg. at
48,768. Accordingly, we could not have misapprehended or overlooked this
argument because Patent Owner had not presented this argument properly.
Moreover, Patent Owner’s argument is not persuasive. The
Specification of the ’556 patent states:
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In addition, live views of video/audio/data information may be
transmitted from the vehicle 100 to a home base 210 through
high speed local links, e.g., cellular devices, as discussed in
further detail later.
Ex. 1001, col. 3, ll. 17–20 (emphasis added). The ’556 patent often uses a
forward slash (“/”) to indicate that certain functionality or information is
integrated. See, e.g., id. at col. 3, l. 38 (“multiplexer/CODEC 250”), col. 4,
l. 14 (“receiving/transmitting device 283”), col. 5, l. 59 (“remote/local
camera control 264”), col. 6, ll. 7–8 (“digitally stored video/audio/related
information (i.e., data stream)”), col. 9, ll. 2–4 (“said video/audio/data
multiplexer integrates the video, audio, and data information into the data
stream”). Thus, the term “video/audio/data information” refers to integrated
video, audio, and data information. As discussed above, the term “data
stream” also refers to integrated video, audio, and data information.
Therefore, the portion of the ’556 patent quoted above explains that live
views of the video/audio/data information (or data stream) are transmitted
from the vehicle to a home base. Id. at col. 3, ll. 17–20.
In the Decision, we explained that Figure 2 of the ’556 patent shows
that CPU 260 is connected directly to transmission unit 280, and, thus, can
send the data stream to transmission unit 280 for transmission to second
location 210 without having to access storage unit 270. Dec. 21. Patent
Owner argues that we misapprehended Figure 2 because the ’556 patent
states that the “combined video/audio/data information stream is first sent to
the RAM memory buffer 276.” Req. Reh’g 4 (quoting Ex. 1001, col. 5, ll.
3–6). However, Patent Owner does not identify where this specific
argument was presented previously. Req. Reh’g 4. Accordingly, we could
not have misapprehended or overlooked this argument. Moreover, Patent
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Owner’s argument is not persuasive. The portion of the ’556 patent cited by
Patent Owner specifies that the video/audio/data information (or data
stream) is sent to the RAM memory buffer first before it is sent to the
permanent storage memory. Ex. 1001, col. 5, ll. 3–6, col. 5, ll. 15–18.
However, the cited portion of the ’556 patent does not indicate that the data
stream must be sent to the RAM memory buffer (or any other memory)
before being transmitted to a second location via the transmission unit. Id.
In the Decision, we explained that, during prosecution, the patentee
amended the claims to require transmission of “stored information” to a
second location and attempted to distinguish the cited prior art on that basis,
but subsequently removed the term “stored information” from the claims.
Dec. 21; Ex. 1002, 60, 65, 87. Patent Owner argues that we overlooked
evidence showing that the Patentee replaced the term “stored information”
with the term “data stream,” which indicates that those two terms are
“interchangeable.” Req. Reh’g 5. Patent Owner contends that this argument
was presented previously at the oral hearing. Id. (citing Tr. 63:5–10).
However, it is not apparent from Patent Owner’s citation to the transcript
that this particular argument was presented at the oral hearing. See Tr. 63:5–
10. Also, no new arguments may be presented at the oral hearing, and
Patent Owner does not identify where this argument was presented prior to
the oral hearing. See Office Patent Trial Practice Guide, 77 Fed. Reg. at
48,768. Accordingly, we could not have misapprehended or overlooked this
argument because Patent Owner had not presented this argument properly.
Moreover, Patent Owner’s argument is not persuasive. The Patentee’s
decision to replace one term (“stored information”) with a different term
(“data stream”) indicates that those terms were not intended to mean the
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same thing. During prosecution, the Patentee also replaced the term
“captured information” with the term “data stream.” Ex. 1002, 85. This
demonstrates that the Patentee did not intend the term “data stream” to be
limited solely to stored information.
B. Disclosure of the “Transmitting” Limitation by Monroe ’320
In the Decision, we determined that Monroe ’320 discloses storing the
data stream in the vehicle and transmitting the data stream to a remote
location. Dec. 21–23. As explained in the Decision, Monroe ’320 discloses
that a combined, comprehensive output signal (or data stream) is sent to the
vehicle recorder (via line 233 in Figure 15) and transmitted to the base
station (via lines 235 and 246 in Figure 15). Id. at 22. Patent Owner argues
that we misapprehended the disclosure of Monroe ’320 because the signal on
lines 233, 235, and 246 in Figure 15 can be selected independently using a
controller, and, thus, may differ from one another. Req. Reh’g 7–8. We
considered Patent Owner’s argument, but did not find it persuasive. See
Dec. 20–23. The portions of Monroe ’320 cited by Patent Owner disclose
that the controller can select “any single sensor signal, or any combination”
thereof. Ex. 1004, col. 23, ll. 17–33; Dec. 20. Any combination of sensor
signals includes all of the sensor signals. Dec. 20. Because Monroe ’320
discloses that the controller can select all of the sensor signals for each of
lines 233, 235, and 246 in Figure 15, Monroe ’320 discloses that the same
data stream can be stored in the vehicle recorder and transmitted to the base
station.
Patent Owner also argues that “a person of ordinary skill in the art
would have known that the bandwidth limitations of an aircraft radio at the
time of the ’556 patent would not have allowed ‘all data’ being stored on
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record 70 to be wirelessly transferred.” Req. Reh’g 9–10. Patent Owner
contends that this argument was presented previously at the oral hearing. Id.
(citing Tr. 49:17–51:22). However, no new arguments or evidence may be
presented at the oral hearing, and Patent Owner does not identify where this
argument was presented prior to the oral hearing. See Office Patent Trial
Practice Guide, 77 Fed. Reg. at 48,768. Accordingly, we could not have
misapprehended or overlooked this argument because Patent Owner had not
presented this argument properly.
Moreover, Patent Owner’s argument is not persuasive. Patent
Owner’s argument is inconsistent with the express disclosure of Monroe
’320 that indicates the controller can select “any combination” of sensor
signals for transmission to a remote location. Ex. 1004, col. 23, ll. 17–33.
Further, Patent Owner does not identify any evidence regarding what a
person of ordinary skill in the art would have known at the time of the ’556
patent. Req. Reh’g 9–10. Patent Owner also does not explain what the
bandwidth limitation of an aircraft radio was at the time of the ’556 patent or
what bandwidth would have been required to transmit all the data to a
remote location. Id.
C. Petitioner’s Reply Arguments
Patent Owner contends that we misapprehended Patent Owner’s
argument regarding the improper scope of Petitioner’s Reply. Req. Reh’g
11–15. Specifically, Patent Owner argues that “[t]he proper focus is whether
Petitioner ‘changed [its] unpatentability rationale’ through its Reply.” Id. at
12. According to Patent Owner, Petitioner argued in the Petition that the
challenged claims require transmitting the data stream from storage in the
vehicle to a second location, but, in the Reply, “abandoned its original
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position and adopted a new argument” that the challenged claims do not
require transmitting the data stream from storage to a second location. Id. at
12–13. We considered Patent Owner’s argument, but did not find it
persuasive. Dec. 22, n.4.
Patent Owner does not identify any portion of the Petition where
Petitioner argued that the challenged claims require transmitting the data
stream from storage in the vehicle to a second location. Id. at 11–15.
Rather, Petitioner construed the challenged claims more broadly to mean
transmitting the data stream from the vehicle to a second location. Paper 2
(“Pet.”), 35–36. Specifically, Petitioner’s argument in the Petition regarding
the “transmitting” limitation of the challenged claims is reproduced below.
Monroe discloses wirelessly transmitting the muxed data
from the aircraft and to the ground station: “Where desired,
selected portions of the systems data on the aircraft may be
down-linked to the ground or base station 18 (see FIG. 4) as
the combined, comprehensive output signal on line 246 to be
transmitted to the ground station via the aircraft radio system
80 and the antenna 82. As previously described, the
information may also be transmitted to a wireless satellite via
transceiver 280 and dedicated antenna 282.” (23:17-22; see
also, 14:3-6: “FIGS. 4a and 4b show two different schemes
permitting transmission of monitor system data from a
transport 10 to a base station monitor 18 using a wireless
transmission scheme as indicated at 12.”). The ground station
18 is a second location remote from the aircraft. (See, e.g.,
Figs. 3 & 18).
Additionally, it is the master controller 241 that
transfers the muxed data to the ground station: “The system
controller receives commands and streaming audio information
from other system elements and distributes them to controlled
devices. The controller performs a command decoding
function to sort out command and data streams directed toward
specific devices and components of the system.” (23:2-7).
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Id. (emphasis added). In the above excerpt, Petitioner argued that Monroe
’320 discloses “transmitting the muxed data from the aircraft and to the
ground station,” which indicates that Petitioner construed the challenged
claims only to require transmitting the data stream from the aircraft to a
second location. Id. (emphasis added). Notably, Petitioner did not argue
that Monroe ’320 discloses transmitting the data from storage in the aircraft
to the ground station. Id. In a section of the Petition entitled “Brief
Summary of the ’556 Patent Technology,” Petitioner mentioned an example
from the Specification of the ’556 patent that describes transmitting
information from the memory in the vehicle to a remote storage depository.
Id. at 3. However, Petitioner did not argue or suggest that the challenged
claims are limited to that particular example in the Specification. Id.
In the Response to the Petition, Patent Owner presented two
arguments regarding the “transmitting” limitation. Patent Owner first
argued that Monroe ’320 does not anticipate claims 1, 14, 15, 18, and 19,
because it does not disclose transmitting the data stream from storage in the
vehicle to a second location. Paper 13 (“PO Resp.”), 26–31. Patent Owner
acknowledged, though, that Petitioner may dispute whether the challenged
claims require transmitting the data stream from storage in the vehicle to
another location. Id. at 30. Therefore, Patent Owner also argued that
Monroe ’320 does not disclose transmitting the same data stream to the
recorder for storage and the transceiver for transmission to the ground
station. Id. at 31–34.
In the Reply, Petitioner responded to the arguments in the Response.
See 37 C.F.R. § 42.23(b). As Patent Owner expected, Petitioner argued that
the “transmitting” limitation does not require transmitting the data stream
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from storage in the vehicle to a second location. Paper 16 (“Pet. Reply”), 8.
Petitioner’s argument in the Reply regarding the proper construction of the
“transmitting” limitation was consistent with Petitioner’s arguments in the
Petition regarding that limitation. Pet. 35–36. Petitioner also argued in the
Reply that Patent Owner’s reading of Monroe ’320 was incorrect because
Monroe ’320 discloses that the same multiplexed data is sent to the recorder
for storage and the transceiver for transmission to the ground station. Pet.
Reply 8–11. This argument also was consistent with Petitioner’s argument
in the Petition that Monroe ’320 discloses “transmitting the muxed data from
the aircraft and to the ground station.” Pet. 35. Therefore, Patent Owner
does not demonstrate that Petitioner changed its unpatentability rationale
between the Petition and the Reply, or that the arguments in the Reply
otherwise were improper. See Belden Inc. v. Berk-Tek LLC, No. 2014-1575,
2015 WL 6756451, at *10–15 (Fed. Cir. Nov. 5, 2015).
III. CONCLUSION
We are not persuaded that the Request for Rehearing demonstrates
that we misapprehended or overlooked any matters in the Decision.
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Request for Rehearing is denied.
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PETITIONER:

Jennifer C. Bailey
Adam P. Seitz
ERISE IP, P.A.
Jennifer.Bailey@EriseIP.com
Adam.Seitz@EriseIP.com

PATENT OWNER:

Stephen M. Schaetzel
David S. Moreland
MEUNIER CARLIN & CURFMAN, LLC
sschaetzel@mcciplaw.com
dmoreland@mcciplaw.com
docketing@mcciplaw.com