PTAB

IPR2020-00104

Mobile Tech Inc v. InVue Security Products Inc

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1. Case Identification

2. Patent Overview

  • Title: Merchandise Security System with Retractable Cord
  • Brief Description: The ’954 patent discloses a merchandise security system for attaching an electronic device to a housing via a retractable cord. The system features a housing configured to removably receive a reel storing the cord, where both the reel and the housing have corresponding electrical couplings that engage when the reel is inserted into the housing to provide power or security monitoring.

3. Grounds for Unpatentability

Ground 1: Obviousness over Doss - Claims 1-3, 5-16, and 19-30 are obvious over Doss.

  • Prior Art Relied Upon: Doss (Patent 6,433,274).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Doss, which discloses a power converter assembly for portable computers, teaches all key elements of the independent claims. Doss shows a housing containing a retractable reel mechanism for a power cord. Petitioner mapped Doss’s reel (retraction mechanism 14) with planar contacts (40, 42) on an outer surface to the claimed reel with an electrical coupling. Similarly, Doss’s housing (4) with spring slide contacts (36, 38) was mapped to the claimed housing with a corresponding electrical coupling configured to engage the reel's contacts.
    • Motivation to Combine (for §103 grounds): As a single-reference ground, the argument focused on obvious modifications. Petitioner contended that while Doss describes a "snap-fit" connection for the reel, a person of ordinary skill in the art (POSITA) would have found it obvious to configure the reel to be fully removable from the housing. The motivation for this modification was to allow for simple maintenance, repair, or replacement of the reel mechanism.
    • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success in making the reel removable, as designing housings with separable components using well-known snap-fits or hinges was standard and predictable engineering practice at the time.

Ground 2: Obviousness over Doss and Hunter - Claims 1-30 are obvious over Doss in view of Hunter.

  • Prior Art Relied Upon: Doss (Patent 6,433,274), Hunter (Application # 2003/0058601).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground asserted that Doss provides the foundational retractable reel power adapter, while Hunter teaches the missing security and monitoring features recited in certain dependent claims (e.g., claims 4, 17, 18). Hunter discloses a power adapter with alarm functionality, including a sensor (63) and alarm circuitry (71), specifically designed to detect the unauthorized removal of the adapter or the electronic device it powers. Petitioner argued this combination met all claim limitations, including those for "monitoring electronics."
    • Motivation to Combine (for §103 grounds): A POSITA would combine Doss's convenient retractable cord system with Hunter's security features to create a single, integrated device. Both references are in the same field of power adapters for portable electronics. Hunter provides the explicit motivation "to detect unauthorized removal," which a POSITA would find desirable to add to the Doss system for use in environments where theft is a concern, such as retail stores or on airplanes.
    • Expectation of Success (for §103 grounds): Petitioner argued for a high expectation of success, as the combination would involve integrating Hunter's known sensor and alarm circuitry into Doss's printed circuit board and adding a sensor switch to the plug. This was presented as a straightforward application of well-understood electrical engineering principles.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including combining Doss and Hunter with Smith (Patent 4,157,542) to establish the motivation for use in a retail security context. Further grounds specific to claim 14 relied on combinations including Vista (Application # 2003/0232530) to teach a cradle-style display stand, and grounds specific to claim 15 relied on combinations including Hsiao (Patent 5,481,607) for its disclosure of a coiled spring retraction mechanism.

4. Key Claim Construction Positions

  • Preambles: Petitioner argued that the preambles (e.g., "A merchandise security system...") are not limiting. It was contended that they merely state an intended purpose and that the claim bodies define a structurally complete invention, which is not dependent on the preamble for antecedent basis or understanding.
  • "item of merchandise": Petitioner proposed this term should be given its plain and ordinary meaning of "goods bought and sold in commerce" and should not be limited to an item currently on display in a retail setting. Petitioner further argued that any system capable of coupling to a generic electronic item is inherently capable of coupling to an identical item that is considered merchandise, making the distinction irrelevant for patentability.
  • "electrical trace": Based on the patent's figures and the understanding of a POSITA, Petitioner argued this term should be construed as "a narrow piece of conductive material," analogous to a trace on a printed circuit board (PCB).

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-30 of Patent 10,055,954 as unpatentable.
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