Mobile Tech Inc v. InVue Security Products Inc

1. Case Identification

• Case #: IPR2020-00105
• Patent #: 9,830,787
• Filed: October 31, 2019
• Petitioner(s): Mobile Tech, Inc.
• Patent Owner(s): InVue Security Products Inc.
• Challenged Claims: 1-12, 14-44

2. Patent Overview

• Title: Merchandise Security System with Removable Reel
• Brief Description: The ’787 patent discloses systems for securing an electronic item of merchandise, such as a smartphone, to a display housing. The system features a retractable cord stored on a reel that is removably inserted into the housing and provides an electrical connection to the merchandise.

3. Grounds for Unpatentability

Ground 1: Obviousness over Doss - Claims 1-12, 14-15, 17-26, 28-29, and 33-44 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 and plug assembly with retractable cables for portable computers, teaches all elements of the challenged claims. Independent claim 1 is met because Doss discloses a cord for coupling to a laptop (an "item of merchandise"), a reel for storing the cord, and a housing for the reel. Petitioner asserted Doss’s reel includes planar contacts ("electrical coupling") on its surface that engage with spring slide contacts in the housing, satisfying the claimed electrical connection. Petitioner further contended that the reel in Doss is removably inserted via a "snap fit" connection, or that making it removable for maintenance would have been an obvious design choice.
  • Motivation to Combine (for §103 grounds): As a single-reference ground, the motivation was based on Doss itself disclosing all necessary elements in a single, integrated device. For elements arguably not explicit, like removability, Petitioner argued a POSITA would be motivated by routine design needs such as maintenance and repair.
  • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success in implementing any minor modifications, such as ensuring a snap-fit was two-way, as such mechanical designs were well-known and standard before 2012.

Ground 2: Obviousness over Doss and Hunter - Claims 1-12 and 14-44 are obvious over Doss in view of Hunter.

• Prior Art Relied Upon: Doss (Patent 6,433,274) and Hunter (Application # 2003/0058601).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground asserted that Doss teaches the core retractable power system, while Hunter provides the motivation to add security and alarm features. Hunter discloses power adapters with retractable cords, similar to Doss, but adds sensor circuitry to detect unauthorized removal of a plug from a device or power source, triggering an alarm. This combination was argued to render obvious claims requiring monitoring electronics (e.g., claim 16) and an alarm (e.g., claim 31).
  • Motivation to Combine (for §103 grounds): A POSITA would combine Doss and Hunter to add security functionality to Doss’s power delivery system. Hunter explicitly provides the motivation to "detect unauthorized removal," solving the problem of theft for portable electronics, a known issue in the field. Since both references address power adapters for portable electronics, combining their features was presented as a logical and predictable solution.
  • Expectation of Success (for §103 grounds): Success was expected because incorporating Hunter's known sensor and alarm circuitry into Doss’s similar power adapter would involve applying conventional electronics principles and would have been within the ordinary skill of a POSITA.

Ground 3: Obviousness over Doss, Hunter, and Smith - Claims 1-12 and 14-44 are obvious over Doss and Hunter in view of Smith.

• Prior Art Relied Upon: Doss (Patent 6,433,274), Hunter (Application # 2003/0058601), and Smith (Patent 4,157,542).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground built upon the Doss/Hunter combination by adding Smith to supply the motivation for applying such a system in a retail display context. Smith discloses a theft-inhibiting outlet assembly for displaying small appliances in an operative state, which activates an alarm upon removal.
  • Motivation to Combine (for §103 grounds): A POSITA would be motivated to use the secured, retractable power system of Doss and Hunter in the retail environment described by Smith. Smith established the long-felt need for securing powered merchandise on display. Combining the neat, professional appearance of Doss's retractable cord with Hunter's alarm functionality would directly address the problems Smith sought to solve, but with more modern electronics.
  • Expectation of Success (for §103 grounds): A POSITA would have expected success in applying the combined Doss/Hunter device to a retail store setting, as it was a mere application of the technology to a known environment where its benefits would be readily apparent.

• Additional Grounds: Petitioner asserted additional obviousness challenges for specific claims, including claim 9 over combinations including Doss and Vista (Application # 2003/0232530) to teach a display stand/cradle, and claims 10-11 over combinations including Doss and Hsiao (Patent 5,481,607) to further detail the coiled torsion spring mechanism for retraction.

4. Key Claim Construction Positions

• "item of merchandise": Petitioner argued this term should be given its broad, ordinary meaning of "goods bought and sold in commerce" and is not limited to items currently offered for sale in a retail store. This construction was crucial to Petitioner's argument that prior art disclosing power adapters for personal use (e.g., a laptop, which is an item of merchandise) is applicable and renders the claims obvious, as any system securing an electronic item is inherently capable of securing an item of merchandise.
• "electrical coupling" / "electrical terminal": Petitioner contended that these terms should be interpreted broadly based on their function. It argued that in Doss, the reel's planar contacts constitute an "electrical coupling," and the housing's spring slide contacts, which engage the planar contacts, constitute another "electrical coupling" that includes an "electrical terminal."

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-12 and 14-44 of the ’787 patent as unpatentable.