Alcohol Monitoring Systems, Inc.v.Soberlink, Inc.

Patent Trial and Appeal Board

May 3, 2016

12882323 (P.T.A.B. May. 3, 2016)

Trials@uspto.gov Paper 28
Tel: 571-272-7822 Entered: May 3, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
ALCOHOL MONITORING SYSTEMS, INC.,
Petitioner,
v.
SOBERLINK, INC.,
Patent Owner.
_______________

Case IPR2015-00556
Patent 8,381,573 B2
_______________

Before KALYAN K. DESHPANDE, DAVID C. MCKONE, and
MIRIAM L. QUINN, Administrative Patent Judges.

MCKONE, Administrative Patent Judge.

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

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I. INTRODUCTION
A. Background
Alcohol Monitoring Systems, Inc. (“Petitioner”) filed a Petition
(Paper 2, “Pet.”) to institute inter partes review of claims 1–22 of U.S.
Patent No. 8,381,573 B2 (Ex. 1102, “the ’573 patent”). Soberlink, Inc.
(“Patent Owner”) filed a Waiver of Preliminary Response (Paper 6).
Pursuant to 35 U.S.C. § 314, in our Decision to Institute (Paper 7, “Dec.”),
we instituted this proceeding as to claims 6–8, 12–14, and 18–20.
Patent Owner did not file a Patent Owner Response. Rather, Patent
Owner filed a Motion to Amend (Paper 13, “Mot.”), requesting that we
cancel claims 6–8, 12–14, and 18–20 and replace them with substitute
claims 23–28. Petitioner filed an Opposition to Patent Owner’s Motion to
Amend (Paper 14, “Opp.”), and Patent Owner filed a Reply to Petitioner’s
Opposition to Patent Owner’s Motion to Amend (Paper 18, “Reply”). An
oral hearing was held on February 25, 2016 (Paper 27, “Tr.”).
We have jurisdiction under 35 U.S.C. § 6(c). This decision is a final
written decision under 35 U.S.C. § 318(a) as to the patentability of claims 6–
8, 12–14, 18–20, and new claims 23–28 added under 35 U.S.C. § 316(d).
We grant Patent Owner’s request to cancel claims 6–8, 12–14, and 18–20.
Based on the record before us, Patent Owner has not demonstrated that it is
entitled to an amendment adding substitute claims 23–28.

B. Related Matters
The ’573 patent was the subject of Alcohol Monitoring Systems, Inc.
v. Soberlink, Inc., IPR2013-00577 (“IPR-577”).
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In IPR-577, in a Final Written Decision (“IPR-577 FWD”) issued
under 35 U.S.C. § 318(a), the panel held that claims 1–5, 9–11, 15–17, 21,
and 22 are unpatentable. IPR-577 FWD, 35. In the Decision, at 7, we
determined that, under 35 U.S.C. § 315(e)(1), Petitioner was estopped from
maintaining this proceeding as to claims 1–5, 9–11, 15–17, 21, and 22.

C. References Relied Upon
In the Petition, Motion, and Opposition, the parties discuss the
following references:
Ex. 1103 Ku US 2006/0009257 A1 Jan. 12, 2006
Ex. 1105 Williams WO 2008/076310 A1 June 26, 2008
Ex. 1106 Freund US 2009/0293589 A1 Dec. 3, 2009
Ex. 1122 Hyde US 2009/0060287 A1 Mar. 5, 2009
Ex. 1125 Walter US 7,934,577 B2 May 3, 2011
Ex. 1132 LG Breathalyzer Mike Hanlon, The LG Breathalyzer
Phone (July 7, 2006),
http://www.gizmag.com/go/5841/ (last
visited Nov. 15, 2014)
Ex. 1133 iBreath CNET Staff, iBreath: the iPhone
Breathalyzer (Dec. 15, 2008),
http://www.cnet.com/news/ibreath-the-
iphone-breathalyzer/ (last visited June 2,
2014)
Ex. 1141 MEMS MEMS 2000 HomeStation, Diamond Series
VBR (archived Mar. 9, 2002),
https://web.archive.org/
web/20020309100655/http:/tsc.trackingsyste
mscorp.com/mem4.htm
Ex. 1168 Zimmermann US 2010/0314190 A1 Dec. 16, 2010
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Patent Owner also relies on the testimony of Adi Jaffe, Ph.D
(Ex. 2000, “Jaffe Decl.”; Ex. 2002, “Jaffe Reply Decl.”). Petitioner relies on
the testimony of Mark Wojcik (Ex. 1124, “Wojcik Decl.”; Ex. 1169,
“Wojcik 2nd Decl.”).

II. ANALYSIS
Patent Owner’s proposed amendment is not entered automatically, but
only upon Patent Owner’s having demonstrated the patentability of the
substitute claims. As the moving party, Patent Owner bears the burden of
proof to establish that it is entitled to the relief requested. See 37 C.F.R.
§ 42.20(c).
The amendment must respond to a ground of unpatentability involved
in the trial and must not seek to enlarge the scope of the claims or introduce
new subject matter. See 37 C.F.R. § 42.121(a)(2). As we have stated, “[f]or
a patent owner’s motion to amend, 37 C.F.R. § 42.20(c) places the burden
on the patent owner to show a patentable distinction of each proposed
substitute claim over the prior art.” Idle Free Sys., Inc. v. Bergstrom, Inc.,
Case IPR2012-00027, slip op. at 7 (PTAB June 11, 2013) (Paper 26). Such
prior art may include:
a. any material art in the prosecution history of the patent;
b. any material art of record in the current proceeding,
including art asserted in grounds on which the Board did
not institute review; and
c. any material art of record in any other proceeding before
the Office involving the patent.
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MasterImage 3D, Inc. v. RealD Inc., Case IPR2015-00040, slip op. at 2
(PTAB July 15, 2015) (Paper 42).

A. The ’573 Patent
The ’573 patent generally relates to remote sobriety monitoring using
a breath testing and identification device. Ex. 1102, 1:15–24. The
’573 patent describes a handheld device that includes a breath alcohol test
device for analyzing the breath alcohol content (“BAC”) of a user. Id. at
4:43–50. Figure 3 of the ’573 patent is reproduced below:

Figure 3 depicts a handheld breath testing device. A user blows into
removable breath tester tip 32 that is connected to breath analysis and
processing portion 38 of the device. Id. at 6:39–47. The device also
includes digital camera 34 that takes a picture of the user, synchronized to
when the user is blowing into the tip, to verify the identity of the user. Id. at
6:47–53. The device also includes a wireless transmitter for transmitting the
BAC information and photo over a wireless or cellular network to a receiver
at a monitoring station. Id. at 7:50–67. The wireless transmitter can be a
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hardware component internal to the breath testing device. Id. at 5:1–6. If
the breath testing device detects a BAC above a threshold, it can transmit an
alarm condition to a supervisory monitor at the monitoring station. Id. at
8:1–6. The supervisory monitor can, for example, alert a supervisory care
professional (e.g., a “sober buddy”) who can respond to the alarm and take
corrective action. Id. at 8:34–38.
The breath testing device also can include other components, such as a
global positioning system (“GPS”) tracking module internal to the device.
Id. at 6:57–65.

B. Cancellation of claims 6–8, 12–14, and 18–20
During an inter partes review, Patent Owner may file a motion to
amend the patent to “[c]ancel any challenged patent claim.” 35 U.S.C.
§ 316(d)(1)(A). Patent Owner’s Motion requests that we cancel claims 6–8,
12–14, and 18–20. Mot. 1. Patent Owner did not file a Patent Owner
Response to the Petition. We grant Patent Owner’s request to cancel claims
6–8, 12–14, and 18–20.

C. The Substitute Claims
Patent Owner proposes the following claim substitutions:
claim 23 for claims 1 and 6;
claim 24 for claim 7;
claim 25 for claim 8; and
claim 27 for claims 15 and 19;
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Mot. Appx. A. Additionally, Patent Owner proposes adding claims 26 and
28, but indicates that these proposed substitutions do not correspond to any
original claim. Id.
Petitioner argued that the claims submitted with the Motion
impermissibly broadened the claims in some respects. Opp. 11–16. For
example, in amending “breath alcohol content” to “breath alcohol content
information,” Petitioner argued, claims 23 and 27 are broader in that
“information” regarding breath alcohol content could include more than
simply the numerical value of the breath alcohol content. Id. at 14–15.
Patent Owner disagreed that such amendments were broadening, but
provided no substantive argument or evidence other than its statement of
disagreement. Reply 6. Given the lack of argument and evidence and that
Patent Owner bears the burden in its Motion, we find Patent Owner’s simple
disagreement insufficient to show that the original Motion to Amend does
not broaden the claims. Thus, the original Motion to amend does not show
this requirement of a proper amendment. See 35 U.S.C. § 316(d)(3).
Patent Owner, however, filed, along with its Reply, a revised set of
proposed substitute claims purporting to address Petitioner’s arguments.
Reply, Appendix A. By way of example, the following is a list of some of
the changes to claim 6 in the Motion and subsequent changes to claim 23 in
the Reply, although Petitioner cites to additional examples in claim 23 and
other claims:
The language of claim 6, “positioned to capture an image of the
user,” was changed to “configured to capture image
information of the user,” and then changed back;
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The language of claim 6, “cause the camera to capture the
image of the user,” was changed to “cause the digital
camera to image information of the first user,” and
subsequently changed to “cause the digital camera to
capture the image of the first user”;
The language of claim 6, “electronically receive the breath
alcohol content and the image of the user,” was changed
to “receive and then transmit the image information,
alcohol content information and location information
generated during a breath test,” and subsequently
changed to “receive and then transmit the image of the
user, the alcohol content, and the location information
generated during a breath test”; and
Claim 23 added the language, “having the wireless transceiver
receive, via the controller, the image information, alcohol
content information, and location information generated
during the breath test,” which subsequently was changed
to “having the wireless transceiver receive, via the
controller, the image of the first user, the alcohol content,
and the location information generated during the breath
test.”
Under 35 U.S.C. § 316(d)(1)(B), “the patent owner may file 1 motion
to amend the patent . . . .” Thus, Patent Owner was authorized to file the
amendments accompanying its Motion, but not those filed with its Reply.
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At the oral hearing, Petitioner argued that the amendment
accompanying the Reply is improper and that we should consider only the
amendment submitted with Patent Owner’s original Motion to Amend.
Tr. 30:3–32:12. Petitioner admitted that the amendment accompanying
Patent Owner’s Reply simply removed areas of alleged broadening without
introducing new instances of broadening. Tr. 30:17–23.1 Nevertheless,
Petitioner argues that it would have analyzed the claims further and
introduced additional instances of broadening if given the chance to respond
to Patent Owner’s submission of an additional or second amendment.
Tr. 30:24–31:8, 32:6–9. Petitioner, however, does not point to any such
additional instance of broadening and, thus, does not articulate any specific
prejudice that would occur if we consider the additional amendment in the
Reply.
“Additional motions to amend may be permitted upon the joint
request of the petitioner and the patent owner to materially advance the
settlement of a proceeding under section 317, or as permitted by regulations
prescribed by the Director.” 35 U.S.C. § 316(d)(2). To that end, 37 C.F.R.
§ 42.121(c) provides:
In addition to the requirements set forth in paragraphs (a) and (b)
of this section, any additional motion to amend may not be filed
without Board authorization. An additional motion to amend
may be authorized when there is a good cause showing or a joint
request of the petitioner and the patent owner to materially
advance a settlement. In determining whether to authorize such
an additional motion to amend, the Board will consider whether

1 We acknowledge Petitioner’s argument that the Reply amendment did not
eliminate every alleged instance of broadening. Tr. 30:21–23.
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a petitioner has submitted supplemental information after the
time period set for filing a motion to amend in paragraph (a)(1)
of this section.
Under our rules, Patent Owner should have requested authorization to
submit an additional or second amendment with its Reply and should have
shown good cause. Although Patent Owner did not comply with Rule
42.121(c) in pursuing the second amendment, that amendment does nothing
more than eliminate one of the disputes between the parties—the alleged
claim scope broadening—by restoring, in at least some respects, the claim
language to its original scope. Petitioner is unable to articulate any
meaningful prejudice in its inability to file an opposition to the second
amendment. In contrast, if we refuse to consider the second amendment,
Patent Owner would be left with a broadening amendment in contravention
of 35 U.S.C. § 316(d)(3). Accordingly, we exercise our discretion to
consider the second amendment accompanying the Reply. See 37 C.F.R.
§ 42.5.
Proposed claim 23 of the Reply, reproduced below, is illustrative of
Patent Owner’s proposed substitutions:
23 (proposed). An electronic method that enables a
first user to discreetly, proactively and periodically self-report
alcohol usage to a second user with a handheld portable, cordless
breath alcohol content testing device, the method comprising the
following steps:
providing the portable, cordless, hand-held breath alcohol
content testing device, the breath test device comprising:
a portable, cordless hand-held case having an inside, an
outside, and one or more walls, wherein the case is
a size that can be discreetly concealed;
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a breath alcohol content sensor housed within the case for
sensing breath alcohol content of a user during a
breath test;
a removable breath interface component operatively
coupled to the breath alcohol content sensor and
exposed within the one or more walls of the case;
a digital camera housed within the case with a lens
exposed within the one or more walls and
positioned to capture an image of the user during a
breath test;
a location sensor housed within the case and configured to
sense the location of the breath testing device;
a controller housed within the case and electronically
coupled to the digital camera, the breath alcohol
content sensor, and the location sensor, wherein the
controller is configured to:
cause the digital camera to capture the image of the
first user during a breath test, and
receive and then transmit the image of the user, the
alcohol content, and the location information
generated during a breath test; and
a wireless transceiver housed within the case and
electronically coupled to the controller,
sending an electronic message to the first user that requests
the first user to self-administer a breath test performed in
accordance with a predetermined schedule;
having the wireless transceiver receive, via the controller,
the image of the first user, the alcohol content, and the location
information generated during the breath test, and
transmitting to a mobile phone, via the wireless
transceiver, electronic image-related data derived from the image
of the user, the alcohol content, and data indicating whether a
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self-administered breath test was taken in accordance with the
schedule.

D. Claim Construction
We interpret claims of an unexpired patent using the broadest
reasonable construction in light of the specification of the patent in which
they appear. See 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC,
793 F.3d 1268, 1278 (Fed. Cir. 2015), cert. granted sub nom. Cuozzo Speed
Techs. LLC v. Lee, 136 S. Ct. 890 (mem.) (U.S. Jan. 15, 2016) (No. 15-
446). In applying a broadest reasonable construction, claim terms generally
are given their ordinary and customary meaning, as would be understood by
one of ordinary skill in the art in the context of the entire disclosure. See In
re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
In the IPR-577 FWD, a panel construed terms of the ’573 patent
claims as reproduced below. IPR-577 FWD, 6.
Claim Phrase Claim Construction in the IPR-577 FWD
“wireless transceiver” a device that is capable of receiving
communications from a source and
transmitting communications to a
destination without a wired connection
between it and the source or destination
“monitored internet website” a website comprising information, at least
part of which information is screened
manually by personnel and/or
automatically by software

We applied these constructions in the Institution Decision. Dec. 7. These
constructions are applicable to the proposed substitute claims. Neither party
contests these constructions and we maintain them on the full record.
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1. “wherein the case is a size that can be discreetly
concealed” (claim 23, 27)
Claim 23 recites a “portable, cordless, hand-held breath alcohol
content testing device” that comprises a “portable, cordless hand-held case
having an inside, an outside, and one or more walls, wherein the case is a
size that can be discreetly concealed.” Similarly, claim 27 recites “a
handheld portable, cordless breath alcohol content testing device
comprising: a portable, cordless hand-held case that has one or more walls,
wherein the case is a size that can be discreetly concealed.”
Quoting the Specification, Patent Owner contends that a device with a
case of “a size that can be discreetly concealed” is “a device having
‘physical dimensions . . . such that it is readily able to be carried by hand, or
inserted in to a handbag, purse, pocket or the like.’” Reply 5 (quoting
Ex. 1102, 5:47–54). The Specification gives example dimensions, “not
more than 27 cubic inches in volume, and has, for example, a major axis
length of approximately 9 inches, a first minor axis length of approximately
3 inches, and a second minor axis length of approximately 1 inch.”
Ex. 1102, 5:51–54. Nevertheless, Patent Owner argues that a case of “a size
that can be discreetly concealed” is not limited to this example. Tr. 13:5–7.
Patent Owner also relies on the testimony of Dr. Jaffe, who states that, based
on this disclosure in the Specification, a skilled artisan would have agreed
with Patent Owner’s construction. Ex. 2002 ¶ 11.
Petitioner argues that the Specification, in the phrase “system of
providing supervisory monitoring of sobriety that is discrete, portable,
tamper-proof, and effective,” uses the term “discrete,” as in “consisting of
distinct or unconnected elements,” rather than its homophone “discreet,” as
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in “unnoticeable.” Opp. 7 (quoting Ex. 1102, 2:47–49; Ex. 1161
(http://www.merriam-webster.com/dictionary/discrete, last visited Dec. 2,
2015); Ex. 1162 (http://www.merriam-webster.com/dictionary/discreet, last
visited Dec. 2, 2015)). Petitioner argues that the use of “discreet” in the
claims, where the Specification only describes “discrete,” is an introduction
of new matter. Id. at 6–7.
We read the Specification’s use of “discrete” rather than “discreet” to
be an obvious typographical error. We note that the Specification includes
other instances in which it erroneously uses “discrete” where context calls
for “discreet.” For example, in describing concerns with remote monitoring
of blood alcohol levels using ankle bracelets, the Specification explains that
“users are often stigmatized by their indiscrete presence and therefore find
healthy societal interaction while wearing such bracelets difficult.”
Ex. 1102, 2:14–17 (emphasis added); see also id. at 1:66–2:5 (“Thus, the
discrete remote monitoring of a person under such a program by the court,
or other authority, without requiring the monitored person to excuse
themselves from society for more than a brief period of time would be useful
in reintegrating the monitored person into society without the awkward and
embarrassing effects of traditional monitoring procedures.”). Thus, the use
of “discreet” in the proposed substitute claims is not new matter.
Petitioner further contends that this claim phrase “wherein the case is
a size that can be discreetly concealed” is indefinite. Specifically, Petitioner
argues that the Specification provides “no reasonable certainty as to how big
a manufacturer needs to make the breath testing device case such that the
skilled artisan would consider the case to not be discreetly concealable.”
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Opp. 9. We are not persuaded that this limitation is indefinite. Rather, the
Specification provides a standard for measuring whether a device can be
discreetly concealed, namely “it is readily able to be carried by hand, or
inserted in to a handbag, purse, pocket or the like.” Ex. 1102, 5:47–50. This
is consistent with the dictionary provided by Petitioner, defining “discreet”
to mean “unobtrusive, unnoticeable.” Ex. 1162. Thus, “wherein the case is
a size that can be discreetly concealed” means that the size is unobtrusive
such that it can be carried by hand, or concealed in a handbag, purse, pocket,
or the like.
Nevertheless, a device of “a size that can be discreetly concealed” is
not distinguishable from “[a] portable, cordless, hand-held” device, as
recited in original claims 1 and 15. That language is supported by the same
description in the Specification. Tellingly, Patent Owner also provides
constructions for “hand-held” and “portable,” namely “designed to be
operated while being held in the hand” and “easy to carry or move around,”
respectively. Reply 4. At the oral argument, Patent Owner was unable to
provide a meaningful distinction between a device that can be discreetly
concealed and one that is portable and handheld. Tr. 11:19–13:4. We see no
evidence that sufficiently supports a distinction between these two phrases.
Finally, we note that neither party argues, nor does the evidence
support, a narrower construction under the approach in Phillips v. AWH
Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).

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2. “proactively and periodically self-report” (claims 23, 27)
The preamble of claim 23 recites a method “that enables a first user to
discreetly, proactively and periodically self-report alcohol usage.” The
preamble of claim 27 recites a system with similar language.
The Motion does not propose a construction for “proactively and
periodically self-report.” Nevertheless, in reliance on Dr. Jaffe’s testimony,
Patent Owner contends that “[a] key innovation of the claimed invention
(and key reason driving the success of the Soberlink monitoring system) is
that the system promotes and encourages voluntary and proactive use to test
and self-report sobriety.” Mot. 10 (citing Ex. 2000 ¶ 23). Patent Owner
distinguishes the invention from devices used “because that person is
ordered by a court or some other authority to do so.” Id. (citing Ex. 2000
¶ 25). Dr. Jaffe does not identify evidence (or provide citations to the
Specification) supporting his testimony. Ex. 2000 ¶¶ 23–25.
In its Opposition, Petitioner surmises that Patent Owner finds this
distinction in the language “proactively and periodically self-report.”
Opp. 9–10. In the Reply, Patent Owner appears to agree, contending that
“proactive” means “‘anticipatory’ and/or ‘voluntary.’” Reply 5. Thus, we
evaluate whether “proactively and periodically self-report” means
voluntarily self-report, as opposed to reporting due to law enforcement
compulsion.
Citing online dictionaries, Petitioner argues that “proactive” means
“anticipatory,” but does not mean “voluntary.” Opp. 10; Ex. 1163 (“serving
to prepare for, intervene in, or control an expected occurrence or situation,
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especially a negative or difficult one; anticipatory”); Ex. 1164 (“acting in
anticipation of future problems, needs, or changes”).
Patent Owner argues that Mr. Wojcik admitted that “proactive” also
means “voluntary.” Reply 5. We disagree. Consistent with Petitioner’s
dictionary definitions, Mr. Wojcik testifies that “[t]he word ‘proactive’
means anticipatory” and that “the skilled artisan would not have understood
‘proactive’ to mean uncompelled or voluntary.” Ex. 1169 ¶ 20 (citing
Ex. 1163). Patent Owner’s Reply also cites to Dr. Jaffe, who
mischaracterizes Mr. Wojcik’s testimony and purports to agree with it.
Reply 5; Ex. 2002 ¶ 12–13. This testimony does not cite to any other
evidence that “proactive” means “voluntary.” We give Dr. Jaffe’s testimony
on this point no weight. See 37 C.F.R. § 42.65(a).
As to the term “periodic,” its plain meaning, as evidenced by
dictionary definitions, is “1. Having or marked by repeated cycles. 2.
Happening or appearing at regular intervals. 3. Recurring or reappearing
from time to time.” THE AMERICAN HERITAGE COLLEGE DICTIONARY 1035
(4th ed. 2002) (Ex. 3001).
Based on the plain meaning of “proactive” and “periodic,” as
evidenced by dictionary definitions, we construe “proactively and
periodically self-report” to mean self-report at regular intervals in
anticipation of a need for a measurement. Patent Owner points to no
evidence in the Specification to the contrary. Specifically, Patent Owner
points to no evidence in the Specification distinguishing between self-
reporting voluntarily and self-reporting due to law enforcement compulsion.
Rather, Patent Owner admitted at the oral argument that its substitute claims
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would cover law enforcement use. Tr. 16:14–18:5. Indeed, the ’573 patent
explicitly states that “[t]he present invention is also useful for remotely
monitoring sobriety in situations in which sobriety has been required as a
condition of probation or by courts.” Ex. 1102, 3:32–34.
We note that use of the claim construction approach in Phillips would
not result in Patent Owner’s more narrow construction. The ordinary
meanings of “proactive” and “periodic,” in light of the Specification, are
clear. Patent Owner points to nothing in the intrinsic evidence suggesting
that “proactive” also means voluntary and without compulsion.
Finally, Petitioner contends that this claim limitation also is indefinite.
Petitioner appears to argue that, under Patent Owner’s theory that this term
carries with it a distinction between compelled versus voluntary testing, a
skilled artisan would not be reasonably certain what this term means.
Opp. 9–10. Because we do not construe this claim language to include a
distinction between compelled and voluntary self-reporting, we do not find
persuasive Petitioner’s argument that the claim language is indefinite.

E. Written Description Support for Substitute Claims
A claim amendment must not introduce new subject matter. See 35
U.S.C. § 316(d)(3); 37 C.F.R. § 42.121(a)(2)(ii). To that end, a motion to
amend must include a claim listing, which must set forth “[t]he support in
the original disclosure of the patent for each claim that is added or
amended.” 37 C.F.R. § 42.121(b)(1). Attached to its Motion, Patent Owner
included Appendix B, which purported to show, in chart form, the written
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description support in the ’573 patent’s Specification for each limitation of
proposed substitute claims 23–28.
Petitioner points to numerous errors in Appendix B, including:
(1) several instances in which a purported quotation from the
Specification is unaccompanied by any citation to the
Specification or accompanied simply by the word
“[cite].” Petitioner contends that there are 47 such
instances. Opp. 4. While we have not verified this
number, it is plausible;
(2) several instances of quotations from material clearly not
part of the specification (such as material that describes
“intermediate device 500” and “PAN module 520,”
structure that is not part of the Specification). Petitioner
alleges that there are 56 such instances. Opp. 5 & n.7.
Again, although we have not verified this count, it is
plausible.
For many of the limitations of the proposed substitute claims, we are
unable to discern, from Appendix B to the Motion, what Patent Owner
contends provides written description support. For example, in its support
for the claim limitation “sending an electronic message to the first user that
requests the first user to self-administer a breath test performed in
accordance with a predetermined schedule,” most of the purported
quotations discuss intermediary device 500, which is not discussed in the
’573 patent Specification. Two passages reference a supervisory monitor 16
and a cellular receiver monitoring station 56 receiving breath test signal 11
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indicating that an alcohol content level exceeds a predetermined threshold.
These passages, however, do not match any from the Specification. Indeed,
breath test signal 11 is discussed only with respect to Figure 1, although
cellular receiver monitoring station 56 is discussed only with respect to
Figure 5. Moreover, to the extent that these passages constitute summaries
of various disclosures in the Specification, we are unable to discern from
these passages what Patent Owner contends discloses “sending an electronic
message to the first user that requests the first user to self-administer a
breath test performed in accordance with a predetermined schedule.” As
best we can discern, Patent Owner relies on disclosure of electronic
reminders sent via SMS or email, discussed in connection with intermediary
device 500, disclosure clearly not in the Specification.
We similarly are unable to discern, from original Appendix B, what
Patent Owner contends supports “receive the predetermined schedule for the
first user to self-administer a periodically-performed breath test,” as recited
in substitute claim 27. The Motion itself includes no argument explaining
how the proposed substitute claims are supported; it simply points to
Appendix B. Mot. 3. In short, what evidence we are able to discern from
the original Appendix B filed along with the Motion is insufficient to show
written description support in the original disclosure of the ’573 patent for
the proposed substitute claims.
In the Reply, Patent Owner argued that its Motion “mistakenly
attached the wrong version of Appendix B, which included several errors,
most notably in multiple places omitting page/line citations to the ’573
patent specification, including a ‘[cite]’ reference rather than the actual cite.”
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Reply 2. The Reply attached an amended Appendix B, which Patent Owner
contends is proper Reply evidence, as it responds to Petitioner’s challenge to
the clerical errors in the original Appendix B. Id. at 2–3.
Patent Owner’s amended Appendix B was not submitted in
accordance with our rules. “All arguments for the relief requested in a
motion must be made in the motion. A reply may only respond to arguments
raised in the corresponding opposition or patent owner response.” 37 C.F.R.
§ 42.23(b). The Patent Office has given the following guidance regarding
distinguishing proper replies from improper new arguments:
A reply may only respond to arguments raised in the
corresponding opposition. § 42.23. While replies can help
crystalize issues for decision, a reply that raises a new issue or
belatedly presents evidence will not be considered and may be
returned. The Board will not attempt to sort proper from
improper portions of the reply. Examples of indications that a
new issue has been raised in a reply include new evidence
necessary to make out a prima facie case for the patentability or
unpatentability of an original or proposed substitute claim, and
new evidence that could have been presented in a prior filing.
Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14,
2012).
At the hearing, Petitioner argued that Patent Owner’s amended
Appendix B added evidence that was not in the Motion or original Appendix
B. Tr. 38:24–39:6. As an example raised by Petitioner, in amended
Appendix B, as support for the claim language “portable, cordless, hand-
held breath alcohol content testing device . . . comprising: a portable,
cordless hand-held case having an inside, an outside, and one or more walls,
wherein the case is a size that can be discreetly concealed,” as recited in
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claim 23, Patent Owner included a cite to column 5, lines 47–54, which
discusses specific dimensions for a breath testing device. Tr. 39:10–13.
Neither this citation, nor a summary that could be associated with the
citation, appears in original Appendix B.
We agree with Petitioner that this citation represents part of Patent
Owner’s prima facie case that the substitute claims are supported by the
Specification. Indeed, at the oral hearing, Patent Owner stressed the
importance of this disclosure in providing clarity as to the meaning of
“discreetly concealed,” as distinguished from “portable” and “hand-held,” as
recited in original claim 1, arguing that it gave “a very clear example with
specific size and dimension of . . . the preferred embodiment.” Tr. 12:13–
13:4; see also Mot. 9 (listing “compact, portable, and concealable” as a
distinction over the prior art).
As another example, in support of the claim language “sending an
electronic message to the first user that requests the first user to self-
administer a breath test performed in accordance with a predetermined
schedule,” as recited in claim 23, amended Appendix B cites to column 7,
line 62, to column 8, line 6, and column 8, lines 34–43, neither of which
appear, in any form, in original Appendix B. Moreover, Patent Owner’s
evidence for claims 24 and 25 appears to have changed completely from
original Appendix B to amended Appendix B. These are citations that
should have been presented along with the Motion.
At the hearing, Patent Owner represented that the citations in the
original Appendix B clearly are not from the ’573 patent (e.g., describing
intermediary device 500) but, instead, referenced a continuation-in-part.
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Tr. 64:3–7. Nevertheless, Patent Owner disputed that amended Appendix B
included any evidence that Patent Owner did not present, in some form, in
its Motion. According to Patent Owner, in amended Appendix B, “we
simply just took out the support that did not belong from the original
specification. So, you know, the record is there.” Id. at 65:22–66:2. Asked
to clarify whether it had added any material to amended Appendix B not
included in original Appendix B, counsel for Patent Owner argued the
following:
JUDGE McKONE: So you’re certifying to us that you have put
nothing new in the claim charts that accompany the reply.
Because to be clear, Petitioner has argued that you did put
additional information in, additional cites, additional text that
was not in the charts that accompanied the motion. Are you
certifying today that, indeed, everything that was in the reply,
written description support chart was also in the chart that
accompanied the motion to amend?
MR. LIU: Well, to be clear, it wasn’t necessarily just limited to
the chart. There’s also citation support that we provided in
Jaffe’s declaration as well. So I think what we did was we moved
a few things around, but at the end of the day the citations and
the support as a whole in our motion to amend, all of that was
there. That’s our position. It’s my understanding.
Tr. 66:9–22. We find that the record does not support Patent Owner’s
representation. We have examined both of Dr. Jaffe’s Declarations
(Exs. 2000, 2002), and find no reference to written description support and,
specifically, no reference to the material added to amended Appendix B.
Nor is that material referenced, in any form, in the Motion. Thus, the
additional material quoted in amended Appendix B is, indeed, newly cited
evidence, necessary to make out Patent Owner’s prima facie case.
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We exercise our discretion to decline to consider amended Appendix
B in determining whether Patent Owner has shown that the proposed
substitute claims are supported by the original disclosure of the ’573 patent.
It is worth noting that Patent Owner, upon discovering its purported clerical
error, never sought the Board’s guidance or asked for authorization to
supplement its evidence with corrected claim charts. The Board could have
considered relief that provided Petitioner an opportunity to respond to Patent
Owner’s new evidence. The rules do not provide for additional argument or
evidence from Petitioner after Patent Owner’s Reply. Thus, Petitioner did
not have a fair opportunity to respond to the evidence in amended Appendix
B. Cf. Dell, Inc. v. Acceleron, LLC, 2016 WL 1019075 2015-1513
(Fed. Cir. Mar. 15, 2016), slip op. at 13 (In an inter partes review, “the APA
imposes particular requirements on the PTO. The agency must ‘timely
inform[]’ the patent owner of ‘the matters of fact and law asserted,’ 5 U.S.C.
§ 554(b)(3), must provide ‘all interested parties opportunity for the
submission and consideration of facts [and] arguments . . . [and] hearing and
decision on notice,’ id. § 554(c), and must allow ‘a party . . . to submit
rebuttal evidence . . . as may be required for a full and true disclosure of the
facts,’ id. § 556(d).”).
Moreover, even if we were to consider the evidence in amended
Appendix B, it would not be sufficient to show support in the original
disclosure. For example, claim 23 recites “sending an electronic message to
the first user that requests the first user to self-administer a breath test
performed in accordance with a predetermined schedule.” Amended
Appendix B cites column 3, lines 12–15 (a user can send breath test reports
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to a family member on a predetermined schedule, or when randomly
requested), column 7, line 62–column 8, line 6 (an alarm condition or alert is
sent to a supervisory monitor if a breath test signal is not received within a
desired timeframe or schedule), and column 8, lines 34–43 (a monitoring
station can provide a variety of reports of a user’s testing history, allowing
analysis). None of these citations discloses sending an electronic message to
the user of an alcohol content testing device, let alone sending a message
requesting the user to self-administer a breath test. The Reply itself (to
which amended Appendix B was attached) does not provide argument
explaining Patent Owner’s citations. Reply 2–3. Neither the Reply nor
amended Appendix B cites to any testimony explaining the applicability of
Patent Owner’s citations. For similar reasons, Patent Owner’s evidence fails
to show written description support for a “controller [] configured to . . .
receive the predetermined schedule for the first user to self-administer a
periodically-performed breath test,” as recited in substitute claim 27.
Substitute claims 24–26 depend from claim 23 and claim 28 depends
from claim 27. Patent Owner does not allege that the evidence in amended
Appendix B for claims 24–26 and 28 remedy the above-noted deficiencies
for claims 23 and 27. Accordingly, Patent Owner has not shown support in
the original disclosure of the ’573 patent for substitute claims 23–28. For
this reason, Patent Owner has not established that it is entitled to the relief it
seeks in its Motion, namely entry of proposed substitute claims 23–28.

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F. Patent Owner has not Shown that the Substitute Claims would
have been Nonobvious
A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
between the claimed subject matter and the prior art are “such that the
subject matter as a whole would have been obvious at the time the invention
was made to a person having ordinary skill in the art to which said subject
matter pertains.” We resolve the question of obviousness on the basis of
underlying factual determinations, including: (1) the scope and content of
the prior art; (2) any differences between the claimed subject matter and the
prior art; (3) the level of skill in the art; and (4) objective evidence of
nonobviousness, i.e., secondary considerations. See Graham v. John Deere
Co., 383 U.S. 1, 17–18 (1966).
In an obviousness analysis, some reason must be shown as to why a
person of ordinary skill would have combined or modified the prior art to
achieve the patented invention. See Innogenetics, N.V. v. Abbott Labs., 512
F.3d 1363, 1374 (Fed. Cir. 2008). A reason to combine or modify the prior
art may be found explicitly or implicitly in market forces; design incentives;
the “interrelated teachings of multiple patents”; “any need or problem
known in the field of endeavor at the time of invention and addressed by the
patent”; and the background knowledge, creativity, and common sense of
the person of ordinary skill. Perfect Web Techs., Inc. v. InfoUSA, Inc., 587
F.3d 1324, 1328–29 (Fed. Cir. 2009) (quoting KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418–21 (2007)).

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1. Level of Skill in the Art
In the Petition, Petitioner contends that a skilled artisan would have
had a BS degree in engineering, knowledge of cellular telephone technology,
and two to four years of experience designing, optimizing, and/or testing
portable, battery-operated products. Pet. 18. Petitioner supports its
argument with Mr. Wojcik’s testimony (Ex. 1124 ¶¶ 57–60), which does not
itself cite evidence.
In its Motion, Patent Owner argues that a skilled artisan would have
had at least two to five years of experience working in the field of sobriety
monitoring, developing sobriety monitoring and treatment programs.
Mot. 4. Patent Owner also argues that a skilled artisan would have had a
practical understanding of methodologies used to monitor sobriety and an
understanding of human behavioral patterns as they relate to alcohol
addiction. Id. at 4–5. Patent Owner cites to Dr. Jaffe (Ex. 2000 ¶ 13),
whose testimony is as conclusory and devoid of evidence as Mr. Wojcik’s.
In IPR-577, we found that the level of ordinary skill in the art is
reflected in the prior art itself, reflects solutions to engineering problems,
and does not require a physician’s knowledge of the behavior of alcoholics.
IPR-577 FWD, 17–19. On the record of the current proceeding, considering
similar testimony and substantially the same prior art, we maintain the
finding that the level of ordinary skill in the art is reflected by the prior art of
record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In
re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d
86, 91 (CCPA 1978).

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2. Scope and Content of the Prior Art
“A motion to amend may be denied where . . . [t]he amendment does
not respond to a ground of unpatentability involved in the trial.” 37 C.F.R.
§ 42.121(a)(2)(i). We instituted trial on two grounds: (1) claims 6, 12, and
18 for obviousness based on Ku, MEMS, and Williams and (2) claims 7, 8,
13, 14, 19, and 20 for obviousness based on Ku, MEMS, Williams, and
Freund. Dec. 22. We evaluate whether Patent Owner’s proposed
amendment responds to these grounds.
Additionally, as explained above, Patent Owner must show that the
proposed substitute claims include patentable distinctions over the prior art,
including the material prior art raised in this proceeding and IPR-577.
MasterImage, Case IPR2015-00040, slip op. at 2 (Paper 42).2 In its
Opposition, Petitioner specifically argues that proposed claim 23 would have
been obvious over Ku, Williams, MEMS, Hyde, LG Breathalyzer, and
iBreath. Opp. 24–25. Patent Owner additionally addresses Freund and
Walter.3 Mot. 6–7, 12–14.

2 Because we conclude that Patent Owner has not shown a patentable
distinction over the prior art raised in this proceeding, we need not address
Petitioner’s argument (Opp. 16–19) that Patent Owner failed to address
additional prior art in the ’573 patent’s prosecution history.
3 In the IPR-577 FWD, we found that several claims of the ’573 patent
would have been obvious over Walter, alone or in combination with other
references. Because we conclude that Patent Owner has not shown that the
substitute claims are patentable over the prior art cited by Petitioner in the
Petition and the Opposition, we do not address Walter further.
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a. Overview of Ku
Ku describes a multifunctional portable digital image capturing
device. Ex. 1103 ¶ 1. Ku’s device can capture a digital image and measure
a physical quantity of a source (such as alcohol concentration or water
quality). Id. ¶ 21. Figure 3a, reproduced below, illustrates an example:

Figure 3a is a diagram of personal portable digital image capturing device.
Id. ¶ 15.
Digital video camera 30 includes built-in sensor 34 and external
sensor 36, both of which can detect contact-type or non-contact-type items.
Id. ¶ 22. Built-in sensor 34 can be a retractable sensing rod. Id. In one
example, external sensor 36 is used to measure breath alcohol content.
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Id. ¶ 23. A sensor “can also be hidden in or externally connected on the
personal portable digital image capturing device.” Id. ¶ 27. Digital video
camera 30 also includes data processor 48, which performs analysis,
calculation, and plotting of data and also can use a satellite positioner to
calculate the longitude and latitude of a picture-taking site. Id. ¶ 22. Digital
video camera 30 also includes network card 20 and communications
transmission device 46 for transmitting and receiving communications
signals. Id. ¶¶ 22, 25. Data transmission can be over wired or wireless
means (e.g., GPRS, CDMA, or transmission line). Id. ¶ 25.
In one example, when a user presses starting button 38, digital video
camera 30 takes a picture and sensor 36 measures blood alcohol content.
Id. ¶ 24. The satellite positioner records the longitude and latitude values of
the picture-taking site. Id. The BAC value, image data, and position data
are transmitted simultaneously (e.g., by Bluetooth, wireless network,
infrared transmission, or transmission line) to an external computer (e.g., a
hospital or police business server). Id. “Because the taken picture and the
measured alcohol concentration value and location are immediately
transmitted to the external equipment 22 via the transmitter to keep in the
archives via, they can’t be changed and become credible data.” Id.

b. Overview of MEMS
MEMS is a web page that describes a MEMS 2000 HomeStation
product from ElmoTech Ltd. The MEMS 2000 is an integrated tabletop
BAC testing and video identity verification unit that is installed in a home
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and connects to a monitoring center via a telephone line. Ex. 1141, 1. The
MEMS 2000 HomeStation is pictured on the second page of the exhibit:

The picture on page two of MEMS depicts a MEMS 2000 HomeStation. As
shown in the picture, the MEMS 2000 HomeStation includes a straw into
which a user can blow, allowing the device to test BAC. Id. at 2; see also
Ex. 1124, 56.

c. Overview of Williams
Williams describes a self-service breath alcohol test kiosk system for
collecting BAC information and reporting it over a communication network.
Ex. 1105, Abstract. Figure 1, reproduced below, illustrates an example:
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Figure 1 is a block diagram of a breath alcohol testing kiosk system with
network connections. Id. ¶ 7.
Breathalyzer kiosk 12, administration system 20, and officer interface
system 30 each are coupled to central server system 50 over communications
link 117. Id. ¶¶ 16, 23. Kiosk 12 includes a digital camera for taking
pictures while a user is providing a breath sample. Id. ¶¶ 30, 53. The
breathalyzer test results are transmitted from kiosk 12 to central server 50
through communication link 117. Id. ¶¶ 32, 41, 53. Data also is exchanged
between administration system 20 and central server 50 or kiosk 12 over
communications link 117. Id. ¶ 42. Officer interface system 30 also
accesses central server system 50 or kiosk 12 over communications link 117.
Id. ¶ 44.
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Officer interface system 30 includes a computer (e.g., personal
computer 34) with an Internet browser for connecting to central server
system 50 or kiosk 12 through communications link 117. Id. ¶ 44. Personal
computer 34 can be a mobile device. Id. ¶¶ 42, 44.
In one example, an officer, using officer interface system 30, enters
information about a user to be tested, including fingerprint samples and
digital photographs of the user. Id. ¶ 45. “The officer further inputs a
breathalyzer testing schedule for the user 110.” Id.
In one use scenario of the user notification system 40, the test
schedule as discussed above set up by the officer through the
officer interface system 30 initiates an automated call to the
registered user 110 notifying the user 110 of a pending
breathalyzer test date and time, and further notifying the user 110
of the location of the kiosk 12 or kiosks 12 that the user 110 is
authorized to use.
Id. ¶ 48. The test schedule also initiates automated email messages to the
officer, notifying the officer of test results ready for review and “the number
of users 110, if any, that failed to appear for scheduled testing.” Id. ¶ 49.

d. Overview of Freund
Freund describes a sobriety interlock system for a vehicle that allows
the vehicle to be started only when the driver is sober. Ex. 1106 ¶ 1.
Figure 1, reproduced below, illustrates an example:
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Figure 1 is a perspective view of a chemical impairment detection system in
vehicle 28. Id. ¶ 16.
As shown in Figure 1, chemical impairment detection sampling device
(handset) 12 samples user 16’s breath through mouthpiece 14. Id. ¶ 27.
Handset 12 is connected to control/relay module (CRM) 30. Id. ¶ 30.
Figure 1 shows handset 12 connected to CRM 30 via corded coil 32. Id.
Handset 12 and CRM 30 also can be connected wirelessly. Id. ¶ 36. Relay
30 is connected to vehicle ignition interlock 116, which, in turn, is connected
to vehicle ignition switch 118. Id. ¶¶ 39–40.
The system also includes video surveillance system 18 that is mounted
separately to windshield 58. Id. ¶¶ 29, 33. Video surveillance system 18
ensures that handset 12 is within its field of view during a test, and, thus,
that the person blowing into the handset and attempting to start the car is the
person sitting in the driver’s seat (and not a sober friend sitting elsewhere).
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Id. ¶¶ 42–43, 53. Video surveillance system 18 also can capture an image of
the user during a test. Id. ¶ 56. The image and the test results can be stored.
Id.
Freund’s system also includes a communication module (e.g., a
cellular phone) that can transfer test results and the facial image of the tester
to an external receiver, such as a monitoring facility, or to law enforcement.
Id. ¶¶ 38–39. Freund also describes another mode of operation, an
abstinence monitoring “driveway test,” in which a user uses handset 12 to
test sobriety periodically (e.g., three times per day) without driving the
vehicle. Id. ¶¶ 60–61.

e. Overview of Hyde
Hyde describes a portable electronic device, such as a cellular
telephone, a personal digital assistant (“PDA”), or an iPod, that can include a
breath analyzer for measuring the presence of alcohol on a user’s breath.
Ex. 1122 ¶¶ 23, 45. Data from the device can be uploaded to a central
authority. Id. ¶ 52.

f. Overview of LG Breathalyzer
LG Breathalyzer is a web page stating that manufacturer LG has
introduced a cellular phone equipped with a built-in breathalyzer and a
digital camera. Ex. 1132, 1–2.

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g. Overview of iBreath
iBreath is a web page describing a breathalyzer that connects to an
iPod or iPhone. Ex. 1133, 1. According to iBreath:
You simply grab your iPod with the attached iBreath and fold out
the “blow wand” and exhale into it for a minimum of five
seconds. Within two seconds after the test, the device will
display the results of your breath test. Accordingly you’ll know
your blood alcohol content (BAC) level within the range of
0.0000–0.100% and whether or not you are at the legal limit
restricting your ability to drive.
Id. The device also includes “[a] built in timer [that] can be used to remind
you to test yourself again within one minute to up to eight hours.” Id.

h. Petitioner’s Contentions as to the Original Claims
and Substitute Claim 23
In the Petition, regarding original claim 1, Petitioner contends that
Ku’s digital video camera 30 is a portable, cordless, hand-held device with a
case, and that Ku discloses a breath alcohol content sensor (built-in sensor
34 and external sensor 36) for sensing a BAC of a user, a digital camera (24)
for taking a picture of the user during a breath test, and a transmitter (40) for
sending the BAC and picture data to a receiving station (22). Pet. 19–20,
23–24, 27–29. Petitioner also contends that Ku teaches a controller (circuit
component 16) housed within the case that causes the camera to capture the
image of the user during the breath test. Id. at 26–27. Petitioner continues
to cite to Ku for these aspects of substitute claim 23. Opp. 24–25.
Petitioner cites MEMS for a disclosure of a “breath interface
component operatively coupled to the breath alcohol content sensor,” as
recited in claim 1. Pet. 22–23. Specifically, Petitioner argues that it would
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have been obvious to use a straw, such as shown in the picture of the MEMS
device, as a way to interface with Ku’s internal sensor. Id. Petitioner argues
that MEMS’s straw would have been a predictable way to deliver undiluted
breath to Ku’s sensor and would properly position the user’s face for a
picture. Id. at 23. Petitioner also cites MEMS as a more specific example of
a camera lens “positioned to capture an image of the user during a breath
test,” as recited in claim 1, in the event that we find Ku’s disclosure of
camera positioning to be insufficient on this point. Id. at 24–26. Petitioner
argues that this positioning would have been a matter of common sense.
Id. at 26.
Claim 9 adds a GPS unit for identifying the user location during a
breath test and transmitting that user location. Petitioner cites Ku’s
disclosure of a satellite positioner for this limitation. Pet. 30 (citing
Ex. 1103 ¶ 22). We note that this aspect has been incorporated into
substitute claims 23 and 27, for example in claim 23’s recitation of “a
location sensor housed within the case and configured to sense the location
of the breath testing device.” Petitioner continues to cite to Ku’s disclosure
for claim 23’s location sensor. Opp. 25.
Claim 15 is similar to claim 1, and adds “a server coupled to a public
network, the server supporting a website configured to display an image of a
user in connection with a breath alcohol content of the user.” Petitioner cites
Williams for a disclosure of this aspect of claim 15. Pet. 33–35.
Specifically, Petitioner cites to Williams’s disclosure of monitoring
personnel such as parole or probation officers accessing information
transmitted to central server system 50 by breathalyzer kiosk 12 over
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communications link 117. Id. In reliance on the testimony of Mr. Wojcik,
Petitioner argues that the data delivery in Williams is an example of the type
of data delivery expected by consumers, and that Williams’s server system
would have performed the same function receiving data transmitted by Ku’s
camera as it would receiving the same type of data from a kiosk. Id. (citing
Ex. 1124 ¶ 67). Petitioner continues to cite Williams for similar aspects
incorporated into substitute claim 23. Opp. 24–25.
Claim 6 depends from claim 1 and adds “wherein the transceiver
wirelessly transmits the breath alcohol content of the user and the electronic
image-related data to a mobile device.” Claim 19 adds a similar limitation
to claim 15. Petitioner cites to Williams for these limitations. Pet. 37–38,
49. Specifically, Williams states that its “breathalyzer kiosk in the
breathalyzer kiosk system may also be coupled to other devices such as
personal computers, personal digital assistants (PDAs), [and] mobile
phones.” Ex. 1105 ¶ 14. Petitioner again cites to Mr. Wojcik in arguing that
market expectations would have motivated this combination. Pet. 38 (citing
Ex. 1124 ¶ 70). This aspect has been incorporated into substitute claims 23
and 27, for example in claim 23’s recitation of “transmitting to a mobile
phone, via the wireless transceiver, electronic image-related data derived
from the image of the user, the alcohol content, and data indicating whether
a self-administered breath test was taken in accordance with the schedule.”
Petitioner continues to cite to this disclosure in Williams for claim 23’s
“transmitting to a mobile phone.” Opp. 25. Petitioner cites to Freund as an
additional example of transmitting to a mobile device. Pet. 49.
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Regarding original claim 5, which depends from claims 1 and 4,
Petitioner contends that Williams teaches transmitting the BAC and image
data to a “monitored internet website,” arguing that its website would have
been useless if not monitored. Pet. 37. This claim limitation is included in
substitute claims 24 and 25.

3. Alleged Differences Between the Prior Art and the Substitute
Claims
Patent Owner contends that the prior art, as a whole, does not teach
three aspects of substitute claims 23 and 27:
(1) a compact, portable, and concealable breath test
device that allows the first user to discretely, and
conveniently test and self-report sobriety to a
second user,
(2) having the first user proactively self-report sobriety
to a second user on a predetermined schedule, and
(3) using a user’s mobile phone to wirelessly receive
and display the data generated during a[n] alcohol
breath test, including image-related data, alcohol
content information, and data indicating whether a
self-administered breath test was taken in
accordance with the predetermined schedule.
Mot. 1, 9–10. The Motion does not state explicitly which limitations in the
substitute claims correspond to each of these allegedly distinguishable
aspects. Nevertheless, we are able to infer the most likely limitations and
conclude that Patent Owner has not shown that these limitations distinguish
from the prior art.
As to a “compact, portable, and concealable breath test device,”
Patent Owner appears to be referring to the language “a portable, cordless
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hand-held case having an inside, an outside, and one or more walls, wherein
the case is a size that can be discreetly concealed,” as recited in claim 23
(and similarly recited in claim 27). Patent Owner argues that this is a
distinction over the kiosk of Williams. Mot. 6 (“Williams is clearly not
portable, concealable, or hand-held like the claimed device.”), 10 (“Williams
describes a non-portable, point-in-time breathalyzer-based kiosk
network. . . . The system is large and bulky, non-portable, and cannot be
used discretely or at any location save for a kiosk on which the user is
authorized for use.”); see also Reply 11 (“[N]ot once does Mr. Wojcik
discuss the anxiety and embarrassment that understandably exists with
having to use dedicated public testing centers.”). Similarly, Patent Owner
argues that the device described in MEMS “was large, bulky, and
obtrusive.” Mot. 14; see also Reply 11 (“MEMS is a bulky device—far
from concealable.”).
Williams’s kiosk undoubtedly will not fit in a pocket or purse,
although the MEMS device might. Nevertheless, Ku describes a portable
digital camera with breath testing functionality. Ex. 1103 ¶¶ 21–22. As
explained in Section II.D.1 above, a device that is of “a size that can be
discreetly concealed” is one in which the size is unobtrusive such that it can
be carried by hand, or concealed in a handbag, purse, pocket, or the like.
We also explained that we discern no difference between a device that is
“portable” and “hand-held” and one that can be “discretely concealed.” In
any case, Ku at least suggests that its digital camera is of a size that could be
concealed in a handbag or purse. Ex. 1103 ¶¶ 2 (describing the background
of the invention as including digital cameras and PDAs), 21 (describing the
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preferred embodiment as “a personal portable digital image capturing
device” (emphasis added)). Moreover, Petitioner cites to other examples of
hand-held devices, such as the flip-style cellular phones of Hyde and LG
Breathalyzer and the iPhone breathalyzer of iBreath, each of which is
depicted as being of a size that could be concealed discreetly in a pocket or
purse. Opp. 22, 24; Ex. 1132; Ex. 1133.
As to Patent Owner’s argument that the prior art does not teach
reporting test results “to a second user on a predetermined schedule”
(Opp. 9), Patent Owner appears to refer to the language “sending an
electronic message to the first user that requests the first user to self-
administer a breath test performed in accordance with a predetermined
schedule,” recited in claim 23, “wherein the predetermined schedule is a
schedule set by the second user,” recited in claim 26, and the similar
language in claims 27 and 28. Patent Owner contends that Ku does not meet
these limitations: “Ku . . . says nothing [about] testing pursuant to a pre-
determined schedule.” Mot. 14.
As Petitioner points out (Opp. 23), Williams describes testing
pursuant to a schedule determined by an officer. Ex. 1105 ¶ 45 (“The officer
further inputs a breathalyzer testing schedule for the user 110.”). Patent
Owner admits that Williams teaches testing a user on a predetermined
schedule, stating that Williams’s “testing is involuntary pursuant to a testing
schedule established, for example, by the user’s probation officer.” Mot. 11
(emphasis added). As to “sending an electronic message to the first user that
requests the first user to self-administer a breath test” according to that
schedule, as recited in claim 23, Williams’s system “initiates an automated
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call to the registered user 110 notifying the user 110 of a pending
breathalyzer test date and time . . . .” Ex. 1105 ¶ 48. Thus, Williams teaches
these limitations.
As to Patent Owner’s argument that the prior art does not teach
“having the first user proactively self-report sobriety” (Mot. 9), Patent
Owner appears to be referring to the language “to discreetly, proactively and
periodically self-report alcohol usage,” in the preamble of claim 23 (and
similar language in the preamble of claim 27). Here, Patent Owner draws a
distinction between voluntary testing and testing that is compelled (e.g., at
the behest of law enforcement). For example Patent Owner argues that
“[t]he Williams reference does not describe any need or desire for a portable
testing device that allows a user to conveniently and proactively report
his/her sobriety. The described device is instead designed and intended to be
a tool for compelled alcohol testing.” Mot. 6; see also id. at 11 (“Williams
does not discuss or address proactive testing and reporting of sobriety by the
user. Instead, the testing is involuntary pursuant to a testing schedule
established, for example, by the user’s probation officer.”), 14 (“Ku says
nothing about proactively testing or self-reporting sobriety.”), 14 (The
MEMS device is “designed and intended to be a tool for compelled alcohol
testing in the context of law enforcement / criminal proceedings.”); Reply 11
(“Ku says nothing about sobriety monitoring, addiction treatment, or
proactively testing or self-reporting sobriety pursuant to a pre-determined
schedule.”).
As explained in Section II.D.2 above, we do not construe “proactively
and periodically self-report” to include a distinction between testing that is
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voluntary and testing that is at the behest of law enforcement. Rather, this
term means “self-report at regular intervals in anticipation of a need for a
measurement.” As explained above, Williams teaches a user self-
administering tests according to a schedule set by an officer. Ex. 1105 ¶ 45.
As to Patent Owner’s argument that the prior art does not teach “using
a user’s mobile phone to wirelessly receive and display the data generated
during a[n] alcohol breath test, including image-related data, alcohol content
information, and data indicating whether a self-administered breath test was
taken in accordance with the predetermined schedule” (Mot. 9–10), Patent
Owner appears to be referring to the language “transmitting to a mobile
phone, via the wireless transceiver, electronic image-related data derived
from the image of the user, the alcohol content, and data indicating whether
a self-administered breath test was taken in accordance with the schedule,”
recited in claim 23 (and similarly recited in claim 27). Patent Owner argues
that “Ku . . . does not describe using a user’s mobile phone to wirelessly
receive and display the data generated during an alcohol breath test.”
Mot. 14; see also Reply 11 (“Ku also does not describe using a user’s mobile
phone to wirelessly receive and display the data generated during an alcohol
breath test.”). Similarly, Patent Owner argues that MEMS does not
“describe any use of cellular, wi-fi, or other wireless technologies.”
Mot. 14.
Petitioner, however, points out (Opp. 23) that Ku describes
transmitting test results to “external equipment” that can include “a personal
computer, a printer, or a server like a hospital server, a police business
server, and so on.” Ex. 1103 ¶ 24. Williams describes sending test results to
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and viewing those results on a personal computer, which “may be
substituted with a conventionally known mobile device.” Ex. 1105 ¶¶ 42,
49–40. Thus, the prior art teaches this feature as well.
Patent Owner also argues that “[w]hile Ku describes including a
generic ‘sensor’ for detecting alcohol, it does not even describe how this is
accomplished, including even whether it includes a breathalyzer device.”
Mot. 14. Presumably, Patent Owner is arguing that Ku fails to teach “a
breath alcohol content sensor housed within the case for sensing breath
alcohol content of a user during a breath test,” as recited in claim 23 (and
similarly in claim 27).
According to Ku, “the external sensor 36 is used to measure the
alcohol content in the expired air from the mouth.” Ex. 1103 ¶ 23. Ku
further describes “a sensor like an alcohol tester,” wherein the “sensor is
installed on a personal portable digital image capturing device for
convenient measurement of physical quantities like alcohol concentration.”
Id. ¶ 31. Ku further explains that “[t]he sensor 12 can also be hidden in or
externally connected on the personal portable digital image capturing
device.” Id. ¶ 27. We find that Ku teaches “a breath alcohol content sensor
housed within the case for sensing breath alcohol content of a user during a
breath test.”
In sum, we find each limitation of claims 23 and 27 to be taught in
one or more of the references, although no single reference includes every
limitation. Patent Owner’s arguments amount to attacks on the references
individually. “Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
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combination of references.” In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)).
As to combining the references, Patent Owner argues that “none of
the relevant art is directed to the problem being addressed by the ’573
patent, i.e., providing a portable, discreet system for proactively self-
reporting sobriety pursuant to a predetermined schedule.” Mot. 15. Citing
Leo Pharmaceutical Products, Ltd. v. Rea, 726 F.3d 1346 (Fed. Cir. 2013),
Patent Owner argues that the invention of the substitute claims is the
recognition of a problem itself. Mot. 15–16. Specifically, Patent Owner
argues that “none of the cited art even recognizes the problem of allowing a
user to discreetly, conveniently, and proactively self-report sobriety,” and,
thus, the prior art “cannot suggest a solution to that unrecognized problem.”
Id. at 16. Patent Owner cites to Dr. Jaffe’s testimony, which largely repeats
Patent Owner’s arguments without citation to evidence. Ex. 2000 ¶ 48.
We are not persuaded. As explained above, Ku describes a discreet,
hand-held device that can be used to report breath alcohol test results. Ku
states that it can be used to report results to the police. Ex. 1103 ¶ 24.
Williams teaches that law enforcement could set schedules on which users
could proactively self-report. Ex. 1105 ¶¶ 45, 48, 49. Petitioner introduces
evidence (testimony of Mr. Wojcik) that it was industry practice for law
enforcement to process data in the manner described in Williams and that
similar data received from Ku’s device would have been processed in the
same way. Pet. 34–35; Ex. 1124 ¶ 67 (citing several examples of industry
practice). We find that testimony persuasive. Dr. Jaffe’s testimony to the
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contrary is unsupported by persuasive evidence and is entitled to little
weight.
Patent Owner further argues:
MEMS, Williams, Walter, Ku, and Freund are all focused on a
much different problem than that addressed by the Patent Owner,
i.e., each reference is directed to “catching” violators in the act,
e.g., drinking while on probation, driving while impaired,
recording the presence of alcohol at the time of a car accident,
etc. Ex. 2000, Jaffe Decl. at ¶48.a. The claimed invention,
however, focuses on a much different issue: providing a discrete,
compact, portable, and easily used single-user device for
allowing a recovering alcoholic to self-report sobriety pursuant
to a predetermined schedule.
Mot. 16 (emphasis added); see also id. at 11 (“Williams’ sole purpose is
‘catching’ alcohol use in the course of law enforcement monitoring. . . .
Because it is a tool intended for law enforcement monitoring of parolee’s
and other potential violators, Williams is unconcerned with allowing
discretion for the user or ‘on the go’ testing.”). However, the ’573 patent
lists law enforcement monitoring and prevention of impaired driving as two
express uses for the invention. Ex. 1102, 3:32–34 (“The present invention is
also useful for remotely monitoring sobriety in situations in which sobriety
has been required as a condition of probation or by courts.”), 9:16–30 (use of
the invention in a vehicle interlock system monitored by a supervisory
monitor). Thus, Patent Owner has not persuasively distinguished law
enforcement and vehicle interlock uses from the substitute claims.
As to Williams, Patent Owner argues that “the kiosk network of
Williams was simply not intended to be used by a single user. Rather, the
system actually required multiple users to even be feasible.” Mot. 15.
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Patent Owner does not explain persuasively how this distinguishes from the
proposed substitute claims (which, on their faces, do not preclude multi-user
systems).
Moreover, Patent Owner has not addressed adequately the additional
reasons to combine Ku, Williams, and MEMS detailed in the Petition.4
Specifically, as explained above, Petitioner introduced evidence that, to the
extent a straw is not disclosed explicitly in Ku, adding a straw such as taught
in MEMS would have been a combination of prior art elements according to
known methods to yield predictable results. Pet. 22–23 (citing Ex. 1124
¶ 62). Petitioner has also asserted, and we agree, that positioning the camera
lens to capture a picture of a user during a breath test (using a straw), as
taught in MEMS, would have been a matter of common sense. Id. at 25−26
(citing Ex. 1124 ¶ 62 (“The skilled artisan would be motivated to modify the
lens of Ku and position it so as to capture an image of a user during a breath
test because monitoring personnel wanted to know that the individual taking
the test is the individual being monitored”)). We find this evidence
persuasive.
In sum, Petitioner has introduced persuasive evidence that the prior art
teaches each limitation of the substitute claims and that a skilled artisan
would have had reason to combine the teachings of the prior art. Patent
Owner has not persuasively rebutted that evidence.

4 In its Opposition, Petitioner attempts to raise additional reasons to combine
the references by citing, without explanation, to several paragraphs in
Mr. Wojcik’s 2nd Declaration. Opp. 23. This is an improper incorporation
by reference of arguments from the declaration into the Opposition.
See 37 C.F.R. § 42.6(a)(3). We decline to consider these additional reasons.
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4. Objective Indicia of Nonobviousness
The Motion did not raise objective indicia of nonobviousness.
Nevertheless, Dr. Jaffe provided testimony (not referenced in the Motion)
that Patent Owner’s commercial product enjoyed commercial success,
fundamentally changed the field of sobriety monitoring, created a new
market, and solved a long-felt but unsolved need, namely “the ability to
reliably monitor alcohol consumption to help ensure abstinence without the
obtrusiveness, lack of comfort, high cost, and negative social stigma
attached to the state of the art before Soberlink’s claimed invention.”
Ex. 2000 ¶¶ 26–29, 49. Patent Owner belatedly cited to this testimony,
without meaningful elaboration, in the Reply. Reply 12.
Although Dr. Jaffe’s testimony on these points was not cited in the
Motion, Petitioner nevertheless responded that Patent Owner failed to prove
any alleged commercial success and failed to show any nexus between the
claimed invention and the objective indicia. Opp. 21 n.18.
We agree with Petitioner. “For objective evidence to be accorded
substantial weight, its proponent must establish a nexus between the
evidence and the merits of the claimed invention.” In re GPAC Inc., 57 F.3d
1573, 1580 (Fed. Cir. 1995) (citation omitted). In particular, the objective
indicia “must be tied to the novel elements of the claim at issue” and must
“‘be reasonably commensurate with the scope of the claims.’” Institut
Pasteur & Universite Pierre Et Marie Curie v. Focarino, 738 F.3d 1337,
1347 (Fed. Cir. 2013) (citation omitted) (quoting Rambus Inc. v. Rea, 731
F.3d 1248, 1257 (Fed. Cir. 2013)). Dr. Jaffe’s testimony is conclusory and
does not cite to evidence. Nor does it identify novel elements of the
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substitute claims to which the alleged objective indicia are tied.
Accordingly, we give Dr. Jaffe’s testimony little weight on this point.
In the Reply, Patent Owner also argues that a weblog, Medgadget,
stated that “a key problem with prior solutions was ‘the anxiety of random
testing’ and ‘having to visit a testing center.’” Reply 12 (quoting Ex. 2001,
Exhibit B, at 3). Patent Owner similarly fails to show, or even argue, a
nexus between this evidence and the alleged novel elements of the substitute
claims.
At the hearing, Patent Owner attempted to raise additional arguments
as to objective indicia based on the Medgadget weblog. Tr. 19:1–24:13.
However, we will not consider such arguments raised for the first time at the
hearing. See Dell, 2015-1513, slip op. at 13–14.
In sum, we find that Patent Owner has not shown a nexus between
alleged objective indicia of nonobviousness and alleged novel elements of
the substitute claims.

5. Patent Owner has not Shown that the Substitute Claims are
Nonobvious
In sum, as explained above, the prior art teaches each limitation of the
substitute claims. Petitioner has introduced evidence, with rational
underpinning, to show that a skilled artisan would have combined these
teachings to arrive at the substitute claims. Patent Owner, who bears the
burden, has not persuasively shown the contrary. Patent Owner also has not
shown any persuasive objective indicia of nonobviousness to overcome the
evidence of obviousness in the record.
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After weighing the evidence, we are not persuaded that Patent Owner
has met its burden to demonstrate that any of the substitute claims are
patentable over the prior art. For this additional reason, Patent Owner has
not established that it is entitled to the relief it seeks in its Motion, namely
entry of proposed substitute claims 23–28.

III. CONCLUSION
We grant Patent Owner’s request to cancel claims 6–8, 12–14, and
18–20.
Patent Owner has not shown support in the original disclosure of the
’573 patent for substitute claims 23–28. Patent Owner also has not shown
that claims 23–28 are patentable over the prior art of record. Accordingly,
we do not enter substitute claims 23–28.

IV. ORDER
For the reasons given, it is
ORDERED that Patent Owner’s motion to cancel claims 6–8, 12–14,
and 18–20 of U.S. Patent No. 8,381,573 B2 is granted;
FURTHER ORDERED that Patent Owner’s Motion to Amend U.S.
Patent No. 8,381,573 B2 to add claims 23–28 is denied; and
FURTHER ORDERED, because this is a final written decision, the
parties to this proceeding seeking judicial review of our Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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PETITIONER:

John Trembath
A. Justin Poplin
Hissan Anis
Lathrop & Gage LLP
JTrembath@lathropgage.com
jpoplin@lathropgage.com
hanis@lathropgage.com

PATENT OWNER:

Joseph Liu
Nathaniel L. Dilger
One LLP
jliu@onellp.com
ndilger@onellp.com