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

Patent Trial and Appeal Board

Jul 27, 2015

09855653 (P.T.A.B. Jul. 27, 2015)

Trials@uspto.gov Paper 27
571–272–7822 Entered: July 27, 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.

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

IPR2014-00725
Patent 6,831,556 B1

2
I. INTRODUCTION
A. Background
Digital Ally, Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
requesting an inter partes review of claims 1–25 of U.S. Patent No.
6,831,556 B1 (Ex. 1001, “the ’556 patent”). Utility Associates, Inc. (“Patent
Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”) to the
Petition. On October 1, 2014, we instituted an inter partes review of claims
1–7 and 9–25 (“the challenged claims”) of the ’556 patent on the following
grounds:
Claim(s) Statutory Basis Applied References(s)
1–4, 9, 13–18, and
20–25
35 U.S.C. § 102(e) U.S. Patent No. 6,246,320 B1
(Ex. 1004, “Monroe ’320”)
5, 6, and 12 35 U.S.C. § 103(a) Monroe ’320 and U.S. Patent
No. 6,389,340 B1 (Ex. 1005,
“Rayner”)
7 35 U.S.C. § 103(a) Monroe ’320, Rayner, and the
knowledge of one of ordinary
skill in the art
10 35 U.S.C. § 103(a) Monroe ’320 and U.S. Patent
No. 6,518,881 B2 (Ex. 1009,
“Monroe ’881”)
11 35 U.S.C. § 103(a) Monroe ’320 and the
knowledge of one of ordinary
skill in the art
19 35 U.S.C. § 103(a) Monroe ’320 and U.S. Patent
No. 6,833,865 B1 (Ex. 1008,
“Fuller”)
Paper 7 (“Dec. on Inst.”), 22.
After institution, Patent Owner filed a Response (Paper 13, “PO
Resp.”) to the Petition, and Petitioner filed a Reply (Paper 16, “Pet. Reply”)
to the Response. An oral hearing was held on June 9, 2015, and a transcript
of the hearing is included in the record. Paper 26 (“Tr.”).
IPR2014-00725
Patent 6,831,556 B1

3
We have jurisdiction under 35 U.S.C. § 6(c). We issue this Final
Written Decision pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For
the reasons set forth below, Petitioner has shown by a preponderance of the
evidence that claims 1–7, 9, 10, and 12–25 are unpatentable, but Petitioner
has not shown by a preponderance of the evidence that claim 11 is
unpatentable.
B. Related Proceedings
Petitioner indicates that the ’556 patent is the subject of the following
district court case: Digital Ally, Inc. v. Utility Associates, Inc., No. 13-cv-
2550-SAC/KGS (D. Kan.). Pet. 59.
C. The ’556 Patent
The ’556 patent relates to a surveillance system for capturing video,
audio, and data information. Ex. 1001, col. 1, ll. 54–56. In particular, the
’556 patent sought to improve existing surveillance systems by replacing the
videocassette recorder (“VCR”) with digital capture and storage technology.
Id. at col. 1, ll. 13–43. The ’556 patent describes a surveillance system that
captures information using, inter alia, video cameras, microphones, and
sensors. Id. at col. 2, ll. 49–56, col. 3, ll. 44–49, col. 3, l. 56–col. 4, l. 11.
Each of the captured video, audio, and data information can be converted to
digital format and then combined into one data stream using a multiplexer.
Id. at col. 3, ll. 34–37, col. 3, ll. 41–44, col. 4, ll. 28–38. The data stream is
stored in the surveillance system (id. at col. 4, ll. 36–38), and also can be
transmitted to another location (id. at col. 1, ll. 56–60, col. 5, ll. 45–53). For
example, the surveillance system may transmit the data stream from a
vehicle to a building. Id. The ’556 patent explains that the described
IPR2014-00725
Patent 6,831,556 B1

4
surveillance system can be used for police, fire, and rescue vehicles,
transportation vehicles, railroads, and airlines. Id. at col. 2, ll. 15–19.
D. Illustrative Claim
Claims 1, 14, 15, 17, 19, 20, and 22 are independent. Claim 1 is
reproduced below.
1. A surveillance system for an emergency response
vehicle, comprising:
a device for capturing at least two of video, audio, and
data information, said device provided in the emergency
response vehicle, and
a server for digitally integrating the captured information
into one data stream and storing the data stream in the
emergency response vehicle,
wherein said server is operative to transfer the data
stream from the emergency response vehicle to a second
location.
Id. at col. 8, ll. 42–52.
II. ANALYSIS
A. Level of Ordinary Skill in the Art
Petitioner argues that a person of ordinary skill in the art would have
“a [Bachelor of Science (“B.S.”)] in electrical engineering, computer
science, or related discipline and at least two years industry experience in the
field of signal processing system design, or equivalent experience and/or
education.” Ex. 1003 ¶ 39. Patent Owner argues that a person of ordinary
skill in the art would have “a high school or two-year technical degree with
training in evidence collection procedures and one year of experience in
video recording software and hardware relating specifically to the
emergency response vehicle industry.” PO Resp. 5–6.
Petitioner’s proposed level of ordinary skill in the art is consistent
IPR2014-00725
Patent 6,831,556 B1

5
with the types of problems encountered in the art and the prior art solutions
to those problems. See In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir.
1995). The ’556 patent explains that:
The VCR is a technical device nearing the end of its lifecycle;
therefore, no serious advancements are on the drawing board
that address the numerous technical issues incumbent to
videotape recording. On the other hand, digital capture and
storage is at the beginning of its technological curve, with rapid
development of new devices. The only available means to
ensure sufficient quality and control of video recording, access,
and storage is an increase in the number of well-trained persons
with those responsibilities.
Ex. 1001, col. 1, ll. 29–37 (emphasis added). In other words, the ’556 patent
focuses on transitioning surveillance systems from outdated VCR
technology to the rapidly developing technology of digital capture and
storage. Id. This is also reflected in the claims of the ’556 patent, which
recite “capturing,” “integrating,” and “storing” information. See, e.g., id. at
col. 8, ll. 44–49. Petitioner’s proposed level of ordinary skill in the art, thus,
appropriately includes an education in electrical engineering or computer
science and experience in signal processing, or other related disciplines. Ex.
1003 ¶ 39.
Patent Owner, on the other hand, seeks to limit the level of ordinary
skill in the art to those with training in evidence collection procedures and
experience specific to the emergency response vehicle industry. PO Resp.
5–6. However, collection of information for evidentiary purposes is just one
of several potential uses for the surveillance system described in the ‘556
patent. Ex. 1001, col. 2, ll. 13–22 (“The present invention simultaneously
captures and stores visual, audible, time, data, and motion-related activities
for safety, emergency, and evidentiary purposes . . . . The present invention
IPR2014-00725
Patent 6,831,556 B1

6
is not limited to these applications . . . .”) (emphasis added). Similarly, the
emergency response vehicle industry is only one of several industries that
may use the disclosed surveillance system. Id. at col. 2, ll. 15–19 (“The
present invention can be deployed on police, fire, and rescue vehicles and is
adaptable for use on transportation and industry vehicles, as well as having
rail and airline applications.”). We are not persuaded that the level of
ordinary skill in the art should be limited based on just some of the possible
uses for the surveillance system described in the ’556 patent.
Patent Owner argues that Petitioner’s proposed level of ordinary skill
in the art is improper because it requires a college degree when the inventor
of the ’556 patent does not have a college degree. PO Resp. 9. Petitioner’s
proposed level of ordinary skill includes someone with a bachelor’s degree,
but also includes those with “equivalent experience and/or education,” thus
indicating that sufficient experience can substitute for a college degree. Ex.
1003 ¶ 39. Consequently, we are not persuaded that Petitioner’s proposed
level of ordinary skill in the art excludes the inventor of the ’556 patent.
For the foregoing reasons, we determine that a person of ordinary skill
in the art would have had a B.S. in electrical engineering, computer science,
or related discipline and at least two years industry experience in the field of
signal processing system design, or equivalent experience and/or education.
B. Claim Construction
The claims of an unexpired patent are interpreted using the broadest
reasonable interpretation in light of the specification of the patent in which
they appear. 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, No.
2014-1301, slip op. at 16–19 (Fed. Cir. July 8, 2015) (“Congress implicitly
approved the broadest reasonable interpretation standard in enacting the
IPR2014-00725
Patent 6,831,556 B1

7
AIA,” and “the standard was properly adopted by PTO regulation.”). 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
specification. In re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir.
2007). An applicant may provide a different definition of the term in the
specification with reasonable clarity, deliberateness, and precision. In re
Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a
definition, limitations are not to be read into the claims from the
specification. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
1. vehicle
Petitioner proposes construing the term “vehicle” in the challenged
claims to mean a “machine, such as an automobile, aircraft, or train, that is
used to carry or transport persons or goods from a first location to a second
location.” Pet. 19. Patent Owner proposes construing the term “vehicle” to
mean “a land-based, first-responder emergency response vehicle, such as
police cars, ambulances, and the like.” PO Resp. 14. Notably, Patent
Owner’s proposed construction of the term “vehicle” is limited to a land-
based vehicle and, therefore, excludes an aircraft.
Petitioner submits evidence showing that the ordinary and customary
meaning of the term “vehicle” is any means of carrying or transporting
something and, thus, includes an aircraft. Pet. 19–20; Ex. 1007, 4. This
definition is consistent with the Specification of the ’556 patent, which
indicates that the disclosed surveillance system has “airline applications.”
Ex. 1001, col. 2, ll. 15–19. Patent Owner, on the other hand, identifies
portions of the Specification and prosecution history that describe a land-
based, first-responder vehicle as an example of a vehicle. PO Resp. 17–18;
IPR2014-00725
Patent 6,831,556 B1

8
Ex. 1001, col. 2, ll. 39–44 (“The embodiment disclosed herein is used in a
police car,” but “the present invention is not limited to this example.”)
(emphasis added); Ex. 1002, 59 (“The present invention is used for
emergency response vehicles, such as police cars, ambulances, and the
like.”) (emphasis added). But the Specification shows that the term
“vehicle” is broader. Namely, the ’556 patent states that the disclosed
surveillance system is “for use in public and commercial vehicles” and “can
be deployed on police, fire, and rescue vehicles and is adaptable for use on
transportation and industry vehicles, as well as having rail and airline
applications.” Ex. 1001, col. 1, ll. 7–10, col. 2, ll. 15–19. Therefore, we
decline to limit the term “vehicle” to particular examples in the Specification
or prosecution history. See Aria Diagnostics, Inc. v. Sequenom, Inc., 726
F.3d 1296, 1301 (Fed. Cir. 2013).
Patent Owner also argues that a person of ordinary skill in the art with
experience in evidence collection for emergency response vehicles would
understand the term “vehicle” to mean a land-based, first-responder vehicle.
PO Resp. 18–19 (citing Ex. 2004 ¶¶ 12, 14, 30, 32–34). Patent Owner’s
argument is not persuasive because, as discussed above, the level of ordinary
skill in the art is not limited to those with experience in evidence collection
for emergency response vehicles. See supra Section II.A. Further, Patent
Owner’s citation to the testimony of its declarant, Mr. John D’Andrea, is not
persuasive in light of the intrinsic evidence discussed above. See Intel Corp.
v. VIA Techs., Inc., 319 F.3d 1357, 1367 (Fed. Cir. 2003).
For the foregoing reasons, we determine that the term “vehicle”
includes an aircraft, but does not otherwise require express construction.
IPR2014-00725
Patent 6,831,556 B1

9
2. emergency response vehicle
Petitioner argues that the term “emergency response” is a statement of
intended use that is not entitled to patentable weight. Pet. 14. Petitioner
alternatively argues that the term “emergency response vehicle” includes an
aircraft. Id. Patent Owner argues that the term “emergency response” is not
a statement of intended use because it adds structure to the claims. Patent
Owner proposes construing the term “emergency response vehicle” exactly
the same as the term “vehicle,” namely as “a land-based, first-responder
emergency response vehicle, such as police cars, ambulances, and the like.”
PO Resp. 14.
Patent Owner identifies portions of the Specification and prosecution
history that describe a land-based, first-responder vehicle as an example of
an emergency response vehicle. PO Resp. 17–18; Ex. 1001, col. 2, ll. 39–
44; Ex. 1002, 59. But the Specification shows that the term “emergency
response vehicle” is broader. Namely, the ’556 patent states that “[t]he
present invention can be deployed on police, fire, and rescue vehicles.” Ex.
1001, col. 2, ll. 15–19. As such, the ’556 patent indicates that the disclosed
surveillance system can be deployed on any police, fire, or rescue vehicle,
not just those that are land-based or first-responders. Therefore, we decline
to limit the term “emergency response vehicle” to particular examples in the
Specification or prosecution history. See Aria, 726 F.3d at 1301. Patent
Owner’s citation to the testimony of Mr. D’Andrea is not persuasive in light
of the intrinsic evidence discussed above. See Intel, 319 F.3d at 1367.
For the foregoing reasons, we determine that the term “emergency
response vehicle” includes an aircraft, but does not otherwise require express
IPR2014-00725
Patent 6,831,556 B1

10
construction. We address below the parties’ arguments regarding whether
the term “emergency response” is a statement of intended use.
3. digitally integrating the captured information into one
data stream
Petitioner proposes construing the phrase “digitally integrating the
captured information into one data stream” to mean “combining information
output from multiple sources into a single data stream, such that the
information can be extracted from the one data stream to obtain exactly the
same information prior to combining into the one data stream.” Pet. 21.
Patent Owner proposes construing the term “integrating” to mean
“combining data in digital form so that it is not superimposed, mixed, laid
over, or layered.” PO Resp. 37.
The parties agree that the term “integrating” refers to “combining.”
Pet. 21; PO Resp. 37. This is consistent with the Specification of the ’556
patent, which states: “The captured data from the sixteen inputs . . . are . . .
combined with the video and audio information . . . to create aggregated
documentation that is sent to a storage unit 270 in one data stream.” Ex.
1001, col. 4, ll. 28–34 (emphasis added). The parties also agree that the term
“integrating” does not include superimposing, mixing, laying over, or
layering. Pet. 21–22; PO Resp. 36–37; Ex. 1003 ¶ 49; Tr. 9:1–9. This is
consistent with statements made by the patentee during prosecution of the
application that issued as the ’556 patent. Ex. 1002, 129–30.
Petitioner argues that the phrase “the captured information” means
“information output from multiple sources.” Pet. 21. The phrase “the
captured information” refers to information recited previously in the claims.
See, e.g., Ex. 1001, col. 8, ll. 44–47. Petitioner’s proposed construction
improperly overlooks that recited antecedent basis. Thus, we are not
IPR2014-00725
Patent 6,831,556 B1

11
persuaded by Petitioner’s argument, and we determine the phrase “the
captured information” does not require express construction.
Petitioner also proposes inserting into the claims the requirement that
“the information can be extracted from the one data stream to obtain exactly
the same information prior to combining into the one data stream.” Pet. 21.
Petitioner relies on the testimony of its declarant, Dr. Schuyler
Quackenbush, that one of ordinary skill in the art would understand the
claim language to include this requirement. Id. at 22–23 (citing Ex. 1003 ¶¶
47, 48, 50–55). Dr. Quackenbush testifies that this portion of Petitioner’s
proposed construction reflects the patentee’s argument during prosecution
that “integrating” does not include superimposing, mixing, laying over, or
layering. Ex. 1003 ¶¶ 51–52. In light of the parties’ agreement that
“integrating” does not include superimposing, mixing, laying over, or
layering, we determine that the additional requirement proposed by
Petitioner is unnecessary.
For the foregoing reasons, we construe the term “integrating” to mean
“combining.” Further, we determine that the term “integrating” does not
include superimposing, mixing, laying over, or layering.
4. Means-Plus-Function Limitations
In the Decision on Institution, we determined that several limitations
in the challenged claims are means-plus-function limitations to be construed
in accordance with 35 U.S.C. § 112, ¶ 6, and we determined the recited
function and corresponding structure for those limitations. Dec. on Inst. 10–
13. The parties do not dispute those constructions. We see no reason now to
deviate from the constructions in the Decision on Institution, and, therefore,
we adopt the claim constructions below.
IPR2014-00725
Patent 6,831,556 B1

12
Claim Term Recited Function Corresponding Structure
means for capturing
at least two of
video, audio, and
data information
(claims 14 and 15)
capturing at least two
of video, audio, and
data information
at least two of a camera, a
microphone, and a sensor
(Ex. 1001, col. 2, ll. 49–63,
col. 3, ll. 41–52, col. 4, ll.
1–11)
means for storing
the information in
the emergency
response vehicle
(claims 14 and 15)
storing the information
in the emergency
response vehicle
a hard drive, a flash
memory, or a solid state
memory (Ex. 1001, col. 1,
ll. 50–53)
means for digitally
integrating the
information into one
data stream
(claim 14)
digitally integrating the
information into one
data stream
a multiplexer/CODEC or a
CPU (Ex. 1001, col. 4, ll.
28–46)
means for
integrating the
information into one
data stream
(claim 15)
integrating the
information into one
data stream
a multiplexer/CODEC or a
CPU (Ex. 1001, col. 4, ll.
28–46)
means for
transmitting the one
data stream from the
emergency response
vehicle to a remote
location
(claims 14 and 15)
transmitting the one
data stream from the
emergency response
vehicle to a remote
location
a wireless modem, a cellular
device, a satellite device, a
microwave device, or an
Ethernet controller (Ex.
1001, col. 4, ll. 12–17, col.
6, ll. 4–11)
means for
controlling said
digital video camera
from the remote
location
(claim 15)
controlling said digital
video camera from the
remote location
a camera controller and a
wireless transmitter/receiver
(Ex. 1001, col. 5, ll. 58–64,
Fig. 2)
means for
automatically
controlling said
digital video camera
to track movements
automatically
controlling said digital
video camera to track
movements of an
object
an automatic tracking
camera controller (Ex. 1001,
col. 4, ll. 57–59, Fig. 2)
IPR2014-00725
Patent 6,831,556 B1

13
Claim Term Recited Function Corresponding Structure
of an object
(claim 16)
C. Anticipation of Claims 1–4, 9, 13–18, and 20–25
Petitioner argues that claims 1–4, 9, 13–18, and 20–25 are
unpatentable under 35 U.S.C. § 102(e) as anticipated by Monroe ’320. Pet.
12. A claim is anticipated if each limitation of the claim is disclosed in a
single prior art reference arranged as in the claim. Net MoneyIN, Inc. v.
VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). Petitioner provides
detailed explanations and evidence showing how Monroe ’320 discloses
each claim limitation as arranged in the claims. Pet. 30–38, 42–43, 45–51,
53–55. We have considered the parties’ arguments and supporting evidence,
and we determine that Petitioner has shown by a preponderance of the
evidence that claims 1–4, 9, 13–18, and 20–25 are unpatentable as
anticipated by Monroe ’320. We address below Patent Owner’s arguments.
1. Monroe ’320
Monroe ’320 discloses a surveillance system for aircraft, ships, and
land vehicles. Ex. 1004, col. 1, ll. 27–34, col. 1, ll. 60–65. The surveillance
system in Monroe ’320 includes video cameras, microphones, and sensors
for capturing video, audio, and data information, respectively. Id. at col. 22,
ll. 4–10, col. 22, ll. 40–44, col. 22, ll. 48–51, Fig. 15. Monroe ’320 discloses
a digital multiplexer network that combines the video, audio, and data into a
combined, comprehensive output signal. Id. at col. 22, ll. 57–64, col. 23, ll.
15–17, Fig. 15. Monroe ’320 discloses storing the combined,
comprehensive output signal on a recorder in the vehicle and transmitting
the combined, comprehensive output signal to a ground station. Id. at col.
23, ll. 10–12, col. 23, ll. 17–22.
IPR2014-00725
Patent 6,831,556 B1

14
2. “Emergency Response Vehicle”
Independent claims 1, 14, and 15 recite a surveillance system for an
emergency response vehicle and recite that certain parts of the system are in
the emergency response vehicle. See, e.g., Ex. 1001, col. 8, ll. 42–52.
Monroe ’320 discloses a surveillance system for aircraft, ships, and land
vehicles that are used primarily for commercial purposes. Ex. 1004, col. 1,
ll. 27–34, col. 1, ll. 60–65. Petitioner argues that “[t]he fact that the claimed
surveillance system is used in an emergency response vehicle . . . versus a
commercial vehicle does not change the structure of the claimed surveillance
system or vehicle” and that “placing the structure in a different field of use
or environment also does not differentiate over the prior art.” Pet. 15–16.
“It is well settled that the recitation of a new intended use for an old
product does not make a claim to that old product patentable.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). As such, if Monroe ’320
discloses the same surveillance system recited in claims 1, 14, and 15 of the
’556 patent, then simply adding a different intended use for that system does
not make claims 1, 14, and 15 patentable. Id. For the reasons discussed
herein, Petitioner has shown by a preponderance of the evidence that
Monroe ’320 discloses the same surveillance system recited in claims 1, 14,
and 15. Therefore, the inclusion of a different intended use for the system,
namely that it is used for emergency response purposes, rather than
commercial purposes, does not make claims 1, 14, and 15 patentable over
Monroe ’320. Id. (“Schreiber’s contention that his structure will be used to
dispense popcorn does not have patentable weight if the structure is already
known, regardless of whether it has ever been used in any way in connection
with popcorn.”).
IPR2014-00725
Patent 6,831,556 B1

15
Patent Owner argues that the term “emergency response” is more than
a statement of intended use. PO Resp. 14–17. Specifically, Patent Owner
argues that the term “emergency response” provides structure to the claims
by confirming that the claims: 1) relate to evidence collection; and 2) relate
to land-based, first-responder vehicles.
1
Id. at 16 (citing Ex. 2004 ¶¶ 13,
18). Patent Owner, however, does not explain specifically why the term
“emergency response” provides structure related to evidence collection. PO
Resp. 16–17. In fact, the ’556 patent expressly differentiates between
“emergency” and “evidentiary” purposes. Ex. 1001, col. 2, ll. 13–15. Thus,
we are not persuaded that the term “emergency response” confirms that the
claims relate to evidence collection or provides structure related to evidence
collection. Also, for the reasons discussed above, we are not persuaded that
the term “emergency response” limits the claims to a land-based, first-
responder vehicle.
2
See supra Section II.B.2.

1
In the Preliminary Response, Patent Owner argued that the term
“emergency response” is not a statement of intended use because it is recited
in the body of the claims and because it was added to the claims during
prosecution to distinguish the prior art. Prelim. Resp. 8–9. For the reasons
set forth in our Decision on Institution, Patent Owner’s arguments are not
persuasive. Dec. on Inst. 5–6.
2
Even if the term “emergency response” did limit the claims to a land-
based, first-responder vehicle, Petitioner still shows by a preponderance of
the evidence that the challenged claims are unpatentable. We instituted an
inter partes review on the ground that claim 10 is unpatentable as obvious
over Monroe ʼ320 and Monroe ʼ881. Dec. on Inst. 22. As part of that
ground, Petitioner argues, and Patent Owner does not dispute, that it would
have been obvious to incorporate the surveillance system of Monroe ’320
into the police car in Monroe ’881, which is a land-based, first-responder
vehicle. Pet. 43, 56–58.
IPR2014-00725
Patent 6,831,556 B1

16
Patent Owner also argues that Schreiber requires Petitioner to show
that Monroe ’320 discloses “a vehicle capable of being an emergency
response vehicle.” PO Resp. 16. We do not agree with Patent Owner’s
interpretation of Schreiber. In Schreiber, the Federal Circuit addressed a
statement of intended use (128 F.3d at 1477), and also addressed functional
limitations in the claims (id. at 1478–79). In addressing those functional
limitations, the Federal Circuit concluded there was sufficient evidence that
the structure disclosed in the prior art was capable of performing the recited
functions. Id. Here, Patent Owner does not argue specifically that the term
“emergency response” is a functional limitation, and we are not persuaded
that it is one. Specifically, responding to an emergency is not something that
the vehicle itself does as part of the claims; rather, the vehicle is intended to
be used to respond to an emergency. See In re Swinehart, 439 F.2d 210, 212
(CCPA 1971) (“We take the characterization ‘functional’ . . . to indicate
nothing more than the fact that an attempt is being made to define something
. . . by what it does rather than by what it is (as evidenced by specific
structure or material, for example).”).
Moreover, even if we agreed with Patent Owner’s interpretation of
Schreiber, Petitioner has shown by a preponderance of the evidence that
Monroe ’320 discloses a vehicle that is capable of being an emergency
response vehicle. As discussed above, Monroe ’320 discloses an aircraft.
Ex. 1004, col. 1, ll. 27–34. Petitioner submits the following evidence
showing that an aircraft is capable of being used as an ambulance:
Transportation by aircraft of sick or injured persons may have
originated during World War I when wounded were transported
from battle fronts to field hospitals in an open cockpit biplane.
. . . Many airplane/air ambulance flights are conducted with
IPR2014-00725
Patent 6,831,556 B1

17
small, nondedicated aircraft operated by . . . on-demand air
carriers. There is also a contingent of private and public service
aircraft operators conducting air ambulance flights.
Pet. 20; Ex. 1006, 2–3. Further, Patent Owner’s declarant, Mr. Jon
McChristian, acknowledges that an aircraft can be used as an emergency
response vehicle. Pet. Reply 6; Ex. 1012, 50:4–51:11. Patent Owner’s
reliance on the testimony of Mr. D’Andrea is not persuasive because he only
testifies that airplanes are “not typically used” to respond to emergencies; he
does not testify that airplanes are not capable of being used to respond to
emergencies. PO Resp. 16; Ex. 2004 ¶ 14; Tr. 57:17–58:13, 59:11–59:25.
3. “Capturing” Limitation
The challenged independent claims recite capturing at least two of
video, audio, and data information. See, e.g., Ex. 1001, col. 8, ll. 44–46.
The surveillance system in Monroe ’320 includes video cameras,
microphones, and sensors for capturing video, audio, and data information,
respectively. Pet. 31–33; Ex. 1004, col. 22, ll. 4–10, col. 22, ll. 40–44, col.
22, ll. 48–51, Fig. 15. Patent Owner does not dispute that Monroe ’320
discloses this limitation of the challenged claims.
4. “Integrating” Limitation
The challenged independent claims recite integrating the captured
information into one data stream. See, e.g., Ex. 1001, col. 8, ll. 47–48. The
’556 patent describes a digital multiplexer for integrating the captured video,
audio, and data signals into a “composite compressed stream.” Ex. 1001,
col. 4, ll. 28–38. Similarly, Monroe ’320 discloses a digital multiplexer
network that combines the captured video, audio, and data signals into “a
combined, comprehensive output signal.” Pet. 33–35; Ex. 1004, col. 22, ll.
57–64, col. 23, ll. 15–17, Fig. 15.
IPR2014-00725
Patent 6,831,556 B1

18
Patent Owner argues that, in Monroe ’320, the captured information
“may be displayed, recorded, and/or transmitted in either a split screen or
serial fashion.” PO Resp. 35 (original emphasis) (quoting Ex. 1004, col. 6,
ll. 61–67). According to Patent Owner, one of ordinary skill in the art would
understand the split or serial screen in Monroe ’320 to disclose mixing or
layering the captured information, rather than integrating. PO Resp. 36
(citing Ex. 2003 ¶¶ 21–27). Patent Owner’s argument is not persuasive
because the split or serial screen is just one of several embodiments
disclosed in Monroe ’320. For example, Monroe ’320 also discloses an
embodiment in which the captured information may be fed simultaneously
“to a plurality of distinct monitors,” instead of a split or serial screen. Pet.
Reply 12; Ex. 1004, col. 20, ll. 36–38, Fig. 11; Ex. 1012, 100:5–24. Thus,
the premise of Patent Owner’s argument—that Monroe ’320 requires a split
or serial screen—is not supported by the disclosure of Monroe ’320. Patent
Owner’s argument also is not persuasive because Patent Owner does not
provide a specific explanation or identify specific evidence showing that the
use of a split or serial screen means that the captured information is mixed or
layered, rather than integrated. See Pet. Reply 13; PO Resp. 35–38; Ex.
2003 ¶¶ 21–27, 41–44, 53–58; Ex. 2004 ¶ 32.
Patent Owner argues that Monroe ’320 uses an analog multiplexer
and, thus, performs mixing rather than integrating. See PO Resp. 44 (“[O]ne
of ordinary skill in the art would view the multimedia multiplexer as
necessarily performing an analog mixing (multiplexing) of images, audio,
and/or data to create a single composite viewable image (e.g., serial or split-
screen).”). Patent Owner’s argument is not persuasive because Monroe ’320
expressly discloses using a digital multiplexer. Ex. 1004, col. 23, ll. 15–17.
IPR2014-00725
Patent 6,831,556 B1

19
Patent Owner also argues that the split or serial screen in Monroe ’320
does not integrate all of the captured information because: 1) the split screen
“degrades” the captured information; and 2) the serial screen “removes”
some of the captured information. PO Resp. 38 (citing Ex. 2003 ¶¶ 21–27,
41–44, 53–58). In addition to the reasons discussed above, Patent Owner’s
argument is not persuasive because the challenged claims do not require that
the captured information maintain a certain quality, and, thus, any alleged
degradation caused by a split screen would not distinguish Monroe ’320
from the challenged claims. Also, Patent Owner acknowledges that a serial
screen does not actually remove captured information, but, rather, simply
captures less information initially. PO Resp. 35 (“[O]nce the camera input is
switched from a first camera to a second camera, information is temporarily
not captured from the first camera; and will not again be captured from the
first camera until the switch device again captures data from that first
camera.”).
5. “Storing” Limitation
The challenged independent claims recite either storing the captured
information or storing the integrated data stream. See, e.g., Ex. 1001, col. 8,
ll. 47–49. Monroe ’320 discloses storing the combined, comprehensive
output signal, including “all video, audio, and digital data,” on a recorder in
the vehicle. Pet. 33–35; Ex. 1004, col. 23, ll. 10–12. Patent Owner argues
that “Monroe ’320 does not store all of the audio, video, and data that it
captures” because it uses a serial or split screen. PO Resp. 40–41. For the
reasons discussed above with respect to the “integrating” limitation, Patent
Owner’s argument is not persuasive. See supra Section II.C.4.
IPR2014-00725
Patent 6,831,556 B1

20
Patent Owner also argues that Monroe ’320 does not store all the
captured information because it discloses a controller for selecting a subset
of the captured data for recording. PO Resp. 41–43 (citing Ex. 1004, col.
23, ll. 29–34). Patent Owner’s argument is not persuasive. The portion of
Monroe ’320 cited by Patent Owner relates to controlling the information
displayed on a monitor, not the information stored on the recorder. Ex.
1004, col. 23, ll. 29–34. In addition, the portion of Monroe ’320 cited by
Patent Owner indicates that the controller permits access to “any single
sensor signal, or any combination.” Id. Because “any combination” of
sensor signals includes all of the sensor signals, Monroe ’320 discloses that
the controller permits access to all of the sensor signals.
6. “Transmitting” Limitation
Independent claims 1, 14, 15, and 19, and dependent claim 18 recite
transmitting or transferring the data stream to another location.
3
See, e.g.,
Ex. 1001, col. 8, ll. 50–52. Monroe ’320 discloses transmitting or
transferring the combined, comprehensive output signal from the aircraft to a
ground station. Pet. 35–36; Ex. 1004, col. 23, ll. 17–22.
Patent Owner argues that claims 1, 14, 15, 18, and 19 require
transmitting the data stream from storage to a second location. PO Resp.
26–31. Patent Owner’s argument is not persuasive. Claim 14, for example,
recites “storing the information in the emergency response vehicle” and

3
Patent Owner argues that the term “transfer” in claim 1 should be
construed to require deletion of the information from the first location. PO
Resp. 31, n.10 (citing Ex. 2003 ¶¶ 78–81). Patent Owner’s argument is not
persuasive because it is premised on the claims being limited to evidence
preservation (see id.), which is not supported by the claim language, the
Specification, or the prosecution history.
IPR2014-00725
Patent 6,831,556 B1

21
“transmitting the one data stream from the emergency response vehicle to a
remote location.” Ex. 1001, col. 9, ll. 58–63. Thus, the claim language only
specifies that the data stream is transmitted from the vehicle to a remote
location; it does not require transmitting the data stream from storage in the
vehicle to a remote location.
This plain reading of the claim language is consistent with the
Specification of the ’556 patent. Figure 2 of the ’556 patent, for example,
shows CPU 260 sending the data stream to storage unit 270 for storage and
separately sending the data stream to transmission unit 280 for transmission
to second location 210. Id. at Fig. 2. Thus, according to Figure 2, the data
stream can be transmitted from the vehicle to a second location without
having to access the storage unit. The ’556 patent also explains that the
transmission unit can provide a “live transmission” of information from the
vehicle to a second location. Id. at col. 5, ll. 45–50. A live transmission
indicates that the information is not being transmitted from storage. Further,
the prosecution history indicates that the patentee temporarily inserted
language into the claims that required transmission of “stored information,”
but subsequently removed that language from the claims. Compare Ex.
1002, 65, with Ex. 1002, 87.
Patent Owner argues alternatively that, even if the challenged claims
do not require that the data stream is transmitted from storage to another
location, the claims nonetheless require that the stored data be the same as
the transmitted data. PO Resp. 31–34. Patent Owner points out that Monroe
’320 incorporates by reference U.S. Patent No. 6,366,311 B1 (Ex. 2005,
“Monroe ’311”). PO Resp. 31. Monroe ’311 discloses that “the crew could
train the monitor and the transceiver on the landing control camera for as
IPR2014-00725
Patent 6,831,556 B1

22
long as necessary without interfering with the recorded sequenced
information.” Ex. 2005, col. 8, ll. 9–17. Patent Owner argues that Monroe
’320, when read in light of Monroe ’311, discloses that the data sent to the
recorder for storage is different than the data sent to the transceiver for
transmission to the ground station. PO Resp. 33–34.
Patent Owner’s argument is not persuasive. Monroe ’320 discloses
that “a master multiplexer subsystem . . . produc[es] a combined,
comprehensive output signal, as selected, on each of lines 231, 233, and
235.” Pet. 33; Ex. 1004, col. 22, ll. 57–64. Thus, Monroe ’320 discloses
that the same combined, comprehensive output signal is sent to the recorder
(via line 233) and the transceiver (via line 235).
4
Id. at Fig. 15. Monroe
’320 also discloses that the same combined, comprehensive output signal is
transmitted to the ground or base station (via line 246). Id. at col. 23, ll. 17–
22, Fig. 15.
The portion of Monroe ’311 cited by Patent Owner describes a feature
that “permits the flight crew to override the automatic switching sequence.”
Ex. 2005, col. 8, ll. 9–17. This “override” feature is used in connection with
the “simple switching scheme” in Figure 3 of Monroe ’311, where each of
the plurality of images is sequentially and serially introduced into the
monitor, transceiver, and recorder. Id. at col. 7, l. 66–col. 8, l. 3. The
disclosure in Monroe ’320 relied on by Petitioner, however, does not employ

4
During the oral hearing, Patent Owner argued that this portion of Monroe
’320 was raised improperly by Petitioner for the first time in the Reply. Tr.
52:12–17. Patent Owner’s argument is not persuasive. The above-
referenced disclosure in Monroe ’320 was identified initially in the Petition
(see Pet. 33, 35), and Petitioner simply relied on that disclosure again in the
Reply to respond to an argument made by Patent Owner in the Response.
IPR2014-00725
Patent 6,831,556 B1

23
the same simple switching scheme as Figure 3 of Monroe ’311. Rather, as
discussed above, Monroe ’320 discloses combining all the images into a
single data signal and then introducing the combined signal to the monitor,
transceiver, and recorder. Ex. 1004, col. 22, ll. 57–64, Fig. 15. Thus, we are
not persuaded that the cited “override” feature from Monroe ’311 is relevant
to, or otherwise included in, the cited disclosure of Monroe ’320. Further,
even if the override feature from Monroe ’311 was relevant to the cited
disclosure in Monroe ’320, we still are not persuaded by Patent Owner’s
argument. Although the flight crew may be able to change the information
sent to the transceiver, Monroe ’320 expressly discloses that, absent such a
change by the flight crew, the same information is sent to both the recorder
and the transceiver. Id. at col. 22, ll. 57–64.
D. Obviousness of Claims 5–7, 10–12, and 19
Petitioner argues that claims 5, 6, and 12 are obvious over Monroe
ʼ320 and Rayner; claim 7 is obvious over Monroe ʼ320, Rayner, and the
knowledge of one of ordinary skill in the art; claim 10 is obvious over
Monroe ʼ320 and Monroe ʼ881; claim 11 is obvious over Monroe ʼ320 and
the knowledge of one of ordinary skill in the art; and claim 19 is obvious
over Monroe ʼ320 and Fuller. Pet. 12–13. A claim is unpatentable as
obvious 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. KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations,
including: (1) the scope and content of the prior art; (2) any differences
IPR2014-00725
Patent 6,831,556 B1

24
between the claimed subject matter and the prior art; (3) the level of ordinary
skill in the art; and (4) any secondary considerations. Graham v. John Deere
Co. of Kansas City, 383 U.S. 1, 17–18 (1966).
With respect to claims 5–7, 10, 12, and 19, Petitioner provides
detailed explanations showing how the prior art references teach the
limitations of the challenged claims, the knowledge of one of ordinary skill
in the art at the time of the invention,
5
and articulated reasons why it would
have been obvious to combine the cited teachings. Pet. 38–41, 43–45, 51–
53, 56–58. We have considered the parties’ arguments and supporting
evidence, and we determine that Petitioner has shown by a preponderance of
the evidence that claims 5–7, 10, 12, and 19 are unpatentable. Petitioner,
however, has not shown by a preponderance of the evidence that claim 11 is
unpatentable. We address below Patent Owner’s arguments.
1. Analogous Art
Patent Owner argues that Monroe ’320 is not analogous art and, thus,
cannot be used in combination with other references to show that claims 5–
7, 10–12, and 19 are unpatentable as obvious. PO Resp. 21–25 (citing In re
Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011)). We disagree. Petitioner has
shown that the ’556 patent and Monroe ’320 relate to the same field of
endeavor, namely surveillance systems for capturing video, audio, and data
information. Pet. Reply 5; Ex. 1001, col. 1, ll. 7–10 (“[T]he present
invention is directed to a system for use in public and commercial vehicles
to capture video, audio, and related information.”); Ex. 1004, col. 1, ll. 27–
33 (“The subject invention is generally related to safety and surveillance

5
We may consider the knowledge possessed by a person having ordinary
skill in the art when analyzing obviousness under 35 U.S.C. § 103(a). See
KSR, 550 U.S. at 418.
IPR2014-00725
Patent 6,831,556 B1

25
equipment for aircraft, ships and other commercial vehicles and is
specifically directed to a comprehensive multi-media security surveillance
system.”). In addition, Petitioner has shown that the ’556 patent and Monroe
’320 sought to address the same problem, namely improving the ability of
surveillance systems to store and provide access to captured video, audio,
and data. Pet. Reply 5; Ex. 1001, col. 7, ll. 46–51 (“[T]he system of the
present invention is easier to operate and maintain, reduces the risk of data
loss, and overcomes data retrieval problems with current surveillance
systems.”); Ex. 1004, col. 8, ll. 33–39 (“It is a primary object and feature of
this invention to provide a comprehensive surveillance and monitoring
system . . . whereby communication of all data including live video and/or
audio transmissions can be transmitted.”).
Patent Owner argues that the field of endeavor and problem sought to
be solved by the ʼ556 patent are “specifically related to evidence
preservation,” and that Monroe ’320 is not related to evidence preservation.
PO Resp. 22 (citing Ex. 2004 ¶¶ 29–34). The claims of the ’556 patent do
not mention evidence preservation, and the Specification indicates the
disclosed system can be used for different purposes, including safety,
emergency, and evidentiary purposes. Ex. 1001, col. 2, ll. 13–15.
Therefore, we are not persuaded that the field of endeavor and problem to be
solved by the ’556 patent are limited to evidence preservation.
Patent Owner also argues that the field of endeavor and problem
sought to be solved by the ʼ556 patent are related to land-based, first-
responder vehicles, whereas Monroe ’320 relates to commercial aircraft. PO
Resp. 11–13. As discussed above, the claims of the ’556 patent are not
limited to land-based, first-responder vehicles (see supra Sections II.B.1.,
IPR2014-00725
Patent 6,831,556 B1

26
II.B.2.), and the Specification indicates that the disclosed system can be used
in “commercial vehicles” (Ex. 1001, col. 1, ll. 7–10) and has “airline
applications” (id. at col. 2, ll. 15–22). Therefore, we are not persuaded that
the field of endeavor and problem sought to be solved by the ʼ556 patent are
limited to land-based, first-responder vehicles.
Patent Owner also argues that Monroe ’320 is not analogous art
because the Examiner who handled prosecution of the application that issued
as the ’556 patent was aware of Monroe ’320, but “did not cite [the] Monroe
’320 patent as relevant.” PO Resp. 22–25. Patent Owner’s argument is not
persuasive. Monroe ’320 is not listed as considered by the Examiner on the
face of the ’556 patent, and Patent Owner does not identify specific evidence
showing that the Examiner actually was aware of Monroe ’320. Patent
Owner also acknowledges that “it may be debated whether the Monroe ’320
patent was known to the Examiner.” Id. at 22–23. Moreover, Patent Owner
does not provide a persuasive reason why the scope of analogous art under
35 U.S.C. § 103(a) should be limited to only those references that the
Examiner applied during prosecution.
2. Secondary Considerations
Patent Owner submits a license agreement (Ex. 2016)
6
as evidence of

6
Patent Owner filed an unredacted license agreement as Ex. 2011, on
January 19, 2015, for the Board and parties only. We granted Patent
Owner’s Motion to Seal Ex. 2011. See Paper 15. Per our request, Patent
Owner filed a redacted license agreement on February 13, 2015, but
improperly labeled that new exhibit also as Ex. 2011. We have renumbered
the redacted license agreement sua sponte as Ex. 2016. We do not rely on
Ex. 2011 in this Decision, but the parties are reminded that confidential
information that is subject to a protective order ordinarily becomes public 45
days after final judgment. Office Patent Trial Practice Guide, 77 Fed. Reg.
48,756, 48,761 (Aug. 14, 2012). After final judgment, a party may file a
IPR2014-00725
Patent 6,831,556 B1

27
non-obviousness. PO Resp. 45. In particular, Patent Owner argues that “a
license was granted under the ’556 Patent by Patent Owner’s predecessor in
interest to a well-known telecommunications manufacturer” and that “such a
sophisticated licensee . . . would not pay such a significant sum if the
inventions were not an important advance in the industry.” Id. (original
emphasis). Petitioner argues that the license submitted by Patent Owner
covers a variety of intellectual property rights, and Patent Owner does not
establish any nexus to the ’556 patent. Pet. Reply 15. We agree that Patent
Owner fails to demonstrate the necessary nexus between the challenged
claims and the alleged evidence of commercial success.
The mere existence of a license, without showing a nexus to the
merits of the invention, is insufficient to overcome a conclusion of
obviousness. In re Antor Media Corp., 689 F.3d 1282, 1293–94 (Fed. Cir.
2012). Here, Patent Owner identifies the existence of a license covering a
variety of intellectual property rights, including the ’556 patent, and simply
speculates that the ’556 patent was important to the licensee. PO Resp. 45.
That alone is insufficient to overcome the evidence of obviousness set forth
by Petitioner. Antor Media, 689 F.3d at 1293–94.
3. Claim 11
Claim 11 recites “[t]he surveillance system according to claim 3,
wherein the multiplexer compresses the captured information.” Ex. 1001,
col. 9, ll. 44–45 (emphasis added). Monroe ’320 discloses a multiplexer that
may “perform decompression functions for compressed command streams
and compressed audio or video.” Ex. 1004, col. 22, ll. 64–66 (emphasis

motion to expunge confidential information from the record prior to the
information becoming public. 37 C.F.R. § 42.56.
IPR2014-00725
Patent 6,831,556 B1

28
added). Petitioner argues, based on Dr. Quackenbush’s testimony, that it
would have been obvious for the multiplexer in Monroe ’320 to also perform
compression (in addition to decompression). Pet. 44 (citing Ex. 1003 ¶¶ 63–
65). Dr. Quackenbush testifies that: “To decompress the information, the
information must first be compressed. If the multiplexer is performing the
decompression, then it would have been obvious for the multiplexer to
perform the compression.” Ex. 1003 ¶ 64.
We are not persuaded by Dr. Quackenbush’s testimony. Although Dr.
Quackenbush may be correct that information must be compressed before it
is decompressed, Dr. Quackenbush does not provide an articulated reason
why it would have been obvious for the multiplexer in Monroe ’320 to
perform that compression. Tr. 23:23–25:4; Ex. 1003 ¶¶ 63–65. As Patent
Owner points out, Monroe ’320 teaches that a separate compressor is used to
compress an audio or video signal before that signal is sent to the
multiplexer. PO Resp. 44; Ex. 1004, col. 21, ll. 62–66, col. 22, ll. 4–10,
Figs. 14a, 14b, 14c. Therefore, Monroe ’320 teaches using components
other than the multiplexer to perform compression, and Petitioner does not
provide an articulated reason why it would have been obvious for the
multiplexer to perform that compression instead. Tr. 23:23–25:4; Ex. 1003
¶¶ 63–65. Petitioner has not shown by a preponderance of the evidence that
claim 11 is unpatentable as obvious over Monroe ʼ320 and the knowledge of
one of ordinary skill in the art. See KSR, 550 U.S. at 418.
E. Patent Owner’s Motion to Exclude
Patent Owner also filed a Motion to Exclude (Paper 21, “Mot.”), to
which Petitioner filed an Opposition (Paper 24, “Opp.”), and Patent Owner
filed a Reply (Paper 25, “Reply”). Patent Owner argues that Exhibits 1003,
IPR2014-00725
Patent 6,831,556 B1

29
1004, 1006, 1008, 1010, and portions of Exhibit 1012 should be excluded.
Mot. 1, 3, 7. We have considered the parties’ arguments, and, for the
reasons discussed below, Patent Owner’s Motion is denied in part and
dismissed in part.
1. Exhibits 1006 and 1010
Exhibit 1006 is a Federal Aviation Administration (“FAA”) Advisory
Circular, and Exhibit 1010 is an email from the FAA to Ajay Sharma.
Patent Owner argues that Exhibits 1006 and 1010 should be excluded as
irrelevant under Fed. R. Evid. 402, and prejudicial under Fed. R. Evid. 403,
because Exhibits 1006 and 1010 were not relied upon in the Decision on
Institution. Mot. 2. Patent Owner does not explain further why those
exhibits are irrelevant or prejudicial. Id. Patent Owner also argues that
Exhibit 1010 should be excluded as impermissible hearsay under Fed. R.
Evid. 802. Mot. 2. Patent Owner does not explain further why that exhibit
is hearsay. Id.
We are not persuaded that Exhibit 1006 is irrelevant or prejudicial.
7

Petitioner submitted Exhibit 1006 with its Petition to show that an aircraft
can be used as an ambulance to respond to emergencies. Pet. 20. Exhibit
1006 is relevant to an issue that Patent Owner raised during this review (see
supra Section II.C.2), and Patent Owner had the opportunity to address
Exhibit 1006 in its Response to the Petition.
For the foregoing reasons, Patent Owner’s Motion to Exclude Exhibit

7
Further, as in a bench trial, evidence should not be excluded before the
Board in an inter partes review under Fed. R. Evid. 403, on the grounds that
it is unfairly prejudicial. See United States v. Preston, 706 F.3d 1106, 1117–
18 (9th Cir. 2013); Tracinda Corp. v. DaimlerChrysler AG, 362 F.Supp. 2d
487, 497 (D. Del. 2005).
IPR2014-00725
Patent 6,831,556 B1

30
1006 is denied. Patent Owner’s Motion to exclude Exhibit 1010 is
dismissed as moot because this Decision does not rely on Exhibit 1010.
2. Exhibits 1004 and 1008
Exhibit 1004 is Monroe ’320, and Exhibit 1008 is Fuller. Patent
Owner argues that Exhibits 1004 and 1008 should be excluded as non-
analogous art because they do not relate to evidence collection systems for
emergency response vehicles. Mot. 2–3. Patent Owner, however, does not
identify any basis in the Federal Rules of Evidence for excluding Exhibits
1004 and 1008. Id. Moreover, as discussed above, the relevant field of
endeavor and problem to be solved by the ’556 patent are not limited to
evidence collection systems for emergency response vehicles. See supra
Section II.D.1. Thus, we are not persuaded that either Exhibit 1004 or
Exhibit 1008 is non-analogous art with respect to the ’556 patent. For the
foregoing reasons, Patent Owner’s Motion to Exclude Exhibits 1004 and
1008 is denied.
3. Exhibit 1003
Exhibit 1003 is the declaration of Dr. Quackenbush. Patent Owner
argues that Exhibit 1003 should be excluded as irrelevant under Fed. R.
Evid. 402, prejudicial under Fed. R. Evid. 403, and improper under Fed. R.
Evid. 702(c), because Dr. Quackenbush applied the wrong level of ordinary
skill in the art. Mot. 6. Patent Owner, however, acknowledges that such
“[d]isputes about factual underpinnings relied on for expert testimony go to
the weight of the evidence rather than its admissibility.” Id. at 5. Moreover,
as discussed above, we determine that Dr. Quackenbush applied the correct
level of ordinary skill in the art. See supra Section II.A. For the foregoing
reasons, Patent Owner’s Motion to Exclude Exhibit 1003 is denied.
IPR2014-00725
Patent 6,831,556 B1

31
4. Exhibit 1012
Exhibit 1012 is the cross examination testimony of Patent Owner’s
declarant, Mr. McChristian. Patent Owner objects to Petitioner’s use of the
testimony at page 92, line 17, to page 93, line 7, of Exhibit 1012, because
Petitioner’s questions were “vague and unduly limiting.” Mot. 7. Patent
Owner also contends that Petitioner ignores the relevant teachings of
Monroe ’311 and Mr. McChristian’s re-direct testimony. Id. at 7–8. We are
not persuaded that the cited portions of Exhibit 1012 should be excluded.
Rather, the cited testimony may be given the appropriate weight when
placed in the context of Petitioner’s questions and Mr. McChristian’s re-
direct testimony. Patent Owner’s Motion to Exclude certain portions of
Exhibit 1012 is also dismissed as moot because this Decision does not rely
on those portions of Exhibit 1012.
III. CONCLUSION
Petitioner has shown by a preponderance of the evidence that claims
1–4, 9, 13–18, and 20–25 are unpatentable under 35 U.S.C. § 102(e) as
anticipated by Monroe ʼ320; claims 5, 6, and 12 are unpatentable under 35
U.S.C. § 103(a) as obvious over Monroe ʼ320 and Rayner; claim 7 is
unpatentable under 35 U.S.C. § 103(a) as obvious over Monroe ʼ320,
Rayner, and the knowledge of one of ordinary skill in the art; claim 10 is
unpatentable under 35 U.S.C. § 103(a) as obvious over Monroe ʼ320 and
Monroe ʼ881; and claim 19 is unpatentable under 35 U.S.C. § 103(a) as
obvious over Monroe ʼ320 and Fuller. Nevertheless, Petitioner has not
shown by a preponderance of the evidence that claim 11 is unpatentable
under 35 U.S.C. § 103(a) as obvious over Monroe ʼ320 and the knowledge
of one of ordinary skill in the art.
IPR2014-00725
Patent 6,831,556 B1

32
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–7, 9, 10, and 12–25 of the ’566 patent are
shown unpatentable;
FURTHER ORDERED that claim 11 of the ’566 patent is not shown
unpatentable; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

IPR2014-00725
Patent 6,831,556 B1

33
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