Trials@uspto.

gov Paper 12
571-272-7822 Entered: August 3, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE

____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

AXON ENTERPRISE, INC.,

Petitioner,

v.

DIGITAL ALLY, INC.,

Patent Owner.
____________

Case IPR2017-00775
Patent 9,253,452 B2
____________

Before PHILLIP J. KAUFFMAN, MINN CHUNG, and

ROBERT L. KINDER, Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
35 U.S.C. 314(a) and 37 C.F.R. 42.108
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I. BACKGROUND
A. Introduction
Axon Enterprise, Inc. (Petitioner)1 filed a Petition (Paper 1, Pet.)
requesting inter partes review of claims 1, 3, 4, 7, and 8 (the challenged
claims) of U.S. Patent No. 9,253,452 B2 (Ex. 1001, the 452 patent).
Digital Ally, Inc. (Patent Owner) filed a Preliminary Response (Paper 7,
Prelim. Resp.). We have authority to determine whether to institute an
inter partes review. 35 U.S.C. 314(b); 37 C.F.R. 42.4(a).
The standard for instituting an inter partes review is set forth in
35 U.S.C. 314(a), which provides that an inter partes review may not be
instituted unless the information presented in the Petition shows that there
is a reasonable likelihood that the petitioner would prevail with respect to at
least 1 of the claims challenged in the petition. Upon consideration of the
Petition and the Preliminary Response, we conclude that the information
presented in the Petition does not establish a reasonable likelihood that
Petitioner would prevail in showing the unpatentability of any of the
challenged claims on the grounds set forth in the Petition. Accordingly, we
deny Petitioners request to institute an inter partes review of claims 1, 3, 4,
7, and 8.
B. Related Proceedings
The parties indicate that the 452 patent is the subject of the following
patent infringement cases: Digital Ally, Inc. v. TASER International, Inc.,
Case No. 2:16-cv-02032-CM-JPO, and Digital Ally, Inc. v. Enforcement

1
Petitioner indicates that, since the filing of the Petition, it has changed its
name from TASER International, Inc. to Axon Enterprise, Inc. Paper 9, 1.

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Video, LLC, Case No. 2:16-cv-02349-JTM-JPO, each pending in the United

States District Court for the District of Kansas. Pet. 23; Prelim. Resp. 1;
Paper 4, 2. The 452 patent was also the subject of IPR2017-00515, in
which we denied institution of inter partes review. Additionally, we
instituted inter partes review of certain claims of U.S. Patent No. 8,781,292
B1, which is a continuation for the 452 patent, in IPR2017-00375.

II. THE 452 PATENT

A. Background
As a description of related art, the 452 patent describes that recording
device management systems are used to coordinate recording devices to
capture multiple recordings of an event. Ex. 1001, 1:1820. For example, a
user could press a button on a control board to start multiple video cameras.
Id. at 1:2024. According to the 425 patent, such systems did little if
anything to react to inputs from electronic devices, to make decisions based
on statuses of electronic devices, or to corroborate the recorded data from
distinct devices. Id. at 1:2228.
Also as background, the 452 patent describes that law enforcement
often used recording devices to record evidence. Id. at 1:2931. These
devices often used different cues to start recording, or required manual
operation. Id. at 1:3538. Known drawbacks of such systems included lack
of corroboration or other forensic verification, and time to correlate this
evidence. Id. at 4:4046.
B. Described Invention
The 452 patent describes an embodiment in the form of an
intermediate recording device managing apparatus (recording device

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manager) for use in a multiple recording device system. Id. at 1:5456.

The recording device manager receives a first communication signal from a
first recording device that the first recording device has started recording,
and transmits a second communication signal to a second recording device
instructing the second recording device to begin recording. Id. at 1:5662.
Thus, the recording device manager insures multiple recording devices
record an event. Id. at 1:6364.
In another embodiment, an intermediate recording device managing
apparatus comprises an internal clock and a controller. Id. at 1:652:1. The
controller obtains time readings from the internal clock and creates time
stamps. Id. at 2:13. The controller transmits the time stamps to synced
recording devices for corroborating recordings. Id. at 2:34.
Figure 1 of the 452 patent is reproduced below.

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Figure 1 is a schematic plan view of a multiple recording device

management system. Id. at 2:2126. System 10 includes intermediate
vehicle video recording device 14 mounted in police vehicle 16 and personal
video recording device 18 carried by police officer 20, each wirelessly
synced to recording device manager 12. Id. at 3:1020. Multiple personal
recording devices 18 can be synced with manager 12. Id. at 3:3638, 4:20
24. Recording device manager 12 also may generate time stamps and
unique serial numbers for a data recording, and create or collect metadata
and transmit such time stamps, unique serial number, and metadata to
recording devices 14, 18 for corroborating the recorded data. Id. at 3:2530.
In an embodiment, when recording device manager 12 receives a
signal from a first recording device (e.g., personal recording device 18) that
it has begun recording, either due to an instruction to record or a triggering
event, recording device manager 12 signals a second recording device (e.g.,
vehicle recording device 14) to begin recording.2 Id. at 4:2943.
In another embodiment, recording device manager 12, upon receiving
a signal indicating a triggering event, broadcasts a signal to recording
devices 14 and 18, instructing both of them to begin recording. Id. at 14:41
48. Examples of a trigger event include the officer turning on the police
vehicle sirens, police lights, or spotlight. Id. at 14:4648. In yet another
aspect of the invention, the time stamp and serial number are sent to
recording devices 14 and 18 when the recording devices begin recording for
a particular data recording event. Id. at 6:5760. By beginning to record

2
Either recording device (14, 18) may be the first or second recording
device.

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almost simultaneously as personal recording device 18, vehicle recording

device 14 can capture additional video and audio data recordings of the
situation encountered by the officer, including capturing from a different
vantage point than the officer. Id. at 7:1115. The time stamp and serial
number corresponding to the captured and recorded video and audio data
recordings from personal recording device 18 can be matched with the
concurrent time stamp corresponding to the captured and recorded video and
audio data recordings from vehicle recording device 14 to link the
recordings chronologically. Id. at 7:1521. According to the 452 patent, it
is desirable to forensically establish the timing of the events captured by the
two recording devices and the relation of the recorded images and audio
from the personal recording device to the recorded images and audio from
the vehicle recording device. Id. at 7:2125.

C. Illustrative Claim
Of the challenged claims, only claim 1 is independent. Claim 1 is
illustrative of the challenged claims and is reproduced below.3
1. [A] A recording device manager for use in a multiple
recording device management system, the recording device
manager comprising:
[B] a controller including at least one receiver and at least one
transmitter,
[C] wherein said at least one receiver is operable to receive a first
communication signal from a first recording device
indicating the first recording device is recording an event,

3
We identify portions of the claim with added bracketed letters because the
parties reference the claim in this manner. See, e.g., Pet. 2638; PO Resp.
22, 32.

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[D] wherein said at least one transmitter is operable to broadcast

a second communication signal to at least a second
recording device instructing the second recording device
to begin recording the event,
[E] wherein the second recording device is distinct from the first
recording device and records a distinct set of record data
from the first recording device,
[F] wherein the second recording device is configured to be
mounted on or configured to be carried by a law-
enforcement officer,
[G] wherein the second communication signal is transmitted to
the second recording device in response to the receiver
receiving the first communication signal from the first
recording device indicating the first recording device is
recording, such that the recording device manager insures
the first and second recording devices both record the
event,
[H] wherein the first recording device and the second recording
device begin recording substantially simultaneously with
the broadcast second communication signal, and
[I] wherein the recording device manager is incorporated into
one of the first recording device and the second recording
device.

Ex. 1001, 15:2758.

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III. PETITIONERS CHALLENGES

A. Prior Art Cited in Petitioners Challenges
Petitioner cites the following references in its challenges to
patentability.

Reference and Relevant Date Designation Exhibit No.

U.S. Patent Application Pub. No. 2005/0083404

Pierce4 Ex. 1014
Al (published Apr. 21, 2005)

U.S. Patent Application Pub. No. 2007/0274705

Kashiwa Ex. 1007
Al (published Nov. 29, 2007)

B. Asserted Grounds of Unpatentability

Petitioner asserts the following grounds of unpatentability (Pet. 4):

Claims Challenged Statutory Basis References

1, 3, 4, 7, and 8 103 Pierce

1, 4, 7, and 8 103 Kashiwa

IV. CLAIM CONSTRUCTION

In an inter partes review, claim terms in an unexpired patent are given
their broadest reasonable construction in light of the specification of the
patent in which they appear. 37 C.F.R. 42.100(b); see Cuozzo Speed
Techs., LLC v. Lee, 136 S. Ct. 2131, 214446 (2016) (upholding the use of
the broadest reasonable interpretation standard as the claim construction
standard to be applied in an inter partes review proceeding). Under the

4
For clarity and ease of reference, we only list the first named inventor.

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broadest reasonable interpretation standard, and absent any special

definitions, claim terms generally are given their ordinary and customary
meaning, as would be understood by one of ordinary skill in the art, in view
of the specification. In re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed.
Cir. 2007).
For the purposes of this decision, and on the record presented, we
determine that no claim terms need express interpretation. See Wellman,
Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011)
(explaining that claim terms need only be construed to the extent necessary
to resolve the controversy (quoting Vivid Techs., Inc. v. Am. Sci. & Engg,
Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).

V. ANALYSIS OF PETITIONERS PRIOR ART CHALLENGES

A. Obviousness over Pierce
Petitioner contends claims 1, 3, 4, 7, and 8 are unpatentable under
35 U.S.C. 103 as obvious over Pierce. Pet. 2341. Petitioner submits a
Declaration of Dr. Henry H. Houh (Ex. 1003) in support of its contentions.
We have reviewed the parties contentions and supporting evidence. Given
the evidence of record, we are not persuaded that Petitioner has established a
reasonable likelihood of prevailing on this asserted ground as to any of these
challenged claims for the reasons explained below.

1. Overview of Pierce (Ex. 1014)

Pierce discloses a vehicle mounted data acquisition and display
system and a method of recording and storing data in a vehicle mounted
apparatus. Ex. 1014 2.

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Figure 3 of Pierce is reproduced below.

Figure 3 is a schematic illustrating the vehicle mounted data acquisition and

display system of Pierce. Id. 17. As shown in Figure 3, the data
acquisition and display system includes central unit 30, which houses
controller 31 and recording media 44. Id. 39, 46. Central unit 30 also
includes communication ports 54, which connect the central unit to junction
box 56 by line 58. Id. 51. As shown in Figure 3, junction box 56 is in turn
connected to various data acquisition devices, such as wired or wireless
cameras 62, microphones 68, and speed gun 77, so that data from the data
acquisition devices is relayed by the junction box and transmitted to
controller 31 and recording media 44. See id. 56, 61, 69. The acquired
video data, sound data, or speed data is stored in recording media 44 for later

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retrieval. Id. In case of cordless microphone 68b, sound data from the
microphone is transmitted to wireless transceiver 70 connected to junction
box 56, and then from the junction box to controller 31 and recording media
44, where the sound data is stored for later retrieval. Id. 62, 66.
According to Pierce, the stored data on recording media 44 is indexed
and coordinated with other recorded data. Id. 56, 61, 69. For example,
controller 31 coordinates and indexes the recorded speed data with other
recorded data, such as date and time data, vehicle location data, video data,
or sound data. Id. 69. Controller 31 also includes a search engine that can
search recording media 44. Id. 39. Hence, controller 31 can search and
coordinate recorded data from multiple sources, such as the speed data, the
video data, date and time data, and vehicle location data. Id. 911, 69.

2. Discussion
a. Claim 1
Petitioner contends that Pierce teaches or renders obvious all
limitations of claim 1. Pet. 2639. Patent Owner disagrees and argues that
Petitioners analysis is deficient in several aspects. Prelim. Resp. 2131.
Our analysis focuses on the limitations identified by Petitioner as limitations
1[B], 1[C], 1[D], 1[G], and 1[I] (Pet. 27, 29, 31, 35, 38), which recite a
controller including at least one receiver and at least one transmitter (1[B]),
wherein said at least one receiver is operable to receive a first
communication signal from a first recording device indicating the first
recording device is recording an event (1[C]), wherein said at least one
transmitter is operable to broadcast a second communication signal to at
least a second recording device instructing the second recording device to

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begin recording the event (1[D]), wherein the second communication

signal is transmitted to the second recording device in response to the
receiver receiving the first communication signal from the first recording
device indicating the first recording device is recording, such that the
recording device manager insures the first and second recording devices
both record the event (1[G]), and wherein the recording device manager is
incorporated into one of the first recording device and the second recording
device (1[I]).
Petitioner contends that controller 31 and communication ports 54
included in central unit 30 of Pierce, as well as transceiver 70 connected to
junction box 56, together teach a controller including at least one receiver
and at least one transmitter, as recited in limitation 1[B]. Pet. 2728 (citing
Ex. 1014 39, 51, 66, Fig. 3). Petitioner argues that controller 31 or
communication ports 54 act as a receiver because controller 31 receives
signals from recording devices, such as speed gun 77, cameras 62, and
microphones 68, via communication ports 54. Id. (citing Ex. 1014 51,
Fig. 3). Petitioner further argues that transceiver 70 is a transmitter as
claimed because transceiver 70 is used to transmit signals to cordless
microphone 68b. Id. at 28 (citing Ex. 1014 66).
Claim 1 recites a recording device manager comprising a
controller including at least one receiver and at least one transmitter
(limitation 1[B]). Ex. 1001, col. 15, ll. 2758. Thus, according to
Petitioners logic, controller 31, communication ports 54, and transceiver 70
also teach a recording device manager recited in the preamble of claim 1.
Id. at 27.

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Petitioner also maps a first recording device recited in limitation

1[C] to speed measuring apparatus or speed gun 77 of Pierce (id. at 29
(citing Ex. 1014 69)), and a second recording device recited in limitation
1[D] to cordless microphone 68b (id. at 31 (citing Ex. 1014 67, 84, 85)).
Petitioner argues that speed gun 77 and microphone 68b are distinct from
each other as recited in limitation 1[E]. Id. at 34 (citing Ex. 1014 6162,
69, Fig. 3). Further, Petitioner argues that cordless microphone 68b (i.e., the
claimed second recording device) is configured to be mounted on or
configured to be carried by a law-enforcement officer, as recited in
limitation 1[F]. Id. at 3435 (citing Ex. 1014 62, 65).
With respect to limitation [I] reciting the recording device manager is
incorporated into one of the first recording device and the second recording
device, Petitioner does not assert that Pierce discloses the limitation, but,
rather, contends that it would have been obvious to a person of ordinary skill
in the art to modify the teaching of Pierce by incorporating or integrating
controller 31, communication ports 54, and transceiver 70 (i.e., the claimed
recording device manager) into speed gun 77 (i.e., the claimed first
recording device). Id. at 38 (citing Ex. 1003, Declaration of Dr. Houh,
161165). Although it is not entirely clear from the Petition, we
understand Petitioner to argue taking controller 31 and communication ports
54 out of central unit 30, as well as moving transceiver 70 away from
junction box 56, and integrating the three components into speed gun 77,
because, according to Petitioner, its proposed modification would simplify

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the configuration of Pierces system and reduce manufacturing costs.5 See

id. (citing Ex. 1003 162163). This understanding is also consistent with
the cited opinion from Dr. Houh, which states that [s]implication of design
. . . can involve removal of parts, or sharing of parts, which often times
leads to reduced overall costs without sacrificing performance of the
design. Ex. 1003 162 (emphases added).
We are not persuaded by Petitioners argument that a person of
ordinary skill in the art would have been motivated to modify the teaching of
Pierce as Petitioner proposes. Nor are we persuaded Pierce as modified
according to Petitioners proposal teaches all limitations of claim 1 for the
reasons discussed below.
By taking controller 31 and communication ports 54 out of central
unit 30, Petitioners proposed modification would effectively disable the
central unit, including recording media 44, and cut the central unit and the
recording media off from the rest of Pierces system. Without
communication ports 54, central unit 30 has no means to communicate with
junction box 56 or the recording devices, such as microphones 68 or speed
gun 77. In addition, without controller 31, central unit 30 cannot operate
and store any data on recording media 44. Therefore, under Petitioners
proposed modification, none of the data acquisition devices, including speed
gun 77 and microphone 68b, would be able to transmit data to central unit 30
and recording media 44. Petitioner, however, relies on the disclosure in

5
Leaving these components intact in central unit 30 and junction box 56 and
duplicating the components in speed gun 77 would not reduce
manufacturing costs or simplify design.

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Pierce regarding transmission of data from speed gun 77 and microphone

68b to controller 31 and recording media 44 to teach limitations 1[C], 1[D],
and 1[G]. Pet. 2930 (quoting Ex. 1014 69 ([s]peed data recorded by the
speed measuring apparatus 77 is transmitted via line 79 or otherwise (shown
schematically in FIG. 3) to the controller 31 and the recording media 44.)
(emphasis added)), 33 (quoting Ex. 1014 84 ([d]uring EVENT recording,
the controller 31 and the recording media 44 automatically record data from
. . . the first and second microphones 68a, 68b, . . . the clock 47, [and] the
speed measuring apparatus 77) (emphasis added)), 3536 (quoting
Ex. 1014 84 (the controller 31 and the recording media 44 [to]
automatically record data from . . . the first and second microphones 68a,
68b, . . . [and] the speed measuring apparatus 77) (emphasis added)).
Hence, Petitioner does not present any persuasive argument or evidence that
Pierce as modified by Petitioner teaches limitations 1[C], 1[D], and 1[G].
Addressing the motivation to modify, Petitioner asserts that modifying
Pierce as Petitioner proposes would have yielded predictable results. Pet. 39
(citing Ex. 1003 164). Petitioner further contends that nothing in Pierce
teaches away from the compatibility or operability of this modification. Id.
(citing Ex. 1003 165). We are not persuaded by Petitioners argument
because disabling central unit 30 and cutting recording media 44 off from
the rest of Pierces system is hardly an operable modification of Pierce or a
result a person of ordinary skill would have contemplated. Dr. Houhs
testimony cited by Petitioner does not change this conclusion, as Dr. Houh
largely repeats Petitioners contentions. See Ex. 1003 164, 165.

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Petitioner also asserts that the proposed modification would not

change the principle of operation of Pierce as disclosed in paragraph 84 of
Pierce. Pet. 39. We are not persuaded because, as discussed above,
paragraph 84 of Pierce describes that the controller 31 and the recording
media 44 automatically record data from . . . the first and second
microphones 68a, 68b, . . . [and] the speed measuring apparatus 77
(Ex. 1014 84 (emphasis added)), and, therefore, Petitioners proposed
modification would fundamentally change the operation disclosed in
paragraph 84 by disabling transmission of data from microphones 68a, 68b
and speed gun 77 to recording media 44.
Pierce describes recording and storing data as the basic characteristic
of the system and method disclosed in the reference. Ex. 1004 2 (FIELD
OF THE INVENTION) (The present invention relates to . . . a vehicle
mounted data acquisition and display system and a method of digitally
recording and storing data in a vehicle mounted apparatus.) (emphasis
added). Further, one of the improvements over the conventional art, as
stated in Pierce, is to overcome the difficulties in organizing and retrieving
collected data by providing recording media housed in the vehicle-mounted
system and providing a search engine to index and search the data stored on
the recording media. See id. 5, 712 (SUMMARY OF THE
INVENTION). As discussed in the Overview of Pierce section above,
Pierce discloses recording and storing data from various sources on
recording media 44, as well as including a search engine in controller 31, to
allow searching the recording media and indexing and coordinating the
recorded data from multiple sources, such as the speed data, the video data,

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date and time data, and vehicle location data. Id. 912, 39, 56, 61, 69. In
view of these disclosures in Pierce, we are not persuaded that a person of
ordinary skill in the art would have been motivated to take controller 31 and
communication ports 54 out of central unit 30 and sever them from
recording media 44, which would have disabled Pierces function of storing
recorded data on recording media 44, and impaired the function of indexing,
searching, and coordinating recorded data on the recording media.
To the extent Petitioner does not intend to argue cutting recording
media 44 off from the rest of the system of Pierce, Petitioner does not
explain in sufficient detail how recording media 44 would operate or how
controller 31 would interact with recording media 44 under Petitioners
proposed modification. Hence, Petitioners analysis is insufficient because
Petitioner does not explain in sufficient detail how the proposed
modification is supposed to work. See Personal Web Techs., LLC v. Apple,
Inc., 848 F.3d 987, 994 (Fed. Cir. 2017) ([A] clear, evidence-supported
account of the contemplated workings of the combination is a prerequisite to
adequately explaining and supporting a conclusion that a relevant skilled
artisan would have been motivated to make the combination and reasonably
expect success in doing so.) (emphases added).
Therefore, Petitioner does not show sufficiently that modification of
Pierce as proposed by Petitioner teaches or renders obvious all limitations of
claim 1. Accordingly, based on the record presented, the information
presented in the Petition does not demonstrate a reasonable likelihood of
Petitioner prevailing in its challenge to claim 1 under 35 U.S.C. 103 as
obvious over Pierce.

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b. Dependent Claims 3, 4, 7, and 8

Claims 3, 4, 7, and 8 each depend directly or indirectly from claim 1.
Petitioners arguments and evidence presented with respect to these
dependent claims do not remedy the deficiencies in Petitioners analysis of
claim 1 discussed above. See Pet. 3941. Therefore, Petitioner does not
demonstrate a reasonable likelihood of prevailing in its challenge to
dependent claims 3, 4, 7, and 8 under 35 U.S.C. 103 as obvious over
Pierce.
B. Obviousness over Kashiwa
Petitioner contends claims 1, 4, 7, and 8 are unpatentable under
35 U.S.C. 103 as obvious over Kashiwa. Pet. 4154. We are not
persuaded that Petitioner has established a reasonable likelihood of
prevailing on this asserted ground as to any of the challenged claims for the
reasons discussed below.

1. Overview of Kashiwa (Ex. 1007)

Kashiwa describes a method of obtaining simultaneous pictures by
having a first image capturing device to transmit a trigger signal to a second
image capturing device, such that the first and second image capturing
devices obtain images with simultaneous timing. Ex. 1007, Abstract. For
example, an overall image and a zoomed-in image may be obtained by
different image capturing devices at the same timing. Id. 9. The trigger
signal transmitted by the first image capturing device instructs the second
image capturing device to record an image at the same timing as the first
device. Id. at 13.

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Kashiwa discloses a number of embodiments involving a common

camera and a local camera. Id. 106. Typically, a common camera
captures overall or common images, and a local camera captures local or
zoomed-in images. Id. 135138. Kashiwa categorizes its embodiments
into two distinct groups based on which camera transmits the trigger
signalthat is, in the first to tenth embodiments, local cameras transmit the
trigger (local camera trigger embodiments), whereas, in the eleventh to
twentieth embodiments, common cameras transmit the trigger signal to local
cameras (common camera trigger embodiments). Id. 106127, 442
443.
Kashiwa describes the term shutter timing as the timing specified by
a shutter program or when an operator presses the shutter switch. Id. 453.
In the common camera trigger embodiments, upon detecting shutter timing,
the common camera transmits a trigger signal to the local camera and
records a common image at the shutter timing. Id. 454455. The local
camera, in response to receiving the trigger signal, records a local image at
the shutter timing, such that the local image is obtained at the same timing as
the common image. Id. 460.

2. Discussion
a. Claim 1
Petitioner contends that the thirteenth embodiment of Kashiwa, as
depicted in Figures 36 and 37 (not reproduced herein), teaches or renders
obvious all limitations of claim 1. Pet. 4351. Patent Owner argues
Kashiwa does not teach or suggest the limitations identified by Petitioner as

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limitations 1[C] and 1[G]. Prelim. Resp. 3138. We agree with Patent
Owner for the reasons explained below.

(1) Petitioners Contentions

Petitioner contends that common control unit 30 and transmission unit
39 included in common camera 2, as depicted in Figure 36, teach a
controller recited in claim 1. Pet. 4344 (citing Ex. 1007 448, 497,
Fig. 36). Petitioner also maps a first recording device to common camera
2 of Kashiwa (id. at 4546 (citing Ex. 1007 448449, Fig. 36)), and a
second recording device to local camera 1 (id. at 46 (citing Ex. 1007
448, 491, 493, 495, Fig. 36)).
Petitioner further contends that a signal from shutter switch 40 of
common camera 2 indicating shutter timing is a first communication signal
from a first recording device indicating the first recording device is
recording, as recited in limitation 1[C]. Pet. 4546 (citing Ex. 1007 497,
Figs. 36, 37 (step F421); Ex. 1003 201). Petitioner asserts that the trigger
signal TG transmitted by common camera 2 to local camera 1 is the claimed
second communication signal . . . instructing the second recording device to
begin recording the event because the trigger signal causes the local camera
to begin recording an event. Id. at 46 (citing Ex. 1007 448, 491, 493,
495, Fig. 36; Ex.1003 205). Petitioner also contends that transmission of
the trigger signal TG to the local camera teaches the second communication
signal is transmitted to the second recording device in response to the
receiver receiving the first communication signal from the first recording
device indicating the first recording device is recording, as recited in

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limitation 1[G]. Id. at 49 (citing Ex. 1007, Figs. 36, 37 (steps F321, F325,
F422)).

(2) Patent Owners Arguments

Patent Owner argues that Kashiwa does not teach limitations 1[C] or
1[G] because the signal from shutter switch 40 of common camera 2 (i.e.,
the claimed first communication signal) does not indicate that the common
camera (i.e., the claimed first recording device) is recording an image.
Prelim. Resp. 3133. Patent Owner asserts that Kashiwa describes capturing
images by the local camera and the common camera at the same timing,
which requires a particular processing order that is contrary to the
requirements of claim 1. Id. at 31 (citing Ex. 1007 9, 13).
According to Patent Owner, depressing the shutter switch of common
camera 2 causes the common camera to transmit the trigger signal to the
local camera (at step F422 depicted in Figure 37), and, subsequently, the
local and common cameras record images at the same timing at steps F423
and F325. Id. at 3334 (citing Ex. 1007 497498, Fig. 37). In other
words, Patent Owner asserts that the recording at the common camera occurs
only after (1) the shutter switch 40 at the common camera is depressed (step
F421) and (2) the trigger signal is sent from the common camera to the local
camera (step F422). Id. at 34. Patent Owner argues, therefore, the signal
from shutter switch 40 plainly does not indicat[e] the first recording device
is recording an event, as recited in claim limitation 1[C]. Id.

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(3) Analysis
As discussed above in the Overview of Kashiwa section, the trigger
signal from the common camera instructs the local camera to record an
image at the shutter timing specified in the trigger signal such that the local
camera and the common camera record images at the same timing. Ex. 1007
9, 13, 454455, 460. In addition, Kashiwa describes that Figure 37 relied
upon by Petitioner illustrates the processing at the controllers of the local
camera and the common camera, where the local and common cameras
wait for shutter timing. Id. 496. Kashiwa further discloses that the
control unit of the common camera stands by for shutter timing and
[u]pon detecting shutter timing transmits a trigger signal to the local
camera. Id. 497. The local camera, upon receiving the trigger signal,
[s]ubsequently performs recording of an image at the trigger-received
timing. Id. 501. As discussed above, the common camera records a
common image at the shutter timing. Id. 455. Hence, the function of the
trigger signal from the common camera to the local camera is to specify the
timing for the local camera to follow such that both the local and common
cameras record pictures at the same, specified shutter timing. See id. 460.
This scheme would be workable only if the shutter timing specifies a point
in time in the future. Therefore, the common camera cannot be recording an
image when it sends a trigger signal to the local camera.
As Petitioner acknowledges, Kashiwa discloses that the common
camera transmits a trigger signal to the local camera after receiving the
signal from shutter switch 40. Pet. 49. Thus, the common camera cannot be
recording an image when it receives a signal from shutter switch 40.

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Therefore, the signal from shutter switch 40 relied upon by Petitioner does
not and cannot indicate the common camera (i.e., the claimed first
recording device) is recording an event.
The disclosure of Kashiwa cited by Petitioner does not show
otherwise. See Pet. 46 (citing Ex. 1007 497, Figs. 36, 37 (step F421)).
The testimony of Dr. Houh cited by Petitioner is also unpersuasive because
Dr. Houh essentially repeats the Petitioners contention. See id. (citing
Ex. 1003 201).
Petitioner mentions in a parenthesis that the description of Figures 42
and 43 of Kashiwa also indicates that video switch 43 can be activated by a
user to start recording video in common camera 2, and that shutter switch 40
can be activated after common camera 2 has begun recording. Id. (citing
Ex. 1007 548550, 556557; Ex. 1003 196). It is unclear what
Petitioner argues with this single sentence parenthetical. Dr. Houhs
statement cited by Petitioner is also unhelpful because it is essentially a
verbatim copy of Petitioners contention. See Ex. 1003 196.
According to Kashiwa, Figures 42 and 43 relate to the fifteenth
embodiment, where the common camera is a video camera and the local
camera is a still camera (Ex. 1007 547, 548), unlike the thirteenth
embodiment where both the common and local cameras are still cameras (id.
487). Patent Owner argues that, to the extent Petitioner is relying on the
signal from shutter switch 40 of the fifteenth embodiment to teach a first
communication signal indicating the common video camera (i.e., the
purported first recording device) is recording, Petitioners reliance is
misplaced because the common video recording via video switch 43 is

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independent of triggering still image recording of the local camera by shutter

switch 40. Prelim. Resp. 36 (citing Ex. 1007 556).
We agree with Patent Owner that, as disclosed in the fifteenth
embodiment, the common video recording is unrelated to and independent of
triggering still image recording of the local camera by shutter switch 40. See
Ex. 1007 554557. Although Kashiwa describes that while continuously
recording a moving image, the controller of the common video camera also
waits for shutter timing for the local still image camera (id. 556), we do
not discern, nor does Petitioner cite, anything in Kashiwas description of
the fifteenth embodiment that indicates or suggests that the signal from
shutter switch 40 (specifying shutter timing for the local still image camera)
provides any indication whether or not the common video camera is
recording. Therefore, we are not persuaded that the fifteenth embodiment of
Kashiwa cited by Petitioner teaches or suggests the first communication
signal from a first recording device indicating the first recording device is
recording an event, as recited in limitations 1[C] and 1[G].
Accordingly, based on the record presented, the information presented
in the Petition does not demonstrate a reasonable likelihood of Petitioner
prevailing in its challenge to claim 1 under 35 U.S.C. 103 as obvious over
Kashiwa.

b. Dependent Claims 4, 7, and 8

Claims 4, 7, and 8 each depend directly or indirectly from claim 1.
Petitioners arguments and evidence presented with respect to these
dependent claims do not remedy the deficiencies in Petitioners analysis of
claim 1 discussed above. See Pet. 5154. Therefore, Petitioner does not

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demonstrate a reasonable likelihood of prevailing in its challenge to

dependent claims 4, 7, and 8 under 35 U.S.C. 103 as obvious over
Kashiwa.

VI. CONCLUSION
Based on the arguments and evidence presented in the Petition, we
conclude Petitioner has not demonstrated a reasonable likelihood that
Petitioner would prevail in showing at least one of the challenged claims of
the 452 patent is unpatentable based on any asserted ground of
unpatentability. Therefore, we do not institute an inter partes review with
respect to any of the challenged claims of the 452 patent.

VII. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition is denied as to all challenged claims of
the 452 patent, and no trial is instituted.

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PETITIONER:

Michael Specht
Mspecht-ptab@skgf.com

Richard Bemben
Rbemben-ptab@skgf.com

Michelle Holoubek
holoubek@skgf.com

PATENT OWNER:

Jennifer Bailey
Jennifer.bailey@eriseip.com

Marshall Honeyman
Marshall.honeyman@eriseip.com

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