Ask the expert:
Prior art in electronic security
patent litigation

Jim Parker has over 35 years of experience in electronic security systems, home automation and micro controllers. Over his decades-long career spent at companies such as Digital Security Controls (DSC) and DSC Group of Companies which was acquired by Tyco Security Products, Jim has been a named inventor on over 25 patents. Since transitioning to a consulting role at his firm, Parker Security Consulting, Inc., Jim has acted as an expert witness on over 20 U.S.-based patent litigations. Jim has also acted as an expert in product liability litigation, civil litigation and criminal proceedings.
As a Rubin Anders Scientific expert, we sat down with Jim to ask him about his success in the world of IP Litigation.

You have been a retained expert on many patent litigations. How have you provided the most value to the attorneys you’ve worked with?

Definitely in my ability to find potential prior art to create strong claims charts to support Inter Partes Review (IPR). The attorneys I work with are not only consistently surprised by the amount of prior art that I have within my knowledge base, but also by the fact that I know exactly where to go to find what they need to strengthen an IPR and, by extension, their case.

What is it about your experience that has made you particularly qualified in finding prior art?

My deep industry experience, particularly in research and development at DSC and DSC group of companies’ new product development efforts, is helpful for this type of work. As part of new product development, we would routinely review competitor’s product to see what we were up against. In some cases, a new R&D effort would be initiated as a direct response to a successful competitor product. I also visited with key customers and attended major trade shows to speak with existing and potential customers.
That’s a little about my personal experience, but anyone who has worked in an industry for a period of time is going to pick up things along the way either from their own work or things they’ve seen in the market. A lot of [documentation] is electronic and there is competitor information that can be downloaded. There are lots of sources for documentation such as user manuals, product samples and trade show collateral that can be used as prior art. You can always find more, but you may not know where to go to find it unless you are an industry player. Also, a lot of the prior art sourced from competitor collateral is public domain as it has been distributed at trade shows or other public forums.

What is the most unusual place you’ve found prior art?

My basement, looking through boxes for old catalog CD’s that contained product data. DSC issued these CD’s on a periodic basis in the mid to late 90s’ to customers (security system installers and other trades). These CDs contained a lot of PDF files that have been quite useful (manuals, sales sheets, etc.). Fortunately, most of these PDF files have the publishing date clearly indicated. I have used material from these CD’s in numerous cases.

What is the most surprising thing that you’ve used effectively as a prior art example?

Most people don’t realize just how widespread and versatile a 90’s era security system could be. In the mid-90’s DSC designed and produced a highly expandable and configurable system called the Power 832. The Power 832 in its basic form was an alarm system but it could be easily expanded with “bolt on” modules. These modules covered wired and wireless (RF) communications and included things like Access Control, Home Automation (X-10), HVAC, Intercom & Audio, Video Capture, Pager, Cellular, Listen In, Printer support and a lot more. The point being that the Power 832 and its commercial equivalent, Maxsys, have such a wide range of potential configurations and valid use cases that I have been able to offer one variant or the other as potential prior art in most of my cases.

What are some example cases of your successes in this area?

There are multiple examples of my work successfully creating claims charts for companies defending against patent infringement claims. One of my first, iControl Networks, Inc v. Incorporated et al, was a highly contentious case involving 11 patents related to the functional components of an integrated alarm system with touchscreen and wireless device connectivity. I was retained by Inc. to prepare extensive expert reports and related documents, assist with rebuttal reports of other sides’ expert as well as perform infringement and invalidity analyses. My work and the prior art that I provided from my past experience accelerated the case timeframe and led to a settlement out of court.
Another was Script Security Solutions, LLC v. AT&T Digital Life, Inc. et al where I was retained by the defendant, AT&T Digital Life. The patents in dispute were related to a portable motion detector and alarm system and method. I was able to provide multiple prior art candidates from my knowledge of the technology and market to generate supporting invalidity claims charts. This strategy again led to a settlement out of court.
Lastly and perhaps the most pivotal example is my work on Iron Gate Security, Inc. v. Lowe’s Companies, Inc which dealt with a patent related to the assembly and associated method for remotely monitoring a surveillance area. I was retained by the defendant, Lowe’s, and searched for, identified and prioritized prior art and obviousness material on a claim by claim basis to determine optimum references for a potential IPR petition which I helped draft. The defense used my work to prepare the IPR and threatened to file it against the patent and a product that it referred to resulting in a settlement out of court.
Utilizing the right industry expert can have a game-changing impact on patent litigation. It is important to consider the dynamics and potential outcomes when determining the ideal expertise and range of experience of an expert. A strategic consideration for background and access, can add value on multiple levels.
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