Axon/Digital Ally Patent Claim Updates
This week, the U.S. Patent and Trademark Office issued U.S. Patent No. 9,712,730 to Digital Ally, whose claim described both body-worn devices with separate cameras and recorders and the capability to insert markers into the videos being recorded. Digital Ally’s claim, which refers to technology we introduced in our Axon Pro cameras back in 2009, was originally filed in 2012, which is three years after the filing of Axon’s pending 2009 patent application covering these same innovations, among others. As such, Axon has a number of strong legal options available going forward.
The relevant provisions in Axon’s own patent application are as follows:
“ . . . An operator may insert a mark into a data stream during recording of the incident as a reminder to provide supplemental information about some aspect of the incident. A mark may be stored within a video or audio stream (e.g., same MPEG-4 container, different container, but related by time) or separately with information to provide a correlation between the mark and the video or audio streams at the time the mark was made.
 Each entry into TEM state 808 records a new mark associated with the video and audio data being recorded at the time of entry. While reviewing, marks may be used as an index to the video and audio streams. Marks may be searched, sorted, and/or arranged in any manner to facilitate review. Information presented for review may skip (e.g., fast forward, fast reverse, hypertext link) from a scene of a movie associated with one mark to a scene of a movie associated with another mark to speed access to information.
 During review of previously recorded information, a list of recorded marks (with or without descriptions) may be presented to assist in completing a revision. A mark may be annotated to provide descriptive information about the video and audio content at the time of the mark. After adding a description to a mark, a list of recorded marks may be presented with descriptions to assist in reviewing. Descriptions may include conventional thumbnails of the movie.”
Because Axon’s own patent claim is still in process, we will have the opportunity to refine and enhance our case before the patent is issued. In light of this fact, we are confident in our capacity to make a strong argument against the validity of the ‘730 patent. While we have equal confidence in the strength of our non-infringement position, our ability to level a challenge against the validity of Digital Ally’s patent based on the strength of our pre-existing application materials and drawings serves to underscore the extent to which Digital Ally’s position could be unsupported with regards to enforcing their claim.
Additionally, Axon may be in a position to file interference proceedings (in addition to an inter partes review petition (IPR)) to the end of being granted outright the claims at issue by the USPTO in light of our preexisting materials.
For context, the awarding of the ‘730 patent to Digital Ally comes in the midst of a series of past and ongoing litigations between Axon and Digital Ally. Since Q4 2016, Axon has filed 4 ISPs against various Digital Ally patent claims. This past June, one of those ISPs (filed against the ‘292 patent) was granted by the USPTO, marking a significant step on the road to potentially eliminating said patent altogether. Currently, the Patent Office considers our motions against the ‘292 patent to have “a reasonable likelihood of prevailing in the contention that these claims are unpatentable.” Meanwhile, in January 2017 the federal district court in Kansas dismissed all of Digital Ally’s antitrust claims against Axon. Any future legal actions arising from this latest development can therefore be understood as comprising part of a legal strategy that has thus far proven robust and effective. We intend to continue implementing our offensive and defensive strategy comprising IPRs, ongoing claims against Digital Ally for inequitable conduct before the USPTO, and strong non-infringement arguments, just as we intend to fight this newest patent claim with all of the legal options available to us.
Axon’s past success against Digital Ally, as well as the inherent strength of our current position of having already filed a patent claim for the relevant technologies and having included it in the Axon Pro product in 2009 gives us full confidence in the strength of our many legal arguments against this latest patent.