UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________________________
`
`TERREMARK NORTH AMERICA LLC, VERIZON BUSINESS NETWORK
`SERVICES INC., VERIZON SERVICES CORP., TIME WARNER CABLE
`INC., ICONTROL NETWORKS, INC., AND COXCOM, LLC,
`Petitioners
`
`v.
`
`JOAO CONTROL & MONITORING SYSTEMS, LLC,
`Patent Owner
`
`____________________
`
`CASE IPR: Unassigned
`____________________
`
`
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,277,010
`UNDER 35 U.S.C. §§311-319 AND 37 C.F.R. §§ 42.1-.80 & 42.100-.123
`
`
`
`
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Page 1 of 66
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`Patent Owner JCMS’s Exhibit No. 2007
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`

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`Petition for Inter Partes Review of
`U.S. Patent No. 7,277,010
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`TABLE OF CONTENTS
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`
`
`I.
`
`INTRODUCTION .................................................................................. 1
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1) ................. 2
`
`A.
`
`B.
`
`C.
`
`Real party-in-interest under 37 C.F.R. § 42.8(b)(1) ..................... 2
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`Related matters under 37 C.F.R. § 42.8(b)(2) .............................. 3
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`Lead and back-up counsel under 37 C.F.R. § 42.8(b)(3)&(4) ..... 4
`
`III. FEES ....................................................................................................... 6
`
`IV. REQUIREMENTS FOR INTER PARTES REVIEW ........................... 6
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`A. Grounds for standing under 37 C.F.R. § 42.104(a) ...................... 6
`
`B.
`
`Identification of challenge and relief requested - 37 C.F.R. §
`42.104(b) ...................................................................................... 6
`
`V.
`
`BACKGROUND OF THE TECHNOLOGY AND PURPORTED
`INVENTION OF THE ‘010 PATENT ................................................... 7
`
`VI. CLAIM CONSTRUCTION ................................................................. 10
`
`VII. PERSON HAVING ORDINARY SKILL IN THE ART (PHOSITA) 10
`
`VIII. THE CHALLENGED CLAIMS ARE NOT ENTITLED TO A
`PRIORITY DATE BEFORE JULY 18, 1996 ...................................... 11
`
`IX. THE CITED REFERENCES................................................................ 12
`
`A.
`
`Fuhr Article (Ex. 1005) .............................................................. 13
`
`B. Aknar Publication (Ex-1006) ..................................................... 14
`
`C.
`
`Sheng Article (Ex-1007) ............................................................ 14
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`X. HOW THE CHALLENGED CLAIMS ARE UNPATENTABLE
`UNDER 37 C.F.R. § 42.104(b) ............................................................ 15
`
`i
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`Petition for Inter Partes Review of
`U.S. Patent No. 7,277,010
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`A. Ground 1 – Fuhr renders obvious claims 193, 198, 201, 211, 219,
`and 224 under 35 U.S.C. § 103 .................................................. 15
`
`1)
`
`2)
`
`3)
`
`4)
`
`5)
`
`6)
`
`Claim 193 ......................................................................... 15
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`Claim 198 ......................................................................... 21
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`Claim 201 ......................................................................... 22
`
`Claim 211 ......................................................................... 23
`
`Claim 219 ......................................................................... 24
`
`Claim 224 ......................................................................... 25
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`B. Ground 2 – Fuhr in view of Sheng renders claims 194, 196, 197,
`217, and 234-236 obvious under 35 U.S.C. § 103 ..................... 25
`
`1)
`
`Claims 194, 196, 197, 217, and 234-236 ......................... 25
`
`C. Ground 3 – Aknar in view of Fuhr renders claims 139, 157, 158,
`193, 198, 201, 202, 211, 213, 215, 219, 222-225, 227, and 228
`obvious under 35 U.S.C. § 103 .................................................. 29
`
`1)
`
`2)
`
`3)
`
`4)
`
`5)
`
`6)
`
`7)
`
`8)
`
`9)
`
`Claim 139 ......................................................................... 29
`
`Claims 157 and 222 ......................................................... 41
`
`Claims 158 and 223 ......................................................... 42
`
`Claim 193 ......................................................................... 43
`
`Claim 198 ......................................................................... 46
`
`Claim 201 ......................................................................... 47
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`Claim 202 ......................................................................... 48
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`Claim 211 ......................................................................... 48
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`Claims 213 and 225 ......................................................... 50
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`ii
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`Petition for Inter Partes Review of
`U.S. Patent No. 7,277,010
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`10) Claim 215 ......................................................................... 51
`
`11) Claim 219 ......................................................................... 53
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`12) Claim 224 ......................................................................... 53
`
`13) Claims 227 and 228 ......................................................... 54
`
`
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`D. Ground 4 – Aknar in view of Fuhr and Sheng renders claims 169,
`170, 171, 194, 196, 197, 217, and 234-236 obvious under 35
`U.S.C. § 103 ............................................................................... 55
`
`XI. CONCLUSION ..................................................................................... 60
`
`iii
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`Page 4 of 66
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`Patent Owner JCMS’s Exhibit No. 2007
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`Petition for Inter Partes Review of
`U.S. Patent No. 7,277,010
`
`
`
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`The following is a list of exhibits in support of this petition:
`
`LIST OF EXHIBITS
`
`U.S. Patent No. 7,277,010 (“the ‘010 Patent”)
`
`Declaration of Richard Bennett for the ‘010 Patent
`
`Curriculum Vitae of Richard Bennett
`
`U.S. Patent Application No. 08/622,749 filed on
`March 27, 1996 (“Mar 1996 application”)
`Peter Fuhr et. al., “Remote Monitoring of
`Instrumented Structures Using the INTERNET
`Information Superhighway” published in Second
`European Conference on Smart Structures and
`Materials, (1994) at 148-151 (“Fuhr”)
`PCT Application WO 88/04082 to Atila Aknar and
`Andre Soussa, published on June 2, 1988 (“Aknar”)
`Sheng, Samuel, et al., “A Portable Multimedia
`Terminal: Successful personal communications
`terminals will depend upon the smooth integration of
`computation and communications facilities in a
`lightweight unit,” published in IEEE Communications
`Magazine (December 1992) at 64-75 (“Sheng”)
`
`iv
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`
`
`EX-1001
`
`EX-1002
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`EX-1003
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`EX-1004
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`EX-1005
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`EX-1006
`
`EX-1007
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`

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`Petition for Inter Partes Review of
`U.S. Patent No. 7,277,010
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`INTRODUCTION
`Petitioners identified below, respectfully request inter partes review under
`
`
`
`I.
`
`35 U.S.C. § 311 and 37 C.F.R. § 42.100 of claims 139, 157, 158, 169-171, 193,
`
`194, 196-198, 201, 202, 211, 213, 215, 217, 219, 222-225, 227, 228, and 234- 236
`
`(“the Challenged Claims”) of U.S. Patent No. 7,277,010 (“the ‘010 Patent”), titled
`
`“Monitoring Apparatus and Method” (Ex. 1001). The ‘010 Patent is believed to
`
`be owned by Joao Control & Monitoring Systems, LLC (“Joao” or “Patent
`
`Owner”).
`
`According to the ‘010 Patent, the inventor sought to meet a need for an
`
`improved premise security system that “conveniently and effectively enable[s] one
`
`to effectively enable one to exercise and/or to perform control, monitoring and/or
`
`security functions . . . [by] owners, occupants and/or other authorized individuals
`
`to exercise and/or to provide control, monitoring and/or security functions over
`
`these premises, from a remote location and at any time.” Ex. 1001 at 2:67-3:6.
`
`More specifically, the ‘010 Patent and the Challenged Claims relate to a
`
`“monitoring apparatus. . . including a processor, associated with a web site and
`
`capable of providing audio and video, which receives audio [or video] information
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`recorded or obtained at a. . . premises.” Id. at Abstract. Contrary to the ‘010
`
`1
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`Patent Owner JCMS’s Exhibit No. 2007
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`Petition for Inter Partes Review of
`U.S. Patent No. 7,277,010
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`
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`Patent’s representations, remotely monitoring systems with these characteristics
`
`were previously disclosed in numerous prior art references.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1)
`A. Real party-in-interest under 37 C.F.R. § 42.8(b)(1)
`The Petitioners are: Terremark North America LLC; Verizon Business
`
`Network Services Inc.; Verizon Services Corp.; Time Warner Cable Inc.; iControl
`
`Networks, Inc., and CoxCom, LLC. Additionally, Petitioners, out of an abundance
`
`of caution in light of prior challenges to the named real parties-in-interest in
`
`separate and unrelated IPR petitions, identify each of Verizon Communications
`
`Inc., Verizon Corporate Resources Group, LLC and Verizon Data Services LLC as
`
`a real party-in-interest for the IPR requested by this Petition solely to the extent
`
`that Patent Owner contends that these separate legal entities should be named a real
`
`party-in-interest in the requested IPR, and Petitioners do so to avoid the potential
`
`expenditure of resources to resolve such a challenge. No related entity is funding,
`
`controlling, or otherwise has an opportunity to control or direct this Petition or any
`
`of the Petitioners’ participation in any resulting IPR. Also, Petitioners note that
`
`Verizon Communications Inc. has over 500 affiliated entities and each of these
`
`entities agrees to be estopped under the provisions of 35 U.S.C. §§ 315 and/or 325
`
`2
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`Patent Owner JCMS’s Exhibit No. 2007
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`

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`Petition for Inter Partes Review of
`U.S. Patent No. 7,277,010
`
`
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`as a result of any final written decision in the requested IPR to the same extent that
`
`the Petitioners are estopped.
`
`B. Related matters under 37 C.F.R. § 42.8(b)(2)
`Joao has filed Complaints against some of the Petitioners in the United
`
`States District Court for the District of Delaware alleging infringement of the ‘010
`
`Patent and other related patents. Those actions remain pending. Below is a chart
`
`listing the proceedings that petitioners are aware of brought by Joao that may
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`affect, or be affected, by a decision in this proceeding.
`
`CASES
`Joao v. LifeShield, Inc.
`Joao v. Slomin’s, Inc.
`Joao v. Time Warner Cable, Inc.
`Joao v. Cox Communications, Inc.
`Joao v. Verizon Communications, Inc.
`Alarm.com Incorporated v. Joao
`Joao v. Protect America, Inc.
`Joao v. FrontPoint Security Solutions LLC
`Joao v. Lowe’s Companies, Inc.
`Joao v. Vivint Inc.
`Joao v. American Traffic Solutions, Inc.
`Joao v. City of Yonkers
`Joao v. Digital Playground, Inc. et al.
`Joao v. Liquid Cash, LLC
`
`NUMBER
`2-15-cv-02772
`2-14-cv-02598
`1-14-cv-00524
`1-14-cv-00520
`1-14-cv-00525
`1-14-cv-00284
`1-14-cv-00134
`1-13-cv-01760
`5-13-cv-00056
`1-13-cv-00508
`1-13-cv-00243
`1-12-cv-07734
`1-12-cv-06781
`1-12-cv-06315
`
`DISTRICT
`PAED
`NYED
`DED
`DED
`DED
`DED
`TXWD
`DED
`NCWD
`DED
`MIED
`NYSD
`NYSD
`NYSD
`
`3
`
`
`
`
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`Petition for Inter Partes Review of
`U.S. Patent No. 7,277,010
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`
`
`Joao v. Xanboo, Inc.
`Joao v. Smartvue Corporation
`Joao v. Digital Playground Inc.
`Joao v. Ahava Incorporated
`Joao v. GSMC Inc.
`Joao v. GSMC Inc.
`Joao v. Webcamnow.com Inc
`Joao of Texas v. Playboy Enterprises, Inc., et al.
`
`
`2-12-cv-03698
`1-12-cv-03641
`2-12-cv-00417
`2-11-cv-09638
`2-11-cv-09636
`2-11-cv-08697
`2-11-cv-08257
`6-09-cv-00499
`
`CACD
`CACD
`CACD
`CACD
`CACD
`CACD
`CACD
`TXED
`
`C. Lead and back-up counsel under 37 C.F.R. § 42.8(b)(3)&(4)
`Petitioners designate the following counsel and provide service information
`
`in accordance with 37 C.F.R. § 42.8(b)(3)&(4). Pursuant to 37 C.F.R. § 42.10(b),
`
`Powers of Attorney accompany this Petition. Petitioners consent to service by
`
`electronic mail at the email address provided below.
`
`Lead Counsel
`Jackson Ho, Reg. No. 72,360
`
`Back-up Counsel
`Frank C. Cimino, Jr.
`
`Registration No. 39,945
`
`Venable LLP
`
`575 7th Street, N.W.
`
`Washington, DC 20004
`
`Phone: (202)-344-4569
`
`4
`
`
`
`K&L Gates LLP
`
`630 Hansen Way
`
`Palo Alto, CA 94304
`
`Tel: 650.798.6719
`
`Fax: 650.798.6701
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`
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`Petition for Inter Partes Review of
`U.S. Patent No. 7,277,010
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`Fax: (202)-344-8300
`
`fccimino@venable.com
`
`
`
`jackson.ho@klgates.com
`
`Back-up Counsel
`David A. Simons, Reg. No. 45,888
`
`Back-up Counsel
`Megan S. Woodworth
`
`K&L Gates LLP
`
`Registration No. 53,655
`
`State Street Financial Center
`
`Venable LLP
`
`One Lincoln Street
`
`Boston, MA 02111-2950
`
`Tel: 617.261.3258
`
`Fax: 617.261.3175
`
`575 7th Street, N.W.
`
`Washington, DC 20004
`
`Phone: (202)-344-4507
`
`Fax: (202)-344-8300
`
`david.simons@klgates.com
`
`mswoodworth@venable.com
`
`Back-up Counsel
`
`Back-up Counsel
`
`Vaibhav P. Kadaba (Reg. No. 45,865)
`
`D. Clay Holloway (Reg. No. 58,011)
`
`Kilpatrick Townsend & Stockton LLP
`
`Kilpatrick Townsend & Stockton LLP
`
`1100 Peachtree Street NE, Suite 2800
`
`1100 Peachtree Street NE, Suite 2800
`
`Atlanta, GA 30309-4528
`
`Atlanta, GA 30309-4528
`
`Telephone: (404) 532-6959
`
`Telephone: (404) 815-6537
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`Fax: (404) 541-3258
`
`Fax: (404) 541-3484
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`5
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`Petition for Inter Partes Review of
`U.S. Patent No. 7,277,010
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`cholloway@kilpatricktownsend.com
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`
`
`wkadaba@kilpatricktownsend.com
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`
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`III. FEES
`Petitioners authorize the Director to charge the required $23,000 fee for this
`
`Petition, as well as any additional fees to Deposit Acct. No. 11-1110.
`
`IV. REQUIREMENTS FOR INTER PARTES REVIEW
`A. Grounds for standing under 37 C.F.R. § 42.104(a)
`Petitioners certify that (1) the ‘010 Patent is available for inter partes review
`
`and (2) Petitioners are not barred or estopped from requesting inter partes review
`
`of the claims of the ‘010 Patent on the grounds identified in this Petition.
`
`B.
`
`Identification of challenge and relief requested - 37 C.F.R. §
`42.104(b)
`
`Petitioners request cancellation of claims 139, 157, 158, 169-171, 193, 194,
`
`196-198, 201, 202, 211, 213, 215, 217, 219, 222-225, 227, 228, and 234-236 of the
`
`‘010 Patent in view of the following grounds:
`
`• Ground 1: Fuhr renders obvious claims 193, 198, 201, 211, 219, and 224
`
`under 35 U.S.C. § 103.
`
`• Ground 2: Fuhr in view of Sheng renders claims 194, 196, 197, 217, and
`
`234- 236 obvious under 35 U.S.C. § 103.
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`6
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`Petition for Inter Partes Review of
`U.S. Patent No. 7,277,010
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`• Ground 3: Aknar in view of Fuhr renders claims 139, 157, 158, 193, 198,
`
`201, 202, 211, 213, 215, 219, 222-225, 227, and 228 obvious under 35
`
`U.S.C. § 103.
`
`
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`• Ground 4: Aknar in view of Fuhr and Sheng renders claims 169, 170, 171,
`
`194, 196, 197, 217, 234, and 236 obvious under 35 U.S.C. § 103.
`
`V. BACKGROUND OF THE TECHNOLOGY AND PURPORTED
`INVENTION OF THE ‘010 PATENT
`
`The ‘010 Patent is directed to a monitoring apparatus and, in particular, the
`
`Challenged Claims are directed to an apparatus for monitoring a premises from a
`
`remote location. But as the ‘010 Patent acknowledges, home security systems were
`
`well known, explaining that “[a]nti-theft devices for vehicles and premises are
`
`known in the prior art for preventing and/or thwarting the theft of a vehicles and/or
`
`of a premises.” (Ex. 1001, 1:34-36.) Indeed, as early as June 21, 1853, a patent
`
`for a “Burglar Alarm” was granted as U.S. Patent No. 9,802 to Augustus Pope.
`
`Over the years, improvements were made to alarm systems as evidenced, in
`
`part, by U.S. Patent No. 3,449,738 to Chesnul et al. (issued: June 10, 1969)
`
`entitled “Electronic Security System” and directed to a home electronic security
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`system that “us[es] modern digital, solid-state circuitry [to] is easily put into
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`individual modules thereby facilitating installation, maintenance, and expansion of
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`Petition for Inter Partes Review of
`U.S. Patent No. 7,277,010
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`
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`the system.” Chesnul, 1:25-29. Additionally, U.S. Patent No. 3,482,037 to Brown
`
`et al. (issued: December 2, 1969) entitled “Home Security System Utilizing
`
`Television Surveillance” and directed to “[a] video and audio security system for a
`
`house under control of an occupant [and the] system includes a video scanning
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`device at the entrance door of the house to scan a visitor outside the door, and
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`includes audio intercommunication equipment inside and outside the door for
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`conversing with the visitor outside the door.” Brown, Abstract. Brown discloses
`
`that the home owner can monitor the visitor at the entrance door from a remote
`
`location, i.e. from the home owner’s bedroom. Brown at 3:15-29.
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`Instead of using the wireless technology disclosed in Brown to connect
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`camera and monitor, the Challenged Claims are directed to an apparatus for
`
`providing remote video/audio monitoring using a web server and the Internet.
`
`The Challenged Claims contain several common elements. Each claim
`
`recites a monitoring apparatus that comprises a processing device. The processing
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`device has the following characteristics common among all of the claims:
`
`• It receives audio or video information that is recorded by a device
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`located at a premises;1
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`1 In claim 139 (and those dependent thereon), the device records audio
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`• It receives a signal from a communication device that is located
`
`remote from the premises and the processing device;
`
`• It determines whether transmission of the audio or video information
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`is authorized to the communication device; and
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`• If the transmission is authorized, the audio or video is transmitted to
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`the communication device over the Internet or World Wide Web.
`
`
`
`Claim 198 is a representative claim and recites the following:
`
`198. A monitoring apparatus, comprising:
`a processing device, wherein the processing device is associated
`with a web site, and wherein the processing device receives video
`information recorded by at least one of a video recording device and a
`camera, wherein the at least one of a video recording device and a
`camera is located at a premises, and wherein the processing device is
`located at a location remote from the premises,
`wherein the processing device receives a signal transmitted
`from a communication device, wherein the communication device is
`located at a location remote from the processing device and remote
`from the premises, wherein the processing device determines whether
`a transmission of the video information to the communication device
`is authorized, and further wherein the processing device transmits the
`
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`information; in the remaining claims, this device records video information.
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`Petition for Inter Partes Review of
`U.S. Patent No. 7,277,010
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`
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`video information to the communication device in response to the
`signal if the processing device determines that the transmission of the
`video information to the communication device is authorized, and
`further wherein the video information is transmitted to the
`communication device on or over at least one of the Internet and the
`World Wide Web.
`VI. CLAIM CONSTRUCTION
`In deciding whether to institute inter partes review, “[a] claim in an
`
`unexpired patent shall be given its broadest reasonable construction in light of the
`
`specification of the patent in which it appears.” 37 C.F.R. § 42.100(b). To the
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`extent there is any ambiguity regarding the “broadest reasonable construction” of a
`
`term, the ambiguity should be resolved in favor of the broader construction absent
`
`amendment by the patent owner. Final Rules, 77 Fed. Reg. at 48699.
`
`The terms of the Challenged Claims have a well-understood meaning.
`
`Therefore, Petitioner submits that the plain and ordinary meaning of the terms of
`
`the challenged claims applies.
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`VII. PERSON HAVING ORDINARY SKILL IN THE ART (PHOSITA)
`For purposes of this proceeding, Petitioners assert that a person of ordinary
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`skill in the art of remote-controlled premise systems at the time of the alleged
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`Petition for Inter Partes Review of
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`invention would have had a bachelor’s degree in engineering or equivalent
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`coursework and at least two years of experience in computerized systems.
`
`VIII. THE CHALLENGED CLAIMS ARE NOT ENTITLED TO A
`PRIORITY DATE BEFORE JULY 18, 1996
`A patent’s date of invention is presumed to be its filing date. Bausch &
`
`Lomb, Inc. v. Barnes-Hind/Hydrocurve, Inc., 796 F.2d 443, 449 (Fed. Cir. 1986).
`
`A patentee may enjoy the benefit of a priority date only by “demonstrat[ing] that
`
`the claims meet the requirements of 35 U.S.C. § 120.” In re NTP, Inc., 654 F.3d
`
`1268, 1276 (Fed. Cir. 2011).
`
`
`
`In order for the Challenged Claims to be entitled to an earlier date of priority
`
`“[t]he test is whether the [earlier] disclosure conveys to those skilled in the art that
`
`the inventor had possession of the claimed subject matter as of the filing date.”
`
`Streck, Inc. v. Research & Diagnostic Sys., Inc., 665 F.3d 1269, 1285 (Fed. Cir.
`
`2012) (internal citations omitted). This test requires an “objective inquiry into the
`
`four corners of the specification from the perspective of a person of ordinary skill
`
`in the art.” Id.
`
`On its face, the ‘010 Patent claims priority as a continuation of U.S. Patent
`
`Application No. 08/683,828, filed on July 18, 1996 (“the July 1996 application”),
`
`which is a continuation-in-part to U.S. Patent Application No. 08/622,749 filed on
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`11
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`Patent Owner JCMS’s Exhibit No. 2007
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`Petition for Inter Partes Review of
`U.S. Patent No. 7,277,010
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`
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`March 27, 1996 (“March 1996 application”). The ‘010 Patent is not entitled to the
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`benefit of the March 27, 1996 application date.
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`Each of the Challenged Claims requires some monitoring device, whether a
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`camera or a microphone or other device, located at a premises. See, e.g., ‘010
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`Patent at claims 139, 193, or 198. In contrast, the March 1996 application only
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`discloses a vehicle theft deterrent system, and does not disclose a monitoring
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`device located at a premises. See Ex. 1004. For example, the March 1996
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`application does not contain Figures 15 and 16 of the ‘010 Patent which discloses a
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`premises and premise equipment. Id. Indeed, the March 1996 application never
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`mentions a premise and is solely focused on vehicles. Id. Since a premises is not a
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`vehicle and a vehicle is not a premises, the March 1996 application does not
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`disclose a premises monitoring system. Therefore, the Challenged Claims which
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`recites a premises monitoring system are not entitled to the benefit of the March
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`1996 application filing date.
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`IX. THE CITED REFERENCES
`This Petition raises three prior art references:
`
`1)
`
`The article titled “Remote Monitoring of Instrumented Structures
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`Using the INTERNET Information Superhighway” by Peter Fuhr et. al. in Second
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`European Conference on Smart Structures and Materials, at pages 148-151
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`Petition for Inter Partes Review of
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`(“Fuhr,” provided as Ex-1005), published in 1994.
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`2)
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`PCT Application WO 88/04082 to Atila Aknar and Andre Soussa
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`(“Aknar,” provided as Ex-1006), published on June 2, 1988.
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`3)
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`The article titled “A Portable Multimedia Terminal” by Samuel Sheng
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`et al. published in IEEE Communications Magazine at pages 64-75 (“Sheng,”
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`provided as Ex-1007), published on December 1992.
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`Since the earliest priority date that the ‘010 Patent is entitled to is July 18,
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`19962, Fuhr, Aknar and Sheng qualify as prior art under 35 U.S.C. §102(b).
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`Fuhr Article (Ex. 1005)
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`A.
`As suggested by its title, Fuhr relates to a system for “remote monitoring of
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`instrumented structures using the Internet.” Ex. 1005 at Title. The disclosed
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`system includes an “automated data acquisition system which archives the
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`acquired information in an electronic location remotely accessible through the
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`Internet.” Id. at 148. As one example, Fuhr discloses placing cameras in the
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`“powerhouse” of a hydroelectric dam to monitor the operator’s control console
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`2 Petitioners do not assert a position as to whether the specification of the ‘010
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`patent itself satisfies the written description and enablement requirements, and
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`explicitly reserves the right to assert either position in this or any other proceeding.
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`Petition for Inter Partes Review of
`U.S. Patent No. 7,277,010
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`associated with a turbogenerator. Ex. 1005 at 150 and Figure 2b. The video
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`information from those cameras in the powerhouse are sent to a Mosaic web server
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`at the University of Vermont whereupon users have worldwide access to the video
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`information. Id. Therefore, Fuhr discloses a method of remote video monitoring of
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`a premises using a web server and the Internet.
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`B. Aknar Publication (Ex-1006)
`Aknar discloses intelligent cameras in an imaging system that can be
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`employed in a variety of situations including in security systems and in a
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`videophone application. Ex. 1006 at 1:1-12. Each intelligent camera is connected
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`to a remote central base station via telephone or fiber optical links. Id. at 14:13-17
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`and Figure 5. This allows users to remotely monitor for example a surveillance
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`area in the security system context. Ex. 1006 at Figure 5. In addition, Aknar
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`discloses that each intelligent camera can be combined with a local base station to
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`provide a videophone console allowing two users in the system to communicate
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`over a videophone link. Ex. 1006 at 15:20-16:2.
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`Sheng Article (Ex-1007)
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`C.
`Sheng discloses a portable multimedia terminal that combined the features
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`of mobile analog cellular phone with a portable notebook computer. Ex. 1007 at
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`64. The portable terminal communicates via a wireless cellular network. Id. In
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`Petition for Inter Partes Review of
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`addition, Sheng specifically mentions that the portable terminal can be used for
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`video-teleconferencing. Id. at 65.
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`X. HOW THE CHALLENGED CLAIMS ARE UNPATENTABLE
`UNDER 37 C.F.R. § 42.104(b)3
`A. Ground 1 – Fuhr renders obvious claims 193, 198, 201, 211, 219,
`and 224 under 35 U.S.C. § 103
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`For at least the reasons discussed below, claims 193, 198, 201, 211, 213,
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`219, and 224 of the ‘010 Patent are unpatentable as obvious over Fuhr, Ex. 1005,
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`under 35 U.S.C. § 103.
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`1)
`Claim Language
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`Claim 193
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`[193.0]: “A monitoring apparatus, comprising:”
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`Fuhr
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`Ex. 1005 at Title and
`150.
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`[193.1]: “a processing device or server computer,
`wherein the processing device or server computer
`receives video information recorded by at least one of
`a video recording device and a camera,”
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`3 For purposes of clarity in presentation, Petitioners have enumerated each element
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`Ex. 1005 at 149-150
`(“acquired video frames
`… are transmitted to the
`Internet-host computer’s
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`of the Challenged Claims, providing them with a unique identifier set forth before
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`the element in brackets. Thus, for claim “X” the first element would be listed as
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`[X.0], the next as [X.1], etc. These elements are cross-referenced throughout this
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`15
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`‘WinOne-video’Mosaic
`file”)
`Ex. 1005 at 150 and
`Figure 2
`Ex. 1005 at 149 (“Sun
`Microsystems computer
`at the University of
`Vermont.”) and 150
`(“Winooski One dam”)
`Ex. 1005 at 150; Ex.
`1002, Bennett Decl. at
`¶¶ 27, 30.
`Ex. 1005 at 150
`(“worldwide Internet
`access”)
`
`Ex. 1005 at 149
`(“requiring a
`password”); Ex. 1002,
`Bennett Decl. at ¶¶ 27,
`30.
`Ex. 1002, Bennett
`Decl. at ¶¶ 27, 30.
`
`Ex. 1005 at 150
`(“worldwide Internet
`access”)
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`
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`[193.2]: “wherein the at least one of a video recording
`device and a camera is located at a premises, and”
`[193.3]: “wherein the processing device or server
`computer is located at a location remote from the
`premises,”
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`[193.4]: “wherein the processing device or server
`computer receives a signal transmitted from a
`communication device,”
`[193.5]: “wherein the communication device is
`located at a location remote from the processing
`device or server computer and remote from the
`premises,”
`[193.6]: “wherein the processing device or server
`computer determines whether a transmission of the
`video information to the communication device is
`authorized, and”
`
`[193.7]: “further wherein the processing device or
`server computer transmits the video information to
`the communication device in response to the signal if
`the processing device or server computer determines
`that the transmission of the video information to the
`communication device is authorized, and”
`[193.8]: “further wherein the video information is
`transmitted to the communication device on or
`over at least one of the Internet and the World
`Wide Web.”
`
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`[193.0]: A monitoring apparatus, comprising
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`Fuhr discloses a monitoring apparatus in the form of TV cameras monitoring
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`console displays inside a hydroelectric dam control room. Ex. 1005 at 150.
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`Petition for Inter Partes Review of
`U.S. Patent No. 7,277,010
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`[193.1]: A processing device receives video information recorded by a
`camera
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`Fuhr discloses that acquired video from TV cameras monitoring console
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`displays are transmitted to an Internet-host computer. Ex. 1005 at 150. This
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`Internet-host computer is a Sun Microsystems computer located at the University
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`of Vermont. Id. at 149. This host computer also hosts an anonymous FTP data
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`site. Id.
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`The Internet-host computer is a processing device and that processing
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`device receives video information, acquired video frames, recorded by the TV
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`cameras monitoring the console displays.
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` [193.2]: A camera located at a premises
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`Fuhr discloses a TV camera monitoring an operator’s console display
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`associated with a turbogenerator. Id. at 150. The operator’s console is located at
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`the “powerhouse” at the hydroelectric dam. Id. at Figure 2 (called the monitored
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`control console a “powerhouse control console.”); Ex. 1002, Bennett Decl. at ¶ 25.
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`Therefore the premises is the control room or building at the Winooski One
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`hydroelectric dam and the camera is located at or in the control room. Fuhr also
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`discloses that its “intelligence” system can be used in numerous high-performance
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`structures, including skyscrapers, intelligent buildings, and bridges. Ex. 1005 at
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`17
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`Petition for Inter Partes Review of
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`148.
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`[193.3]: The processing device is located at a location remote from the
`premises
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`Fuhr discloses that Internet-host computer, the processing device, is located
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`at the University of Vermont, which is located in Burlington, Vermont. Ex. 1005
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`at 149; Ex. 1002, Bennett Decl. at ¶ 26; see http://www.uvm.edu/. The premises,
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`i.e. the powerhouse, is located at the Winooski One hydroelectric dam, which is
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`located in Winooski, Vermont. Ex. 1005 at 150; see
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`https://www.burlingtonelectric.com/about-us/what-we-do/winooski-one-hydro-
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`plant. Therefore, the processing device in Burlington Vermont is located at a
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`location remote from the premises at Winooski, Vermont.
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`[193.4]: The processing device receives a signal from a communication device
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`Fuhr discloses an Internet-host computer which acts as the processing
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`device. Fuhr discloses that the Internet-host computer uses Mosaic files for
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`worldwide Internet access and viewing of the v