UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`——————
`
`ALARM.COM INC.
`Petitioner
`
`v.
`
`VIVINT, INC.
`Patent Owner
`
`——————
`
`Case IPR2015-01977
`Patent 6,924,727
`
`——————
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE TO
`PETITION
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`US Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`
`Case IPR2015-01977 of
`U.S. Patent No. 6,924,727
`
`
`CONTENTS
`
`I. 
`II. 
`
`III. 
`
`IV. 
`
`V. 
`
`VI. 
`
`INTRODUCTION ...................................................................................................1 
`JOHNSON ’950 AND MORIYA EACH DISCLOSE OR RENDER OBVIOUS
`TERMINAL IDENTIFIERS. (CLAIMS 1, 16, 22 AND 31) .................................1 
`Johnson ’950 inherently discloses use of IP addresses, which are “terminal
`A. 
`identifiers”....................................................................................................2 
`1. 
`Johnson ’950 inherently discloses IP addresses. ..............................2 
`2. 
`IP addresses, as used in Johnson ’950, are terminal identifiers. ......4 
`Moriya’s “model codes” are terminal identifiers. ........................................7 
`B. 
`JOHNSON ’950 IN VIEW OF MORIYA DISCLOSES OR RENDERS OBVIOUS
`SERVER IDENTIFIERS THAT CORRESPOND TO A TERMINAL IDENTIFIER.
`(CLAIMS 1, 16 AND 31) ........................................................................................8 
`JOHNSON ’950 IN VIEW OF MORIYA DISCLOSES OR RENDERS OBVIOUS
`GENERATING SECOND CONTROL INFORMATION. (CLAIMS 1 AND 16)9 
`JOHNSON ’950 IN VIEW OF MORIYA RENDERS OBVIOUS USING A TERMINAL
`AND SERVER WITH THE SAME IDENTIFIER. (CLAIM 5) ..........................13 
`JOHNSON ’950 IN VIEW OF MORIYA DISCLOSES OR RENDERs OBVIOUS
`STORING STATUS INFORMATION IN A TABLE. (CLAIMS 26 AND 34) ..13 
`VII.  COMBINING MORIYA’S USE OF A MODEL CODE WITH JOHNSON ’950
`WOULD HAVE BEEN OBVIOUS. .....................................................................15 
`Moriya alone teaches a server modifying HTML web pages based on the
`A. 
`capabilities of a device, and thus there is no hindsight involved in applying
`Moriya’s model codes to Johnson ’950’s HTML web pages. ...................15 
`Vivint’s objections to using server-based formatting with HTML are without
`merit. ..........................................................................................................16 
`VIII.  COMBINING UMBREIT’S LEVELS OF ACCESS WITH JOHNSON ’950 AND
`MORIYA WOULD HAVE BEEN OBVIOUS. (CLAIMS 6-8, 25 AND 33) .....20 
`Combining Johnson ’950 with Umbreit would not entail creating any undue
`A. 
`security risks. .............................................................................................20 
`Alarm.com did explain how and why Umbreit should be combined with the other
`references to meet the challenged claim limitations. .................................23 
`Vivint’s remaining objections to the proposed combinations in the Petition do not
`withstand scrutiny. .....................................................................................25 
`JOHNSON ’950 IN VIEW OF MORIYA AND UMBREIT DISCLOSES OR RENDERS
`OBVIOUS EXCLUDING ACCESS TO PORTIONS OF A SYSTEM TO CERTAIN
`USERS. (CLAIM 7)..............................................................................................27 
`CONCLUSION ......................................................................................................28
`i
`
`B. 
`
`B. 
`
`C. 
`
`IX. 
`
`X. 
`
`
`
`

`
`Case IPR2015-01977 of
`U.S. Patent No. 6,924,727
`
`
`
`
`EXHIBIT LIST
`
`Exhibit Description
`1017
`Brian Kelly, “Web Focus: Ways of Exploiting New Technologies”,
`Ariadne, Issue 16 (July 19, 1998)
`The Internet Standards Process – Revision 3 (October 1996) (RFC
`2026)
`DARPA Internet Program Protocol Specification (September 1981)
`(RFC 793)
`Requirements for Internet Hosts – Communication Layers (October
`1989) (RFC 1122)
`IP Network Address Translator (NAT) Terminology and
`Considerations (August 1999) (RFC 2663)
`Microsoft Corporation, How to Connect to the Internet in Windows 95
`and Windows 98 (retrieved September 23, 2016)
`Danny Goodman, Dynamic HTML: The Definitive Reference (1998)
`(excerpts)
`Dan Briody, “AllPen Software brings the Web to handheld devices”,
`InfoWorld (April 14, 1997)
`Apple Computer, Inc., MessagePad 130 with Newton 2.0 Operating
`System (February 1996)
`Microsoft Corporation, Multimedia Streaming on Microsoft Windows
`CE 3.0 (June 2000)
`American Heritage Dictionary, Second College Ed. (1982) (excerpts)
`Martha Woodall, “Parents have shield to block TV programs”,
`Baltimore Sun (June 28, 1999)
`Julie Flaherty, “Safer Web Playgrounds Are Aimed at Kids (and
`Paying Parents)”, New York Times (March 11, 1999)
`J. Tipton Cole Deposition Transcript (September 8, 2016)
`Reply Declaration of V. Thomas Rhyne, III, Ph.D. in Support of
`Petitioner’s Reply to Patent Owner’s Response to Petition for Inter
`Partes Review (September 26, 2016)
`Hypertext Transfer Protocol – HTTP/1.1 (June 1999) (RFC 2616)
`Eric Tilton, et al., Web Weaving: Designing and Managing An
`Effective Web Site (1995) (excerpts)
`
`1032
`1033
`
`ii
`
`
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`1028
`
`1029
`
`1030
`1031
`
`

`
`I.
`
`INTRODUCTION
`
`Case IPR2015-01977 of
`U.S. Patent No. 6,924,727
`
`
`On March 24, 2016, the Board instituted trial on claims 1-9, 14-18 and 22-
`
`38 of U.S. Patent No. 6,924,727 (“’727 Patent” or “Patent”), finding a “reasonable
`
`likelihood” that Petitioner Alarm.com will prevail in challenging each of these
`
`claims as obvious under 35 U.S.C. § 103(a) in view primarily of U.S. Patent Nos.
`
`6,580,950 (“Johnson ’950”), 6,161,140 (“Moriya”) and 6,704,787 (“Umbreit”).
`
`None of Patent Owner Vivint’s arguments to the contrary have merit for the
`
`reasons explained in the Petition and herein.
`
`II.
`
`JOHNSON ’950 AND MORIYA EACH DISCLOSE OR RENDER
`OBVIOUS TERMINAL IDENTIFIERS. (CLAIMS 1, 16, 22 AND 31)
`
`As the Board agreed in its Institution Decision (Paper 13, 15), the Petition
`
`cited two prior art elements—IP addresses and model codes—each independently
`
`satisfying the “terminal identifier” limitation of claims 1, 16, 22 and 31.1 See
`
`Paper 3 (“Petition”), 17-18 (IP address of Johnson ’950), 22 (model code of
`
`Moriya). The Board’s preliminary finding was correct.2
`
`
`1 Claim 22 substantively uses the same term: “identifier of a remote terminal”.
`
`2 The Board’s initial construction of “terminal identifier” was also correct,
`
`because it was consistent with the Patent’s teachings of an identifier added to
`
`network communications. Ex. 1031, ¶¶ 27-30. In addition, Vivint’s “NAT”
`
`
`
`1
`
`

`
`A.
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`Case IPR2015-01977 of
`U.S. Patent No. 6,924,727
`
`
`Johnson ’950 inherently discloses use of IP addresses, which are
`“terminal identifiers”.
`1.
`The Petition explains that Internet communications between the computer
`
`Johnson ’950 inherently discloses IP addresses.
`
`and data server as disclosed in Johnson ’950 inherently disclose the use of IP
`
`addresses (Petition, 17 (“communication … is not possible without identifiers”)).
`
`Vivint’s expert conceded this point at his deposition (Ex. 1030, 27:8-12), and it is
`
`well known in the art. Ex. 2027.0006 (specifying that hosts on the Internet are
`
`identified by fixed-length addresses). Thus, Alarm.com explained why a person of
`
`ordinary skill in the art (“POSA”) would have understood the use of addresses to
`
`be implicit in Johnson ’950’s disclosure, and supported its inherency argument
`
`with its expert, Dr. Rhyne’s opinion. Ex. 1009, ¶ 56(2). The Board agreed. Paper
`
`13, 15-17.
`
`Nowhere does Vivint factually dispute this conclusion, which should be
`
`conclusive as to this step in the analysis.
`
`Vivint instead claims that Dr. Rhyne improperly relied on a supposedly
`
`unsupported assertion in the Examiner’s Official Notice that use of IP addresses
`
`was obvious. Paper 19 (“Response”), 23.
`
`
`argument is simply not a relevant basis to narrow the Board’s construction. See
`
`Section II.A.2, infra; Ex. 1031, ¶¶ 34-36.
`
`
`
`2
`
`

`
`Vivint’s complaint is factually wrong; the Examiner did cite documentary
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`Case IPR2015-01977 of
`U.S. Patent No. 6,924,727
`
`
`authority for the proposition that the transmission of source addresses in data
`
`packets was a well-known property of network communication. See Ex.
`
`1002.0533 (citing definitions of “data packet” and “Ethernet” in Newton’s
`
`Telecom Dictionary, 18th ed.).3
`
`Vivint’s complaint is also irrelevant; the opinions of Dr. Rhyne and the
`
`arguments of Alarm.com concerning the inherency of the use of IP addresses is
`
`amply supported by the art and reasoning contained in the Petition and in Dr.
`
`Rhyne’s report, quite aside from the Examiner’s remarks concerning obviousness,
`
`which were merely cited as confirmatory. Alarm.com’s evidence that Johnson
`
`’950 inherently discloses IP addresses is sufficient even if the Examiner’s opinion
`
`is entirely disregarded. See also Ex. 1031, ¶ 37.
`
`
`3 The present case is thus unlike K/S HIMPP v. Hear-Wear Techs., LLC, 751
`
`F.3d 1362, 1366 (Fed. Cir. 2014), and Toshiba Corp. v. Optical Devices, LLC, No.
`
`IPR2014-01446, 2015 WL 1618986 (P.T.A.B. March 10, 2015), cited by Vivint, in
`
`which challengers relied on an examiner’s assertions concerning obviousness
`
`based purely on his personal knowledge. In addition, both of those cases
`
`concerned alleged obviousness of modifying a reference, not disputes concerning
`
`inherent disclosures (as here).
`
`
`
`3
`
`

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`Case IPR2015-01977 of
`U.S. Patent No. 6,924,727
`
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`IP addresses, as used in Johnson ’950, are terminal
`identifiers.
`
`2.
`
`Vivint contends that IP addresses cannot be “terminal identifiers” because
`
`they do not uniquely identify a terminal.4 Vivint is wrong for two reasons: (1) the
`
`use of IP addresses inherent in Johnson ’950 includes IP addresses that do uniquely
`
`identify terminals, and (2) it is not required that a terminal identifier uniquely
`
`identify a terminal.
`
`a.
`
`The implicit disclosure of IP addresses in Johnson ’950
`includes addresses that uniquely identify specific units.
`
`
`4 Vivint makes a secondary argument that the use of an IP address as a terminal
`
`identifier would be inconsistent with dependent claim 5, which requires the
`
`terminal and server identifiers to be the same. Response, 25. Vivint claims that
`
`“HTTP communication expects that the terminal and the server have different IP
`
`addresses”. Id. Even if that were true (it is not (Ex. 1031, ¶¶ 46-47)), the method
`
`of claim 5 does not involve communications between the terminal and the server, a
`
`point that Vivint’s expert conceded during his deposition. Ex. 1030, 54:16-21.
`
`Rather, the terminal communicates exclusively with the management facility. Id.,
`
`54:22-25; Ex. 1001, Claim 1, FIG. 11. Thus any HTTP communications to or from
`
`the terminal would use different source and destination IP addresses. Ex.
`
`1031, ¶ 45; Ex. 1030, 55:10-25.
`
`
`
`4
`
`

`
`Vivint supports its argument by constructing a combination of its own
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`Case IPR2015-01977 of
`U.S. Patent No. 6,924,727
`
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`making, and then attempting to use this combination to limit the inherent disclosure
`
`of Johnson ’950. Vivint seeks to combine Johnson ’950 with a hypothetical
`
`“gateway server” or “router” that uses Network Address Translation (“NAT”),
`
`arguing that in such a system, a gateway server or router would translate the
`
`terminal’s local network address into a public IP address, which would not qualify
`
`as a “terminal identifier” because it supposedly could be reused for multiple
`
`terminals on the local network. Response, 24-25.
`
`Johnson ’950 is not thus limited. In fact, Johnson ’950 never mentions a
`
`gateway server or router, or use of NAT, (Ex. 1031, ¶ 38), and the use of gateway
`
`servers and NAT was not inherent in Internet communications—a point that
`
`Vivint’s expert conceded at deposition (Ex. 1030, 30:17-22) and that Vivint
`
`admitted in its Response.5 Quite the contrary, Johnson ’950 expressly illustrates a
`
`home Internet configuration that does not include any gateway server. Ex. 1031,
`
`¶ 38; Ex. 1003, 4:55-61, FIG. 5. In such a system, the IP address will necessarily
`
`
`5 “[A]t the time of invention, many terminals would have also been behind at
`
`least one internet-facing gateway server or NAT router” and “the source IP address
`
`… in many instances, would never reach Johnson950’s data center”. Response, 24
`
`(emphasis added).
`
`
`
`5
`
`

`
`identify an individual terminal. Ex. 1031, ¶¶ 39-42.
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`Case IPR2015-01977 of
`U.S. Patent No. 6,924,727
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`Furthermore, there is no basis for Vivint’s hypothetical modification of
`
`Johnson ’950 to use a gateway server and NAT. This argument appears to be
`
`premised on the invocation of a reference to a “gateway server” in one
`
`embodiment of the ’727 Patent. But none of the challenged claims of the ’727
`
`Patent require the use of a gateway server. Equally important, the ’727 Patent
`
`cannot be prior art to itself. Thus, any combination of the ’727 Patent’s “gateway
`
`server” with Johnson ’950 is not a valid prior art combination, and certainly cannot
`
`narrow the prior art disclosure of Johnson ’950. See Graham v. John Deere Co. of
`
`Kansas City, 383 U.S. 1, 36 (1966) (warning against “the temptation to read into
`
`the prior art the teachings of the invention in issue”).
`
`b.
`
`A terminal identifier need not uniquely identify a single
`terminal.
`
`As detailed in the Petition (Petition, 13), and below in connection with
`
`the Moriya reference, the text of the ’727 Patent precludes the argument that a
`
`terminal identifier must uniquely identify a specific terminal. For this reason, too,
`
`Vivint’s argument that Johnson ’950 did not disclose “terminal identifiers” would
`
`be incorrect even if (and contrary to fact) IP addresses as inherently disclosed in
`
`Johnson ’950 did not include addresses that uniquely identify specific units.
`
`
`
`6
`
`

`
`B. Moriya’s “model codes” are terminal identifiers.
`The Board, in construing “terminal identifier”, stated that “the terminal
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`Case IPR2015-01977 of
`U.S. Patent No. 6,924,727
`
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`identifier may be the model number of a terminal, which, in turn, is used to
`
`identify the terminal”. Paper 13, 9. Vivint argues that, on the contrary, model
`
`codes (as in Moriya) cannot be “terminal identifiers” because model codes identify
`
`a “generic terminal type”, rather than “the specific terminal operated by a user”.
`
`Response, 26.
`
`In fact, the ’727 Patent’s text precludes any construction of “terminal
`
`identifier” that requires it to identify only a “specific terminal”. For example, the
`
`’727 Patent specifically claims inventions in which the “terminal identifier” is a
`
`“manufacturer model identifier” (Ex. 1001, 38:35-36, 40:9-10), and describes how
`
`a model identifier can be used to determine the display and communication
`
`capabilities of a specific terminal (id. 14:55-65, 15:3-11).6 Ex. 1031, ¶ ¶ 57-59.
`
`The construction of “terminal identifier” therefore cannot exclude model
`
`identifiers, as it would be inconsistent with the ’727 specification and the broadest
`
`reasonable interpretation standard. Phillips v. AWH Corp., 415 F.3d 1303, 1316
`
`(Fed. Cir. 2005). Vivint’s argument that Moriya does not disclose terminal
`
`
`6 Vivint ignores this intrinsic evidence cited in the Petition (Petition, 13),
`
`and instead cites only to its expert’s opinion. Response, 29.
`
`
`
`7
`
`

`
`identifiers is therefore incorrect.
`
`Case IPR2015-01977 of
`U.S. Patent No. 6,924,727
`
`
`III. JOHNSON ’950 IN VIEW OF MORIYA DISCLOSES OR RENDERS
`OBVIOUS SERVER IDENTIFIERS THAT CORRESPOND TO A
`TERMINAL IDENTIFIER. (CLAIMS 1, 16 AND 31)
`
`Vivint argues that Johnson ’950 does not disclose use of a server identifier
`
`that corresponds to the terminal identifier. Response, 30. In particular, Vivint
`
`argues that the “correspondence” of the ’727 Patent must be of a nature appropriate
`
`for security purposes. But the basis for that supposed security requirement appears
`
`to stem from Vivint’s interpretation of Figure 6 of the Patent and is found nowhere
`
`in the claims. Ex. 1031, ¶¶ 62-64. Nor could it be added, because doing so would
`
`improperly import the implementation of an invention from the written description
`
`into the claims. See SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875
`
`(Fed. Cir. 2004).
`
`The claims only require is that there be a correspondence, not that the
`
`correspondence be established or arranged for a security purpose. Johnson ’950
`
`discloses such a correspondence. Ex. 1031, ¶¶ 65. Johnson ’950’s system
`
`interface includes a “home selector” that establishes, in response to an incoming
`
`login from a computer (terminal), which control unit (home server) the terminal
`
`will be controlling. Ex. 1003, 6:51-53. Either the data center associates a
`
`“default” control unit with the particular terminal, or it uses the home selector to
`
`identify the corresponding control unit with which it will communicate via a
`
`
`
`8
`
`

`
`“connect” command. Id., 7:50-56.
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`Case IPR2015-01977 of
`U.S. Patent No. 6,924,727
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`IV. JOHNSON ’950 IN VIEW OF MORIYA DISCLOSES OR RENDERS
`OBVIOUS GENERATING SECOND CONTROL INFORMATION.
`(CLAIMS 1 AND 16)
`
`Raising an argument the Board previously rejected, Vivint contends that
`
`Johnson ’950 fails to disclose “generating … second control information on the
`
`basis of said first control information” (claims 1 and 16) because Johnson ’950
`
`teaches “forwarding” the first control information, rather than (supposedly)
`
`generating “new” control information based on the first.7 Response, 32.
`
`According to Vivint, the command information transmitted to the control unit in
`
`the home must be substantively different than the command information
`
`transmitted to the data center. Id. This argument is wrong for two reasons.
`
`First, Johnson ’950 does disclose generation of “second control
`
`information” different from the “first control information”. Specifically, the data
`
`center in Johnson ’950 generates additional control information in response to the
`
`user issuing a control command to a device. The operation described is not a
`
`
`7 Institution Decision, Paper 13, 18 (“[T]his process of retrieving pre-
`
`programmed commands and forwarding them along with the data desired by
`
`homeowner amounts to sufficient evidence that would support a finding that
`
`Johnson ’950 teaches the disputed ‘generating’ step.”).
`
`
`
`9
`
`

`
`simple retransmission of a received message, but rather a sequence of
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`Case IPR2015-01977 of
`U.S. Patent No. 6,924,727
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`communications, all of which are used to effect control of the home system. Ex.
`
`1031, ¶ 68.
`
`
`
`10
`
`

`
`Case IPR2015-01977 of
`U.S. Patent No. 6,924,727
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`Upon receiving a command from a homeowner, the data center of Johnson
`
`’950 sends a “connect” command to that homeowner’s control unit. Ex. 1003,
`
`
`
`11
`
`

`
`7:60-62, FIG. 7. If the unit is online, it sends a request for updated data if the data
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`Case IPR2015-01977 of
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`center’s stored information is out of date. Id., 7:62-67. If, on the other hand, the
`
`control unit is offline, the sequence halts after the “connect” command until it is
`
`back online, at which point it initiates a sequence to receive previously
`
`programmed commands from the data center. Id., 7:67-8:4, FIG. 8. This sequence
`
`requires the data center to generate new messages, including the connect
`
`instruction, the request to transmit current unit status and the command instruction.
`
`In addition, the data center must be able to generate all previously programmed
`
`homeowner commands when a control unit requests it. Vivint provides no
`
`explanation why these additional steps do not amount to “generating second
`
`control information”.
`
`Second, Vivint’s reading of the term “second control information” is
`
`unreasonably narrow. The ’727 Patent nowhere states that the second control
`
`information must differ from the first control information. Instead, Vivint
`
`fabricates such a restriction, claiming that “generating” control information means
`
`“the management facility performs operations in order to create a second control
`
`information”. Response, 32. That position is without merit. A POSA would
`
`understand that for the data center, or any computer, to transmit data over the
`
`network—even where the same information is being replicated—the sender must
`
`“perform operations” to create the packet being sent and that such packet would
`
`
`
`12
`
`

`
`necessarily be different from the “original” packet (e.g., different source and
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`Case IPR2015-01977 of
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`destination IP address). Ex. 1031, ¶ 67.
`
`V.
`
`JOHNSON ’950 IN VIEW OF MORIYA RENDERS OBVIOUS USING
`A TERMINAL AND SERVER WITH THE SAME IDENTIFIER.
`(CLAIM 5)
`
`Vivint argues that Johnson ’950’s statement that “the control unit 30 cannot
`
`be directly connected to [by other components]” precludes the use of a single home
`
`computer as both a terminal and home server (“control unit”) (Response, 36), but
`
`this is incorrect. If the same computer is used for both of the claimed elements,
`
`there is no need for any additional hardware, such as a control unit, to be “directly
`
`connected to” the home computer. The PC can be running the control software
`
`that communicates with the data center, as well as a web browser which connects
`
`to web servers at the data center. Ex. 1031, ¶¶ 50-55. In addition, the POSA
`
`would also be aware of other portions of the Johnson ’950 disclosure which
`
`specifically teach that the control unit can be connected to other hardware
`
`components within a home for certain purposes, including “local computers”. Ex.
`
`1003, 4:65-67.
`
`VI. JOHNSON ’950 IN VIEW OF MORIYA DISCLOSES OR RENDERS
`OBVIOUS STORING STATUS INFORMATION IN A TABLE.
`(CLAIMS 26 AND 34)
`
`Vivint argues that Johnson ’950 and Moriya do not disclose the data center
`
`storing status information in a table, as required by dependent claims 26 and 34, on
`
`
`
`13
`
`

`
`the erroneous premise that Johnson ’950 does not teach storage of status
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`Case IPR2015-01977 of
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`information about the home-located devices at the data center. Response, 37. But
`
`Johnson ’950 clearly discloses storing such information: “The data center 20 is
`
`capable of receiving, storing and transmitting various types of data related to the
`
`homeowner’s home such as … temperature data, images 74, photographs ….” Ex.
`
`1003, 4:47-53 (emphasis added); see also Ex. 1003, FIG. 7. Further, the data
`
`center in Johnson ’950 only requests status information about a device when the
`
`information it has is not up to date. Ex. 1003, 7:65-67 (“may then request … if not
`
`currently updated”), FIG. 7 (“Does Data Center have the Data Requested?”).
`
`Periodic updating of status information at the data center would be understood by a
`
`POSA as implying that the status information was stored at the data center in
`
`between updates. Ex. 1031, ¶¶ 70-71.
`
`As the Petition recognizes (Petition, 19), the use specifically of tables in a
`
`data center to store status information was both expressly disclosed in Moriya—
`
`and would also have been obvious to a POSA, as Vivint’s expert conceded. Ex.
`
`1030, 75:10-24. Vivint’s expert argues that it would have been possible to
`
`construct designs that did not use a table (Ex. 2026, ¶ 215), but this is irrelevant—
`
`the possibility of alternative designs does not make the claimed design any less
`
`obvious. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
`
`
`
`
`
`
`
`14
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`

`
`VII. COMBINING MORIYA’S USE OF A MODEL CODE WITH
`JOHNSON ’950 WOULD HAVE BEEN OBVIOUS.
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`Case IPR2015-01977 of
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`Vivint claims the combination of Johnson ’950’s system with Moriya’s
`
`usage of model information to inform formatting would not have been obvious. It
`
`claims the combination of the HTML standard in the web pages of Johnson ’950
`
`with the concept of the server formatting content based on device capabilities, as
`
`taught by Moriya, is based on “impermissible hindsight”. Response, 39-40. But
`
`here there is no possibility of impermissible hindsight because Moriya alone
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`expressly teaches the combination of HTML web pages with server-side
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`formatting. In addition, the technical arguments against use of HTML with server
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`formatting by Vivint’s expert are not credible.
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`A. Moriya alone teaches a server modifying HTML web pages based
`on the capabilities of a device, and thus there is no hindsight
`involved in applying Moriya’s model codes to Johnson ’950’s
`HTML web pages.
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`Moriya teaches a technique by which a “server [is] capable of transferring
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`information to various data terminals which are different in capabilities or features
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`from each other, in a manner appropriate to each data terminal”. Ex. 1006, 1:10-
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`13. Moriya expressly teaches a server modifying HTML web pages, sending one
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`version to a terminal with the model code for a “PC”, and another to a terminal
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`with the model code for a “PDA3”. Id., 8:63-9:3, FIG. 14. Whether combining
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`HTML web pages with formatting based on model codes would have been obvious
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`is thus not an open question—the combination was already taught in a single prior
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`art embodiment, and was thus indisputably known and a technique available to be
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`applied to Johnson ’950. Ex. 1031, ¶¶ 73-75. Vivint’s objections to the
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`combination should therefore be disregarded.
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`Both Johnson ’950 and Moriya teach a server providing web pages to
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`various web-enabled computers (PCs and mobile devices). Ex. 1003, FIG. 5; Ex.
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`1006, FIG. 2. Given that Johnson ’950 expressly teaches providing display
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`information to devices of varying capabilities, it would have been obvious to use
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`Moriya’s technique to provide modified web pages to the devices of different
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`capabilities, as the Petition explained. Petition, 22-24; Ex. 1009, ¶¶ 31-33.
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`B. Vivint’s objections to using server-based formatting with HTML
`are without merit.
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`Vivint claims that combining Moriya’s teachings of a server tailoring
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`responses based on device capability with the system of Johnson ’950 would not be
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`obvious because it would be “superfluous” and “redundant”. Response, 39.
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`According to Vivint, a web server has no reason to send different responses to
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`different web clients based on the receiving device’s capabilities. Id. This
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`argument is without merit, as demonstrated by the ’727 Patent itself: all the
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`embodiments described therein teach the use of a web server changing its
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`responses based on the capabilities of the client. Ex. 1001, 8:40-43, 11:1-8, 18:11-
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`17.
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`Further, as the ’727 Patent further suggests, the capability for web servers to
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`adjust web pages to account for the capabilities of clients had been long known and
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`implemented prior to the time of invention. Ex. 1031, ¶¶ 76-83, 87-88. This
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`mechanism—as documented in the relevant HTTP standard (1999)—is known
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`generally as “content negotiation”. Ex. 1032, 46-47. Using content negotiation,
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`one web browser could indicate that it supported images in GIF or JPEG formats,
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`while another browser supported the GIF format alone. Ex. 1031, ¶¶ 84-86; Ex.
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`1033, 120-21; Ex. 1017, 4. With this information, the server would supply a GIF-
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`only web page to the more limited browser, while supplying richer JPEG images to
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`the more capable browser.
`
`Patent Owner’s arguments to the contrary are without merit.
`
`First, contrary to Patent Owner’s assertion, the “shrink to fit” feature of
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`Pocket Internet Explorer (Response, 42-43) would not have obviated these benefits
`
`of Moriya and instead supports Petitioner’s argument, as many layouts, such as the
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`complex, multi-column layout disclosed by Johnson ’950 would become illegible
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`and difficult to use using “shrink to fit”. Ex. 1031, ¶¶ 92-94.
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`Second, Vivint is misguided when it contends that various “cross platform
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`standards” rendered “technically inaccurate” Alarm.com’s argument asserting the
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`need for format information based on the display capabilities of devices.
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`Response, 43-44. The existence of “cross platform standards” does not mean that a
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`file format that was designed to work on multiple platforms would actually work
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`on all platforms. Ex. 1031, ¶¶ 95-99; Ex. 1032, § 13.2. In addition, “cross
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`platform standards” cannot eliminate differences in the capability of devices. For
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`example, for devices with constrained bandwidth and memory, such as the
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`handheld devices of the time, it would have been important to reduce the data size
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`of web pages (as disclosed in Moriya), regardless of the existence of “cross
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`platform standards”. Ex. 1031, ¶ ¶ 90-91.
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`Finally, Vivint also makes the odd argument that combining Moriya’s model
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`codes with Johnson ’950 would render the system “inoperable for its intended
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`purpose”, on the theory that an HTML-only system would not work with devices
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`that do not support HTML (as is the case with certain embodiments in Moriya).
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`Response, 45-46. But that argument is specious. On the one hand, neither Johnson
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`’950 nor Moriya are limited to an “HTML-only system”. On the other hand,
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`nothing in Alarm.com’s combination of Johnson ’950 and Moriya requires
`
`supporting non-HTML devices. Johnson ’950 discloses specific embodiments that
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`use web pages,8 and Moriya specifically discloses the use of a model identifier
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`with web pages. Ex. 1006, 8:59-9:3. Consequently, the combination of Moriya
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`with Johnson ’950, in which Moriya’s teaching of sending model codes allows the
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`Johnson ’950 server to tailor its output based on device capabilities, results in an
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`operational system. Ex. 1031, ¶¶ 101-02. Alternate embodiments of Moriya that
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`support non-HTML devices are irrelevant, and Alarm.com did not rely on such
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`embodiments to render the challenged claims obvious.
`
`
`8 Vivint claims that certain devices, such as cellular telephones, could not
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`display the control page. But nothing in Johnson ’950 teaches that the control page
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`is used on cellular telephones or other non-web devices. Instead, Johnson ’950
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`teaches that the data center can notify users of events in the home via telephone
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`call, pager messages or other means. Ex. 1003, 6:2-6.
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`VIII. COMBINING UMBREIT’S LEVELS OF ACCESS WITH JOHNSON
`’950 AND MORIYA WOULD HAVE BEEN OBVIOUS. (CLAIMS 6-8,
`25 AND 33)
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`Case IPR2015-01977 of
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`Vivint makes three arguments as to why combining Umbreit—which teaches
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`methods for limiting access to portions of a website based on a level of access
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`determined by age, gender or other attributes of a user (Ex. 1004, 6:58-7:10)—with
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`Johnson ’950 to meet the limitations of challenged claims 6-8, 25 and 33 would not
`
`have been obvious. None have merit.
`
`A. Combining Johnson ’950 with Umbreit would not entail creating
`any undue security risks.
`
`Vivint argues that a POSA would not combine Umbreit’s teachings
`
`concerning restricting system access and authenticating users based on their access
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`code with Johnson ’950 because the Umbreit system creates a security risk in that
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`unauthorized users could gain access to a homeowner’s system merely by
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`supplying demographic information for the homeowner. Response, 54.
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`Specifically, Vivint tries to contrast the user/password authentication of Johnson
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`’950 with the access code of Umbreit.
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`Vivint’s argument is wrong on the facts.9 Umbreit expressly teaches the use
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`9 In addition, even if the combination would make the system less secure
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`(which it would not), a motivation to combine is not negated merely because a
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`of separate user accounts, each with its own access code (Ex. 1004, 6:17-22, 27-
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`30). Ex. 1031,