Case: 17-2218 Document: 73 Page: 1 Filed: 12/20/2018
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`NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`VIVINT, INC.,
`Appellant
`
`v.
`
`ALARM.COM INC.,
`Cross-Appellant
`______________________
`
`2017-2218, 2017-2219, 2017-2220, 2017-2260, 2017-2261,
`2017-2262
`______________________
`
`Appeals from the United States Patent and Trade-
`mark Office, Patent Trial and Appeal Board in Nos.
`IPR2016-00116, IPR2016-00161, IPR2016-00173.
`______________________
`
`Decided: December 20, 2018
`______________________
`
`ROBERT GREENE STERNE, Sterne Kessler Goldstein &
`Fox, PLLC, Washington, DC, argued for appellant. Also
`represented by JASON DANIEL EISENBERG, DEIRDRE M.
`WELLS.
`
` RICHARD J. STARK, Cravath Swaine & Moore LLP,
`New York, NY, argued for cross-appellant. Also repre-
`sented by TEENA-ANN V. SANKOORIKAL, Levine Lee LLP,
`
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`VIVINT, INC. v. ALARM.COM INC.
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`New York, NY; WILLIAM MANDIR, DAVID PHILLIP EMERY,
`Sughrue Mion PLLC, Washington, DC.
` ______________________
`
`Before PROST, Chief Judge, O’MALLEY and HUGHES,
`Circuit Judges.
`O’MALLEY, Circuit Judge.
`In three inter partes review proceedings requested by
`Alarm.com, Inc., the Patent Trial and Appeal Board (“the
`Board”) invalidated various claims of Vivint Inc.’s U.S.
`Patent Nos. 6,147,601 (“’601 patent”), 6,462,654 (“’654
`patent”), and 6,535,123 (“’123 patent”).1 It also found
`other claims patentable over the prior art.
`Vivint now appeals the Board’s decision invalidating
`its claims. Alarm.com cross-appeals, arguing that the
`surviving claims should also be invalidated. Because the
`Board did not err in invalidating the patent claims at
`issue in Vivint’s appeal, we affirm. With respect to
`Alarm.com’s cross-appeal, we conclude that the Board’s
`construction of “communication device
`identification
`codes” is not consistent with the broadest reasonable
`interpretation of the relevant claims. We therefore re-
`verse its construction, vacate its related conclusions, and
`remand for further consideration. We affirm the Board’s
`decision on the claims at issue in the cross-appeal in all
`other respects.
`
`
`1 See Alarm.com Inc. v. Vivint, Inc., IPR2016-00116,
`Paper No. 39 (P.T.A.B. May 2, 2017) (“’601 Decision”);
`Alarm.com Inc. v. Vivint, Inc., IPR2016-00173, Paper No.
`40 (P.T.AB May 2, 2017) (“’123 Decision”); Alarm.com Inc.
`v. Vivint, Inc., IPR2016-00161, 2017 WL 1969742
`(P.T.A.B. May 10, 2017) (“’654 Decision”).
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`VIVINT, INC. v. ALARM.COM INC.
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`3
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`I. BACKGROUND
`A. The Technology
`The patents at issue describe systems and methods
`for remotely monitoring equipment, such as a heating,
`ventilating, and cooling system (“HVAC system”). See,
`e.g., ’601 patent, col. 1, ll. 10–14.2 These systems and
`methods work by using a centralized server to communi-
`cate with monitored equipment so that a user, e.g. a
`property owner or contractor, is contacted if the equip-
`ment encounters problems.
`There are two ways, generally, that the server learns
`equipment has encountered an issue. First, the equip-
`ment can report a problem directly to the server. For
`example, if the equipment has low battery, then an inter-
`face unit connected to the equipment sends an “exception”
`message to the server. The server then processes this
`message and, depending on how the server is configured,
`sends a notification to certain users. Second, interface
`units can be configured to send status messages to the
`server. At some defined interval, the server compares the
`list of interfaces that relayed a status message with a list
`of all the equipment being monitored. For each missing
`entry, i.e. equipment that did not send a status message,
`the server “sends out the appropriate messages to the
`proper individuals.” Id. col. 5, ll. 6–10.
`In either case, users are contacted based on what the
`patents call a “message profile.” Id. col. 2, ll. 14–16. This
`message profile essentially directs the server where to
`send messages if a problem arises. Id. For example, a
`user might configure a message profile so that different
`
`2 The ’601 patent, the ’123 patent, and the ’654 pa-
`tent are all related and share similar specifications. For
`simplicity, we refer to the ’601 patent unless otherwise
`noted.
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`VIVINT, INC. v. ALARM.COM INC.
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`people are notified if an issue is encountered during the
`day or at night, if an issue is high priority or low, etc. A
`user might similarly configure a message profile so that
`multiple people are notified about the same problem.
`B. The Prior Art
`Although Alarm.com raised several prior art refer-
`ences before the Board, only three are relevant to this
`appeal. We will briefly discuss each in turn.
`1. Shetty
`U.S. Patent 5,808,907 (“Shetty”) describes a method
`for monitoring machines and notifying users if certain
`events occur. J.A. 2111. It works by having a “batch
`processing means 102” retrieve a list of events that have
`occurred, stored in an “event database,” and a list of
`which users should be contacted and under what condi-
`tions, stored in a “user profile database.” J.A. 2115. The
`batch processing means then compares the list of events
`that have occurred with the list of events that trigger a
`notification for each profile. “If all the conditions of a user
`profile are met, then the user is notified, via a notification
`means 112.” Id. (“Each profile may also trigger a differ-
`ent mode or modes of communication (page, Email, fax).”).
`According to Shetty, users may “access” the user pro-
`file database and the event database through a user
`interface. Id. (“A user interface 110 allows a user to
`access both the user profile database 106 and the event
`database 108.”).
`
`2. Britton
`U.S. Patent 6,040,770 (“Britton”) describes a system
`for supervising the communication path between an
`alarm panel and a centralized server. J.A. 2125. This
`path is supervised by the “continual transmission” of
`check-in messages sent from the alarm panel to the
`server. Id. If a check-in message is received before the
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`VIVINT, INC. v. ALARM.COM INC.
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`expiration of a predefined interval, “then the integrity of
`the communication path for that certain panel 32 has
`been proven.” J.A. 2126. If it is not, the server generates
`an alert. J.A. 2125–26.
`3. Levac
`U.S. Patent 6,034,970 (“Levac”) describes systems and
`methods for transmitting messages generated by one or
`more “message source(s)” to different types of communica-
`tion devices. J.A. 2136. As relevant to this appeal, Levac
`explains that these messages are embedded in an “.msa
`file” along with information about the message, such as
`when and where it should be sent. J.A. 2137. For exam-
`ple, the preferred embodiment in Levac incorporates a
`“RUNTIME” variable that relays information about the
`second, minute, hour, day, month, or year when a mes-
`sage should “start running” and “end running.” J.A. 2138.
`C. Procedural History
`Based on Alarm.com’s petitions, the Board instituted
`review of claims 1, 2, 4–15, 17–23, 25–31, and 33–41 of
`the ’601 patent, claims 9, 10, 14, 17, 18, 22, and 25–28 of
`the ’654 patent, and all claims of the ’123 patent. The
`Board ultimately invalidated as obvious claims 1, 2, 4, 6,
`7, 10–15, 17, 18, 22, 23, 25, 29, and 38 of the ’601 Patent;
`claims 9, 10, 14, and 27 of the ’654 Patent; and claims 1,
`2, 4–6, 10, 13, and 15–17 of the ’123 Patent. But it reject-
`ed Alarm.com’s arguments for the remaining instituted
`claims.
`
`II. DISCUSSION
`A. Vivint’s Appeal
`Vivint contends that the Board erroneously construed
`the “message profile” limitation and unreasonably con-
`cluded that Shetty discloses “remotely configur[ing]” a
`message profile. These limitations are both required by
`all the invalidated claims. For the remaining limitations,
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`VIVINT, INC. v. ALARM.COM INC.
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`Vivint insists that the Board failed to adequately explain
`its findings. After a careful examination of the Board’s
`findings and conclusions as well as a review of the record
`upon which they were based, however, we find no error
`warranting reversal. We therefore affirm the Board’s
`conclusion on these issues and its decisions on these
`claims.
`
`B. Alarm.com’s Cross-Appeal
`Alarm.com argues that the Board erred in construing
`a limitation relating to “communication device identifica-
`tion codes.” Alarm.com also contends that the Board
`erred in finding various claims relating to “normal status
`message[s]” patentable over the prior art. Finally,
`Alarm.com maintains that the Board similarly erred with
`respect to claim 19 of the ’601 patent. We address each
`argument in turn.
`1. “communication device identification codes”
`Several claims of the ’601 patent and the ’123 patent
`recite a message profile that is further configured to
`include “communication device identification codes.”3 For
`example, claim 26 of the ’601 patent reads:
`26. A system according to claim 22, said system
`monitoring a plurality of pieces of equipment,
`each piece having an identification code, said
`server further comprising:
`
`
`3 This limitation is required by claims 26–28, 30–
`31, 33–37, and 41 of the ’601 patent and claims 3 and 14
`of the ’123 patent. Some claims of the ’654 patent also
`include this limitation. See, e.g., ’654 patent, col. 17, ll.
`63–67. But the proper construction of “communication
`device identification codes” in the ’654 patent is not
`presented here.
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`a first memory on which equipment identi-
`fication codes of all monitored equipment
`are stored;
`a second memory in which communication
`device identification codes of all of said us-
`er-defined communication remote devices
`are stored, said communication device
`identification codes being configured in a
`plurality of said user-defined message pro-
`files.
`See, e.g., ’601 patent, col. 11, ll. 20–29 (emphases added);
`’123 patent, col. 16, ll. 48–57.
`Before the Board, Alarm.com argued that “communi-
`cation device identification codes” refer to phone numbers
`or email addresses. ’601 Decision at 19 (“Alarm.com
`reiterates that . . . storing telephone numbers and email
`addresses are the only disclosure of storing any data
`about communication devices.”); ’123 Decision at 17
`(same). The Board disagreed. Instead, it construed
`“communication device identification codes” to include
`“either a device ID (e.g., a [mobile identification number
`(“MIN”)]) or a serial number of a device (e.g., an [electron-
`ic serial number (“ESN”)]).” See ’601 Decision at 20–21;
`’123 Decision at 17–20.
`We review the Board’s conclusions of law de novo and
`its findings of fact for substantial evidence. In re Gart-
`side, 203 F.3d 1305, 1316 (Fed. Cir. 2000). Substantial
`evidence is “such relevant evidence as a reasonable mind
`might accept as adequate to support a conclusion.” Aren-
`di S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1361 (Fed. Cir.
`2016); see also Consol. Edison Co. of New York v.
`N.L.R.B., 305 U.S. 197, 229 (1938). This same framework
`applies to claim construction. PPC Broadband, Inc. v.
`Corning Optical Commc’ns RF, LLC, 815 F.3d 747, 751
`(Fed. Cir. 2016). We therefore conduct a de novo review of
`the Board’s determination of the broadest reasonable
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`VIVINT, INC. v. ALARM.COM INC.
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`interpretation of the claims, reviewing any underlying
`factual findings for substantial evidence. Id.
`At the outset, Vivint argues that the Board’s construc-
`tion is entitled to deference because it relied on extrinsic
`evidence. We disagree. The Board construed “communi-
`cation device identification codes” without reference to
`any extrinsic evidence. ’601 Decision at 20 (“Based on our
`review of the claims and Specification of the ’601 pa-
`tent . . . .” (emphasis added)); ’123 Decision at 13 (same).
`The Board did credit Vivint’s expert, but only in applying
`its construction of “communication device identification
`codes” to the prior art:
`In our claim construction section above, we con-
`strue the claim term “communication device iden-
`tification codes” as including either a device ID or
`serial number of a device. Shetty’s telephone
`numbers and email addresses are not consistent
`with this construction because they do not identify
`uniquely a specific device. We also credit Vivint’s
`declarant, Mr. Denning’s, testimony on this par-
`ticular issue. See Ex. 2010 ¶¶ 127–130.
`’601 Decision at 52 (internal citations omitted); ’123
`Decision at 48 (same); see also J.A. 4894–95 (relevant
`portion of Mr. Denning’s testimony, explaining his views
`on the scope of Shetty). The Board’s construction of
`“communication device identification codes” is therefore
`not entitled to deference. Teva Pharm. USA, Inc. v.
`Sandoz, Inc., 135 S. Ct. 831, 841 (2015) (“As all parties
`agree, when the district court reviews only evidence
`intrinsic to the patent . . . the judge’s determination will
`amount solely to a determination of law, and the Court of
`Appeals will review that construction de novo.”).
`Turning to the merits, we agree with Alarm.com that
`the Board erred in construing “communication device
`identification codes.” As the Board acknowledged, neither
`the ’601 patent nor the ’123 patent define “communication
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`device identification codes” in the specification. ’601
`Decision at 20; ’123 Decision at 17. And yet, the Board
`decided that “communication device identification codes”
`must refer to something “capable of uniquely identifying
`communication devices.” ’601 Decision at 20; ’123 Deci-
`sion at 20 (same). Even assuming this is correct, howev-
`er, the Board’s conclusion that a phone number or email
`address cannot uniquely identify a communication device
`defies the patents’ teachings. For example, both patents
`explain that a mobile identification number refers to a
`device in the same way that a phone number refers to a
`cellular phone, i.e. a communication device. ’601 patent,
`col. 6, ll. 61–65 (“Every interface unit 10 is provided, like
`a cellular telephone, with an electronic serial number
`(ESN, to identify the specific interface unit sending the
`message) and a mobile identification number (MIN,
`similar to a cellular telephone’s phone number).”); ’123
`patent, col. 10, ll. 38–42 (same).4 But the Board’s con-
`struction suggests the opposite. The ’123 patent also
`expressly teaches that a phone number can uniquely
`identify a delivery address, i.e. a communication device.
`See, e.g., ’123 patent, col. 14, ll. 57–60 (“Multiple deliver-
`ies are accomplished by having multiple delivery records
`in the delivery tables 722–725 with the same Message
`Delivery ID each having a unique delivery address i.e. fax
`number, phone number, etc.”). But the Board construc-
`tion also suggests the opposite. Its construction is there-
`fore not reasonable. PPC Broadband, 815 F.3d at 755
`(“Above all, the broadest reasonable interpretation must
`be reasonable in light of the claims and specification.”).
`Vivint insists that the Board’s construction is con-
`sistent with the plain meaning of “communication device
`
`
`4 The patents also suggest that an email address is
`used to identify a certain communication device. ’601
`patent, col. 6, ll. 7–23; ’123 patent, col. 9, ll. 17–33 (same).
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`identification codes.” We disagree. At most, Vivint’s
`citations to the ’601 patent show that serial numbers or
`mobile identification numbers might be examples of
`“communication device identification codes.” But this
`falls short of explaining why phone numbers and email
`addresses are not. Vivint’s argument as to the ’123 patent
`fares no better. That the ’123 patent includes “Device ID”
`and “Serial Number” variables in a particular figure, for
`example, suggests these variables might also be used to
`identify communication devices.5 It does not suggest that
`phone numbers and email addresses cannot also do so.
`See Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056,
`1065–66 (Fed. Cir. 2018) (“Even if Polaris is correct that
`Figure 1 shows a mounting plate that does not extend
`across the entire passenger compartment, Denney’s
`specification is broader than the embodiment illustrated
`in that figure.”).
`Accordingly, we reverse the Board’s construction of
`“communication device identification codes,” vacate its
`related conclusions, and remand for further consideration
`in light of the foregoing analysis.6
`2. “normal status message”
`Several of the claims at issue recite limitations relat-
`ing to “normal status message[s].” In some claims, this
`
`
`5 Alarm.com argues that the “Device ID” and “Seri-
`al Number” variables describe the equipment sensors
`rather than the communication devices. We need not
`resolve that question. Even assuming Vivint is correct,
`nothing about this single figure undoes the other teach-
`ings in the ’123 patent. See, e.g., ’123 patent, col. 14 ll.
`57–60.
`6 Because we find that the Board erred in constru-
`ing the claims at issue, we do not address the Board’s
`application of that construction to the prior art.
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`“normal status message” must be “indicative of” some
`equipment operating properly. See, e.g. ’601 patent, col.,
`ll. 19–22 (“5. A method according to claim 1, wherein
`step (e) further comprises the step of determining wheth-
`er an incoming message is a normal status message
`indicative of proper operation of the piece of remote
`equipment.”). In other claims, the “normal status mes-
`sage” is sent “if [some] equipment is functioning proper-
`ly.” See, e.g., ’654 patent, col. 19, ll. 56–59 (“25. A system
`for monitoring remote equipment, comprising . . . an
`interface unit . . . having a message generating mecha-
`nism for periodically sending a normal status message if
`the piece of remote equipment is functioning proper-
`ly . . . .”).
`Alarm.com argues that Shetty, in view of Britton, sat-
`isfies these various normal status message limitations
`because Britton teaches sending status messages that
`indicate whether equipment is functioning properly.
`The Board disagreed based on, among other things,
`its interpretation of what Britton discloses. ’601 Decision
`at 67–69, ’123 Decision at 58–60, ’654 Decision at 55–57.
`We review that determination for substantial evidence.
`In re Warsaw Orthopedic, Inc., 832 F.3d 1327, 1332 (Fed.
`Cir. 2016) (“An examination of the scope and content of
`the prior art produces factual findings reviewed for sub-
`stantial evidence.”); Graham v. John Deere Co. of Kansas
`City, 383 U.S. 1 (1966) (acknowledging that obviousness
`raises “several basic factual inquiries” including “the
`scope and content of the prior art”).
`The Board’s conclusion about the scope of Britton is
`supported by substantial evidence. As the Board ex-
`plained, Britton differs from the claimed inventions
`because Britton’s status messages reflect the integrity of a
`communication path, such as a cellular network, linking
`alarm equipment and a central alarm monitor. See, e.g.,
`J.A. 2125 (explaining that status messages are “designed
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`to test the communication channel between the protected
`premise panel 32 and receiving equipment 34 for a com-
`promise” (emphasis added)). If a message is received, or
`not, it indirectly relays information about the communica-
`tion path. See, e.g., J.A. 2126 (“If the transmission of the
`message corresponding to the value seventeen (17) is
`properly received by the receiving equipment 34—before
`the expiration of the thirty-seventh (37th) minute—then
`the integrity of the communication path for that certain
`panel 32 has been proven.” (emphasis added)); J.A. 2124
`(“[T]he ‘interrogation’ message corresponds to an inquiry,
`‘address no, ‘x,’ do you respond?’ If there is no satisfactory
`response, then the central alarm monitoring station
`follows up with further error checking to detect a com-
`promised communication path.” (emphasis added)). But
`Britton’s status messages do not confirm that equipment,
`sensors, or interfaces are functioning properly. See Oral
`Arg.
`at
`34:18–34:30,
`available
`at
`http://oralarguments.cafc.uscourts.gov/default.aspx?fl=20
`17-2218.mp3 (“[Court:] But isn’t the problem that you
`could get that message in Britton, saying that the tele-
`phone connection is okay, but still have an underlying
`problem with the system. [Counsel for Alarm.com:] That
`certainly is the issue the Board identified . . . .”). By
`contrast, the patents at issue explain that normal status
`messages convey information, directly or indirectly, about
`monitored equipment, e.g. sensors, interfaces, or other
`equipment. See, e.g.,’601 patent, col. 5, ll. 1–23; ’123
`patent, col. 6, ll. 23–53; ’654 patent, col. 6, ll. 24–55. This
`is also what the claims require. See ’601 Decision at 67–
`69, ’123 Decision at 58–60, ’654 Decision at 55–57.
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`We therefore affirm the Board’s conclusion that the
`normal status message claims7 are patentable over the
`prior art.
`
`3. Claim 19 of the ’601 patent
`Claim 19 of the ’601 patent requires “enabling selec-
`tion of different user-defined communication devices to
`receive outgoing exception messages at different time
`periods.” ’601 patent, col. 10, ll. 28–34.
`Alarm.com argues that, because it would have been
`possible to modify Shetty in view of Levac, claim 19 is
`obvious. Cross-Appellant Br. at 76 (“Through its finding
`that ‘it might have been possible [to] us[e] Levac’s system’
`parameters to practice claim 19, the Board effectively
`acknowledged . . . that some uses of Levac in combination
`with Shetty would meet the time-related elements of
`claim 19. That is all that is required.”). But this misun-
`derstands the Board’s reasoning. Rather than stating
`that Shetty in view of Levac could not render claim 19
`obvious, the Board focused on the absence of a motivation
`to modify Shetty to practice claim 19 based on Levac:
`Although it might have been possible using
`Levac’s system to define two ‘messages’ in the
`manner proposed by Alarm.com—with one to run
`from 9:00 AM to 5:00 PM and the second to run
`from 5:00 PM to 9:00 AM, with each specifying a
`different mode of notification—Alarm.com points
`to no evidence that the ordinarily skilled artisan
`at the time of the alleged invention of claim 19 ac-
`tually would have had reason to do so in the ab-
`sence of the teachings of the ’601 patent itself. In
`
`7 This includes claims 5, 8–9, 20–21, 30–31, 37, and
`39–41 of the ’601 patent; claims 17, 18, 22, 25, 26, and 28
`of the ’654 patent; and claims 7–9, 11–12, and 18–20 of
`the ’123 patent.
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`other words, in light of the evidence before us, we
`are not persuaded that the subject matter of claim
`19 would have been obvious to a person of ordi-
`nary skill in the art in the absence of improper
`hindsight knowledge.
`See, e.g., ’601 Decision at 60–61 (internal citations omit-
`ted).
`We review a decision by the Board about the presence
`or absence of a motivation to combine for substantial
`evidence. Intelligent Bio-Sys., Inc. v. Illumina Cambridge
`Ltd., 821 F.3d 1359, 1366 (Fed. Cir. 2016). Substantial
`evidence supports the Board’s conclusion here. For exam-
`ple, Shetty does not suggest that it is desirable to notify
`different users depending on the time of day. Nor does
`Levac teach using its system to accomplish that goal, even
`if such a configuration is possible.8 Cf. Belden Inc. v.
`Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015)
`(“[O]bviousness concerns whether a skilled artisan not
`only could have made but would have been motivated to
`
`8 To the extent Alarm.com invites us to reverse be-
`cause the Board acknowledged a possible motivation in its
`Institution Decision or found a motivation with respect to
`different claims, we decline to do so. See Trivascular, Inc.
`v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016) (“Con-
`trary to TriVascular’s assertions, the Board is not bound
`by any findings made in its Institution Decision. At that
`point, the Board is considering the matter preliminarily
`without the benefit of a full record. The Board is free to
`change its view of the merits after further development of
`the record and should do so if convinced its initial inclina-
`tions were wrong.” (emphasis in original)); Oral Arg. at
`31:30–32:40,
`available
`at
`http://oralarguments.cafc.uscourts.gov/default.aspx?fl=20
`17-2218.mp3 (discussing motivation to combine with
`respect to claim 19).
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`make the combinations or modifications of prior art to
`arrive at the claimed invention.”). We therefore affirm
`the Board’s conclusion as to claim 19 being patentable
`over the prior art.
`
`III. CONCLUSION
`We have considered Vivint’s and Alarm.com’s remain-
`ing arguments and find them unpersuasive. Accordingly,
`we reverse the Board’s construction of “communication
`device identification codes,” vacate its related conclusions,
`and remand for further consideration consistent with this
`opinion. We affirm in all other respects.
`AFFIRMED AS TO CASE NOS. 17-2218, 17-2219, 17-
`2220
`AFFIRMED IN PART, VACATED IN PART,
`REVERSED IN PART, AND REMANDED AS TO
`CASE NOS. 17-2260, 17-2261, 17-2262
`COSTS
`
`No costs.
`
`