Paper No. 55
` Entered: July 24, 2019
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`ALARM.COM INC.,
`Petitioner,
`
`v.
`
`VIVINT, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00116
`Patent 6,147,601
`____________
`
`Before MICHAEL R. ZECHER, JAMES B. ARPIN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`
`DECISION ON REMAND
`Inter Partes Review
`35 U.S.C. § 144 and 37 C.F.R. § 42.5(a)
`
`
`
`
`
` Entered: July 24, 2019
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`ALARM.COM INC.,
`Petitioner,
`
`v.
`
`VIVINT, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00116
`Patent 6,147,601
`____________
`
`Before MICHAEL R. ZECHER, JAMES B. ARPIN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`
`DECISION ON REMAND
`Inter Partes Review
`35 U.S.C. § 144 and 37 C.F.R. § 42.5(a)
`
`
`
`
`
`
`IPR2016-00116
`Patent 6,147,601
`
`I. BACKGROUND
`
`A. Introduction
`
`We address this case on remand after a decision by the U.S. Court of
`Appeals for the Federal Circuit in Vivint, Inc. v. Alarm.com Inc., 754
`F. App’x 999 (Fed. Cir. 2018) (see Paper 42).
`As background, Petitioner, Alarm.com Inc. (“Alarm.com”), filed a
`Petition requesting an inter partes review of claims 1, 2, 4–23, 25–31, and
`33–41 of U.S. Patent No. 6,147,601 (Ex. 1101, “the ’601 patent”). Paper 1
`(“Pet.”).1 Patent Owner, Vivint, Inc. (“Vivint”), filed a Preliminary
`Response. Paper 12. Taking into account the arguments presented in
`Vivint’s Preliminary Response, we determined that the information
`presented in the Petition established that there was a reasonable likelihood
`that Alarm.com would prevail in challenging claims 1, 2, 4–15, 17–23, 25–
`31, and 33–41 of the ’601 patent as unpatentable under 35 U.S.C. § 103(a).
`Pursuant to 35 U.S.C. § 314, we instituted this inter partes review on May 4,
`
`
`1 On December 17, 2015, after Alarm.com’s filing of the Petition, Vivint
`filed a Request for Certificate of Correction with respect to the ’601 patent,
`seeking to correct an alleged mistake in claim 39. Ex. 2003 (“Request”), 3.
`By Order dated January 28, 2016, we stayed the Request, pursuant to
`37 C.F.R. § 42.3, pending our decision on the Petition and related petitions
`filed in Cases IPR2015-02004 and IPR2016-00155, and we also authorized
`Alarm.com to file a brief limited to addressing certain issues related to the
`requested Certificate of Correction. See Paper 9. Alarm.com filed its Brief
`shortly before Vivint filed a Preliminary Response in this case. Paper 11.
`On June 1, 2016, we lifted the stay of the Request (Paper 16), and the
`Certificate of Corrections Branch of the Office subsequently denied the
`Request (Ex. 3001).
`
`2
`
`
`
`IPR2016-00116
`Patent 6,147,601
`2016, only as to claims 1, 2, 4–15, 17–23, 25–31, and 33–41. Paper 14
`(“Dec. on Inst.”).
`During the course of trial, Vivint filed a Patent Owner Response
`(Paper 20, “PO Resp.”), and Alarm.com filed a Reply to the Patent Owner
`Response (Paper 26, “Pet. Reply”). Vivint also filed a Motion for
`Observation regarding certain cross-examination testimony of Alarm.com’s
`reply declarant, Arthur Zatarain, PE (Paper 32), and Alarm.com filed a
`Response to Vivint’s Motion for Observation (Paper 34). A consolidated
`oral hearing with Cases IPR2016-00161 and IPR2016-00173 was held on
`January 31, 2017, and a transcript of the hearing is included in the record.
`Paper 38.
`On May 2, 2017, we issued a Final Written Decision in this
`proceeding in accordance with 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`Paper 39 (“Final Dec.”). We were persuaded that Alarm.com demonstrated
`by a preponderance of the evidence that claims 1, 2, 4, 6, 7, 10–15, 17, 18,
`22, 23, 25, 29, and 38 of the ’601 patent are unpatentable under § 103(a), but
`that Alarm.com had not demonstrated by a preponderance of the evidence
`that claims 5, 8, 9, 19–21, 26–28, 30, 31, 33–37, and 39–41 of the ’601
`patent are unpatentable under § 103(a). Final Dec. 69–70. Vivint appealed
`our determinations that claims 1, 2, 4, 6, 7, 10–15, 17, 18, 22, 23, 25, 29, and
`38 are unpatentable to the Federal Circuit, and Alarm.com cross-appealed
`our determinations upholding the patentability of claims 5, 8, 9, 19–21, 26–
`28, 30, 31, 33–37, and 39–41. Papers 40, 41.
`In its decision on appeal, issued on December 20, 2018, the Federal
`Circuit affirmed our determinations that claims 1, 2, 4, 6, 7, 10–15, 17, 18,
`3
`
`
`
`IPR2016-00116
`Patent 6,147,601
`22, 23, 25, 29, and 38 are unpatentable and that claims 5, 8, 9, 19–21, 30, 31,
`37, and 39–41 were not shown to be unpatentable. Vivint, 754 F. App’x at
`1002–03. The Federal Circuit, however, reversed our construction of the
`claim term “communication device identification codes” required by claims
`26–28 and 33–36,2 vacated the related conclusions, and remanded for further
`proceedings consistent with its decision. Id. at 1003–05. The Federal
`Circuit’s mandate issued on January 29, 2019. Paper 43.
`On March 1, 2019, we issued an Order authorizing post-remand
`briefing narrowly tailored to addressing whether the asserted prior art
`teaches or suggests the claim term “communication device identification
`codes,” as construed by the Federal Circuit. Paper 44, 5. We also indicated
`that no new evidence of any kind was permitted to be filed. Id. In
`compliance with that Order, Alarm.com filed an opening brief (Paper 47),
`Vivint filed a responsive brief (Paper 51), Alarm.com filed a reply brief
`(Paper 52), and Vivint filed a sur-reply brief (Paper 54).
`As we explain above, claims 1, 2, 4–15, 17–23, 25, 29–31, and 37–41
`are not at issue on remand because the Federal Circuit upheld our
`determinations with respect to these claims. The only claims that remain for
`
`
`2 Claim 26 recites “communication device identification codes . . .
`configured in a plurality of said user-defined message profiles.” Ex. 1101,
`11:25–29. By virtue of their dependency from claim 26, claims 27, 28, 30,
`31, 33–37, 40, and 41 also recite the “communication device identification
`codes” limitation. The Federal Circuit upheld our determinations of
`patentability with respect to claims 30, 31, 37, 40, and 41, however, on the
`alternative basis that the “normal status message [required by those claims
`is] patentable over the prior art.” Vivint, 754 F. App’x at 1006.
`4
`
`
`
`IPR2016-00116
`Patent 6,147,601
`our consideration are claims 26–28 and 33–36, each of which recites the
`“communication device identification codes” limitation but does not recite
`the “normal status message” limitation, in view of which the Federal Circuit
`upheld our determination of patentability of claims 30, 31, 37, 40, and 41
`over the prior art of record. Vivint, 754 F. App’x at 1006. We have
`considered the record anew by reviewing the parties’ positions on remand as
`to whether the asserted prior art teaches or suggests the claim term
`“communication device identification codes,” as construed by the Federal
`Circuit. For the reasons discussed below, we hold that Alarm.com has
`demonstrated by a preponderance of the evidence that claims 26–28 and 33–
`36 are unpatentable under §103(a).
`
`B. Related Matters
`
`The ’601 patent is involved in a district court case captioned Vivint,
`Inc. v. Alarm.com Inc., No. 2:15-cv-00392-CW-BCW (D. Utah 2015).
`Pet. 1; Paper 8, 2. In addition to this Petition, Alarm.com filed three other
`petitions challenging certain claims of the ’601 patent. Alarm.com Inc. v.
`Vivint, Inc., Case IPR2015-02004 (PTAB Sept. 30, 2015) (Paper 1);
`Alarm.com Inc. v. Vivint, Inc., Case IPR2016-00155 (PTAB Nov. 5, 2015)
`(Paper 1); Alarm.com Inc. v. Vivint, Inc., Case IPR2016-01080 (PTAB
`May 20, 2016) (Paper 1). In the first two of those cases, after taking into
`account the arguments presented in the corresponding preliminary responses
`filed by Vivint, we concluded that the information presented in the petitions
`did not establish that there was a reasonable likelihood that Alarm.com
`would prevail in challenging any of the challenged claims on the grounds
`
`5
`
`
`
`IPR2016-00116
`Patent 6,147,601
`presented. Alarm.com Inc. v. Vivint, Inc., Case IPR2015-02004, slip op.
`at 28 (PTAB Mar. 31, 2016) (Paper 14); Alarm.com Inc. v. Vivint, Inc., Case
`IPR2016-00155, slip op. at 16–17 (PTAB Apr. 28, 2016) (Paper 14). In the
`third case, we exercised our discretion under 37 C.F.R. § 108 and 35 U.S.C.
`§§ 314(a) and 325(d) and denied the petition. Alarm.com Inc. v. Vivint, Inc.,
`Case IPR2016-01080, slip op. at 14 (PTAB Nov. 17, 2016) (Paper 11).
`Alarm.com also filed other petitions challenging the patentability of
`certain subsets of claims in the following patents owned by Vivint: (1) U.S.
`Patent No. 6,462,654 B1 (Cases IPR2015-02003, IPR2016-00161, IPR2016-
`01110, and IPR2016-01124); (2) U.S. Patent No. 6,535,123 B2 (“the
`’123 patent”) (Cases IPR2015-01995, IPR2016-00173, and IPR2016-
`01126); (3) U.S. Patent No. 6,717,513 B1 (Cases IPR2015-01997, IPR2016-
`00129, and IPR2016-01091); (4) U.S. Patent No. 6,924,727 B2 (Cases
`IPR2015-01977 and IPR2015-02008); and (5) U.S. Patent No. 7,884,713 B1
`(Cases IPR2015-01965 and IPR2015-01967). We issued Final Written
`Decisions in Cases IPR2015-01965, IPR2015-01977, IPR2016-00161, and
`IPR2016-00173. Alarm.com Inc. v. Vivint, Inc., Case IPR2016-00161
`(PTAB May 10, 2017) (Paper 43), aff’d, 754 F. App’x 999 (Fed. Cir. 2018);
`Alarm.com Inc. v. Vivint, Inc., Case IPR2016-00173 (PTAB May 2, 2017)
`(Paper 40), aff’d in part, vacated in part, rev’d in part, 754 F. App’x 999
`(Fed. Cir. 2018); Alarm.com Inc. v. Vivint, Inc., Case IPR2015-01965
`(PTAB Mar. 29, 2017) (Paper 36), aff’d mem., 730 F. App’x 935 (Fed. Cir.
`2018); Alarm.com Inc. v. Vivint, Inc., Case IPR2015-01977 (PTAB Mar. 22,
`2017) (Paper 44), aff’d, 741 F. App’x 786 (Fed. Cir. 2018); Paper 48, 1–3.
`
`6
`
`
`
`IPR2016-00116
`Patent 6,147,601
`Claims 3–5, 10, and 14–16 of the ’123 patent were at issue in Case
`IPR2016-00173 and are the subject of remand after appeal to the Federal
`Circuit to address the same issue presented here—namely, whether the
`asserted prior art teaches or suggests the claimed subject matter in view of
`the Federal Circuit’s construction of the term “communication device
`identification codes.” See Vivint, 754 F. App’x at 1003–05. A Decision on
`Remand in Case IPR2016-00173 is entered concurrently herewith.
`
`C. The ’601 Patent
`
`The ’601 patent, titled “Electronic Message Delivery System
`Utilizable in the Monitoring of Remote Equipment and Method of Same,”
`issued November 14, 2000, from U.S. Patent Application No. 09/317,235,
`filed May 24, 1999. Ex. 1101, [21], [22], [45], [54]. The ’601 patent also
`claims the benefit of U.S. Provisional Application No. 60/115,305, filed
`January 9, 1999 (“the ’305 provisional”). Id. at [60], 1:6–7.
`The ’601 patent describes systems and methods for monitoring remote
`equipment such as “devices . . . employed in heating, ventilating, and [air
`conditioning] (HVAC) systems.” Ex. 1101, [57], 1:11–14. The ’601 patent
`explains that “[i]t is desirable to be able to monitor remotely equipment that
`may require periodic preventive maintenance and/or that may require rapid
`response time should a catastrophic failure occur.” Id. at 1:15–18.
`According to the ’601 patent, prior art systems were limited insofar as they
`did not “allow for sufficient flexibility in routing fault messages to a variety
`of different potential recipients of such messages via a variety of different
`media, depending on the urgency or nature of the fault.” Id. at 1:66–2:3.
`
`7
`
`
`
`IPR2016-00116
`Patent 6,147,601
`The ’601 patent provides, as an example, that an HVAC customer may want
`to send “certain non-emergency condition notifications (e.g., filter needs
`cleaning) to certain individuals (e.g., contractor/maintenance personnel) via
`a certain medium (e.g., e-mail) and emergency condition notifications (e.g.,
`low or high refrigerant pressure) to other individuals (building owner,
`contractor, etc.) via other means (e.g., via beeper or other personal
`communication device).” Id. at 2:5–14. “Such a list of who to contact via
`what means depending on which fault has occurred may be referred to as a
`‘message profile.’” Id. at 2:14–16. According to the ’601 patent,
`conventional systems did not allow for “easy customer modifications to the
`message profile.” Id. at 2:21–22.
`The ’601 patent purportedly solves these problems by describing a
`system for remotely monitoring electrical or mechanical equipment that can
`deliver fault notification messages to different individuals for different fault
`conditions via different electronic media, and in which a customer may
`modify its message profile interactively. Ex. 1101, 2:33–41. Figure 1 of
`the ’601 patent, reproduced below, illustrates a schematic diagram of the
`preferred embodiment of this system. Id. at 3:24–25, 5:38–39.
`
`8
`
`
`
`IPR2016-00116
`Patent 6,147,601
`
`
`
`
`
`As shown in Figure 1, system 50 monitors existing pieces of
`electronic equipment, such as air-conditioner 2, boiler 3, motor starter 4,
`heater 5, or any other equipment that a prospective user desires to monitor.
`Ex. 1101, 5:39–42. Each piece of equipment is fitted with interface 10 that
`periodically sends a status signal to electronic message delivery server 1
`indicating whether the piece of equipment and its corresponding interface
`are functioning correctly. Id. at 5:43–47. When a predetermined
`“exception” condition (e.g., a fault condition) occurs in a piece of equipment
`being monitored, interface unit 10 sends a message to electronic message
`delivery server 1. Id. at 5:47–51. Electronic message delivery server 1 then
`routes the message to the appropriate user interface, such as e-mail 6, fax 7,
`pager 8, voice 9, etc., according to a message profile configured by the user
`via user-web client 121 connected to Internet 122. Id. at 5:51–55.
`
`9
`
`
`
`IPR2016-00116
`Patent 6,147,601
`In the described systems and methods, a sensor in communication
`with a piece of remote equipment determines the state of at least one
`parameter of the remote equipment. Ex. 1101, 2:48–50, 55–56. When the
`sensor detects an “exception” condition (i.e., an operating condition that is
`either out of the ordinary or beyond nominal parameters) in the remote
`equipment, an interface unit connected to the sensor and having a message
`generating mechanism generates an incoming exception message and
`forwards the message to a central computer server. Id. at 2:56–65. The
`server forwards at least one outgoing exception message to at least one
`predetermined user-defined end device based on the incoming exception
`message. Id. at 2:65–67.
`
`D. Illustrative Claims
`
`Claims 26–28 and 33–36, which are all of the claims remaining for
`our consideration on remand, are dependent claims. Claims 27, 28, and 33–
`36 directly or indirectly depend from claim 26. Thus, claim 26 is illustrative
`of the subject matter we were instructed by the Federal Circuit to reconsider
`on remand and is reproduced below, along with independent claim 22, from
`which claim 26 depends:3
`
`
`3 By virtue of its dependency, claim 26 includes all of the limitations recited
`in claim 22. As we explain above, the Federal Circuit affirmed our
`determination that independent claim 22 is unpatentable, and, thus, is not at
`issue in this remand. Vivint, 754 F. App’x at 1002–03.
`10
`
`
`
`IPR2016-00116
`Patent 6,147,601
`22. A system for monitoring remote equipment, comprising:
`a sensor in local communication with a piece of remote
`equipment, said sensor detecting a state of at least one
`parameter of the piece of remote equipment;
`an interface unit, locally connected to said sensor, said
`interface unit having a message generating mechanism;
`and
`a computer server in remote communication with said
`interface unit, said server adapted to receive messages
`generated by said interface unit, said computer server
`having a user interface, a user being capable of remotely
`accessing said computer server via said user interface to
`remotely configure a user-defined message profile
`containing outgoing message routing instructions,
`wherein when said sensor detects an exception condition in
`the piece of remote equipment, said interface unit
`generates an incoming exception message indicative of the
`exception condition and forwards said message to said
`server,
`and wherein said server forwards at least one outgoing
`exception message to at least one predetermined user-
`defined remote communication device based on said
`incoming exception message as specified in said user-
`defined message profile.
`
`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:
`a first memory on which equipment identification codes of all
`monitored equipment are stored;
`a second memory
`in which communication device
`identification codes of all of
`said user-defined
`communication
`remote devices are
`stored,
`said
`communication device
`identification codes being
`11
`
`
`
`IPR2016-00116
`Patent 6,147,601
`configured in a plurality of said user-defined message
`profiles.
`
`Ex. 1101, 10:43–11:2, 11:20–29.
`
`E. Prior Art Relied Upon
`
`Alarm.com relies upon the following prior art references in its
`challenges to claims 26–28 and 33–36:
`
`Inventor4
`Shetty
`
`Levac
`
`French
`
`U.S. Patent No. Relevant Dates
`5,808,907
`issued Sept. 15, 1998,
`filed Dec. 5, 1996
`issued Mar. 7, 2000,
`filed July 2, 1997
`issued Oct. 29, 1991,
`filed May 29, 1990
`
`6,034,970
`
`5,061,916
`
`Exhibit No.
`1103
`
`1105
`
`1106
`
`F. Instituted Grounds of Unpatentability
`
`We instituted a trial based on certain of the asserted grounds of
`unpatentability raised in the Petition, including the grounds set forth in the
`table below. Dec. on Inst. 46. Although we instituted trial as to claims 1, 2,
`4–15, 17–23, 25–31, and 33–41, our decision on remand is limited to the
`grounds that challenge claims 26–28 and 33–36, each of which recites the
`“communication device identification codes” limitation.
`
`
`4 For clarity and ease of reference, we only list the first named inventor.
`12
`
`
`
`IPR2016-00116
`Patent 6,147,601
`Reference(s)
`Shetty
`
`Claim(s) Challenged
`Basis
`§ 103(a) 26, 27, and 33–35
`
`Shetty and Levac
`Shetty and French
`
`§ 103(a) 28
`§ 103(a) 36
`
`II. ANALYSIS
`
`A. Final Written Decision
`
`Our discussion of the Final Written Decision focuses on our previous
`construction of the claim term “communication device identification codes,”
`as recited in claim 26, and the application of that construction to the
`teachings of Shetty. In the Final Written Decision, we began our analysis by
`addressing the parties’ arguments regarding the construction of that term.
`Final Dec. 17–21. Based on our review of the claims and specification of
`the ’601 patent, we agreed with Alarm.com that the term “does not appear in
`the Specification outside of dependent claim 26.” Id. at 20. We, however,
`did not agree with Alarm.com’s argument that “any interpretation of
`‘communication device identification code’ that excludes ‘phone numbers’
`and ‘email addresses’ cannot be the broadest reasonable construction” and
`“would . . . impermissibly exclude the preferred embodiment.” Final
`Dec. 20 (citing Pet. Reply 17–18). We explained that, because the term
`communication device identification code does not appear in independent
`claims 1 and 22, interpreting that term to refer to a device identifier (ID) or a
`serial number capable of uniquely identifying communication devices, such
`as mobile identification numbers (MINs) or electronic serial numbers
`13
`
`
`
`IPR2016-00116
`Patent 6,147,601
`(ESNs) disclosed in the ’601 patent for identification of interface units
`would not exclude any allegedly preferred embodiment from those claims.
`Id. at 20–21. Thus, we explained, “[w]hereas [independent] claim 22 might
`cover a system in which the recited communication device is, for example, a
`generic ‘email receiving device’ configured to receive email messages
`addressed to an email address specified in the recited user profile,
`[dependent] claim 26 additionally requires, among other things, that the
`server in the system of claim 22 includes memory that stores communication
`device identification codes.” Id. at 21. In summary, we concluded that “the
`broadest reasonable interpretation of the claim term ‘communication device
`identification codes’ includes either a device ID (e.g., a MIN) or a serial
`number of a device (e.g., an ESN).” Id. We stated that, in our view, “[t]his
`construction is consistent with the ordinary and customary meaning of this
`claim term, as would be understood by one of ordinary skill in the art, in
`light of the claims and specification of the ’601 patent.” Id.
`After stating the principles of law that generally apply to a ground
`based on obviousness, determining the knowledge level of a person of
`ordinary skill in the art, and providing a brief overview of Shetty, we
`addressed whether Alarm.com demonstrated by a preponderance of the
`evidence that the teachings of Shetty account for the “communication device
`identification codes,” as recited in claim 26. Final Dec. 24, 50–52. In
`particular, consistent with our construction of the claim term
`“communication device identification codes,” we agreed with Vivint that
`“Shetty’s telephone numbers and email addresses are not consistent with
`[our] construction because they do not identify uniquely a specific device.”
`14
`
`
`
`IPR2016-00116
`Patent 6,147,601
`Id. at 52 (citing Ex. 1103, 2:18–21, 3:18–20). We also credited the
`testimony of Vivint’s Declarant, Mr. Scott Andrew Denning, on this
`particular issue. Id. (citing Ex. 2010 ¶¶ 128–132). We “agree[d] with both
`Vivint and Mr. Denning that Shetty does not teach or suggest the claimed
`‘communication device identification codes.’” Id. (citing PO Resp. 37–38;
`Ex. 2010 ¶¶ 128–132).
`
`B. Federal Circuit’s Remand Decision
`
`Our discussion of the remand decision issued by the Federal Circuit
`only focuses on the court’s analysis as to whether we properly construed the
`claim term “communication device identification codes.” On appeal to the
`Federal Circuit, Alarm.com argued that “‘communication device
`identification codes’ refer to phone numbers and email addresses.” Vivint,
`754 F. App’x at 1003. The Federal Circuit agreed with “Alarm.com that
`[we] erred in construing ‘communication device identification codes.” Id.
`at 1004. The Federal Circuit explained that “the ’601 patent . . . [does not]
`define ‘communication device identification codes’ in the specification . . .
`[a]nd yet, [we] decided that ‘communication device identification codes’
`must refer to something ‘capable of uniquely identifying communication
`devices.’” Id. The Federal Circuit stated that, “[e]ven assuming this is
`correct, however, [our] conclusion that a phone number or email address
`cannot uniquely identify a communication device defies the . . . teachings”
`of the ’601 patent. Id.
`For example, the Federal Circuit stated that the ’601 patent
`“explain[s] that a mobile identification number refers to a device in the same
`
`15
`
`
`
`IPR2016-00116
`Patent 6,147,601
`way that a phone number refers to a cellular phone, i.e. a communication
`device.” Vivint, 754 F. App’x at 1004 (citing Ex. 1101, 6:61–65). The
`Federal Circuit then concluded that our construction of the claim term
`“communication device identification codes” was “not reasonable.” Id. at
`1004–05.
`Next, the Federal Circuit explained that it disagreed with Vivint’s
`argument that our construction was “consistent with the plain meaning of
`‘communication device identification codes.’” Vivint, 754 F. App’x at 1005.
`The Federal Circuit explained that, at most, Vivint shows “that serial
`numbers or mobile identification numbers might be examples of
`‘communication device identification codes.’” Id. But the Federal Circuit
`determined that Vivint’s showing “falls short of explaining why phone
`numbers and email addresses are not [communication device identification
`codes].” Id. Accordingly, the Federal Circuit reversed our construction of
`the claim term “communication device identification codes,” vacated our
`related conclusions, and remanded for further consideration in light of its
`guidance. Id.
`
`C. Obviousness over the Teachings of Shetty
`
`Alarm.com contends that claims 26, 27, and 33–35 of the ’601 patent
`are unpatentable under § 103(a) over Shetty. Pet. 9–17, 24–27. Alarm.com
`explains how Shetty purportedly teaches the subject matter of each
`challenged claim identified above. Id. Alarm.com relies upon the
`Declaration of Arthur Zatarain, P.E. (Ex. 1107) to support its positions.
`
`16
`
`
`
`IPR2016-00116
`Patent 6,147,601
`We begin our analysis with the principles of law that generally apply
`to a ground based on obviousness, followed by an assessment of the level of
`skill in the art and a brief overview of Shetty, and we then address the
`arguments presented by the parties on remand as to whether Shetty teaches
`or suggests the claim term “communication device identification codes,” as
`construed by the Federal Circuit.
`
`1. Principles of Law
`
`A claim is unpatentable under § 103(a) if the differences between the
`claimed subject matter and the prior art are such that the subject matter, as a
`whole, would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains.
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`obviousness is resolved on the basis of underlying factual determinations,
`including (1) the scope and content of the prior art; (2) any differences
`between the claimed subject matter and the prior art; (3) the level of skill in
`the art; and (4) when in evidence, objective indicia of non-obviousness
`(i.e., secondary considerations). Graham v. John Deere Co., 383 U.S. 1, 17–
`18 (1966). We analyze the asserted grounds based on obviousness with the
`principles identified above in mind.
`
`2. Level of Skill in the Art
`
`There is evidence in the record before us that enables us to determine
`the knowledge level of a person of ordinary skill in the art. Alarm.com
`posits that a person of ordinary skill in the art as of January 1999 would be
`an individual who possesses (1) at least a bachelor’s degree in computer
`17
`
`
`
`IPR2016-00116
`Patent 6,147,601
`science, electrical engineering, computer engineering, or equivalent
`coursework; and (2) at least two years of experience in remote monitoring
`and control systems. Pet. 6–7; see also Ex. 1107 ¶ 11 (Mr. Zatarain
`assuming the same and opining that he was a person of ordinary skill under
`that assessment at the time of the invention). Vivint’s declarant,
`Mr. Denning, testifies that a person of ordinary skill in the art as of
`January 1999 would be an individual who possesses (1) at least a bachelor’s
`degree in electrical engineering or computer science; and (2) at least four
`years of experience in remote monitoring and control systems. Ex. 2010
`¶ 15.
`
`We do not discern a material difference between the assessments
`advanced by the declarants, nor does either party premise its arguments
`exclusively on its assessment of the level of skill in the art. Moreover, each
`party’s declarant appears to meet or exceed both parties’ assessments
`(see Ex. 1107 ¶¶ 2–4, Attachment A; Ex. 2011), and either assessment of the
`level of skill in the art is consistent with the ’601 patent and the asserted
`prior art. We, therefore, adopt Mr. Zatarain’s assessment and apply it to our
`obviousness evaluation below, but note that our conclusions would be the
`same under Mr. Denning’s assessment.
`
`3. Shetty Overview
`
`Shetty discloses a “method for providing information relating to a
`machine to a user.” Ex. 1103, [57]. The method includes the steps of
`sensing predetermined events relating to the machine, producing
`corresponding event signals, delivering the event signals to a remote site,
`
`18
`
`
`
`IPR2016-00116
`Patent 6,147,601
`comparing the event signals to a profile of events corresponding to the user,
`and delivering a notification signal to the user if the event signals match the
`profile. Id. Shetty explains that “[c]omputers and electronics are becoming
`increasingly common on many machines.” Id. at 1:12–13. Shetty provides,
`as an example, that earthmoving machines now include many on-board
`sensors for recording parameter data during operation, and that on-board
`controllers also may calculate parameters of the machine based on sensor
`data. Id. at 1:13–17. Shetty further explains that, “with the large increase in
`the number of sensors and data being collected, the amount of data to be
`analyzed becomes unmanageable,” and “[a]dditionally, different persons, for
`example, the operator, the owner, etc. . . . , may have need for different
`information.” Id. at 1:18–24.
`Figure 1 of Shetty is reproduced below.
`
`
`Figure 1 is a block diagram of an apparatus adapted for performing
`the method provided by Shetty. Ex. 1103, 1:39–40. With reference to
`Figure 1, warning manager 100 provides a method for providing information
`relating to a mobile machine in a fleet of mobile machines 118. Id. at 1:52–
`
`19
`
`
`
`IPR2016-00116
`Patent 6,147,601
`55. Shetty discloses that each of mobile machines 118 includes a plurality
`of on-board sensors for measuring machine parameters. Id. at 1:56–58.
`Each mobile machine 118 may also include a microprocessor-based
`controller or information manager 120 for receiving signals from the
`sensors, storing data when an event occurs, and calculating other machine
`parameters based on the sensor data. Id. at 1:58–62. Shetty explains that an
`“event” is a predetermined condition or set of conditions of the machine
`parameters. Id. at 1:63–65, 3:5–6. Shetty discloses that one event may be
`defined when a parameter, such as engine oil temperature exceeds a
`predetermined threshold, while other events may be tied to two or more
`parameters, such as when engine oil temperature exceeds another threshold
`and a sensor for detecting particles in the oil is triggered. Id. at 1:65–2:2,
`3:6–9. Warning manager 100, which is preferably implemented on a
`computer workstation, includes batch processing means 102 for receiving
`and analyzing the events, fleet and machine database 104, user profile
`database 106, and event database 108 containing information relating to all
`triggered events received from the machines. Id. at 2:7–23.
`Shetty further discloses that user profile database 106 contains
`information relating to all users, including a user profile that defines which
`events require that the user be notified. Ex. 1103, 2:18–21. The user profile
`defines the events which trigger the notification and the method of
`notification (e.g., by email, pager, or facsimile). Id. at 2:43–48. User
`interface 110 allows a user to access user profile database 106 and input
`information. Id. at 2:34–37. Shetty discloses that each user may have
`multiple profiles each having a different list of events that trigger
`20
`
`
`
`IPR2016-00116
`Patent 6,147,601
`notification. Id. at 2:49–51. Each profile can be predefined for a different
`event or different set of events, and each profile also may trigger a different
`mode or modes of communication. Id. at 2:58–61. In operation, the events
`stored in event database 108 may be received from on-board information
`manager 120 in any of a number of methods, including by radio datalink,
`satellite datalink, or similar methods. Id. at 2:23–27. Batch processing
`means 102 retrieves a list of events from event database 108 and the user
`profiles from user profile database 106, compares the list of events with the
`profile of each user, and, if all the conditions of a user profile are met, the
`user then is notified via notification means 112. Id. at 2:38–43.
`
`4. Claim 26
`
`Claim 26 recites, in relevant part, “communication device
`identification codes of . . . user-defined communication remote devices,”
`stored in “a second memory” and “configured in a plurality of . . . user-
`defined message profiles.” Ex. 1101, 11:25–29. As we explain above, the
`Federal Circuit instructs us to address whether Shetty teaches or suggests the
`aforementioned subject matter in view of the Federal Circuit’s construction
`of the term “communication device identification codes.”
`In its opening brief, Alarm.com maintains its position in the Petition
`that Shetty teaches the claim term “communication device ide
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
