Paper No. ___
`Filed: January 17, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`
`
`SECURENET TECHNOLOGIES, LLC,
`Petitioner,
`
`v.
`
`ICONTROL NETWORKS, INC.,
`Patent Owner.
`
`_____________________________
`
`Case IPR2016-01919
`Patent No. 8,473,619
`
`_____________________________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.107
`
`

`
`TABLE OF CONTENTS
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`I.
`
`II.
`
`STATEMENT OF PRECISE RELIEF REQUESTED .................................. 1
`
`INTRODUCTION ........................................................................................ 1
`
`III. THE ’619 PATENT ...................................................................................... 3
`
`IV. CLAIM CONSTRUCTION .......................................................................... 8
`
`V. GROUND 1 SHOULD NOT BE INSTITUTED ........................................... 9
`
`A.
`
`B.
`
`C.
`
`2.
`
`Claim 1 is not obvious ........................................................................ 9
`1.
`Neither Wimsatt nor Severson discloses “automatically
`discovering the security system components” .......................... 9
`Johnson does not disclose the limitation “maintains
`objects at the security server using the processed data,
`wherein the objects correspond to the security system
`components and the plurality of network devices” ..................16
`3. Mere reference to a processor does not disclose
`“generat[ing] processed data by processing at the
`gateway the security data, the device data, and the remote
`data” .......................................................................................20
`The petition fails to demonstrate that Wimsatt’s system
`would be modified to include a remote server .........................22
`Dependent claims 2-9, 12-16, 19, 23-28, 32, 34, 42-47, 54-57,
`59, and 62 are not obvious ................................................................ 26
`1.
`Claim 15 .................................................................................26
`2.
`Claims 43 and 44 ....................................................................27
`3.
`Claim 47 .................................................................................29
`4.
`Claim 62 .................................................................................30
`Independent claims 60 and 61 are not obvious .................................. 30
`
`4.
`
`VI. SECONDARY CONSIDERATIONS ......................................................... 30
`
`VII. CONCLUSION .......................................................................................... 31
`
`-i-
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`

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`I.
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`STATEMENT OF PRECISE RELIEF REQUESTED
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`Petitioner SecureNet Technologies, LLC (“Petitioner”) filed a petition
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`(“Pet.,” PN 1) for inter partes review (“IPR”) of claims 1-9, 12-16, 19, 23-28, 32,
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`34, 42-47, 54-57, and 59-62 of U.S. Patent No. 8,473,619 (“’619 patent,” Ex.
`
`1001). Patent Owner Icontrol Networks, Inc. (“Icontrol”) requests that the Board
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`deny institution because Petitioner has not met its burden of showing it has a
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`reasonable likelihood of prevailing on at least one claim with respect to any of its
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`proposed grounds of patentability.
`
`II.
`
`INTRODUCTION
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`Petitioner’s reliance on U.S. Patent Pub. No. 2004/0260427 (“Wimsatt,” Ex.
`
`1004) suffers from a fundamental problem: Wimsatt is a locally distributed system
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`with many control panels and many devices and subsystems that are arranged in a
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`manner completely different from that of the ’619 patent, which claims an
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`integrated system with a gateway that communicates with security components,
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`network devices and a server. Compare Ex. 1004 Fig. 1 with Ex. 1001 cl. 1. This
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`basic disconnect between Wimsatt and the ’619 patent claims results in a ripple
`
`effect of problems with the petition throughout, causing Petitioner to mismatch
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`Wimsatt’s inadequate disclosures with the ’619 patent’s claim elements. Further
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`compounding these problems is Petitioner’s reliance on U.S. Patent No. 6,580,950
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`(“Johnson,” Ex. 1005), a reference that teaches a system that is incompatible with
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`-1-
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`

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`and taught away by Wimsatt, and on U.S. Patent No. 4,951,029 (“Severson,” Ex.
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`1006), which is a primitive security system that lacks any of the claimed features
`
`of the ’619 patent. Indeed, any one of the following problems prevents the Board
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`from instituting IPR as to the challenged claims of the ’619 patent:
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`First, the combination of Wimsatt, Severson, and Johnson does not teach
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`automatically discovering components of a security system. See infra Section
`
`V.A.1. Petitioner conflates the difference between discovering a system versus
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`discovering that system’s components, and improperly relies on prior art disclosure
`
`of interrogation (not discovery) that occurs after components have been manually
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`coupled and programmed. See id.
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`Second, the proposed combination of Wimsatt, Severson, and Johnson does
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`not maintain objects at a security server. See infra Section V.A.2. Petitioner’s
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`reliance on Johnson’s “icons” for this point is unexplained and unsupported by the
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`reference, which does not disclose the purpose of the icons let alone disclose any
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`corresponding aspect of the data structure in Johnson’s server that would be
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`relevant to the ’619 patent claims. See id.
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`Third, the petition fails to demonstrate that the proposed combination of
`
`Wimsatt, Severson, and Johnson generates processed data in the manner claimed
`
`by the ’619 patent. See infra Section V.A.3. Merely stating that a “processor” is
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`disclosed does not satisfy Petitioner’s burden to explain whether and how the
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`-2-
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`processed data recited in claim 1 is generated and subsequently used as claimed.
`
`See id.
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`Fourth, the petition fails to demonstrate that it would have been obvious to
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`modify Wimsatt to include the remote server discussed in Johnson. Wimsatt
`
`teaches away from the use of servers, and Johnson is incompatible with Wimsatt.
`
`See infra Section V.A.4.
`
`Given the numerous above deficiencies with the Petition, none of the
`
`Grounds should be instituted.
`
`III. THE ’619 PATENT
`
`The ’619 patent, entitled “Security Network Integrated with Premise
`
`Security System,” describes “an integrated security system . . . that integrates
`
`broadband and mobile access and control with conventional security systems and
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`premise devices.” See Ex. 1001 Title, Abstract. “The integrated security system
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`provides a complete system that integrates or layers on top of a conventional host
`
`security system” and is not limited to integration with any particular security
`
`system. See id. 5:19-21, 15:65-16:3. As demonstrated by one embodiment
`
`displayed in Fig. 1, the integrated security system 100 includes a single gateway
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`102 that is coupled to conventional home security system 110. See id. 6:54-57.
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`-3-
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`

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`Ex. 1001 Fig. 1 (annotated)
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`
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`The ’619 patent specification explains that “gateway 102 connects and
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`manages the diverse variety of home security and self-monitoring devices.” Id.
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`6:57-59. Specifically, the gateway “couples or connects the various third-party
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`cameras, home security panels, sensors and devices . . . .” Id. 11:48-53.
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`Exemplary methods of automatically establishing a wireless coupling between the
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`gateway and the security system components are found at Figs. 8 and 9. See id.
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`Figs. 8-9, 19:6-34.
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`Ex. 1001 Fig. 8
`
`Ex. 1001 Fig. 9
`As is apparent from steps 806 and 904, the gateway automatically discovers and
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`couples to the conventional security system’s components. See id. Figs. 8-9; see
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`also id. 25:55-58.
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`Step 902 also indicates that local gateway 102 is further coupled to security
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`servers 104 via multiple communication channels. See id. Fig. 9, 6:54-57, 6:59-64.
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`One of the functions of the gateway is to manage server communication and to
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`implement a main event loop to process events and control messages. See id.
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`23:51-24:3. The gateway also transfers data and information between components
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`in the local area network and wide area network, such as to the servers. See id.
`
`Figs. 5-6, 14:36-40, 14:64-67.
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`“These servers 104 manage the system integrations necessary to deliver the
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`integrated system service . . . .” Id. 6:64-66. “The server components provide
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`access to, and management of, the objects associated with an integrated security
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`system installation,” such as “sensors, cameras, home security panels and
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`-5-
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`automation devices, as well as the controller or processor-based device running the
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`gateway applications.” See id. 8:29-41. Business components at servers 104 “are
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`responsible for orchestrating all of the low-level service management activities for
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`the integrated security system service. They define all of the users and devices
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`associated with a network (site), analyze how the devices interact, and trigger
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`associated actions (such as sending notifications to users). All changes in device
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`states are monitored and logged.” See id. 8:53-59. As shown in Fig. 2, connected
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`to servers 104 are a service database 240 that stores information, e.g., about users,
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`networks, and devices, relating to the managed objects, and a content store 242 that
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`stores media objects, such as video, photos, and widget content. See id. 9:47-53.
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`Ex. 1001 Fig. 2
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`-6-
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`The formation of an integrated security system including these and other
`
`functions is summarized in independent system claim 1, from which challenged
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`claims 2-9, 12-16, 19, 23-28, 32, 34, 42-47, 54-57, 59, and 62 ultimately depend
`
`and which are comparable in scope to challenged claims 60 and 61:
`
`1. A system comprising:
`
`a gateway located at a first location;
`
`a connection management component coupled to the gateway and
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`automatically establishing a wireless coupling with a security
`
`system installed at the first location, the security system
`
`including security system components, wherein the connection
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`management component forms a security network by
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`automatically discovering the security system components and
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`integrating communications and functions of the security
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`system components into the security network; and
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`a security server at a second location different from the first location,
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`wherein the security server is coupled to the gateway, wherein
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`the gateway receives security data from the security system
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`components, device data of a plurality of network devices
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`coupled to a local network of the first location that is
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`independent of the security network, and remote data from the
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`security server, wherein the gateway generates processed data
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`by processing at the gateway the security data, the device data,
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`and the remote data, wherein the gateway determines a state
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`change of the security system using the processed data and
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`maintains objects at the security server using the processed
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`-7-
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`data, wherein the objects correspond to the security system
`
`components and the plurality of network devices.
`IV. CLAIM CONSTRUCTION
`
`Petitioner admits that it does not discuss how even a single limitation of the
`
`challenged claims should be interpreted by the Board. Pet. 5 (“Petitioner does not
`
`propose any claim constructions for this proceeding.”). Yet, the burden is on
`
`Petitioner to “identify . . . how the challenged claim is to be construed.” See 37
`
`C.F.R. § 42.104(b)(3).
`
`Petitioner’s failure to address its understanding of the proper construction of
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`the challenged claims only compounds the difficulty of discerning the basis of the
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`obviousness challenges and the liberties taken in the petition with respect to
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`mapping the prior art to the claims. For example, Petitioner hand-waves around
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`the mapping of the prior art’s disclosures relating to manual coupling of
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`components to the ’619 patent claims’ express requirement that components be
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`“automatically discover[ed].” See infra Section V.A.1. Petitioner similarly fails to
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`construe terms necessary to understand how the prior art could possibly disclose
`
`the limitation “maintains objects at the security server . . . wherein the objects
`
`correspond to the security system components and the plurality of network devices”
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`or “generates processed data.” See infra Sections V.A.2 and V.A.3.
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`-8-
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`In refusing to comply with its obligations to construe the challenged claims,
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`Petitioner improperly shifts the burden of claim construction to the Board and
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`Icontrol. The Board should not reward Petitioner for doing so.
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`V. GROUND 1 SHOULD NOT BE INSTITUTED
`
`A. Claim 1 is not obvious
`
`1.
`
`Neither Wimsatt nor Severson discloses “automatically
`discovering the security system components”
`
`Claim 1 requires “automatically discovering the security system
`
`components.” See Ex. 1001 cl. 1, element 1[d].1 Petitioner alleges that Wimsatt
`
`meets this limitation due to its disclosure of “interrogat[ing a] device or subsystem
`
`to learn details of the control interface of that particular system.” See Pet. 13.
`
`Petitioner also alleges that Severson meets this limitation because it “explains that
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`‘without human intervention’ ‘each system controller may be operated to ‘self-
`
`learn’ each of its sensors.’” See id. 14. Petitioner does not rely on Johnson for this
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`limitation. See id. 13-15.
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`As explained below, Petitioner’s assertions are incorrect.
`
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`1 For the purposes of this preliminary response, Icontrol adopts the claim element
`
`designations used in the petition. See, e.g., Pet. 13 (identifying “[c]laim element
`
`1[d]”).
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`a) Wimsatt does not automatically discover a system or
`its components
`
`Petitioner admits that Wimsatt does not “disclose that its security system’s
`
`sensors are automatically discovered.” See Pet. 14. Petitioner then asserts that
`
`Wimsatt “only explicitly discloses that the ‘security system’ is discovered,” but
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`that is not claimed. See id. Regardless, Wimsatt does not disclose either the
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`claimed limitation of discovering components or the phantom limitation of
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`discovering a system since Petitioner incorrectly equates Wimsatt’s disclosure of
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`interrogation with claim 1’s requirement of automatic discovery. See Pet. 14.
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`Automatic discovery is explained in part at Fig. 12 of the ’619 patent, which
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`“is a flow diagram of a method of integrating an external control and management
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`application system with an existing security system, under an embodiment.” See
`
`Ex. 1001 22:17-19, Fig. 12. As part of the process shown in Fig. 12, the gateway
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`must (1) “locate the extant security system” in step 1220; (2) “‘learn’ the gateway
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`into the security system” in step 1230; and (3) “discover and learn the existence
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`and capabilities of existing RF devices within the extant security system” in step
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`1240 before the system becomes operational. See id. 22:19-32, 22:41-44.
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`-10-
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`Ex. 1001 Fig. 12
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`
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`Wimsatt’s control panel does not locate or learn of the existence of a
`
`security system or its components. Instead, Wimsatt presupposes that a control
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`panel is coupled to a subsystem during installation prior to the control panel’s
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`interrogation of the subsystem. See Ex. 1004 ¶ 39 (“The control panel 101 couples
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`to the subsystem interface using the physical, electrical, and signaling protocols
`
`adopted by that subsystem.”), ¶ 45 (“When a control panel 101 is coupled to a
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`controlled device or subsystem, it interrogates that device or subsystem to learn
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`details of the control interface of that particular system.”). In other words, instead
`
`of discovering the subsystem, Wimsatt already knows about the subsystem when it
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`interrogates the subsystem. See id. The interrogation disclosed by Wimsatt’s
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`interrogation is not an automatic discovery as claimed in the ’619 patent but rather
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`merely an inquiry regarding the applicable control interface. Id. ¶ 45.
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`Moreover, even if Wimsatt did disclose automatic discovery of a security
`
`subsystem, this disclosure does not extend to security system components as
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`required by the claim. Neither Petitioner nor its expert provides any explanation
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`for the conclusory statement that “[a] POSITA would have understood that
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`discovering the security system would also include discovering its sensors.” Pet.
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`14; Ex. 1002 ¶ 92. Such a naked assertion should be given no weight and does not
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`satisfy Petitioner’s burden of demonstrating a reasonable likelihood of
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`unpatentability. See, e.g., 37 C.F.R. § 42.65 (“Expert testimony that does not
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`disclose the underlying facts or data on which the opinion is based is entitled to
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`little or no weight.”); Wowza Media Sys., LLC v. Adobe Sys. Inc., IPR2013-00054,
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`Paper 16 4-5 (2013) (denying request for rehearing of institution denial and citing
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`Active Video Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1327 (Fed.
`
`Cir. 2012) (holding that “conclusory statement” in expert testimony “is fraught
`
`with hindsight bias” and should be discounted)).
`
`Wimsatt’s mention of Universal Plug-and-Play (“UPnP”) does not save
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`Petitioner’s argument. See Pet. 14. The UPnP disclosure is limited to one line:
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`“Universal Plug-and-Play (UPnP™) processes support common protocols and
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`procedures intended to enhance interoperability among network-enabled PCs,
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`appliances, and wireless devices.” See Ex. 1004 ¶ 54. Mr. Parker’s declaration
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`adds little more than stating that “it was well known at the time of the ’619 patent
`
`that UPnP™ was used by 2-way devices connected to a shared network.” See Ex.
`
`1002 ¶ 91. But merely stating that UPnP “was well known” does nothing to
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`explain how UPnP would operate to fulfill the claim limitations of “automatically
`
`discovering the security system components.” In fact, the disclosure does not even
`
`state that UPnP is used by Wimsatt’s control panels. See Ex. 1004 ¶ 54.
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`Accordingly, Wimsatt does not disclose automatically discovering a
`
`system’s components, much less the system itself (which is not claimed).
`
`b)
`
`Severson’s components must be programmed prior to
`discovery so the process is not automatic
`
`Because Wimsatt does not disclose automatic discovery of a system’s
`
`components, Petitioner relies on Severson in an attempt to save its Grounds. See
`
`Pet. 14-15. However, Severson also does not disclose “automatically discovering
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`the security system components.”
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`Severson discloses that each sensor must be programmed. See Ex. 1006
`
`25:3-6 (“Even further and without human intervention, once the sensors
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`transducers are initially programmed, each system controller may be operated to
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`‘self-learn’ each of its sensors.”) (emphasis added), 25:22-24 (“If [the controller] is
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`in a program mode and the sensor was previously initialized, the CPU checks to
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`see if the sensor is either a hardwired or an RF sensor.”) (emphasis added). As a
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`matter of fact, the programming is a lengthy and involved manual process: “In the
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`above regard and during system initialization, the installer at his/her shop typically
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`develops a tabular listing of each of the S/T numbers to be assigned to the various
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`sensors and transducers to be placed about the subscriber premises. The
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`preconditioning parameters of each sensor are also defined, if different from those
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`normally set by the system, such as the NO/NC transducer state, restore, lockout
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`delay or other parameters which are separately programmable for each RF sensor.
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`The installer then separately programs each sensor with this data via the hand held
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`programmer 11.” See id. 25:51-61.
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`In other words, the sensors that are to be “self-learned” must already be
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`assigned to the controller. See id. 25:3-13, 23:60-26:7. This so-called “self-
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`learning” of sensors in Severson, which requires extensive programming and
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`component assignment prior to its operation, differs markedly from the ’619
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`patent’s claim limitations of “automatically discovering” components and devices.
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`Accordingly, Severson also does not disclose claim element 1[d], and does
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`not remedy the deficiencies of Wimsatt.
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`c)
`
`Severson only discloses discovering its own
`components
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`A further problem with Severson is that its security system only discovers its
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`own components—not those of another system. See Pet. 14-15. Severson
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`discloses what the ’619 patent refers to as a “conventional host security system.”
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`See Ex. 1001 Abstract. Severson does not “integrate[] or layer[] on top of a
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`conventional host security system.” See id.; see also generally Ex. 1006. This is
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`evident in that each sensor is coupled to a controller and that the controller self-
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`learns “each of its sensors.” See id. 24:64-25:6.
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`In contrast, claim 1 of the ’619 patent requires coupling a gateway to a
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`security system and then discovering that other system’s components. See Ex.
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`1001 cl. 1. As a result, the cited disclosure of Severson cannot fulfill claim 1’s
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`limitation of “automatically discovering the plurality of security system
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`components.” Nor does Petitioner explain why the claimed automatic coupling
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`and discovery by a “connection management component coupled to the gateway”
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`would have been obvious in view of the combination of Wimsatt and Severson. At
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`best, the combination proposed by Petitioner would result in Wimsatt’s security
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`subsystem automatically discovering its own components, not Wimsatt’s control
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`panel 101 that Petitioner relies on as disclosing the claimed gateway.
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`Moreover, Petitioner’s contention that the proposed combination would
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`result in an “easier sensor installation process” (Pet. 15) is at odds with Wimsatt’s
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`consistent description of its control panel network as in communication with a
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`security system, not the underlying security system components (e.g., security
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`sensors). See, e.g., Ex. 1004 ¶ 30 (“In one implementation, when a security system
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`is triggered indicating a fire, intruder, or other hazard, passive elements such as
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`backgrounds and borders change color or flash to alert the user of the condition.”),
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`¶ 31 (“In another example, tripping a zone on a burglar alarm . . . causes control
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`units to display a security screen having controls that allow the alarm to be de-
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`activated by entry of a valid code.”); see also id. ¶¶ 5, 23, 58, 62, 65. Because
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`Wimsatt’s control panels are limited to functionality regarding the status of a
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`security system, not to communication with or control over individual security
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`system components, Petitioner’s proposed modification would unnecessarily
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`complicate installation, not simplify it.
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`Because Petitioner fails to demonstrate that the combination of Wimsatt,
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`Severson, and Johnson discloses automatic discovery, the Board should not
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`institute IPR on Ground 1.
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`2.
`
`Johnson does not disclose the limitation “maintains objects
`at the security server using the processed data, wherein the
`objects correspond to the security system components and
`the plurality of network devices”
`
`Petitioner relies solely on Johnson for its alleged disclosure of claim element
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`1[h]’s limitation of “maintains objects at the security server using the processed
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`data, wherein the objects correspond to the security system components and the
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`plurality of network devices.” Pet. 26-29. Petitioner asserts that the “icons”
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`displayed in Fig. 3 of Johnson are the claimed “objects.” Id. 28.2
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`Petitioner’s assertion is unsupported and incorrect.
`
`a)
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`Johnson’s icons do not correspond to security system
`components
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`The icons do not correspond to security system components and network
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`devices. See Ex. 1005 6:36-50. Mr. Parker’s bald opinion that a POSITA would
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`have understood the icons to represent particular controlled devices is illogical and
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`should be afforded no weight. See Ex. 1002 ¶ 119. In reality, Johnson does not
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`provide description of the nature of the icons and they do not appear to directly
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`correspond to any elements described elsewhere in the reference. For example, the
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`icons displayed on the control page do not correspond to the control devices 40
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`disclosed in Fig. 2 that connect to control unit 30. Compare Ex. 1005 Fig. 3 with
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`id. Fig. 2.
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`Likewise, the “Camera” icon does not correspond to any one camera in the
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`security system. As demonstrated elsewhere in Johnson, there are many cameras,
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`not just one camera, so it would be illogical for the “Camera” icon to correspond to
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`a particular one of those cameras. Compare id. Fig. 4 (showing many different
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`2 The term “icons” does not appear in Johnson and is a characterization introduced
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`by Petitioner.
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`camera views) with id. Fig. 3 (showing only one “Camera” icon). To get around
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`this, Petitioner apparently refers to Wimsatt’s IP camera 109 rather than any
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`camera within Johnson—but does so without any cite or explanation of why that
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`would make sense. See Pet. 28.
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`Similarly, there is only one “Window” icon and one “Door” icon in
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`Johnson’s Figure 3, but a house would typically comprise many windows and
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`multiple doors so it would be illogical for these icons to “correspond . . . to the
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`security system components and the network devices.” Compare, e.g., Ex. 1005
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`Fig. 4 (showing multiple windows) with id. Fig. 2 (showing only one “Window”
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`icon). Petitioner’s assertion that the “Door” icon and the “Window” icon would
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`correspond to “a door sensor and a window sensor, respectively” is presented with
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`no cite to Johnson, Mr. Parker, or any evidence in the record. See Pet. 28.
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`Additionally, the other icons are labeled “Mode,” “Smoke,” “Water,”
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`“Temp,” “Alerts,” “Lights,” and “Shopping Cart.” See Ex. 1005 Fig. 3. At least
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`some of these are plainly not components of a security system, and Mr. Parker
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`does not explain why a POSITA would think they are. See Ex. 1002 ¶ 119. Indeed,
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`Johnson is devoid of any written description of the icons displayed in Fig. 3,
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`failing even to use the term “icon.” See generally Ex. 1005. Moreover, to the
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`extent some of the icons, such as “Mode” or “Alerts” may potentially relate to
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`security system functions, Petitioner provides no explanation as to how they
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`disclose the recited server-maintained “objects,” nor does Petitioner address the
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`role of the “Door” and “Window” icons relative to these other icons. Johnson, as
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`well, is silent on these points.
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`As a result, Petitioner has failed to demonstrate that Johnson discloses icons
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`that correspond to the plurality of security system components and the network
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`devices.
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`b)
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`Johnson’s icons are not maintained at the security
`server
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`The ’619 patent explains that “server components provide access to, and
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`management of, the objects associated with an integrated security system
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`installation.” See Ex. 1001 8:29-31. Business components at the server “are
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`responsible for orchestrating all of the low-level service management activities for
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`the integrated security system service,” and “all changes in device states are
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`monitored and logged.” See id. 8:53-55, 8:58-59. The specification also states that
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`the business components “store information about the objects that they manage” in
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`a service database 240 and in a content store 22, and that they manage all data
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`storage and retrieval. See id. 9:47-55.
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`As described above, Johnson completely lacks written description relating to
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`the “icons” identified by Petitioner. See supra Section V.A.2.a). There is no
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`explanation regarding where those icons are maintained or what they even
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`represent. See id. Instead, Petitioner merely claims that a POSITA would
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`understand “that the data center 20 server maintains the status of each of these
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`objects” because “it would be difficult to change a device’s settings without
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`knowing the current status of that device.” See Pet. 29. But this leap in logic is in
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`direct contradiction to Fig. 7 of Johnson, which shows that commands are
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`transmitted without any prior knowledge of control devices’ status; Fig. 8, which
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`shows that commands and requests are stored at the data center for intermittent
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`download/upload to the control unit; and Fig. 9, which shows that the control
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`unit—not the data center—appears to maintain control devices. See Ex. 1005 Figs.
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`7-9, 6:22-34. Combined with Petitioner’s failure to address the meaning of this
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`claim term, it is impossible to understand Petitioner or Mr. Parker’s basis for
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`claiming that Johnson’s icons fulfill the claim limitation. See supra Section IV.
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`Accordingly, Petitioner fails to meet its burden of showing that this claim
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`limitation is met by Johnson (or any of the other references), so the Board should
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`not institute IPR.
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`3. Mere reference to a processor does not disclose
`“generat[ing] processed data by processing at the gateway
`the security data, the device data, and the remote data”
`
`Claim element 1[g] requires that the gateway “generates processed data by
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`processing at the gateway the security data, the device data, and the remote data.”
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`Petitioner points to the alleged existence of security data, device data, remote data,
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`and a processor 201 to fulfill this limitation. See Pet. 23-25. Petitioner does not
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`rely on Severson or Johnson for any disclosures relating to this claim limitation.
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`See id.
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`This is plainly insufficient for Petitioner to meet its burden. At best,
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`Petitioner shows that the combination fulfills the limitations of “security data,”
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`“device data,” and “remote data.” See id. But stating that there is a processor so
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`therefore the data must be processed is circular reasoning that fails to convey how
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`Petitioner interprets “processed data” in the context of the ’619 patent claims, what
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`in the cited combination discloses “processed data,” or how the security data,
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`device data, and remote data are processed to generate the claimed processed data.
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`See Alarm.com Inc. v. Vivint, Inc., No. IPR2015-02003, Paper No. 15 (P.T.A.B.
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`Mar. 31, 2016) (denying institution because “it is not enough to find that a prior art
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`device is capable of being modified to operate in the manner claimed . . . [r]ather,
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`the asserted prior art apparatus, as disclosed, must be capable of performing the
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`recited function, not merely that it might be modified to include such capability”)
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`(citing Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir.
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`2011)). Mr. Parker’s parroting of the petition fails to provide additional
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`explanation of how this limitation is met. See Ex. 1002 ¶¶ 109-112. Further, as
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`discussed above, the burden is on Petitioner to “identify . . . how the challenged
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`claim is to be construed.” See 37 C.F.R. § 42.104(b)(3); supra Section IV.
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`Petitioner fails to do so, making its argument unintelligible. See Pet. 23-25.
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`-21-
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`Thus, because Petitioner has failed to demonstrate that the combination of
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`Wimsatt, Severson, and Johnson discloses that the gateway “generates processed
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`data,” the Board should not institute IPR on Ground 1.
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`4.
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`The petition fails to demonstrate that Wimsatt’s system
`would be modified to include a remote server
`
`In addressing claim element 1[e], requiring “a security server at a second
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`location different from the first location, wherein the security server is coupled to
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`the gateway,” Petitioner contends that it would have been obvious to modify
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`Wimsatt to communicate with a remote server in view of Johnson. Pet. 18-20.
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`Petitioner’s argument overlooks that Wimsatt discusses problems with a server-
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`oriented approach and provides an alternative to avoid those known shortcomings.
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`Petitioner also fails to demonstrate that the server-based modifications it proposes
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`would have been compatible with Wimsatt’s disclosure.
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`a) Wimsatt teaches away from use of servers
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`Although Petitioner is correct that Wimsatt does not disclose a remotely
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`located security server (see Pet. 18-20), Petitioner is not correct that a POSITA
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`would be motivated to combine Wimsatt with a reference that discloses servers.
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`Instead, Wimsatt expressly teaches away from use of servers. See Ex. 1004 ¶ 9.
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`It is improper to combine references where the references teach away from
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`their combination. See In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983). A
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`referen