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[email protected] Paper No. 44
571-272-7822 Entered: March 22, 2017
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
ALARM.COM INC.,
Petitioner,
v.
VIVINT, INC.,
Patent Owner.
____________
Case IPR2015-01977
Patent 6,924,727 B2
____________
Before MICHAEL R. ZECHER, JAMES B. ARPIN, and
CHARLES J. BOUDREAU, Administrative Patent Judges.
ZECHER, Administrative Patent Judge.
FINAL WRITTEN DECISION
Inter Partes Review
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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I. BACKGROUND
Petitioner, Alarm.com Inc. (“Alarm.com”), filed a Petition requesting
an inter partes review of claims 1–9, 14–18, and 22–38 of U.S. Patent No.
6,924,727 B2 (Ex. 1001, “the ’727 patent”). Paper 3 (“Pet.”). Patent
Owner, Vivint, Inc. (“Vivint”), filed a Preliminary Response. Paper 11.
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 1–9, 14–18, and 22–38 of the ’727 patent as
unpatentable under 35 U.S.C. § 103(a). Pursuant to 35 U.S.C. § 314, we
instituted this inter partes review on March 24, 2016, as to all the challenged
claims. Paper 13 (“Dec. on Inst.”).
During the course of trial, Vivint filed a Patent Owner Response
(Paper 19, “PO Resp.”), and Alarm.com filed a Reply to the Patent Owner
Response (Paper 27, “Pet. Reply”). Vivint also filed an Updated Motion for
Observation regarding certain cross-examination testimony of Alarm.com’s
declarant, Vernon Thomas Rhyne, III, Ph.D., P.E., R.P.A. (Paper 39,
“Obs.”), and Alarm.com filed a Response to Vivint’s Updated Motion for
Observation (Paper 40, “Obs. Resp.”). A consolidated oral hearing with
Case IPR2015-01965 was held on November 30, 2016, and a transcript of
the hearing is included in the record. Paper 43 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This decision is a Final
Written Decision under 35 U.S.C. § 318(a) as to the patentability claims 1–
9, 14–18, and 22–38 of the ’727 patent. For the reasons discussed below, we
hold that Alarm.com has demonstrated by a preponderance of the evidence
that these claims are unpatentable under § 103(a).
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A. Related Matters
The ’727 patent is involved in a district court case captioned Vivint,
Inc. v. Alarm.com Inc., No. 2:15-cv-00392-CW (D. Utah 2015). Pet. 1;
Paper 10, 2. In addition to this Petition, Alarm.com filed another petition
challenging claims 19–21 of the ’727 patent. Alarm.com Inc. v. Vivint, Inc.,
Case IPR2015-02008 (PTAB Sept. 30, 2015) (Paper 1). We denied
institution of an inter partes review in that proceeding because Vivint filed a
statutory disclaimer disclaiming all of the challenged claims. Alarm.com
Inc. v. Vivint, Inc., Case IPR2015-02008 (PTAB Jan. 20, 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. 6,147,601 (Cases IPR2015-02004, IPR2016-00116, IPR2016-00155,
and IPR2016-01080); (2) U.S. Patent No. 6,462,654 B1 (Cases IPR2015-
02003, IPR2016-00161, IPR2016-01110, and IPR2016-01124); (3) U.S.
Patent No. 6,535,123 B2 (Cases IPR2015-01995 and IPR2016-00173); (4)
U.S. Patent No. 6,717,513 B1 (Cases IPR2015-01997, IPR2016-00129, and
IPR2016-01091); and (5) U.S. Patent No. 7,884,713 B1 (Cases IPR2015-
01965 and IPR2015-01967). Paper 17, 1–2; Paper 18, 1–2.
B. The ’727 Patent
The ’727 patent, titled “Method for Remote Control of Home-Located
Electronic Devices and a Management Facility,” issued August 2, 2005,
from U.S. Patent Application No. 10/129,583, filed on May 3, 2002.
Ex. 1001, at [54], [45], [21], [86]. The ’727 patent is a national stage entry
of International Patent Application No. PCT/JP01/08452, filed on
September 27, 2001. Id. at [86], [22]. The ’727 patent also claims foreign
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priority to Japanese Patent Application No. 2000-295110, filed on
September 27, 2000. Id. at [30].
As the title suggests, the ’727 patent generally relates to a method for
remote control of home-located devices using a management facility.
Ex. 1001, 1:7–9. In the “Art Background” section, the ’727 patent explains
that there are several known methods for controlling home-located electronic
devices, such as using a home server to control a home network, which, in
turn, controls each home-located electronic device. Id. at 1:22–26. After
acknowledging that a remote control means installed in a house has been
proposed to control home-located electronic devices, the ’727 patent
identifies three remote control methods for use in systems that include a
home network. Id. at 1:27–64. According to the ’727 patent, each of these
remote control methods is difficult to implement in existing systems because
they have high running costs or numerous technical limitations. See id. at
2:1–43.
The ’727 patent purportedly improves upon these existing systems by
using a server that does not require a high level of processing capability to
control home-located electronic devices. Ex. 1001, 2:49–51. The described
method and management facility also uses a terminal, such as a portable
telephone, to control remotely each home-located electronic device. Id. at
2:51–54. Figure 1 of the ’727 patent, reproduced below, illustrates one
embodiment of a home network management system. Id. at 6:10–13, 7:54–
56.
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As shown in Figure 1, the home network management system
includes a plurality of terminals 1, mobile packet communication network 2,
gateway server 3, Internet 4, home network management facility 5, home
network 6, and notification server 7. Ex. 1001, 7:57–61. Home network 6
further includes home server 61, home-located electronic device group 62,
and security system 63, each of which are connected by home bus 64. Id. at
9:1–5. In this embodiment, a prospective user is able to control each of the
home-located electronic devices included in home network 6 using one of
the plurality of terminals 1. Id. at 7:66–8:5.
C. Illustrative Claim
Of the challenged claims, claims 1, 16, 22, and 31 are the only
independent claims at issue. Independent claims 1, 16, and 22 are directed
to a method for remote control of home-located electronic devices, whereas
independent claim 31 is directed to a management facility of home-located
electronic devices. Claims 2–9, 14, and 15 directly or indirectly depend
from independent claim 1; claims 17 and 18 directly depend from
independent claim 16; claims 23–30 directly or indirectly depend from
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independent claim 22; and claims 32–38 directly or indirectly depend from
independent claim 31. Independent claim 1 is illustrative of the challenged
claims and is reproduced below:
1. A method for remote control of home-located
electronic devices, comprising the steps of:
receiving, at a management facility, from a terminal via a
network, a request signal and a terminal identifier that identifies
said terminal;
identifying, in said managing facility a server, said server
being identified by a server identifier that corresponds to said
terminal identifier;
obtaining, in said management facility, from said server
via said network, status information and said server identifier,
said status information indicative of the status of home-located
electronic devices controlled by said server;
generating display information for said terminal
dependent upon the performance of said terminal, wherein said
display information includes the status of said home-located
electronic devices based on said status information and a prompt
for input of a control instruction for said home-located electronic
devices, said terminal being identified by said terminal identifier,
said terminal identifier corresponding to said server identifier;
transmitting said display information from said
management facility to said terminal;
displaying, with said terminal, a screen showing the status
of said home-located electronic devices and a screen to prompt
for input of a control instruction of said home-located electronic
devices on the basis of the received display information;
transmitting, by said terminal, said terminal identifier and
first control information;
generating, by said management facility, second control
information that directs said server to perform control of said
home-located electronic devices, on the basis of said first control
information;
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transmitting, by said management facility, said second
control information to said server, said server being identified by
said server identifier that corresponds to said terminal identifier,
and
controlling, by said server, said home-located electronic
devices on the basis of said second control information.
Ex. 1001, 34:2–43.
D. Prior Art Relied Upon
Alarm.com relies upon the following prior art references:
Inventor1 U.S. Patent No. Relevant Dates Exhibit No.
Johnson
(“Johnson ’950”)
6,580,950 B1 issued June 17, 2003,
filed Apr. 28, 2000
1003
Umbreit 6,704,787 B1 issued Mar. 9, 2004,
filed Dec. 3, 1999
1004
Menard 6,667,688 B1 issued Dec. 23, 2003,
filed Dec. 22, 1998
1005
Moriya 6,161,140 issued Dec. 12, 2000,
filed Sept. 30, 1997
1006
Johnson
(“Johnson ’336”)
6,553,336 B1 issued Apr. 22, 2003,
filed June 26, 2000
1007
E. Instituted Grounds of Unpatentability
We instituted a trial based on the asserted grounds of unpatentability
(“grounds”) set forth in the table below. Dec. on Inst. 35.
1 For clarity and ease of reference, we only list the first named inventor.
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References Basis Claim(s) Challenged
Johnson ’950 and Moriya § 103(a) 1–5, 9, 15, 16, 18, 22–24,
26–32, and 34–38
Johnson ’950, Moriya, and
Umbreit
§ 103(a) 6–8, 25, and 33
Johnson ’950, Moriya, and
Johnson ’336
§ 103(a) 14
Johnson ’950, Moriya, and
Menard
§ 103(a) 17
II. ANALYSIS
A. Claim Construction
In an inter partes review proceeding, claim terms of an unexpired
patent are given their broadest reasonable interpretation in light of the
specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142–46 (2016)
(upholding the use of the broadest reasonable interpretation standard as the
claim construction standard to be applied in an inter partes review
proceeding). Under the broadest reasonable interpretation standard, and
absent any special definitions, claim terms are generally given their ordinary
and customary meaning, as would be understood by one of ordinary skill in
the art, in the context of the entire disclosure. In re Translogic Tech., Inc.,
504 F.3d 1249, 1257 (Fed. Cir. 2007).
1. “terminal identifier”
In its Petition, Alarm.com contends that the broadest reasonable
interpretation of the claim term “terminal identifier” is “an identifier
associated with a terminal that enables the home network management
facility to identify or communicate with the terminal.” Pet. 12. To support
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its construction, Alarm.com directed us to various challenged claims, as well
as certain disclosures and figures in the specification of the ’727 patent. Id.
at 12–13 (citing Ex. 1001, 14:45–47, 21:12–17, 34:7–9, 36:13–16, 40:8–9,
Figs. 4, 6). For purposes of the Decision on Institution, we adopted
Alarm.com’s proposed construction of the claim term “terminal identifier”
because, on that record, it was consistent with the ordinary and customary
meaning of “terminal identifier,” as would be understood by one with
ordinary skill in the art, in light of the claims and specification of the ’727
patent. Id. at 9–10 (citing Ex. 1001, 8:34–40, 14:45–47, 21:12–17, 40:8–9)
In its Patent Owner Response, Vivint contends that the proper
construction of “terminal identifier” is “an identifier associated with a
terminal that enables a terminal to be identified” because this construction is
consistent with the ordinary and customary meaning of this claim term, as
would be understood by one with ordinary skill in the art, in light of the
claims and specification of the ’727 patent. PO Resp. 11, 14 (Ex. 2026
¶¶ 154–157, 168). According to Vivint, Alarm.com’s proposed construction
of the claim term “terminal identifier” is incorrect for two reasons. Id. at 9.
First, Vivint argues that one necessary characteristic of a terminal identifier
is that the identifier must identify the terminal. Id. at 10 (citing Ex. 1001,
8:33–40, 34:5–6; Ex. 2026 (Declaration of J. Tipton Cole) ¶¶ 155, 156).
Consequently, Vivint asserts that the correct construction of “terminal
identifier” cannot exclude its plain and ordinary meaning—namely, an
identifier that identifies a terminal. Id. (citing Ex. 2026 ¶ 154). Vivint
further argues that, under Alarm.com’s proposed construction, a “terminal
identifier” could be interpreted to cover “an identifier associated with a
terminal that enables the home network management facility to . . .
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communicate with the terminal.” Id. (citing Ex. 2026 ¶ 153). Vivint asserts
that, if construed as proposed by Alarm.com, the interpretation of “terminal
identifier” is improperly broadened because such a construction would
introduce an alternative meaning that would exclude the requirement that a
terminal identifier identifies a terminal. Id. at 11 (citing Ex. 2026 ¶ 152).
Second, Vivint contends that Alarm.com’s proposed construction of a
“terminal identifier” incorrectly characterizes this claim term as
encompassing an Internet Protocol (“IP”) address or some address used to
accomplish data packet communication over a network to and from the
terminal. PO Resp. 11. Vivint argues that, although the ’727 patent uses the
term “IP address” a handful of times throughout the specification, this term
is never linked to the terminal identifier in any discernible manner. Id. at 11
(citing Ex. 1001, 8:49–53, 11:46–49, 13:37–39, 22:21–26, 22:26–29;
Ex. 2026 ¶ 161). Vivint further argues that Alarm.com relies upon an
embodiment illustrated in Figure 11 of the ’727 patent, particularly the
communication between terminal 1 and Hypertext Transfer Protocol
(“HTTP”) server 51, to support its assertion that a “terminal identifier” may
be an IP address. Id. at 12–13. Vivint asserts, however, that one of ordinary
skill in the art would have understood that this particular embodiment uses a
gateway server (i.e., a type of network address translation (“NAT”) router)
that would substitute its own IP address into the data packet received from
terminal 1, such that HTTP server 51 would never receive the terminal’s IP
address. Id. at 13.
In its Reply, Alarm.com contends that its construction of “terminal
identifier” proposed in the Petition is correct because it is consistent with the
disclosure of the ’727 patent as an identifier added to network
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communications. Pet. Reply 1 n.1 (citing Ex. 1031 (Reply Declaration of
Dr. Rhyne) ¶¶ 27–30). Alarm.com also argues that Vivint’s argument
regarding Figure 11 of the ’727 patent and, in particular, its discussion of a
gateway server or NAT router is not a relevant basis to narrow the
construction of “terminal identifier.” Id. (citing Ex. 1031 ¶¶ 34–36).
According to Alarm.com, none of the challenged claims of the ’727 patent
require the use of a gateway server or NAT router. Id. at 6.
Based on the record developed during trial, we maintain that
Alarm.com’s proposed construction of a “terminal identifier” as “an
identifier associated with a terminal that enables the home network
management facility to identify or communicate with the terminal”
constitutes the broadest reasonable interpretation of this claim term. We,
therefore, decline to adopt Vivint’s proposed construction of a “terminal
identifier” as merely “an identifier associated with a terminal that enables a
terminal to be identified.”
As an initial matter, the parties do not argue, nor could we find, that
the specification of the ’727 patent includes an explicit definition of a
“terminal identifier.” We, therefore, determine the ordinary and customary
meaning of this claim term, as would be understood by one of ordinary skill
in the art, in the context of the claims and specification of the ’727 patent.
See Translogic, 504 F.3d at 1257. In our view, the key inquiry in resolving
the parties’ dispute regarding how a “terminal identifier” should be
construed under the broadest reasonable interpretation standard is
determining whether a terminal identifier that enables communication with a
terminal necessarily requires identification of the terminal. Based on our
review of the claims and specification of the ’727 patent, we determine that
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using a terminal identifier to communicate with a terminal necessarily
requires identifying the terminal.
To determine the scope and meaning of the claim term “terminal
identifier,” we begin by focusing on the plain language of the challenged
claims themselves. See Bell Commc’ns Research, Inc. v. Vitalink Commc’ns
Corp., 55 F.3d 615, 620 (Fed. Cir. 1995) (explaining that we must first look
to the words of the claims, which should be accorded their ordinary and
customary meaning unless it appears the patentees used them otherwise).
Independent claim 1 recites, in relevant part, “a terminal identifier that
identifies said terminal.” Ex. 1001, 34:5–6. This claim language is
instructive in that it informs us that the terminal identifier is used to identify
a terminal. Independent claim 16 recites, in relevant part, “said terminal
identifier to determine at least one of a display capability or a
communication capability of said terminal.” Id. at 36:14–16. This claim
language also is instructive in that it informs us that a terminal identifier is
used to determine the format in which information must be communicated to
a terminal. Dependent claims 29 and 37 each recite “wherein said identifier
is a manufacturer model identifier of said remote terminal.” Id. at 38:35–36,
40:8–9. This claim language further informs us that one example of a
terminal identifier is a manufacturer model identifier.
Turning now to the specification of the ’727 patent, we determine
whether the patentees’ use of the claim term “terminal identifier” in the
specification is consistent with its usage in the challenged claims. See
United States v. Adams, 383 U.S. 39, 49 (stating that it is equally
“fundamental that claims are to be construed in the light of the specification
and both are to be read with a view to ascertaining the invention”). When
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describing the home network management facility illustrated in Figure 1 of
the ’727 patent, the specification states that the memory function of terminal
1 includes “[a] terminal [identifier (“ID”)] which identifies each terminal as
identifier.” Ex. 1001, 8:33–40. This cited disclosure is consistent with the
plain language of independent claim 1 discussed above because it indicates
that the terminal identifier/ID enables a terminal to be identified. When
describing the sequence of operations illustrated in Figure 11 of the ’727
patent, the specification further states that “terminal 1 adds the terminal ID
[terminal a] to communication request CR1, and transmits it to HTTP server
51. Further, with regard to the transmission of information from terminal 1
to home network management facility 5, terminal 1 adds the terminal ID to
the information in the transmission.” Id. at 14:46–51. This cited disclosure
is consistent with the plain language of independent claim 16 discussed
above because it indicates that the terminal identifier/ID is used to establish
communication with the terminal.
At the end of its discussion regarding the first embodiment, the
specification states that “the terminal IDs are added to the various
information as identifiers, however, it is also not restricted to this example.
The identifier may be a user ID or a home network ID.” Ex. 1001, 25:56–
59. This cited disclosure demonstrates that the patentees of the ’727 patent
did not intend to limit an “identifier” to a specific type of identifier, such as
an alphanumeric number or a unique identifier that is specific to a device, as
asserted by Vivint. See Tr. 60:14–20 (arguing that a terminal ID “is an
alphanumeric number . . . it’s a unique identifier specific to that device”).
Indeed, this cited disclosure is consistent with the plain language of
dependent claims 29 and 37 discussed above because it indicates that the
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terminal identifier/ID is not limited to a specific type of identifier, but rather
may include multiple types of identifier that enable identification or
communication with a terminal, such as a manufacturer model identifier.
Upon reviewing both the claims and specification of the ’727 patent, it
is clear that a “terminal identifier” must be capable of enabling identification
or communication with a terminal, one example being a manufacturer model
identifier. At this point in our analysis, it is important to remember that the
’727 patent generally relates to a method for remote control of home-located
devices using a management facility. Ex. 1001, 1:7–9. Given this context,
particularly that a single terminal, such as a portable telephone, is used to
control remotely home-located electronic devices (id. at 2:51–54), Vivint
does not explain how communication via the Internet occurs between this
single terminal and the home network management facility without
identifying the terminal. In other words, with the stated context of the ’727
patent in mind, one of ordinary skill in the art would have recognized that
the management facility first must identify a specific terminal in order to
communicate with that terminal via the Internet. Our understanding in this
regard is reinforced further by the testimony of Alarm.com’s declarant,
Dr. Rhyne. In his Reply Declaration, Dr. Rhyne confirms that, “in order to
communicate with a specific terminal in a network environment, such as the
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Internet, an identification of the specific terminal is always required.”
Ex. 1031 ¶ 28 (emphasis added).2
We also take this opportunity to note that Vivint presents inconsistent
arguments regarding the construction of the claim terms “terminal identifier”
and “server identifier.” With the exception of the word “terminal,” the
construction for “server identifier” proposed by Alarm.com in its Petition is
essentially the same as the construction it proposed for “terminal identifier.”
Compare Pet. 12, with id. at 14. Despite the similarities in these
constructions, Vivint only disputed Alarm.com’s proposed construction for
“terminal identifier”—namely, the “identify or communicate” language. See
generally PO Resp. 10–14. Vivint did not dispute the use of this same
language in Alarm.com’s proposed construction of “server identifier.” See
id. at 14.
In our view, the construction of “server identifier” is relevant to the
construction of “terminal identifier” because the claim term “identifier”
presumptively should carry the same meaning throughout the ’727 patent.
Absent evidence to the contrary, the claim terms “terminal identifier” and
“server identifier” should have parallel meanings that differ only with
respect to their relationship to a terminal and server. See Chamberlain Grp.,
2 Vivint attempts to undermine Dr. Rhyne’s testimony by observing that, in
the context of broadcasting messaging, a message may be broadcast without
knowing the specific terminals that receive the message. Obs. 1. In
response, Alarm.com argues—and we agree—that the ’727 patent was not
concerned with broadcast messaging, nor does the record include sufficient
or credible evidence that one of ordinary skill in the art would have been
aware of broadcast messaging during the relevant time frame of the ’727
patent. Obs. Resp. 1.
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Inc. v. Lear Corp., 516 F.3d 1331, 1337 (Fed. Cir. 2008) (stating that the
“term ‘trinary code’ is relevant to construing ‘binary code’ because the term
‘code’ presumptively should carry the same meaning through the patent [at
issue],” and, as a result, determining that “‘binary code’ and ‘trinary code’
should have parallel meanings, differing only insofar as ‘binary’ and
‘trinary’ differ in their relationship to the numbers 2 and 3”). Dependent
claims 5 and 18, each of which recites “wherein said terminal identifier and
said server identifier are the same,” further reinforces that the claim terms
“terminal identifier” and “server identifier” should have parallel meanings.
In summary, we maintain that Alarm.com’s proposed construction of
a “terminal identifier” as “an identifier associated with a terminal that
enables the home network management facility to identify or communicate
with the terminal” is the broadest reasonable interpretation in light of the
claims and specification of the ’727 patent.
2. “server identifier”
In its Petition, Alarm.com contends that the broadest reasonable
interpretation of the claim term “server identifier” is “an identifier associated
with a home server that enables the home network management facility to
identify or communicate with the home server.” Pet. 14. To support its
construction, Alarm.com asserts that the claim term “server identifier” does
not appear in the specification of the ’727 patent, but instead the
specification uses the term “home network ID.” Id. Alarm.com argues that
the specification discloses that the term “home network ID” serves to
identify the home server that corresponds to the terminal and, therefore,
constitutes the claimed “server identifier.” Id. (citing Ex. 1001, 11:37–44,
16:39–42, 16:48–60). Alarm.com further argues that the claim term “server
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identifier” may be an IP address or other address used to accomplish
communication over a network. Id. at 13–14 (citing Ex. 1001, 9:29–31,
16:63–17:2, Fig. 4). For purposes of the Decision on Institution, we agreed
with Alarm.com’s proposed construction of the claim term “server
identifier” because, on that record, it was consistent with the ordinary and
customary meaning of “home network ID,” as would be understood by one
with ordinary skill in the art, in light of the specification of the ’727 patent.
Dec. on. Inst. 11 (citing Ex. 1001, 9:29–31, 11:37–44, 16:40–17:2).
In its Patent Owner Response, Vivint adopts our initial construction of
the claim term “server identifier” as “an identifier associated with a home
server that enables the home network management facility to identify or
communicate with the home server.” PO Resp. 14. In its Reply, Alarm.com
does not present additional arguments or evidence as to the construction of
this claim term. See generally Pet. Reply 1–13. We discern no reason to
further address or alter our initial construction of the claim term “server
identifier” and, therefore, we adopt that construction as the broadest
reasonable interpretation in light of the claims and specification of the ’727
patent.
B. Obviousness Based on the Combined Teachings of
Johnson ’950 and Moriya
Alarm.com contends that claims 1–5, 9, 15, 16, 18, 22–24, 26–32, and
34–38 of the ’727 patent are unpatentable under § 103(a) over the
combination of Johnson ’950 and Moriya. Pet. 15–46. Alarm.com explains
how this proffered combination teaches the subject matter of each
challenged claim. Id. Alarm.com relies upon the Declaration of Dr. Rhyne
to support its positions. Ex. 1009 ¶¶ 56–251. In its Patent Owner Response,
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Vivint presents a number of arguments with respect to the challenged
claims. PO Resp. 21–47. Vivint relies upon the Declaration of Mr. Cole to
support its positions. Ex. 2026 ¶¶ 169–219, 230–309.
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, proceeded by brief overviews of Johnson ’950 and Moriya,
and then we address the parties’ contentions with respect to the challenged
claims.
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 this asserted ground 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’s
declarant, Dr. Rhyne, testifies that a person of ordinary skill in the art as of
September 2000 would be an individual who possesses (1) a bachelor’s
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degree in computer science, electrical engineering, computer engineering, or
equivalent coursework; and (2) at least two years of experience in remote
monitoring and control systems. Ex. 1009 ¶ 20. Vivint’s declarant, Mr.
Cole, testifies that that a person of ordinary skill in the art as of September
2000 would be an individual who possesses (1) at least a bachelor’s degree
in mathematics, physics, computer science, electrical engineering, computer
engineering, or a related field; and (2) either a master’s degree in one of the
related fields, or at least two years of industry experience in controlling and
communicating with remote systems. Ex. 2026 ¶ 27.
Mr. Cole’s assessment of level of skill in the art is different from that
of Dr. Rhyne insofar as it permits one of ordinary skill in that art to have a
master’s degree in lieu of experience. Mr. Cole’s assessment of the level of
skill in the art also permits one of ordinary skill in the art to have a degree in
math or physics, rather than just computer science, electrical engineering, or
computer engineering. Because Mr. Cole’s assessment of the level of skill
in the art is consistent with the ’727 patent and the asserted prior art, we
adopt it and apply it to our obviousness evaluation below, but note that our
conclusions would be the same under Dr. Rhyne’s assessment.
3. Johnson ’950 Overview
Johnson ’950 generally relates to home monitoring systems and, in
particular, to a communications system that allows a homeowner to monitor
and control various features of their home from a distant location via a
global computer network, such as the Internet. Ex. 1003, 1:7–12. Figure 1
of Johnson ’950, reproduced below, illustrates the communication between a
homeowner’s computer and a control unit within the home through a global
computer network. Id. at 3:24–27, 4:39–47.
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As shown in Figure 1, Internet-based home communications system
10 includes a plurality of control devices 40 positioned within a home,
control unit 30 connected to global computer network 12, and data center 20
in communication with control unit 30 via global computer network 12.
Ex. 1003, 4:16–23. Control devices 40 may include various units, such as
light controls 42, heating controls 44, moisture controls 46, freeze controls
48, pet feeding device 50, propane gauge 54, interior cameras 56, exterior
cameras 58, security system 60, smoke alarms 62, health monitoring devices
64, etc. (not illustrated above). Id. at 4:23–29. The homeowner is capable
of monitoring and controlling these devices by accessing a web page
displayed by data center 20 through a conventional web browser on user
computer 16. Id. at 4:30–33; see also id. at 2:19–22 (disclosing the same).
The homeowner may view, monitor, or control features of their home
through the web page (e.g., by viewing interior images of their home or
adjusting the thermostat in their home). Id. at 4:34–36.
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4. Moriya Overview
Moriya generally relates to a system for transferring information to
data terminals via networks and, in particular, to an information transfer
system that includes a central facility connected to a plurality of the data
terminals that differ from each other in their respective capabilities.
Ex. 1006, 1:8–13, 1:51–56. Figure 4 of Moriya, reproduced below,
illustrates a relational database stored in code storage section 21 of central
facility 2. Id. at 2:31–32, 5:3–4.
As shown in Figure 4, the relational database includes information
regarding five types of data terminals capable of connecting to the central
facility. Ex. 1006, 5:1–4. In particular, this relational database indicates the
model codes and specification data that describe the capabilities and features
for each of the five types of data terminals. Id. at 5:4–7.
5. Claims 1, 16, 22, and 31
In its Petition, Alarm.com contends that Johnson ’950’s home
monitoring system that allows a homeowner to monitor and control various
devices within its home from a remote location teaches all of the limitations
recited in independent claims 1, 16, 22, and 33, except the limitations
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directed to formatting information based on terminal display capabilities.
Pet. 15–20, 26–46. Alarm.com then turns to Moriya’s disclosure of central
facility 2 connected to a plurality of terminals 1 that differ from each other
in their respective display capabilities to teach these limitations. Id. at 20–
22, 27–28, 36–37, 39, 43–44 (citing Ex. 1006, 1:51–56, 3:67–4:10, 5:1–7,
Fig. 4).
Alarm.com then contends that Johnson ’950 discloses that data center
20 communicates with various types of terminals, including a personal
computer (“PC”), personal digital assistant (“PDA”), web-connected phone,
or web-connected pager. Pet. 22 (citing Ex. 1003, 6:2–6). Alarm.com
further argues that there was a need in the year 2000 time frame to
customize outgoing information for devices with varying capabilities in
many industries, including the home security and automation industry, as
evidenced by Johnson ’336, Johnson ’950, Joao, and Menard. Id. at 22–24
(citing Ex. 1003, Fig. 5; Ex. 1009 ¶¶ 59, 60, 65). Alarm.com asserts that,
because Moriya is directed explicitly to addressing this need, one of ordinary
skill in the art would have had a sufficient reason to modify Johnson ’950’s
home monitoring system to incorporate Moriya’s disclosure of formatting
information based on a terminal’s display capabilities. Id. at 24–26 (citing
Ex. 1006, 1:31–43).
In its Patent Owner Response, Vivint presents the following
arguments: (1) the combination of Johnson ’950 and Moriya does not teach
a terminal identifier that is received by a management facility, as required by
independent claims 1, 16, 22, and 31; (2) the combination of Johnson ’950
and Moriya does not teach a server identifier that corresponds to the terminal
identifier, as required by independent claims 1, 16, and 31; (3) the
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combination of Johnson ’950 and Moriya does not teach the generation of
second control information by a management facility, as required by
independent claims 1 and 16; (4) absent reliance upon impermissible
hindsight, a person of ordinary skill in the art would not have combined the
teachings of Johnson ’950 and Moriya; and (5) modifying Johnson ’950’s
home monitoring system to account for the varying display capabilities of
terminals would render Johnson ’950 inoperable for its intended purpose.
PO Resp. 21–47. We address each argument in turn.
a. Johnson ’950 and Moriya each individually teach a terminal identifier
that is received by a management facility, as required by independent
claims 1, 16, 22, and 31
Independent claim 1 recites, in relevant part, “receiving, at a
management facility, from a terminal via a network, . . . a terminal identifier
that identifies said terminal.” Ex. 1001, 34:4–6. Independent claims 16, 22,
and 33 each recite similar limitations. Id. at 36:26–28, 37:53–57, 38:51–53.
In its Petition, Alarm.com contends that Johnson ’950 discloses that
control unit 30 and user computer 16 communicate with data center 20 via
global network 12, such as the Internet. Pet. 17 (citing Ex. 1003, 2:8–14).
Alarm.com then argues that such communication between devices is not
possible without identifiers that permit association of the communication
information with a source and a destination. Id. For instance, Alarm.com
asserts that, when communication is via the Internet, as taught by Johnson
’950, a terminal IP address is a “terminal identifier.” Id. As further support
for its argument, Alarm.com directs us to the Examiner’s use of Official
Notice during prosecution that data packets containing source and
destination addresses were old and well-known. Id. at 17–18 (citing
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Ex. 1002, 533).3 As we explained in the Decision on Institution, we
understand Alarm.com to argue that Johnson ’950 teaches using a terminal
IP address that identifies user computer 16 and, therefore, Johnson ’950’s IP
address, by itself, accounts for the claimed “terminal identifier.” Dec. on
Inst. 15.
Alternatively, Alarm.com contends that Moriya’s central facility 2
uses model codes to retrieve from memory the capabilities for each type of
terminal 1. Pet. 21. For example, Moriya discloses that the model code may
indicate that terminal 1 is a personal digital assistant (“PDA”) with 4-bit
monochrome color and a smaller display size, or, alternatively, the model
code may indicate that terminal 1 is a personal computer (“PC”) with 16-bit
color and a larger display. Id. (citing Ex. 1006, 5:7–26, 7:50–8:24, Fig. 4).
Alarm.com then asserts that Moriya’s model code constitutes a terminal
identifier because it is used to retrieve terminal capabilities from a table in
memory. Id. at 22. As we explained in the Decision on Institution, we
understand Alarm.com to argue that Moriya teaches using a model code to
identify a particular terminal, such as a PDA or PC, and, therefore, Moriya’s
model code, by itself, accounts for the claimed “terminal identifier.” Dec.
on Inst. 16.
In its Patent Owner Response, Vivint contends that neither Johnson
’950 nor Moriya properly accounts for the claimed “terminal identifier.”
PO Resp. 22. Beginning with the disclosure in Johnson ’950, Vivint argues
that Alarm.com improperly relies upon Official Notice taken by the
3 All references to the page numbers in the prosecution history of the ’727
patent are to the page numbers inserted by Alarm.com in the bottom, right-
hand corner of Exhibit 1002.
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Examiner during prosecution to support its assertion that Johnson ’950’s
terminal would necessarily use an IP address within its home monitoring
system. Id. at 23 (citing Ex. 2026 ¶ 170). Vivint asserts that neither
Alarm.com nor its declarant, Dr. Rhyne, provides corroborating evidence to
support this argument, and, in any event, an Examiner’s use of Official
Notice cannot serve as the basis of a ground instituted in an inter partes
review. Id. Vivint further argues that Alarm.com’s argument that a
terminal’s IP address constitutes the claimed “terminal identifier” is flawed
because the terminal IP address is never received by the management
facility. Id. at 23–24 (citing Ex. 2026 ¶¶ 151–168, 170–172). According to
Vivint, a person of ordinary skill in the art would have understood that, at or
around the time of the invention, many terminals would have been behind a
gateway server or NAT router. Id. at 24. With this in mind, Vivint asserts
that the source IP address of a data packet transmitted by Johnson ’950’s
user computer 16 would never reach data center 20 because a gateway server
or NAT router would replace the source IP address with its own IP address.
Id. at 24–25.
In its Reply, Alarm.com counters that both the Petition and supporting
testimony of Dr. Rhyne explain how Johnson ’950’s disclosure of Internet
communications between user computer 16 and data center 20 inherently
discloses the use of IP addresses. Pet. Reply 2 (citing Pet. 17; Ex. 1009
¶ 56). Alarm.com argues that it did, indeed, reference the Examiner’s use of
Official Notice during prosecution in its Petition; however, contrary to
Vivint’s assertion, the Examiner provided documentary evidence to support
the use of Official Notice. Id. at 3 (citing Ex. 1002, 533). Alarm.com
further argues that, even if we were to disregard the Examiner’s use of
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Official Notice, Alarm.com nonetheless has provided sufficient evidence to
support its assertion that Johnson ’950 inherently discloses IP addresses. Id.
(citing Ex. 1031 ¶ 37). In addition, Alarm.com disagrees with Vivint’s
argument involving the use of a gateway server or NAT router. Id. at 4–5.
Alarm.com argues that Vivint’s argument in this regard has no basis in the
disclosure of Johnson ’950, nor is required by the challenged claims of the
’727 patent. Id. at 5–6 (citing Ex. 1003, 4:55–61, Fig. 5; Ex. 1031 ¶¶ 38–
42).
We agree with Alarm.com that Johnson ’950 necessarily discloses a
terminal IP address that comports with our construction of “terminal
identifier.” That is, in our claim construction section above, we adopted
Alarm.com’s proposed construction of a “terminal identifier” as “an
identifier associated with a terminal that enables the home network
management facility to identify or communicate with the terminal.”
See supra Section II.A.1. Johnson ’950’s terminal IP address is consistent
with this construction because it is associated with user computer 16 and
enables data center 20 to identify or communicate with user computer 16.
See Ex. 1003, 2:8–14, 4:30–36, 6:61–7:4, Fig. 1. We also credit Dr. Rhyne’s
supporting testimony on this particular issue because it is consistent with the
aforementioned disclosures in Johnson ’950. See Ex. 1009 ¶ 56. We,
therefore, agree with both Alarm.com and Dr. Rhyne that Johnson ’950, by
itself, teaches a terminal identifier that is received by a management facility,
as is required by independent claims 1, 16, 22, and 31. See Pet. 17–19;
Ex. 1009 ¶ 56.
We do not agree with Vivint’s argument that Alarm.com improperly
relied upon Official Notice taken by the Examiner during prosecution to
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support its assertion that Johnson ’950’s user computer 16 necessarily would
use an IP address to communicate with data center 20. See PO Resp. 22–23.
In our view, Alarm.com’s reliance upon Official Notice taken by the
Examiner during prosecution is akin to relying on the background
knowledge of one of ordinary skill in the art that may be considered in an
obviousness evaluation. The U.S. Court of Appeals for the Federal Circuit
has recognized that evidence submitted with the Petition (e.g., statements
from the Examiner during prosecution) may be considered to demonstrate
the knowledge that one of skill in the art “would bring to bear in reading the
prior art identified as producing obviousness.” Ariosa Diagnostics v.
Verinata Health, Inc., 805 F.3d 1359, 1365 (Fed. Cir. 2015); see also
Randall Mfg. v. Rea, 733 F.3d 1355, 1362–63 (Fed. Cir. 2013) (emphasizing
that additional prior art references or evidence are not for the purpose of
changing the prior art combination that forms the basis of the asserted
ground, but rather are merely for the purpose of providing evidence of the
state of the art, including the background knowledge of one of ordinary skill
in this art). Here, we view the prosecution history of the ’727 patent and, in
particular, the Examiner’s use of Official Notice, as falling within the
purview of permissible evidence we may consider in this obviousness
evaluation. Upon considering this evidence, we agree with Alarm.com that
it amounts to additional support for its assertion that Johnson ’950’s user
computer 16 necessarily uses an IP address to communicate with data center
20. See Ex. 1002, 533.
For at least three reasons, we do not agree with Vivint’s argument that
the source IP address of a data packet transmitted by Johnson ’950’s user
computer 16 would never reach data center 20 because a gateway server or
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NAT router would replace the source IP address with its own IP address.
See PO Resp. 23–25. First, Vivint’s argument in this regard is premised on
the notion that one of ordinary skill in that art would have understood that, at
or around the time of the invention, many terminals would have been behind
a gateway server or NAT router. Id. at 24. Vivint, however, does not direct
us to, nor can we find, a disclosure in Johnson ’950 that requires a gateway
server or NAT router to be located between user computer 16 and data center
20. Indeed, as Alarm.com correctly points out in its Reply, Johnson ’950
discloses a home monitoring system that employs an Internet configuration
that does not include a gateway server or NAT server. See Pet. Reply 5
(citing Ex. 1003, 4:55–61, Fig. 5).
Second, simply because one of ordinary skill in the art may have
known that many terminals would have been behind a gateway server or
NAT router, does not mean that all terminals would have been positioned in
this manner, much less Johnson ’950’s user computer 16. Indeed, the fact
that the ’727 patent illustrates such a scenario only in Figure 11 may be
evidence that positioning a terminal behind a gateway server or NAT router
was not universal.
Third, to the extent Vivint argues that independent claims 1, 16, 22,
and 31 require a gateway server or NAT router, we do not agree. As we
noted above, Vivint’s argument relies on an embodiment illustrated in
Figure 11 of the ’727 patent, particularly gateway server 3 located between
terminal 1 and HTTP server 51. This embodiment, however, is not
commensurate in scope with the independent clams 1, 16, 22, and 31
because these challenged claims do not require the use of a gateway server
or NAT router. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982)
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(explaining that limitations not appearing in the claims cannot be relied upon
for patentability). In other words, Vivint’s attempt to patentably distinguish
independent claims 1, 16, 22, and 31 from Johnson ’950’s home monitoring
system based on a feature (i.e., gateway server or NAT router) not required
by these challenged claims is not persuasive.
Turning now to the disclosure in Moriya, Vivint argues that Moriya’s
model code does not teach the claimed “terminal identifier” because, at
most, it is capable of identifying a generic terminal—not a specific terminal.
PO Resp. 26 (citing Ex. 2026 ¶ 174). According to Vivint, the ’727 patent
clearly distinguishes between a terminal identifier and a model name. Id. at
26–27 (citing Ex. 1001, 21:12–17, Figs. 6, 8). Vivint argues that Moriya’s
model code is not the same as the claimed “terminal identifier” because it is
never used to identify a specific terminal. Id. at 27–28 (citing Ex. 2026
¶¶ 176, 177). Vivint further argues that its understanding in this regard is
supported further by Figure 16 of Moriya. Id. at 28. Based on this Figure,
Vivint argues that a person of ordinary skill in the art would have understood
that Moriya’s terminals 1 that have the same capabilities also would likely
have the same model code, and, therefore, Moriya’s model code is
analogous to the ’727 patent’s model name. Id. (citing Ex. 2026 ¶¶ 174–
179). Put another way, Vivint argues that Moriya’s system would be unable
to distinguish between terminal A and terminal B if these terminals shared
the same model code. Id. at 29 (citing Ex. 2026 ¶ 180).
In its Reply, Alarm.com counters that the challenged claims,
particularly dependent claims 29 and 37, preclude a construction of
“terminal identifier” that would require them to identify a specific terminal
because those dependent claims indicate that the terminal identifier may be a
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“manufacturer model identifier.” Pet. Reply 7 (quoting Ex. 1001, 38:35–36,
40:9–10). Alarm.com, therefore, asserts that the construction of “terminal
identifier” cannot exclude manufacturer model identifiers because it would
be inconsistent with the plain language of the challenged claims. Id.
We agree with Alarm.com that Moriya’s model code comports with
our construction of “terminal identifier.” That is, in our claim construction
section above, we adopted Alarm.com’s proposed construction of a
“terminal identifier” as “an identifier associated with a terminal that enables
the home network management facility to identify or communicate with the
terminal.” See supra Section II.A.1. Moriya’s model code is consistent with
this construction because it is associated with a particular terminal and
enables central facility 2 to identify or communicate with the terminal. See
Ex. 1006, 3:7–24, 5:7–26, 7:50–8:24, Fig. 4. We also credit Dr. Rhyne’s
supporting testimony on this particular issue because it is consistent with the
aforementioned disclosures in Moriya. See Ex. 1009 ¶ 56. We, therefore,
agree with both Alarm.com and Dr. Rhyne that Moriya, by itself, teaches a
terminal identifier that is received by a management facility, as is required
by independent claims 1, 16, 22, and 31. See Pet. 20–22; Ex. 1009 ¶ 56.
We do not agree with Vivint’s argument that Moriya’s model code is
not the same as the claimed “terminal identifier” because it is never used to
identify a specific terminal. See PO Resp. 26–29. As Alarm.com correctly
points out in its Reply, each of dependent claims 29 and 37 recites “wherein
said identifier is a manufacturer model identifier of said remote terminal.”
See Pet. Reply 7 (quoting Ex. 1001, 38:35–36, 40:9–10). In our analysis in
the claim construction section above, we consider the plain language of
these dependent claims when determining the broadest reasonable
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interpretation of a “terminal identifier.” See supra Section II.A.1. We are
not inclined to disregard this claim language and accept Vivint’s unduly
narrow construction of a “terminal identifier” as it would violate basic
cannons of claim construction. See Utica Enters., Inc. v. Fed. Broach &
Mach. Co., 109 F. App’x 403, 410–11 (Fed. Cir. 2004) (“At the very least
then, claim 3 should be construed to encompass the structures recited in the
claims that depend from it . . . .”).
b. Johnson ’950 teaches a server identifier that corresponds to the
terminal identifier, as required by independent claims 1, 16, and 31
Independent claim 1 recites, in relevant part, “said server being
identified by a server identifier that corresponds to said terminal identifier.”
Ex. 1001, 34:7–9. Independent claims 16 and 31 recite similar limitations.
Id. at 36:10–12, 38:54–56.
In its Petition, Alarm.com contends that Johnson ’950 discloses that
control unit 30 and user computer 16 communicate with data center 20 via
global network 12, such as the Internet. Pet. 17 (citing Ex. 1003, 2:8–14).
Alarm.com then argues that such communication between devices is not
possible without identifiers that permit association of the communication
information with a source and a destination. Id. For instance, Alarm.com
asserts that, when communication is via the Internet, as taught by Johnson
’950, a server IP address is a “server identifier.” Id. As further support for
its argument, Alarm.com directs us to the Examiner’s use of Official Notice
during prosecution that data packets containing source and destination
addresses were old and well-known. Id. at 17–18 (citing Ex. 1002, 533). In
addition, Alarm.com argues that Johnson ’950 discloses that, if a user has
multiple homes, the user may access the security systems for both homes via
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the control page. Id. at 18–19 (citing Ex. 1003, 9:35–46). According to
Alarm.com, a person of ordinary skill in the art would have understood that
server identifiers would be necessary to distinguish between the different
servers at multiple homes. Id. at 19 (citing Ex. 1003, 6:51–59; Ex. 1009
¶ 56).
In its Patent Owner Response, Vivint contends that the Petition lacks
substantive analysis as to whether Johnson ’950 or Moriya teaches a server
identifier corresponding to a terminal identifier, and Alarm.com does not
provide an adequate explanation as to why one of ordinary skill in the art
would have found such correspondence obvious. PO Resp. 30 (citing
Ex. 2026 ¶¶ 198, 199). Vivint further argues that the ’727 patent discloses
that the correspondence between a terminal identifier and a server identifier
is as a measure of security, whereas Johnson ’950’s home monitoring system
employs a user password as a qualification to access its system and never
contemplates a need to establish correspondence between respective
terminal and server identifiers for security purposes. Id. at 30–31 (citing
Ex. 1001, 34:7–9, Fig. 7;4 Ex. 1003, 38–41; Ex. 2026 ¶¶ 196, 197). In
addition, Vivint argues that Alarm.com does not identify a teaching or
suggestion within Johnson ’950 or Moriya that its data center 20 and central
facility 2, respectively, maintain a correspondence between a terminal
identifier and a server identifier, as required by independent claims 1, 16,
and 31. Id. at 31 (citing Ex. 2026 ¶ 198).
4 Vivint mistakenly indicates on page 30 of its Patent Owner Response that it
is relying on Figure 7 of the ’727 patent. A careful review of the Figures in
the ’727 patent indicates that Vivint is relying on Figure 6—not Figure 7.
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In its Reply, Alarm.com counters that Vivint’s argument that the
correspondence between a terminal identifier and a server identifier in the
’727 patent is as a measure of security only appears in the specification at
Figure 6—not in independent claims 1, 16, and 31. Pet. Reply 8 (citing
Ex. 1031 ¶¶ 62–64). Alarm.com asserts that requiring the asserted prior art
to account for this security requirement would amount to improperly
importing features from the specification into these challenged claims. Id.
Alarm.com argues that Johnson ’950 teaches the correspondence required by
independent claims 1, 16, and 31 because it discloses an interface that
includes home selector 72, which, in response to an incoming login from
user computer 16, establishes control unit 30 (i.e., the home server) that user
computer 16 will control. Id. (citing Ex. 1003, 6:51–53, 7:50–56).
As an initial matter, we note that Johnson ’950 necessarily discloses a
server IP address that comports with our construction of “server identifier.”
That is, in our claim construction section above, we adopt Alarm.com’s
proposed construction of a “server identifier” as “an identifier associated
with a home server that enables the home network management facility to
identify or communicate with the home server.” See supra Section II.A.2.
Johnson ’950’s server IP address is consistent with this construction because
it is associated with control unit 30 and enables data center 20 to identify or
communicate with control unit 30. See Ex. 1003, 2:8–14, 4:55–63, Fig. 1.
We agree with Alarm.com that Johnson ’950 contemplates a scenario
where a user has multiple homes and may need to access the security
systems in each home. See Pet. 19 (citing Ex. 1003, 6:51–59); Pet. Reply 8
(citing the same). Figure 4 of Johnson ’950, reproduced below, illustrates a
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sample web page that displays various images taken from cameras located
both inside and outside a home. Ex. 1003, 3:35–36.
As shown in Figure 4, home selector 72 allows a homeowner to select which
home he/she desires to receive data from (e.g., House #1, House #2, House
#3). Id. at 6:51–53; see also id. at 7:50–56 (disclosing the same). Once a
particular home is selected (e.g., House #1), the homeowner may view
images 74 generated by interior or exterior cameras. See id. at 6:53–56. In
our view, correspondence must exist between the IP address of control unit
30 within the selected home (e.g., House #1) and the IP address of the
homeowner or user computer 16 because the homeowner is able to use
his/her computer 16 to communicate with control unit 30 in order to view
the images generated by the interior or exterior cameras. With this particular
scenario in mind, Johnson ’950 teaches a server identifier that corresponds
to the terminal identifier, as is required by independent claims 1, 16, and 31.
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We do not agree with Vivint’s argument that the correspondence
between a terminal identifier and a server identifier required by independent
claims 1, 16, and 31 must be for the limited purpose of security. See PO
Resp. 30–31. Similar to our analysis above with respect to the claimed
“terminal identifier,” Vivint’s assertion that the claimed “correspondence”
must be for security purposes is not commensurate in scope with these
independent clams because they are not so limiting. See Self, 671 F.2d at
1348. In other words, Vivint’s attempt to patentably distinguish independent
claims 1, 16, and 31 from Johnson ’950’s home monitoring system based on
a purpose (i.e., security purpose) not recited in these challenged claims is not
persuasive.
c. Johnson ’950 teaches the generation of second control information
by a management facility, as required by independent claims 1 and
16
Independent claim 1 recites, in relevant part, “generating, by said
management facility, second control information . . . on the basis of said first
control information.” Ex. 1001, 34:34–37. Independent claim 16 recites a
similar limitation. Id. at 36:29–33.
In its Petition, Alarm.com contends that Johnson ’950 teaches this
“generating” step because it discloses that the desired data entered by the
homeowner via user computer 16 is transmitted to data center 20, which, in
turn, forwards the information directly to control unit 30. Pet. 30 (citing
Ex. 1003, 6:61–7:2). Alternatively, Alarm.com argues that Johnson ’950
teaches this “generating” step because it discloses that control unit 30 also
possesses the capability of receiving commands from data center 20 that the
homeowner previously programmed into data center 20 via control page 76.
Id. (citing Ex. 1003, 7:67–8:4).
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In its Patent Owner Response, Vivint argues that Johnson ’950 merely
forwards the same instructions and, therefore, does not teach the claimed
“generating” step. PO Resp. 32 (citing Ex. 2026 ¶¶ 181, 210). In particular,
Vivint argues that the ’727 patent requires generating new second control
information based on the first control information, which, according to
Vivint, is different from the management facility merely receiving and
forwarding along the same first control information without any processing
to create second control information. Id. at 32–34 (citing Ex. 1001, 3:2–16,
22:34–50, Fig. 11; Ex. 2026 ¶¶ 182–189, 200–203). Vivint asserts that
Johnson ’950’s data center 20 never generates new second control
information, but rather only discloses forwarding the same control
information that it received from user computer 16 to control unit 30. Id. at
34 (citing Ex. 1003, 6:65–7:4, 7:60–8:5; Ex. 2026 ¶¶ 192, 191).
Vivint further argues that Alarm.com incorrectly relies on Johnson
’950’s disclosure of data center 20 receiving and transferring commands
previously programmed into the data center through control page 76 to
account for the claimed “generating” step. PO Resp. 34. According to
Vivint, Johnson ’950’s disclosure of transferring previously programmed
commands only relates to a scenario where control unit 30 is offline. Id. at
34–35 (citing Ex. 1003, 5:1–15). Vivint asserts that, once control unit 30 is
connected or comes back online, it downloads the same control information
originally sent by user computer 16 without generating new second control
information. Id.
In its Reply, Alarm.com contends that Vivint’s argument that Johnson
’950 does not teach the claimed “generating” step is predicated on the notion
that the command information transmitted to control unit 30 located in a
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particular home must be substantively different than the command
information transmitted to data center 20. Pet. Reply. 9. Alarm.com argues
that Vivint’s argument in this regard is incorrect for the following two
reasons: (1) Johnson ’950 discloses generating second control information
that is different from the first control information via a sequence of
communications illustrated in Figures 7 and 8, all of which are used to effect
control of the home monitoring system; and (2) the ’727 patent does not
require the second control information and the first control information to be
different because one of ordinary skill in the art would have understood that,
when a computer transmits data over a network, it must perform certain
operations that create a sending packet that would be different than the
original packet received (e.g., a different source and destination IP address).
Id. at 10–12 (citing Ex. 1003, 7:60–8:4, Figs. 7, 8; Ex. 1031 ¶¶ 67, 68).
Upon reviewing independent claims 1 and 16, as well as the relevant
portions of the specification of the ’727 patent, the only difference we are
able to discern between the claimed “first control information” and the
claimed “second control information” is that terminal 1 transmits the first
control information to network management facility 5, whereas network
management facility 5 transmits the second control information to home
control server 61. Apart from blanket statements that the network
management facility generates second control information based on the first
control information (see, e.g., Ex. 1001, 3:10–15, 4:49–54, 5:28–32, 5:51–
55, 34:34–37, 36:29–33), the specification and claims are silent as to
operations required to perform this “generation” step. Indeed, the parties do
not direct us to, nor can we find, a particular disclosure in the ’727 patent
that assigns significance to how the network management facility generates
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second control information based on the first control information, much less
why the second control information must be new and, therefore, different
from the first control information, as asserted by Vivint. See PO Resp. 32–
34.
With this in mind, we agree with Alarm.com that the ’727 patent does
not mandate that the claimed “second control information” must be different
from the claimed “first control information.” See Pet. Reply. 12. We
recognize that there is a general presumption that different words in a claim
should have different meanings. See CAE Screenplates Inc. v. Heinrich
Fiedler GmbH, 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of
any evidence to the contrary, we must presume that the use of . . . different
terms in the claims connotes different meanings.”). This presumption,
however, may be rebutted if there is sufficient evidence to the contrary. In
our view, the record before us includes sufficient evidence to the contrary
because Johnson ’950’s disclosure of data center 20 forwarding the same
instructions comports with how the ’727 patent describes generating second
control information based on first control information. Ex. 1003, 6:61–7:2.
Even if we were to assume that there is some difference between the
first control information and the second control information, we agree with
Alarm.com that Johnson ’950 accounts for this difference. See Pet. 30;
Pet. Reply 9–11. As illustrated in Figures 7 and 8 of Johnson ’950, there are
numerous operations undertaken by data center 20 after it receives
information from user computer 16 and then re-transmits that information to
control unit 30. Ex. 1003, 7:60–8:4, Figs. 7, 8. As just one example,
Johnson ’950’s data center 20 is capable of receiving pre-programmed
command instructions from user computer 16 and, if data center 20 is able to
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establish a secure connection with control unit 30, data center 20 transmits
these command instructions to control unit 30. Id. at 7:67–8:4. The
sequence of operations whereby Johnson ’950’s data center 20 connects to
control unit 30 in order to transmit command instructions received from user
computer 16 involves the generation of information at multiple levels (i.e.,
transmitting a “connect” command, receiving a connect signal, and
transmitting the command instructions), all of which, in our view, are
sufficient to teach generating second control information based on first
control information, as required by independent claims 1 and 16.
d. Remaining limitations
In its Patent Owner Response, Vivint does not address separately
Alarm.com’s explanations and supporting evidence as to how the
combination of Johnson ’950 and Moriya teaches the remaining limitations
recited in independent claims 1, 16, 22, and 31. See generally PO Resp. 21–
35. We have reviewed Alarm.com’s explanations and supporting evidence
in this regard, and we agree with and adopt Alarm.com’s analysis. See Pet.
15–22, 26–31, 35–39, 43–45.
e. Alarm.com provides a sufficient rationale to combine the teachings of
Johnson ’950 and Moriya
As we explained previously, Alarm.com provides explicit reasoning in
its Petition as to why one of ordinary skill in the art would have been
prompted to combine or modify the teachings of Johnson ’950 and Moriya.
See supra Section II.B.5. That is, Alarm.com contends that, because Moriya
is directed to addressing a need that existed in the year 2000 time frame to
customize outgoing information for devices with varying capabilities in
many industries, including those in the home security and automation
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industry, one of ordinary skill in the art would have had a sufficient reason
to modify Johnson ’950’s home monitoring system to incorporate Moriya’s
technique of formatting information based on a terminal’s display
capabilities. See Pet. 22–26; Ex. 1009 ¶¶ 59, 60, 65.
In its Patent Owner Response, Vivint contends that Alarm.com’s
rationale for combining the teachings of Johnson ’950 and Moriya ignores a
fundamental operation of Johnson ’950’s home monitoring system—namely,
using web browser technology and the HyperText Markup Language
(“HTML”) standard at user computer 16. PO Resp. 40. Vivint argues that,
absent impermissible hindsight, one of ordinary skill in the art would not
have modified Johnson ’950’s home monitoring system to include Moriya’s
ability to format information based on terminal display capabilities because
such a combination would render Johnson ’950’s use of a web browser that
displays web pages written to the HTML standard unnecessary or
superfluous. Id. at 41–43 (citing Ex. 2026 ¶¶ 236–243, 260–267). Vivint
also argues that supporting testimony from Alarm.com’s declarant,
Dr. Rhyne, indicating that a wide variety of terminals existed in the 1997 to
2001 time frame, each of which required different display capabilities and
display formats (Ex. 1009 ¶ 56), is technologically inaccurate. PO Resp.
43–44 (citing Ex. 2026 ¶¶ 244–259). According to Vivint, all of the display
formats mentioned in Dr. Rhyne’s testimony were cross-platform standards
where the display of information was controlled independently by the
terminal, without the need for any server-side processing of display
information. Id.
In its Reply, Alarm.com counters that the testimony from Vivint’s
declarant, Mr. Cole, that formatting content for display was controlled
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independently by the terminal, without the need for any server-side
processing of display information, is belied by the evidence of record and,
therefore, not credible. Pet. Reply. 15. Alarm.com argues that Moriya
explicitly discloses a server that modifies HTML documents based on
whether the model code received from a terminal indicates whether that
terminal is a PC or PDA. Id. at 15–16 (citing Ex. 1006, 1:10–13, 8:63–9:3,
Fig. 14; Ex. 1031 ¶¶ 73–75).
The U.S. Supreme Court has held that an obviousness evaluation
“cannot be confined by a formalistic conception of the words teaching,
suggestion, and motivation, or by overemphasis on the importance of
published articles and the explicit content of issued patents.” KSR, 550 U.S.
at 419. Instead, the relevant inquiry is whether Alarm.com has set forth
“some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006), cited with approval in KSR, 550 U.S. at 418. When describing
examples of what may constitute a sufficient rationale to combine, the
Supreme Court elaborated that, “if a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.” KSR, 550 U.S. at
417.
When considering the record in its entirety, Alarm.com’s rationale for
combining the teachings of Johnson ’950 and Moriya suffices as articulated
reasoning with rational underpinnings to support the legal conclusion of
obviousness. When, as here, a technique has been used to improve one
device (i.e., Moriya discloses connecting central facility 2 to a plurality of
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terminals 1 that differ from each other in their respective display
capabilities), and one of ordinary skill in the art would have recognized that
it would improve similar devices in the same way (i.e., using the
aforementioned disclosure in Moriya to improve Johnson ’950’s home
monitoring system), using the technique is obvious unless its actual
application is beyond the skill level of an ordinary skilled artisan. See KSR,
550 U.S. at 417; Pet. 22–26; Ex. 1009 ¶¶ 59, 60, 65.
In an attempt to explain why modifying Johnson ’950’s home
monitoring system in this manner would have been uniquely challenging or
otherwise beyond the skill level of an ordinary skilled artisan, Vivint directs
us to thirty-nine (39) paragraphs of supporting testimony from its declarant,
Mr. Cole, which spans roughly fifteen (15) pages of his Declaration. See PO
Resp. 41–44 (citing Ex. 2026 ¶¶ 236–267). These fifteen pages of Mr.
Cole’s Declaration are entitled to little, if any, weight because they were not
presented and developed adequately in the Patent Owner Response, itself.5
Nonetheless, even when weighing the arguments presented by Vivint in its
Petition that correspond to these pages of Mr. Cole’s Declaration, we do not
agree with Vivint’s assertions for at least two reasons.
First, we are not convinced that using web browser technology and the
HTML standard employed by Johnson ’950’s user computer 16 is a
“fundamental operation” of its home monitoring system. See PO Resp. 40.
5 Such incorporation by reference circumvents our rules limiting the word
count for a Patent Owner Response to 14,000 words and generally would not
be entitled to consideration. See 37 C.F.R. § 42.6(a)(3) (“Arguments must
not be incorporated by reference from one document into another
document.”).
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Instead, as we explain in our overview of Johnson ’950 above (see supra
Section II.B.3), the purpose of its home monitoring system is to allow a
homeowner to monitor and control various features of their home from a
remote location via a global computer network, such as the Internet.
Ex. 1003, 1:7–12. Given that Johnson ’950’s global computer network is
not limited necessarily to the Internet, but may include other global
computer networks (e.g., satellite global networks, mobile wireless
networks, etc.), we are not convinced that the use of web browser
technology and the HTML standard employed by user computer 16
necessarily qualifies as a fundamental operation.
Second, even if we were to assume that the use of web browser
technology and the HTML standard employed by Johnson ’950’s user
computer 16 is a fundamental operation of its home monitoring system, we
credit Dr. Rhyne’s testimony that, in the 1997 to 2001 time frame,
standardization of display formats across various types of devices or
terminals was far less common that it is today. Ex. 1009 ¶ 59. Indeed,
Dr. Rhyne testifies—and we agree—that it would be important for a server,
such as Johnson ’950’s data center 20, to know the capabilities of terminals,
such as Johnson ’950’s PC or PDA, so that it could format information for
transmission accordingly. See id.
We recognize that Vivint argues that Dr. Rhyne’s testimony in this
regard is technologically inaccurate. See PO Resp. 43–44 (citing Ex. 2026
¶¶ 244–259). In particular, relying on the testimony of its declarant,
Mr. Cole, Vivint asserts that one of ordinary skill in the art would have
understood that display of information is controlled independently by the
device or terminal, without the need of any server-side processing of the
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display information. Id. at 44. This testimony from Mr. Cole, however, is
contrary to Moriya’s explicit disclosure of performing server-side processing
for HTML documents. See Pet. Reply. 15–16. Indeed, Moriya discloses
that, when the information transfer section 23 of central facility 2 detects
that data terminal 1 is a PDA, it modifies the HTML documents to
accommodate the capabilities of the PDA’s display prior to transmission.
Ex. 1006, 8:63–9:3, Fig. 14.
f. Modifying Johnson ’950’s home monitoring system to include
Moriya’s formatting technique would not render Johnson ’950
inoperable for its intended purpose
In its Patent Owner Response, Vivint contends that, if Alarm.com
were to argue that the combination of Johnson ’950 and Moriya could work
for non-HTML devices, this argument would be flawed because it would
render Johnson ’950 inoperable for its intended purpose. PO Resp. 45. In
particular, Vivint argues that, although Johnson ’950’s data center 20
communicates with devices, such as wireless PDAs, web-connected phones
and pagers, etc., Johnson ’950 does not enable a user to access the control
page of all of its devices. Id. Vivint also argues that, even if one of ordinary
skill in the art were to attempt to use non-HTML devices in the proffered
combination of Johnson ’950 and Moriya, this combined system would have
been incapable of accessing Johnson ’950’s control page 76, thereby
rendering Johnson ’950 inoperable for its intended purpose. Id. at 46 (citing
Ex. 2026 ¶¶ 268–281).
In its Reply, Alarm.com contends that Vivint’s inoperability argument
is specious, at best, because neither Johnson ’950 nor Moriya is limited to
systems that only support HTML devices. Pet. Reply. 19. In any event,
Alarm.com argues that, contrary to Vivint’s assertion, it did not indicate in
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its Petition that the proffered combination of Johnson ’950 and Moriya
requires supporting non-HTML devices. Id. According to Alarm.com,
Johnson ’950 discloses specific embodiments that use web pages, whereas
Moriya discloses the use of a model identifier with web pages. Id. at 19 n.8
(citing Ex. 1006, 8:59–9:3; Ex. 1003, 6:2–6). Based on these respective
disclosures, Alarm.com asserts that combining Johnson ’950 and Moriya in
a manner that allows Johnson ’950’s data center 20 to use Moriya’s model
codes to tailor its output based on the capabilities of a terminal or device
would result in an operational system. Id. (citing Ex. 1031 ¶¶ 101, 102).
Alarm.com, therefore, asserts that Moriya’s alternative embodiments that
support non-HTML devices are irrelevant. Id.
We do not agree with Vivint’s inoperability argument for at least two
reasons. First, Vivint’s argument in this regard mischaracterizes
Alarm.com’s asserted ground based on the combined teachings of Johnson
’950 and Moriya. We do not understand Alarm.com to argue its proffered
combination would only work for non-HTML devices, as asserted by Vivint.
See PO Resp. 45–46. Instead, we understand Alarm.com to argue that, given
the need in the year 2000 time frame to customize outgoing information for
devices with varying capabilities, one of ordinary skill in the art would have
recognized that Johnson ’950’s data center 20 was capable of using Moriya’s
formatting technique and, in particular, its model codes to tailor its output
based on the capabilities of Johnson ’950’s PCs, PDAs, web-connected
phones, or web-connected pagers. See Pet 22–26. Indeed, Vivint does not
direct us to, nor can we find, anywhere in the Petition that Alarm.com
specifically argues its proffered combination is based necessarily on certain
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embodiments disclosed in Johnson ’950 or Moriya that support non-HTML
devices.
Second, we note that a proper obviousness evaluation requires us to
consider Johnson ’950 and Moriya for everything they teach by way of
technology. See EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907
(Fed. Cir. 1985) (“A reference must be considered for everything it teaches
by way of technology and is not limited to the particular invention it is
describing and attempting to protect.”). Constraining our obviousness
evaluation to certain embodiments disclosed in Johnson ’950 and Moriya
that support non-HTML devices would be contrary to this principle. When
considering the record in its entirety, there is sufficient evidence
demonstrating that one of ordinary skill in the art would have appreciated
that applying Moriya’s formatting technique to Johnson ’950’s home
monitoring system would result in an operable system that allows Johnson
’950’s data center 20 (i.e., server) to tailor its output based on the
capabilities of specific devices. See Pet. 22–26; Pet. Reply 15–16; Ex. 1009
¶ 59.
g. Summary
Based on the record developed during trial, we conclude that
Alarm.com has demonstrated by a preponderance of the evidence that the
subject matter of independent claims 1, 16, 22, and 31 would have been
obvious over the combination of Johnson ’950 and Moriya.
6. Claims 2–4, 9, 15, 23, 24, 27–30, 32, and 35–38
Vivint does not address separately Alarm.com’s explanations and
supporting evidence with respect to dependent claims 2–4, 9, 15, 23, 24, 27–
30, 32, and 35–38. See generally PO Resp. 15–35, 38–47. We have
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reviewed Alarm.com’s explanations and supporting evidence, and we agree
with and adopt Alarm.com’s analysis. Pet. 15–25, 31–35, 38, 40–43, 45–46.
Based on the record developed during trial, we conclude that Alarm.com has
demonstrated by a preponderance of the evidence that the subject matter of
dependent claims 2–4, 9, 15, 23, 24, 27–30, 32, and 35–38 would have been
obvious over the combination of Johnson ’950 and Moriya.
7. Claims 5 and 18
Each of dependent claims 5 and 18 recites “wherein said terminal
identifier and said server identifier are the same.” Ex. 1001, 34:63–65,
36:49–51.
In its Petition, Alarm.com contends that Johnson ’950 teaches this
limitation because it discloses that control unit 30 may be connected to local
computers within the home, thereby allowing the homeowner to control and
monitor the home through control unit 30. Pet. 34, 38 (citing Ex. 1003,
4:65–67). To support this argument, Alarm.com’s declarant, Dr. Rhyne,
testifies that “[t]he above citation makes clear that the user can be using a
computer located at their home [(i.e., a local computer)], where that
computer can be both their terminal and the home server.” Ex. 1009 ¶ 139.
In its Patent Owner Response, Vivint argues that Alarm.com’s
position regarding dependent claims 5 and 18 is flawed because Alarm.com
fails to acknowledge Johnson ’950’s disclosure that control unit 30 cannot
be connected directly to data center 20. PO Resp. 36 (citing Ex. 1003, 7:17–
20). Vivint, therefore, asserts that a local computer cannot be both the
terminal and home server because this local computer cannot be connected
directly to Johnson ’950’s control unit 30. Id. (citing Ex. 2026 ¶ 206).
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In its Reply, Alarm.com counters that, in the event the same local
computer is used to account for both the terminal and home server, there is
no need for additional hardware, such as Johnson ’950’s control unit 30, to
be connected directly to the local computer. Pet. Reply 13. Alarm.com
argues that the local computer may run the control software that
communicates with Johnson ’950’s data center 20, as well as a web browser
that connects to web servers at data center 20. Id. (citing Ex. 1031 ¶¶ 50–
55). Alarm.com further argues one of ordinary skill in the art would be
aware of everything Johnson ’950 teaches by way of technology, including
that control unit 30 may be connected to other hardware components within
the home (e.g., local computers) for certain purposes. Id. (citing Ex. 1003,
4:65–67)
We agree with Alarm.com that Johnson ’950 discloses at least one
scenario where the terminal identifier and the server identifier are the same,
as required by dependent claims 5 and 18. Dr. Rhyne testifies—and we
agree—that, when a user has a local computer located at his/her home, that
local computer may constitute both the terminal and home server. Ex. 1009
¶ 139. Dr. Rhyne’s testimony in this regard is consistent with the following
disclosures in Johnson ’950: (1) control unit 30 comprises nothing more
than conventional electronics that are old and well-known in the art (i.e., a
general purpose computer); and (2) the control unit may be connected to a
local computer in order to allow a homeowner to control and monitor his/her
home. Ex. 1003, 4:63–67. In this particular scenario, Johnson ’950’s local
computer amounts to a general purpose computer that serves as both user
computer 16 and control unit 30, thereby allowing it to have the same
terminal identifier and server identifier.
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We do not agree with Vivint’s argument that, because Johnson ’950
explicitly discloses that control unit 30 cannot be connected directly to data
center 20, Johnson ’950 does not teach or render obvious the subject matter
of dependent claim 5. See PO Resp. 30. In essence, Vivint argues that
Johnson ’950’s local computer cannot be both control unit 30 and data
center 20 because these components cannot be connected directly.
Alarm.com, however, does not assert that Johnson ’950’s local computer
may be both control unit 30 and data center 20, but rather we understand
Alarm.com to argue that Johnson ’950’s local computer amounts to a
general purpose computer that serves as both user computer 16 and control
unit 30. See Pet. 34; Ex. 1009 ¶ 139. In that scenario, we are persuaded that
Johnson ’950 discloses that the local computer is not connected directly with
data center 20. For instance, the local computer would abide by the security
measures imposed by Johnson ’950 by using a conventional web browser to
access control page 76 and request authorization to connect with data center
20. See Ex. 1003, 7:17–27 (disclosing that control unit 30 cannot be
connected directly to data center 20, but allowing a homeowner or user to
access control page 76 and request authorization for control unit 30 to
connect with data center 20).
Based on the record developed during trial, we conclude that
Alarm.com has demonstrated by a preponderance of the evidence that the
subject matter of dependent claims 5 and 18 would have been obvious over
the combination of Johnson ’950 and Moriya.
8. Claims 26 and 34
Dependent claim 26 recites, in relevant part, “wherein said status
information is storable with said home network management server as a
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table.” Ex. 1001, 38:19–21. Dependent claim 34 recites a similar limitation.
Id. at 39:10–11.
In its Petition, Alarm.com contends that the combined teachings of
Johnson ’950 and Moriya account for this limitation because Johnson ’950
discloses storing various types of data related to a particular home, including
status information pertaining to control devices 40 located therein, on a
computer readable storage medium. Pet. 40–41, 45 (citing Ex. 1003, 4:4–7,
4:47–49, 5:40–49, 6:91–7:2). Alarm.com turns to Moriya as teaching
storing information in code storage section 21, which may include a
relational database, such as a table. Id. at 41, 45 (citing Ex. 1006, 3:31–33).
Based on these citations to Johnson ’950 and Moriya, we understand
Alarm.com to argue that it would have been obvious to one of ordinary skill
in the art to store information pertaining to Johnson ’950’s control devices in
a relational database, such as Moriya’s table. See id. at 40–41, 45; see also
id. at 19 n.5 (arguing that “it would have been obvious to modify Johnson
’950 to use a table in view of Moriya’s teaching that a table is used to
associate each terminal with its particular capabilities”) (citing Ex. 1006,
Fig. 4).
In its Patent Owner Response, Vivint contends that neither Johnson
’950 nor Moriya discloses storing and maintaining the status information of
home-located electronic devices in a table, as required by dependent claims
26 and 34. PO Resp. 37. In particular, Vivint argues that Johnson ’950 only
discloses storing the status information of control devices 40 in data center
20, but is silent with respect to storing this status information in a table. Id.
(citing Ex. 2026 ¶¶ 213–217, 219). According to Vivint, one of ordinary
skill in the art would have understood that Johnson ’950’s home monitoring
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system could operate without storing and maintaining a table of status
information. Id. Vivint further argues that, although Moriya discloses that
its system stores information associated with a terminal, such as its display
capabilities, it does not disclose storing status information pertaining to a
home-located electronic device. Id. at 38. Vivint asserts that Alarm.com
fails to explain why one of ordinary skill in the art would have determined it
to be obvious to store status information, especially because Moriya merely
discloses storing completely different information and never contemplates
storing status information for any home-located electronic devices. Id.
In its Reply, Alarm.com counters that one of ordinary skill in the art
would have understood that Johnson ’950’s data center 20 stores status
information pertaining to control devices 40 between updates because
Johnson ’950 discloses that data center 20 only requests information from
control devices 40 when the information it is able to access is not current
(i.e., stale). Pet. Reply 14 (citing Ex. 1003, 4:47–53, 7:65–67, Fig. 7;
Ex. 1031 ¶¶ 70, 71). Alarm.com maintains its argument that it would have
been apparent to one of ordinary skill in the art to store such status
information in a table, as taught by Moriya. Id. (citing Pet. 19).
We agree with Alarm.com that the combined teachings of Johnson
’950 and Moriya provide proper teaching and motivation for storing the
status information of home-located electronic devices in a table, as required
by dependent claims 26 and 34. See Pet. 19 n.5, 40–41; Pet. Reply 14.
Johnson ’950 discloses storing various types of data related to a home,
including status information pertaining to control devices 40 located therein,
on a computer readable storage medium. Ex. 1003, 4:4–7, 4:47–49, 5:40–
49, 6:91–7:2. Although Johnson ’950 is silent with respect to how this
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status information is stored on its computer readable storage medium,
Moriya nonetheless discloses that code storage section 21 (i.e., a computer
readable storage medium) may include a relational database, such as a table.
Ex. 1006, 3:31–33. Indeed, Figure 4 of Moriya (reproduced above in
Section II.B.5.b) illustrates an example of a table stored in code storage
section 21 that includes model codes and specification data associated with
various terminals. Id. at 5:3–7, Fig. 4. Based on these cited disclosures in
Johnson ’950 and Moriya, Alarm.com explains—and we agree—that one of
ordinary skill in the art would have recognized that Johnson ’950’s computer
readable storage medium is capable of storing the status information of
control devices 40 in a relational database, such as Moriya’s table illustrated
in Figure 4.
We do not agree with Vivint’s arguments because they amount to
individual attacks on Johnson ’950 and Moriya. See PO Resp. 37–38. It is
well-settled that “non-obviousness [cannot be established] by attacking
references individually,” when, as here, the asserted ground of obviousness
is based upon the combined teachings of Johnson ’950 and Moriya. In re
Keller, 642 F.2d 413, 426 (CCPA 1981). Instead, the test is what the
combined teachings of these references would have taught or suggested to
one with ordinary skill in the art. In re Young, 927 F.2d 588, 591 (Fed. Cir.
1991). In this case, Alarm.com’s asserted ground based on the combined
teachings of Johnson ’950 and Moriya does not rely upon Johnson ’950 to
teach storing information in a table. Rather, Alarm.com turns to Moriya’s
disclosure of storing information in a relational database, such as the table
illustrated in Figure 4, to account for this claim feature. Put simply, we
understand Alarm.com to argue one of ordinary skill in the art would have
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had a sufficient reason to use Moriya’s table to store Johnson ’950’s status
information pertaining to control devices 40, and such a combination would
result in a table that stores and maintains the status information of home-
located electronic devices, as required by dependent claims 26 and 34. See
KSR, 550 U.S. at 417.
Based on the record developed during trial, we conclude that
Alarm.com has demonstrated by a preponderance of the evidence that the
subject matter of dependent claims 26 and 34 would have been obvious over
the combination of Johnson ’950 and Moriya.
C. Obviousness Based on the Combined Teachings of
Johnson ’950, Moriya, and Umbreit
Alarm.com contends that claims 6–8, 25, and 33 of the ’727 patent are
unpatentable under § 103(a) over the combination of Johnson ’950, Moriya,
and Umbreit. Pet. 46–51. Alarm.com explains how this proffered
combination teaches the subject matter of each challenged claim. Id.
Alarm.com relies upon the Declaration of Dr. Rhyne to support its positions.
Ex. 1009 ¶¶ 252–280. In its Patent Owner Response, Vivint presents the
following arguments: (1) the combined teachings of Johnson ’950, Moriya,
and Umbreit do not account properly for the limitations recited in dependent
claims 7, 25, and 33; and (2) a person of ordinary skill in the art would not
have combined the teachings of Johnson ’950, Moriya, and Umbreit for
various reasons. PO Resp. 49–65. Vivint relies upon the Declaration of
Mr. Cole to support its positions. Ex. 2026 ¶¶ 220–227, 310–349.
We begin our analysis with a brief overview of Umbreit, and we then
address the parties’ contentions with respect to claims 6–8, 25, and 33 before
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turning to whether Alarm.com presents a sufficient rationale to combine the
teachings of Johnson ’950, Moriya, and Umbreit.
1. Umbreit Overview
Umbreit generally relates to communication systems and, in
particular, to demographically based distribution of information,
entertainment, advertising and other content via a computer network, such as
the Internet. Ex. 1004, 1:14–17, 2:2–5. In one embodiment, a prospective
user of the system contacts a centralized access code issuer, fills out an
online application, and, after the access code issuer evaluates certain
demographic information obtained from the user’s online application, it
issues the user an access code. Id. at 2:11–50. Each access code issued is
associated with a particular level of access (e.g., access may be granted
based on a user’s age or gender). Id. at 6:57–7:10.
2. Claim 6
Vivint does not address separately Alarm.com’s explanations and
supporting evidence with respect to dependent claim 6. See generally PO
Resp. 62–65. We have reviewed Alarm.com’s explanations and supporting
evidence, and we agree with and adopt Alarm.com’s analysis. Pet. 46–49.
3. Claims 7 and 8
Dependent claim 7 recites, in relevant part, “said management facility
excluding from said generated display information prompts to input control
instructions of said home-located electronic devices that are for at least one
control item outside of said security level.” Ex. 1001, 35:10–15. Claim 8
depends directly from claim 7. Id. at 35:16–19.
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In its Petition, Alarm.com contends that Umbreit discloses generating
display information based on a user’s gender and age, and discloses storing
levels of security associated with each user in order to determine the
information that should be displayed to each user. Pet. 46–48. In particular,
Alarm.com argues that Umbreit teaches the aforementioned limitation
recited in dependent claim 7 because Umbreit discloses that a content
provider may customize the presentation and advertising on its website
according to the demographics of a user, which includes restricting access to
the website or portions thereof based on the demographics or other
information regarding the user. Id. at 50 (citing Ex. 1004, Abstract); see
also Ex. 1009 ¶ 270 (arguing the same).
In its Patent Owner Response, Vivint contends that Alarm.com only
relies upon Umbreit’s Abstract, which discloses restricting access to a
website and portions thereof, but does not explain with particularity how its
system performs these restrictions. PO Resp. 62–63 (citing Ex. 2026 ¶¶ 220,
221). In its Reply, Alarm.com counters that, contrary to Vivint’s assertion,
it did not rely upon Umbreit’s Abstract, by itself, to account for this
limitation recited in dependent claim 7, but provided a detailed explanation
as to how Umbreit’s system issues access codes to users that are associated
with particular levels of access. Pet. Reply 27 (citing Pet. 47 (citing
Ex. 1004, 2:3–50, 6:57–7:10)).
We agree with Alarm.com that the detailed explanation it provides at
pages 47 and 48 of the Petition should be considered together with its
reliance on Umbreit’s Abstract in the claim chart when determining whether
the combined teachings of Johnson ’950 and Umbreit account for the
disputed limitation recited in dependent claim 7. In particular, Umbreit
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discloses issuing access codes to users that are associated with particular
levels of access. Ex. 1006, 2:3–50. Umbreit uses these access codes to
structure websites in a manner suitable for users, which may include, for
example, not allowing a user access to inappropriate content or selecting
certain content that only may be presented to a user based on his/her
demographic characteristics. Id. at 6:57–7:10. Alarm.com’s explanation in
this regard is consistent with Umbreit’s Abstract, which generally discloses
that a content provider may customize the presentation and advertising on its
website according to the demographics of a user. Id. at Abstract. When
applying Umbreit’s access restriction and corresponding website
customization techniques to Johnson ’950’s home monitoring system, we are
satisfied that one of ordinary skill in the art would have appreciated that
Johnson ’950’s data center 20 would be capable of excluding prompts to
input control instructions of control devices 40 that fall outside the particular
level of access associated with an access code entered by a user. See Pet.
47–48.
We do not agree with Vivint’s argument that Alarm.com relies upon
Umbreit’s Abstract, by itself, to account for the disputed limitation recited in
dependent claim 7. See PO Resp. 62–63. Vivint either ignores or overlooks
the detailed explanation provided by Alarm.com on pages 47 and 48 of the
Petition. For instance, Alarm.com argues that “[t]he website can be
structured in a manner suitable for the user—for example, underage users
would not have access to inappropriate content, or [a] user[] would be
presented with selected content given the user’s demographic
characteristics.” Pet. 47 (citing Ex. 1004, 6:57–7:10). Alarm.com further
argues that “it would have been obvious to one of ordinary skill in the art to
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modify the ‘control page’ in the system of Johnson ’950 . . . to incorporate
Umbreit’s teaching that a server tailors the content of a website based on a
security level associated with a user, where the security level may be based
on the user’s age or gender.” Id. at 48. When considering these arguments
together with Alarm.com’s reliance on Umbreit’s Abstract in the claim chart
(id. at 50), we are satisfied that the combined teachings of Johnson ’950 and
Umbreit account for the disputed limitation in dependent claim 7.
Vivint does not address separately Alarm.com’s explanations and
supporting evidence with respect to dependent claim 8. See generally PO
Resp. 62–63. We have reviewed Alarm.com’s explanations and supporting
evidence, and we agree with and adopt Alarm.com’s analysis. Pet. 47–49,
51.
4. Claims 25 and 33
Dependent claim 25 recites “wherein formatting comprises
determining a predefined security level assigned to a user of said remote
terminal and including in said status data only that status data identified as
providable based on said predefined security level.” Ex. 1001, 38:14–18.
Dependent claim 33 recites a similar limitation. Id. at 39:5–9.
In its Petition, Alarm.com relies upon essentially the same disclosure
in Umbreit discussed above with respect to dependent claim 7 to account for
the limitations recited in dependent claims 25 and 33. Compare Pet. 47–48,
50, with id. at 47–48, 51. Alternatively, Alarm.com argues that Moriya
teaches the limitations recited in dependent claims 25 and 33 because it
discloses that central facility 2 determines the information services that
should be supplied to terminal 1 based on the model code received from the
terminal, modifies or selects the documents accordingly, and then sends the
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modified or selected documents to terminal 1. Id. at 51 (citing Ex. 1006,
7:33–39, Figs. 4, 10, 11, 17).
In its Patent Owner Response, Vivint contends that Alarm.com relies
upon essentially the same disclosure in Umbreit to account for the limitation
recited in dependent claim 7, but does not provide further explanation as to
how Umbreit accounts for the different features required by dependent
claims 25 and 33—namely, the “including” feature. PO Resp. 63–64.
Vivint further argues that Umbreit’s level of access is linked to an access
code rather than a user, whereas dependent claims 25 and 33 each recite
determining “a predetermined security level assigned to a user.” Id. at 64
(citing Ex. 2026 ¶¶ 222–227). According to Vivint, Umbreit’s failure to
teach this particular feature required by dependent claims 25 and 33 is not
surprising because Umbreit is directed to authorization of an access code
where the actual identity of the user is not only irrelevant, but also
undesirable. Id.
In its Reply, Alarm.com counters that the “excluding” language
recited in dependent claim 7 is no different logically than the “including”
language recited in dependent claims 25 and 33 because the result of
excluding data from devices to which the user does not have access and the
result of including only data for which the user does have access is
essentially the same. Pet. Reply 23 n.11. Consequently, Alarm.com asserts
that the same teachings of Umbreit should apply equally to dependent claims
7, 25, and 33. Id. (citing Ex. 1031 ¶¶ 123, 124).
Similar to our analysis above with respect to dependent claim 7, we
agree with Alarm.com that the detailed explanation it provides at pages 47
and 48 of the Petition should be considered together with Alarm.com’s
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reliance on Umbreit’s Abstract in the claim chart when determining whether
the combined teachings of Johnson ’950 and Umbreit properly account for
the disputed limitations recited in dependent claims 25 and 33. When
applying Umbreit’s access restrictions and corresponding website
customization techniques to Johnson ’950’s home monitoring system, we are
satisfied that one of ordinary skill in the art would have appreciated that
Johnson ’950’s data center 20 would not only be capable of excluding
prompts, but the data center also would be capable of including certain status
information pertaining to a home-located electronic device based on the
level of access associated with an access code entered by a user. See Pet.
47–48.
For essentially the same reasons discussed above with respect to
dependent claim 7, we do not agree with Vivint’s argument that Alarm.com
relies upon Umbreit’s Abstract, by itself, to account for the limitations
recited in dependent claims 25 and 33. See supra Section II.C.2. We also
do not agree with Vivint’s argument that Umbreit’s level of access is linked
to an access code, rather than a user. See PO Resp. 64. Contrary to Vivint’s
assertion, the identity of a user is not irrelevant or undesirable in the context
of Umbreit’s scheme. Indeed, Umbreit discloses that an access code is
specific to a particular user because it discloses that the access code may be
“a personal identification number, a personal account number, a password,”
etc. Ex. 1004, 6:27–30. Umbreit further discloses that the access code may
be multi-tiered, which may include, among other things, granting access on
an age- or gender-appropriate basis. Id. at 6:64–66. In our view, it is
paramount, if not necessary, to identify the age or gender of a particular user
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before assigning that user an age- or gender-appropriate access code,
respectively.
Our understanding in this regard further is supported by the testimony
of Dr. Rhyne. Dr. Rhyne testifies that “providing different levels of access
to different family members was well-known as of the year 2000. Examples
of that conditionality were common with television sets that allowed parents
to control the types of programs their children could watch and with controls
for accessing the Internet.” Ex. 1009 ¶ 257. We credit this testimony from
Dr. Rhyne because it is consistent with Umbreit’s disclosure of granting
access based on age or gender. Compare Ex. 1006, Abstract, 2:28–29, 6:64–
66, with Ex. 1009 ¶ 257. With this testimony from Dr. Rhyne in mind, we
are satisfied that Umbreit contemplates issuing an access code, for example,
to a parent of a young child, which the parent may then use to ensure that the
child is not watching television past 7:00 PM. In other words, Umbreit’s
communication system may issue an access code to a parent that, when
entered into a remote terminal, allows the parent to check the active status of
television located within his/her home.
5. Alarm.com provides a sufficient rationale to combine the teachings of
Johnson ’950, Moriya, and Umbreit
In its Petition, Alarm.com contends that there are a number of reasons
as to why one of ordinary skill in the art would have modified the control
page in Johnson ’950’s home monitoring system, as combined with the
teachings of Moriya, to include Umbreit’s teaching that a server tailors the
content of a website based on a security level associated with a user, where
the security level may be based on the user’s age or gender. Pet. 48. For
instance, Alarm.com argues that Johnson ’950’s control page is
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customizable, thereby allowing a user to designate the information it desires
to appear upon his/her control page. Id. (citing Ex. 1003, 6:38–40, 6:44–45).
In addition, Alarm.com argues that, as evidenced by the supporting
testimony of Dr. Rhyne, providing different levels of access to different
family members was common in home security and automation systems in
the 2000 time frame. Id. (citing Ex. 1009 ¶ 257). Based on this testimony
from Dr. Rhyne, Alarm.com asserts that a person of ordinary skill in the art
would have combined Johnson ’950’s customizable control page unique to
each user, with Umbreit’s customization that may be based on the security
level associate with a user, which may be based on the user’s age or gender.
Id. at 48–49.
In its Patent Owner Response, Vivint contends that one of ordinary
skill in the art would not have combined the teachings of Johnson ’950,
Moriya, and Umbreit for at least three reasons. PO Resp. 49. First, Vivint
argues that combining Johnson ’950, Moriya, and Umbreit would result in
serious security concerns for Johnson ’950’s home monitoring system,
which, according Vivint, is contrary to the objective of such systems. Id. at
51–55. Second, Vivint argues that Alarm.com’s rationale to combine the
teachings of Johnson ’950, Moriya, and Umbreit only explains how or why
one of ordinary skill in the art would have combined the teachings of Moriya
and Umbreit with those of Johnson ’950, but never explains how or why one
of ordinary skill in the art would have combined the teachings of Umbreit
with those of Moriya. Id. at 55–58. Third, Vivint argues that Alarm.com’s
rationale to combine the teachings of Johnson ’950, Moriya, and Umbreit is
based on impermissible hindsight, and relies upon generic and conclusory
statements from its declarant, Dr. Rhyne. Id. at 58–62. To support these
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arguments, Vivint relies primarily on the supporting testimony of its
declarant, Mr. Cole. Id. at 51–62 (citing Ex. 2026 ¶¶ 310–349).
In its Reply, Alarm.com counters that none of the arguments
presented by Vivint questioning the rationale to combine the teachings of
Johnson ’950, Moriya, and Umbreit have merit. Pet. Reply 20. Addressing
Vivint’s arguments in turn, Alarm.com first argues that combining the
teachings of Johnson ’950 with those of Umbreit would not entail creating
any undue security risk because the entire purpose of Umbreit is directed to
customization of a system by providing separate user accounts, each with its
own unique access code. Id. at 20–23. Second, Alarm.com argues that it
provided sufficient reasons as to how one of ordinary skill in the art would
have combined the teachings of Johnson ’950 with those of Moriya and
Umbreit through its detailed explanations and claim charts in the Petition.
Id. at 23–24. According to Alarm.com, controlling case law makes clear
that there is nothing inherently suspect in combining the teachings of three
prior art references. Id. at 25 (citing In re Gorman, 933 F.2d 982, 986 (Fed.
Cir. 1991)). Third, Alarm.com argues that, contrary to Vivint’s assertion
that it relies upon generic and conclusory statements, it identified specific
and precise overlap in the subject matter addressed by Johnson ’950 and
Umbreit in its Petition that would support combining their respective
teachings. Id. at 25–27.
When considering the record in its entirety, Alarm.com’s rationales
for combining the teachings of Johnson ’950, Moriya, and Umbreit suffice
as articulated reasoning with rational underpinnings to support the legal
conclusion of obviousness. As we explain above, when Moriya’s formatting
technique has been used to improve its system for transferring information
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between central facility 2 and a plurality of terminals 1, and one of ordinary
skill in the art would have recognized that it would improve Johnson ’950’s
home monitoring system in the same way, using this technique in Johnson
’950’s home monitoring system is obvious unless its actual application is
beyond the skill level of an ordinary skilled artisan. See supra Section
II.B.5.e. Similarly, when Umbreit’s access restrictions and corresponding
website customization techniques have been used to improve its
communication system, and one of ordinary skill in the art would have
recognized that it would improve Johnson ’950’s home monitoring system in
the same way, using these techniques in Johnson ’950’s home monitoring
system is obvious unless its actual application is beyond the skill level of an
ordinary skilled artisan. See KSR, 550 U.S. at 417; Pet. 48–49; Ex. 1009
¶ 257.
Once again, in an attempt to explain why modifying Johnson ’950’s
home monitoring system in this manner would have been uniquely
challenging or otherwise beyond the skill level of an ordinary skilled artisan,
Vivint directs us to thirty-nine (39) paragraphs of supporting testimony from
its declarant, Mr. Cole, which spans roughly sixteen (16) pages of his
Declaration. See PO Resp. 51–62 (citing Ex. 2026 ¶¶ 310–349). These
sixteen pages of Mr. Cole’s Declaration are entitled to little, if any, weight
because they were not presented and developed adequately in the Patent
Owner Response, itself. Nonetheless, even when weighing the arguments
presented by Vivint in its Petition that correspond to these pages of Mr.
Cole’s Declaration, we do not agree with Vivint’s assertions for the
following reasons.
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We do not agree with Vivint’s argument that combining the teachings
of Johnson ’950, Moriya and Umbreit would impose undue security risks on
Johnson ’950’s home monitoring system. See PO Resp. 51–55. As
Alarm.com explains its Reply, Umbreit is directed to providing each user
with separate user accounts, each with its own unique access code. See Pet.
Reply 20–23 (citing Ex. 1004, 6:17–22, 6:27–30, 6:64–66). We are not
persuaded that incorporating Umbreit’s scheme of using unique access codes
that are associated with particular levels of access into Johnson ’950’s home
monitoring system would result in undue security risks. Instead, in our
view, implementing this type of access restriction in Johnson ’950’s home
monitoring system would improve security—not introduce additional
security risks, as asserted by Vivint.
We also do not agree with Vivint’s argument that Alarm.com’s
rationale to combine the teachings of Johnson ’950, Moriya, and Umbreit
must explain how or why one of ordinary skill in the art would have
modified or combined the teachings of Umbreit with those of Moriya. See
PO Resp. 55–58. As we explained above in the context of independent
claims 1 and 16, Johnson ’950’s home monitoring system teaches the entire
system architecture required by the challenged claims. See supra Section
II.B.5. Alarm.com argues—and we agree—that one of ordinary skill in the
art would have understood that Johnson ’950’s home monitoring system
may be modified to include both Moriya’s formatting technique and
Umbreit’s access restrictions and corresponding website customization
techniques—both of which are obvious improvements in their own right
because they add certain functionality to Johnson ’950’s home monitoring
system that was not otherwise present.
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Based on our review of the Petition and supporting evidence, we do
not understand Alarm.com to assert that its proffered combination is
predicated on modifying or combining the teachings of Moriya with those of
Umbreit, or vice-versa. To support its argument that Alarm.com must
provide such an explanation, Vivint cites to a non-precedential Board
decision for the proposition that “further modification of a modifying
reference” is improper hindsight. PO Resp. 57 (citing Ex parte Stefanic, No.
2009-007463, 2010 WL 3448894, at *2 (BPAI Aug. 31, 2010)).
Alarm.com’s proffered combination, however, does not rely on a “further
modification of a modifying reference.” That is, Alarm.com’s proffered
combination is not based on further modification of Moriya or Umbreit
(i.e., the modifying references), but rather Alarm.com’s proffered
combination is based entirely on modifications of Johnson ’950 (i.e., the
primary reference). In particular, Alarm.com relies on Johnson ’950’s home
monitoring system, which teaches the entire system architecture required by
the challenged claims, and merely advocates improving this system by
incorporating the techniques (i.e., additional functionalities) taught by
Moriya and Umbreit.
Lastly, we do not agree with Vivint’s arguments that Alarm.com
engages in impermissible hindsight reconstruction and relies upon generic
and conclusory statements from its declarant, Dr. Rhyne. See PO Resp. 58–
62. As we explained above, Alarm.com and Dr. Rhyne provide several
reasons as to why it would have been obvious to one of ordinary skill in the
art to combine the teachings of Johnson ’950, Moriya, and Umbreit. See Pet.
22–26, 48–49; Ex. 1009 ¶¶ 59, 257. These reasons are neither generic nor
conclusory because they are directed specifically to subject matter at issue in
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dependent claims 6–8, 25, and 33, and there is a sufficient basis in the record
to support each reason. As a result, instead of presenting reasoning that is
based on impermissible hindsight reconstruction, as asserted by Vivint,
Alarm.com has articulated sufficient reasoning with rational underpinnings
to support its assertion that modifying Johnson ’950’s home monitoring
system to include the techniques disclosed by Moriya and Umbreit would
have improved this system (e.g., by accommodating the different display
capabilities of different terminals and by improving security by issuing
access codes unique to each user).
6. Summary
Based on the record developed during trial, we conclude that
Alarm.com has demonstrated by a preponderance of the evidence that the
subject matter of dependent claims 6–8, 25, and 33 would have been obvious
over the combination of Johnson ’950, Moriya, and Umbreit.
D. Obviousness Based on the Combined Teachings of
Johnson ’950, Moriya, and Johnson ’336
Alarm.com contends that claim 14 of the ’727 patent is unpatentable
under § 103(a) over the combination of Johnson ’950, Moriya, and Johnson
’336. Pet. 52–55. Alarm.com explains how this proffered combination
teaches the subject matter of this challenged claim. Id. Alarm.com relies
upon the Declaration of Dr. Rhyne to support its positions. Ex. 1009
¶¶ 281–292. Apart from directing us to the same arguments it presented for
independent claim 1, Vivint does not address separately Alarm.com’s
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explanations and supporting evidence with respect to dependent claim 14.
PO Resp. 65.
We begin our analysis with a brief overview of Johnson ’336, and
then we address Alarm.com’s contentions with respect to dependent claim
14.
1. Johnson ’336 Overview
Johnson ’336 generally relates to a system and method for the remote
monitoring and control of property, such as vacation homes. Ex. 1007,
1:15–20. The remote monitoring system illustrated in Figure 1 of Johnson
’336 includes transducer control module 14 and wide area network
(“WAN”) 14 that may be wired, wireless, or a combination of both. Id. at
14:7–9, Fig. 1. Wireless WANs include wireless Ethernet (IEEE 802.11),
cellular telephones, radio-telephone systems, and commercially available
satellite-based communications systems. Id. at 14:12–15.
2. Claim 14
Dependent claim 14 recites “wherein said management facility
transmits said second control information to said server via a mobile
communication network.” Ex. 1001, 35:52–55.
In its Petition, Alarm.com relies upon the combined teachings of
Johnson ’950 and Johnson ’336 to account for this limitation. Pet. 55. In
particular, Alarm.com contends that Johnson ’950’s control unit 30
communicates with data center 20 through global communication network
12 that uses a conventional communications system or some “other
communications system.” Id. (citing Ex. 1003, 4:55–61). Alarm.com then
turns to Johnson ’336 as evidence that the “other communications system”
disclosed in Johnson ’950 may be a wireless WAN that supports cellular
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telephones. Id. (citing Ex. 1007, 14:7–15). Alarm.com also presents a
rationale to combine the teachings of Johnson ’950 and Johnson ’336. Id. at
54–55 (citing Ex. 1007, 14:12–15, 26:25–28; Ex. 1009 ¶ 288).
Vivint does not address separately Alarm.com’s explanations and
supporting evidence with respect to dependent claim 14. See generally PO
Resp. 65. We have reviewed Alarm.com’s explanations and supporting
evidence, including its argument as to why a person of ordinary skill in the
art would have had a sufficient reason to combine or modify the teachings of
Johnson ’950 with those of Moriya and Johnson ’336, and we agree with and
adopt Alarm.com’s analysis. Pet. 52–55. Based on the record developed
during trial, we conclude that Alarm.com has demonstrated by a
preponderance of the evidence that the subject matter of dependent claim 14
would have been obvious over the combination of Johnson ’950, Moriya,
and Johnson ’336.
E. Obviousness Based on the Combined Teachings of
Johnson ’950, Moriya, and Menard
Alarm.com contends that claim 17 of the ’727 patent is unpatentable
under § 103(a) over the combination of Johnson ’950, Moriya, and Menard.
Pet. 56–59. Alarm.com explains how this proffered combination teaches the
subject matter of this challenged claim. Id. Alarm.com relies upon the
Declaration of Dr. Rhyne to support its positions. Ex. 1009 ¶¶ 293–303.
Apart from directing us to the same arguments it presented for independent
claim 16, Vivint does not address separately Alarm.com’s explanations and
supporting evidence with respect to dependent claim 17. PO Resp. 65.
We begin our analysis with a brief overview of Menard, and then we
address Alarm.com’s contentions with respect to dependent claim 17.
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1. Menard Overview
Menard generally relates to detection systems and, in particular, to the
use of a personal communication device with response in central station
monitoring of security systems. Ex. 1005, 1:13–16. In one embodiment, the
system connects prospective users of a security system either directly or
wirelessly to a central station system, such that an alarm may be verified or
cancelled immediately with the central station. Id. at 2:23–29, 4:17–23,
Fig. 1. If the central station receives a cancellation of the alarm from the
user’s personal communication device, it may avoid dispatching an
emergency agency or, perhaps, recall the emergency agency if the dispatch
already occurred. Id. at 2:29–31, 4:17–23, Fig. 1 (Path C).
2. Claim 17
Dependent claim 17 recites “wherein said method further comprising
the step of said management facility transmitting said alarm to a
predetermined notification place when transmittal of said alarm to said
predetermined notification place is elected on the basis of a prompt
displayed as part of said display information.” Ex. 1001, 36:42–48.
In its Petition, Alarm.com contends that Menard teaches this
limitation because it connects a user of a security system to a central station
so that an alarm may be verified or cancelled with the central station.
Pet. 58 (citing Ex. 1005, 2:23–26, Fig. 1). Alarm.com further argues that the
central station receives verification information wirelessly from a user’s
personal communication device and, if no such verification information is
received from the user, the dispatch process will continue without an
opportunity for intervention from the user. Id. at 58–59 (citing Ex. 1005,
4:17–22).
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Alarm.com further argues that it would have been obvious to a person
of ordinary skill in the art to modify Johnson ’950’s home monitoring
system to include Menard’s technique of sending a user a prompt to notify
the police or another response service when an alarm condition occurs. Id.
at 57. Alarm.com then provides three justifications for making this
proffered combination, one of which being that the problem of false alarms
creating needless expense and worry for the homeowner was well-known in
the home security and automation industry in the 2000 time frame. Id. at
57–58 (citing Ex. 1009 ¶ 298).
Vivint does not address separately Alarm.com’s explanations and
supporting evidence with respect to dependent claim 17. See generally PO
Resp. 65. We have reviewed Alarm.com’s explanations and supporting
evidence, including its argument as to why a person of ordinary skill in the
art would have had a sufficient reason to combine or modify the teachings of
Johnson ’950 with those of Moriya and Menard, and we agree with and
adopt Alarm.com’s analysis. Pet. 56–59. Based on the record developed
during trial, we conclude that Alarm.com has demonstrated by a
preponderance of the evidence that the subject matter of dependent claim 17
would have been obvious over the combination of Johnson ’950, Moriya,
and Menard.
F. Vivint’s Updated Motion for Observation
Vivint filed an Updated Motion for Observation on the cross-
examination testimony of Alarm.com’s declarant, Dr. Rhyne (Ex. 1031).
Obs. 1–12. Alarm.com, in turn, filed a Response. Obs. Resp. 1–13. To the
extent Vivint’s Updated Motion for Observation pertains to testimony
purportedly impacting Dr. Rhyne’s credibility, we have considered Vivint’s
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observations and Alarm.com’s responses in rendering this Final Written
Decision, and we have accorded Dr. Rhyne’s reply testimony appropriate
weight where necessary. See Obs. 1–12; Obs. Resp. 1–13.
III. CONCLUSION
Alarm.com has demonstrated by a preponderance of the evidence that
(1) claims 1–5, 9, 15, 16, 18, 22–24, 26–32, and 34–38 of the ’727 patent are
unpatentable under § 103(a) over the combination of Johnson ’950 and
Moriya; (2) claims 6–8, 25, and 33 of the ’727 patent are unpatentable under
§ 103(a) over the combination of Johnson ’950, Moriya, and Umbreit;
(3) claim 14 of the ’727 patent is unpatentable under § 103(a) over the
combination of Johnson ’950, Moriya, and Johnson ’336; and (4) claim 17
of the ’727 patent is unpatentable under § 103(a) over the combination of
Johnson ’950, Moriya, and Menard.
IV. ORDER
In consideration of the foregoing, it is
ORDERED that claims 1–9, 14–18, and 22–38 of the ’727 patent are
held to be unpatentable; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to this proceeding seeking judicial review of our decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.
IPR2015-01977
Patent 6,924,727 B2
72
For PETITIONER:
William H. Mandir
Brian K. Shelton
Sughrue Mion PLLC
Roger Brooks
Teena-Ann V. Sankoorikal
Marc J. Khadpe
Cravath, Swaine & Moore LLP
For PATENT OWNER:
Robert Greene Sterne
Jason D. Eisenberg
Lestin L. Kenton, Jr.
Sterne, Kessler, Goldstein & Fox P.L.L.C.