IP Law Daily PTAB erred, in part, in construing equipment monitoring patent
Thursday, December 20, 2018

PTAB erred, in part, in construing equipment monitoring patent

By Peter Reap, J.D., LL.M.

The Patent Trial and Appeal Board’s construction of "communication device identification codes" in Vivint’s patent describing systems and methods for remotely monitoring equipment, such as a heating, ventilating, and cooling system, was not consistent with the broadest reasonable interpretation of the relevant claims, according to the U.S. Court of Appeals for the Federal Circuit. Therefore, the appellate court reversed the Board’s construction, vacatedits related conclusions, and remandedfor further consideration. However, the Board’s decision on the claims at issue in the cross appeal by Alarm.com were affirmed in all other respects. Additionally, the Board did not err in invalidating the patent claims at issue in Vivint’s appeal (Vivint, Inc. v. Alarm.com Inc., December 20, 2018, O'Malley, K.).

In three inter partes review proceedings requested by Alarm.com, Inc., the Board invalidated various claims of Vivint Inc.’s U.S. Patent Nos. 6,147,601 ("’601 patent"), 6,462,654 ("’654 patent"), and 6,535,123 ("’123 patent"). It also found other claims patentable over the prior art.

The patents all use a centralized server to communicate with monitored equipment so that a user, e.g. a property owner or contractor, is contacted if the equipment encounters problems. If the equipment has low battery, then an interface unit connected to the equipment sends an "exception" message to the server. The server then processes this message and, depending on how the server is configured, sends a notification to certain users. In addition, interface units can be configured to send status messages to the server. In either case, users are contacted based on what the patents call a "message profile." This message profile essentially directs the server where to send messages if a problem arises.

Three prior art references were relevant to the parties’ appeals. U.S. Patent No. 5,808,907 ("Shetty") describes a method for monitoring machines and notifying users if certain events occur. U.S. Patent No. 6,040,770 ("Britton") describes a system for supervising the communication path between an alarm panel and a centralized server. Finally, U.S. Patent No. 6,034,970 ("Levac") describes systems and methods for transmitting messages generated by one or more "message source(s)" to different types of communication devices.

Vivint’s appeal. Vivint contended that the Board erroneously construed the "message profile" limitation and unreasonably concluded that Shetty discloses "remotely configur[ing]" a message profile. These limitations are both required by all the invalidated claims. For the remaining limitations, Vivint insisted that the Board failed to adequately explain its findings. After a careful examination of the Board’s findings and conclusions as well as a review of the record upon which they were based, however, the court found no error warranting reversal. It affirmed the Board’s conclusion on these issues and its decisions on these claims.

"Communication device identification codes." Turning to Alarm.com’s cross appeal, several claims of the ’601 patent and the ’123 patent recite a message profile that is further configured to include "communication device identification codes." Alarm.com argued that "communication device identification codes" refer to phone numbers or email addresses, however, the Board did not agree and it construed "communication device identification codes" to include "either a device ID (e.g., a [mobile identification number ("MIN")]) or a serial number of a device (e.g., an [electronic serial number ("ESN")])."

The Federal Circuit conducted a de novo review of the Board’s determination of the broadest reasonable interpretation of the claims, reviewing any underlying factual findings for substantial evidence. As an initial matter, Vivint argued that the Board’s construction was entitled to deference because it relied on extrinsic evidence. The Federal Circuit disagreed, concluding that the Board construed "communication device identification codes" without reference to any extrinsic evidence and thus its construction of "communication device identification codes" was not entitled to deference.

On the merits, however, the Board erred in construing "communication device identification codes," the court held. As the Board acknowledged, neither the ’601 patent nor the ’123 patent define "communication device identification codes" in the specification. And yet, the Board decided that "communication device identification codes" must refer to something "capable of uniquely identifying communication devices." The Board’s conclusion that a phone number or email address cannot uniquely identify a communication device defied the patents’ teachings, the Federal Circuit reasoned. For example, both patents explain that a mobile identification number refers to a device in the same way that a phone number refers to a cellular phone, i.e. a communication device. The Board’s construction suggested the opposite.

At most, Vivint’s citations to the ’601 patent showed that serial numbers or mobile identification numbers might be examples of "communication device identification codes." This fell short of explaining why phone numbers and email addresses are not. Thus the court reversed the Board’s construction of "communication device identification codes," vacatedits related conclusions, and remanded for further consideration.

"Normal status message." Several of the claims at issue recite limitations relating to "normal status message[s]." Alarm.com argued that Shetty, in view of Britton, satisfied these various normal status message limitations because Britton teaches sending status messages that indicate whether equipment is functioning properly. The Board disagreed.

The Board’s conclusion about the scope of Britton was supported by substantial evidence, the court held. Britton differed from the claimed inventions because Britton’s status messages reflect the integrity of a communication path, such as a cellular network, linking alarm equipment and a central alarm monitor. Britton’s status messages do not confirm that equipment, sensors, or interfaces are functioning properly. By contrast, the patents at issue explain that normal status messages convey information, directly or indirectly, about monitored equipment, e.g. sensors, interfaces, or other equipment. Therefore, the court affirmed the Board’s conclusion that the normal status message claims are patentable over the prior art.

Claim 19 of the ’601 patent. Claim 19 of the ’601 patent requires "enabling selection of different user-defined communication devices to receive outgoing exception messages at different time periods." Alarm.com argued that, because it would have been possible to modify Shetty in view of Levac, claim 19 is obvious.

The Board focused on the absence of a motivation to modify Shetty to practice claim 19 based on Levac: "we are not persuaded that the subject matter of claim 19 would have been obvious to a person of ordinary skill in the art in the absence of improper hindsight knowledge." Substantial evidence supported the Board’s conclusion, the court determined. For example, Shetty does not suggest that it is desirable to notify different users depending on the time of day. Nor does Levac teach using its system to accomplish that goal, even if such a configuration is possible. Thus, the court affirmed the Board’s conclusion as to claim 19 being patentable over the prior art.

This case is Nos. 2017-2218, 2017-2219, 2017-2220, 2017-2260, 2017-2261 and 2017-2262.

Attorneys: Robert Greene Sterne (Sterne Kessler Goldstein & Fox, PLLC) for Vivint, Inc. Richard J. Stark (Cravath Swaine & Moore LLP) and David Phillip Emery (Sughrue Mion, PLLC) for Alarm.com Inc.

Companies: Vivint, Inc.; Alarm.com Inc.

MainStory: TopStory Patent FedCirNews

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