`571-272-7822
`
`
`Paper No. 14
`
` Entered: March 31, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ALARM.COM INC.,
`Petitioner,
`
`v.
`
`VIVINT, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-02004
`Patent 6,147,601
`____________
`
`
`
`Before MICHAEL R. ZECHER, JAMES B. ARPIN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
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`Patent 6,147,601
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`I. INTRODUCTION
`
`Alarm.com Incorporated (“Petitioner”) filed a Petition (Paper 1,
`“Pet.”) requesting an inter partes review of claims 1–43 of U.S. Patent
`No. 6,147,601 (Ex. 1001, “the ’601 patent”). Pet. 1, 4. Vivint, Incorporated
`(“Patent Owner”) filed a Preliminary Response. Paper 9 (“Prelim. Resp.”).1
`We review the Petition under 35 U.S.C. § 314, which provides that an inter
`partes review may not be instituted “unless . . . there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” 35 U.S.C. § 314(a).
`For the reasons that follow, and on this record, we are not persuaded
`that Petitioner demonstrates a reasonable likelihood of prevailing in showing
`the unpatentability of any of the challenged claims. Accordingly, we deny
`institution of inter partes review.
`
`A. The ’601 Patent
`
`The ’601 patent, entitled “Electronic Message Delivery System
`Utilizable in the Monitoring of Remote Equipment and Method of Same,”
`issued November 14, 2000, from U.S. Patent Application No. 09/317,235,
`filed May 24, 1999. Ex. 1001, at [21], [22], [45], [54]. The ’601 patent also
`
`
`1 On December 17, 2015, after Petitioner’s filing of the Petition, but before
`Patent Owner’s filing of the Preliminary Response, Patent Owner filed a
`Request for Certificate of Correction with respect to the ’601 patent, seeking
`to correct an alleged mistake in claim 39. Ex. 2003 (“Request”). By Order
`dated January 28, 2016, we stayed the Request, pursuant to 37 C.F.R. § 42.3,
`pending our decision on the Petition, and we also authorized Petitioner to
`file a Reply Brief limited to certain issues related to the requested Certificate
`of Correction. See Paper 10 (“Order”). Petitioner filed its Reply on
`February 3, 2016. Paper 12 (“Pet. Reply”).
`
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`claims the benefit of U.S. Provisional Application No. 60/115,305, filed
`January 9, 1999 (“the ’305 provisional”). Id. at [60], 1:6–7.
`The ’601 patent describes systems and methods for monitoring remote
`equipment such as “devices . . . employed in heating, ventilating, and [air
`conditioning] (HVAC) systems.” Ex. 1001, Abstract, 1:11–14. The ’601
`patent explains that “[i]t is desirable to be able to monitor remotely
`equipment that may require periodic preventive maintenance and/or that may
`require rapid response time should a catastrophic failure occur.” Id. at 1:16–
`19. According to the ’601 patent, prior art systems were limited insofar as
`they did not “allow for sufficient flexibility in routing fault messages to a
`variety of different potential recipients of such messages via a variety of
`different media, depending on the urgency or nature of the fault.” Id. at
`1:66–2:3. The ’601 patent provides, as an example, that an HVAC customer
`may want to send “certain non-emergency condition notifications (e.g., filter
`needs cleaning) to certain individuals (e.g., contractor/maintenance
`personnel) via a certain medium (e.g., e-mail) and emergency condition
`notifications (e.g., low or high refrigerant pressure) to other individuals
`(building owner, contractor, etc.) via other means (e.g., via beeper or other
`personal communication device).” Id. at 2:5–14. “Such a list of who to
`contact via what means depending on which fault has occurred may be
`referred to as a ‘message profile.’” Id. at 2:14–16. According to the ’601
`patent, conventional systems did not allow for “easy customer modifications
`to the message profile.” Id. at 2:21–22.
`The ’601 patent purportedly solves these problems by disclosing a
`system for remotely monitoring electrical or mechanical equipment that can
`deliver fault notification messages to different individuals for different fault
`
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`conditions via different electronic media, and in which a customer may
`interactively modify its message profile. Ex. 1001, 2:33–41. Figure 1 of the
`’601 patent, reproduced below, illustrates a schematic diagram of the
`preferred embodiment of this system. Id. at 3:24–25, 5:38–39.
`
`
`
`As shown in Figure 1, system 50 monitors existing pieces of
`electronic equipment, such as air-conditioner 2, boiler 3, motor starter 4,
`heater 5, or any other equipment that a prospective user desires to monitor.
`Ex. 1001, 5:39–42. Each piece of equipment is fitted with interface 10 that
`periodically sends a status signal to electronic message delivery server 1
`indicating whether the piece of equipment and its corresponding interface
`are functioning correctly. Id. at 5:43–47. When a predetermined
`“exception” condition, e.g., a fault condition, occurs in a piece of equipment
`being monitored, interface unit 10 sends a message to electronic message
`delivery server 1. Id. at 5:47–51. Electronic message delivery server 1 then
`routes the message to the appropriate user interface, such as email 6, fax 7,
`
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`pager 8, voice 9, etc., according to a message profile configured by the user
`via user-web client 121 connected to Internet 122. Id. at 5:51–55.
`In the described systems and methods, a sensor in communication
`with a piece of remote equipment determines the state of at least one
`parameter of the remote equipment. Id. at 2:48–50, 55–56. When the sensor
`detects an “exception” condition (i.e., an operating condition that is either
`out of the ordinary or beyond nominal parameters) in the remote equipment,
`an interface unit connected to the sensor and having a message generating
`mechanism generates an incoming exception message and forwards the
`message to a central computer server. Id. at 2:56–65. The server forwards
`at least one outgoing exception message to at least one predetermined user-
`defined end device based on the incoming exception message. Id. at 2:65–
`67.
`
`B. Related Proceedings
`
`The ’601 patent is the subject of a district court action between the
`parties titled Vivint, Inc. v. Alarm.com Inc., 2:15-cv-00392-CW-BCW
`(D. Utah 2015). Pet. 1; Paper 8, 2. Petitioner also filed two other petitions
`challenging subsets of the ’601 patent’s claims (Cases IPR2016-00116 and
`IPR2016-00155) and at least ten petitions challenging certain claims of the
`following other patents owned by Patent Owner: (1) U.S. Patent No.
`6,462,654 B1 (Cases IPR2015-02003 and IPR2016-00161); (2) U.S. Patent
`No. 6,535,123 B2 (Cases IPR2015-01995 and IPR2016-00173); (3) U.S.
`Patent No. 6,717,513 B1 (Cases IPR2015-01997 and IPR2016-00129);
`(4) U.S. Patent No. 6,924,727 B2 (Cases IPR2015-01977 and IPR2015-
`
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`02008); and (5) U.S. Patent No. 7,884,713 B1 (Cases IPR2015-01965 and
`IPR2015-01967). Pet. 1; Paper 8, 1–2.2
`
`C. Illustrative Claims
`
`Of the challenged claims, claims 1, 22, 42, and 43 are independent.
`Claims 1 and 22 are illustrative and are reproduced below:
`1. A method of monitoring remote equipment comprising the
`steps of:
`a) determining a state of at least one parameter of at least one
`piece of the remote equipment;
`b) communicating a message indicative of the state from the
`piece of remote equipment to a computer server as an
`incoming message;
`c) enabling a user to remotely configure or modify a user-
`defined message profile containing outgoing message
`routing instructions, the user-defined message profile being
`storable on the computer server;
`d) determining whether an incoming message is an incoming
`exception message indicative of improper operation of the
`piece of remote equipment;
`e) if it is determined in step d) that an incoming message is an
`incoming exception message, forwarding at least one
`outgoing exception message based on the incoming message
`to at least one user-defined communication device
`specifiable in the user-defined message profile,
`wherein the user can remotely configure or modify the user-
`defined message profile by remotely accessing the computer
`server.
`
`
`2 The parties are reminded of their continuing obligation to update their
`mandatory notices within twenty-one (21) days of any change, including,
`inter alia, the filing of any additional petitions. 37 C.F.R. §§ 42.8(a)(3),
`42.8(b)(2).
`
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`22. A system for monitoring remote equipment, comprising:
`a sensor in local communication with a piece of remote
`equipment, said sensor detecting a state of at least one
`parameter of the piece of remote equipment;
`an interface unit, locally connected to said sensor, said interface
`unit having a message generating mechanism; and
`a computer server in remote communication with said interface
`unit, said server adapted to receive messages generated by
`said interface unit, said computer server having a user
`interface, a user being capable of remotely accessing said
`computer server via said user interface to remotely configure
`a user-defined message profile containing outgoing message
`routing instructions,
`wherein when said sensor detects an exception condition in the
`piece of remote equipment, said interface unit generates an
`incoming exception message indicative of the exception
`condition and forwards said message to said server,
`and wherein said server forwards at least one outgoing
`exception message to at least one predetermined user-
`defined remote communication device based on said
`incoming exception message as specified in said user-
`defined message profile.
`Ex. 1001, 8:51–9:6, 10:43–11:2. Challenged claims 2–21 depend directly or
`indirectly from claim 1; and challenged claims 23–41 depend directly or
`indirectly from claim 22. Id. at 9:7–10:42, 11:3–12:54. Like claims 1 and
`22, independent claims 42 and 43 are directed to a method and a system,
`respectively, for monitoring remote equipment. Id. at 12:55–14:35.
`
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`D. References Relied Upon
`
`Petitioner relies on the following references:
`
`Exhibit
`
`1003
`
`Reference
`
`SCADAWARETM System Design Concepts, Doc.
`1010-03 (Total Engineering Services Team, Inc.,
`New Orleans, La.) (19943) (“Scadaware”)
`
`1004 U.S. Patent No. 6,040,770, issued Mar. 21, 2000
`(filed Sept. 4, 1998) (“Britton”)
`
`1005 U.S. Patent No. 6,054,920, issued Apr. 25, 2000
`(filed Oct. 15, 1996) (“Smith”)
`
`Pet. 3–4. Petitioner also relies on a declaration of Arthur Zatarain, PE
`(Ex. 1006).
`
`E. Asserted Grounds of Unpatentability
`
`Petitioner challenges the patentability of the challenged claims on the
`following grounds:
`
`Reference(s)
`
`Scadaware
`
`Scadaware
`
`Scadaware, Britton,
`and Smith
`
`Basis
`
`§ 102
`
`§ 103
`
`Claims Challenged
`
`1–5, 7, 11–15, 17–19, 21–30,
`34–36, 38–40, 42, and 43
`
`6, 10, and 16
`
`§ 103 8, 9, 20, 26, 30–33, 37, and 41
`
`
`Pet. 4.
`
`
`3 See infra Section II.B.
`
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`II. DISCUSSION
`
`A. Claim Construction
`
`In an inter partes review, claims 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); Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012); In re Cuozzo Speed
`Techs., LLC, 793 F.3d 1268, 1275–79 (Fed. Cir. 2015), cert. granted sub
`nom. Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 890 (mem.) (2016).
`Under this standard, we interpret claim terms using “the broadest reasonable
`meaning of the words in their ordinary usage as they would be understood
`by one of ordinary skill in the art, taking into account whatever
`enlightenment by way of definitions or otherwise that may be afforded by
`the written description contained in the applicant’s specification.” In re
`Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997); see also In re Translogic
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and
`customary meaning is the meaning that the term would have to a person of
`ordinary skill in the art in question.”) (internal quotation marks omitted).
`In the Petition, Petitioner proposes constructions for the claim phrases
`(1) “message profile containing outgoing message routing instructions,” as
`recited in each of independent claims 1 and 22; (2) “message generating
`mechanism,” as recited in independent claims 22 and 43 and in dependent
`claim 23; and (3) “normalization module,” as recited in dependent claims 24
`and 32. Pet. 7–11. In response, Patent Owner proposes alternative
`constructions for each of those phrases, as well as a constructions for the
`claim terms “server” (recited in each of the challenged independent claims)
`and “database” (recited in claims 10, 42, and 43). Prelim. Resp. 24–31. We,
`
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`however, need not assess the parties’ proposed constructions because they
`are not necessary to resolve the dispositive issue discussed below. See, e.g.,
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999) (explaining that only those claim terms or phrases that are in
`controversy need to be construed, and only to the extent necessary to resolve
`the controversy).
`
`B. Whether Scadaware Qualifies as a Printed Publication
`Within the Meaning of § 102
`
`The first page of Scadaware indicates a copyright date of 1994 and a
`revision date of December 1994. Ex. 1003, 1.4 Petitioner concedes that the
`last five pages of Scadaware (id. at 170–74; “FAX REPORT OPTION”)
`were added at a later date, and more particularly, in a revision dated
`February 15, 1996. Pet. 3. Petitioner asserts that, regardless of whether
`Scadaware was first published in December 1994 or in February 1996,
`Scadaware qualifies as prior art to the ’601 patent under 35 U.S.C. §§ 102(a)
`and 102(b). Id. at 4. To support its assertion, Petitioner relies upon the
`copyright date of 1994 and revision date of December 1994 on the face of
`Scadaware (id. (citing Ex. 1003, 1)); a SCADAWARE® Software
`Documentation Update, dated January 2, 1998, and identifying a
`February 15, 1996 “FAX Feature Update” to Scadaware (id. (citing
`Ex. 1007, 205)); a documentation price list indicating that the December
`
`
`4 All references to the page numbers in Scadaware refer to the page numbers
`inserted by Petitioner in the bottom, right-hand corner of each page of
`Exhibit 1003.
`5 All references to the page numbers in SCADAWARE® Software
`Documentation Update refer to the page numbers inserted by Petitioner in
`the bottom, right-hand corner of each page of Exhibit 1007.
`
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`1994 version of Scadaware was available publicly for sale as of April 1,
`1996 (id. (citing Ex. 1008, 1)); and the testimony of its declarant, Mr.
`Zatarain (id. at 3–4 (citing Ex. 1006 ¶¶ 24–31)).
`
`In response, Patent Owner contends the evidence offered by Petitioner
`to demonstrate that Scadaware qualifies as a printed publication within the
`meaning of § 102 is deficient for the following three reasons: (1) the
`copyright date of 1994 and the revision date of December 1994 on the face
`of Scadaware, by themselves, are insufficient to show the date Scadaware
`was made accessible publicly; (2) Mr. Zatarain’s cited testimony is unclear
`as to whether the version of Scadaware actually filed in this proceeding was
`distributed and to whom; and (3) even if Scadaware was distributed, as
`described by Mr. Zatarain, he still fails to show that Scadaware was made
`sufficiently accessible to the public interested in the art. Prelim. Resp. 9–18.
`We look to the underlying facts to make a legal determination as to
`whether a reference is a printed publication. Suffolk Techs., LLC v. AOL
`Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014). The determination of whether a
`given reference qualifies as a prior art “printed publication” involves a case-
`by-case inquiry into the facts and circumstances surrounding its disclosure to
`members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir.
`2004). The key inquiry is whether the reference was made “sufficiently
`accessible to the public interested in the art” before the critical date. In re
`Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989); In re Wyer, 655 F.2d 221,
`226 (CCPA 1981). “A given reference is ‘publicly accessible’ upon a
`satisfactory showing that such document has been disseminated or otherwise
`made available to the extent that persons interested and ordinarily skilled in
`the subject matter or art exercising reasonable diligence, can locate it.” SRI
`
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`Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008)
`(quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed.
`Cir. 2006)).
`
`We are persuaded that Petitioner has made a threshold showing that
`Scadaware is a printed publication within the meaning of § 102 and,
`therefore, is available as prior art in an inter partes review of the
`’601 patent. 35 U.S.C. § 311(b). On its face, Scadaware includes the
`following two dates: (1) a copyright date of 1994; and (2) a revision date of
`December 1994. Ex. 1003, 1. Mr. Zatarain testifies that the
`SCADAWARE® Software Documentation Update “was periodically
`updated from December 1994 through January 2, 1998 to describe revisions
`and enhancements to the Scadaware system.” Ex. 1006 ¶ 25. Indeed, as one
`example of these revisions or enhancements, the last five pages of
`Scadaware—pages 170 to 174 of Exhibit 1003—were added in a revision
`characterized as a “FAX Feature Update” dated February 15, 1996. Pet. 3;
`see Ex. 1007, 20 (disclosing that the Scadaware “FAX Feature Update”
`occurred on February 15, 1996); accord Ex. 1006 ¶¶ 24, 25 (confirming that
`the Scadaware “FAX Feature Update” occurred on February 15, 1996).
`Mr. Zatarain further testifies that, “[b]ecause later versions of
`Scadaware software were always backwards-compatible with earlier
`hardware, and because the software of installed systems was frequently
`updated, the Scadaware Reference was also provided to hundreds of users
`having existing systems (i.e. installed before December 1994 or February
`1996).” Ex. 1006 ¶ 28. We understand Mr. Zatarain to attest that, each time
`Scadaware was updated, a new revised copy was made available to users
`who previously purchased the Scadaware system. Mr. Zatarain also testifies
`
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`that Scadaware was made available publicly to potential customers in sales
`seminars, training sessions, and project proposals prior to the earliest
`effective filing date of the ’601 patent. Ex. 1006 ¶ 29. As just one example
`of this public accessibility, Petitioner and Mr. Zatarain direct us to a
`documentation price list indicating that the December 1994 version of
`Scadaware was available publicly for sale for $45.00 at least as of
`April 1, 1996. Pet. 3 (citing Ex. 1008, 1); Ex. 1006 ¶ 29 (citing the same).
`Overall, Mr. Zatarain testifies that an estimated total of between three and
`five hundred copies of Scadaware were distributed prior to the earliest
`effective filing date of the ’601 patent. Ex. 1006 ¶ 31. Based on the current
`record, we conclude that Petitioner has produced sufficient evidence that
`Scadaware was made accessible to the public interested in the art at least by
`April 1996, which is more than one year before January 9, 1999—the
`earliest effective filing date of the ’601 patent. Ex. 1001 at [60].
`
`We now address each of Patent Owner’s arguments in turn. We agree
`with Patent Owner’s argument that the copyright date of 1994 and the
`revision date of December 1994 on the face of Scadaware, by themselves,
`are insufficient to demonstrate the date Scadaware was made accessible
`publicly. Prelim. Resp. 9–11 (citing Ex. 1003, 1). As we explained above,
`however, Petitioner does not rely solely upon the copyright date of 1994 and
`the revision date of December 1994 on the face of Scadaware to demonstrate
`Scadaware was made publicly accessible prior to the earliest effective filing
`date of the ’601 patent. Instead, Petitioner asserts that the copyright date of
`1994 and the revision date of December 1994 on the face of Scadaware,
`along with the SCADAWARE® Software Documentation Update, the
`documentation price list, and the supporting testimony of Mr. Zatarain,
`
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`demonstrates that Scadaware was made sufficiently accessible to the public
`interested in the art by at least April 1996. Pet. 3–4; Ex. 1003, 1; Ex. 1006
`¶¶ 24–31; Ex. 1007, 20; Ex. 1008, 1.
`
`We also are not persuaded by Patent Owner’s argument that, when
`Mr. Zatarain attests to the distribution of Scadaware, it is unclear whether
`the version of Scadaware actually filed in this proceeding was distributed
`and to whom. Prelim. Resp. 11–13. As we explained above, Mr. Zatarain
`testifies that Scadaware was updated periodically, including, e.g., a revision
`characterized as a “FAX Feature Update” dated February 15, 1996.
`Ex. 1006 ¶¶ 24, 25. Mr. Zatarain further testifies that, each time Scadaware
`was updated, a new revised copy was provided to users who previously
`purchased the Scadaware system. Id. ¶ 28. This practice of redistribution is
`bolstered further by Mr. Zatarain’s testimony that the customer always was
`given the “final form.” Id. ¶ 27. Based on Mr. Zatarain’s cited testimony,
`the version of Scadaware actually filed in this proceeding is inconsequential
`because, regardless of the number of revisions or enhancements to the
`Scadaware system, Petitioner has presented sufficient evidence
`demonstrating that the most recent version of Scadaware always was made
`publicly accessible.
`In support of its argument that it is unclear whether the version of
`Scadaware actually filed in this proceeding was distributed and to whom,
`Patent Owner directs us to the Board’s analysis in the Temporal Power case.
`Prelim. Resp. 12 (citing Temporal Power, Ltd. v. Beacon Power, LLC, Case
`IPR2015-00146, slip op. at 10–11 (PTAB Apr. 27, 2015) (Paper 10)). The
`circumstances of this case, however, are distinguishable from those in
`Temporal Power in at least one significant respect. The petitioner in
`
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`Temporal Power did not explain, and the Board was unable to determine,
`whether the version of PowerPoint slides filed in that proceeding was the
`actual version presented at a conference. In this case, there is sufficient
`evidence of record demonstrating that, regardless of the version of
`Scadaware actually filed in this proceeding, the subject matter disclosed in
`Scadaware was made publicly accessible.
`Lastly, we are not persuaded by Patent Owner’s argument that, even if
`Scadaware was distributed, as described by Mr. Zatarain, he still has not
`demonstrated that Scadaware was made sufficiently accessible to the public
`interested in the art. Prelim. Resp. 13–18. Apart from mere attorney
`argument, the current record does not include sufficient or credible evidence
`that undermines Mr. Zatarain’s supporting testimony as to the public
`accessibility of Scadaware. Cf. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
`1997) (explaining that attorney arguments and conclusory statements that are
`unsupported by factual evidence are entitled to little probative value).
`Instead, as we explained above, Mr. Zatarain testifies that Scadaware was
`made available publicly to potential customers in sales seminars, training
`sessions, and project proposals, with an estimated total of between three and
`five hundred copies distributed prior to the earliest effective filing date of
`the ’601 patent. Pet. 3; Ex. 1006 ¶¶ 29, 31. As just one example, Petitioner
`and Mr. Zatarain direct us to a documentation price list indicating that at
`least the December 1994 version of Scadaware was offered for sale publicly
`for $45.00 as of April 1, 1996. Pet. 3; Ex. 1006 ¶ 29; Ex. 1008, 1. In our
`view, the documentation price list, along with Mr. Zatarain’s supporting
`testimony, amount to credible evidence that Scadaware was made
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`sufficiently accessible to the public interested in the art, such that they could
`locate it by exercising reasonable diligence.
`In support of its argument that Mr. Zatarain has not demonstrated that
`Scadaware was made sufficiently accessible to the public interested in the
`art, Patent Owner also directs us to the Board’s analysis in the Northern
`Telecom case. Prelim. Resp. 16 (citing N. Telecom, Inc. v. Datapoint Corp.,
`908 F.2d 931, 936 (Fed. Cir. 1990)). The circumstances of this case,
`however, also are distinguishable from Northern Telecom in at least two
`significant respects.
`First, the documents at issue in Northern Telecom were marked
`“[r]eproduction or further dissemination is not authorized . . . not for public
`release.” N. Telecom, 908 F.2d at 936. In this case, we are unable to find
`markings on Scadaware indicating that reproduction or further dissemination
`was not authorized. See Ex. 1003. Mr. Zatarain’s testimony confirms that
`no such markings exist on Scadaware when he testifies that “[t]he
`Scadaware Reference was not marked ‘confidential’ and was not treated as
`confidential. Customers and others who received copies were not placed
`under any obligation to keep its contents confidential.” Ex. 1006 ¶ 29.
`To the extent Patent Owner argues that the copyright notice on the
`face of Scadaware constitutes a marking indicative of prohibiting
`reproduction or further dissemination, we disagree. Prelim. Resp. 16.
`Although the copyright date of 1994 on the face of Scadaware is
`accompanied by the phrase “All Rights Reserved,” this mark and
`accompanied phrase, by themselves, does not indicate that any restrictions
`were placed on the reproduction or dissemination of Scadaware. Instead, it
`simply informs readers of the underlying claim to copyright ownership in
`
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`Scadaware, and that the copyright holder does not intend to give up any of
`the exclusive rights it has under copyright law.
`Second, as Patent Owner itself points out, the documents in Northern
`Telecom were distributed only to persons and organizations involved in a
`complex military project and housed at a company’s secure facility. Prelim.
`Resp. 16 (quoting N. Telecom, 908 F.2d at 936). Although Patent Owner
`asserts that similar facts are present here, it cites no supporting evidence for
`its attorney argument. See id.
`In further support of its argument that Mr. Zatarain has not
`demonstrated that Scadaware was made sufficiently accessible to the public
`interested in the art, Patent Owner directs us to the Board’s analysis in the
`Samsung case. Prelim. Resp. 16–17 (citing Samsung Elecs. Co. v.
`Rembrandt Wireless Techs., LP, Case IPR2014-00514, slip op. at 7–9
`(PTAB Sept. 9, 2014) (Paper 18)). Again, however, the circumstances of
`this case are distinguishable from Samsung in at least two significant
`respects. First, the Draft Standard at issue in Samsung was available only to
`members of the 802.11 Working Group. Samsung, slip op. at 7–8. In this
`case, although Mr. Zatarain testifies that copies of Scadaware were
`distributed with at least fifty delivered systems between February 1996 and
`the earliest effective filing date of the ’601 patent (Ex. 1006 ¶ 27), he also
`testifies that Scadaware was made available publicly to potential customers
`in sales seminars, training sessions, and project proposals, as well as for
`public sale, during essentially the same time period (id. ¶ 29; Ex. 1008, 1).
`In other words, unlike the Draft Standard at issue in Samsung, there is
`sufficient evidence of record that Scadaware was made accessible to the
`general public—not just an exclusive group of customers.
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`Second, the Draft Standard at issue in Samsung was only accessible
`using a password distributed to an email list specific to the 802.11 Working
`Group. Samsung, slip op. at 8–9. In this case, Patent Owner does not direct
`us to, nor can we find, evidence of record indicating that access to
`Scadaware was somehow password protected or otherwise restricted.
`In summary, based on this record, we are persuaded that Petitioner has
`made a threshold showing that Scadaware is a printed publication within the
`meaning of § 102 and, therefore, qualifies as prior art to the ’601 patent.
`
`C. Asserted Grounds of Unpatentability
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`
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`1. Anticipation by Scadaware
`
`Petitioner contends that claims 1–5, 7, 11–15, 17–19, 21–30, 34–36,
`38–40, 42, and 43 of the ’601 patent are anticipated under § 102 by
`Scadaware. Pet. 11–40. Petitioner explains how Scadaware allegedly
`describes the subject matter of each challenged claim (id.), and relies upon
`the Declaration of Mr. Zatarain (Ex. 1006 ¶¶ 60, 61, 72, 78–80, 83–86, 126–
`137) to support its positions. We have considered Petitioner’s explanations
`and supporting evidence, but we are not persuaded that Petitioner properly
`accounts for the “computer server” required by each of independent
`claims 1, 22, 42, and 43 of the ’601 patent.
`We begin our analysis with the principles of law that generally apply
`to a ground based on anticipation, followed by a brief overview of
`Scadaware, and we then address the parties’ contentions with respect to
`independent claims 1, 22, 42, and 43.
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`a. Principles of Law
`
`To establish anticipation, “all of the elements and limitations of the
`claim must be shown in a single prior reference, arranged as in the claim.”
`Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
`2001). “A claim is anticipated only if each and every element as set forth in
`the claim is found, either expressly or inherently described, in a single prior
`art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
`631 (Fed. Cir. 1987). We analyze this asserted ground based on anticipation
`with the principles stated above in mind.
`
`b. Overview of Scadaware
`
`Scadaware is a system comprised of hardware and software
`components that allows users to monitor equipment at remote locations, such
`as machinery in operation at a remote oil drilling site, and receive messages
`or alerts on a user-designated device if the equipment malfunctions or
`deviates from acceptable parameters. See Ex. 1003, 7, 18. A Figure in
`Scadaware, reproduced below, illustrates the hardware components that
`make up this system. Id. at 11.
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`As shown in the Figure reproduced above, the system disclosed in
`Scadaware includes the following hardware components: (1) flow,
`temperature, alarm, shut down control, and well test control field
`transmitters installed in or on the equipment being monitored; (2) a remote
`terminal unit (“RTU”) connected to the field transmitters; (3) a “Host” Unit
`remote from the equipment site; (4) a remote terminal through which a
`prospective user may issue commands to the Host Unit; and (5) remote
`communication devices, such as printers or computers, capable of receiving
`messages about the status of monitored equipment. Ex. 1003, 12–14, 55.
`The field transmitters may sense a variety of parameters, including the
`current pressure of a fluid inside a pipe, the temperature of the equipment,
`the level of liquid in a tank, or the presence of natural gas, fire, or smoke in a
`room. See, e.g., id. at 11, 21, 61 (collectively disclosing flow, temperature,
`alarm, and pressure sensors). The field transmitters send the sensed data to
`the RTU, which, in turn, communicates this data over radio or phone lines to
`the Host Unit. See id. at 11.
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`c. Discussion
`
`Each of independent clai