Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`Paper 39
`Entered: May 2, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ALARM.COM INC.,
`Petitioner,
`
`v.
`
`VIVINT, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00116
`Patent 6,147,601
`____________
`
`
`Before MICHAEL R. ZECHER, JAMES B. ARPIN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`

`

`IPR2016-00116
`Patent 6,147,601
`
`
`I. INTRODUCTION
`
`Alarm.com Incorporated (“Alarm.com”) filed a Petition (Paper 1,
`
`“Pet.”) requesting an inter partes review of claims 1, 2, 4–23, 25–31, and
`
`33–41 of U.S. Patent No. 6,147,601 (Ex. 1101, “the ’601 patent”), owned by
`
`Vivint, Inc. (“Vivint”). Pet. 3.1 On May 4, 2016, we issued a Decision
`
`granting institution of inter partes review of claims 1, 2, 4–15, 17–23, 25–
`
`31, and 33–41 of the ’601 patent. Paper 14 (“Dec. on Inst.”), 46. Vivint
`
`then filed a Patent Owner’s Response (Paper 20, “PO Resp.”), and
`
`Alarm.com filed a Reply (Paper 26, “Pet. Reply”). A consolidated hearing
`
`for the instant proceeding and related Cases IPR2016-00161 and IPR2016-
`
`00173 was held on January 31, 2017. A transcript of that hearing is included
`
`in the record. Paper 38 (“Tr.”).
`
`We have jurisdiction under 35 U.S.C. § 6, and we issue this Final
`
`Written Decision pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For
`
`the reasons discussed below, we determine that Alarm.com has met its
`
`burden to prove by a preponderance of the evidence that claims 1, 2, 4, 6, 7,
`
`
`1 On December 17, 2015, after Alarm.com’s filing of the Petition, Vivint
`filed a Request for Certificate of Correction with respect to the ’601 patent,
`seeking to correct an alleged mistake in claim 39. Ex. 2003 (“Request”), 3.
`By Order, pursuant to 37 C.F.R. § 42.3, dated January 28, 2016, we stayed
`the Request pending our decision on the Petition and the petitions filed in
`Cases IPR2015-02004 and IPR2016-00155 also involving the ’601 patent,
`and we also authorized Alarm.com to file a Brief limited to addressing
`certain issues related to the requested Certificate of Correction. See Paper 9
`(“Order”). Alarm.com filed its Brief shortly before Vivint filed a
`Preliminary Response in this case. Paper 11 (“Pet. Brief”). On June 1,
`2016, we lifted the stay of the Request (Paper 16), and the Certificate of
`Corrections Branch of the Office subsequently denied the Request
`(Ex. 3001).
`
`2
`
`

`

`IPR2016-00116
`Patent 6,147,601
`
`10–15, 17, 18, 22, 23, 25, 29, and 38 of the ’601 patent are unpatentable on
`
`the grounds upon which we instituted inter partes review, but that
`
`Alarm.com has not proven by a preponderance of the evidence that claims 5,
`
`8, 9, 19–21, 26–28, 30, 31, 33–37, and 39–41 are unpatentable.
`
`II. BACKGROUND
`
`A. 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. Alarm.com also filed three other
`
`petitions challenging certain claims of the ’601 patent (Cases IPR2015-
`
`02004, IPR2016-00155, and IPR2016-01080), and fourteen petitions
`
`challenging certain claims of the following other patents owned by Vivint:
`
`(1) U.S. Patent No. 6,462,654 B1 (Cases IPR2015-02003, IPR2016-00161,
`
`IPR2016-01110, and IPR2016-01124); (2) U.S. Patent No. 6,535,123 B2
`
`(Cases IPR2015-01995, IPR2016-00173, and IPR2016-01126);
`
`(3) U.S. Patent No. 6,717,513 B1 (Cases IPR2015-01997, IPR2016-00129,
`
`and IPR2016-01091); (4) U.S. Patent No. 6,924,727 B2 (Cases IPR2015-
`
`01977 and IPR2015-02008); and (5) U.S. Patent No. 7,884,713 B1 (Cases
`
`IPR2015-01965 and IPR2015-01967). Paper 17, 2–3; Paper 18, 1–2.
`
`B. The ’601 Patent
`
`The ’601 patent, titled “Electronic Message Delivery System
`
`Utilizable in the Monitoring of Remote Equipment and Method of Same,”
`
`issued November 14, 2000, from U.S. Patent Application No. 09/317,235,
`
`filed May 24, 1999. Ex. 1101, at [21], [22], [45], [54]. The ’601 patent also
`
`3
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`

`

`IPR2016-00116
`Patent 6,147,601
`
`
`claims the benefit of U.S. Provisional Application No. 60/115,305, filed
`
`January 9, 1999 (“the ’305 provisional”). Id. at [60], 1:6–7.
`
`The ’601 patent describes systems and methods for monitoring remote
`
`equipment such as “devices . . . employed in heating, ventilating, and [air
`
`conditioning] (HVAC) systems.” Ex. 1101, 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 1:15–
`
`18. According to the ’601 patent, prior art systems were limited insofar as
`
`they did not “allow for sufficient flexibility in routing fault messages to a
`
`variety of different potential recipients of such messages via a variety of
`
`different media, depending on the urgency or nature of the fault.” Id. at
`
`1:66–2:3. The ’601 patent provides, as an example, that an HVAC customer
`
`may want to send “certain non-emergency condition notifications (e.g., filter
`
`needs cleaning) to certain individuals (e.g., contractor/maintenance
`
`personnel) via a certain medium (e.g., e-mail) and emergency condition
`
`notifications (e.g., low or high refrigerant pressure) to other individuals
`
`(building owner, contractor, etc.) via other means (e.g., via beeper or other
`
`personal communication device).” Id. at 2:5–14. “Such a list of who to
`
`contact via what means depending on which fault has occurred may be
`
`referred to as a ‘message profile.’” Id. at 2:14–16. According to the ’601
`
`patent, conventional systems did not allow for “easy customer modifications
`
`to the message profile.” Id. at 2:21–22.
`
`The ’601 patent purportedly solves these problems by describing a
`
`system for remotely monitoring electrical or mechanical equipment that can
`
`deliver fault notification messages to different individuals for different fault
`
`4
`
`

`

`IPR2016-00116
`Patent 6,147,601
`
`conditions via different electronic media, and in which a customer may
`
`modify its message profile interactively. Ex. 1101, 2:33–41. Figure 1 of
`
`the ’601 patent, reproduced below, illustrates a schematic diagram of the
`
`preferred embodiment of this system. Id. at 3:24–25, 5:38–39.
`
`
`
`
`
`As shown in Figure 1, system 50 monitors existing pieces of
`
`electronic equipment, such as air-conditioner 2, boiler 3, motor starter 4,
`
`heater 5, or any other equipment that a prospective user desires to monitor.
`
`Ex. 1101, 5:39–42. Each piece of equipment is fitted with interface 10 that
`
`periodically sends a status signal to electronic message delivery server 1
`
`indicating whether the piece of equipment and its corresponding interface
`
`are functioning correctly. Id. at 5:43–47. When a predetermined
`
`“exception” condition, e.g., a fault condition, occurs in a piece of equipment
`
`being monitored, interface unit 10 sends a message to electronic message
`
`delivery server 1. Id. at 5:47–51. Electronic message delivery server 1 then
`
`routes the message to the appropriate user interface, such as e-mail 6, fax 7,
`
`5
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`

`

`IPR2016-00116
`Patent 6,147,601
`
`
`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. Ex. 1101, 2:48–50, 55–56. When the
`
`sensor detects an “exception” condition (i.e., an operating condition that is
`
`either out of the ordinary or beyond nominal parameters) in the remote
`
`equipment, an interface unit connected to the sensor and having a message
`
`generating mechanism generates an incoming exception message and
`
`forwards the message to a central computer server. Id. at 2:56–65. The
`
`server forwards at least one outgoing exception message to at least one
`
`predetermined user-defined end device based on the incoming exception
`
`message. Id. at 2:65–67.
`
`C. Illustrative Challenged Claims
`
`Of the challenged claims, claims 1 and 22 are independent. Those
`
`two claims 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;
`
`6
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`IPR2016-00116
`Patent 6,147,601
`
`
`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.
`
`Ex. 1101, 8:51–9:6.
`
`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.
`
`7
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`

`

`IPR2016-00116
`Patent 6,147,601
`
`
`Ex. 1101, 10:43–11:2. Challenged claims 2, 4–15, and 17–21 depend
`
`directly or indirectly from claim 1; and challenged claims 23, 25–31, and
`
`33–41 depend directly or indirectly from claim 22. Id. at 9:7–10, 9:16–
`
`10:15, 10:19–42, 11:3–8, 11:16–12:5, 12:14–54.
`
`D. Applied References and Declaration
`
`Alarm.com relies upon the following references in support of the
`
`asserted grounds:
`
`Exhibit Reference
`1103
`U.S. Patent No. 5,808,907, issued Sept. 15, 1998
`(“Shetty”)
`U.S. Patent No. 6,040,770, issued Mar. 21, 2000
`(filed Sept. 4, 1998) (“Britton”)
`U.S. Patent No. 6,034,970, issued Mar. 7, 2000
`(filed July 2, 1997) (“Levac”)
`U.S. Patent No. 5,061,916, issued Oct. 29, 1991 (“French”)
`
`1104
`
`1105
`
`1106
`
`Pet. 3. Alarm.com also relies on the Declaration and Reply Declaration of
`
`Arthur Zatarain, PE (Exs. 1107, 1130) in support of its Petition and Reply,
`
`respectively; and Vivint relies on the Declaration of Scott Andrew Denning
`
`(Ex. 2010) in support of its Patent Owner Response.
`
`E. Instituted Grounds of Unpatentability
`
`We instituted inter partes review of the challenged claims under
`
`35 U.S.C. § 103(a) based on the following grounds:
`
`
`
`
`
`8
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`

`

`IPR2016-00116
`Patent 6,147,601
`
`
`Reference(s)
`Shetty
`
`Claim(s) Challenged
`1, 2, 4, 6, 10–13, 15, 17, 22, 23,
`25–27, 29, 33–35, and 38
`7, 19, and 28
`Shetty and Levac
`5, 8, 9, 21, 30, 31, 37, 39, and 40
`Shetty and Britton
`20 and 41
`Shetty, Levac, and Britton
`14, 17, 18, 36, and 38
`Shetty and French
`Shetty, Levac, Britton, and French 39
`
`Dec. on Inst. 46.
`
`III. ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are given
`
`their broadest reasonable construction in light of the specification of the
`
`patent in which they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed
`
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (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, claim terms generally are 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. See In re
`
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). The U.S.
`
`Court of Appeals for the Federal Circuit has “recognized ‘only two
`
`exceptions to this general rule: 1) when a patentee sets out a definition and
`
`acts as his own lexicographer, or 2) when the patentee disavows the full
`
`scope of a claim term either in the specification or during prosecution.’”
`
`Unwired Planet, LLC v. Apple Inc., 829 F.3d 1353, 1358 (Fed. Cir. 2016)
`
`(citing Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365
`
`(Fed. Cir. 2012)). Any special definition for a claim term must be set forth
`
`9
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`IPR2016-00116
`Patent 6,147,601
`
`
`with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
`
`1475, 1480 (Fed. Cir. 1994). In the absence of such a definition, limitations
`
`are not to be read from the specification into the claims. See In re Van
`
`Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
`
`In the Decision on Institution, we determined that the broadest
`
`reasonable interpretation of “message profile containing outgoing message
`
`routing instructions,” as recited in each of independent claims 1 and 22, is
`
`“data record including instructions specifying at least one communication
`
`device to which an outgoing message can be routed in response to an
`
`incoming exception message.” Dec. on Inst. 10–14. We also determined
`
`that the term “message generating mechanism,” as recited in independent
`
`claim 22, is not a means-plus-function term subject to construction under
`
`35 U.S.C. § 112, paragraph 6,2 contrary to Alarm.com’s contentions (see
`
`Pet. 8), and neither that term nor any other claim terms required construction
`
`for purposes of institution of trial. Dec. on Inst. 15–18.
`
`In its Patent Owner Response, Vivint contends that our construction
`
`of “message profile containing outgoing message routing instructions” in the
`
`Decision on Institution “overlooks a key aspect of the claimed message
`
`profile” and that the phrase instead “should be construed to mean a ‘data
`
`record including instructions specifying which communication device
`
`associated with which individuals an outgoing message can be routed in
`
`
`2 Section 4(c) of the Leahy-Smith America Invents Act (AIA) re-designated
`35 U.S.C. § 112 ¶ 6, as 35 U.S.C. § 112(f). Because the ’601 patent has a
`filing date before September 16, 2012 (effective date of the statute), we refer
`to the pre-AIA version of 35 U.S.C. § 112.
`
`
`10
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`IPR2016-00116
`Patent 6,147,601
`
`response to an incoming exception message.’” PO Resp. 3–4, 32–35.
`
`Vivint also seeks to construe the phrases “at different time periods” and “at
`
`different times” recited in challenged claims 19 and 20, to refer to the “time
`
`of day” at which the exception message is received. Id. at 4, 39–40. We
`
`address the construction of each of these phrases in turn below. We also
`
`construe the phrase “communication device identification codes,” which
`
`appears in claim 26 of the ’601 patent.
`
`1. “message profile containing outgoing message routing
`instructions” / “message profile”(claims 1 and 22)
`
`Referring to a sentence in the ’601 patent stating that “a list of who to
`
`contact via what means depending on which fault has occurred may be
`
`referred to as a ‘message profile’” (Ex. 1101, 2:14–16), Vivint contends:
`
`In the [Patent Owner’s Preliminary Response (Paper 12)],
`Vivint argued that the construction of the term “message profile”
`should include “a list of who to contact” based on a definition in
`the Specification that included this limitation. (Paper 12, 7–9.)
`The Institution Decision rejected this argument in part because
`the cited language from the Specification used “the permissive
`word ‘may.’” (Paper 14, p. 13.) But the “mayˮ in the cited
`portion of the ’601 Patent states “[s]uch a list of who to contact
`via what means depending on which fault has occurred may be
`referred to as a ‘message profile.’ˮ (Ex. 1101, 2:14–16,
`emphasis added.) So, ‟mayˮ in this passage is used as part of a
`larger clause, “may be referred to as.” (Ex. 1101, 2:14–16.) This
`clause describes how the preceding language can be named,
`meaning this is one of many names, one of which is a message
`profile. (Ex. 2010, ¶ 51.) But there is no uncertainty as to what
`constitutes the message profile, as it is the inventor’s chosen
`name in this patent for the “list of who to contact via what means
`depending on which fault has occurred.” (Id. at ¶ 124.)
`
`PO Resp. 33; see also id. at 3–4 (presenting essentially the same argument).
`
`Vivint further contends:
`
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`IPR2016-00116
`Patent 6,147,601
`
`
`This understanding is corroborated by another portion of
`the Specification, which serves as separate evidence as to the
`accuracy of Vivint’s proposed construction herein. Specifically,
`the ’601 Patent describes how a contractor configures his
`message delivery:
`
`The contractor is provided with an account on the
`message delivery system that he can access via the
`Internet. The contractor sets up the specific
`parameters of which exception conditions are
`reported to which individuals. The contractor also
`sets up by which media (fax, e-mail, PCS) these
`individuals are to be notified. Multiple individuals
`may be alerted as to an exception condition. All of
`this data constitutes the contractor’s message
`profile.
`
`PO Resp. 34 (quoting Ex. 1101, 4:39–47, emphases added by Vivint).
`
`According to Vivint, “[t]his passage is explicit as to the contents of the
`
`message profile requiring that the message profile includes ‘the specific
`
`parameters of which exception conditions are reported to which individuals,’
`
`and the ‘media [by which] these individuals are to be notified.’” Id. (citing
`
`Ex. 2010 ¶¶ 50, 52–53). Vivint contends that the intrinsic record “describes
`
`the ‘message profile’ as unwaveringly requiring not only an indication of
`
`which devices to contact, but also which individuals associated with those
`
`devices should be contacted.” Id. (citing Ex. 1101, 2:14–16, 4:39–47;
`
`Ex. 2010 ¶¶ 53, 56). Vivint further contends that, “[e]ven aside from the
`
`intrinsic evidence, under the law a proper definition must take into
`
`consideration the problem the inventor was trying to solve,” and “[t]he ’601
`
`Patent makes it clear that the inventor’s intent was to allow for the system to
`
`send different fault messages to different individuals depending on the fault
`
`that occurs.” Id. at 34–35 (citing Ex. 1101, 1:66–2:3 (“All of the above
`
`12
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`IPR2016-00116
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`
`systems and the prior art are limited in scope because they do 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.” (emphasis added by
`
`Vivint))).
`
`Alarm.com replies that, “[b]ecause the Board’s construction ‘take[s]
`
`into consideration’ the problem the ’601 Patent was directed at and is the
`
`Broadest Reasonable Interpretation of the term, it is correct.” Pet. Reply 1.
`
`Alarm.com contends that “Vivint largely rehashes arguments the Board
`
`previously rejected,” and “[t]hose arguments should be rejected once again
`
`for the same reasons the Board previously articulated.” Id. at 1–2 (citing
`
`Dec. on Inst. 12–13). Referring to the statement in the Specification that
`
`“[s]uch a list of who to contact via what means . . . may be referred to as a
`
`‘message profile,’” cited by Vivint in support of its construction (see PO
`
`Resp. 33 (citing Ex. 1101, 2:14–16)), Alarm.com contends that “[s]uch a list
`
`indeed fits within the Board’s construction, but adds no support for a
`
`limitation requiring that a message profile identify individuals.” Pet. Reply
`
`2 (citing Dec. on Inst. 12–13; Ex. 1130 ¶¶ 18–26). Alarm.com further
`
`contends “[l]ines 4:39–47 of the ’601 Patent likewise do not support Vivint’s
`
`narrower construction of ‘message profile.’” Id. “That passage identifies
`
`several implementation details of the preferred embodiment that are not
`
`limitations of the independent claims: a user account; accessing a server via
`
`the internet; specifying types of communication devices and the
`
`specification of multiple individuals. To make such details part of the term
`
`construction improperly imports the specification into the claims.” Id.
`
`(citing Ex. 1130 ¶¶ 27–34).
`
`13
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`IPR2016-00116
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`
`
`Having considered the parties’ arguments and the cited evidence, we
`
`discern no reason to modify the construction of “message profile containing
`
`outgoing message routing instructions” set forth in the Decision on
`
`Institution. As we explained in that Decision, we interpret the statement in
`
`the ’601 patent that “a list of who to contact via what means depending on
`
`which fault has occurred may be referred to as a ‘message profile’”
`
`(Ex. 1101, 2:14–16), at most, reflects that “a list of who to contact via what
`
`means depending on which fault has occurred” could be an example of a
`
`message profile, and does not necessarily require “a list of who to contact.”
`
`Dec. on Inst. 12–13. Although we acknowledge Vivint’s interpretation of
`
`the phrase “may be referred to as a ‘message profile’” as indicating that
`
`“message profile” simply is one of “many” names that could be given to “a
`
`list of who to contact via what means depending on which fault has
`
`occurred” (see PO Resp. 3–4, 33), we are not persuaded that Vivint’s
`
`construction of “message profile” represents the broadest reasonable
`
`interpretation in light of the Specification of the ’601 patent. As we pointed
`
`out in the Decision on Institution, the ’601 patent includes embodiments, in
`
`which, for example, multiple messages are sent to multiple recipients via
`
`differing media for the same exception condition (Ex. 1101, 3:10–13), or the
`
`same person is contacted by different means (e.g., fax or personal
`
`communication service (PCS)) at different times (id. at 4:57–58). Dec. on
`
`Inst. 13. Vivint’s proposed construction, requiring the message profile to
`
`specify “which communication device associated with which individuals”
`
`(PO Resp. 32), would exclude such embodiments.
`
`In view of the full record developed during trial, we remain
`
`unpersuaded by Vivint’s argument that the statement in the Specification of
`
`14
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`

`IPR2016-00116
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`
`the ’601 patent that “a list of who to contact via what means depending on
`
`which fault has occurred may be referred to as a ‘message profile’” (Ex.
`
`1101, 2:14–16) provides the requisite “clarity, deliberateness, and precision”
`
`to indicate that the patentees intended to act as their own lexicographer and
`
`disclaim the embodiments identified above. See Dec. on Inst. 12–13; In re
`
`Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (“We
`
`have cautioned against reading limitations into a claim from the preferred
`
`embodiment described in the specification, even if it is the only embodiment
`
`described, absent clear disclaimer in the specification.”); Paulsen, 30 F.3d at
`
`1480 (an inventor may define specific terms used to describe invention, but
`
`must do so “with reasonable clarity, deliberateness, and precision” and, if
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`done, must “‘set out his uncommon definition in some manner within the
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`patent disclosure’ so as to give one of ordinary skill in the art notice of the
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`change” in meaning).
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`Accordingly, we conclude that the broadest reasonable interpretation
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`of “message profile containing outgoing message routing instructions” is a
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`“data record including instructions specifying at least one communication
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`device to which an outgoing message can be routed in response to an
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`incoming exception message.” This construction is consistent with the
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`ordinary and customary meaning of this claim phrase, as would be
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`understood by one with ordinary skill in the art, in light of the claims and
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`Specification of the ’601 patent. See Ex. 1101, 2:14–16, 3:10–13, 4:57–58.
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`2. “at different time periods”/ “at different times” (claim 19)
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`Claim 19 depends directly from claim 1 and recites that the
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`“enabling” step of claim 1 “further comprises the step of enabling selection
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`of different user-defined communication devices to receive outgoing
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`IPR2016-00116
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`exception messages at different time periods in accordance with the message
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`profile, the message profile being definable to have the exception messages
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`forwarded to different specified remote communication devices at different
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`times.” Ex. 1101, 10:28–34 (italics added). Claim 20 depends indirectly
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`from claim 1 and recites that the “forwarding” step of claim 1 “further
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`comprises the step of enabling selection of different user-defined
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`communication devices to receive outgoing exception messages at different
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`time periods.” Id. at 10:39–42 (italics added).
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`Vivint contends that “[t]he ’601 Patent sets forth the meaning of
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`having the exception messages forwarded to ‘different specified remote
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`communication devices at different times’ and enabling selection of
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`‘different user-defined communication devices to receive outgoing exception
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`messages at different time periods,’ as recited in claims 19 and 20,
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`respectively.” PO Resp. 39. Specifically, Vivint contends, “these terms
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`mean forwarding the exception messages to different specified remote
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`communications devices in accordance with the message profile based on
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`the time of day the exception message was received.” Id. at 39–40 (citing
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`Ex. 1101, 4:40–57; Ex. 2010 ¶¶ 137–138). Vivint points out that the ’601
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`patent states, for example, “[t]he user may also set, as part of the message
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`profile, that different messages be delivered to different individuals at
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`different times of the day, week, month, season, or year.” Id. at 40 (quoting
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`Ex. 1101, 4:50–57 (emphasis added by Vivint)). Vivint notes that, although
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`the ’601 patent refers to all of these times for convenience as “time of day,”
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`it does not mean that “the various times . . . are equal to just time of day.”
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`Id. at 40 n.7.
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`Only terms or phrases that are in controversy in this proceeding need
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`to be construed, and then only to the extent necessary to resolve the
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`controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361
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`(Fed. Cir. 2011) (explaining that “claim terms need only be construed ‘to the
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`extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v.
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`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Alarm.com
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`does not challenge Vivint’s interpretation of “at different time periods” and
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`“at different times” as referring to different times of day (or week, month,
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`season, or year), and indeed, appears to rely on Vivint’s interpretation in its
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`Reply. See Pet. Reply 21–22. Accordingly, we agree with and adopt
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`Vivint’s interpretation and determine that it is unnecessary to further
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`construe the phrases “at different time periods” and “at different times.”
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`3. “communication device identification codes” (claim 26)3
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`Claim 26 depends from claim 22 and recites, in part, that the server of
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`claim 22 “further compris[es] . . . memory in which communication device
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`identification codes of all of said user-defined communication remote
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`devices are stored, said communication device identification codes being
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`configured in a plurality of said user-defined message profiles.” Ex. 1101,
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`11:20–29. In its Petition, Alarm.com does not present a construction for the
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`claim term “communication device identification codes.” See generally Pet.
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`6–9. Instead, in support of its contention that Shetty teaches that element of
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`claim 26, Alarm.com merely quotes Shetty’s disclosure that “user profile
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`3 The parties did not present their claim construction positions regarding the
`claim term “communication device identification codes” separate and apart
`from their arguments regarding whether Shetty teaches or suggests this
`claim term.
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`database 106 contains information relating to all users of the data manager
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`including a user profile,” and cross-references a portion of its claim chart for
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`claim 1 that in turn quotes, inter alia, Shetty’s disclosure that “the user
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`profile defines the . . . method of notification” as supporting its contention
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`that Shetty teaches this element. Pet. 30 (claim chart for claim 26, quoting
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`Ex. 1103, 2:18–19 and cross-referencing claim chart for claim element
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`“1(c)” (see Pet. 20–21 (quoting Ex. 1103, 2:18–21, 2:34–35, 4:8–10))).
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`In its Patent Owner Response, Vivint directs us to co-pending Case
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`IPR2016-00161, in which we determined at the institution stage that Shetty’s
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`disclosure of sending a notification to a user, at most, identifies telephone
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`numbers or email addresses, which do not amount to “communication device
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`identification codes” recited in dependent claim 11 of the related ’654
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`patent. PO Resp. 38 (citing Alarm.com Inc. v. Vivint, Inc., Case IPR2016-
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`00161, slip op. 40–41 (PTAB May 12, 2016) (Paper 16)). For instance,
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`Vivint argues that an email address is not associated with a specific
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`communication device because “a user could use just about any computing
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`device with Internet access to access email.” Id. at 38 (citing Ex. 2012
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`(Deposition Transcript of Mr. Zatarain), 89:15–90:11).
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`In its Reply, Alarm.com counters that, outside of dependent claim 26,
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`the Specification of the ’601 patent does not use the term “communication
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`device identification code.” Pet. Reply. 16. Alarm.com argues that “[t]he
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`’601 specification and description of the preferred embodiment repeatedly
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`teach that what is stored in the message profile is information sufficient to
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`identify ‘by which media (fax, e-mail, PCS) . . . individuals are notified’ of
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`exception conditions.” Id. (citing Ex. 1101, 4:43–45, 7:50–58; Ex. 1130
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`¶¶ 136–39). Alarm.com further contends that the Specification of the ’601
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`IPR2016-00116
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`patent uses the term “device” to describe the “user-defined communication
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`device[s]” of the claims in only a single paragraph, wherein it “describes the
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`process of ‘deliver[y] to the specified end device or devices’ . . . described as
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`an ‘e-mail box’, ‘fax machine’, ‘pager or PCS’ and ‘voice mail box’.” Id. at
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`17 (citing Ex. 1101, 6–21). Alarm.com concedes that, “[o]bviously, an
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`‘email box’ is a logical rather than a physical ‘device[,]’ . . . different
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`physical fax machines might be substituted on a fax line, and a call to a
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`land-line telephone may ring multiple telephone devices within a home,” but
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`contends, “[n]evertheless, there is no teaching in the ’601 Patent of storage
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`in the ‘user message profile’ of any [communication device identification
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`code] more specific than, e.g., a telephone number, fax number, or email
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`address.” Id. Alarm.com further contends that no possible utility is
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`suggested for storing any more specific identification codes, and that the
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`disclosed telephone number, fax number and email address represent
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`identifiers for all of the specific devices enumerated in dependent claims 11
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`and 29 of the ’601 patent. Id. (citing Ex. 1130 ¶¶ 140–143).
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`Alar