Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 14
`
`Entered: May 4, 2016
`
`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.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`571-272-7822
`
`
`Paper No. 14
`
`Entered: May 4, 2016
`
`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.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
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`IPR2016-00116
`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, 2, 4–23, 25–31, and
`33–41 of U.S. Patent No. 6,147,601 (Ex. 1101, “the ’601 patent”). Pet. 3.
`Vivint, Incorporated (“Patent Owner”) filed a Preliminary Response. Paper
`12 (“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 persuaded that
`Petitioner demonstrates a reasonable likelihood of prevailing in showing the
`unpatentability of claims 1, 2, 4–15, 17–23, 25–31, and 33–41 of the ’601
`patent. We, however, are not persuaded that Petitioner demonstrates a
`reasonable likelihood of prevailing in showing the unpatentability of claim
`16 of the ’601 patent. Accordingly, we institute an inter partes review only
`as to claims 1, 2, 4–15, 17–23, 25–31, and 33–41 of the ’601 patent.
`
`
`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”), 3. By
`Order dated January 28, 2016, we stayed the Request, pursuant to 37 C.F.R.
`§ 42.3, pending our decision on this Petition and the related petitions in
`Cases IPR2015-02004 and IPR2016-00155, and we also authorized
`Petitioner to file a Brief limited to addressing certain issues related to the
`requested Certificate of Correction. See Paper 9 (“Order”). Petitioner filed
`its Brief shortly before Patent Owner filed its Preliminary Response.
`Paper 11 (“Pet. Brief”).
`
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`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. 1101, at [21], [22], [45], [54]. The ’601 patent also
`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 1:16–
`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
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`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
`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
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`“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,
`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.
`
`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. In addition to this Petition, Petitioner
`also filed two other petitions challenging certain claims of the ’601 patent
`(Cases IPR2015-02004 and IPR2016-00155). In those cases, after taking
`into account the arguments presented in the preliminary responses filed by
`Patent Owner, we concluded that the information presented in the petitions
`did not establish that there was a reasonable likelihood that Petitioner would
`
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`prevail in challenging any of the claims of the ’601 patent as unpatentable
`under 35 U.S.C. § 102 or § 103 on the asserted grounds presented. Case
`IPR2015-02004, Paper 14; Case IPR2016-00155, Paper 14.
`Petitioner has also filed ten other 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
`IPR2015-02008); and (5) U.S. Patent No. 7,884,713 B1 (Cases IPR2015-
`01965 and IPR2015-01967). Pet. 1; Paper 8, 1–2.
`
`C. Illustrative 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;
`d) determining whether an incoming message is an incoming
`exception message indicative of improper operation of the
`piece of remote equipment;
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`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.
`Ex. 1101, 10:43–11:2. Challenged claims 2 and 4–21 depend directly or
`indirectly from claim 1; and challenged claims 23, 25–31, and 33–41 depend
`
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`directly or indirectly from claim 22. Id. at 9:7–10, 9:16–10:42, 11:3–8,
`11:16–12:5, 12:14–54.
`
`D. References Relied Upon
`
`Petitioner relies on the following references:
`Exhibit
`Reference
`1103 U.S. Patent No. 5,808,907, issued Sept. 15, 1998
`(“Shetty”)
`1104 U.S. Patent No. 6,040,770, issued Mar. 21, 2000
`(filed Sept. 4, 1998) (“Britton”)
`1105 U.S. Patent No. 6,034,970, issued Mar. 7, 2000
`(filed July 2, 1997) (“Levac”)
`1106 U.S. Patent No. 5,061,916, issued Oct. 29, 1991
`(“French”)
`
`Pet. 3. Petitioner also relies on a declaration of Arthur Zatarain, PE
`(Ex. 1107).
`
`E. Asserted Grounds of Unpatentability
`
`Petitioner challenges the patentability of the challenged claims on the
`following grounds:
`
`Reference(s)
`Shetty
`
`Basis
`§ 103
`
`Shetty and Levac
`
`§ 103
`
`Claim(s) Challenged
`1, 2, 4, 6, 10–13, 15–17, 22,
`23, 25–27, 29, 33–35, and 38
`1, 2, 4, 6, 7, 10–13, 15, 19,
`22, 23, 25–29, and 33–35
`
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`
`Reference(s)
`Shetty and Britton;
`and/or Shetty,
`Levac, and Britton
`Shetty and French;
`and/or Shetty,
`Levac, and French
`Shetty, Levac,
`Britton, and French
`
`Claim(s) Challenged
`Basis
`§ 103 5, 8, 9, 20, 21, 30, 31, 37, 39,2
`40, and 41
`
`§ 103
`
`14, 17, 18, 36, 38, and 39
`
`§ 103
`
`39
`
`
`Pet. 9–10, 27, 38, 49; Pet. Brief 4–5.
`
`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
`
`
`2 In the Petition, Petitioner alleges that claim 39, as issued, is unpatentable
`over Shetty and French and/or Shetty, Levac, and French. Pet. 56. In
`Petitioner’s Brief, however, Petition contends that claim 39, as corrected by
`Patent Owner’s Certificate of Correction, instead is unpatentable both over
`Shetty and Britton and/or Shetty, Levac, and Britton, and over Shetty,
`Levac, Britton, and French. Pet. Brief 4–5.
`
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`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 and citation
`omitted). A patentee, however, may rebut this presumption by acting as his
`own lexicographer, providing a definition of the term in the specification
`with “reasonable clarity, deliberateness, and precision.” In re Paulsen, 30
`F.3d 1475, 1480 (Fed. Cir. 1994).
`In the Petition, Petitioner proposes constructions for the claim terms
`(1) “message profile containing outgoing message routing instructions” and
`(2) “message generating mechanism.” Pet. 7–9. In response, Patent Owner
`rejects Petitioner’s constructions and proposes an alternative construction for
`the term “message profile.” Prelim. Resp. 7–11.
`
`1. “message profile containing outgoing message routing
`instructions” / “message profile”
`
`The term “message profile containing outgoing message routing
`instructions” is recited in each of independent claims 1 and 22. Ex. 1101,
`8:60–61, 10:57–59. Petitioner argues that the broadest reasonable
`construction of this term is “information identifying a communications
`device or devices to receive an outgoing message from the computer server.”
`Pet. 7. According to Petitioner, “[t]he claimed message profile and routing
`instructions are used to determine at least one ‘user-defined communications
`device’ to receive an outgoing ‘exception message’ from the computer
`server.” Id. Moreover, Petitioner contends that, “[a]lthough certain portions
`of the specification appear to require that the message profile also include
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`information about when and how to send messages (and not simply to which
`devices such messages are sent), this narrower interpretation would be
`inconsistent with the claim language.” Id. Petitioner further contends,
`The specification describes a “message profile” as “a list of who
`to contact via what means depending on which fault has
`occurred” (Ex. 1101 at 2:14-16) and “which exception conditions
`are reported to which individuals . . . [and] by which media (fax,
`e-mail, [personal communication service]) these individuals are
`to be notified.” Ex. 1101 at 4:41-43. However, as used in the
`claims, a “message profile” does not necessarily include all of an
`exception type, media type, and specific device. Dependent
`claims 7 and 8 cover a user specifying device type and specific
`device in the message profile, which would be redundant if
`“message profile” already required those categories.
`Claims 1 and 22 do not merely claim a “message profile,”
`however, but a “message profile containing outgoing message
`routing instructions.” The claim language and specification
`indicate that the “routing instructions” must identify the
`communication device or devices that will receive an outgoing
`message.
`Pet. 7–8.
`Patent Owner counters that the Specification of the ’601 patent sets
`forth a definition of the recited “message profile,” as “a list of who to
`contact via what means depending on which fault has occurred.” Prelim.
`Resp. 7. According to Patent Owner, “acting as its own lexicographer, the
`Patent Owner set forth the meaning of ‘message profile’ with clarity and
`deliberateness, using a definitional syntax: ‘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 8 (quoting Ex. 1101, 2:14–16). Patent Owner
`contends that, although Petitioner “argues that ‘a “message profile” does not
`necessarily include all of an exception type, media type, and specific device’
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`based on differentiation from dependent claims 7 and 8,” Petitioner
`“provides no explanation as to how its argued claim differentiation would
`apply to ‘a list of who to contact,’ which is a part of the ‘message profile’
`definition.” Id. (quoting Pet. 8). Patent Owner also contends that, “[i]n
`addition to glossing over the definition in the specification, [Petitioner’s]
`approach to its construction glosses over the claim language . . . by solely
`interpreting the term ‘outgoing routing instructions.’” Id. at 9. According to
`Patent Owner, “[t]o satisfy the claim language, a message profile certainly
`must ‘contain[] outgoing routing instructions,’” but “the term ‘message
`profile’ itself has meaning as well.” Id. Finally, Patent Owner contends that
`Petitioner’s construction also contradicts the claim language by “ignor[ing]
`that the phrase recites ‘outgoing message routing instructions’ in the plural,”
`whereas “[a]ll that is required to satisfy the Petition’s proposed construction
`is information identifying a single destination of an outgoing message.” Id.
`On this record, and for purposes of this Decision, we determine that
`neither Petitioner’s nor Patent Owner’s proposed constructions represent the
`broadest reasonable interpretation of the term “message profile containing
`outgoing routing instructions,” as recited in independent claims 1 and 22.
`As an initial matter, we are not persuaded that “Patent Owner set forth
`the meaning of ‘message profile’ with clarity and deliberateness, using a
`definitional syntax.” See Prelim. Resp. 8; see also 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 done,
`must “‘set out his uncommon definition in some manner within the patent
`disclosure’ so as to give one of ordinary skill in the art notice of the change”
`in meaning). Although Patent Owner accurately quotes the specification of
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`the ’601 patent as 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’” (id. (quoting Ex. 1101, 2:14–16)), that statement, including its use
`of the permissive word “may,” 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. As Petitioner points out, that statement does
`not require that the claimed message profile must “necessarily include all of
`an exception type, media type, and specific device.” Pet. 8. Nor does it
`necessarily require “a list of who to contact.” Prelim. Resp. 8.
`Although the ’601 patent includes, as an example, that a customer
`may want to send certain non-emergency condition notifications to certain
`individuals via a certain medium and emergency condition notifications to
`different individuals via other means (Ex. 1101, 2:5–14), we do not read into
`that example any clear disclaimer of claim scope. See 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.”). Indeed, the ’601 patent also
`includes other 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 at different times (id. at 4:57–58).
`Although we conclude that Patent Owner’s proposed construction
`does not constitute the broadest reasonable interpretation of “message
`profile,” we also are not persuaded that Petitioner’s proposed construction is
`correct. First, even though independent claim 22 recites that “said server
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`forwards at least one outgoing exception message” (Ex. 1101, 10:65–66), we
`find no corresponding language recited in independent claim 1 that would
`require that an outgoing message specifically must be “receive[d] . . . from
`the computer server,” as proposed by Petitioner. Pet. 7. Second, claim 1
`recites “forwarding at least one outgoing exception message based on the
`incoming message to at least one user-defined communication device
`specifiable in the . . . message profile” (Ex. 1101, 8:67–9:3 (emphasis
`added)), and claim 22 recites that an outgoing exception message is
`forwarded to at least one predetermined user-defined remote communication
`device based on an incoming exception message “as specified in said . . .
`message profile” (id. at 10:65–11:2 (emphasis added)). Accordingly, we
`interpret the claimed message profile to “specify” a communication device.
`Third, the Specification describes a message profile as “data” that may be
`recorded in a database. See, e.g., Ex. 1101, 4:46–47, 6:50–52, 8:32–33.
`Based on the above considerations, we conclude that on this record,
`and for purposes of this Decision, that the broadest reasonable interpretation
`of “message profile containing outgoing message routing instructions” in
`claims 1 and 22 is a “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.”
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`2. “message generating mechanism”
`
`Petitioner contends that the term “message generating mechanism,” as
`recited in independent claim 22, should be treated as a means-plus-function
`term under 35 U.S.C. § 112 ¶ 6.3 Pet. 8.
`An element in a claim for a combination may be expressed as a
`means . . . for performing a specified function without the recital
`of structure, material, or acts in support thereof, and such claim
`shall be construed to cover the corresponding structure, material,
`or acts described in the specification and equivalents thereof.
`35 U.S.C. § 112 ¶ 6. A limitation using the term “means for” creates a
`rebuttable presumption that the drafter intended to invoke 35 U.S.C. § 112
`¶ 6. Conversely, when a claim term lacks the word “means,” a presumption
`exists that the claim should not be interpreted under § 112 ¶ 6, and this
`presumption can be overcome only if it is demonstrated that the claim terms
`fails to “‘recite sufficiently definite structure’ or else recites ‘function
`without reciting sufficient structure for performing that function.’”
`Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (en
`banc in relevant part). When construing a means-plus-function limitation
`under 35 U.S.C. § 112 ¶ 6, we must first identify the claimed function, and
`we then look to the specification to identify the corresponding structure that
`performs the claimed function. Med. Instrumentation & Diagnostics Corp.
`v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003); Cardiac Pacemakers,
`Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1119 (Fed. Cir. 2002). Our Rules
`
`
`3 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.
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`specifically require that the petition identify the corresponding structure in
`proposing a construction for a means-plus-function claim limitation.
`37 C.F.R. § 42.104(b)(3). “This inquiry is undertaken from the perspective
`of a person of ordinary skill in the art.” Cardiac Pacemakers, 296 F.3d at
`1113. However, if “this inquiry reveals that no embodiment discloses
`corresponding structure, the claim is invalid for failure to satisfy the
`definiteness requirement of § 112, ¶ 2.” Id. at 1114. Indefiniteness,
`however, may not be argued as a ground for unpatentability in an inter
`partes review. See 35 U.S.C. § 311(b).
`Petitioner contends that the “message generating mechanism” recited
`in claim 22 “is a purely functional recitation and does not recite any definite
`structure for performing the function of ‘generating messages.’” Pet. 8
`(citing Williamson, 792 F.3d at 1348–49). Petitioner further contends that
`the Specification of the ’601 patent “does not disclose a sufficient structure
`for performing the function of ‘generating messages’” and, “[t]hus, the claim
`is indefinite.” Id. at 9. Petitioner continues:
`However, if the Board concludes that [claim 22] is not
`indefinite, Petitioner contends
`that
`the only possible
`corresponding “structure” in the specification is “a processor of
`the interface unit executing an algorithm that generates a
`message including an indication of message format, an indication
`of the equipment to which the message relates, and an indication
`of the specific exception condition if an exception condition
`exists”, as disclosed in lines 5:23–35 (Ex. 1101).
`
`Id.
`
`Patent Owner does not propose a construction of “message generating
`unit,” but responds that Petitioner has failed to show that “message
`generating mechanism” should be construed under 35 U.S.C. § 112 ¶ 6.
`Prelim. Resp. 10. Patent Owner contends that a person of ordinary skill in
`
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`the art, reading the claims as a whole, “would have understood that the
`claims recite sufficiently definite meaning as to the structure of the term”:
`Notably, in contrast to Williamson, which used the “module-for”
`construct in its claims[, c]laim 22 recites an “interface unit
`having a message generating mechanism,” and affirmatively
`recites an attribute of the “message generating mechanism”: that
`“said message generating mechanism generates an incoming
`exception message indicative of the exception condition and
`forwards said incoming exception message to said server.”
`[Petitioner] does not cite a single case at the Federal Circuit or
`the Board where § 112 ¶ 6 has been applied to similar language
`without even using the word “for.”
`Id. at 10–11.
`In this case, we agree with Patent Owner that the term “message
`generating mechanism” is not a means-plus-function limitation and is not
`subject to construction under 35 U.S.C. § 112 ¶ 6. As reproduced in
`Section I.C., supra, claim 22 recites, in part, “an interface unit, locally
`connected to said sensor, said interface unit having a message generating
`mechanism.” Ex. 1101, 10:48–50; see id. at 2:55–58 (“The inventive system
`includes a sensor in communication with a piece of remote equipment, and
`an interface unit, connected to the sensor, having a message generating
`mechanism.”). It is clear from the plain language of claim 22 that the recited
`message generating mechanism is part of the recited interface unit and is not
`merely a recitation of function without corresponding structure. As Patent
`Owner points out, claim 22 also establishes a structural relationship between
`the message generating mechanism and other structural elements, including
`the recited sensor, remote equipment, and server, in addition to the interface
`unit. Prelim. Resp. 11. Because the ordinary meaning of this term as a
`message generating component of the recited interface unit is clear, we need
`
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`not provide any further construction of message generating mechanism at
`this stage of the proceeding. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d
`1355, 1361 (Fed. Cir. 2011) (explaining that “claim terms need only be
`construed ‘to the extent necessary to resolve the controversy’” (quoting
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999))).
`
`3. Other Claim Terms
`
`Neither Petitioner nor Patent Owner offers constructions of any other
`claim term or phrase in the challenged claims. Only terms or phrases that
`are in controversy in this proceeding need to be construed, and then only to
`the extent necessary to resolve the controversy. Vivid Techs., 200 F.3d at
`803. For purposes of this Decision, no other claim terms or phrases require
`express construction.
`
`B. Asserted Grounds of Unpatentability
`
`1. Principles of Law
`
`A patent claim is unpatentable under 35 U.S.C. § 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
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`prior art; (3) the level of skill in the art;4 and (4) objective evidence of
`nonobviousness, i.e., secondary considerations.5 Graham v. John Deere
`Co., 383 U.S. 1, 17–18 (1966). We analyze the asserted grounds with the
`principles stated above in mind.
`
`2. Obviousness over Shetty
`
`Petitioner contends that claims 1, 2, 4, 6, 10–13, 15–17, 22, 23, 25–
`27, 29, 33–35, and 38 of the ’601 patent are unpatentable under 35 U.S.C.
`§ 103 over Shetty and the knowledge of a person of ordinary skill in the art.
`Pet. 9–27.
`We begin our analysis with a brief overview of Shetty, and we then
`address the parties’ contentions with respect to the challenged claims.
`
`a. Overview of Shetty
`
`Shetty discloses a “method for providing information relating to a
`machine to a user.” Ex. 1103, Abstract. The method includes the steps of
`sensing predetermined events relating to the machine, producing
`corresponding event signals, delivering the event signals to a remote site,
`comparing the event signals to a profile of events corresponding to the user,
`and delivering a notification signal to the user if the event signals match the
`profile. Id. Shetty explains that “[c]omputers and electronics are becoming
`increasingly common on many machines.” Id. at 1:12–13. Shetty provides,
`
`
`4 Petitioner proposes an assessment of the level of skill in the art as of
`January 1999. Pet. 6–7. Patent Owner does not challenge this assessment or
`propose an alternative assessment. For purposes of this Decision and to the
`extent necessary, we adopt Petitioner’s assessment.
`5 Patent Owner does not contend in its Preliminary Response that such
`secondary considerations are present.
`
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`as an example, that earthmoving machines now include many on-board
`sensors for recording parameter data during operation, and that on-board
`controllers also may calculate parameters of the machine based on sensor
`data. Id. at 1:13–17. Shetty further explains that, “with the large increase in
`the number of sensors and data being collec
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