UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`——————
`
`ALARM.COM INC.
`Petitioner
`
`v.
`
`VIVINT, INC.
`Patent Owner
`
`——————
`
`Case IPR2016-00116
`Patent 6,147,601
`
`——————
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`
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`

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`Case IPR2016-00116 of
`U.S. Patent No. 6,147,601
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`TABLE OF CONTENTS
`
`
`I.
`
`SHETTY TEACHES A MESSAGE PROFILE CONTAINING
`OUTGOING MESSAGE ROUTING INSTRUCTIONS .....................1
`
`A. Vivint's Proposed Construction Of “Message Profile”
`Should Again Be Rejected. .........................................................1
`
`B.
`
`Even Applying Vivint’s Incorrect Construction, Shetty
`Teaches a Message Profile. .........................................................3
`
`II.
`
`SHETTY TEACHES REMOTE CONFIGURATION OF THE
`MESSAGE PROFILE ...........................................................................4
`
`A.
`
`B.
`
`Shetty Teaches Configuration of a Message Profile via a
`User Interface. .............................................................................4
`
`Shetty Discloses Remote Configuration, as Further
`Confirmed by the Disclosure of HP-UX. ....................................7
`
`C. Modifying Shetty’s Remote Access to Include
`Configuration Was Obvious and Well within the Skill
`Level of a POSA. ........................................................................9
`
`III. SHETTY DISCLOSES THE CLAIMED COMMUNICATION
`DEVICE IDENTIFICATION CODES .............................................. 15
`
`A.
`
`The ’601 Patent’s Preferred Embodiment, and Indeed Only
`Disclosure of “Communication Device Identification
`Codes”, Is the Storage of Phone Numbers and Email
`Addresses. ................................................................................ 16
`
`B. As a Matter of Law, “Communication Device
`Identification Code” Must Be Construed Broadly Enough
`to Include Phone Numbers and Email Addresses. ................... 17
`
`IV. SHETTY AND LEVAC RENDER OBVIOUS THE “TIME”
`LIMITATIONS OF CLAIMS 19 and 20 ........................................... 20
`
`A.
`
`Specifying the Runtime for a Message Results in Sending
`Outgoing Messages at Certain Times. ..................................... 21
`
`B. A POSA Had Motivation to Combine Shetty and Levac. ....... 22
`
`V.
`
`SHETTY AND BRITTON RENDER OBVIOUS THE “NORMAL
`STATUS” CLAIMS ........................................................................... 23
`
`A.
`
`The Parallel Operation of the Britton and ’601 Normal
`Status Functions. ...................................................................... 24
`
`
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`ii
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`

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`B. Alarm.com’s Proposed Combination Does Not Require
`Modification of Britton’s Check-In Messages. ........................ 26
`
`VI. CONCLUSION .................................................................................. 27
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`Case IPR2016-00116 of
`U.S. Patent No. 6,147,601
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`Page | iii
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`Case IPR2016-00116 of
`U.S. Patent No. 6,147,601
`I. SHETTY TEACHES A MESSAGE PROFILE CONTAINING
`OUTGOING MESSAGE ROUTING INSTRUCTIONS
`
`Claims 1 and 22 of the ’601 Patent disclose a “message profile”, which the
`
`Board correctly construed as 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”. Institution Decision, 14. Vivint
`
`disagrees, but its proposed construction is meritless. See infra § I.A. Because the
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`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.
`
`Patent Owner’s Resp., 32-35 (citations omitted) (“Response”). However, under
`
`either the Board’s or Vivint’s construction, Shetty teaches a “message profile”.
`
`A. Vivint’s Proposed Construction Of “Message Profile” Should
`Again Be Rejected.
`
`Vivint contends that “message profile” should be construed as a “data record
`
`including instructions specifying which communication device associated with
`
`which individuals an outgoing message can be routed in response to an incoming
`
`exception message”. Response, 32.
`
`Vivint largely rehashes arguments the Board previously rejected in its
`
`Institution Decision. Patent Owner’s Prelim. Resp., 7-9 (arguing that Patentee was
`
`his own lexicographer and urging similar construction); Response, 33-35. Those
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`arguments should be rejected once again for the same reasons the Board previously
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`Case IPR2016-00116 of
`U.S. Patent No. 6,147,601
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`articulated:
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`1) Vivint’s construction proposes an “uncommon definition”. No such
`
`“uncommon definition” is found in the Patent. Institution Decision, 12-13.
`
`2) The ’601 Patent’s teachings “at most reflect[] that ‘a list of who to contact
`
`via what means depending on which fault has occurred’ could be”—not must be—
`
`“an example of a message profile”. Id.
`
`Vivint cites the language of the ’601 Patent, stating that “[s]uch a list of who
`
`to contact via what means ... may be referred to as a ‘message profile’” (Response,
`
`33), but this adds nothing. Such a list indeed fits within the Board’s construction,
`
`but adds no support for a limitation requiring that a message profile identify
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`individuals. Institution Decision, 12-13; Ex. 1130, ¶¶18-26.
`
`Lines 4:39-47 of the ’601 Patent likewise do not support Vivint’s narrower
`
`construction of “message profile”. Response, 34. 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
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`make such details part of the term construction improperly imports the
`
`specification into the claims. Petition, 7-8; Ex. 1130, ¶¶27-34.
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`Case IPR2016-00116 of
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`As such, Vivint’s proposed construction of the “message profile” term
`
`should be rejected.
`
`B.
`
`Even Applying Vivint’s Incorrect Construction, Shetty Teaches a
`Message Profile.
`
`Even if a message profile could properly be construed to require a “list of
`
`who to contact” (which would be inconsistent with the BRI of this term), Shetty
`
`still discloses this element.
`
`Shetty discloses a “user profile database,” Ex. 1103, 2:18-21, containing one
`
`or more separate profiles each associated with a user (“[e]ach profile of each
`
`user”), each of which “may also trigger a different mode or modes of
`
`communication”. Id., 2:53-60. Shetty teaches a “batch processing means” that
`
`compares all of the “events” on the server with all of the user profiles, sending
`
`notifications when “all the conditions” of user profiles are met. Id., 2:38-45;
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`Ex. 1130, ¶¶40-41. From these disclosures, a POSA would understand that the
`
`Shetty system may be configured such that when a particular event occurs,
`
`specified individuals would be notified via specified media/devices. Ex. 1130,
`
` 3
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`
`
`¶¶38-43.
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`
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`

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`II. SHETTY TEACHES REMOTE CONFIGURATION OF THE MESSAGE
`PROFILE
`
`Contrary to Vivint’s arguments (Response, 8, 11-12), Shetty teaches a user
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`Case IPR2016-00116 of
`U.S. Patent No. 6,147,601
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`interface for remote configuration of a message profile.
`
`A.
`
`Shetty Teaches Configuration of a Message Profile via a User
`Interface.
`
`Vivint speciously argues that “Shetty does not teach a customizable system”
`
`because Shetty does not expressly use the word “customizable”. Response, 9-10.
`
`However, Shetty describes a system designed to handle the monitoring of an
`
`arbitrary set of sensors of an arbitrary fleet of machines, maintaining multiple user
`
`profiles that determine whether, when and how each user will be notified of events
`
`specified individually in each profile. Ex. 1103, 1:52-2:61. This is a description of
`
`a system that not only may be, but must be, customized and “configured”.
`
`Ex. 1130, ¶¶45-50; Ex. 1118, 48:9-18. To say otherwise is to ignore the plain
`
`sense of Shetty as it would be understood by a POSA—all because the drafter did
`
`not use one particular word.
`
`Shetty further discloses a “user interface [that] allows a user to access ... the
`
`user profile database” that contains the “user profiles” that specify when and how
`
`each user will receive notifications. Ex. 1103, Abstract, 2:18-21, 2:33-36, 2:41-45,
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`FIG 1. Vivint nevertheless argues that Shetty does not disclose permitting the user
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`to “configure” user profiles, because “accessing” and “configuring” the contents of
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`a database are not coextensive in meaning. This is a logical error, because while
`
`indeed not “coextensive,” “configuring” is a subset of what one may do if one has
`
`“access” to such a database. Vivint’s citation to In re Magna Carta and argument
`
`concerning how the ’601 Patent does not use the terms “access” and
`
`“configuration” co-extensively are inapposite, as the question is whether Shetty’s
`
`“access” discloses the ’601 Patent’s “configuration”. Response, 12; Ex. 1130,
`
`¶¶73-74. And the answer to that question is an unequivocal yes.
`
`Vivint concedes this, acknowledging that “updat[ing]” (i.e., modifying) the
`
`contents of a database is one “level[] of access” or “access operation[]”, unless that
`
`access is somehow “controlled”. Response, 13. Vivint and its expert speculate
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`that in some cases users “may” only be permitted access to a database for limited
`
`purposes (id.; Ex. 2010, ¶76)—but Shetty describes user access to user profiles
`
`without suggesting any limitation/restriction on operations that users can perform.
`
`Ex. 1130, ¶¶52-55.
`
`Petitioner’s expert Mr. Zatarain explains that a POSA would understand
`
`“access” as used in Shetty includes the ability to input and “configure” user
`
`profiles. Vivint’s expert concedes that in this context inputting is a form of
`
`configuring. Ex. 1118, 50:3-24. This is all the more true given that Shetty does
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`disclose a user interface providing “access” to the user profile database and does
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`not suggest any other means (or agent) to configure user profiles. Ex. 1130, ¶¶54-
`
`55, 57-59, 62-68.
`
`In addition, Shetty’s express teaching of “access” immediately adjacent to a
`
`teaching of “also allowing the user to input information” establishes that the
`
`concept of “access” includes at least the ability to input information into the fleet
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`and machine database.
`
`“A user interface 110 allows a user to access both the
`
`user profile database 106 and the event database 108. The
`
`user interface 110 also allows the user to input
`
`information relating to the fleet or machine data.”
`
`Ex. 1103, 2:34-37 (emphasis added); Petition, 16. In fact, a POSA would
`
`understand from the word “also” that the user could perform the function of
`
`“inputting information” into all three of the databases (the “user profile”, “event”,
`
`and “fleet and machine” databases), in addition to “accessing” information in those
`
`databases. Ex. 1130, ¶¶69-72; 80-84.
`
`Mr. Zatarain’s opinion in regard to a POSA’s understanding of Shetty’s use
`
`of “access” is informed and supported by four contemporaneous technical
`
`dictionaries, which confirm that a POSA would understand that “access”
`
`encompasses both reading/writing data.
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`Case IPR2016-00116 of
`U.S. Patent No. 6,147,601
`• Ex. 1126.0006: “(A) The process of obtaining data from or placing
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`data into a storage device. ... (B) To obtain data from or place data
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`into a storage device as in (A).
`
`• Ex. 1127.0005: “access ... (4) To obtain data from or to put data in
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`storage.”
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`• Ex. 1128.0006: “[COMPUT SCI] The reading of data from storage or
`
`the writing of data into storage.”
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`• Ex. 1129.0005: “To gain entry to memory in order to read or write
`
`data.”
`
`Ex. 1130, ¶56.
`
`In short, Petitioner is not relying on “inherency” (Response, 13), but on the
`
`plain words and disclosure of Shetty. Shetty teaches user access to the user profile
`
`database, and in the context of the Shetty system, this access includes
`
`configuration of user profiles.
`
`B.
`
`Shetty Discloses Remote Configuration, as Further Confirmed by
`the Disclosure of HP-UX.
`
`Rehashing an argument rejected by the Board in its Institution Decision (at
`
`23-25), Vivint again wrongly contends that even if Shetty discloses configuration
`
`of message profiles, it does not disclose remote configuration (Response, 17).
`
`Shetty expressly teaches that users may “access” data on a “data manager”
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`Case IPR2016-00116 of
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`“via ... remote work stations”, which are depicted in Figure 4 as communicating
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`with the data manager by modem-type connection. See § II.A; Petition, 17;
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`Ex. 1130, ¶¶75-76, 82-84.; Ex. 1103, 4:8-10; Ex. 1118, 74:2-75:16. As discussed
`
`above, this access allows “configuration”.
`
`Vivint also incorrectly suggests that Shetty’s “remoteness” is limited to the
`
`retrieval of email. Response, 18-19. To the contrary, Shetty expressly states that
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`users can “access the data stored on the third work station and receive electronic
`
`mail ...”. Ex. 1103, 4:8-10 (emphasis added). Vivint’s argument that HP-UX does
`
`not by itself teach remote access to a message profile (Response, 20) misses the
`
`point. HP-UX is an operating system, not application software, and Petitioner
`
`never contended that HP-UX itself discloses remote configuration. However, as
`
`Mr. Zatarain has explained, HP-UX is a multiuser network operating system
`
`specifically designed to support software and network operations such that a user
`
`may interact with software remotely. Thus, a POSA would see the use of HP-UX
`
`in the preferred embodiment as consistent with and confirming the network-based
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`implementation depicted in Figure 4 and the remote access capability described in
`
`Shetty’s specification. Ex. 1107, ¶82; Ex. 1130, ¶¶85-88. More specifically, when
`
`Shetty further teaches that it is the “user interface 110” software—in connection
`
`with the specified HP-UX operating system—that “allows a user to access both the
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`U.S. Patent No. 6,147,601
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`user profile database 106 and the event database 108”, it is readily apparent to the
`
`POSA how the “access ... via ... remote work stations” disclosed in column 4 is
`
`achieved. Ex. 1130, ¶¶92-93.
`
`Vivint’s argument that HP-UX’s “remsh” command teaches away from
`
`running Shetty’s “user interface 110” remotely is a red herring and depends on a
`
`selective quotation by Vivint from Exhibit 2016. It may be true that the particular
`
`“remsh” command is not suited to remote execution of interactive commands in an
`
`HP-UX network system, but neither Shetty nor Petitioners mentioned “remsh”. In
`
`fact, other HP-UX commands do support remote execution of interactive software,
`
`as the very next sentence—omitted by Vivint—reveals:
`
`“Do not use remsh to run an interactive command, such
`
`as vi or more. With some interactive commands, remsh
`
`hangs. To run interactive commands, log into the remote
`
`host with rlogin [‘remote login’].”
`
`Ex. 2016, 13•14 (bold in original, italics added). The argument that HP-UX
`
`“teaches away” from remote access, is both baseless and false. Ex. 1130, ¶¶89-94.
`
`C. Modifying Shetty’s Remote Access to Include Configuration Was
`Obvious and Well within the Skill Level of a POSA.
`
`Even if Shetty had disclosed only local read-access to the user profile
`
`database, modifying Shetty to enable remote configuration of user profiles would
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`have been both obvious and well within a POSA’s skill level.
`
`i.
`
`Extending Shetty’s Remote Access to Include Configuration
`Was Obvious.
`
`There are only two basic means of access to a database stored on a network
`
`server: local (directly from the server) or remote. Ex. 1118, 72:5-15. There are
`
`only two basic “access” operations on a database: reading and writing. Ex. 1118,
`
`38:15-22. It should be undisputed that a POSA would understand Shetty to teach
`
`providing read/write access at least directly, so that the complex and user-specific
`
`user profiles described in column 2 may be input. It should be undisputed that
`
`Shetty teaches at least “read” access of the databases described in the disclosure
`
`“via . . . remote work stations”. Ex. 1103, 4:8-10. It is evident that Shetty at least
`
`taught three out of four of the possible modes of access: direct read-only; direct
`
`read/write; and remote read-only. The possibility of enabling remote write access,
`
`thereby enabling remote configuration is the single, supposedly missing capability.
`
`But, the convenience of enabling this capability in a system expressly designed to
`
`provide notifications to a plurality of remote users concerning a plurality of mobile
`
`machines through the notification means of each user’s choice would also have
`
`been obvious. Ex. 1130, ¶¶101-11.
`
`As the Supreme Court instructed in KSR International Co. v. Teleflex Inc.,
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`550 U.S. 398 (2007):
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`“When there is a design need or market pressure to solve
`
`a problem and there are a finite number of identified,
`
`predictable solutions, a person of ordinary skill has good
`
`reason to pursue the known options within his or her
`
`technical grasp. If this leads to the anticipated success, it
`
`is likely the product not of innovation but of ordinary
`
`skill and common sense.” Id., at 421.
`
`Here, the addition of a remote write capability, enabling remote
`
`configuration, would have been not merely one of a “finite number” of possibilities
`
`to enhance user convenience, but the only “missing link” in the system’s
`
`configuration capabilities. Ex. 1130, ¶¶112-15.
`
`As the Board has already concluded once, Vivint is wrong to dismiss this as
`
`hindsight. Response, 14; Prelim Resp., 47-49; Institution Decision, 24-25. As Mr.
`
`Zatarain explained, Shetty itself provided the motivation for and pointed to
`
`enabling remote configuration because it teaches remote notification and disclosed
`
`remote access to the data manager. Ex. 1107, ¶83; Ex. 1103, 2:41-45, 4:8-10, FIG
`
`2, FIG 4; Ex. 1130, ¶¶95-98. Further, remote configuration would have been
`
`suggested by commercially available, contemporaneous prior art systems, such as
`
`alarm auto-dialers, that already had these capabilities. Ex. 1107, ¶84; Ex. 1130,
`
`
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`11
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`¶¶99-100.
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`Vivint argues that none of these prior art systems singly taught remotely
`
`configuring a message profile, but Petitioner only argues that these prior art
`
`systems provide motivation to combine Shetty’s teachings. Because remote input
`
`of other types of configuration information in alarm systems was known, a POSA
`
`would have been motivated to do so for Shetty’s user profile database. Ex. 1130,
`
`¶¶99-100.
`
`Likewise, the art of record during prosecution of the ’601 Patent makes clear
`
`that configuration of message profiles specifically was well known. For instance,
`
`French (Ex. 1106) teaches configuration of a message profile. Likewise, U.S.
`
`Patent No. 5,400,246 (“Wilson”) (Ex. 1123), over which the ’601 Patent was
`
`initially rejected (Petition, 5-6; Ex. 1102.0065-66), also teaches message profile
`
`configuration, such as configuring a PC to dial the police or send a text message
`
`when a vehicle has been burglarized. Ex. 1123, 33:28-34:15; Ex. 1130, ¶¶129-31.
`
`Finally, as Mr. Zatarain also explained, HP-UX as early as 1984 both disclosed,
`
`made routine, and made it easy to support remote user interfaces. Ex. 1107, ¶82;
`
`Ex. 1130, ¶¶89-94. Therefore, unlike the challengers in Mintz and Stryker,
`
`Petitioner here did not support its modification simply by arguing that it was
`
`simple to do so, but with evidentiary support. Response, 14-15 (citing Mintz v.
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`Dietz & Watson, 679 F.3d 1372 (Fed. Cir. 2012); Stryker Corp. v. Karl Storz
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`Endoscopy-America, Inc., IPR2015-00677, Paper 15 (P.T.A.B. Sept. 2, 2015).
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`ii.
`
`Extending Shetty’s Remote Access to Include Configuration
`Was Well within the Skill Level of a POSA and Required
`Only Routine Application of Well Known Techniques.
`
`As the above suggests, Vivint’s contentions about the difficulty of the
`
`modification are without merit. (Response, 16, 22) Indeed, no programming
`
`whatsoever would be needed. Because Shetty taught a program (“user interface
`
`110”) allowing for remote access (Ex. 1130, ¶126), only the routine application of
`
`well-known networking and user interface techniques would be required: the
`
`straightforward use of HP-UX’s rlogin [“remote log-in”] command to invoke
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`Shetty’s user interface 110 (the particular program that “allows a user to access
`
`both the user profile database 106 and the event database 108”) from a remote
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`terminal connected to the network would, without any additional steps, enable
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`remote read/write access and thus remote configuration. Ex. 1103, 2:34-35;
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`Ex. 1107, ¶85; Ex. 1130, ¶¶125-28.
`
`Vivint argues that modifying Shetty to allow for configuration of the profile
`
`database “introduces a host of issues with database integrity and security”
`
`(Response, 16), but this is an orthogonal concern not discussed in Shetty and
`
`irrelevant to the question of whether it was within the skill of a POSA to extend
`
`Shetty to include remote configuration. Any network system can be vulnerable to
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`concerns about “database integrity and security,” and because Shetty describes a
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`network-based system that provides for “access” to databases from “remote work
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`stations,” including “input[ting] information relating to the fleet or machine data”
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`(Ex, 1103, 2:35-37), it would not be immune to those concerns regardless of
`
`whether it enabled remote configuration. But the security steps that a POSA
`
`should or would take to strengthen the security of a remotely configurable
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`monitoring system is not a topic addressed by either Shetty or the claims of the
`
`’601 Patent. That is a separate question and a separate art, and has no relevance to
`
`the validity of the claims of the ’601 Patent over Shetty. Ex. 1130, ¶¶119-24.
`
`iii. Vivint’s Other Criticisms Are Faulty.
`
`Vivint mischaracterizes three paragraphs of Mr. Zatarain’s declaration as not
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`“cit[ing] to a single piece of corroborating evidence”. But those paragraphs do cite
`
`to corroborating evidence in Shetty, as Vivint admits in a footnote (Response, 24
`
`n.6). Specifically, Shetty explicitly teaches users using workstations remotely to
`
`access both a database server and a third workstation. Ex. 1103, 4:5-15. Shetty
`
`also teaches that users access the user profile database via a user interface. Id.
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`2:34-35. As the Petition explained, it would be obvious to combine Shetty’s
`
`remote access teachings with Shetty’s teaching of user profile database access.
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`
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`14
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`Pet. 16-17, 20-21.
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`Vivint then claims that Shetty’s teaching of remote notification of users does
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`not provide a reason to combine the two teachings of Shetty. Response, 25-26.
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`But Vivint overlooks the manifest import of Shetty’s remote notifications—that the
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`users of Shetty are not expected to be present at the site of the data manager
`
`(reinforced by Shetty’s teaching of remote user workstations), which establishes
`
`the necessity for use of the user interface remotely. Ex. 1130, ¶¶96-98. Moreover,
`
`Vivint tries to incorporate the ’601 Patent’s specification, where a “contractor” has
`
`access to different system functionality than a “customer”, into Shetty. But
`
`interpreting Shetty based on teachings of the ’601 Patent is impermissible. See
`
`Graham v. John Deere Co., 383 U.S. 1, 36 (1966) (warning against “the temptation
`
`to read into the prior art the teachings of the invention in issue”). Shetty does not
`
`differentiate between classes of users, and the only explicit discussion of user
`
`access comes in the context of a user remotely accessing data on one computer
`
`from a different computer. Ex. 1103, 4:5-10; Ex. 1130, ¶¶81-84.
`
`And if anything, the opinions of Mr. Denning should be discounted because
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`his expertise in database systems is limited. See Ex. 1130, ¶¶190-99.
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`III. SHETTY DISCLOSES THE CLAIMED COMMUNICATION DEVICE
`IDENTIFICATION CODES
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`Vivint incorrectly argues that Shetty does not disclose “communication
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`device identification codes” (“CDICs”), as required by Claim 26. Response, 37-
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`38. Because the disclosures in Shetty (storage of email addresses and telephone
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`numbers in a user profile database) are identical to the preferred embodiment of the
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`’601 Patent for this limitation, Shetty teaches CDICs. Ex. 1130, ¶¶132-35.
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`In initiating this review with respect to Claim 26, the Board concluded that it
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`was likely that Shetty does disclose use of CDICs within the meaning of the term
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`in the ’601 Patent. Petitioner recognizes that in declining to institute review of
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`U.S. Patent No. 6,462,654, the Board reached a contrary preliminary conclusion.
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`Petitioner respectfully submits that a careful review of the preferred embodiment
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`of the ’601 Patent will confirm that Shetty does disclose CDICs.
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`A. The ’601 Patent’s Preferred Embodiment, and Indeed Only
`Disclosure of “Communication Device Identification Codes”, Is
`the Storage of Phone Numbers and Email Addresses.
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`The term “communication device identification code” is not used in the
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`specification of the ’601 Patent. Claim 26 identifies the CDIC as a component of
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`the “user-defined message profiles”. The ’601 specification and description of the
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`preferred embodiment repeatedly teach that what is stored in the message profile is
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`information sufficient to identify “by which media (fax, e-mail, PCS) . . .
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`individuals are to be notified” of exception conditions. 4:43-45; 7:50-58;
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`Ex. 1130, ¶¶136-39.
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`The term “device” is used in the specification in exactly one paragraph to
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`provide teachings concerning the “user-defined communication device[s]” of the
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`claims. In that paragraph, the specification describes the process of “deliver[y] to
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`the specified end device or devices”. Ex. 1101, 6:7-9. Those devices are described
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`as an “e-mail box”, “fax machine”, “pager or PCS” and “voice mail box”. Id.,
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`6:10-21.
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`Obviously, an “email box” is a logical rather than a physical “device” (but it
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`is the only “e-mail receiving device” disclosed), different physical fax machines
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`might be substituted on a fax line, and a call to a land-line telephone may ring
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`multiple telephone devices within a home. Nevertheless, there is no teaching in the
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`’601 Patent of storage in the “user message profile” of any CDIC more specific
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`than, e.g., a telephone number, fax number, or email address. Nor is any possible
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`utility for storing any such more specific CDIC suggested. Ex. 1130, ¶¶140-43.
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`Moreover, these CDICs represent identifiers for all of the specific devices
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`enumerated in claims 11 and 29.
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`B. As a Matter of Law, “Communication Device Identification
`Code” Must Be Construed Broadly Enough to Include Phone
`Numbers and Email Addresses.
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`In light of the details concerning the ’601 preferred embodiment reviewed
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`above, any interpretation of “communication device identification code” that
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`excludes “phone numbers” and “email addresses” cannot be the “broadest
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`reasonable construction”, and thus would be inconsistent with 37 C.F.R.
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`§ 42.100(b) and would also impermissibly exclude the preferred embodiment. The
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`Federal Circuit has held that “a claim interpretation that excludes a preferred
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`embodiment from the scope of the claim ‘is rarely, if ever, correct’”. Globetrotter
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`Software, Inc. v. Elan Computer Grp., Inc., 362 F.3d 1367, 1381 (Fed. Cir. 2004)
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`(quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir.
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`1996)); Hoechst Celanese Corp. v. BP Chems. Ltd., 78 F.3d 1575, 1580-81
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`(Fed. Cir. 1996). The strong presumption that claim terms encompass preferred
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`embodiments can only be overcome by “highly persuasive evidentiary support” to
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`the contrary. Vitronics, 90 F.3d at 1583. Vivint has identified no such evidence
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`here.
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`As noted above, the Patent’s disclosures about the storage of phone numbers
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`(pager, cellular telephone, fax) and “internet addresses” (email) are the only
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`disclosure of storing any data about the communication devices. Ex. 1130, ¶¶140-
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`43, 160-64. A POSA would recognize that a contractor entering message delivery
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`information as described at 7:50-58 would, when wishing to identify a “user’s e-
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`mail box” (6:14) as a destination, enter an email address rather than some other
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`form of “internet addresses”, such as IP addresses, as IP addresses are not used to
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`identify e-mail boxes. Ex. 1130, ¶¶152-59; Ex. 1118, 96:9-17, 79:9-22.
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`The only disclosures of fixed and unique device identifiers in the ’601 Patent
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`are not relevant. The ’601 Patent discloses the use of electronic serial numbers
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`(“ESNs”) and mobile identification numbers (“MINs”) as identifiers for the
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`interface unit. Ex. 1101, 4:25-31. However, with respect to the user-defined
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`communication devices, there is no disclosure of the storage of serial numbers,
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`ESNs/MSNs, MINs, MEIDs, IP addresses, MAC addresses or any other unique
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`device identifiers in the ’601 Patent. Ex. 1130, ¶¶144-51.
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`Vivint’s argument that an email address is not a CDIC (Response, 38)
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`should also not be credited because it ignores basic claim interpretation principles.
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`Claim 22 claims sending a message to “at least one predetermined user-defined
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`remote communication device.” Claim 29 depends from Claim 22 and additionally
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`claims “wherein said remote communication devices include at least ... an e-mail
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`receiving device ...”. As such, the “communication device” of Claim 22 must be
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`interpreted broadly to enough to include at least an “e-mail receiving device”. 35
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`U.S.C. § 112(d). Both Claim 22 and 26 include the term “user-defined
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`communication remote devices”. Because Claim 26 depends from Claim 22, the
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`term in Claim 26 must be interpreted identically to Claim 22, as they are related
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`claims. Fin Control Sys. Pty, Ltd. v. OAM, Inc., 265 F.3d 1311, 1318 (Fed. Cir.
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`2001) (“[W]e begin with the presumption that the same terms appearing in
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`different portions of the claims should be given the same meaning unless it is clear
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`from the specification and prosecution history that the terms have different
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`meanings at different portions of the claims.”). Thus, an email address must be a
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`device identifier despite Vivint’s argument to the contrary. Response, 37-38.
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`In sum, the preferred embodiment of the ’601 Patent clearly and repeatedly
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`describes storing e-mail addresses and telephone numbers—and no other such
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`CDICs—in message profiles to route messages properly. For this reason, a
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`construction of “communication device identification codes” that does not include
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`e-mail addresses and telephone numbers would exclude the preferred embodiment
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`and cannot be correct.
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`Because a POSA would understand Shetty’s user profile database stores
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`such identifiers for all users, Shetty renders obvious the “communication device
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`identification codes” limitation. Petition, 15-16; Ex. 1130, ¶¶164-66.
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`IV. SHETTY AND LEVAC RENDER OBVIOUS THE “TIME”
`LIMITATIONS OF CLAIMS 19 AND 20
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`The combination of Shetty and Levac discloses the “time” elements of
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`claims 19 and 20 because Levac’s RUNTIME variable restricts the sending of
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`outgoing exception messages to specific time periods, and a POSA would have
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`been motivated to combine Shetty and Levac.
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`A.
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`Specifying the Runtime for a Message Results in Sending
`Outgoing Messages at Certain Times.
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`Vivint asserts that Levac’s “method for scheduling the runtime of a message
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`at some later time” “is sig