Trials@uspto.gov
`571-272-7822
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` Paper 9
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` Entered: October 31, 2016
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SECURENET TECHNOLOGIES, LLC,
`Petitioner,
`
`v.
`
`ICONTROL NETWORKS, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00959
`Patent 7,855,635 B2
`____________
`
`
`
`Before KEN B. BARRETT, PATRICK M. BOUCHER, and
`MINN CHUNG, Administrative Patent Judges.
`
`
`CHUNG, 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 9
`
`
` Entered: October 31, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SECURENET TECHNOLOGIES, LLC,
`Petitioner,
`
`v.
`
`ICONTROL NETWORKS, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00959
`Patent 7,855,635 B2
`____________
`
`
`
`Before KEN B. BARRETT, PATRICK M. BOUCHER, and
`MINN CHUNG, Administrative Patent Judges.
`
`
`CHUNG, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`
`
`IPR2016-00959
`Patent 7,855,635 B2
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`I. INTRODUCTION
`
`SecureNet Technologies, LLC (“Petitioner”) filed a Petition (Paper 1,
`
`“Pet.”) requesting an inter partes review of claims 1, 2, 6–10, 14–18, and
`
`21–25 of U.S. Patent No. 7,855,635 B2 (Ex. 1001, “the ’635 patent”).
`
`Icontrol Networks, Inc. (“Patent Owner”) filed a Preliminary Response
`
`(Paper 8, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314.
`
`The standard for instituting an inter partes review is set forth in
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`35 U.S.C. § 314(a), which provides that an inter partes review may not be
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`instituted unless the information presented in the Petition “shows that there
`
`is a reasonable likelihood that the petitioner would prevail with respect to at
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`least 1 of the claims challenged in the petition.” For the reasons described
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`below, we conclude Petitioner has established a reasonable likelihood of
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`prevailing in showing the unpatentability of claims 1, 2, 6–10, 14–18, and
`
`21–25. Accordingly, we institute an inter partes review of claims 1, 2, 6–
`
`10, 14–18, and 21–25 of the ’635 patent.
`
`
`
`II. BACKGROUND
`
`A. Real Party In Interest
`
`SecureNet Technologies, LLC identifies itself as the real-party-in-
`
`interest. Pet. 1.
`
`B. Related Proceedings
`
`According to the parties, the ’635 patent is the subject of the
`
`following patent infringement case: Icontrol Networks, Inc. v. SecureNet
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`Technologies, LLC, No. 15-807-GMS (D. Del.). Pet. 2; Paper 5, 2.
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`C. The ’635 Patent
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`The ’635 patent describes a communication system coupled to an
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`alarm system to provide two-way communication between the alarm system
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`and a remote server system. Ex. 1001, Abstract. Figure 2 of the ’635 patent
`
`is reproduced below.
`
`
`
`Figure 2 depicts an alarm system coupled to a communication system. Id. at
`
`col. 2, ll. 36–38. In an embodiment, a communication system is added to a
`
`legacy alarm system to provide multiple communication modes between the
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`alarm system and a remote server system and to enable remote control and
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`monitoring functions via two-way communication links. Id. at col. 2, ll. 58–
`
`61. As illustrated in Figure 2 as well as in Figure 1 (not reproduced herein),
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`a legacy alarm system comprises controller unit 110, keypad 170, and
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`keypad bus 190. Id. at col. 3, ll. 15–18, 33–46, 57–65; Figs. 1, 2. Keypad
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`170 includes keypad processor 175, and controller unit 110 includes alarm
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`processor 120, which is coupled to keypad processor 175 through keypad
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`bus 190. Id. at col. 3, ll. 40–42, 44–46, 61–63. Keypad bus 190 provides
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`communication between the alarm processor and the keypad processor using
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`a communication protocol, such as a serial digital protocol. Id. at col. 3,
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`ll. 46–49. Alarm processor 120 is also coupled to sensors 130, which may
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`be installed at various points of entry or monitored areas of a protected
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`building. Id. at col. 3, ll. 17–22. Hence, the alarm processor can provide the
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`keypad processor various alarm information, such as whether the alarm is
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`armed or disarmed and whether the sensors are tripped. Id. at col. 3, ll. 51–
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`54.
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`As shown in Figure 2, communications processor 220 is coupled to
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`alarm processor 120 and keypad processor 175 through keypad bus 190. Id.
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`at col. 3, ll. 63–65. The communication processor can provide
`
`communication from the alarm processor to a remote server over a telephone
`
`connection. Id. at col. 4, ll. 7–18. The communication processor can also be
`
`connected to a cellular interface through which communication with a
`
`remote server can be provided over a cellular communication link. Id. at
`
`col. 4, ll. 28–34. In addition, the communication processor can be coupled
`
`to a network interface to communicate with a remote server over a
`
`broadband network connection. Id. at col. 4, ll. 35–40. The communication
`
`processor monitors all of the available communication modes to determine
`
`which communication mode is optimal for communication with the remote
`
`server system. Id. at col. 4, ll. 51–54. The communication processor
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`interprets signals from the alarm processor on the keypad bus, and provides
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`the information to the remote server system over a selected communication
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`mode. Id. at col. 5, ll. 37–40. The transmitted information can include
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`arm/disarm indicators, alarm trip information, and system status. Id. at
`
`col. 5, ll. 40–42.
`
`D. Illustrative Claim
`
`Of the challenged claims, claims 1, 14, and 21 are independent.
`
`Claim 1 is illustrative of the challenged claims and is reproduced below:
`
`1.
`
`A system comprising:
`
`an alarm system comprising a keypad bus directly
`connected to an alarm processor and a keypad processor, wherein
`the keypad bus provides communication between the alarm
`processor and the keypad processor; and
`
`a communications processor directly connected to the
`keypad bus and configured to
`
`communicate with a network external to the system using
`a plurality of communication modes, and
`
`communicate with the alarm processor using the keypad
`bus connection to the alarm processor.
`
`
`
`E. Petitioner’s Challenges
`
`Petitioner cites the following references in its challenges to
`
`patentability.
`
`Reference
`
`Designation Exhibit No.
`
`U.S. Patent No. 6,928,148 B2 (Aug. 9, 2005)
`
`Simon
`
`Ex. 1004
`
`U.S. Patent Application Pub. No.
`2004/0153701 A1 (Aug. 5, 2004)
`
`
`
`Pickell
`
`Ex. 1005
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`Petitioner asserts the following grounds of unpatentability (Pet. 3).
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`Claims Challenged
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`Statutory Basis
`
`Reference(s)
`
`1, 2, 6, 9, 10, 14–16, 21–23
`
`§ 103(a)
`
`Simon
`
`7, 8, 17, 18, 24, 25
`
`§ 103(a)
`
`Simon and Pickell
`
`
`
`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. 37 C.F.R. § 42.100(b); see Cuozzo Speed
`
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144 (2016) (holding that 37 C.F.R.
`
`§ 42.100(b) “represents a reasonable exercise of the rulemaking authority
`
`that Congress delegated to the . . . Office”). Under the broadest reasonable
`
`interpretation standard, and absent any special definitions, claim terms
`
`generally are given their ordinary and customary meaning, as would be
`
`understood by one of ordinary skill in the art in view of the specification. In
`
`re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special
`
`definitions for claim terms or phrases must be set forth with reasonable
`
`clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480
`
`(Fed. Cir. 1994). A particular embodiment appearing in the written
`
`description generally is not incorporated into a claim if the claim language is
`
`broader than the embodiment. SuperGuide Corp. v. DirecTV Enterprises,
`
`Inc., 358 F.3d 870, 875 (Fed. Cir. 2004); In re Van Geuns, 988 F.2d 1181,
`
`1184 (Fed. Cir. 1993).
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`Petitioner contends that the claim terms of the challenged claims
`
`reciting “means” should be interpreted as means-plus-function limitations
`
`under § 112, ¶ 6,1 as follows. Pet. 6–13, 41, 43, 46, 56, 59.
`
`Term
`
`Proposed Construction
`
`“means for receiving a first
`signal on a keypad bus”
`(claim 21)
`
`“means for transmitting a
`second signal” (claim 21)
`
`“means for monitoring a
`status of each of the plurality
`of communication modes”
`(claim 24)
`
`Function: “receiving a first signal on a
`keypad bus”
`
`Corresponding structure: “communications
`processor 220” (and its equivalents)
`
`Function: “transmitting a second signal”
`
`Corresponding structure: “communications
`processor 220” alone or in combination with
`“cellular interface 230” and/or “network
`interface 250” (and equivalents thereof)
`
`Function: “monitoring a status of each of
`the plurality of communication modes”
`
`Corresponding structure: “communications
`processor 220” alone or in combination with
`“cellular interface 230” and/or “network
`interface 250” (and equivalents thereof)
`
`“means for selecting the
`selected one of the plurality
`of communication modes . . .
`in response to said
`monitoring” (claim 25)
`
`Function: “selecting the selected one of the
`plurality of communication modes . . . in
`response to said monitoring”
`
`Corresponding structure: “communications
`processor 220” (and its equivalents)
`
`
`
`1 Section 4(c) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29,
`125 Stat. 284 (2011) (“AIA”), re-designated 35 U.S.C. § 112, ¶ 6, as
`35 U.S.C. § 112(f). Because the ’635 patent has a filing date prior to
`September 16, 2012, the effective date of § 4(c) of the AIA, we refer to the
`pre-AIA version of 35 U.S.C. § 112. See AIA § 4(e).
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`For each of these claim terms, Petitioner discusses in detail why the
`
`term should be construed as Petitioner proposes, providing detailed citations
`
`to the written description and relevant claim language. Pet. 6–13. For
`
`example, regarding the claim term “means for receiving a first signal on a
`
`keypad bus,” Petitioner contends that the corresponding structure must be
`
`connected to the keypad bus because claim 21 recites explicitly that “said
`
`means for receiving is directly connected to the keypad bus.” Id. at 6–7.
`
`Petitioner further argues that Figure 2 of the ’635 patent shows only three
`
`structures are connected to the keypad bus—namely, alarm processor 120,
`
`keypad processor 175, and communications processor 220 (id. at 7 (citing
`
`Ex. 1001, col. 3, ll. 57–65, Fig. 2))—and that, among the three, the
`
`communications processor 220 is properly identified as the corresponding
`
`structure in view of the language of claim 9, which recites “the
`
`communications processor is further configured to receive a first signal from
`
`the alarm processor on the keypad bus” (id.). Petitioner similarly provides
`
`detailed explanations and citations to the written description and the relevant
`
`language of claims 7, 8, and 9 in support of its proposed construction of the
`
`claim terms “means for transmitting,” “means for monitoring,” and “means
`
`for selecting.” Id. at 8–13.
`
`Patent Owner does not dispute Petitioner’s proposed constructions for
`
`the terms “means for receiving” and “means for selecting.” Prelim. Resp. 7–
`
`8. With respect to the claim terms “means for transmitting” and “means for
`
`monitoring,” Patent Owner does not argue Petitioner’s proposed
`
`constructions are unsupported by the Specification or the corresponding
`
`structure is a different structure from the one identified by Petitioner.
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`Instead, Patent Owner argues that Petitioner’s identification of the
`
`corresponding structure for both terms to be “communications processor
`
`220” alone or in combination with “cellular interface 230” and/or “network
`
`interface 250” amounts to proposing alternative constructions. Id. at 8.
`
`Patent Owner does not explain, however, why Petitioner’s identification of
`
`the corresponding structure as alternative structures, one inclusive of the
`
`other, is erroneous or improper. To the extent Petitioner is proposing
`
`alternative constructions, we do not perceive anything improper with
`
`arguing in the alternative in and of itself. As discussed below, our decision
`
`whether to institute does not turn on whether the corresponding structure for
`
`the claim terms “means for transmitting” and “means for monitoring” is
`
`“communications processor 220” alone or the communications processor in
`
`combination with “cellular interface 230” and/or “network interface 250.”
`
`Hence, to the extent Petitioner’s alternative constructions introduce
`
`ambiguities as Patent Owner contends (id. at 8), we do not find it necessary
`
`to resolve the ambiguities for purposes of this Decision. We are persuaded
`
`that Petitioner’s proposed constructions are sufficiently supported by the
`
`intrinsic record and, for purposes of this Decision, adopt Petitioner’s
`
`proposed constructions of the means-plus-function limitations as
`
`summarized in the table above.
`
`Petitioner contends that the rest of the claim terms in the challenged
`
`claims should be given their customary and ordinary meaning as understood
`
`by a person of ordinary skill in the art. Pet. 6. Patent Owner faults
`
`Petitioner’s approach as refusing to take a position on claim interpretation
`
`when Petitioner purportedly relies on alternative theories regarding whether
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`certain claim limitations, such as “keypad processor” and “communications
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`processor,” are found in the cited prior art. Prelim. Resp. 9–10. Patent
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`Owner, however, does not propose its own construction for any claim term.
`
`For purposes of this Decision, other than the means-plus-function limitations
`
`discussed above, we do not find it necessary to make formal claim
`
`constructions for any claim terms because, as discussed below, our decision
`
`whether to institute does not rest on express construction of any of these
`
`terms. See, e.g., Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
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`803 (Fed. Cir. 1999) (only those terms that are in controversy need to be
`
`construed, and only to the extent necessary to resolve the controversy).
`
`B. Obviousness Based on Simon
`
`Petitioner contends claims 1, 2, 6, 9, 10, 14–16, and 21–23 are
`
`unpatentable over Simon under 35 U.S.C. § 103(a). Pet. 15–50. Petitioner
`
`explains how Simon teaches the claimed subject matter of each challenged
`
`claim, providing detailed discussion and specific citations to Simon
`
`indicating where in the reference the claimed features are disclosed or
`
`explaining how the differences between the claimed subject matter and the
`
`prior art are such that the subject matter would have been obvious to a
`
`person of ordinary skill in the art. Id. In addition, Petitioner relies upon the
`
`Declaration of Dr. Vannucci to support its positions. Id.
`
`1. Overview of Simon (Ex. 1004)
`
`Simon describes an integrated security and communication system
`
`that combines a security system with a telephone interface, a data interface,
`
`or both, to allow communication with a central monitoring station.
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`Ex. 1004, Abstract. The integrated system comprises a security controller
`
`having sensor inputs and control signal input/output ports, and a
`
`communications unit connected to a communication channel. Id. at col. 2,
`
`l. 66–col. 3, l. 6. A security system protecting a premises includes a keypad
`
`used to arm or disarm the system. Id. at col. 3, ll. 50–54. The security
`
`system of Simon provides communication functions at the security system
`
`keypad, which is accomplished by integrating the security system with a
`
`communications system. Id. at col. 3, ll. 57–61; col. 3, l. 66–col. 4, l. 2.
`
`Figure 2 of Simon is reproduced below.
`
`
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`Figure 2 depicts an embodiment of Simon’s integrated security and
`
`communication system. As shown in Figure 2, the system includes
`
`controller 11, which is connected to sensors 15 and keypads 16. Id. at
`
`col. 16, ll. 43–45. The keypads can be connected to bus 12 to exchange
`
`signals with the controller. Id. at col. 15, l. 66–col. 16, l. 3. Further,
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`telephone interface unit 21 is connected to controller 11 by bus 12. Id. at
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`11
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`col. 16, ll. 45–47. Data interface unit 22 is also connected to controller 11
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`via bus 12 and is used to transmit data over the Internet or other external
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`network. Id. at col. 17, ll. 4–6, 25–28.
`
`In one embodiment, the communication interface includes a primary
`
`channel, which is preferably the fastest channel, such as the Internet link,
`
`and at least one secondary communication channel, such as a telephone
`
`connection, a cellular connection, or a radio link. Id. at col. 22, ll. 23–56. In
`
`another embodiment, in the event the primary channel is not available, the
`
`system “fails over” to a secondary channel. Id. at col. 12, ll. 19–25. In an
`
`approach called “dynamic signaling,” all of the channels are tried at the
`
`same time to initiate communication, and the first successful channel is
`
`selected for communication. Id. at col. 12, ll. 29–38.
`
`2. Discussion
`
`We now turn our attention to Petitioner’s application of Simon to the
`
`claims, and to Patent Owner’s contentions in opposition to Petitioner’s
`
`arguments.
`
`a. Claim 1
`
`i. “an alarm system comprising a keypad bus
`directly connected to an alarm processor and a keypad processor”
`
`Petitioner identifies as claim element 1[b1] the limitation that recites,
`
`“an alarm system comprising a keypad bus directly connected to an alarm
`
`processor and a keypad processor.” Pet. 16. Referencing Figure 2 of Simon,
`
`Petitioner contends that Simon teaches claim element 1[b1], including
`
`“alarm system,” “alarm processor,” “keypad bus,” and “keypad processor.”
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`Id. at 16–22.
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`(1) “alarm system”
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`Petitioner provides an annotated version of Figure 2, which is
`
`reproduced below.
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`
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`Id. at 16. Annotated Figure 2 above shows Petitioner’s identification of the
`
`“alarm system” present in Simon. Referencing Figure 2, Petitioner argues
`
`that Simon describes components of a legacy alarm system, including
`
`system controller 11, keypad 16, and bus 12. Id. at 16–17 (citing Ex. 1004,
`
`col. 3, l. 66–col. 4, l. 6; col. 15, ll. 38–62; Fig. 2).
`
`Petitioner contends that the system controller 11 of Simon
`
`corresponds to the claimed “alarm processor” because the system controller
`
`11 receives sensor 15 data, processes it to determine an alarm condition, and
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`communicates the alarm condition to a remote central station using one of
`
`the communication interfaces. Id. at 17 (citing Ex. 1004, col. 15, l. 66–
`
`col. 16, l. 10; col. 16, ll. 43–45; col. 2, l. 66–col. 3, l. 3; col. 6, ll. 49–53).
`
`Patent Owner contends that Simon does not teach the “alarm system”
`
`recited in claim 1 because the ’635 patent describes improving or upgrading
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`a pre-existing legacy alarm system by adding a communication unit and,
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`therefore, requires an “alarm system” that is capable of functioning as a
`
`standalone unit. Prelim. Resp. 15–21. Patent Owner asserts that Simon
`
`discloses “no such alarm system.” Id. at 21. Patent Owner argues that the
`
`entire system described in Simon is an “alarm system” and that drawing a
`
`box around a certain portion of the system, as Petitioner proposes, does not
`
`show that the portion identified by Petitioner constitutes the “alarm system”
`
`recited in claim 1. Id. at 15, 21.
`
`Patent Owner’s argument is unpersuasive because Patent Owner does
`
`not explain why the Petitioner-identified components in Simon would not
`
`provide alarm system functions, such as monitoring the sensors, detecting
`
`the alarm condition, and sounding the alarm. As shown in the annotated
`
`version of Figure 2 of Simon reproduced above, the “alarm system”
`
`identified by Petitioner includes a system controller connected to a keypad,
`
`security sensors, a sounder, and a dialer. Pet. 16; Ex. 1004, col. 16, ll. 43–
`
`45. Simon describes that these components are capable of providing the
`
`basic security functions similar to those provided by the legacy alarm system
`
`described in the ’635 patent. See, e.g., Ex. 1004, col. 16, ll. 3–7 (“[K]eypads
`
`16 can be connected both directly to controller 11 (for security functions)
`
`and to bus 12 (for communications functions). Controller 11 preferably is
`
`connected to a sounder 110 (e.g., a bell or siren) for sounding alarm
`
`conditions . . . .”); Ex. 1001, col. 3, ll. 15–55 (describing the security
`
`functions of a legacy alarm system, including monitoring the sensors and
`
`detecting alarm conditions). Furthermore, the functional components of
`
`Simon’s alarm system as identified by Petitioner essentially overlap the
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`functional components of the legacy alarm system described in the ’635
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`patent with the possible exception of the telephone interface unit. See
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`Prelim. Resp. 20–21 (comparing the “legacy alarm system” depicted in
`
`Figure 1 of the ’635 patent with the Petitioner-identified “alarm system”
`
`shown in an annotated version of Figure 2 of Simon).
`
`To the extent Patent Owner argues that the “alarm system” in Simon
`
`identified by Petitioner would not be able to contact a remote server “on its
`
`own” because the telephone interface is not included in the identifying box
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`(id. at 21), Patent Owner’s argument is unpersuasive because Simon
`
`describes or suggests that a dialer included in the Petitioner-identified
`
`“alarm system” can provide communication with a central monitoring
`
`station. See, e.g., Ex. 1004, col. 16, ll. 6–10 (“Controller 11 preferably is
`
`connected to a sounder 110 (e.g., a bell or siren) for sounding alarm
`
`conditions, and preferably is connected to a dialer unit 111 for
`
`communicating with a central monitoring station over, e.g., a standard
`
`telephone line.”) (emphasis added); col. 22, ll. 25–27 (“dialer 712 . . .
`
`preferably is connected to telephone interface 713 of monitoring station 702
`
`by public switched telephone line 714”) (emphases added).
`
`More importantly, Patent Owner’s arguments are unpersuasive
`
`because claim 1 does not recite “adding” a communication processor to a
`
`“pre-existing” legacy alarm system or that the “alarm system” is capable of
`
`functioning as a “standalone” alarm system and contacting a remote server
`
`“on its own” without a communication processor. Patent Owner does not
`
`explain why claim 1 is limited to having these features that are not recited in
`
`the claim. Indeed, the ’635 patent describes upgrading a pre-existing or pre-
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`installed legacy alarm system by adding a communication unit as features of
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`preferred embodiments. See, e.g., Ex. 1001, col. 2, ll. 58–61 (“Embodiments
`
`of the present invention provide a communication system that can be added
`
`to a legacy alarm system to provide a plurality of communication modes to a
`
`remote server system from the legacy alarm system . . . .”) (emphases
`
`added); col. 3, ll. 57–59 (“FIG. 2 is a simplified block diagram of
`
`components of a legacy alarm system coupled to a communications system
`
`in accord with embodiments of the present invention.”) (emphasis added).
`
`These features relating to particular embodiments described in the ’635
`
`patent may not be read into the claims “absent clear disclaimer in the
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`specification.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed.
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`Cir. 2004). Based on the record presented, we are persuaded Petitioner has
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`demonstrated sufficiently that Simon teaches an “alarm system” comprising
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`a keypad bus, an alarm processor, and a keypad, which is similar to the
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`legacy alarm system described in the ’635 patent.
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`(2) “keypad processor”
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`Petitioner relies on CPU 51 shown in Figure 5 of Simon to teach a
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`“keypad processor.” Pet. 19–20 (citing Ex. 1004, col. 18, ll. 30–33; Fig. 5
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`(item 51)). Patent Owner contends that Simon does not teach the claimed
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`“keypad processor.” Prelim. Resp. 22–24. Patent Owner, however, does not
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`explain why CPU 51 does not teach the claimed “keypad processor,” but,
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`rather, argues that Petitioner’s reliance on Figure 5 for the “keypad
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`processor” limitation is inconsistent with Petitioner’s reliance on Figure 2
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`for a teaching of a “communications processor.” Id. at 22–23. According to
`
`Patent Owner, Figure 5 of Simon describes “a hybrid design combining
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`16
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`aspects of the data interface unit into a keypad,” and, therefore, it is
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`improper for Petitioner to rely on such a “hybrid keypad” for a teaching of a
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`“keypad processor” while, at the same time, relying on the data interface
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`unit of Figure 2, which lacks a similar hybrid keypad, to teach a
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`“communications processor.” Id. at 23–24.
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`Patent Owner’s argument is unpersuasive because a showing of
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`obviousness does not require bodily incorporation of the CPU 51 of Figure 5
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`into the circuitry depicted in Figure 2. See MCM Portfolio LLC v. Hewlett-
`
`Packard Co., 812 F.3d 1284, 1294 (Fed. Cir. 2015) (holding that the test for
`
`obviousness is not whether the features of a secondary reference may be
`
`bodily incorporated into the structure of the primary reference, but, rather,
`
`what the combined teachings of the references would have suggested to
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`those of ordinary skill in the art) (citing In re Keller, 642 F.2d 413, 425
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`(CCPA 1981)), cert. denied sub nom. MCM Portfolio LLC v. Hewlett-
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`Packard Co. (U.S. Oct. 11, 2016).
`
`To the extent Patent Owner argues that Petitioner’s statement that “the
`
`keypad 16 includes a CPU 51” (Pet. 19) amounts to an assertion that CPU 51
`
`of Figure 5 can be “simply dropp[ed] . . . into keypad 16 of Figure 2”
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`(Prelim. Resp. 24), we are not persuaded because Patent Owner does not
`
`explain the basis for its inference. Furthermore, for purposes of this
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`Decision, we need not address whether keypad 16 can properly incorporate
`
`CPU 51 because, as Patent Owner acknowledges, Petitioner relies on CPU
`
`51 to teach the claimed “keypad processor.” See id. (“Petitioner’s single
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`sentence assertion that CPU 51 corresponds to the claimed keypad processor
`
`overlooks [the differences in the circuitry shown in Figures 2 and 5.]”).
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`Based on the record presented, we are persuaded that CPU 51 shown in
`
`Figure 5 of Simon teaches a “keypad processor.”
`
`(3) “a keypad bus directly connected to
`an alarm processor and a keypad processor”
`
`Citing the testimony of Dr. Vannucci and referencing another
`
`annotated version of Figure 2 (not reproduced herein), Petitioner contends
`
`that bus 12 disclosed in Simon corresponds to the “keypad bus” recited in
`
`claim 1 and that the bus 12 is directly connected to the system controller 11
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`and keypad 16. Pet. at 20 (citing Ex. 1004, Fig. 2; Ex. 1002 ¶ 59). Relying
`
`upon further testimony of Dr. Vannucci, Petitioner additionally asserts that a
`
`person of ordinary skill in the art would have understood that Figures 5 and
`
`7 of Simon show that the CPU of keypad 16 and the microprocessor of the
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`system controller 11 are directly connected to the bus 12 utilizing interface
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`circuits, i.e., security system interface 502 for the keypad CPU and security
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`system interface 600 for the system microprocessor. Id. at 20–22 (citing
`
`Ex. 1004, Figs. 5, 7, col. 18, ll. 58–59 (“interface 502 connects to controller
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`11, preferably via bus 12”); Ex. 1002 ¶¶ 60–70). In particular, Dr. Vannucci
`
`testifies that “connections between a processor and a bus via an intervening
`
`interface circuit are . . . regarded in the electrical engineering community as
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`direct connections.” Ex. 1002 ¶ 65 (cited in Pet. 21–22).
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`Patent Owner asserts that Petitioner’s analysis is faulty because
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`Petitioner’s statement that the security system interfaces shown in Figures 5
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`and 7 are “part of bus 12” is erroneous. Prelim. Resp. 33–34 (citing Pet. 20,
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`21, 28). For purposes of this Decision, we credit Dr. Vannucci’s testimony
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`that a person of ordinary skill would have understood that a connection
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`between a processor and a bus via an intervening interface circuit constitutes
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`a direct connection. This understanding would be unaffected whether the
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`interface circuit is deemed to be part of the bus or not. Hence, for purposes
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`of this Decision, we are persuaded Petitioner has demonstrated sufficiently
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`that Simon teaches “a keypad bus directly connected to an alarm processor
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`and a keypad processor,” as recited in claim 1.
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`Accordingly, we are persuaded that Petitioner has demonstrated
`
`sufficiently that Simon teaches “an alarm system comprising a keypad bus
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`directly connected to an alarm processor and a keypad processor.”
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`ii. “the keypad bus provides communication between the alarm processor
`and the keypad processor”
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`Petitioner identifies as claim element 1[b2] the limitation that recites,
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`“wherein the keypad bus provides communication between the alarm
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`processor and the keypad processor.” Pet. 22. Petitioner contends Simon
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`teaches this limitation because Simon describes that “keypads 16 may be
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`connected to bus 12 for routing of [] security system signals to and from
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`controller 11.” Id. (citing Ex. 1004, col. 15, l. 66–col. 16, l. 1). Petitioner
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`also asserts that the bus 12 in Simon provides communication between the
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`keypad’s CPU 51 and the controller’s microprocessor because the processors
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`are directly connected to the bus 12 and, therefore, receive and transmit the
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`same security system signals. Id. (citing Ex. 1004, col. 18, ll. 58–59).
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`Patent Owner does not dispute Petitioner’s contentions with respect to claim
`
`element 1[b2]. For purposes of this Decision, we are persuaded Petitioner
`
`has demonstrated sufficiently that Simon teaches claim element 1[b2] of
`
`claim 1.
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`19
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`iii. “a communications processor directly connected to the keypad bus” and
`“configured to communicate with a network external to the system using a
`plurality of communication modes”
`
`Petitioner identifies as claim elements 1[c1] and 1[c2] the limitations
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`that recite, “a communications processor directly connected to the keypad
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`bus” and “configured to communicate with a network external to the system
`
`using a plurality of communication modes,” respectively. Pet. 22, 28.
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`Petitioner contends that a combination of telephone interface unit 21 and
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`data interface unit 22 depicted in Figure 2 of Simon teaches the claimed
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`“communications processor.” Id. at 22–23. Petitioner provides an annotated
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`excerpt of Figure 2, which is reproduced below.
`
`
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`Id. at 23. Annotated excerpt of Figure 2 shown above illustrates Petitioner’s
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`identification of Simon’s teaching of a single “communications processor”
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`as a combination of telephone interface unit 21 and data interface unit 22.
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`Citing the testimony of Dr. Vannucci, Petitioner asserts that a person of
`
`ordinary skill in the art would have understood that these units can be
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`combined to form a single unit that operates multiple communications
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`interface. Id. (citing Ex. 1002 ¶ 71).
`
`Relying upon further testimony of Dr. Vannucci, Petitioner contends
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`that there is nothing in Simon that teaches away from combining those units
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`into a single unit (id. (citing Ex. 1002 ¶¶ 74–75)) and that benefits of
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`combining the units include lower cost due to shared functions, e.g., power
`
`supply and bus interface, and easier coordination between the two
`
`communication modes, e.g., joint monitoring and autonomous selection of
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`best mode (id. at 24 (citing Ex. 1002 ¶¶ 75–76)). In addition, Dr. Vannucci
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`cites U.S. Patent No. 4,951,029 (Ex. 1006, “Severson”), which describes
`
`using a single alarm controller to control a telephone channel and an RF
`
`(radio frequency) channel, and testifies that the concept of using a single unit
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`to operate multiple communication channels was known in the art prior to
`
`the filing of the ’635 patent. Ex. 1002 ¶ 78 (citing Ex. 1006, col. 6, ll. 53–
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`68; col. 10, ll. 40–45; Figs. 1, 2a, 2d & 2e, 3); Pet. 24. Thus, according to
`
`Dr. Vannucci and Petitioner, it was a simple matter of design choice that
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`Simon used the telephone interface unit and the data interface unit as two
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`separate units, as opposed to combining them into a single
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