Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 10
`Entered: November 15, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`DEPARTMENT OF JUSTICE,
`Petitioner,
`
`v.
`
`DISCOVERY PATENTS, LLC,
`Patent Owner.
`_____________
`
`Case IPR2016-01038
`Patent 6,778,085 B2
`_____________
`
`
`
`Before BART A. GERSTENBLITH, MATTHEW R. CLEMENTS, and
`PETER P. CHEN, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`

`
`I.
`
`INTRODUCTION
`
`Background
`A.
`The United States Department of Justice (“Petitioner”) filed a Petition
`(Paper 1, “Pet.”) requesting institution of inter partes review of claims 7–37
`of U.S. Patent No. 6,778,085 B2 (Ex. 1002, “the ’085 patent”). Discovery
`Patents, LLC (“Patent Owner”) filed a Preliminary Response (Paper 6,
`“Prelim. Resp.”).
`Under 35 U.S.C. § 314(a), an inter partes review may be instituted
`only if “the information presented in the petition . . . and any [preliminary]
`response . . . shows that there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” See 37 C.F.R. § 42.108(c).
`For the reasons given below, on this record, Petitioner has not
`established a reasonable likelihood of prevailing with respect to at least one
`challenged claim of the ’085 patent. Accordingly, we deny the Petition and
`decline to institute an inter partes review of the ’085 patent.
`
`Related Proceedings
`B.
`The parties indicate that the ’085 patent is asserted in the United
`States Court of Federal Claims, in a case captioned 3rd Eye Surveillance,
`LLC v. United States, No. 15-cv-00501-CFL (filed May 15, 2015). Pet. 2;
`Paper 5, 2. The parties indicate that the following case would affect or be
`affected by a decision in this proceeding—3rd Eye Surveillance, LLC v. City
`of Fort Worth, Tex., No. 6-14-cv-00725 (E.D. Tex.). Pet. 2; Paper 5, 2.
`Additionally, Petitioner indicates that the following case would affect or be
`affected by a decision in this proceeding—3rd Eye Surveillance, LLC v.
`Vision Video Security, LLC, No. 6-14-cv-00161 (E.D. Tex.). Pet. 2.
`
`
`
`2
`
`

`
`Petitioner challenges several claims of the ’085 patent in
`IPR2016-01037 and IPR2016-01039. Additionally, Petitioner challenges
`claims of two other patents related to the ’085 patent in IPR2016-01035,
`IPR2016-01040, and IPR2016-01041. Pet. 2.
`
`Real Parties in Interest
`C.
`The Petition identifies “The United States as represented by the
`Department of Justice” as the sole real party in interest. Pet. 1. Patent
`Owner identifies “Discovery Patents, LLC” as the sole real party in interest,
`and identifies “3rd Eye Surveillance, LLC” as the exclusive licensee of the
`’085 patent. Paper 5, 2.
`Patent Owner contends that the Petition fails to identify all real parties
`in interest as required by 35 U.S.C. § 312(a)(2). Prelim. Resp. 35. In
`particular, Patent Owner asserts that “IndigoVision, LTD, Datawatch
`Systems, Inc., Tyco Integrated Security LLC, Diebold, Inc., Vidsys, Inc.,
`EFW Inc., Tactical Micro, Inc., and ICx Technologies, Inc.” (“the Third
`Parties”) are real parties in interest because each company has a contract
`with a government entity in which each company agreed to indemnify the
`government for, inter alia, liability for patent infringement. Id. at 35–42.
`In its Reply to Patent Owner’s Preliminary Response,1 Petitioner
`asserts that the Third Parties are not real parties in interest in this
`proceeding, and that Patent Owner has not shown that any of these
`companies exercises, or could have exercised, control over Petitioner’s
`participation in this proceeding, provided funding for this proceeding, or
`provided any direction of any kind pertaining to this proceeding. Paper 8, 3.
`
`1 We authorized Petitioner to file a reply to Patent Owner’s Preliminary
`Response addressing solely the issue of real parties in interest, and we
`authorized Patent Owner to file a sur-reply in response thereto. Paper 7.
`
`
`
`3
`
`

`
`Additionally, Petitioner cites several decisions by the Board in which the
`existence of an indemnification agreement, alone, was insufficient to
`establish that a third party was a real party in interest. Id. at 1–2 (citations
`omitted).
`In its Sur-Reply, Patent Owner contends that Petitioner fails to show
`that these additional companies are not real parties in interest and that “[a]t a
`general level, . . . [a real party in interest] is a party that desires review of the
`patent.” Paper 9, 1.
`A petition for inter partes review may be considered only if, inter
`alia, “the petition identifies all real parties in interest.” 35 U.S.C.
`§ 312(a)(2). The Office Patent Trial Practice Guide provides guidance
`regarding factors to consider in determining whether a party is a real party in
`interest. 77 Fed. Reg. 48,756, 48,759–60 (Aug. 14, 2012). Considerations
`may include whether a non-party “funds and directs and controls” an IPR
`petition or proceeding. Id. at 48,760. Additional relevant factors include:
`the non-party’s relationship with the petitioner; the non-party’s relationship
`to the petition itself, including the nature and/or degree of involvement in the
`filing; and the nature of the entity filing the petition. Id. Whether a party
`who is not a named participant in a given proceeding is a real party in
`interest to that proceeding “is a highly fact-dependent question.” Id. at
`48,759. There is no “bright line test.” Id. Courts invoke the term real party
`in interest to describe relationships and considerations sufficient to justify
`applying conventional principles of estoppel and preclusion. Id. A
`non-party’s participation with a petitioner may be overt or covert, and the
`evidence may be direct or circumstantial, but the evidence as a whole must
`show that the non-party possessed effective control over the petitioner
`relating to the inter partes review. Zoll Lifecor Corp. v. Philips Elecs. N.
`
`
`
`4
`
`

`
`Am. Corp., Case IPR2013-00609, slip op. at 10 (PTAB Mar. 20, 2014)
`(Paper 15).
`We have considered Patent Owner’s and Petitioner’s arguments and
`evidence, and we determine that Petitioner was not required to identify the
`Third Parties as real parties in interest because there is insufficient evidence
`that any of these companies exercised, or could exercise, control over
`Petitioner with respect to this proceeding. Patent Owner’s arguments
`regarding the motion practice before the Court of Federal Claims and
`notification of that action to the Third Parties (Prelim. Resp. 39–42) does not
`reflect otherwise. Although we acknowledge that the existence of the
`above-identified indemnification clauses supports Patent Owner’s argument,
`we are unaware of any inter partes review decision in which a real party in
`interest finding was based solely on evidence of an indemnification clause,
`and we decline to do so here.2
`
`The References
`D.
`Petitioner relies on the following references:
`U.S. Patent No. 6,970,183 B1, issued Nov. 29, 2005 (Ex. 1009,
`“Monroe ’183”);
`U.S. Patent No. 7,634,662 B2, issued Dec. 15, 2009 (Ex. 1013,
`“Monroe ’662”);
`U.S. Patent No. 7,015,806 B2, issued Mar. 21, 2006 (Ex. 1017,
`“Naidoo”);
`
`
`2 During our conference call in which we authorized additional briefing by
`the parties on this issue, Patent Owner was unable to cite a Board decision in
`which an entity was found to be a real party in interest based solely on an
`indemnification clause. Paper 7, 4. Patent Owner’s Sur-Reply is similarly
`lacking in this regard. Paper 9.
`
`
`
`5
`
`

`
`U.S. Patent No. 6,335,688 B1, issued Jan. 1, 2002 (Ex. 1023,
`“Sweatte”); and
`European Patent Application No. EP 0809123 A2, published Nov. 26,
`1997 (Ex. 1027, “Huguenin”).
`
`The Asserted Grounds of Unpatentability
`E.
`Petitioner challenges the patentability of claims 7–37 of the
`’085 patent on the following grounds:
`
`Reference(s)
`Monroe ’183
`Monroe ’183 and Huguenin
`Monroe ’183 and Sweatte
`Monroe ’662
`Naidoo
`
`Basis
`§ 102(e)
`§ 103(a)
`§ 103(a)
`§ 102(e)
`§ 102(e)
`
`Claim(s) challenged
`7–9, 11–21, and 24–37
`10
`22 and 23
`21–23
`7, 9, and 36
`
`Petitioner supports its challenge with a Declaration by Dr. Clifford
`Reader, dated May 11, 2016 (Ex. 1007, “the Reader Declaration”).
`
`The ’085 Patent
`F.
`The ’085 patent is directed to “[a] security alarm system that provides
`secure, realtime video and/or other realtime imagery of a secured location to
`one or more emergency response agencies over a high-speed
`communications link, such as an Internet link.” Ex. 1002, Abstract.
`According to the ’085 patent, security alarm systems with video capability
`were known, but the video captured by such systems was “of limited value”
`because it was “not available to the appropriate emergency response agency or
`agencies and their highly trained professional emergency response personnel.”
`Id. at 1:40–51.
`
`
`
`6
`
`

`
`Figure 2 of the ’085 patent is reproduced below:
`
`
`Figure 2 of the ’085 patent “is a diagram illustrating a security alarm system
`in accordance with exemplary embodiments of the present invention.” Id. at
`2:58–60. Central monitoring station 201 is connected to a number of
`secured locations 203–207 via high-speed communications link 209. Id. at
`3:52–57. At each secured location 203–207, there is at least one video
`camera and one or more alarm sensors. Id. at 3:57–59. Central monitoring
`station 201 is also connected via a high-speed communications link to one or
`more emergency response agencies 211–215. Id. at 3:59–61. According to
`the ’085 patent, central monitoring station 201 may be associated with a
`private security service or a government agency, and the emergency
`response agencies may be local, state, or federal agencies. Id. at 3:61–65.
`
`
`
`7
`
`

`
`Illustrative Claim
`G.
`Claim 7, the sole independent claim challenged in this proceeding, is
`illustrative of the claimed subject matter and is reproduced below:
`7.
`A security system comprising:
`
`an imaging device positioned at a secured location;
`
`a server including means for receiving realtime imagery
`from said imaging device;
`
`a computer system associated with a security system
`central station, said computer system comprising means for
`processing realtime imagery received from said server over a
`network connection; and
`
`a computer system associated with an emergency response
`agency, said computer system comprising means for processing
`and displaying said realtime imagery which is received over a
`network connection from the computer system associated with
`the central station.
`Id. at 12:21–34.
`
`CLAIM CONSTRUCTION
`II.
`Although Petitioner and Patent Owner present proposed constructions
`for several claim terms, no terms require express construction for purposes
`of this Decision.
`
`A.
`
`III. ANALYSIS
`Preliminary Matters
`Arguments Not in Petition
`1.
`Patent Owner contends that arguments made only in Dr. Reader’s
`Declaration and not in the Petition should not be considered because they are
`improperly incorporated by reference. Prelim. Resp. 7–10.
`
`
`
`8
`
`

`
`To the extent an argument is raised solely in Dr. Reader’s Declaration
`and not also in the Petition, we have declined to consider it for purposes of
`this Decision.
`Patent Owner also contends that the Petition “fails to sufficiently
`specify where each element of the claims is found in the applied references,
`and fails to include a detailed explanation of the significance of the
`quotations and citations from the applied references.” Id. at 7. Patent
`Owner asserts that the Petition is deficient because Petitioner relies only
`upon claim charts that recite the claim and provides quotes and citations to
`the prior art references, nothing more. Id. at 8.
`We disagree that reliance only upon claim charts containing the claim
`elements and quotations and citations from prior art references allegedly
`disclosing those elements is per se insufficient. Each case is fact specific.
`In some instances, quotes and citations to a reference are so clear that further
`explanation is unnecessary. In other instances, however, where it is not clear
`which elements of the claims are allegedly disclosed by a quotation or
`citation to a reference, the lack of additional explanation by a petitioner can
`be detrimental. Ultimately, a petition must “identif[y], in writing and with
`particularity . . . the evidence that supports the grounds for the challenge to
`each claim.” 35 U.S.C. § 312(a)(3); see 37 C.F.R. § 42.22(a)(2) (each
`petition must include “[a] full statement of the reasons for the relief
`requested, including a detailed explanation of the significance of the
`evidence including material facts, and the governing law, rules, and
`precedent”). But, we decline to impose a per se rule requiring argument in
`addition to claim charts.
`
`
`
`9
`
`

`
`Constitutionality of Inter Partes Reviews
`2.
`Patent Owner asserts that this proceeding is unconstitutional because
`it “violate[s] Separation of Powers principles and the Seventh Amendment.”
`Prelim. Resp. 45.
`We decline to consider Patent Owner’s constitutional challenge as,
`generally, “administrative agencies do not have jurisdiction to decide the
`constitutionality of congressional enactments.” See Riggin v. Office of
`Senate Fair Emp’t Practices, 61 F.3d 1563, 1569 (Fed. Cir. 1995); see also
`Harjo v. Pro-Football, Inc., 50 USPQ2d 1705, 1770 (TTAB 1999) (“[T]he
`Board has no authority . . . to declare provisions of the Trademark Act
`unconstitutional.”); Amanda Blackhorse, Marcus Briggs-Cloud, Philip
`Gover, Jillian Pappan and Courtney Tsotigh v. Pro-Football, Inc.,
`111 USPQ2d 1080 (TTAB 2014); but see Am. Express Co. v. Lunenfeld,
`Case CBM2014-00050, slip op. at 9–10 (PTAB May 22, 2015) (Paper 51)
`(“for the reasons articulated in Patlex [Corp. v. Mossinghoff, 758 F.2d 594
`(Fed. Cir. 1985)], we conclude that covered business method patent reviews,
`like reexamination proceedings, comply with the Seventh Amendment”).
`
`Level of Ordinary Skill in the Art
`B.
`With regard to the level of ordinary skill in the art, we determine that
`no express finding is necessary, on this record, and that the level of ordinary
`skill in the art is reflected by the prior art of record. See Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d
`1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`
`Anticipation by Monroe ’183
`C.
`Petitioner asserts that Monroe ’183 teaches each and every element of
`claims 7–9, 11–21, 24–26, and 27–37 of the ’085 patent. Pet. 30–51. The
`
`
`
`10
`
`

`
`Petition includes a claim chart comprising figures, portions of which are
`boxed in a red outline, and quoted material from Monroe ’183. Id.
`
`1. Monroe ’183
`Monroe ’183 relates generally to a multimedia surveillance system
`based on wireless data transmission, still image and/or step video, video
`streaming, audio, motion detection, event detection and/or physical
`condition detection using various network configurations. Ex. 1009, 1:8–14.
`Figure 4 of Monroe ’183 is reproduced below.
`
`
`Figure 4 depicts an exemplary embodiment using network 26 (or wide area
`network 36) between receiver 24 and the various other components, such as
`server 46 and one or multiple monitoring stations 28–28n. Id. at 18:12–15.
`“The server may be located virtually anywhere on the network.” Id. at
`18:15–16. Monroe ’183 states:
`
`Typically, the sensors will “sense” the presence of
`unauthorized activity and activate recording from the various
`audio and/or video equipment and will activate alarms. This will
`initiate the generation of a signal at each of the activated units.
`The generated signals will then be transmitted to the monitoring
`and recording equipment, as described, to permit both real-time
`surveillance and recordation of activity at the site. Motion
`detection may also be determined using video time/change
`techniques in the well-known manner.
`Id. at 29:36–44.
`
`
`
`11
`
`

`
`Discussion
`2.
`Petitioner maps claim 7’s recitation of “an imaging device positioned
`at a secured location” to Monroe ’183’s disclosure of “Network appliances,
`such as video and/or image appliances, detectors and sensors.” Pet. 30.
`Petitioner maps claim 7’s recitation of “a server including means for
`receiving realtime imagery from said imaging device” to Monroe ’183’s
`circuitry for its “basic camera/audio unit,” including processor 78, video
`memory 72, compressor 76, and storage memory 88. Id. at 31 (annotating
`Monroe ’183’s Figure 32 with a red box encompassing these components).
`Petitioner appears3 to map claim 7’s recitation of “a computer system
`associated with a security system central station, said computer system
`comprising means for processing realtime imagery received from said server
`over a network connection” to Monroe ’183’s disclosure of local security
`server 2028, processor 2026, and monitor station 2030. Id. at 33 (annotating
`Monroe ’183’s Figure 69 with a red box encompassing these components).
`Claim 7 of the ’085 patent also recites: “a computer system
`associated with[4] an emergency response agency, said computer system
`comprising means for processing and displaying said realtime imagery
`which is received over a network connection from the computer system
`associated with the central station.” Ex. 1002, 12:29–34. With respect to
`
`
`3 Petitioner’s claim chart includes quotations from Monroe ’183 general
`disclosure (from its Summary of the Invention section) regarding centralized
`servers and monitoring stations, includes Figure 4 without annotation, and
`includes quotations describing Figure 1, in addition to the annotated
`Figure 69 and a one sentence quotation regarding that figure. Pet. 31–33.
`4 Petitioner does not propose a construction for the phrase “associated with,”
`and Petitioner does not argue how, if at all, the phrase should be construed to
`limit this element or the subsequent phrase (“a computer system associated
`with an emergency response agency”).
`
`
`
`12
`
`

`
`this element of claim 7, the claim chart in the Petition includes several
`quotations and Monroe ’183’s Figure 69, in which a first red box, added by
`Petitioner, surrounds local security server 2028 (including processor 2026
`and monitoring station 2030), and a second red box, also added by
`Petitioner, surrounds remote security server(s) 2036 and remote monitoring
`station(s) 2040. Pet. 33–34.
`Patent Owner raises several arguments in response, including that the
`Petition fails to explain how local security server 2028, monitoring
`station 2038, remote server(s) 2036, and remote monitoring station(s) 2040
`are associated with an emergency response agency. Prelim. Resp. 21.
`Petitioner’s challenge based on this ground does not explain
`adequately how we should understand its mapping of the annotated figures
`of Monroe ’183 to the elements of claim 7. Although the red box
`annotations identify servers that disclose computer systems, Petitioner’s
`claim chart fails to explain how, if at all, the identified servers are either
`“associated with a security system central station” or “associated with an
`emergency response agency.” If a claim chart, on its own, is not clear as to
`how the teachings of a reference map to the elements of a claim, as here, it is
`incumbent upon Petitioner to provide some type of explanation, in any form,
`indicating its position. See 35 U.S.C. § 312(a)(3) (“A petition . . . [must]
`identif[y], in writing and with particularity, . . . the evidence that supports
`the grounds for the challenge to each claim . . . .”); see also 37 C.F.R.
`§ 42.22(a)(2) (each petition must include “[a] full statement of the reasons
`for the relief requested, including a detailed explanation of the significance
`of the evidence including material facts, and the governing law, rules, and
`precedent”). Here, the petition does not identify or explain, with sufficient
`
`
`
`13
`
`

`
`particularity, how the figures or quoted portions of Monroe ’183 teach these
`elements of the claim.5
`Accordingly, we determine that, based on the record before us,
`Petitioner has not shown a reasonable likelihood that it would prevail in
`establishing that Monroe ’183 anticipates claim 7 and claims 8, 9, 11–21,
`24–26, and 27–37, which depend therefrom, of the ’085 patent.
`
`D. Obviousness Grounds Based on Monroe ’183 and Huguenin
`and Sweatte
`Petitioner contends that claim 10 would have been obvious over
`Monroe ’183 in combination with Huguenin, Pet. 51–53, and that claims 22
`and 23 would have been obvious over Monroe ’183 in combination with
`Sweatte, id. at 53–56. Petitioner relies upon Huguenin solely for its alleged
`disclosure of a “[p]assive imaging camera.” Id. at 52. Thus, Huguenin does
`not remedy the deficiencies discussed above regarding whether Monroe ’183
`discloses the elements of claim 7, from which claim 10 depends. Petitioner
`relies upon Sweatte solely for its alleged disclosure of certain “computer
`based ‘algorithms’” that Petitioner contends are not disclosed by
`Monroe ’183. Id. at 53. Thus, Sweatte does not remedy the deficiencies
`discussed above regarding whether Monroe ’183 discloses the elements of
`claim 7, from which claims 22 and 23 indirectly depend. Accordingly, for
`the same reasons discussed in the context of addressing whether Monroe
`’183 anticipates claim 7, we determine that, based on the record before us,
`
`
`5 We recognize that Petitioner challenges similar claim language in other
`claims of the ’085 patent and in petitions challenging related patents. We
`make our determination herein based on the evidence and argument, or lack
`thereof, in the record before us in this proceeding. See 37 C.F.R.
`§ 42.6(a)(3) (prohibiting incorporation by reference of arguments from one
`document into another).
`
`
`
`14
`
`

`
`Petitioner has not shown a reasonable likelihood that it would prevail in
`establishing that Monroe ’183 in combination with Huguenin would have
`rendered obvious the subject matter of claim 10, or that Monroe ’183 in
`combination with Sweatte would have rendered obvious the subject matter
`of claims 22 and 23, to one of ordinary skill in the art at the time of the
`invention.
`
`Anticipation by Monroe ’662
`E.
`Petitioner asserts that Monroe ’662 teaches each and every element of
`claims 21–23 of the ’085 patent. Pet. 56–61. Petitioner contends that
`Monroe ’662 expressly incorporates by reference U.S. Patent Application
`No. 09/594,041, which issued as Monroe ’183. Id. at 56. Claims 21–23
`depend from claim 7.6 Petitioner relies upon Monroe ’183 as disclosing the
`elements of claims 7 and 21. Id. at 57. Petitioner relies upon disclosures
`specific to Monroe ’662 solely for allegedly teaching the additional
`“computer based ‘algorithms’” of dependent claims 22 and 23. Id. Thus,
`Monroe ’662 does not remedy the deficiencies discussed above regarding
`whether Monroe ’183 discloses the elements of claim 7. Accordingly, for
`the same reasons discussed in the context of addressing whether Monroe
`’183 anticipates claim 7, we determine that, based on the record before us,
`Petitioner has not shown a reasonable likelihood that it would prevail in
`establishing that Monroe ’662 anticipates claims 21–23 of the ’085 patent.
`
`Anticipation by Naidoo
`F.
`Petitioner asserts that Naidoo teaches each and every element of
`claims 7, 9, and 36 of the ’085 patent. Pet. 62–66. The Petition includes a
`
`
`6 Claim 21 depends from claim 7; claim 22 depends from claim 21; and
`claim 23 depends from claim 22. Ex. 1002, 13:21, 13:27, 13:36.
`
`
`
`15
`
`

`
`claim chart comprising figures, portions of which are boxed in a red outline,
`and quoted material from Naidoo, some of which is reproduced with
`emphasis. Id.
`
`Naidoo
`1.
`Naidoo is directed to “[a] system and method for distributed
`monitoring and remote verification of conditions surrounding an alarm
`condition in a security system.” Ex. 1017, Abstract. Naidoo’s Figure 1 is
`shown below:
`
`
`Figure 1 of Naidoo “is a simplified block diagram of a security system
`according to one embodiment of the disclosed system and method.” Id. at
`4:50–52. Naidoo explains:
`The security system 100 includes a security gateway 115 (also
`called a “base station”), which is typically located at the desired
`premises 110 to be monitored, and a monitoring client 133,
`typically located at a central station and operatively coupled to
`security gateway 115 through a network 120. Often, security
`gateway 115 is located at the target site. However, on some
`occasions, some or all components of security gateway 115 may
`be located remotely, but remain operatively coupled to security
`sensors 105 and video cameras 112 which are at the premises.
`
`
`
`16
`
`

`
`security
`condition,
`alarm
`an
`of
`detection
`Upon
`gateway 115 captures video (usually through an attached video
`camera 112) of the target site, and sends the video to security
`system server 131 in real time.
`. . .
`Generally, security gateway 115 is a processor-based
`
`device that functions to detect alarm conditions at a target site, to
`capture information relating to such alarm conditions, and upon
`occasion of an alarm condition, to send such information
`ultimately to security system server 131 for verification and
`response. Monitoring client 133 is generally a software program
`that may be used to display some or all of the information
`provided by security gateway 115. . . . One or more operators
`may then use this information to evaluate whether the alarm
`condition corresponds to an actual alarm condition and then take
`additional action, if desired, such as alerting the appropriate
`authorities. Advantageously, in many instances the incidence of
`false alarm being reported to the authorities is reduced, and the
`response effectiveness of the authorities is improved.
`Id. at 5:38–51, 6:19–35.
`Naidoo’s Figure 5 is shown below:
`
`
`
`17
`
`
`
`

`
`Figure 5 of Naidoo “is a flowchart of the operation of the security system
`according to one embodiment of the disclosed system and method.” Id. at
`4:62–64. In step 510, security gateway 115 detects an alarm condition
`corresponding to a possible alarm event. Id. at 13:32–33. In step 520,
`“alarm information may be sent from security gateway 115 to the security
`system server 131 and may include a notification of the alarm condition and
`information relating to the alarm condition, which may include alarm
`video.” Id. at 13:48–52. “After receiving alarm notification 520, security
`system server 131 relays the notification to one or more monitoring
`clients 133 . . . .” Id. at 14:13–15. In step 530, “monitoring client 133
`notifies a monitoring operator of alarm conditions and managing responses
`to these events.” Id. at 14:22–24. In step 535, “a monitoring person or
`monitoring personnel staffing the monitoring client 133 verifies whether the
`alarm signal corresponds to an actual alarm condition using the alarm signal
`information and the segment of real-time video.” Id. at 14:61–64.
`Naidoo states that monitoring client 133 “may possess one or more
`proficiencies . . . . [for example,] understanding foreign languages, handling
`specific types of alarms (e.g., burglar, fire, medical), and possessing a
`minimum level of experience.” Id. at 10:54–62. If the alarm signal is
`deemed to be false, monitoring client 133 may inform security gateway 115
`and further action, such as turning off any siren, bell, or audio alarm, may
`occur. Id. at 15:13–18. If the alarm signal is deemed not to be a false alarm,
`“monitoring personnel may take the appropriate follow-up action.
`Typically, this includes notifying the customer 540 and contacting the
`appropriate authorities 545, which may be the police department, emergency
`medical dispatch, or any other public safety agency.” Id. at 15:24–29.
`Naidoo further explains: “In some embodiments, the security system of the
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`present invention may integrate directly with the systems of various
`emergency response agencies. For example, in one embodiment, upon
`verification of an alarm condition at the central monitoring station, an alarm
`notification and alarm video may be transmitted directly into a police
`dispatch system.” Id. at 15:33–38.
`
`Discussion
`2.
`Petitioner maps claim 7’s recitation of “an imaging device positioned
`at a secured location” to Naidoo’s teaching that the security system
`“includes one or more video cameras 112 that is operable to capture video
`of monitored premises 110.” Pet. 62 (emphasis added by Petitioner)
`(quoting Ex. 1017, 6:51–54). Petitioner appears7 to map claim 7’s recitation
`of “a server including means for receiving realtime imagery from said
`imaging device” to Naidoo’s security gateway 115. Id. at 63 (reproducing
`Naidoo’s Figure 1 and quoting two portions of Naidoo describing security
`gateway 115). Petitioner maps claim 7’s recitation of “a computer system
`associated with a security system central station, said computer system
`comprising means for processing realtime imagery received from said server
`over a network connection” to Naidoo’s security system server and central
`monitoring station. Id. at 64 (reproducing Naidoo’s Figure 7 with a red box
`surrounding, inter alia, data center 132 and central monitoring station 136).
`Petitioner maps claim 7’s recitation of “a computer system associated with
`an emergency response agency, said computer system comprising means for
`processing and displaying said realtime imagery which is received over a
`network connection from the computer system associated with the central
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`7 Petitioner does not include any emphasis in the quoted material from
`Naidoo included in its chart with respect to this element of claim 7.
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`station” to Naidoo’s disclosure of the security system server’s ability to send
`information, including video, to a remote monitoring client. Id. at 65.
`Petitioner appears to equate Naidoo’s “monitoring client 133” with the
`claimed “emergency response agency.” Id. (reproducing Naidoo’s Figure 2
`with a red box around monitoring client 133 and emphasizing, inter alia,
`“emergency response agencies” and “monitoring client” in material quoted
`from Naidoo).
`Patent Owner challenges Petitioner’s position, arguing that the
`Petition appears to equate monitoring client 133 and claim 7’s recitation of a
`computer system associated with an emergency response agency, but fails to
`provide any explanation regarding Petitioner’s position. Prelim. Resp. 29–
`30. Additionally, Patent Owner contends that Petitioner’s premise, that
`Naidoo’s monitoring client discloses an emergency response agency, is
`incorrect. Id. at 30. Patent Owner asserts that, in each instance, Naidoo
`teaches that monitoring clients “monitor” for the purpose of reducing the
`number of false alarms, and that verification of an alarm signal by such
`monitoring clients occurs before contacting an emergency response agency.
`Id. Patent Owner challenges Petitioner’s citations from Naidoo, arguing that
`the role of the monitoring client in that example remains determining
`whether an alarm condition is a false alarm before contacting an emergency
`response agency. Id. at 30–32.
`We agree with Petitioner that Naidoo discloses that security
`server 131 sends the alarm notification, alarm video, and alarm information
`to one or more monitoring clients 133. Ex. 1017, 10:28–31. We disagree
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`with Petitioner’s position, however, that Naidoo discloses expressly8 that
`monitoring client 133 is an “emergency response agency.” In each instance
`to which Petitioner directs our attention in Naidoo, the monitoring client is
`described as performing a monitoring role, to review the alarm information
`and, inter alia, determine whether the alarm is false, i.e., monitoring and
`verifying an alarm condition. The central purpose of Naidoo is reducing
`false alarms before “local authorities are notified.” Id. at 1:23–30 (“Inherent
`in security systems is the problem of false alarms. In situations where local
`authorities are notified of alarms, false alarms can result in the owner of the
`system being subject to significant fines. In addition, false alarms wast