UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`
`
`——————
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`ALARM.COM INC.
`Petitioner
`
`v.
`
`VIVINT, INC.
`Patent Owner
`
`——————
`
`Case No. Unassigned
`Patent 6,147,601
`
`——————
`
`PETITION FOR INTER PARTES REVIEW
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`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`US Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`
`Request for Inter Partes Review
`U.S. Patent No. 6,147,601
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`TABLE OF CONTENTS
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`I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1) ............... 1
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) ................. 1
`
`Related Matters Under 37 C.F.R. § 42.8(b)(2) .......................... 1
`
`The instant petition does not present the same or substantially same
`art or arguments as prior petitions. ............................................. 3
`
`Lead and Back-Up Counsel ........................................................ 6
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`Service Information .................................................................... 6
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`II.
`
`PAYMENT OF FEES – 37 C.F.R. § 42.013 ........................................ 6
`
`III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. §§ 42.104 ............... 7
`
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a) .................. 7
`
`B.
`
`C.
`
`Prior Art Patents ......................................................................... 7
`
`Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested ................................................................................... 8
`
`IV. SUMMARY OF THE ’601 PATENT .................................................. 9
`
`A.
`
`B.
`
`Brief Description of the ’601 Patent .......................................... 9
`
`Summary of the Prosecution History of the ’601 Patent ......... 10
`
`V.
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`CLAIM CONSTRUCTION ............................................................... 11
`
`A.
`
`“[M]essage profile containing outgoing message routing
`instructions” (claims 1 and 22) ................................................ 12
`
`VI. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ’601 PATENT IS UNPATENTABLE. ................. 13
`
`A. Ground 1: Claims 1-2, 22-23, and 26 are obvious under 35 U.S.C. §
`103 in view of Shetty (filed 1996, issued Sept. 15, 1998) and the
`knowledge of a POSITA. ......................................................... 13
`
`1.
`
`2.
`
`3.
`
`Shetty disclosed a sensor determining the state of remote
`equipment. ...................................................................... 14
`
`Shetty disclosed an “interface unit” with a “message generating
`mechanism” that sent “exception messages” to a remote server.
` ........................................................................................ 14
`
`Shetty disclosed that the remote “computer server” was adapted
`to receive incoming exception messages from the “interface
`unit” and send outgoing exception messages to “remote
`
`
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`2
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`Request for Inter Partes Review
`U.S. Patent No. 6,147,601
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`communications devices” specified in a “message profile”.
` ........................................................................................ 17
`
`4.
`
`5.
`
`A POSITA would have understood that Shetty disclosed remote
`user configuration of the “message profile”. ................. 21
`
`It was obvious to include equipment ID codes in incoming
`messages. ........................................................................ 22
`
`B.
`
`Ground 2: Claims 3, 16, 24, 42, and 43 are obvious over Shetty in
`view of Wewalaarachchi. ......................................................... 29
`
`1.
`
`Overview of Wewalaarachchi. ....................................... 29
`
`2. Wewalaarachchi disclosed “normalizing” incoming messages
`using a “normalization module,” storing normalized incoming
`messages, and basing outgoing exception messages on
`normalized incoming messages. .................................... 34
`
`3. Wewalaarachchi disclosed the monitoring of HVAC equipment.
` ........................................................................................ 37
`
`4. Motivation to combine Shetty and Wewalaarachchi ..... 37
`
`C. Ground 3: Claim 30 is obvious under Shetty in view of Britton (filed
`1998). ........................................................................................ 51
`
`1.
`
`2.
`
`Overview of Britton ....................................................... 52
`
`The combination of Shetty and Britton rendered obvious claims
`requiring transmitting and storing of “normal status messages”
`(claim 30). ...................................................................... 54
`
`3. Motivation to combine Britton with Shetty. .................. 56
`
`D. Ground 4: Claim 32 is obvious under Shetty in view of
`Wewalaarachchi and Britton. ................................................... 58
`
`1. Motivation to combine Britton with Shetty, as augmented by
`Wewalaarachchi. ............................................................ 59
`
`VII. CONCLUSION ................................................................................... 62
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`3
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`

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`Request for Inter Partes Review
`U.S. Patent No. 6,147,601
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`EXHIBITS
`
`Exhibit Description
`1301
`U.S. Patent No. 6,147,601 (“’601 Patent”)
`1302
`File History of U.S. Patent No. 6,147,601
`1303
`U.S. Patent No. 5,808,907 (“Shetty”)
`1304
`U.S. Patent No. 6,067,477 (“Wewalaarachchi”)
`1305
`U.S. Patent No. 6,040,770 (“Britton”)
`1306
`Declaration of V. Thomas Rhyne, III, Ph.D. in Support of Petitioner’s
`Request for Inter Partes Review
`Power of Attorney
`
`1307
`
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`4
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`Pursuant to 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42, Petitioner Alarm.com
`
`Inc. (“Petitioner”) respectfully requests Inter Partes Review of claims 3, 16, 24,
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`32, 42, and 43 of U.S. Patent No. 6,147,601 (Ex. 1301, “the ’601 Patent”), which
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`was filed on May 24, 1999, issued on November 14, 2000, and is currently
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`assigned to Vivint, Inc. (“Vivint”) according to the US Patent and Trademark
`
`Office assignment records. There is a reasonable likelihood that Petitioner will
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`prevail with respect to at least one of the claims challenged in this Petition.
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`I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1)
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`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`
`The Petitioner is Alarm.com Incorporated. In addition, parent company
`
`Alarm.com Holdings, Inc. is a real-party-in-interest.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`
`Petitioner is not aware of any pending prosecution of the ’601 Patent.
`
`Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioner states that the ’601 Patent is the
`
`subject of a patent infringement lawsuit by the assignee, Vivint, which may affect,
`
`or be affected by, a decision in this proceeding: Vivint, Inc. v. Alarm.com Inc.,
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`Case No. 2:15-cv-00392-CW (D. Utah, filed June 2, 2015). Vivint has asserted six
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`patents against Petitioner in the Utah litigation, four of which are from the same
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`family—the ’601 Patent, U.S. Patent No. 6,462,654, U. S. Patent No. 6,535,123
`
`and U.S. Patent No. 6,717,513—and two unrelated patents (U.S. Patent Nos.
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`6,924,727 and 7,884,713).
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`

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`Request for Inter Partes Review
`U.S. Patent No. 6,147,601
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`Inter Partes Review: Petitioner has challenged the above patents-in-suit in
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`the following cases:
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` U.S. Patent No 6,147,601: Case No. IPR2016-00116 (granted as to
`
`claims 1, 2, 4-15, 17-23, 25-31 and 33-41 primarily on the basis of
`
`U.S. Patent No. 5,808,907 (“Shetty”)); Case No. IPR2015-02004
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`(denied); and Case No. IPR2016-00155 (denied). These prior
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`petitions are addressed further below.
`
` U.S. Patent No. 6,462,654 in two previously filed petitions: Case No.
`
`IPR2015-02003 (not instituted) and IPR2015-0161 (instituted as to
`
`claims 9, 10, 14, 17, 18, 22, and 25-28 primarily on the basis of
`
`Shetty).
`
` U.S. Patent No. 6,535,123: Case No. IPR2016-00173 (granted as to
`
`all claims primarily on the basis of Shetty) and Case No. IPR2015-
`
`01995 (denied).
`
` U.S. Patent No. 6,717,513: Case Nos. IPR2015-01997 (denied) and
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`IPR2016-00129 (denied).
`
` U.S. Patent No. 6,924,727: Case No. IPR2015-01997 (granted as to
`
`claims 1-9, 14-18, and 22-38) and Case No. IPR2015-02008 (denied).
`
` U.S. Patent No. 7,884,713: Case No. IPR Case No. IPR2015-01965
`
`(granted as to all claims) and Case No. IPR2015-01967 (denied).
`
`
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`2
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`Request for Inter Partes Review
`U.S. Patent No. 6,147,601
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`C. The instant petition does not present the same or substantially
`same art or arguments as prior petitions.
`
`Case IPR2015-02004
`
`The grounds stated in Case No. IPR2015-02004 were based primarily on a
`
`manual reference titled “Supervisory Control and Data Acquisition”. The Board
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`held that the reference’s description of the host did not account for the ’601
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`Patent’s computer server under Typhoon Touch Technologies, Inc. v. Dell, Inc.,
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`659 F.3d 1376, 1380 (Fed. Cir. 2011). Decision Denying Institution, Case No.
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`IPR2015-02004, Paper 14 at 23-24 (P.T.A.B. Mar. 31, 2016).
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`By contrast, the proposed grounds of the instant petition are based on
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`unrelated patent references that disclose the limitations of the claims, including the
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`claimed computer server and message profile, without requiring any modification.
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`Additionally, the Shetty reference has a clear and straightforward disclosure of a
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`message profile, in contrast to the manual reference, which required reading
`
`together disclosures of numerous configuration files.
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`Case IPR2016-00155
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`The grounds stated in the Petition in the above-referenced case were based
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`primarily on the combination of Honeywell, BACnet, and Wewalaarachchi.
`
`Petitioner argued that Honeywell and BACnet are both printed publications
`
`under Section 102(a) and 102(b), but the Board denied institution because it held
`
`that Petitioner did not make “a threshold showing” that those references were
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`
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`3
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`

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`Request for Inter Partes Review
`U.S. Patent No. 6,147,601
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`published and publically available as of the priority date of the ’601 Patent so as to
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`qualify as prior art. Decision Denying Institution, Case No. IPR2016-00155, Paper
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`14 at 11, 14 (P.T.A.B. Apr. 28, 2016). In its Decision, the Board did not address
`
`the substantive disclosures in any of Honeywell, BACnet or Wewalaarachchi.
`
`In Case No. IPR2016-00155, Petitioner relied upon Wewalaarachchi for its
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`overall architecture and its disclosure of field devices, an interface unit, a message
`
`generating mechanism, message profiles, normalization, and countless other
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`limitations that it disclosed that are not relied upon here. For this Petition,
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`Petitioner relies on Wewalaarachchi for the sole purpose of its disclosure relating
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`to “normalization” and application to heating, ventilation, and cooling systems.
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`Indeed, Shetty is relied upon for disclosing every other limitation/aspect of the
`
`challenged claims, except for those relating to “normalization”, which are
`
`disclosed by Wewalaarachchi, and limitations related to a “normal status
`
`message,” which are supplied by Britton. Additionally, the motivation to combine
`
`Wewalaarachchi with Honeywell and BACnet in the prior petition is different,
`
`based on the fact that Wewalaarachchi taught the use of building automation
`
`systems and using the BACnet protocol to communicate with field devices. Here,
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`a person of skill in the art is merely applying a known useful technique from a
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`reference in the same field of endeavor.
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`4
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`Request for Inter Partes Review
`U.S. Patent No. 6,147,601
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`Case IPR2016-00116
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`The grounds stated in the Petition in the above-referenced case were based
`
`primarily on Shetty in combination with other references. With the exception of
`
`claim 16, Petitioner does not challenge any of the same claims as those challenged
`
`in the above-referenced case.1 With respect to claim 16, in the petition in Case No.
`
`2016-00116, Petitioner relied on Shetty alone to render claim 16 obvious,
`
`presenting expert testimony to support its showing that a POSITA would have
`
`found it obvious to modify Shetty to monitor the claimed “heating, ventilating and
`
`cooling equipment” (“HVAC”). This showing went beyond the evidence cited by
`
`the Examiner (the “Wilson” patent, see supra Part IV(B)) in his rejection of claim
`
`16 (prosecution claim 25). However, the Board concluded that Shetty did not
`
`teach the claimed HVAC equipment or provide any suggestion or motivation to a
`
`POSITA to modify Shetty so as to monitor HVAC equipment. Decision Granting
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`Institution, Case No. IPR2016-00116, Paper 14 at 29-30 (P.T.A.B. May 4, 2016).
`
`In this Petition, Petitioner relies on Wewalaarachchi for its teaching of the
`
`claimed heating equipment and argues that it would be obvious to combine Shetty
`
`
`1 Petitioner discusses and provides arguments and claim charts for claims 1-2,
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`22-23, 26 and 30 in this petition, but does not challenge those claims in this
`
`petition. Those claims are discussed solely because they are direct or indirect base
`
`claims of the claims challenged in this petition.
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`5
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`Request for Inter Partes Review
`U.S. Patent No. 6,147,601
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`with Wewalaarachchi both for this purpose, see supra Part VI(B)(4), and for
`
`Wewalaarachchi’s teachings concerning normalization. Because Shetty does not
`
`explicitly disclose the claimed HVAC equipment and Petitioner is offering
`
`additional art and arguing an additional combination, this Petition does not present
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`substantially the same art or argument as Case No. IPR2016-00116.
`
`D. Lead and Back-Up Counsel
`
`Lead Counsel for Petitioner is William H. Mandir, Registration No. 32,156
`
`of Sughrue Mion, PLLC. Back-up Counsel for Petitioner are Roger G. Brooks and
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`Teena-Ann V. Sankoorikal of Cravath, Swaine & Moore LLP, and Brian K.
`
`Shelton, Registration No. 50,245, of Sughrue Mion. Motions for Mr. Brooks and
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`Ms. Sankoorikal to appear pro hac vice are filed concurrently. Pursuant to
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`37 C.F.R. § 42.10(b), a Power of Attorney accompanies this Petition.
`
`E.
`
`Service Information
`
`Service information for lead and back-up counsel is provided in the
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`signature block below. Petitioner also consents to electronic service.
`
`II.
`
`PAYMENT OF FEES – 37 C.F.R. § 42.013
`
`Petitioner authorizes the Patent and Trademark Office to i) charge Deposit
`
`Account 19-4880 for the fees set forth in 37 C.F.R. § 42.15(a) for this Petition for
`
`IPR, and ii) to charge this Deposit Account for any additional fees.
`
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`6
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`Request for Inter Partes Review
`U.S. Patent No. 6,147,601
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`III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. §§ 42.104
`
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`
`Petitioner certifies that the ’601 Patent is available for IPR and that
`
`Petitioner is not barred or estopped from requesting IPR.
`
`B.
`
`Prior Art Patents
`
`The claims of the ’601 Patent have an effective filing date no earlier than
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`January 9, 1999, the filing date of U.S. Provisional Application No. 60/115,305
`
`(“the ’305 provisional application”).2 Petitioner relies upon the following patents,
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`none of which was disclosed during prosecution of the ’601 Patent, and all of
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`which are prior art to all claims of the ’601 Patent:
`
`Art available as prior art under 35 U.S.C. § 102(a) and 102(e):
`
`Ex. 1303 – U.S. Patent No. 5,808,907 (“Shetty”), the application for which
`
`was filed on December 5, 1996, and which issued on September 15, 1998.
`
`Art available as prior art under 35 U.S.C. § 102(e):
`
`Ex. 1304 – U.S. Patent No. 6,067,477 (“Wewalaarachchi”), the application for
`
`which was filed on January 15, 1998, and which issued on May 23, 2000.
`
`Ex. 1305 – U.S. Patent No. 6,040,770 (“Britton”), the application for which
`
`
`2 Petitioner reserves the right to assert in the litigation that some or all of the
`
`claims of the ’601 Patent are not adequately disclosed or supported in the ’305
`
`provisional application, and that such claims have a priority date of May 24, 1999.
`
`
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`7
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`Request for Inter Partes Review
`U.S. Patent No. 6,147,601
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`was filed on September 4, 1998, and which issued on March 21, 2000.
`
`C.
`
`Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested
`
`Petitioner requests IPR of claims 3, 16, 24, 32, 42, and 43 of the ’601 Patent
`
`on the grounds set forth in the table and claim charts below and requests that each
`
`of the claims be found unpatentable. Additional explanation and support is set
`
`forth in the Declaration of Dr. V. Thomas Rhyne (Ex. 1306).
`
`Ground ’601 Patent
`Claims
`1-2, 22-23, 26 Obviousness: Shetty & knowledge of POSITA
`
`Basis for Rejection
`
`13
`
`2
`
`3
`
`44
`
`3, 16, 24, 42, 43 Obviousness: Shetty & Wewalaarachchi
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`30
`
`32
`
`Obviousness: Shetty & Britton
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`Obviousness: Shetty, Wewalaarachchi & Britton
`
`
`3 Petitioner alerts the Board that IPR has already been instituted as to all claims
`
`addressed by Ground 1 (claims 1-2, 22-23, and 26) in Case No. IPR2016-00116,
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`based on art and arguments substantially identical to those set forth in Ground 1
`
`herein. Petitioner presents the prior art establishing the obviousness of these
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`claims solely because the claims addressed in Grounds 2 and 4 below depend
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`directly or indirectly from these claims.
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`4 Petitioner alerts the Board that IPR has already been instituted as to claim 30
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`in Case No. IPR2016-00116, based on art and arguments substantially identical to
`
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`8
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`Request for Inter Partes Review
`U.S. Patent No. 6,147,601
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`IV. SUMMARY OF THE ’601 PATENT
`
`A. Brief Description of the ’601 Patent
`
`The ’601 Patent is directed to systems and methods for “monitoring remote
`
`equipment” such as HVAC
`
`equipment. See Ex. 1301 at
`
`FIG. 1, 5:37-42, Abstract.
`
`The information concerning
`
`the monitored equipment is
`
`communicated to a remote
`
`computer. If an abnormality
`
`is detected in the remote
`
`equipment, the server sends
`
`notifications to specified remote communication devices. The user specifies which
`
`devices receive equipment-related notifications by remotely configuring a profile
`
`on the server via a user interface.
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`The ’601 Patent provides examples of remote HVAC equipment, the status
`
`of which may be (a) monitored by a sensor and (b) communicated to a “central
`
`
`those set forth in Ground 3 herein. Petitioner presents the prior art establishing the
`
`obviousness of these claims solely because the claim addressed in Ground 4 below
`
`depends directly from claim 30.
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`9
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`Request for Inter Partes Review
`U.S. Patent No. 6,147,601
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`computer server” (the “electronic message delivery server”) via an interface unit
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`(denoted “10” in Figure 1). See id. at 2:55-65, 5:43-47, 8:21-32, 10:43-54, FIG. 1.
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`When an abnormality (referred to as an “exception condition,” id. at 3:46-52) is
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`detected in the monitored equipment, the interface unit sends an incoming message
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`to the server. See id. at 2:60-65, 5:47-51. The interface unit may also send a
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`“status signal,” which indicates that the monitored equipment is functioning
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`properly. See id. at 5:44-47.
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`Upon receipt of an exception message, the server sends “an outgoing
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`exception message” to at least one user-specified device. See id. at FIG. 1, 5:51-
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`55, 2:60-3:10, 6:7-25. The user device(s) that receive exception messages are
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`specified in a “message profile” (see id. at 3:3-17, 4:41-47, 5:51-55), which is
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`stored on the server and may be remotely configured by the user via a user
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`interface (see id. at 2:37-44, 3:17-20).
`
`B.
`
`Summary of the Prosecution History of the ’601 Patent
`
`The ’601 Patent issued from U.S. Pat. App. No. 09/317,235 (the “’235
`
`Application”), which also claimed the benefit of the ’305 Application.
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`Ex. 1302.0003. In an office action dated January 20, 2000, the Examiner rejected
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`all pending claims under 35 U.S.C. § 103 on the basis of U.S. Patent No. 5,400,246
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`(“Wilson”). Ex. 1302.0065-67. In response, Applicants submitted proposed claim
`
`amendments, arguing three purportedly distinguishing features: (1) the ability to
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`Request for Inter Partes Review
`U.S. Patent No. 6,147,601
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`remotely configure the message profile via a user interface; (2) the ability to
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`monitor “remote”, as opposed to “local”, equipment; and (3) the ability to
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`accommodate multiple users via multiple user profiles. Ex. 1302.0074-89. The
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`Examiner agreed that “the routing of outgoing message profiles pertaining to the
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`operating status of monitored devices, the message profiles being user definable”
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`would be sufficient to overcome the prior art of record. See Ex. 1302.0072.
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`Applicants then amended the pending claims, and the Examiner allowed the
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`application without further comment.
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`V. CLAIM CONSTRUCTION
`
`A claim subject to Inter Partes Review is given its “broadest reasonable
`
`construction in light of the specification of the patent in which it appears.”
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`37 C.F.R. § 42.100(b). Under this standard, the claim terms are interpreted using
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`“the broadest reasonable meaning of the words in their ordinary usage as they
`
`would be understood by one of ordinary skill in the art, taking into account
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`whatever enlightenment by way of definitions or otherwise that [sic] may be
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`afforded by the written description contained in the applicant’s specification.” In
`
`re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
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`The Petitioner submits that a person of ordinary skill in the art of the ’601
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`Patent would have had, as of January 1999, at least a bachelor’s degree in
`
`computer science, electrical engineering, computer engineering, or equivalent
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`Request for Inter Partes Review
`U.S. Patent No. 6,147,601
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`coursework, and at least two years of experience in remote monitoring and control
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`systems.
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`The Petitioner submits that the following term may need to be construed:5
`
`A.
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`“[M]essage profile containing outgoing message routing
`instructions” (claims 1 and 22)
`
`In its recent decision instituting inter partes review of claims 1, 2, 4-15, 17-
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`23, 25-31, and 33-41 of the ’601 patent, the Patent Trial and Appeal Board
`
`concluded that the broadest reasonable interpretation of “message profile
`
`containing outgoing message routing instructions” is a “data record including
`
`instructions specifying at least one communication device to which an outgoing
`
`message can be routed in response to an incoming message.” Alarm.com Inc. v.
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`Vivint, Inc., IPR2016-00116, Paper 14 at 14 (P.T.A.B. May 4, 2016). For the
`
`purpose of this petition, the Petitioner adopts this construction.
`
`
`5 Petitioner reserves the right to raise different or additional constructions in the
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`district court proceeding between Alarm.com and Vivint.
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`12
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`Request for Inter Partes Review
`U.S. Patent No. 6,147,601
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`VI. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST
`ONE CLAIM OF THE ’601 PATENT IS UNPATENTABLE.
`
`A. Ground 1: Claims 1-2, 22-23, and 26 are obvious under 35 U.S.C.
`§ 103 in view of Shetty (filed 1996, issued Sept. 15, 1998) and the
`knowledge of a POSITA.6
`
`Shetty disclosed the core functionality of the ’601 Patent:
`
`providing information relating to a machine to a user…. [by] sensing
`
`predetermined events relating to the machine and producing
`
`corresponding event signals, delivering the event signals to a remote
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`site, comparing the event signals to a profile of events corresponding
`
`to the user, and delivering a notification signal to the user if the event
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`signals match the profile.
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`Ex. 1303 at 1:29-35. Shetty was directed to a method for remotely monitoring
`
`mobile machines; Shetty provided the example of monitoring earthmoving
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`machines. See id. at 1:7-9, 12-24. Shetty expressly disclosed most of the
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`limitations of 21 claims of the ’601 Patent, including the aspects that Applicants
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`characterized as novel during prosecution (see supra Part IV(B)). In addition to
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`6 Petitioner alerts the Board that IPR has already been instituted as to all claims
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`addressed by Ground 1 (claims 1-2, 22-23, and 26) in Case No. IPR2016-00116,
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`based on art and arguments substantially identical to those set forth in Ground 1
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`herein. Petitioner presents the prior art establishing the obviousness of these
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`claims solely because the claims addressed in Grounds 2 and 4 below depend
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`directly or indirectly from these claims.
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`Request for Inter Partes Review
`U.S. Patent No. 6,147,601
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`the limitations squarely disclosed by Shetty, certain limitations would have been
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`obvious to a POSITA upon reading Shetty.
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`1.
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`Shetty disclosed a sensor determining the state of remote equipment.
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`Claims 1 and 22 require determining the “state” of a “parameter” of “remote
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`equipment”; in claim 22, the determination is made by a “sensor” in “local
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`communication” with the equipment. Shetty disclosed these limitations.
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`Shetty disclosed “a fleet of mobile machines”, in which each “mobile
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`machine[]” “includes a plurality of on-board sensors… for measuring machine
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`parameters.” Ex. 1303 at 1:54, 1:56-58. A “sensor for detecting particles on the
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`oil” was an example of a sensor, and “engine oil temperature” was an example of a
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`machine parameter. See id. at 2:1-3, 1:66. A parameter could be determined by a
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`sensor, or could be calculated by an on-board controller based on sensor input. See
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`id. at 1:13-17.
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`2.
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`Shetty disclosed an “interface unit” with a “message generating
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`mechanism” that sent “exception messages” to a remote server.
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`Claim 1 covers communicating a message concerning the state of the remote
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`equipment to a computer server, which may be an exception message. Similarly,
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`claim 22 requires an “interface unit”, which is locally connected to a sensor, with a
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`“message generating mechanism” for generating messages, including messages
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`that are then sent to the remote server when a sensor detects an equipment
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`Request for Inter Partes Review
`U.S. Patent No. 6,147,601
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`exception condition. Shetty disclosed all of these limitations.
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`Shetty disclosed that “each mobile machine 118 includes a microprocessor
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`based . . . information manager”, which was analogous to the “interface unit”. Id.
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`at 1:58-60. The information manager “receiv[ed] signals from the sensors”. Id.
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`Shetty’s information manager compared data received from the sensors
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`against pre-defined criteria to determine whether an “event” had occurred; if so,
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`the information manager generated an outgoing message reporting the event. See
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`Ex. 1303 at 3:3-5. An “event” was “a predetermined condition or set of conditions
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`of the machine parameters.” Id. at 3:5-6. An event could have identified an
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`exception condition: for example, an event might have been defined as “engine oil
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`temperature exceeds a predetermined threshold.” See id. at 1:63-2:2. If an event
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`had occurred, the information manager would have generated an “event signal”,
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`the content of which could have included both “the occurrence of the event” and
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`“related parameter data”. See id. at 4:39-41. The “event signal” of Shetty was
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`analogous to the “incoming message” described in the claims of the ’601 Patent.
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`Shetty disclosed that the “information manager” was “microprocessor
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`based”, and a POSITA would have understood that the microprocessor would have
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`executed an algorithm to generate messages. Ex. 1306 at ¶ 69. Shetty also
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`disclosed monitoring multiple machines and generating messages concerning
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`multiple events—messages that were then, as discussed below, sent to a single
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`Request for Inter Partes Review
`U.S. Patent No. 6,147,601
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`central computer and matched against different sets of notification criteria. On
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`reading these disclosures of Shetty, a POSITA would also have understood that
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`Shetty’s messages (“event signals”) contained fields, codes, or other identifiers that
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`disclosed the machine generating the event and the nature of the event. Ex. 1306 at
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`¶ 70. Also, because Shetty disclosed that the “parameters stored and the form of
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`the data are dependent upon the particular event,” Shetty disclosed that messages
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`generated by the information manager included an indication of format. Ex. 1303
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`at 2:3-6; see also Ex. 1306 at ¶¶ 71-72. Thus, Shetty disclosed a message
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`generating mechanism.
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`Once generated by the information manager, messages were sent to the “data
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`manager” of Shetty, which corresponded to the claimed “computer server”. See
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`Ex. 1303 at 1:66-2:2 (the data manager is preferably “implemented on a computer
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`workstation”). The data
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`manager was remote from
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`the equipment, as
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`demonstrated by Shetty’s
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`disclosure that the
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`information manager sent
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`event signals “over a radio
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`datalink, a satellite datalink,
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`U.S. Patent No. 6,147,601
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`or similar method.” See id. at 2:21-28. Consequently, Shetty disclosed the
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`monitoring of “remote” equipment, one of the Applicants’ alleged points of
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`novelty. See supra Part IV(B).
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`3.
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`Shetty disclosed that the remote “computer server” was adapted to
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`receive incoming exception messages from the “interface unit” and
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`send outgoing exception messages to “remote communications
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`devices” specified in a “message profile”.
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`Claim 1 requires determining whether an incoming message is an exception
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`message and, if so, forwarding an associated outgoing exception message to one or
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`more “remote communication devices” specified in a “message profile” stored on
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`the computer server. Similarly, claim 22 requires that, based on the incoming
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`exception message, the computer server forwards an outgoing exception message
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`to one or more “remote communication devices” specified in a “message profile”
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`stored on the computer server. Dependent claim 26 requires “a second memory in
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`which communication device identification codes of all of said user-defined
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`communication remote devices are stored, said communication device
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`identification codes being configured in a plurality of said user-defined message
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`profiles.” Shetty disclosed each of these limitations.
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`Shetty disclosed that the data manager 100 (which corresponds to the
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`claimed “computer server”) comprised the components illustrated in Figure 1,
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`Request for Inter Partes Review
`U.S. Patent No. 6,147,601
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`including a “batch processing means 102 for receiving and analyzing the events”
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`from the on-board information manager and storing them in an “event database.”
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`Ex. 1303 at 2:10-11, 2:23-27. Shetty further disclosed that, “[a]t the remote
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`location, the batch processing means 102 compares the events with a profile
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`associated with a user.” Id. at 3:36-37. This user profile:
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`defines the events which trigger the notification and the method of
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`notification. In the preferred embodiment, the user may be notified by
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`an electronic mail message or report 114 or by an [sic] pager report
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`via a pager 116 or by a facsimile report 122.
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`Id. at 2:43-48. Shetty taught that there may be multiple users and multiple user
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`profiles (which are also referred to as “aliases”) on the data manager computer:
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`[E]ach user may have multiple aliases or profiles…. Each profile of
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`each user has a different set of events which must occur before the user
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`is notified. Each profile can be predefined for a different event or
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`different set of events. Each profile may also trigger a different mode
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`or modes of communication (page, Email, fax).
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`Id. at 2:49-61. As shown in Figure 1, user profiles were stored in the data manager
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`computer in a “user profile database 106 [that] contains information relating to all
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`users of the data manager including a user profile which defines which events will
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`require that the user be notified.” Id. at 2:18-21; see also id. at 3:13-15. Thus,
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`Shetty expressly disclosed multiple users and multiple user profiles, another of the
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`three alleged points of novelty relied on by the Applicants. See supra Part IV(B);
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`Request for Inter Partes Review
`U.S. Patent No. 6,147,601
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`see also Ex. 1306 at ¶¶ 78. These profiles were stored in the user profile database,
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`a “second memory” as required by claim 26. See Ex. 1306 at ¶¶ 78-79, 81.
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`Additionally, a POSITA would have foun