Trials@uspto.gov Paper 8
`
`571-272-7822
`Date Entered: April 11, 2018
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
` WIRELESS MONITORING SYSTEMS LLC,
`Patent Owner.
`____________
`
`Case IPR2018-00027
`Patent 9,280,886 B2
`____________
`
`
`
`Before TREVOR M. JEFFERSON, BRIAN J. McNAMARA and,
`IRVIN E. BRANCH, Administrative Patent Judges.
`
`BRANCH, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`571-272-7822
`Date Entered: April 11, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
` WIRELESS MONITORING SYSTEMS LLC,
`Patent Owner.
`____________
`
`Case IPR2018-00027
`Patent 9,280,886 B2
`____________
`
`
`
`Before TREVOR M. JEFFERSON, BRIAN J. McNAMARA and,
`IRVIN E. BRANCH, Administrative Patent Judges.
`
`BRANCH, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`IPR2018-00027
`Patent 9,280,886 B2
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`BACKGROUND
`Unified Patents Inc. (“Petitioner”) filed a petition, Paper 3 (“Pet.”), to
`institute an inter partes review of claims 1, 2, 4–6, 9, 10, 29, 35, 37–42, and
`51–54 (the “challenged claims”) of U.S. Patent No. 9,280,886 B2 (“the ’886
`patent”). 35 U.S.C. § 311. Wireless Monitoring Systems LLC (“Patent
`Owner”) timely filed a Preliminary Response, Paper 7 (“Prelim. Resp.”),
`contending that the petition should be denied as to all challenged claims.
`We have jurisdiction under 37 C.F.R. § 42.4(a) and 35 U.S.C. § 314, which
`provides that an inter partes review may not be instituted unless the
`information presented in the Petition “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.” Having considered the arguments and the
`associated evidence presented in the Petition and the Preliminary Response,
`for the reasons described below, we institute inter partes review of claims 1,
`2, 4–6, 9, 10, 29, 35, 37–42, and 51–54.
`
`REAL PARTIES IN INTEREST
`The Petition identifies Unified Patents Inc. as real party-in-interest.
`Pet. 3. Patent Owner identifies Wireless Monitoring Systems, LLC, and
`Circuit Ventures, LLC, as real parties-in-interest. Patent Owner Mandatory
`Notice Information Under 37 CFR § 42.8(a)(2) (Paper 6) 2.
`
`PENDING LITIGATION
`The Petition states that the ’886 patent has been asserted in the
`following litigations:
`1. Wireless Monitoring Systems LLC v. AT&T Inc. et al., 2-17-cv- 00501
`(E.D. Tex.);
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`2. Wireless Monitoring Systems LLC v. Comcast Corporation, 2- 17-cv-
`00502 (E.D. Tex.);
`3. Wireless Monitoring Systems LLC v. MONI Security, LP, 2-17-cv-
`00503 (E.D. Tex.);
`4. Wireless Monitoring Systems LLC v. Smith Thompson Security, LLC,
`2-17-cv-00504 (E.D. Tex.);
`5. Wireless Monitoring Systems LLC v. Charter Communications, Inc.,
`2-17-cv-00505 (E.D. Tex.);
`6. Wireless Monitoring Systems LLC v. Vector Security, Inc., 2-17-cv-
`00506 (E.D. Tex.).
`Pet. 3.
`Patent Owner states that the ’886 patent has been asserted in the
`following litigations:
`1. Wireless Monitoring Systems, LLC v. ADT, LLC; 2:2016-cv-01226
`2. Wireless Monitoring Systems, LLC v. 3D Security, Inc.; 2:2016-cv-
`01227
`3. Wireless Monitoring Systems, LLC v. CenturyLink, Inc.; 2:2016-cv-
`01228
`4. Wireless Monitoring Systems, LLC v. iSmart Alarm, Inc. d/b/a
`iSmartAlarm; 2:2016-cv-01229
`5. Wireless Monitoring Systems, LLC v. Patroltag, Inc., d/b/a Korner
`d/b/a Korner Safe; 2:2016-cv-01230
`6. Wireless Monitoring Systems, LLC v. Mivatek International, Inc.;
`2:2016-cv- 01238
`7. Wireless Monitoring Systems LLC v. Frontpoint Security Solutions
`LLC; 2:2016-cv-01239
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`8. Wireless Monitoring Systems LLC v. Skylink Technologies Inc.;
`2:2016-cv- 01240
`9. Wireless Monitoring Systems LLC v. SimpliSafe, Inc.; 2:2016-cv-
`01241
`10. Wireless Monitoring Systems LLC v. Vivint, Inc.; 2:2016-cv-01242
`11. Wireless Monitoring Systems LLC v. AT&T, Inc.; 2:2017-cv-00501
`12. Wireless Monitoring Systems LLC v. Comcast Corporation; 2:2017-
`cv-00502
`13. Wireless Monitoring Systems LLC v. MONI Security, LP; 2:2017-cv-
`00503
`14. Wireless Monitoring Systems LLC v. Smith Thompson Security, LLC;
`2:2017- cv-00504
`15. Wireless Monitoring Systems LLC v. Charter Communications, Inc.;
`2:2017-cv- 00505
`16. Wireless Monitoring Systems LLC v. Vector Security, Inc.; 2:2017-cv-
`00506
`Paper 6, 2–3.
`
`THE ’886 PATENT (EXHIBIT 1001)
`The ’886 patent is directed to circuit monitoring, particularly for
`circuits that include field devices such as motion detectors, smoke detectors,
`read switches on doors and windows, and the like. Ex. 1001, 4:66–5:8. A
`number of circuit monitoring devices monitor the status of these field
`devices in security management systems. Id. Figure 1 of the ’886 patent is
`reproduced below.
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`Figure 1 depicts a typical prior art monitored circuit in a security
`management system (SMS). SW1 represents a switchable element of a field
`device. Resistor R2 is in parallel with SW1 and resistor R1 is in series with
`SW1 such that the resistance from terminal 1 to terminal 2 is equal to R1
`when SW1 is closed and is equal to R1+R2 when SW1 is open. Ex. 1001,
`2:4–23. Thus, the status of SW1 may be monitored by continuously
`monitoring the circuit resistance of the terminals 1, 2 at a SMS control unit.
`Id.
`
`The ’886 patent explains that in large SMS installations with many
`field devices, maintaining the system such that the field devices all have
`consistent values of R1 and/or R2 is not practical or may not be desirable.
`As a result, in a mixed system, the monitored-for resistance values at the
`input terminals of the control unit may be different for different circuits. Id.
`at 2:24–3:18. As depicted in Figure 2 below, the ’886 patent describes
`programmable circuit monitoring devices to overcome this limitation.
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`Figure 2 of the ’886 patent depicts a SMS having three monitoring
`devices 10, 20, and 30, configured to monitor circuits A, B, and C, which
`have field devices SWA, SWB, and SWC. The resistance values R1, R1',
`R1'', R2, R2', and R2'' are not standardized. Accordingly, monitoring the
`status of the field devices requires monitoring for different thresholds. Ex.
`1001, 4:66–5:61. Figure 3 below depicts an exemplary input circuit, usable
`with monitoring devices 10, 20, and 30, for accomplishing programmable
`threshold monitoring.
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`The exemplary input circuit of Figure 3 above includes an operational
`amplifier (“OPAMP”) 40, an analog to digital converter (“A/D converter”)
`41, a microprocessor 42, and a communication module 43. Ex. 1001, 5:62–
`6:10. A field circuit such as A, B, or C above (Figure 2) is connected to the
`input of OPAMP 40. OPAMP 40 produces an analog value as the input to
`A/D converter 41, which converts the analog value to a count value,
`representing the end of line resistance of the monitored circuit. This value is
`output to the microprocessor, which compares the value to various
`thresholds to determine the status of the monitored circuit. Id. Figure 4
`below shows a diagrammatic representation of comparisons made by the
`microprocessor 42.
`
`
`As shown in Figure 4 above, a count value between 15,000 and
`16,000 represents normal operating condition for a given circuit. Values
`above 30,000 or below 8,000 represent short circuit and open circuit
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`conditions, respectively. Count values between 8,000 and 15,000 represent
`a first alarm condition, and values between 16,000 and 30,000 represent a
`second alarm condition. Different values may be programmed for different
`monitored circuits. Ex. 1001, 6:34–48. The ’886 patent explains that
`“appropriate software for the microprocessor 42 shown in FIG. 3 may be
`written by any skilled computer programmer.” Id. at 7:11–13.
`Referring back to Figure 3 above, communication module 43
`communicates the condition of a monitored circuit to a SMS control unit 5
`(Figure 2). In a circuit such as A (Figure 2), the communication module
`communicates across a backplane of programmable logic controller (PLC) 6.
`In circuits such as B and C (Figure 2), “the communication module 43 is a
`DeviceNetTM communication module implementing the DeviceNetTM
`communication standard.” Id. at 6:11–16. According to the ’886 patent,
`DeviceNetTM is an open communication standard developed by the Open
`DeviceNet Vendor Association Inc. “used to connect industrial devices
`(such as limit switches, photo electric sensors, process sensors, panel
`displays and operator interfaces) to a network and eliminate expensive hard
`wiring.” Id. at 3:61–68. It “provides improved communication between
`devices as well as important device-level diagnostics not easily accessible or
`available through hard wired I/O interfaces.” Id. at 4:1–3.
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`ILLUSTRATIVE CLAIMS
`Claims 1 and 29, reproduced below, are illustrative:
`1.
`A circuit monitoring device for monitoring individual
`circuits having at least one field device which is configured to
`provide a measured electrical parameter of a circuit, the circuit
`monitoring device comprising:
`a processor, having a memory and an input electrically
`coupled to the circuit which is configured to receive the
`measured electrical parameter of the circuit, and modules
`comprising software to configure the processor, the modules
`including:
`
`a comparison module configured to:
`compare a digital value, which corresponds
`to a magnitude of the measured electrical parameter,
`to at least one threshold value stored in the memory,
`wherein the threshold value defines at least one
`range of digital values, and
`assign a status based on the digital value
`being within the particular range defined by the
`threshold value;
`a communication module configured to generate a
`status signal including at least the assigned status; and
`a transmitter configured to transmit the status signal to a
`remote computing system over a network for output, by the
`remote computing system, of the status.
`29. An apparatus for monitoring a circuit and for coupling to
`a central system comprising:
`a circuit monitoring module configured to receive a
`parameter of the circuit, to compare the parameter to at least one
`threshold value and to assign a discrete value concerning the
`circuit based on the comparison; and
`a communications module to communicate a signal
`indicative of the assigned value and an identification of the
`circuit monitoring module to the central system over a network,
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`Designation
`
`Handley
`
`wherein the status communication transmitted over the
`network is configured to be presented, by a remote computing
`system, as an indication of the assigned value concerning the
`circuit and the identification of the circuit monitoring module.
`ART CITED IN PETITIONER’S CHALLENGES
`Petitioner cites the following references in its challenges to
`patentability:
`Reference
`U.S. Pat. No.
`6,215,405 B1, issued
`Apr. 10, 2001
`U.S. Pat. No.
`5,499,196, issued
`Mar. 12, 1996
`U.S. Pat. No.
`6,057,549, issued
`May 2, 2000
`U.S. Pat. No.
`6,360,277 B1, issued
`Mar. 19, 2002
`
`Exhibit No.
`
`1003
`
`1004
`
`1005
`
`1006
`
`Pacheco
`
`Castleman
`
`Ruckley
`
`CHALLENGES ASSERTED IN PETITION
`Claims
`Statutory Basis
`Challenge
`Obvious over the
`1, 2, 4–6, 9, 10, 38–42,
`combination of
`and 51
`Handley and Pacheco
`Obvious over the
`combination of
`Handley, Pacheco,
`Castleman, and
`Ruckley
`
`29, 35, 37, and 52–54
`
`35 U.S.C. § 103(a)
`
`35 U.S.C. § 103(a)
`
`ORDINARY SKILL IN THE ART
`According to Petitioner, a person of ordinary skill in the art as of
`December 4, 2000 (the earliest priority date of the ’886 patent) “would have
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`at least a Bachelor of Science degree in Electrical Engineering or an
`equivalent field, as well as at least 2-3 years of academic or industry
`experience in circuit design, microprocessor programming, and network
`interfaces, or comparable industry experience(s).” Pet. 13. Petitioner relies
`upon the testimony of Dr. Paul Franzon (EX1002) (“the Franzon
`Declaration”). Id.
`Patent Owner does not address the level of skill in the art. See
`generally Prelim. Resp.
`To the extent necessary, and for purposes of this Decision, we accept
`the assessment offered by Petitioner as it is consistent with the ’886 patent
`and the asserted prior art.
`
`CLAIM CONSTRUCTION
`We interpret claims of an unexpired patent using the broadest
`reasonable construction in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs. LLC v. Lee,
`136 S. Ct. 2131, 2144–46 (2016). In applying a broadest reasonable
`construction, claim terms generally are given their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art in the
`context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d
`1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must
`be set forth in the specification with reasonable clarity, deliberateness, and
`precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`Petitioner proposes constructions for the following terms: comparison
`module (claim 1), communication module (claim 1), circuit monitoring
`module (claim 29), and communications module (claim 29). Pet. 15–23.
`Petitioner contends these “module” terms all should be construed as means-
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`plus-function limitations under 35 U.S.C. § 112, ¶ 6. Id. at 16 (citing
`Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015)).
`Patent Owner criticizes Petitioner’s proposed constructions, as will be
`explained below, but proposes constructions for no other terms. See
`generally Prelim. Resp. Notably, Patent Owner states “[w]hile the Patent
`Owner does not agree that this construction is the proper Phillips
`construction that should be adopted by a District Court, the Patent Owner
`will assume arguendo that it should apply as the broadest reasonable
`interpretation for purposes of this proceeding.” Id. at 5.
`We begin by addressing whether the module elements should be
`construed as means-plus-function limitations under 35 U.S.C. § 112, ¶ 6.
`We then address these terms individually. We need not provide an express
`construction of any other claim terms at this time. See, e.g., Nidec Motor
`Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017
`(Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy,
`and only to the extent necessary to resolve the controversy.’” (quoting Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
`
`The “module” terms
`Petitioner argues the following:
`A claim term that does not recite the word “means” can
`still invoke 35 U.S.C. § 112, ¶ 6 if the term “fails to ‘recite[]
`sufficiently definite structure’ or else recites ‘function without
`reciting sufficient structure for performing that function.’”
`Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir.
`2015). “Generic terms such as ‘mechanism,’ ‘element,’ ‘device,’
`and other nonce words that reflect nothing more than verbal
`constructs may be used in a claim in a manner that is tantamount
`to using the word ‘means’ because they ‘typically do not connote
`sufficiently definite structure’ and therefore may invoke § 112,
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`para. 6.” Id. at 1340. “‘Module’ is a well-known nonce word
`that can operate as a substitute for ‘means’ in the context of
`§ 112, para. 6” because it “is simply a generic description for
`software or hardware that performs a specified function.” Id.
`Pet. 16–17.
`We note that the comparison module and communication module
`terms in claim 1 and the circuit monitoring module and communications
`module in claim 29 each recite functions without reciting structure for
`performing those functions. Accordingly, at this stage of the proceeding, we
`are persuaded to construe the “module” terms as means-plus-function
`limitations under 35 U.S.C. § 112, ¶ 6. We next turn to the module terms
`individually.
`
`Claim 1’s “comparison module”
`Petitioner states that the ’886 patent Specification does not recite
`“comparison module” but points out that claim 1 recites that the
`“comparison module” is a software module that programs a processor to
`perform recited functions. Pet. 18. Specifically, according to claim 1, the
`comparison module is configured to “compare a digital value, which
`corresponds to a magnitude of the measured electrical parameter, to at least
`one threshold value stored in the memory, wherein the threshold value
`defines at least one range of digital values” and “assign a status based on the
`digital value being within the particular range defined by the threshold
`value.” Id. Petitioner contends that, as structure, the ’886 patent describes a
`special-purpose computer programmed to perform the claimed functions. Id.
`at 18–19 (citing Ex. 1001, 6:5–8, 6:34–48, 7:17–19, 7:25–40, Figs. 3 and 4);
`see also Ex. 1002 ¶¶ 44–45.
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`Patent Owner does not provide a persuasive rebuttal to Petitioner’s
`proposed construction of claim 1’s “comparison module” (see generally
`Prelim. Resp.) but “does not agree” that “comparison module” falls under 35
`U.S.C. § 112, ¶ 6. See, e.g., id. at 22.
`At this stage of the proceeding, we are persuaded to adopt Petitioner’s
`proposed construction for claim 1’s “comparison module.” Pet. 18–19.
`Specifically, for purposes of this decision, the “comparison module” is
`construed under 35 U.S.C. § 112, ¶ 6 to be “a special-purpose computer
`programmed to” “compare a digital value, which corresponds to a magnitude
`of the measured electrical parameter, to at least one threshold value stored in
`the memory, wherein the threshold value defines at least one range of digital
`values” and “assign a status based on the digital value being within the
`particular range defined by the threshold value.”
`
`Claim 1’s “communication module”
`Petitioner contends that claim 1’s “communication module” also is
`recited as a software module that programs the processor to perform a
`function. Pet. 19–20. According to claim 1, the communication module is
`configured to “generate a status signal including at least the assigned status.”
`Petitioner contends that, as structure, the ’886 patent describes “a special-
`purpose computer programmed to” “generate a status signal including at
`least the assigned status.” Id. (citing Ex. 1001, 6:5–10, 7:25–40, Figs. 3 and
`4); see also Ex. 1002 ¶¶ 46–47.
`Patent Owner disputes Petitioner’s proposed construction of claim 1’s
`“communication module.” Prelim. Resp. 11–22. Patent Owner argues that
`Petitioner proposes a construction for “communication module” that is
`“inconsistent” with Petitioner’s proposed construction for the same term, the
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`“communications module,” in claim 29 (emphasis added) and cites the
`Examiner’s interchangeable use of the singular and plural forms of
`“communication” as support for the notion that the terms are identical. Id.
`12–16 (citing Ex. 2002 (’886 patent file history), 168–169). Patent Owner
`argues that “communication module” and “communications module” should
`be construed identically as “a scanner that converts assigned bits or flags
`into a DeviceNet packet.” Prelim. Resp. 18 (citing Ex. 1001, 7:34–54, 5:44–
`54); see Ex. 2001, 7:50–54 (“The communications module 7, being a
`conventional scanner module produced by the manufacturer of the PLC
`equipment, scans the EOL module 20 using conventional DeviceNet
`standards”).
` We are persuaded at this stage of the proceeding that Petitioner’s
`construction of claim 1’s “communication module” is correct. Pet. 19–20.
`Specifically, we are persuaded, for the purposes of this decision, to construe
`“communication module” under 35 U.S.C. § 112, ¶ 6 as “a special-purpose
`computer programmed to” “generate a status signal including at least the
`assigned status.”
`We are not persuaded by Patent Owner’s arguments that
`“communication module” (claim 1) and “communications module” (claim
`29) must be construed identically. Prelim. Resp. 12–16. Claim 1 and claim
`29 clearly recite different functions for the different terms, thereby requiring
`different constructions.
`Moreover, we are not persuaded that the structure of claim 1’s
`communication module corresponds to “a scanner that converts assigned bits
`or flags into a DeviceNet packet.” Id. at 18. That structure corresponds to
`the “communications card 7” (emphasis added) of the SMS control unit 5
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`(Figure 2). Ex. 2001, 5:9–15, 47–53. Although the “communications card
`7” (Figure 2, ref. no. 7) also is referred to as “communications module 7”
`(Ex. 2002, 7:45–54), the “communications card 7” is not described as
`“generat[ing] a status signal including at least the assigned status” that is
`then transmitted “to a remote computing system” as the transmitter of claim
`1 then does with the generated status signal. The “communications card 7”
`(or “communications module”) is part of the remote computing system to
`which the status signal is transmitted.
`
`Claim 29’s “circuit monitoring module”
`Claim 29 recites that the “circuit monitoring module” is configured to
`“receive a parameter of the circuit, to compare the parameter to at least one
`threshold value and to assign a discrete value concerning the circuit based on
`the comparison.” Petitioner contends that this function corresponds to the
`structure depicted in Figure 3 that includes an OPAMP, an A/D converter,
`and a microprocessor. Pet. 20–22 (citing Ex. 1001, 4:47–49, 5:5–8, 5:24–
`28, 5:37–6:10, Figs. 2, 3). Petitioner proposes that “circuit monitoring
`module” be construed accordingly. Id.
`Patent Owner does not dispute Petitioner’s proposed construction
`except to specify that the OPAMP must be a “differential OPAMP.” Prelim.
`Resp. 22–27.
`At this stage of the proceeding, we are persuaded that Petitioner’s
`proposed construction of “circuit monitoring module” is correct. We are not
`persuaded that the OPAMP must be a “differential” OPAMP, as Patent
`Owner argues, because the ’886 patent does not specify that the OPAMP 40
`(Figure 3), which is the basis for the structure, is specifically a differential
`OPAMP. The ’886 patent does not use the term, and Patent Owner does not
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`provide sufficient persuasive evidence to convince us that the term should be
`construed so narrowly. See generally Ex. 1001 and Prelim Resp.
`
`Claim 29’s “communications module”
`Claim 29 recites that the “communications module” “communicate[s]
`a signal indicative of the assigned value and an identification of the circuit
`monitoring module to the central system over a network.” Petitioner
`explains that the Examiner identified the corresponding structure of the
`communications module as the “communication module” depicted in Figure
`3. Pet. 22. Petitioner contends that the Specification discloses two
`alternative structures for the communications module: “(1) a device adapted
`for communication across the back plane of a programmable logic controller
`to a microprocessor, or (2) a DeviceNetTM communication module
`implementing the DeviceNetTM communication standard.” Id. at 22–23
`(citing Ex. 1001, 5:50–53, 5:62–6:10, 6:11–16; Ex. 1002 ¶¶ 51–53).
`Patent Owner argues that Petitioner has proposed inconsistent
`constructions for the “communication(s) module” and that the
`communications module should be construed as “a scanner that converts
`assigned bits or flags into a DeviceNet packet.” Prelim. Resp. 12, 18–20.
`In view of the Examiner’s mapping of “communications module” as
`Petitioner proposes, we are persuaded that the Petitioner’s proposed
`construction is correct. We are not persuaded by Patent Owner’s arguments
`for the reasons we discussed previously.
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`ANALYSIS OF PRIOR ART CHALLENGES
`Introduction
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`Obviousness of Claims 1, 2, 4–6, 9 10, 38–42, and 51 Over the combination
`of Handley and Pacheco
`Petitioner contends that claims 1, 2, 4–6, 9, 10, 38–42, and 51 are
`obvious over the combination of Handley and Pacheco. Pet. 23–55.
`Petitioner maps the elements of these claims to the teachings of Handley
`and/or Pacheco and provides a rationale for combining the teachings of the
`references. Id. Petitioner supports its contentions with references to the
`Franzon Declaration. Id. (citing Ex. 1002 ¶¶ 54–103).
`Patent Owner argues error based largely on claim construction, as
`discussed above. Prelim. Resp. 11–21. Patent Owner does not present any
`testimonial evidence to support its position. See generally id.
`We begin with a brief overview of the prior art, then address the
`contentions of Petitioner and Patent Owner.
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`Prior art overview
`Handley discloses a security system having a programmable
`temperature sensor and various other sensors. Handley, Abstract. Figure 1
`of Handley is reproduced below.
`
`
`
`Figure 1 of Hadley depicts alarm control panel 10 and keypad
`controller 20. Handley’s temperature sensor “monitor[s] the temperature in
`the space in which the keypad controller is to be located” and includes “at
`least one alarm set point programmable as to level.” Ex. 1003, 2:33–36. The
`temperature sensor “is also provided with an interface or signal conditioning
`means to allow processing means 28 to receive a signal indicative of the
`temperature, compare this signal against one or more set points and take the
`appropriate action.” Id. at 3:59–63.
`Figure 2 of Handley is reproduced below.
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`Handley Figure 2 is a graph depicting how the keypad controller
`interprets data from the temperature sensor. The alarm system interprets a
`signal at ALARM 1 Threshold as a first alarm event, ALARM 2 Threshold
`as a second alarm event, and ALARM 3 Threshold as a third alarm event.
`Id. at 4:47–5:8. As these thresholds are breached, signals are sent indicating
`the alarm conditions. Id. Alarm conditions are deactivated at corresponding
`restore level. Id. at 5:8–19.
`Pacheco is directed to providing “an improved computer-based
`notification system for reporting the occurrence of events within a monitored
`structure which is capable of providing enhanced information regarding the
`nature of alarm conditions detected by each sensor included as part of the
`notification system.” Ex. 1004, 2:9–15. Figure 1 of Pacheco is reproduced
`below.
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`Figure 1 of Pacheco depicts a computer-based notification system
`having a computer system with a video monitor, mouse, and keyboard
`(elements 12, 14, 16, 18), an alarm interface (element 26), and multiple
`sensors (elements 28-1 through 28-N). Id. at 4:31–41, 4:65–67. The sensors
`can include switches, motion detectors, keypads, temperature sensors, or
`other commercially available type of sensors. Id. at 5:19–50.
`Pacheco’s alarm interface is shown in greater detail in Figure 2,
`reproduced below.
`
`
`Figure 2 of Pacheco shows a microprocessor (element 44) that, for
`each sensor, receives information from the sensor, determines its state, and
`stores its state in a respective data register (element 46). Id. at 4:65–5:3,
`6:16–25, 6:45–7:30. The alarm interface also includes an RS 485 type
`interface (element 52) for transmitting the processed information to the
`computer system. Id. at 4:65–5:3, 6:16–25.
`
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`Claim 1
`Petitioner explains that the combination of Handley’s alarm control
`panel 10 and keypad controller 20, or the keyboard controller 20 alone,
`correspond to claim 1’s “circuit monitoring device.” Petitioner states that
`these elements monitor multiple sensors, including a temperature sensor 32.
`Pet. 34 (citing Ex. 1003, 2:58–3:16, 5:49–63 and Fig. 1). Accordingly. we
`are persuaded Petitioner has shown Handley discloses “[a] circuit
`monitoring device for monitoring individual circuits having at least one field
`device which is configured to provide a measured electrical parameter of a
`circuit.”
`Petitioner also explains how claim 1’s processor having a comparison
`module and a communication module is disclosed by the combination of
`Handley and Pacheco and explains why a person of ordinary of skill in the
`art would have found it obvious to combine the teachings of the references.
`Pet. 36–46 (citing Ex. 1002, 1003, and 1004). Specifically, Petitioner
`explains that Handley’s processing means receives digital signals from the
`temperature sensor, compares the signal to various alarm set points, and
`produces a corresponding status signal. Id.; see Ex. 1003, 3:42–5:33, Figs.
`1–3. Petitioner also explains how Pacheco uses a microprocessor to receive
`sensor values, determine the state of the sensor by comparing values to
`various thresholds, and displays status indicators of sensors on a video
`monitor. Id.; see Ex. 1004, 6:45–7:45, Figs. 1–3, 8C. Petitioner contends
`that it would have been obvious to a person of ordinary skill in the art “to
`have combined the transmission of specific alarm notification information
`to, and the display of such information at, a remote computer system, as
`taught in Pacheco, with an alarm system that transmits alarm notification
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`information over a network to a remote monitoring station, as taught in
`Handley” thereby providing “more specific alarm notification
`information . . ., which would then allow personnel at the remote monitoring
`station to provide a better, targeted response based on this information.” Pet.
`32–33 (citing Ex. 1002, ¶ 68).Accordingly, we are persuaded Petitioner has
`shown the combination of Handley and Pacheco discloses claim 1’s
`processor having comparison and communication modules. We also are
`persuaded Petitioner has shown the combination of Handley and Pacheco
`teaches claim 1’s transmitter “configured to transmit the status signal to a
`remote computing system over a network for output, by the remote
`computing system, of the status.” Pet. 46–48; see, e.g., Ex. 1004, 6:45–7:45,
`Figs. 1–3, 8C.
`Thus, Petitioner has cited specific subject matter that supports its
`assertion that the combination of Handley and Pacheco discloses all the
`elements of claim 1. We discern no deficiency in Petitioner’s
`characterization of Handley and Pacheco, and the knowledge in the art, or in
`Petitioner’s reasoning as to why one of ordinary skill in the art would have
`been prompted to modify or combine the teachings of Handley and
`Pacheco. In addition, for purposes of this Decision, we accept Dr. Franzon’s
`testimony concerning the relevant teachings of Handley and Pacheco. See
`generally Ex. 1002.
`As discussed above, Patent Owner argues that Petitioner’s
`construction of claim 1’s “communication module” is improper and that
`Petitioner has not shown the communication module to be in the prior art
`when the communication module is properly construed. Prelim. Resp. 11–
`21. Because we do not find persuasive Patent Owner’s arguments regarding
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`the construction of claim 1’s communication module, we do not find Patent
`Owner’s prior art argument persuasive. Patent Owner does not otherwise
`persuasively dispute Petitioner’s assertion that the combination of Handley
`and Pacheco discloses all the elements of claim 1.
`In consideration of
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