Trials@uspto.gov
`571-272-7822
`
`Paper 38
`Date: January 26, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`RESIDEO TECHNOLOGIES, INC. and
`CENTRAL SECURITY GROUP – NATIONWIDE, INC.,1
`Petitioner,
`v.
`UBIQUITOUS CONNECTIVITY, LP,
`Patent Owner.
`
`IPR2019-01335
`Patent 8,064,935 B2
`
`
`
`
`
`
`
`
`
`Before JEAN R. HOMERE, JOHN F. HORVATH, and
`MELISSA A. HAAPALA, Administrative Patent Judges.
`HORVATH, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`1 Central Security Group – Nationwide, Inc., who filed a petition in
`IPR2019-01609, has been joined as a petitioner to this proceeding.
`
`
`
`
`571-272-7822
`
`Paper 38
`Date: January 26, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`RESIDEO TECHNOLOGIES, INC. and
`CENTRAL SECURITY GROUP – NATIONWIDE, INC.,1
`Petitioner,
`v.
`UBIQUITOUS CONNECTIVITY, LP,
`Patent Owner.
`
`IPR2019-01335
`Patent 8,064,935 B2
`
`
`
`
`
`
`
`
`
`Before JEAN R. HOMERE, JOHN F. HORVATH, and
`MELISSA A. HAAPALA, Administrative Patent Judges.
`HORVATH, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`1 Central Security Group – Nationwide, Inc., who filed a petition in
`IPR2019-01609, has been joined as a petitioner to this proceeding.
`
`
`
`
`
`IPR2019-01335
`Patent 8,064,935 B2
`
`INTRODUCTION
`I.
`A. Background and Summary
`Resideo Technologies, Inc. (“Resideo”) filed a Petition requesting
`inter partes review of claims 1–22 (“the challenged claims”) of U.S. Patent
`No. 8,064,935 B2 (Ex. 1001, “the ’935 patent”). Paper 2 (“Pet.”), 3–4.
`Ubiquitous Connectivity, LP (“Patent Owner”) filed a Preliminary
`Response. Paper 6 (“Prelim. Resp.”). Upon consideration of the Petition
`and Preliminary Response, we instituted inter partes review of all
`challenged claims on all grounds raised in the Petition. Paper 7 (“Dec.
`Inst.”). Subsequent to our Institution Decision, Central Security Group –
`Nationwide, Inc. (“CSG”) was joined with Resideo as Petitioner in this
`proceeding. Paper 10.
`Patent Owner filed a Response to the Petition (Paper 23, “PO Resp.”),
`Petitioner filed a Reply (Paper 27, “Pet. Reply”), and Patent Owner filed a
`Sur-Reply (Paper 29, “PO Sur-Reply”). An oral hearing was held on
`October 27, 2020, and the hearing transcript is included in the record. Paper
`37 (“Tr.”).
`We have jurisdiction under 35 U.S.C. §§ 6, 318. This is a Final
`Written Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the
`reasons set forth below, we find Petitioner has shown by a preponderance of
`evidence that claims 1–11 and 13–22 are unpatentable, but has failed to
`show by a preponderance of evidence that claim 12 is unpatentable.
`B. Real Parties-in-Interest
`Resideo identifies itself, the City of San Antonio, Texas, the City
`Public Service Board of San Antonio, Texas d/b/a CPS Energy, Ademco,
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`Patent 8,064,935 B2
`Inc., and Honeywell International, Inc. as real parties-in-interest.2 Pet. 1.
`CSG identifies itself and Guardian Security Systems, Inc., CSG Holdco,
`Inc., Central Security Group Holdings, Inc., Central Security Group Holdco,
`Inc., and Central Security Group, Inc. as real parties-in-interest. Paper 10, 2.
`Patent Owner identifies itself as the real party-in-interest. Paper 3, 2.
`C. Related Matters
`The parties identify Ubiquitous Connectivity, LP v. City of San
`Antonio d/b/a CPS Energy, 5:18-cv-00718 (W.D. Tex.), Ubiquitous
`Connectivity, LP v. TXU Energy Retail Co. LLC, 3:18-cv-02084 (N.D. Tex.),
`Ubiquitous Connectivity, LP v. Central Security Group – Nationwide, Inc.,
`4:18-cv-00368 (N.D. Okla.), and Ubiquitous Connectivity, LP v. TXU
`Energy Retail Co. LLC, 6:17-cv-00433 (E.D. Tex.) as district court
`proceedings that can affect or be affected by this proceeding. Pet. 1; Paper
`3, 2; Paper 10, 2–3. The parties also identify IPR2019-01336, challenging
`related U.S. Patent No. 9,602,655 B2, as an inter partes review that can
`affect or be affected by this proceeding. Pet. 1; Paper 3, 2; Paper 10, 2–3.
`Patent Owner further identifies Application No. 16/503,883 as a pending
`application that can affect or be affected by this proceeding. Paper 3, 3.
`D. The ’935 Patent
`The ’935 patent relates to “a remote monitoring and control system
`for an environment.” Ex. 1001, 1:18–19. Such a system is shown in Figure
`1 of the ’935 patent, which is reproduced below.
`
`
`2 Honeywell International, Inc. disputes its identification as a real party-in-
`interest. Pet. 1, n. 1.
`
`3
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`IPR2019-01335
`Patent 8,064,935 B2
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`Figure 1 is a block diagram illustrating an environmental connectivity and
`control system. Id. at 3:36–38. The system includes base control unit 16,
`environmental devices 21, master remote control unit 12, associated remote
`control units 26, and cellular telephone network 22. Id. at 3:51–60, Fig. 1.
`Master remote control unit 12 interfaces with base control unit 16 to monitor
`and control devices 21 via “a short message and/or the data bearer cellular
`telephone network 22.” Id. at 3:51–57. Associated remote control units 26
`also interface with base control unit 16 to monitor and control devices 21
`when in proximity of base control unit 16. Id. at 3:57–60.
`Controlled devices 21 may include HVAC (heating, ventilation, and
`air conditioning) units, refrigerators, water heaters, security systems,
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`IPR2019-01335
`Patent 8,064,935 B2
`cameras, lights and other devices. Id. at 11:46–53, 12:1–6. Environmental
`conditions monitored by the system may include utility and power status,
`humidity, door and window condition, temperature, smoke or toxic gas
`presence, structural and security integrity, and others. Id. at 11:32–39, 12:6–
`12. Base control unit 16 “consists [of] a wireless module 70 communicating
`with a microcontroller 106 for operating a number of separate subsystems”
`and “communicates status information to the remote control unit either on a
`periodic or event-driven basis.” Id. at 4:46–48, 9:1–3. For example, base
`control unit 16 communicates various alarms to remote control unit 12, such
`as burglar and fire alarms, or temperature threshold alarms for an HVAC or
`freezer. Id. at 9:6–12.
`Remote control unit 12 can be a “conventional cellular telephone
`handset[] . . . equipped with a programming kernel, such as Java or J2ME.”
`Id. at 6:65–7:1. Remote control unit 12 “communicates with the base
`control unit 16 to affect the operational aspects thereof and peripheral
`equipment operatively attached thereto.” Id. at 6:50–52. Remote control
`unit 12 executes application software to “communicate[] . . . command[s] to
`the base control unit 16 through the cellular telephone network 22.” Id. at
`6:58–60. “The data path between the remote control unit and the base
`control unit is SMS (‘simple message service’).” Id. at 7:9–11. SMS
`messages are “processed within the cellular telephone’s application
`software” and “by the base control unit applications software.” Id. at 7:39–
`41, 11:7–9.
`
`E. Illustrative Claims
`Claim 1 of the ’935 patent is illustrative of the claimed subject matter,
`and is reproduced below.
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`Patent 8,064,935 B2
`1. A wireless system comprising:
`an environmental device;
`a base unit operatively interfaced with the environmental
`device and configured
`to control an operation of
`the
`environmental device;
`a remote unit having wireless connectivity and being
`configured to send and receive short message service (SMS)
`messages; and
`a wireless module operatively interfaced with the base unit
`and configured to provide wireless connectivity between the base
`unit and the remote unit,
`wherein the base unit is configured to send a first SMS
`message, including current environmental information, to the
`remote unit through the wireless module,
`wherein the remote unit is configured to send a second
`SMS message, including a command for the environmental
`device, to the base unit through the wireless module, and
`wherein the base unit is configured to receive the second
`SMS message, including the command, and to send the
`command to the environmental device to control the operation of
`the environmental device.
`Ex. 1001, 13:37–58.
`Claims 11 and 18–22 are also independent claims that, although
`directed to different systems and system components, are substantially
`similar in scope to claim 1. For example, claims 1, 11, 19, and 20 are all
`directed to a wireless system having a wireless base unit (e.g., a base unit
`and wireless module) configured to exchange SMS messages with a remote
`unit to monitor and control an environmental device. Compare id. at 13:37–
`58, with id. at 14:19–38, id. at 15:9–27, and id. at 15:28–16:4. Claims 19
`and 20 further require the base unit to include a transmitter, receiver, and
`controller. Id. at 15:9–27, 15:28–16:4. Claims 18, 21, and 22 are directed to
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`IPR2019-01335
`Patent 8,064,935 B2
`a component of the system of claims 1, 11, 19, and 20, namely, to a base unit
`having a communication interface, wireless module, and microcontroller that
`is configured to exchange SMS messages with a remote unit to monitor and
`control an environmental device. Compare id. at 14:59–15:8, with id. at
`16:5–22 and id. at 16:23–38. The remaining challenged claims depend
`directly or indirectly from claim 1 or claim 11.
`F. Evidence3
`
`Effective Date
`Aug. 14, 2001
`Feb. 25, 2004
`
`Reference
`US 6,275,710 B1
`Oinonen
`EP 1391861 A2
`Bielski4
`Chi-Hsiang Wu and Rong-Hong Jan, System
`integration of WAP and SMS for home
`network system, 42 Computer Networks
`493–502 (2003) (“Wu”)
`June 6, 2002
`Sears
`US 2002/0069263 A1
`Menard
`US 2002/0177428 A1 Nov. 28, 2002
`Antila
`US 6,583,770 B1
`June 24, 2003
`Ehlers
`US 2004/0117330 A1
`July 28, 20036
`Whitley
`WO 99/49680
`Sept. 30, 1999
`
`July 15, 20035
`
`Exhibit
`1016
`1017
`
`1018
`
`1019
`1020
`1021
`1022
`1023
`
`
`3 Petitioner also relies upon the Declarations of Kevin Jeffay (Ex. 1003),
`Rupert Lee (Ex. 1028), and Sylvia D. Hall-Ellis, Ph.D. (Ex. 1029). Patent
`Owner relies upon the Declaration of Ivan Zatkovich (Ex. 2004).
`4 Bielski is a certified translation of a European Patent Application originally
`published in German. See Ex. 1017, 20–39.
`5 Petitioner relies upon the Lee and Hall-Ellis Declarations to establish the
`public availability of Wu on the effective date. See Pet. 12–13; Paper 11.
`Patent Owner does not challenge the public availability of Wu. See PO
`Resp. 45–62.
`6 Petitioner relies on the filing date of Ehlers to establish its availability as
`prior art under 35 U.S.C. § 102(e). See Pet. 14.
`
`7
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`IPR2019-01335
`Patent 8,064,935 B2
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`2B
`2C
`2D
`
`1B
`1C
`1D
`1E
`2A
`
`G. Instituted Grounds
`We instituted inter partes review on the following grounds:
`Ground
`Claims
`35 U.S.C. §
`References
`1A
`1–3, 7, 11–15,
`103(a)
`Oinonen, Whitley
`17–19, 21
`4–6, 16
`103(a)
`Oinonen, Whitley, Sears
`8
`103(a)
`Oinonen, Whitley, Antila
`9, 10
`103(a)
`Oinonen, Whitley, Antila, Ehlers
`20, 22
`103(a)
`Oinonen, Whitley, Menard
`1–4, 7–9, 11–
`103(a)
`Bielski, Wu
`15, 17–19, 21
`5, 6, 16
`103(a)
`Bielski, Wu, Sears
`10
`103(a)
`Bielski, Wu, Ehlers
`20, 22
`103(a)
`Bielski, Wu, Menard
`II. ANALYSIS
`A. Level of Ordinary Skill in the Art
`Petitioner’s declarant, Dr. Jeffay, identifies a person of skill in the art
`(“POSITA”) as someone with “at least a bachelor’s degree in electrical
`engineering or computer science and at least two years of industry
`experience in the field of embedded systems and/or process control.”
`Ex. 1003 ¶ 10. Patent Owner proposes a similar definition, namely, a person
`having “at least a bachelor’s degree in electrical engineering or computer
`science, and at least two years of industry experience in the fields of
`computers and communications.” PO Resp. 4 (citing Ex. 2004 ¶ 29). Patent
`Owner proposed the same definition pre-institution, and we adopted that
`definition in our Institution Decision finding “little difference between
`[Petitioner’s] and Patent Owner’s assessment of the level of skill in the art.”
`Dec. Inst. 7–8. Neither party disputes that decision. See PO Resp. 4;
`Pet. Reply. Therefore, we maintain our decision to adopt Patent Owner’s
`definition of the level of skill in the art.
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`Patent 8,064,935 B2
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`B. Claim Construction
`In inter partes reviews, we interpret a claim “using the same claim
`construction standard that would be used to construe the claim in a civil
`action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2019). Under this
`standard, a claim is construed “in accordance with the ordinary and
`customary meaning of such claim as understood by one of ordinary skill in
`the art and the prosecution history pertaining to the patent.” Id. Only claim
`terms which are in controversy need to be construed and only to the extent
`necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan
`Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).
`1. Environmental Device, Base Unit,
`Cellular/Remote Unit, Communications Interface
`Petitioner requests these terms be construed to have their plain and
`ordinary meaning, and provides express constructions “[i]f necessary.”
`Pet. 7–10. In our Institution Decision, we declined to expressly construe
`these terms because Patent Owner did not argue that they required express
`construction and did not dispute any of Petitioner’s conditionally proposed
`constructions. See Dec. Inst. 8–9. Neither party disputes that decision,
`which we maintain here. See PO Resp. 4–14; Pet. Reply.
`2. Microcontroller
`Patent Owner argues a “microcontroller” is “a special-purpose
`computing device including at least a CPU [Central Processing Unit], main
`memory, timing circuits, and I/O [Input/Output] circuitry designed for a
`minimal quantity of chips and then programmed to handle a particular task.”
`PO Resp. 11 (citing Ex. 2004 ¶ 48). Patent Owner argues this construction
`is supported by the Microsoft Computer Dictionary, the Comprehensive
`Dictionary of Electrical Engineering, and the ’935 patent. Id. at 7–11.
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`The Microsoft Computer Dictionary defines the term
`“microcontroller” to mean:
`A special-purpose, single-chip computer designed and built to
`handle a particular, narrowly defined task. In addition to the
`central processing unit (CPU), a microcontroller usually
`contains its own memory, input/output channels (ports), and
`timers. When part of a larger piece of equipment, such as a car
`or a home appliance, a microcontroller is an embedded system.
`Ex. 2006, 337. The Comprehensive Dictionary of Electrical Engineering
`defines the term to mean:
`An integrated circuit chip that is designed primarily for control
`systems and products. In addition to a CPU, a microcontroller
`typically includes memory, timing circuits, and I/O circuitry.
`The reason for this is to permit the realization of a controller
`with a minimal quantity of chips, thus achieving maximal
`possible miniaturization. This in turn, will reduce the volume
`and the cost of the controller. The microcontroller is normally
`not used for general purpose computation as is a
`microprocessor.
`Ex. 2007, 439.
`Patent Owner argues the microcontroller disclosed in the ’935 patent
`is consistent with these definitions. See PO Resp. 10–11 (citing 1001, 3:44–
`45, 4:62–66, Fig. 4; Ex. 2004 ¶¶ 45–47); PO Sur-Reply 1–2. In particular,
`Patent Owner argues a person skilled in the art would have understood
`microcontroller 106 shown in Figure 4 of the ’935 patent is consistent with
`these definitions because it (1) “includes I/O circuitry components to interact
`with the subsystems given that no external I/O circuitry is illustrated
`between the microcontroller and the subsystems,” (2) “works in conjunction
`with an LCD, keypad, wireless module, and power supply, but . . . does not
`include separate memory or timing circuits,” and (3) “is specifically
`designed and then programmed for ‘remote control and remote monitoring
`
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`IPR2019-01335
`Patent 8,064,935 B2
`of the various subsystems within the residential environment.’” PO Resp.
`10–11 (quoting Ex. 1001, 4:62–66).
`Petitioner argues a “microcontroller” is “a microcomputer,
`microprocessor, or other equipment used for process control, for example,
`processing a message and sending a command.” Pet. Reply 2–8. Petitioner
`argues Patent Owner’s proposed construction is too narrow and “finds no
`support in the specification or in the claims of the 935 Patent.” Id. at 3
`(emphasis omitted). For example, Petitioner argues the claims “broadly
`describe a ‘microcontroller’ that . . . is responsible only for ‘process[ing]’
`and send[ing]’” messages and do not describe “any particular components
`that a microcontroller must comprise.” Id. Petitioner further argues the ’935
`patent describes a microcontroller as “a component responsible for basic
`processing” such as “communicating with other components, ‘operating a
`number of separate subsystems,’ and containing application software for
`‘provid[ing] for autonomous control.’” Id. at 5 (quoting Ex. 1001, 4:46–52,
`10:18–21).
`Petitioner also argues that Patent Owner’s dictionary definitions have
`been cherry-picked to support Patent Owner’s narrow construction and that
`other contemporaneous dictionaries define “microcontroller” more broadly.
`Id. For example, the Dictionary of Electrical and Computer Engineering
`defines “microcontroller” to mean:
`A microcomputer, microprocessor, or other equipment used for
`precise process control in data handling, communication, and
`manufacturing.
`Ex. 1039, 14. Petitioner argues “[t]his definition makes clear that a
`‘microcontroller’ is a device that ‘controls’ and can be a microprocessor . . .
`programmed for a particular process.” Pet. Reply 6.
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`In rebuttal, Patent Owner argues Petitioner’s expert, Dr. Jeffay,
`“contrasted microcontrollers from microprocessors, saying that a
`microprocessor only becomes a computer (and therefore a microcontroller)
`when associated with memory and I/O circuitry,” and that a “microcontroller
`is more of a system . . . whereas the microprocessor would be just a
`component of the system.” PO Sur-Reply 3 (citing/quoting Ex. 2015, 55:9–
`56:14, 68:3–18).
`Upon consideration of all of the evidence and argument presented by
`Petitioner and Patent Owner, we construe the term “microcontroller” to
`mean “a microcomputer, microprocessor, or other equipment used for
`process control.” The ’935 patent does not define “microcontroller” and
`neither the ’935 patent nor its prosecution history contains statements that
`limit or disclaim any part of its plain and ordinary meaning. See Teleflex,
`Inc. v. Ficosa N. America Corp., 299 F.3d 1313, 1327 (Fed. Cir. 2002)
`(“[C]laim terms take on their ordinary and accustomed meanings unless the
`patentee demonstrated an intent to deviate from [that] meaning . . . by
`redefining the term or by characterizing the invention in the intrinsic record
`using words or expressions of manifest exclusion or restriction, representing
`a clear disavowal of claim scope.”).
`The dictionary definitions provided by the parties are consistent
`insofar as they all require a “microcontroller” to include a central processing
`unit (CPU) that has been programmed to perform a control function. For
`example, the Dictionary of Electrical and Computer Engineering defines a
`“microcontroller” as a “microcomputer, microprocessor or other equipment
`used for precise process control,” where a “microcomputer” is a digital
`computer whose CPU is “a microprocessor.” Ex. 1039, 14. Likewise, the
`Microsoft Computer Dictionary defines a “microcontroller” as “[a] special-
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`purpose, single-chip computer designed . . . to handle a particular . . . task.”
`Ex. 2006, 337. Although the definition indicates “a microcontroller usually
`contains its own memory, input/output channels (ports), and timers,” it does
`not require the microcontroller to contain anything more than a CPU. Id.
`(emphasis added). Similarly, the Comprehensive Dictionary of Electrical
`Engineering defines a “microcontroller” as “an integrated circuit chip that is
`designed primarily for control systems and products.” Ex. 2007, 439.
`Although the definition indicates “a microcontroller typically includes
`memory, timing circuits, and I/O circuitry,” it does not require the
`microcontroller to contain anything more than a CPU. Id. (emphasis added).
`For the reasons discussed above, we construe “microcontroller” to
`mean “a microcomputer, microprocessor, or other equipment used for
`process control.”
`C. Obviousness over Oinonen and Whitley
`Petitioner argues claims 1–3, 7, 11–15, 17–19, and 21 are
`unpatentable as obvious over Oinonen and Whitley. Pet. 15–35. Patent
`Owner disagrees. PO Resp. 14–31. For the reasons discussed below,
`Petitioner demonstrates by a preponderance of evidence that claims 1–3, 7,
`11, 13–15, 17–19, and 21 are unpatentable over Oinonen and Whitley, but
`has failed to demonstrate by a preponderance of evidence that claim 12 is
`unpatentable over Oinonen and Whitley.
`1. Oinonen
`Oinonen discloses telemetric “applications in which the state of a
`peripheral device is monitored and the peripheral device is controlled via a
`telecommunication network, preferably at least partly via a mobile
`communication network.” Ex. 1016, 3:22–26. Examples of telemetric
`applications include “a real estate alarm system for monitoring real estate for
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`fire, leakage, [or] burglary” and a heating system “in which the heating of an
`apartment can be set by telephone . . . so that the heating can be switched
`from a lower output to a higher output, or vice versa, by calling a certain
`telephone number.” Id. at 3:27–29, 3:66–4:3.
`Oinonen’s invention is described as follows:
`The invention is based on the idea that the telecommunication
`terminal, preferably a mobile station coupled with a peripheral
`device via a connecting interface, transmits short messages or
`the like to another telecommunication terminal preferably via a
`mobile communication network. In a corresponding manner,
`control signals can be transmitted as short messages from the
`second telecommunication terminal to the first
`telecommunication terminal, where the device coupled
`therewith is controlled on the basis of the short messages via
`the connection interface.
`Id. at 4:52–61.
`Figure 4 of Oinonen, reproduced below, is an example of such a
`system.
`
`
`Figure 4 of Oinonen is a block diagram illustrating peripheral device 11 (i.e.,
`switch S1) connected to door 12 to indicate whether door 12 is open or
`closed. Id. at 9:26–28. Switch S1 is connected to mobile terminal TE1 via
`ground (GND) and data terminal ready (DTR) lines of connection interface
`7. Id. at 9:28–34. When door 12 is open, 5V appears between DTR and
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`GND, and when door 12 is closed, 0V appears between DTR and GND. Id.
`at 9:38–44.
`Mobile terminal TE1 includes microprocessor 1 running application
`software for “examining the logical states of the input lines of . . .
`connection interface 7 and for setting the logical states of the different
`output lines to the value (0/1) required at the time.” Id. at 7:12–26, 9:44–49,
`Fig. 3.7 The application software transmits “the states of all input lines at
`the moment of examination, advantageously as a short message to the
`second telecommunication terminal TE2.” Id. at 10:38–42. The application
`software includes a message interpreter that allows TE1 and TE2 to interpret
`received messages. Id. at 8:33–37. Thus, TE1 can send standard texts to
`TE2 such as “door is closed” or “door is open” instead of logical states 0 or
`1, respectively. Id. at 10:48–54. When a mobile terminal is unable to
`interpret such a message, it transmits an error message “as a short message
`to the telecommunication terminal TE1, TE2 that sent the control message.”
`Id. at 8:50–55.
`In addition to monitoring the open/closed status of door 12, Oinonen
`discloses applications that monitor the status of a real estate alarm system,
`control the luminosity in a room, and control the locking/unlocking of a
`door. Id. at 10:63–66, 11:12–14, 11:46–57, 12:13–15, Figs. 5–7.
`2. Whitley
`Whitley discloses “a system and method for gathering and sending
`data over an existing wireless network remotely to control and monitor
`various gateways and the devices coupled to those gateways.” Ex. 1023,
`
`
`7 Mobile station TE2 has a similar structure. See Ex. 1016, 7:52–54.
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`2:19–21. Such a system is shown in Figure 1 of Whitley, which is
`reproduced below.
`
`
`Figure 1 of Whitley is a block diagram of a system that “implements various
`methods for receiving and sending data from and to a selected gateway.” Id.
`at 7:13–15. The system includes facility 12, gateway 20 (e.g., an SMS
`control device), and cellular handset 32. Id. at 7:26–8:10.
`Gateway 20 provides a physical interface between devices internal to
`facility 12 and external networks and can “monitor and control various
`devices within the facility 12, such as lights, security sensors, an answering
`machine, [or] a home computer.” Id. at 8:27–9:3. Gateway 20 is uniquely
`addressable, and includes a processor and “a wireless transceiver for sending
`and receiving communications via a digital wireless network.” Id. at 8:3–8.
`The digital network allows gateway 20 “to send data [to] and receive
`commands directly from [a] customer, which could own or manage the
`facility.” Id. at 2:23–25. This allows the customer to “control lights within
`
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`Patent 8,064,935 B2
`a facility according to a pre-programmed pattern that the user may change
`by communicating new commands” and to have “remote control over the
`devices (e.g., home appliances or electronics) with which the gateway may
`communicate.” Id. at 3:8–12.
`In one implementation, gateway 20 “formulates messages to other
`terminals into a short message format” (i.e., SMS), and “transmit[s] the
`message . . . to a network element” such as a customer’s mobile terminal.
`Id. at 5:18–28. Because gateway 20 is uniquely addressable (e.g., via its
`phone number), “the customer can formulate messages or commands that
`will be routed directly from the customer’s mobile station . . . to the
`gateway.” Id. at 6:10–14. Thus, Whitley “provide[s] a method for allowing
`customers to remotely monitor and control devices located in the customer’s
`facility.” Id. at 6:19–21. In particular, customers can “receive monitoring
`information about activities at their facility via a mobile station” and
`“control the gateway and devices coupled to the gateway from their mobile
`station.” Id. at 6:22–26. For example, customers can “monitor[] facility 12
`for energy usage data or alarms indicating a security breach,” and control
`“various electronic devices, such as an electronic thermostat or lights.” Id.
`at 12:21–25. Other types of devices that can be monitored and controlled
`include a “refrigerator, water heater, and [a] washer/dryer.” Id. at 16:21–23.
`Monitoring the energy usage of facility 12 allows a remote customer “to
`adjust the thermostat, or turn off one of the devices (such as the
`washer/dryer or water heater) coupled to the gateway 20 in order to save
`energy.” Id. at 17:2–4.
`3. Reasons to Combine the Teachings of Oinonen and Whitley
`Petitioner argues Oinonen “does not expressly articulate how its
`telecommunications device would be configured to monitor and/or control
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`multiple devices,” whereas Whitley “specifically discloses a data collection
`and control device (a ‘gateway’) that is connected to multiple devices.”
`Pet. 15–16 (citing Ex. 1003 ¶¶ 184–187). Therefore, Petitioner argues, a
`person of ordinary skill in the art would have combined the teachings of
`Oinonen and Whitley because Whitley teaches (1) using SMS to “provide
`remote monitoring and control of multiple distributed gateways,” (2) using a
`gateway “to remotely monitor and control multiple devices,” and
`(3) “monitoring . . . activities over time, which allows the user to control
`devices and save energy.” Id. at 16 (citing Ex. 1003 ¶¶ 186–188). Petitioner
`further argues a person skilled in the art would have combined the teachings
`of Oinonen and Whitley “to ‘provide a method for allowing customers to
`receive monitoring information about activities at their facility,’ and to
`‘provide a method that allows customers to control the gateway and devices
`coupled to the gateway from their mobile station.’” Id. at 17 (quoting Ex.
`1023, 6:22–26).
`Patent Owner argues “Petitioner[] fail[s] to establish that Oinonen and
`Whitley can be properly combined for two reasons.” PO Resp. 14. First,
`Patent Owner argues Petitioner’s reasoning for combining the two references
`is not “relevant to the elements of the challenged claims,” i.e., because
`“none of the challenged claims recites multiple devices—they only require
`‘an environmental device.’” Id. at 16. Second, Patent Owner argues
`“Petitioner did not sufficiently explain what Oinonen fails to disclose or why
`a [person of ordinary skill in the art] would turn to Whitley.” Id. at 14. That
`is, Patent Owner argues that because “Petitioner[] assert[s] that Oinonen
`itself discloses all of the elements of [the] independent claims . . . it is
`unclear why they contend a [person of ordinary skill in the art] would be
`motivated to turn to Whitley for the claimed features.” Id.
`
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`Upon considering Petitioner’s and Patent Owner’s evidence and
`arguments, we find Petitioner has set forth sufficient and persuasive
`reasoning with rational underpinning to combine the teachings of Oinonen
`and Whitley. Oinonen teaches a system for monitoring and controlling a
`single device, and Whitley teaches an improvement that would allow
`Oinonen’s system to monitor and control multiple devices via a gateway.
`Compare Ex. 1016, 4:41–61, with Ex. 1023, 6:19–21. This improvement
`supports the combination because “if a technique has been used to improve
`one device, and a person of ordinary skill in the art would recognize that it
`would improve similar devices in the same way, using the technique is
`obvious unless its actual application is beyond his or her skill.” KSR Int’l
`Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007) (“KSR”).
` We are not dissuaded from this finding by Patent Owner’s argument
`that the combination would not have been obvious because the claims recite
`controlling a single environmental device. First, the claims are open ended
`and do not prohibit controlling multiple environmental devices. See
`Ex. 1001, 13:37–58. Second, KSR does not require the reason to combine to
`directly relate to any claim element. Indeed, KSR expressly states the reason
`to combine “analysis need not seek out precise teachings directed to the
`specific subject matter of the challenged claim.” KSR, 550 U.S. at 418
`(emphasis added). The reason for that is simple. Doing so would invite
`hindsight reasoning, which KSR expressly rejects. See id. at 421 (“A
`factfinder should be aware, of course, of the distortion caused by hindsight
`bias and must be cautious of arguments reliant upon ex post reasoning.”).
`Replacing Oinonen’s terminal with Whitley’s gateway to allow Oinonen to
`monitor and control multiple devices would fall under many of the reasons
`to combine expressly endorsed in KSR, including the reasoning identified
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`Patent 8,064,935 B2
`above, i.e., using a technique “used to improve one device. . . [to] improve
`similar devices in the same way.” Id. at 417.
`We are also not dissuaded by Patent Owner’s argument that
`Petitioner’s reasoning is defective because Petitioner asserts that Oinonen
`itself discloses all of the elements of the independent claims. See PO Resp.
`14–16. Patent Owner cites several Board decisions in support of this
`argument, none of which are precedential and binding on this panel, and all
`of which pre-date the Federal Circuit’s Polygroup and Realtime Data
`decisions. In Polygroup, the Federal Circuit stated “when a petition sets
`forth a ground with multiple references, but the petitioner’s primary
`arguments rely on a single reference, the Board should consider those
`arguments irrespective of a motivation to combine references.” Polygroup
`Ltd MCO v. Willis Elec. Co., 759 F. App’x. 934, 943 n.3 (Fed. Cir. 2019).
`Indeed, the “Board err[s] when it refuse[s] to consider these arguments.” Id.
`at 943; see also Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1373 (Fed.
`Cir. 2019) (finding
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