throbber
Trials@uspto.gov
`571-272-7822
`
`Paper 39
`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.
`
`IPR2019-01336
`Patent 9,602,655 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
`IPR2019-01610, has been joined as a petitioner to this proceeding.
`
`
`
`

`

`IPR2019-01336
`Patent 9,602,655 B2
`
`INTRODUCTION
`I.
`A. Background and Summary
`Resideo Technologies, Inc. (“Resideo”) filed a Petition requesting
`inter partes review of claims 1–24 (“the challenged claims”) of U.S. Patent
`No. 9,602,655 B2 (Ex. 1001, “the ’655 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, 3–8, 10, and 12–24 are unpatentable, but has failed to
`show by a preponderance of evidence that claim 2, 9, and 11 are
`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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`IPR2019-01336
`Patent 9,602,655 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 IPR2019-01335, challenging
`related U.S. Patent No. 8,064,935 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 ’655 Patent
`The ’655 patent relates to “a remote monitoring and control system
`for an environment.” Ex. 1001, 1:22–23. Such a system is shown in Figure
`1 of the ’655 patent, which is reproduced below.
`
`
`2 Honeywell disputes its identification as a real party-in-interest. Pet. 1, n.1.
`
`3
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`IPR2019-01336
`Patent 9,602,655 B2
`
`
`Figure 1 is a block diagram illustrating an environmental connectivity and
`control system. Id. at 3:43–45. 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 3:58–67, 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 3:58–64. Associated remote control units 26
`also interface with base control unit 16 to monitor and control devices 21
`when in the proximity of base control unit 16. Id. at 3:64–67.
`Controlled devices 21 may include HVAC (heating, ventilation, and
`air conditioning) units, refrigerators, water heaters, security systems,
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`IPR2019-01336
`Patent 9,602,655 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 11:50–56,
`12:25–30. 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 on a periodic or event-driven basis.” Id. at 4:55–57, 9:15–17.
`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 9:20–27.
`Remote control unit 12 can be a “conventional cellular telephone
`handset[] . . . equipped with a programming kernel, such as Java or J2ME.”
`Id. at 7:10–16. 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 6:61–63. 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 7:2–
`4. “The data path between the remote control unit and the base control unit
`is SMS (‘simple message service’).” Id. at 7:22–24. SMS messages are
`“processed within the cellular telephone’s application software” and “by the
`base control unit applications software.” Id. at 7:52–54, 11:24–26.
`E. Illustrative Claims
`Claim 1 of the ’655 patent is illustrative of the claimed subject matter,
`and is reproduced below.
`1. A base unit configured to communicate with an
`environmental device and to communicate with a cellular
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`IPR2019-01336
`Patent 9,602,655 B2
`remote unit having wireless connectivity capable of
`communicating from a geographically remote location, the base
`unit comprising:
`a first communication interface configured to receive
`environmental information from the environmental device and
`to send a control instruction to the environmental device;
`a wireless communication interface configured to send a
`first message to the cellular remote unit via a cellular
`communications network and to receive a second message from
`the cellular remote unit via the cellular communications
`network,
`wherein the first message is a first digital
`communications message including a representation of the
`environmental information, and
`wherein the second message is a second digital
`communications message including a command regarding the
`environmental device; and
`a microcontroller configured to process the second
`message, to provide the control instruction based on the
`command, and to send the control instruction to the
`environmental device via the first communication interface, and
`wherein the command is for the base unit initiated by a
`user from the cellular remote unit, and
`wherein the control instruction to the environmental
`device is associated with the command for the base unit,
`wherein the cellular remote unit is configured to
`determine position data of the cellular remote unit, and
`determine when the cellular remote unit is outside a geo-fence,
`wherein the cellular remote unit is configured to transmit
`a notification via a simple message service responsive to
`determining that the cellular remote unit is outside of the geo-
`fence.
`Id. at 13:57–14:26. Claim 24 is substantially similar to claim 1, but does not
`require the cellular remote unit to determine its position, determine when it
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`is outside a geo-fence, or transmit an SMS notification when it is outside its
`geo-fence. Compare id. at 15:28–16:29, with id. at 13:57–14:26. Instead, it
`requires the wireless communication interface be configured to send a third
`message to and receive a fourth message from a subordinate remote unit, and
`requires the microcontroller be configured to process the fourth message and
`selectively send a second control instruction to the environmental device
`based on a command in the fourth message. Id. Claims 2–23 depend
`directly or indirectly from claim 1. Id. at 14:27–15:27.
`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”)
`Coon
`US 2002/0147006 A1 Oct. 10, 2002
`Ehlers
`US 2004/0117330 A1
`July 28, 20036
`Denis
`EP 1289248
`Mar. 5, 2003
`Lincoln
`US 6,108,614
`Aug. 22, 2000
`
`July 15, 20035
`
`Exhibit
`1016
`1017
`
`1018
`
`1019
`1020
`1021
`1022
`
`
`3 Petitioner also relies upon the Declaration 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. 2002).
`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. 14–15: Paper 11.
`Patent Owner does not dispute the public availability of Wu. See PO Resp.
`52–65.
`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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`IPR2019-01336
`Patent 9,602,655 B2
`Reference
`Whitley
`
`
`WO 99/49680
`
`Effective Date
`Sept. 30, 1999
`
`Exhibit
`1023
`
`G. Instituted Grounds
`Petitioner asserts the challenged claims would have been unpatentable
`on the following grounds:
`Ground
`Claims
`1A
`1, 4–8, 10, 12–14,
`16, 17, 20, 22, 23
`2, 3, 9, 11, 15, 18,
`19, 21
`24
`24
`1, 3, 5–8, 10, 12–
`17, 20–23
`2, 9, 11, 18, 19
`4
`24
`24
`
`1B
`
`1C
`1D
`2A
`
`2B
`2C
`
`2D
`2E
`
`35 U.S.C. §
`103(a)
`
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`
`References
`Oinonen, Whitley, Coon
`Oinonen, Whitley, Coon,
`Ehlers
`Oinonen, Whitley, Denis
`Oinonen, Whitley, Lincoln
`Bielski, Wu, Coon
`Bielski, Wu, Coon, Ehlers
`Bielski, Wu, Coon,
`Whitley
`Bielski, Wu, Denis
`Bielski, Wu, Lincoln
`
`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. 2002 ¶ 29). Patent
`Owner proposed the same definition pre-institution, and we adopted that
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`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. 8–9. 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.
`B. Claim Construction
`In inter partes reviews, a claim is interpreted “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 that
`standard, the “words of a claim ‘are generally given their ordinary and
`customary meaning.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
`Cir. 2005) (en banc) (internal citation omitted). Moreover, the ordinary and
`customary meaning applies “unless the patentee demonstrated an intent to
`deviate from [it] . . . 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.”
`Teleflex, Inc. v. Ficosa N. America Corp., 299 F.3d 1313, 1327 (Fed. Cir.
`2002); see also Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371
`(Fed. Cir. 2014). Thus, although we may “look to the specification and
`prosecution history to interpret what a patentee meant by a word or phrase in
`a claim,” we may not read “extraneous limitations . . . into the claims from
`the specification or prosecution history” absent an express definition or clear
`disavowal of claim scope. Bayer AG v. Biovail Corp., 279 F.3d 1340, 1348
`(Fed. Cir. 2002). Only those claim terms 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).
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`
`
`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. 7–9. In our Institution Decision, we declined to expressly construe
`these terms because Patent Owner did not argue they required 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. 4–22; Pet. Reply 2–12.
`2. Simple Message Service,
`Digital Communications Message
`Petitioner argues the term “simple messaging service” should be
`construed to mean “short message service” or SMS because the ’655 patent
`equates the two terms. Pet. 9–11. Petitioner argues the term “digital
`communications message” should be construed to mean SMS because “[t]he
`655 Patent cannot be read so broadly to cover any message capable of digital
`transmission.” Id. at 11–12. Patent Owner does not dispute Petitioner’s
`construction of “simple message service,” but contends it would “be
`improper to limit the claim term ‘digital communications message’ to SMS
`messages.” PO Resp. 4–22; PO Sur-Reply 2.
`In our Institution Decision, we construed the term “simple messaging
`service” to mean “SMS or ‘short message service’” because the ’655 patent
`equates the two terms by definition. Dec. Inst. 10–11 (quoting Ex. 1001,
`3:8–9, 7:22–24). We also declined to expressly construe the term “digital
`communications message” because Petitioner’s unpatentability contentions
`rely on exchanging SMS messages and neither party disputes that an SMS
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`message is a “digital communications message.” Id. at 11. Neither party
`disputes our construction of “simple messaging service” or our decision to
`not expressly construe “digital communications message,” both of which we
`maintain here. See PO Resp. 4–22; Pet. Reply 2–12.
`3. 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. 12 (citing Ex. 2002 ¶ 48). Patent Owner argues this construction
`is supported by the Microsoft Computer Dictionary, the Comprehensive
`Dictionary of Electrical Engineering, and the ’655 patent. Id. at 7–12.
`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. 2004, 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.
`
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`Patent 9,602,655 B2
`Ex. 2005, 439.
`Patent Owner argues the microcontroller disclosed in the ’655 patent
`is consistent with these definitions. See PO Resp. 10–12 (citing Ex. 1001,
`3:50–51, 5:4–8, Fig. 4; Ex. 2002 ¶ 46); PO Sur-Reply 4–8. In particular,
`Patent Owner argues a person skilled in the art would have understood
`microcontroller 106 shown in Figure 4 of the ’655 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
`of the various subsystems within the residential environment.’” PO Resp.
`10–12 (quoting Ex. 1001, 5:4–8, Fig. 4).
`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 5–12. Petitioner
`argues Patent Owner’s proposed construction is too narrow and “finds no
`support in the specification nor in the claims of the 655 Patent.” Id. at 6
`(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. at 6–7. Petitioner further argues
`the ’655 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
`
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`software for ‘provid[ing] for autonomous control.’” Id. at 8 (quoting Ex.
`1001, 4:55–61, 10:33–35).
`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. at 9. 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 9.
`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 7 (citing/quoting Ex. 2013, 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 ’655 patent does not define “microcontroller” and
`neither the ’655 patent nor its prosecution history contain statements that
`limit or disclaim any part of its plain and ordinary meaning. See Teleflex,
`299 F.3d at 1327 (“[C]laim terms take on their ordinary and accustomed
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`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-
`purpose, single-chip computer designed . . . to handle a particular . . . task.”
`Ex. 2004, 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. 2005, 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.”
`
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`
`4. Transmit a Notification
`Claim 1 recites “the cellular remote unit is configured to transmit a
`notification via a simple message service responsive to determining that the
`cellular remote unit is outside of the geo-fence.” Ex. 1001, 14:23–26 (the
`“transmit a notification” limitation). Patent Owner proposes we construe
`this limitation to mean “the cellular remote unit is configured to determine
`that the cellular remote unit is outside of the geo-fence and to report this
`information via a simple message service.” PO Resp. 15.
`Patent Owner argues its proposed construction is supported by the
`Specification, which states “[w]hen the remote control unit travels a distance
`that exceeds the programmed distance from the base control unit, the remote
`control unit reports this information to the base control unit.” Id. (quoting
`Ex. 1001, 9:6–9). Patent Owner also argues its construction is supported by
`the prosecution history because during prosecution pending claim 38, which
`recited the base unit received a command from the remote unit when the
`remote unit determined it was within a geo-fence, was rejected for lack of
`written description. Id. at 16–17. Patent Owner argues the Examiner found
`the Specification “did not disclose . . . sending a command in response to
`crossing a geo-fence” but instead disclosed sending “information . . . that
`[the remote unit] has travelled a distance that exceeds a programmed
`distance from the base control unit.” Id. (quoting Ex. 1002, 4767). Patent
`Owner argues the Examiner’s rejection recognized that “the remote unit
`report[ing] when it crosses the geo-fence . . . represents fundamentally
`different functionality than sending a command.” Id. at 18.
`
`
`7 We cite to page 476 of Exhibit 1002, which is page 11 of an Office Action
`sent on February 22, 2016. Patent Owner cites to page 11 of the Office
`Action.
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`Petitioner argues we should reject Patent Owner’s proposed
`construction “because it continues to recite ‘simple message service’” rather
`than “short message service.” Pet. Reply 4–5. Petitioner further argues “the
`Coon reference discloses the relevant limitation” even under Patent Owner’s
`proposed construction. Id. at 5.
`In our Institution Decision, we did not expressly construe the
`“transmit a notification” limitation. We did, however, make a preliminary
`finding that “nothing in claim 1 precludes the notification message from
`including a command message.” Dec. Inst. 28. Patent Owner’s proposed
`construction is an invitation to construe the “transmit a notification”
`limitation in a manner that would exclude transmitting a command. We
`decline to do so for the reasons that follow.
`To construe the “transmit a notification” limitation we first “look to
`the words of the claims themselves.” Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576, 1582 (Fed. Cir. 1996). Claim 1 requires the cellular remote
`unit to “determine when [it] is outside a geo-fence,” and responsive to
`making that determination, “to transmit a notification via a simple message
`service.” Ex. 1001, 14:22–26. Nothing in claim 1 specifies the type or
`content of the notification that is to be transmitted when the remote unit
`determines it is outside the geo-fence. Moreover, nothing in claim 1
`prohibits the notification from being a command or requires the notification
`to report that the remote unit is outside the geo-fence.
`Having found claim 1 itself does not limit the “transmit a notification”
`limitation in the manner proposed by Patent Owner, we review the
`Specification. See Phillips, 415 F.3d at 1313 (a disputed term is read “in the
`context of the entire patent, including the specification”); see also Vitronics,
`90 F.3d at 1582 (the Specification “is the single best guide to the meaning of
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`IPR2019-01336
`Patent 9,602,655 B2
`a disputed term”). The Specification may limit the plain and ordinary
`meaning of a claim term when it defines the term or uses it in a manner that
`clearly disavows claim scope. See Poly-America, L.P. v. API Indus., Inc.,
`839 F.3d 1131, 1136 (Fed. Cir. 2016) (“We depart from the plain and
`ordinary meaning in only two instances. The first is when a patentee acts as
`his own lexicographer. The second is when the patentee disavows the full
`scope of the claim term.”) (internal citations omitted). “[T]he standard for
`[claim] disavowal is exacting, requiring clear and unequivocal evidence that
`the claimed invention includes or does not include a particular feature.” Id.
`The Specification neither defines the term “transmit a notification”
`nor uses the term when describing the communications between the remote
`unit and the base unit when the remote unit determines it is outside a geo-
`fence. See Ex. 1001, 8:37–9:14. The Specification does provide “an
`example of geo-fencing” in which the remote unit, upon determining it is
`outside a geo-fence, “reports this information to the base control unit.” Id.
`at 9:6–14 (emphases added). However, the message transmitted in this
`example may not be read from the Specification into the claim. See Bayer
`AG, 279 F.3d at 1348 (“[A] court may not read into a claim a limitation from
`a preferred embodiment, if that limitation is not present in the claim itself.”).
`This is especially true in this instance because the Specification discloses
`other messages the remote unit can transmit to the base unit when it
`determines it has crossed a geo-fence, including “a status message to the
`base control unit if [it] exceed[s] a programmed set of boundary conditions.”
`Ex. 1001, 8:62–65. An example of a remote unit “status message” is a
`message that the remote unit is “inactive.” Id. at 7:30–37. More generally,
`the Specification describes geo-fencing as a method that “allows the base
`control unit to change its operational characteristics based upon the location
`
`17
`
`

`

`IPR2019-01336
`Patent 9,602,655 B2
`of the remote control unit(s).” Id. at 8:42–44. Such changes can occur when
`a remote control unit “communicates with the base control unit 16 to affect
`the operational aspects thereof,” e.g., when the remote unit “command[s] the
`base control unit” by “communicat[ing] the command . . . through the
`cellular telephone network 22.” Id. at 6:61–7:5. Thus, the Specification
`discloses that when a remote unit determines it has crossed a geo-fence, it
`can transmit different “notifications” to the base unit, including
`“notifications” that (a) report crossing the geo-fence, (b) send a status
`message, or (c) send a command.
`Having found that neither claim 1 nor the Specification limits the
`“transmit a notification” limitation in the manner proposed by Patent Owner,
`we consider the prosecution history. See Phillips, 415 F.3d at 1317 (“the
`prosecution history can often inform the meaning of the claim language by
`demonstrating how the inventor understood the invention and whether the
`inventor limited the invention in the course of prosecution”). Patent Owner
`argues the prosecution history limits the scope of the “transmit a
`notification” limitation because the Examiner rejected pending claim 38
`(receiving a command), but not pending claim 39 (transmit a notification),
`for lack of written description. See PO Resp. 16–19. We are not persuaded
`by this argument for the following reasons.
`First, the Examiner’s rejection of pending claim 38 and the
`Applicant’s amendment of that claim did not narrow the scope of pending
`claim 39. Pending claims 38 and 39, when first presented for examination,
`read as follows:
`38. (New) The base unit of claim 8, wherein the remote control
`unit is configured to determine position data of the remote
`control unit, and determine when the remote control unit is
`within a geo-fence, wherein the command is received from the
`
`18
`
`

`

`IPR2019-01336
`Patent 9,602,655 B2
`cellular remote [control] unit responsive to determining that the
`remote control unit is within the geofence.
`39. (New) The base unit of claim 8, wherein the remote control
`unit is configured to determine position data of the remote
`control unit, and determine when the remote control unit is
`outside a geo-fence, wherein the remote control unit is
`configured to transmit a notification via a simple message
`service responsive to determining that the remote control unit is
`outside the geofence.
`Ex. 1002, 433 (emphases added). The claims differ in two ways, namely, in
`what the remote unit is configured to do and when it is configured to do it.
`Claim 38 implicitly requires a remote unit that can transmit a command, i.e.,
`a command that is received by the base unit when the remote unit is within a
`geo-fence. Claim 39 requires a remote unit that can transmit a notification
`to the base unit when the remote unit is outside the geo-fence. Logically, the
`Examiner’s understanding of what the remote unit can transmit when it is
`within the geo-fence has no bearing on the Examiner’s understanding of
`what the remote unit can transmit when it is outside the geo-fence. Thus,
`even if the Applicant’s amendment of pending claim 38 disavowed claim
`scope, which we disagree with for the reasons discussed below, the
`disavowal pertains to what the remote unit can transmit when it determines it
`is within the geo-fence, not what it can transmit when it determines it is
`

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