Trials@uspto.gov
`571-272-7822
`
`Paper No. 14
`Entered: March 31, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ALARM.COMINC.,
`Petitioner,
`
`V.
`
`VIVINT, INC.,
`Patent Owner.
`
`Case IPR2015-02004
`Patent 6,147,601
`
`Before MICHAEL R. ZECHER, JAMESB. ARPIN,and
`CHARLES J. BOUDREAU,Administrative Patent Judges.
`
`BOUDREAU,Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C_F-R. § 42.108
`
`
`571-272-7822
`
`Paper No. 14
`Entered: March 31, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ALARM.COMINC.,
`Petitioner,
`
`V.
`
`VIVINT, INC.,
`Patent Owner.
`
`Case IPR2015-02004
`Patent 6,147,601
`
`Before MICHAEL R. ZECHER, JAMESB. ARPIN,and
`CHARLES J. BOUDREAU,Administrative Patent Judges.
`
`BOUDREAU,Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C_F-R. § 42.108
`
`
`
`IPR2015-02004
`Patent 6,147,601
`
`I. INTRODUCTION
`
`Alarm.com Incorporated (‘‘Petitioner’’) filed a Petition (Paper1,
`
`“Pet.”) requesting an inter partes review of claims 1-43 of U.S. Patent
`
`No. 6,147,601 (Ex. 1001, “the ’601 patent”). Pet. 1,4. Vivint, Incorporated
`(“Patent Owner”) filed a Preliminary Response. Paper9 (“Prelim. Resp.”).!
`
`Wereviewthe Petition under 35 U.S.C. § 314, which provides that an inter
`
`partes review maynotbe instituted “unless .
`
`.
`
`. there is a reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 of the
`
`claims challengedin the petition.” 35 U.S.C. § 314(a).
`
`For the reasonsthat follow, and on this record, we are not persuaded
`
`that Petitioner demonstrates a reasonable likelihood of prevailing in showing
`
`the unpatentability of any of the challenged claims. Accordingly, we deny
`
`institution of inter partes review.
`
`A. The 601 Patent
`
`The 601 patent, entitled “Electronic Message Delivery System
`
`Utilizable in the Monitoring of Remote Equipment and Method of Same,”
`
`issued November14, 2000, from U.S. Patent Application No. 09/317,235,
`
`filed May 24, 1999. Ex. 1001, at [21], [22], [45], [54]. The ’601 patent also
`
`' On December 17, 2015, after Petitioner’s filing of the Petition, but before
`Patent Owner’s filing of the Preliminary Response, Patent Ownerfiled a
`Request for Certificate of Correction with respect to the ’601 patent, seeking
`to correct an alleged mistake in claim 39. Ex. 2003 (“Request”). By Order
`dated January 28, 2016, we stayed the Request, pursuant to 37 C.F.R. § 42.3,
`pending our decision on the Petition, and we also authorized Petitioner to
`’ file a Reply Brief limited to certain issues related to the requested Certificate
`of Correction. See Paper 10 (“Order’’). Petitionerfiled its Reply on
`February 3, 2016. Paper 12 (“Pet. Reply”).
`
`2
`
`
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`IPR2015-02004
`Patent 6,147,601
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`claims the benefit of U.S. Provisional Application No. 60/115,305, filed
`
`January 9, 1999 (“the ’305 provisional”). /d. at [60], 1:6—7.
`
`The ’601 patent describes systems and methods for monitoring remote
`
`equipmentsuch as “devices .
`
`.
`
`. employed in heating, ventilating, and [air
`
`conditioning] (HVAC) systems.” Ex. 1001, Abstract, 1:11-14. The ’601
`
`patent explainsthat “‘{i]t is desirable to be able to monitor remotely
`
`equipment that may require periodic preventive maintenance and/or that may
`
`require rapid response time should a catastrophic failure occur.” Jd. at 1:16—
`
`19. According to the ’601 patent, prior art systems were limited insofar as
`
`they did not“allow for sufficient flexibility in routing fault messages to a
`variety of different potential recipients of such messagesvia a variety of
`
`different media, depending on the urgency or nature of the fault.” Jd. at
`
`1:66-2:3. The ’601 patent provides, as an example, that an HVAC customer
`
`may want to send “certain non-emergency condition notifications(e.g., filter
`
`needs cleaning) to certain individuals (e.g., contractor/maintenance
`personnel) via a certain medium (e.g., e-mail) and emergency condition
`notifications (e.g., low or high refrigerant pressure) to other individuals
`(building owner, contractor, etc.) via other means(e.g., via beeper or other
`
`personal communication device).” Jd. at 2:5-14. “Such a list of who to
`
`contact via what means depending on which fault has occurred may be
`
`referred to as a ‘message profile.”” Jd. at 2:14—-16. Accordingto the ’601
`
`patent, conventional systemsdid not allow for “easy customer modifications
`
`to the messageprofile.” Jd. at 2:21—22.
`
`The ’601 patent purportedly solves these problemsby disclosing a
`
`system for remotely monitoring electrical or mechanical equipment that can
`
`deliver fault notification messages to different individuals for different fault
`
`
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`IPR2015-02004
`Patent 6,147,601
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`conditions via different electronic media, and in which a customer may
`
`interactively modify its message profile. Ex. 1001, 2:33-41. Figure 1 of the
`
`’601 patent, reproduced below,illustrates a schematic diagram of the
`
`preferred embodimentof this system. /d. at 3:24—25, 5:38-39.
`
`
`
`As shownin Figure 1, system 50 monitors existing pieces of
`
`electronic equipment, such as air-conditioner 2, boiler 3, motorstarter 4,
`
`heater 5, or any other equipmentthat a prospective user desires to monitor.
`
`Ex. 1001, 5:39-42. Each piece of equipmentis fitted with interface 10 that
`
`periodically sendsa status signal to electronic message delivery server 1
`
`indicating whether the piece of equipment and its corresponding interface
`
`are functioning correctly. Jd. at 5:43-47. When a predetermined
`
`“exception” condition, e.g., a fault condition, occurs in a piece of equipment
`
`being monitored, interface unit 10 sends a messageto electronic message
`
`delivery server 1. Jd. at 5:47—51. Electronic message delivery server 1 then
`
`routes the message to the appropriate user interface, such as email 6,fax 7,
`
`
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`IPR2015-02004
`Patent 6,147,601
`
`pager8, voice 9, etc., according toa message profile configured by the user
`via user-web client 121 connected to Internet 122. Id. at 5:51-5S.
`
`In the described systems and methods, a sensor in communication
`
`with a piece of remote equipment determinesthe state of at least one
`
`parameter of the remote equipment. Jd. at 2:48-S0, 55-56. When the sensor
`detects an “exception” condition (i.e., an operating condition that is either
`out of the ordinary or beyond nominal parameters) in the remote equipment,
`
`an interface unit connected to the sensor and having a message generating
`
`mechanism generates an incoming exception message and forwards the
`message to a central computer server. /d. at 2:56—65. The server forwards
`
`at least one outgoing exception messageto at least one predetermined user-
`
`defined end device based on the incoming exception message. Id. at 2:65—
`
`67.
`
`B. Related Proceedings
`
`The ’601 patent is the subject of a district court action between the
`
`partiestitled Vivint, Inc. v. Alarm.com Inc., 2:15-cv-00392-CW-BCW
`
`(D. Utah 2015). Pet. 1; Paper 8, 2. Petitioner also filed two otherpetitions
`
`challenging subsets of the 601 patent’s claims (Cases IPR2016-00116 and
`
`IPR2016-00155) andat least ten petitions challenging certain claims of the
`
`following other patents owned by Patent Owner: (1) U.S. Patent No.
`
`6,462,654 B1 (Cases IPR2015-02003 and IPR2016-00161); (2) U.S. Patent
`
`No. 6,535,123 B2 (Cases IPR2015-01995 and IPR2016-00173); (3) U.S.
`
`Patent No. 6,717,513 B1 (Cases IPR2015-01997 and IPR2016-00129);
`
`(4) US. Patent No. 6,924,727 B2 (Cases IPR2015-01977 and IPR2015-
`
`
`
`IPR2015-02004
`Patent 6,147,601
`
`02008); and (5) U.S. Patent No. 7,884,713 B1 (Cases IPR2015-01965 and
`
`IPR2015-01967). Pet. 1; Paper 8, 1-2.?
`
`C. Illustrative Claims
`
`Of the challenged claims, claims 1, 22, 42, and 43 are independent.
`
`Claims 1 and 22 are illustrative and are reproduced below:
`
`1. A method of monitoring remote equipment comprising the
`steps of:
`a) determining a state of at least one parameterof at least one
`piece of the remote equipment;
`b) communicating a message indicative of the state from the
`piece of remote equipment to a computerserver as an
`incoming message;
`
`c) enabling a user to remotely configure or modify a user-
`defined messageprofile containing outgoing message
`routing instructions, the user-defined messageprofile being
`storable on the computerserver;
`,
`d) determining whether an incoming message is an incoming
`exception message indicative of improper operation of the
`piece of remote equipment;
`e) if it is determined in step d) that an incoming messageis an
`incoming exception message, forwarding at least one
`outgoing exception message based on the incoming message
`to at least one user-defined communication device
`specifiable in the user-defined messageprofile,
`wherein the user can remotely configure or modify the user-
`defined message profile by remotely accessing the computer
`server.
`
`* The parties are remindedoftheir continuing obligation to update their
`mandatory notices within twenty-one (21) days of any change, including,
`inter alia,the filing of any additional petitions. 37 C.F.R. §§ 42.8(a)(3),
`42.8(b)(2).
`
`
`
`IPR2015-02004
`Patent 6,147,601
`
`22. A system for monitoring remote equipment, comprising:
`a sensor in local communication with a piece of remote
`equipment, said sensor detecting a state of at least one
`parameterof the piece of remote equipment;
`an interface unit, locally connected to said sensor, said interface
`unit having a message generating mechanism; and
`a computer server in remote communication with said interface
`unit, said server adapted to receive messages generated by
`said interface unit, said computer server having a user
`interface, a user being capable of remotely accessing said
`computerservervia said user interface to remotely configure
`a user-defined messageprofile containing outgoing message
`routing instructions,
`wherein whensaid sensor detects an exception condition in the
`piece of remote equipment, said interface unit generates an
`incoming exception messageindicative of the exception
`condition and forwards said messageto said server,
`
`and wherein said server forwardsat least one outgoing
`exception messageto at least one predetermined user-
`defined remote communication device based on said
`incoming exception messageas specified in said user-
`defined messageprofile.
`
`Ex. 1001, 8:51—9:6, 10:43-11:2. Challenged claims 2—21 dependdirectly or
`
`indirectly from claim 1; and challenged claims 23-41 dependdirectly or
`
`indirectly from claim 22. Jd. at 9:7—10:42, 11:3-12:54. Like claims 1 and
`
`22, independent claims 42 and 43 are directed to a method and a system,
`
`respectively, for monitoring remote equipment. Jd. at 12:55—14:35.
`
`
`
`IPR2015-02004
`Patent 6,147,601
`
`D. References Relied Upon
`
`Petitioner relies on the following references:
`
`
`
`1003.|SCADAWARE™System Design Concepts, Doc.
`
`
`1010-03 (Total Engineering Services Team,Inc.,
`New Orleans, La.) (19943) (“Scadaware”)
`
`
`
` Reference
`
`
`
`1004|U-S. Patent No. 6,040,770, issued Mar. 21, 2000
`(filed Sept. 4, 1998) (“Britton’’)
`
`1005|U.S. Patent No. 6,054,920, issued Apr. 25, 2000
`
`(filed Oct. 15, 1996) (“Smith”)
`Pet. 3-4. Petitioner also relies on a declaration of Arthur Zatarain, PE
`
`(Ex. 1006).
`
`E. Asserted Grounds of Unpatentability
`
`Petitioner challenges the patentability of the challenged claims on the
`
`following grounds:
`
`Reference(s)
`
`Claims Challenged
`
`Scadaware
`
`1-5, 7, 11-15, 17-19, 21-30,
`34-36, 38-40, 42, and 43
`
`and Smith
`
`Scadaware
`
`103
`
`6, 10, and 16
`
`Scadaware,Britton,|§ 103|8, 9, 20, 26, 30-33, 37, and 41
`
`Pet. 4.
`
`3 See infra Section IIB.
`
`
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`IPR2015-02004
`Patent 6,147,601
`
`.
`
`Il. DISCUSSION
`
`A. Claim Construction
`
`In an inter partes review, claims of an unexpired patent are given their
`
`broadest reasonable interpretation in light of the specification of the patent in
`
`which they appear. 37 C.F.R. § 42.100(b); Office Patent Trial Practice
`
`Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012); In re Cuozzo Speed
`
`Techs., LLC, 793 F.3d 1268, 1275—79 (Fed. Cir. 2015), cert. granted sub
`
`nom. Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 890 (mem.) (2016).
`
`Underthis standard, we interpret claim terms using “the broadest reasonable
`_ meaning ofthe wordsin their ordinary usage as they would be understood
`by one of ordinary skill in the art, taking into account whatever
`
`enlightenment by way of definitions or otherwise that may be afforded by
`
`the written description contained in the applicant’s specification.” In re
`
`Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997); see also In re Translogic
`
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and
`
`customary meaningis the meaning that the term would haveto a person of
`
`ordinary skill in the art in question.”) (internal quotation marks omitted).
`
`In the Petition, Petitioner proposes constructions for the claim phrases
`
`(1) “message profile containing outgoing message routing instructions,”as
`
`recited in each of independent claims 1 and 22; (2) “message generating
`
`mechanism,”as recited in independent claims 22 and 43 and in dependent
`
`claim 23; and (3) “normalization module,” as recited in dependent claims 24
`
`and 32. Pet. 7-11. In response, Patent Ownerproposesalternative
`
`constructions for each of those phrases, as well as a constructions for the
`
`claim terms “server” (recited in each of the challenged independent claims)
`
`and “database”(recited in claims 10, 42, and 43). Prelim. Resp. 24-31. We,
`
`
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`IPR2015-02004
`Patent 6,147,601
`
`however, need notassess the parties’ proposed constructions because they
`
`are not necessary to resolve the dispositive issue discussed below. See, e.g.,
`
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999) (explaining that only those claim terms or phrasesthat are in
`controversy need to be construed, and only to the extent necessary to resolve
`
`the controversy).
`
`B. Whether Scadaware Qualifies as a Printed Publication
`Within the Meaning of$ 102
`
`Thefirst page of Scadaware indicates a copyright date of 1994 anda
`revision date of December 1994. Ex. 1003, 1.4 Petitioner concedesthat the
`last five pages of Scadaware (id. at 170-74; “FAX REPORT OPTION”)
`
`were addedat a later date, and moreparticularly, in a revision dated
`
`February 15, 1996. Pet. 3. Petitioner asserts that, regardless of whether
`
`Scadawarewasfirst published in December 1994 or in February 1996,
`
`Scadaware qualifies as prior art to the 601 patent under 35 U.S.C. §§ 102(a)
`
`and 102(b). Jd. at 4. To support its assertion, Petitioner relies upon the
`
`copyright date of 1994 and revision date of December 1994 on the face of
`Scadaware(id. (citing Ex. 1003, 1)); aSCADAWARE®Software
`
`Documentation Update, dated January 2, 1998, and identifying a
`
`February 15, 1996 “FAX Feature Update” to Scadaware(id. (citing
`
`Ex. 1007, 20°)); a documentationprice list indicating that the December
`
`* All references to the page numbers in Scadaware refer to the page numbers
`inserted by Petitioner in the bottom,right-hand corner of each page of
`Exhibit 1003.
`5 All references to the page numbers in SCADAWARE®Software
`Documentation Update refer to the page numbersinserted by Petitioner in
`the bottom, right-hand corner of each page of Exhibit 1007.
`
`10
`
`
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`IPR2015-02004
`Patent 6,147,601
`
`1994 version of Scadaware wasavailable publicly for sale as of April 1,
`
`1996 (id. (citing Ex. 1008, 1)); and the testimony ofits declarant, Mr.
`
`Zatarain (id. at 3-4 (citing Ex. 1006 {J 24—31)).
`In response, Patent Owner contends the evidence offered by Petitioner
`
`to demonstrate that Scadaware qualifies as a printed publication within the
`
`meaning of § 102 is deficient for the following three reasons: (1) the
`
`copyright date of 1994 and the revision date of December 1994 on the face
`
`of Scadaware, by themselves,are insufficient to show the date Scadaware
`
`was made accessible publicly; (2) Mr. Zatarain’s cited testimony is unclear
`as to whetherthe version of Scadaware actually filed in this proceeding was
`
`distributed and to whom;and (3) even if Scadaware was distributed, as
`
`described by Mr. Zatarain, hestill fails to show that Scadaware was made
`
`sufficiently accessible to the public interested in the art. Prelim. Resp. 9-18.
`|
`Welook to the underlying facts to make a legal determination as to
`
`whethera referenceis a printed publication. Suffolk Techs., LLC v. AOL
`
`Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014). The determination of whether a
`
`given reference qualifies as a prior art “printed publication” involves a case-
`
`by-case inquiry into the facts and circumstances surroundingits disclosure to
`
`membersofthe public. Jn re Klopfenstein, 380 F.3d 1345, 1350 (Fed.Cir.
`
`2004). The key inquiry is whether the reference was made“sufficiently
`
`accessible to the public interested in the art” before the critical date. In re
`
`Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989); In re Wyer, 655 F.2d 221,
`226 (CCPA 1981). “A given reference is ‘publicly accessible’ upon a
`satisfactory showing that such document has been disseminated or otherwise
`
`madeavailable to the extent that persons interested and ordinarily skilled in
`
`the subject matter or art exercising reasonable diligence, can locate it.” SRI
`
`1]
`
`
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`IPR2015-02004
`Patent 6,147,601
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`Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008)
`
`(quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed.
`
`Cir. 2006)).
`
`Weare persuaded that Petitioner has made a threshold showingthat
`
`Scadawareis a printed publication within the meaning of § 102 and,
`
`therefore, is available as prior art in an inter partes review of the
`
`°601 patent. 35 U.S.C. § 311(b). Onits face, Scadaware includes the
`
`following two dates: (1) a copyright date of 1994; and (2) a revision date of
`
`December 1994. Ex. 1003, 1. Mr. Zatarain testifies that the
`
`SCADAWARE®Software Documentation Update “wasperiodically
`
`updated from December 1994 through January 2, 1998 to describe revisions
`
`and enhancements to the Scadaware system.” Ex. 1006 { 25. Indeed, as one
`
`example of these revisions or enhancements,the last five pages of
`
`Scadaware—pages 170 to 174 of Exhibit 1003—-were addedin a revision
`
`characterized as a “FAX Feature Update” dated February 15, 1996. Pet. 3;
`
`see Ex. 1007, 20 (disclosing that the Scadaware “FAX Feature Update”
`
`occurred on February 15, 1996); accord Ex. 1006 ff 24, 25 (confirmingthat
`
`the Scadaware “FAX Feature Update” occurred on February 15, 1996).
`
`Mr. Zatarain furthertestifies that, “[b]ecause later versions of
`
`Scadaware software were always backwards-compatible with earlier
`
`hardware, and because the software of installed systems was frequently
`
`updated, the Scadaware Reference wasalso provided to hundredsof users
`
`having existing systems(i.e. installed before December 1994 or February
`
`1996).” Ex. 1006 4 28. We understand Mr. Zatarain to attest that, each time
`
`Scadaware was updated, a new revised copy was madeavailable to users
`
`whopreviously purchased the Scadaware system. Mr. Zatarain also testifies
`
`12
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`
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`IPR2015-02004
`Patent 6,147,601
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`that Scadaware was madeavailable publicly to potential customersin sales
`
`seminars, training sessions, and project proposals prior to the earliest
`
`effective filing date of the ’601 patent. Ex. 1006 429. As just one example
`
`of this public accessibility, Petitioner and Mr. Zatarain direct us to a
`
`documentationpricelist indicating that the December 1994 version of
`
`Scadaware wasavailable publicly for sale for $45.00 at least as of
`
`April 1, 1996. Pet. 3 (citing Ex. 1008, 1); Ex. 1006 { 29 (citing the same).
`
`Overall, Mr. Zatarain testifies that an estimated total of between three and
`
`five hundred copies of Scadaware weredistributed priorto the.earliest
`
`effective filing date of the ’601 patent. Ex. 1006 4/31. Based on the current
`
`record, we conclude that Petitioner has producedsufficient evidence that
`
`Scadaware was madeaccessible to the public interested in the art at least by
`
`April 1996, which is more than one year before January 9, 1999—the
`
`earliest effective filing date of the 601 patent. Ex. 1001 at [60].
`We now address each of Patent Owner’s arguments in turn. We agree
`with Patent Owner’s argumentthat the copyright date of 1994 and the
`
`revision date of December 1994 onthe face of Scadaware, by themselves,
`
`are insufficient to demonstrate the date Scadaware was made accessible
`
`publicly. Prelim. Resp. 9—11 (citing Ex. 1003, 1). As we explained above,
`
`however, Petitioner does not rely solely upon the copyright date of 1994 and
`
`the revision date of December 1994 on the face of Scadaware to demonstrate
`
`Scadaware was made publicly accessible prior to the earliest effective filing
`
`date of the 601 patent. Instead, Petitioner asserts that the copyright date of
`
`1994 and the revision date of December 1994 on the face of Scadaware,
`along with the SCADAWARE®Software Documentation Update, the
`documentationprice list, and the supporting testimony of Mr. Zatarain,
`
`13
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`IPR2015-02004
`Patent 6,147,601
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`demonstrates that Scadaware was made sufficiently accessible to the public
`
`interested in the art by at least April 1996. Pet. 3-4; Ex. 1003, 1; Ex. 1006
`
`qq 24-31; Ex. 1007, 20; Ex. 1008, 1.
`
`Wealso are not persuaded by Patent Owner’s argumentthat, when
`
`Mr. Zatarain attests to the distribution of Scadaware,it is unclear whether
`
`the version of Scadawareactually filed in this proceeding was distributed
`
`and to whom. Prelim. Resp. 11-13. As we explained above, Mr. Zatarain
`
`testifies that Scadaware was updated periodically, including,e.g., a revision
`
`characterized as a “FAX Feature Update” dated February 15, 1996.
`
`Ex. 1006 9 24, 25. Mr. Zatarain further testifies that, each time Scadaware
`
`was updated, a new revised copy was provided to users who previously
`
`purchased the Scadaware system. Jd. | 28. This practice of redistribution is
`
`bolstered further by Mr. Zatarain’s testimony that the customer always was
`
`given the “final form.” Id. { 27. Based on Mr. Zatarain’s cited testimony,
`
`the version of Scadawareactually filed in this proceeding is inconsequential
`
`because, regardless of the numberof revisions or enhancementsto the
`
`Scadaware system, Petitioner has presented sufficient evidence
`
`demonstrating that the most recent version of Scadaware always was made
`
`publicly accessible.
`
`In support of its argumentthatit is unclear whether the version of
`
`Scadaware actually filed in this proceeding wasdistributed and to whom,
`
`Patent Ownerdirects us to the Board’s analysis in the Temporal Powercase.
`
`Prelim. Resp. 12 (citing Temporal Power, Ltd. v. Beacon Power, LLC, Case
`
`IPR2015-00146,slip op. at 10-11 (PTAB Apr. 27, 2015) (Paper 10)). The
`
`circumstancesof this case, however, are distinguishable from those in
`Temporal Powerin at least one significant respect. The petitioner in
`
`14
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`IPR2015-02004
`Patent 6,147,601
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`Temporal Power did not explain, and the Board was unable to determine,
`
`whether the version of PowerPoint slides filed in that proceeding was the
`
`actual version presented at a conference. In this case, there is sufficient
`
`evidence of record demonstrating that, regardless of the version of
`
`Scadawareactually filed in this proceeding, the subject matter disclosed in
`
`Scadaware was made publicly accessible.
`
`Lastly, we are not persuaded by Patent Owner’s argumentthat, even if
`
`Scadaware wasdistributed, as described by Mr. Zatarain,he still has not
`
`demonstrated that Scadaware was madesufficiently accessible to the public
`
`interested in the art. Prelim. Resp. 13-18. Apart from mere attorney
`argument, the current record does notinclude sufficient or credible evidence
`
`that undermines Mr. Zatarain’s supporting testimony as to the public
`
`accessibility of Scadaware. Cf In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
`
`1997) (explaining that attorney arguments and conclusory statements that are
`
`unsupported by factual evidenceare entitledto little probative value).
`
`Instead, as we explained above, Mr. Zatarain testifies that Scadaware was
`
`madeavailable publicly to potential customers in sales seminars, training
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`sessions, and project proposals, with an estimated total of between three and
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`five hundred copies distributed prior to the earliest effective filing date of
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`the °601 patent. Pet. 3; Ex. 1006 Jf 29, 31. As just one example, Petitioner
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`and Mr. Zatarain direct us to a documentationprice list indicating that at
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`least the December 1994 version of Scadaware wasoffered for sale publicly
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`for $45.00 as of April 1, 1996. Pet. 3; Ex. 1006 4 29; Ex. 1008, 1. In our
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`view, the documentationprice list, along with Mr. Zatarain’s supporting
`
`testimony, amountto credible evidence that Scadaware was made
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`15
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`IPR2015-02004
`Patent 6,147,601
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`sufficiently accessible to the public interested in the art, such that they could
`
`locate it by exercising reasonable diligence.
`
`In support of its argument that Mr. Zatarain has not demonstrated that
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`Scadaware was madesufficiently accessible to the public interested in the
`
`art, Patent Owneralso directs us to the Board’s analysis in the Northern
`
`Telecom case. Prelim. Resp. 16 (citing N. Telecom, Inc. v. Datapoint Corp.,
`
`908 F.2d 931, 936 (Fed. Cir. 1990)). The circumstancesofthis case,
`
`however, also are distinguishable from Northern Telecom in at least two
`
`significant respects.
`
`First, the documentsat issue in Northern Telecom were marked
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`“[rJeproduction or further dissemination is not authorized .
`
`.
`
`. not for public
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`release.” N. Telecom, 908 F.2d at 936. In this case, we are unable to find
`
`markings on Scadaware indicating that reproduction or further dissemination
`
`was not authorized. See Ex. 1003. Mr. Zatarain’s testimony confirmsthat
`
`no such markings exist on Scadaware whenhetestifies that “[t]he
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`Scadaware Reference was not marked ‘confidential’ and wasnot treated as
`
`confidential. Customers and others who received copies were not placed
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`under any obligation to keep its contents confidential.” Ex. 1006 § 29.
`
`To the extent Patent Owner argues that the copyright notice on the
`
`face of Scadaware constitutes a marking indicative of prohibiting
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`reproduction or further dissemination, we disagree. Prelim. Resp. 16.
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`Although the copyright date of 1994 on the face of Scadawareis
`
`accompaniedby the phrase “All Rights Reserved,” this mark and
`
`accompanied phrase, by themselves, doesnot indicate that any restrictions
`
`were placed on the reproduction or dissemination of Scadaware. Instead,it
`
`simply informsreaders of the underlying claim to copyright ownership in
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`16
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`IPR2015-02004
`Patent 6,147,601
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`Scadaware,and that the copyright holder does not intend to give up any of
`
`the exclusive rights it has under copyright law.
`
`Second, as Patent Owneritself points out, the documents in Northern
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`Telecom weredistributed only to persons and organizations involved in a
`
`complex military project and housed at a company’s securefacility. Prelim.
`
`Resp. 16 (quoting N. Telecom, 908 F.2d at 936). Although Patent Owner
`
`asserts that similar facts are presenthere, it cites no supporting evidence for
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`its attorney argument. Seeid.
`
`In further support of its argument that Mr. Zatarain has not
`
`demonstrated that Scadaware was madesufficiently accessible to the public
`
`interested in the art, Patent Ownerdirects us to the Board’s analysis in the
`
`Samsung case. Prelim. Resp. 16-17 (citing Samsung Elecs. Co.v.
`
`Rembrandt Wireless Techs., LP, Case IPR2014-00514,slip op. at 7-9
`
`(PTAB Sept. 9, 2014) (Paper 18)). Again, however, the circumstances of
`
`this case are distinguishable from Samsungin at least two significant
`
`respects. First, the Draft Standard at issue in Samsung wasavailable only to
`
`membersof the 802.11 Working Group. Samsung,slip op. at 7-8. In this
`
`case, although Mr. Zatarain testifies that copies of Scadaware were
`
`distributed with at least fifty delivered systems between February 1996 and
`
`the earliest effective filing date of the ’601 patent (Ex. 1006 4 27), he also
`
`testifies that Scadaware was made available publicly to potential customers
`
`in sales seminars, training sessions, and project proposals, as well as for
`
`public sale, during essentially the same time period (id. J 29; Ex. 1008, 1).
`
`In other words, unlike the Draft Standard at issue in Samsung,there is
`
`sufficient evidence of record that Scadaware was madeaccessible to the
`
`general public—not just an exclusive group of customers.
`
`17
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`IPR2015-02004
`Patent 6,147,601
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`Second, the Draft Standard at issue in Samsung wasonly accessible
`
`using a passworddistributed to an email list specific to the 802.11 Working
`
`Group. Samsung, slip op. at 8-9. In this case, Patent Owner does notdirect
`
`us to, nor can wefind, evidence of record indicating that access to
`
`Scadaware was somehow password protected or otherwise restricted.
`
`In summary, based on this record, we are persuaded that Petitioner has
`
`madea threshold showing that Scadawareis a printed publication within the
`
`meaning of § 102 and, therefore, qualifies as prior art to the °601 patent.
`
`C. Asserted Grounds of Unpatentability
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`1. Anticipation by Scadaware
`
`Petitioner contends that claims 1-5, 7, 11-15, 17-19, 21-30, 34—36,
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`38—40, 42, and 43 of the ’601 patent are anticipated under § 102 by
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`Scadaware. Pet. 11-40. Petitioner explains how Scadaware allegedly
`
`describes the subject matter of each challenged claim (id.), and relies upon
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`the Declaration of Mr. Zatarain (Ex. 1006 J 60, 61, 72, 78-80, 83-86, 126—
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`137) to support its positions. We have considered Petitioner’s explanations
`
`and supporting evidence, but we are not persuaded that Petitioner properly
`
`accounts for the “computer server” required by each of independent
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`claims 1, 22, 42, and 43 of the ’601 patent.
`
`Webegin ouranalysis with the principles of law that generally apply
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`to a groundbased onanticipation, followed by a brief overview of
`
`Scadaware, and we then addressthe parties’ contentions with respect to
`
`independentclaims 1, 22, 42, and 43.
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`
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`Patent 6,147,601
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`a. Principles ofLaw
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`To establish anticipation, “all of the elements and limitations of the
`
`claim must be shownin a single prior reference, arranged as in the claim.”
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`Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
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`2001). “A claim is anticipated only if each and every elementas set forth in
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`the claim is found, either expressly or inherently described, in a single prior
`
`art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
`
`631 (Fed. Cir. 1987). We analyze this asserted ground based on anticipation
`
`with the principles stated above in mind.
`
`b. Overview ofScadaware
`
`Scadawareis a system comprised of hardware and software
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`componentsthat allows users to monitor equipment at remote locations, such
`
`as machinery in operation at a remote oil drilling site, and receive messages
`
`or alerts on a user-designated device if the equipment malfunctions or
`
`deviates from acceptable parameters. See Ex. 1003, 7, 18. A Figure in
`
`Scadaware, reproduced below,illustrates the hardware components that
`
`make up this system.
`
`/d. at 11.
`
`19
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` (OPTIONAL TERMINAL)
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`~
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`+ TO 255 RTU STATIONS
`
`As shownin the Figure reproduced above, the system disclosed in
`
`Scadawareincludes the following hardware components: (1) flow,
`
`temperature, alarm, shut down control, and well test control field
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`transmitters installed in or on the equipment being monitored; (2) a remote
`
`terminal unit (“RTU”) connectedto the field transmitters; (3) a “Host” Unit
`
`remote from the equipmentsite; (4) a remote terminal through which a
`
`prospective user may issue commandsto the Host Unit; and (5) remote
`
`communication devices, such as printers or computers, capable of receiving
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`messages about the status of monitored equipment. Ex. 1003, 12-14, 55.
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`The field transmitters may sense a variety of parameters, including the
`
`current pressure.ofa fluid inside a pipe, the temperature of the equipment,
`
`the level of liquid in a tank, or the presence ofnatural gas, fire, or smoke in a
`
`room. See, e.g., id. at 11, 21, 61 (collectively disclosing flow, temperature,
`alarm, and pressure sensors). The field transmitters send the sensed data to
`
`the RTU,which, in turn, communicates this data over radio or phonelines to
`
`the Host Unit. See id. at 11.
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`20
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`c. Discussion
`
`Each of independentclaims 1 and 42recites, in relevantpart,
`
`“communicating a message indicative ofthe state [of at least one parameter
`of at least one piece of remote equipment] .
`.
`. to a computer server as an
`
`incoming message.” Ex. 1001, 8:56—58, 12:60—61 (emphasis added).
`
`Claim 1 further recites “enabling a user to remotely configure or modify a
`
`user-defined messageprofile .
`
`.
`
`. storable on the computer server,” and
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`“forwarding at least one outgoing exception message based on the incoming
`
`messageto at least one user-defined communication device specifiable in the
`
`user-defined messageprofile, wherein the user can remotely configure or
`
`modify the user-defined message profile by remotely accessing the computer
`
`server.” Id. at 8:59-62, 8:66—9:5 (emphasis added). Similarly, claim 42
`
`further recites “stor[ing a plurality of message profiles] at the computer
`
`server,” and “sending .
`
`.
`
`. at least one exception message. . . to the at least
`
`one remote c
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