Trials@uspto.gov
`571-272-7822
`
`Paper No. 14
`Entered: May 4, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ALARM.COMINC.,
`Petitioner,
`
`v.
`
`VIVINT,INC.,
`Patent Owner.
`
`Case IPR2016-00116
`Patent 6,147,601
`
`Betore MICHAEL R. ZECHER, JAMESB. ARPIN,and
`CHARLES J. BOUDREAU,Administrative Patent Judges.
`
`BOUDREAU,Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`é
`
`
`571-272-7822
`
`Paper No. 14
`Entered: May 4, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ALARM.COMINC.,
`Petitioner,
`
`v.
`
`VIVINT,INC.,
`Patent Owner.
`
`Case IPR2016-00116
`Patent 6,147,601
`
`Betore MICHAEL R. ZECHER, JAMESB. ARPIN,and
`CHARLES J. BOUDREAU,Administrative Patent Judges.
`
`BOUDREAU,Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`é
`
`
`
`IPR2016-00116
`Patent 6,147,601
`
`I. INTRODUCTION
`
`Alarm.com Incorporated (‘Petitioner’) filed a Petition (Paper1,
`
`“Pet.”) requesting an inter partes review ofclaims 1, 2, 4-23, 25-31, and
`
`33-41 of US. Patent No. 6,147,601 (Ex. 1101, “the ’601 patent’). Pet. 3.
`
`Vivint, Incorporated (“Patent Owner”) filed a Preliminary Response. Paper
`
`12 (“Prelim. Resp.”).! We review the Petition under 35 U.S.C. § 314, which
`
`provides that an inter partes review maynotbeinstituted “unless .
`
`.
`
`. thereis
`
`a reasonable likelihood that the petitioner would prevail with respect to at
`
`least 1 of the claims challenged in the pctition.” 35 U.S.C. § 314(a).
`
`For the reasonsthat follow, and on this record, we are persuaded that
`Petitioner demonstrates a reasonable likelihoodof prevailing in showing the
`unpatentability of claims 1, 2, 4-15, 17—23, 25-31, and 33-41 ofthe °601
`patent. We, however, are not persuaded that Petitioner demonstrates a
`
`reasonable likelihood of prevailing in showing the unpatentability of claim
`
`16 of the ’601 patent. Accordingly, we institute an inter partes review only
`
`as to claims 1, 2, 4-15, 17-23, 25-31, and 33-41 of the ’601 patent.
`
`' 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”), 3. By
`Order dated January 28, 2016, we stayed the Request, pursuant to 37 C.F.R.
`§ 42.3, pending our decision on this Petition and the related petitions in
`Cases IPR2015-02004 and IPR2016-00155, and we also authorized
`Petitionerto file a Brief limited to addressing certain issues related to the
`requested Certificate of Correction. See Paper 9 (“Order”). Petitioner filed
`its Brief shortly before Patent Ownerfiled its Preliminary Response.
`Paper 11 (‘‘Pet. Brief’).
`
`
`
`IPR2016-00116
`Patent 6,147,601
`
`A. The ’601 Patent
`
`The ’601 patent, entitled “Electronic Message Delivery System
`
`Utilizable in the Monitoring of Remote Equipment and Method of Same,”
`
`issued November 14, 2000, from U.S. Patent Application No. 09/317,235,
`
`filed May 24, 1999. Ex. 1101, at [21], [22], [45], [54]. The ’601 patent also
`
`claims the benefit of U.S. Provisional Application No. 60/115,305, filed
`
`January 9, 1999 (“the 7305 provisional”). Jd. at [60], 1:6—7.
`
`The ’601 patent describes systems and methods for monitoring remote
`
`equipment such as “devices... cmployed in heating, ventilating, and [air
`
`conditioning] (HVAC) systems.” Ex. 1101, Abstract, 1:11-14. The ’601
`
`patent explains that “[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 wantto 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).” Id. at 2:5-14. “Suchalist ofwho to
`contact via what means depending on which fault has occurred may be
`
`referred to as a ‘messageprofile.’” Jd. at 2:14-16. According to the ’601
`
`
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`IPR2016-00116
`Patent 6,147,601
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`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 equipmentthat can
`
`deliver fault notification messagesto different individuals for different fault
`
`conditions via different electronic media, and in which a customer may
`
`modify its messageprofile interactively. Ex. 1101, 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.
`
`
`~~ NLA
`
`
`
`
`___
`
`1
`
`Electronic Message
`Deiiemy Server
`
`/'\
`
`swe
`
`As shownin Figure 1, system 50 monitors existing pieces of
`
`electronic equipment, such as air-conditioner 2, boiler 3, motorstarter4,
`
`heater 5, or any other equipmentthat a prospective user desires to monitor.
`
`Ex. 1101, 5:39-42. Each piece of equipmentis fitted with interface 10 that
`
`periodically sends a status signal to electronic message delivery server 1
`
`indicating whether the piece of equipmentand its corresponding interface
`
`are functioning correctly. Jd. at 5:43-47. When a predetermined
`
`
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`IPR2016-00116
`Patent 6,147,601
`
`“exception” condition, e.g., a fault condition, occurs in a piece of equipment
`
`being monitored, interface unit 10 sends a message to 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 e-mail 6, fax 7,
`
`pager8, voice 9, etc., according to a message profile configured by the user
`
`via user-webclient 121 connected to Internet 122. Jd. at 5:51-55.
`
`In the described systems and methods, a sensor in communication
`
`with a piece of remote equipment determinesthestate of at least one
`
`parameter of the remote equipment. Ex. 1101, 2:48-50, 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. Jd. 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
`
`parties titled Vivint, Inc. v. Alarm.com Inc., 2:15-cv-00392-CW-BCW
`
`(D. Utah 2015). Pet. 1; Paper 8, 2. In addition to this Petition, Petitioner
`also filed two otherpetitions challenging certain claims ofthe °601 patent
`(Cases IPR2015-02004 and IPR2016-00155). In those cases, after taking
`
`into account the arguments presented in the preliminary responsesfiled by
`
`Patent Owner, we concluded that the information presentedin the petitions
`
`did not establish that there was a reasonablelikelihood that Petitioner would
`
`
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`IPR2016-00116
`Patent 6,147,601
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`prevail in challenging any of the claims of the 601 patent as unpatentable
`
`under 35 U.S.C. § 102 or § 103 on the asserted grounds presented. Case
`IPR2015-02004, Paper 14; Case IPR2016-00155, Paper 14.
`Petitioner hasalso filed ten other 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) U.S. Patent No. 6,924,727 B2 (Cases JPR2015-01977 and
`
`IPR2015-02008); and (5) U.S. Patent No. 7,884,713 B1 (Cases JPR2015-
`01965 and IPR2015-01967). Pet. 1; Paper 8. 1-2.
`
`C. Illustrative Claims
`
`Of the challenged claims, claims 1 and 22 are independent. Those
`
`two claims are reproduced below:
`
`1. A method of monitoring remote equipment comprising the
`steps of:
`a) determininga state of at least one parameterofat least one
`piece of the remote equipment;
`b) communicating a message indicative of the state from the
`piece of remote equipment to a computerserveras 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 messageis an incoming
`exception messageindicative of improper operation of the
`piece of remote cquipment;
`
`
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`IPR2016-00116
`Patent 6,147,601
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`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 messageprofile by remotely accessing the computer
`server.
`
`Ex. 1101, 8:51—9:6.
`
`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
`parameter of 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 scrver forwardsat least one outgoing
`exception messageto at least one predetermincd user-
`defined remote communication device based on said
`incoming exception message as specified in said user-
`defined messageprofile.
`
`Ex. 1101, 10:43-11:2. Challenged claims 2 and 4—21 dependdirectly or
`
`indirectly from claim 1; and challenged claims 23, 25-31, and 33-41 depend
`
`
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`IPR2016-00116
`Patent 6,147,601
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`directly or indirectly from claim 22. Id. at 9:7-10, 9:16-10:42, 11:3-8,
`
`11:16-12:5, 12:14-54.
`
`D. References Relied Upon
`
`Petitioner relies on the following references:
`Exhibit
`.
`Reference
`
`(filed Sept. 4, 1998) (“Britton”) 1105|U.S. Patent No. 6,034,970, issued Mar. 7, 2000
`
`1103|U.S. Patent No. 5,808,907, issued Sept. 15, 1998
`(“Shetty”)
`
`1104
`
`|U.S. Patent No. 6,040,770, issued Mar. 21, 2000
`
`(filed July 2, 1997) (“Levac”’)
`
`1106
`
`|U.S. Patent No. 5,061,916, issued Oct. 29, 1991
`(“French”)
`
`Pet. 3. Petitioner also relies on a declaration of Arthur Zatarain, PE
`
`(Ex. 1107).
`
`E. Asserted Grounds of Unpatentability
`
`Petitioner challenges the patentability of the challenged claims on the
`
`following grounds:
`
`Reference(s)
`
`Claim(s) Challenged
`
`
`
`Shetty § 103|1,2, 4,6, 10-13, 15-17, 22,
`23, 25-27, 29, 33-35, and 38
`
`22, 23, 25-29, and 33-35
`
`Shetty and Levac
`
`§ 103
`
`1, 2, 4, 6, 7, 10-13, 15, 19,
`
`
`
`IPR2016-00116
`Patent 6,147,601
`
`/
`
`Reference(s)|Basis|Claim(s) Challenged
`Shetty and Britton;|§ 103|5, 8, 9, 20, 21, 30, 31, 37, 39,”
`and/or Shetty,
`40, and 41
`Levac, and Britton
`
`Shetty and French;
`and/or Shetty,
`Levac, and French
`
`14, 17, 18, 36, 38, and 39
`
`
`
`
`
`
`
`
`Shetty, Levac,
`Britton, and French
`
`
`
`
`§ 103
`
`39
`
`Pet. 9-10, 27, 38, 49; Pet. Brief 4-5.
`
`II. 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 of the words in their ordinary usage as they would be understood
`
`by vue of urdinary skill in the art, taking into account whatever
`
`enlightenment by way of definitions or otherwise that may be afforded by
`
`* In the Petition, Petitioner alleges that claim 39, as issued, is unpatentable
`over Shetty and French and/or Shetty, Levac, and French. Pet. 56. In
`Petitioner’s Brief, however, Petition contends that claim 39, as corrected by
`Patent Owner’s Certificate of Correction, instead is unpatentable both over
`Shetty and Britton and/or Shetty, Levac, and Britton, and over Shetty,
`Levac, Britton, and French. Pet. Brief 4—5.
`
`9
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`IPR2016-00116
`Patent 6,147,601
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`the written description contained in the applicant’s specification.” Jn 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 meaningthat the term would haveto a person of
`
`ordinary skill in the art in question.”) (internal quotation marks andcitation
`
`omitted). A patentee, however, may rebut this presumption by acting as his
`
`ownlexicographer, providing a definition of the term in the specification
`
`with “reasonable clarity, deliberateness, and precision.” In re Paulsen, 30
`
`F.3d 1475, 1480 (Fed, Cir. 1994)
`
`In the Petition, Petitioner proposes constructions for the claim terms
`
`(1) “message profile containing outgoing message routing instructions” and
`
`(2) “message generating mechanism.” Pet. 7-9. In response, Patent Owner
`
`rejects Petitioner’s constructions and proposesan alternative construction for
`
`the term “messageprofile.” Prelim. Resp. 7-11.
`
`I. “méssage profile containing outgoing message routing
`instructions” / “message profile”
`
`The term “messageprofile containing outgoing message routing
`
`instructions”is recited in each of independent claims 1] and 22. Ex. 1101,
`
`8:60-61, 10:57-59. Petitioner argues that the broadest reasonable
`
`construction ofthis term is “information identifying a communications
`
`device or devices to receive an outgoing message from the computerserver.”
`
`Pct. 7. According to Petitioner, “[t]he claimed message profile and routing
`
`instructions are used to determineat least one ‘user-defined communications
`
`device’ to receive an outgoing ‘exception message’ from the computer
`
`server.” Id. Moreover, Petitioner contendsthat, “[a]lthough certain portions
`
`of the specification appear to require that the message profile also include
`
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`IPR2016-00116
`Patent 6,147,601
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`information about when and how to send messages(and not simply to which
`
`devices such messagesare sent), this narrowerinterpretation would be
`
`inconsistent with the claim language.” Jd. Petitioner further contends,
`
`The specification describes a “message profile” as “a list of who
`to contact via what means depending on which fault has
`occurred” (Ex. 1101 at 2:14-16) and “which exception conditions
`are reported to which individuals .
`.
`. [and] by which media(fax,
`e-mail, [personal communication service]) these individuals are
`to be notified.” Ex. 1101 at 4:41-43. However, as used in the
`claims, a “message profile” does not necessarily include all of an
`exception type, media type, and specific device. Dependent
`claims 7 and 8 cover a user specifying device type and specitic
`device in the message profile, which would be redundant if
`“message profile” already required those categories.
`Claims 1 and 22 do not merely claim a “messageprofile,”
`however, but a “message profile containing outgoing message
`routing instructions.” The claim language and specification
`indicate that
`the “routing instructions” must
`identify the
`communication device or devices that will receive an outgoing
`message.
`
`Pet. 7-8.
`
`Patent Owner counters that the Specification of the °601 patent sets
`
`forth a definition of the recited “messageprofile,” as “a list of who to
`
`contact via what means depending on which fault has occurred.” Prelim.
`Resp. 7. According to Patent Owner, “acting as its own lexicographer, the
`Patent Ownerset forth the meaning of ‘messageprofile’ with clarity and
`
`deliberateness, using a definitional syntax: ‘a list of who to contact via what
`
`means depending on which fault has occurred maybereferred to as a
`
`“message profile.”’” Jd. at 8 (quoting Ex. 1101, 2:14-16). Patent Owner
`
`contendsthat, although Petitioner “argues that ‘a “message profile” does not
`
`necessarily includeall of an exception type, media type, and specific device’
`
`11
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`IPR2016-00116
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`based on differentiation from dependent claims 7 and 8,” Petitioner
`
`“provides no explanation as to howits argued claim differentiation would
`
`apply to ‘a list of who to contact,’ whichis a part of the ‘message profile’
`definition.” Jd. (quoting Pet. 8). Patent Owneralso contendsthat, “[i]n
`addition to glossing over the definition in the specification, [Petitioner’s]
`
`approachto its construction glosses over the claim language .
`
`.
`
`. by solely
`
`interpreting the term ‘outgoing routing instructions.’” Jd. at9. According to
`
`Patent Owner,“[t]o satisfy the claim language, a messageprofile certainly
`
`must‘contain[] outgoing routing instructions,’”” but “the term ‘message
`
`profile’ itself has meaning as well.” Jd. Finally, Patent Owner contendsthat
`
`Petitioner’s construction also contradicts the claim language by “ignor[ing]
`
`that the phrase recites ‘outgoing message routing instructions’ in the plural,”
`
`whereas “[a]ll that is required to satisfy the Petition’s proposed construction
`
`is information identifying a single destination of an outgoing message.” Id.
`
`Onthis record, and for purposes of this Decision, we determinethat
`
`neither Petitioner’s nor Patent Owner’s proposed constructions represent the
`broadest reasonableinterpretation of the term “messageprofile containing
`
`outgoing routing instructions,” as recited in independent claims 1 and 22.
`
`Asan initial matter, we are not persuaded that “Patent Ownerset forth
`
`the meaning of‘messageprofile’ with clarity and deliberateness, using a
`
`definitional syntax.” See Prelim. Resp. 8; see also Paulsen, 30 F.3d at 1480
`(an inventormay define specific terms used to describe invention, but must
`do so “with reasonable clarity, deliberateness, and precision”and,if done,
`
`must“‘set out his uncommon definition in some manner within the patent
`
`disclosure’ so as to give oneof ordinary skill in the art notice of the change”
`
`in meaning). Although Patent Owneraccurately quotes the specification of
`
`12
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`IPR2016-00116
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`the °601 patent as stating that “‘a list of who to contact via what means
`
`depending on whichfault has occurred may be referred to as a ‘message
`
`profile” (id. (quoting Ex. 1101, 2:14-16)), that statement, includingits use
`
`of the permissive word “may,” at most reflects that “a list of who to contact
`
`via what means depending on whichfault has occurred” could be an
`
`example of a message profile. As Petitioner points out, that statement does
`
`not require that the claimed messageprofile must “necessarily includeall of
`
`an exception type, media type, and specific device.” Pet. 8. Nor doesit
`
`necessarily require “‘a list of who to contact.” Prelim. Resp. 8.
`
`Although the ’601 patent includes, as an example, that a customer
`
`may want to send certain non-emergency condition notifications to certain
`
`individuals via a certain medium and emergency condition notifications to
`
`different individuals via other means (Ex. 1101, 2:5—14), we do not read into
`
`that example any clear disclaimer of claim scope. See Jn re Am. Acad. of
`
`Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (“We have cautioned
`
`against reading limitations into a claim from the preferred embodiment
`
`described in the specification, even if it is the only embodimentdescribed,
`
`absentclear disclaimer in the specification.”). Indeed, the ’601 patent also
`
`includes other embodiments, in which, for example, multiple messages are
`
`sent to multiple recipients via differing media for the same exception
`
`condition (Ex. 1101, 3:10—13), or the same person is contacted by different
`
`meansat different times (id. at 4:57-58).
`
`Although we conclude that Patent Owner’s proposed construction
`
`does not constitute the broadest reasonable interpretation of “message
`
`profile,” we also are not persuadedthat Petitioner’s proposed constructionis
`
`correct. First, even though independentclaim 22 recites that “said server
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`IPR2016-00116
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`forwards at least one outgoing exception message” (Ex. 1101, 10:65-66), we
`
`find no corresponding languagerecited in independent claim 1 that would
`
`require that an outgoing messagespecifically must be “receive[d] .
`
`.
`
`. from
`
`the computer server,” as proposedby Petitioner. Pet. 7. Second, claim 1
`
`recites “forwarding at least one outgoing exception message based on the
`
`incoming messageto at least one user-defined communication device
`
`specifiable in the .. . message profile” (Ex. 1101, 8:67—-9:3 (emphasis
`
`added)), and claim 22 recites that an outgoing exception messageis
`
`forwardedto at least one predetermined user-defined remote communication
`
`.
`.
`device based on an incoming exception message“as specified in said .
`message profile” (id. at 10:65—11:2 (emphasis added)). Accordingly, we
`interpret the claimed messageprofile to “specify” a communication device.
`
`Third, the Specification describes a messageprofile as “data” that may be
`
`recorded in a database. See, e.g., Ex. 1101, 4:46-47, 6:50—52, 8:32-33.
`
`Based on the above considerations, we concludethat on this record,
`
`and for purposesof this Decision, that the broadest reasonable interpretation
`
`of “message profile containing outgoing message routing instructions”in
`
`claims 1 and 22 is a “data record including instructions specifying at least
`
`one communication device to which an outgoing message can be routed in
`
`response to an incoming exception message.”
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`2. “message generating mechanism”
`
`Petitioner contendsthat the term “message generating mechanism,”as
`
`recited in independent claim 22, should be treated as a means-plus-function
`term under 35 U.S.C. § 1129 6.° Pet.8.
`
`An elementin a claim for a combination may be expressed as a
`means... for performing a specified function withoutthe recital
`of structure, material, or acts in support thereof, and such claim
`shall be construed to cover the corresponding structure, material,
`or acts described in the specification and equivalents thereof.
`
`35 U.S.C. § 112 4 6. A limitation using the term “meansfor” creates a
`
`rebuttable presumption that the drafter intended to invoke 35 U.S.C. § 112
`
`46. Conversely, when a claim term lacks the word “means,” a presumption
`
`exists that the claim should not be interpreted under § 112 4 6, and this
`
`presumption can be overcomeonlyif it is demonstrated that the claim terms
`eee
`
`fails to
`
`“‘recite sufficiently definite structure’ or else recites ‘function
`
`without reciting sufficient structure for performing that function.’”
`
`Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (en
`
`banc in relevant part). When construing a means-plus-function limitation
`
`under 35 U.S.C. § 112 | 6, we mustfirst identify the claimed function, and
`
`wethen look to the specification to identify the correspondingstructure that
`
`performs the claimed function. Med. Instrumentation & Diagnostics Corp.
`
`v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003); Cardiac Pacemakers,
`
`Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1119 (Fed. Cir. 2002). Our Rules
`
`3 Section 4(c) of the Leahy-Smith America Invents Act (AIA) re-designated
`35 U.S.C. § 112 J 6, as 35 U.S.C. § 112(f). Because the °601 patent has a
`filing date before September 16, 2012 (effective date of the statute), we refer
`to the pre-AIJA version of 35 U.S.C. § 112.
`
`15
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`TPR2016-00116
`Patent 6,147,601
`
`specifically require that the petition identify the corresponding structure in
`
`proposing a construction for a means-plus-function claim limitation.
`
`37 C.F.R. § 42.104(b)(3). “This inquiry is undertaken from the perspective
`
`of a person of ordinary skill in the art.” Cardiac Pacemakers, 296 F.3d at
`
`1113. However, if “this inquiry reveals that no embodimentdiscloses
`
`correspondingstructure, the claim is invalid for failure to satisfy the
`
`definileness requirement of § 112,42.” Jd. at 1114. Indefiniteness,
`
`however, may not be argued as a ground for unpatentability in an inter
`
`partes review. See 35 U.S.C. § 311(b).
`
`Petitioner contendsthat the “message generating mechanism”recited
`
`in claim 22 “is a purely functional recitation and does not recite any definite
`
`structure for performing the function of ‘generating messages.’” Pet. 8
`
`(citing Williamson, 792 F.3d at 1348-49). Petitioner further contendsthat
`
`the Specification of the ’601 patent “dues not disclose a sufficient structure
`
`for performing the function of ‘generating messages’” and, “[t]hus, the claim
`
`is indefinite.” Jd. at 9. Petitioner continues:
`
`However, if the Board concludes that [claim 22] is not
`indefinite,
`Petitioner
`contends
`that
`the
`only
`possible
`corresponding “structure” in the specification is “a processor of
`the interface unit executing an algorithm that generates a
`message including an indication of message format, an indication
`of the equipment to which the messagerelates, and an indication
`of the specific exception condition if an exception condition
`exists”, as disclosed in lines 5:23-35 (Ex. 1101).
`
`Id.
`
`Patent Owner does not proposea construction of “message generating
`
`unit,” but respondsthat Petitioner has failed to show that “message
`
`generating mechanism” should be construed under 35 U.S.C. § 112 7 6.
`
`Prelim. Resp. 10. Patent Owner contendsthat a person of ordinary skill in
`
`16
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`
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`IPR2016-00116
`Patent 6,147,601
`
`the art, reading the claims as a whole, “would have understood that the
`
`claimsrecite sufficiently definite meaning as to the structure of the term”:
`
`Notably, in contrast to Williamson, which used the “module-for”
`construct
`in its claims[, c]laim 22 recites an “interface unit
`having a message generating mechanism,” and affirmatively
`recites an attribute of the “message generating mechanism”: that
`“said message generating mechanism generates an incoming
`exception message indicative of the exception condition and
`forwards said incoming exception message to said server.”
`[Petitioner] does not cite a single case at the Federal Circuit or
`the Board where § 112 { 6 has been applied to similar language
`without even using the word “for.”
`
`Id. at 10-11.
`
`In this case, we agree with Patent Ownerthat the term “message
`
`generating mechanism”is not a means-plus-function limitation and is not
`
`~ subject to construction under 35 U.S.C. § 112 96. As reproduced in
`
`Section I.C., supra, claim 22 recites, in part, “an interface unit, locally
`
`connected to said scnsor, said inlerface unil having a message generating
`
`mechanism.” Ex. 1101, 10:48-50; see id. at 2:55—58 (“The inventive system
`
`includes a sensor in communication with a piece of remote equipment, and
`
`an interface unit, connected to the sensor, having a message generating
`
`mechanism.”). It is clear from the plain language of claim 22 that the recited
`
`message generating mechanism is part of the recited interface unit andis not
`merely a recitation of function without corresponding structure. As Patent
`Ownerpoints out, claim 22 also establishes a structural relationship between
`
`the message generating mechanism and otherstructural elements, including
`
`the recited sensor, remote equipment, and server, in addition to the interface
`
`unit. Prelim. Resp. 11. Because the ordinary meaningofthis term as a
`
`message generating componentofthe recited interface unit is clear, we need
`
`17
`
`
`
`IPR2016-00116
`Patent 6,147,601
`
`not provide any further construction of message generating mechanism at
`
`this stage of the proceeding. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d
`
`1355, 1361 (Fed. Cir. 2011) (explaining that “claim terms need only be
`
`construed ‘to the extent necessary to resolve the controversy’” (quoting
`
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`
`1999))).
`
`3. Other Claim Terms
`
`Neither Petitioner nor Patent Owneroffers constructions of any other
`claim termur phrase in the challenged claims. Only terms or phrases that
`are in controversy in this proceeding need to be construed, and then only to
`
`the extent necessary to resolve the controversy. Vivid Techs., 200 F.3d at
`803. For purposesof this Decision, no other claim termsor phrases require
`
`express construction.
`
`B. Asserted Grounds of Unpatentability
`
`1. Principles ofLaw
`
`|
`
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`
`differences between the claimed subject matter and thepriorart are “such
`
`that the subject matter[,] as a whole[,] would have been obviousat the time
`
`the invention was madeto a person having ordinary skill in the art to which
`
`said subject matter pertains.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
`
`406 (2007). The question of obviousnessis resolved on the basis of
`
`underlying factual determinations, including:
`
`(1) the scope and content of
`
`the prior art; (2) any differences between the claimed subject matter and the
`
`18
`
`
`
`IPR2016-00116
`Patent 6,147,601
`
`priorart; (3) the level of skill in the art;* and (4) objective evidence of
`nonobviousness,i.e., secondary considerations.*> Graham v. John Deere
`
`Co., 383 U.S. 1, 17-18 (1966). We analyze the asserted grounds with the
`
`principles stated above in mind.
`
`2. Obviousness over Shetty
`
`Petitioner contends that claims 1, 2, 4, 6, 10-13, 15-17, 22, 23, 25—
`
`27, 29, 33-35, and 38 of the ’601 patent arc unpatentable under 35 U.S.C.
`
`§ 103 over Shetty and the knowledge of a person of ordinary skill in theart.
`
`Pel. 9-27.
`
`Webegin our analysis with a brief overview of Shetty, and we then
`
`address the parties’ contentions with respect to the challenged claims.
`
`a. Overview ofShetty
`
`Shetty discloses a “method for providing informationrelating to a
`
`machineto a user.” Ex. 1103, Abstract. The method includes the steps of
`
`sensing predetermined events relating to the machinc, producing
`
`corresponding eventsignals, delivering the event signals to a remote site,
`
`comparing the event signals to a profile of events correspondingto the user,
`
`and delivering a notification signal to the user if the event signals match the
`
`profile. Jd. Shetty explains that “[c]omputers and electronics are becoming
`
`increasingly common on many machines.” Jd. at 1:12—13. Shetty provides,
`
`* Petitioner proposes an assessmentofthelevel of skill in the art as of
`January 1999. Pet. 6-7, Patent Owner doesnot challenge this assessment or
`proposean alternative assessment. For purposes of this Decision and to the
`extent necessary, we adopt Petitioner’s assessment.
`5 Patent Owner does not contendin its Preliminary Response that such
`secondary considerations are present.
`
`19
`
`
`
`IPR2016-00116
`Patent 6,147,601
`
`as an example, that earthmoving machines nowinclude many on-board
`
`sensors for recording parameter data during operation, and that on-board
`
`controllers also may calculate parameters of the machine based on sensor
`
`data. Jd. at 1:13-17. Shetty further explains that, “with the large increase in
`
`the numberof sensors and data being collected, the amountof data to be
`
`analyzed becomes unmanageable,” and “[a]dditionally, different persons, for
`exaiiple, the uperator, the owner, etc. ..., may have needfor different
`
`information.” Jd. at 1:18—-24.
`
`Figure 1 of Shetty is reproduced below.
`
`100
`
`‘
`i
`’
`‘
`’
`||FLEET ANO MACHINE USER PROFILE '
`
`
`1
`DATABASE
`DATABASE
`\
`'
`MEANS 104
`106
`'
`'
`1
`
`f USER
`{INTERFACE
`110
`
`'
`'
`
`'
`i
`
`'t
`
` ¢
`
`’
`i]
`!
`
`!
`:
`’
`l
`
`NOTIFICATION
`112
`
`NT
`DATABASE
`106
`
`'
`IREPORT hy
`'
`114
`{
`i
`PAGER
`1
`REPORT
`116 Yn ee ee eee eee bee ce ee ewe wee eeeeee
`coer ’
`'
`MOBILE
`' MACHINE 118
`‘ONBOARD
`1]
`INFORMATION
`
`<
`Erg_|_
`
`OFFBOARD
`INFORMATION
`MANAGER 122
`
`!
`;
`
`j
`'
`
`1] MANAGER 120]
`!
`
`Figure 1 is a block diagram of an apparatus adapted for performing
`the method provided by Shetty. Ex. 1103, 1:39-40. With reference to
`Figure 1, warning manager 100 provides a methodfor providing information
`
`relating to a mobile machine in a fleet of mobile machines 118. /d. at 1:52-
`
`
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