Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 39
`Entered: May 2, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ALARM.COMINC.,
`Petitioner,
`
`Vv.
`
`VIVINT, INC.,
`Patent Owner.
`
`Case IPR2016-00116
`Patent 6,147,601
`
`Before MICHAEL R. ZECHER, JAMESB. ARPIN,and
`CHARLESJ. BOUDREAU,Administrative Patent Judges.
`
`BOUDREAU,Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 US.C. § 318(a) and 37 CFR. § 42.73
`
`
`Tel: 571-272-7822
`
`Paper 39
`Entered: May 2, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ALARM.COMINC.,
`Petitioner,
`
`Vv.
`
`VIVINT, INC.,
`Patent Owner.
`
`Case IPR2016-00116
`Patent 6,147,601
`
`Before MICHAEL R. ZECHER, JAMESB. ARPIN,and
`CHARLESJ. BOUDREAU,Administrative Patent Judges.
`
`BOUDREAU,Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 US.C. § 318(a) and 37 CFR. § 42.73
`
`
`
`IPR2016-001 16
`Patent 6,147,601
`
`I. INTRODUCTION
`
`Alarm.com Incorporated (“Alarm.com”) filed a Petition (Paper1,
`
`“Pet.”) requesting an inter partes review of claims 1, 2, 4-23, 25-31, and
`
`33-41 of U.S. Patent No. 6,147,601 (Ex. 1101, “the ’601 patent’), owned by
`
`Vivint, Inc. (“Vivint”). Pet. 3.! On May 4, 2016, we issued a Decision
`
`granting institution of inter partes review of claims 1, 2, 4-15, 17-23, 25—
`
`31, and 33-41 of the ’601 patent. Paper 14 (“Dec. on Inst.”), 46. Vivint
`
`then filed a Patent Owner’s Response (Paper 20, “PO Resp.”), and
`
`Alarm.com filed a Reply (Paper 26, “Pet. Reply”). A consolidated hearing
`
`for the instant proceeding and related Cases IPR2016-00161 and IPR2016-
`
`00173 was held on January 31, 2017. A transcript of that hearing is included
`
`in the record. Paper 38 (““Tr.”).
`
`Wehavejurisdiction under 35 U.S.C. § 6, and weissue this Final
`
`Written Decision pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For
`
`the reasons discussed below, we determine that Alarm.com has metits
`
`burden to prove by a preponderanceofthe evidencethat claims1, 2, 4,6,7,
`
`' On December17, 2015, after Alarm.com’s filing of the Petition, Vivint
`filed 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, pursuant to 37 C.F.R. § 42.3, dated January 28, 2016, we stayed
`the Request pending our decision on the Petition and the petitions filed in
`Cases IPR2015-02004 and IPR2016-00155 also involving the ’601 patent,
`and wealso authorized Alarm.com to file a Brief limited to addressing
`certain issuesrelated to the requested Certificate of Correction. See Paper 9
`(“Order”). Alarm.com filed its Brief shortly before Vivintfiled a
`Preliminary Responsein this case. Paper 11 (Pet. Brief’). On June 1,
`2016, we lifted the stay of the Request (Paper 16), and the Certificate of
`Corrections Branch of the Office subsequently denied the Request
`(Ex. 3001).
`
`
`
`IPR2016-00116
`Patent 6,147,601
`
`10-15, 17, 18, 22, 23, 25, 29, and 38 of the ’601 patent are unpatentable on
`
`the grounds upon which weinstituted inter partes review, but that
`
`Alarm.com hasnot proven by a preponderance of the evidence that claims5,
`
`8, 9, 19-21, 26-28, 30, 31, 33-37, and 39-41 are unpatentable.
`
`Il. BACKGROUND
`
`A. 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. Alarm.com alsofiled three other
`
`petitions challenging certain claims of the ’601 patent (Cases IPR2015-
`
`02004, IPR2016-00155, and IPR2016-01080), and fourteen petitions
`
`challenging certain claims of the following other patents owned by Vivint:
`
`(1) U.S. Patent No. 6,462,654 B1 (Cases IPR2015-02003, IPR2016-00161,
`
`IPR2016-01110, and IPR2016-01 124); (2) U.S. Patent No. 6,535,123 B2
`
`(Cases IPR2015-01995, IPR2016-00173, and IPR2016-01126);
`
`(3) U.S. Patent No. 6,717,513 B1 (Cases IPR2015-01997, IPR2016-00129,
`
`and IPR2016-01091); (4) U.S. Patent No. 6,924,727 B2 (Cases IPR2015-
`
`01977 and IPR2015-02008); and (5) U.S. Patent No. 7,884,713 B1 (Cases
`
`IPR2015-01965 and IPR2015-01967). Paper 17, 2-3; Paper 18, 1-2.
`
`B. The ’601 Patent
`
`The ’601 patent, titled “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. 1101, at [21], [22], [45], [54]. The 601 patentalso
`
`
`
`IPR2016-00116
`Patent 6,147,601
`
`claims the benefit of U.S. Provisional Application No. 60/115,305, filed
`
`January 9, 1999 (“the ’305 provisional”). Jd. 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. 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 1:15—
`
`18. 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 messages via a variety of
`
`different media, depending on the urgencyor 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
`
`needscleaning) 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 whichfault has occurred may be
`
`referred to as a ‘message profile.”” Jd. at 2:14—16. Accordingto the ’601
`
`patent, conventional systems did not allow for “easy customer modifications
`
`to the messageprofile.” Jd. at 2:21-22.
`
`The 601 patent purportedly solves these problemsby describing a
`
`system for remotely monitoring electrical or mechanical equipment that can
`
`deliver fault notification messages to different individuals for different fault
`
`4
`
`
`
`IPR2016-00116
`Patent 6,147,601
`
`conditions via different electronic media, and in which a customer may
`
`modify its message profile interactively. Ex. 1101, 2:33-41. Figure 1 of
`
`the ’601 patent, reproduced below,illustrates a schematic diagram ofthe
`
`preferred embodimentof this system. Jd. at 3:24—25, 5:38-39.
`
`| go
`User - Web
`‘
`Cllont yo,
`
`122
`
`Asshownin Figure 1, system 50 monitors existing pieces of
`
`electronic equipment, such as air-conditioner 2, boiler 3, motorstarter 4,
`
`heater 5, or any other equipment that 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 whetherthe piece of equipment and its correspondinginterface
`
`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 message to electronic message
`
`delivery server 1. Id. 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,
`
`
`
`IPR2016-00116
`Patent 6,147,601
`
`pager 8, voice 9, etc., according to a message profile configured by the user
`
`via user-web client 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 thatis
`
`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 forwardsat least one outgoing exception messageto at least one
`
`predetermined user-defined end device based on the incoming exception
`
`message. Jd. at 2:65-67.
`
`C. Illustrative Challenged Claims
`
`Ofthe 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) determining a state of at least one parameter of at least one
`piece of the remote equipment;
`b) communicating a message indicative of the state from the
`piece of remote equipment
`to a computer server 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 message profile being storable
`on the computerserver;
`
`
`
`IPR2016-00116
`Patent 6,147,601
`
`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.
`
`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
`computerserver via said user interface to remotely configure
`a user-defined message profile containing outgoing message
`routing instructions,
`wherein when said sensor detects an exception condition in the
`piece of remote equipment, said interface unit generates an
`incoming exception message indicative of the exception
`condition and forwards said messageto said server,
`
`and wherein said server forwardsat least one outgoing exception
`message to at least one predetermined user-defined remote
`communication device based on said incoming exception
`message as specified in said user-defined messageprofile.
`
`
`
`IPR2016-00116
`Patent 6,147,601
`
`Ex. 1101, 10:43-11:2. Challenged claims 2, 4-15, and 17-21 depend
`
`directly or indirectly from claim 1; and challenged claims 23, 25-31, and
`
`33-41 dependdirectly or indirectly from claim 22. Jd. at 9:7—10, 9:16—
`
`10:15, 10:19-42, 11:3-8, 11:16-12:5, 12:14-54.
`
`D. Applied References and Declaration
`
`Alarm.com relies upon the following references in support ofthe
`
`asserted grounds:
`
`
`1103
`
`1105
`
`
`
`
`
`
`
`Reference
`U.S. Patent No. 5,808,907, issued Sept. 15, 1998
`“She
`29
`U.S. Patent No. 6,040,770, issued Mar. 21, 2000
`filed Sept. 4, 1998)
`(“Britton”
`U.S. Patent No. 6,034,970, issued Mar. 7, 2000
`filed July 2, 1997)
`(“Levac”
`U.S. Patent No. 5,061,916, issued Oct. 29, 1991 (“French”
`
`
`
`Pet. 3. Alarm.com also relies on the Declaration and Reply Declaration of
`
`Arthur Zatarain, PE (Exs. 1107, 1130) in support of its Petition and Reply,
`
`respectively; and Vivint relies on the Declaration of Scott Andrew Denning
`
`(Ex. 2010) in support of its Patent Owner Response.
`
`E. Instituted Grounds of Unpatentability
`
`Weinstituted inter partes review of the challenged claims under
`35 U.S.C. § 103(a) based on the following grounds:
`
`
`
`_ IPR2016-00116
`Patent 6,147,601
`
`Reference(s)
`Shetty
`
`|
`
`ot
`
`1, 2, 4, 6, 10-13, 15, 17, 22, 23,
`25-27, 29, 33-35, and 38
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`and Levac
`Shetty
`and Britton
`Shetty
`Shetty, Levac, and Britton—-
`Shetty
`and French
`Shetty, Levac, Britton, and French
`
`
`
`
`
`
`
`Dec. on Inst. 46.
`
`Il. ANALYSIS
`
`A. Claim Construction
`
`Ne
`In an inter partes review, claim termsin an unexpired patent are given
`
`their broadest reasonable construction in light of the specification of the
`
`patent in which they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed
`
`. Techs., LLC v. Lee, 136 S. Ct. 2131, 2144-46 (2016) (upholding the use of
`
`the broadest reasonable interpretation standard as the claim construction
`
`standardto be applied in an inter partes review proceeding). Underthe
`
`broadest reasonable interpretation standard, claim terms generally are given
`
`their ordinary and customary meaning, as would be understood by one of
`
`ordinary skill in the art in the contextof the entire disclosure. See In re
`
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). The U.S.
`
`Court of Appeals for the Federal Circuit has “recognized ‘only two
`
`exceptions to this general rule: 1) whenapatenteesets out a definition and
`
`acts as his own lexicographer, or 2) when the patentee disavowsthe full
`
`scope of a claim term either in the specification or during prosecution.””
`
`Unwired Planet, LLC v. Apple Inc., 829 F.3d 1353, 1358 (Fed. Cir. 2016)
`
`(citing Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365
`(Fed. Cir. 2012)). Any special definition for a claim term mustbe set forth
`
`
`
`IPR2016-00116
`Patent 6,147,601
`
`with reasonable clarity, deliberateness, and precision. Jn re Paulsen, 30 F.3d
`
`1475, 1480 (Fed. Cir. 1994). In the absence of such a definition, limitations
`
`are not to be read from the specification into the claims. See In re Van
`
`Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
`
`In the Decision on Institution, we determined that the broadest
`
`reasonable interpretation of “message profile containing outgoing message
`
`routing instructions,” as recited in each of independentclaims 1 and 22, is
`
`“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.” Dec. on Inst. 10-14. We also determined
`
`that the term “message generating mechanism,”as recited in independent
`
`claim 22, is not a means-plus-function term subject to construction under
`35 U.S.C. § 112, paragraph 6,” contrary to Alarm.com’s contentions(see
`
`Pet. 8), and neither that term nor any other claim terms required construction
`
`for purposesof institution oftrial. Dec. on Inst. 15-18.
`
`In its Patent Owner Response, Vivint contends that our construction
`
`of “messageprofile containing outgoing message routing instructions”in the
`
`Decision on Institution “overlooks a key aspect of the claimed message
`
`profile” and that the phrase instead “‘should be construed to meana ‘data
`
`record including instructions specifying which communication device
`
`associated with which individuals an outgoing message can be routed in
`
`* Section 4(c) of the Leahy-Smith America Invents Act (AIA)re-designated
`35 U.S.C. § 112 7 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-AIA version of 35 U.S.C. § 112.
`
`10
`
`
`
`IPR2016-00116
`Patent 6,147,601
`
`response to an incoming exception message.’” PO Resp. 3-4, 32-35.
`
`Vivint also seeks to construe the phrases “at different time periods” and “at
`
`different times”recited in challenged claims 19 and 20,to refer to the “time
`
`of day” at which the exception messageis received. Jd. at 4, 39-40. We
`
`address the construction of each of these phrases in turn below. Wealso
`
`construe the phrase “communication device identification codes,” which
`
`appears in claim 26 of the ’601 patent.
`
`I. “message profile containing outgoing message routing
`instructions” / “message profile”(claims 1 and 22)
`Referring to a sentence in the ’601 patentstating that “a list of who to
`
`contact via what means depending on whichfault has occurred may be
`
`referred to as a ‘message profile’” (Ex. 1101, 2:14-16), Vivint contends:
`
`In the [Patent Owner’s Preliminary Response (Paper 12)],
`Vivint argued that the construction of the term “message profile”
`should include “a list of who to contact” based on a definition in
`the Specification that included this limitation. (Paper 12, 7-9.)
`The Institution Decision rejected this argument in part because
`the cited language from the Specification used “the permissive
`word ‘may.’” (Paper 14, p. 13.) But the “may” in the cited
`portion of the ’601 Patent states “[s]Juch a list of who to contact
`via what means depending on which fault has occurred may be
`referred to as a ‘message profile.” (Ex. 1101, 2:14-16,
`emphasis added.) So, “may”in this passage is used as part of a
`larger clause, “may be referred to as.” (Ex. 1101, 2:14-16.) This
`clause describes how the preceding language can be named,
`meaning this is one of many names, one of which is a message
`profile. (Ex. 2010, 4 51.) But there is no uncertainty as to what
`constitutes the message profile, as it is the inventor’s chosen
`namein this patent for the “list of who to contact via what means
`depending on which fault has occurred.” (/d. at J 124.)
`
`PO Resp. 33; see also id. at 3—4 (presenting essentially the same argument).
`
`Vivint further contends:
`
`
`
`IPR2016-00116
`Patent 6,147,601
`
`This understanding is corroborated by another portion of
`the Specification, which serves as separate evidence as to the
`accuracy of Vivint’s proposed construction herein. Specifically,
`the °601 Patent describes how a contractor configures his
`message delivery:
`
`The contractor is provided with an account on the
`message delivery system that he can access via the
`Internet.
`The contractor sets up the specific
`parameters of which exception conditions are
`reported to which individuals. The contractor also
`sets up by which media (fax, e-mail, PCS) these
`individuals are to be notified. Multiple individuals
`may bealerted as to an exception condition. All of
`this data constitutes the contractor’s message
`profile.
`PO Resp. 34 (quoting Ex. 1101, 4:39-47, emphases added by Vivint).
`Accordingto Vivint, “[t]his passageis explicit as to the contents of the
`messageprofile requiring that the message profile includes ‘the specific
`
`parameters of which exception conditions are reported to which individuals,’
`
`and the ‘media [by which] these individuals are to be notified.’” Jd. (citing
`Ex. 2010 {fq 50, 52-53). Vivint contendsthat the intrinsic record “describes
`the ‘messageprofile’ as unwaveringly requiring not only an indication of
`
`which devices to contact, but also which individuals associated with those '
`
`devices should be contacted.” Jd. (citing Ex. 1101, 2:14-16, 4:39-47;
`
`Ex. 2010 Jf 53, 56). Vivint further contendsthat, “[e]ven aside from the
`
`intrinsic evidence, under the law a proper definition must take into
`
`consideration the problem the inventor wastrying to solve,” and “[t]he ’601
`
`Patent makesit clear that the inventor’s intent was to allow for the system to
`
`send different fault messages to different individuals depending on the fault
`
`that occurs.” Jd. at 34-35 (citing Ex. 1101, 1:66—2:3 (‘All of the above
`
`12
`
`
`
`IPR2016-00116
`Patent 6,147,601
`
`systemsandthepriorart are limited in scope because they do notallow for
`
`sufficient flexibility in routing fault messages to a variety ofdifferent
`
`potential recipients of such messagesvia a variety of different media,
`
`depending on the urgencyornature ofthe fault.” (emphasis added by
`
`Vivint))).
`
`Alarm.com repliesthat, “[b]ecause the Board’s construction ‘take[s]
`
`into consideration’ the problem the ’601 Patent was directed at and is the
`
`Broadest Reasonable Interpretation of the term, it is correct.” Pet. Reply 1.
`
`Alarm.com contendsthat “‘Vivint largely rehashes arguments the Board
`
`previously rejected,” and “[t]hose arguments should be rejected once again
`
`for the samereasons the Board previously articulated.” Jd. at 1-2 (citing
`
`Dec.on Inst. 12-13). Referring to the statement in the Specification that
`
`. may be referred to as a
`
`“{sjuch a list of who to contact via what means. .
`393
`
`‘messageprofile,””
`
`cited by Vivint in support of its construction (see PO
`
`Resp. 33 (citing Ex. 1101, 2:14-16)), Alarm.com contendsthat “[s]uchalist
`
`indeedfits within the Board’s construction, but adds no support for a
`
`limitation requiring that a message profile identify individuals.” Pet. Reply
`
`2 (citing Dec. on Inst. 12-13; Ex. 1130 JJ 18-26). Alarm.com further
`
`contends “[l]ines 4:39-47 of the ’601 Patent likewise do not support Vivint’s
`
`narrowerconstruction of ‘messageprofile.’” Jd. “That passage identifies
`
`several implementation details of the preferred embodimentthat are not
`
`limitations of the independent claims: a user account; accessing a server via
`
`the internet; specifying types of communication devices and the
`
`specification of multiple individuals. To make such details part of the term
`
`construction improperly imports the specification into the claims.” Jd.
`
`(citing Ex. 1130 9] 27-34).
`
`13
`
`
`
`IPR2016-00116
`Patent 6,147,601
`
`Having considered the parties’ arguments and the cited evidence, we
`
`discern no reason to modify the construction of “message profile containing
`
`outgoing message routing instructions”set forth in the Decision on
`
`Institution. As we explained in that Decision, weinterpret the statement in
`
`the ’601 patent that “a list of who to contact via what means depending on
`
`whichfault has occurred maybereferred to as a ‘message profile’”
`
`(Ex. 1101, 2:14-16), at most, reflects that “a list of who to contact via what
`
`meansdepending on whichfault has occurred” could be an example of a
`
`messageprofile, and does not necessarily require “a list of who to contact.”
`
`Dec.on Inst. 12-13. Although we acknowledge Vivint’s interpretation of
`939
`
`the phrase “may bereferred to as a ‘message profile’”
`
`as indicating that
`
`“message profile” simply is one of “many” namesthat could be given to “a
`
`list of who to contact via what means depending on whichfault has
`
`occurred” (see PO Resp. 3-4, 33), we are not persuadedthat Vivint’s
`
`construction of “message profile” represents the broadest reasonable
`interpretation in light ofthe Specification of the °601 patent. As we pointed
`out in the Decision on Institution, the °601 patent includes embodiments,in
`
`which, for example, multiple messagesare sent to multiple recipients via
`
`differing media for the same exception condition (Ex. 1101, 3:10—13), or the
`
`samepersonis contacted by different means(e.g., fax or personal
`
`communication service (PCS)) at different times (id. at 4:57—-58). Dec. on
`
`Inst. 13. Vivint’s proposed construction, requiring the message profile to
`
`specify “which communication device associated with which individuals”
`
`(PO Resp. 32), would exclude such embodiments.
`
`In view ofthe full record developed during trial, we remain
`
`unpersuaded by Vivint’s argumentthat the statement in the Specification of
`
`14
`
`
`
`IPR2016-00116
`Patent 6,147,601
`
`the ’601 patentthat“a list of who to contact via what means depending on
`
`which fault has occurred may be referred to as a ‘messageprofile’” (Ex.
`
`1101, 2:14-16) provides the requisite “clarity, deliberateness, and precision”
`
`to indicate that the patentees intendedto act as their own lexicographer and
`
`disclaim the embodiments identified above. See Dec. on Inst. 12—13; Jn re
`
`Am. Acad. ofSci. 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 embodiment
`
`described, absent clear disclaimerin the specification.”); Paulsen, 30 F.3d at
`
`1480 (an inventor may define specific terms used to describe invention, but
`
`must do so “with reasonable clarity, deliberateness, and precision”and,if
`
`done, must“‘set out his uncommondefinition in some manner within the
`
`patent disclosure’ so as to give one of ordinary skill in the art notice of the
`
`change” in meaning).
`
`Accordingly, we conclude that the broadest reasonable interpretation
`
`of “messageprofile containing outgoing message routing instructions”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.” This construction is consistent with the
`
`ordinary and customary meaningofthis claim phrase, as would be
`
`understood by one with ordinary skill in theart, in light of the claims and
`
`Specification of the ’601 patent. See Ex. 1101, 2:14—16, 3:10—13, 4:57-—58.
`
`2. “at different time periods’’/ “at different times” (claim 19)
`Claim 19 dependsdirectly from claim 1 andrecites that the
`
`“enabling” step of claim | “further comprises the step of enabling selection
`
`of different user-defined communication devices to receive outgoing
`
`15
`
`
`
`IPR2016-00116
`Patent 6,147,601
`
`exception messagesat different time periods in accordance with the message
`
`profile, the message profile being definable to have the exception messages
`
`forwarded to different specified remote communication devicesat different
`
`times.” Ex. 1101, 10:28—34(italics added). Claim 20 dependsindirectly
`
`from claim 1 andrecites that the “forwarding” step of claim 1 “further
`comprises the step of enabling selection of different user-defined
`communication devices to receive outgoing exception messagesat different
`
`time periods.” Id. at 10:39-42 (italics added).
`
`Vivint contendsthat “[t]he ’601 Patent sets forth the meaning of
`
`having the exception messages forwarded to ‘different specified remote
`
`communication devices at different times’ and enabling selection of
`
`‘different user-defined communication devices to receive outgoing exception
`
`messagesat different time periods,’ as recited in claims 19 and 20,
`
`respectively.” PO Resp. 39. Specifically, Vivint contends,“these terms
`
`mean forwarding the exception messagesto different specified remote
`
`communications devices in accordance with the message profile based on
`
`the time ofday the exception message wasreceived.” Jd. at 39-40 (citing
`
`Ex. 1101, 4:40-57; Ex. 2010 9 137-138). Vivint points out that the ’601
`
`patent states, for example, “[t]he user mayalso set, as part of the message
`
`profile, that different messages be delivered to different individuals at
`
`different times ofthe day, week, month, season, or year.” Jd. at 40 (quoting
`Ex. 1101, 4:50-57 (emphasis added by Vivint)). Vivint notes that, although
`the ’601 patent refers to all of these times for convenienceas “time of day,”
`
`it does not meanthat “the various times .
`
`.
`
`. are equal to just time of day.”
`
`Id. at 40 n.7.
`
`16
`
`
`
`IPR2016-00116
`Patent 6,147,601
`
`Only termsor phrasesthat are in controversy in this proceeding need
`to be construed, and then only to the extent necessary to resolve the
`
`controversy. 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.
`
`999
`
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Alarm.com
`
`does not challenge Vivint’s interpretation of “at different time periods” and
`
`“at different times” as referring to different times of day (or week, month,
`
`season, or year), and indeed, appears to rely on Vivint’s interpretationin its
`
`Reply. See Pet. Reply 21-22. Accordingly, we agree with and adopt
`
`Vivint’s interpretation and determinethatit is unnecessary to further
`
`construe the phrases “at different time periods” and “at different times.”
`3. “communication device identification codes”(claim 26)?
`
`Claim 26 depends from claim 22 andrecites, in part, that the server of
`
`claim 22 “further compris[es] ... memory in which communication device
`
`identification codes ofall of said user-defined communication remote
`
`devices are stored, said communication device identification codes being
`
`configured in a plurality of said user-defined messageprofiles.” Ex. 1101,
`
`11:20—29. In its Petition, Alarm.com does not present a construction for the
`
`claim term “communication device identification codes.” See generally Pet.
`
`6-9. Instead, in support of its contention that Shetty teaches that element of
`
`claim 26, Alarm.com merely quotes Shetty’s disclosure that “user profile
`
`3 Theparties did not present their claim construction positions regarding the
`claim term “communication device identification codes” separate and apart
`from their arguments regarding whether Shetty teaches or suggeststhis
`claim term.
`
`17
`
`
`
`IPR2016-00116
`Patent 6,147,601
`
`database 106 contains informationrelating to all users of the data manager
`
`including a user profile,” and cross-references a portion of its claim chart for
`
`claim 1 that in turn quotes,inter alia, Shetty’s disclosurethat “the user
`
`profile defines the .
`
`.
`
`. method ofnotification” as supporting its contention
`
`that Shetty teaches this element. Pet. 30 (claim chart for claim 26, quoting
`
`Ex. 1103, 2:18-19 and cross-referencing claim chart for claim element
`
`“1(c)” (see Pet. 20-21 (quoting Ex. 1103, 2:18-21, 2:34-35, 4:8-10))).
`
`In its Patent Owner Response, Vivint directs us to co-pending Case
`
`IPR2016-00161, in which we determinedatthe institution stage that Shetty’s
`
`disclosure of sending a notification to a user, at most, identifies telephone
`
`numbers or email addresses, which do not amountto “communication device
`
`identification codes”recited in dependent claim 11 ofthe related ’654
`
`patent. PO Resp.38 (citing Alarm.com Inc. v. Vivint, Inc., Case IPR2016-
`
`00161, slip op. 40-41 (PTAB May 12, 2016) (Paper 16)). For instance,
`
`Vivint argues that an email address is not associated with a specific
`
`communication device because “a user could use just about any computing
`
`device with Internet access to access email.” Jd. at 38 (citing Ex. 2012 °
`
`(Deposition Transcript of Mr. Zatarain), 89:15—90:11).
`
`In its Reply, Alarm.com countersthat, outside of dependent claim 26,
`
`the Specification of the ’601 patent does not use the term “communication
`
`device identification code.” Pet. Reply. 16. Alarm.com arguesthat “[t]he
`
`’601 specification and description of the preferred embodiment repeatedly
`
`teach that whatis stored in the message profile is information sufficient to
`
`identify ‘by which media (fax, e-mail, PCS) .
`
`.
`
`. individuals are notified’ of
`
`exception conditions.” Jd. (citing Ex. 1101, 4:43-45, 7:50-58; Ex. 1130
`
`q{ 136-39). Alarm.com further contends that the Specification of the 601
`
`18
`
`
`
`IPR2016-00116
`Patent 6,147,601
`
`patent uses the term “device” to describe the “user-defined communication
`
`device[s]’”of the claims in only a single paragraph, wherein it “describes the
`
`process of ‘deliver[y] to the specified end device or devices’ .
`
`.
`
`. described as
`
`an ‘e-mail box’, ‘fax machine’, ‘pager or PCS’ and ‘voice mail box’.” Jd. at
`
`17 (citing Ex. 1101, 6-21). Alarm.com concedesthat, “[o]bviously, an
`
`‘email box’is a logical rather than a physical ‘device[,]’ .
`
`.
`
`. different
`
`physical fax machines might be substituted on a fax line, and a call to a
`
`land-line telephone may ring multiple telephone devices within a home,” but
`
`contends, “[nJevertheless, there is no teaching in the ’601 Patent of storage
`
`in the ‘user messageprofile’ of any [communication device identification
`
`code] morespecific than, e.g., a telephone number, fax number, or email
`
`address.” Jd. Alarm.com further contendsthat no possibleutility is
`
`suggested for storing any morespecific identification codes, and that the
`
`disclosed telephone number, fax number and email address represent
`
`identifiers for all of the specific devices enumerated in dependent claims 11
`
`and 29 of the ’601 patent. Jd. (citing Ex. 1130 Jf 140-143).
`
`Alarm.com further contends that any interpretation of a
`
`“communication device identification code” that excludes telephone
`
`numbers and email addresses cannot constitute the broadest reasonable
`
`interpretation because it would be inconsistent with 37 C.F.R. § 42.100(b)
`
`and would impermissibly exclude the preferred embodiment. Pet. Reply 17-
`
`18. Alarm.com reiterates that the disclosures in the Specification of the ’601
`
`patent of storing telephone numbers and email addresses are the only
`
`disclosure of storing any data about communication devices. Jd. at 18
`
`(citing Ex. 1130 4 140-143, 160-164). Alarm.com furtherasserts that,
`
`althoughcertain portions of the Specification disclose fixed and unique
`
`19
`
`
`
`IPR2016-00116
`Patent 6,147,601
`
`identifiers, such as electronic serial numbers (“ESNs”) and mobile
`
`identification numbers (“MINs”), these ESNs and MINsonly identify
`
`interface units—not user-defined communication devices. Jd. at 19 (citing
`
`Ex. 1101, 4:25-31; Ex. 1130 Jf 144-151).
`
`Lastly, Alarm.com contendsthat Vivint’s argumentthat an email
`
`address is not a communication device identification code also should not be
`
`credited becauseit ignores “basic claim interpretation principles.” Jd. at 19.
`
`In particular, Alarm.com points out, cl
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
