Litigation Search Report CRU 3999
`
`Reexamination Control No. 90/019,742
`
`To: Examiner
`
`From: Renee Preston
`
`Location: CRU
`
`Art Unit: 3992
`
`Date: 12/02/2024
`
`Location: CRU 3999
`
`Phone: (571) 272-1607
`
`E-mail: renee.preston@uspto.gov
`
`Search Notes
`
`U.S. Patent No. 9,485,478
`
`. Performed a KeyCite Search in Westlaw, which retrievesall history on the patent including any
`litigation.
`
`. Performed a search on the patent in Lexis CourtLink for any open dockets or closed cases.
`
`. Performed a search in Lexis in the Federal Courts and Administrative Materials databases for any
`cases found.
`
`. Performed a search in Lexis in the IP Journal and Periodicals database for any articles on the
`patent.
`
`. Performed a search in Lexis in the news databases for any articles about the patent or any
`articles aboutlitigation on this patent.
`
`Litigation: Cases Found
`
`Paper No. 12/02/2024 - 1/2
`
`

`

`Reexamination Control No. 90/019,742
`
`|Status_[Docket|Description
`2:21cv9472
`Vivint, Inc. V. Skybell Technologies,
`Inc.
`4:21cv912
`Sb Ip Holdings Lic V. Vivint,
`Inc
`4:20cv886
`Sb Ip Holdings Lic V. Vivint,
`Inc
`
`Vivint Inc. V. Sb Ip Holdings Lic
`
`8:22cv33
`
`Paper No. 12/02/2024 - 2/2
`
`

`

`
`
`2018 Markman 2292529
`
`2018 WL 2292529
`United States District Court, D. Nevada.
`
`EYETALK365, LLC,Plaintiff,
`Vv.
`ZMODO TECHNOLOGY
`CORP. LIMITED,Defendant.
`
`2:17-cv-02714-RCJ-PAL
`
`|
`Signed 05/17/2018
`
`West Headnotes ()
`
`[1]
`
`
`Batents = In gener, ueity
`
`US Patent 7.3%
`US Patent 8,154,581
`US Patent 8.354.614, US Patent %,
`Construed.
`
`*1 This casearises out ofthe alleged infringementof a patent
`for an audio-video doorbell system. The parties have asked
`the Court to construe several claim terms.
`
`I. FACTS AND PROCEDURAL HISTORY
`Plaintiff Eyetalk365, LLC (‘Eyetalk”) is a North Carolina
`company with its principle place of business in that state.
`(Compl2.ECE No.
`1. Eyctalkis the assigneeof
`Compl
`2, ECF No.
`1).
`E etalk1is the assignee of
`
`
`“Communication and Monitoring System,” which issued
`
`on August 30, 2016. Ud. §§ 11-12). Defendant Zmodo
`Technology Corp. Limited (‘Zmodo”) is a Nevada company
`with its principle place ofbusiness in Illinois. (/d. 4 3).
`
`Eyetalk sued Zmodo in the Western District of North
`Carolina, alleging direct infringementof claims 1 and 6 of the
`
`i¢a} “by making,
`‘638 Paters in violation of 35 (L8.0. § 27
`using, offering forsale, selling, and/or importing [infringing]
`devices in the United States,” (id. § 13), as well as inducing
`infringement of those claims in violation of 35 U.S.C. §
`2710), Gd. J 21). Zmodo answered andfiled counterclaims
`for declaratory judgment of non-infringement and invalidity
`under §§ 101, 102, 103, and 112. (Answer & Countercl., ECF
`No. 15). Both parties demandeda jury.
`
`Attorneys and Law Firms
`
`Zmodo movedto dismissfor failure to state a claim under 33
`
`
`
`US. § £01 and also moved for summary judgment, arguing
`the effective filing date of the ‘638 Patent was March 24,
`2015 and that claims 1-20 were invalid under§ 202(a)(1) as
`anucipated by ©
`Patents Nos. 7,193,644; 8,154,881; and/
`or 8,164.5 ? Byetalk answeredthe Counterclaim and moved
`NC, Michacd D. Roiuxis, Brownstein Hyatt, Farber Schreck,
`LLC,Reno, NV. for Plaintiff.
`to dismiss Zmodo's fourth through ninth affirmative defenses
`+ etsy
`RA Ob
`ee, Pro Hac vice, Thomas G. Pasternak
`for failure to satisfy Rule 8(c). Chief Judge Whitney of the
`John Mo Ach
`
`:
`Western District of North Carolina denied the dispositive
` denied the motions to dismiss and declined to address any
`Akerman LLP, Chicago,IL,§
`andSiler, P.A., Cashiers, NC}x
`motions without prejudice as premature. This Court has since
`
`ef], Akerman LLP, Las Vegas, NV, Rix
` feLaw Office of Richard G. Campbell, Jr. Inc.. Reno.NV.
`motions forsummaryjudgmentuntil afterclaimconstruction.
`for Defendant.
`
`Soon after the Supreme Court decided TC Heartland, Zmodo
`filed a motion to dismiss or transfer because it resided in
`
`place of business in the Western District of North Carolina.
`
`the District of Nevada and had no regular and established
`
`Tudge Whitney ‘granted the motion in part,“transferring the
`
`ROBERT C JONES, United States District Judge
`
`case to this District. The case was randomly assigned to Judge
`Dorsey but immediately randomly reassigned to this Court
`because Judge Dorsey wasnot a patent pilot programjudge.!
`
`
`
`

`

`
`
`
`Claim construction briefing was completed before transfer.
`The Magistrate Judge ordered the parties to address the issue
`in a joint case managementreport, but the parties disagreed
`in that report as to whether the Court should conduct claim
`construction immediately in the present case or wait until the
`related case is fully prepared for claim construction and hold
`a consolidated hearing. The Court will delay no longer and
`now construes the disputed claim terms.
`
`II. CLAIM CONSTRUCTION STANDARDS
`
`*2 The construction of patent claim terms is a question
`of law to be determined by a court.
`
`y(enbane).
`aff'd, SV?
`US. 370
`(19953 [T]he interpretation to be given
`
`a term can only be determined and confirmed with a full
`understanding of what the inventors actually invented and
`intendedto envelop ¥with the claim.”
`
` $}). Consequently, courts construe1c claims
`in the manner that “most naturally aligns with the patent's
`description of the invention.” /d.
`
`Thefirst step in claim construction is to look to the language
`of the claim itself. A disputed claim term should be construed
`in light of its “ordinary and customary meaning,” which is
`“the meaning that the term would have to a person of ordinary
`skill in the art in question at the time of the invention, 1.c.,
`as of the effective filing date of the patent application.” :
`at (313. In some cases, the ordinary meaning of a disputed
`term to a person of skill in the art is readily apparent, and
`claim construction involves “little more than the application
`
`
`
`Claim construction may deviate from the ordinary and
`customary meaning of a disputed term only if: (1) “a patentee
`sets out a definition and acts as his own lexicographer’; or (2)
`“the patentee disavowsthe full scope of a claim term either
`
`in the Specification 0orduring prosecution.”
`
`always the
`). Ordinary and customary meaning is not
`
`
`same as the dictionary definition. :°/ sey
`
`Properly viewed, the “ordinary meaning”of a claim term is
`its meaning to the ordinary artisan after reading the entire
`patent. Yet heavy reliance on the dictionary divorced from
`the intrinsic evidence risks transforming the meaning of
`the claim term to the artisan into the meaning of the term
`in the abstract, out of its particular context, which is the
`specification.
`Id. “Thus, the specification is always highly relevant to the
`claim construction analysis. Usually, it is dispositive; it is
`the singlebest guide to the meaning 0of a disputed term.”
`oo
`
`my Lat
`a
`Che
`Fad
`©
`oO, ‘it is therefore *‘entirely appropriate for aa
`court,whenconducting claim construction, to rely heavily
`on the written description for guidance as to the meaning
`of claims.”
`“3d
`at 1318. Courts can also look
`
`to the prosecution history as part of the intrinsic record to
`
`determine how the Patent Office and the inventor understood
`
`
`the patent. i =
`. 7, However, the prosecution history lacks
`the clarity ofthe specification andis often less useful for claim
`construction purposes. Jd.
`
`of the widely accepted meaning of commonly understood
`
`*3 “A court may, in its discretion, receive extrinsic evidence
`in order to aid the court in coming to a correct conclusion
`words.” fe at 1344. Moreover, a district court is not obligated
`as to the true meaning of the©
`language employed in the
`to construe terms with ordinary meanings,lest trial courts
`$2. Fadat98 $0 (internal citations and
`be inundated with requests to| parse the meaning of every
`patent.” 4.
`quotation marks omitted). Extrinsic evidence “consists of
`word in the asserted claims.
`all evidence external to the patent and prosecution history,
`including expert and inventor testimony, dictionaries, and
`learned treatises.” /d. Although such evidence may aid the
`court in construing claim terms, “it is unlikely to result ina
`reliable interpretation ofpatent claim scope unless considered
`
`in the context of the intrinsic evidence.”
`,
`AMS
`F3¢
`1319, Thus, “while extrinsic evidence can shed useful light
`on the relevant art,
`... it is less significant than the intrinsic
`record in determining the legally operative meaning of claim
`
`language.”
`t 1317 Gnternal quotation marks omitted).
`
`not an obligatory exercise in redundancy”); see also :
`
`¢c 7 (noting that claim.construction *
`
`
`(finding no error in arefusal to construe “irrigating” and
`“frictional heat”). There is a “heavy presumption”that claim
`terms carry the meanings a person skilled in the relevantart
`
`
`
`

`

`
`
`2018 Markman 2292529
`
`Finally, a claim can be ruled indefinite under 35 U.S.C. § 112
`if “read in light of the specification delineating the patent,
`and the prosecution history, [the claim] fails to inform, with
`reasonable certainty, those skilled in the art about the scope
`
`of the invention.” See : f
` 20T 43 vernuling the Courtof
`Tee U3R4S OY 3
`
`&e., LOS DD, Ch ahd,
`Appeals’ previous“amenable to construction” and “insolubly
`ambiguous” standards). “Whether a claimcomples with the
`definiteness requirementofSSS USC. § 24:2 is a matter
`
`of claim construction..
`Pod E302, PSit fed Cis SYED).‘The amendment to § Li2
`via the‘Leahy-Smith America Invents Act did not alter the
`definiteness requirement. Compare 35 US. § {12 9 2
`SADRd
`(1952), with 38 USO. § Leh)01d}.
`
`
`
`
`
`I. ANALYSIS
`
`A. Withdrawn Disputes
`The parties have stipulated that “storage hierarchy” (9),
`“defined hierarchy of storage” (11), and “hierarchy of
`storage” (20) require no construction.
`
`B. Disputed Terms
`
`Claim 1 of the ‘638 Patent reads in full:
`
`(d) sending an alert to the cell phone that the person is
`present at the entrance after the keypad is pressed by the
`person at the entrance;
`
`(ec) speaking with the person at the entrance through
`the graphical user interface on the cell phone after the
`keypad is pressed by the person at the entrance; and
`
`(f) listening to the person at the entrance via the cell
`phone through use of the graphical user interface after
`
`the‘Keypadis pressed by the personat the entrance.
`38 col. 20 Il. 22-50.
`
`1. peripheral device (6)
`Eyetalk argues the term should be construed as “an electronic
`communication device such as a video phone, an in-car
`communication system, a telephone, a cell phone, a personal
`computer, or a smartphone/personal digital assistant (PDA).”
`Zmodo argues no further construction is necessary. The
`specification includes no definition of “peripheral device,”
`so the heavy presumption that the term means whatever a
`personskilled in the art would interpret it to mean has not been
`rebutted. The specification includes the following exemplary
`language:
`
`1. A method for receiving a person at an entrance,
`comprising the steps of:
`
`(a) detecting the presence of a person at the entrance;
`
`(b) transmitting, to a computerized controller running a
`software application, video of the personat the entrance
`recorded using a camera located proximate the entrance;
`and
`
`*4 Such devices generally include video phones72; in-car
`communication systems such as the well known ONSTAR
`system 74 currently found in GM cars; telephones 76;
`cell phones 77; personal computers 78; smartphones/
`personal digital assistants (PDAs) 79; and other similar
`communication devices. Each remote peripheral device is
`configured for electronic communication with the personal
`computer 80 via at least the PSTN connection 70 or the
`broadband connection.
`
`US. Patent } 432,638 col. 9 Il 23-31. Although a
`(c) providing, with the software application running at
`patentee may define words as he likes, examples given in
`the computerized controller, a graphical user interface to
`a specification should not be read into claims.
`
`¢ my
`a remote peripheral device by whichauserof the remote
`
` Cin TSS "The Court agrees“with Zmodo‘that no further
`peripheral device, which comprises a cell phone, may
`view the video of the person at the entrance;
`
`construction of this term is necessary.
`
`wherein said detecting of step (a) comprises using
`a wireless video camera comprising a microphone, a
`speaker, an RF receiver, an RF transmitter, a proximity
`sensor and uses a keypad comprising one or more
`buttons to determine that the person is present at the
`entrance wherein said transmitting of step (b) comprises
`transmitting digital streaming video wirelessly using the
`video camera;
`
`2. graphicaluser interface (1)
`Eyetalk argues no further construction is necessary. Zmodo
`argues the term should be construed as “a user interface
`that contains interactive graphical elements, such as icons,
`windows, buttons, and/or switches, with which a user
`physically interacts via an input device in order to provide
`an input to a computer software program.” The specifications
`
`
`
`

`

`
`
`2018 Markman 2292529
`
`mention the term only twice and include none of the
`language suggested by Zmodo, nor any other definitional or
`exemplary language. The term “graphical user interface” is
`well understood by those skilled in the art, and the Court
`will not import language from an extrinsic source into the
`claim where unnecessary to understand the scope of intrinsic
`evidence.
`
`3. providing, with the software application running at
`the computerized controller, a graphical user interface
`to a remote peripheral device (1)
`Eyetalk argues no further construction is necessary. Zmodo
`argues the term should be construed as “running the software
`application at the computerized controller provided to the
`remote peripheral device the software code for displaying the
`graphical user interface on a display screen of the remote
`peripheral device.” The Court agrees with Eyetalk. Zmodo's
`proposedconstruction is primarily an unhelpful rewording of
`the claim language. It also proposes to add the element of
`“displaying the graphical user interface on a display screen
`of the peripheral device.” But that is superfluous. A person
`skilled in the art would understand that a visual display is
`inherent to a graphical user interface. Also, the claim is not
`limited to display on a “screen,” at least not as to “remote
`peripheral device[s].” It is conceivable that a graphical user
`interface could be displayed via an element other than a
`“screen.” The specifications only use the word “screen” when
`referring to the LCD display that is part of the “~DVMS
`module[s],” (the wireless doorbell exterior to the home and
`the control station(s) interior to the home), see U.S. Patent
`No, 94%
`ANS
`a ot
`9 430.
`638 cols. 8-9 & figs. 1-3, not when referring to
`the “remote peripheral device[s]” such as video phones,in-car
`communications systems, and the like. “Remote peripheral
`device[s]” are referred to throughout the specifications with
`no reference to whether they must include a “screen.” It
`is those remote peripheral devices that utilize the graphical
`user interface provided by the “controller[s]” (the DVMS
`module(s) inside the house). Although most such devices will
`in fact have a screen(at least today in 2018), it is conceivable
`they will not always. The claim is not so limited, and Zmodo's
`construction would improperly add the limitation.
`
`4. a wireless video camera (1)
`*5 Eyetalk argues no further construction is necessary.
`Zmodo argues the term “wireless video camera” should be
`construed as “a wireless video camera separate and apart from
`the ‘camera located proximate the entrance’ recited in step (b)
`of the method.” The Court agrees with Eyetalk. The parties
`
`do not appear to dispute that one skilled in the art would
`understand the term to mean a camera that transmits video
`
`wirelessly,i.c., via the emission ofelectromagnetic wavesinto
`the air. Zmodo asks the Court to construe the claim to only
`include those systems where the camera used to “detect[ |
`the presence of a person at the entrance,” id. col. 20 1. 24,is
`different from the “camera located proximate the entrance,”
`id. col. 20, ll. 27-28. The Court rejects Zmodo's proposed
`construction. Claim 1 read as a whole makes it reasonably
`clear that the claim is not limited by having different cameras
`for initially detecting persons at the entrance and monitoring
`them thereafter.
`
`Step (c) makes clear that the detection in step (a) uses the
`“wireless video camera” described in step (c). /d. col. 20, Il.
`34-35. Step (b) describes a “a camera” used to record video
`of the person after detection. 7d. col. 20, 1. 27. To be sure,
`the claim could be better drafted. Ideally, the limitations in
`the “wherein” paragraph in step (c) would be incorporated
`into steps (a) and (b), as applicable. The examiner might
`have avoided this issue by objecting to the use of “a” to
`introduce “wireless video camera” on lines 34-35 in step (c)
`after “a” had already been used to introduce “camera”on line
`27 in step (b). It is a fundamental rule of practice that the
`proper antecedent basis in a patent claim for an elementthat
`has already been introducedis “the,” not “a.” The use of “a
`wireless video camera” might therefore cause one to think
`that this element is intended to be separate from “a camera”
`as previously introduced, especially given the additional term
`language of “wireless video.” Zmododoesnot argue the claim
`iss indefinite forthis reason alone, however, norcould it. See
` 435 Ftd
` ; i Cie, 2000)(Whenthe meaningofthe claim
`
`would reasonably be understood by persons of ordinary skill
`whenread in light of the specification, the claim is not subject
`to invalidity upon departure from the protocol of ‘antecedent
`basis.’ ”). Rather, Zmodo simply asks the Court to hold the
`drafter to his word and interpret the claim to comprise two
`separate cameras. But although sloppily drafted, the Court
`believes one skilled in the art would perceive the claim as a
`whole to include embodiments of the invention with a single
`wireless video camera, which is the element described as “a
`camera” in step (b) and further described as “a wireless video
`camera” in step (c). The claim covers embodiments both
`where the “wireless video camera” used to detect the person
`at the entranceis the sameordifferent from the “camera” used
`
`to record video of the person. The claim is not limited to one
`or the other embodiment.
`
`
`
`

`

`
`
`2018 Markman 2292529
`
`5. wherein said detecting of step (a) comprises using
`a wireless video camera comprising a microphone, a
`speaker, an RF receiver, an RF transmitter, a proximity
`sensor and uses a keypad comprising one or more
`buttons to determine that the person is present at the
`entrance(1)
`The parties do not ask the Court to construe the term, but
`Zmodo argues the term is indefinite under § 112 because
`the claim uses both “using” and “uses.” The question is
`whetherthe limitations of the claim are reasonably certain to
`a person skilled in the art. Zmodois correct that a plausible
`reading of the claim is that the “detecting of step (a) ... uses
`a keypad comprising one or more buttons to determine that
`the personis at the entrance.” That implies that detection does
`not happen until the person at the entrance pushes “one or
`more buttons” on the keypad, perhapsin addition to triggering
`the “proximity sensor.” The specifications indicate use of a
`keypad by a visitor. Moreover, step (d) requires that a visitor
`press one or more buttons on the keypad before the owner
`is alerted to the person's presence. The term is therefore
`not indefinite. Although poorly worded, the term limits the
`claim with reasonable clarity by requiring detection to be
`accomplished by the visitor pressing one or more buttons
`on the keypad. A device where detection is accomplished
`through some other method, i.c., via mere presence of the
`visitor or any other method not requiring the visitor to press
`buttons, does not infringe Claim 1. For ease of reading,
`the Court will construe the claim as follows: “wherein said
`
`detecting of step (a) comprises using: (1) a wireless video
`camera comprising a microphone, a speaker, an RF receiver,
`an RF transmitter, and a proximity sensor; and (2) a keypad
`comprising one or more buttons.”
`
`6. wherein said transmitting of step (b) comprises
`transmitting digital streaming video wirelessly using
`the video camera(1)
`*6 The parties do not ask the Court to construe the term.
`Although Eyetalk in its brief anticipated that Zmodo would
`challenge this term as indefinite, Zmodo has not argued this
`term in its brief, so the Court will not addressit.
`
`7, sending an alert to the cell phone that the person is
`present at the entrance after the keypad is pressed by
`the person at the entrance (1)
`
`speaking with the person at the entrance through the
`graphical user interface on the cell phone after the
`keypadis pressed by the person at the entrance (1)
`
`listening to the person at the entrancevia the cell phone
`through use of the graphical user interface after the
`keypadis pressed by the person at the entrance (1)
`The parties do not ask the Court to construe the term, but
`Zmodo argues the terms are indefinite under § 112 because
`the phrase “after the keypad is pressed by the person at the
`entrance”is repeated after each of steps (d)-(f). Zmodoargues
`it is not reasonably clear whether the person at the entrance
`must push one or more buttons before each of steps (d)-(f) or
`only before step (d). Although the repetitive language is poor
`drafting, the Court finds that it would be reasonably clear to
`a person skilled in the art that the visitor need only press the
`button(s) once. Step (c) makes reasonably clear that detection
`happens upon the visitor pressing the button(s). It makes no
`sense that after an alert has been sent to the ownerin step (d) in
`responseto the button pressingin step (c), that the visitor must
`then press a second button so that the owner can speak under
`step (e) and press a third button so that the ownercanlisten
`under step (f). No reasonable layperson reading the entire
`‘638 Patent would think that the invention is so limited, much
`less a person skilled in the art, and the claim is reasonably
`clear that additional buttons need not be pushedat eachstep.
`No language such as “again,” “additional,” or “a second/third
`time”is used in steps (e)-(f).
`
`8. The method of claim 1 further comprisingthe steps of
`viewing of the streaming videoin real time through use
`of the software application on the cell phoneandstoring
`the timestamped video or audio messages received by
`an exterior module in a databasefor later viewing, and
`sending messages to a plurality of peripheral devices
`that the person is present at the entrance (2)
`The parties do not ask the Court to construe the term.
`Although Eyetalk in its brief anticipated that Zmodo would
`challenge this term as indefinite, Zmodo has not argued this
`term in its brief, so the Court will not addressit.
`
`9. wherein said at least one peripheral device comprises
`a cellular phone andis configured to display the video
`transmitted wirelessly by the camera, receive a message
`from the person transmitted wirelessly by the camera,
`receive and display an alert transmitted wirelessly from
`the exterior device after pressing of the keypad by the
`
`
`
`

`

`
`
`person to the user, and speaking with the person at
`the door using the software application running on the
`cellular phone (6)
`The parties do not ask the Court to construe the term, but
`112. Claim 6
`Zmodo argues the term is indefinite under §
`reads in full:
`
`better choice of words, the phrase used refers to the video
`transmitted by the “exterior device,” i.c., the “RF transmitter”
`of the “exterior device,” with reasonable clarity.
`
`CONCLUSION
`
`6. A detection and viewing system comprising:
`
`IT IS HEREBY ORDERED that the disputed terms are
`construedas follows:
`
`an exterior device located proximate a door comprising a
`camera, a microphone, a speaker, an RF receiver, an RF
`transmitter, a proximity detector, and a keypad comprising
`one or more buttons operable to wirelessly transmit
`streaming video data after the keypad is pressed by a
`personat the door;
`
`least one
`a software application running on at
`*7
`least one
`peripheral device, wherein each of said at
`peripheral device is associated with a respective user;
`
`a computer configured for wireless communication with
`the exterior device to receive digital video data, wherein
`said computer is configured for communication with each
`of said at least one peripheral device to transmit the digital
`video data to said at least one peripheral device;
`
`and wherein said at least one peripheral device comprises
`a cellular phone and is configured to display the video
`transmitted wirelessly by the camera, receive a message
`from the person transmitted wirelessly by the camera,
`receive and display an alert transmitted wirelessly from the
`exterior device after pressing of the keypad by the person
`to the user, and speaking with the personat the doorusing
`the software application running onthe cellular phone.
`US. Patent No. 9,432,638col. 21 IL 10-35 (emphases added).
`
`Zmodo argues that it is not reasonably clear whether the
`“exterior device” or the “camera,” which is an element
`thereof, transmits the video. The Court finds that it would be
`reasonably clear to a person skilled in the art that it is the
`“RF transmitter” that transmits the video. It is correct to say
`that the “exterior device ... wirelessly transmit[s] streaming
`video data,” however, because the “RF transmitter” is an
`element of the “exterior device.” The later statement that
`
`“at least one peripheral device comprises a cellular phone
`and is configured to display the video transmitted wirelessly
`by the camera” creates no substantial confusion. The phrase
`“transmitted wirelessly by the camera”is an adjective phrase.
`It is not introduced as a step in a process or as an element
`of a machine. Although “the transmitted video” would be a
`
`1. peripheral device
`necessary
`
`(6)—no further construction
`
`2. graphical user interface (1)—no further construction
`necessary
`
`3. providing, with the software application running at the
`computerized controller, a graphical user interface to a
`remote peripheral device (1)—nofurther construction
`necessary
`
`4. a wireless video camera (1)—no further construction
`necessary
`
`5. wherein said detecting of step (a) comprises using a
`wireless video camera comprising a microphone, a speaker,
`and RF receiver, an RF transmitter, a proximity sensor and
`uses a keypad comprising one or more buttons to determine
`that the person is present at the entrance (1)—wherein
`said detecting of step (a) comprises using: (1) a wireless
`video camera comprising a microphone, a speaker, an
`RF receiver, an RF transmitter, and a proximity sensor;
`and (2) a keypad comprising one or more buttons
`
`6. sending an alert to the cell phone that the person is
`present at the entrance after the keypad is pressed by the
`person at the entrance (1)
`
`speaking with the person at the entrance through the
`graphical user interface on the cell phoneafter the keypad
`is pressed by the person at the entrance (1)
`
`*§8 listening to the person at the entranceviathecell phone
`throughuse of the graphical user interface after the keypad
`is pressed by the person at the entrance (1)—no further
`construction necessary
`
`7. wherein said at least one peripheral device comprises
`a cellular phone and is configured to display the video
`transmitted wirelessly by the camera, receive a message
`from the person transmitted wirelessly by the camera,
`receive and display an alert transmitted wirelessly from the
`
`
`
`

`

`
`
`exterior device after pressing of the keypad by the person
`to the user, and speaking with the personat the doorusing
`the software application running on the cellular phone (6)
`—no further construction necessary
`
`IT IS SO ORDERED.
`
`Adi Citations
`
`Not Reported in Fed. Supp., 2018 WL 2292529, 2018
`Markman 2292529
`
`Footnotes
`4)
`Judge Duand the undersignedjointly reassigned related Case No. 3:17—cv-686 from Judge Du to this Court. In thatcase,
`Eyetalk sued Zmodoin this District for infringementof §J.3. Paterts Nos. 3.4
`°8;
`
`289, all of which are also entitled “Communication and Monitoring System.” Zmodo has answeredin‘that ccas
`
`but there have yet been no pretrial motions or claim construction briefsfiled.
`
`The Court will identify the number of the claim in which a disputed claim term appears in parentheses following the
`disputed term.
`
`
`
`
`
`

`

`
`
`2024 WL 2854289 (Patent Tr. & App. Bd.)
`Only the Westlaw citation is currently available.
`
`NMPYRP PAS YATS”
`WONVOUN ES UINAL, , Petitioner,
`
`SB IP HOLDINGS LLC, Patent Owner.
`
`Patent Trial and Appeal Board.
`IPR2022-01449
`
`Patent 7,193,644 B2
`Date: June 5, 2024
`
`West Headnotes @)
`
`[1]
`
`[2]
`
`US Patent
`
`al, utility
`Pateats oe f
`
`
`«
`
`US Patent ¢
`
`
`Patent 5,*
`
`Prior Art.
`
`Attorneys and Law Firms
`
`35 U.S.C. § 314
`
`EASTHOM,Administrative Patent Judge.
`
`I. INTRODUCTION
`
`*1 Vivint, Inc., Petitioner, filed a Petition (Paper 2, “Pet.”)
`supported by the Declaration of Dr. Bertrand Hochwald (Ex.
`1002) requesting an inter partes reviewv of claims 1, 3, 7, 11-
`oe
`ay
`
`Be dey. 100)
`
`15, 17-20, and 233 ofSS. Patent No. 7,193.6
`the
`al”). Pet. 4. SB IP HoldingsLLC. PatentOwner,
`
`did not file a preliminary response.
`
`After the Institution Decision (Paper 8, “Inst. Dec.”), Patent
`Owner filed a Response (Paper 10, “PO Resp.”) with a
`Declaration of Dr. Robert Akl (Ex. 2003). Petitioner filed a
`Reply (Paper 11, “Reply”). After the briefing, the Board held
`an oral hearing and the Transcript thereof is in the record.
`Paper 13.
`
`For the reasons set forth in this Final Written Decision
`
`pursuant to 38 U.S.C. § 318%}, we determine that Petitioner
`demonstrates by a preponderance of evidencethat challenged
`claims 14 and 15 of the °184 patent are unpatentable.
`
`Il. BACKGROUND
`
`A, Real Parties in Interest
`
`Theparties identify themselves asreal parties in interest. Pet.
`1; Paper 5, 1. Petitioner also notes that “Vivint, Inc. is an
`indirect subsidiary of Vivint Smart Home,Inc., ...
`a holding
`company.”Pet. 1.
`
`EMANUEL SULLIVAN_LLP,UROHART &
`
`PETITIONER:
`
`
` farnes Glass,
`
`
`
`
`
`
`
`Chimney
`
`Ln, QUINN
`
`B. Related Matters
`
`jimglass@quinnemanuel.com,
`
`ah
`Nicholas
`
`R. Houston,
`cuaneye@Quinnemanue!com, M
` FOLEY & LARDNER LLP,
`mhouston@foley.com. nlagerwall@foley.com.
`
`ait
`y a SmM
`Lagsemwal,
`
`PATENT OWNER: Gary 8.
`
`Serden, COLE SCHOTZ P.C.,
`
`gsorden@coleschotz.com.
`
`Before JAMESONLEE, KARL D. EASTHOM,and JON M.
`JURGOVAN,Administrative Patent Judges.
`
`DECISION
`
`Final Written Decision
`
`Determining All Challenged Claims Unpatentable
`
`The parties identify the following district court proceedings
`
`as related matters involving the “644
`patent or related patents:
`SB IP Holdings LLC v. Vivint Smart Home, Inc., No. 4:21-
`cv-00912 (E.D. Tex.); SB IP Holdings v. Vivint Smart Home,
`Inc., No. 4:20-cv-00886 (E.D. Tex.); Vivint, Inc. v. SB IP
`Holdings, LLC., No. 8:22-cv-00034 (C.D. Cal.) (declaratory
`judgment action without
`invalidity assertion); SimpliSafe
`v. SkyBell Tech.,
`Inc., No. 1:20-cv-12288 (Mass.); Arlo
`Tech. Inc. v. SkyBell Tech., No. 3:21-cv-00218 (S.D. Cal.
`(declaratory judgmentaction). See Paper 5, 3; Pet. 1.
`
`parties
`The
`reviews
`as
`
`partes
`inter
`following
`the
`identify
`challenged
`related
`patents
`involving
`Petitioner:
`by
`IPR2022-008 10,
`IPR2022-00811,
`IPR2022-00812,
`IPR2022-008 13,
`IPR2022-008 14,
`
`
`
`

`

`
`
`connection 70 or broadband connection 81. Ex. 1001, 8:40-
`50, 9:17-26.
`In a preferred embodiment, wireless DVMS module 10
`includes camera 22, speakers 12, proximity sensor 26,
`microphone 20, LCD display 16, quick connect electrical
`receptacle 24, locking mechanism 28, and RF FM receiver/
`transmitter 18. Ex. 1001, 9:30-42, Fig. 2. Wireless DVMS
`module 10 communicates with wireless router 42. /d. at 8:58-
`
`60, Fig. 1.
`
`D. Mlustrative Claim
`
`is illustrative of the challenged
`
`*2 Independent claim |
`claims, and follows:
`1. An audio-video communication and answering system,
`said system comprising:
`(a) at least one wireless exterior module having a proximity
`sensor, a video camera, a microphone, a speaker, an RF
`transmitter, and an RF receiver;
`(b)
`a
`computerized controller
`application;
`(c) a wireless router, wherein the wireless router enables
`communication between the exterior module and the
`
`running a_
`
`software
`
`computerized controller;
`(d) a recording component that records video and audio
`communication that is transmitted to and from the exterior
`
`module; and
`that plays video and audio
`(ec) a playing component
`communication recorded by the recording component;
`(f) wherein the software application includesa graphic user
`interface that enables a user to view imagesand streaming
`video from the camera, and
`[(g)]
`that
`enables
`the
`coordination
`of multiple
`communication devices and user defined responses to
`prom