Trials@uspto.gov Paper No. 44

571-272-7822 Entered: March 22, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE

____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

ALARM.COM INC.,

Petitioner,

v.

VIVINT, INC.,

Patent Owner.

____________

Case IPR2015-01977

Patent 6,924,727 B2

____________

Before MICHAEL R. ZECHER, JAMES B. ARPIN, and

CHARLES J. BOUDREAU, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

FINAL WRITTEN DECISION

Inter Partes Review

35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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I. BACKGROUND

Petitioner, Alarm.com Inc. (“Alarm.com”), filed a Petition requesting

an inter partes review of claims 1–9, 14–18, and 22–38 of U.S. Patent No.

6,924,727 B2 (Ex. 1001, “the ’727 patent”). Paper 3 (“Pet.”). Patent

Owner, Vivint, Inc. (“Vivint”), filed a Preliminary Response. Paper 11.

Taking into account the arguments presented in Vivint’s Preliminary

Response, we determined that the information presented in the Petition

established that there was a reasonable likelihood that Alarm.com would

prevail in challenging claims 1–9, 14–18, and 22–38 of the ’727 patent as

unpatentable under 35 U.S.C. § 103(a). Pursuant to 35 U.S.C. § 314, we

instituted this inter partes review on March 24, 2016, as to all the challenged

claims. Paper 13 (“Dec. on Inst.”).

During the course of trial, Vivint filed a Patent Owner Response

(Paper 19, “PO Resp.”), and Alarm.com filed a Reply to the Patent Owner

Response (Paper 27, “Pet. Reply”). Vivint also filed an Updated Motion for

Observation regarding certain cross-examination testimony of Alarm.com’s

declarant, Vernon Thomas Rhyne, III, Ph.D., P.E., R.P.A. (Paper 39,

“Obs.”), and Alarm.com filed a Response to Vivint’s Updated Motion for

Observation (Paper 40, “Obs. Resp.”). A consolidated oral hearing with

Case IPR2015-01965 was held on November 30, 2016, and a transcript of

the hearing is included in the record. Paper 43 (“Tr.”).

We have jurisdiction under 35 U.S.C. § 6. This decision is a Final

Written Decision under 35 U.S.C. § 318(a) as to the patentability claims 1–

9, 14–18, and 22–38 of the ’727 patent. For the reasons discussed below, we

hold that Alarm.com has demonstrated by a preponderance of the evidence

that these claims are unpatentable under § 103(a).

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A. Related Matters

The ’727 patent is involved in a district court case captioned Vivint,

Inc. v. Alarm.com Inc., No. 2:15-cv-00392-CW (D. Utah 2015). Pet. 1;

Paper 10, 2. In addition to this Petition, Alarm.com filed another petition

challenging claims 19–21 of the ’727 patent. Alarm.com Inc. v. Vivint, Inc.,

Case IPR2015-02008 (PTAB Sept. 30, 2015) (Paper 1). We denied

institution of an inter partes review in that proceeding because Vivint filed a

statutory disclaimer disclaiming all of the challenged claims. Alarm.com

Inc. v. Vivint, Inc., Case IPR2015-02008 (PTAB Jan. 20, 2016) (Paper 11).

Alarm.com also filed other petitions challenging the patentability of certain

subsets of claims in the following patents owned by Vivint: (1) U.S. Patent

No. 6,147,601 (Cases IPR2015-02004, IPR2016-00116, IPR2016-00155,

and IPR2016-01080); (2) U.S. Patent No. 6,462,654 B1 (Cases IPR2015-

02003, IPR2016-00161, IPR2016-01110, and IPR2016-01124); (3) U.S.

Patent No. 6,535,123 B2 (Cases IPR2015-01995 and IPR2016-00173); (4)

U.S. Patent No. 6,717,513 B1 (Cases IPR2015-01997, IPR2016-00129, and

IPR2016-01091); and (5) U.S. Patent No. 7,884,713 B1 (Cases IPR2015-

01965 and IPR2015-01967). Paper 17, 1–2; Paper 18, 1–2.

B. The ’727 Patent

The ’727 patent, titled “Method for Remote Control of Home-Located

Electronic Devices and a Management Facility,” issued August 2, 2005,

from U.S. Patent Application No. 10/129,583, filed on May 3, 2002.

Ex. 1001, at [54], [45], [21], [86]. The ’727 patent is a national stage entry

of International Patent Application No. PCT/JP01/08452, filed on

September 27, 2001. Id. at [86], [22]. The ’727 patent also claims foreign

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priority to Japanese Patent Application No. 2000-295110, filed on

September 27, 2000. Id. at [30].

As the title suggests, the ’727 patent generally relates to a method for

remote control of home-located devices using a management facility.

Ex. 1001, 1:7–9. In the “Art Background” section, the ’727 patent explains

that there are several known methods for controlling home-located electronic

devices, such as using a home server to control a home network, which, in

turn, controls each home-located electronic device. Id. at 1:22–26. After

acknowledging that a remote control means installed in a house has been

proposed to control home-located electronic devices, the ’727 patent

identifies three remote control methods for use in systems that include a

home network. Id. at 1:27–64. According to the ’727 patent, each of these

remote control methods is difficult to implement in existing systems because

they have high running costs or numerous technical limitations. See id. at

2:1–43.

The ’727 patent purportedly improves upon these existing systems by

using a server that does not require a high level of processing capability to

control home-located electronic devices. Ex. 1001, 2:49–51. The described

method and management facility also uses a terminal, such as a portable

telephone, to control remotely each home-located electronic device. Id. at

2:51–54. Figure 1 of the ’727 patent, reproduced below, illustrates one

embodiment of a home network management system. Id. at 6:10–13, 7:54–

56.

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As shown in Figure 1, the home network management system

includes a plurality of terminals 1, mobile packet communication network 2,

gateway server 3, Internet 4, home network management facility 5, home

network 6, and notification server 7. Ex. 1001, 7:57–61. Home network 6

further includes home server 61, home-located electronic device group 62,

and security system 63, each of which are connected by home bus 64. Id. at

9:1–5. In this embodiment, a prospective user is able to control each of the

home-located electronic devices included in home network 6 using one of

the plurality of terminals 1. Id. at 7:66–8:5.

C. Illustrative Claim

Of the challenged claims, claims 1, 16, 22, and 31 are the only

independent claims at issue. Independent claims 1, 16, and 22 are directed

to a method for remote control of home-located electronic devices, whereas

independent claim 31 is directed to a management facility of home-located

electronic devices. Claims 2–9, 14, and 15 directly or indirectly depend

from independent claim 1; claims 17 and 18 directly depend from

independent claim 16; claims 23–30 directly or indirectly depend from

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independent claim 22; and claims 32–38 directly or indirectly depend from

independent claim 31. Independent claim 1 is illustrative of the challenged

claims and is reproduced below:

1. A method for remote control of home-located

electronic devices, comprising the steps of:

receiving, at a management facility, from a terminal via a

network, a request signal and a terminal identifier that identifies

said terminal;

identifying, in said managing facility a server, said server

being identified by a server identifier that corresponds to said

terminal identifier;

obtaining, in said management facility, from said server

via said network, status information and said server identifier,

said status information indicative of the status of home-located

electronic devices controlled by said server;

generating display information for said terminal

dependent upon the performance of said terminal, wherein said

display information includes the status of said home-located

electronic devices based on said status information and a prompt

for input of a control instruction for said home-located electronic

devices, said terminal being identified by said terminal identifier,

said terminal identifier corresponding to said server identifier;

transmitting said display information from said

management facility to said terminal;

displaying, with said terminal, a screen showing the status

of said home-located electronic devices and a screen to prompt

for input of a control instruction of said home-located electronic

devices on the basis of the received display information;

transmitting, by said terminal, said terminal identifier and

first control information;

generating, by said management facility, second control

information that directs said server to perform control of said

home-located electronic devices, on the basis of said first control

information;

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transmitting, by said management facility, said second

control information to said server, said server being identified by

said server identifier that corresponds to said terminal identifier,

and

controlling, by said server, said home-located electronic

devices on the basis of said second control information.

Ex. 1001, 34:2–43.

D. Prior Art Relied Upon

Alarm.com relies upon the following prior art references:

Inventor1 U.S. Patent No. Relevant Dates Exhibit No.

Johnson

(“Johnson ’950”)

6,580,950 B1 issued June 17, 2003,

filed Apr. 28, 2000

1003

Umbreit 6,704,787 B1 issued Mar. 9, 2004,

filed Dec. 3, 1999

1004

Menard 6,667,688 B1 issued Dec. 23, 2003,

filed Dec. 22, 1998

1005

Moriya 6,161,140 issued Dec. 12, 2000,

filed Sept. 30, 1997

1006

Johnson

(“Johnson ’336”)

6,553,336 B1 issued Apr. 22, 2003,

filed June 26, 2000

1007

E. Instituted Grounds of Unpatentability

We instituted a trial based on the asserted grounds of unpatentability

(“grounds”) set forth in the table below. Dec. on Inst. 35.

1 For clarity and ease of reference, we only list the first named inventor.

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References Basis Claim(s) Challenged

Johnson ’950 and Moriya § 103(a) 1–5, 9, 15, 16, 18, 22–24,

26–32, and 34–38

Johnson ’950, Moriya, and

Umbreit

§ 103(a) 6–8, 25, and 33

Johnson ’950, Moriya, and

Johnson ’336

§ 103(a) 14

Johnson ’950, Moriya, and

Menard

§ 103(a) 17

II. ANALYSIS

A. Claim Construction

In an inter partes review proceeding, claim terms 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);

Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142–46 (2016)

(upholding the use of the broadest reasonable interpretation standard as the

claim construction standard to be applied in an inter partes review

proceeding). Under the broadest reasonable interpretation standard, and

absent any special definitions, claim terms are generally given their ordinary

and customary meaning, as would be understood by one of ordinary skill in

the art, in the context of the entire disclosure. In re Translogic Tech., Inc.,

504 F.3d 1249, 1257 (Fed. Cir. 2007).

1. “terminal identifier”

In its Petition, Alarm.com contends that the broadest reasonable

interpretation of the claim term “terminal identifier” is “an identifier

associated with a terminal that enables the home network management

facility to identify or communicate with the terminal.” Pet. 12. To support

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its construction, Alarm.com directed us to various challenged claims, as well

as certain disclosures and figures in the specification of the ’727 patent. Id.

at 12–13 (citing Ex. 1001, 14:45–47, 21:12–17, 34:7–9, 36:13–16, 40:8–9,

Figs. 4, 6). For purposes of the Decision on Institution, we adopted

Alarm.com’s proposed construction of the claim term “terminal identifier”

because, on that record, it was consistent with the ordinary and customary

meaning of “terminal identifier,” as would be understood by one with

ordinary skill in the art, in light of the claims and specification of the ’727

patent. Id. at 9–10 (citing Ex. 1001, 8:34–40, 14:45–47, 21:12–17, 40:8–9)

In its Patent Owner Response, Vivint contends that the proper

construction of “terminal identifier” is “an identifier associated with a

terminal that enables a terminal to be identified” because this construction is

consistent with the ordinary and customary meaning of this claim term, as

would be understood by one with ordinary skill in the art, in light of the

claims and specification of the ’727 patent. PO Resp. 11, 14 (Ex. 2026

¶¶ 154–157, 168). According to Vivint, Alarm.com’s proposed construction

of the claim term “terminal identifier” is incorrect for two reasons. Id. at 9.

First, Vivint argues that one necessary characteristic of a terminal identifier

is that the identifier must identify the terminal. Id. at 10 (citing Ex. 1001,

8:33–40, 34:5–6; Ex. 2026 (Declaration of J. Tipton Cole) ¶¶ 155, 156).

Consequently, Vivint asserts that the correct construction of “terminal

identifier” cannot exclude its plain and ordinary meaning—namely, an

identifier that identifies a terminal. Id. (citing Ex. 2026 ¶ 154). Vivint

further argues that, under Alarm.com’s proposed construction, a “terminal

identifier” could be interpreted to cover “an identifier associated with a

terminal that enables the home network management facility to . . .

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communicate with the terminal.” Id. (citing Ex. 2026 ¶ 153). Vivint asserts

that, if construed as proposed by Alarm.com, the interpretation of “terminal

identifier” is improperly broadened because such a construction would

introduce an alternative meaning that would exclude the requirement that a

terminal identifier identifies a terminal. Id. at 11 (citing Ex. 2026 ¶ 152).

Second, Vivint contends that Alarm.com’s proposed construction of a

“terminal identifier” incorrectly characterizes this claim term as

encompassing an Internet Protocol (“IP”) address or some address used to

accomplish data packet communication over a network to and from the

terminal. PO Resp. 11. Vivint argues that, although the ’727 patent uses the

term “IP address” a handful of times throughout the specification, this term

is never linked to the terminal identifier in any discernible manner. Id. at 11

(citing Ex. 1001, 8:49–53, 11:46–49, 13:37–39, 22:21–26, 22:26–29;

Ex. 2026 ¶ 161). Vivint further argues that Alarm.com relies upon an

embodiment illustrated in Figure 11 of the ’727 patent, particularly the

communication between terminal 1 and Hypertext Transfer Protocol

(“HTTP”) server 51, to support its assertion that a “terminal identifier” may

be an IP address. Id. at 12–13. Vivint asserts, however, that one of ordinary

skill in the art would have understood that this particular embodiment uses a

gateway server (i.e., a type of network address translation (“NAT”) router)

that would substitute its own IP address into the data packet received from

terminal 1, such that HTTP server 51 would never receive the terminal’s IP

address. Id. at 13.

In its Reply, Alarm.com contends that its construction of “terminal

identifier” proposed in the Petition is correct because it is consistent with the

disclosure of the ’727 patent as an identifier added to network

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communications. Pet. Reply 1 n.1 (citing Ex. 1031 (Reply Declaration of

Dr. Rhyne) ¶¶ 27–30). Alarm.com also argues that Vivint’s argument

regarding Figure 11 of the ’727 patent and, in particular, its discussion of a

gateway server or NAT router is not a relevant basis to narrow the

construction of “terminal identifier.” Id. (citing Ex. 1031 ¶¶ 34–36).

According to Alarm.com, none of the challenged claims of the ’727 patent

require the use of a gateway server or NAT router. Id. at 6.

Based on the record developed during trial, we maintain that

Alarm.com’s proposed construction of a “terminal identifier” as “an

identifier associated with a terminal that enables the home network

management facility to identify or communicate with the terminal”

constitutes the broadest reasonable interpretation of this claim term. We,

therefore, decline to adopt Vivint’s proposed construction of a “terminal

identifier” as merely “an identifier associated with a terminal that enables a

terminal to be identified.”

As an initial matter, the parties do not argue, nor could we find, that

the specification of the ’727 patent includes an explicit definition of a

“terminal identifier.” We, therefore, determine the ordinary and customary

meaning of this claim term, as would be understood by one of ordinary skill

in the art, in the context of the claims and specification of the ’727 patent.

See Translogic, 504 F.3d at 1257. In our view, the key inquiry in resolving

the parties’ dispute regarding how a “terminal identifier” should be

construed under the broadest reasonable interpretation standard is

determining whether a terminal identifier that enables communication with a

terminal necessarily requires identification of the terminal. Based on our

review of the claims and specification of the ’727 patent, we determine that

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using a terminal identifier to communicate with a terminal necessarily

requires identifying the terminal.

To determine the scope and meaning of the claim term “terminal

identifier,” we begin by focusing on the plain language of the challenged

claims themselves. See Bell Commc’ns Research, Inc. v. Vitalink Commc’ns

Corp., 55 F.3d 615, 620 (Fed. Cir. 1995) (explaining that we must first look

to the words of the claims, which should be accorded their ordinary and

customary meaning unless it appears the patentees used them otherwise).

Independent claim 1 recites, in relevant part, “a terminal identifier that

identifies said terminal.” Ex. 1001, 34:5–6. This claim language is

instructive in that it informs us that the terminal identifier is used to identify

a terminal. Independent claim 16 recites, in relevant part, “said terminal

identifier to determine at least one of a display capability or a

communication capability of said terminal.” Id. at 36:14–16. This claim

language also is instructive in that it informs us that a terminal identifier is

used to determine the format in which information must be communicated to

a terminal. Dependent claims 29 and 37 each recite “wherein said identifier

is a manufacturer model identifier of said remote terminal.” Id. at 38:35–36,

40:8–9. This claim language further informs us that one example of a

terminal identifier is a manufacturer model identifier.

Turning now to the specification of the ’727 patent, we determine

whether the patentees’ use of the claim term “terminal identifier” in the

specification is consistent with its usage in the challenged claims. See

United States v. Adams, 383 U.S. 39, 49 (stating that it is equally

“fundamental that claims are to be construed in the light of the specification

and both are to be read with a view to ascertaining the invention”). When

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describing the home network management facility illustrated in Figure 1 of

the ’727 patent, the specification states that the memory function of terminal

1 includes “[a] terminal [identifier (“ID”)] which identifies each terminal as

identifier.” Ex. 1001, 8:33–40. This cited disclosure is consistent with the

plain language of independent claim 1 discussed above because it indicates

that the terminal identifier/ID enables a terminal to be identified. When

describing the sequence of operations illustrated in Figure 11 of the ’727

patent, the specification further states that “terminal 1 adds the terminal ID

[terminal a] to communication request CR1, and transmits it to HTTP server

51. Further, with regard to the transmission of information from terminal 1

to home network management facility 5, terminal 1 adds the terminal ID to

the information in the transmission.” Id. at 14:46–51. This cited disclosure

is consistent with the plain language of independent claim 16 discussed

above because it indicates that the terminal identifier/ID is used to establish

communication with the terminal.

At the end of its discussion regarding the first embodiment, the

specification states that “the terminal IDs are added to the various

information as identifiers, however, it is also not restricted to this example.

The identifier may be a user ID or a home network ID.” Ex. 1001, 25:56–

59. This cited disclosure demonstrates that the patentees of the ’727 patent

did not intend to limit an “identifier” to a specific type of identifier, such as

an alphanumeric number or a unique identifier that is specific to a device, as

asserted by Vivint. See Tr. 60:14–20 (arguing that a terminal ID “is an

alphanumeric number . . . it’s a unique identifier specific to that device”).

Indeed, this cited disclosure is consistent with the plain language of

dependent claims 29 and 37 discussed above because it indicates that the

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terminal identifier/ID is not limited to a specific type of identifier, but rather

may include multiple types of identifier that enable identification or

communication with a terminal, such as a manufacturer model identifier.

Upon reviewing both the claims and specification of the ’727 patent, it

is clear that a “terminal identifier” must be capable of enabling identification

or communication with a terminal, one example being a manufacturer model

identifier. At this point in our analysis, it is important to remember that the

’727 patent generally relates to a method for remote control of home-located

devices using a management facility. Ex. 1001, 1:7–9. Given this context,

particularly that a single terminal, such as a portable telephone, is used to

control remotely home-located electronic devices (id. at 2:51–54), Vivint

does not explain how communication via the Internet occurs between this

single terminal and the home network management facility without

identifying the terminal. In other words, with the stated context of the ’727

patent in mind, one of ordinary skill in the art would have recognized that

the management facility first must identify a specific terminal in order to

communicate with that terminal via the Internet. Our understanding in this

regard is reinforced further by the testimony of Alarm.com’s declarant,

Dr. Rhyne. In his Reply Declaration, Dr. Rhyne confirms that, “in order to

communicate with a specific terminal in a network environment, such as the

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Internet, an identification of the specific terminal is always required.”

Ex. 1031 ¶ 28 (emphasis added).2

We also take this opportunity to note that Vivint presents inconsistent

arguments regarding the construction of the claim terms “terminal identifier”

and “server identifier.” With the exception of the word “terminal,” the

construction for “server identifier” proposed by Alarm.com in its Petition is

essentially the same as the construction it proposed for “terminal identifier.”

Compare Pet. 12, with id. at 14. Despite the similarities in these

constructions, Vivint only disputed Alarm.com’s proposed construction for

“terminal identifier”—namely, the “identify or communicate” language. See

generally PO Resp. 10–14. Vivint did not dispute the use of this same

language in Alarm.com’s proposed construction of “server identifier.” See

id. at 14.

In our view, the construction of “server identifier” is relevant to the

construction of “terminal identifier” because the claim term “identifier”

presumptively should carry the same meaning throughout the ’727 patent.

Absent evidence to the contrary, the claim terms “terminal identifier” and

“server identifier” should have parallel meanings that differ only with

respect to their relationship to a terminal and server. See Chamberlain Grp.,

2 Vivint attempts to undermine Dr. Rhyne’s testimony by observing that, in

the context of broadcasting messaging, a message may be broadcast without

knowing the specific terminals that receive the message. Obs. 1. In

response, Alarm.com argues—and we agree—that the ’727 patent was not

concerned with broadcast messaging, nor does the record include sufficient

or credible evidence that one of ordinary skill in the art would have been

aware of broadcast messaging during the relevant time frame of the ’727

patent. Obs. Resp. 1.

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Inc. v. Lear Corp., 516 F.3d 1331, 1337 (Fed. Cir. 2008) (stating that the

“term ‘trinary code’ is relevant to construing ‘binary code’ because the term

‘code’ presumptively should carry the same meaning through the patent [at

issue],” and, as a result, determining that “‘binary code’ and ‘trinary code’

should have parallel meanings, differing only insofar as ‘binary’ and

‘trinary’ differ in their relationship to the numbers 2 and 3”). Dependent

claims 5 and 18, each of which recites “wherein said terminal identifier and

said server identifier are the same,” further reinforces that the claim terms

“terminal identifier” and “server identifier” should have parallel meanings.

In summary, we maintain that Alarm.com’s proposed construction of

a “terminal identifier” as “an identifier associated with a terminal that

enables the home network management facility to identify or communicate

with the terminal” is the broadest reasonable interpretation in light of the

claims and specification of the ’727 patent.

2. “server identifier”

In its Petition, Alarm.com contends that the broadest reasonable

interpretation of the claim term “server identifier” is “an identifier associated

with a home server that enables the home network management facility to

identify or communicate with the home server.” Pet. 14. To support its

construction, Alarm.com asserts that the claim term “server identifier” does

not appear in the specification of the ’727 patent, but instead the

specification uses the term “home network ID.” Id. Alarm.com argues that

the specification discloses that the term “home network ID” serves to

identify the home server that corresponds to the terminal and, therefore,

constitutes the claimed “server identifier.” Id. (citing Ex. 1001, 11:37–44,

16:39–42, 16:48–60). Alarm.com further argues that the claim term “server

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identifier” may be an IP address or other address used to accomplish

communication over a network. Id. at 13–14 (citing Ex. 1001, 9:29–31,

16:63–17:2, Fig. 4). For purposes of the Decision on Institution, we agreed

with Alarm.com’s proposed construction of the claim term “server

identifier” because, on that record, it was consistent with the ordinary and

customary meaning of “home network ID,” as would be understood by one

with ordinary skill in the art, in light of the specification of the ’727 patent.

Dec. on. Inst. 11 (citing Ex. 1001, 9:29–31, 11:37–44, 16:40–17:2).

In its Patent Owner Response, Vivint adopts our initial construction of

the claim term “server identifier” as “an identifier associated with a home

server that enables the home network management facility to identify or

communicate with the home server.” PO Resp. 14. In its Reply, Alarm.com

does not present additional arguments or evidence as to the construction of

this claim term. See generally Pet. Reply 1–13. We discern no reason to

further address or alter our initial construction of the claim term “server

identifier” and, therefore, we adopt that construction as the broadest

reasonable interpretation in light of the claims and specification of the ’727

patent.

B. Obviousness Based on the Combined Teachings of

Johnson ’950 and Moriya

Alarm.com contends that claims 1–5, 9, 15, 16, 18, 22–24, 26–32, and

34–38 of the ’727 patent are unpatentable under § 103(a) over the

combination of Johnson ’950 and Moriya. Pet. 15–46. Alarm.com explains

how this proffered combination teaches the subject matter of each

challenged claim. Id. Alarm.com relies upon the Declaration of Dr. Rhyne

to support its positions. Ex. 1009 ¶¶ 56–251. In its Patent Owner Response,

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Vivint presents a number of arguments with respect to the challenged

claims. PO Resp. 21–47. Vivint relies upon the Declaration of Mr. Cole to

support its positions. Ex. 2026 ¶¶ 169–219, 230–309.

We begin our analysis with the principles of law that generally apply

to a ground based on obviousness, followed by an assessment of the level of

skill in the art, proceeded by brief overviews of Johnson ’950 and Moriya,

and then we address the parties’ contentions with respect to the challenged

claims.

1. Principles of Law

A claim is unpatentable under § 103(a) if the differences between the

claimed subject matter and the prior art are such that the subject matter, as a

whole, would have been obvious at the time the invention was made to 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

obviousness is 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 prior art; (3) the level of skill in

the art; and (4) when in evidence, objective indicia of non-obviousness

(i.e., secondary considerations). Graham v. John Deere Co., 383 U.S. 1, 17–

18 (1966). We analyze this asserted ground based on obviousness with the

principles identified above in mind.

2. Level of Skill in the Art

There is evidence in the record before us that enables us to determine

the knowledge level of a person of ordinary skill in the art. Alarm.com’s

declarant, Dr. Rhyne, testifies that a person of ordinary skill in the art as of

September 2000 would be an individual who possesses (1) a bachelor’s

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degree in computer science, electrical engineering, computer engineering, or

equivalent coursework; and (2) at least two years of experience in remote

monitoring and control systems. Ex. 1009 ¶ 20. Vivint’s declarant, Mr.

Cole, testifies that that a person of ordinary skill in the art as of September

2000 would be an individual who possesses (1) at least a bachelor’s degree

in mathematics, physics, computer science, electrical engineering, computer

engineering, or a related field; and (2) either a master’s degree in one of the

related fields, or at least two years of industry experience in controlling and

communicating with remote systems. Ex. 2026 ¶ 27.

Mr. Cole’s assessment of level of skill in the art is different from that

of Dr. Rhyne insofar as it permits one of ordinary skill in that art to have a

master’s degree in lieu of experience. Mr. Cole’s assessment of the level of

skill in the art also permits one of ordinary skill in the art to have a degree in

math or physics, rather than just computer science, electrical engineering, or

computer engineering. Because Mr. Cole’s assessment of the level of skill

in the art is consistent with the ’727 patent and the asserted prior art, we

adopt it and apply it to our obviousness evaluation below, but note that our

conclusions would be the same under Dr. Rhyne’s assessment.

3. Johnson ’950 Overview

Johnson ’950 generally relates to home monitoring systems and, in

particular, to a communications system that allows a homeowner to monitor

and control various features of their home from a distant location via a

global computer network, such as the Internet. Ex. 1003, 1:7–12. Figure 1

of Johnson ’950, reproduced below, illustrates the communication between a

homeowner’s computer and a control unit within the home through a global

computer network. Id. at 3:24–27, 4:39–47.

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As shown in Figure 1, Internet-based home communications system

10 includes a plurality of control devices 40 positioned within a home,

control unit 30 connected to global computer network 12, and data center 20

in communication with control unit 30 via global computer network 12.

Ex. 1003, 4:16–23. Control devices 40 may include various units, such as

light controls 42, heating controls 44, moisture controls 46, freeze controls

48, pet feeding device 50, propane gauge 54, interior cameras 56, exterior

cameras 58, security system 60, smoke alarms 62, health monitoring devices

64, etc. (not illustrated above). Id. at 4:23–29. The homeowner is capable

of monitoring and controlling these devices by accessing a web page

displayed by data center 20 through a conventional web browser on user

computer 16. Id. at 4:30–33; see also id. at 2:19–22 (disclosing the same).

The homeowner may view, monitor, or control features of their home

through the web page (e.g., by viewing interior images of their home or

adjusting the thermostat in their home). Id. at 4:34–36.

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4. Moriya Overview

Moriya generally relates to a system for transferring information to

data terminals via networks and, in particular, to an information transfer

system that includes a central facility connected to a plurality of the data

terminals that differ from each other in their respective capabilities.

Ex. 1006, 1:8–13, 1:51–56. Figure 4 of Moriya, reproduced below,

illustrates a relational database stored in code storage section 21 of central

facility 2. Id. at 2:31–32, 5:3–4.

As shown in Figure 4, the relational database includes information

regarding five types of data terminals capable of connecting to the central

facility. Ex. 1006, 5:1–4. In particular, this relational database indicates the

model codes and specification data that describe the capabilities and features

for each of the five types of data terminals. Id. at 5:4–7.

5. Claims 1, 16, 22, and 31

In its Petition, Alarm.com contends that Johnson ’950’s home

monitoring system that allows a homeowner to monitor and control various

devices within its home from a remote location teaches all of the limitations

recited in independent claims 1, 16, 22, and 33, except the limitations

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directed to formatting information based on terminal display capabilities.

Pet. 15–20, 26–46. Alarm.com then turns to Moriya’s disclosure of central

facility 2 connected to a plurality of terminals 1 that differ from each other

in their respective display capabilities to teach these limitations. Id. at 20–

22, 27–28, 36–37, 39, 43–44 (citing Ex. 1006, 1:51–56, 3:67–4:10, 5:1–7,

Fig. 4).

Alarm.com then contends that Johnson ’950 discloses that data center

20 communicates with various types of terminals, including a personal

computer (“PC”), personal digital assistant (“PDA”), web-connected phone,

or web-connected pager. Pet. 22 (citing Ex. 1003, 6:2–6). Alarm.com

further argues that there was a need in the year 2000 time frame to

customize outgoing information for devices with varying capabilities in

many industries, including the home security and automation industry, as

evidenced by Johnson ’336, Johnson ’950, Joao, and Menard. Id. at 22–24

(citing Ex. 1003, Fig. 5; Ex. 1009 ¶¶ 59, 60, 65). Alarm.com asserts that,

because Moriya is directed explicitly to addressing this need, one of ordinary

skill in the art would have had a sufficient reason to modify Johnson ’950’s

home monitoring system to incorporate Moriya’s disclosure of formatting

information based on a terminal’s display capabilities. Id. at 24–26 (citing

Ex. 1006, 1:31–43).

In its Patent Owner Response, Vivint presents the following

arguments: (1) the combination of Johnson ’950 and Moriya does not teach

a terminal identifier that is received by a management facility, as required by

independent claims 1, 16, 22, and 31; (2) the combination of Johnson ’950

and Moriya does not teach a server identifier that corresponds to the terminal

identifier, as required by independent claims 1, 16, and 31; (3) the

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combination of Johnson ’950 and Moriya does not teach the generation of

second control information by a management facility, as required by

independent claims 1 and 16; (4) absent reliance upon impermissible

hindsight, a person of ordinary skill in the art would not have combined the

teachings of Johnson ’950 and Moriya; and (5) modifying Johnson ’950’s

home monitoring system to account for the varying display capabilities of

terminals would render Johnson ’950 inoperable for its intended purpose.

PO Resp. 21–47. We address each argument in turn.

a. Johnson ’950 and Moriya each individually teach a terminal identifier

that is received by a management facility, as required by independent

claims 1, 16, 22, and 31

Independent claim 1 recites, in relevant part, “receiving, at a

management facility, from a terminal via a network, . . . a terminal identifier

that identifies said terminal.” Ex. 1001, 34:4–6. Independent claims 16, 22,

and 33 each recite similar limitations. Id. at 36:26–28, 37:53–57, 38:51–53.

In its Petition, Alarm.com contends that Johnson ’950 discloses that

control unit 30 and user computer 16 communicate with data center 20 via

global network 12, such as the Internet. Pet. 17 (citing Ex. 1003, 2:8–14).

Alarm.com then argues that such communication between devices is not

possible without identifiers that permit association of the communication

information with a source and a destination. Id. For instance, Alarm.com

asserts that, when communication is via the Internet, as taught by Johnson

’950, a terminal IP address is a “terminal identifier.” Id. As further support

for its argument, Alarm.com directs us to the Examiner’s use of Official

Notice during prosecution that data packets containing source and

destination addresses were old and well-known. Id. at 17–18 (citing

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Ex. 1002, 533).3 As we explained in the Decision on Institution, we

understand Alarm.com to argue that Johnson ’950 teaches using a terminal

IP address that identifies user computer 16 and, therefore, Johnson ’950’s IP

address, by itself, accounts for the claimed “terminal identifier.” Dec. on

Inst. 15.

Alternatively, Alarm.com contends that Moriya’s central facility 2

uses model codes to retrieve from memory the capabilities for each type of

terminal 1. Pet. 21. For example, Moriya discloses that the model code may

indicate that terminal 1 is a personal digital assistant (“PDA”) with 4-bit

monochrome color and a smaller display size, or, alternatively, the model

code may indicate that terminal 1 is a personal computer (“PC”) with 16-bit

color and a larger display. Id. (citing Ex. 1006, 5:7–26, 7:50–8:24, Fig. 4).

Alarm.com then asserts that Moriya’s model code constitutes a terminal

identifier because it is used to retrieve terminal capabilities from a table in

memory. Id. at 22. As we explained in the Decision on Institution, we

understand Alarm.com to argue that Moriya teaches using a model code to

identify a particular terminal, such as a PDA or PC, and, therefore, Moriya’s

model code, by itself, accounts for the claimed “terminal identifier.” Dec.

on Inst. 16.

In its Patent Owner Response, Vivint contends that neither Johnson

’950 nor Moriya properly accounts for the claimed “terminal identifier.”

PO Resp. 22. Beginning with the disclosure in Johnson ’950, Vivint argues

that Alarm.com improperly relies upon Official Notice taken by the

3 All references to the page numbers in the prosecution history of the ’727

patent are to the page numbers inserted by Alarm.com in the bottom, right-

hand corner of Exhibit 1002.

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Examiner during prosecution to support its assertion that Johnson ’950’s

terminal would necessarily use an IP address within its home monitoring

system. Id. at 23 (citing Ex. 2026 ¶ 170). Vivint asserts that neither

Alarm.com nor its declarant, Dr. Rhyne, provides corroborating evidence to

support this argument, and, in any event, an Examiner’s use of Official

Notice cannot serve as the basis of a ground instituted in an inter partes

review. Id. Vivint further argues that Alarm.com’s argument that a

terminal’s IP address constitutes the claimed “terminal identifier” is flawed

because the terminal IP address is never received by the management

facility. Id. at 23–24 (citing Ex. 2026 ¶¶ 151–168, 170–172). According to

Vivint, a person of ordinary skill in the art would have understood that, at or

around the time of the invention, many terminals would have been behind a

gateway server or NAT router. Id. at 24. With this in mind, Vivint asserts

that the source IP address of a data packet transmitted by Johnson ’950’s

user computer 16 would never reach data center 20 because a gateway server

or NAT router would replace the source IP address with its own IP address.

Id. at 24–25.

In its Reply, Alarm.com counters that both the Petition and supporting

testimony of Dr. Rhyne explain how Johnson ’950’s disclosure of Internet

communications between user computer 16 and data center 20 inherently

discloses the use of IP addresses. Pet. Reply 2 (citing Pet. 17; Ex. 1009

¶ 56). Alarm.com argues that it did, indeed, reference the Examiner’s use of

Official Notice during prosecution in its Petition; however, contrary to

Vivint’s assertion, the Examiner provided documentary evidence to support

the use of Official Notice. Id. at 3 (citing Ex. 1002, 533). Alarm.com

further argues that, even if we were to disregard the Examiner’s use of

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Official Notice, Alarm.com nonetheless has provided sufficient evidence to

support its assertion that Johnson ’950 inherently discloses IP addresses. Id.

(citing Ex. 1031 ¶ 37). In addition, Alarm.com disagrees with Vivint’s

argument involving the use of a gateway server or NAT router. Id. at 4–5.

Alarm.com argues that Vivint’s argument in this regard has no basis in the

disclosure of Johnson ’950, nor is required by the challenged claims of the

’727 patent. Id. at 5–6 (citing Ex. 1003, 4:55–61, Fig. 5; Ex. 1031 ¶¶ 38–

42).

We agree with Alarm.com that Johnson ’950 necessarily discloses a

terminal IP address that comports with our construction of “terminal

identifier.” That is, in our claim construction section above, we adopted

Alarm.com’s proposed construction of a “terminal identifier” as “an

identifier associated with a terminal that enables the home network

management facility to identify or communicate with the terminal.”

See supra Section II.A.1. Johnson ’950’s terminal IP address is consistent

with this construction because it is associated with user computer 16 and

enables data center 20 to identify or communicate with user computer 16.

See Ex. 1003, 2:8–14, 4:30–36, 6:61–7:4, Fig. 1. We also credit Dr. Rhyne’s

supporting testimony on this particular issue because it is consistent with the

aforementioned disclosures in Johnson ’950. See Ex. 1009 ¶ 56. We,

therefore, agree with both Alarm.com and Dr. Rhyne that Johnson ’950, by

itself, teaches a terminal identifier that is received by a management facility,

as is required by independent claims 1, 16, 22, and 31. See Pet. 17–19;

Ex. 1009 ¶ 56.

We do not agree with Vivint’s argument that Alarm.com improperly

relied upon Official Notice taken by the Examiner during prosecution to

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support its assertion that Johnson ’950’s user computer 16 necessarily would

use an IP address to communicate with data center 20. See PO Resp. 22–23.

In our view, Alarm.com’s reliance upon Official Notice taken by the

Examiner during prosecution is akin to relying on the background

knowledge of one of ordinary skill in the art that may be considered in an

obviousness evaluation. The U.S. Court of Appeals for the Federal Circuit

has recognized that evidence submitted with the Petition (e.g., statements

from the Examiner during prosecution) may be considered to demonstrate

the knowledge that one of skill in the art “would bring to bear in reading the

prior art identified as producing obviousness.” Ariosa Diagnostics v.

Verinata Health, Inc., 805 F.3d 1359, 1365 (Fed. Cir. 2015); see also

Randall Mfg. v. Rea, 733 F.3d 1355, 1362–63 (Fed. Cir. 2013) (emphasizing

that additional prior art references or evidence are not for the purpose of

changing the prior art combination that forms the basis of the asserted

ground, but rather are merely for the purpose of providing evidence of the

state of the art, including the background knowledge of one of ordinary skill

in this art). Here, we view the prosecution history of the ’727 patent and, in

particular, the Examiner’s use of Official Notice, as falling within the

purview of permissible evidence we may consider in this obviousness

evaluation. Upon considering this evidence, we agree with Alarm.com that

it amounts to additional support for its assertion that Johnson ’950’s user

computer 16 necessarily uses an IP address to communicate with data center

20. See Ex. 1002, 533.

For at least three reasons, we do not agree with Vivint’s argument that

the source IP address of a data packet transmitted by Johnson ’950’s user

computer 16 would never reach data center 20 because a gateway server or

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NAT router would replace the source IP address with its own IP address.

See PO Resp. 23–25. First, Vivint’s argument in this regard is premised on

the notion that one of ordinary skill in that art would have understood that, at

or around the time of the invention, many terminals would have been behind

a gateway server or NAT router. Id. at 24. Vivint, however, does not direct

us to, nor can we find, a disclosure in Johnson ’950 that requires a gateway

server or NAT router to be located between user computer 16 and data center

20. Indeed, as Alarm.com correctly points out in its Reply, Johnson ’950

discloses a home monitoring system that employs an Internet configuration

that does not include a gateway server or NAT server. See Pet. Reply 5

(citing Ex. 1003, 4:55–61, Fig. 5).

Second, simply because one of ordinary skill in the art may have

known that many terminals would have been behind a gateway server or

NAT router, does not mean that all terminals would have been positioned in

this manner, much less Johnson ’950’s user computer 16. Indeed, the fact

that the ’727 patent illustrates such a scenario only in Figure 11 may be

evidence that positioning a terminal behind a gateway server or NAT router

was not universal.

Third, to the extent Vivint argues that independent claims 1, 16, 22,

and 31 require a gateway server or NAT router, we do not agree. As we

noted above, Vivint’s argument relies on an embodiment illustrated in

Figure 11 of the ’727 patent, particularly gateway server 3 located between

terminal 1 and HTTP server 51. This embodiment, however, is not

commensurate in scope with the independent clams 1, 16, 22, and 31

because these challenged claims do not require the use of a gateway server

or NAT router. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982)

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(explaining that limitations not appearing in the claims cannot be relied upon

for patentability). In other words, Vivint’s attempt to patentably distinguish

independent claims 1, 16, 22, and 31 from Johnson ’950’s home monitoring

system based on a feature (i.e., gateway server or NAT router) not required

by these challenged claims is not persuasive.

Turning now to the disclosure in Moriya, Vivint argues that Moriya’s

model code does not teach the claimed “terminal identifier” because, at

most, it is capable of identifying a generic terminal—not a specific terminal.

PO Resp. 26 (citing Ex. 2026 ¶ 174). According to Vivint, the ’727 patent

clearly distinguishes between a terminal identifier and a model name. Id. at

26–27 (citing Ex. 1001, 21:12–17, Figs. 6, 8). Vivint argues that Moriya’s

model code is not the same as the claimed “terminal identifier” because it is

never used to identify a specific terminal. Id. at 27–28 (citing Ex. 2026

¶¶ 176, 177). Vivint further argues that its understanding in this regard is

supported further by Figure 16 of Moriya. Id. at 28. Based on this Figure,

Vivint argues that a person of ordinary skill in the art would have understood

that Moriya’s terminals 1 that have the same capabilities also would likely

have the same model code, and, therefore, Moriya’s model code is

analogous to the ’727 patent’s model name. Id. (citing Ex. 2026 ¶¶ 174–

179). Put another way, Vivint argues that Moriya’s system would be unable

to distinguish between terminal A and terminal B if these terminals shared

the same model code. Id. at 29 (citing Ex. 2026 ¶ 180).

In its Reply, Alarm.com counters that the challenged claims,

particularly dependent claims 29 and 37, preclude a construction of

“terminal identifier” that would require them to identify a specific terminal

because those dependent claims indicate that the terminal identifier may be a

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“manufacturer model identifier.” Pet. Reply 7 (quoting Ex. 1001, 38:35–36,

40:9–10). Alarm.com, therefore, asserts that the construction of “terminal

identifier” cannot exclude manufacturer model identifiers because it would

be inconsistent with the plain language of the challenged claims. Id.

We agree with Alarm.com that Moriya’s model code comports with

our construction of “terminal identifier.” That is, in our claim construction

section above, we adopted Alarm.com’s proposed construction of a

“terminal identifier” as “an identifier associated with a terminal that enables

the home network management facility to identify or communicate with the

terminal.” See supra Section II.A.1. Moriya’s model code is consistent with

this construction because it is associated with a particular terminal and

enables central facility 2 to identify or communicate with the terminal. See

Ex. 1006, 3:7–24, 5:7–26, 7:50–8:24, Fig. 4. We also credit Dr. Rhyne’s

supporting testimony on this particular issue because it is consistent with the

aforementioned disclosures in Moriya. See Ex. 1009 ¶ 56. We, therefore,

agree with both Alarm.com and Dr. Rhyne that Moriya, by itself, teaches a

terminal identifier that is received by a management facility, as is required

by independent claims 1, 16, 22, and 31. See Pet. 20–22; Ex. 1009 ¶ 56.

We do not agree with Vivint’s argument that Moriya’s model code is

not the same as the claimed “terminal identifier” because it is never used to

identify a specific terminal. See PO Resp. 26–29. As Alarm.com correctly

points out in its Reply, each of dependent claims 29 and 37 recites “wherein

said identifier is a manufacturer model identifier of said remote terminal.”

See Pet. Reply 7 (quoting Ex. 1001, 38:35–36, 40:9–10). In our analysis in

the claim construction section above, we consider the plain language of

these dependent claims when determining the broadest reasonable

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interpretation of a “terminal identifier.” See supra Section II.A.1. We are

not inclined to disregard this claim language and accept Vivint’s unduly

narrow construction of a “terminal identifier” as it would violate basic

cannons of claim construction. See Utica Enters., Inc. v. Fed. Broach &

Mach. Co., 109 F. App’x 403, 410–11 (Fed. Cir. 2004) (“At the very least

then, claim 3 should be construed to encompass the structures recited in the

claims that depend from it . . . .”).

b. Johnson ’950 teaches a server identifier that corresponds to the

terminal identifier, as required by independent claims 1, 16, and 31

Independent claim 1 recites, in relevant part, “said server being

identified by a server identifier that corresponds to said terminal identifier.”

Ex. 1001, 34:7–9. Independent claims 16 and 31 recite similar limitations.

Id. at 36:10–12, 38:54–56.

In its Petition, Alarm.com contends that Johnson ’950 discloses that

control unit 30 and user computer 16 communicate with data center 20 via

global network 12, such as the Internet. Pet. 17 (citing Ex. 1003, 2:8–14).

Alarm.com then argues that such communication between devices is not

possible without identifiers that permit association of the communication

information with a source and a destination. Id. For instance, Alarm.com

asserts that, when communication is via the Internet, as taught by Johnson

’950, a server IP address is a “server identifier.” Id. As further support for

its argument, Alarm.com directs us to the Examiner’s use of Official Notice

during prosecution that data packets containing source and destination

addresses were old and well-known. Id. at 17–18 (citing Ex. 1002, 533). In

addition, Alarm.com argues that Johnson ’950 discloses that, if a user has

multiple homes, the user may access the security systems for both homes via

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the control page. Id. at 18–19 (citing Ex. 1003, 9:35–46). According to

Alarm.com, a person of ordinary skill in the art would have understood that

server identifiers would be necessary to distinguish between the different

servers at multiple homes. Id. at 19 (citing Ex. 1003, 6:51–59; Ex. 1009

¶ 56).

In its Patent Owner Response, Vivint contends that the Petition lacks

substantive analysis as to whether Johnson ’950 or Moriya teaches a server

identifier corresponding to a terminal identifier, and Alarm.com does not

provide an adequate explanation as to why one of ordinary skill in the art

would have found such correspondence obvious. PO Resp. 30 (citing

Ex. 2026 ¶¶ 198, 199). Vivint further argues that the ’727 patent discloses

that the correspondence between a terminal identifier and a server identifier

is as a measure of security, whereas Johnson ’950’s home monitoring system

employs a user password as a qualification to access its system and never

contemplates a need to establish correspondence between respective

terminal and server identifiers for security purposes. Id. at 30–31 (citing

Ex. 1001, 34:7–9, Fig. 7;4 Ex. 1003, 38–41; Ex. 2026 ¶¶ 196, 197). In

addition, Vivint argues that Alarm.com does not identify a teaching or

suggestion within Johnson ’950 or Moriya that its data center 20 and central

facility 2, respectively, maintain a correspondence between a terminal

identifier and a server identifier, as required by independent claims 1, 16,

and 31. Id. at 31 (citing Ex. 2026 ¶ 198).

4 Vivint mistakenly indicates on page 30 of its Patent Owner Response that it

is relying on Figure 7 of the ’727 patent. A careful review of the Figures in

the ’727 patent indicates that Vivint is relying on Figure 6—not Figure 7.

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In its Reply, Alarm.com counters that Vivint’s argument that the

correspondence between a terminal identifier and a server identifier in the

’727 patent is as a measure of security only appears in the specification at

Figure 6—not in independent claims 1, 16, and 31. Pet. Reply 8 (citing

Ex. 1031 ¶¶ 62–64). Alarm.com asserts that requiring the asserted prior art

to account for this security requirement would amount to improperly

importing features from the specification into these challenged claims. Id.

Alarm.com argues that Johnson ’950 teaches the correspondence required by

independent claims 1, 16, and 31 because it discloses an interface that

includes home selector 72, which, in response to an incoming login from

user computer 16, establishes control unit 30 (i.e., the home server) that user

computer 16 will control. Id. (citing Ex. 1003, 6:51–53, 7:50–56).

As an initial matter, we note that Johnson ’950 necessarily discloses a

server IP address that comports with our construction of “server identifier.”

That is, in our claim construction section above, we adopt Alarm.com’s

proposed construction of a “server identifier” as “an identifier associated

with a home server that enables the home network management facility to

identify or communicate with the home server.” See supra Section II.A.2.

Johnson ’950’s server IP address is consistent with this construction because

it is associated with control unit 30 and enables data center 20 to identify or

communicate with control unit 30. See Ex. 1003, 2:8–14, 4:55–63, Fig. 1.

We agree with Alarm.com that Johnson ’950 contemplates a scenario

where a user has multiple homes and may need to access the security

systems in each home. See Pet. 19 (citing Ex. 1003, 6:51–59); Pet. Reply 8

(citing the same). Figure 4 of Johnson ’950, reproduced below, illustrates a

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sample web page that displays various images taken from cameras located

both inside and outside a home. Ex. 1003, 3:35–36.

As shown in Figure 4, home selector 72 allows a homeowner to select which

home he/she desires to receive data from (e.g., House #1, House #2, House

#3). Id. at 6:51–53; see also id. at 7:50–56 (disclosing the same). Once a

particular home is selected (e.g., House #1), the homeowner may view

images 74 generated by interior or exterior cameras. See id. at 6:53–56. In

our view, correspondence must exist between the IP address of control unit

30 within the selected home (e.g., House #1) and the IP address of the

homeowner or user computer 16 because the homeowner is able to use

his/her computer 16 to communicate with control unit 30 in order to view

the images generated by the interior or exterior cameras. With this particular

scenario in mind, Johnson ’950 teaches a server identifier that corresponds

to the terminal identifier, as is required by independent claims 1, 16, and 31.

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We do not agree with Vivint’s argument that the correspondence

between a terminal identifier and a server identifier required by independent

claims 1, 16, and 31 must be for the limited purpose of security. See PO

Resp. 30–31. Similar to our analysis above with respect to the claimed

“terminal identifier,” Vivint’s assertion that the claimed “correspondence”

must be for security purposes is not commensurate in scope with these

independent clams because they are not so limiting. See Self, 671 F.2d at

1348. In other words, Vivint’s attempt to patentably distinguish independent

claims 1, 16, and 31 from Johnson ’950’s home monitoring system based on

a purpose (i.e., security purpose) not recited in these challenged claims is not

persuasive.

c. Johnson ’950 teaches the generation of second control information

by a management facility, as required by independent claims 1 and

16

Independent claim 1 recites, in relevant part, “generating, by said

management facility, second control information . . . on the basis of said first

control information.” Ex. 1001, 34:34–37. Independent claim 16 recites a

similar limitation. Id. at 36:29–33.

In its Petition, Alarm.com contends that Johnson ’950 teaches this

“generating” step because it discloses that the desired data entered by the

homeowner via user computer 16 is transmitted to data center 20, which, in

turn, forwards the information directly to control unit 30. Pet. 30 (citing

Ex. 1003, 6:61–7:2). Alternatively, Alarm.com argues that Johnson ’950

teaches this “generating” step because it discloses that control unit 30 also

possesses the capability of receiving commands from data center 20 that the

homeowner previously programmed into data center 20 via control page 76.

Id. (citing Ex. 1003, 7:67–8:4).

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In its Patent Owner Response, Vivint argues that Johnson ’950 merely

forwards the same instructions and, therefore, does not teach the claimed

“generating” step. PO Resp. 32 (citing Ex. 2026 ¶¶ 181, 210). In particular,

Vivint argues that the ’727 patent requires generating new second control

information based on the first control information, which, according to

Vivint, is different from the management facility merely receiving and

forwarding along the same first control information without any processing

to create second control information. Id. at 32–34 (citing Ex. 1001, 3:2–16,

22:34–50, Fig. 11; Ex. 2026 ¶¶ 182–189, 200–203). Vivint asserts that

Johnson ’950’s data center 20 never generates new second control

information, but rather only discloses forwarding the same control

information that it received from user computer 16 to control unit 30. Id. at

34 (citing Ex. 1003, 6:65–7:4, 7:60–8:5; Ex. 2026 ¶¶ 192, 191).

Vivint further argues that Alarm.com incorrectly relies on Johnson

’950’s disclosure of data center 20 receiving and transferring commands

previously programmed into the data center through control page 76 to

account for the claimed “generating” step. PO Resp. 34. According to

Vivint, Johnson ’950’s disclosure of transferring previously programmed

commands only relates to a scenario where control unit 30 is offline. Id. at

34–35 (citing Ex. 1003, 5:1–15). Vivint asserts that, once control unit 30 is

connected or comes back online, it downloads the same control information

originally sent by user computer 16 without generating new second control

information. Id.

In its Reply, Alarm.com contends that Vivint’s argument that Johnson

’950 does not teach the claimed “generating” step is predicated on the notion

that the command information transmitted to control unit 30 located in a

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particular home must be substantively different than the command

information transmitted to data center 20. Pet. Reply. 9. Alarm.com argues

that Vivint’s argument in this regard is incorrect for the following two

reasons: (1) Johnson ’950 discloses generating second control information

that is different from the first control information via a sequence of

communications illustrated in Figures 7 and 8, all of which are used to effect

control of the home monitoring system; and (2) the ’727 patent does not

require the second control information and the first control information to be

different because one of ordinary skill in the art would have understood that,

when a computer transmits data over a network, it must perform certain

operations that create a sending packet that would be different than the

original packet received (e.g., a different source and destination IP address).

Id. at 10–12 (citing Ex. 1003, 7:60–8:4, Figs. 7, 8; Ex. 1031 ¶¶ 67, 68).

Upon reviewing independent claims 1 and 16, as well as the relevant

portions of the specification of the ’727 patent, the only difference we are

able to discern between the claimed “first control information” and the

claimed “second control information” is that terminal 1 transmits the first

control information to network management facility 5, whereas network

management facility 5 transmits the second control information to home

control server 61. Apart from blanket statements that the network

management facility generates second control information based on the first

control information (see, e.g., Ex. 1001, 3:10–15, 4:49–54, 5:28–32, 5:51–

55, 34:34–37, 36:29–33), the specification and claims are silent as to

operations required to perform this “generation” step. Indeed, the parties do

not direct us to, nor can we find, a particular disclosure in the ’727 patent

that assigns significance to how the network management facility generates

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second control information based on the first control information, much less

why the second control information must be new and, therefore, different

from the first control information, as asserted by Vivint. See PO Resp. 32–

34.

With this in mind, we agree with Alarm.com that the ’727 patent does

not mandate that the claimed “second control information” must be different

from the claimed “first control information.” See Pet. Reply. 12. We

recognize that there is a general presumption that different words in a claim

should have different meanings. See CAE Screenplates Inc. v. Heinrich

Fiedler GmbH, 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of

any evidence to the contrary, we must presume that the use of . . . different

terms in the claims connotes different meanings.”). This presumption,

however, may be rebutted if there is sufficient evidence to the contrary. In

our view, the record before us includes sufficient evidence to the contrary

because Johnson ’950’s disclosure of data center 20 forwarding the same

instructions comports with how the ’727 patent describes generating second

control information based on first control information. Ex. 1003, 6:61–7:2.

Even if we were to assume that there is some difference between the

first control information and the second control information, we agree with

Alarm.com that Johnson ’950 accounts for this difference. See Pet. 30;

Pet. Reply 9–11. As illustrated in Figures 7 and 8 of Johnson ’950, there are

numerous operations undertaken by data center 20 after it receives

information from user computer 16 and then re-transmits that information to

control unit 30. Ex. 1003, 7:60–8:4, Figs. 7, 8. As just one example,

Johnson ’950’s data center 20 is capable of receiving pre-programmed

command instructions from user computer 16 and, if data center 20 is able to

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establish a secure connection with control unit 30, data center 20 transmits

these command instructions to control unit 30. Id. at 7:67–8:4. The

sequence of operations whereby Johnson ’950’s data center 20 connects to

control unit 30 in order to transmit command instructions received from user

computer 16 involves the generation of information at multiple levels (i.e.,

transmitting a “connect” command, receiving a connect signal, and

transmitting the command instructions), all of which, in our view, are

sufficient to teach generating second control information based on first

control information, as required by independent claims 1 and 16.

d. Remaining limitations

In its Patent Owner Response, Vivint does not address separately

Alarm.com’s explanations and supporting evidence as to how the

combination of Johnson ’950 and Moriya teaches the remaining limitations

recited in independent claims 1, 16, 22, and 31. See generally PO Resp. 21–

35. We have reviewed Alarm.com’s explanations and supporting evidence

in this regard, and we agree with and adopt Alarm.com’s analysis. See Pet.

15–22, 26–31, 35–39, 43–45.

e. Alarm.com provides a sufficient rationale to combine the teachings of

Johnson ’950 and Moriya

As we explained previously, Alarm.com provides explicit reasoning in

its Petition as to why one of ordinary skill in the art would have been

prompted to combine or modify the teachings of Johnson ’950 and Moriya.

See supra Section II.B.5. That is, Alarm.com contends that, because Moriya

is directed to addressing a need that existed in the year 2000 time frame to

customize outgoing information for devices with varying capabilities in

many industries, including those in the home security and automation

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industry, one of ordinary skill in the art would have had a sufficient reason

to modify Johnson ’950’s home monitoring system to incorporate Moriya’s

technique of formatting information based on a terminal’s display

capabilities. See Pet. 22–26; Ex. 1009 ¶¶ 59, 60, 65.

In its Patent Owner Response, Vivint contends that Alarm.com’s

rationale for combining the teachings of Johnson ’950 and Moriya ignores a

fundamental operation of Johnson ’950’s home monitoring system—namely,

using web browser technology and the HyperText Markup Language

(“HTML”) standard at user computer 16. PO Resp. 40. Vivint argues that,

absent impermissible hindsight, one of ordinary skill in the art would not

have modified Johnson ’950’s home monitoring system to include Moriya’s

ability to format information based on terminal display capabilities because

such a combination would render Johnson ’950’s use of a web browser that

displays web pages written to the HTML standard unnecessary or

superfluous. Id. at 41–43 (citing Ex. 2026 ¶¶ 236–243, 260–267). Vivint

also argues that supporting testimony from Alarm.com’s declarant,

Dr. Rhyne, indicating that a wide variety of terminals existed in the 1997 to

2001 time frame, each of which required different display capabilities and

display formats (Ex. 1009 ¶ 56), is technologically inaccurate. PO Resp.

43–44 (citing Ex. 2026 ¶¶ 244–259). According to Vivint, all of the display

formats mentioned in Dr. Rhyne’s testimony were cross-platform standards

where the display of information was controlled independently by the

terminal, without the need for any server-side processing of display

information. Id.

In its Reply, Alarm.com counters that the testimony from Vivint’s

declarant, Mr. Cole, that formatting content for display was controlled

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independently by the terminal, without the need for any server-side

processing of display information, is belied by the evidence of record and,

therefore, not credible. Pet. Reply. 15. Alarm.com argues that Moriya

explicitly discloses a server that modifies HTML documents based on

whether the model code received from a terminal indicates whether that

terminal is a PC or PDA. Id. at 15–16 (citing Ex. 1006, 1:10–13, 8:63–9:3,

Fig. 14; Ex. 1031 ¶¶ 73–75).

The U.S. Supreme Court has held that an obviousness evaluation

“cannot be confined by a formalistic conception of the words teaching,

suggestion, and motivation, or by overemphasis on the importance of

published articles and the explicit content of issued patents.” KSR, 550 U.S.

at 419. Instead, the relevant inquiry is whether Alarm.com has set forth

“some articulated reasoning with some rational underpinning to support the

legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir.

2006), cited with approval in KSR, 550 U.S. at 418. When describing

examples of what may constitute a sufficient rationale to combine, the

Supreme Court elaborated that, “if a technique has been used to improve one

device, and a person of ordinary skill in the art would recognize that it would

improve similar devices in the same way, using the technique is obvious

unless its actual application is beyond his or her skill.” KSR, 550 U.S. at

417.

When considering the record in its entirety, Alarm.com’s rationale for

combining the teachings of Johnson ’950 and Moriya suffices as articulated

reasoning with rational underpinnings to support the legal conclusion of

obviousness. When, as here, a technique has been used to improve one

device (i.e., Moriya discloses connecting central facility 2 to a plurality of

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terminals 1 that differ from each other in their respective display

capabilities), and one of ordinary skill in the art would have recognized that

it would improve similar devices in the same way (i.e., using the

aforementioned disclosure in Moriya to improve Johnson ’950’s home

monitoring system), using the technique is obvious unless its actual

application is beyond the skill level of an ordinary skilled artisan. See KSR,

550 U.S. at 417; Pet. 22–26; Ex. 1009 ¶¶ 59, 60, 65.

In an attempt to explain why modifying Johnson ’950’s home

monitoring system in this manner would have been uniquely challenging or

otherwise beyond the skill level of an ordinary skilled artisan, Vivint directs

us to thirty-nine (39) paragraphs of supporting testimony from its declarant,

Mr. Cole, which spans roughly fifteen (15) pages of his Declaration. See PO

Resp. 41–44 (citing Ex. 2026 ¶¶ 236–267). These fifteen pages of Mr.

Cole’s Declaration are entitled to little, if any, weight because they were not

presented and developed adequately in the Patent Owner Response, itself.5

Nonetheless, even when weighing the arguments presented by Vivint in its

Petition that correspond to these pages of Mr. Cole’s Declaration, we do not

agree with Vivint’s assertions for at least two reasons.

First, we are not convinced that using web browser technology and the

HTML standard employed by Johnson ’950’s user computer 16 is a

“fundamental operation” of its home monitoring system. See PO Resp. 40.

5 Such incorporation by reference circumvents our rules limiting the word

count for a Patent Owner Response to 14,000 words and generally would not

be entitled to consideration. See 37 C.F.R. § 42.6(a)(3) (“Arguments must

not be incorporated by reference from one document into another

document.”).

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Instead, as we explain in our overview of Johnson ’950 above (see supra

Section II.B.3), the purpose of its home monitoring system is to allow a

homeowner to monitor and control various features of their home from a

remote location via a global computer network, such as the Internet.

Ex. 1003, 1:7–12. Given that Johnson ’950’s global computer network is

not limited necessarily to the Internet, but may include other global

computer networks (e.g., satellite global networks, mobile wireless

networks, etc.), we are not convinced that the use of web browser

technology and the HTML standard employed by user computer 16

necessarily qualifies as a fundamental operation.

Second, even if we were to assume that the use of web browser

technology and the HTML standard employed by Johnson ’950’s user

computer 16 is a fundamental operation of its home monitoring system, we

credit Dr. Rhyne’s testimony that, in the 1997 to 2001 time frame,

standardization of display formats across various types of devices or

terminals was far less common that it is today. Ex. 1009 ¶ 59. Indeed,

Dr. Rhyne testifies—and we agree—that it would be important for a server,

such as Johnson ’950’s data center 20, to know the capabilities of terminals,

such as Johnson ’950’s PC or PDA, so that it could format information for

transmission accordingly. See id.

We recognize that Vivint argues that Dr. Rhyne’s testimony in this

regard is technologically inaccurate. See PO Resp. 43–44 (citing Ex. 2026

¶¶ 244–259). In particular, relying on the testimony of its declarant,

Mr. Cole, Vivint asserts that one of ordinary skill in the art would have

understood that display of information is controlled independently by the

device or terminal, without the need of any server-side processing of the

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display information. Id. at 44. This testimony from Mr. Cole, however, is

contrary to Moriya’s explicit disclosure of performing server-side processing

for HTML documents. See Pet. Reply. 15–16. Indeed, Moriya discloses

that, when the information transfer section 23 of central facility 2 detects

that data terminal 1 is a PDA, it modifies the HTML documents to

accommodate the capabilities of the PDA’s display prior to transmission.

Ex. 1006, 8:63–9:3, Fig. 14.

f. Modifying Johnson ’950’s home monitoring system to include

Moriya’s formatting technique would not render Johnson ’950

inoperable for its intended purpose

In its Patent Owner Response, Vivint contends that, if Alarm.com

were to argue that the combination of Johnson ’950 and Moriya could work

for non-HTML devices, this argument would be flawed because it would

render Johnson ’950 inoperable for its intended purpose. PO Resp. 45. In

particular, Vivint argues that, although Johnson ’950’s data center 20

communicates with devices, such as wireless PDAs, web-connected phones

and pagers, etc., Johnson ’950 does not enable a user to access the control

page of all of its devices. Id. Vivint also argues that, even if one of ordinary

skill in the art were to attempt to use non-HTML devices in the proffered

combination of Johnson ’950 and Moriya, this combined system would have

been incapable of accessing Johnson ’950’s control page 76, thereby

rendering Johnson ’950 inoperable for its intended purpose. Id. at 46 (citing

Ex. 2026 ¶¶ 268–281).

In its Reply, Alarm.com contends that Vivint’s inoperability argument

is specious, at best, because neither Johnson ’950 nor Moriya is limited to

systems that only support HTML devices. Pet. Reply. 19. In any event,

Alarm.com argues that, contrary to Vivint’s assertion, it did not indicate in

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its Petition that the proffered combination of Johnson ’950 and Moriya

requires supporting non-HTML devices. Id. According to Alarm.com,

Johnson ’950 discloses specific embodiments that use web pages, whereas

Moriya discloses the use of a model identifier with web pages. Id. at 19 n.8

(citing Ex. 1006, 8:59–9:3; Ex. 1003, 6:2–6). Based on these respective

disclosures, Alarm.com asserts that combining Johnson ’950 and Moriya in

a manner that allows Johnson ’950’s data center 20 to use Moriya’s model

codes to tailor its output based on the capabilities of a terminal or device

would result in an operational system. Id. (citing Ex. 1031 ¶¶ 101, 102).

Alarm.com, therefore, asserts that Moriya’s alternative embodiments that

support non-HTML devices are irrelevant. Id.

We do not agree with Vivint’s inoperability argument for at least two

reasons. First, Vivint’s argument in this regard mischaracterizes

Alarm.com’s asserted ground based on the combined teachings of Johnson

’950 and Moriya. We do not understand Alarm.com to argue its proffered

combination would only work for non-HTML devices, as asserted by Vivint.

See PO Resp. 45–46. Instead, we understand Alarm.com to argue that, given

the need in the year 2000 time frame to customize outgoing information for

devices with varying capabilities, one of ordinary skill in the art would have

recognized that Johnson ’950’s data center 20 was capable of using Moriya’s

formatting technique and, in particular, its model codes to tailor its output

based on the capabilities of Johnson ’950’s PCs, PDAs, web-connected

phones, or web-connected pagers. See Pet 22–26. Indeed, Vivint does not

direct us to, nor can we find, anywhere in the Petition that Alarm.com

specifically argues its proffered combination is based necessarily on certain

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embodiments disclosed in Johnson ’950 or Moriya that support non-HTML

devices.

Second, we note that a proper obviousness evaluation requires us to

consider Johnson ’950 and Moriya for everything they teach by way of

technology. See EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907

(Fed. Cir. 1985) (“A reference must be considered for everything it teaches

by way of technology and is not limited to the particular invention it is

describing and attempting to protect.”). Constraining our obviousness

evaluation to certain embodiments disclosed in Johnson ’950 and Moriya

that support non-HTML devices would be contrary to this principle. When

considering the record in its entirety, there is sufficient evidence

demonstrating that one of ordinary skill in the art would have appreciated

that applying Moriya’s formatting technique to Johnson ’950’s home

monitoring system would result in an operable system that allows Johnson

’950’s data center 20 (i.e., server) to tailor its output based on the

capabilities of specific devices. See Pet. 22–26; Pet. Reply 15–16; Ex. 1009

¶ 59.

g. Summary

Based on the record developed during trial, we conclude that

Alarm.com has demonstrated by a preponderance of the evidence that the

subject matter of independent claims 1, 16, 22, and 31 would have been

obvious over the combination of Johnson ’950 and Moriya.

6. Claims 2–4, 9, 15, 23, 24, 27–30, 32, and 35–38

Vivint does not address separately Alarm.com’s explanations and

supporting evidence with respect to dependent claims 2–4, 9, 15, 23, 24, 27–

30, 32, and 35–38. See generally PO Resp. 15–35, 38–47. We have

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reviewed Alarm.com’s explanations and supporting evidence, and we agree

with and adopt Alarm.com’s analysis. Pet. 15–25, 31–35, 38, 40–43, 45–46.

Based on the record developed during trial, we conclude that Alarm.com has

demonstrated by a preponderance of the evidence that the subject matter of

dependent claims 2–4, 9, 15, 23, 24, 27–30, 32, and 35–38 would have been

obvious over the combination of Johnson ’950 and Moriya.

7. Claims 5 and 18

Each of dependent claims 5 and 18 recites “wherein said terminal

identifier and said server identifier are the same.” Ex. 1001, 34:63–65,

36:49–51.

In its Petition, Alarm.com contends that Johnson ’950 teaches this

limitation because it discloses that control unit 30 may be connected to local

computers within the home, thereby allowing the homeowner to control and

monitor the home through control unit 30. Pet. 34, 38 (citing Ex. 1003,

4:65–67). To support this argument, Alarm.com’s declarant, Dr. Rhyne,

testifies that “[t]he above citation makes clear that the user can be using a

computer located at their home [(i.e., a local computer)], where that

computer can be both their terminal and the home server.” Ex. 1009 ¶ 139.

In its Patent Owner Response, Vivint argues that Alarm.com’s

position regarding dependent claims 5 and 18 is flawed because Alarm.com

fails to acknowledge Johnson ’950’s disclosure that control unit 30 cannot

be connected directly to data center 20. PO Resp. 36 (citing Ex. 1003, 7:17–

20). Vivint, therefore, asserts that a local computer cannot be both the

terminal and home server because this local computer cannot be connected

directly to Johnson ’950’s control unit 30. Id. (citing Ex. 2026 ¶ 206).

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In its Reply, Alarm.com counters that, in the event the same local

computer is used to account for both the terminal and home server, there is

no need for additional hardware, such as Johnson ’950’s control unit 30, to

be connected directly to the local computer. Pet. Reply 13. Alarm.com

argues that the local computer may run the control software that

communicates with Johnson ’950’s data center 20, as well as a web browser

that connects to web servers at data center 20. Id. (citing Ex. 1031 ¶¶ 50–

55). Alarm.com further argues one of ordinary skill in the art would be

aware of everything Johnson ’950 teaches by way of technology, including

that control unit 30 may be connected to other hardware components within

the home (e.g., local computers) for certain purposes. Id. (citing Ex. 1003,

4:65–67)

We agree with Alarm.com that Johnson ’950 discloses at least one

scenario where the terminal identifier and the server identifier are the same,

as required by dependent claims 5 and 18. Dr. Rhyne testifies—and we

agree—that, when a user has a local computer located at his/her home, that

local computer may constitute both the terminal and home server. Ex. 1009

¶ 139. Dr. Rhyne’s testimony in this regard is consistent with the following

disclosures in Johnson ’950: (1) control unit 30 comprises nothing more

than conventional electronics that are old and well-known in the art (i.e., a

general purpose computer); and (2) the control unit may be connected to a

local computer in order to allow a homeowner to control and monitor his/her

home. Ex. 1003, 4:63–67. In this particular scenario, Johnson ’950’s local

computer amounts to a general purpose computer that serves as both user

computer 16 and control unit 30, thereby allowing it to have the same

terminal identifier and server identifier.

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We do not agree with Vivint’s argument that, because Johnson ’950

explicitly discloses that control unit 30 cannot be connected directly to data

center 20, Johnson ’950 does not teach or render obvious the subject matter

of dependent claim 5. See PO Resp. 30. In essence, Vivint argues that

Johnson ’950’s local computer cannot be both control unit 30 and data

center 20 because these components cannot be connected directly.

Alarm.com, however, does not assert that Johnson ’950’s local computer

may be both control unit 30 and data center 20, but rather we understand

Alarm.com to argue that Johnson ’950’s local computer amounts to a

general purpose computer that serves as both user computer 16 and control

unit 30. See Pet. 34; Ex. 1009 ¶ 139. In that scenario, we are persuaded that

Johnson ’950 discloses that the local computer is not connected directly with

data center 20. For instance, the local computer would abide by the security

measures imposed by Johnson ’950 by using a conventional web browser to

access control page 76 and request authorization to connect with data center

20. See Ex. 1003, 7:17–27 (disclosing that control unit 30 cannot be

connected directly to data center 20, but allowing a homeowner or user to

access control page 76 and request authorization for control unit 30 to

connect with data center 20).

Based on the record developed during trial, we conclude that

Alarm.com has demonstrated by a preponderance of the evidence that the

subject matter of dependent claims 5 and 18 would have been obvious over

the combination of Johnson ’950 and Moriya.

8. Claims 26 and 34

Dependent claim 26 recites, in relevant part, “wherein said status

information is storable with said home network management server as a

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table.” Ex. 1001, 38:19–21. Dependent claim 34 recites a similar limitation.

Id. at 39:10–11.

In its Petition, Alarm.com contends that the combined teachings of

Johnson ’950 and Moriya account for this limitation because Johnson ’950

discloses storing various types of data related to a particular home, including

status information pertaining to control devices 40 located therein, on a

computer readable storage medium. Pet. 40–41, 45 (citing Ex. 1003, 4:4–7,

4:47–49, 5:40–49, 6:91–7:2). Alarm.com turns to Moriya as teaching

storing information in code storage section 21, which may include a

relational database, such as a table. Id. at 41, 45 (citing Ex. 1006, 3:31–33).

Based on these citations to Johnson ’950 and Moriya, we understand

Alarm.com to argue that it would have been obvious to one of ordinary skill

in the art to store information pertaining to Johnson ’950’s control devices in

a relational database, such as Moriya’s table. See id. at 40–41, 45; see also

id. at 19 n.5 (arguing that “it would have been obvious to modify Johnson

’950 to use a table in view of Moriya’s teaching that a table is used to

associate each terminal with its particular capabilities”) (citing Ex. 1006,

Fig. 4).

In its Patent Owner Response, Vivint contends that neither Johnson

’950 nor Moriya discloses storing and maintaining the status information of

home-located electronic devices in a table, as required by dependent claims

26 and 34. PO Resp. 37. In particular, Vivint argues that Johnson ’950 only

discloses storing the status information of control devices 40 in data center

20, but is silent with respect to storing this status information in a table. Id.

(citing Ex. 2026 ¶¶ 213–217, 219). According to Vivint, one of ordinary

skill in the art would have understood that Johnson ’950’s home monitoring

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system could operate without storing and maintaining a table of status

information. Id. Vivint further argues that, although Moriya discloses that

its system stores information associated with a terminal, such as its display

capabilities, it does not disclose storing status information pertaining to a

home-located electronic device. Id. at 38. Vivint asserts that Alarm.com

fails to explain why one of ordinary skill in the art would have determined it

to be obvious to store status information, especially because Moriya merely

discloses storing completely different information and never contemplates

storing status information for any home-located electronic devices. Id.

In its Reply, Alarm.com counters that one of ordinary skill in the art

would have understood that Johnson ’950’s data center 20 stores status

information pertaining to control devices 40 between updates because

Johnson ’950 discloses that data center 20 only requests information from

control devices 40 when the information it is able to access is not current

(i.e., stale). Pet. Reply 14 (citing Ex. 1003, 4:47–53, 7:65–67, Fig. 7;

Ex. 1031 ¶¶ 70, 71). Alarm.com maintains its argument that it would have

been apparent to one of ordinary skill in the art to store such status

information in a table, as taught by Moriya. Id. (citing Pet. 19).

We agree with Alarm.com that the combined teachings of Johnson

’950 and Moriya provide proper teaching and motivation for storing the

status information of home-located electronic devices in a table, as required

by dependent claims 26 and 34. See Pet. 19 n.5, 40–41; Pet. Reply 14.

Johnson ’950 discloses storing various types of data related to a home,

including status information pertaining to control devices 40 located therein,

on a computer readable storage medium. Ex. 1003, 4:4–7, 4:47–49, 5:40–

49, 6:91–7:2. Although Johnson ’950 is silent with respect to how this

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status information is stored on its computer readable storage medium,

Moriya nonetheless discloses that code storage section 21 (i.e., a computer

readable storage medium) may include a relational database, such as a table.

Ex. 1006, 3:31–33. Indeed, Figure 4 of Moriya (reproduced above in

Section II.B.5.b) illustrates an example of a table stored in code storage

section 21 that includes model codes and specification data associated with

various terminals. Id. at 5:3–7, Fig. 4. Based on these cited disclosures in

Johnson ’950 and Moriya, Alarm.com explains—and we agree—that one of

ordinary skill in the art would have recognized that Johnson ’950’s computer

readable storage medium is capable of storing the status information of

control devices 40 in a relational database, such as Moriya’s table illustrated

in Figure 4.

We do not agree with Vivint’s arguments because they amount to

individual attacks on Johnson ’950 and Moriya. See PO Resp. 37–38. It is

well-settled that “non-obviousness [cannot be established] by attacking

references individually,” when, as here, the asserted ground of obviousness

is based upon the combined teachings of Johnson ’950 and Moriya. In re

Keller, 642 F.2d 413, 426 (CCPA 1981). Instead, the test is what the

combined teachings of these references would have taught or suggested to

one with ordinary skill in the art. In re Young, 927 F.2d 588, 591 (Fed. Cir.

1991). In this case, Alarm.com’s asserted ground based on the combined

teachings of Johnson ’950 and Moriya does not rely upon Johnson ’950 to

teach storing information in a table. Rather, Alarm.com turns to Moriya’s

disclosure of storing information in a relational database, such as the table

illustrated in Figure 4, to account for this claim feature. Put simply, we

understand Alarm.com to argue one of ordinary skill in the art would have

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had a sufficient reason to use Moriya’s table to store Johnson ’950’s status

information pertaining to control devices 40, and such a combination would

result in a table that stores and maintains the status information of home-

located electronic devices, as required by dependent claims 26 and 34. See

KSR, 550 U.S. at 417.

Based on the record developed during trial, we conclude that

Alarm.com has demonstrated by a preponderance of the evidence that the

subject matter of dependent claims 26 and 34 would have been obvious over

the combination of Johnson ’950 and Moriya.

C. Obviousness Based on the Combined Teachings of

Johnson ’950, Moriya, and Umbreit

Alarm.com contends that claims 6–8, 25, and 33 of the ’727 patent are

unpatentable under § 103(a) over the combination of Johnson ’950, Moriya,

and Umbreit. Pet. 46–51. Alarm.com explains how this proffered

combination teaches the subject matter of each challenged claim. Id.

Alarm.com relies upon the Declaration of Dr. Rhyne to support its positions.

Ex. 1009 ¶¶ 252–280. In its Patent Owner Response, Vivint presents the

following arguments: (1) the combined teachings of Johnson ’950, Moriya,

and Umbreit do not account properly for the limitations recited in dependent

claims 7, 25, and 33; and (2) a person of ordinary skill in the art would not

have combined the teachings of Johnson ’950, Moriya, and Umbreit for

various reasons. PO Resp. 49–65. Vivint relies upon the Declaration of

Mr. Cole to support its positions. Ex. 2026 ¶¶ 220–227, 310–349.

We begin our analysis with a brief overview of Umbreit, and we then

address the parties’ contentions with respect to claims 6–8, 25, and 33 before

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turning to whether Alarm.com presents a sufficient rationale to combine the

teachings of Johnson ’950, Moriya, and Umbreit.

1. Umbreit Overview

Umbreit generally relates to communication systems and, in

particular, to demographically based distribution of information,

entertainment, advertising and other content via a computer network, such as

the Internet. Ex. 1004, 1:14–17, 2:2–5. In one embodiment, a prospective

user of the system contacts a centralized access code issuer, fills out an

online application, and, after the access code issuer evaluates certain

demographic information obtained from the user’s online application, it

issues the user an access code. Id. at 2:11–50. Each access code issued is

associated with a particular level of access (e.g., access may be granted

based on a user’s age or gender). Id. at 6:57–7:10.

2. Claim 6

Vivint does not address separately Alarm.com’s explanations and

supporting evidence with respect to dependent claim 6. See generally PO

Resp. 62–65. We have reviewed Alarm.com’s explanations and supporting

evidence, and we agree with and adopt Alarm.com’s analysis. Pet. 46–49.

3. Claims 7 and 8

Dependent claim 7 recites, in relevant part, “said management facility

excluding from said generated display information prompts to input control

instructions of said home-located electronic devices that are for at least one

control item outside of said security level.” Ex. 1001, 35:10–15. Claim 8

depends directly from claim 7. Id. at 35:16–19.

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In its Petition, Alarm.com contends that Umbreit discloses generating

display information based on a user’s gender and age, and discloses storing

levels of security associated with each user in order to determine the

information that should be displayed to each user. Pet. 46–48. In particular,

Alarm.com argues that Umbreit teaches the aforementioned limitation

recited in dependent claim 7 because Umbreit discloses that a content

provider may customize the presentation and advertising on its website

according to the demographics of a user, which includes restricting access to

the website or portions thereof based on the demographics or other

information regarding the user. Id. at 50 (citing Ex. 1004, Abstract); see

also Ex. 1009 ¶ 270 (arguing the same).

In its Patent Owner Response, Vivint contends that Alarm.com only

relies upon Umbreit’s Abstract, which discloses restricting access to a

website and portions thereof, but does not explain with particularity how its

system performs these restrictions. PO Resp. 62–63 (citing Ex. 2026 ¶¶ 220,

221). In its Reply, Alarm.com counters that, contrary to Vivint’s assertion,

it did not rely upon Umbreit’s Abstract, by itself, to account for this

limitation recited in dependent claim 7, but provided a detailed explanation

as to how Umbreit’s system issues access codes to users that are associated

with particular levels of access. Pet. Reply 27 (citing Pet. 47 (citing

Ex. 1004, 2:3–50, 6:57–7:10)).

We agree with Alarm.com that the detailed explanation it provides at

pages 47 and 48 of the Petition should be considered together with its

reliance on Umbreit’s Abstract in the claim chart when determining whether

the combined teachings of Johnson ’950 and Umbreit account for the

disputed limitation recited in dependent claim 7. In particular, Umbreit

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discloses issuing access codes to users that are associated with particular

levels of access. Ex. 1006, 2:3–50. Umbreit uses these access codes to

structure websites in a manner suitable for users, which may include, for

example, not allowing a user access to inappropriate content or selecting

certain content that only may be presented to a user based on his/her

demographic characteristics. Id. at 6:57–7:10. Alarm.com’s explanation in

this regard is consistent with Umbreit’s Abstract, which generally discloses

that a content provider may customize the presentation and advertising on its

website according to the demographics of a user. Id. at Abstract. When

applying Umbreit’s access restriction and corresponding website

customization techniques to Johnson ’950’s home monitoring system, we are

satisfied that one of ordinary skill in the art would have appreciated that

Johnson ’950’s data center 20 would be capable of excluding prompts to

input control instructions of control devices 40 that fall outside the particular

level of access associated with an access code entered by a user. See Pet.

47–48.

We do not agree with Vivint’s argument that Alarm.com relies upon

Umbreit’s Abstract, by itself, to account for the disputed limitation recited in

dependent claim 7. See PO Resp. 62–63. Vivint either ignores or overlooks

the detailed explanation provided by Alarm.com on pages 47 and 48 of the

Petition. For instance, Alarm.com argues that “[t]he website can be

structured in a manner suitable for the user—for example, underage users

would not have access to inappropriate content, or [a] user[] would be

presented with selected content given the user’s demographic

characteristics.” Pet. 47 (citing Ex. 1004, 6:57–7:10). Alarm.com further

argues that “it would have been obvious to one of ordinary skill in the art to

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modify the ‘control page’ in the system of Johnson ’950 . . . to incorporate

Umbreit’s teaching that a server tailors the content of a website based on a

security level associated with a user, where the security level may be based

on the user’s age or gender.” Id. at 48. When considering these arguments

together with Alarm.com’s reliance on Umbreit’s Abstract in the claim chart

(id. at 50), we are satisfied that the combined teachings of Johnson ’950 and

Umbreit account for the disputed limitation in dependent claim 7.

Vivint does not address separately Alarm.com’s explanations and

supporting evidence with respect to dependent claim 8. See generally PO

Resp. 62–63. We have reviewed Alarm.com’s explanations and supporting

evidence, and we agree with and adopt Alarm.com’s analysis. Pet. 47–49,

51.

4. Claims 25 and 33

Dependent claim 25 recites “wherein formatting comprises

determining a predefined security level assigned to a user of said remote

terminal and including in said status data only that status data identified as

providable based on said predefined security level.” Ex. 1001, 38:14–18.

Dependent claim 33 recites a similar limitation. Id. at 39:5–9.

In its Petition, Alarm.com relies upon essentially the same disclosure

in Umbreit discussed above with respect to dependent claim 7 to account for

the limitations recited in dependent claims 25 and 33. Compare Pet. 47–48,

50, with id. at 47–48, 51. Alternatively, Alarm.com argues that Moriya

teaches the limitations recited in dependent claims 25 and 33 because it

discloses that central facility 2 determines the information services that

should be supplied to terminal 1 based on the model code received from the

terminal, modifies or selects the documents accordingly, and then sends the

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modified or selected documents to terminal 1. Id. at 51 (citing Ex. 1006,

7:33–39, Figs. 4, 10, 11, 17).

In its Patent Owner Response, Vivint contends that Alarm.com relies

upon essentially the same disclosure in Umbreit to account for the limitation

recited in dependent claim 7, but does not provide further explanation as to

how Umbreit accounts for the different features required by dependent

claims 25 and 33—namely, the “including” feature. PO Resp. 63–64.

Vivint further argues that Umbreit’s level of access is linked to an access

code rather than a user, whereas dependent claims 25 and 33 each recite

determining “a predetermined security level assigned to a user.” Id. at 64

(citing Ex. 2026 ¶¶ 222–227). According to Vivint, Umbreit’s failure to

teach this particular feature required by dependent claims 25 and 33 is not

surprising because Umbreit is directed to authorization of an access code

where the actual identity of the user is not only irrelevant, but also

undesirable. Id.

In its Reply, Alarm.com counters that the “excluding” language

recited in dependent claim 7 is no different logically than the “including”

language recited in dependent claims 25 and 33 because the result of

excluding data from devices to which the user does not have access and the

result of including only data for which the user does have access is

essentially the same. Pet. Reply 23 n.11. Consequently, Alarm.com asserts

that the same teachings of Umbreit should apply equally to dependent claims

7, 25, and 33. Id. (citing Ex. 1031 ¶¶ 123, 124).

Similar to our analysis above with respect to dependent claim 7, we

agree with Alarm.com that the detailed explanation it provides at pages 47

and 48 of the Petition should be considered together with Alarm.com’s

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reliance on Umbreit’s Abstract in the claim chart when determining whether

the combined teachings of Johnson ’950 and Umbreit properly account for

the disputed limitations recited in dependent claims 25 and 33. When

applying Umbreit’s access restrictions and corresponding website

customization techniques to Johnson ’950’s home monitoring system, we are

satisfied that one of ordinary skill in the art would have appreciated that

Johnson ’950’s data center 20 would not only be capable of excluding

prompts, but the data center also would be capable of including certain status

information pertaining to a home-located electronic device based on the

level of access associated with an access code entered by a user. See Pet.

47–48.

For essentially the same reasons discussed above with respect to

dependent claim 7, we do not agree with Vivint’s argument that Alarm.com

relies upon Umbreit’s Abstract, by itself, to account for the limitations

recited in dependent claims 25 and 33. See supra Section II.C.2. We also

do not agree with Vivint’s argument that Umbreit’s level of access is linked

to an access code, rather than a user. See PO Resp. 64. Contrary to Vivint’s

assertion, the identity of a user is not irrelevant or undesirable in the context

of Umbreit’s scheme. Indeed, Umbreit discloses that an access code is

specific to a particular user because it discloses that the access code may be

“a personal identification number, a personal account number, a password,”

etc. Ex. 1004, 6:27–30. Umbreit further discloses that the access code may

be multi-tiered, which may include, among other things, granting access on

an age- or gender-appropriate basis. Id. at 6:64–66. In our view, it is

paramount, if not necessary, to identify the age or gender of a particular user

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before assigning that user an age- or gender-appropriate access code,

respectively.

Our understanding in this regard further is supported by the testimony

of Dr. Rhyne. Dr. Rhyne testifies that “providing different levels of access

to different family members was well-known as of the year 2000. Examples

of that conditionality were common with television sets that allowed parents

to control the types of programs their children could watch and with controls

for accessing the Internet.” Ex. 1009 ¶ 257. We credit this testimony from

Dr. Rhyne because it is consistent with Umbreit’s disclosure of granting

access based on age or gender. Compare Ex. 1006, Abstract, 2:28–29, 6:64–

66, with Ex. 1009 ¶ 257. With this testimony from Dr. Rhyne in mind, we

are satisfied that Umbreit contemplates issuing an access code, for example,

to a parent of a young child, which the parent may then use to ensure that the

child is not watching television past 7:00 PM. In other words, Umbreit’s

communication system may issue an access code to a parent that, when

entered into a remote terminal, allows the parent to check the active status of

television located within his/her home.

5. Alarm.com provides a sufficient rationale to combine the teachings of

Johnson ’950, Moriya, and Umbreit

In its Petition, Alarm.com contends that there are a number of reasons

as to why one of ordinary skill in the art would have modified the control

page in Johnson ’950’s home monitoring system, as combined with the

teachings of Moriya, to include Umbreit’s teaching that a server tailors the

content of a website based on a security level associated with a user, where

the security level may be based on the user’s age or gender. Pet. 48. For

instance, Alarm.com argues that Johnson ’950’s control page is

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customizable, thereby allowing a user to designate the information it desires

to appear upon his/her control page. Id. (citing Ex. 1003, 6:38–40, 6:44–45).

In addition, Alarm.com argues that, as evidenced by the supporting

testimony of Dr. Rhyne, providing different levels of access to different

family members was common in home security and automation systems in

the 2000 time frame. Id. (citing Ex. 1009 ¶ 257). Based on this testimony

from Dr. Rhyne, Alarm.com asserts that a person of ordinary skill in the art

would have combined Johnson ’950’s customizable control page unique to

each user, with Umbreit’s customization that may be based on the security

level associate with a user, which may be based on the user’s age or gender.

Id. at 48–49.

In its Patent Owner Response, Vivint contends that one of ordinary

skill in the art would not have combined the teachings of Johnson ’950,

Moriya, and Umbreit for at least three reasons. PO Resp. 49. First, Vivint

argues that combining Johnson ’950, Moriya, and Umbreit would result in

serious security concerns for Johnson ’950’s home monitoring system,

which, according Vivint, is contrary to the objective of such systems. Id. at

51–55. Second, Vivint argues that Alarm.com’s rationale to combine the

teachings of Johnson ’950, Moriya, and Umbreit only explains how or why

one of ordinary skill in the art would have combined the teachings of Moriya

and Umbreit with those of Johnson ’950, but never explains how or why one

of ordinary skill in the art would have combined the teachings of Umbreit

with those of Moriya. Id. at 55–58. Third, Vivint argues that Alarm.com’s

rationale to combine the teachings of Johnson ’950, Moriya, and Umbreit is

based on impermissible hindsight, and relies upon generic and conclusory

statements from its declarant, Dr. Rhyne. Id. at 58–62. To support these

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arguments, Vivint relies primarily on the supporting testimony of its

declarant, Mr. Cole. Id. at 51–62 (citing Ex. 2026 ¶¶ 310–349).

In its Reply, Alarm.com counters that none of the arguments

presented by Vivint questioning the rationale to combine the teachings of

Johnson ’950, Moriya, and Umbreit have merit. Pet. Reply 20. Addressing

Vivint’s arguments in turn, Alarm.com first argues that combining the

teachings of Johnson ’950 with those of Umbreit would not entail creating

any undue security risk because the entire purpose of Umbreit is directed to

customization of a system by providing separate user accounts, each with its

own unique access code. Id. at 20–23. Second, Alarm.com argues that it

provided sufficient reasons as to how one of ordinary skill in the art would

have combined the teachings of Johnson ’950 with those of Moriya and

Umbreit through its detailed explanations and claim charts in the Petition.

Id. at 23–24. According to Alarm.com, controlling case law makes clear

that there is nothing inherently suspect in combining the teachings of three

prior art references. Id. at 25 (citing In re Gorman, 933 F.2d 982, 986 (Fed.

Cir. 1991)). Third, Alarm.com argues that, contrary to Vivint’s assertion

that it relies upon generic and conclusory statements, it identified specific

and precise overlap in the subject matter addressed by Johnson ’950 and

Umbreit in its Petition that would support combining their respective

teachings. Id. at 25–27.

When considering the record in its entirety, Alarm.com’s rationales

for combining the teachings of Johnson ’950, Moriya, and Umbreit suffice

as articulated reasoning with rational underpinnings to support the legal

conclusion of obviousness. As we explain above, when Moriya’s formatting

technique has been used to improve its system for transferring information

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between central facility 2 and a plurality of terminals 1, and one of ordinary

skill in the art would have recognized that it would improve Johnson ’950’s

home monitoring system in the same way, using this technique in Johnson

’950’s home monitoring system is obvious unless its actual application is

beyond the skill level of an ordinary skilled artisan. See supra Section

II.B.5.e. Similarly, when Umbreit’s access restrictions and corresponding

website customization techniques have been used to improve its

communication system, and one of ordinary skill in the art would have

recognized that it would improve Johnson ’950’s home monitoring system in

the same way, using these techniques in Johnson ’950’s home monitoring

system is obvious unless its actual application is beyond the skill level of an

ordinary skilled artisan. See KSR, 550 U.S. at 417; Pet. 48–49; Ex. 1009

¶ 257.

Once again, in an attempt to explain why modifying Johnson ’950’s

home monitoring system in this manner would have been uniquely

challenging or otherwise beyond the skill level of an ordinary skilled artisan,

Vivint directs us to thirty-nine (39) paragraphs of supporting testimony from

its declarant, Mr. Cole, which spans roughly sixteen (16) pages of his

Declaration. See PO Resp. 51–62 (citing Ex. 2026 ¶¶ 310–349). These

sixteen pages of Mr. Cole’s Declaration are entitled to little, if any, weight

because they were not presented and developed adequately in the Patent

Owner Response, itself. Nonetheless, even when weighing the arguments

presented by Vivint in its Petition that correspond to these pages of Mr.

Cole’s Declaration, we do not agree with Vivint’s assertions for the

following reasons.

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We do not agree with Vivint’s argument that combining the teachings

of Johnson ’950, Moriya and Umbreit would impose undue security risks on

Johnson ’950’s home monitoring system. See PO Resp. 51–55. As

Alarm.com explains its Reply, Umbreit is directed to providing each user

with separate user accounts, each with its own unique access code. See Pet.

Reply 20–23 (citing Ex. 1004, 6:17–22, 6:27–30, 6:64–66). We are not

persuaded that incorporating Umbreit’s scheme of using unique access codes

that are associated with particular levels of access into Johnson ’950’s home

monitoring system would result in undue security risks. Instead, in our

view, implementing this type of access restriction in Johnson ’950’s home

monitoring system would improve security—not introduce additional

security risks, as asserted by Vivint.

We also do not agree with Vivint’s argument that Alarm.com’s

rationale to combine the teachings of Johnson ’950, Moriya, and Umbreit

must explain how or why one of ordinary skill in the art would have

modified or combined the teachings of Umbreit with those of Moriya. See

PO Resp. 55–58. As we explained above in the context of independent

claims 1 and 16, Johnson ’950’s home monitoring system teaches the entire

system architecture required by the challenged claims. See supra Section

II.B.5. Alarm.com argues—and we agree—that one of ordinary skill in the

art would have understood that Johnson ’950’s home monitoring system

may be modified to include both Moriya’s formatting technique and

Umbreit’s access restrictions and corresponding website customization

techniques—both of which are obvious improvements in their own right

because they add certain functionality to Johnson ’950’s home monitoring

system that was not otherwise present.

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Based on our review of the Petition and supporting evidence, we do

not understand Alarm.com to assert that its proffered combination is

predicated on modifying or combining the teachings of Moriya with those of

Umbreit, or vice-versa. To support its argument that Alarm.com must

provide such an explanation, Vivint cites to a non-precedential Board

decision for the proposition that “further modification of a modifying

reference” is improper hindsight. PO Resp. 57 (citing Ex parte Stefanic, No.

2009-007463, 2010 WL 3448894, at *2 (BPAI Aug. 31, 2010)).

Alarm.com’s proffered combination, however, does not rely on a “further

modification of a modifying reference.” That is, Alarm.com’s proffered

combination is not based on further modification of Moriya or Umbreit

(i.e., the modifying references), but rather Alarm.com’s proffered

combination is based entirely on modifications of Johnson ’950 (i.e., the

primary reference). In particular, Alarm.com relies on Johnson ’950’s home

monitoring system, which teaches the entire system architecture required by

the challenged claims, and merely advocates improving this system by

incorporating the techniques (i.e., additional functionalities) taught by

Moriya and Umbreit.

Lastly, we do not agree with Vivint’s arguments that Alarm.com

engages in impermissible hindsight reconstruction and relies upon generic

and conclusory statements from its declarant, Dr. Rhyne. See PO Resp. 58–

62. As we explained above, Alarm.com and Dr. Rhyne provide several

reasons as to why it would have been obvious to one of ordinary skill in the

art to combine the teachings of Johnson ’950, Moriya, and Umbreit. See Pet.

22–26, 48–49; Ex. 1009 ¶¶ 59, 257. These reasons are neither generic nor

conclusory because they are directed specifically to subject matter at issue in

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dependent claims 6–8, 25, and 33, and there is a sufficient basis in the record

to support each reason. As a result, instead of presenting reasoning that is

based on impermissible hindsight reconstruction, as asserted by Vivint,

Alarm.com has articulated sufficient reasoning with rational underpinnings

to support its assertion that modifying Johnson ’950’s home monitoring

system to include the techniques disclosed by Moriya and Umbreit would

have improved this system (e.g., by accommodating the different display

capabilities of different terminals and by improving security by issuing

access codes unique to each user).

6. Summary

Based on the record developed during trial, we conclude that

Alarm.com has demonstrated by a preponderance of the evidence that the

subject matter of dependent claims 6–8, 25, and 33 would have been obvious

over the combination of Johnson ’950, Moriya, and Umbreit.

D. Obviousness Based on the Combined Teachings of

Johnson ’950, Moriya, and Johnson ’336

Alarm.com contends that claim 14 of the ’727 patent is unpatentable

under § 103(a) over the combination of Johnson ’950, Moriya, and Johnson

’336. Pet. 52–55. Alarm.com explains how this proffered combination

teaches the subject matter of this challenged claim. Id. Alarm.com relies

upon the Declaration of Dr. Rhyne to support its positions. Ex. 1009

¶¶ 281–292. Apart from directing us to the same arguments it presented for

independent claim 1, Vivint does not address separately Alarm.com’s

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explanations and supporting evidence with respect to dependent claim 14.

PO Resp. 65.

We begin our analysis with a brief overview of Johnson ’336, and

then we address Alarm.com’s contentions with respect to dependent claim

14.

1. Johnson ’336 Overview

Johnson ’336 generally relates to a system and method for the remote

monitoring and control of property, such as vacation homes. Ex. 1007,

1:15–20. The remote monitoring system illustrated in Figure 1 of Johnson

’336 includes transducer control module 14 and wide area network

(“WAN”) 14 that may be wired, wireless, or a combination of both. Id. at

14:7–9, Fig. 1. Wireless WANs include wireless Ethernet (IEEE 802.11),

cellular telephones, radio-telephone systems, and commercially available

satellite-based communications systems. Id. at 14:12–15.

2. Claim 14

Dependent claim 14 recites “wherein said management facility

transmits said second control information to said server via a mobile

communication network.” Ex. 1001, 35:52–55.

In its Petition, Alarm.com relies upon the combined teachings of

Johnson ’950 and Johnson ’336 to account for this limitation. Pet. 55. In

particular, Alarm.com contends that Johnson ’950’s control unit 30

communicates with data center 20 through global communication network

12 that uses a conventional communications system or some “other

communications system.” Id. (citing Ex. 1003, 4:55–61). Alarm.com then

turns to Johnson ’336 as evidence that the “other communications system”

disclosed in Johnson ’950 may be a wireless WAN that supports cellular

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telephones. Id. (citing Ex. 1007, 14:7–15). Alarm.com also presents a

rationale to combine the teachings of Johnson ’950 and Johnson ’336. Id. at

54–55 (citing Ex. 1007, 14:12–15, 26:25–28; Ex. 1009 ¶ 288).

Vivint does not address separately Alarm.com’s explanations and

supporting evidence with respect to dependent claim 14. See generally PO

Resp. 65. We have reviewed Alarm.com’s explanations and supporting

evidence, including its argument as to why a person of ordinary skill in the

art would have had a sufficient reason to combine or modify the teachings of

Johnson ’950 with those of Moriya and Johnson ’336, and we agree with and

adopt Alarm.com’s analysis. Pet. 52–55. Based on the record developed

during trial, we conclude that Alarm.com has demonstrated by a

preponderance of the evidence that the subject matter of dependent claim 14

would have been obvious over the combination of Johnson ’950, Moriya,

and Johnson ’336.

E. Obviousness Based on the Combined Teachings of

Johnson ’950, Moriya, and Menard

Alarm.com contends that claim 17 of the ’727 patent is unpatentable

under § 103(a) over the combination of Johnson ’950, Moriya, and Menard.

Pet. 56–59. Alarm.com explains how this proffered combination teaches the

subject matter of this challenged claim. Id. Alarm.com relies upon the

Declaration of Dr. Rhyne to support its positions. Ex. 1009 ¶¶ 293–303.

Apart from directing us to the same arguments it presented for independent

claim 16, Vivint does not address separately Alarm.com’s explanations and

supporting evidence with respect to dependent claim 17. PO Resp. 65.

We begin our analysis with a brief overview of Menard, and then we

address Alarm.com’s contentions with respect to dependent claim 17.

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1. Menard Overview

Menard generally relates to detection systems and, in particular, to the

use of a personal communication device with response in central station

monitoring of security systems. Ex. 1005, 1:13–16. In one embodiment, the

system connects prospective users of a security system either directly or

wirelessly to a central station system, such that an alarm may be verified or

cancelled immediately with the central station. Id. at 2:23–29, 4:17–23,

Fig. 1. If the central station receives a cancellation of the alarm from the

user’s personal communication device, it may avoid dispatching an

emergency agency or, perhaps, recall the emergency agency if the dispatch

already occurred. Id. at 2:29–31, 4:17–23, Fig. 1 (Path C).

2. Claim 17

Dependent claim 17 recites “wherein said method further comprising

the step of said management facility transmitting said alarm to a

predetermined notification place when transmittal of said alarm to said

predetermined notification place is elected on the basis of a prompt

displayed as part of said display information.” Ex. 1001, 36:42–48.

In its Petition, Alarm.com contends that Menard teaches this

limitation because it connects a user of a security system to a central station

so that an alarm may be verified or cancelled with the central station.

Pet. 58 (citing Ex. 1005, 2:23–26, Fig. 1). Alarm.com further argues that the

central station receives verification information wirelessly from a user’s

personal communication device and, if no such verification information is

received from the user, the dispatch process will continue without an

opportunity for intervention from the user. Id. at 58–59 (citing Ex. 1005,

4:17–22).

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Alarm.com further argues that it would have been obvious to a person

of ordinary skill in the art to modify Johnson ’950’s home monitoring

system to include Menard’s technique of sending a user a prompt to notify

the police or another response service when an alarm condition occurs. Id.

at 57. Alarm.com then provides three justifications for making this

proffered combination, one of which being that the problem of false alarms

creating needless expense and worry for the homeowner was well-known in

the home security and automation industry in the 2000 time frame. Id. at

57–58 (citing Ex. 1009 ¶ 298).

Vivint does not address separately Alarm.com’s explanations and

supporting evidence with respect to dependent claim 17. See generally PO

Resp. 65. We have reviewed Alarm.com’s explanations and supporting

evidence, including its argument as to why a person of ordinary skill in the

art would have had a sufficient reason to combine or modify the teachings of

Johnson ’950 with those of Moriya and Menard, and we agree with and

adopt Alarm.com’s analysis. Pet. 56–59. Based on the record developed

during trial, we conclude that Alarm.com has demonstrated by a

preponderance of the evidence that the subject matter of dependent claim 17

would have been obvious over the combination of Johnson ’950, Moriya,

and Menard.

F. Vivint’s Updated Motion for Observation

Vivint filed an Updated Motion for Observation on the cross-

examination testimony of Alarm.com’s declarant, Dr. Rhyne (Ex. 1031).

Obs. 1–12. Alarm.com, in turn, filed a Response. Obs. Resp. 1–13. To the

extent Vivint’s Updated Motion for Observation pertains to testimony

purportedly impacting Dr. Rhyne’s credibility, we have considered Vivint’s

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observations and Alarm.com’s responses in rendering this Final Written

Decision, and we have accorded Dr. Rhyne’s reply testimony appropriate

weight where necessary. See Obs. 1–12; Obs. Resp. 1–13.

III. CONCLUSION

Alarm.com has demonstrated by a preponderance of the evidence that

(1) claims 1–5, 9, 15, 16, 18, 22–24, 26–32, and 34–38 of the ’727 patent are

unpatentable under § 103(a) over the combination of Johnson ’950 and

Moriya; (2) claims 6–8, 25, and 33 of the ’727 patent are unpatentable under

§ 103(a) over the combination of Johnson ’950, Moriya, and Umbreit;

(3) claim 14 of the ’727 patent is unpatentable under § 103(a) over the

combination of Johnson ’950, Moriya, and Johnson ’336; and (4) claim 17

of the ’727 patent is unpatentable under § 103(a) over the combination of

Johnson ’950, Moriya, and Menard.

IV. ORDER

In consideration of the foregoing, it is

ORDERED that claims 1–9, 14–18, and 22–38 of the ’727 patent are

held to be unpatentable; and

FURTHER ORDERED that, because this is a Final Written Decision,

parties to this proceeding seeking judicial review of our decision must

comply with the notice and service requirements of 37 C.F.R. § 90.2.

IPR2015-01977

Patent 6,924,727 B2

72

For PETITIONER:

William H. Mandir

Brian K. Shelton

Sughrue Mion PLLC

wmandir@sughrue.com

bshelton@sughrue.com

Roger Brooks

Teena-Ann V. Sankoorikal

Marc J. Khadpe

Cravath, Swaine & Moore LLP

rgbrooks@cravath.com

tsankoor@cravath.com

mkhadpe@cravath.com

For PATENT OWNER:

Robert Greene Sterne

Jason D. Eisenberg

Lestin L. Kenton, Jr.

Sterne, Kessler, Goldstein & Fox P.L.L.C.

rsterne-PTAB@skgf.com

jasone-PTAB@skgf.com

lkenton-PTAB@skgf.com