Alarm.com Incorporated v. Vivint, Inc.

1. Case Identification

• Case #: Unassigned (at time of filing)
• Patent #: 6,147,601
• Filed: October 30, 2015
• Petitioner(s): Alarm.com Incorporated
• Patent Owner(s): Vivint, Inc.
• Challenged Claims: 1-2, 4-23, 25-31, and 33-41

2. Patent Overview

• Title: Electronic Message Delivery System Utilizable in the Monitoring of Remote Equipment and Method of Same
• Brief Description: The ’601 patent discloses systems and methods for monitoring remote equipment, such as HVAC systems. The technology involves detecting the state of equipment parameters, communicating an incoming message to a remote computer server upon detecting an abnormality, and forwarding an outgoing exception message to one or more user-specified communication devices based on a remotely configurable message profile.

3. Grounds for Unpatentability

Ground 1: Claims 1-2, 4, 6, 10-13, 15-17, 22-23, 25-27, 29, 33-35, and 38 are obvious over Shetty.

• Prior Art Relied Upon: Shetty (Patent 5,808,907).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Shetty, which discloses a method for remotely monitoring mobile machines like earthmoving equipment, taught the core functionality of the ’601 patent. Shetty disclosed using on-board sensors to detect machine parameters, an "information manager" (analogous to the claimed "interface unit") to generate "event signals" (incoming messages), and a remote "data manager" (computer server) to receive these signals. Shetty’s data manager compared the event signals to a stored "user profile" and sent a "notification signal" to a user if the signals matched the profile, mapping to the claimed system of generating outgoing messages based on a message profile.
  • Motivation to Combine: This ground relies on a single reference. Petitioner asserted that features argued as novel during prosecution of the ’601 patent were, in fact, disclosed or rendered obvious by Shetty. Specifically, Petitioner argued Shetty taught (1) monitoring remote equipment, (2) accommodating multiple users with multiple profiles, and (3) enabling remote user configuration of profiles via a user interface connected to the data manager computer. For any limitations not explicitly disclosed, Petitioner argued they would have been obvious modifications to a person of ordinary skill in the art (POSITA) based on Shetty’s teachings.
  • Expectation of Success: A POSITA would have a high expectation of success in applying Shetty's teachings, as it describes a complete and functional remote monitoring system analogous to that claimed in the ’601 patent.

Ground 2: Claims 1-2, 4, 6, 7, 10-13, 15, 19, 22-23, 25-29, and 33-35 are obvious over Shetty in view of Levac.

• Prior Art Relied Upon: Shetty (Patent 5,808,907) and Levac (Patent 6,034,970).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground serves as an alternative, arguing that if the Board finds Shetty alone does not render the remote configuration limitation obvious, Levac explicitly teaches it. Levac discloses a system for conveying messages from various sources to designated recipients. Critically, Levac taught that users could remotely configure message templates (termed ".msa files," analogous to the claimed "message profile") via a user interface, including over the Internet using TCP/IP. Levac also provided additional detail for dependent claims, such as specifying message content, recipient device types, and time-based delivery rules.
  • Motivation to Combine: A POSITA would combine Shetty and Levac because they address the same technical field of remote notification systems. Levac provided clear implementation details for features like remote and internet-based configuration, which are natural and highly desirable extensions to the customizable user profiles in Shetty’s monitoring system. Incorporating Levac’s advanced configuration features into Shetty’s architecture would have been a straightforward way to enhance its functionality.
  • Expectation of Success: A POSITA would have expected success in combining the references, as Levac’s message configuration and routing system was designed with an open architecture to be compatible with various data sources, such as the event signals generated by a system like Shetty.

Ground 3: Claims 5, 8-9, 20-21, 30-31, 37, and 40-41 are obvious over Shetty and Britton, optionally in view of Levac.

• Prior Art Relied Upon: Shetty (Patent 5,808,907), Britton (Patent 6,040,770), and optionally Levac (Patent 6,034,970).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground targets claims requiring the transmission of periodic "normal status messages" to ensure communication path integrity, a technique known as "supervision." Britton disclosed a "communication path integrity supervision system" for alarm networks that used periodic "check-in" messages from a remote panel to a central station. If the central station failed to receive an expected check-in message, it generated an alert, thereby detecting a communication failure. Britton’s system also taught including an "Account Number" in check-in messages, which corresponds to the claimed equipment ID code.
  • Motivation to Combine: A POSITA would be motivated to add Britton’s supervision feature to Shetty’s system to solve a well-known problem: the inability to distinguish between silence from a remote unit due to normal operation (no alarms) and silence due to a communication or equipment failure. Britton’s "check-in" message system provided an elegant solution that was fully compatible with Shetty’s one-way communication architecture, making it a highly desirable and obvious improvement to enhance system reliability.
  • Expectation of Success: The combination would have been successful because it involved applying a known solution (supervision messages from Britton) to a known problem (unreliable communication) in a known system type (Shetty’s remote monitoring architecture).

• Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 4) for claims 14, 17-18, 36, and 38-39 based on Shetty in view of French (Patent 5,061,916). This ground argued French taught providing highly detailed and customizable fax notifications, including equipment identifiers and alarm data, which would have been obvious to incorporate into Shetty’s system.

4. Key Claim Construction Positions

• Petitioner argued for the construction of two key terms.
• "Message profile containing outgoing message routing instructions" (claims 1, 22): Petitioner contended the broadest reasonable construction is “information identifying a communications device or devices to receive an outgoing message.” It was argued that a narrower interpretation that also required information on when and how to send messages would be inconsistent with the claim language and would render certain dependent claims redundant.
• "Message generating mechanism" (claim 22): Petitioner contended this term is a means-plus-function limitation under 35 U.S.C. §112, ¶ 6 that is indefinite. This argument is detailed further in the section below.

5. Key Technical Contentions (Beyond Claim Construction)

• Indefiniteness of “message generating mechanism”: Petitioner’s central technical contention was that the term "message generating mechanism" in claim 22 is indefinite. It was argued that the term is purely functional, does not recite a definite structure for performing the function of "generating messages," and is not a term understood by a POSITA to connote a particular structure. Petitioner contended that the ’601 patent specification fails to disclose the necessary corresponding structure, such as a specific processor or algorithm at the interface unit, for generating the claimed multi-digit message code.

6. Arguments Regarding Discretionary Denial

• Petitioner argued that the grounds presented in this petition are not cumulative of the grounds stated in a co-pending petition, IPR2015-02004. Petitioner asserted that the prior art references and invalidity theories are substantially different. The instant petition relies primarily on Shetty, whereas the co-pending petition relied on other references (Scadaware, Wewalaarachchi) that allegedly disclosed the claimed subject matter with different architectures and levels of detail. This distinction was raised to argue against discretionary denial under 35 U.S.C. §325(d).

7. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-2, 4-23, 25-31, and 33-41 of the ’601 patent as unpatentable.