Alarm.com Inc. v. Vivint, Inc.

1. Case Identification

• Case #: Unassigned (Related to IPR2015-02003)
• Patent #: 6,462,654
• Filed: November 6, 2015
• Petitioner(s): Alarm.com Inc.
• Patent Owner(s): Vivint, Inc.
• Challenged Claims: 9-28

2. Patent Overview

• Title: Electronic Message Delivery System Utilizable in the Monitoring of Remote Equipment and Method of Same
• Brief Description: The ’654 patent describes a system for monitoring remote equipment, such as HVAC systems. An interface unit connected to the equipment sends messages to a central computer server upon detecting an abnormality or, in some cases, a normal status; the server then forwards an exception or notification message to user-specified devices (e.g., pagers, email) according to a remotely configurable "message profile."

3. Grounds for Unpatentability

Ground 1: Claims 9-14 and 27 are obvious over Shetty, Garton, and/or Levac.

• Prior Art Relied Upon: Shetty (Patent 5,808,907), Garton (Patent 5,134,644), and Levac (Patent 6,034,970).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Shetty disclosed the core architecture of the ’654 patent, including monitoring "mobile machines" with sensors, an on-board "information manager" (the claimed "interface unit") that detects "events" and sends signals to a remote "data manager" (the claimed "computer server"). Shetty’s server compared these events to user-defined "profiles" to trigger notifications via email, pager, or fax. Petitioner contended that Levac taught the specific limitation of remotely configuring these user profiles over a network like the Internet, a feature not explicitly detailed in Shetty. Garton was cited for disclosing a multiplexer (termed a "relay") for selectively routing communications over multiple paths (e.g., telephone or radio), which corresponds to the structure for the claimed "message generating mechanism."
  • Motivation to Combine: A POSITA would combine Shetty and Levac because Levac provided detailed implementation for the very functionality Shetty sought to provide—customizable, remote notifications based on specific triggers. Both systems were designed for similar purposes and were architecturally compatible. A POSITA would incorporate Garton's teachings to add communication path redundancy, a known and desirable feature in monitoring systems to ensure reliability, by using a well-understood component like a relay/multiplexer.
  • Expectation of Success: Combining these references involved applying known technologies (remote configuration, communication redundancy) to a known system type (remote monitoring) to achieve the predictable result of a more robust and user-friendly system.

Ground 2: Claims 15-26 and 28 are obvious over Shetty, Levac, Garton, and Britton.

• Prior Art Relied Upon: Shetty (Patent 5,808,907), Levac (Patent 6,034,970), Garton (Patent 5,134,644), and Britton (Patent 6,040,770).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon Ground 1 to address claims directed to "normal status messages" (i.e., periodic "check-in" messages) rather than just exception messages. While Shetty, Levac, and Garton provided the system's core, Petitioner argued Britton supplied the missing element of supervising communication link integrity. Britton taught a system where a "premise panel" (interface unit) sends periodic "check-in" messages to a central station (server). If a check-in message is not received within a specified time, the server generates an "alert" signal, thereby distinguishing a communication failure from a simple lack of alarm conditions. Britton’s server then compares a list of expected check-ins with received messages to identify failed units, mapping directly to the claimed "means for comparing and identifying."
  • Motivation to Combine: A POSITA would be motivated to incorporate Britton's supervision system into the Shetty/Levac/Garton framework to solve a well-known problem in the art: the inability to distinguish between a silent, properly-functioning system and a system that has failed silently due to a communication breakdown. Britton’s solution was particularly attractive as it did not require two-way polling from the central server, making it compatible with the one-way communication architecture described in Shetty.
  • Expectation of Success: Integrating a known method for supervising communication integrity (Britton) into a remote monitoring system (Shetty) was a straightforward application of known principles to improve system reliability, a predictable and expected outcome.

4. Key Claim Construction Positions

• “[M]essage generating mechanism” (claims 9-28): Petitioner argued this term, lacking sufficient structural language, should be treated as a means-plus-function term under §112, ¶ 6. The claimed function was "generating and forwarding messages." Based on the specification, Petitioner identified the corresponding structure as a "CPU 804, multiplexer 805, and radio 801," where the CPU executes a specific algorithm for message creation and forwarding. This construction was central to mapping Garton’s "relay" to the multiplexer component.
• “[M]eans for comparing and identifying” (claims 16 & 24): This was also identified as a means-plus-function limitation. The function was comparing a list of all interface units with a list of units that sent a normal status message to identify those that failed to check in. Petitioner identified the corresponding structure as a "CPU of the computer server executing" the "missing message subroutine" described in the specification. This construction was key to applying Britton's teachings of a server processing check-in messages.

5. Key Technical Contentions (Beyond Claim Construction)

• Indefiniteness of Claim Terms: Petitioner contended that the limitation “[M]eans for generating and forwarding a server message generator...” (claims 16 & 24) was indefinite and nonsensical as drafted. The petition argued that the claim recites forwarding a "generator" rather than a message and that the ’654 patent provides no corresponding structure or functional description for this concept. This argument asserted that the claim term was incomprehensible and unpatentable, even beyond obviousness challenges.

6. Arguments Regarding Discretionary Denial

• Grounds Not Cumulative of Co-Pending Petition: Petitioner argued that the Board should not exercise its discretion to deny institution based on a co-pending IPR on the same patent (IPR2015-02003). The petition asserted that the grounds were not cumulative because the prior petition relied primarily on a different reference (Scadaware), which disclosed the claimed limitations, such as "message profiles" and "sensors," in a different manner and with a different level of detail than the Shetty, Garton, Levac, and Britton references used in the instant petition.

7. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 9-28 of the ’654 patent as unpatentable.