PTAB

IPR2016-00173

AlARmCom Inc v. Vivint Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Electronic Message Delivery System
  • Brief Description: The ’123 patent describes a system for remotely monitoring equipment (e.g., HVAC units) using sensors. A computer server receives data from the sensors and, based on a user-defined "message profile," routes electronic messages to specified communication devices (e.g., email, pager) when certain conditions are met.

3. Grounds for Unpatentability

Ground 1: Obviousness over Shetty - Claims 1-4, 6, 10, 13-15, and 17 are obvious over Shetty and the knowledge of a POSITA.

  • Prior Art Relied Upon: Shetty (Patent 5,808,907).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Shetty disclosed all major limitations of the challenged claims. Shetty described a system for remotely monitoring machines (e.g., earthmoving equipment) using on-board sensors. A remote "data manager" (the claimed "computer server") received event signals and compared them to a "user profile" (the claimed "message profile"). If the event matched the profile criteria, a notification was sent to a user-specified device, such as an email, pager, or fax. Petitioner contended that while Shetty disclosed a "user interface" for accessing the profile database, it would have been obvious to a POSITA to extend this access to allow for remote configuration of the profiles, as this is a natural and expected feature of such a customizable system.
    • Motivation to Combine (with POSITA knowledge): A POSITA, recognizing Shetty's emphasis on customizable user profiles and its disclosure of remote access, would be motivated to implement remote configuration of those profiles to enhance user control.
    • Expectation of Success: Petitioner asserted that implementing remote configuration would have been technically straightforward using known techniques.

Ground 2: Obviousness over Shetty and Levac - Claims 1-6, 10, and 13-17 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 was presented as an alternative in case the Board found Shetty did not sufficiently teach or suggest remote configuration of the message profile. Petitioner argued Shetty provided the base system for remote monitoring and notification based on a user profile. Levac was asserted to explicitly teach the remote configuration element. Levac disclosed a messaging system where a user could remotely create and submit an ".msa file" (analogous to the claimed "message profile") via a user interface over a network (TCP/IP). This file specified message triggers, content, and destination devices.
    • Motivation to Combine: A POSITA would combine Levac's teachings with Shetty's system because Levac provided specific implementation details for the core functionality shared by both references. Because Levac’s ".msa file" served the same function as Shetty’s "user profile," a POSITA would have been motivated to incorporate Levac’s superior remote configuration and message customization features into Shetty’s monitoring architecture to improve its functionality.
    • Expectation of Success: Petitioner argued the combination would have presented no technical difficulty.

Ground 3: Obviousness over Shetty, Levac, and Britton - Claims 7-9, 11-12, and 18-20 are obvious over Shetty in view of Levac and Britton.

  • Prior Art Relied Upon: Shetty (Patent 5,808,907), Levac (Patent 6,034,970), and Britton (Patent 6,040,770).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground targeted dependent claims requiring "supervision" functionality: the periodic transmission of "normal status messages" to verify communication path integrity. Petitioner argued the base system of Shetty, as modified by Levac, was made obvious in view of Britton. Britton disclosed a "communication path integrity supervision system" that addressed the known problem of distinguishing system silence (normal) from communication failure. In Britton, monitored premises periodically sent "check-in messages" to a central receiver. If a scheduled message was not received, the system generated an alert. This directly maps to the claims' requirements for periodically generating a normal status message and sending an alert if it is not received. Levac was further cited for its disclosure of a "fourth memory" (a "device driver in-box") for storing outgoing messages, as required by claims 9 and 20.
    • Motivation to Combine: A POSITA would be motivated to add Britton’s supervision feature to the Shetty/Levac system to solve the well-known problem of communication failures rendering a monitoring system unreliable. Britton’s solution was particularly suitable for Shetty’s architecture, which relied on one-way communication from the remote machine to the central server.
    • Expectation of Success: Petitioner contended that integrating these known supervision techniques would have been a routine design choice with a high expectation of success.

4. Key Claim Construction Positions

  • "[M]essage profile containing outgoing message routing instructions" (claims 1, 13): Petitioner proposed the construction "information identifying a communications device or devices to receive an outgoing message from the computer server." Petitioner argued this represents the broadest reasonable construction supported by the claim language. A narrower construction that also required information about when or how to send messages would be improper, as it would render dependent claims (e.g., 5 and 16, which add limitations for specifying device type) redundant.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that the grounds in this petition were not cumulative of those in a co-pending petition, IPR2015-01995. The prior petition relied primarily on a different reference (Scadaware), which disclosed the claimed limitations differently and with varying levels of detail compared to Shetty. For example, Petitioner noted that Shetty more expressly disclosed email and pager notifications, while Scadaware more clearly disclosed equipment identification codes and the sending of normal status messages.

6. Relief Requested

  • Petitioner requests institution of an IPR and cancellation of claims 1-20 of the ’123 patent as unpatentable.