PTAB

IPR2016-00173

Alarm.com Incorporated v. Vivint, Inc.

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1. Case Identification

2. Patent Overview

  • Title: Electronic Message Delivery System
  • Brief Description: The ’123 patent describes a system for remotely monitoring equipment, such as HVAC systems, using sensors. The system sends electronic messages to designated communication devices (e.g., email, pager) based on a user-defined "message profile" that specifies routing instructions when sensor data indicates a particular condition or event.

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 asserted that Shetty disclosed the core functionality of the ’123 patent. Shetty teaches a method for remotely monitoring machines (e.g., earthmoving equipment) by sensing events, delivering event signals to a remote site (a "data manager" or server), comparing the signals to a user-defined profile, and sending a notification if the signals match the profile. Petitioner argued Shetty’s disclosure of monitoring machine parameters like "engine oil temperature" is analogous to the ’123 patent's monitoring of HVAC equipment. The user profile in Shetty defines which events trigger a notification and the method of notification (e.g., email, pager), mapping directly to the "message profile" and "routing instructions" of independent claims 1 and 13.
    • Motivation to Combine (for §103 grounds): The argument centered on POSITA knowledge. Petitioner contended that a person of ordinary skill in the art (POSITA), reading Shetty’s disclosure of a user interface for accessing the profile database, would have understood its purpose was to configure the profiles. It would have been obvious and technically straightforward to extend Shetty’s user access to allow for remote configuration of the profiles, thereby rendering the remote configuration limitation obvious.
    • Key Aspects: Petitioner argued that Shetty’s emphasis on customizable user profiles and remote access, combined with a POSITA's general knowledge, would make the small inventive step of enabling remote configuration an obvious design choice.

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 alone did not teach or suggest remote configuration of message profiles. Petitioner argued Levac explicitly taught this missing element. Levac discloses a messaging system where users can remotely create and submit message files (termed ".msa files," analogous to Shetty’s "user profiles") via a TCP/IP interface. These .msa files specify message content, trigger conditions, and destination parameters, including the type of communication device (e.g., pager, fax, email).
    • Motivation to Combine (for §103 grounds): A POSITA would combine Levac with Shetty because Levac provided specific implementation details for enhancing the core functionality of Shetty. Since Levac’s .msa file performed the same role as Shetty’s "user profile," a POSITA would have been motivated to incorporate Levac’s teachings on remote configuration and specifying message content to improve the utility and user-customization of the Shetty system.
    • Expectation of Success (for §103 grounds): Petitioner asserted success was expected because both systems operated on the same principles of event-triggered, profile-based notifications, and incorporating Levac’s remote configuration features into Shetty’s system involved 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 addressed dependent claims requiring "supervision"—the periodic generation of "normal status messages" to confirm system integrity. Petitioner argued Britton disclosed this exact technique. Britton teaches a "communication path integrity supervision system" where remote units send periodic "check-in" messages to a central station. If a check-in message is missed, the central station generates an alert, allowing it to distinguish between a lack of alarms (normal operation) and a communication failure. Britton further teaches including an "Account Number" in the check-in message, analogous to the "identification code" required by the claims.
    • Motivation to Combine (for §103 grounds): A POSITA would combine Britton with the Shetty/Levac system to solve a well-known problem in remote monitoring: the inability to know if silence from a sensor means conditions are normal or the system is malfunctioning. Britton offered a proven, compatible solution that relied on one-way communication from the remote unit, fitting perfectly with Shetty’s architecture. This would improve the overall reliability of the combined system.

4. Key Claim Construction Positions

  • Term: “[M]essage profile containing outgoing message routing instructions” (claims 1 and 13).
  • Petitioner’s Proposed Construction: Petitioner proposed this term be construed as “information identifying a communications device or devices to receive an outgoing message from the computer server.”
  • Rationale: Petitioner argued this construction is supported by the claim language itself, which distinguishes the "message profile" from other parameters. A broader interpretation that required the profile to also specify when and how to send messages would be inconsistent with dependent claims 5 and 16, which add these very limitations. Such a broad construction of the independent claim would render those dependent claims redundant.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-20 of the ’123 patent as unpatentable.