SecureNet Technologies LLC v. iControl Networks Inc

1. Case Identification

• Case #: IPR2016-00959
• Patent #: 7,855,635
• Filed: April 28, 2016
• Petitioner(s): SecureNet Technologies, LLC
• Patent Owner(s): iControl Networks, Inc.
• Challenged Claims: 1, 2, 6-10, 14-18, and 21-25

2. Patent Overview

• Title: Method and System for Coupling an Alarm System to an External Network
• Brief Description: The ’635 patent describes a communication system that connects a legacy alarm system to an external network. The system uses a communications processor that connects to the alarm system’s existing keypad bus to intercept signals and transmit them to a remote server using multiple communication modes (e.g., broadband, cellular).

3. Grounds for Unpatentability

Ground 1: Obviousness over Simon - Claims 1, 2, 6, 9, 10, 14-16, and 21-23 are obvious over Simon.

• Prior Art Relied Upon: Simon (Patent 6,928,148).
• Core Argument for this Ground: Petitioner argued that Simon, which discloses an integrated security and communications system, teaches every element of the challenged claims. The key assertion is that Simon's separate telephone interface unit and data interface unit together constitute the claimed "communications processor" and that a person of ordinary skill in the art (POSITA) would have found it obvious to combine these discrete components into a single functional unit for cost and efficiency benefits.
  • Prior Art Mapping: Petitioner asserted that Simon's "integrated security and communications system" meets the limitations of independent claim 1. Simon’s controller 11, keypad 16, and interconnecting bus 12 were mapped to the claimed "alarm processor," "keypad processor," and "keypad bus," respectively. Petitioner contended that the claimed "communications processor" corresponds to the combination of Simon's telephone interface unit 21 and data interface unit 22, which are both connected to the bus 12. These two units provide a "plurality of communication modes"—a standard telephone connection and an internet connection—for communicating with an external central monitoring station. Petitioner argued that the remaining dependent claims were also disclosed, such as the keypad bus using a serial digital protocol (claim 2) and the communication modes comprising PSTN and broadband (claim 6). Method claim 14 and means-plus-function claim 21 were argued to be substantively identical to claim 1, with Simon’s structures performing the recited functions.
  • Motivation to Combine (for §103 grounds): Although this is a single-reference ground, the motivation focused on combining functional blocks within Simon. Petitioner argued a POSITA would be motivated to consolidate Simon's separate telephone and data interface units into a single communications unit to reduce cost, share components like a power supply and bus interface, and enable easier coordination between the communication modes. This was presented as a simple and predictable design choice.

Ground 2: Obviousness over Simon in view of Pickell - Claims 7, 8, 17, 18, 24, and 25 are obvious over Simon in view of Pickell.

• Prior Art Relied Upon: Simon (Patent 6,928,148) and Pickell (Application # 2004/0153701).
• Core Argument for this Ground: This ground addressed claims requiring monitoring the status of the communication modes and selecting a mode based on that monitoring. Petitioner argued that Simon provides the foundational multi-mode communication system, and Pickell explicitly teaches the missing element: monitoring the integrity of redundant communication links in a security system to ensure they are operational.
  • Prior Art Mapping: Simon was asserted to teach the base system of claim 1, including a communications processor with multiple modes (telephone and internet). Pickell was cited for its disclosure of monitoring redundant communication links to confirm their operational status and switching to a redundant link if a fault is detected in the active one. The combination, therefore, taught a system where Simon's communications processor would be further configured to monitor the status of its telephone and internet links, as required by claim 7. This logic was extended to claim 8, where the system selects an operational communication mode in response to the monitoring, a direct application of Pickell's failover strategy.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Pickell's known monitoring technique with Simon's multi-link alarm system to improve its reliability. The motivation was to apply a known technique to a known device to yield the predictable result of a more robust alarm system. By monitoring link status, the system could ensure an operable communication path exists in an emergency and automatically select the best available link, which is a critical function for a security system.
  • Expectation of Success (for §103 grounds): Petitioner argued a POSITA would have a high expectation of success, as the combination involved applying a well-understood monitoring and failover concept to a standard multi-channel communication system to achieve the expected benefit of enhanced reliability.

4. Key Claim Construction Positions

• Petitioner argued that several claims should be interpreted under 35 U.S.C. § 112 ¶ 6 (pre-AIA) as means-plus-function limitations. The proposed constructions were central to mapping the prior art.
• "Means for receiving a first signal on a keypad bus" (claim 21): The function was identified as "receiving a first signal on a keypad bus." The corresponding structure in the ’635 patent was identified as the "communications processor 220."
• "Means for transmitting a second signal" (claim 21): The function was "transmitting a second signal to an external network using a selected one of a plurality of communication modes." The corresponding structure was the "communications processor 220" alone or in combination with the "cellular interface 230" and/or "network interface 250."
• "Means for monitoring a status..." (claim 24): The function was "monitoring a status of each of the plurality of communication modes." The corresponding structure was identified as the same as the "means for transmitting."
• "Means for selecting..." (claim 25): The function was "selecting the selected one of the plurality of communication modes in response to said monitoring." The corresponding structure was identified as the "communications processor 220."

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1, 2, 6-10, 14-18, and 21-25 of the ’635 patent as unpatentable.