SecureNet Technologies, LLC v. Icontrol Networks, Inc.

1. Case Identification

• 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 for coupling a pre-existing (legacy) alarm system to an external network, such as the internet. The system uses a communications processor that connects directly to the alarm system’s keypad bus, allowing it to provide multiple communication modes (e.g., broadband, cellular) for remote monitoring and control without replacing the original alarm panel.

3. Grounds for Unpatentability

Ground 1: Obviousness over a Single Reference - 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:
  • Prior Art Mapping: Petitioner asserted that Simon teaches an integrated security and communications system that discloses every element of the challenged claims. Simon’s system includes a controller (the claimed “alarm processor”), a keypad (the claimed “keypad processor”), and a bus connecting them (the claimed “keypad bus”). Petitioner argued that Simon's separate telephone interface unit and data interface unit, both connected to the bus, collectively function as the claimed “communications processor” providing a plurality of communication modes (telephone and internet) to an external network. Dependent claims were allegedly met, for instance, because Simon's bus uses a serial digital protocol.
  • Motivation to Combine (for §103 grounds): Although this ground relies on a single reference, Petitioner’s core argument rested on the contention that a person of ordinary skill in the art (POSITA) would find it obvious to view Simon’s separate telephone and data interface units as a single, combined “communications processor.” The motivation was presented as a simple design choice to achieve benefits like lower cost and easier coordination between communication modes. Petitioner contended that combining multiple communication interfaces into a single unit was a well-known practice at the time.
  • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success in implementing Simon’s interface functions within a single logical unit, as it represented a common design trade-off with predictable results and no change in overall functionality.

Ground 2: Obviousness over a Combination of References - 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:
  • Prior Art Mapping: This ground built upon the system disclosed in Simon. Petitioner argued that while Simon teaches a system with redundant communication links (telephone and internet), it is Pickell that explicitly teaches monitoring the status and integrity of such redundant links in a networked safety system. The combination of Simon’s hardware with Pickell’s monitoring and selection logic allegedly rendered the remaining dependent claims—which add functionality for monitoring communication modes and selecting one in response—obvious.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Pickell’s monitoring and selection teachings with Simon’s system to improve its reliability. Because Simon’s alarm system already used redundant communication links, adding a known technique from Pickell to monitor those links and automatically select an operational one would be a logical and predictable improvement to ensure alarm signals are successfully transmitted during an emergency.
  • Expectation of Success (for §103 grounds): The combination was argued to be straightforward and predictable. Applying Pickell's monitoring method to Simon's existing dual-pathway system would predictably result in a more robust alarm system, which was the stated goal of both references.

4. Key Claim Construction Positions

Petitioner proposed constructions for several means-plus-function terms, which were central to its obviousness arguments. The key positions were:

• "Means for receiving a first signal on a keypad bus" (claim 21): Petitioner argued the corresponding structure in the '635 patent is the “communications processor 220.” This construction was critical to allow mapping onto Simon’s combined interface units, which Petitioner argued was the structural equivalent of the communications processor.
• "Means for transmitting a second signal" (claim 21), "Means for monitoring" (claim 24), and "Means for selecting" (claim 25): For these terms, Petitioner similarly identified the corresponding structure as the “communications processor 220” (either alone or in combination with its associated interfaces). This consistent identification was foundational to Petitioner's argument that a single, multi-functional processor in the prior art could satisfy all these limitations.

5. Key Technical Contentions (Beyond Claim Construction)

• A central technical contention underpinning all grounds was that a POSITA would view Simon’s physically separate telephone interface unit 21 and data interface unit 22 as a single, logical "communications processor." Petitioner argued this was not a patentable advance but a simple implementation choice, consistent with the ’635 patent’s own flexible description of how components can be “associated” to achieve a desired function. This interpretation was necessary for Simon to be considered a disclosure of a single communications processor that handles a "plurality of communication modes."

6. Relief Requested

• Petitioner requested the institution of an inter partes review of claims 1, 2, 6-10, 14-18, and 21-25 of the ’635 patent, and a final determination that these claims are unpatentable and must be cancelled.