SecureNet Technologies LLC v. iControl Networks Inc

1. Case Identification

• Case #: IPR2016-01919
• Patent #: 8,473,619
• Filed: September 30, 2016
• Petitioner(s): SecureNet Technologies, LLC
• Patent Owner(s): iControl Networks, Inc.
• Challenged Claims: 1-9, 12-16, 19, 23-28, 32, 34, 42-47, 54-57, and 59-62

2. Patent Overview

• Title: Forming a Security Network Including Integrated Security System Components and Network Devices
• Brief Description: The ’619 patent describes an integrated security system where a gateway at a user's location automatically discovers and integrates security system components (e.g., sensors) and other network devices (e.g., IP cameras) into a unified network. This network is coupled to a remote security server, allowing for remote monitoring and control of the system.

3. Grounds for Unpatentability

The petition asserted a single ground of unpatentability under 35 U.S.C. §103 for all challenged claims based on one primary combination of prior art.

Ground 1: Obviousness over Wimsatt, Johnson, and Severson

• Claims: 1-9, 12-16, 19, 23-28, 32, 34, 42-47, 54-57, and 59-62 are obvious over Wimsatt in view of Johnson and Severson.
• Prior Art Relied Upon: Wimsatt (Application # 2004/0260427), Johnson (Patent 6,580,950), and Severson (Patent 4,951,029).
• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued this combination teaches every element of the independent claims (1, 60, 61), which are asserted to be substantially identical. Wimsatt was presented as the primary reference, disclosing a local home automation system with a control panel (the claimed "gateway") that can discover and integrate various co-located "controlled devices," including a security system and IP cameras. Petitioner contended Wimsatt teaches most limitations of the local network, including the gateway, the connection management component, and the integration of devices into a network.

    To supply the missing elements, Petitioner argued for modifying Wimsatt with Johnson and Severson. Johnson was cited for its disclosure of an "Internet based home communications system" that explicitly teaches using a remote data center server (the claimed "security server") to allow a homeowner to monitor and control home systems, including security sensors and cameras, from a distant location via a web interface. Petitioner mapped Johnson's remote server to the claimed "security server at a second location" and its web page to the claimed user "interface." Johnson also provided an explicit disclosure of "security sensors" to supplement Wimsatt's more general disclosure.

    Severson was introduced to teach the specific limitation of automatically discovering individual security system components (e.g., sensors). While Petitioner argued Wimsatt's Universal Plug-and-Play functionality inherently suggested this, Severson was used to explicitly disclose a security system controller that can "self-learn" each of its sensors without human intervention, thereby reducing installation time and errors. Together, Petitioner asserted the combined system would include a local gateway that auto-discovers and integrates security components, communicates with a remote server, processes data from local and remote sources, and allows remote user control.

  • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would have been motivated to combine the references to achieve predictable benefits. A POSITA would combine Johnson with Wimsatt to add the highly desirable and commercially valuable feature of remote monitoring and control to Wimsatt's local system. Johnson's system was presented as a direct solution to the known problem of homeowners needing to monitor their property while away. Furthermore, a POSITA would integrate Severson's auto-discovery of sensors into the Wimsatt/Johnson system to improve its functionality by simplifying the installation process, a known challenge with multi-component systems. This would predictably result in an easier setup and reduced installer error.

  • Expectation of Success: Petitioner asserted that a POSITA would have had a reasonable expectation of success in making this combination. The integration involved applying known networking principles (remote server access as in Johnson) and established device management techniques (automatic sensor discovery as in Severson) to a conventional home automation system (Wimsatt). The result would have been the predictable sum of their parts: a remotely accessible, easily installed security system.

  • Key Aspects: The core of the petition's argument was that the ’619 patent merely combined three well-known features in the security and home automation field: a local control hub, remote internet access, and automatic device discovery. Petitioner also argued that independent claims 60 and 61 are substantially identical to claim 1 and are rendered obvious for the same reasons by the same combination of references.

4. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-9, 12-16, 19, 23-28, 32, 34, 42-47, 54-57, and 59-62 as unpatentable.