ipDataTel, LLC v. ICN Acquisition, LLC

1. Case Identification

• Case #: Unassigned
• Patent #: 9,141,276
• Filed: September 28, 2018
• Petitioner(s): ipDataTel, LLC et al.
• Patent Owner(s): ICN Acquisition, LLC
• Challenged Claims: 1, 2, 5, 7, 8, 11, 13, 14, and 17

2. Patent Overview

• Title: Integrated Interface for Mobile Device
• Brief Description: The ’276 patent describes an integrated security system that provides broadband and mobile access for remote control. The system enables users with mobile devices running web browsers to monitor and control home security system devices via web pages served by the system.

3. Grounds for Unpatentability

Ground 1: Claims 1, 7, and 13 are obvious over Johnson and BeAtHome.

• Prior Art Relied Upon: Johnson (Patent 6,580,950) and BeAtHome (a user guide published in 2000).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Johnson and BeAtHome collectively disclose all features of independent claims 1, 7, and 13. Both references teach a monitoring system for a premise with sensors, which communicates with a remote data center/web server. Users can access the system via mobile devices (e.g., PDAs, web-connected phones) running a web browser to monitor status and issue commands. Petitioner contended that the login procedure described in both references (requiring a username and password to access a control page) constitutes the claimed "synchronization to associate" the mobile device with the monitoring system. After this synchronization, the references allegedly disclose receiving sensor data on the mobile device and displaying status and control interface areas.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Johnson and BeAtHome because they describe substantially the same system, with BeAtHome representing a commercial embodiment of the system taught in Johnson. The striking similarity, including the use of "BeAtHome" in the website URL of both, would have motivated a POSITA to view them as a single system, making the combination obvious and predictable.
  • Expectation of Success: A POSITA would have had a high expectation of success, as combining their features would involve routine engineering skills to achieve a predictable result.

Ground 2: Claims 1, 7, and 13 are obvious over Johnson and BeAtHome in view of Dykes.

• Prior Art Relied Upon: Johnson (Patent 6,580,950), BeAtHome (a user guide), and Dykes (Patent 5,872,915).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground incorporated the arguments from Ground 1 and added Dykes to further support the "synchronization" limitation. Dykes was cited for its disclosure of a system providing secure access to a software application from a web browser over the WWW. Dykes explicitly described a two-way exchange of information for authentication, where a web server prompts a user for a userID and password, which is then transmitted back from the browser to establish access.
  • Motivation to Combine: A POSITA would combine the well-known web security and authentication methods taught by Dykes with the remote monitoring system of Johnson and BeAtHome. The motivation was to incorporate a known method for providing secure, predictable access to the system's web-based interface.
  • Expectation of Success: A POSITA could have implemented this modification using routine engineering skills with a high expectation of success.

Ground 3: Claims 2, 8, and 14 are obvious over Johnson and BeAtHome (optionally in view of Dykes) in view of Granade and Artz.

• Prior Art Relied Upon: Johnson (Patent 6,580,950), BeAtHome (a user guide), optionally Dykes (Patent 5,872,915), Granade (Application # 2002/0103881), and Artz (Patent 7,461,120).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground targeted dependent claims requiring at least one application to be "custom-built for the mobile device." Petitioner argued that Granade and Artz teach this limitation. Granade disclosed that mobile applications must often accommodate browsers and presentation methods tailored to different mobile devices, and that manufacturers often create customized versions of standard WAP browsers. Artz was cited for teaching that different computers use different operating system and browser combinations (e.g., Windows/IE vs. MacOS/Safari), which implies that applications are custom-built for specific platforms.
  • Motivation to Combine: A POSITA would be motivated to incorporate custom-built applications into the Johnson/BeAtHome system to ensure functionality across a variety of mobile devices with different display sizes, input modes, and operating systems. This was a known solution to a common problem, as taught by Granade and Artz.
  • Expectation of Success: Applying known application programming techniques to custom-build applications for known mobile device features would have been a predictable endeavor.

Ground 4: Claims 5, 11, and 17 are obvious over Johnson and BeAtHome (optionally in view of Dykes) in view of Monnes and Donner.

• Prior Art Relied Upon: Johnson (Patent 6,580,950), BeAtHome (a user guide), optionally Dykes (Patent 5,872,915), Monnes (Patent 6,459,440), and Donner (Patent 7,392,306).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground targeted dependent claims related to receiving an "alarm event" and "overriding a first application" with a higher-priority alarm. Monnes was cited for teaching the use of pop-up windows on mobile devices to display alarm notifications, which can cover the full screen. Donner was cited for teaching an instant messaging client where a user can set event priorities and receive alerts that override other applications. BeAtHome itself disclosed using instant messaging for notifications.
  • Motivation to Combine: A POSITA would combine the alarm notification and priority-based display features of Monnes and Donner with the Johnson/BeAtHome system. The motivation was to enhance the system's functionality by providing more effective and immediate alarm alerts, which was a known method for improving user experience with predictable results.
  • Expectation of Success: Incorporating these known alert features into the base system would have been a routine and predictable modification.

4. Key Claim Construction Positions

• The petition dedicated significant analysis to the term "synchronization," which was added to the claims during prosecution to provoke an interference and is not expressly defined in the ’276 patent.
• While arguing the term is potentially indefinite, for the purposes of the IPR, Petitioner proposed adopting the construction proposed by the Patent Owner in co-pending litigation.
• Proposed Construction for "synchronization": "two-way exchange of information over an electronic network to establish a communication link between the mobile device and the monitoring system." This construction was deemed the broadest reasonable construction and was used for the obviousness analysis.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1, 2, 5, 7, 8, 11, 13, 14, and 17 of Patent 9,141,276 as unpatentable.