Ring LLC v. SkyBell Technologies Inc

1. Case Identification

• Case #: IPR2019-00445
• Patent #: 9,179,107
• Filed: December 17, 2018
• Petitioner(s): Ring LLC
• Patent Owner(s): Skybell Technologies, Inc.
• Challenged Claims: 12 and 18

2. Patent Overview

• Title: Doorbell Communication System
• Brief Description: The ’107 patent discloses a doorbell system that includes a doorbell, a chime, and a remote computing device (e.g., a smartphone). The system allows a user to select a sound on the remote device and send a corresponding data file to the chime, which then emits the selected sound when the doorbell is pressed.

3. Grounds for Unpatentability

Ground 1: Obviousness over Tylicki and Claiborne - Claim 12

• Prior Art Relied Upon: Tylicki (Application # 2007/0008081) and Claiborne (Application # 2010/0225455).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Tylicki taught a customizable door chime system where a user could select a sound to be played from a list of stored files using a communicatively coupled cellular phone. However, while Tylicki disclosed downloading sound files from a "plurality of peripheral devices," it did not explicitly name a cellular phone as one such device. Claiborne, which addresses similar technology and shares an inventor with Tylicki, remedied this by explicitly teaching the use of a cellular phone to download sound files to a door chime. The combination of Tylicki’s sound selection via a phone and Claiborne’s sound downloading via a phone allegedly rendered all limitations of claim 12 obvious.
  • Motivation to Combine: A POSITA would combine the references to implement Tylicki’s system. When seeking a specific "peripheral device" for downloading sound files as mentioned in Tylicki, a POSITA would have looked to analogous art like Claiborne, which provided a known and predictable solution: using a cellular phone. Petitioner further argued that design efficiency would motivate using the same cellular phone—which Tylicki already taught was connected for user interface functions—to also handle the downloading of sound files, rather than employing a separate device.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because both references taught using common, standardized wireless protocols like Bluetooth to connect the phone to the chime, making the integration straightforward and predictable.

Ground 2: Anticipation by Tylicki - Claim 18

• Prior Art Relied Upon: Tylicki (Application # 2007/0008081).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Tylicki taught every element of claim 18. Tylicki’s “door chime system” included a “doorbell pushbutton” (a button), an electronic chime communicatively coupled to it, and a “user interface” that could be a “cellular phone” (a communication device). This cellular phone was communicatively coupled to the chime system via Bluetooth to configure its features, such as selecting a chime tune. The chime stored digital sound files (a data file) and emitted a sound from its speaker in response to the doorbell button being pressed, thus meeting all limitations of the claim.

Ground 3: Anticipation by Claiborne - Claim 18

• Prior Art Relied Upon: Claiborne (Application # 2010/0225455).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Claiborne also anticipated every element of claim 18. Claiborne disclosed a “door chime system” with a “doorbell pushbutton” (a button) and a chime communicatively coupled to it. The system included a communications port for connecting to a “cellular telephone” (a communication device) to download sound files. This connection communicatively coupled the phone to the chime system. Claiborne’s chime stored the downloaded sound files (a data file) and played a sound through its speaker in response to a visitor pressing the pushbutton, thereby anticipating the claim.

4. Key Claim Construction Positions

• Order of "selecting" and "sending" steps (Claim 12): Petitioner dedicated significant argument to the construction of claim 12, which recites a step of "selecting the sound" and a step of "sending a data file." Petitioner argued that because the claim language does not explicitly require a specific order (e.g., using terms like "in response to"), the steps should not be construed to require that selection must occur before sending. Petitioner contended that under this construction, Tylicki alone discloses the "selecting" step, as it teaches selecting a pre-loaded sound file. However, Petitioner also argued that even if the Board required the steps to be performed in order, the combination of Tylicki and Claiborne would render the claim obvious, as a user would first select which sounds to download (per Claiborne’s customization feature) and then send them to the chime.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise discretionary denial under 35 U.S.C. § 325(d). Although the Examiner listed Tylicki in a "Notice of References Cited" during prosecution of the ’107 patent, it was never the basis for a rejection, nor was there any evidence it was substantively evaluated or discussed in an interview. Petitioner asserted the Examiner failed to appreciate Tylicki's full teachings. Furthermore, Claiborne was never cited or considered at all during prosecution. Therefore, Petitioner contended the challenges presented in the petition were not cumulative to the prosecution history and warranted full consideration.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and cancellation of claims 12 and 18 of the ’107 patent as unpatentable.