RING LLC v. SkyBell Technologies, Inc.

1. Case Identification

• 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: Customizable Doorbell Chime System
• Brief Description: The ’107 patent discloses a doorbell system comprising a doorbell, a chime, and a remote computing device, such as a smartphone or tablet. The system enables a user to select a sound on the remote computing device and transmit a data file representing that sound to the chime, which then plays the selected sound upon activation of the doorbell.

3. Grounds for Unpatentability

Ground 1: Claim 12 is obvious over Tylicki in view of Claiborne.

• 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 discloses a customizable door chime system where a user can select a specific chime tune from a plurality of stored tunes using a communicatively coupled "cellular phone." Petitioner contended that while Tylicki teaches downloading files from a "plurality of peripheral devices," it does not specify the device type. Claiborne was argued to supply this teaching by explicitly describing a door chime system where a user can download sound files to the chime from a connected cellular phone. The combination, therefore, taught all elements of claim 12, including selecting a sound with a phone and sending a data file to the chime.
  • Motivation to Combine: Petitioner asserted a person of ordinary skill in the art (POSITA) would combine the references to arrive at the claimed invention. The primary motivation was that Claiborne provided a specific and predictable solution (using a cellular phone for downloads) to implement the general concept disclosed in Tylicki (downloading from "peripheral devices"). Petitioner also noted that design efficiency would motivate using the same cellular phone—already disclosed in Tylicki as a user interface—for the downloading function taught by Claiborne. The fact that the same inventor was named on both applications was presented as further evidence that a POSITA would have looked to both teachings.
  • Expectation of Success: Petitioner argued a POSITA would have had a high expectation of success because both Tylicki and Claiborne teach using Bluetooth, a standardized and ubiquitous wireless protocol, to connect the cellular phone to the chime system, ensuring predictable and reliable implementation.

Ground 2: Claim 18 is anticipated by Tylicki.

• Prior Art Relied Upon: Tylicki (Application # 2007/0008081).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Tylicki alone discloses every limitation of system claim 18. Petitioner mapped Tylicki’s disclosure of a "door chime system" with a "doorbell pushbutton" to the claimed doorbell system and button. Tylicki's teaching of a "cellular phone" communicatively coupled to the chime system via a wireless communication card (e.g., Bluetooth) to act as a user interface was argued to meet the limitation of a "communication device comprising one of a phone" coupled to the chime. Petitioner further argued that Tylicki teaches emitting a selected sound from speakers in response to a button press and storing digital sound files in an integral data memory, thereby meeting the remaining claim limitations.

Ground 3: Claim 18 is anticipated by Claiborne.

• Prior Art Relied Upon: Claiborne (Application # 2010/0225455).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Claiborne also, independently, anticipates every element of claim 18. Petitioner mapped Claiborne’s "door chime system" with a "doorbell pushbutton" or "actuator" to the claimed system. Claiborne’s teaching of a communications port that allows a "cellular telephone" to connect and download sound files was argued to meet the limitation for a "communication device comprising one of a phone" communicatively coupled to the chime. Petitioner contended that Claiborne explicitly discloses reproducing sound via a speaker in response to button actuation and storing "sound representations" (data files) in a data memory, thus anticipating all limitations of claim 18.

4. Key Claim Construction Positions

• Petitioner argued that the method steps of claim 12—"selecting the sound" and "sending a data file"—do not require a specific temporal order. Petitioner asserted that neither the plain language of the claim (which lacks terms like "in response to" or "then") nor the specification inherently or explicitly requires the "selecting" step to occur before the "sending" step. Therefore, the claim should be construed to cover methods where the sound is selected from the chime's memory after the data files have already been sent to it, a scenario taught by the prior art.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate because the challenges were not cumulative to the prosecution history of the ’107 patent. Petitioner asserted that Claiborne was never cited or considered by the examiner. It was further argued that although Tylicki was listed on a Notice of References Cited, it was never the basis for a rejection or substantively analyzed in an office action. Petitioner contended the examiner failed to appreciate that Tylicki taught the very subject matter later identified as the reason for allowance: connecting a phone to a doorbell system to select a chime.

6. Relief Requested

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