Unified Patents LLC v. VaraTec LLC

1. Case Identification

• Case #: IPR2019-01276
• Patent #: 7,792,256
• Filed: July 3, 2019
• Petitioner(s): Unified Patents Inc.
• Patent Owner(s): Varatec, LLC
• Challenged Claims: 1-3, 5, 6, 9-12, 14, 15, 18-19

2. Patent Overview

• Title: System and Method for Remotely Monitoring, Controlling, and Managing Equipment
• Brief Description: The ’256 patent discloses a system for remotely managing equipment at one or more premises. The system architecture includes a central server system, remote client systems, and a computer system at each premise that interfaces with devices like video cameras and facility management sensors.

3. Grounds for Unpatentability

Ground 1: Obviousness over Rezvani in view of Simon - Claims 1-2, 5-6, 9-11, 14-15, and 18 are obvious over Rezvani in view of Simon.

• Prior Art Relied Upon: Rezvani (Patent 6,686,838) and Simon (Patent 7,292,142).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Rezvani discloses nearly all elements of independent claim 1. Rezvani teaches a system for remotely controlling and monitoring devices (e.g., cameras, sensors) at a premises ("node") from a client device via a central "remote site." This remote site functions as the claimed server system, containing a web server and a database that stores device "configuration information" (disclosed as registered "actions and indicators"). The server receives device data (e.g., "default state and static parameters") and stores it. Petitioner asserted that Simon, a similar remote security monitoring system, explicitly teaches the final limitation of claim 1: a client system requesting stored data from the server, which the server then provides. Simon describes a personal computer using a web browser to request security system status information from a remote server, which accesses and returns the requested data. Dependent claims were argued to be obvious for similar reasons, with Rezvani teaching the underlying functionality for command-and-control (claim 2), alert configuration (claim 5), and various sensor types (claim 9).
  • Motivation to Combine: A POSITA would combine Simon’s explicit request-response functionality with Rezvani’s comprehensive remote monitoring framework to improve system flexibility and a user's ability to diagnose and control remote devices from any location. Both references address the same technical problem of remote monitoring and control, making the combination logical and predictable.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because the combination would involve a simple software modification to implement known web-based data request-and-response functionality, a technique already taught by both Rezvani and Simon in their respective systems.

Ground 2: Obviousness over Rezvani in view of Crookham - Claims 3 and 12 are obvious over Rezvani in view of Crookham.

• Prior Art Relied Upon: Rezvani (Patent 6,686,838) and Crookham (Patent 6,681,110).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground focused on claims 3 and 12, which add limitations requiring the database to store a schedule for executing commands, configured by a user. Petitioner argued that while Rezvani provides the base system for remote device control, it does not expressly teach user-defined scheduling. Crookham was introduced to supply this teaching. Crookham discloses a system for remotely controlling lighting systems where users can access a central control unit to create and store on/off schedules in a "scheduling database." The central control then automatically communicates commands to the remote lighting systems according to the stored schedule.
  • Motivation to Combine: A POSITA would be motivated to add Crookham’s scheduling functionality to Rezvani’s system to enhance automation and user convenience, particularly for security applications like scheduling lights to turn on and off while a user is away. The use of timers and schedules for controlling electronic devices was a well-known and conventional feature at the time.
  • Expectation of Success: Success was reasonably expected as it would involve implementing a known software feature (scheduling) into the database of Rezvani's existing server architecture, a task well within the ordinary skill in the art.

Ground 3: Obviousness over Rezvani, Halpern, and Naidoo - Claim 19 is obvious over Rezvani, Halpern, and Naidoo.

• Prior Art Relied Upon: Rezvani (Patent 6,686,838), Halpern (Patent 5,301,122), and Naidoo (Application # 2003/0062997).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed claim 19, which requires a premises-based computer system to poll facility management devices at predetermined times, collect and store video data, and communicate that data upon request. Petitioner asserted Rezvani teaches the base system, including the premises computer ("monitoring module"). Halpern was cited for its teaching of polling devices at predetermined times; it describes a system where a host computer directs a local processor to poll sensors at specified time intervals. Naidoo was cited for teaching the collection and storage of video data in response to events. Naidoo discloses a security gateway that captures and records video upon detecting an alarm condition, stores the video data in memory, and allows a remote client to review the recordings.
  • Motivation to Combine: A POSITA would combine these references to create a more robust and efficient security system. Halpern’s scheduled polling would be integrated into Rezvani’s system to improve the periodic "heartbeat" status update process. Naidoo’s video recording capability would be added to enhance Rezvani’s monitoring system, a common and desirable feature for security applications.
  • Expectation of Success: The combination would have been straightforward, involving adding well-known polling and video recording modules to the hardware and software of Rezvani's monitoring module, with both Halpern and Naidoo teaching how to implement such features.
• Additional Grounds: Petitioner asserted that claims 1, 2, 5, 6, 9-11, 14, 15, and 18 are also obvious over Rezvani alone. An additional ground asserted claims 3 and 12 are obvious over Rezvani, Simon, and Crookham.

4. Key Claim Construction Positions

• "Configuration information for a plurality of devices" (Claim 1): Petitioner argued this term is not expressly defined in the patent and should be construed broadly according to its plain meaning and the specification's examples (e.g., frames-per-second settings). Petitioner proposed the construction "any information suitable to support needs of the monitoring, controlling, and managing of the devices." This broad construction was central to arguing that the "actions and indicators" disclosed in Rezvani meet this claim limitation.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under 35 U.S.C. §325(d), noting that four of the five primary prior art references (Rezvani, Simon, Crookham, and Halpern) were not before the Examiner during the original prosecution of the ’256 patent. While Naidoo was listed in an Information Disclosure Statement, it was one of 40 references and was never substantively discussed or used as a basis for any rejection by the Examiner.

6. Relief Requested

• Petitioner requests the institution of an inter partes review and cancellation of claims 1-3, 5, 6, 9-12, 14, 15, and 18-19 of the ’256 patent as unpatentable.