Resideo Technologies Inc v. Ubiquitous Connectivity LP

1. Case Identification

• Case #: IPR2019-01335
• Patent #: 8,064,935
• Filed: July 15, 2019
• Petitioner(s): Resideo Technologies, Inc.
• Patent Owner(s): Ubiquitous Connectivity, LP
• Challenged Claims: 1-22

2. Patent Overview

• Title: Wireless Remote Monitoring and Control System
• Brief Description: The ’935 patent relates to a system for in-home automation using a base unit that communicates with a remote cellular device via a wireless cellular network. The system uses Short Message Service (SMS) for bi-directional communication to monitor and control environmental devices, allegedly without requiring an internet connection.

3. Grounds for Unpatentability

Ground 1A: Obviousness over Oinonen and Whitley - Claims 1-3, 7, 11-15, 17-19, and 21 are obvious over Oinonen in view of Whitley.

• Prior Art Relied Upon: Oinonen (Patent 6,275,710) and Whitley (WO 99/49680).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Oinonen teaches the core of the claimed invention: a system for monitoring and controlling a single peripheral device using bi-directional SMS messages between a remote mobile device and a base unit. Specifically, Oinonen allegedly discloses sending a status message from the base unit and receiving a command message from the remote unit. Petitioner asserted that Whitley teaches using SMS over a cellular network to remotely monitor and control multiple devices via a central gateway. The combination of Oinonen's bi-directional SMS control with Whitley's multi-device gateway architecture allegedly discloses all limitations of the independent claims, including the environmental device, base unit, remote unit, and the exchange of environmental information and commands via SMS.
  • Motivation to Combine: A POSITA would combine Oinonen and Whitley to improve Oinonen’s single-device system with Whitley’s advantageous capability of managing multiple distributed devices. Whitley explicitly teaches the desirability of using existing GSM network SMS capabilities for more efficient remote monitoring and control, providing a clear reason to integrate its multi-device gateway into Oinonen's foundational system. Additional motivations included monitoring activities over time to save energy.
  • Expectation of Success: A POSITA would have a high expectation of success in combining the references because both rely on the same well-known and standardized SMS protocols operating over conventional cellular networks.

Ground 2A: Obviousness over Bielski and Wu - Claims 1-4, 7-9, 11-15, 17-19, and 21 are obvious over Bielski in view of Wu.

• Prior Art Relied Upon: Bielski (European Application # 1391861) and Wu (a 2003 journal article, "System integration of WAP and SMS for home network system").
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Bielski discloses a bi-directional system for monitoring and controlling environmental devices (e.g., alarm systems, heaters) through a cellular remote unit over a GSM network, explicitly noting that an internet connection is not required. While Bielski teaches using SMS, Petitioner argued it lacks specific implementation details. Wu allegedly supplies these details, disclosing a home network system with a gateway that uses interchangeable communication protocols, including a detailed SMS request-response mechanism, to allow a user to monitor and control home appliances remotely.
  • Motivation to Combine: A POSITA reviewing Bielski’s system would be motivated to look to a reference like Wu for established implementation details for the SMS communication protocol. Wu provides a specific motivation to select the SMS protocol over others (like WAP or HTTP) because it is simpler to implement, consists of only two layers, allows for reduced costs, and was already widely adopted and supported on virtually all mobile devices.
  • Expectation of Success: Success was predictable because Bielski already established the general use of SMS for its system, and Wu provided the known, standardized, and straightforward implementation details for creating such an SMS-based control architecture.

Ground 1B: Obviousness over Oinonen, Whitley, and Sears - Claims 4-6 and 16 are obvious over Oinonen, Whitley, and Sears.

• Prior Art Relied Upon: Oinonen (Patent 6,275,710), Whitley (WO 99/49680), and Sears (Application # 2002/0069263).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground built upon the combination of Oinonen and Whitley from Ground 1A by adding Sears to teach the specific dependent claim limitations of a remote unit having "custom programmability," specifically a "JAVA programming kernel" or a "J2ME programming kernel." Sears discloses Java-based programmability for wireless mobile devices, including cellular phones.
  • Motivation to Combine: Petitioner argued that the ’935 patent itself describes cellular handsets with JAVA or J2ME kernels as "conventional" and known. A POSITA seeking to implement the user-facing application on the mobile devices of Oinonen and Whitley would have been motivated to use a well-known, robust platform like JAVA, as taught by Sears, to create "rich dynamic personalized services and applications." Using a JAVA application allows for local processing of SMS commands, creating a more robust and desirable user experience.
  • Expectation of Success: The use of JAVA-based applications was well within the ordinary skill of a POSITA at the time. The ’935 patent’s own characterization of this technology as "conventional" confirmed that a skilled artisan would have a reasonable expectation of successfully implementing it in the Oinonen/Whitley system.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on the primary Oinonen/Whitley and Bielski/Wu combinations, adding further references to meet specific dependent claim limitations. These included Antila (for LCD displays on the remote unit), Ehlers (for selectable graphic icons and selectively disabling SMS transmission), and Menard (for sending command execution confirmation messages).

4. Key Claim Construction Positions

• "Environmental Device": Petitioner argued this term should be given its plain meaning of "a device that is capable of measuring and/or controlling its surroundings." This construction was contrasted with a narrower one allegedly advanced by the Patent Owner in co-pending litigation that would improperly require the device to be connected to "at least one sensor."
• "Base Unit": Petitioner asserted the plain meaning is a "base component that can send and receive data through interface(s) to the remote unit and environmental device." Petitioner argued the Patent Owner’s proposed construction in litigation improperly imported limitations like a display or keypad, which the patent’s specification explicitly describes as unnecessary components.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-22 of Patent 8,064,935 as unpatentable.