PTAB

IPR2019-01336

Resideo Technologies Inc v. Ubiquitous Connectivity LP

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1. Case Identification

2. Patent Overview

  • Title: Remote Environmental Control System
  • Brief Description: The ’655 patent describes a system for remotely monitoring and controlling environmental devices (e.g., thermostats, security systems) in a home or business. The system uses a base unit that communicates with a remote cellular unit (e.g., a mobile phone) via a cellular network, typically using Simple Message Service (SMS), to exchange environmental data and control commands.

3. Grounds for Unpatentability

Ground 1: Obviousness over Oinonen, Whitley, and Coon - Claims 1, 4-8, 10, 12-14, 16-17, 20, 22, and 23 are obvious over Oinonen in view of Whitley and Coon.

  • Prior Art Relied Upon: Oinonen (Patent 6,275,710), Whitley (WO 99/49680), and Coon (Application # 2002/0147006).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Oinonen disclosed the core system of a base unit communicating bidirectionally via SMS with a remote mobile device to control a peripheral device (an "environmental device"). Whitley was introduced to teach the application of this concept to a gateway controlling multiple environmental devices, such as thermostats, and for monitoring energy use. To address claim limitations related to location-based control, Petitioner asserted that Coon taught using a GPS-enabled mobile device to monitor its location relative to a home or business and automatically send a control message when it crosses a predetermined geo-fence.
    • Motivation to Combine: A POSITA would combine Oinonen and Whitley to gain the benefit of controlling multiple devices from a single gateway, which Whitley taught was more efficient. A POSITA would have been further motivated to incorporate Coon’s geo-fencing capability to enhance the combined system with automated, proximity-based control, thereby increasing efficiency, convenience, and safety by eliminating the need for manual schedules.
    • Expectation of Success: Petitioner contended that a POSITA would have a reasonable expectation of success because all references operate in the same field of remote device control via cellular messaging, and incorporating GPS for location-based services into mobile devices was a well-known and expanding trend at the time.

Ground 2: Obviousness over Bielski, Wu, and Coon - Claims 1, 3, 5-8, 10, 12-17, and 20-23 are obvious over Bielski in view of Wu and Coon.

  • Prior Art Relied Upon: Bielski (European Application # 1391861), Wu (a 2003 journal article titled System integration of WAP and SMS for home network system), and Coon (Application # 2002/0147006).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner presented an alternative invalidity theory, arguing that Bielski disclosed a complete bidirectional system for monitoring and controlling devices like alarms or heaters via a cellular remote unit using SMS over a GSM network. While Bielski mentioned SMS, Petitioner argued a POSITA would look to a reference like Wu for specific implementation details of the communication protocols. Wu explicitly described an architecture for a home network system (HNS) gateway that uses an SMS driver to communicate with a mobile device for monitoring and controlling home appliances. The geo-fencing limitations were again mapped to Coon, as in Ground 1.
    • Motivation to Combine: A POSITA starting with Bielski’s system would have been motivated to consult Wu to implement the well-known but unspecified communication protocols. Wu provided a clear, low-cost, and widely adopted SMS-based framework for achieving Bielski’s goals. The motivation to add Coon was identical to that in Ground 1: to add desirable proximity-based automation.
    • Expectation of Success: The combination was asserted to be predictable. Bielski and Wu both addressed the same technical problem using the same underlying technology (SMS over GSM networks), and adding Coon's geo-fencing was a straightforward enhancement using common mobile device features.

  • Additional Grounds: Petitioner asserted numerous additional obviousness challenges. These grounds primarily added Ehlers (Application # 2004/0117330) to the Oinonen or Bielski combinations to teach energy conservation modes and user interface features (e.g., icons). Other grounds added Denis (European Publication # 1289248) or Lincoln (Patent 6,108,614) to the primary combinations to teach systems for handling messages from multiple users, either chronologically (Denis) or based on priority (Lincoln), to invalidate claim 24.

4. Key Claim Construction Positions

Petitioner argued that several terms should be given their plain and ordinary meaning, disputing narrower constructions proposed by the Patent Owner in co-pending litigation.

  • "simple message service": Petitioner argued this term is synonymous with the industry standard "short message service" (SMS). It contended that the patent’s only use of the term explicitly equates the two (“SMS (‘simple message service’)”) and that Patent Owner’s attempt to characterize it as an "enhanced" form of SMS was unsupported by the specification or prosecution history.
  • "environmental device": Petitioner proposed a plain meaning of "a device that is capable of measuring and/or controlling its surroundings," arguing against Patent Owner's more limiting construction requiring the device to be "operatively connected to at least one sensor."
  • "digital communications message": Petitioner argued that this term should be interpreted consistently with the patent’s focus on SMS messages, not broadly construed to cover any form of digital transmission, which would be inconsistent with the prosecution history where the invention was distinguished based on its use of SMS.

5. Relief Requested

  • Petitioner requests the institution of an inter partes review and the cancellation of claims 1-24 of Patent 9,602,655 as unpatentable.