PTAB

IPR2019-01336

Resideo Technologies, Inc. v. Ubiquitous Connectivity, LP

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1. Case Identification

2. Patent Overview

  • Title: System for Remote Monitoring and Control of Environmental Devices
  • 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 central "base unit" that communicates with a "cellular remote unit" (e.g., a mobile phone) over a cellular network using messaging services like SMS, thereby enabling two-way communication without requiring a wired internet connection at the base unit's location.

3. Grounds for Unpatentability

Ground 1A: 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 foundational system: a base unit communicating with a mobile device via SMS to control an environmental device. However, Oinonen did not explicitly detail control of multiple devices. Whitley was cited to cure this deficiency, as it taught a cellular "gateway" (base unit) for monitoring and controlling various devices (e.g., thermostats) using SMS. Finally, to meet the geo-fencing limitations of claim 1, Petitioner relied on Coon, which taught a mobile device using GPS to monitor its location relative to a predetermined range (a geo-fence) and automatically send a control message to networked devices upon entering or leaving that range.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Oinonen and Whitley to improve the efficiency and utility of a remote monitoring system by extending it to multiple devices. A POSITA would further incorporate Coon’s proximity-based control to enhance the system with automation, convenience, and safety, overcoming the known disadvantages of manual scheduling.
    • Expectation of Success: Petitioner asserted a high expectation of success, as the combination involved applying known GPS technology (Coon) to a known SMS-based control architecture (Oinonen/Whitley) to achieve a predictable improvement in functionality.

Ground 2A: 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 Patent Application # 1391861), Wu (a 2003 journal article on SMS for home networks), and Coon (Application # 2002/0147006).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground presented an alternative combination for the core invention. Petitioner asserted Bielski, like Oinonen, taught a system for monitoring and controlling devices like alarms and heaters via a cellular remote unit using SMS messages. While Bielski mentioned using standard protocols, Petitioner argued it lacked specific implementation details. Wu was introduced to supply these details, as it explicitly described the architecture and implementation of an SMS-based gateway for a home network system, including request-response mechanisms. Coon was relied upon for the same geo-fencing teachings as in Ground 1A.
    • Motivation to Combine: A POSITA, starting with Bielski's system, would have been motivated to look to a reference like Wu for established, cost-effective implementation details for the SMS communication protocol, which Wu taught was simple and widely adopted. The motivation to add Coon's geo-fencing was identical to that in Ground 1A—to add useful, proximity-based automation.
    • Expectation of Success: Success would have been reasonably expected because the combination involved integrating well-known and standardized technologies. Wu provided a clear roadmap for implementing the SMS functionality sought to be added to Bielski's system.

Ground 1B/2B: Obviousness with the Addition of Ehlers - Claims 2, 9, 11, 15, 18, 19, and 21 are obvious over the primary combinations in view of Ehlers.

  • Prior Art Relied Upon: Oinonen, Whitley, Coon, and Ehlers (Application # 2004/0117330); or Bielski, Wu, Coon, and Ehlers.

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground added Ehlers to the combinations of Grounds 1A and 2A to teach limitations in various dependent claims. Petitioner argued Ehlers disclosed advanced energy management features, such as commands for entering an "energy conservation mode" for multiple devices, participating in demand-reduction programs, and using external web service data (like weather forecasts) to control devices. Ehlers also taught an improved graphical user interface with selectable icons for controlling devices.
    • Motivation to Combine: A POSITA would have sought to enhance the base systems of Oinonen/Whitley or Bielski/Wu with the energy-saving and user-interface features of Ehlers to increase efficiency, reduce costs, obtain financial incentives from utility programs, and improve usability.
    • Expectation of Success: The integration was asserted to be predictable, as it involved adding known energy management software logic and UI features to an existing remote-control framework.

  • Additional Grounds: Petitioner asserted additional obviousness challenges to address claim 24, which involves multiple messages for subordinate remote units. These grounds relied on Denis (European Publication # 1289248) for teaching chronological processing of requests from multiple users and Lincoln (Patent 6,108,614) for teaching a priority-based system to resolve conflicting commands from different users in a home HVAC system.

4. Key Claim Construction Positions

  • "Simple Message Service" (SMS) / "Digital Communications Message": Petitioner argued these terms should be construed consistently with the standard, well-known Short Message Service. This was a critical dispute, as Petitioner contended the Patent Owner had previously argued for a narrower construction of "simple message service" as an "enhanced form" of SMS involving a "port addressing scheme." Petitioner argued that port addressing was a standard feature of SMS at the time and did not create a novel, enhanced service, and that the patent's own disclosure uses the terms interchangeably.
  • "Environmental Device" / "Base Unit": Petitioner argued for applying the plain and ordinary meaning to these terms. Petitioner contended the Patent Owner, in co-pending litigation, had attempted to import functional limitations and unnecessary structural elements (e.g., a display/keypad for the base unit) that were not required by the claims or specification.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-24 of the ’655 patent as unpatentable.