PTAB

IPR2019-01609

Central Security Group Nationwide Inc v. Ubiquitous Connectivity LP

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Ubiquitous Connectivity and Control System for Remote Locations
  • Brief Description: The ’935 patent discloses a system for remote monitoring and control of "environmental devices" at a location. The system uses a base unit that communicates with a remote unit (e.g., a cellular phone) over a wireless cellular network, primarily using Short Message Service (SMS) messages, to avoid the need for a wired internet connection at the base unit's location.

3. Grounds for Unpatentability

Ground 1A: 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 disclosed all elements of the challenged claims, including a remote monitoring and control system using bidirectional SMS messages between a mobile remote unit and a base unit connected to a peripheral device. For example, Oinonen’s “first telecommunication terminal” was asserted to be the claimed “base unit,” and its “second telecommunication terminal” was the “remote unit.” The system communicated environmental information (e.g., door lock status) and control commands via SMS over a GSM network.
    • Motivation to Combine: While Oinonen taught the core system, Petitioner asserted it did not explicitly detail the configuration for controlling multiple devices. A person of ordinary skill in the art (POSITA) would have looked to Whitley, which was also directed to SMS-based remote monitoring, because Whitley explicitly taught using a central gateway (base unit) to efficiently monitor and control multiple distributed devices. The motivation was to enhance Oinonen’s system with Whitley’s advantageous multi-device management capabilities.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining the references because both relied on the same standard SMS protocols over GSM networks for communication.

Ground 1B: 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 builds upon the Oinonen and Whitley combination to address claims requiring a "cellular telephone handset with custom programmability," specifically using a JAVA or J2ME programming kernel. Petitioner argued that Sears disclosed using Java-based applications on wireless mobile devices to provide rich, dynamic, and personalized services.
    • Motivation to Combine: Petitioner contended that since the ’935 patent itself described cellular handsets with JAVA or J2ME kernels as "conventional" and known, a POSITA would have been motivated to implement the applications of the Oinonen/Whitley system using the Java platform taught by Sears. This would create a more robust and desirable application, allowing for offline processing of SMS commands and a richer user interface.
    • Expectation of Success: Implementing Java-based applications on mobile devices was well within the ordinary skill in the art at the time, ensuring a high expectation of success.

Ground 2A: 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 ("System integration of WAP and SMS for home network system," a 2003 journal article).

  • Core Argument for this Ground:

    • Prior art Mapping: Petitioner presented this as an alternative primary ground. Bielski was argued to disclose a wireless communication system for monitoring and controlling environmental devices (e.g., an alarm system) using a mobile terminal that communicates with a base unit over a GSM network, explicitly noting that an internet connection is not required. Bielski disclosed the use of SMS for status updates and commands.
    • Motivation to Combine: Petitioner argued that while Bielski taught the use of SMS, it did not detail the specific communication protocols, stating they were standardized. A POSITA would have been motivated to look to a reference like Wu, which provided a detailed implementation of an SMS-based protocol for a home network system, to supply the missing details for Bielski’s system. Wu provided specific motivation for using SMS due to its simplicity, low cost, and widespread implementation compared to other protocols like WAP or HTTP.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success as both references were directed to solving the same problem of remote device control using standard SMS technology over cellular networks.

  • Additional Grounds: Petitioner asserted numerous additional obviousness challenges, primarily by adding a single prior art reference to the Oinonen/Whitley or Bielski/Wu combinations to meet specific dependent claim limitations. These included adding Antila for an LCD module, Ehlers for selectable graphic icons and disabling SMS messages, and Menard for confirmation/status messages.

4. Key Claim Construction Positions

  • Petitioner argued that several key claim terms should be given their plain and ordinary meaning, in contrast to narrower constructions allegedly advanced by the Patent Owner in co-pending litigation.
  • "Environmental device": Petitioner argued this term should mean "a device that is capable of measuring and/or controlling its surroundings," rejecting a narrower construction that would require the presence of a sensor.
  • "Base unit": Petitioner contended this term should be construed broadly as a "base component that can send and receive data," not limited to including unnecessary features like a specific display or keypad.
  • "[Cellular remote / remote] unit": Petitioner proposed a broad construction of a "component that can send and receive data," consistent with the specification's generic description of a "remote control unit."

5. Arguments Regarding Discretionary Denial

  • The petition noted that the ’935 patent was the subject of co-pending district court litigation. However, Petitioner argued against discretionary denial by stating that the parallel proceeding involving the Petitioner (4:18-CV-00368) had been stayed since October 2018. It was further argued that none of the related district court proceedings were at an advanced state or had conducted a Markman hearing, weighing against denial under the Fintiv factors.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-22 of the ’935 patent as unpatentable under 35 U.S.C. §103.