ADT LLC v. Vivint Inc

1. Case Identification

• Case #: IPR2022-00612
• Patent #: 9,349,262
• Filed: February 15, 2022
• Petitioner(s): ADT LLC
• Patent Owner(s): Vivint Inc.
• Challenged Claims: 1, 2, 4-8, and 11-13

2. Patent Overview

• Title: Security System Providing a Localized Humanly-Perceivable Alert for Identifying a Facility to Emergency Personnel
• Brief Description: The ’262 patent discloses a security and automation system designed to help emergency responders quickly locate a facility after an alarm is triggered. The system activates a humanly-perceivable alert, such as an exterior light, upon receiving a dispatch notification from a remote monitoring service.

3. Grounds for Unpatentability

Ground 1: Obviousness over Saylor, Gregory, and Elliot - Claims 1, 2, 4-8, and 11-13

• Prior Art Relied Upon: Saylor (Patent 6,661,340), Gregory (Application # 2010/0265089), and Elliot (Patent 7,734,020).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination of these references disclosed all limitations of the challenged claims. Saylor taught the foundational architecture of a security system with a control panel that communicates with a remote monitoring service and can control home automation devices like lights. Gregory taught modifying such a system to activate a specific exterior light to help emergency responders identify the location of an alarm. Elliot taught a remote monitoring service sending a dispatch notification (e.g., a voice message) back to the control panel to confirm that emergency personnel were en route. Petitioner further contended that Saylor taught a remote service filtering false alarms by contacting the user for verification, which Elliot supplemented.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine these analogous systems to improve functionality. A POSITA would integrate Gregory's emergency lighting feature into Saylor's comprehensive security and automation system to provide a clear, visual indicator for responders, a known problem in the art. Similarly, a POSITA would incorporate Elliot's dispatch notification feature into the Saylor/Gregory system to confirm to the user that help was on the way, improving user experience and system reliability.
  • Expectation of Success: A POSITA would have a reasonable expectation of success as the combination involved integrating well-understood features (lighting control, two-way voice communication) into a standard security system architecture using conventional components.

Ground 2: Obviousness over Saylor, Gregory, Elliot, and Siegler - Claims 1, 2, 4-8, and 11-13

• Prior Art Relied Upon: Saylor (Patent 6,661,340), Gregory (Application # 2010/0265089), Elliot (Patent 7,734,020), and Siegler (Patent 8,310,365).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground incorporated the teachings of Saylor, Gregory, and Elliot from Ground 1 and added Siegler to address the specific limitation of the control unit "determining a location" of the alarm condition. Petitioner asserted that while Saylor taught transmitting location information, it did not explicitly state that the local control unit determined it. Siegler expressly disclosed a control system that determines the location of an alarm based on data received from a specific sensor notification.
  • Motivation to Combine: A POSITA, seeking to implement the system taught by Saylor, would look to a reference like Siegler for details on how to process sensor data. Because Saylor taught reporting location and Siegler taught a control unit determining location from sensor data, a POSITA would be motivated to use Siegler's method to implement this functionality in Saylor's system to achieve more precise alarm reporting.

Ground 3: Obviousness over Saylor, Gregory, Elliot, and Gagvani - Claims 1, 2, 4-8, and 11-13

• Prior Art Relied Upon: Saylor (Patent 6,661,340), Gregory (Application # 2010/0265089), Elliot (Patent 7,734,020), and Gagvani (Application # 2009/0022362).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground incorporated the teachings from Ground 1 and added Gagvani to provide an alternative or supplemental teaching for the limitation that the "remote monitoring service filters out false alarms." While Saylor taught filtering by contacting a user, Gagvani disclosed a more advanced technique where a remote monitoring service automatically filters false alarms by using video analytics on footage captured at the premises to confirm or deny the alarm condition.
  • Motivation to Combine: A POSITA would combine Gagvani with the Saylor-based system to improve its false alarm detection capabilities, which was a known industry problem. Since Saylor already contemplated a remote service verifying alarms, a POSITA would have been motivated to incorporate Gagvani's more sophisticated and automated video verification method to increase efficiency and reliability.

• Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 4) based on the combination of Saylor, Gregory, Elliot, Siegler, and Gagvani, arguing this combination met all limitations addressed separately in the preceding grounds.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under Fintiv would be inappropriate. The parallel district court litigation was in its early stages, with no trial date set and minimal discovery conducted. Petitioner noted that courts in the relevant district regularly grant stays pending IPR, and Petitioner intended to seek one. To prevent overlap, Petitioner stipulated that if the IPR is instituted, it will not pursue in the litigation any invalidity grounds raised or that could have been reasonably raised in the petition. Petitioner also asserted that denial under 35 U.S.C. §325(d) was unwarranted as this was the first IPR petition filed against the ’262 patent.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1, 2, 4-8, and 11-13 of the ’262 patent as unpatentable.