ADT LLC v. Vivint, Inc.

1. Case Identification

• Case #: Unassigned
• Patent #: 9,349,262
• Filed: February 15, 2022
• Petitioner(s): ADT LLC
• Patent Owner(s): James B. Henrie (In re application of); Vivint Inc. (Identified as Patent Owner in related litigation)
• 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 security systems that use visual or audible indicators, such as lights, to help emergency responders quickly identify the specific facility that generated an alarm.

3. Grounds for Unpatentability

Ground 1: Claims 1, 2, 4-8, and 11-13 are obvious over Saylor in view of Gregory and Elliot.

• 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 Saylor taught the fundamental architecture of the challenged claims, including a security system with sensors, a local control unit, and a remote monitoring service that can filter false alarms by contacting the user. Saylor’s system could also control appliances like lights. Petitioner asserted that Gregory supplemented Saylor by explicitly teaching the use of an emergency lighting system, visible from the exterior, to help responders locate the premises, and that the remote monitoring service could command the control unit to activate this light in response to an alarm. Finally, Petitioner argued that Elliot taught the missing limitation of the control unit receiving a "dispatch notification," as Elliot disclosed a monitoring station sending a voice message to the control panel to inform occupants that emergency personnel had been dispatched.
  • Motivation to Combine: Petitioner asserted a person of ordinary skill in the art (POSITA) would combine Saylor and Gregory because they addressed the analogous problem of remote security monitoring and response. A POSITA would have integrated Gregory’s specific emergency lighting solution into Saylor’s flexible system to improve its functionality by helping responders locate the property. Similarly, a POSITA would have incorporated Elliot's dispatch notification feature into Saylor's system to provide more complete alarm status information, a known and desirable feature.
  • Expectation of Success: Petitioner contended there was a reasonable expectation of success because the combination involved integrating known features from analogous security systems using conventional, commercially available components and architectures.

Ground 2: Claims 1, 2, 4-8, and 11-13 are obvious over Saylor in view of Gregory, Elliot, and Siegler.

• 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 same arguments as Ground 1 but added Siegler to further support the limitation that the control unit "determines a location" of the alarm condition (claim elements 1[d] and 11[b]). While Saylor disclosed transmitting location information, Petitioner argued Siegler explicitly taught a control system that determines the alarm location based on a notification from a specific sensor.
  • Motivation to Combine: Petitioner argued a POSITA would look to Siegler to find specific implementation details for features generally disclosed in Saylor. Because Saylor disclosed reporting location and Siegler disclosed determining it at the control panel, a POSITA would have been motivated to combine their teachings to implement a robust location-aware alarm system.

Ground 3: Claims 1, 2, 4-8, and 11-13 are obvious over Saylor in view of Gregory, Elliot, and Gagvani.

• 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 was presented as an alternative to Ground 1, adding Gagvani to teach the limitation of the remote monitoring service "filtering out false alarms" (claim elements 1[e], 8[b], and 11[c]). Where Saylor taught filtering by contacting a user, Petitioner asserted that Gagvani disclosed a more advanced method using video analytics at a remote central server to automatically verify or reject an alarm based on captured video, thereby filtering false alarms.
  • Motivation to Combine: Petitioner argued that because Saylor already taught the desirability of filtering false alarms, a POSITA would have been motivated to incorporate Gagvani’s more effective and automated video verification technique to improve Saylor’s system. Both references disclosed security systems with remote monitoring, making the integration straightforward.

• Additional Grounds: Petitioner asserted a fourth ground of obviousness (Ground 4) against claims 1, 2, 4-8, and 11-13 based on the combination of Saylor, Gregory, Elliot, Siegler, and Gagvani, arguing the combination of all references met all challenged limitations.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) was inappropriate as this was the first IPR petition filed against the ’262 patent.
• Petitioner further argued that discretionary denial under Fintiv was unwarranted, asserting that all relevant factors favored institution. Key arguments included: the parallel district court litigation was in its earliest stages with no trial date set; Petitioner would move to stay the litigation if IPR was instituted, which is common practice in that district; and Petitioner stipulated that it would not pursue the same invalidity grounds in the district court if the IPR is instituted, thereby avoiding duplicative efforts.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 2, 4-8, and 11-13 of the ’262 patent as unpatentable under 35 U.S.C. §103.