AlARmCom Inc v. Vivint Inc

1. Case Identification

• Case #: IPR2022-00728
• Patent #: 9,349,262
• Filed: March 18, 2022
• Petitioner(s): Alarm.com Incorporated
• Patent Owner(s): Vivint Inc.
• Challenged Claims: 1, 2, 4-8, 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 activate lights or other humanly-perceivable indicators to help emergency responders quickly identify the specific facility that generated an alarm. The system aims to solve the difficulty responders face in locating the source of an alarm.

3. Grounds for Unpatentability

Ground 1: Obviousness over Core Security System References - 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 the combination of these references taught every limitation of the challenged claims. Saylor disclosed the foundational architecture of a security and automation system, including sensors reporting alarm conditions to a control unit, which in turn reports to a remote monitoring service. Saylor also taught that the remote service could filter false alarms by contacting the user for verification. To meet the limitation of activating a specific light to guide responders, Petitioner combined Saylor with Gregory, which explicitly taught an emergency lighting system integrated with a security system to activate an exterior light upon an alarm. Petitioner asserted Gregory taught using existing, dual-use lights (e.g., porch lights) that could be made to flash, satisfying several dependent claims. To meet the limitation that the control unit receives a "dispatch notification," Petitioner combined Saylor with Elliot, which disclosed a remote monitoring service sending a voice message to the control panel to inform occupants that emergency personnel had been dispatched.
  • Motivation to Combine: Petitioner contended a person of ordinary skill in the art (POSITA) would combine these analogous references to improve upon a known security system. A POSITA would combine Saylor's flexible alarm response system with Gregory's specific method of using exterior lighting to guide responders, as it was a known problem that responders needed help locating a premises. Similarly, a POSITA would integrate Elliot's dispatch notification feature into Saylor's system to provide occupants with reassuring and critical information, a logical and desirable enhancement.
  • Expectation of Success: Petitioner argued that combining these features would be straightforward. The references all relied on standard, commercially available security and home automation components, and integrating lighting control and two-way voice communication were well-known functionalities in the art at the time.

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 was identical to Ground 1 but added Siegler to provide an alternative or supplemental teaching for the limitation requiring the control unit to "determine a location" of the alarm condition. While Petitioner argued Saylor taught this, it asserted that Siegler did so more explicitly. Siegler disclosed a control system that determined the location of an alarm based on a sensor notification that included a "detection location" data component, directly mapping to the claim language.
  • Motivation to Combine: A POSITA looking to implement the alarm reporting in Saylor's system, which includes reporting location, would have looked to a reference like Siegler for details on how alarm information, including precise location data from a specific sensor, could be determined by a control device and reported.
  • Expectation of Success: As Siegler also disclosed a conventional security system architecture, incorporating its method for determining alarm location into Saylor's system would have been a predictable and straightforward design choice.

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 was identical to Ground 1 but added Gagvani to provide an alternative teaching for the limitation requiring the remote service to "filter out false alarms." While Saylor taught filtering by contacting the user, Gagvani taught a more advanced method using video analytics. Gagvani disclosed a system where, upon an alarm, captured video was analyzed by a remote central server to automatically confirm or deny the alarm, thereby filtering out false alarms before alerting a user or authorities.
  • Motivation to Combine: Petitioner argued that since Saylor taught the desirability of filtering false alarms and even suggested using video, a POSITA would have been motivated to look to a reference like Gagvani for a specific, automated technique to achieve this goal more effectively than manual user confirmation.
  • Expectation of Success: Integrating an automated video verification system as taught by Gagvani into Saylor's remote monitoring service would have been a predictable implementation, as both references dealt with transmitting alarm and sensor data to a central station for processing.

• Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 4) over the combination of Saylor, Gregory, Elliot, Siegler, and Gagvani, relying on the same motivations and art mappings described in the grounds above.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) based on the Fintiv factors would be inappropriate. It asserted that the parallel district court litigation (Vivint, Inc. v. ADT LLC) was in its early stages, with discovery just beginning and no trial date set. Petitioner, who was not a party to that litigation, noted that a motion to stay had been filed, and such stays are regularly granted. These factors, it argued, weighed heavily in favor of institution. Petitioner also contended that denial under §325(d) was improper because this petition was intended as a duplicate joinder petition to one filed by ADT, a situation where such considerations typically do not apply.

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.