Vivint Inc v. ADT Security Corp

1. Case Identification

• Case #: IPR2022-01282
• Patent #: 9,286,772
• Filed: July 21, 2022
• Petitioner(s): Vivint, Inc.
• Patent Owner(s): The ADT Security Corporation
• Challenged Claims: 1-4, 7-15, and 18-20

2. Patent Overview

• Title: SECURITY SYSTEM AND METHOD
• Brief Description: The ’772 patent discloses a security control system that integrates both "life safety" (e.g., intrusion, fire) and "life style" (e.g., lighting, thermostat) features. The system is centered around a security control apparatus that communicates locally with user interface and premises devices via multiple wireless protocols and remotely with a monitoring center.

3. Grounds for Unpatentability

Ground 1: Claims 1, 7-15, and 18-20 are anticipated by, or alternatively obvious over, Raji.

• Prior Art Relied Upon: Raji (Application # 2011/0102171).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Raji discloses every element of the challenged claims. Raji’s security gateway (“iHub 102”) is a security control apparatus with a processor that communicates with a local wireless element (supporting RF, Z-Wave, and WiFi) and a remote communication element (supporting broadband, cellular, and PTSN). This gateway communicates with user interface devices (e.g., touchscreen) to receive control data and with premises-based devices for both security functions (e.g., door sensors, smoke detectors) and automation functions (e.g., lighting controls, cameras). The gateway also communicates data associated with both these "life safety" and "life style" features to a remote monitoring center, such as a Home Security Central Monitoring Station (CMS).
  • Key Aspects: Petitioner asserted that Raji’s disclosure of disabling home automation features during a power failure while maintaining security functions anticipates limitations in dependent claims 13-15.

Ground 2: Claims 2-4 and 13-15 are obvious over Raji in combination with Tat-Keung.

• Prior Art Relied Upon: Raji (Application # 2011/0102171) and Tat-Keung (WO 2010/107951).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed limitations in dependent claims requiring all processor functions to be performed by a single processor. Petitioner argued that while Raji discloses a system with multiple processors performing various functions, Tat-Keung teaches a gateway for energy management and control that uses a single processor (CPU 301) to perform analogous functions. Tat-Keung’s single processor monitors the premises power supply, controls security devices and other appliances, and implements power-saving modes that disable non-essential "life style" features (e.g., lighting) during a power failure to prioritize security functions.
  • Motivation to Combine: A POSITA would combine Tat-Keung's single-processor architecture with Raji's system to achieve predictable benefits. This simple substitution would reduce component count, manufacturing complexity, and inter-processor communication overhead, thereby improving system speed and reliability.
  • Expectation of Success: The combination involved programming a single processor to perform functions already known in the art, a task well within the skill of a POSITA, yielding predictable results with a high expectation of success.

Ground 3: Claims 1, 7-12, and 18-20 are anticipated by, or alternatively obvious over, Cohn, alone or in view of Raji.

• Prior Art Relied Upon: Cohn (Application # 2010/0277300), optionally in view of Raji (Application # 2011/0102171).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner contended that Cohn’s "security, monitoring and automation (SMA) controller" anticipates the claimed security control apparatus. Cohn’s controller is a single platform that includes a processor, a wireless communication element supporting RF, Z-Wave, Zigbee, and WiFi protocols, and a remote communication element with cellular, WiFi, and broadband capabilities. The controller communicates with user interface devices (e.g., a home computer, integrated touchscreen) and premises devices, including security sensors ("life safety") and home automation devices ("life style"). It transmits data from both types of devices to a remote "operator domain," which includes servers and a "central station," thereby satisfying the monitoring center limitation.
  • Motivation to Combine (for obviousness alternative): In the event Cohn was found not to disclose communication with a staffed monitoring facility, a POSITA would have been motivated to combine Cohn with Raji. Raji explicitly discloses communicating with a staffed CMS. A POSITA would have found it obvious to direct the alarm and event data from Cohn's advanced SMA controller to a staffed facility like Raji’s CMS to add a human review component for alarm verification and response, a well-known industry practice.

• Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 4) for claims 2-4 and 13-15 over Cohn in combination with Tat-Keung (and optionally Raji). This ground relied on a similar single-processor substitution theory as in Ground 2, arguing it would be obvious to incorporate Tat-Keung’s single-processor power monitoring and management features into Cohn’s SMA controller.

4. Key Claim Construction Positions

• "wireless communication element" / "remote communication element": Petitioner argued these terms, recited in claims 1 and 12, are means-plus-function terms under pre-AIA 35 U.S.C. §112, ¶6. Petitioner’s primary position was that the specification fails to disclose corresponding structure, rendering the terms indefinite. Alternatively, should the Board find sufficient structure, Petitioner contended the prior art discloses identical or equivalent structures (e.g., Z-wave, WiFi, cellular, and Ethernet hardware components disclosed in Raji and Cohn).
• "a processor": Petitioner noted that in a related investigation, an Administrative Law Judge construed "a processor" in the challenged claims to mean a single processor must perform all recited functions. This construction was central to Petitioner's obviousness arguments in Grounds 2 and 4, which use Tat-Keung to supply the teaching of a single-processor architecture.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §314(a) and §325(d). It was asserted that a parallel International Trade Commission (ITC) investigation was resolved on non-infringement grounds without reaching an invalidity decision, and the co-pending district court litigation is stayed. Petitioner also contended that although Raji and Cohn were cited in an Information Disclosure Statement (IDS) during prosecution of the ’772 patent, they were never substantively reviewed or discussed by the Examiner, meaning the Petition raises grounds the Patent Office has not previously considered.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-4, 7-15, and 18-20 of the ’772 patent as unpatentable.