Vivint, Inc. v. Alarm.com Inc.


Docket No. 2017-2218-20, -2260-62 (IPR2016-00116, -00161, -00173)

PROST, O’MALLEY, HUGHES
December 20, 2018
Non-precedential

Brief summary: Board’s construction (under BRI) of “communication device identification codes” reversed, vacated and remanded; other conclusions of non-obviousness affirmed.

Summary: Vivint appealed Board decision invalidating the claims of US 6,147,601; 6,462,654; and 6,535,123 relating to “systems and methods for remotely monitoring equipment, such as a heating, ventilating, and cooling system (‘HVAC system’)…using a centralized server to communicate with monitored equipment”. Alarm cross-appealed the Board’s construction of “communication device identification codes”. The systems are designed to contact users “based on what the patents call a ‘message profile’” which “essentially directs the server where to send messages if a problem arises” (e.g., to different people, based on different priority levels). The Board instituted review of certain ‘601 and ‘654 claims, and all of the ‘123 claims based on Alarm’s petition alleging obviousness in view of several references, the FC panel explaining that “only three are relevant to this appeal” (Shetty, Britton, and Levac, all US patents). The FC panel found “no error warranting reversal” of the Board’s construction of “the ‘message profile’ limitation” and its conclusion that “Shetty discloses ‘remotely configure[ing]’ a message profile”, and therefore affirmed the Board’s conclusions. Alarm argued the Board erroneously construed “a limitation relating to ‘communication device identification codes’” and “erred in finding various claims relating to ‘normal status message[s]’ patentable over the prior art”. The FC panel reviewed “the Board’s conclusions of law de novo” (“the Board’s determination of the broadest reasonable construction”) “and its findings of fact for substantial evidence (In re Gartside, FC 2000; Arendi, FC 2016 (“as a reasonable mind might accept as adequate”); PPC Broadband, FC 2016 (“This same framework applies to claim construction.”)). The FC panel disagreed with Vivint’s argument “that the Board’s construction is entitled to deference because it relied on extrinsic evidence” since the Board did not refer to any extrinsic evidence (Teva, US 2015). The FC panel agreed with Alarm that the Board erred in construing “communication device identification codes” as referring to “something ‘capable of uniquely identifying communication devices’” since “the Board’s conclusion that a phone number or email address cannot uniquely identify a communication device defies the patents’ teaching” (also pointing out that the term is not defined in the specification; BRI “must be reasonable in light of the claims and specification” (PPC Broadband)). The FC panel also disagreed with Vivint “that the Board’s construction is consistent with the plain meaning of” the term since, e.g., “Vivint’s citations to the ‘601 patent show that serial numbers or mobile identification numbers might be examples” of such codes (Polaris, FC 2018 (“specification is broader than the embodiment illustrated”)). The FC panel therefore reversed its construction, vacated its conclusions and remanded this construction. The FC panel affirmed the Board’s conclusion that the “normal status message” claims are patentable over Shetty and Britton, finding its conclusion to be supported by substantial evidence (In re Warsaw Orth., FC 2016; Graham, US 1966). And the FC panel found the Board’s conclusion that there would not have been a motivation to combine Shetty and Levac to practice ‘601 claim 19 to be supported by substantial evidence (Intelligent Bio-Sys., FC 2016; Belden, FC 2015 (“not only could have made but would have been motivated to make”)).

This entry was posted in Claim Construction, Inter Parties Review (IPR), IPR, Obviousness. Bookmark the permalink.

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