CLEAN ENERGY MANAGEMENT SOLUTIONS, LLC

Patent Trials and Appeals Board

May 20, 2020

IPR2019-00476 (P.T.A.B. May. 20, 2020)

Trials@uspto.gov Paper 22
571-272-7822 Entered: May 19, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

UNIFIED PATENTS, LLC,
Petitioner,
v.
CLEAN ENERGY MANAGEMENT SOLUTIONS, LLC,
Patent Owner.

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Before J. JOHN LEE, JESSICA C. KAISER, and MICHAEL T. CYGAN,
Administrative Patent Judges.
CYGAN, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)

I. INTRODUCTION
Petitioner, Unified Patents, LLC (“Petitioner”), filed a Petition for
inter partes review of claims 1, 2, 6, 9, 10, 15, and 16 of U.S. Patent No.
8,035,479 B2 (Ex. 1001, “the ’479 patent”). Paper 2 (“Pet.”). Patent
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Owner, Clean Energy Management Solutions, LLC (“Patent Owner”),
waived filing of a preliminary response. Paper 5.
In our Institution Decision (Paper 6, “Inst. Dec.”), we instituted
review of all challenged claims based on all grounds advanced in the
Petition. We have jurisdiction under 35 U.S.C. § 6. We issue this Final
Written Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the
reasons explained below, Petitioner has shown by a preponderance of the
evidence that claims 1, 2, 6, 9, 10, 15, and 16 of the ’479 patent are
unpatentable. See 35 U.S.C. § 316(e) (2012).
II. BACKGROUND
A. Procedural History
After we instituted review, Patent Owner filed a Response (Paper 8,
“PO Resp.”), Petitioner filed a Reply (Paper 13, “Reply”), and Patent Owner
filed a Sur-reply (Paper 15, “Sur-reply”). On March 31, 2020, we held an
oral hearing. SeePaper 21 (“Tr.”).
B. Real Parties-in-Interest
The Petition named Petitioner Unified Patents, Inc., as the real party-
in-interest. Pet. 1. Petitioner has submitted voluntary discovery in support
of its certification. Ex. 1017. Petitioner provided notice that its name, and
consequently the name of the real party-in-interest has been changed to
Unified Patents, LLC. Paper 14, 2. Patent Owner named itself, Clean
Energy Management Solutions, LLC, as the real party-in-interest. Paper 3.
C. Related Matters
Petitioner has indicated that the ’479 patent is involved in sixteen
district court cases, most of which were filed in the U.S. District Court for
the Eastern District of Texas. Pet. 1–2; Paper 9, 1–2.
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D. The ’479 Patent
The ’479 patent generally relates to an electronic door lock system
that is wirelessly operated over a mesh network. Ex. 1001, 2:65–3:13.
Figure 3B of the ’479 patent, reproduced below, illustrates the system
described in the patent. Id. at 6:5–6.

As shown in Figure 3B reproduced above, wristwatch 1182 transmits
data to base station 1390 for communicating over a network to an authorized
party. Id. at 13:1–5. The watch and base station are part of a mesh network
that may communicate with an electronic door lock. Id. at 13:5–7. The
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mesh network may be an 805.15 network, an IEEE 802.15.4 (ZigBee)
network, or a compatible 2.4 GHz network. Id. at 3:50–60, 6:24–25. In a
ZigBee network, two types of devices are defined: the reduced function
device and the full function device. Id. at 6:26–27. A full function device,
which may be a router or a coordinator, can talk to other full function or
reduced function devices. Id. at 6:29–39. A reduced function device can
only talk to full function devices. Id. at 6:38–39. Reduced function devices
are intended for simple applications, and can be used as an end device such
as a light switch or a passive sensor. Id. at 6:39–47.
E. Illustrative Claim
Petitioner challenges claims 1, 2, 6, 9, 10, 15, and 16 of the ’479
patent. Claims 1 and 15 are independent. Claims 1, 2, 6, 9, and 10 recite
systems, and claims 15 and 16 recite methods.
Claim 1, reproduced below (with identifying labels 1a–h and line
breaks added), is illustrative of the subject matter of the challenged claims:
1. [1a] An electronic door lock system, comprising:
an electrically actuated arm having a first position to
allow access to an area and a second position to secure the area;
[1b] a mesh network to wirelessly communicate with one
or more appliances, wherein the mesh network comprises
[1c] a full function device that communicates with a
coordinator node, a router node, and an end node, the end node
being a mesh network key usable by a user to remotely activate
said arm;
[1d] wherein data is forwarded from node to node to a
destination so that data reaches the destination even if one or
more nodes fail,
[1e] wherein the coordinator node establishes the
network and defines main parameters for the mesh network,
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[1f] wherein the end node includes a reduced function
device, the reduce function device capable of communicating
with the network and does not participate in routing;
[1g] the mesh network key coupled to the mesh network
to send a code; and
[1h] a mesh network lock controller coupled to the
electrically actuated arm and to the mesh network, said
controller moving the electrically actuated arm to the first
position upon authenticating the code.
Ex. 1001, 18:44–65.
F. Evidence
Petitioner relies upon the following prior art references:
U.S. Patent 7,520,152 B2 (filed September 13, 2005; published April
21, 2009) (“Sabo,” Ex. 1002);
ZigBee Specification, Document 053474r06, Version 1.0, ZigBee
Alliance (dated June 27, 2005) (“ZigBee,” Ex. 1003);
U.S. Patent 5,979,199 (filed October 15, 1997; published November
9, 1999) (“Elpern,” Ex. 1004);
U.S. Patent Application Publication 2006/0103503 A1 (filed
November 12, 2004; published May 18, 2006) (“Rodriguez,”
Ex. 1005); and
U.S. Patent 6,297,725 B1 (filed June 21, 1999; published October 2,
2001) (“Tischendorf,” Ex. 1006).
In addition, Petitioner relies on expert testimony, submitted with the
Petition, in the form of a Declaration of Joseph A. Paradiso, Ph.D., and a
Declaration of Robert Heile, Ph.D. Exs. 1007, 1018.
G. Asserted Grounds
Petitioner asserts that claims 1, 2, 6, 9, 10, 15, and 16 are unpatentable
on the following grounds:
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Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
1, 2, 9, 10, 15, 16 103(a)1 Sabo, ZigBee, Elpern
1, 2, 6, 9, 10, 15 103(a) Rodriguez, ZigBee, Tischendorf

III. ANALYSIS
A. Legal Standards
A claim is unpatentable under § 103(a) if the differences between the
claimed subject matter and the prior art are such that the subject matter, as a
whole, would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations,
including (1) the scope and content of the prior art; (2) any differences
between the claimed subject matter and the prior art; (3) the level of skill in
the art; and (4) when in evidence, objective indicia of non-obviousness (i.e.,
secondary considerations). Graham v. John Deere Co., 383 U.S. 1, 17–18
(1966). We analyze the asserted obviousness grounds with the principles
identified above in mind.
B. Level of Ordinary Skill in the Art
Petitioner asserts that a person having ordinary skill in the art would
have had at least “at least a Bachelor’s Degree in computer science,
electrical engineering, or a related subject, two years of experience working
with computer networks and related technologies, and experience integrating

1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
125 Stat. 284, 287–88 (2011), revised 35 U.S.C. § 103, effective March 16,
2013. Because the application from which the ’479 patent issued was filed
before this date, the pre-AIA version of § 103 applies.
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an electromechanical device into a computer network.” Pet. 8–9 (citing Ex.
1007 ¶ 28). Patent Owner has not addressed this issue. We adopt
Petitioner’s assessment of the level of ordinary skill in the art because it is
consistent with the prior art cited and the evidence of record.
C. Claim Construction
The Petition was filed on December 28, 2018, after the effective date
of the rule change that replaced the broadest reasonable interpretation
(“BRI”) standard. See Changes to the Claim Construction Standard for
Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal
Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (final rule) (now codified at 37
C.F.R. pt. 42 (2019)) (“This rule is effective on November 13, 2018 and
applies to all IPR, PGR, and CBM petitions filed on or after the effective
date.”). Accordingly, we apply the federal court claim construction standard
that is used to construe a claim in a civil action under 35 U.S.C. §282(b),
construing the claim in accordance with the ordinary and customary
meaning of such claim as understood by one of ordinary skill in the art in the
context of the patent and the prosecution history pertaining to the patent, as
articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en
banc). 37 C.F.R. §42.100(b). “[W]e need only construe terms ‘that are in
controversy, and only to the extent necessary to resolve the controversy.’”
Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,
1017 (Fed. Cir. 2017) (quoting Vivid Techs, Inc. v. Am. Sci. & Eng’g, Inc.,
200 F.3d 795, 803 (Fed. Cir. 1999)).
Petitioner submits that all terms of the challenged claims should be
interpreted according to their plain and ordinary meaning. Pet. 10. Neither
party has proposed any particular construction of any claim term.
Accordingly, we give each term its plain and ordinary meaning.
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D. Asserted Obviousness over Sabo, ZigBee, and Elpern
Petitioner contends that claims 1, 2, 9, 10, 15, and 16 of the
’479 patent are unpatentable under 35 U.S.C. § 103(a) as obvious over Sabo,
ZigBee, and Elpern. Pet. 10–39. Petitioner contends that this proffered
combination teaches or suggests the subject matter of each challenged claim,
and provides alleged reasoning as to why one of ordinary skill in the art
would have been prompted to modify or combine the references’ respective
teachings. Id. Petitioner also relies upon the Declarations of Dr. Joseph A.
Paradiso and Dr. Robert Heile to support its positions. Ex. 1007; Ex. 1018.
During the trial, Patent Owner addressed only claim 6, which is not
challenged as part of this ground. See PO Resp.; Sur-reply. For the reasons
provided below, we determine that Petitioner has demonstrated by a
preponderance of the evidence that claims 1, 2, 9, 10, 15, and 16 are
unpatentable as obvious over the combination of Sabo, ZigBee, and Elpern.
1. Overview of Sabo
Sabo generally relates to a door locking device having a door locking
mechanism that may be wirelessly controlled. Ex. 1002, Abstract. Figure 9
of Sabo is reproduced below as annotated by Petitioner. Pet. 13.
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Figure 9 illustrates Sabo’s door locking mechanism. As shown in
Figure 9, wireless controller 420 receives a wireless signal from base station
4 or fob 6, and electrically controls solenoid 416 to engage or disengage
deadbolt 408 into door 402 or similar object. Id. at 11:37–12:34. Sabo’s
locking device may be also opened by inserting manual key 426 into lock
406. Id. at 12:47–58. Sabo’s wireless communication may be in accordance
with wireless communication standards such as the ZigBee Alliance
standard. Id. at 4:30–36.
2. Overview of ZigBee
ZigBee is a document by the ZigBee Alliance that describes the
infrastructure and services available to applications operating on a ZigBee
platform. Ex. 1003, 1. The document describes the ZigBee protocol
standard as being designed to permit implementers of the standard to
produce interoperable, low-cost, and highly usable products for the wireless
marketplace. Id. at 17:21–24. Consumer applications include home and
building automation. Id. at 17:7–9. The ZigBee platform may be structured
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as a mesh network having a coordinator device that is responsible for
starting the network and choosing certain network parameters. Id. at 18:46–
48. The network may be extended by routers that move data and control
messages through the network using a routing strategy that allows for full
peer-to-peer communication. Id. at 18:48–52. End devices, which are
neither the coordinator nor a router, may also be part of the network. Id. at
24:8–9. Where an end device is unable to communicate with a parent node,
it may rejoin the network through a new parent node. Id. at 244:22–26.
Broken links within the network may be repaired through a new connection.
Id. at 243:43–244:20.
Petitioner alleges that ZigBee was publicly accessible and, thus, a
printed publication, as at least as early as July 7, 2005. Pet. 4–5 (citing Ex.
1018 (Heile Decl.)). The Heile Declaration is by Dr. Robert Heile, who
testifies that he was formerly Chairman Emeritus and Chief Technologist for
the ZigBee Alliance. Ex. 1018 ¶ 7. Dr. Heile declares upon personal
knowledge that ZigBee was published on www.zigbee.org at least as early as
July 7, 2005. Id. ¶¶ 22–23. Dr. Heile also provides statements as to the
availability of ZigBee through the website, and supporting documentation.
Id. ¶¶ 27–39. Patent Owner has not contested Petitioner’s allegations. We
find that Petitioner has shown that this reference is a prior art printed
publication under 35 U.S.C. § 102.
3. Overview of Elpern
Elpern relates to an electrically operated actuator for locks and
dead-bolt lock assemblies. Ex. 1004, 1:7–10. A driving means is responsive
to an electrical signal so as to cause a rotating means to extend or retract a
bolt in a dead-bolt apparatus. Id. at 2:34–39. Figure 3 of Elpern is
reproduced below.
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Figure 3 illustrates an actuator configuration. Figure 3 illustrates
electrically operated actuator assembly 212 having motor 220 acting to drive
gear 270 such that protrusion 236a contacts lever 238, forcing lever 238 to
rotate drive bar 18 until bolt 14 retracts. Id. at 8:1–8. The actuator may be
controlled by a remote control radio frequency (“RF”) transmitter. Id. at
10:33–38.
Figure 7 of Elpern illustrates a configuration using a remote control of
the actuator and is reproduced below.
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In Figure 7, RF transmitter 502 transmits a code to RF receiver 504.
Id. at 10:40–46. The code is detected by circuit 508 and, if matching the
proper code, microcontroller 512 activates actuator assembly 12. Id. at
10:40–59.
4. Analysis
Upon review of Petitioner’s explanation and supporting evidence, we
determine that Petitioner has demonstrated by a preponderance of the
evidence that the combination of Sabo, ZigBee, and Elpern renders claims 1,
2, 9, 10, 15, and 16 obvious.
a) Claim 1
We begin by discussing Petitioner’s contentions regarding
independent claim 1. As to recitation [1a] in claim 1,2 Petitioner asserts that
Sabo teaches “[a]n electronic door lock system comprising an electrically
actuated arm having a first position to allow access to an area and a second

2 We need not decide whether the preamble is limiting, because regardless of
whether the preamble is limiting, Petitioner has shown that the recitation in
the preamble is satisfied by the prior art.
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position to secure the area,” as required by claim 1, because Sabo describes
the use of a door lock having a door frame from which a deadbolt is
extended or retracted by the action of a solenoid electronically controlled by
an actuating circuit. Pet. 11–14 (citing Ex. 1002, Fig. 9). According to
Petitioner, in this manner, the deadbolt is an electrically actuated arm having
a first position to allow access to an area and a second position to secure the
area. Id. at 14 (citing Ex. 1002; Ex. 1007 ¶ 38).
As to limitation [1b] recited in claim 1, Petitioner relies upon Sabo in
combination with ZigBee to teach a mesh network to wirelessly
communicate with one or more appliances. Id. at 14. Petitioner asserts that
Sabo teaches a wireless home system, where a base station, fob, sensors, and
devices communicate over a network. Id. (citing Ex. 1002, 5:58–6:32). The
devices may include appliance electrical switches, generators, water valves,
door locks, gas valves, electrical switches, garage doors, thermostats, and
light switches. Id. (citing Ex. 1002, 5:66–6:1, 8:36–51). Relying on
Dr. Paradiso’s testimony, Petitioner equates these teachings to the claimed
“wireless[ly] communicating with one or more appliances.” Id. (citing
Ex. 1007 ¶ 39).
With respect to limitation [1b]’s requirement that the wireless network
be a mesh network, Petitioner asserts that a person having ordinary skill in
the art would have understood Sabo’s teaching that its wireless network can
be an IEEE 802.15.4 or ZigBee Alliance standard network to reference
known mesh network standards, thereby teaching or suggesting a wireless
mesh network. Id. at 14–15 (citing Ex. 1002, 4:30–36; Ex. 1007 ¶ 40).
Petitioner further asserts that it was well known by the earliest claimed
priority date of the ’479 patent that the ZigBee Alliance standard, as
disclosed in Zigbee, may operate in a mesh topology, and would find
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application in consumer electronics, home and building automation, and in
appliances such as lamps or thermostats. Id. at 15 (citing Ex. 1003, 18, 30,
31, 33, 62, 353–355, 367, 369, 376; Ex. 1007 ¶ 41); see id. at 6 n.2. Because
Sabo discloses that the ZigBee standard can be used for the wireless
network, Petitioner asserts, one having ordinary skill in the art would have
found it obvious to use the mesh topology of the ZigBee network (as taught
by Zigbee) to extend the range of the network and to provide a more robust
network architecture, and would have had a reasonable expectation of
success in making this modification. Id. at 15–16 (citing Ex. 1003, 341,
344; Ex. 1007 ¶ 42).
With respect to limitation [1c] recited in claim 1, Petitioner asserts
that a ZigBee network, as taught in Sabo and Zigbee, is comprised of
devices, referred to as “nodes,” having defined roles of coordinator, router,
and end device. Id. at 17 (citing Ex. 1003, 18, 22, 32, 69; Ex. 1007 ¶ 44).
Petitioner further asserts that Sabo teaches wireless network nodes for which
the base station is a network coordinator, or coordinator node, that operates
as the coordinator for devices wanting to join a communication network. Id.
(citing Ex. 1002, 4:57–5:5, 6:8–12; Ex. 1003, 21; Ex. 1007 ¶ 45).
Petitioner further asserts that Sabo also teaches wireless network nodes that
act as range extenders between other nodes, so as to form router nodes that
are full function devices. Id. at 17–18 (citing Ex. 1002, 6:28–32, Fig. 1;
Ex. 1003, 18, 24; Ex. 1007 ¶ 46). Petitioner further asserts that the fob of
Sabo is an end node, meeting the ZigBee standard definition of an end
device as a battery powered device that does not route data, and acts as a
remote control to lock or unlock a door lock. Id. at 18 (citing Ex. 1002,
2:41–54, 3:19–60, 4:48–56, 5:58–6:1, 6:13–17, 8:36–51, 11:61–14:13, Fig.
1; Ex. 1003, 343; Ex. 1007 ¶ 47).
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In the alternative, Petitioner asserts that one having ordinary skill in
the art would have found it obvious to cast the base station, range extenders,
and fob of Sabo in the respective ZigBee standard roles of coordinator,
routers, and end device, because Sabo teaches that the network may be
operated under the ZigBee standard, and these roles best correspond to the
nodes of Sabo. Petitioner further asserts that one having ordinary skill would
have had a reasonable expectation of success in making this modification.
Id. at 18–19 (citing Ex. 1007 ¶¶ 48–49; Ex. 1002, 6:24–32). Petitioner
further asserts that one having ordinary skill in the art would recognize the
routers to be full function devices that communicate with a coordinator
node, a router node, and an end node. Id. at 19–20 (citing Ex. 1007 ¶ 50).
Moreover, Petitioner asserts that one having ordinary skill in the art would
have found it obvious to include multiple routers in a mesh network in order
to provide greater network range and to be more robust. Id. at 20 (citing Ex.
1003, 22; Ex. 1007 ¶ 51).
With respect to limitation [1d], Petitioner asserts that Sabo uses
multiple sensor nodes to receive a wireless signal sent from a fob, and that
one having ordinary skill in the art would have recognized that the data
contained in the fob’s signal would reach the destination even if one of the
sensor nodes fails. Id. at 21 (citing Ex. 1002, Fig. 1, 13:33–62; Ex. 1007
¶ 52). Furthermore, Petitioner asserts that the forwarding of data from node
to node to prevent failure was standard to ZigBee networks having a mesh
technology at the time of the earliest claimed priority date of the ’479 patent,
and that one having ordinary skill in the art would have understood Sabo’s
teaching of a ZigBee network to teach or suggest such a feature. Id. at 22
(citing Ex. 1002, 4:30–36; Ex. 1007 ¶ 53); see id. at 6 n.2. Petitioner
additionally provides an explanation of how such a mesh-configured ZigBee
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network provides route repair to forward data from node to node to prevent
data loss. Id. at 22 (citing Ex. 1003, 243). Petitioner submits evidence
supporting its explanation that one having ordinary skill in the art at the time
of the earliest claimed priority date of the ’479 patent would have found it
obvious to modify the ZigBee network of Sabo to use a mesh topology
(taught by Zigbee) so as to provide the route repair and data rerouting of the
ZigBee standard when a device in the network fails. Id. at 23 (citing Ex.
1007 ¶ 55); see id. at 6 n.2.
With respect to limitation [1e], Petitioner asserts that Sabo’s base
station operates as a coordinator for devices wanting to join the network, and
stores configuration-related information. Id. at 23–24 (citing Ex. 1002,
4:57–61, 6:8–12, 47–51). Petitioner provides supporting evidence for the
explanation that one having ordinary skill in the art would have recognized
that the base station of Sabo establishes the network and defines the main
parameters for the network. Id. at 24 (citing Ex. 1007 ¶ 56). Additionally,
Petitioner asserts that it would have been obvious to one having ordinary
skill in the art at the time of the earliest claimed priority date of the ’479
patent to configure the base station of Sabo as a coordinator node so as to be
responsible for starting the network and choosing key network parameters,
as taught by ZigBee. Id. (citing Ex. 1003, 18; Ex. 1007 ¶ 57); see id. at 6
n.2.
With respect to limitation [1f], Petitioner asserts that Sabo’s fob is a
node that does not route other signals and is, thus, an end node. Id. at 25
(citing Ex. 1002, Fig. 1, 13:33–62; Ex. 1007 ¶ 52). Petitioner further asserts
that it would have been obvious to one having ordinary skill in the art at the
time of the earliest claimed priority date of the ’479 patent to configure
Sabo’s fob as an end node in light of ZigBee, given that an end node in a
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ZigBee network participates in the ZigBee network and performs no routing.
Id. (citing Ex. 1003, 24, 343; Ex. 1007 ¶ 58); see id. at 6 n.2. Petitioner
further asserts that Sabo teaches or suggests a fob that is a portable device,
worn or carried by a person; is battery powered; and employs relatively low
power, short distance RF communication. Id. at 25 (citing Ex. 1002, 4:48–
56, 6:1–3, 7:26–29). Petitioner asserts that in a ZigBee network, an end
node can be either a reduced function device or a full function device. Id.
(citing Ex. 1003, 24–25). Petitioner provides supporting evidence for the
explanation that it would have been obvious to one having ordinary skill in
the art at the time of the earliest claimed priority date of the ’479 patent to
implement the fob of Sabo as a reduced function device in light of ZigBee in
order to configure the fob so as to save battery power and reduce cost, with a
reasonable expectation of success. Id. at 25–26 (citing Ex. 1007 ¶ 59); see
id. at 6 n.2.
With respect to the network key coupled to the network to send a code
as set forth in limitation [1g], Petitioner asserts that Sabo’s fob can be
employed as a remote control that sends a code in the form of an RF
message to the base station, causing the base station to send an RF message
to the door lock device. Id. at 26 (citing Ex. 1002, 6:13–17, 11:55–59,
13:33–62; Ex. 1007 ¶ 60). Furthermore, Petitioner asserts, by way of
Elpern, that it was well known at the time of the earliest claimed priority
date of the ’479 patent to send a code from a wireless device to a door lock,
wherein a circuit at the door lock determines whether a valid signal was
received before permitting actuation of the door lock. Id. at 26–27 (citing
Ex. 1004, Abstract, 10:44–47, 50–57, 11:5–18, Figs. 7, 8); see id. at 6 n.2.
Petitioner provides supporting evidence for the explanation that it would
have been obvious to one having ordinary skill in the art at that time to
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modify (if necessary) the fob of Sabo to send a code receivable by the door
lock device, in light of Elpern, in order to configure the fob so as to provide
greater security. Id. at 27–28 (citing Ex. 1004, 17:44–49; Ex. 1007 ¶¶ 62–
63); see id. at 6 n.2. The limitation of the network being a mesh network
was addressed in the discussion of limitation [1b], supra.
With respect to limitation [1h], Petitioner further asserts that Sabo
teaches a door lock device and wireless controller in a home wireless
network, in which the wireless controller receives a wireless signal and
electrically actuates the door lock solenoid to lock or unlock the door. Id. at
28–29 (citing Ex. 1002, Abstract, 2:41–54, 3:18–60, 8:36–51, 11:50–14:13;
Ex. 1007 ¶ 65). Moreover, Petitioner provides supporting evidence for the
explanation that it would have been obvious to one having ordinary skill in
the art at the time of the earliest claimed priority date of the ’479 patent to
use a controller that moves an electrically actuated arm to a first position to
allow access to an area upon authenticating the code, relying on the Paradiso
declaration and Elpern. Id. at 29–30 (citing Ex. 1007 ¶¶ 66–67; Ex. 1004,
Abstract, Figs. 1, 1A, 3:37–43, 6:19–52, 10:33–39); see id. at 6 n.2.
Additionally, Petitioner presents the modification of the system of Sabo so
as to remotely lock or unlock the door as being motivated by the additional
unlocking functionality and as substituting one known element for another to
operate in the same manner. Id. at 30 (citing Ex. 1007 ¶ 68).
Patent Owner does not respond to Petitioner’s contentions that the
combination of Sabo, ZigBee, and Elpern teaches or suggests every
limitation of claim 1, and Petitioner’s reasoning why one of ordinary skill in
the art would have combined the teachings and suggestions of Sabo, ZigBee,
and Elpern. See generallyPO Resp.; Sur-reply.
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We find Petitioner’s assertions regarding each limitation of claim 1 to
be supported by the evidence and prior art references relied upon, as detailed
supra. We further determine that, for the reasons set forth by Petitioner,
which we find persuasive, it would have been obvious to combine the relied-
upon teachings and suggestions of Sabo, ZigBee, and Elpern to arrive at the
claimed invention with a reasonable expectation of success. Based on the
evidence before us and the reasons set forth in the Petition, we determine
that Petitioner has shown by a preponderance of the evidence that claim 1
would have been obvious over the combination of Sabo, ZigBee, and
Elpern.3
b) Claims 2, 9, 10, 15, and 16
Dependent claim 2 depends from claim 1 and adds the further
limitation of the mesh network comprising one of an 802.15 network or a
ZigBee network. The Petition relies on the description of Sabo that the
home wireless network can be an “802.15.4” or “ZigBee” network. Pet. 31
(citing Ex. 1002, 4:30–36; Ex. 1007 ¶ 71).
Dependent claim 9 depends from claim 1 and adds the further
limitation of
a mesh network appliance to provide one of: home security,
door access control, lighting control, power outlet control,
dimmer control, switch control, temperature control, humidity
control, carbon monoxide control, fire alarm control, blind
control, shade control, window control, oven control, cooking
range control, personal computer control, entertainment console
control, television control, projector control, garage door
control, car control, pool temperature control, water pump
control, furnace control, heater control, thermostat control,

3 We note that neither party identified evidence of, or otherwise addressed,
any objective indicia of non-obviousness.
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electricity meter control, water meter monitor, gas meter
monitor, remote diagnostic.
Ex. 1001, 19:27–35. For this limitation, Petitioner relies on the description
of Sabo that the home wireless network can include a door lock, light switch,
electrical switch, thermostat, or garage door. Pet. 31–32 (citing Ex. 1002,
8:36–51; Ex. 1007 ¶ 73).
Dependent claim 10 depends from claim 1 and adds the further
limitation of the mesh network being coupled to a wide area network
including the Internet. Petitioner relies upon the description in Sabo that its
home wireless network may include a link to the Internet. Id. at 32 (citing
Ex. 1002, 5:58–64, 6:67–7:5, Fig. 1; Ex. 1007 ¶ 75).
Challenged independent claim 15 contains limitations similar to claim
1. Ex. 1001, 18:44–65, 20:10–30. Petitioner asserts that the combination of
Sabo, ZigBee, and Elpern teaches or suggests the limitations of claim 15 in a
manner similar to the limitations of claim 1. Pet. 32–38.
Dependent claim 16 depends from claim 15 and adds the further
limitation of the mesh network comprising an 802.15 network. The Petition
relies on the description of Sabo that the home wireless network can be an
“802.15.4” network. Pet. 39 (citing Ex. 1002, 4:30–36; Ex. 1007 ¶ 71).
Patent Owner has not addressed Petitioner’s contentions for the
obviousness of claims 2, 9, 10, 15 and 16. See generally PO Resp.; Sur-
reply. Based on the arguments and evidence before us, we find that
Petitioner has shown that the combination of Sabo, ZigBee, and Elpern
teaches each limitation of claims 2, 9, 10, 15 and 16, as Petitioner’s
assertions are supported by the evidence and prior art references relied upon,
as detailed supra. We further determine that, for the reasons set forth by
Petitioner, which we find persuasive, it would have been obvious to combine
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the relied-upon teachings and suggestions of Sabo, ZigBee, and Elpern to
arrive at the claimed invention with a reasonable expectation of success. For
the reasons expressed supra, we determine that Petitioner has demonstrated
by a preponderance of the evidence that claims 2, 9, 10, 15, and 16 would
have been obvious over the combination of Sabo, ZigBee, and Elpern.4
E. Asserted Obviousness over Rodriguez, ZigBee, and Tischendorf
Petitioner contends that claims 1, 2, 6, 9, 10, and 15 of the ’479 patent
are unpatentable under 35 U.S.C. § 103(a) as obvious over Rodriguez,
ZigBee, and Tischendorf. Pet. 40–68. Petitioner asserts that this proffered
combination teaches or suggests the subject matter of each of claims 1, 2, 6,
9, 10, and 15, and provides alleged reasoning as to why one of ordinary skill
in the art would have been prompted to modify or combine the references’
respective teachings. Id. Petitioner also relies upon the Declarations of Dr.
Paradiso and Dr. Heile to support its positions. Ex. 1007; Ex. 1018.
Patent Owner addresses Petitioner’s contentions only with respect to
claim 6. See PO Resp.; Sur-reply. For the reasons provided below, we find
that Petitioner has demonstrated by a preponderance of the evidence that
claims 1, 2, 6, 9, 10, and 15 would have been obvious over the combination
of Rodriguez, ZigBee, and Tischendorf.
1. Overview of Rodriguez
Rodriguez generally relates to wireless technology for opening a
movable barrier such as a garage door. Ex. 1005, Fig. 1, Abstract. Remote
RF transmitters send RF signals with embedded codes to the barrier
operator. Id. ¶ 3. A plurality of devices may communicate with the barrier

4 We note that neither party identified evidence of, or otherwise addressed,
any objective indicia of non-obviousness.
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controller through wireless signals. Id. ¶ 20. Communication may be
through a wireless network wherein a wireless transceiver is connected to
the barrier controller. Id. ¶ 24. The wireless transceiver may be connected
to a memory device to validate the received code within the RF signal. Id.
The network can include internet portals, permitting a user to send an
instruction via a website to actuate the lock. Id. The network may be
configured as a mesh in which networked devices communicate directly
with each other. Id. ¶ 25.
2. Overview of Tischendorf
Tischendorf generally relates to a remotely operated keyless locking
mechanism for transmitting coded signals to an electromechanical door lock
device. Ex. 1006, Abstract. The operation of the locking mechanism is
shown in Figure 1, reproduced below.

Figure 1 shows a door locking apparatus mounted in door 19. Id. at
8:3–5. The “conventional” configuration of handles 25, 30, latch member
31, and strike plate 33 is unlockable by handheld controller 400. Id. at 8:5–
14, 11:41–45.
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3. Analysis
Upon review of Petitioner’s explanation and supporting evidence, we
determine that Petitioner has demonstrated, by a preponderance of the
evidence, that the combination of Rodriguez, ZigBee, and Tischendorf
renders obvious the claims challenged in this ground. Petitioner provides
claim mapping of each individual limitation of the challenged claims to the
prior art teachings. Pet. 40–68. Petitioner further provides a rationale to
combine the references, and an explanation of why a person having ordinary
skill in the art would have had a reasonable expectation of success in doing
so. Id. at 45–46, 48–56, 58–60, 65–68.
a) Claim 1
We begin by discussing Petitioner’s contentions regarding
independent claim 1. As to recitation [1a] in claim 1,5 Petitioner asserts that
Rodriguez teaches a remote transmitter that enables a door lock, in the form
of an electrically actuated arm, to move between locked and unlocked
positions. Pet. 42–43 (citing Ex. 1005 ¶¶ 22–23). Furthermore, Petitioner,
relying on the Paradiso declaration, provides supporting evidence for the
explanation that one having ordinary skill in the art at the time of the earliest
claimed priority date of the ’479 patent would have understood that the lock
state of a door lock either allows access to an area, or secures the area. Id. at
43 (citing Ex. 1007 ¶ 101); see id. at 6 n.2. Moreover, Petitioner asserts that
the disclosure of the ’479 patent characterizes door locks having an
electrically actuated arm as being known; in particular, as being taught in
Tischendorf. Id. at 43–44 (citing Ex. 1001, 1:36–45, 2:40–61, 10:26–52; Ex.

5 We need not decide whether the preamble is limiting, because regardless of
whether the preamble is limiting, Petitioner has shown that the recitation in
the preamble is satisfied by the prior art.
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1007 ¶ 102). Petitioner further notes that the ’479 patent refers to
Tischendorf as providing more details of the preferred embodiment of the
electronic lock of the ’479 patent, and that Figure 2 of the ’479 patent
appears to display the same electronic door lock as Figure 1 of Tischendorf.
Id. at 44 (citing Ex. 1001, 10:47–52, Fig. 2; Ex. 1006, Fig. 1). Petitioner
refers to the electronic lock of Tischendorf as an electrically actuated arm, as
it is an electromechanical device that rotates a locking rod causing the door
to be locked or unlocked. Id. at 45 (citing Ex. 1006, 11:63–12:6; Ex 1007 ¶
103).
Petitioner further asserts that alternatively, it would have been obvious
to modify the door lock of Rodriguez to utilize an electronic door lock that
rotates a locking rod causing a door to be locked or unlocked, as taught or
suggested by Tischendorf, in order to provide a pick-proof, low-power lock
that is compatible with the internal mechanical locking mechanisms of
universally used conventional key-operated doorlatch locks. Id. Petitioner
further asserts that this proposed modification merely requires the
substitution of one known element for another to operate in the same manner
as the door lock device of Tischendorf. Id. at 45–46 (citing Ex. 1006, 2:64–
3:1; Ex. 1007 ¶¶ 104–105).
As to limitation [1b] recited in claim 1, Petitioner relies upon
Rodriguez alone or in combination with ZigBee to teach this limitation. Id.
at 46. Petitioner asserts that Rodriguez discloses a remote transmitter
non-network device that causes a signal to be sent to an operator controller,
which can actuate a door lock or other appliances such as lights or
refrigerators. Id. at 46 (citing Ex. 1005 ¶¶ 18, 22–23; Ex. 1007 ¶ 106).
Petitioner further asserts that Rodriguez discloses that the local devices can
be configured as network devices, which, in the case of a mesh type
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network, may use other devices as signal relay points. Id. (citing Ex. 1005
¶ 25; Ex. 1007 ¶ 107).
Petitioner further asserts that alternatively, it was well known at the
time of the earliest claimed priority date of the ’479 patent to configure a
network in a mesh topology, citing ZigBee for an example of such. Id. at 47
(citing Ex. 1007 ¶¶ 108–109; Ex. 1003, 18); see id. at 6 n.2. Petitioner
asserts that it would have been obvious to a person having ordinary skill at
that time to modify the network of Rodriguez to use a ZigBee mesh network
in order to provide for an extended network with a more robust network
architecture. Id. at 48 (citing Ex. 1003, 22, 341, 344; Ex. 1007 ¶ 110); see
id. at 6 n.2.
As to limitation [1c] recited in claim 1, Petitioner relies upon
Rodriguez in combination with ZigBee to teach this limitation. Id. at 49.
Petitioner asserts that the mesh network disclosed by Rodriguez alone or in
view of ZigBee comprises a portable remote transmitter network device
usable to remotely activate the arm of a door lock, as discussed in our
discussion of limitation [1c]. Petitioner asserts that the remote transmitter
network device is therefore a network key usable by a user to remotely
activate the arm of the door lock. Id. at 49–50 (citing Ex. 1005 ¶¶ 22–23,
25; Ex. 1007 ¶ 113).
With respect to the limitation [1c]’s requirements of “a full function
device that communicates with a coordinator node, a router node, and an end
node,” Petitioner asserts that these are well-known features of ZigBee, and
that it would have been obvious to a person having ordinary skill in the art at
the time of the earliest claimed priority date of the ’479 patent to modify the
networked devices in the network of Rodriguez so that one of the networked
devices acts as a ZigBee coordinator and other network devices act as
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ZigBee routers. Id. at 50 (citing Ex. 1007 ¶ 115; Ex. 1003, 18); see id. at 6
n.2. Petitioner asserts that the rationale for doing so is because a ZigBee
mesh network requires a ZigBee coordinator to start the network and choose
certain key parameters for the network, and the ZigBee routers best
correspond to the relay point devices of Rodriguez. Id. at 50–51 (citing Ex.
1003, 18, 24; Ex. 1005 ¶ 25; Ex. 1007 ¶ 116).
Petitioner further asserts that one having ordinary skill in the art
would have recognized that a router in a ZigBee network, corresponding to
the relay point of Rodriguez, is a full function device. Id. at 51, 53 (citing
Ex 1003, 24; Ex. 1007 ¶ 116). Petitioner additionally asserts that it would
have been obvious to one having ordinary skill in the art to modify the
remote transmitter of Rodriguez to be an end device, because this is the
ZigBee device type that best corresponds to Rodriguez’s remote transmitter.
Id. at 51 (citing Ex. 1007 ¶ 117). Petitioner further asserts that such
modification could have been accomplished with a reasonable expectation of
success, due to the similarities between Rodriguez’s mesh type network and
the ZigBee network. Id. at 52 (citing Ex. 1003, 17–18, 29, 255, 352;
Ex. 1007 ¶ 118). Petitioner also asserts that it would have been obvious to
include more than one ZigBee router in the network of Rodriguez in order to
provide a network that has greater range and is more robust. Id. at 53 (citing
Ex. 1003, 22, 341, 344; Ex. 1007 ¶ 120).
As to limitation [1d] recited in claim 1, Petitioner relies upon
Rodriguez in combination with ZigBee to teach this limitation. Id. at 54.
Petitioner asserts that the mesh network disclosed by Rodriguez alone or in
view of ZigBee comprises networked devices that use each other as relay
points to send signals from device to device. Id. (citing Ex. 1005 ¶ 25;
Ex. 1007 ¶ 121). To the extent that Rodriguez does not teach that data
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reaches its destination even if one or more nodes fail, Petitioner asserts that
such functionality was standard to ZigBee mesh type networks, as taught in
Zigbee, in which failure of a node is addressed by an upstream node
buffering the data and identifying an alternative route for transmitting the
data. Id. (citing Ex. 1003, 243; Ex. 1007 ¶ 122). Petitioner submits
evidence supporting its explanation that one having ordinary skill in the art
at the time of the earliest claimed priority date of the ’479 patent would have
found it obvious to modify the network of Rodriguez so as to provide the
route repair and data rerouting of ZigBee when a device in the network
acting as a relay point or router fails. Id. at 54 (citing Ex. 1007 ¶ 123); see
id. at 6 n.2.
With respect to limitation [1e], Petitioner asserts that it would have
been obvious to one having ordinary skill in the art at the time of the earliest
claimed priority date of the ’479 patent to modify the network of Rodriguez
to be a ZigBee network with a mesh topology, as discussed in our discussion
of limitation [1b]. Id. at 55; see id. at 6 n.2. Petitioner asserts that it would
have been obvious to include a coordinator so as to be responsible for
starting the network and choosing key network parameters, as taught by
ZigBee. Id. at 55 (citing Ex. 1007 ¶ 124).
With respect to limitation [1f], Petitioner asserts that it would have
been obvious to one having ordinary skill in the art at the time of the earliest
claimed priority date of the ’479 patent to configure Rodriguez’s remote
transmitter as an end node in light of ZigBee, because an end node in a
ZigBee network participates in the ZigBee network and performs no routing.
Id. at 55–56 (citing Ex. 1003, 24, 343; Ex. 1007 ¶ 125); see id. at 6 n.2.
Petitioner further asserts that Rodriguez teaches or suggests a remote
transmitter that is a portable or handheld device. Id. at 55–56 (citing Ex.
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1005 ¶ 22). Petitioner asserts that in a ZigBee network, an end node can be
either a reduced function device or a full function device. Id. (citing Ex.
1003, 24–25). Petitioner provides supporting evidence for the explanation
that one having ordinary skill in the art at the time of the earliest claimed
priority date of the ’479 patent would have found it obvious to implement
the remote transmitter of Rodriguez as a reduced function device in light of
ZigBee in order to configure the remote transmitter so as to save battery
power and reduce cost, and would have had a reasonable expectation of
success in doing so. Id. at 56 (citing Ex. 1007 ¶ 126); see id. at 6 n.2.
With respect to limitation [1g], Petitioner asserts that Rodriguez
teaches a remote control that sends a code in the form of a message to the
base station, causing the base station to send a message to the door lock
device. Id. at 57 (citing Ex. 1005 ¶ 23; Ex. 1007 ¶ 127).
With respect to limitation [1h], Petitioner asserts that Rodriguez
further teaches a door lock device and operator controller in a home wireless
network, in which the operator controller locks or unlocks the door after
authenticating the signal. Id. at 57–58 (citing Ex. 1005 ¶ 23; Ex. 1007
¶128). According to Petitioner, the locking mechanism may be an
electrically actuated arm as taught by Rodriguez, or by Rodriguez in view of
Tischendorf, as explained in our discussion of limitation [1a]. Furthermore,
Petitioner provides supporting evidence for the explanation that it would
have been obvious to one having ordinary skill in the art at the time of the
earliest claimed priority date of the ’479 patent that a door lock capable of
receiving a signal directly from a remote transmitter over Rodriguez’s mesh
type network would have a controller coupled to the door lock and the
network, or that in the alternative, it would have been well known to have
done so. Id. at 58–59 (citing Ex. 1007 ¶¶ 129–130; Ex. 1006, 11:63–12:1,
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13:47–65); see id. at 6 n.2. Petitioner further asserts that it would have been
obvious to one having ordinary skill in the art at that time to modify the door
lock of Rodriguez to receive an entrance code and compare it to a stored
entrance code to perform Rodriguez’s authentication in light of the teachings
of Tischendorf, which could be accomplished with a reasonable expectation
of success, because performing the authentication at the door lock would
permit authentication where the signal is not relayed through a central
controller. Id. at 59–60 (citing Ex. 1007 ¶¶ 131–132); see id. at 6 n.2.
Patent Owner has not addressed Petitioner’s arguments regarding
claim 1. See generally PO Resp.; Sur-reply. Based on the arguments and
evidence before us, we find that Petitioner has shown that the combination
of Rodriguez, ZigBee, and Tischendorf teaches each limitation of claim 1, as
Petitioner’s assertions are supported by the evidence and prior art references
relied upon, as detailed supra. We further determine that, for the reasons set
forth by Petitioner, which we find persuasive, it would have been obvious to
combine the relied-upon teachings and suggestions of Rodriguez, ZigBee,
and Tischendorf to arrive at the claimed invention with a reasonable
expectation of success. Based on the evidence before us and the reasons set
forth in the Petition, we determine that Petitioner has shown by a
preponderance of the evidence that claim 1 would have been obvious over
the combination of Rodriguez, ZigBee, and Tischendorf.6
b) Claims 2, 9, 10, and 15
Dependent claim 2 depends from claim 1 and adds the further
limitation of the mesh network comprising one of an 802.15 network or a

6 We note that neither party identified evidence of, or otherwise addressed,
any objective indicia of non-obviousness.
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ZigBee network. The Petition asserts that it would have been obvious at the
time of the earliest claimed priority date of the ’479 patent to modify the
network of Rodriguez to be a ZigBee network with mesh topology. Pet. 46–
49, 60 (citing Ex. 1007 ¶¶111, 134; Ex. 1003, 17–18, 29, 255, 352); see
supra id. at 6 n.2; Section III(E)(3)(a) at 24–25.
Dependent claim 9 depends from claim 1 and adds the further
limitation of
a mesh network appliance to provide one of home security,
door access control, lighting control, power outlet control,
dimmer control, switch control, temperature control, humidity
control, carbon monoxide control, fire alarm control, blind
control, shade control, window control, oven control, cooking
range control, personal computer control, entertainment console
control, television control, projector control, garage door
control, car control, pool temperature control, water pump
control, furnace control, heater control, thermostat control,
electricity meter control, water meter monitor, gas meter
monitor, remote diagnostic.
Ex. 1001, 19:26–35. For this limitation, Petitioner relies on the
description of Rodriguez that the network provides for controlling a door
lock, light, or garage door. Pet. 62 (citing Ex. 1005 ¶¶ 18, 22, 23; Ex. 1007
¶ 139).
Dependent claim 10 depends from claim 1 and adds the further
limitation of the mesh network being coupled to a wide area network
including the Internet. Petitioner relies upon the description in Rodriguez
that its home wireless network may include a link to an Internet portal to
actuate the lock. Id. at 63 (citing Ex. 1005 ¶ 24; Ex. 1007 ¶ 141).
Claim 15 contains limitations similar to claim 1. Petitioner asserts
that the combination of Rodriguez, ZigBee, and Tischendorf teaches or
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suggests the limitations of claim 15 in a manner similar to the limitations of
claim 1. Id. at 63–68.
Patent Owner has not addressed Petitioner’s allegations of
obviousness of claims 2, 9, 10, and 15. See generally PO Resp. Based on
the arguments and evidence before us, we find that Petitioner has shown that
the combination of Rodriguez, ZigBee, and Tischendorf teaches each
limitation of claims 2, 9, 10, and 15, as Petitioner’s assertions are supported
by the evidence and prior art references relied upon, as detailed supra. We
further determine that, for the reasons set forth by Petitioner, which we find
persuasive, it would have been obvious to combine the relied-upon teachings
and suggestions of Rodriguez, ZigBee, and Tischendorf to arrive at the
claimed invention with a reasonable expectation of success. For the reasons
expressed supra, we determine that Petitioner has demonstrated by a
preponderance of the evidence that claims 2, 9, 10, and 15 would have been
obvious over the combination of Rodriguez, ZigBee, and Tischendorf.7
c) Claim 6
Dependent claim 6 depends from claim 1 and adds the further
limitation of “the electrically actuated arm comprises a motor driving a
garage door and . . . the mesh network lock controller opens the garage door
without user action after an automatic authentication of an approaching
vehicle.” The Petition asserts that it would have been obvious at the time of
the earliest claimed priority date of the ’479 patent to modify the network of
Rodriguez to be a ZigBee network with mesh topology. Pet. 60–62; see id.
at 6 n.2. Petitioner relies on Rodriguez to teach a motor to move a garage

7 We note that neither party identified evidence of, or otherwise addressed,
any objective indicia of non-obviousness.
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door in response to actuation of a remote transmitter that may be installed in
a car as a hands-free transmitter capable of proximity-based actuation
without user action. Id. at 60–62 (citing Ex. 1005 ¶¶ 18–19, 22; Ex. 1007
¶ 137).
Patent Owner contends that Petitioner has not shown the claimed
recitation of “wherein the mesh network lock controller opens the garage
door without user action after an automatic authentication of an approaching
vehicle.” PO Resp. 1. Patent Owner argues that Petitioner’s assertions are
merely conclusory, and that Petitioner’s declarant Dr. Paradiso merely
repeats the allegations in the Petition. Id. at 2–3. Patent Owner argues that
Rodriguez teaches the opening of a garage door in response to “confirmation
of the [vehicle-mounted] transmitter’s position,” and not “after an automatic
authentication of an approaching vehicle,” as recited in claim 6. Id. at 6–8
(citing Ex. 1001, 14:11–17).
In its Reply, Petitioner contends that its discussion of claim 1 in the
Petition addresses “authentication.” Reply 8. Petitioner cites claim 1’s
recitation of “upon authenticating the code,” asserting that, because claim 6
depends from claim 1, claim 6 includes all of the limitations of claim 1. Id.
at 8–9. Petitioner highlights the discussion of claim 1’s “authentication”
limitation; specifically, Rodriguez’s use of a signal from a remote
transmitter, wherein if the operator controller authenticates the signal, a
corresponding signal is sent to the operator controller of a door lock to
unlock the door. Id. at 11 (citing Ex. 1005 ¶ 23). Petitioner notes that Patent
Owner has not argued, with respect to claim 1, that Rodriguez lacks a
teaching of “authentication.” Id. at 8.
With respect to the “automatic” recitation in claim 6, Petitioner asserts
that the Specification indicates that “automatic” means “an immediate
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communications link which is established between two or more electronic
devices as soon as the devices are within a certain range, for example,
twenty meters, of each other without any command being input to any of the
devices by the user.” Id. at 12 (quoting Ex. 1001, 14:17–24). Petitioner
asserts that “automatic” appears to mean “sent automatically or
unconsciously.” Id. Petitioner relies upon Rodriguez’s “hands-free
transmitter that sends signals to the receiver depending upon the proximity
or position of the transmitter with respect to the controller,” wherein the
controller raises a barrier “[u]pon confirmation of the transmitter’s position.”
Id. at 13 (alteration in original). Petitioner concludes that the authentication
of Rodriguez is, therefore, an automatic authentication. Id.
In its Sur-reply, Patent Owner argues that Rodriguez’s authentication
is used for “non-network devices [that] may send non-network operational
signals for validation by a controller.” Sur-reply 1 (citing Ex. 1005 ¶ 23).
Patent Owner describes the non-network devices as “accessory devices such
as a light switch, a light kit, or a door lock.” Id. Patent Owner argues that
opening a garage door (per claim 6) is not the same as activating a light
switch or opening a door lock. Id.
We are persuaded by Petitioner’s arguments regarding claim 6. Patent
Owner has not explained sufficiently, and we do not discern, why “opening
a door lock” would not teach or suggest “opening a garage door.”
Furthermore, Petitioner has cited Rodriguez’s discussion of automatic
garage door opening by a remote transmitter that may be a vehicle-mounted
transmitter. Pet. 61 (citing Ex. 1005 ¶ 22). Petitioner further relies on
Rodriguez’s teaching that a remote transmitter may send a signal that
requires authentication prior to taking action. Id. at 57 (citing Ex. 1005 ¶
23), 61. Patent Owner admits that Rodriguez teaches authentication but
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asserts that such authentication is restricted to signals from “non-network
devices,” which are asserted to include a door lock but not a garage door.
Sur-reply 1. We do not find support in Rodriguez to make such a
distinction. Rodriguez teaches a remote transmitter communicating on a
network, as discussed above, but Rodriguez also indicates its garage door
may be opened by a local remote transmitter that is a “non-network device.”
Ex. 1005 ¶ 22. This remote transmitter may be carried in a vehicle
(transmitter 60) or mounted to the vehicle (transmitter 62). Consequently,
we disagree with Patent Owner’s dispute of Petitioner’s argument that
Rodriguez teaches authentication used with garage door openers. Patent
Owner admits that Rodriguez teaches authentication at least with a “non-
network device,” and Rodriguez teaches that its garage door remote may be
a “non-network device.” Additionally, as Rodriguez also teaches that its
garage door remote may be a device communicating with a network, we also
are not persuaded that Rodriguez’s teachings of authentication are limited
only to signals from a “non-network device.”
Patent Owner further argues that Rodriguez’s opening of a garage
door is unambiguously based upon confirmation of a transmitter’s position,
and that Petitioner has not explained how such confirmation satisfies
claim 6’s “automatic authentication of an approaching vehicle.” Sur-reply
1–2.
We disagree with this argument. Petitioner asserts, and Patent Owner
does not dispute, that Rodriguez automatic opening of a garage door based
on the position of a vehicle-mounted transmitter. Pet. 60–62 (citing Ex.
1005 ¶¶ 18–19, 22; Ex. 1007 ¶ 137); PO Resp. 7. And, as just explained, we
find that Petitioner has shown Rodriguez to teach or suggest that remote
transmission of signals to open a garage door may require authentication
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before action is taken. Consequently, we determine Petitioner has shown
that Rodriguez teaches or suggests opening a garage door after automatic
authentication of an approaching vehicle.
Based on the arguments and evidence before us, we find that
Petitioner has shown that the combination of Rodriguez, ZigBee, and
Tischendorf teaches each limitation of claim 6, and has provided reasoning
why a person of ordinary skill in the art would have combined the respective
teachings of those references. Accordingly, we determine that Petitioner has
shown, by a preponderance of the evidence, that claim 6 would have been
obvious under 35 U.S.C. § 103(a) over the combination of Rodriguez,
ZigBee, and Tischendorf.8
IV. CONCLUSION9
Based on the arguments and evidence presented during trial, Petitioner
has demonstrated by a preponderance of the evidence that claims 1, 2, 6, 9,
10, 15, and 16 of the ’479 patent are unpatentable under 35 U.S.C. §103(a).
In summary:

8 We note that neither party identified evidence of, or otherwise addressed,
any objective indicia of non-obviousness.
9 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
Claims

35
U.S.C. §
Reference(s)/Basis Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
1, 2, 9, 103(a) Sabo, ZigBee, 1, 2, 9, 10, 15,
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V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1, 2, 9, 10, 15, and 16 of the ’479 patent are
held unpatentable as obvious under 35 U.S.C. § 103(a) in view of the
combination of Sabo, ZigBee, and Elpern; and
FURTHER ORDERED that claims 1, 2, 6, 9, 10, and 15 of the ’479
patent are held unpatentable as obvious under 35 U.S.C. § 103(a) in view of
the combination of Rodriguez, ZigBee, and Tischendorf; and
FURTHER ORDERED that, because this is a final written decision,
parties to the proceeding seeking judicial review of this Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

10, 15,
16
Elpern 16
1, 2, 6, 9,
10, 15
103(a) Rodriguez,
ZigBee,
Tischendorf
1, 2, 6, 9, 10,
15

Overall
Outcome
1, 2, 6, 9, 10,
15, 16

IPR2019-00476
Patent 8,035,479 B2
37
PETITIONER:

Larissa S. Bifano
Michael Van Handel
DLA PIPER LLP (US)
larissa.bifano@dlapiper.com
michael.vanhandel@dlapiper.com

Roshan Mansinghani
Jonathan R. Bowser
Jordan M. Rossen
UNIFIED PATENTS, LLC
roshan@unifiedpatents.com
jbowser@unifiedpatents.com
jordan@unifiedpatents.com

PATENT OWNER:

Tarek N. Fahmi
Jonathan Tsao
ASCENDA LAW GROUP, PC
tarek.fahmi@ascendalaw.com
jonathan.tsao@ascendalaw.com