Varatec, LLC

Patent Trials and Appeals Board

Dec 29, 2020

IPR2019-01276 (P.T.A.B. Dec. 29, 2020)

Trials@uspto.gov Paper 39
571-272-7822 Date: December 29, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

UNIFIED PATENTS, LLC,
Petitioner,
v.
VARATEC, LLC,
Patent Owner.

IPR2019-01276
Patent 7,792,256 B1

Before THOMAS L. GIANNETTI, STACEY G. WHITE, and
BRENT M. DOUGAL, Administrative Patent Judges.
DOUGAL, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
Granting-In-Part Patent Owner’s Corrected Motion to Amend
35 U.S.C. § 318(a)

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I. INTRODUCTION
A. Background
Unified Patents Inc. (“Petitioner”) filed a Petition to institute an inter
partes review of claims 1–3, 5, 6, 9–12, 14, 15, 18, and 19 (“challenged
claims”) of U.S. Patent No. 7,792,256 B1 (“’256 patent”). Paper 1 (“Pet.”).
Varatec, LLC (“Patent Owner”) filed a Preliminary Response. Paper 6
(“Prelim. Resp.”). Per our authorization, Petitioner filed a Reply to the
Preliminary Response and Patent Owner filed a Sur-reply.1 Applying the
standard set forth in 35 U.S.C. § 314(a), we instituted an inter partes review
of all challenged claims. Paper 14 (“Institution Decision” or “Dec.”).
Patent Owner filed a Corrected Motion to Amend (Paper 23,
“Motion” or “Mot.”), which includes a response to the Institution Decision.
The Motion requests that if any of claims 1–3, 5, 6, 9–12, 14, 15, and 18 be
found unpatentable, they should be replaced by substitute claims 42–44, 46,
47, 50–53, 55, 56 and 59 (“proposed substitute claims” or “proposed
claims”).2 Mot. 1, Claims App. Petitioner timely filed its Opposition to the
Motion. Paper 26 (“Opposition” or “Opp.”). The Motion also requested
Preliminary Guidance. Mot. 1. We issued our Preliminary Guidance (Paper
28, “PG”), which indicated, based on the record at that time, that Petitioner
demonstrated a reasonable likelihood that the proposed substitute claims
were unpatentable. Id. at 3.

1 Petitioner filed both sealed (Paper 9) and redacted (Paper 10) versions of
the Reply. Similarly, Patent Owner filed sealed (Paper 12) and redacted
(Paper 13) versions of the Sur-reply.
2 Patent Owner’s listing of proposed claims 42–59 and the omission of claim
18 in Patent Owner’s statement conditionally amending the claims appear to
be typographical errors. Mot. 1; see id. at Claim App. 8 (“18. Replaced by
Proposed Contingent Substitute Claim 59”).
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Subsequent to the Preliminary Guidance, Patent Owner filed a Reply
(Paper 29, “PO Reply”), and Petitioner filed a Sur-reply (Paper 32, “Pet.
Sur-reply”). An oral hearing was held on September 30, 2020, and a
transcript of the hearing was entered into the record (Paper 38, “Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This Decision is a Final
Written Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 as to the
patentability of the claims on which we instituted trial. As addressed in our
analysis below, we determine that Petitioner has shown by a preponderance
of the evidence, that claims 1–3, 5, 6, 9–12, 14, 15, 18, and 19 are
unpatentable.
Having determined that the challenged claims are unpatentable, our
below analysis turns to the proposed substitute claims of Patent Owner’s
contingent Corrected Motion to Amend. We determine that Petitioner has
established by a preponderance of the evidence that proposed substitute
claims 42–44, 46, 47, and 50 are unpatentable, but also determine that
Petitioner has not established that Patent Owner’s proposed substitute claims
51–53, 55, 56 and 59 are unpatentable. We therefore grant-in-part Patent
Owner’s Corrected Motion to Amend.
B. Related Matters
Petitioner and Patent Owner identify the following litigation involving
the ’256 patent: 1) Varatec, LLC v. Comcast Broadband Security, LLC et
al., 1:19-cv-01541 (N.D. Ill.); 2) Varatec, LLC v. ADT, LLC, 1:19-cv-01543
(N.D. Ill.); and 3) Varatec, LLC v. Advanced Technology Video, Inc., 3:14-
cv-01315 (N.D. Tex.). Pet. 1–2; Paper 4.
C. The ’256 Patent
The ’256 patent is titled “System and Method for Remotely
Monitoring, Controlling, and Managing Devices at One or More Premises.”
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Ex. 1001, code (54). The ’256 patent teaches that it can be desirable to
monitor the premises of “a convenience store, a fast food restaurant or other
suitable facility,” such as for security purposes. Id. at 1:15–16, 20. It also
teaches using cameras, sensors, such as temperature sensors, or recording
point-of-sale information, as part of the monitoring system. Id. at 1:17–28.
A remote monitoring system 10 is depicted in FIG. 1, reproduced
below.

Figure 1, above, shows a “system for remotely monitoring, controlling, and
managing one or more premises and devices at the one or more premises.”
Id. at 2:63–66.
The illustrated system includes client system 12, registrar system 14
(i.e., server system 60 and database system 62), multiple premises 16, and
network 18. Id. at 3:45–47, 17:17–18. Each of premises 16 has one or more
computer systems 22 and one or more devices 24 for monitoring the
premises including, inter alia, video devices 26, facility management devices
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28, point-of-sale devices 30, and media devices 32. Id. at 5:1–5. Each device
24 can generate device data that can be used in the remote monitoring,
controlling, and managing of premises 16 and devices at premises 16. Id. at
5:10–11; 3:49–52.
D. Illustrative Claim
Of the challenged claims, 1, 10, and 19 are independent. Each of
dependent claims 2, 3, 5, 6, 9, 11, 12, 14, 15, and 18 depends directly or
indirectly from respective independent claims 1 and 10. Claim 1 illustrates
the claimed subject matter and is reproduced below, with additional
paragraphing and bracketed lettering added:
1. A system for remotely monitoring, controlling, and managing
one or more remote premises, comprising:
[a] a server system operable to communicate with one or
more remote client systems, the client systems being remote from
the one or more premises;
[b] a database system associated with the server system
and operable to store configuration information for a plurality of
devices located at a remote premises, the plurality of devices
comprising one or more camera devices and one or more facility
management devices;
[c] the server system operable to:
receive from the one or more premises device data
for the one or more facility management devices located
at the remote premises;
[d] initiate storage of at least a portion of the
received device data in the database system; and
[e] communicate, in response to a request received
from a particular one of the one or more remote client
systems for device data for at least one facility
management device, stored device data for the at least one
facility management device responsive to the request to
the particular client system.
Ex. 1001, 50:36–51:2.
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E. Instituted Grounds and Prior Art
Petitioner contends that the challenged claims would have been
unpatentable on the following grounds:3
Claim(s) Challenged 35 U.S.C. §4 Reference(s)/Basis
1, 2, 5, 6, 9–11, 14, 15, 18 103(a) Rezvani5
1, 2, 5, 6, 9–11, 14, 15, 18 103(a) Rezvani, Simon6
3, 12 103(a) Rezvani, Crookham7
3, 12 103(a) Rezvani, Simon, Crookham
19 103(a) Rezvani, Halpern8, Naidoo9

II. PATENTABILITY OF CHALLENGED CLAIMS
A. Legal Standards under 35 U.S.C. § 103(a)
In Graham v. John Deere Co., 383 U.S. 1 (1966), the Supreme Court
set out a framework for assessing obviousness under 35 U.S.C. § 103 that
requires consideration of four factors: (1) the “level of ordinary skill in the
pertinent art,” (2) the “scope and content of the prior art,” (3) the
“differences between the prior art and the claims at issue,” and (4)
“secondary considerations” of non-obviousness such as “commercial
success, long felt but unsolved needs, failure of others, etc.” Id. at 17–18.

3 Petitioner supports its challenge with a Declaration of Dr. Paul D. Franzon.
(“Franzon Decl.”) (Ex. 1003).
4 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
(2011) (“AIA”), amended 35 U.S.C. § 103. Because the challenged claims
of the ’256 patent have an effective filing date before the effective date of
the applicable AIA amendments, we refer to the pre-AIA version of § 103.
5 Ex. 1004, Rezvani, U.S. Pat. 6,686,838 B1, iss. Feb. 3, 2004.
6 Ex. 1005, Simon, U.S. Pat. 7,292,142 B1, iss. Nov. 6, 2007.
7 Ex. 1006, Crookham, U.S. Pat. 6,681,110 B1, iss. Jan. 20, 2004.
8 Ex. 1007, Halpern, U.S. Pat. 5,301,122, iss. Apr. 5, 1994.
9 Ex. 1008, Naidoo, U.S. Pat. Pub. 2003/0062997 A1, pub. Apr. 3, 2003.
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Neither party has presented evidence or argument directed to secondary
considerations. The other Graham factors are addressed below.
B. Level of Ordinary Skill
Petitioner states that a person of ordinary skill in the art (POSA)
“would have had a Bachelor of Science degree in Electrical Engineering or
an equivalent field, as well as at least 2–3 years of academic or industry
experience in control systems, video monitoring systems, and computer and
wireless networks.” Pet. 7 (citing Franzon Decl. ¶ 53). Petitioner further
states that “[l]ess experience is necessary in view of additional education and
vice versa.” Id.
Patent Owner does not address Petitioner’s definition of the level of
ordinary skill. See generally Mot. We are persuaded that Petitioner’s
proposal is consistent with the problems and solutions in the ’256 patent and
prior art of record. See, e.g., In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir.
1995) (“In determining this skill level, the court may consider various
factors including type of problems encountered in the art; prior art solutions
to those problems; rapidity with which innovations are made; sophistication
of the technology; and educational level of active workers in the field.”
(citations and internal quotations omitted)). We therefore adopt Petitioner’s
definition of the level of ordinary skill in the art.
C. Petitioner’s Declarant
As noted previously, Petitioner offers the declaration of Dr. Franzon
in support of Petitioner’s allegations. Ex. 1003. Dr. Franzon also provided a
second declaration in support of Petitioner’s positions on the substitute
claims. Ex. 1016.
Patent Owner calls into question the credibility of Dr. Franzon’s
testimony as to what a person of ordinary skill would have understood from
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the prior art, as well as, why a person of ordinary skill would have been
motivated to combine the prior art. PO Reply 1. This is because Dr. Franzon
did not recall whether he read all of the cited prior art references in their
entirety. Ex. 2033, 101:2–3. Patent Owner’s Counsel asked the following
questions (Q), with the answers (A) provided by Dr. Franzon:
Q. And when was the last time you reviewed this patent [Ex.
1018 “Monroe”]?
A. I reviewed the patent, in part, in preparation for this report --
for this deposition. But I did not read the patent in its entirety.
It’s 102 pages.
Q. You have never read the patent in its entirety or just in
preparation for this deposition?
A. In preparation for this deposition. I don’t recall what I read
and what I didn’t read over a year ago when I wrote the original
--
Q. Well, Monroe is --
A. Yeah. I don’t recall if I read the patent in its entirety in writing
the report. Again, I’m relying on specific features of the patent
in combination with the disclosures in Rezvani to establish the
prior art that goes to the patent in question.
Q. So your answer was you aren’t sure whether you read Monroe
in its entirety or not?
A. I don’t recall if I read it in its entirety or not. I probably did
not. I probably focused on specific sections. ….
Q. Are there any patents of the 10 that have been relied on that
you are certain you have read in their entirety?
. . .
. . . [A]: I don’t recall what I read in entirety and what I didn’t. I
assume I would have read Rezvani in its entirety because we rely
on that so much. I may or may not have read the patents in their
entirety.
Id. at 99:24–101:6.
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In view of the Dr. Franzon’s deposition testimony, Patent Owner
argues that the proffered declarations suffer from hindsight bias. PO Reply
1–2. We agree with Patent Owner that Dr. Franzon’s declarations are suspect
because it is unclear to what extent the cited references have been read.
Further, because the proffered deposition testimony describes the analysis
performed as being focused on only particular features of the references,
there appears to be an admission that at least in some cases the teachings of
the references were not considered fully as part of developing the opinions
and testimony about what one of skill in the art would have understood.
“The invention must be viewed not with the blueprint drawn by the
inventor, but in the state of the art that existed at the time.” Orexo AB v.
Actavis Elizabeth LLC, 903 F.3d 1265, 1271 (Fed. Cir. 2018); see also Tr.
45–46 (discussing Orexo). As the deposition testimony raises serious doubts
as to the extent of review of the prior art, it is unclear whether the opinions
and testimony expressed in the declarations are based on “the state of the art
that existed at the time” of the invention of the ’256 patent, or whether Dr.
Franzon relied on helpful disclosures based on the requirements of the
challenged claims without properly considering whether the references as a
whole support Petitioner’s proposed combination. For these reasons, we
view the declarations of Dr. Franzon (Exs. 1003, 1016) with skepticism as
his comments render his opinion suspect.
However, this is not the end of the inquiry into the question of
obviousness. The ultimate determination of obviousness is a legal
conclusion based on underlying factual inquiries (i.e., the Graham factors):
(1) the scope and content of the prior art; (2) the level of ordinary skill in the
prior art; (3) the differences between the claimed invention and the prior art;
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and (4) objective evidence of nonobviousness. See Graham, 383 U.S. at 17–
18; Miles Labs., Inc. v. Shandon Inc., 997 F.2d 870, 877 (Fed.Cir.1993).
Expert testimony can be helpful, but is not always necessary for the
Board to make a determination of obviousness. For example, the Federal
Circuit has indicated that the Board’s technical expertise may make it easier
to understand the prior art without such evidence:
No rule requires a Petition to be accompanied by any declaration,
let alone one from an expert guiding the Board as to how it should
read prior art. What the Board can find without an expert depends
on the prior art involved in a particular case. Even in court, we
have said, “expert testimony is not required when the references
and the invention are easily understandable.” And Board
members, because of expertise, may more often find it easier to
understand and soundly explain the teachings and suggestions of
prior art without expert assistance.
Belden, Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1079 (Fed. Cir. 2015) (internal
citation omitted).
As will be discussed in greater detail below, though Patent Owner
calls into question the declarations of Petitioner’s Declarant, by and large
Patent Owner does not identify contrary teachings in the prior art. In
addition, Patent Owner does not contest most of the reasons to combine the
prior art offered by Petitioner. We address the particular limitations and
requirements of each original or proposed substitute claim below.
D. Claim Construction
In an inter partes review, a claim “shall be construed using the same
claim construction standard that would be used to construe the claim in a
civil action under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b) (2019). Under
this standard, claim terms are given their ordinary and customary meaning as
would have been understood by a person of ordinary skill in the art at the
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time of the invention and in the context of the entire patent disclosure. In re
Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). If the
specification “reveal[s] a special definition given to a claim term by the
patentee that differs from the meaning it would otherwise possess[,] . . . the
inventor’s lexicography governs.” Phillips v. AWH Corp., 415 F.3d 1303,
1316 (Fed. Cir. 2005) (en banc) (citing CCS Fitness, Inc. v. Brunswick
Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)).
Petitioner offers a construction for the phrase “configuration
information for a plurality of devices” in claim 1. Pet. 9 (emphasis omitted).
Patent Owner does not address Petitioner’s claim construction nor does it
offer any claim constructions of its own. See generally Mot.
We decline to provide an express construction for any terms in the
challenged claims of ’256 patent as no construction is required for the
purposes of this Decision. See, e.g., Nidec Motor Corp. v. Zhongshan Broad
Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only
construe terms ‘that are in controversy, and only to the extent necessary to
resolve the controversy’ . . . .” (quoting Vivid Techs., Inc. v. Am. Sci. &
Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
E. Claims 1, 2, 5, 6, 9–11, 14, 15, 18 – Obviousness over Rezvani
Petitioner asserts that Rezvani renders obvious claims 1, 2, 5, 6, 9–11,
14, 15, and 18. See Pet. 10–11, 13–27, 32–50. Patent Owner does not
address Petitioner’s allegations of unpatentability. See generally Mot. For
the reasons set forth below, we determine Petitioner has shown that Rezvani
suggests the limitations of claims 1, 2, 5, 6, 9–11, 14, 15, and 18. Pet. 10–11,
13–27, 32–50.
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1. Rezvani
Rezvani is titled “Systems and Methods for the Automatic
Registration of Devices” and is related to registering devices at remote sites.
Ex. 1004, code (54), 1:11. The device to be registered can include a number
of different electronic devices, such as, video cameras, still cameras, motion
sensors, audible detectors, and household appliances. Id. at 1:45–47.
In order to more easily register devices, Rezvani’s system can be used
to register new devices that will be paired with the system. Id. at 12:28–47.
An example of the system is illustrated in Figure 1, reproduced below.

Rezvani Figure 1 above, shows automatic registration system 10.
Automatic registration system 10 can include remote site 14 with
servers 46, 48 that connect to one or more installations 12 over a
communications network. Id. at 4:21–23, Fig. 1. Installation 12 can have one
or more nodes 18, 20 and the nodes can be at the same or at different
locations. Id. at 5:26–34. Each node can include a number of features such
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as computer 22, monitoring module 28, and devices 32. Id. at 5:43, Fig. 1.
“Monitoring modules 28 may serve as an interface between remote site 14
and at least one connected device 32.” Id. at 6:38–39. System 10 allows
users to control and monitor devices 32 using access device 22 or remotely
via access device 17. Id. at 6:28–37, 6:42–47, 7:34–36, 7:61–67.
As one example, Rezvani teaches that devices 32 can include sensors,
such as door sensor 40. Id. at 8:3–4. When the status of the door changes,
that information can be communicated to remote server 48. Id. at 8:5–13.
The change in door status can then be transmitted to a user by the remote
server. Id. at 8:14–16.
2. Independent Claims 1 and 10
Petitioner asserts that Rezvani teaches or suggests each limitation of
independent claims 1 and 10. See Pet. 10–11, 13–27, 50. In general,
Petitioner relies on Rezvani’s automatic registration system 10, as shown in
Figure 1, for the claimed system or method “for remotely monitoring,
controlling, and managing one or more remote premises.” See id. at 13–14.
Petitioner addresses each portion of claim 1 (id. at 10–27) and then further
asserts that claim 10 is obvious over Rezvani “for the same reasons set forth
in the analysis of [c]laim 1” (id. at 50). As noted previously, Patent Owner
does not address Petitioner’s allegations of the unpatentability of claims 1
and 10. See generally Mot.
Claims 1 and 10 differ in that claim 1 is a system and claim 10 is a
method. Ex. 1001, 50:37, 52:17. However, claim 1 essentially recites the
method of claim 10 after claiming a “server system operable to.” Compare
id. at 50:47–58, with id. at 52:17–33. Thus, we agree with Petitioner that an
analysis of claim 1 encompasses the features of claim 10. Pet. 50.
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a) Petitioner’s Allegations Concerning Claims 1 and 10
Petitioner relies on Rezvani’s automatic registration system 10, as
shown in Figure 1, for the claimed system or method “for remotely
monitoring, controlling, and managing one or more remote premises” as
recited in the preamble.10 See Pet. 13–14.
Concerning claim 1 elements [a] and [b], Petitioner highlights remote
site 14 of Rezvani Figure 1, which includes web server 46 with associated
database 58 that connects to one or more installations 12 over a
communications network as the claimed server system and database system
of claim 1. Pet. 14–17 (citing e.g., Ex. 1004, 5:31–34, 5:40–48, 5:62–64,
6:32–37). Petitioner identifies Rezvani’s remote user access device 17 with
the claimed remote client system. Id. at 14–15 (citing e.g., Ex. 1004, 5:31–
34, 5:42–48, 6:32–37). Concerning the claimed “plurality of devices located
at a remote premises,” Petitioner identifies the camera, and as facility
management devices, the contact sensor, smoke sensor, and controlled light
switch all shown in Rezvani Figure 1. Id. at 17–18 (citing e.g., Ex. 1004,
1:45–46, 7:9–24, 14:40–43).
Petitioner also asserts that the Rezvani’s servers and database operate
in the same manner as required by claim 1 elements [c] and [d], as well as by
aspects of elements [a] and [b]. Id. at 14–27. For example, Petitioner asserts
that Rezvani’s database system stores configuration information for the
plurality of devices and that the server system receives and initiates storage
of device data from the facility management devices located at the remote

10 As we determine that Petitioner shows that the recitation in the preamble
is satisfied by the prior art, we need not determine whether the preamble is
limiting. Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346
(Fed. Cir. 2002) (“Generally, the preamble does not limit the claims.”).
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premises. Id. at 18–23 (citing e.g., Ex. 1004, 9:31–34, 9:58–67, 10:56–58,
18:5–6, 18:9–14, 19:8–15, Fig. 15).
Claim 1 concludes with element [e], the server system operable to
“communicate, in response to a request received from a particular one of the
one or more remote client systems for device data for at least one facility
management device, stored device data for the at least one facility
management device responsive to the request to the particular client
system.” Ex. 1001, 50:53–58. Petitioner argues that this limitation is taught
by, or at least suggested by, Rezvani in two different ways. Pet. 24–26.
First, Petitioner points to Rezvani’s teaching of a user’s interaction in
the client access device 22 with a webpage generated by the web server 46
including information about the light switch. Id. at 25 (citing Ex. 1004,
8:25–28, 10:65–11:3). In particular, Rezvani teaches that the remote client
system requests and receives device data from the server system and that the
“web server 46 in remote site 14 can generate a web page 47 ‘by extracting
the associated record for [device 32] from database server 48 and creating a
… user interface representation of that device that the user may access via,
for example, Internet browser 26 [in client access device 22].’” Id. (quoting
Ex. 1004, 10:65–11:3). Petitioner also cites to Rezvani as teaching: “The
user may contact web server 46 via, for example, Internet browser 26 of
node 18 in order to access a database entry for light switch 41 of node 20.”
Id. (quoting Ex. 1004, 8:25–28).
Second, Petitioner points to Rezvani’s teaching of remotely
controlling and monitoring devices 32 using remote user access devices 17.
Id. at 26 (citing Ex. 1004, 6:32–37, 7:34–36, Fig. 1). Petitioner asserts that
“Rezvani explains that users can ‘remotely control and monitor devices 32
using remote user access devices 17 via communications network 16’” and
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“that remote user access device 17 may include ‘personal digital assistants,
cellular telephones, set-top boxes, personal computers, or any other suitable
device a user may use to access remote site 14 via communications network
16.’” Id. (quoting Ex. 1004, 7:34–36, 6:32–37).
b) Determination of Obviousness of Claims 1 and 10
Considering all of the evidence of record, including the level of
ordinary skill in the art, the scope and content of the prior art, and the
differences (if any) between the claimed subject matter and the prior art, we
make the following determinations.
We find that Petitioner has persuasively shown that Rezvani teaches
or suggests all of the limitations of claims 1 and 10. Pet. 10–11, 13–27, 50.
As discussed above, Patent Owner does not dispute Petitioner’s proofs
demonstrating the unpatentability of these claims. See generally Mot.
Weighing all of the evidence of record, we determine that Petitioner has
proven by a preponderance of the evidence that claims 1 and 10 are
unpatentable over Rezvani pursuant to 35 U.S.C. § 103(a).
3. Dependent Claims 2, 5, 6, 9, 11, 14, 15, 18
Petitioner asserts that Rezvani renders obvious claims 2, 5, 6, 9, 11,
14, 15, and 18. See Pet. 32–50. Claims 2, 5, 6, and 9 depend from claim 1,
and claims 11, 14, 15, and 18 depend from claim 10. We agree with
Petitioner that the requirements of claims 11, 14, 15 and 18 are within the
requirements of claims 2, 5, 6 and 9, respectively. Id. at 50. Patent Owner
does not address Petitioner’s allegations of the unpatentability of these
claims. See generally Mot. We are persuaded that the Petition shows by a
preponderance of the evidence that claims 2, 5, 6, 9, 11, 14, 15, and 18
would have been taught or suggested by Rezvani. Pet. 32–50. Thus, we are
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persuaded that Petitioner has shown that claims 2, 5, 6, 9, 11, 14, 15, and 18
are obvious over Rezvani.
For example, we agree with Petitioner that Rezvani’s teachings of
remote control of and communication concerning a light switch corresponds
with the requirements of claims 2 and 11. See Pet. 32–34 (citing e.g., Ex.
1004, 11:20–46). In particular, Rezvani teaches that a user using a remote
interface 17 can send a command to turn on or off a light at a particular
location. Id. at 33 (citing Ex. 1004, 11:20–23). The command is first sent to
a server at a remote location, before being transmitted to the lights via a
computer system at the particular location. Id. at 33–36 (citing e.g., Ex.
1004, 11:20–23, 11:23–37, 8:24–36).
As another example, we agree with Petitioner that Rezvani’s light
switch 41 corresponds with the facility management device in the form of an
output switch of claims 9 and 18. See id. at 47–48 (citing e.g., Ex. 1004,
8:39–42).
As an example concerning claims 5 and 14, Petitioner identifies that
Rezvani teaches a database system connected to sensors at the remote site,
where the sensors have events “specific to a particular device” as required
by the claims. Id. at 37. “For example, ‘FIRE!!!’ may be a unique event to a
fire alarm device, whereas ‘door motion sensor tripped’ may be a unique
event to a door motion detector device.” Id. (quoting Ex. 1004, 20:65–21:3).
Information about these events is stored in the database, as are actions such
as a notification, to be performed when the event occurs, as also required by
claims 5 and 14. Id. at 37–42 (citing e.g., Ex. 1004, Fig. 15, 11:54–58, 8:11–
20). Further, as one option to satisfy the requirements of claims 6 and 15,
Rezvani teaches that the notification can be an alert via pager to a specific
individual. Id. at 43–44. See also Mot. 18 (Patent Owner admitting that
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“Rezvani notifies users of an ‘event notification or alarm triggers’ through a
‘user’s pager, for example via cellular transmitter 44.’”) (citing Ex. 1004,
7:25–33, 8:14–16).
F. Claims 3, 12 – Obviousness over Rezvani and Crookham
Petitioner asserts that the combination of Rezvani and Crookham
renders obvious claims 3 and 12. See Pet. 51–61. Patent Owner does not
address Petitioner’s allegations of the unpatentability of these claims.11 See
generally Mot. For the reasons set forth below, we determine Petitioner has
shown that the combination of Rezvani and Crookham renders obvious
claims 3 and 12. Pet. 51–61.
1. Crookham
Crookham is titled “Means and apparatus for control of remote
electrical devices” and is directed to controlling remote devices, such as
remotely located lighting systems 12 for a ball field. Ex. 1006, codes (54),
(57), 6:59–67. Crookham explains that Central Control 10 can control the
lighting system 12 based on a schedule stored in the database. Id. at 7:6–17.
2. Analysis of Claims 3 and 12
Claim 3 depends from claim 1 and further requires:
the database system is further operable to store a schedule
specifying one or more times when a command should be
communicated to a computer system at the particular premises,
the command specifying an activity to perform with respect to
one or more devices located at the particular premises and having
been configured by a user of the particular client system; and

11 Patent Owner does make an argument about the contrasting teachings of
Crookham and Halpern (PO Reply 2); however, none of the unpatentability
challenges presented by Petitioner rely on a combination involving both
Crookham and Halpern (see Pet. 5; Opp. 8). Thus, this argument does not
address any position taken by Petitioner in the papers.
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the server system is further operable to communicate the
command at the one or more times specified in the schedule to
the computer system at the particular premises, the computer
system operable to execute the command by performing the
activity with respect to the one or more devices.
Ex. 1001, 51:4–15. Claim 12 depends from claim 10 and is similar in scope
to claim 3. See Ex. 1001, 52:44–55.
Similar to the requirements of claim 2 discussed above, Petitioner
correctly identifies that Rezvani teaches a database system configured by a
user to store and transmit commands to a computer system at a separate
location to thereby control the lights of that location. Pet. 52, 59; see also id.
at 32–36 (analyzing similar requirements of claim 2). However, Petitioner
admits that Rezvani does not disclose storage of a schedule in the database
for turning the light on and off or communicating the command from the
database to the computer to turn the light on or off based on a schedule. Id.
at 52–53, 60. Petitioner asserts that this would have been obvious in view of
Crookham’s teachings of controlling a light system according to a schedule.
Id. at 53–57, 60–61.
In particular, Petitioner argues that Crookham teaches Central Control
10 which stores a schedule to turn on and off lights 12 at another location,
such as a baseball field. Id. at 53 (citing Ex. 1006, 6:61–67, 7:6–13). The
lights are controlled by Remote Equipment Controller 14 at the location
which receives the command to turn on or off the lights from Central
Control 10 based on the schedule. Id.
Petitioner argues that “at the time of the alleged invention, the concept
of turning lights on and off based on a schedule defined by the user using,
for example, an electromechanical timer was exceedingly well known so as
to be widely commercially available.” Id. at 57–58. Petitioner continues
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“[t]he advantages of using a timer to turn on and off the light[s] in a house
for purposes of home security were also well known at that time.” Id. at 58.
As evidence in support of these points, Petitioner’s declarant identifies the
use of a schedule and timed lights for purposes of security in the movie
HOME ALONE (20th Century Fox 1990). Ex. 1003 ¶ 234. Crookham’s
discussion in the “Background of the Invention” also evidences that lighting
systems controlled on a schedule by a timer were well known. See Ex. 1006,
1:20–21.
We agree that the evidence supports Petitioner’s position that the
general concept of turning lights on and off based on a schedule, such as
with a timer was well known, and that the benefits of a lighting schedule for
security were also well known. Though Patent Owner draws into question
the reliability of Petitioner’s declarant generally (PO Reply 1) (discussed in
more detail supra), we do not base our opinion solely on Dr. Franzon’s
statements, but rather on the evidence of record, such as the background
discussion in Crookham. Further, we note that Patent Owner does not
contest Petitioner’s position that lights on a timer were well known, or that
the benefits of timed lights for purposes of security were well known.
Petitioner further argues that a POSA
would have been motivated to modify Rezvani’s system in view
of Crookham because the ability to store in Rezvani’s database
58 a schedule of commands requested from remote user access
device 17 or client access device 22 would allow users to
schedule control of devices 32, such as light switches 41, at a
remote premises from any location. For example, this feature
would have been convenient for a user to schedule regular
activities such that lights at home can be scheduled to be turned
on and off at predetermined times depending on typical times
when the user stays home or leaves for work. This feature would
also have been convenient for a user who is traveling because it
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would allow the user to schedule lights at home to be turned on
and off at predetermined times for security purposes while he or
she is away.
Id. at 58
Finally, Petitioner persuasively argues a parallel between the
relationship of the teachings Crookham and Rezvani and the Supreme
Court’s guidance in KSR Int’l Co. v. Teleflex Inc. (550 U.S. 398 (2007)), “if
a technique has been used to improve one device” (e.g., Crookham’s system
for remotely controlling lighting system 12 in accordance with a schedule
stored in a scheduling database 11), “and a person of ordinary skill in the art
would recognize that it would improve similar devices” (e.g., database 58 in
Rezvani’s system for remotely controlling light switch 41) “in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill.” Id. (quoting KSR, 550 U.S. at 417).
In view of the above, the submissions, and evidence of record, we are
persuaded that the Petition shows by a preponderance of the evidence that
claims 3 and 12 would have been suggested by Rezvani and Crookham and
are therefore obvious over the combination of Rezvani and Crookham.
G. Claim 19 – Obviousness over Rezvani, Halpern, and Naidoo
Petitioner asserts that the combination of Rezvani, Halpern, and
Naidoo renders obvious claim 19. See Pet. 62–80. Patent Owner opposes.
Mot. 24. For the reasons set forth below, we determine Petitioner has shown
that the combination of Rezvani, Halpern, and Naidoo renders obvious claim
19. Pet. 62–80.
1. Halpern
Halpern is titled “Measuring and monitoring system” and describes a
“system for monitoring power usage of various devices at remote facilities”
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using “sensors at each facility to sense the on/off condition of the devices.”
Ex. 1007, codes [54], [57]. Halpern explains that “[t]he output of these
sensors are sampled by a processor at a predetermined time interval.” Id. at
2:56-58.
2. Naidoo
Naidoo is titled “Distributed monitoring for a video security system”
and is directed to a “system and method for distributed monitoring and
remote verification of conditions surrounding an alarm condition in a
security system,” which “detects alarm conditions at a premises and records
video relating to the alarm condition.” Ex. 1008, codes (54), (57).
3. Analysis of Claim 19
Claim 19 is reproduced below, with additional paragraphing and
bracketed lettering added:
19. A system for monitoring, controlling, and managing a
premises, comprising:
[a] a computer system located at the premises and operable
to communicate with a remote client computer and a remote
server system;
[b] a plurality of devices located at the premises and
comprising one or more camera devices and a plurality of facility
management devices;
the computer system operable to:
[c] poll one or more of the facility management
devices at predetermined times to obtain device data
associated with the facility management devices;
[d] communicate at least a portion of the obtained
device data to the remote server system;
[e] collect video data corresponding to video images
captured by the one or more camera devices;
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[f] store at least a portion of the collected video data
in a memory associated with the computer system; and
[g] in response to a request from the remote client
system, communicate video data responsive to the request
to the remote client system.
Ex. 1001, 53:54–54:7.
The preamble and limitations [a] and [b] of claim 19 are similar to the
preamble and limitations [a] and [b] of claim 1 and Petitioner relies on
Rezvani for these limitations for similar reasons. Compare Pet. 62–65 with
id. at 13–21. Thus, Petitioner identifies that Rezvani has a similar structure
as claim 19 with a remote site having various remote servers 46, 48 and
monitoring module 28 (i.e., computer system) at the premises with various
devices and sensors 32 (i.e., facility management devices), including a
camera. Id. at 62–65 (citing e.g., Ex. 1004, 11:16–17, 50–54, 1:45–46,
14:40–43, 7:15–17, Fig. 1). Claim 19 differs from claim 1 in that it then
focuses on the computer system located at the same premises as the facility
management devices, rather than on the remote server system. We analyze
elements 19[c]–[g] dealing with these differences below.
a) [c] the computer system [located at the premises] operable to:
poll one or more of the facility management devices at
predetermined times to obtain device data associated with the
facility management devices
[d] the computer system [located at the premises] operable to:
communicate at least a portion of the obtained device data to
the remote server system
Concerning element 19[d], Petitioner argues that “Rezvani describes a
‘heartbeat process’ during which monitoring module 28 provides ‘a periodic
communication’ containing state information for devices 32’ to remote site
14” which includes the remote servers. Pet. 70 (quoting Ex. 1004, 11:50–
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53). Petitioner argues that this also shows that, as required by element 19[c],
Rezvani teaches that monitoring module 28 (i.e. local computer system)
obtains device data from devices 32 (i.e. facility management devices). Id. at
66 (citing Ex. 1004, 11:50–56).
However, Petitioner states that “Rezvani does not explicitly teach
poll[ing] one or more of the facility management devices at predetermined
times,” as required by claim element 19[c]. Id. Petitioner argues that a POSA
would be motivated to use polling, i.e. having the monitoring module 28 poll
the devices 32 for data, as a way to facilitate the “heartbeat process” or in
other words, as a way to obtain the device data to pass on to the remote
server at the remote site 14 during the heartbeat process. Id. at 66–67, 69.
Petitioner argues that Halpern discloses a process similar to Rezvani,
where remote computer c1 receives device data from site processor P1
where site processor P1 polls the devices at predetermined times for the
device data, as described by Halpern:
The output of the sensors are connected to a processor at each
facility which is under the control of a host computer at a central
location. The host computer directs the processor to begin polling
the sensor at specified time intervals and to report and transmit
the data back to the host processor at a specific time and date.
Id. at 68 (quoting Ex. 1007, 12:53–59); see also id. at 67–68 (further
discussing the disclosure of Halpern).
Patent Owner argues that “[n]o POSA would look to Halpern to
improve Rezvani because Rezvani’s disclosed heartbeat process obviates the
need for the process disclosed by Halpern.” Mot. 24 (citing Ex. 2030 ¶ 2112).
Patent Owner explains that “Rezvani discloses a heartbeat process where the

12 Patent Owner’s declarant merely repeats Patent Owner’s assertion without
explanation or analysis.
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onsite monitoring module periodically communicates to a remote server
updated state information for devices located at a premises.” Id. (citing Ex.
1004, 11:50–54). Patent Owner further explains that “Rezvani’s reporting
mechanism would render it unnecessary to seek out further methods for
communication between the remote site and the server, as it would
adequately convey device information.” PO Reply 12.
However, Patent Owner’s argument does not address the combination
as presented by Petitioner. Petitioner does not rely on Halpern to improve
Rezvani’s “communication between the remote site and the server,” but
rather relies on Halpern to teach a method by which the monitoring module
28 at the remote site can poll the devices 32, which are also at the remote
site, for data. Pet. 66–67, 69–70; Opp. 25; Pet. Sur-Reply 12. Petitioner
argues that in this way, the monitoring module 28 can obtain the data
necessary to perform the heartbeat process. Pet. 69.
Patent Owner also argues that Rezvani’s heartbeat process “obviates
the need for the process disclosed by Halpern” because the “process can
occur ‘in response to a change in state of a device, 32 . . . a triggered alert
event, or in response to any other suitable event,’” and that “the heartbeat
process can be set to occur at certain time intervals.” Mot. 24 (citing Ex.
1004, 11:55–58, 11:66–12:1).
Again, though Patent Owner accurately describes the teachings of
Rezvani, these teachings do not show how Rezvani’s monitoring module 28
communicates with devices 32, but rather, how the remote site
communicates with and requests information about devices 32 from
monitoring module 28.
We agree with Petitioner that a POSA would have been motivated to
use the teachings of Halpern as a way to facilitate the “heartbeat process,” as
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a way for monitoring module 28 to obtain the device data to pass on to the
remote server at the remote site 14 during the heartbeat process. Pet. 66–67,
69. We further determine that the combination of Rezvani and Halpern
teaches or suggests the limitations of claim element 19[c] as laid out by
Petitioner.
b) [e] the computer system [located at the premises] operable to:
collect video data corresponding to video images captured by
the one or more camera devices
[f] the computer system [located at the premises] operable to:
store at least a portion of the collected video data in a memory
associated with the computer system
[g] the computer system [located at the premises] operable to:
in response to a request from the remote client system,
communicate video data responsive to the request to the
remote client system
Claim 19 also requires collecting, storing, and communicating video
data. Petitioner relies on the combination of Rezvani and Naidoo in asserting
the obviousness of these video data limitations. Pet. 71–80. Patent Owner
does not contest Petitioner’s positions concerning the teachings of Rezvani
or Naidoo, or the reasons to combine their teachings. See Mot. 24.
Concerning elements 19[e] and [f], Petitioner cites Rezvani as
teaching “in the case where the device is a video camera, a constant video
feed may be communicated from the video camera to the monitoring
module.” Id. at 71 (quoting Ex. 1004, 14:40–43). Rezvani also discloses
recording video with video cassette recorders. Id. at 72 (citing Ex. 1004,
7:22–23).
Petitioner identifies that Rezvani teaches using a camera to monitor a
door by “tak[ing] a digital picture whenever the [contact sensor] 40 is
tripped,” but does not mention taking video of the door. Id. (quoting Ex.
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1004, 8:6–9). However, Petitioner argues that it would have been obvious to
“to use a video camera to monitor the front door and record video data using
a VCR.” Id. In support, Petitioner cites the Background of the ’256 patent as
acknowledging that “the use of video cameras ‘to record activities occurring
on the premises’ ‘to monitor activities of employees and for other security-
related purposes’ was well known.” Id. (quoting Ex. 1001, 1:17–20); see
also id. at 72–73 (further explaining benefits of using a video camera for
security).
Petitioner’s position is further supported by the teachings of Naidoo,
which expressly describe using a video camera to monitor and obtain video
of a location based on an alarm condition, such as the tripping of a sensor.
Id. at 73–75 (citing Ex. 1008 ¶¶ 28, 32, Figs. 1, 6).
Naidoo also teaches that a base station 115 at the premises with the
video camera is configured to record and store video for later playback. Id.
at 74, 77 (citing Ex. 1008 ¶ 82). Petitioner argues that based on the teachings
of Naidoo, it would have been obvious to modify Rezvani’s monitoring
module 28 to record and store the video from the video camera. Id. at 75–76,
78.
We agree with Petitioner that the evidence shows that it was known to
use video cameras for security-related purposes, such as monitoring a door.
We find that this also includes recording video as taught by Naidoo and
Rezvani. We further agree with Petitioner that it would have been obvious to
use a video camera as Rezvani’s camera to record and store video of the
front door. Finally, just as Rezvani teaches recording video on a video
cassette recorder on the premises, we find that it would have been obvious
based on the teachings of Naidoo to modify Rezvani’s monitoring module,
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which already receives a “constant video feed” from the video camera to
record digital video.
Concerning limitation 19[g], Petitioner argues that Naidoo teaches
that a remote user can review recordings from the base station 115 over a
web-browser-based video client. Id. at 78 (citing Ex. 1008 ¶¶ 40, 104).
Petitioner argues and we agree that this shows that Naidoo teaches the
requirements of 19[g] of a computer system communicating video data
responsive to a request from the remote client system. We also agree with
Petitioner that it would have been obvious to configure Rezvani’s
monitoring module to communicate video date to the server and client
access device. We find that this is consistent with Rezvani’s similar
teachings regarding “remotely control[ling] and monitor[ing] devices 32
using remote user access devices 17 via communications network 16.” Ex.
1004, 7:34–36.
c) Conclusion
We are persuaded that the Petition has shown how each element of
claim 19 would have been suggested by the combination of Rezvani,
Halpern, and Naidoo. Pet. 62–80. Thus, we are persuaded that Petitioner has
shown that claim 19 would have been obvious over Rezvani, Halpern, and
Naidoo.
H. Claims 1–3, 5, 6, 9–12, 14, 15, 18 – Alleged Obviousness in
Combination with Simon
Petitioner asserts that the combination of Rezvani and Simon renders
obvious claims 1, 2, 5, 6, 9–11, 14, 15, and 18. See Pet. 10–50. Petitioner
relies on the same teachings of Rezvani as in the related ground, however
Petitioner also relies on the teachings of Simon to support obviousness of
claim element 1[e]. Id. at 27–31. Based on the underlying combination of
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Rezvani and Simon for claim 1, Petitioner asserts that the combination of
Rezvani, Simon, and Crookham renders obvious claims 3 and 12, again
relying on the same teachings of Rezvani and Crookham as in the related
ground. See Pet. 51–61. Patent Owner does not address any of Petitioner’s
allegations of unpatentability. See generally Mot.
We have already determined that claims 1–3, 5, 6, 9–12, 14, 15, and
18 are unpatentable as obvious over Rezvani or Rezvani and Crookham.
Thus, this Decision addresses all claims challenged under multiple grounds.
See 35 U.S.C. § 318(a) (“If an inter partes review is instituted and not
dismissed under this chapter, the Patent Trial and Appeal Board shall issue a
final written decision with respect to the patentability of any patent claim
challenged by the petitioner and any new claim added under section
316(d).”). Thus, there is no additional dispute to resolve between the parties
regarding these claims, and we decline to separately address these additional
asserted grounds of unpatentability.

III. CORRECTED MOTION TO AMEND
In its Corrected Motion to Amend, Patent Owner requests that if any
of claims 1–3, 5, 6, 9–12, 14, 15, and 18 be found unpatentable, they should
be replaced by proposed substitute claims 42–44, 46, 47, 50–53, 55, 56, and
59.13 Mot. 1, Claims App.
As discussed above, we determine that original claims 1–3, 5, 6, 9–12,
14, 15, and 18 have been shown by a preponderance of the evidence to be

13 In an inter partes review, amended claims are not added to a patent as of
right, but rather must be proposed as a part of a motion to amend. 35 U.S.C.
§ 316(d).
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unpatentable. See supra §§ II.E, F. We, therefore, proceed to address Patent
Owner’s Corrected Motion to Amend.
A. Proposed Substitute Claims
Patent Owner submits the below proposed substitute claims 42–44,
46, 47, 51–53, 55, and 56 (with brackets indicating deleted text, and
underscoring indicating added text). Patent Owner also submits proposed
substitute claims 50 and 59, which are not reproduced as they are
substantively identical to their respective original dependent claim, changing
only in their dependence.
42. A system for remotely monitoring, controlling, and managing
one or more remote premises, comprising:
a registrar system, comprising a server system and a database
system, operable to facilitate storage of media and playing of
media at the one or more premises;
the[a] server system operable to communicate with one or more
remote client systems, the client systems being remote from the
one or more premises;
the[a] database system associated with the server system and
operable to store configuration information for a plurality of
devices located at a remote premises, the plurality of devices
comprising one or more camera devices and one or more facility
management devices;
the server system operable to:
receive from the one or more premises device data for the
one or more facility management devices located at the remote
premises;
initiate storage of at least a portion of the received device
data in the database system[;] and the device data is parsed and
comprises time stamp data, device ID data, and status data; and
communicate, in response to a request received from a
particular one of the one or more remote client systems for device
data for at least one facility management device, stored device
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data for the at least one facility management device responsive
to the request to the particular client system.
43. The system of claim 42, wherein the server system is further
operable to:
receive, from the particular client system, a request to issue a
command to a particular device at a particular premises, the
command specifying an activity to perform with respect to one
or more of the devices located at the particular premises
including a command to turn on one or more lights in response
to an alert; and
communicate [the] a requested command to a computer system
at the particular premises, the computer system operable to
execute the [command] commands by performing the [activity]
activities with respect to the one or more devices.
44. The system of claim 42, wherein:
the database system is further operable to store a schedule
specifying one or more times when a command should be
communicated to a computer system at the particular premises,
the command specifying an activity to perform with respect to
one or more devices located at the particular premises, including
to turn on one or more lights in response to an alert and having
been configured by a user of the particular client system; and
the server system is further operable to communicate [the] a
requested command at the one or more times specified in the
schedule to the computer system at the particular premises, the
computer system operable to execute the [command] commands
by performing the [activity] activities with respect to the one or
more devices.
46. The system of claim 42, wherein:
the database system is further operable to store configuration
information for each of a plurality of alerts, each alert being
associated with one or more of the devices located at the
particular premises, the configuration information for each alert
specifying an action to be performed by the server system in
response to receiving a notification from a computer system at
the particular premises that the alert has been triggered; [and]
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the server system is further operable to, in response to receiving
a notification from the computer system at the particular
premises that a particular alert has been triggered:
access the database system to determine the action to be
performed in response to receiving the notification; and
execute the action to be performed in response to receiving
the notification; and
the computer system located at the premises operable to:
poll one or more of the facility management devices at
predetermined times to obtain device data associated with the
facility management devices; and
communicate an alert file into an alert directory, said alert file
comprising the time at which alert activity was detected.
47. The system of claim 46, wherein the action to be performed
comprises one or more of:
communicating a notification via text message that the particular
alert has been triggered, the configuration information for the
particular alert specifying a recipient for the notification; and
communicating a command to a computer system at the
particular premises, the command specifying an activity to
perform with respect to one or more devices located at the
particular premises, the computer system operable to execute the
command by performing the activity with respect to the one or
more devices.
51. A method for remotely monitoring, controlling, and
managing one or more remote premises, comprising:
storing configuration information for a plurality of devices
located at a remote premises, the plurality of devices comprising
one or more camera devices and one or more facility
management devices;
receiving from the one or more premises device data for the one
or more facility management devices located at the remote
premises;
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initiating storage of at least a portion of the received device data
in the database system and the device data is parsed and further
comprises time stamp data, device ID data, and status data;
communicating media files to the one or more remote premises
for playback at scheduled times; and
communicating, in response to a request received from a remote
client system for device data for at least one facility management
device, stored device data for the at least one facility
management device responsive to the request to the client
system, the client systems being remote from the one or more
premises.
52. The method of claim 51, further comprising:
receiving, from the client system, a request to issue a command
to a particular device at a particular premises, the command
specifying an activity to perform with respect to one or more of
the devices located at the particular premises including turning
on one or more lights in response to an alert; and
communicating [the] a requested command to a computer system
at the particular premises, the computer system operable to
execute the [command] commands by performing the [activity]
activities with respect to the one or more devices.
53. The method of claim 51, further comprising:
storing a schedule specifying one or more times when a
command should be communicated to a computer system at the
particular premises, the command specifying an activity to
perform with respect to one or more devices located at the
particular premises, including turning a light on in response to an
alert and having been configured by a user of the client system;
and
communicating [the] a requested command at the one or more
times specified in the schedule to the computer system at the
particular premises, the computer system operable to execute the
[command] commands by performing the [activity] activities
with respect to the one or more devices.
55. The method of claim 51, further comprising:
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storing configuration information for each of a plurality of alerts,
each alert being associated with one or more of the devices
located at the particular premises, the configuration information
for each alert specifying an action to be performed in response to
receiving a notification from a computer system at the particular
premises that the alert has been triggered; [and]
in response to receiving a notification from the computer system
at the particular premises that a particular alert has been
triggered:
determining the action to be performed in response to receiving
the notification by accessing the stored configuration
information; and
executing the action to be performed in response to receiving the
notification; and
the computer system located at the premises operable to poll one
or more of the facility management devices at predetermined
times to obtain device data associated with the facility
management devices and communicate an alert file into an alert
directory, said alert file comprising the time at which alert
activity was detected.
56. The method of claim 55, wherein the action to be performed
comprises one or more of:
communicating a notification via text message that the particular
alert has been triggered, the configuration information for the
particular alert specifying a recipient for the notification; and
communicating a command to a computer system at the
particular premises, the command specifying an activity to
perform with respect to one or more devices located at the
particular premises, the computer system operable to execute the
command by performing the activity with respect to the one or
more devices.
Mot. Claim App.
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B. Statutory and Regulatory Requirements
“Before considering the patentability of any substitute claims, . . . the
Board first must determine whether the motion to amend meets the statutory
and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R.
§ 42.121.” Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 15 at 4
(PTAB Feb. 25, 2019) (precedential) (“Lectrosonics”). In its Opposition,
Petitioner does not dispute that these requirements are met.14 See generally
Opp. For the reasons set forth below, we determine that Patent Owner has
satisfied these statutory and regulatory requirements.
First, the Motion proposes a reasonable number of substitute claims.
35 U.S.C. § 316(d)(1)(B). “There is a rebuttable presumption that a
reasonable number of substitute claims per challenged claim is one (1)
substitute claim.” Lectrosonics, Paper 15 at 4–5 (citing 37 C.F.R.
§ 42.121(a)(3)). The Petition challenges 13 claims. Pet. 5. The Motion
proposes no more than one substitute claim for each challenged claim. Mot.
1. We determine that the number of proposed substitute claims is reasonable.
Petitioner does not argue otherwise. See generally Opp.
Second, the proposed substitute claims respond to a ground of
unpatentability involved in this trial. Lectrosonics, Paper 15 at 5–6. Patent
Owner presents the claim amendments in an attempt to add features to
further distinguish the proposed substitute claims as patentable over the
references asserted in the instituted grounds. In particular, because Patent

14 Though Petitioner does not initially dispute that the substitute claims do
not enlarge the scope of the claims or introduce new subject matter,
Petitioner does argue that Patent Owner’s arguments in the Patent Owner
Reply attempt to improperly narrow the claim scope in ways that are
unsupported. Pet. Sur-Reply 6–9. We address these arguments in sections
§§ III.F.1–2.
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Owner explicitly addresses the Rezvani and Simon references underlying
our Decision on Institution, the Motion responds to at least a ground of
unpatentability involved in the trial.15 Mot. 13–24. Petitioner does not argue
otherwise. See generally Opp.
Third, “[a] motion to amend may not present substitute claims that
enlarge the scope of the claims of the challenged patent or introduce new
subject matter.” Lectrosonics, Paper 15 at 6–8 (citing 35 U.S.C. § 316(d)(3);
37 C.F.R. § 41.121(a)(2)(ii)). We determine that the proposed amendments
retain all limitations that were previously recited in the original claims, and
add additional limitations to each claim. See Mot. 1. Petitioner does not
argue otherwise. See generally Opp. Further, we determine Patent Owner
has set forth sufficient written description support in the originally filed
disclosure for the proposed amendments. Mot. 2–11. Petitioner does not
argue otherwise. See generally Opp.
In addition, the Motion includes a claim listing, as required by 37
C.F.R. § 42.121(b). Mot. Claim App.
We determine that the Motion meets the statutory requirements of 35
U.S.C. § 316(d) and 37 C.F.R. § 42.121.
C. Burdens for Patentability of Proposed Claims
Ordinarily, “the petitioner bears the burden of proving that the
proposed amended claims are unpatentable by a preponderance of the
evidence.” Bosch Automotive Service Solutions, LLC v. Matal, 878 F.3d
1027, 1040 (Fed. Cir. 2017) (as amended on rehearing), reh’g granted,
Bosch Auto. Serv. Sols., LLC v. Iancu, No. 2015-1928 (Fed. Cir. Mar. 15,

15 Patent Owner provides two Declarations of Chuck Arledge in support of
patentability. Exs. 2030, 2032.
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2018)); see Lectrosonics, Paper 15 at 3–4. In determining whether a
petitioner has proven unpatentability of the substitute claims, the Board
focuses on “arguments and theories raised by the petitioner in its petition or
opposition to the motion to amend.” Nike, Inc. v. Adidas AG, 955 F.3d 45,
51 (Fed. Cir. 2020).
D. Challenges to the Proposed Claims under 35 U.S.C. § 103(a) and
Prior Art
Petitioner asserts in its Opposition that the proposed substitute claims
are unpatentable on the following grounds:16
Claim(s)
Challenged
35
U.S.C. § References
42, 50 103(a) Rezvani, Glenn17,18
43 103(a) Rezvani, Glenn, Monroe19
44 103(a) Rezvani, Crookham, Glenn, Monroe
46, 47 103(a) Rezvani, Glenn, Halpern, Corwin20
47 103(a) Rezvani, Glenn, Halpern, Corwin, Blackburn21
51, 59 103(a) Rezvani, Glenn, Hernandez22
52 103(a) Rezvani, Glenn, Hernandez, Monroe
53 103(a) Rezvani, Crookham, Glenn, Hernandez, Monroe

16 Petitioner supports its challenge with a Second Declaration of Dr. Paul D.
Franzon. (“Second Franzon Decl.”) (Ex. 1016).
17 Ex. 1017, U.S. Pat. 8,665,082 B2 (Mar. 4, 2014) (“Glenn”).
18 We determine that Rezvani alone is sufficient to render claim 1 obvious.
See supra § II.E.2. For this reason, we do not address Petitioner’s alternative
ground of Rezvani and Simon. Id. Here, we omit and likewise do not
address Petitioner’s alternative grounds involving Rezvani and Simon for the
same reasons.
19 Ex. 1018, U.S. Pat. 6,970,183 B1 (Nov. 29, 2005) (“Monroe”).
20 Ex. 1019, US Pat. Pub. 2005/0131652 A1 (June 16, 2005) (“Corwin”).
21 Ex. 1020, GB 2 384 604 A (July 30, 2003) (“Blackburn”).
22 Ex. 1021, WO 02/054178 A2, (July 11, 2002) (“Hernandez”).
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Claim(s)
Challenged
35
U.S.C. § References
55, 56 103(a) Rezvani, Glenn, Hernandez, Halpern, Corwin
56 103(a) Rezvani, Glenn, Hernandez, Halpern, Corwin, Blackburn.

1. Glenn
Glenn is titled “Method and apparatus for monitoring conditions” and
is directed to remote monitoring to collect data and associated alarms. Ex.
1017, codes (54), (57). Glenn teaches that the data is collected from sensors
and can include information such as, “the sensor reading, the unique
identifier of the sensor and the device (station) identifier” and the “location
of the remote device, date and time of the sensor reading, the number of
retries required to obtain confirmation from the server 26, and the status of
the telemetry radio 20.” Id. at 6:56–62.
2. Monroe
Monroe is titled “Multimedia surveillance and monitoring system
including network configuration” and is directed to a surveillance system
capable of “transmitting event data, video and/or image monitoring
information, audio signals and other sensor and detector data over significant
distances.” Ex. 1018, codes (54), (57). Monroe also teaches that in the event
of a breach of security, “an appropriate response system will be activated for
securing the immediate area and taking counter measures to protect the
security of the area.” Id. at 6:54–57. This can include “sealing off the area,
turning on lights, activating audio devices and/or, where appropriate,
transmitting an audible and/or visual alarm.” Id. at 6:57–61.
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3. Corwin
Corwin is titled “Remote monitoring system” and is directed to a
system with sensors adapted to detect a parameter, a first processor adapted
to receive a signal related to the parameter and a second processor in
communication with the first processor. Ex. 1019, codes (54), (57). The
system can generate an alarm in response to a sensed parameter. Id. ¶ 97.
The alarm can be “an electronic transmission, an audible alarm, or a visual
readout on a printer or monitor. For example, the alarm may comprise an e-
mail alert, an e-mail with attachments, a file transfer protocol (FTP), a text
message communicated wirelessly to a device such as a mobile telephone,
pager, or the like.” Id.
4. Blackburn
Blackburn is titled “Remote property monitoring system using mobile
phone text messaging” and is directed to “[a] unit allowing remote
monitoring of an area via the use of a mobile network SMS system.” Ex.
1020, codes (54), (57). Blackburn teaches that “[o]nce triggered [by a
sensor] an SMS text message containing the location and the cause of the
alarm may be sent to one or more mobile phone numbers.” Id. at code (57).
5. Hernandez
Hernandez is titled “Method and apparatus for in-store media
advertising” and is directed to a local media advertising system coupled to a
remote media content server, where “the local media advertising system
receives advertising content and an advertising content display schedule
from the content server. The local media advertising system displays the
advertising content according to the advertising content display schedule.”
Ex. 1021, codes (54), (57).
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E. Level of Ordinary Skill
When analyzing the substitute claims, we apply the same formulation
regarding the level of ordinary skill in the art that we applied when
analyzing the original claims. See supra § II.B.
F. Claim Construction
Patent Owner does not identify any terms that need to be construed in
the proposed substitute claims. See generally Mot. Petitioner likewise does
not offer any constructions of terms in the proposed claims. See generally
Opp. Patent Owner does argue claim scope in view of Petitioner’s
Opposition, which we discuss below in the relevant claim discussions.
G. Claims 42, 50 – Obviousness over Rezvani and Glenn
Regarding proposed substitute claim 42, the majority of elements are
identical to corresponding elements in original claim 1. Compare Mot.,
Claim App. 18–19, with Ex. 1001, 50:36–51:2. Proposed claim 50 is
“substantively identical to [its] respective original dependent claim [original
claim 9], changing only in [its] dependence.” Mot. 1. As discussed above,
Petitioner has offered persuasive evidence in support of its contentions that
Rezvani teaches or suggests each of these claim limitations, and Patent
Owner does not dispute these contentions. See supra §§ II.E.2–3; see also
Mot. 14–15 (not disputing that Rezvani discloses these limitations of
substitute claim 42). Thus, we are persuaded that Rezvani teaches or
suggests each of these limitations of proposed substitute claims 42 and 50.
Proposed substitute claim 42 also includes newly added limitations
related to “a registrar system” and “device data.” Mot., Claim App. 18–19.
We address each of these limitations below.
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1. “registrar system”
Proposed substitute claim 42 adds to the original requirements of
claim 1, “a registrar system, comprising a server system and a database
system, operable to facilitate storage of media and playing of media at the
one or more premises.” Mot., Claim App. 18. Patent Owner asserts that
Simon “does not disclose a database storing media files and then
communicating media files to a premises for playback.” Id. at 14 (citing Ex.
1005, 4:6–12). Notably, Patent Owner does not address Rezvani. See id.
In the Opposition, Petitioner contends that Rezvani teaches this new
limitation. Opp. 9–10. In particular, Petitioner asserts that Rezvani’s remote
site 14 teaches “a registrar system” at a remote premise that includes
database server 48 and web server 46. Id. at 9 (citing Ex. 1004, 5:62–64,
12:29–37, 13:13–20). Petitioner further asserts that Rezvani’s remote site 14
stores images or video at database server 48 which can then be played via
web server 46 at premises 18, and so, teaches that the registrar system is
operable to facilitate storage of media and playing of media at the one or
more premises. Id. at 9–10 (citing Ex. 1004, 8:1–23, 10:44–48). In
particular, as Petitioner points out, Rezvani teaches “an example of camera
34 taking a picture of the front door at premises 18 and transmitting that
picture to database server 48 in remote site 14 for storage via monitoring
module 28 and communications network 16 such that a user can later access
the picture using web server 46 of remote site 14 via Internet browser 26 at
premises 18.” Opp. 9–10 (citing Ex. 1004, 8:1–23).
Patent Owner agrees that Petitioner has accurately described the
teachings of Rezvani, but argues that Petitioner has misinterpreted the
requirement of the claim. PO Reply 5–7. Thus, if Patent Owner’s
construction of the claim is incorrect, Petitioner has established that Rezvani
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teaches or suggests this newly added limitation. However, as discussed
below, we determine that Rezvani teaches the new limitation under either
claim construction.
Patent Owner argues that “a registrar system . . . operable to facilitate
storage of media and playing of media at the one or more premises”
“requires that both the storage of media and the playback of media be
facilitated at the one or more premises.” Id. at 5–6. Patent Owner points to
the language of the claim for support, but does not otherwise explain or
address the construction. Id. at 7 (“In contrast, limitation 42a requires ‘a
registrar system, comprising a server system and a database system, operable
to facilitate storage of media and playing of media at the one or more
premises.’”).
This argument it is inconsistent with Patent Owner’s argument over
Simon in the Corrected Motion to Amend, where Patent Owner distinguishes
proposed claim 42 by stating that Simon “does not disclose a database
storing media files and then communicating media files to a premises for
playback.” Mot. 14. Thus, before seeing Petitioner’s argument, Patent
Owner construed proposed claim 42 as requiring “a database storing media
files” and not that the media files were stored at the premises.
As written support for this limitation, from the ’744 Application (U.S.
Pat. App. 11/089,744, Ex. 2027), which became the ’256 Patent, Patent
Owner provided the following citation:
See id. at 29:1–2 (“Registrar system 14 may comprise a server
system 60 and a database system 62”); 36:4–5 (“registrar system
14 is operable to support one or more media functions for
facilitating the playback of media at premises 16.”); 37: 3–4
(“computer system 22 may contact registrar system 14 and
request the media file.”).
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Mot. 3.23 Though these quotations do not explicitly state where the media is
stored, the last quote implies that the media is stored in the registrar system
14. This understanding is consistent with the further discussion of the
embodiment in the ’744 Application. In the initial example, describing how
the registrar system 14 facilitates the playback of media at premises 16, the
’744 Application states that the media files are stored and organized “in a
media library on database system 62.” Ex. 2027, 36:5–6; see also id. at
36:10–11 (“a copy of substantially all media files for premise 16 is stored at
registrar system 14”).
The ’744 Application disclosure does imply that the media files can
be stored at the premises, in addition to the registrar system 14: “If the
computer system 22 [at the premises] determines that it does not have the
appropriate media file [that needs to be played], the computer system 22
may contact registrar system 14 and request the media file.” Id. at 37:3–4;
see also id. at 36:11–12 (stating that media files can be communicated to the
premises 16 from the registrar system 14).
Petitioner argues that these passages do not teach that the registrar
system facilitates media storage at the premises as would be required by the
proposed claim under Patent Owner’s reading. Pet. Sur-Reply. 7. However,
when the registrar system provides a copy of a media file to the premises
that the premises do not have, we determine that this is an example of the
registrar system facilitating storage at the premises, even if only facilitating
temporary storage. Ex. 2027, 37:3–4. Thus, we do not agree with Petitioner

23 Patent Owner cites to the original page numbers of the ’744 Application,
as opposed to the page numbers added to the exhibit. For consistency, we
also cite to the original page numbers of the ’744 Application.
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that Patent Owner’s claim construction is not supported by the Specification
of the ’744 Application.
However, under that same logic, we also determine that Rezvani
teaches a registrar system facilitating storage at the premises. This is because
we determine that Rezvani’s teaching of playing an image on internet
browser 26 at remote premises 18 via web server 46 (Ex. 1004, 8:16–22; see
also Opp. 10) would result in the image being stored at least temporarily on
client access device 22, which includes internet browser 26. See Ex. 1004,
Fig. 1; see also id. at 5:39–46 (“Client device 22 may be any device suitable
for communicating with remote site 14 via communications network 16. For
example, client device 22 may be a computer, . . . .”). Just as the
Specification of the ’744 Application teaches that a copy of a media file is
provided from the registrar system to the premises for viewing, Rezvani’s
teachings similarly require that a copy of an image on web server 46 be
provided to the client access device 22 in order for it to be viewed on
internet browser 26.
In view of the language of the claim itself, the inconsistent initial and
secondary positions taken by Patent Owner in arguing the meaning of the
claim, and the disclosure cited for support, as well as the teachings of the
Specification, we determine that “a registrar system . . . operable to facilitate
storage of media and playing of media at the one or more premises” does not
require that the media be stored at the one or more premises. Accordingly,
Petitioner has shown that Rezvani teaches or suggests “a registrar system,
comprising a server system and a database system, operable to facilitate
storage of media and playing of media at the one or more premises.”
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We also determine, as discussed above, that Rezvani teaches this
limitation under Patent Owner’s claim construction, which would require
that the media be stored at the premises.
2. “device data”
Proposed substitute claim 42 also adds: “device data is parsed and
comprises time stamp data, device ID data, and status data.” Mot., Claim
App. 19. Patent Owner asserts that “Rezvani does not teach a server or
database that parses data into narrow data points.” Id. at 14–15.
In the Opposition, Petitioner contends that the combination of Rezvani
and Glenn teaches this amended limitation. Opp. 11–14. In particular,
Petitioner asserts that Rezvani teaches storing device descriptors 49 (i.e.
device ID data), including a manufacturer identification, product
identification, and driver version number, and a record of resources
associated with a device (i.e. status data) including status indicators, time
fields, and date fields. Id. at 11–12 (citing Ex. 1004, 9:15–17, 10:11–12, 23–
55, 11:49–61). Patent Owner does not contest Petitioner’s arguments
concerning the teachings of Rezvani. See generally PO Reply 7–8. We
determine that Petitioner has correctly mapped the teachings of Rezvani to
the requirements of proposed substitute claim 42 as noted above.
Petitioner argues that “while Rezvani describes collecting sensor data
from multiple sensors and storing virtual representation of each remote
device as a separate record in the database of database server 48, Rezvani
does not provide specifics as to what the sensor data is comprised of and
how the sensor data from multiple sensors is stored as separate records in the
database.” Opp. 13. For this reason, Petitioner argues that a POSA would
have looked to other references, such as Glenn, to provide the needed
specifics.
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Petitioner asserts that Glenn collects sensor data (i.e., “device data”),
including a time stamp, a unique sensor identifier, and a sensor reading, (i.e.,
“time stamp data, device ID data, and status data”), which is transmitted to a
server that “parses” the sensor data. Id. at 12 (citing Ex. 1017, 3:61–63,
4:10–13, 6:50–64, 10:32–34). Petitioner argues that after obtaining the data,
“[t]he server 26 then ‘parses’ the sensor data for ‘each sensor based upon a
unique identifier assigned to each sensor’ and ‘stores’ it ‘based upon each
uniquely identified sensor.’” Id. (citing Ex. 1017, 10:32–34, 3:61–63, 4:10–
13) (emphasis omitted).
Patent Owner argues that Glenn’s time stamp data is not within the
meaning of “device data” in proposed substitute claim 42. Claim 42 requires
that the server system “receive from the one or more premises device data
for the one or more facility management devices located at the remote
premises.” It is argued that Glenn’s time stamp data is not “device data”
because “Glenn actually teaches that ‘the date and time stamp can be applied
at the server 26 or at the control board 21 level.’” PO Reply 8. (quoting Ex.
1017, 6:50–64) (emphasis omitted). Patent Owner further argues that
Glenn’s “date and time stamp information are not data collected or created
and then sent by the device; and [therefore] the prior art device data does not
comprise time stamp data.” Id.
There are two problems with Patent Owner’s argument. First, as noted
by Petitioner, nothing in the claim requires that the “device” send the device
data to the server. Pet. Sur-Reply 8. Rather, the claim merely requires that
the server receive the device data “from the one or more premises.”
Secondly, as highlighted above, Patent Owner admits that “Glen[n] actually
teaches ‘the date and time stamp can be applied . . . at the control board 21
level,’” (PO Reply 8 (emphasis omitted)) and Glenn teaches that control
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board 21 is located at the premises with the sensors. Pet. Sur-Reply 8 n.3.
Glenn teaches that:
The control board 21 is a microprocessor controlled device that
is linked to the sensors. The control board 21 is a point to which
the data is initially sent to and from the sensor. The control board
21 is also the location where the data is collected and processed
for transmission to a remote location 26.
Ex. 1017, 6:18–23. Glenn also teaches that:
The packet of data is passed to a wireless device such as a
telemetry radio 20 from the control board 21. From here, the data
is then transmitted 22 to another location or remote location 24
such as a server 26.
Id. at 6:15–18.
Thus, as the control board is located at the premises, receives the
device data, applies a time stamp, as admitted by Patent Owner, and
transmits the data to a server, Glenn does teach a time stamp data that is
“device data” as required by proposed claim 42. Further, we determine that
Glenn teaches parsing the data once received by the server, as identified by
Petitioner and described above. As such, the combination of Rezvani and
Glenn teach parsing device data, which includes time stamp data, device ID
data, and status data.
We also determine that Petitioner’s rationale for the combination,
applying “Glenn’s technique of parsing sensor data from multiple sensors”
to “Rezvani’s known system of monitoring remote sensors” (Opp. 13), is
reasonable because the combination would have provided missing details to
Rezvani’s system. Patent Owner faults Petitioner for relying only on
“narrow features” of Glenn and applying them “in the context of Rezvani.”
PO Reply 1. However, we are not persuaded that this is inappropriate. It is
not required that Petitioner bodily incorporate all of the teachings of Glenn
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into Rezvani. MCM Portfolio LLC v. Hewlett-Packard Co., 812 F.3d 1284,
1294 (Fed. Cir. 2015). Further, Patent Owner does not identify or even argue
that Petitioner’s reasons to combine Glenn’s teachings with Rezvani’s
system are inappropriate or that some aspect of Glenn’s teachings teach
away from such a combination. As we find no such contrary teaching, we
determine that Petitioner’s reason to combine is supported by the evidence
of record.
Accordingly, Petitioner has shown that proposed substitute claim 42 is
unpatentable under 35 U.S.C. § 103 as obvious over the combination of
Rezvani and Glenn. Proposed substitute claim 50 depends from claim 42 and
does not otherwise amend the language of its original claim. Accordingly,
Petitioner has shown that proposed substitute claim 50 is unpatentable under
35 U.S.C. § 103 as obvious over the combination of Rezvani and Glenn.
H. Claim 43 – Obviousness over Rezvani, Glenn, and Monroe
Proposed substitute claim 43 depends from proposed substitute claim
42. Claim 43 corresponds to original claim 2 and adds, in relevant part, “a
command to turn on one or more lights in response to an alert.” Mot., Claim
App. 20. As discussed above, Petitioner has offered persuasive evidence in
support of its contentions that Rezvani teaches or suggests each of the
limitations of original claim 2, and Patent Owner does not dispute these
contentions. See supra § II.E.3; see also Mot. 15–16 (not disputing that
Rezvani discloses these limitations of proposed claim 43). Thus, we are
persuaded that Rezvani teaches or suggests each of these limitations
incorporated into proposed substitute claim 43.
Patent Owner asserts that Rezvani does not teach the added limitation
of proposed claim 43 and further asserts that “Rezvani teaches away from
this limitation because Rezvani requires a user to manually turn the light
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[on] with a command through the web server . . . instead of in response to an
alert.” Mot. 14–16.
In the Opposition, Petitioner contends that the combination of Rezvani
and Monroe teaches the amended limitation of claim 43. Opp. 14–16. In
particular, Petitioner argues that Rezvani describes “a command to turn on a
lamp at remote premises 20 communicated via web server 46.” Id. at 14
(citing Ex. 1004, 8:28–42, 11:20–23). Petitioner further argues that Monroe
describes a signal, which causes “an appropriate response system [to] be
activated,” such as “turning on lights,” and, so, teaches “a command to turn
on one or more lights in response to an alert.” Id. at 14–15 (citing Ex. 1018,
6:48–59, 28:39–45).
We are persuaded by Petitioner’s arguments that the combination of
Rezvani and Monroe teaches this amended limitation. We are persuaded that
Rezvani describes that, via web server 46, a “user [can] change the state of
lamp 42 from being ‘off’ to being ‘on’ by, for example, manipulating the
virtual light switch from web server 46.” Ex. 1004, 8:28–36. Further,
Monroe describes that, in the case of a security breach, corresponding
“signals will be immediately transmitted to the base station” and “an
appropriate response system will be activated,” e.g., “turning on lights.” Ex.
1018, 6:48–59. Monroe also describes a “visual light/strobe light 563 can be
turned on by locally detected events, by remote control signal, or by other
system elements such as detection by a companion sensor unit signaling over
the network.” Id. at 28:39–45. As such, the combination of Rezvani and
Monroe teaches the amended limitation.
Although Patent Owner argues Rezvani “teaches away” from turning
on lights in response to an alert because Rezvani describes “manually”
turning on lights (Mot. 15–16), we are not persuaded that Rezvani criticizes,
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discredits, or otherwise discourages turning on lights in response to an alert.
See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art's
mere disclosure of more than one alternative does not constitute a teaching
away from any of these alternatives because such disclosure does not
criticize, discredit, or otherwise discourage the solution claimed.”). Rather,
the evidence shows that Rezvani has merely described a different manner of
turning on lights, i.e., manually, which does not persuade us that Rezvani
teaches away from a command to turn on lights in response to an alert.
Furthermore, Petitioner’s rationale for the combination, improving
Rezvani’s monitoring system to “set[] one or more lights to turn on in
response to an alert” is reasonable because turning on lights in the event of a
security breach would have provided benefits such as “scaring away
intruders, attracting attention of security personnel, and helping to get a
better picture.”24 Opp. 15–16.
Accordingly, Petitioner has shown that proposed substitute claim 43 is
unpatentable under 35 U.S.C. § 103 as obvious over the combination of
Rezvani, Glenn,25 and Monroe.
I. Claim 44 – Obviousness over Rezvani, Glenn, Crookham, Monroe
Proposed substitute claim 44 depends from proposed substitute claim
42. Claim 44 corresponds to original claim 3 and adds similar amendments

24 Though Dr. Franzon admits to “probably” not having read all of Monroe
(Ex. 2033, 100, ll. 17–20), we do not rely on the declarant’s testimony on
this point, nor is it necessary for us to rely on such testimony to determine
the benefits of turning on lights in the event of a security breach.
25 As discussed previously, Glenn is relied on for teaching features of
proposed claim 42, from which proposed claim 43 depends. Notably, the
added limitations of claim 43 do not depend on the features for which Glenn
is relied upon.
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as proposed substitute claim 43 discussed above. Mot., Claim App. 20. As
discussed above, Petitioner has offered persuasive evidence in support of its
contentions that the combination of Rezvani and Crookham suggests each of
the limitations of original claim 3, and Patent Owner does not dispute these
contentions. See supra § II.F.2; see also Mot. 22–23 (not disputing that
Rezvani discloses these limitations of proposed claim 44). As also discussed
above, Petitioner has offered persuasive evidence in support of its
contentions that the combination of Rezvani and Monroe suggests the added
limitations of proposed substitute claim 43 which are substantially similar to
those added here.
Accordingly, Petitioner has shown that proposed substitute claim 44 is
unpatentable under 35 U.S.C. § 103 as obvious over the combination of
Rezvani, Glenn, Crookham, and Monroe.
J. Claim 46 – Obviousness over Rezvani, Glenn, Halpern and Corwin
Proposed substitute claim 46 depends from claim 42 and amends
original claim 5 to require that the server “poll one or more of the facility
management devices at predetermined times to obtain device data associated
with the facility management devices” (“polling”) and “communicate an
alert file into an alert directory, said alert file comprising the time at which
alert activity was detected” (“alert file”). Mot., Claim App. 21–22. Notably,
the polling amendment reiterates claim limitations recited in original claim
19. See Ex. 1001, 53:62–65.
As discussed above, Petitioner has offered persuasive evidence in
support of its contentions that Rezvani teaches or suggests each of the
limitations of original claim 5, and Patent Owner does not dispute these
contentions. See supra § II.E.3; see also Mot. 16 (not disputing that Rezvani
discloses these limitations of proposed claim 46). As also discussed above,
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Petitioner has offered persuasive evidence in support of its contentions that
the combination of Rezvani and Halpern suggests the polling limitations of
claim 19, which are substantially similar to the polling limitations added
here. See supra § II.G.3.
We now address the newly added “alert file” limitation. Proposed
substitute claim 46 amends claim 5 to additionally require that the server
“communicate an alert file into an alert directory, said alert file comprising
the time at which alert activity was detected.” Mot., Claim App. 22.
Patent Owner asserts that “[a]lthough Rezvani allows for ‘the real-
time states of devices 32 to be stored,’ Rezvani 11:6–7, there is no indication
Rezvani stores alert information in an alert directory comprising the times at
which alert activity was detected.” Id. at 17.
Petitioner argues that Corwin describes an Alarm file, including a
time the Alarm file was created and entered into an iMon System Log, and
so teaches “communicat[ing] an alert file into an alert directory, said alert
file comprising the time at which alert activity was detected.” Opp. 17–18
(citing Ex. 1019 ¶¶ 171, 173, 185, 188, 198–201, Fig. 11). In particular,
Petitioner argues that Corwin describes a “browser-based monitoring
software . . . iMon” which monitors sensor data, and, if sensor “data fall[s]
outside the predetermined boundaries, . . . an alarm condition may be
raised.” Id. (citing Ex. 1019 ¶¶ 171, 173, 188). Alarms are “entered into the
iMon System Log” as an “Alarm file,” which includes a time the Alarm file
was created. Id. at 18 (citing Ex. 1019 ¶¶ 198, 199–201). Corwin also states
that “[d]ata fields in the [Alarm] file” include a “Date_Time” field. Ex. 1019
¶¶ 200, 205.
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Petitioner argues that the Alarm file is “created upon detecting the
alarm condition,” and so the Alarm file creation time provides “the time at
which alert activity was detected.” Opp. 18–19.
Petitioner argues that “while Rezvani teaches that its monitoring
module 28 ‘allow[s] the real-time states of devices 32 to be stored,’ . . .
Rezvani does not provide specifics as to how an alert condition of a device is
stored in the monitoring module 28.” Id. at 19 (quoting Ex. 1004, 11:4–7).
Thus, Petitioner argues that in order to carry out the process disclosed in
Rezvani, a POSA would have looked to Corwin, which provides the missing
disclosure “of creating an Alarm file when an alarm condition is raised,
including in its file name the time the file is created, and stor[ing] it in the
selected directory.” Id.
Petitioner further argues that a POSA:
would have also recognized the benefits of combining Rezvani
and Corwin since Corwin’s simple file structure allows
Rezvani’s real-time monitoring of devices 32 to efficiently and
accurately create and store data relating to alert conditions of the
monitored devices. Here, Corwin’s technique of storing alarm
files in a directory is combined with and applied to Rezvani’s
known system of real-time monitoring of devices ready for
improvement in storage of alert activity data to yield predictable
results (e.g., monitoring module storing a file comprising real-
time alert information of a device in a directory).
Id. at 19–20 (citing Ex. 1016 ¶¶ 60, 61).
Patent Owner argues that that Petitioner’s argument fails because
“Corwin, like Rezvani, teaches storage in a database remote from the
premises,” where the claim requires that the alert directory be in the
computer system on the premises (i.e., not remote). PO Reply 8–9.
“However, Petitioner relies on Rezvani’s monitoring module 28 at the
premises, not Corwin, for the claimed computer system located at the
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premises.” Pet. Sur-Reply 10 (citing Opp. 17, 19–20). Patent Owner’s
argument is not directed at the position set forth by Petitioner for this claim
limitation.
We agree with Petitioner that Rezvani teaches that the monitoring
module 28 stores the real-time states of devices 32, which can include alert
states. We also agree Rezvani does not provide specifics as to how an alert
condition of a device is stored in the monitoring module 28, and thus a
POSA would be motivated to look to Corwin to supply this additional
insight. Finally, we also agree that Corwin teaches an alert file comprising
the time at which alert activity was detected, and that it would have been
obvious to include this in the alert file stored by the monitoring module 28 in
view of the teachings of Corwin.
Accordingly, Petitioner has shown that proposed substitute claim 46 is
unpatentable under 35 U.S.C. § 103 as obvious over the combination of
Rezvani, Glenn, Halpern, and Corwin.
K. Claim 47 – Obviousness over Rezvani, Glenn, Halpern, Corwin, and
optionally Blackburn
Proposed substitute claim 47 depends from claim 46, corresponds to
original claim 6 and adds “communicating a notification via text message
that the particular alert has been triggered.” Mot., Claim App. 22.
As discussed above, Petitioner has offered persuasive evidence in
support of its contentions that Rezvani teaches or suggests each of the
limitations of original claim 6, and Patent Owner does not dispute these
contentions. See supra § II.E.3; see also Mot. 18–19 (not disputing that
Rezvani discloses these limitations of proposed claim 47).
Patent Owner argues that Rezvani does not teach “communicating a
notification via text message.” Mot. 18. At the same time, Patent Owner
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admits that “Rezvani notifies users of an ‘event notification or alarm
triggers’ through a ‘user’s pager, for example via cellular transmitter 44.’”
Id. (citing Ex. 1004, 7:25–33, 8:14–16).
Petitioner contends that both Corwin and Blackburn communicate a
notification of an alarm via text to a user. Opp. 20–22. Specifically,
Petitioner states “Corwin teaches that [an] alarm signal may comprise ‘a text
message communicated wirelessly to a device such as a mobile telephone,
pager, or the like.’” Id. at 20–21 (citing Ex. 1019 ¶¶ 97, 111). Petitioner also
states “Blackburn teaches that when an alarm is triggered, ‘an SMS text
message containing the location and the cause of the alarm may be sent to
one or more mobile phone numbers.’” Id. at 21 (citing Ex. 1020, code (57)
(emphasis omitted)). In view of the above, we are persuaded by Petitioner’s
argument that both Corwin and Blackburn teach this amended limitation.
Petitioner argues and we agree that as “Rezvani already teaches
various alert notification devices,” a POSA “would have recognized that the
combination would have involved a simple addition or substitution of
another well-known and related notification technique (e.g., SMS text
messaging) to obtain predictable results (e.g., communicating an alert
notification via text message).” Id. We further agree that a POSA “would
have also recognized the benefit of the combination since text messaging
allows users to conveniently and frequently check for alert messages.” Id.
Accordingly, Petitioner has shown that proposed substitute claim 47 is
unpatentable under 35 U.S.C. § 103 as obvious over the combination of
Rezvani, Glenn, Halpern, and Corwin; and over the combination of Rezvani,
Glenn, Halpern, Corwin, and Blackburn.
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L. Claims 51, 59 – Obviousness over Rezvani, Glenn, and Hernandez
Proposed substitute independent claim 51 amends claim 10 to add,
inter alia: “communicating media files to the one or more remote premises
for playback at scheduled times.” Mot., Claim App. 23–24. Proposed
substitute claim 59 depends from proposed substitute claim 51, but does not
otherwise amend the language of its original claim. Id. at Claim App. 27.
In the Opposition, Petitioner contends that the combination of Rezvani
and Hernandez teach this amended limitation. Opp. 22–24. In particular,
Petitioner argues that Rezvani describes “playing image(s) or video on
Internet browser 26 at remote premises 18 via web server 46,” but does not
disclose the “playing back of media files at the remote premises at scheduled
times.” Id. at 22. Petitioner argues that Hernandez’s “networked system for
displaying advertising media content at remote stores at scheduled times”
teaches “communicating media files to the one or more remote premises for
playback at scheduled times.” Id. at 22–23 (citing e.g., Ex. 1021, code (57)).
More particularly, Petitioner argues that the media contents would be
Rezvani’s “recorded images of the front door” and that “Hernandez’s
technique of displaying media contents at scheduled times is combined with
Rezvani’s known system of monitoring the front door of a remote premises
ready for improvement in home security to yield predictable results (e.g.,
playing back the recorded images of the front door at scheduled times).” Id.
at 23–24. Petitioner argues that a POSA would make such a modification in
order to “enable tailoring of the timing to the intended audience and increase
the likelihood that the media contents are viewed by the targeted audience.”
Id. at 23 (citing Ex. 1016 ¶¶ 79–83).
Hernandez is directed to displaying advertising, and tailoring the
timing of displaying media to increase the likelihood that the media contents
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are viewed by the targeted audience, which is clearly beneficial in an
advertising context. However, it is not clear that this advertising benefit is
equally applicable in a security setting. Further, it is unclear how displaying
recorded images of the front door at scheduled times is an “improvement in
home security” as stated by Petitioner. Petitioner’s only support for these
statements is the Second Declaration of Dr. Franzon, which merely repeats
these assertions without further explanation. See Ex. 1016 ¶¶ 81–82.
Accordingly, we determine that Petitioner has not shown that
proposed substitute claim 51 is unpatentable under 35 U.S.C. § 103 as
obvious over the combination of Rezvani, Glenn, and Hernandez. In
particular, Petitioner has not provided a reason to combine the teachings of
Rezvani and Hernandz with rational underpinnings. See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006)) (“[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.”).
Proposed substitute claim 59 depends from claim 51, but does not
otherwise amend the language of its original claim. Accordingly, we also
determine that Petitioner has not shown that proposed substitute claim 59 is
unpatentable under 35 U.S.C. § 103 as obvious over the combination of
Rezvani, Glenn, and Hernandez.
M. Claims 52, 53, 55, 56
Proposed substitute claims 52, 53, 55, and 56 depend from proposed
claim 51. Petitioner argues that these claims are unpatentable over various
combinations of Rezvani, Glenn, Hernandez, Monroe, Crookham, Halpern,
Corwin, and Blackburn. Opp. 24. However, Petitioner does not address the
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shortcoming identified above for proposed claim 51 with any of these
combinations. See id. Thus, we determine that Petitioner has not shown that
proposed substitute claims 52, 53, 55, and 56 are unpatentable under 35
U.S.C. § 103 as obvious at least because of their dependence from proposed
substitute claim 51.
N. Patentability of Proposed Substitute Claims under 35 U.S.C. § 101
Petitioner contends that the proposed substitute claims are patent-
ineligible. Opp. 3. In our Preliminary Guidance we determined that
“Petitioner has not shown a reasonable likelihood that the proposed
substitute claims are drawn to ineligible subject matter.” PG 18. Though
Petitioner’s Sur-Reply discusses some of the points made by Patent Owner
in the Patent Owner Reply on patent eligibility, Petitioner does not address
any of the shortcomings that were identified in the Preliminary Guidance.
Thus, we adopt our preliminary findings and determinations that Petitioner
has not demonstrated that the proposed substitute claims are drawn to
ineligible subject matter. We summarize those findings and determinations
below.
Petitioner contends that the proposed substitute claims are patent-
ineligible, arguing that the claims are “focused on receiving, storing, and
communicating device data for the purpose of remote monitoring,” which
amounts to an abstract idea. Opp. 3. Petitioner then argues that the claims do
not add anything to the abstract idea beyond “desirable information-based
results achieved with generic computing components.” Id. at 5. We are not
persuaded by Petitioner’s arguments.
Under Step 2A, Prong One of the 2019 Revised Patent Subject Matter
Eligibility Guidance, we must first evaluate whether a claim recites a
judicial exception. 84 Fed. Reg. 50, 54 (Jan. 7, 2019) (hereinafter
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“Guidance”). If we identify a judicial exception recited in the claim, we then
proceed to Step 2A, Prong Two of the Guidance, where we “evaluate
whether the claim as a whole integrates the recited judicial exception into a
practical application of the exception.” Id. at 54. If we determine that the
claim is directed to a judicial exception, we then proceed to Step 2B of the
Guidance and evaluate whether the claim provides an inventive concept. Id.
at 56.
Petitioner’s analysis is insufficient. Petitioner highlights the claimed
“storing,” “receiving,” and “communicating” of data to assert that proposed
substitute claim 51 recites a judicial exception, namely, an abstract idea;
Petitioner then argues that claim terms such as “client system” and “database
system” are “generic computing components” such that the claims do not
add anything beyond the abstract idea. Opp. 3, 5. However, Petitioner’s
analysis ignores the remaining limitations forming the majority of the claim
and instead relies on generic and conclusory statements without sufficiently
analyzing the actual claim language. See Opp. 3–5. For example, the claim
also recites a “plurality of devices comprising one or more camera devices
and one or more facility management devices,” “device data is parsed,”
“media files to the one or more remote premises for playback at scheduled
times,” “a request received from a remote client system,” and “stored device
data for the at least one facility management device responsive to the
request.” Petitioner does not address those features, and in particular, does
not address their functionality in the context of the claim as a whole or
explain why those limitations have been ignored in its analysis. See id. at 2–
7. By failing to discuss the majority of the claim in any portion of its
argument, Petitioner does not present persuasive argument or evidence that
the claim is drawn to ineligible subject matter. Due to these shortcomings,
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Petitioner has not shown that proposed substitute claim 51 is patent-
ineligible. Petitioner relies on the same arguments in regards to proposed
substitute claim 42. Id. at 6. Accordingly, Petitioner has not shown that the
proposed substitute claims are drawn to ineligible subject matter.

IV. CONCLUSION26
For the reasons discussed above, we determine Petitioner has proven,
by a preponderance of the evidence, that all of the challenged claims are
unpatentable, as summarized in the below table. We also grant-in-part Patent
Owner’s Corrected Motion to Amend.
In summary, regarding the challenged claims:
Claims
35 U.S.C.
§

Reference(s)
/Basis

Claims
Shown
Unpatentable
Claims Not
shown
Unpatentable
1, 2, 5, 6, 9–
11, 14, 15, 18
103(a) Rezvani 1, 2, 5, 6, 9–11, 14, 15, 18

1, 2, 5, 6, 9–
11, 14, 15, 18
103(a)27 Rezvani,
Simon

3, 12 103(a) Rezvani, Crookham
3, 12

26 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).
27 As explained above, because we determine that the challenged claims are
unpatentable in light of Rezvani, we decline to address this ground.
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Claims
35 U.S.C.
§

Reference(s)
/Basis

Claims
Shown
Unpatentable
Claims Not
shown
Unpatentable
3, 12
103(a) 28 Rezvani,
Simon,
Crookham

19
103(a) Rezvani,
Halpern,
Naidoo
19
Overall
Outcome
1–3, 5, 6, 9–
12, 14, 15, 18,
19

In summary, regarding the proposed substitute claims:
Motion to Amend Outcome Claims
Original Claims Proposed to be Replaced 1–3, 5, 6, 9–12, 14,
15, 18
Substitute Claims Proposed in the Amendment 42–44, 46, 47, 50–53,
55, 56, 59
Substitute Claims: Motion to Amend Granted 51–53, 55, 56, 59
Substitute Claims: Motion to Amend Denied 42–44, 46, 47, 50
Substitute Claims: Not Reached None

28 As explained above, because we determine that the challenged claims are
unpatentable in light of Rezvani and Crookham, we decline to address this
ground.
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V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–3, 5, 6, 9–12, 14, 15, 18 and 19 of U.S.
Patent No. 7,792,256 B1 have been shown to be unpatentable;
FURTHER ORDERED that Patent Owner’s Corrected Motion to
Amend is denied with respect to substitute claims 42–44, 46, 47, and 50;
FURTHER ORDERED that Patent Owner’s Corrected Motion to
Amend is granted with respect to substitute claims 51–53, 55, 56, 59; and
FURTHERED ORDERED that, because this is a Final Written
Decision, parties to the proceeding seeking judicial review of the Decision
must comply with the notice and service requirements of 37 C.F.R. § 90.2.
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For PETITIONER:
Jung Hahm
Ashraf Fawzy
UNIFIED PATENTS INC.
jung@unifiedpatents.com
afawzy@unifiedpatents.com

For PATENT OWNER:
Reid Huefner
Barry Irwin
IRWIN IP
rhuefner@irwinip.com
birwin@irwinip.com