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Unified Patents Inc. v. Wireless Monitoring Systems, LLC, IPR2017-00027 (PTAB Oct. 6, 2017)
Unified Patents Inc. v. Wireless Monitoring Systems, LLC, IPR2017-00027 (PTAB Oct. 6, 2017)
Unified Patents Inc. v. Wireless Monitoring Systems, LLC, IPR2017-00027 (PTAB Oct. 6, 2017)
Patent 9,280,886
v.
IPR2018-00027
Patent 9,280,886
TABLE OF CONTENTS
Page
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Patent 9,280,886
B. Ground II: Claims 29, 35, 37, 52-54 are rendered obvious by Handley
in view of Pacheco, Castleman, and Ruckley ..................................... 55
VIII. CONCLUSION.............................................................................................. 79
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I. MANDATORY NOTICES
A. Real Party-in-Interest
Petitioner) certifies that Unified is the real party-in-interest, and further certifies
that no other party exercised control or could exercise control over Unifieds
participation in this proceeding, the filing of this petition, or the conduct of any
ensuing trial.
B. Related Matters
The 886 patent is the subject of the following pending district court
17-cv-00502 (E.D. Tex.); Wireless Monitoring Systems LLC v. MONI Security, LP,
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C. Counsel
David L. Cavanaugh (Reg. No. 36,476) will act as lead counsel; Roshan
Mansinghani (Reg. No. 62,429) will act as primary back-up counsel; and Jonathan
Stroud (Reg. No. 72,518), Daniel V. Williams (Reg. No. 45,221), and Evelyn C.
Pickering Hale and Dorr, LLP, 1875 Pennsylvania Ave., NW, Washington, DC
20006, Tel: (202) 663-6000, Fax: (202) 663-6363, and Unified Patents Inc., 1875
Connecticut Ave. NW, Floor 10, Washington, DC 20009, Tel: (650) 999-0889.
Petitioner certifies pursuant to Rule 42.104(a) that the patent for which
review is sought is available for inter partes review and that Petitioner is not
barred or estopped from requesting an inter partes review challenging the patent
claims 1-2, 4-6, 9-10, 29, 35, 37-42, 51-54 of the 886 patent.
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explained below:1
1. U.S. Pat. 6,215,405 (filed on May 11, 1998; published on Apr. 10,
2001) (Handley (EX1003)), which is prior art under 35 U.S.C.
102(e)
2. U.S. Pat. 5,499,196 (filed on Oct. 19, 1993; published on Mar. 12,
1996) (Pacheco (EX1004)), which is prior art under 35 U.S.C.
102(b)
3. U.S. Pat. 6,057,549 (filed on May 30, 1997; published on May 2,
2000) (Castleman (EX1005)), which is prior art under 35 U.S.C.
102(a)
4. U.S. Pat. 6,360,277 (filed on Jul. 22, 1998; published on Mar. 19,
2002) (Ruckley (EX1006)), which is prior art under 35 U.S.C.
102(e)
B. Grounds for Challenge
challenged claims 1-2, 4-6, 9-10, 29, 35, 37-42, 51-54 as unpatentable under 35
1
The 886 patent issued from a patent application filed prior to enactment of the
applies.
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By December 2000, it was well known to provide devices for monitoring the
status of circuits in alarm systems, security management systems, fire systems, and
(EX1002)).
that could monitor for different conditions within a specified area. For example, it
was known to use sensors such as motion detectors, fire detectors, water detectors,
device (e.g., alarm panel, alarm interface, keyboard controller) that could receive
data from these sensors and use this data to detect for a normal condition or for one
or more alarm conditions in the specified area associated with a sensor. (Handley
Figs. 1-3 (EX1004); Franzon 18 (EX1002)). It was further known that this
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that received the data from the sensors, compared the data from each sensor to one
5:48, Figs. 1-3 (EX1003); Pacheco at 5:19-29, 6:45-7:18, Figs. 2-3 (EX1004);
device could then transmit the assigned status information from the sensors to a
remote monitoring system over a network that uses a telephone dialer, cellular
Franzon 19 (EX1002)). To transmit the assigned status, it was known that this
software that could support different industry standard network topologies and
Seriplex, smart distributed system (SDS), DeviceNet, and controller area network
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systems from different areas (e.g., different houses, buildings, parts of a structure)
could transmit the assigned status information for their corresponding sensors to
(EX1002)). It was also known that the remote monitoring system was a computer
system having a monitor that would display specific alarm information about the
remote monitoring system could use this specific alarm information to take the
building that requires immediate attention (e.g., a fire has been detected), the
(EX1002)).
The background section of the 886 patent describes prior art security
these known SMS systems, known attempts to address these problems, and
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Retrofits and new installations may use various PLCs and operator interfaces, and
SMS control unit (element 5 shown in red), multiple circuit monitoring devices
(elements 10, 20, 30 shown in blue), and multiple field devices (elements A, B, C
field devices such as motion detectors, read switches on doors and windows,
smoke detectors, etc. (Id. at 5:1-5 (EX1001)). The SMS control unit includes a
having a microprocessor (element 6) that reads the status of the various electrical
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circuits from the associated circuit monitoring devices. (Id. at 5:9-15, 7:45-54, Fig.
Figure 3 shows the block diagram for the circuit monitoring devices in
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(EX1002)).
The OPAMP receives as input an analog signal from the field device. (Id. at
5:66-6:1 (EX1001)). The A/D converter converts the analog signal from the
status of the field device. (Id. at 6:5-8 (EX1001)). The communication module
communicates the result of the comparison to the SMS control unit. (Id. at 6:8-16
determine the status of the field device. (886 patent at 6:34-41, Fig. 4 (EX1001)).
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The microprocessor compares the measured count value to each of four thresholds:
(1) 8,000; (2) 15,000; (3) 16,000; and (4) 30,000. (Id. at 7:17-19, 7:25-26, Fig. 4
(EX1001)). The four thresholds result in five different threshold ranges, each of
(4) count value between 16,000 and 30,000Alarm 2 condition assigned; and
(5) count value between 30,000 and 32,767Short Circuit condition assigned.
generates an output in the form of individual flags or digital bits that are
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transmitted to the SMS control unit. (Id. at 7:25-33, 7:38-40 (EX1001)). (Franzon
25 (EX1002)).
circuit monitoring device. In one type, the communication module is adapted for
communication across the back plane of the PLC to the microprocessor 6. (886
(EX1002)).
A person of ordinary skill in the art at the time of the filing of the earliest
priority application for the 886 patent, i.e., December 4, 2000, would have at least
C. Prosecution History
The application for the 886 patent was filed November 13, 2014. It claims
priority as a continuation of U.S. Pat. No. 8,816,869, filed on July 1, 2013, which
is a continuation of U.S. Pat. No. 8,912,893, filed on September 30, 2010 (893
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patent), which is a continuation of U.S. Pat. No. 7,834,744, filed on July 13, 2007,
(683 patent), which claims priority to Australian Appl. No. PR1878, filed on
cancelled originally-filed claims 1-20 and added new claims 21-57 (application
In the only Office Action dated March 11, 2015, the Examiner rejected
many of the claims (including claims 21 and 49) based on non-statutory double
patenting over various claims of the 893 and 683 patents. (File History, 3/11/15
claims and filing a terminal disclaimer over the 893 and 683 patents. (File
Disclaimer at 1 (EX1010)).
Then the Examiner allowed the claims. (File History, 10/7/15 Notice of
independent claims 21, 31, and 49 were based on the claimed comparison module
configured to. (Id. (EX1011)). The Examiner stated that the following
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the corresponding structures for these limitations: communications module 43, fig.
3, circuit monitoring module 10, 20, 30, fig. 2. (Id. (EX1011)). (See generally
Claim terms of an unexpired patent in inter partes review, as here, are given
42.100(b); In re Cuozzo Speed Techs., LLC 778 F.3d 1271, 127981 (Fed. Cir.
2015). Any claim term that lacks a definition in the specification is therefore given
a broad interpretation.2 In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007). Under the broadest reasonable interpretation standard, claim
terms are given their ordinary and customary meaning, as they would be
understood by one of ordinary skill in the art, in the context of the disclosure. In re
Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special
definition for a claim term must be set forth in the specification with reasonable
Cir. 1994).
2
Petitioner applies the broadest reasonable construction standard as required by
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The following proposes several constructions and offers support for those
constructions. Any claim terms not included should be given their broadest
those of ordinary skill in the art. Should the Patent Owner, to avoid the prior art,
contend that a claim term has a construction different from its broadest reasonable
interpretation, the appropriate course is for the Patent Owner to seek to amend the
A. Means-Plus-Function Terms
(EX1001)).
A claim term that does not recite the word means can still invoke 35
U.S.C. 112, 6 if the term fails to recite[] sufficiently definite structure or else
function. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir.
2015). Generic terms such as mechanism, element, device, and other nonce
words that reflect nothing more than verbal constructs may be used in a claim in a
manner that is tantamount to using the word means because they typically do not
connote sufficiently definite structure and therefore may invoke 112, para. 6.
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Id. at 1340. Module is a well-known nonce word that can operate as a substitute
must be identified, and then the corresponding structure that performs the claimed
Diagnostics Corp. v. Elektra AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003). A means-
the disclosed structure is not the general purpose computer, but rather the special
Gaming Inc. v. Intl Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999).
uses the nonce word module and merely recites function without reciting
(EX1001)). In addition, during prosecution of the 886 patent, the Examiner found
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module:
memory, wherein the threshold value defines at least one range of digital values,
and
(2) assign a status based on the digital value being within the particular
Structure: The specification does not recite the term comparison module.
the processor that include the comparison module. Accordingly, the structure
(2) if the digital value is below the at least one threshold value that falls
within a first range of digital values, assign a first condition to the circuit, and
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(3) if the digital value is above the at least one threshold value that falls
within a second range of digital values, assign a second condition to the circuit.
(886 patent at 6:5-8, 6:34-48, 7:17-19, 7:25-40, Figs. 3-4, claim 1 (EX1001); see
module: generate a status signal including at least the assigned status. (886
module in the context of claim 1.3 Claim 1 recites a processor having modules
(1) if a first condition is assigned to the circuit, set a first flag (or bit),
3
Claim 29 recites the term communications module. (886 patent at claim 29
(EX1001)). While claims 1 and 29 recite a similar term, each claim uses the term
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(2) if a second condition is assigned to the circuit, set a second flag (or bit),
and
(3) produce a status signal that includes at least the first flag (or bit) and the
(886 patent at 6:5-10, 7:25-40, Figs. 3-4, claim 1 (EX1001); see also Section V.A
at least one threshold value and assign a discrete value concerning the circuit based
the corresponding structure for the circuit monitoring module as the circuit
monitoring module 10, 20, 30, fig. 2. (See Section V.C (Prosecution History)).
The specification does not recite the term circuit monitoring module, but uses
the term circuit monitoring device. Fig. 2 and the corresponding description
describe each of elements 10, 20, and 30 as a circuit monitoring device. (886
patent at 4:47-49, 5:5-8, 5:24-28, 5:37-61, Fig. 2 (EX1001)). Fig. 3 and the
corresponding description describe the circuit for the circuit monitoring device,
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output that is coupled to the input of the A/D converter. The A/D converter has an
(3) if the digital value is below the at least one threshold value that falls
within a first range of digital values, assign a first condition to the circuit, and
(4) if the digital value is above the at least one threshold value that falls
within a second range of digital values, assign a second condition to the circuit.
(Id. at 5:62-6:10, 6:34-48, 7:17-19, 7:25-40, Figs. 3-4, claim 29 (EX1001); see also
4
The circuit monitoring module does not include the communication module
(element 43) in the circuit monitoring device because claim 29 separately recites a
communications module.
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also includes equivalents of the disclosed structure. (See generally Franzon 48-
50 (EX1002)).
(EX1001)). Fig. 3 and the corresponding description describe two different types
of structures for the communication module 43. (Id. at 5:50-53, 5:62-6:10, 6:11-
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communication standard.
(Id.; see also Section V.A (Summary of the Alleged Invention)). The
the limitations of the challenged claims of the 886 patent, and how these claims
1. Overview of Handley
part of a security system and the device having such programmable temperature
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(EX1003)).
The sensors (element 12) are used for monitoring a zone or area of protection,
and can include motion detectors, door contacts, glass break detectors, shock
sensors, fire detectors, water detectors, etc. (Id. at 2:60-65 (EX1003)). The
sensors are connected to the alarm control panel, which controls the operation of
the overall system and reports to the remote monitoring station. (Id. at 2:58-59,
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The keypad controller is also connected to the alarm control panel for
allowing the user to interface with the alarm system, to program the system and
control the operation of the system and for displaying the status of the system and
(EX1002)).
the keypad controller is to be located and includes at least one alarm set point
sensor is also provided with an interface or signal conditioning means to allow the
signal against one or more set points and take the appropriate action. (Id. at 3:59-
temperature sensor having the following three set points or thresholds to which the
alarm system will respond: (1) the ALARM 1 threshold, which may signal a local
trouble condition; (2) the ALARM 2 threshold, which may signal an alarm and
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initiate an alarm transmission to a remote monitoring station; and (3) the ALARM
Fig. 2 (EX1003)). There are also various RESTORE thresholds that are used to
Figure 3 shows how the processing means monitors the temperature using
the multiple thresholds and uses flags to track the current state of each alarm level.
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2. Overview of Pacheco
system for reporting the occurrence of events within a monitored structure which is
system with a video monitor, mouse, and keyboard (elements 12, 14, 16, 18
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4:65-67, Fig. 1 (EX1004)). The sensors can include switches, motion detectors,
information from the sensor, determines its state, and stores its state in a respective
7:30, Figs. 2-3 (EX1004)). The alarm interface also includes an RS 485 type
(EX1002)).
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Figure 8C shows a sensor function GUI that provides user access to the
sensor function and can be displayed on the computer systems video monitor.
(element 266) the identifies, for each sensor, the sensor (SEN) number (e.g., 0001,
002), location (e.g., front door, back door), sensor type (e.g., keypad, switch,
motion, temperature), status (e.g., high, low), delay enablement indication means
(DLY) (e.g., yes, no), enablement indicator means (EN) (e.g., yes, no), sensor
sensitivity means (SEN) (e.g., 1), connection indicator means (CON) (e.g., 1, 2),
and message type indication means (NOTIFY) (e.g., pager (P), voice (V), facsimile
(F), data (D)). (Id. at 5:36-50 (shows an exemplary sensor configuration), 13:57-
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device that monitors sensors to detect for alarm conditions and reports detected
Handley discloses the use of multiple sensors and different types of sensors,
detectors, shock sensors, fire detectors, and water detectors. (Handley at 2:62-65,
3:51-52 (EX1003)). Handley also describes the importance of using these sensors
appropriate action can be taken. For example, Handley describes how temperature
sensors are used in applications such as cold rooms (e.g., refrigerators), storage
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that upon detecting certain alarm conditions (e.g., where the sensed temperature
remote monitoring station, indicating that a service call is required. (Id. at 4:47-
Pacheco similarly discloses the use of multiple sensors and different types of
(Id. at 1:33-43 (EX1004)). Pacheco recognized that these prior art systems were
limited in the amount of specific alarm notification information that was conveyed
to the remote monitoring stations which, in turn, constrained the ability of those
the nature of alarm conditions detected by each sensor included as part of the
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It would have been obvious to a person of ordinary skill in the art, and such
because of the benefits of providing such a notification system and because such a
have combined the transmission of specific alarm notification information to, and
Pacheco, with an alarm system that transmits alarm notification information over a
Given the similarities in structure and operation between Handley and Pacheco,
one of ordinary skill, who was familiar with Handley and then read Pacheco,
alarm information to a remote monitoring station, which can trigger a service call
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calls arising from alarm information transmitted to the remote monitoring station.
location, sensor type, state of the sensor, which would then allow personnel at the
implement the computer-based notification system of Pacheco was well within the
abilities of one of ordinary skill in the art, would have been obvious to try, would
results, and would have been accomplished with a reasonable chance of success.
(Id. (EX1002)). Alarm information is transmitted in both cases, and the alarm
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4. Claim 1
To the extent the preamble is limiting, Handley and Pacheco each teaches
the preamble.
20, or alternatively element 20, can be the circuit monitoring device) for
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utilized for monitoring a zone or area of protection, are connected to the control
panel in a typical manner, and may be any of the commonly utilized sensors such
as motion detectors, door contacts, glass break detectors, shock sensors, fire
voltage or a temperature sensor IC that outputs voltage or current, and can output
remote unit 32 (which may be configured as a sensor) via a remote unit interface
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Handley teaches, with the knowledge of a person of ordinary skill in the art,
this limitation. Figure 1 of Handley shows that the keyboard controller 20 includes
sensor 32. (Handley at 3:51-4:40, Fig. 1 (EX1003)). Figure 1 also shows that the
instructions [or routines] for the processing means 28. (Id. at 3:48-51, 8:1-4, Fig.
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least would have found obvious, that the stored instructions (or routines) are pieces
of software (or source code) that tell the processing means what instructions to
perform, including how to receive and process the data from the sensor. (Franzon
would have found obvious, that these stored instructions are arranged as modules
Franzon 74 (EX1002)).
Handley teaches the corresponding function and structure for this means-
at least one threshold value stored in the memory, wherein the threshold value
defines at least one range of digital values. As shown and described with
Figure 1, Handley teaches that the processing means 28 can receive the output
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compares the digital signal to one or more set points or thresholds (e.g., ALARM
1-3 thresholds, RESTORE 1-3 thresholds) (at least one threshold value) stored in
30for storing various parameters for the operation of the system), 4:47-5:48
(describing the set points or thresholds), 7:64-8:1 (value of the set point stored in
the memory), Figs. 2-3 (EX1003)). Figure 2 of Handley shows that each set point
or threshold defines at least one range of digital values. (Id. at 4:47-5:19, Fig. 2
(EX1003)).
(See also id. at 5:34-48 (Once acquired, the temperature is compared against
or within this range Once the appropriate action has been taken or if any of the
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above conditions are not met, the same tests are performed for the ALARM 2 and
the digital value being within the particular range defined by the threshold value.
More particularly, Figures 2-3 of Handley show that the processing means 28
assigns a condition based on whether the digital signal is within the particular
range defined by the set points or thresholds. (Id. at 4:47-5:48, Figs. 2-3
(EX1003)). For example, being below the ALARM 1 threshold may indicate a
normal condition; exceeding the ALARM 1 threshold may signal a local trouble
condition; exceeding the ALARM 2 threshold may signal an alarm and initiate
3 threshold may activate a back-up cooling system. (Id. (EX1003)). And once
the ALARM thresholds have been exceeded, various RESTORE thresholds are
(Franzon 77 (EX1002)).
As described above, in one example, Figures 2-3 of Handley show that the
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(1) compare the digital signal to at least one set point or threshold (e.g.,
(2) if the digital signal is below the threshold that falls within a first range of
digital values (e.g., between the ALARM 1 and 2 thresholds), assign only a first
condition (e.g., ALARM 1 that may signal a local trouble condition) to the
circuit (e.g., temperature sensor 32) (id. at 4:57-5:3, 5:27-33, Figs. 2-3 (EX1003)),
and
(3) if the digital signal is above the threshold value that falls within a second
range of digital values (e.g., above the ALARM 2 threshold), assign a second
condition (e.g., ALARM 2 that may signal an alarm and initiate an alarm
As another example, Figures 2-3 of Handley show that the processing means
(1) compare the digital signal to at least one set point or threshold (e.g.,
(EX1003)),
(2) if the digital signal is below the threshold that falls within a first range of
digital values (e.g., between the lower bound and RESTORE 2 threshold), assign a
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first condition (e.g., deactivate or clear the ALARM 2 condition) to the circuit
(e.g., temperature sensor 32) (id. at 5:9-20, 5:27-33, Figs. 2-3 (EX1003)), and
(3) if the digital signal is above the threshold value that falls within a second
range of digital values (e.g., between the ALARM 2 threshold and upper bound),
assign a second condition (e.g., set the ALARM 2 condition) to the circuit (id.
Handley
flags to track the current state of each alarm level. (Handley at 5:27-33, Fig. 3
(EX1003)). Handley also teaches that when one or more thresholds is exceeded
report the alarm condition to the remote monitoring station 14. (Id. at 4:53-57,
4:59-61, 4:66-5:3, 6:34-38, Fig. 2 (EX1003)). A person of ordinary skill in the art
would have understood, or at least would have found obvious, that for the
processing means 28 to report the alarm condition to the remote monitoring station
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14, the processing means 28 produces a status signal indicating the alarm condition
(1) if a first condition (e.g., ALARM 1 that may signal a local trouble
condition) is assigned to the circuit (e.g., temperature sensor 32), set a first flag
(2) if a second condition (e.g., ALARM 2 that may signal an alarm and
circuit, set a second flag (e.g., ALARM 2 flag) (id. (EX1003)). (Franzon 82
(EX1002)).
understood, or at least would have found obvious, that Handley also teaches that
the processing means 28 produces a status signal indicating the alarm condition for
Pacheco
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including at least the assigned status. Figures 1-2 of Pacheco teach that the alarm
value) from the sensor 28, determines the state of the sensor 28 by compar[ing]
the value to the preselected threshold value and determin[ing] whether the received
value is above or below the preselected threshold value, and assigns a state
(status) based on whether the information is within the particular range defined
(or high) and is stored in a single bit block for a corresponding sensor in the first
(or level) register 46. (Id. at 6:47-51, 6:59-61, 7:1-2, Figs. 1, 3, 8C (EX1004)).
(Franzon 84 (EX1002)).
video monitor 14. (Id. at 4:31-41, Fig. 1 (EX1004)). Figure 8C of Pacheco further
shows a sensor function GUI that can be displayed on the video monitor 14 and
provide user access to the sensor function. (Id. at 13:51-53, Fig. 8C (EX1004)).
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The GUI includes an information block (element 266) that identifies, for each
sensor, the sensor (SEN) number (e.g., 0001, 002), location (e.g., front door, back
door), sensor type (e.g., keypad, switch, motion, temperature), and status (e.g.,
(EX1004)). Because the GUI displays the status of each sensor, a person of
ordinary skill in the art would have understood, or at least would have found
obvious, that the microprocessor 44 generates a status signal including at least the
assigned status for transfer to the computer system 12 for display on the video
state for each sensor in the level register 46 and when the sensor state changes
sets a corresponding flag bit of the status register (Pacheco at 7:1-18 (EX1004)),
one of ordinary skill of the art would have understood, or at least would have
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found obvious, that it is at least this status that was transferred to the computer
steps:
value) is assigned to the circuit (e.g., sensor 28), sets a corresponding single bit
value) is assigned to the circuit, sets the corresponding single bit block to a second
(3) produces a status signal that includes the state of the corresponding
To the extent Handley does not expressly disclose generating the status
third step ((3) produce a status signal that includes at least the first flag (or bit)
second flag (or bit)) of the corresponding structure, the combination of Handley
ordinary skill in the art would have been motivated to combine the disclosure of
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producing a status signal, as in Pacheco, using the multiple ALARM flags each
can identify the particular alarm condition and take appropriate action as
necessary. Pacheco discloses using multiple bitsone bit for each sensor, which
trying, and found it obvious to try, using sensors, including temperature sensors, to
detect for multiple alarm conditions and to have those multiple conditions
(Reason to Combine)).
Figure 1 of Handley shows that the keypad controller 20 interfaces with the
alarm control panel 10 via a system input/output (I/O) interface 22, and that the
alarm control panel 10 can transmit an alarm condition to the remote monitoring
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ordinary skill in the art would have understood, or at least would have found
obvious, that for the keypad controller 20 and alarm control panel 10 to report the
methods, they include a transmitter to transmit a status signal indicating the alarm
a person would also have understood, or at least would have found obvious, that
for the remote monitoring station 14 to take appropriate action based on an alarm
condition, the remote monitoring station 14 must have a display to output the alarm
alarm interface 26, which includes microprocessor 44, generates a status signal
including at least the assigned status for transfer to the computer system 12 for
between a serial port of the computer system 12 and the RS 485 interface 52 of the
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the art would have understood, or at least would have found obvious, that the RS
485 interface 52 must have a transmitter configured to transmit the status signal to
the computer system 12 for output, by the video monitor 14 coupled to the
A person of ordinary skill in the art would have been motivated to combine
the disclosure of transmitting the status signal for output by the remote computer
station can identify the particular alarm condition and take appropriate action as
5. Claim 2
The combination of Handley and Pacheco teaches claim 2. The 886 patent
discloses that a centralised SMS control unit communicates with multiple circuit
in section VII.A.4.e (claim 1[D]), the combination teaches the remote computing
system. The combination further teaches that this system can be a centralized
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combination teaches that the status signal enables the display of an indication of a
specified condition of the circuit which corresponds to the assigned status (e.g., as
ordinary skill in the art would have been motivated to combine Handley and
(EX1002)).
6. Claim 4
above in section VII.A.4.e (claim 1[D]), the combination teaches that the
transmitter is configured to transmit signals to, and receive signals from, the
remote computing system using a wired (two way cable) or wireless system over a
Pacheco at 6:33-36, Fig. 2 (EX1004))). A person of ordinary skill in the art would
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have been motivated to combine Handley and Pacheco for the reasons described
7. Claim 5
For the same reasons described in section VII.B.3.c (claim 29[B]), the
8. Claim 6
For the same reasons described in section VII.B.3.d (claim 29[C]), the
9. Claim 9
For the same reasons described in sections VII.A.4.a and VII.A.4.c (claims
10. Claim 10
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Handley and Pacheco each teaches claim 10. Handley discloses that the
sensors (field device) can include temperature sensors, motion detectors, door
contacts, glass break detectors, shock sensors, fire detectors, water detectors, etc.
(Handley at 2:62-65, 3:51-53 (EX1003)). Pacheco also discloses that the sensors
11. Claim 38
Handley teaches claim 38. Handley teaches that the non-volatile memory 3
(memory) can store a plurality of set points or thresholds (e.g., ALARM 1-3,
56, 4:47-5:48, 7:64-8:1, Figs. 1-3 (EX1003)). For example, Figures 2-3 of
Handley show that each threshold defines a respective plurality of ranges of digital
conditions of the circuit including a normal condition and at least one alarm
condition:
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signal a local trouble condition and has an ALARM 1 flag set (at least
monitoring station and has an ALARM 2 flag set (at least one alarm
condition)
Range #4: Between ALARM 3 threshold and upper bound (e.g., xFF)
may activate a back-up cooling system and has an ALARM 3 flag set
(Id. at 4:47-5:3, 5:27-33, Figs. 2-3 (EX1003)). (See also Sections VII.A.4.c-d
12. Claim 39
For the same reasons described in section VII.A.11 (claim 38), Handley
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13. Claim 40
For the same reasons described in section VII.A.11 (claim 38), Handley
14. Claim 41
Handley teaches claim 41. Handley teaches that the output voltage or
means that can include an A/D converter (circuitry that can alter[] the measured
electrical parameter of the circuit), and whose output is coupled to the input of the
101 (EX1002)).
15. Claim 42
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41), Handley discloses that the field device is configured to provide the measured
the same reasons described in sections VII.A.4.b-c and VII.A.14 (claims 1[A]-
1[B], 41), Handley discloses the claimed function of the processor and comparison
(EX1002)).
16. Claim 51
For the same reasons described in section VII.A.14 (claim 41), Handley
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B. Ground II: Claims 29, 35, 37, 52-54 are rendered obvious by
Handley in view of Pacheco, Castleman, and Ruckley6
Handley, Pacheco, Castleman, and Ruckley are not of record in the 886
Handley and Pacheco is described in section VII.A.3. The reasons and motivation
to combine these references with Castleman and Ruckley are discussed below in
1. Overview of Castleman
or fire with increased sensitivity, faster processing and response times, intelligence
for discriminating against false alarms, and selective actuation of multi-stage alarm
(element 32 shown in blue) that includes multiple sensors (elements 40, 42, 44,
6
Castleman and Ruckley are used to teach the corresponding structure for the
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signals from the sensors and converts them into digital signals for processing by
microprocessor processes all the sensor digital data to determine the nature of the
prevailing condition and triggers an appropriate one of the multistage (e.g., two- or
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Figure 34 shows a circuit for processing a sensor input signal from sensor
502 that includes three operational amplifiers (elements 505, 506, 507 in red) and
The sensor signals output from the circuit of Figure 34 are fed as inputs to
the A/D converters (elements 305, 306, 307 in brown) in the circuit in Figure 28.
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2. Overview of Ruckley
solid state relays that are network controlled and therefore have network
one load in response to one control line, and can be used, for example, for
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(EX1002)).
3. Claim 29
To the extent the preamble is limiting, Handley and Pacheco each teaches
the preamble.
20, or alternatively element 20, can be the apparatus) for monitoring multiple
that the keypad controller 20 interfaces with the alarm control panel 10 via a
system input/output (I/O) interface 22, and that the alarm control panel 10 is
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Handley
circuit, compar[ing] the parameter to at least one threshold value and assign[ing] a
discrete value concerning the circuit based on the comparison. More particularly,
provide a parameter of the circuit. For example, the sensors 12 are utilized for
typical manner, and may be any of the commonly utilized sensors such as
motion detectors, door contacts, glass break detectors, shock sensors, fire detectors,
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voltage or a temperature sensor IC that outputs voltage or current, and can output
(EX1003)).
Handley teaches that the processing means 28 can receive the output voltage
or current from the temperature sensor 32 as a digital signal. (Id. at 3:56-63, 4:4-
25, Fig. 1 (EX1003)). The processing means 28 then compares the digital signal to
one or more set points or thresholds (e.g., ALARM 1-3 thresholds, RESTORE 1-3
thresholds) (at least one threshold value). (Id. at 4:47-5:48, Figs. 2-3
(EX1003)).
The processing means 28 then assigns a discrete value concerning the circuit based
on the comparison. For example, the processing means 28 uses flags that are either
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set or not set to track the current state of each of the alarm levels. (Id. at 5:27-33,
Fig. 3 (EX1003)). If the digital signal exceeds the ALARM 1 threshold, this may
signal a local trouble condition and the processing means 28 sets an ALARM 1
flag; if the digital signal exceeds the ALARM 2 threshold, this may signal an
alarm and initiate an alarm transmission to a remote monitoring station and the
processing means 28 sets an ALARM 2 flag; and if the digital signal exceeds the
ALARM 3 threshold, this may activate a back-up cooling system and the
processing means 28 sets an ALARM 3 flag. (Id. at 4:57-5:3, 5:27-33, Figs. 2-3
(EX1003)). And once the ALARM thresholds have been exceeded, various
current from the temperature sensor 32 can be sent to a signal conditioning means
that can include an A/D converter whose output is coupled to the input of the
conditioning means may include an A/D converter to convert the output voltage or
current into a digital word which can be used by the processing means to compare
Handley also teaches that the processing means 28 (Handley at 3:42-44, Fig.
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(1) receive a digital value from the A/D converter (id. at 4:13-25 (EX1003)),
steps (a comparing step and two assigning steps) when the temperature is rising
(EX1002)).
Castleman
(element 32 in Figure 12) having an OPAMP (e.g., any of elements 505, 506, 507
in Figure 34), an A/D converter (e.g., element 50 in Figure 12; any of elements
305, 306, 307 in Figure 28), and a microprocessor (e.g., element 36 in Figure 12).
28, 34 (EX1005)). The OPAMP, which receives a parameter (e.g., analog sensor
signals) of the circuit (e.g., any of sensors 40, 42, 44, 52 in Figure 12; sensor 502
in Figure 34) has an output that is coupled to the input of the A/D converter. The
A/D converter has an output that is coupled to the input of the microprocessor. (Id.
part of the corresponding structure that requires the signal conditioning means
having an A/D converter and the processor programmed to perform the four steps.
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It would also have been obvious, in view of Handley alone, to provide for the
converter as part of the corresponding structure or its equivalent for the reasons
ordinary skill in the art to have combined the structure of the circuit monitoring
module (in particular adding the OPAMP between the sensor and the A/D
15:16-22, 20:45-66, 21:23-43, 31:37-42, Figs. 12, 28, 34 (EX1005); Franzon 119
(EX1002)). Handley discloses that its alarm system can be used with any
similarly discloses that its alarm system uses temperature sensing elements that
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28, 34 (EX1005)). Castleman discloses that the OPAMPS amply the sensor
signals and also act as a buffer between the sensor and the A/D converter. (Id.
adding an OPAMP between the sensor and the A/D converter, as in Castleman,
because it can improve the functionality of the system by isolating the sensor from
Such a person would have understood that adding the OPAMP was well within the
abilities of one of ordinary skill in the art, would have been obvious to try, would
results, and would have been accomplished with a reasonable chance of success.
(Id. (EX1002)).
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Handley
that when one or more thresholds is exceeded (e.g., ALARM 1 threshold and
ALARM 2 threshold), the processing means 28 may report the alarm condition to
the remote monitoring station 14. (Handley at 4:53-57, 4:57-62, 4:66-5:3, 6:33-38
(EX1003)).
Figure 1 of Handley shows that the keypad controller 20, having the
processing means 28, interfaces with the alarm control panel 10 via a system
input/output (I/O) interface 22, and that the alarm control panel 10 can transmit an
telephone dialer sending messages to the remote monitoring station 14 using local
two way cable systems (over a network) (Id. at 3:2-12, 4:53-57, 4:59-61, 4:66-
5:3, Fig. 1 (EX1003)). A person of ordinary skill in the art would have understood,
or at least would have found obvious, that the keypad controller 20 and alarm
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control panel 10, in order to report the alarm condition to the remote monitoring
station 14, must communicate a signal indicating the alarm condition and an
appropriate action can be taken (e.g., a service call to the right location). (See
panel 10 can transmit an alarm condition to the remote monitoring station 14 using
person of ordinary skill in the art would have understood, or at least found obvious,
that the keypad controller 20 and alarm control panel 10, in order to report the
communicate a signal indicating the alarm condition and the identification of the
circuit monitoring module so that appropriate action can be taken (e.g., a service
Pacheco
that the alarm interface 26 includes microprocessor 44, collects data for transfer
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assigns, and stores in the level register 46 a single-bit state (assigned value)
based on whether the information (e.g., sensor value) of the sensor 28 is within the
between a serial port of the computer system 12 and the RS 485 interface 52 of the
shows that the computer system 12 is coupled to a video monitor 14. (Id. at 4:31-
41, Fig. 1 (EX1004)). Figure 8C of Pacheco further shows a sensor function GUI
that can be displayed on the video monitor 14 and provide user access to the sensor
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The GUI includes an information block (element 266) that identifies, for each
sensor, the sensor (SEN) number (e.g., 0001, 002), location (e.g., front door, back
door), sensor type (e.g., keypad, switch, motion, temperature), and status (e.g.,
(EX1004)). Because the GUI displays the sensor number, location, and status of
each sensor associated with the alarm interface 26, a person of ordinary skill in the
art would have understood, or at least would have found obvious, that the
and an identification of the circuit monitoring module for transfer to the computer
system 12 for display on the video monitor 14. (Franzon 126 (EX1002)). Since
the microprocessor 44 stores the state for each sensor in the level register 46 and
when the sensor state changes sets a corresponding flag bit of the status register
(Pacheco at 7:1-18 (EX1004)), one of ordinary skill of the art would have
understood, or at least would have found obvious, that it is at least this status that
was transferred to the computer system for display on the video monitor 14.
interface 26 can transmit the status signal to the computer system 12 via the RS
(EX1002)).
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Ruckley
corresponding function. A person of ordinary skill in the art would have been
assigned value and an identification of the circuit monitoring module for output by
the remote computer system, as in Pacheco, with the networked alarm system, as
the remote monitoring station can identify the particular alarm condition and take
(Reasons to Combine)).
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ordinary skill in the art to have combined the structure of the communications
Handley and Pacheco. (Franzon 130 (EX1002)). Like Handley and Pacheco,
(EX1006); Franzon 130 (EX1002)). Handley discloses that its system can report
(over the network). (Handley at 3:2-12, Fig. 1 (EX1003)). Pacheco discloses that
its system can report alarm information to a remote computer system via an RS
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has fast response and high reliability, and comes in chip packages with high
temperate rations and high noise immunity. (Id. at 5:7-22 (EX1006)). Ruckley
hardware, software, and in some cases, specialized integrated circuits. (Id. at 3:1-
DevcieNetTM with the same RS-485 interface that is described in Pacheco. (Id.
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(EX1002)). Such a person would have understood that using the DeviceNetTM
module was well within the abilities of one of ordinary skill in the art, would have
been obvious to try, would have involved a simple substitution of known elements
in a known way to obtain predictable results, and would have been accomplished
threshold), the processing means 28 may report the alarm condition (status
62, 4:66-5:3, 6:33-38 (EX1003)). Figure 1 of Handley shows that the keypad
controller 20, having the processing means 28, interfaces with the alarm control
panel 10 via a system input/output (I/O) interface 22, and that the alarm control
panel 10 can transmit an alarm condition to the remote monitoring station 14 using
(over the network). (Id. at 3:2-12, 4:53-57, 4:59-61, 4:66-5:3, 6:34-38, Fig. 1
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(EX1003)). A person of ordinary skill in the art would have understood, or at least
would have found obvious, that the remote monitoring station 14, in order for
appropriate action to be taken (e.g., a service call to the right location), must have a
computing system with a display to output the alarm condition and the
the alarm interface 26, which includes microprocessor 44, generates a status signal
including at least the assigned value and an identification of the circuit monitoring
interconnected between a serial port of the computer system 12 and the RS 485
A person of ordinary skill in the art would have been motivated to combine
value and the identification of the circuit monitoring module for output by the
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remote monitoring station can identify the particular alarm condition and take
(Reasons to Combine)).
4. Claim 35
For the same reasons described in section VII.A.9 (claim 9), Handley
5. Claim 37
the combination of Handley and Pacheco teaches claim 37. (Franzon 138
(EX1002)). Because the GUI in Pacheco displays the status of each sensor, a
person of ordinary skill in the art would have understood, or at least would have
least the assigned status for transfer to the computer system 12 for display on the
video monitor 14. (Franzon 138 (EX1002)). Since the microprocessor 44 stores
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the state for each sensor in the level register 46 and when the sensor state changes
sets a corresponding flag bit of the status register (Pacheco at 7:1-18 (EX1004)),
one of ordinary skill of the art would have understood, or at least would have
found obvious, that it is at least this status, which is in the form of digital bits, that
was transferred to the computer system for display on the video monitor 14.
(Franzon 138 (EX1002)). A person of ordinary skill in the art would have been
motivated to combine Handley and Pacheco for the reasons described above in
6. Claim 52
For the same reasons described in sections VII.B.3.b and VII.A.11 (claims
7. Claim 53
For the same reasons described in sections VII.A.12 and VII.B.6 (claims 39,
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8. Claim 54
For the same reasons described in sections VII.A.13 and VII.B.6 (claims 40,
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VIII. CONCLUSION
Based on the foregoing, the challenged claims of the 886 patent recite
Respectfully Submitted,
/Evelyn C. Mak/
David L. Cavanaugh
Registration No. 36,476
Roshan Mansinghani
Registration No. 62,429
Jonathan Stroud
Registration No. 72,518
Daniel V. Williams
Registration No. 45,221
Evelyn C. Mak
Registration No. 50,492
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Table of Exhibits for U.S. Patent 9,280,886 Petition for Inter Partes Review
Exhibit Description
1001 U.S. Patent 9,280,886 (886 patent)
1002 Declaration of Professor Paul Franzon (Franzon)
U.S. Pat. 6,215,405 (Handley) (filed on May 11, 1998;
1003
published on Apr. 10, 2001)
U.S. Pat. 5,499,196 (Pacheco) (filed on Oct. 19, 1993;
1004
published on Mar. 12, 1996)
U.S. Pat. 6,057,549 (Castleman) (filed on May 30, 1997;
1005
published on May 2, 2000)
U.S. Pat. 6,360,277 (Ruckley) (filed on Jul. 22, 1998;
1006
published on Mar. 19, 2002)
1007 File History, 11/21/14 Preliminary Amendment
1008 File History, 3/11/15 Office Action
1009 File History, 5/26/15 Response
1010 File History, 5/26/15 Terminal Disclaimer
1011 File History, 10/7/15 Notice of Allowability
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that the word count for the foregoing Petition for Inter Partes Review totals
13,945, which is less than the 14,000 words allowed under 37 CFR 42.24(a)(i).
Respectfully submitted,
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CERTIFICATE OF SERVICE
I hereby certify that on October 6, 2017, I caused a true and correct copy of
Petition for Inter Partes Review of U.S. Patent No. 9,280,886 Under 35
U.S.C. 312 and 37 C.F.R. 42.104
Exhibit List
Exhibits for Petition for Inter Partes Review of U.S. Patent No. 9,280,886
(EX1001-1011)
Power of Attorney
Fee Authorization
Word Count Certification Under 37 CFR 42.24(d)
on PAIR:
/Evelyn C. Mak/
Evelyn C. Mak
ii