Ubiquitous Connectivity, LP

Patent Trials and Appeals Board

Jan 26, 2021

IPR2019-01335 (P.T.A.B. Jan. 26, 2021)

Trials@uspto.gov Paper 38
571-272-7822 Date: January 26, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

RESIDEO TECHNOLOGIES, INC. and
CENTRAL SECURITY GROUP – NATIONWIDE, INC.,1
Petitioner,
v.
UBIQUITOUS CONNECTIVITY, LP,
Patent Owner.

IPR2019-01335
Patent 8,064,935 B2

Before JEAN R. HOMERE, JOHN F. HORVATH, and
MELISSA A. HAAPALA, Administrative Patent Judges.
HORVATH, Administrative Patent Judge.
JUDGMENT
Final Written Decision
Determining Some Challenged Claims Unpatentable
35 U.S.C. § 318(a)

1 Central Security Group – Nationwide, Inc., who filed a petition in
IPR2019-01609, has been joined as a petitioner to this proceeding.
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I. INTRODUCTION
A. Background and Summary
Resideo Technologies, Inc. (“Resideo”) filed a Petition requesting
inter partes review of claims 1–22 (“the challenged claims”) of U.S. Patent
No. 8,064,935 B2 (Ex. 1001, “the ’935 patent”). Paper 2 (“Pet.”), 3–4.
Ubiquitous Connectivity, LP (“Patent Owner”) filed a Preliminary
Response. Paper 6 (“Prelim. Resp.”). Upon consideration of the Petition
and Preliminary Response, we instituted inter partes review of all
challenged claims on all grounds raised in the Petition. Paper 7 (“Dec.
Inst.”). Subsequent to our Institution Decision, Central Security Group –
Nationwide, Inc. (“CSG”) was joined with Resideo as Petitioner in this
proceeding. Paper 10.
Patent Owner filed a Response to the Petition (Paper 23, “PO Resp.”),
Petitioner filed a Reply (Paper 27, “Pet. Reply”), and Patent Owner filed a
Sur-Reply (Paper 29, “PO Sur-Reply”). An oral hearing was held on
October 27, 2020, and the hearing transcript is included in the record. Paper
37 (“Tr.”).
We have jurisdiction under 35 U.S.C. §§ 6, 318. This is a Final
Written Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the
reasons set forth below, we find Petitioner has shown by a preponderance of
evidence that claims 1–11 and 13–22 are unpatentable, but has failed to
show by a preponderance of evidence that claim 12 is unpatentable.
B. Real Parties-in-Interest
Resideo identifies itself, the City of San Antonio, Texas, the City
Public Service Board of San Antonio, Texas d/b/a CPS Energy, Ademco,
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Inc., and Honeywell International, Inc. as real parties-in-interest.2 Pet. 1.
CSG identifies itself and Guardian Security Systems, Inc., CSG Holdco,
Inc., Central Security Group Holdings, Inc., Central Security Group Holdco,
Inc., and Central Security Group, Inc. as real parties-in-interest. Paper 10, 2.
Patent Owner identifies itself as the real party-in-interest. Paper 3, 2.
C. Related Matters
The parties identify Ubiquitous Connectivity, LP v. City of San
Antonio d/b/a CPS Energy, 5:18-cv-00718 (W.D. Tex.), Ubiquitous
Connectivity, LP v. TXU Energy Retail Co. LLC, 3:18-cv-02084 (N.D. Tex.),
Ubiquitous Connectivity, LP v. Central Security Group – Nationwide, Inc.,
4:18-cv-00368 (N.D. Okla.), and Ubiquitous Connectivity, LP v. TXU
Energy Retail Co. LLC, 6:17-cv-00433 (E.D. Tex.) as district court
proceedings that can affect or be affected by this proceeding. Pet. 1; Paper
3, 2; Paper 10, 2–3. The parties also identify IPR2019-01336, challenging
related U.S. Patent No. 9,602,655 B2, as an inter partes review that can
affect or be affected by this proceeding. Pet. 1; Paper 3, 2; Paper 10, 2–3.
Patent Owner further identifies Application No. 16/503,883 as a pending
application that can affect or be affected by this proceeding. Paper 3, 3.
D. The ’935 Patent
The ’935 patent relates to “a remote monitoring and control system
for an environment.” Ex. 1001, 1:18–19. Such a system is shown in Figure
1 of the ’935 patent, which is reproduced below.

2 Honeywell International, Inc. disputes its identification as a real party-in-
interest. Pet. 1, n. 1.
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Figure 1 is a block diagram illustrating an environmental connectivity and
control system. Id. at 3:36–38. The system includes base control unit 16,
environmental devices 21, master remote control unit 12, associated remote
control units 26, and cellular telephone network 22. Id. at 3:51–60, Fig. 1.
Master remote control unit 12 interfaces with base control unit 16 to monitor
and control devices 21 via “a short message and/or the data bearer cellular
telephone network 22.” Id. at 3:51–57. Associated remote control units 26
also interface with base control unit 16 to monitor and control devices 21
when in proximity of base control unit 16. Id. at 3:57–60.
Controlled devices 21 may include HVAC (heating, ventilation, and
air conditioning) units, refrigerators, water heaters, security systems,
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cameras, lights and other devices. Id. at 11:46–53, 12:1–6. Environmental
conditions monitored by the system may include utility and power status,
humidity, door and window condition, temperature, smoke or toxic gas
presence, structural and security integrity, and others. Id. at 11:32–39, 12:6–
12. Base control unit 16 “consists [of] a wireless module 70 communicating
with a microcontroller 106 for operating a number of separate subsystems”
and “communicates status information to the remote control unit either on a
periodic or event-driven basis.” Id. at 4:46–48, 9:1–3. For example, base
control unit 16 communicates various alarms to remote control unit 12, such
as burglar and fire alarms, or temperature threshold alarms for an HVAC or
freezer. Id. at 9:6–12.
Remote control unit 12 can be a “conventional cellular telephone
handset[] . . . equipped with a programming kernel, such as Java or J2ME.”
Id. at 6:65–7:1. Remote control unit 12 “communicates with the base
control unit 16 to affect the operational aspects thereof and peripheral
equipment operatively attached thereto.” Id. at 6:50–52. Remote control
unit 12 executes application software to “communicate[] . . . command[s] to
the base control unit 16 through the cellular telephone network 22.” Id. at
6:58–60. “The data path between the remote control unit and the base
control unit is SMS (‘simple message service’).” Id. at 7:9–11. SMS
messages are “processed within the cellular telephone’s application
software” and “by the base control unit applications software.” Id. at 7:39–
41, 11:7–9.
E. Illustrative Claims
Claim 1 of the ’935 patent is illustrative of the claimed subject matter,
and is reproduced below.
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1. A wireless system comprising:
an environmental device;
a base unit operatively interfaced with the environmental
device and configured to control an operation of the
environmental device;
a remote unit having wireless connectivity and being
configured to send and receive short message service (SMS)
messages; and
a wireless module operatively interfaced with the base unit
and configured to provide wireless connectivity between the base
unit and the remote unit,
wherein the base unit is configured to send a first SMS
message, including current environmental information, to the
remote unit through the wireless module,
wherein the remote unit is configured to send a second
SMS message, including a command for the environmental
device, to the base unit through the wireless module, and
wherein the base unit is configured to receive the second
SMS message, including the command, and to send the
command to the environmental device to control the operation of
the environmental device.
Ex. 1001, 13:37–58.
Claims 11 and 18–22 are also independent claims that, although
directed to different systems and system components, are substantially
similar in scope to claim 1. For example, claims 1, 11, 19, and 20 are all
directed to a wireless system having a wireless base unit (e.g., a base unit
and wireless module) configured to exchange SMS messages with a remote
unit to monitor and control an environmental device. Compare id. at 13:37–
58, with id. at 14:19–38, id. at 15:9–27, and id. at 15:28–16:4. Claims 19
and 20 further require the base unit to include a transmitter, receiver, and
controller. Id. at 15:9–27, 15:28–16:4. Claims 18, 21, and 22 are directed to
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a component of the system of claims 1, 11, 19, and 20, namely, to a base unit
having a communication interface, wireless module, and microcontroller that
is configured to exchange SMS messages with a remote unit to monitor and
control an environmental device. Compare id. at 14:59–15:8, with id. at
16:5–22 and id. at 16:23–38. The remaining challenged claims depend
directly or indirectly from claim 1 or claim 11.
F. Evidence3
Reference Effective Date Exhibit
Oinonen US 6,275,710 B1 Aug. 14, 2001 1016
Bielski4 EP 1391861 A2 Feb. 25, 2004 1017
Chi-Hsiang Wu and Rong-Hong Jan, System
integration of WAP and SMS for home
network system, 42 Computer Networks
493–502 (2003) (“Wu”)
July 15, 20035 1018
Sears US 2002/0069263 A1 June 6, 2002 1019
Menard US 2002/0177428 A1 Nov. 28, 2002 1020
Antila US 6,583,770 B1 June 24, 2003 1021
Ehlers US 2004/0117330 A1 July 28, 20036 1022
Whitley WO 99/49680 Sept. 30, 1999 1023

3 Petitioner also relies upon the Declarations of Kevin Jeffay (Ex. 1003),
Rupert Lee (Ex. 1028), and Sylvia D. Hall-Ellis, Ph.D. (Ex. 1029). Patent
Owner relies upon the Declaration of Ivan Zatkovich (Ex. 2004).
4 Bielski is a certified translation of a European Patent Application originally
published in German. See Ex. 1017, 20–39.
5 Petitioner relies upon the Lee and Hall-Ellis Declarations to establish the
public availability of Wu on the effective date. See Pet. 12–13; Paper 11.
Patent Owner does not challenge the public availability of Wu. See PO
Resp. 45–62.
6 Petitioner relies on the filing date of Ehlers to establish its availability as
prior art under 35 U.S.C. § 102(e). See Pet. 14.
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G. Instituted Grounds
We instituted inter partes review on the following grounds:
Ground Claims 35 U.S.C. § References
1A 1–3, 7, 11–15,
17–19, 21 103(a) Oinonen, Whitley
1B 4–6, 16 103(a) Oinonen, Whitley, Sears
1C 8 103(a) Oinonen, Whitley, Antila
1D 9, 10 103(a) Oinonen, Whitley, Antila, Ehlers
1E 20, 22 103(a) Oinonen, Whitley, Menard
2A 1–4, 7–9, 11–
15, 17–19, 21 103(a) Bielski, Wu
2B 5, 6, 16 103(a) Bielski, Wu, Sears
2C 10 103(a) Bielski, Wu, Ehlers
2D 20, 22 103(a) Bielski, Wu, Menard
II. ANALYSIS
A. Level of Ordinary Skill in the Art
Petitioner’s declarant, Dr. Jeffay, identifies a person of skill in the art
(“POSITA”) as someone with “at least a bachelor’s degree in electrical
engineering or computer science and at least two years of industry
experience in the field of embedded systems and/or process control.”
Ex. 1003 ¶ 10. Patent Owner proposes a similar definition, namely, a person
having “at least a bachelor’s degree in electrical engineering or computer
science, and at least two years of industry experience in the fields of
computers and communications.” PO Resp. 4 (citing Ex. 2004 ¶ 29). Patent
Owner proposed the same definition pre-institution, and we adopted that
definition in our Institution Decision finding “little difference between
[Petitioner’s] and Patent Owner’s assessment of the level of skill in the art.”
Dec. Inst. 7–8. Neither party disputes that decision. See PO Resp. 4;
Pet. Reply. Therefore, we maintain our decision to adopt Patent Owner’s
definition of the level of skill in the art.
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B. Claim Construction
In inter partes reviews, we interpret a claim “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, a claim is construed “in accordance with the ordinary and
customary meaning of such claim as understood by one of ordinary skill in
the art and the prosecution history pertaining to the patent.” Id. Only claim
terms which are in controversy need to be construed and only to the extent
necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan
Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).
1. Environmental Device, Base Unit,
Cellular/Remote Unit, Communications Interface
Petitioner requests these terms be construed to have their plain and
ordinary meaning, and provides express constructions “[i]f necessary.”
Pet. 7–10. In our Institution Decision, we declined to expressly construe
these terms because Patent Owner did not argue that they required express
construction and did not dispute any of Petitioner’s conditionally proposed
constructions. See Dec. Inst. 8–9. Neither party disputes that decision,
which we maintain here. See PO Resp. 4–14; Pet. Reply.
2. Microcontroller
Patent Owner argues a “microcontroller” is “a special-purpose
computing device including at least a CPU [Central Processing Unit], main
memory, timing circuits, and I/O [Input/Output] circuitry designed for a
minimal quantity of chips and then programmed to handle a particular task.”
PO Resp. 11 (citing Ex. 2004 ¶ 48). Patent Owner argues this construction
is supported by the Microsoft Computer Dictionary, the Comprehensive
Dictionary of Electrical Engineering, and the ’935 patent. Id. at 7–11.
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The Microsoft Computer Dictionary defines the term
“microcontroller” to mean:
A special-purpose, single-chip computer designed and built to
handle a particular, narrowly defined task. In addition to the
central processing unit (CPU), a microcontroller usually
contains its own memory, input/output channels (ports), and
timers. When part of a larger piece of equipment, such as a car
or a home appliance, a microcontroller is an embedded system.
Ex. 2006, 337. The Comprehensive Dictionary of Electrical Engineering
defines the term to mean:
An integrated circuit chip that is designed primarily for control
systems and products. In addition to a CPU, a microcontroller
typically includes memory, timing circuits, and I/O circuitry.
The reason for this is to permit the realization of a controller
with a minimal quantity of chips, thus achieving maximal
possible miniaturization. This in turn, will reduce the volume
and the cost of the controller. The microcontroller is normally
not used for general purpose computation as is a
microprocessor.
Ex. 2007, 439.
Patent Owner argues the microcontroller disclosed in the ’935 patent
is consistent with these definitions. See PO Resp. 10–11 (citing 1001, 3:44–
45, 4:62–66, Fig. 4; Ex. 2004 ¶¶ 45–47); PO Sur-Reply 1–2. In particular,
Patent Owner argues a person skilled in the art would have understood
microcontroller 106 shown in Figure 4 of the ’935 patent is consistent with
these definitions because it (1) “includes I/O circuitry components to interact
with the subsystems given that no external I/O circuitry is illustrated
between the microcontroller and the subsystems,” (2) “works in conjunction
with an LCD, keypad, wireless module, and power supply, but . . . does not
include separate memory or timing circuits,” and (3) “is specifically
designed and then programmed for ‘remote control and remote monitoring
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of the various subsystems within the residential environment.’” PO Resp.
10–11 (quoting Ex. 1001, 4:62–66).
Petitioner argues a “microcontroller” is “a microcomputer,
microprocessor, or other equipment used for process control, for example,
processing a message and sending a command.” Pet. Reply 2–8. Petitioner
argues Patent Owner’s proposed construction is too narrow and “finds no
support in the specification or in the claims of the 935 Patent.” Id. at 3
(emphasis omitted). For example, Petitioner argues the claims “broadly
describe a ‘microcontroller’ that . . . is responsible only for ‘process[ing]’
and send[ing]’” messages and do not describe “any particular components
that a microcontroller must comprise.” Id. Petitioner further argues the ’935
patent describes a microcontroller as “a component responsible for basic
processing” such as “communicating with other components, ‘operating a
number of separate subsystems,’ and containing application software for
‘provid[ing] for autonomous control.’” Id. at 5 (quoting Ex. 1001, 4:46–52,
10:18–21).
Petitioner also argues that Patent Owner’s dictionary definitions have
been cherry-picked to support Patent Owner’s narrow construction and that
other contemporaneous dictionaries define “microcontroller” more broadly.
Id. For example, the Dictionary of Electrical and Computer Engineering
defines “microcontroller” to mean:
A microcomputer, microprocessor, or other equipment used for
precise process control in data handling, communication, and
manufacturing.
Ex. 1039, 14. Petitioner argues “[t]his definition makes clear that a
‘microcontroller’ is a device that ‘controls’ and can be a microprocessor . . .
programmed for a particular process.” Pet. Reply 6.
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In rebuttal, Patent Owner argues Petitioner’s expert, Dr. Jeffay,
“contrasted microcontrollers from microprocessors, saying that a
microprocessor only becomes a computer (and therefore a microcontroller)
when associated with memory and I/O circuitry,” and that a “microcontroller
is more of a system . . . whereas the microprocessor would be just a
component of the system.” PO Sur-Reply 3 (citing/quoting Ex. 2015, 55:9–
56:14, 68:3–18).
Upon consideration of all of the evidence and argument presented by
Petitioner and Patent Owner, we construe the term “microcontroller” to
mean “a microcomputer, microprocessor, or other equipment used for
process control.” The ’935 patent does not define “microcontroller” and
neither the ’935 patent nor its prosecution history contains statements that
limit or disclaim any part of its plain and ordinary meaning. See Teleflex,
Inc. v. Ficosa N. America Corp., 299 F.3d 1313, 1327 (Fed. Cir. 2002)
(“[C]laim terms take on their ordinary and accustomed meanings unless the
patentee demonstrated an intent to deviate from [that] meaning . . . by
redefining the term or by characterizing the invention in the intrinsic record
using words or expressions of manifest exclusion or restriction, representing
a clear disavowal of claim scope.”).
The dictionary definitions provided by the parties are consistent
insofar as they all require a “microcontroller” to include a central processing
unit (CPU) that has been programmed to perform a control function. For
example, the Dictionary of Electrical and Computer Engineering defines a
“microcontroller” as a “microcomputer, microprocessor or other equipment
used for precise process control,” where a “microcomputer” is a digital
computer whose CPU is “a microprocessor.” Ex. 1039, 14. Likewise, the
Microsoft Computer Dictionary defines a “microcontroller” as “[a] special-
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purpose, single-chip computer designed . . . to handle a particular . . . task.”
Ex. 2006, 337. Although the definition indicates “a microcontroller usually
contains its own memory, input/output channels (ports), and timers,” it does
not require the microcontroller to contain anything more than a CPU. Id.
(emphasis added). Similarly, the Comprehensive Dictionary of Electrical
Engineering defines a “microcontroller” as “an integrated circuit chip that is
designed primarily for control systems and products.” Ex. 2007, 439.
Although the definition indicates “a microcontroller typically includes
memory, timing circuits, and I/O circuitry,” it does not require the
microcontroller to contain anything more than a CPU. Id. (emphasis added).
For the reasons discussed above, we construe “microcontroller” to
mean “a microcomputer, microprocessor, or other equipment used for
process control.”
C. Obviousness over Oinonen and Whitley
Petitioner argues claims 1–3, 7, 11–15, 17–19, and 21 are
unpatentable as obvious over Oinonen and Whitley. Pet. 15–35. Patent
Owner disagrees. PO Resp. 14–31. For the reasons discussed below,
Petitioner demonstrates by a preponderance of evidence that claims 1–3, 7,
11, 13–15, 17–19, and 21 are unpatentable over Oinonen and Whitley, but
has failed to demonstrate by a preponderance of evidence that claim 12 is
unpatentable over Oinonen and Whitley.
1. Oinonen
Oinonen discloses telemetric “applications in which the state of a
peripheral device is monitored and the peripheral device is controlled via a
telecommunication network, preferably at least partly via a mobile
communication network.” Ex. 1016, 3:22–26. Examples of telemetric
applications include “a real estate alarm system for monitoring real estate for
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fire, leakage, [or] burglary” and a heating system “in which the heating of an
apartment can be set by telephone . . . so that the heating can be switched
from a lower output to a higher output, or vice versa, by calling a certain
telephone number.” Id. at 3:27–29, 3:66–4:3.
Oinonen’s invention is described as follows:
The invention is based on the idea that the telecommunication
terminal, preferably a mobile station coupled with a peripheral
device via a connecting interface, transmits short messages or
the like to another telecommunication terminal preferably via a
mobile communication network. In a corresponding manner,
control signals can be transmitted as short messages from the
second telecommunication terminal to the first
telecommunication terminal, where the device coupled
therewith is controlled on the basis of the short messages via
the connection interface.
Id. at 4:52–61.
Figure 4 of Oinonen, reproduced below, is an example of such a
system.

Figure 4 of Oinonen is a block diagram illustrating peripheral device 11 (i.e.,
switch S1) connected to door 12 to indicate whether door 12 is open or
closed. Id. at 9:26–28. Switch S1 is connected to mobile terminal TE1 via
ground (GND) and data terminal ready (DTR) lines of connection interface
7. Id. at 9:28–34. When door 12 is open, 5V appears between DTR and
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GND, and when door 12 is closed, 0V appears between DTR and GND. Id.
at 9:38–44.
Mobile terminal TE1 includes microprocessor 1 running application
software for “examining the logical states of the input lines of . . .
connection interface 7 and for setting the logical states of the different
output lines to the value (0/1) required at the time.” Id. at 7:12–26, 9:44–49,
Fig. 3.7 The application software transmits “the states of all input lines at
the moment of examination, advantageously as a short message to the
second telecommunication terminal TE2.” Id. at 10:38–42. The application
software includes a message interpreter that allows TE1 and TE2 to interpret
received messages. Id. at 8:33–37. Thus, TE1 can send standard texts to
TE2 such as “door is closed” or “door is open” instead of logical states 0 or
1, respectively. Id. at 10:48–54. When a mobile terminal is unable to
interpret such a message, it transmits an error message “as a short message
to the telecommunication terminal TE1, TE2 that sent the control message.”
Id. at 8:50–55.
In addition to monitoring the open/closed status of door 12, Oinonen
discloses applications that monitor the status of a real estate alarm system,
control the luminosity in a room, and control the locking/unlocking of a
door. Id. at 10:63–66, 11:12–14, 11:46–57, 12:13–15, Figs. 5–7.
2. Whitley
Whitley discloses “a system and method for gathering and sending
data over an existing wireless network remotely to control and monitor
various gateways and the devices coupled to those gateways.” Ex. 1023,

7 Mobile station TE2 has a similar structure. See Ex. 1016, 7:52–54.
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2:19–21. Such a system is shown in Figure 1 of Whitley, which is
reproduced below.

Figure 1 of Whitley is a block diagram of a system that “implements various
methods for receiving and sending data from and to a selected gateway.” Id.
at 7:13–15. The system includes facility 12, gateway 20 (e.g., an SMS
control device), and cellular handset 32. Id. at 7:26–8:10.
Gateway 20 provides a physical interface between devices internal to
facility 12 and external networks and can “monitor and control various
devices within the facility 12, such as lights, security sensors, an answering
machine, [or] a home computer.” Id. at 8:27–9:3. Gateway 20 is uniquely
addressable, and includes a processor and “a wireless transceiver for sending
and receiving communications via a digital wireless network.” Id. at 8:3–8.
The digital network allows gateway 20 “to send data [to] and receive
commands directly from [a] customer, which could own or manage the
facility.” Id. at 2:23–25. This allows the customer to “control lights within
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a facility according to a pre-programmed pattern that the user may change
by communicating new commands” and to have “remote control over the
devices (e.g., home appliances or electronics) with which the gateway may
communicate.” Id. at 3:8–12.
In one implementation, gateway 20 “formulates messages to other
terminals into a short message format” (i.e., SMS), and “transmit[s] the
message . . . to a network element” such as a customer’s mobile terminal.
Id. at 5:18–28. Because gateway 20 is uniquely addressable (e.g., via its
phone number), “the customer can formulate messages or commands that
will be routed directly from the customer’s mobile station . . . to the
gateway.” Id. at 6:10–14. Thus, Whitley “provide[s] a method for allowing
customers to remotely monitor and control devices located in the customer’s
facility.” Id. at 6:19–21. In particular, customers can “receive monitoring
information about activities at their facility via a mobile station” and
“control the gateway and devices coupled to the gateway from their mobile
station.” Id. at 6:22–26. For example, customers can “monitor[] facility 12
for energy usage data or alarms indicating a security breach,” and control
“various electronic devices, such as an electronic thermostat or lights.” Id.
at 12:21–25. Other types of devices that can be monitored and controlled
include a “refrigerator, water heater, and [a] washer/dryer.” Id. at 16:21–23.
Monitoring the energy usage of facility 12 allows a remote customer “to
adjust the thermostat, or turn off one of the devices (such as the
washer/dryer or water heater) coupled to the gateway 20 in order to save
energy.” Id. at 17:2–4.
3. Reasons to Combine the Teachings of Oinonen and Whitley
Petitioner argues Oinonen “does not expressly articulate how its
telecommunications device would be configured to monitor and/or control
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multiple devices,” whereas Whitley “specifically discloses a data collection
and control device (a ‘gateway’) that is connected to multiple devices.”
Pet. 15–16 (citing Ex. 1003 ¶¶ 184–187). Therefore, Petitioner argues, a
person of ordinary skill in the art would have combined the teachings of
Oinonen and Whitley because Whitley teaches (1) using SMS to “provide
remote monitoring and control of multiple distributed gateways,” (2) using a
gateway “to remotely monitor and control multiple devices,” and
(3) “monitoring . . . activities over time, which allows the user to control
devices and save energy.” Id. at 16 (citing Ex. 1003 ¶¶ 186–188). Petitioner
further argues a person skilled in the art would have combined the teachings
of Oinonen and Whitley “to ‘provide a method for allowing customers to
receive monitoring information about activities at their facility,’ and to
‘provide a method that allows customers to control the gateway and devices
coupled to the gateway from their mobile station.’” Id. at 17 (quoting Ex.
1023, 6:22–26).
Patent Owner argues “Petitioner[] fail[s] to establish that Oinonen and
Whitley can be properly combined for two reasons.” PO Resp. 14. First,
Patent Owner argues Petitioner’s reasoning for combining the two references
is not “relevant to the elements of the challenged claims,” i.e., because
“none of the challenged claims recites multiple devices—they only require
‘an environmental device.’” Id. at 16. Second, Patent Owner argues
“Petitioner did not sufficiently explain what Oinonen fails to disclose or why
a [person of ordinary skill in the art] would turn to Whitley.” Id. at 14. That
is, Patent Owner argues that because “Petitioner[] assert[s] that Oinonen
itself discloses all of the elements of [the] independent claims . . . it is
unclear why they contend a [person of ordinary skill in the art] would be
motivated to turn to Whitley for the claimed features.” Id.
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Upon considering Petitioner’s and Patent Owner’s evidence and
arguments, we find Petitioner has set forth sufficient and persuasive
reasoning with rational underpinning to combine the teachings of Oinonen
and Whitley. Oinonen teaches a system for monitoring and controlling a
single device, and Whitley teaches an improvement that would allow
Oinonen’s system to monitor and control multiple devices via a gateway.
Compare Ex. 1016, 4:41–61, with Ex. 1023, 6:19–21. This improvement
supports the combination because “if a technique has been used to improve
one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.” KSR Int’l
Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007) (“KSR”).
We are not dissuaded from this finding by Patent Owner’s argument
that the combination would not have been obvious because the claims recite
controlling a single environmental device. First, the claims are open ended
and do not prohibit controlling multiple environmental devices. See
Ex. 1001, 13:37–58. Second, KSR does not require the reason to combine to
directly relate to any claim element. Indeed, KSR expressly states the reason
to combine “analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim.” KSR, 550 U.S. at 418
(emphasis added). The reason for that is simple. Doing so would invite
hindsight reasoning, which KSR expressly rejects. See id. at 421 (“A
factfinder should be aware, of course, of the distortion caused by hindsight
bias and must be cautious of arguments reliant upon ex post reasoning.”).
Replacing Oinonen’s terminal with Whitley’s gateway to allow Oinonen to
monitor and control multiple devices would fall under many of the reasons
to combine expressly endorsed in KSR, including the reasoning identified
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above, i.e., using a technique “used to improve one device. . . [to] improve
similar devices in the same way.” Id. at 417.
We are also not dissuaded by Patent Owner’s argument that
Petitioner’s reasoning is defective because Petitioner asserts that Oinonen
itself discloses all of the elements of the independent claims. See PO Resp.
14–16. Patent Owner cites several Board decisions in support of this
argument, none of which are precedential and binding on this panel, and all
of which pre-date the Federal Circuit’s Polygroup and Realtime Data
decisions. In Polygroup, the Federal Circuit stated “when a petition sets
forth a ground with multiple references, but the petitioner’s primary
arguments rely on a single reference, the Board should consider those
arguments irrespective of a motivation to combine references.” Polygroup
Ltd MCO v. Willis Elec. Co., 759 F. App’x. 934, 943 n.3 (Fed. Cir. 2019).
Indeed, the “Board err[s] when it refuse[s] to consider these arguments.” Id.
at 943; see also Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1373 (Fed.
Cir. 2019) (finding the Board “did not err when it concluded that claim 1
was invalid under § 103” based on the teachings of a single reference in a
combination of references and “did not violate 35 U.S.C. § 312(a)(3) or
other notice requirements” in doing so because “it is well settled that ‘a
disclosure that anticipates under § 102 also renders the claims invalid under
§ 103 . . . .’”) (internal citations omitted).
4. Claim 1
Claim 1 recites a wireless system comprising an environmental
device. Ex. 1001, 13:37–38. Petitioner demonstrates how Oinonen teaches
such a wireless system. See Pet. 17 (citing/quoting Ex. 1016, 1:16–22,
11:62–12:4). For example, Oinonen teaches using a mobile phone to
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remotely control an electronic door lock.8 See Ex. 1016, 1:16–22, 11:62–
12:4. Petitioner also demonstrates how Whitley teaches such a wireless
system. See Pet. 17–18 (citing/quoting Ex. 1023, 12:21–23, 15:21–23, 17:2–
10). For example, Whitley teaches using a mobile phone to monitor/control
an electronic thermostat. See Ex. 1023, 12:21–23, 15:21–23, 17:2–10.
Patent Owner does not dispute these contentions. See PO Resp. 18–25.
Claim 1 requires the wireless system to include a base unit interfaced
with and configured to control the environmental device. Ex. 1001, 13:39–
41. Petitioner demonstrates how Oinonen’s TE1 is such a base unit. See
Pet. 18 (citing Ex. 1016, 6:60–64). For example, Oinonen’s TE1 is a
“telecommunications terminal to which the peripheral [environmental]
device to be controlled or monitored is connected by means of the V.24
connection interface.” Ex. 1016, 6:60–64. Petitioner further demonstrates
how Whitley’s gateway is such a base unit. See Pet. 18 (citing/quoting
Ex. 1023, 3:7–13, 8:27–9:1). For example, Whitley’s gateway “provides a
physical interface between internal devices associated with a particular
facility 12 and external networks” and “monitor[s] and control[s] various
devices within the facility 12, such as lights, security sensors, an answering
machine, a home computer, etc.” Ex. 1023, 8:27–9:3. Patent Owner does
not dispute Petitioner’s contentions. See PO Resp. 18–25.
Claim 1 further requires the wireless system to include a remote unit
having wireless connectivity and configured to send and receive SMS
messages. Ex. 1001, 13:42–44. Petitioner demonstrates how Oinonen’s
TE2 is such a remote unit. See Pet. 19 (citing Ex. 1016, 4:67–5:6, 6:64–7:4).

8 The ’935 patent identifies an electronic door monitoring system as an
environmental device. See Ex. 1001, 6:19–26, 11:47–53.
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For example, Oinonen’s TE2 is “a telecommunication terminal carried along
by the user, whereby the user can control the peripheral [environmental]
device” and “whereby a message-based data transmission connection can be
set up to the first telecommunication terminal [TE1].” Ex. 1016, 6:64–7:4.
Oinonen further teaches “the state of the peripheral device coupled with the
mobile station [TE1] is monitored,” and upon a change in state, “a short
message is arranged to be transmitted [to] and received by a second mobile
station [TE2].” Id. at 4:67–5:6. Moreover, “the control of the peripheral
device can be arranged,” whereby the user of TE2 “selects or writes a
message which corresponds to the desired control operation and [the
message] is transmitted to the mobile station [TE1] coupled with the
peripheral device.” Id. at 5:6–11.
Petitioner also demonstrates how Whitley’s mobile station is a remote
unit configured to wirelessly send and receive SMS messages. See Pet. 19
(citing Ex. 1023, 8:6–14, 12:21–13:2, 16:9–12). For example, Whitley
teaches “rout[ing] messages from various gateways 20 [base units] to
terminals,” one of which may be “a mobile station” (remote unit). Ex. 1023,
8:4–10. Gateway 20 can “transmit . . . a[n] SMS message” to the mobile
terminal, and the user of the mobile terminal can “input commands to be
forwarded to various devices at the facility 12” that are sent “as an SMS
message . . . to a particular gateway 20.” Id. at 12:21–13:2, 16:9–12. Patent
Owner does not dispute Petitioner’s contentions. See PO Resp. 18–25.
Claim 1 further requires the wireless system to include a wireless
module interfaced with the base unit and configured to provide wireless
connectivity between the base and remote units. Ex. 1001, 13:45–47.
Petitioner demonstrates how Oinonen’s TE1 (base unit) includes such a
wireless module. See Pet. 20 (citing Ex. 1016, 4:52–62, 7:12–21). For
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example, Oinonen’s TE1 includes radio element 6 and “transmits short
messages . . . to another telecommunication terminal [TE2] preferably via a
mobile communication network.” Ex. 1016, 4:52–62, 7:12–21, Fig. 3.
Petitioner also demonstrates how Whitley’s gateway (base unit) includes
such a wireless module. See Pet. 20 (citing Ex. 1023, 3:13–25). For
example, Whitley’s “gateway includes a transceiver capable of
communicating over a wireless network” with a mobile station (remote unit).
Ex. 1023, 3:13–25. Patent Owner does not dispute Petitioner’s contentions.
See PO Resp. 18–25.
Claim 1 further requires the base unit be configured to send a first
SMS message that includes current environmental information to the remote
unit through the wireless module. Ex. 1001, 13:48–50. Notwithstanding
Patent Owner’s arguments to the contrary, discussed infra, Petitioner
demonstrates how Oinonen’s TE1 (base unit) sends SMS messages to TE2
(remote unit) containing current environmental information (e.g., alarms).
See Pet. 20 (citing Ex. 1016, 4:67–5:6, 10:38–42). For example, Oinonen
teaches “the state of the peripheral device coupled with the mobile station
[TE1] is monitored,” and when a change in state occurs, “a short message is
. . . transmitted [to] and received by a second mobile station [TE2].”
Ex. 1016, 4:67–5:6. The change in state can be a change in the data lines on
the V.24 interface between TE1 and the environmental device. Id. at 10:38–
42, Figs. 3, 4.
Petitioner also demonstrates how Whitley’s gateway (base unit) sends
the mobile terminal SMS messages containing current environmental
information. See Pet. 21 (citing Ex. 1023, 8:1–5, 12:21–13:2). For example,
Whitley teaches gateway 20 (base unit) receives data “from various devices
within and associated with facility 12” and routes that data as messages “to
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terminals” such as “a mobile station.” Ex. 1023, 8:1–6. The messages can
include current environmental information such as “alarms indicating a
security breach” and can be transmitted as “SMS message[s] indicating a
breach in security.” Id. at 12:21–29.
Patent Owner argues that although “Oinonen and Whitley mention
SMS messaging, they would not have enabled a [person skilled in the art] to
implement the claimed SMS messaging in a base unit without undue
experimentation.” PO Resp. 18. Relying on the testimony of Mr.
Zatkovich, Patent Owner argues “Oinonen and Whitley fail to disclose . . . at
least two technical requirements for a solution enabling a computing device
sending/receiving SMS messages using an associated cellular phone.” Id. at
19 (citing Ex. 2004 ¶¶ 58–59). First, Patent Owner argues, the references
fail to disclose a base unit having “a hardware and software interface”
enabling the base unit to send/receive SMS messages. Id. at 19–20 (citing
Ex. 2004 ¶ 60). Second, Patent Owner argues, the references fail to disclose
a mobile phone having “a software interface (API) for the SMS functions”
that enables the mobile phone to send/receive SMS messages. Id. at 20
(citing Ex. 2004 ¶ 61).
Petitioner characterizes Patent Owner’s non-enablement argument as
disingenuous because “the 935 Patent does not describe either of these [two]
solutions” that are allegedly required for sending SMS messages. Pet. Reply
21. Moreover, Petitioner argues, a § 103 reference is prior art for all it
discloses and need not be enabling. Id. at 22 (quoting Amgen Inc. v. Hoechst
Marion Roussel, Inc., 314 F.3d 1313, 1357 (Fed. Cir. 2003)). Patent Owner
responds that the “enablement of the ’935 patent is not at issue in this
proceeding” and that because Petitioner has “applied Oinonen and Whitley
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as anticipating references, they absolutely need to enable the claimed
functionality.” PO Sur-Reply 6.
As discussed above, Petitioner has demonstrated how Oinonen and
Whitley, separately, and therefore in combination, teach a base unit that
sends/receives SMS messages to/from a remote unit. Patent Owner’s
argument that neither reference is enabled does not dissuade us from this
finding. To the contrary, both Oinonen and Whitley are enabling. Oinonen
discloses base/remote units TE1/TE2 are “conventional mobile stations
equipped with the option for transmitting short messages.” Ex. 1016, 4:63–
67, 6:60–67 (emphasis added). In particular, TE1/TE2 use “the short
message system of the GSM mobile communication system” to send/receive
SMS messages, where GSM (Global System for Mobile) is an industry
standard published by the “European Telecommunication Standards Institute
ETSI.” Id. at 2:60–61, 13:15–17. Similarly, Whitley discloses that gateway
20 (base unit) and mobile terminal (remote unit) use conventional GSM
networks to send/receive SMS messages. Ex. 1023, 3:15–25, 5:15–6:14,
7:28–8:10. Gateway 20 is “an integrated GSM enabled communications
device programmed to format and manage data packets sent and received
via the short messaging service provided by a GSM network.” Id. at 9:9–12
(emphases added). The mobile terminal includes a commercially available
front-end client application that “enables end users to input a text message
. . . and send the message . . . for distribution across the GSM network.” Id.
at 10:16–22. The ’935 patent similarly discloses (1) use of “the cell phone
network’s short message service (‘SMS’) in which text messages are sent to
and received from a controlled system,” (2) “the remote control units are
conventional cellular telephone handsets” and (3) the “base control unit 16
uses a cellular telephone module.” Ex. 1001, 3:1–4, 6:65–67, 11:6–7; see
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also id. at 3:51–67, Fig. 1 (showing base control unit (BCU) 16
communicating with remote control units (RCUs) 12/26 via cell towers 24 of
a conventional cellular network 22). See In re Epstein, 32 F.3d 1559, 1568
(Fed. Cir. 1994) ( “the Board’s observation that appellant did not provide the
type of detail in his specification that he now argues is necessary in prior art
references supports the Board’s finding that one skilled in the art would have
known how to implement the features of the references.”)
Claim 1 further requires the remote unit be configured to send to the
base unit a second SMS message that includes a command for the
environmental device. Ex. 1001, 13:51–54. Petitioner demonstrates how
Oinonen’s TE2 (remote unit) sends such a second SMS message to TE1
(base unit). See Pet. 21–22 (citing Ex. 1016, 4:52–61, 11:62–12:12). For
example, Oinonen teaches “control signals can be transmitted as short
messages from the second telecommunication terminal [TE2] to the first
telecommunication terminal [TE1], where the device coupled therewith is
controlled on the basis of the short messages.” Ex. 1016, 4:57–61. The
control signals can be commands to lock/unlock an electronic door lock
connected to TE1. Id. at 11:62–12:12. Petitioner also demonstrates how
Whitley’s mobile station (remote unit) sends such a second SMS message to
gateway 20 (base unit). See Pet 22 (citing Ex. 1023, 6:12–14, 10:14–17,
16:9–12, 17:2–7). For example, Whitley teaches a customer can send
“commands . . . from the customer’s mobile station . . . to the gateway,”
where the commands are packaged as “SMS message[s]” that can instruct
the gateway to “adjust the thermostat, or turn off one of the devices (such as
the washer/dryer or water heater) coupled to the gateway 20.” Ex. 1023,
6:12–14, 16:9–12, 17:2–7. Patent Owner does not dispute these contentions.
See PO Resp. 18–25.
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Finally, claim 1 requires the base unit to be configured to receive the
second SMS message and send the command to the environmental device to
control the operation of the environmental device. Ex. 1001, 13:55–58.
Notwithstanding Patent Owner’s non-enablement argument to the contrary,
discussed supra, Petitioner demonstrates how Oinonen’s TE1 (base unit) is
so configured. See Pet. 22–23 (citing Ex. 1016, 5:6–13, 11:64–12:12); PO
Resp. 18–25. For example, Oinonen teaches “the control of the peripheral
device can be arranged easily by means of short messages, wherein . . . a
message which corresponds to the desired control operation [] is transmitted
to the mobile station [TE1] coupled with the peripheral device.” Ex. 1016,
5:6–11. In response, TE1 changes the state of a control line on its interface
to the peripheral device and, “[a]s a result, the peripheral device conducts
the desired operation.” Id. at 5:11–16. For example, when TE2 (remote
unit) sends the SMS message “lock the door” to TE1, TE1 interprets the
message and sets a voltage on the DSR (data set ready) line of its V.24
interface to an electronic door lock to instruct it to lock the door. Id. at
11:64–12:4.
Petitioner also demonstrates how Whitley’s gateway (base unit) is so
configured. See Pet. 23 (citing Ex. 1023, 6:12–14, 6:19–21, 7:29, 8:27–9:1).
For example, Whitley teaches a customer can send “commands . . . from the
customer’s mobile station . . . to the gateway” in order to “remotely monitor
and control devices located in the customer’s facility that communicate with
[the] gateway.” Ex. 1023, 6:12–14, 6:19–21. The gateway “acts as a . . .
control device” that can “monitor and control various devices within the
facility 12, such as lights, security sensors, an answering machine, a home
computer, etc.” Id. at 7:29, 8:27–9:3.
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For the reasons discussed above, Petitioner demonstrates by a
preponderance of evidence why a person skilled in the art would have
combined the teachings of Oinonen and Whitley and how the combination
teaches every limitation of claim 1. Thus, Petitioner demonstrates by a
preponderance of evidence that claim 1 is unpatentable as obvious over
Oinonen and Whitley.
5. Claim 11
Independent claim 11 is substantially similar in scope to claim 1.
Compare Ex. 1001, 13:37–58, with id. at 14:19–38. Both claims are directed
to wireless systems having an environmental device, a wireless base unit,
and a remote unit. Id. Claim 11, however, recites additional limitations that
are not expressly recited in claim 1. For example, claim 11 expressly
requires (a) the environmental device to send environmental information and
to receive commands, (b) the base unit to receive environmental
information, and (c) the remote unit to receive the first SMS message
containing the environmental information and to notify a user of its receipt.
Id. at 14:19–38.
Petitioner relies on its analysis of claim 1 to demonstrate how
Oinonen and Whitley, separately and in combination, teach most of the
limitations of claim 11. See Pet. 26–29. Petitioner further demonstrates how
Oinonen and Whitley teach the additional limitations expressly recited in
claim 11. Id. For example, Oinonen’s electronic door lock (environmental
device) sends information to/receives commands from TE1 (base unit) by
setting/monitoring the state of the DTR/DSR lines on the V.24 interface
between the devices. See Ex. 1016, 4:26–36, 4:67–5:13, 9:38–44, 11:62–
12:4. Onionen’s TE2 (remote unit) receives an SMS message from TE1
“informing the user of the mobile station [TE2] preferably as a message
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displayed on the display of the mobile station.” Id. at 4:67–5:6. Similarly,
Whitley’s gateway 20 (base unit) receives data from environmental devices
within facility 12, and the environmental devices receive commands from
gateway 20. See Ex. 1023, 3:7–10, 8:1–4, 12:21–27. Whitley’s mobile
station (remote unit) “receive[s] monitoring information about activities at
their facility” in SMS formatted messages, and “send[s] a message [] to the
handset 32 in order to alert the owner of the facility 12.” Id. at 5:18–20,
6:22–25, 17:12–13. Patent Owner argues claim 11 is patentable for the same
reasons as claim 1. See PO Resp. 25–26. We are not persuaded by these
arguments for the reasons discussed in § II.C.4, supra.
For the reasons discussed above, Petitioner demonstrates by a
preponderance of evidence why a person skilled in the art would have
combined the teachings of Oinonen and Whitley and how the combination
teaches every limitation of claim 11. Thus, Petitioner demonstrates by a
preponderance of evidence that claim 11 is unpatentable as obvious over
Oinonen and Whitley.
6. Claims 2, 7, 13, 15, 17
Claims 2 and 13 depend from claims 1 and 11, respectively, and
require the environmental device to include electronic and electromechanical
switching portions interfaced with the environmental device. Ex. 1001,
13:59–62, 14:45–47. Petitioner demonstrates how Oinonen and Whitley
disclose these limitations. See Pet. 23–24, 31. For example, the ’935 patent
explains that “[i]n a conventional thermostat, a temperature sensor and
switch automatically control a heating or cooling appliance when the sensed
temperature is beyond a preset value.” Ex. 1001, 12:13–15. Oinonen
teaches it was well known to remotely control heating systems, and Whitley
teaches adjusting the temperature setting of a thermostat connected to
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gateway 20. See Ex. 1016, 3:66–4:3; Ex. 1023, 16:21, 17:2–7. Patent
Owner argues claims 2 and 13 are patentable for the same reasons as claims
1 and 11, respectively. See PO Resp. 25–26. We are not persuaded by
Patent Owner’s arguments for the reasons discussed in §§ II.C.4 and II.C.5,
supra.
Claim 7 depends from claim 1 and requires the wireless connection
between the base and remote units to include transmitting and receiving
modules in the base and remote units that communicate over a cellular
network. Ex. 1001, 14:5–9. Claim 15 depends from claim 11 and requires
the remote unit to be a cellular handset. Id. at 14:51–52. Claim 17 depends
from claim 11 and further requires a cellular network. Id. at 14:57–58.
Petitioner demonstrates how Oinonen teaches these limitations. See Pet. 25–
26, 31. For example, Oinonen teaches TE1 (base unit) and TE2 (remote
unit) are mobile terminals having radio element 6 (transmitting/receiving
modules) for transmitting and receiving SMS messages over GSM (cellular)
network. See Ex. 1016, 2:29–31, 4:58–60, 4:67–5:6, 7:12–21, 7:52–54.
Similarly, Whitley teaches gateway 20 (base unit) includes a transceiver
(transmitting/receiving module) to allow it to send/receive SMS messages
to/from a mobile station (remote unit) over a GSM (cellular) network. See
Ex. 1023, 2:26, 3:13–25, 8:6–14. Patent Owner argues claims 7, 15, and 17
are patentable for the same reasons as claims 1 and 11. See PO Resp. 25–26.
We are not persuaded by Patent Owner’s arguments for the reasons
discussed in §§ II.C.4 and II.C.5, supra.
For the reasons discussed above, Petitioner demonstrates by a
preponderance of evidence why a person skilled in the art would have
combined the teachings of Oinonen and Whitley and how the combination
teaches every limitation of claims 2, 7, 13, 15, and 17. Thus, Petitioner
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demonstrates by a preponderance of evidence that claims 2, 7, 15, and 17 are
unpatentable as obvious over Oinonen and Whitley.
7. Claims 3, 14, 18, 19, 21
Claim 3 depends from claim 1 and requires the base unit to be a
microcontroller-based processing unit having customizable application
specific software. Ex. 1001, 13:63–65. Claim 14 depends from claim 11
and requires the base unit to include the same microcontroller-based
processing unit. Id. at 14:48–50. Claim 18 is an independent claim for a
base unit that is substantially similar to the base unit required in system
claim 3. Compare id. at 14:59–15:8, with id. at 13:37–58, 13:63–65. Claim
19 is an independent claim for a system having a base unit that is
substantially similar to the base unit required in system claim 3 and that also
includes the transmitter and receiver required in system claim 7. Compare
id. at 15:9–27, with id. at 13:37–58, 13:63–65, 14:5–9. Claim 21 is an
independent claim for a base unit that is substantially similar to the base unit
required in system claim 3. Compare id. at 16:5–22, with id. at 13:37–58,
13:63–65.
Notwithstanding Patent Owner’s arguments to the contrary, discussed
infra, Petitioner demonstrates how Oinonen and Whitley teach the base unit
required by claims 3, 14, 18, 19 and 21.9 See Pet. 24–25 (citing Ex. 1016,
7:12–26, 8:33–37, 9:44–49). For example, Oinonen teaches TE1 (base unit)
includes a microprocessor having application software “necessary for
implementing the mobile station functions.” Ex. 1016, 7:12–26. The

9 Relying on its analysis of claims 1, and 7, Petitioner further demonstrates
how Oinonen and Whitley teach the remaining limitations required by
claims 18, 19, and 21 for the reasons discussed in §§ II.C.4 and II.C.6,
supra. See Pet. 31–35.
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application software includes programs “for examining the logical states of
the input lines” of the V.24 interface between TE1 and the environmental
device, “for setting the logical states of the different output lines to the value
(0/1) required at the time,” and for examining “received [SMS] messages
and, on the basis of this, control[ling] certain operations.” Id. at 8:33–37,
9:44–49. Similarly, Whitley teaches gateway 20 (base unit) is a GSM
enabled device having a processor that is “programmed to format and
manage data packets sent and received via the short messaging service
provided by a GSM network.” Ex. 1023, 9:3–13.
Patent Owner argues Oinonen’s microprocessor and Whitley’s 386
processor are not microcontrollers because “microcontrollers and
microprocessors are distinctly different devices” and a microprocessor “is
not a computer in and of itself programmed for a particular task.” PO Resp.
27, 29–30. Patent Owner’s arguments rely on its proposed construction of
“microcontroller.” Id. at 27, 30. For the reasons discussed in § II.B.2,
supra, we construe “microcontroller” to mean “a microcomputer,
microprocessor, or other equipment used for process control.”
Consequently, Oinonen’s microprocessor and Whitley’s 386 processor are
microcontrollers because they are programmed to (a) receive information
from an environmental device, (b) send SMS messages containing that
information to a remote device, (c) receive SMS messages containing a
command from the remote device, and (d) control the environmental device
as commanded.
For the reasons discussed above, Petitioner demonstrates by a
preponderance of evidence why a person skilled in the art would have
combined the teachings of Oinonen and Whitley and how the combination
teaches every limitation of claims 3, 14, 18, 19, and 21. Thus, Petitioner
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demonstrates by a preponderance of evidence that claims 3, 14, 18, 19, and
21 are unpatentable as obvious over Oinonen and Whitley.
8. Claim 12
Claim 11 is an independent claim to a wireless system that includes a
remote unit having wireless connectivity that exchanges SMS messages with
a wireless base unit. See Ex. 1001, 14:19–38. Claim 12 depends from claim
11 and requires the wireless connectivity to comprise “a first wireless
connection interfacing with the base unit, a second wireless connection
interfacing with the remote unit, and a non-wireless connection interfacing
between the first wireless connection and the second wireless connection.”
Id. at 14:39–44 (emphasis added).
Petitioner characterizes claim 12 as “describ[ing] network connections
to/from the base unit and the remote unit, and a non-wireless connection
between the base unit and the environmental device.” Pet. 29 (emphasis
added). Petitioner argues Oinonen teaches the limitations required by claim
12 by disclosing “wireless connections between various stations (e.g., the
base unit and the remote unit) and various wired connections thereafter.” Id.
at 30. Petitioner argues Figure 1 of Whitley teaches the limitations by
disclosing “a variety of wired and wireless connections.” Id. Petitioner
further argues that “Oinonen and Whitley also disclose interfaces between
the base unit and environmental device.” Id.
In our Institution Decision, we found Petitioner had failed to
sufficiently demonstrate that the combination of Oinonen and Whitley taught
the limitations required by claim 12 for two reasons. See Dec. Inst. 26.
First, Petitioner failed to identify the location of Oinonen’s “various wired
connections” and Whitley’s “variety of wired . . . connections” with
sufficient particularity and, in particular, failed to indicate they were located
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“between the first wireless connection and the second wireless connection.”
Id. Second, Petitioner failed to sufficiently explain how Oinonen and
Whitley’s disclosure of interfaces between a base unit and environmental
device is a “connection interfacing between the first wireless connection and
the second wireless connection.” Id.
Patent Owner agrees with that reasoning. See PO Resp. 26. Petitioner
did not challenge our preliminary finding that the plain language of claim 12
requires the non-wireless connection to be an interface between the
first/second wireless connections associated with the base/remote units,
which we maintain here. See Pet. Reply 27–32. Instead, Petitioner argues
that Oinonen and Whitley disclose such a non-wireless connection because
they “disclose cellular networks, such as GSM” and cellular networks
contain “wires in the central office.” Id. at 31. Patent Owner argues we
should reject this argument because it “present[s] an entirely new invalidity
theory regarding claim 12.” PO Sur-Reply 7.
We are persuaded by Patent Owner’s arguments. Although our rules
allow “the petitioner, in its reply brief, to address issues discussed in the
institution decision,” they prohibit Petitioner from “submit[ting] new
evidence or argument in reply that it could have presented earlier, e.g., to
make out a prima facie case of unpatentability.” Consolidated Trial Practice
Guide10 at 73; see also 84 Fed. Reg. 64,280 (Nov. 21, 2019). Petitioner
never argued in the Petition that Oinonen and Whitley disclose a non-
wireless connection between the first wireless connection and the second
wireless connection because they both use GSM cellular networks having
wires in their central offices. See Pet. 29–30. Petitioner’s Reply is not an

10 Available at http://www.uspto.gov/TrialPracticeGuideConsolidated
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opportunity to present that argument for the first time. See Consolidated
Trial Practice Guide at 73; see also Ariosa Diagnostics v. Verinata Health,
Inc., 805 F.3d 1359, 1368 (Fed. Cir. 2015) (“The Board must make
judgments about whether a Petition identified the specific evidence relied on
in a Reply and when a Reply contention crosses the line from the responsive
to the new.”). Therefore, we do not consider this argument.
Accordingly, on this record and for the reasons stated above,
Petitioner has failed to demonstrate that claim 12 is unpatentable over the
combination of Oinonen and Whitley.
D. Obviousness over Oinonen, Whitley, and Sears
Petitioner argues claims 4–6 and 16 are unpatentable as obvious over
Oinonen, Whitley, and Sears. Pet. 35–38. Patent Owner disputes this. See
PO Resp. 31–35. For the reasons discussed below, Petitioner demonstrates
by a preponderance of evidence that claims 4–6 and 16 are unpatentable as
obvious over Oinonen, Whitley, and Sears.
1. Sears
Sears discloses a system and method for disseminating Java code to
networked devices. Ex. 1019 ¶ 24. Sears teaches that “Java technology
enables developers to write rich dynamic personalized services and
applications . . . on mobile devices,” and that Java-enabled devices “offer
dynamic and secure delivery of multiple applications and services.” Id. ¶¶ 7,
32. Sears further teaches that J2ME (Java 2 Micro Edition) is a “modular,
scalable architecture to support the flexible deployment of technology to
devices with diverse features, functions, and . . . capabilities.” Id. ¶ 32.
2. Reasons to Combine the Teachings of Oinonen, Whitley, and Sears
Petitioner argues that Oinonen and Whitley disclose running
customized applications on mobile devices and a person skilled in the art
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would have known that the applications could have been written using
JAVA or J2ME as taught by Sears. Pet. 35–36 (citing Ex. 1003 ¶¶ 393–
394). Petitioner argues Sears teaches several advantages to writing mobile
device applications in JAVA or J2ME. Id. at 36. These advantages include
the ability to (1) “create, dynamic, personal, and functionality-rich
applications,” (2) provide “content-rich graphics and faster interaction,” and
(3) “process the SMS commands of Oinonen/Whitley for transmission even
when offline.” Id. (citing Ex. 1003 ¶¶ 394–397; Ex. 1019 ¶¶ 7, 8, 32).
In our Institution Decision, we found Petitioner articulated sufficient
reasoning to combine the teachings of Sears with the teachings of Oinonen
and Whitley. In particular, we found Petitioner’s proposed modification was
the simple substitution of one element (Oinonen/Whitley’s run-time
environment) for another known in the field (Sears’ JAVA or J2ME run-
time environment) to achieve a predictable result. Dec. Inst. 28 (citing Ex.
1016, 8:33–37; Ex. 1019 ¶¶ 7, 32; Ex. 1023, 10:20–23; KSR, 550 U.S. at
416). Patent Owner does not dispute that finding, which we maintain here.
See PO Resp. 31–35.
3. Claims 4–6 and 16
Claim 4 depends from claim 1 and requires the remote unit to be a
cellular telephone handset with custom programmability. Ex. 1001, 13:66–
67. Claims 5 and 6 depend from claim 4 and, respectively, require the
custom programmability to be a JAVA and a J2ME programming kernel.
Id. at 14:1–4. Claim 16 depends from claim 15 and requires the cellular
telephone handset (remote unit) to include at least one of a customizable
JAVA or J2ME programming kernel. Id. at 14:51–56.
Notwithstanding Patent Owner’s arguments to the contrary, discussed
infra, Petitioner demonstrates how the combination of Oinonen, Whitley,
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and Sears teaches the limitations of claims 4–6 and 16. See Pet. 37–38. For
example, Oinonen’s TE2 (remote unit) is a cellular handset running a
custom application (SMS message interpreter), and Sears teaches using
JAVA or J2ME virtual run-time environments to “provide[] an open
platform for mobile Internet device applications.” See Ex. 1003 ¶¶ 398–409;
Ex. 1016, 8:33–37; Ex. 1019 ¶¶ 6, 30, 33, 34. Similarly, Whitley’s mobile
station (remote unit) is a cellular handset running applications, and Sears
teaches the applications can be written to run in a JAVA or J2ME based run-
time environment. See Ex. 1003 ¶¶ 398–409; Ex. 1019 ¶¶ 6, 30, 33, 34; Ex.
1023, 3:19–25, 8:6–10.
Patent Owner argues that claims 4–6 and 16 are patentable for the
same reasons as claims 1 and 11. See PO Resp. 31–32, 35. We are not
persuaded by these arguments for the reasons discussed in §§ II.C.4 and
II.C.5, supra. Patent Owner also argues claims 4–6 are patentable because a
person skilled in the art would understand “custom programmability” means
adding an “app” and the combination of Oinonen, Whitley, and Sears does
not disclose “permitting a user to add an ‘app’ to his or her cell phone that
utilize[s] the phone’s built-in SMS capability to send application data to a
base unit and receive data from the base unit.” Id. at 32–33. This is so,
Patent Owner argues, because Oinonen teaches using “custom software”
rather than an app, Whitley does not teach using custom software at all, and
although Sears describes “what could be called an ‘app’ store,” nothing in
Sears “discloses or suggests SMS messaging, much less implementation
details for a custom application to implement SMS messaging.” Id. at 33–
34.
We are not persuaded by Patent Owner’s arguments for two reasons.
First, nothing in claims 4–6 or 16 requires downloading a custom “app”
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from an “app store” as Patent Owner contends. See Ex. 1001, 13:66–14:5,
14:53–56. Second, Patent Owner improperly attacks the individual
teachings of Oinonen, Whitley, and Sears, and fails to consider their
combined teachings. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir.
1986) (“Non-obviousness cannot be established by attacking references
individually where the [challenge] is based upon the teachings of a
combination of references.”); In re Keller, 642 F.2d 413, 425 (CCPA 1981)
(The test for obviousness “is what the combined teachings of the references
would have suggested to those of ordinary skill in the art.”). Oinonen
teaches using a custom application (message interpreter) to interpret SMS
messages and Sears teaches custom applications can be written to run in
JAVA and/or J2ME run-time environments. Ex. 1016, 8:33–37; Ex. 1019
¶¶ 6, 30, 33, 34. Moreover, as Patent Owner admits, Sears describes
providing custom applications on “what could be called an ‘app’ store.” PO
Resp. 34. Namely, Sears discloses “a server . . . used as a central point of
focus for users of mobile devices” that provides applications that are
“customized prior to dissemination of the applications to users and/or
devices in the network.” Ex. 1019 ¶ 12. Thus, even if claims 4–6 and 16
required downloading an “app” from an “app store,” doing so would have
been obvious to a person skilled in the art based on the combined teachings
of Oinonen, Whitley, and Sears.
For the reasons discussed above, Petitioner demonstrates by a
preponderance of evidence why a person skilled in the art would have
combined the teachings of Oinonen, Whitley, and Sears and how the
combination teaches every limitation of claims 4–6 and 16. Thus, Petitioner
demonstrates by a preponderance of evidence that claims 4–6 and 16 are
unpatentable as obvious over Oinonen, Whitley, and Sears.
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E. Obviousness over Oinonen, Whitley, and Antila
Petitioner argues claim 8 is unpatentable as obvious over Oinonen,
Whitley, and Antila. Pet. 38–39. Patent Owner disputes this. See PO Resp.
35. For the reasons discussed below, Petitioner demonstrates by a
preponderance of evidence that claim 8 is unpatentable as obvious over
Oinonen, Whitley, and Antila.
1. Antila
Antila is directed to “a double-sided display element . . . using a liquid
crystal display as an example.” Ex. 1021, 4:19–21. Antila teaches “[l]iquid
crystal displays (LCD[s] . . . ) are at present very common especially in
small size devices” and that a common construction for such displays “is the
so called twisted nematic . . . LCD-display.” Id. at 1:15–21. Antila further
teaches the Nokia 9000 Communicator has a reasonably small LCD-display
“of the so called super twisted nematic . . . type.” Id. at 5:1–5.
2. Reasons to Combine the Teachings of Oinonen, Whitley, and Antila
Petitioner argues Oinonen’s TE2 (remote unit) is a GSM enabled
mobile device and Whitley’s mobile terminal (remote unit) is a GSM-
enabled Nokia 9000 Communicator. Pet. 38. Therefore, Petitioner argues, a
person skilled in the art would have considered the teachings of “Antila,
which provide[] technical and design information for the Nokia 9000
communicator,” when seeking “additional details regarding the types of
mobile devices used to control environmental devices.” Id. (citing Ex. 1003
¶¶ 410–412).
In our Institution Decision, we found Petitioner articulates sufficient
reasoning to combine the teachings of Oinonen, Whitley, and Antila because
Oinonen teaches using a remote unit (TE2) to monitor and control a
peripheral (environmental) device, Whitley teaches the remote unit can be a
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Nokia 9000 Communicator, and Antila teaches the Nokia 9000
Communicator has an LCD display. DI 30–31 (citing Ex. 1016, 6:64–7:4,
13:15–20; Ex. 1021, 4:65–5:5; Ex. 1023, 6:22–29, 8:6–14). Thus,
Petitioner’s proposal is a “combination of familiar elements according to
known methods [and] is likely to be obvious when it does no more than
yield predicable results.” Id. at 31 (quoting KSR 550 U.S. at 416). Neither
party disputes this finding, which we maintain here. See PO Resp. 35; Pet.
Reply 9–27.
3. Claim 8
Claim 8 depends from claim 1 and requires the remote unit to include
a liquid crystal display module. Ex. 1001, 14:10–11. Petitioner
demonstrates how the combination of Oinonen, Whitley, and Antila teaches
this limitation. See Pet. 39. For example, Oinonen teaches using a remote
unit (TE2) to monitor and control a peripheral device, Whitley teaches the
remote unit can be a Nokia 9000 Communicator, and Antila teaches the
Nokia 9000 Communicator has an LCD display. See Ex. 1016, 6:64–7:4,
13:15–20; Ex. 1021, 4:65–5:5; Ex. 1023, 6:22–29, 8:6–14. Patent Owner
does not dispute this, but argues claim 8 is patentable for the same reasons as
claim 1. See PO Resp. 35. We are not persuaded by these arguments for the
reasons discussed in § II.C.4, supra.
For the reasons discussed above, Petitioner demonstrates by a
preponderance of evidence why a person skilled in the art would have
combined the teachings of Oinonen, Whitley, and Antila, and how the
combination teaches every limitation of claim 8. Thus, Petitioner
demonstrates by a preponderance of evidence that claim 8 is unpatentable as
obvious over Oinonen, Whitley, and Antila.
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F. Obviousness over Oinonen, Whitley, Antila, and Ehlers
Petitioner argues claims 9 and 10 are unpatentable as obvious over
Oinonen, Whitley, Antila, and Ehlers. Pet. 39–44. Patent Owner disputes
this. PO Resp. 35. For the reasons discussed below, Petitioner demonstrates
by a preponderance of evidence that claims 9 and 10 are unpatentable as
obvious over Oinonen, Whitley, Antila, and Ehlers.
1. Ehlers
Ehlers discloses “a system and method for managing the delivery and
usage of a commodity such as electricity, natural gas, steam, water, chilled
or heated water, or potable or recycled water.” Ex. 1022 ¶ 2. Ehlers’ system
allows a customer to access and control portions of the system through GUI
(graphical user interface) 1.14 on a device linked to the system via a wireless
data network. Id. ¶ 69. The various windows of GUI 1.14 are shown in
Figures 4A–4R of Ehlers and can be displayed on a mobile phone. Id.
¶¶ 30–47, 311. Figure 4C of Ehlers is reproduced below.

Figure 4C of Ehlers illustrates virtual thermostat 4.18 containing current
information 4.20 for a remotely monitored HVAC system (temperature,
heating and cooling set-points, and operating mode) and control buttons
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4.22. Id. ¶ 316. Using buttons 4.22, a customer can change the HVAC
system’s operating parameters such as the heating and cooling set-points.
Id. Ehlers system includes pre-defined alerts (e.g., temperature out of
range), and allows a customer to “select or designate . . . who gets notified
for each alert, and how they are notified.” Id. ¶ 327.
2. Reasons to Combine the Teachings of Oinonen, Whitley, Antila, Ehlers
Petitioner argues Oinonen and Whitley teach the ability to monitor
and control remote devices via SMS messages, and Whitley teaches
monitoring remote devices for energy usage. Pet. 39–40. Petitioner argues a
person skilled in the art would have incorporated the teachings of Ehlers into
the combination of Oinonen, Whitley, and Antila in order “[t]o enhance the
energy monitoring functionality of Whitley.” Id. at 40. Petitioner argues
Ehlers’ user interface would improve upon the Oinonen, Whitley, Antila
combination by allowing a user “to precisely control his/her own
preferences” and by providing “improved customer usability.” Id.
Patent Owner argues a person skilled in the art would not have
combined the teachings of Ehlers with the combined teachings of Oinonen,
Whitley, and Antila because “Oinonen and Whitley disclose mobile devices
with small screens” and “Ehlers disclose[s] a rich user interface realizable
only on a large display” and “not realizable on the mobile device displays
disclosed by Oinonen and Whitley.” PO Resp. 36.
We find Petitioner has articulated sufficient and persuasive reasoning
to combine the teachings of Oinonen, Whitley, Antila, and Ehlers. Oinonen
teaches using TE2 (remote unit) to monitor and control an environmental
device, Whitley teaches the remote unit can be a Nokia 9000 Communicator,
Antila teaches the Nokia 9000 Communicator has an LCD display, and
Ehlers teaches using a GUI displayed on a mobile device to monitor and
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control an environmental device. See Ex. 1016, 6:64–7:4, 13:15–20; Ex.
1021, 5:1–5; Ex. 1022 ¶ 116; Ex. 1023, 6:22–29, 8:6–14. Petitioner’s
proposed combination is one of “familiar elements according to known
methods [and] is likely to be obvious when it does no more than yield
predicable results.” KSR 550 U.S. at 416.
We are not persuaded by Patent Owner’s arguments that Ehlers’ GUI
could not be implemented on mobile devices available at the time and could
not have been used to control monitored parameters. See PO Resp. 35–38.
To the contrary, Ehlers expressly discloses “the customer may access the
GUI 4.02 through a remote device, such as a mobile phone.” Ex. 1022
¶ 311. GUI 4.02 includes all the tabs shown in Figures 4A through 4R,
including the virtual thermostat shown in Figure 4C. Id. ¶¶ 30–47, 311. The
virtual thermostat displays the current temperature and temperature set point
at a remote site, and allows the user to change the temperature set point. Id.
¶ 316, Fig. 4C.
3. Claim 9
Claim 9 depends from claim 8 and requires the liquid crystal module
to include selectable graphic icons corresponding to current environmental
information being monitored or controlled. Ex. 1001, 14:12–15. Petitioner
demonstrates how the combination of Oinonen, Whitley, Antila, and Ehlers
teaches this limitation. See Pet. 41–43. For example, Whitley teaches using
a Nokia 9000 Communicator (remote unit) to monitor and control an
environmental device (thermostat), Antila teaches the Nokia 9000 includes
an LCD display, and Ehlers teaches displaying a GUI having selectable
icons (buttons 4.22) corresponding to remotely monitored or controlled
environmental information (temperature) on a mobile device. Ex. 1021,
1:15–25, 4:65–5:5; Ex. 1022 ¶¶ 116, 316; Ex. 1023, 6:22–29, 8:6–14, 12:21–
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23. Patent Owner argues claim 9 is patentable for the same reasons as claim
1. See PO Resp. 35. We are not persuaded by these arguments for the
reasons discussed in § II.C.4, supra.
For the reasons discussed above, Petitioner demonstrates by a
preponderance of evidence why a person skilled in the art would have
combined the teachings of Oinonen, Whitley, Antila, and Ehlers and how the
combination teaches every limitation of claim 9. Thus, Petitioner
demonstrates by a preponderance of evidence that claim 9 is unpatentable as
obvious over Oinonen, Whitley, Antila, and Ehlers.
4. Claim 10
Claim 10 depends from claim 1 and requires the remote unit to be
configured to selectively disable SMS message transmissions from the base
unit. Ex. 1001, 14:16–18. Petitioner demonstrates how the combination of
Oinonen, Whitley, Antila, and Ehlers teaches this limitation. See Pet. 43–44
(citing Ex. 1022 ¶ 327, Fig. 4J). For example, Oinonen and Whitley teach
remotely monitoring environmental devices (receiving alerts) via SMS
messages, and Ehlers teaches using a GUI to selectively control which alerts
get sent to which remote devices. See Ex. 1022 ¶ 327, Fig. 4J; Ex. 1023,
6:22–29, 8:6–14, 12:21–23. Patent Owner argues claim 10 is patentable for
the same reasons as claim 1. See PO Resp. 35. We are not persuaded by
these arguments for the reasons discussed in § II.C.4, supra.
For the reasons discussed above, Petitioner demonstrates by a
preponderance of evidence why a person skilled in the art would have
combined the teachings of Oinonen, Whitley, Antila, and Ehlers and how the
combination teaches every limitation of claim 10. Thus, Petitioner
demonstrates by a preponderance of evidence that claim 10 is unpatentable
as obvious over Oinonen, Whitley, Antila, and Ehlers.
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G. Obviousness over Oinonen, Whitley, and Menard
Petitioner argues claims 20 and 22 are unpatentable as obvious over
Oinonen, Whitley, and Menard. Pet. 44–48. Patent Owner disputes this.
PO Resp. 39–45. For the reasons discussed below, Petitioner demonstrates
by a preponderance of evidence that claims 20 and 22 are unpatentable as
obvious over Oinonen, Whitley, and Menard.
1. Menard
Menard discloses a system and method for remote notification of a
monitored condition. Ex. 1020 ¶ 16. The notification can be a burglar
alarm, a fire alarm, or an alarm from a sensor that monitors any type of
mechanical, environmental, maintenance, usage, or access system. Id. The
alarm can be sent to an RP (responsible party) via facsimile, email, SMS, or
WAP (wireless application protocol). Id. ¶¶ 18, 20. When an RP responds
to the notification to manage alarm processing, Menard’s system “executes
the process which may include further notification.” Id. ¶ 68. Thus, “after
instructions from [the] RP are completed, another round of notification may
occur” so that “RPs are informed as to the outcome of the event.” Id. ¶ 179.
2. Reasons to Combine the Teachings of Oinonen, Whitley, and Menard
Petitioner argues Oinonen, Whitley, and Menard all teach remotely
monitoring and controlling an alarm system through the exchange of SMS
messages. Pet. 45. Petitioner demonstrates how Oinonen and Whitley also
teach confirming the receipt of SMS messages. Id. For example, Oinonen
teaches an SMS service center receives a confirmation when a receiving
mobile station “has received [a] short message.” Ex. 1016, 2:24–28.
Likewise, Whitley teaches an SMS service center “returns a message
indicating the delivery status of [an] outgoing [SMS] message.” Ex. 1023,
10:3–5. Petitioner argues a person skilled in the art would have been
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motivated to confirm not only the receipt of an SMS command, as taught by
Oinonen and Whitley, but that the received SMS command containing “[a]
monitoring/control request had been performed,” as taught by Menard, in
order to provide “extra comfort and/or security to [the] user.” Pet. 45–46
(citing Ex. 1003 ¶¶ 444–445; Ex. 1020 ¶¶ 69, 179).
Petitioner articulates sufficient and persuasive reasoning to combine
the teachings of Oinonen, Whitley, and Menard. Oinonen and Whitley teach
an alarm system that sends an alarm via SMS, receives a command in
response to the alarm, and confirms receipt of the received command. See
Ex. 1016, 2:24–28, 6:60–7:4, 10:63–11:11; Ex. 1023, 6:22–29, 10:3–5,
12:21–23. Menard teaches an alarm system that sends an alarm to a remote
user, receives a response to manage or control the alarm, and notifies the
remote user of the outcome of processing the response. Ex. 1020 ¶¶ 68, 179.
Confirming not only receipt of a command as taught by Oinonen and
Whitley, but execution of the command as taught by Menard, is a simple
“combination of familiar elements according to known methods” to achieve
a predictable result. See KSR, 550 U.S. at 416.
3. Claim 20
Claim 20 is substantially similar in scope to claim 19, which as
discussed in § II.C.7, supra, is substantially similar to claims 1, 3 and 7.
Compare Ex. 1001, 15:28–16:4, with id. at 15:9–27, and with id. at 13:37–
58, 13:63–65, and 14:5–9. Claim 20 differs from claim 19 in that it requires
the transmitter to send a message to the remote unit indicating that a
received command has been executed. Id.
Given the similarity between claims 1, 19, and 20, Petitioner’s
analysis of claim 20 largely relies on and refers back to its analysis of claims
1 and 19. See Pet. 46–47. For the reasons discussed in §§ II.C.4 and II.C. 7,
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supra, Petitioner demonstrates how the combination of Oinonen and Whitley
disclose the limitations in claim 20 that are substantially similar to
limitations in claims 1 and 19. Petitioner further demonstrates how Menard
teaches the additional limitation of a base unit transmitting a message
indicating a received command has been executed. See Pet. 46–47 (citing
Ex. 1020 ¶¶ 68, 179). For example, Menard discloses an alarm system that
sends an alarm to an RP (responsible party), receives a response from the RP
to “manag[e] the alarm processing,” and executes the received response,
which “may include further notification . . . based upon executing the
instructions for the particular RP.” Ex. 1020 ¶ 68. Menard further discloses
“after instructions from an RP are completed . . . selected RPs may be
notified of the outcome of the process.” Id. ¶ 179.
Patent Owner argues Petitioner’s analysis of this limitation is flawed
for several reasons. See PO Resp. 39–44. First, Patent Owner argues “[t]he
‘command’ referenced in this claim element is ‘a command for the
environmental device’” and “Petitioners do not assert that Oinonen or
Whitley disclose this claim element but instead assert that it is taught by
Menard.” Id. at 39. Next, Patent Owner argues, the “command” executed
by Menard is received by “a monitoring service remote from [a monitored]
house or business” and, therefore, Menard’s notification that the command
has been executed is not a notification that “an environmental device in a
monitored home execut[ed] instructions.” Id. at 39, 42.
We are not persuaded by Patent Owner’s arguments, which
improperly attack the teachings of the individual references rather than their
combined teachings. See Merck, 800 F.2d at 1097 (“Non-obviousness
cannot be established by attacking references individually where the
[challenge] is based upon the teachings of a combination of references.”).
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First, Petitioner relies on Oinonen and Whitley rather than Menard for
teaching a base unit interfaced with an environmental device having a
receiver that receives a command for the environmental device. See Pet. 46
(indicating the base unit “is similar to 1B and is likewise disclosed” and the
receiver “is similar to 19C and is likewise disclosed”); id. at 18–19
(limitation 1B analysis identifying Oinonen’s TE1 and Whitley’s gateway 20
as base units interfaced with an environmental device); id. at 34 (limitation
19C analysis referring to limitation 1D–1F analysis); id. at 19–22 (limitation
1D–1E analysis identifying TE1’s radio element 6 and gateway 20’s
transceiver as receivers that receive a command for an environmental
device). Next, Petitioner demonstrates that both Oinonen and Whitley
confirm receiving SMS messages (commands). Id. at 45. For example,
Oinonen teaches confirming a mobile station “has received [a] short
message.” Ex. 1016, 2:24–28. Likewise, Whitley teaches receiving a
message “indicating the delivery status of [an] outgoing [SMS] message.”
Ex. 1023, 10:3–5. Next, Petitioner demonstrates how Menard receives and
executes a command, and transmits a confirmation that the command has
been executed. See Pet. 47. For example, Menard teaches sending an alarm,
receiving a response to “manag[e] the alarm processing,” and sending
“further notification . . . based upon executing the instructions” contained in
the received response. Ex. 1020 ¶ 68. Thus, when combined with Oinonen
and Whitley, Menard teaches transmitting, via the transmitter in Oinonen’s
TE1 and Whitley’s gateway 20, a message indicating when a received
command has been executed.
For the reasons discussed above, Petitioner demonstrates by a
preponderance of evidence why a person skilled in the art would have
combined the teachings of Oinonen, Whitley, and Menard and how the
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combination teaches every limitation of claim 20. Thus, Petitioner
demonstrates by a preponderance of evidence that claim 20 is unpatentable
as obvious over Oinonen, Whitley, and Menard.
4. Claim 22
Claim 22 is substantially similar in scope to claim 3, which depends
from claim 1. Compare Ex. 1001, 16:22–37, with id. at 13:37–58 and
13:63–65. Claim 22 differs from claim 3 in that it requires a wireless
module configured to send a wireless message to the remote unit indicating
that a received command has been executed. Id. That is, claim 22 adds to
claim 3 the same limitation that claim 20 adds to claim 19.
Given the similarity between claims 1, 19, 20, and 22, Petitioner’s
analysis of claim 22 largely relies on and refers back to its analysis of claims
1, 19, and 20. See Pet. 47–48. For the reasons discussed in §§ II.C.4 and
II.C.7, supra, Petitioner demonstrates how the combination of Oinonen and
Whitley disclose the limitations in claim 22 that are substantially similar to
the limitations in claims 1 and 19. For the reasons discussed in § II.G.3,
supra, Petitioner demonstrates how the combination of Oinonen, Whitley,
and Menard disclose the limitation in claim 22 that is substantially similar to
the claim 20 limitation of transmitting a message indicating a received
command has been executed. Patent Owner argues Petitioner fails to
demonstrate the unpatentability of claim 22 over Oinonen, Whitley, and
Menard for the same reasons as claim 20. See PO Resp. 44–45. We are not
persuaded by these arguments for the reasons discussed in § II.G.3, supra.
For the reasons discussed above, Petitioner demonstrates by a
preponderance of evidence why a person skilled in the art would have
combined the teachings of Oinonen, Whitley, and Menard and how the
combination teaches every limitation of claim 22. Thus, Petitioner
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demonstrates by a preponderance of evidence that claim 22 is unpatentable
as obvious over Oinonen, Whitley, and Menard.
H. Grounds based on Bielski and Wu
Petitioner argues claims 1–4, 7–9, 11–15, 17–19, and 21 are
unpatentable over Bielski and Wu; claims 5, 6, and 16 are unpatentable over
Bielski, Wu, and Sears; claim 10 is unpatentable over Bielski, Wu, and
Ehlers; and claims 20 and 22 are unpatentable over Bielski, Wu, and
Menard. Pet. 49–85. Patent Owner disputes this. PO Resp. 45–62.
For the reasons discussed above, Petitioner has demonstrated by a
preponderance of evidence that claims 1–11 and 13–22 of the ’935 patent
are unpatentable over Oinonen and Whitley alone or in combination with
one or more of Sears, Antila, Ehlers, and Menard. See §§ II.C–II.G, supra.
Consequently, we need not consider whether Petitioner has also
demonstrated that claims 1–11 and 13–22 are unpatentable over Bielski and
Wu alone or in combination with Sears, Ehlers, or Menard. See Beloit Corp.
v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (finding an
administrative agency is at liberty to reach a decision based on a single
dispositive issue). However, on the record presented and for the reasons
discussed above, Petitioner has failed to demonstrate that claim 12 is
unpatentable over Oinonen and Whitley. Therefore, we do need to consider
whether Petitioner has demonstrated that claim 12 is unpatentable over
Bielski and Wu.
1. Bielski
Bielski discloses “a communication system and a method for . . . the
monitoring, control and/or regulation of one or more devices.” Ex. 1017 ¶ 1.
Bielski allows “the user of a mobile phone[] to monitor devices . . . over
long distances, and/or to actively control or regulate them by means of the
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mobile phone.” Id. ¶ 8. Bielski identifies each of “a stove, a refrigerator, a
fuse box, a light, a roller blind, a garage door, [and] an alarm system of a
video surveillance system,” as a device that can be remotely monitored and
controlled. Id. Bielski’s system in illustrated in Figure 1, which is
reproduced below.

Figure 1 of Bielski is a schematic illustration of a system for “the
monitoring, control, or regulation of household devices by means of a
mobile terminal.” Id. ¶ 53. The system includes monitored/controlled
devices 10, check and communication unit 20, and mobile device 30. Id.
¶ 54, Fig. 1.
Check and communication unit 20 represents separate units that are
“wired together for purposes of data exchange.” Id. ¶ 54. The check unit
can be “a monitoring unit which receives data from the device(s),” and also
“a control unit which transfers data for the purpose of control to the one or
more devices.” Id. ¶ 14; see also id. ¶¶ 5, 40. The check unit communicates
with the controlled devices over a wired or wireless connection. Id. ¶¶ 5, 13,
40. The communication unit includes a “sending and/or receiving unit by
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means of which data can be sent and/or received by mobile communications
. . . according to the GSM, GPRS, or UMTS standard.” Id. ¶ 57; see also id.
¶¶ 5, 21, 22, 26, 40.
Mobile terminal 30 can also operate according to the GSM, GPRS, or
UMTS standards. Id. ¶ 30. Users of “mobile terminal 30 can be informed
about the operation conditions of the devices . . . or can themselves influence
the devices by controlling or regulating them.” Id. ¶ 63. For example, users
can enter “commands, such as on/off conditions or temperatures . . . into the
mobile terminal and send this information. . . . to the control and
communication unit 20 via the telecommunications network.” Id. From
control and communication unit 20, an issued command “is transmitted to
the devices inside the building 10 or serves as a nominal value which is
required for regulation of the devices.” Id. Mobile terminal 30 can execute
“an application with a corresponding user interface with which the user can
. . . activate special features using buttons and various control panels . . . for
the control/regulation unit” of a controlled device. Id. ¶ 81. The
application, for example, allows the user “to specify a room temperature
with a slider inserted onto the user interface, wherein the exact temperature
values would be shown on a separate display, and the user . . . moves the
slider to a desired value.” Id. A corresponding application on check and
communication unit 20 “effect[s] control and regulation processes in the
direction of the controlling/regulation devices.” Id. ¶ 82.
Bielski’s system includes “means [i] by means of which data can be
transferred from the network operator to the mobile terminal on the basis of
the data transferred from the communication unit . . . and/or [ii] by means of
which data can be transferred from the mobile terminal to the network
operator on the basis of which data are transferred to the communication
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unit.” Id. ¶ 5. Bielski further discloses the means by which the mobile
terminal can be informed about the status of monitored/controlled devices 10
can “be in the form of an SMS or by means of a voice mail.” Id. ¶ 69.
2. Wu
Wu discloses “a Home Network System (HNS) architecture integrated
with . . . Short Message Service to support the connectivity between the
home and Internet/Global System for Mobile Communication (GSM)
networks.” Ex. 1018, 493. “The main objective of the integrated system is
to remotely monitor and control the devices in the HNS via laptop computer
or a GSM mobile terminal.” Id. Wu’s HNS is depicted in Figure 1, which is
reproduced below.

Figure 1 of Wu is a schematic illustration of a Home Network System. Id. at
494–495. The system includes an HNS gateway that “connects to home
devices and runs a home automation management application that supervises
home devices.” Id. at 494. Home network devices, such as refrigerators,
air-conditioners, televisions, surveillance systems, burglar alarm systems,
fax and answering machines, are organized into appliance, security, and
messaging subsystems. Id. at 494–495 (Table 1).
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Wu’s HNS allows remote users “to monitor home appliances and
control them” from either a mobile terminal executing WAP (wireless access
protocol) or SMS, or a computer executing HTTP (hypertext transfer
protocol). Id. at 495. This is shown in Figure 2 of Wu, which is reproduced
below.

Figure 2 of Wu is a schematic illustration of three methods for
communicating with home devices from a remote location, including via
(a) WAP, (b) HTTP, and (c) SMS. Id.
3. Claim 12
Claim 12 depends from independent claim 11 and requires the remote
unit’s wireless connectivity to comprise “a first wireless connection
interfacing with the base unit, a second wireless connection interfacing with
the remote unit, and a non-wireless connection interfacing between the first
wireless connection and the second wireless connection.” Ex. 1001, 14:19–
44 (emphasis added).
Petitioner provides a detailed analysis of independent claim 11 that
relies upon its analysis of independent claim 1 and its articulated reasoning
for combining the teachings of Bielski and Wu. See Pet. 49–59, 67–72.
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Patent Owner alleges this analysis is erroneous because: (a) Petitioner has
not articulated sufficient reasoning to combine the teachings of Bielski and
Wu, (b) Petitioner has not identified a limitation that is missing in Bielski
that would have prompted a person skilled in the art to consider the
teachings of Wu, (c) Bielski fails to disclose a remote unit sending SMS
messages to a base unit, and (d) Bielski does not enable the base unit
sending SMS messages to the remote unit. See PO Resp. 45–53, 56. For the
reasons that follow, we need not consider the merits of Petitioner’s analysis
of claim 11 or Patent Owner’s arguments opposing that analysis to consider
the merits of Petitioner’s analysis of claim 12.
Petitioner characterizes claim 12 as requiring “a non-wireless
connection between the base unit and the environmental device.” Pet. 72.
Petitioner argues the combination of Bielski and Wu teaches or suggests this
limitation because “Bielski discloses a variety of cellular network
connection networks, such as ‘SGSN/GGSN system which connects the
GPRS system’ and GSM,” and “Bielski and Wu further disclose connections
between the base unit and environmental unit.” Id. (quoting Ex. 1017 ¶ 60).
In our Institution Decision, we determined that claim 12 requires a
non-wireless connection between first/second wireless connections
associated with the base/remote units, and we made a preliminary finding
that Petitioner was not likely able to demonstrate the combination of Bielski
and Wu teaches the limitation because “Petitioner fails to sufficiently
explain how Bielski and Wu’s ‘connections between the base unit and
environmental unit’ . . . constitute a connection ‘interfacing between the first
wireless connection and the second wireless connection,’ as required by
claim 12.” Dec. Inst. 52–53.
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Patent Owner agrees with the preliminary analysis in our Institution
Decision. See PO Resp. 56. Petitioner does not challenge our finding that
the plain language of claim 12 requires the non-wireless connection to be an
interface between the first/second wireless connections associated with the
base/remote units, which we maintain here. See Pet. Reply 27–32. Instead,
Petitioner argues that Bielski and Wu disclose such a non-wireless
connection because they both “disclose use of the GSM [cellular] network”
to send/receive SMS messages and the “wires in the central office switch” of
the GSM network “allow[] messages from the remote unit to be sent to the
base unit to control various environmental devices.” Id. at 31. Patent
Owner argues we should reject Petitioner’s Reply argument because it
“relies entirely on improper new arguments.” PO Sur-Reply 23.
We are persuaded by Patent Owner’s arguments. Although our rules
allow “the petitioner, in its reply brief, to address issues discussed in the
institution decision,” they prohibit Petitioner from “submit[ting] new
evidence or argument in reply that it could have presented earlier, e.g., to
make out a prima facie case of unpatentability.” Consolidated Trial Practice
Guide at 73. Petitioner never argued in the Petition that Bielski and Wu
disclose a non-wireless connection between the first wireless connection and
the second wireless connection because they both use GSM cellular
networks that have wires in their central offices. See Pet. 72. Petitioner’s
Reply is not an opportunity to present that argument for the first time. See
Consolidated Trial Practice Guide at 73; see also Ariosa Diagnostics, 805
F.3d at 1368 (“The Board must make judgments about whether a Petition
identified the specific evidence relied on in a Reply and when a Reply
contention crosses the line from the responsive to the new.”). Therefore, we
do not consider this argument.
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Accordingly, on this record and for the reasons stated above,
Petitioner has failed to demonstrate that claim 12 is unpatentable over the
combination of Bielski and Wu.
I. Constitutional Challenges
Patent Owner argues we should decline to consider the patentability of
the challenged claims on two constitutional grounds. See PO Resp. 62–63.
First, Patent Owner argues “the retroactive application of inter partes review
to patents that were applied for before the America Invents Act (as the ’935
patent was) violates the Fifth Amendment of the United States Constitution.”
Id. at 62. Second, Patent Owner argues “the Administrative Patent Judges
(‘APJs’) presiding over the proceeding were unconstitutionally appointed.”
Id. at 62–63.
We decline to consider Patent Owner’s constitutional challenge based
on the appointments clause because the Federal Circuit has already
addressed this issue in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320
(Fed. Cir. 2019), cert. granted sub nom. United States v. Arthrex, Inc., 2020
WL 6037206 (Oct. 13, 2020), and determined that APJs are constitutionally
appointed as of the date of that decision. We also decline to consider Patent
Owner’s Fifth Amendment challenge because the Federal Circuit has already
addressed this issue in Celgene Corp. v. Peter, 931 F.3d 1342 (Fed. Cir.
2019) cert. denied 141 S.Ct. 132 (2020) (Takings Clause) and Sound View
Innovations, LLC v. Hulu, LLC, 818 F. App’x, 1009 (Fed. Cir. 2020) (Due
Process Clause), and determined the retroactive application of inter partes
review to patents applied for prior to the enactment of the American Invents
Act does not violate the Fifth Amendment.
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III. CONCLUSION
We have reviewed the Petition, Patent Owner Response, Petitioner
Reply, and Patent Owner Sur-Reply. We have considered all of the
evidence and arguments presented by Petitioner and Patent Owner, and have
weighed and assessed the entirety of the evidence as a whole.
We find, on this record, Petitioner has demonstrated by a
preponderance of evidence that claims 1–11 and 13–22 of the ’935 patent
are unpatentable, but has failed to demonstrate on this record by a
preponderance of evidence that claim 12 is unpatentable.11

11 Should Patent Owner wish to pursue amendment of the challenged
claims in a reissue or reexamination proceeding subsequent to the
issuance of this decision, we draw Patent Owner’s attention to the April
2019 Notice Regarding Options for Amendments by Patent Owner
Through Reissue or Reexamination During a Pending AIA Trial
Proceeding. See 84 Fed. Reg. 16,654 (Apr. 22, 2019). If Patent Owner
chooses to file a reissue application or a request for reexamination of the
challenged patent, we remind Patent Owner of its continuing obligation to
notify the Board of any such related matters in updated mandatory
notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
Claims 35 U.S.C. § Reference(s) /Basis
Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
1–3, 7,
11–15,
17–19, 21
103(a) Oinonen, Whitley 1–3, 7, 11,
13–15, 17–19,
21
12
4–6, 16 103(a) Oinonen, Whitley,
Sears
4–6, 16
8 103(a) Oinonen, Whitley,
Antila
8
9, 10 103(a) Oinonen, Whitley,
Antila, Ehlers
9, 10
20, 22 103(a) Oinonen, Whitley,
Menard
20, 22
12 103(a) Bielski, Wu 12
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IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–11 and 13–22 are unpatentable;
FURTHER ORDERED that Petitioner has failed to show on this
record that claim 12 is unpatentable under 35 U.S.C. § 103(a) over Oinonen
and Whitley;
FURTHER ORDERED that Petitioner has failed to show on this
record that claim 12 is unpatentable under 35 U.S.C. § 103(a) over Bielski
and Wu; and
FURTHER ORDERED that this Decision is final, and a party to this
proceeding seeking judicial review of the Decision must comply with the
notice and service requirements of 37 C.F.R. § 90.2.

Overall
Outcome
1–11, 13–22 12
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For PETITIONER:
Benjamin Pleune
Christopher Douglas
Andrew Doane
ALSTON & BIRD LLP
ben.pleune@alston.com
christopher.douglas@alston.com
adam.doane@alston.com

Stephanie Schonewald
Peter Flynn
CHOATE, HALL & STEWART LLP
sschonewald@choate.com
pflynn@choate.com

For PATENT OWNER:
Cortney Alexander
KENT & RISLEY LLC
cortneyalexander@kentrisley.com