Ubiquitous Connectivity, LP

Patent Trials and Appeals Board

Jan 26, 2021

IPR2019-01610 (P.T.A.B. Jan. 26, 2021)

Trials@uspto.gov Paper 39
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.

IPR2019-01336
Patent 9,602,655 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
IPR2019-01610, 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 1–24 (“the challenged claims”) of U.S. Patent
No. 9,602,655 B2 (Ex. 1001, “the ’655 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, 3–8, 10, and 12–24 are unpatentable, but has failed to
show by a preponderance of evidence that claim 2, 9, and 11 are
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 IPR2019-01335, challenging
related U.S. Patent No. 8,064,935 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 ’655 Patent
The ’655 patent relates to “a remote monitoring and control system
for an environment.” Ex. 1001, 1:22–23. Such a system is shown in Figure
1 of the ’655 patent, which is reproduced below.

2 Honeywell 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 3:43–45. 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 3:58–67, 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 3:58–64. Associated remote control units 26
also interface with base control unit 16 to monitor and control devices 21
when in the proximity of base control unit 16. Id. at 3:64–67.
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 11:50–56,
12:25–30. 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 on a periodic or event-driven basis.” Id. at 4:55–57, 9:15–17.
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 9:20–27.
Remote control unit 12 can be a “conventional cellular telephone
handset[] . . . equipped with a programming kernel, such as Java or J2ME.”
Id. at 7:10–16. 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 6:61–63. 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 7:2–
4. “The data path between the remote control unit and the base control unit
is SMS (‘simple message service’).” Id. at 7:22–24. SMS messages are
“processed within the cellular telephone’s application software” and “by the
base control unit applications software.” Id. at 7:52–54, 11:24–26.
E. Illustrative Claims
Claim 1 of the ’655 patent is illustrative of the claimed subject matter,
and is reproduced below.
1. A base unit configured to communicate with an
environmental device and to communicate with a cellular
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remote unit having wireless connectivity capable of
communicating from a geographically remote location, the base
unit comprising:
a first communication interface configured to receive
environmental information from the environmental device and
to send a control instruction to the environmental device;
a wireless communication interface configured to send a
first message to the cellular remote unit via a cellular
communications network and to receive a second message from
the cellular remote unit via the cellular communications
network,
wherein the first message is a first digital
communications message including a representation of the
environmental information, and
wherein the second message is a second digital
communications message including a command regarding the
environmental device; and
a microcontroller configured to process the second
message, to provide the control instruction based on the
command, and to send the control instruction to the
environmental device via the first communication interface, and
wherein the command is for the base unit initiated by a
user from the cellular remote unit, and
wherein the control instruction to the environmental
device is associated with the command for the base unit,
wherein the cellular remote unit is configured to
determine position data of the cellular remote unit, and
determine when the cellular remote unit is outside a geo-fence,
wherein the cellular remote unit is configured to transmit
a notification via a simple message service responsive to
determining that the cellular remote unit is outside of the geo-
fence.
Id. at 13:57–14:26. Claim 24 is substantially similar to claim 1, but does not
require the cellular remote unit to determine its position, determine when it
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is outside a geo-fence, or transmit an SMS notification when it is outside its
geo-fence. Compare id. at 15:28–16:29, with id. at 13:57–14:26. Instead, it
requires the wireless communication interface be configured to send a third
message to and receive a fourth message from a subordinate remote unit, and
requires the microcontroller be configured to process the fourth message and
selectively send a second control instruction to the environmental device
based on a command in the fourth message. Id. Claims 2–23 depend
directly or indirectly from claim 1. Id. at 14:27–15:27.
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
Coon US 2002/0147006 A1 Oct. 10, 2002 1019
Ehlers US 2004/0117330 A1 July 28, 20036 1020
Denis EP 1289248 Mar. 5, 2003 1021
Lincoln US 6,108,614 Aug. 22, 2000 1022

3 Petitioner also relies upon the Declaration 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. 2002).
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. 14–15: Paper 11.
Patent Owner does not dispute the public availability of Wu. See PO Resp.
52–65.
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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Reference Effective Date Exhibit
Whitley WO 99/49680 Sept. 30, 1999 1023

G. Instituted Grounds
Petitioner asserts the challenged claims would have been unpatentable
on the following grounds:
Ground Claims 35 U.S.C. § References
1A 1, 4–8, 10, 12–14,
16, 17, 20, 22, 23 103(a) Oinonen, Whitley, Coon
1B 2, 3, 9, 11, 15, 18,
19, 21 103(a)
Oinonen, Whitley, Coon,
Ehlers
1C 24 103(a) Oinonen, Whitley, Denis
1D 24 103(a) Oinonen, Whitley, Lincoln
2A 1, 3, 5–8, 10, 12–
17, 20–23 103(a) Bielski, Wu, Coon
2B 2, 9, 11, 18, 19 103(a) Bielski, Wu, Coon, Ehlers
2C 4 103(a) Bielski, Wu, Coon, Whitley
2D 24 103(a) Bielski, Wu, Denis
2E 24 103(a) Bielski, Wu, Lincoln
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. 2002 ¶ 29). Patent
Owner proposed the same definition pre-institution, and we adopted that
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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. 8–9. 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.
B. Claim Construction
In inter partes reviews, a claim is interpreted “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 that
standard, the “words of a claim ‘are generally given their ordinary and
customary meaning.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
Cir. 2005) (en banc) (internal citation omitted). Moreover, the ordinary and
customary meaning applies “unless the patentee demonstrated an intent to
deviate from [it] . . . 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.”
Teleflex, Inc. v. Ficosa N. America Corp., 299 F.3d 1313, 1327 (Fed. Cir.
2002); see also Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371
(Fed. Cir. 2014). Thus, although we may “look to the specification and
prosecution history to interpret what a patentee meant by a word or phrase in
a claim,” we may not read “extraneous limitations . . . into the claims from
the specification or prosecution history” absent an express definition or clear
disavowal of claim scope. Bayer AG v. Biovail Corp., 279 F.3d 1340, 1348
(Fed. Cir. 2002). Only those claim terms 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).
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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. 7–9. In our Institution Decision, we declined to expressly construe
these terms because Patent Owner did not argue they required 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. 4–22; Pet. Reply 2–12.
2. Simple Message Service,
Digital Communications Message
Petitioner argues the term “simple messaging service” should be
construed to mean “short message service” or SMS because the ’655 patent
equates the two terms. Pet. 9–11. Petitioner argues the term “digital
communications message” should be construed to mean SMS because “[t]he
655 Patent cannot be read so broadly to cover any message capable of digital
transmission.” Id. at 11–12. Patent Owner does not dispute Petitioner’s
construction of “simple message service,” but contends it would “be
improper to limit the claim term ‘digital communications message’ to SMS
messages.” PO Resp. 4–22; PO Sur-Reply 2.
In our Institution Decision, we construed the term “simple messaging
service” to mean “SMS or ‘short message service’” because the ’655 patent
equates the two terms by definition. Dec. Inst. 10–11 (quoting Ex. 1001,
3:8–9, 7:22–24). We also declined to expressly construe the term “digital
communications message” because Petitioner’s unpatentability contentions
rely on exchanging SMS messages and neither party disputes that an SMS
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message is a “digital communications message.” Id. at 11. Neither party
disputes our construction of “simple messaging service” or our decision to
not expressly construe “digital communications message,” both of which we
maintain here. See PO Resp. 4–22; Pet. Reply 2–12.
3. 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. 12 (citing Ex. 2002 ¶ 48). Patent Owner argues this construction
is supported by the Microsoft Computer Dictionary, the Comprehensive
Dictionary of Electrical Engineering, and the ’655 patent. Id. at 7–12.
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. 2004, 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.
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Ex. 2005, 439.
Patent Owner argues the microcontroller disclosed in the ’655 patent
is consistent with these definitions. See PO Resp. 10–12 (citing Ex. 1001,
3:50–51, 5:4–8, Fig. 4; Ex. 2002 ¶ 46); PO Sur-Reply 4–8. In particular,
Patent Owner argues a person skilled in the art would have understood
microcontroller 106 shown in Figure 4 of the ’655 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
of the various subsystems within the residential environment.’” PO Resp.
10–12 (quoting Ex. 1001, 5:4–8, Fig. 4).
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 5–12. Petitioner
argues Patent Owner’s proposed construction is too narrow and “finds no
support in the specification nor in the claims of the 655 Patent.” Id. at 6
(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. at 6–7. Petitioner further argues
the ’655 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
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software for ‘provid[ing] for autonomous control.’” Id. at 8 (quoting Ex.
1001, 4:55–61, 10:33–35).
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. at 9. 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 9.
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 7 (citing/quoting Ex. 2013, 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 ’655 patent does not define “microcontroller” and
neither the ’655 patent nor its prosecution history contain statements that
limit or disclaim any part of its plain and ordinary meaning. See Teleflex,
299 F.3d at 1327 (“[C]laim terms take on their ordinary and accustomed
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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-
purpose, single-chip computer designed . . . to handle a particular . . . task.”
Ex. 2004, 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. 2005, 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.”
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4. Transmit a Notification
Claim 1 recites “the cellular remote unit is configured to transmit a
notification via a simple message service responsive to determining that the
cellular remote unit is outside of the geo-fence.” Ex. 1001, 14:23–26 (the
“transmit a notification” limitation). Patent Owner proposes we construe
this limitation to mean “the cellular remote unit is configured to determine
that the cellular remote unit is outside of the geo-fence and to report this
information via a simple message service.” PO Resp. 15.
Patent Owner argues its proposed construction is supported by the
Specification, which states “[w]hen the remote control unit travels a distance
that exceeds the programmed distance from the base control unit, the remote
control unit reports this information to the base control unit.” Id. (quoting
Ex. 1001, 9:6–9). Patent Owner also argues its construction is supported by
the prosecution history because during prosecution pending claim 38, which
recited the base unit received a command from the remote unit when the
remote unit determined it was within a geo-fence, was rejected for lack of
written description. Id. at 16–17. Patent Owner argues the Examiner found
the Specification “did not disclose . . . sending a command in response to
crossing a geo-fence” but instead disclosed sending “information . . . that
[the remote unit] has travelled a distance that exceeds a programmed
distance from the base control unit.” Id. (quoting Ex. 1002, 4767). Patent
Owner argues the Examiner’s rejection recognized that “the remote unit
report[ing] when it crosses the geo-fence . . . represents fundamentally
different functionality than sending a command.” Id. at 18.

7 We cite to page 476 of Exhibit 1002, which is page 11 of an Office Action
sent on February 22, 2016. Patent Owner cites to page 11 of the Office
Action.
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Petitioner argues we should reject Patent Owner’s proposed
construction “because it continues to recite ‘simple message service’” rather
than “short message service.” Pet. Reply 4–5. Petitioner further argues “the
Coon reference discloses the relevant limitation” even under Patent Owner’s
proposed construction. Id. at 5.
In our Institution Decision, we did not expressly construe the
“transmit a notification” limitation. We did, however, make a preliminary
finding that “nothing in claim 1 precludes the notification message from
including a command message.” Dec. Inst. 28. Patent Owner’s proposed
construction is an invitation to construe the “transmit a notification”
limitation in a manner that would exclude transmitting a command. We
decline to do so for the reasons that follow.
To construe the “transmit a notification” limitation we first “look to
the words of the claims themselves.” Vitronics Corp. v. Conceptronic, Inc.,
90 F.3d 1576, 1582 (Fed. Cir. 1996). Claim 1 requires the cellular remote
unit to “determine when [it] is outside a geo-fence,” and responsive to
making that determination, “to transmit a notification via a simple message
service.” Ex. 1001, 14:22–26. Nothing in claim 1 specifies the type or
content of the notification that is to be transmitted when the remote unit
determines it is outside the geo-fence. Moreover, nothing in claim 1
prohibits the notification from being a command or requires the notification
to report that the remote unit is outside the geo-fence.
Having found claim 1 itself does not limit the “transmit a notification”
limitation in the manner proposed by Patent Owner, we review the
Specification. See Phillips, 415 F.3d at 1313 (a disputed term is read “in the
context of the entire patent, including the specification”); see also Vitronics,
90 F.3d at 1582 (the Specification “is the single best guide to the meaning of
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a disputed term”). The Specification may limit the plain and ordinary
meaning of a claim term when it defines the term or uses it in a manner that
clearly disavows claim scope. See Poly-America, L.P. v. API Indus., Inc.,
839 F.3d 1131, 1136 (Fed. Cir. 2016) (“We depart from the plain and
ordinary meaning in only two instances. The first is when a patentee acts as
his own lexicographer. The second is when the patentee disavows the full
scope of the claim term.”) (internal citations omitted). “[T]he standard for
[claim] disavowal is exacting, requiring clear and unequivocal evidence that
the claimed invention includes or does not include a particular feature.” Id.
The Specification neither defines the term “transmit a notification”
nor uses the term when describing the communications between the remote
unit and the base unit when the remote unit determines it is outside a geo-
fence. See Ex. 1001, 8:37–9:14. The Specification does provide “an
example of geo-fencing” in which the remote unit, upon determining it is
outside a geo-fence, “reports this information to the base control unit.” Id.
at 9:6–14 (emphases added). However, the message transmitted in this
example may not be read from the Specification into the claim. See Bayer
AG, 279 F.3d at 1348 (“[A] court may not read into a claim a limitation from
a preferred embodiment, if that limitation is not present in the claim itself.”).
This is especially true in this instance because the Specification discloses
other messages the remote unit can transmit to the base unit when it
determines it has crossed a geo-fence, including “a status message to the
base control unit if [it] exceed[s] a programmed set of boundary conditions.”
Ex. 1001, 8:62–65. An example of a remote unit “status message” is a
message that the remote unit is “inactive.” Id. at 7:30–37. More generally,
the Specification describes geo-fencing as a method that “allows the base
control unit to change its operational characteristics based upon the location
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of the remote control unit(s).” Id. at 8:42–44. Such changes can occur when
a remote control unit “communicates with the base control unit 16 to affect
the operational aspects thereof,” e.g., when the remote unit “command[s] the
base control unit” by “communicat[ing] the command . . . through the
cellular telephone network 22.” Id. at 6:61–7:5. Thus, the Specification
discloses that when a remote unit determines it has crossed a geo-fence, it
can transmit different “notifications” to the base unit, including
“notifications” that (a) report crossing the geo-fence, (b) send a status
message, or (c) send a command.
Having found that neither claim 1 nor the Specification limits the
“transmit a notification” limitation in the manner proposed by Patent Owner,
we consider the prosecution history. See Phillips, 415 F.3d at 1317 (“the
prosecution history can often inform the meaning of the claim language by
demonstrating how the inventor understood the invention and whether the
inventor limited the invention in the course of prosecution”). Patent Owner
argues the prosecution history limits the scope of the “transmit a
notification” limitation because the Examiner rejected pending claim 38
(receiving a command), but not pending claim 39 (transmit a notification),
for lack of written description. See PO Resp. 16–19. We are not persuaded
by this argument for the following reasons.
First, the Examiner’s rejection of pending claim 38 and the
Applicant’s amendment of that claim did not narrow the scope of pending
claim 39. Pending claims 38 and 39, when first presented for examination,
read as follows:
38. (New) The base unit of claim 8, wherein the remote control
unit is configured to determine position data of the remote
control unit, and determine when the remote control unit is
within a geo-fence, wherein the command is received from the
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cellular remote [control] unit responsive to determining that the
remote control unit is within the geofence.
39. (New) The base unit of claim 8, wherein the remote control
unit is configured to determine position data of the remote
control unit, and determine when the remote control unit is
outside a geo-fence, wherein the remote control unit is
configured to transmit a notification via a simple message
service responsive to determining that the remote control unit is
outside the geofence.
Ex. 1002, 433 (emphases added). The claims differ in two ways, namely, in
what the remote unit is configured to do and when it is configured to do it.
Claim 38 implicitly requires a remote unit that can transmit a command, i.e.,
a command that is received by the base unit when the remote unit is within a
geo-fence. Claim 39 requires a remote unit that can transmit a notification
to the base unit when the remote unit is outside the geo-fence. Logically, the
Examiner’s understanding of what the remote unit can transmit when it is
within the geo-fence has no bearing on the Examiner’s understanding of
what the remote unit can transmit when it is outside the geo-fence. Thus,
even if the Applicant’s amendment of pending claim 38 disavowed claim
scope, which we disagree with for the reasons discussed below, the
disavowal pertains to what the remote unit can transmit when it determines it
is within the geo-fence, not what it can transmit when it determines it is
outside the geo-fence.
Second, the Applicant’s amendment of claim 38 neither reflected the
Applicant’s understanding of the invention nor disavowed what the remote
unit can transmit, even when it is inside the geo-fence. The amendment did
not reflect the Applicant’s understanding of the invention because it was
made “[t]o expedite prosecution and without conceding to the Examiner’s
positions.” Ex. 1002, 510. The amendment did not disavow what the
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remote unit can transmit because it deleted the entire receiving clause rather
than limiting what could be received and, therefore, transmitted. Id. at 506.
Thus, the amendment obviated the written description rejection rather than
disavowing the scope of what the remote unit could transmit to the base unit.
Accordingly, for the reasons discussed above, we construe “transmit a
notification via simple message service responsive to determining that the
cellular remote unit is outside of the geo-fence” to include at least
“transmitting, via SMS, a command, a status message, or information that a
remote unit is outside a geo-fence responsive to determining that the remote
unit is outside the geo-fence.”
C. Obviousness over Oinonen, Whitley, and Coon
Petitioner argues claims 1, 4–8, 10, 12–14, 16, 17, 20, 22, and 23 are
unpatentable as obvious over Oinonen, Whitley, and Coon. Pet. 17–37.
Patent Owner disagrees. PO Resp. 22–42. For the reasons discussed below,
Petitioner demonstrates by a preponderance of evidence that claims 1, 4–8,
10, 12–14, 16, 17, 20, 22, and 23 are unpatentable as obvious over Oinonen,
Whitley, and Coon.
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
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.
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Oinonen describes the invention 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
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 th[e]
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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. 3.8 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,
2:19–21. Such a system is shown in Figure 1 of Whitley, which is
reproduced below.

8 Mobile station TE2 has a similar structure. See Ex. 1016, 7:52–54.
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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 9:3–8.
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
a facility according to a pre-programmed pattern that the user may change
by communicating new commands,” and to have “remote control over the
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devices (e.g., home appliances or electronics) with which the gateway may
communicate.” Id. at 3:9–13.
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. Coon
Coon discloses a “wireless mobile device [that] determines its own
location with respect to [a] control device.” Ex. 1019 ¶ 15. Coon’s mobile
device includes processor 102, memory 104, display 106, GPS receiver 108,
and wireless transceiver 110. Id. ¶ 16. “When the mobile device is within a
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predetermined control range” of the control device, “the mobile device sends
a message to the control device to initiate performance of an appropriate
function or functions” on one or more device(s) connected to the control
device. Id. ¶ 15. The message can be an SMS message. Id. ¶ 19. The
connected devices can be “any of a number of devices that are normally
located within a building, for example, a security system, a smoke detector,
a light, a coffeemaker, a garage door opener, an electric door lock, a
thermostat, and a curtain.” Id. ¶ 18. In this way, “various building functions
can be initiated based upon the location of the wireless mobile device.” Id.
¶ 15. For example, “when the mobile device 120 is within three-hundred
feet of the control device 140, the control device 140 may cause a security
system to be disarmed, a light to be illuminated, a garage door to be opened,
a door to be unlocked, a thermostat to be set to an appropriate level, and one
or more curtains to be closed or opened.” Id. ¶ 19. Similarly, “when the
mobile device 120 moves more than three-hundred feet away from the
control device 140, the control device 140 may cause the security system to
be armed and a door to be locked.” Id.
4. Reasons to Combine the Teachings of Oinonen, Whitley, and Coon
Petitioner argues Oinonen “does not expressly articulate how its
telecommunications device would be configured to monitor and/or control
multiple devices,” whereas Whitley “specifically discloses a data collection
and control device (a ‘gateway’) that is connected to multiple devices.”
Pet. 17–18 (citing Ex. 1003 ¶¶ 201–205). 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
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(3) “monitoring . . . activities at a facility over time, such as energy use
trends, which allows the user to save energy.” Id. at 18 (citing Ex. 1003
¶¶ 204, 205). 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.’” Id. (quoting Ex. 1023, 6:22–26).
Petitioner argues that Coon teaches the advantages of proximity-based
control over other types of control, such as schedule-based control. Id. at 19.
For example, relying on the testimony of Dr. Jeffay, Petitioner argues
proximity-based control increases efficiency by deactivating devices that are
not in use, increases safety by activating security systems and locking doors
when a user is away, and increases convenience by applying user settings
when the user is nearby. See Ex. 1003 ¶ 214. Therefore, Petitioner argues, a
person skilled in the art would have modified the Oinonen/Whitley control
system to provide proximity-based control in order to increase efficiency,
convenience, and safety. Id. (citing Ex. 1003 ¶¶ 214, 215).
Patent Owner argues “Petitioner[] fail[s] to establish that Oinonen and
Whitley can be properly combined for two reasons.” PO Resp. 22. 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 24–25. Second, Patent Owner argues
“Petitioner identifies no failing in Oinonen that would provoke a [person of
ordinary skill in the art] to turn to Whitley.” Id. at 24. That is, Patent Owner
argues that because “Petitioners assert that Oinonen by itself discloses all the
elements of independent claims 1 and 24 (except the elements for which
they rely on [references other than] Whitley) . . . it is unclear why they
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contend a [person of ordinary skill in the art] would be motivated to turn to
Whitley for the claimed features.” Id. at 23.
Upon considering Petitioner’s and Patent Owner’s evidence and
arguments, we find Petitioner has set forth sufficient reasoning with rational
underpinning to combine the teachings of Oinonen, Whitley, and Coon.
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 proposed
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”). Coon further improves
upon the combination of Oinonen and Whitley by teaching proximity-based
control, which improves the efficiency, convenience, and safety of remotely
controlled systems. See Ex. 1003 ¶¶ 214–215.
We are not persuaded by Patent Owner’s argument that the
combination, particularly of Oinonen and Whitley, 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, 13:57–14:26. 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
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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 reason identified above, i.e., using a technique “used to
improve one device. . . [to] improve similar devices in the same way.” Id. at
416–417.
We are also not persuaded 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.
22–24. Patent Owner cites several Board decisions in support of this
argument, none of which is 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).
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5. Claim 1
Claim 1 recites a base unit configured to communicate with an
environmental device and a cellular remote unit capable of communicating
from a geographically remote location. Ex. 1001, 13:57–61. Petitioner
demonstrates how Oinonen teaches such a base unit. See Pet. 20–21 (citing
Ex. 1016, 6:60–7:4, 11:46–53). For example, Oinonen’s TE1 is a base unit
that communicates with an environmental device (electronic door lock)9 and
a cellular remote unit (TE2). Ex. 1016, 6:60–7:4, 11:46–53. Petitioner also
demonstrates how Whitley teaches such a base unit. See Pet. 21–22 (citing
Ex. 1023, 3:7–13, 8:6–10, 16:21–23). For example, Whitley’s gateway 20 is
a base unit that communicates with an environmental device (thermostat)
and a cellular remote unit (mobile station). Ex. 1023, 3:7–13, 8:6–10,
16:21–23. Patent Owner does not dispute these contentions. See PO Resp.
27–35.
Claim 1 requires the base unit to include a first communication
interface configured to receive environmental information from and send a
control instruction to the environmental device. Ex. 1001, 13:62–65.
Petitioner demonstrates how Oinonen’s V.24 interface is a first
communication interface. See Pet. 22–23 (citing Ex. 1016, 4:67–5:15, 6:60–
64, 11:62–12:4). For example, Oinonen’s TE1 (base unit) includes V.24
interface 7, which is configured to receive environmental information
(locked/unlocked status) from an electronic door lock (environmental
device) via line DTR and to send a control instruction (lock/unlock door) to
the electronic door lock via line DSR. Ex. 1016, 4:67–5:15, 6:60–64, 11:62–

9 The ’655 patent identifies an electronic door monitoring system as an
environmental device. See Ex. 1001, 6:29–36, 11:64–67.

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12:4, Figs. 3, 4. Petitioner also demonstrates how the physical interface of
Whitley’s gateway 20 (base unit) is a first communication interface. See
Pet. 21 (citing Ex. 1023, 8:27–9:1). For example, Whitley teaches gateway
20 provides a physical interface (first communication interface) between a
thermostat (environmental device) and a network that can both monitor the
thermostat (receive environmental information) and send control instructions
to the thermostat. Ex. 1023, 8:27–9:3, 16:21–23. Patent Owner does not
dispute these contentions. See PO Resp. 27–35.
Claim 1 further requires the base unit to include a wireless
communication interface configured to send a first message to and receive a
second message from the cellular remote unit via a cellular communications
network. Ex. 1001, 13:66–14:3. Petitioner demonstrates how Oinonen’s
TE1 (base unit) includes such a wireless communication interface. See
Pet. 23 (citing Ex. 1016, 4:52–62, 7:12–21). For example, TE1 (base unit)
includes radio element 6 (wireless communication interface) configured to
send a short message to and receive a short message from TE2 (cellular
remote unit). Ex. 1016, 4:52–62, 7:12–21, Fig. 3. Petitioner also
demonstrates how Whitley’s gateway 20 (base unit) includes such a wireless
interface. See Pet. 23–24 (citing Ex. 1023, 3:13–25, 9:6–8). For example,
gateway 20 includes a transceiver (wireless interface) configured to send an
SMS message to and receive an SMS message from a mobile station
(cellular remote unit) over a cellular network. Ex. 1023, 3:13–25, 9:6–8.
Patent Owner does not dispute these contentions. See PO Resp. 27–35.
Claim 1 further requires the first message to be a first digital
communication message that includes a representation of the environmental
information. Ex. 1001, 14:4–6. Petitioner demonstrates how Oinonen’s
TE1 (base unit) sends such a first message. See Pet. 24 (citing Ex. 1016,
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4:67–5:6, 10:38–55, 11:8–11). For example, TE1 sends an SMS message
(digital communication message) to TE2 (cellular remote unit) that includes
a representation of environmental information (e.g., the locked/unlocked or
open/closed state of the electronic door lock). Ex. 1016, 4:67–5:6, 10:38–
55, 11:8–11. Petitioner also demonstrates how Whitley’s gateway 20 (base
unit) sends such a first message. See Pet. 25 (citing Ex. 1023, 5:18–20, 8:1–
5, 12:21–13:2). For example, gateway 20 sends an SMS (digital
communication) message to a mobile station (remote unit) that includes a
representation of environmental information (e.g., an alarm indicating a
security breach). Ex. 1023, 5:18–20, 8:1–5, 12:21–13:2). Patent Owner
does not dispute these contentions. See PO Resp. 27–35.
Claim 1 further requires the second message to be a second digital
communication message issued by a user of the cellular remote unit that
includes a command for the base unit regarding the environmental device.
Ex. 1001, 14:7–9, 14:15–16. Petitioner demonstrates how Oinonen’s TE1
(base unit) receives such a second message. See Pet. 25 (citing Ex. 1016,
4:52–61, 4:67–5:15, 11:62–12:12). For example, TE1 receives an SMS
(digital communication) message from a user of TE2 (remote unit) that
includes a command to lock the electronic door lock (environmental device).
Ex. 1016, 4:52–61, 4:67–5:15, 11:62–12:12. Petitioner also demonstrates
how Whitley’s gateway 20 (base unit) receives such a second message. See
Pet. 25–26 (citing Ex. 1023, 2:23–25, 6:12–14, 10:14–17, 17:2–7). For
example, gateway 20 receives an SMS (digital communication) message
from the user of a mobile station (remote unit) that includes a command to
adjust the temperature setting of a thermostat (environmental device).
Ex. 1023, 2:23–25, 6:12–14, 10:14–17, 17:2–7. Patent Owner does not
dispute these contentions. See PO Resp. 27–35.
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Claim 1 further requires the base unit to include a microcontroller
configured to process the second message (command), provide a control
instruction based on the command, and send the control instruction to the
environmental device via the first communications interface. Ex. 1001,
14:10–19. Notwithstanding Patent Owner’s arguments to the contrary,
discussed infra, Petitioner demonstrates how Oinonen’s TE1 (base unit)
includes such a microcontroller. See Pet. 26–27 (citing Ex. 1016, 4:52–61,
5:6–13, 7:11–19, 8:34–37, 11:62–12:12). TE1 includes MCU or processor 1
(microcontroller) that interprets (processes) a message to “lock the door”
(second message), and sets a voltage (sends control instruction) on the DSR
line of its V.24 (first communications) interface to the electronic door lock
(environmental device). Ex. 1016, 4:52–61, 5:6–13, 7:11–19, 8:34–37,
11:62–12:12. Petitioner also demonstrates how Whitley’s gateway 20 (base
unit) includes such a microcontroller. See Pet. 27–28 (citing Ex. 1023,
2:23–27, 3:11–14, 9:4–5, 9:23–25, 10:14–17, 17:2–7). Gateway 20 includes
a processor (microcontroller) that reads and processes an SMS message
(second message) to obtain instructions to adjust a thermostat (control
instructions) and sends the instructions to the thermostat (environmental
device) via gateway 20’s physical (first communication) interface.
Ex. 1023, 2:23–27, 3:11–14, 9:4–5, 9:23–25, 10:14–17, 17:2–7.
Patent Owner argues Oinonen’s microprocessor and Whitley’s 386
processor are not microcontrollers because a person skilled in the art “would
not have understood that the claimed ‘microcontroller’ is a generic
processor,” but would have instead “understood that microcontrollers and
microprocessors are distinctly different devices.” PO Resp. 27. Patent
Owner’s arguments rely on its proposed construction of “microcontroller.”
Id. at 28–31. For the reasons discussed in § II.B.3, supra, we construe
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“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.
Claim 1 further requires the cellular remote unit to be configured to
determine its position data and whether it is outside a geo-fence. Ex. 1001,
14:20–23. Petitioner demonstrates how Oinonen’s TE2 or Whitley’s mobile
device (cellular remote units), when modified as taught by Coon, meet these
limitations. See Pet. 28–29 (citing Ex. 1019 ¶¶ 16, 19, Fig. 3). For example,
Coon teaches mobile device 120 (remote unit) is configured to determine
whether it is more than 300 feet from (determine position and whether
outside a geo-fence) control device 140 (base unit). Ex. 1019 ¶¶ 16, 19,
Fig. 3. Patent Owner does not dispute these contentions. See PO Resp. 27–
35.
Claim 1 further requires the cellular remote unit be configured to
transmit a notification via a simple message service responsive to
determining that it is outside the geo-fence. Ex. 1001, 14:23–26.
Notwithstanding Patent Owner’s arguments to the contrary, discussed infra,
Petitioner demonstrates how Oinonen’s TE2 or Whitley’s mobile device
(cellular remote units), modified as taught by Coon, meet these limitations.
See Pet. 29–30 (citing Ex. 1019 ¶¶ 15, 16, 19); Pet. Reply 17–19 (citing Ex.
1019 ¶¶ 16, 28). For example, Coon teaches mobile device 120 (remote
unit) “determines its own location with respect to the control device [base
unit],” including “when the mobile device moves more than three-hundred
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feet away from the control device 140 [outside geo-fence].” Ex. 1019 ¶¶ 15,
19. Mobile device 120 can “transmit a control message [notification] to the
control device 140 based upon [its] location.” Id. ¶ 15. As a result, “control
device 140 initiates performance of an appropriate function or functions,”
such as causing a “security system to be armed and a door to be locked.” Id.
¶¶ 16, 19.
Patent Owner argues “Coon does not disclose that its mobile device
sends a notification reporting that its location is outside of the geo-fence
(e.g., to notify a parent that a child has left the permitted boundaries).” PO
Resp. 33. Patent Owner further argues that sending a command to lock a
door is not the same as sending a notification because “the control system
does not know that it received that command because the mobile device
entered the geo-fence,” e.g., because such a command may be issued “even
when the user is inside the geo-fence.” Id. at 33–34.
We are not persuaded by Patent Owner’s arguments, which rely on
Patent Owner’s interpretation of the “transmit a notification” limitation,
which excludes transmitting commands and requires reporting information
that the remote unit crossed a geo-fence. See PO Resp. 15–18. We reject
that interpretation for the reasons explained in § II.B.4, supra. Specifically,
a plain reading of claim 1 requires the remote unit to “transmit a
notification” when it crosses the geo-fence, not to “transmit a notification
indicating it has crossed the geo-fence.” Ex. 1001, 14:23–26. Moreover, the
’655 patent discloses that when the remote unit crosses a geo-fence it can
transmit a notification that doesn’t indicate the geo-fence has been crossed,
such as a “status message.” Id. at 8:62–65. Lastly, Coon’s disclosure is not
limited to sending a command to lock a door when the remote unit crosses a
geo-fence. Coon more generally discloses the remote unit “transmit[s] a
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control message . . . based upon [its] location” that causes the “control
device 140 [to] initiate[] performance of an appropriate function.” Ex. 1019
¶ 16.
For the reasons discussed above, Petitioner demonstrates by a
preponderance of evidence that a person skilled in the art would have had a
rational reason to combine the teachings of Oinonen, Whitley, and Coon,
and that the combination teaches all the limitations of claim 1. Accordingly,
Petitioner has demonstrated that claim 1 is unpatentable over the
combination of Oinonen, Whitley, and Coon.
6. Claims 4–8, 10, 12–14, 17, 20, 22, and 23
Petitioner further maps the teachings of Oinonen, Whitley, and Coon
to the additional limitations recited in dependent claims 4–8, 10, 12–14, 17,
20, 22, and 23. See Pet. 30–37. Patent Owner contends these claims are
patentable for the same reasons as claim 1. See PO Resp. 35–36. We are
not persuaded by Patent Owner’s arguments for the same reasons discussed
in §§ II.C.4 and II.C.5, supra. Moreover, we find Petitioner demonstrates by
a preponderance of evidence how the combination of Oinonen, Whitley, and
Coon teach all the limitations recited in claims 4–8, 10, 12–14, 17, 20, 22,
and 23 for the reasons stated in the Petition as briefly discussed below.
Claims 4 and 5, respectively, require the remote unit to adjust the
temperature of a water heater and to adjust an air handling system. See
Ex. 1001, 14:33–36. Petitioner demonstrates how the ’655 patent discloses
an air handling system can be adjusted by a thermostat, and Whitley teaches
controlling home appliances such as a thermostat and water heater. Pet. 30–
31 (citing Ex. 1001, 6:8–13; Ex. 1023, 3:7–14, 8:27–9:1, 16:23–17:5).
Claims 6 and 7, respectively, require the cellular network to include data
bearer service and the remote unit to be mobile. Ex. 1001, 14:37–40.
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Petitioner demonstrates how Oinonen’s TE2 and Whitley’s mobile device
are mobile phones that use a GSM cellular network, and Dr. Jeffay provides
unrebutted testimony that a person skilled in the art would have known that a
GSM network includes a data bearer service. Pet. 31–32 (citing Ex. 1003
¶¶ 301–302; Ex. 1016, 6:64–7:4, 13:15–20; Ex. 1023, 8:14, 17:17–25).
Claim 8 requires the received commands and control instructions,
respectively, to include environmental commands and control instructions.
Ex. 1001, 14:41–43. Petitioner demonstrates how Oinonen discloses the
received commands and control instructions are environmental commands
and control instructions, e.g., commands to “lock the door” and control
instructions setting an appropriate “operating voltage” on the DSR line of
the V.24 interface. Pet. 32 (citing Ex. 1016, 11:62–12:4). Claim 10 depends
from claim 1, and includes all the limitations of claims 6–8. Compare Ex.
1001, 14:47–54, with id. at 14:37–43. Petitioner demonstrates how these
limitations are met for the same reasons as claims 6–8. See Pet. 33. Claim
13 requires the remote unit to be a cell phone and the environmental device
to be a thermostat, and claim 14 requires the environmental device to be one
of a list of items, including a thermostat. Ex. 1001, 14:62–67. Petitioner
demonstrates how these limitations are met for the same reasons as claims 5
and 7. See Pet. 34.
Claim 12 requires the microcontroller to process the environmental
information into the representation of the first message and to process the
command of the second message into a control instruction. Ex. 1001,
14:58–61. Petitioner demonstrates how Oinonen and Whitley disclose these
limitations. Pet. 33–34 (citing Ex. 1016, 4:52–61, 4:67–5:13, 8:33–37; Ex.
1023, 3:11–12, 8:1–2, 8:27–9:1, 9:23–25). Oinonen’s TE1 includes
processor 1, which (a) receives information from an environmental device
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(electronic door lock) on the V.24 interface and processes the information to
generate the first message (e.g., door is open) sent to TE2, and (b) receives a
command from TE2 (e.g., close the door) and processes the command to
generate a control instruction by setting a voltage on the DSR line of the
V.24 interface. Ex. 1016, 4:52–61, 4:67–5:13, 8:33–37. Whitley’s gateway
20 includes a processor that (a) receives and packages data sent by a
controlled environmental device and sends the data to a mobile station, and
(b) receives and processes an SMS command from the mobile station to
control the environmental device. Ex. 1023, 3:11–12, 8:1–2, 8:27–9:2,
9:23–25. Claim 23 requires the base unit’s microcontroller to send status
information to the remote unit on a periodic basis. Ex. 1001, 15:24–26.
Petitioner demonstrates how the processor (microcontroller) in Whitley’s
gateway 20 (base unit) periodically (every five minutes) monitors an
environmental device and sends SMS messages containing device status
information to a mobile device (remote unit). Pet. 37 (citing Ex. 1023,
12:23–27).
Claim 17 requires the remote unit to determine when it is within a
geo-fence. Ex. 1001, 15:5–7. Petitioner demonstrates how Coon discloses
determining “when the mobile device 120 is within three-hundred feet of the
control device 140.” Pet. 35 (quoting Ex. 1019 ¶ 19). Claim 20 requires the
received command to include cellular data. Ex. 1001, 15:15–16. Petitioner
demonstrates how Oinonen and Whitley transmit commands over a GSM
cellular network, i.e., using cellular data. Pet. 36 (citing Ex. 1016, 2:38–41,
4:57–61; Ex. 1023, 3:19–20). Claim 22 requires the base unit to include a
cellular module that communicates over a cellular network. Petitioner
demonstrates how Oinonen’s TE1 and Whitley’s gateway 20 include cellular
modules because they communicate over a GSM cellular network. Pet. 36–
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37 (citing Ex. 1016, 1:51–2:31, 2:42–44, 7:12–21, 13:15–20 ; Ex. 1023,
3:13–25, 9:6–8).
For the reasons discussed above, Petitioner demonstrates by a
preponderance of evidence that a person skilled in the art would have had a
rational reason to combine the teachings of Oinonen, Whitley, and Coon,
and that the combination teaches all the limitations of claims 4–8, 10, 12–14,
17, 20, 22, and 23. Accordingly, Petitioner has demonstrated that claims 4–
8, 10, 12–14, 17, 20, 22, and 23 are unpatentable over the combination of
Oinonen, Whitley, and Coon.
7. Claim 16
Claim 16 requires the cellular network to include simple message
service. Ex. 1001, 15:3–4. As discussed in § II.B.2, supra, we construe
“simple message service” to mean “short message service” or SMS.
Petitioner relies on its analysis of claim 1 to demonstrate how Oinonen and
Whitley disclose sending and receiving SMS messages over a cellular
network. See Pet. 35. We agree with that analysis for the reasons discussed
in § II.C.5, supra.
Patent Owner argues “Oinonen and Whitley 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. 36. 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 36–37 (citing Ex. 2002 ¶¶ 100–101). First, 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 37
(citing Ex. 2002 ¶¶ 102–103). Second, the references fail to disclose a
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mobile phone having “a software interface (API) for the SMS functions” that
enable the mobile phone to send/receive SMS messages. Id. at 37–38 (citing
Ex. 2002 ¶ 104).
Petitioner characterizes Patent Owner’s arguments as disingenuous
because “the 655 Patent itself does not describe either of these [two]
solutions” that are allegedly required for sending SMS messages. Pet. Reply
25. Moreover, Petitioner argues a § 103 reference is prior art for all it
discloses and need not be enabling. Id. at 26 (quoting Amgen Inc. v. Hoechst
Marion Roussel, Inc., 314 F.3d 1313, 1357 (Fed. Cir. 2003)). Patent Owner
responds that “enablement of the ’655 patent is not at issue in this
proceeding” and that “taking each reference for what it teaches fails to cure
the problem” because neither reference “enables an SMS-capable base unit.”
PO Sur-Reply 16.
As discussed above, Petitioner has demonstrated how Oinonen and
Whitley, separately and in combination, teach a base unit that sends/receives
SMS messages to/from a remote unit. We are unpersuaded by Patent
Owner’s non-enablement arguments. 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 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
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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 ’655 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, 3:8–11, 7:10–11, 11:23–24; see also id. at
3:58–4:7, 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).
For the reasons discussed above, Petitioner demonstrates by a
preponderance of evidence that a person skilled in the art would have had a
rational reason to combine the teachings of Oinonen, Whitley, and Coon,
and that the combination teaches all the limitations of claim 16.
Accordingly, Petitioner has demonstrated that claim 16 is unpatentable over
the combination of Oinonen, Whitley, and Coon.
D. Obviousness over Oinonen, Whitley, Coon, and Ehlers
Petitioner argues claims 2, 3, 9, 11, 15, 18, 19, and 21 are
unpatentable as obvious over Oinonen, Whitley, Coon, and Ehlers. Pet. 3,
37–45. Patent Owner disputes this. PO Resp. 42–44. For the reasons
discussed below, we find Petitioner has demonstrated by a preponderance of
evidence that claims 3, 15, 18, 19, and 21 are unpatentable as obvious over
Oinonen, Whitley, Coon, and Ehlers, but have failed to demonstrate by a
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preponderance of evidence that claims 2, 9, and 11 are unpatentable over
that combination.
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. 1020 ¶ 2. Ehlers’ system
includes utility 1.06 having control system 1.12 in two-way communications
with metered customer device 1.08 (e.g., a power meter) via communication
gateway 1.10, which may be integrated with or separate from customer
device 1.08. Id. ¶¶ 59–62, 68, Figs. 1A–1B, 2B–2D.
Utility 1.06 can “monitor and control the usage of electricity by
controlling the [gateway] nodes 1.10 and/or the devices 1.08.” Id. ¶ 78.
Utility 1.06 can also “define, modify, implement, and engage one or more
Power Supply Program[s] . . . to alleviate or reduce energy demand during
peak periods.” Id. For example, utility 1.06 can disallow the running of
“pool pumps . . . during a set period of the day” by sending a signal from
utility control system 1.12 to gateway 1.10 “to disable the pool pump during
the first time period.” Id. ¶ 81.
Ehler’s customer devices 1.08 can be controlled via a graphical user
interface (GUI) 1.14 incorporated on a device linked to gateway 1.10 via a
wireless data network. Id. ¶ 69, Fig. 1B. 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.
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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 4.22
to control the system. 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. Using GUI 1.14, a user can “directly access and control in-
home devices 1.08” and can also sign up to participate in a utility defined
energy conservation program. Id. ¶¶ 78, 116, 336.
Devices 1.08 in Ehler’s system can also utilize externally supplied
information, such as weather forecasts, to determine their operating
conditions. Id. ¶¶ 88, 187, 230–231.
2. Reasons to Combine the Teachings of Oinonen, Whitley, Coon, Ehlers
Petitioner argues Ehlers, like Oinonen, Whitley, and Coon, discloses a
system for remotely monitoring and controlling environmental devices via
mobile devices. Pet. 37–38. Petitioner argues Ehlers also teaches several
improvements to such systems, including the ability to (a) join “well-known
demand reduction programs,” (b) use “occupancy sensors and/or location-
based control,” (c) rely on “third party data, such as weather data, to setup
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and/or adjust current settings,” (d) integrate or separate base units
(gateways) and controlled devices, and (e) control devices using a graphical
“user interface with a rich set of functions and features.” Id. at 38–39 (citing
Ex. 1020 ¶¶ 7, 13, 68, 115–116, 231, 335). Petitioner argues these
improvements would have motivated a skilled artisan to modify the system
of Oinonen, Whitley, and Coon for several reasons. Id. at 38. For example,
such a modification would allow a user to (a) join a demand reduction
program “to obtain financial incentives,” (b) use occupancy sensors to
reduce the need “to track the usage of controlled devices,” (c) use weather
data to “adjust current settings,” (d) integrate base (gateway) and controlled
devices to “save space, reduce costs, and improve aesthetics,” and (e) use a
function-rich GUI to “improve[] customer usability.” Id. at 38–39. Patent
Owner does not dispute Petitioner’s reasoning. See PO Resp. 42–44.
Petitioner demonstrates sufficient reasoning to combine the teachings
of Oinonen, Whitley, Coon, and Ehlers. Oinonen, Whitley, and Coon teach
using a remote unit (mobile phone) to monitor and control an environmental
device. Ex. 1016, 6:64–7:4; Ex. 1019 ¶ 16, Ex. 1023, 6:22–29. Ehlers
teaches using a GUI displayed on a mobile device to remotely monitor and
control an environmental device, and to further control the environmental
device using utility demand reduction programs, occupancy sensors, and
external data. Ex. 1020 ¶¶ 7, 13, 115–116, 230–231, Fig. 1B. Thus,
Petitioner’s proposed combination is one of “familiar elements according to
known methods” to yield predicable results. KSR 550 U.S. at 416.
3. Claims 2, 9, and 11
Claim 1 requires a base unit configured to receive from a cellular
remote unit a second message containing a command for an environmental
device, and a microprocessor in the base unit configured to process the
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second message and send a control instruction based on the command to the
environmental device. See Ex. 1001, 13:57–14:15. Claim 2 depends from
claim 1 and requires the command to be a command to enter an energy
conservation mode associated with multiple environmental devices. Id. at
14:27–30. Claim 9 depends from claim 1 and requires the command to be
an energy conservation command associated with multiple environmental
devices. Id. at 14:44–46. Claim 11 indirectly depends from claim 1 and
requires the second message to include an energy conservation command
associated with multiple environmental devices. Id. at 14:47–57.
Petitioner relies on Ehlers to teach the limitations recited in claims 2,
9, and 11. See Pet. 40, 43. Specifically, Petitioner argues Ehlers teaches
these limitations by sending a command to participate or cancel participation
in a utility’s power saving program. Id. at 40 (citing Ex. 1020 ¶¶ 197, 316).
Petitioner also argues Ehlers teaches these limitations by setting a total
power limit for all devices in a home. Id. (citing Ex. 1020 ¶ 221).
In our Institution Decision, we found Petitioner was unlikely to
demonstrate the unpatentability of claims 2, 9, and 11. See Dec. Inst. 33–35.
Specifically, we found Ehlers’ command to participate in a utility’s power
saving program is sent to the utility’s control system 1.12, rather than to
gateway 1.10 (base unit), because it is control system 1.12 that sends control
instructions based on the command to environmental devices 1.08. See Ex.
1020 ¶ 81, Figs. 1A–1B (disclosing utility control system 1.12 sends a signal
(control instruction) to gateway 1.10D (base unit) to disable pool pump
1.30B (environmental device)). Similarly, Ehlers’ command to gateway
1.10 to set a limit on a home’s total power consumption does not cause
gateway 1.10 to send a control instruction based on the command to
environmental device 1.08. Rather, a device 1.08 wishing to draw power
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sends a third message to gateway 1.10 and gateway 1.10 sends a control
instructions based on the third message either granting or denying the
request. See, e.g., id. ¶ 221 (“[I]f another device 1.08 . . . wanted to perform
a function, the device 1.08 . . . may query the gateway node 1.10D for
permission. If the requested function would cause total demand to exceed
this [total power limit] amount . . . the gateway node 1.10D may not allow
the device 1.08 to perform that function.”).
Patent Owner agrees with our preliminary findings and argues
“Petitioner[] ha[s] not sufficiently demonstrated that the proposed
combination teaches the additional recitations” of claims 2, 9, and 11.
PO Resp. 42–44. Petitioner responds that Patent Owner ignores the
disclosures of the Oinonen/Whitley combination and fundamentally
misunderstands the teaching of Ehlers. Pet. Reply 27. Petitioner argues the
Oinonen/Whitley combination discloses the limitations of claim 1, and
Ehlers “discloses a nearly identical system that is focused on reducing
energy costs” and that is deployed by utilities. Id. at 27–28. Additionally,
Petitioner argues Ehlers discloses sending a command to enter an energy
conservation mode by “send[ing] commands to set . . . occupancy modes” to
multiple devices in order to conserve energy. Id. at 28–29 (citing Ex. 1020
¶¶ 244, 319, 332, Figs. 4E, 4F). Patent Owner argues the latter argument is
“a wholly new theory,” which we should not consider because Patent Owner
“does not have the opportunity to fully respond.” PO Sur-Reply 17.
Upon consideration of the evidence and arguments presented, we find
Petitioner has failed to demonstrate on this record that claims 2, 9, and 11
are unpatentable over Oinonen, Whitley, Coon, and Ehlers. First, the
Petition fails to demonstrate that the combination teaches the limitations
required by these claims for the reasons stated in our Institution Decision.
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See Dec. Inst. 33–34. We disagree with Petitioner’s contention that the
analysis in our Institution Decision, which Patent Owner has adopted,
attacks the teachings of Ehlers separately instead of considering the
combined teachings of Oinonen, Whitley, Coon, and Ehlers. Petitioner
identifies Ehlers’ command to join a utility’s power saving program as an
energy conservation mode command and argues a person skilled in the art
“would have included such energy conservation mode messages” in the
system of Oinonen, Whitley, and Coon. Pet. 40 (emphasis added).
Petitioner’s use of “such” indicates its proposed combination modifies
Oinonen, Whitley, and Coon to send Ehlers’ command to join a utility’s
power saving program. But, as described above, that command is sent to
utility control system 1.12 rather than to an environmental device’s gateway
1.10 (base unit) as required by claims 2, 9, and 11. See Dec. Inst. 33–34.
Second, 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,
Whitley, and Coon could be modified to include Ehlers’ occupancy mode
command to meet the limitations of claims 2, 9, and 11. See Pet. 40, 43.
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 v. Verinata Health, Inc., 805 F.3d 1359, 1368 (Fed. Cir. 2015)
(“The Board must make judgments about whether a Petition identified the

10 Available at http://www.uspto.gov/TrialPracticeGuideConsolidated
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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 claims 2, 9, and 11 are unpatentable
over the combination of Oinonen, Whitley, Coon, and Ehlers.
4. Claims 3, 15, 18, 19, and 21
Petitioner also relies on Ehlers to teach the additional limitations
recited in claims 3, 15, 18, 19, and 21. See Pet. 40–45. Patent Owner
contends Petitioner’s analysis of these claims is deficient for the same
reasons as Petitioner’s analysis of claim 1. See PO Resp. 42. We are not
persuaded by Patent Owner’s arguments for the reasons discussed in
§§ II.C.4 and II.C.5, supra. Moreover, we find Petitioner demonstrates by a
preponderance of evidence how the combination of Oinonen, Whitley,
Coon, and Ehlers teaches all the limitations recited in claims 3, 15, 18, 19,
and 21 for the reasons stated in the Petition as briefly discussed below.
Claim 3 requires the command to be associated with an icon on the
remote unit, and claim 21 requires the command to be initiated by a user
interacting with the icon. Ex. 1001, 14:31–32, 15:17–20. Petitioner
demonstrates how Ehlers teaches a user can send commands to control a
thermostat using a mobile phone by interacting with icons on a GUI
displayed on the mobile phone. Pet. 40–43, 45 (citing Ex. 1020 ¶¶ 311, 316,
Fig. 4C). Claim 15 requires the base unit and environmental device to be
contained in the same enclosure. Ex. 1001, 15:1–2. Petitioner demonstrates
how Ehlers teaches integrating gateway 1.10 (base unit) and controlled
device 1.08 (environmental device). Pet. 43 (quoting Ex. 1020 ¶ 68).
Claims 18 and 19 require the base unit to receive data from a web service
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and to send the control instruction responsive to receiving that data, and
claim 19 further requires the web service to be a weather service. Ex. 1001,
15:8–13. Petitioner demonstrates how Ehlers teaches gateway 1.10 (base
unit) can receive “external information . . . such as information related to the
local weather forecast” via a web-browser and use that information together
with indoor temperature measurements to control smart thermostat 1.08
(environmental device). Pet. 43–45 (citing Ex. 1020 ¶ 84, 88, 99, 115–116,
230–231, Fig. 1B).
For the reasons discussed above, Petitioner demonstrates by a
preponderance of evidence that a person skilled in the art would have had a
rational reason to combine the teachings of Oinonen, Whitley, Coon, and
Ehlers, and that the combination teaches all the limitations of claims 3, 15,
18, 19, and 21. Accordingly, Petitioner has demonstrated that claims 3, 15,
18, 19, and 21 are unpatentable over the combination of Oinonen, Whitley,
Coon, and Ehlers.
E. Obviousness over Oinonen, Whitley, and Lincoln
Petitioner argues claim 24 is unpatentable as obvious over Oinonen,
Whitley, and either Denis or Lincoln. Pet. 45–51. Patent Owner disagrees.
PO Resp. 44–52. For the reasons discussed below, we find Petitioner
demonstrates by a preponderance of evidence that claim 24 is unpatentable
over Oinonen, Whitley, and Lincoln. Accordingly, we need not consider
whether Petitioner has also demonstrated that claim 24 is unpatentable over
Oinonen, Whitley, and Denis. 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).
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1. Lincoln
Lincoln discloses a system having a controller and a plurality of
remote devices that receive information from and send information to the
controller in order to optimize and control systems such as HVAC, lighting,
security, energy management, home automation, or home entertainment
systems. Ex. 1022, 1:66–2:3, 2:20–29. The controller can identify
particular users and resolve conflicting commands among identified users
based on a priority listing programmed into the system. Id. at 22:4–5,
22:10–12.
2. Reasons to Combine the Teachings of Oinonen, Whitley, and Lincoln
Petitioner argues that although Oinonen and Whitley do not
specifically disclose supporting multiple users, a person skilled in the art
“would have known that Oinonen and Whitley disclose support for
processing multiple messages from multiple users.” Pet. 48–49 (citing Ex.
1003 ¶¶ 412–415). According to Dr. Jeffay, this is so because “most control
systems . . . are capable of supporting multiple users” and most homes “have
more than one occupant.” Ex. 1003 ¶¶ 413–414. Therefore, a person skilled
in the art would have sought out details from the prior art, such as the details
provided by Lincoln, for processing commands received from multiple
users. Id. ¶¶ 413, 415. Moreover, a person skilled in the art would have
found it obvious to apply Lincoln’s method for prioritizing commands from
multiple users in the system of Oinonen and Whitley because doing so
would have ensured, e.g., that parents rather than children had control over
devices such as thermostats. Pet. 49. Patent Owner does not dispute this
reasoning. See PO Resp. 46–52.
Petitioner demonstrates sufficient reasoning to combine the teachings
of Oinonen, Whitley, and Lincoln. Oinonen and Whitley teach using a
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remote unit (mobile phone) to monitor and control an environmental device.
Ex. 1016, 6:64–7:4; Ex. 1019 ¶ 16; Ex. 1023, 6:22–29. Dr. Jeffay provides
unrebutted testimony that a person skilled in the art “would have recognized
that accommodating multiple users would have been an obvious and well-
known modification to the systems of Oinonen and Whitley.” Ex. 1003
¶ 413. Lincoln teaches a method that allows multiple users to control an
environmental device by resolving user control conflicts based on user
priority. Ex. 1022, 22:4–6, 22:10–12. Thus, Petitioner’s proposed
combination is one of “familiar elements according to known methods” to
yield predicable results. KSR, 550 U.S. at 416.
3. Claim 24
Independent claim 24 is similar to independent claim 1. Compare
Ex. 1001, 13:57–14:20, with id. at 15:27–16:17. Both claims are directed to
a base unit that is configured to receive environmental information from an
environmental device, send a first message containing the environmental
information to a remote unit, and receive a second message from the remote
unit that includes a command. Id. Both claims also require the base unit to
include a microcontroller configured to process the second message and
send control instructions to the environmental device. Id. Claim 24 differs
from claim 1 in that it does not require the remote unit to determine its
position or whether it is outside a geo-fence, but does require the base unit to
send a third message to a subordinate remote unit and receive a fourth
message from the subordinate remote unit containing a subordinate
command. Id. at 16:18–24. Claim 24 further differs from claim 1 in that it
requires the microcontroller to process the fourth message and to send
selectively a second control instruction to the environmental device. Id. at
16:24–29.
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Notwithstanding Patent Owner’s arguments to the contrary, discussed
infra, Petitioner demonstrates how the combination of Oinonen, Whitley,
and Lincoln teaches or suggests all the limitations recited in claim 24. See
Pet. 49–50. Relying on its analysis of claim 1, Petitioner first demonstrates
how the combination teaches the limitations in claim 24 that are similar to
the limitations in claim 1. See id. at 49. We are persuaded by this analysis
for the reasons discussed in § II.C.5, supra. Relying on the unrebutted
testimony of Dr. Jeffay, Petitioner also demonstrates how a person skilled in
the art would have known the combination could have sent/received both
first/second and third/fourth messages to/from the remote units of different
users. Id. at 50 (citing Ex. 1003 ¶¶ 418–420; Ex. 1022, code (57), 1:61–63,
10:50–57). For example, Lincoln teaches a system having a plurality of
remote units that receive information from and send control information to
an HVAC system. Ex. 1022, code (57), 1:66–2:3, 9:51–57, 10:51–57.
Lastly, relying on the testimony of Dr. Jeffay, Petitioner demonstrates how a
person skilled in the art would have known the combination would have
included a microcontroller to “process additional messages as described in
Oinonen and Whitley according to the priority rules that were well-known in
the art, as evidenced by Lincoln.” Pet. 50–51 (citing Ex. 1003 ¶ 423;
Ex. 1022, 22:3–12). For example, Lincoln’s controller “identifies particular
individuals” and selectively activates “home appliances based on the
information stored in the controller,” including by resolving “[c]onflicts
between individuals . . . based on a priority listing programmed in the
system.” Ex. 1022, 22:3–12.
Patent Owner argues Petitioner’s analysis of claim 24 is erroneous for
several reasons. See PO Resp. 22–27, 46–52. First, Patent Owner argues
Petitioner has failed to provide sufficient motivation to combine the
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teachings of Oinonen and Whitley. Id. at 22–26. We are not persuaded by
this argument for the reasons discussed in § II.C.4, supra. Second, Patent
Owner argues the proposed combination fails to disclose a microcontroller.
Id. at 46. We are not persuaded by this argument for the reasons discussed
in § II.C.5, supra.
Third, Patent Owner argues the proposed combination fails to disclose
a “subordinate remote unit.” Id. at 46–48. Specifically, Patent Owner
argues that although Petitioner asserts “it would have been obvious to
modify Oinonen and Whitley to allow multiple users, Petitioner does not
assert that Oinonen or Whitley teaches or renders obvious the recited
subordinate remote unit” and does not argue that “Lincoln discloses a
subordinate remote unit.” Id. at 46–47. Petitioner replies “[t]he term
‘subordinate’ does not appear in the specification, and therefore the plain
and ordinary meaning of this term should be adopted.” Pet. Reply 20.
Petitioner argues “a device or message can be subordinate in many ways,
including based on priority,” and “Lincoln discloses a priority distinction.”
Id.
We agree with Petitioner. The Specification of the ’655 patent does
not expressly refer to a “subordinate remote unit.” Nonetheless, it discloses
that when “multiple remote control units 12 . . . are deployed, one of the
remote control units could be considered a master and all others could be
considered slaves” such that for certain operations the “base control unit 16
may be configured . . . to only respond to commands from the master remote
control unit.” Ex. 1001, 8:14–20. The Specification further discloses:
the remote control units can be segregated into classes such that
the base control unit responds to commands and communicates
selected information to a class containing one or more remote
control units. An example would be a first class consisting of
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remote control units operated by parents and a second class
consisting of remote control units operated by children. . . . The
class assignments and configurations are easily customized to
provide the notifications desired by the authoritative system
operators, in this case, the parents.
Id. at 8:20–36. Given these disclosures, we conclude the term “subordinate
remote unit” includes a remote unit that is a slave to a master remote unit
and a remote unit that is operated by lower priority (i.e., lower class) user.
Lincoln discloses an environmental controller that is controlled by a
plurality of remote units associated with identifiable users. See Ex. 1022,
1:66–2:3, 22:3–5 (“the controller identifies particular individuals using an
IR, RF, or light source [that] communicate[s] with a sensor in [a] room”).
The controller also prioritizes users based on “a priority listing programmed
in the system.” Id. at 22:10–12. Thus, as Petitioner contends, the
combination of Oinonen, Whitley, and Lincoln teaches a system in which an
environmental device is controlled by a base unit that interacts with a
plurality of remote units, some of which have been classified as “subordinate
remote units” based on a classification of the users associated with the
remote units.
Fourth, and lastly, Patent Owner argues the proposed combination
fails to disclose a subordinate remote unit sending a “subordinate
command.” See PO Resp. 48–52. Specifically, Patent Owner argues
“[n]either Oinonen nor Whitley . . . discloses receiving inputs from multiple
remote units” and Lincoln does not disclose controlling an environmental
device based on receiving “any command from the user” and “certainly does
not disclose receiving a subordinate command.” Id. at 49–50. Petitioner
replies that because Lincoln discloses settling “[c]onflicts between
individuals . . . based upon a priority listing programmed in the system,” it
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follows that “a command from [lower priority] user two is a subordinate
command whereas a command from [higher priority] user one is a non-
subordinate command.” Pet. Reply 20 (quoting Ex. 1022, 22:10–12)
(emphasis omitted).
We agree with Petitioner. As discussed above, Petitioner
demonstrates how the combined teachings of Oinonen, Whitley, and Lincoln
teach sending a third message to a subordinate remote unit and receiving a
fourth message containing a subordinate command from the subordinate
remote unit. See Pet. 48–51. For example, Petitioner demonstrates that it
would have been obvious for Oinonen and Whitley, both of which disclose
controlling heating or HVAC systems, to “accommodat[e] multiple users.”
Id. at 48 (citing Ex. 1003 ¶¶ 413–414). This is because “most homes have
more than one occupant.” Ex. 1003 ¶ 414. Petitioner further demonstrates
that it would have been obvious to use Lincoln’s priority scheme to
“manag[e] a system with multiple users” that is receiving conflicting
commands from those users. Id. at 49 (citing Ex. 1003 ¶¶ 413–415). This is
because “each user in the same house may have different environmental
preferences” and “in homes with children . . . a parent would want to have
priority of control over that of a child.” Ex. 1003 ¶¶ 414–415.
Patent Owner does not address Petitioner’s proposed combination or
reasoning for making the combination. Instead, Patent Owner attacks the
individual teachings of Oinonen, Whitley, and Lincoln, arguing the
combination does not teach the “subordinate remote unit” or “subordinate
command” limitations because Oinonen and Whitley do not teach “the
recited subordinate remote unit” and Lincoln does not teach a subordinate
remote unit that “sends a subordinate command.” PO Resp. 47. But “[n]on-
obviousness cannot be established by attacking references individually
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where the [challenge] is based upon the teachings of a combination of
references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
For the reasons discussed above, Petitioner demonstrates by a
preponderance of evidence that a person skilled in the art would have had a
rational reason to combine the teachings of Oinonen, Whitley, and Lincoln,
and that the combination teaches all the limitations of claim 24.
Accordingly, Petitioner has demonstrated that claim 24 is unpatentable over
the combination of Oinonen, Whitley, and Lincoln.
F. Obviousness over Bielski and Wu
Petitioner argues claims 1, 3, 5–8, 10, 12–17, and 20–23 are
unpatentable over Bielski, Wu, and Coon; claims 2, 9, 11, 18, and 19 are
unpatentable over Bielski, Wu, Coon, and Ehlers; claim 4 is unpatentable
over Bielski, Wu, Coon, and Whitley; and claim 24 is unpatentable over
Bielski, Wu, and either Denis or Lincoln. Pet. 51–80. Patent Owner
disputes this. PO Resp. 52–65.
For the reasons discussed above, Petitioner has demonstrated by a
preponderance of evidence that claims 1, 3–8, 10, and 12–24 of the ’655
patent are unpatentable over Oinonen, Whitley, and Coon, alone or in
combination with Ehlers or Lincoln. See §§ II.C–II.E, supra. Consequently,
we need not consider whether Petitioner has also demonstrated that claims 1,
3–8, 10, and 12–24 are unpatentable over Bielski, Wu, and Coon alone, or in
combination with Ehlers or Lincoln. See Beloit, 742 F.2d at 1423 (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 claims 2, 9, and 11
are unpatentable over Oinonen, Whitley, Coon, and Ehlers. Therefore, we
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do need to consider whether Petitioner has demonstrated that claims 2, 9,
and 11 are unpatentable over Bielski, Wu, Coon, and Ehlers.
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
mobile terminal.” 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 is 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.
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Check and communication unit 20 represents separate check and
communication 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 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
allows, for example, 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
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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
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.

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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).
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.
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3. Claims 2, 9 and 11
Claim 1 requires a base unit configured to receive from a cellular
remote unit a second message containing a command for an environmental
device, and a microprocessor in the base unit configured to process the
second message and send a control instruction based on the command to the
environmental device. See Ex. 1001, 13:57–14:15. Claim 2 depends from
claim 1, and requires the command sent by the remote unit in the second
message to concern entering an energy conservation mode associated with
multiple environmental devices. Ex. 1001, 14:27–30. Claim 9 depends
from claim 1 and requires the command to be an energy conservation
command associated with multiple environmental devices. Id. at 14:44–46.
Claim 11 indirectly depends from claim 1 and requires the second message
to include an energy conservation command associated with multiple
environmental devices. Id. at 14:47–57.
Petitioner relies on Ehlers to teach the claim 2, 9, and 11 limitations in
the Bielski, Wu, Coon, and Ehlers combination “for at least the reasons set
out in Ground 1B” for the Oinonen, Whitley, Coon, and Ehlers combination.
See Pet. 74–75. In our Institution Decision, we found Petitioner was
unlikely to demonstrate the unpatentability of claims 2, 9, and 11 over
Bielski, Wu, Coon, and Ehlers for the same reasons Petitioner was unlikely
to demonstrate the unpatentability of these claims over Oinonen, Whitley,
Coon, and Ehlers. See Dec. Inst. 57–58; see also § II.D.3, supra.
Patent Owner agrees with those preliminary findings, arguing
“Petitioner[] fail[s] to establish that Ehlers discloses the additional
recitations of claim 2, 9, or 11 for the reasons discussed regarding Ground
1B.” PO Resp. 61–62. Petitioner argues Patent Owner ignores the
disclosures of the Bielski and Wu combination and fundamentally
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misunderstands the teaching of Ehlers. Pet. Reply 27. Petitioner argues the
Bielski and Wu combination discloses the limitations of claim 1, and Ehlers
“discloses a nearly identical system that is focused on reducing energy
costs” that is deployed by utilities. Id. at 27–28. Additionally, Petitioner
argues Ehlers discloses sending a command to enter an energy conservation
mode by “send[ing] commands to set . . . occupancy modes” to multiple
devices in order to conserve energy. Id. at 28–29 (citing Ex. 1020 ¶¶ 244,
319, 332, Figs. 4E, 4F). Patent Owner argues “the Board should decline to
consider Petitioner[’s] new theory regarding the additional recitations of
claim 2, 9, and 11 as discussed regarding Ground 1B.” PO Sur-Reply 25.
Upon consideration of the evidence and arguments presented, we find
Petitioner has failed to demonstrate on this record that claims 2, 9, and 11
are unpatentable over Bielski, Wu, Coon, and Ehlers. First, the Petition fails
to demonstrate the combination teaches the limitations required by these
claims for the reasons stated in our Institution Decision. See Dec. Inst. 33–
34, 57–58. We disagree with Petitioner’s contention that the analysis in our
Institution Decision, which Patent Owner has adopted, attacks the teachings
of Ehlers separately instead of considering the combined teachings of
Bielski, Wu, Coon, and Ehlers. The entire analysis of claim 2 in the Petition
reads: “Ehlers discloses ‘wherein the command regards entering an energy
conservation mode, and wherein the energy conservation mode is associated
with multiple devices’ for at least the reasons set out in claim 2 in Ground
1B.” Pet. 74. This analysis fails to explain how Bielski, Wu, Coon, and
Ehlers would send an “energy conservation command” other than by
sending Ehlers’ command to a utility to join the utility’s power saving
program. As discussed above and in our Institution Decision, Ehlers’
command to join a utility’s power saving program is not sent to the base unit
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of an environmental device as required by claims 2, 9, and 11. See Dec.
Inst. 33–34; § II.D.3, supra.
Second, 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, Wu, and Coon could be modified to include Ehlers’
occupancy mode command to meet the limitations of claims 2, 9, and 11.
See Pet. 74–75. 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.
Accordingly, on this record and for the reasons stated above,
Petitioner has failed to demonstrate that claims 2, 9, and 11 are unpatentable
over the combination of Bielski, Wu, Coon, and Ehlers.
G. Constitutional Challenges
Patent Owner argues we should decline to find the claims of the ’655
patent unpatentable on constitutional grounds. See PO Resp. 65–66.
Specifically, Patent Owner argues “the Administrative Patent Judges
(‘APJs’) presiding over the proceeding were unconstitutionally appointed”
because the Federal Circuit determined APJs are not inferior officers of the
United States 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 the Federal Circuit’s remedy to render APJs
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inferior officers failed to cure the constitutional defect in APJ appointments.
Id.
We decline to consider Patent Owner’s constitutional challenge
because the Federal Circuit determined in Arthrex that “the appropriate
remedy to the constitutional violation [in APJ appointments] is partial
invalidation of the statutory limitations on the removal of APJs” and that this
“severing [of] the restriction on removal of APJs renders them inferior rather
than principal officers.” Arthrex, 941 F.3d at 1388.
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, 3–8, 10, and 12–24 of the ’655
patent are unpatentable, but has failed to demonstrate on this record by a
preponderance of evidence that claims 2, 9, and 11 are 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).
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IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1, 3–8, 10, and 12–24 are unpatentable;
FURTHER ORDERED that Petitioner has failed to show on this
record that claims 2, 9, and 11 are unpatentable under 35 U.S.C. § 103(a)
over Oinonen, Whitley, Coon, and Ehlers;
FURTHER ORDERED that Petitioner has failed to show on this
record that claims 2, 9, and 11 are unpatentable under 35 U.S.C. § 103(a)
over Bielski, Wu, Coon, and Ehlers; 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.

Claims 35 U.S.C. § Reference(s) /Basis
Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
1, 4–8, 10,
12–14, 16,
17. 20, 22,
23
103(a) Oinonen, Whitley,
Coon
1, 4–8, 10,
12–14, 16, 17.
20, 22, 23

2, 3, 9, 11,
15, 18, 19,
21
103(a) Oinonen, Whitley,
Coon, Ehlers
3, 15, 18, 19,
21
2, 9, 11
24 103(a) Oinonen, Whitley,
Coon, Lincoln
24
2, 9, 11 103(a) Bielski, Wu, Coon, Ehlers 2, 9, 11
Overall
Outcome
1, 3–8, 10,
12–24

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For PETITIONER:
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