Federal Circuit Says Erroneous Claim Construction Led PTAB to Uphold Claims as Valid

By Steve Brachmann
January 8, 2019

On Thursday, December 20th, the Court of Appeals for the Federal Circuit issued a nonprecedential decision in Vivint, Inc. v. Alarm.com, Inc. which affirmed aspects of three inter partes review (IPR) proceedings conducted by the Patent Trial and Appeal Board (PTAB) invalidating certain claims from three patents owned by Vivint. However, the Federal Circuit panel of Chief Judge Sharon Prost and Circuit Judges Kathleen O’Malley and Todd Hughes found an erroneous claim construction led the Board to uphold some of the challenged claims.

Vivint appealed from the PTAB after the Board invalidated claims from:

  • U.S. Patent No. 6147601, titled Electronic Message Delivery System Utilizable in the Monitoring of Remote Equipment and Method of Same. It claims a system and method for monitoring remote equipment that determines a state of the remote equipment, communicates a message indicative of the equipment’s state to a computer server, enables a user to modify outgoing message routing instructions, determines whether an incoming message indicates improper operation of the equipment and forwards a message to a user-defined communication device if its determined that remote equipment is operating improperly.
  • U.S. Patent No. 6462654, same title as the ‘601 patent. It claims a method of monitoring remote equipment that involves attaching an interface unit to the equipment to monitor the equipment and transmit messages regarding its operation.
  • U.S. Patent No. 6535123, titled Electronic Message Delivery System. It claims a system for routing messages electronically for the remote monitoring of heating, ventilating and cooling (HVAC) system equipment.

In the IPRs, which were petitioned by Alarm.com, the PTAB ended up issuing mixed claim findings in each proceeding, invalidating claims while upholding some challenged claims over the asserted prior art. On appeal, the Federal Circuit panel found no error in the PTAB’s invalidation of claims challenged by Alarm.com. In a cross-appeal, Alarm.com argued that the surviving claims should also be invalidated and the appellate court found that, in respect to this cross-appeal, the Board did err in its construction of the term “communication device identification codes” which the CAFC found as being inconsistent with the broadest reasonable interpretation (BRI) of the relevant claims.

At the PTAB, Alarm.com had argued that “communication device identification codes” referred to phone numbers and email addresses, but the Board disagreed with this interpretation. The PTAB instead construed the term to mean a device serial number or a device ID such as a mobile identification number. In reviewing the record at the PTAB, the Federal Circuit disagreed with Vivint’s contentions that the Board relied on extrinsic evidence in construing the term. While the PTAB credited expert testimony for applying the construed term to the prior art, the CAFC found that this testimony wasn’t used to construe the term.

In agreeing with Alarm.com that the PTAB erred in its construction, the Federal Circuit noted that the specifications of the ‘601 patent and the ‘123 patent do not define the term, yet the Board found that the term must refer to something capable of uniquely identifying communication devices. “[T]he Board’s conclusion that a phone number or email address cannot uniquely identify a communication device defies the patents’ teachings,” the Federal Circuit’s opinion reads. The ‘601 patent teaches that a mobile identification number is similar to a phone number for purposes of identifying a device and the ‘123 patent teaches that a phone number can identify a delivery address. That the PTAB’s construction suggested the opposite of what both patents discuss about phone numbers made the construction unreasonable, therefore the Federal Circuit reversed the PTAB’s construction, vacated the related conclusions and remanded for further proceedings.

The Federal Circuit did affirm other parts of the PTAB’s decision which found challenged claims patentable over the prior art submitted by Alarm.com. Alarm.com first argued that prior art satisfied various normal status message limitations based on a piece of prior art that taught the sending of status messages that indicate whether equipment is functioning properly. The PTAB disagreed with Alarm.com regarding what the prior art disclosed and the Federal Circuit found that this conclusion was supported by substantial evidence and affirmed the PTAB’s findings on the normal status message claims. The Federal Circuit also shot down Alarm.com’s appeal of the PTAB’s findings on claim 19 of the ‘601 patent as the appellate court found that there was no motivation to combine two prior art references in a way that practiced the challenged claim.

 

Image Source: Gene Quinn.

The Author

Steve Brachmann

Steve Brachmann is a freelance journalist located in Buffalo, New York. He has worked professionally as a freelancer for more than a decade. He writes about technology and innovation. His work has been published by The Buffalo News, The Hamburg Sun, USAToday.com, Chron.com, Motley Fool and OpenLettersMonthly.com. Steve also provides website copy and documents for various business clients and is available for research projects and freelance work.

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There are currently 1 Comment comments.

  1. Ternary January 8, 2019 1:17 pm

    A Mobile Identification Number (MIN) is “like” a cell phone number in that it may have 10 digits and is derived from a cell phone number. A MIN, though derived from a phone number and somewhat similar in the number of digits, is different in purpose from a cell phone number. Furthermore, one of ordinary skill knows that a phone number in general does not identify a device. In an office or house there may be 2 or more devices (including phones, answering machines and fax machines) that are addressed by the same phone number. In a switched network, the phone number identifies network switches and a final node that is activated, not the specific device. That is why connected devices have defined interfaces, so you can connect multiple devices to the same node and they can answer on the same phone number.

    An E-mail address also identifies a node in a network, not the specific device, which allows users to view their e-mails addressed to a single e-mail address on different devices.

    The PTAB had it right. This is like the CAFC deciding that Pi=3 instead of 3.14… remark in a comment on a different article on IPWatchdog. I am truly curious on what the PTAB decides on remand on this issue.